Section 2 (m) of the Trade Marks Act, 1999 clearly defines “mark” to include all devices, brands, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. To secure protection under the Trade Marks Act, 1999 the mark be registered. Protection can be availed of also if the mark has acquired distinction and a well-known character.
There exists a fine line of distinction between infringement and passing off. While infringement is a component of the Trade Marks Act, 1999 and protects duly registered marks, passing off on the other hand is a component of common law ‘economic torts’ available as a judicial approach to protect goodwill or reputations of established businesses of individuals or organizations. This was the Madras High Court’s clear opinion in Thalappakatti Naidu Ananda Vilas v. Thalapakattu Biriyani and Fast Food, wherein it was held that the main distinction between an infringement action and a passing off action is that the former would arise only upon the grant of trade mark registration.
To explain the distinction between the remedies available under passing off and an infringement action, the Supreme Court of India in Wander Ltd. v. Antox India Pvt. Ltd. held that in a passing off action, the plaintiff’s right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which intends to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person through deception attempts to obtain an economic benefit from another’s reputation.
In India, trade marks are the most litigated among all other intellectual property rights. Courts have most often than not awarded decisions in the context of passing off actions or infringement or rectification proceedings. Various elements need to be established in the mark such as distinctiveness, in order to prove that its infringement has indeed taken place. The elements present in the Complainant’s mark, and its constituent trade mark elements have been elucidated. The legal questions to be analysed in trade mark opposition or infringement cases are as follows.
Whether The Complainant’s Mark Has Acquired Distinctiveness
Tests have been laid down to determine the presence of distinctiveness in the character of a trade mark over a good or service.
a) It must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish the goods or services from those of other undertakings.
b) It must be assessed by reference to goods or services in respect of which registration is applied for, and according to the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect.
c) The criteria for assessing distinctive character must be the same for all categories of trade marks. That being the case, the perception of the relevant public varies with the different categories of trade marks, hence this must be kept in mind.
d) The Competent Authority must assess the market share of the good, the geographical extent, intensity and long-standing use of the mark, the amount that the Proprietor has invested in promoting the mark, the proportion of the relevant class of public that associate the mark with the proprietor and the evidence from trade and professional associations.
In Amravati Enterprises v. Karaikudi Chettinadu, it was held that registration of trade mark is prima facie evidence in favour of the holder of such mark when one party is a prior user in an action for infringement. It was also necessary to prove that they have been continuously using the trade mark in respect of goods manufactured or marketed by them. The volume of sales also assumes significance. It was held, that appellant has a prima facie case in the matter and balance of convenience was also in favour of the appellant and the appellant would be put to irreparable loss and hardship if the injunction was not granted.
Whether The Complainant’s Mark Is A “Well-Known Mark” According To Section 2(1)(zg) Of The Trade Marks Act, 1999:
The Complainