INTELLECTUAL PROPERTY

RIGHTS
By : Anna
Ayushika
Dino
Lian
Shrestha
Surbhi
TRADEMARKS
BRIEF BACKGROUND
The Trade Marks Registry was established in
India in 1940 and presently it administers
the Trade Marks Act, 1999 and the rules
there under.
The objective of the Trade Marks Act, 1999
is to register trade marks which qualifies
for registration under the Act and Rules
and to provide for better protection of
trade mark for goods and services and
also to prevent fraudulent use of the mark.
What is a Trademark?
A trade mark is a visual
symbol which may be a
word signature, name,
device, label, numerals or
combination of colors
used by one undertaking
on goods or services or
other articles of
commerce to distinguish
it from other similar
goods or services
originating from a
different undertaking.
Trademark Infringement
Trademark Infringement is a violation of
exclusive rights attaching to a trademark
without the authorization of the trademark
owner or any licensee. Trademark
infringement mostly occurs when a person
uses a trademark which may be either a
symbol or a design, with resembles to the
products owned by the other party. The
trademark owner may begin a legal
proceeding against a party, which
infringes its registration.
Cases of Trade Mark Violation in
India-
Trade mark infringement especially among
the corporate classes in India is rising on
an alarming rate. Few of the notable cases
have been described in brief.
 HONDA MOTORS V. CHARANJIT SINGH
PLAINTIFF - “HONDA” FOR MOTORS
DEFENDANT – “HONDA” FOR
PRESSURE COOKERS.
PASSING OFF?

YES

COURT HELD SUCH USE OF

TRADEMARK “HONDA” IS
CREATING DECEPTION OR
CONFUSION IN THE
MINDS OF THE PUBLIC AT LARGE
AND SUCH
CONFUSION IS CAUSING DAMAGE
OR INJURY TO
THE BUSINESS, REPUTATION,
GOODWILL AND FAIR
NAME OF THE PLAINTIFF.
 Appellants: Shoppers’ Stop and
Lifestyle
Vs.
Respondent: Pantaloon
 FACTS
 The Plaintiffs have dragged their rival
Pantaloon to court as they were
miffed with an
advertisement issued by the
flagship company of Kishore Biyani
owned Future Group that offered
10% extra discount to their loyal
customers vide an advertisement
issued in The Times of India, New
Delhi, dated 28th June, 2008. The
complainant retailers have accused
Pantaloon of trademark violations
and unfair business practices, says
a Live Mint report. All the three
parties operate department store
format store chains in lifestyle
segment.
 Even Westside has taken objection to
 Pantaloon’s ‘Central’ mall at Gurgaon had
offered 30% discounts to its customers
over the weekend. Loyalty card holders of
competing retailers like Shopper’s Stop,
Lifestyle and Westside, were lured by
Pantaloon by offering an additional 10%
discount on select brands of apparel. The
advertisement asked such customers to:
Present your membership card to avail this
offer.
Loyalty cardholders are mainstay of
business for most retailers. Shoppers’ Stop has
Stop
’s apparel business is accounted for by its loya
“They (Pantaloon) are luring my customers
by using my name in an unfair manner,”
said Sandeep Mittal, the lawyer
representing for both the petitioners.

HELD
The Honourable Delhi high court has issued
an injunction restraining Pantaloon from
using names of its rivals in the ads until
the next hearing in the matter fixed
for 31st July.
Taking potshots at these competitors is not
new for Pantaloon. Last year, its Big
Bazaar chain had put up hoardings, asking
customers to “Keep West-aSide,”
“Shoppers! Stop” and “Change Your
Lifestyle. Make a Smart Choice.”
Appellant-  Beecham Group Plc.
vs. Respondent- S.R.K.
Pharmaceuticals

 FACTS
 The appellant was using the mark 'AMOXIL' in India
since 1990. This mark was registered in India in
1972 in Class 5 in respect of Pharmaceutical goods.
The respondent started using the mark 'LYMOXYL'
in India from 1985. The respondent filed the
application for registration of the mark in 1987 in
India in the same class with respect to similar
goods.
 The appellant brought an action against the
respondent stating that the mark is deceptively
similar. The only difference between the two marks
is in the prefix 'LY' and 'M'. The rival marks are
phonetically and deceptively similar and the goods
are pharmaceutical goods under Sec. 12(1) of the
Act.
HELD
The Intellectual Property Appellate Board
(IPAB) held that the respondent dishonestly
adopted the mark by copying it from the
appellant who had got the mark registered
long ago. Hence the respondent cannot
claim honest concurrent use, by virtue of
earlier use. The Appellate Board delivered
a judgment prohibiting registration of the
Trade Mark 'LYMOXYL'.
 Appellant- Ranbaxy Laboratories
Limited vs.
Respondent- Anand Prasad
 FACTS
 The appellant was the registered
proprietor of the mark
'FORTWIN' and had been using
the mark since 1975. The
respondent applied for
registration of the mark
'OSTWIN'. Both the marks
related to pharmaceutical
compositions in respect of
treatment of bones.
 The appellant brought an action
against the respondent stating
that the mark is deceptively
similar. The IPAB held that the
prefixes are 'FORT' and 'OST'
while both the marks end with
the suffix 'WIN'.
HELD
It was further held that since the rival goods
are also pharmaceutical goods it might
lead to serious consequences due to
deception or confusion in the minds of the
public. Hence on the possibility of harm
being caused to common person the
appeal was allowed.

Appellants- Wyeth Holdings Corp. &
Anr. vs.
Respondents- Sun Pharmaceuticals
Industries Ltd.
 FACTS
 In this case the plaintiff whose
former name was American
Cynamid Company and who
was the proprietor of the
trademark 'PACITANE'
registered the mark in Class
5 of Pharma goods. The
respondent was using the
mark 'PARKITANE' with
respect to similar goods. The
plaintiffs filed a suit for
infringement and passing off
and sought various reliefs
including interim injunction
against the defendant for
using the mark 'PARKITANE'.
HELD
 The Court held that in both the cases the goods
are similar, being pharmaceutical preparations
for treatment of Parkinson's disease, the
customers buying these goods are the same
and the trade channels are the same. Since
the defendants did not show any search of the
Register before adopting the impugned mark,
prima facie adoption of the mark was not
honest. Further, the Court held that despite
protests, if the defendants have chosen to
continue to sell the products, it cannot be said
to be acquiescence by the plaintiff. Therefore
the Court held that injunction is to be granted
in favour of the plaintiff.
 The Court further held that in case of
pharmaceutical products, the test is of
possibility of confusion and not probability of
confusion. The plaintiffs have been in the field
since 1950 and as such the balance of
Appellants- Hoechst
Aktiengesellschaft vs. Respondents-
Artee Minerals
FACTS
 The appellant was the registered proprietor of
trademark 'ARELON'. This mark was registered
in class 5 with respect to pharmaceutical
goods relating to preparation for killing weeds
and destroying vermin. The respondent filed
an application for registration of the mark
'ARTEELON' in the same class with respect to
pharmaceutical goods.
 The appellant opposed the application for
registration of trade mark filed by the
respondents on the ground that the
registration of the impugned mark would be
contrary to provisions of Sections 9, 11, 12(1)
and 18 of the Trade and Merchandise Marks
HELD
 The IPAB held that the rival goods were same
and the only difference was the letters 'TE'.
The Appellate Board further held that the
possibility of confusion and deception is not
ruled out and hence affirmed the order
rejecting the application for registration filed
by the respondent.
 The IPAB further held that the benefit of use
under Section 54 is given only in case of
rectification proceedings when use of an
associated trademark is deemed to be use of
the registered trademark against which
rectification proceedings are initiated for non-
use of the mark.
Appellant- CCBN.com, Inc. v.
Respondent- C-Call.com, Inc.
FACTS
 Plaintiff CCBN uses its StreetEvents.com web
site to provide access to events calendaring
service regarding stock market information. 
Defendant C-Call.com uses its StreetFusion.om
web site to offer similar stock market
information about publicly traded companies. 
Access to the StreetEvents.com site was free
at the time of the suit while subscriptions to
the StreetFusion.com site cost up to
$400,000.  The issue in this case turns on
priority.  While plaintiff used the mark on its
page beginning in January 1999, at that time
the site was only available to  limited number
of subscribers in a test version. Plaintiff
promoted its service at a trade fair in
February, 1999 and the first advertising was
published in May, 1999.  The company applied
for service mark registration on June 2, 1999.
 Defendant launched its web site under a different
name (c-call.com) in November, 1998.  It
registered the domain name StreetFusion.com on
April 2, 1999 and filed a trademark application on
April 7, 1999.  Its web site was operational at the
new address as of late-April, 1999 and a press
release announced the launch of the site on May
1, 1999.
 Plaintiff asserts senior rights to the
StreetEvents.com mark.  The question, however,
is what constitutes "use" of the mark in the
context of the internet.  Advertising and
promotional use along are not sufficient to
constitute use in commerce unless such pre-sales
marketing is extensive.  There was no evidence in
the record of extensive marketing ad thus plaintiff
did not establish use in commerce prior to April,
1999 at the earliest.  The court determines that
the record is unclear as to which company
actively began providing services in commerce
under the disputed mark first.

HELD
Under the reasoning of this court, it is clear
that establishing a web site with only
minimal test marketing (or simply
announcing the intention of a future
service) will not constitute sufficient "use
in commerce" to establish priority for
trademark infringement.
 MCDONALDS V MCCURRY
MCDONALDS -RIGHT CLAIMED
OVER THE WORD “MC”
SIMILAR SERVICES- BOTH IN

RESTAURANT BUSINESS
MCCURRY - “MC” / “MAC” IS A

COMMON NAME OF A PERSON,

USED COMMONLY IN BUSINESS
ACROSS VARIOUS DOMAINS
INFRINGEMENT?

NO

COURT HELD HONEST PRACTICE.

NOT TAKING UNFAIR
ADVANTAGE.


MEDILINE HEALTH CARE PVT. LTD. V. SHRI PAWAN
KUMAR VARSHNEY, TRADING AS SALAKA

PHARMA CARE PVT. LTD
 APPLICANT’S TRADE MARK ‘ANTIFLAM’
 RESPONDENT TRADE MARK ‘NT FLEM’
 PHARMA PRODUCTS
 INFRINGEMENT?
 YES


 THE COURT HELD SINCE THE GOODS ARE

SAME, RIVAL MARKS PHONETICALLY SIMILAR
AND RESPONDENT SUBSEQUENT USER,
THEREFORE HELD INFRINGEMENT
Conclusion
In conclusion it can be drawn that Indian
Trade Mark Law must me updated on
frequently keeping in pace with the
dynamic and new methods of Trade Mark
infringement. Both Courts and
Enforcement authorities must be well
equipped and be trained for efficient
disposal of cases relating to Intellectual
Property.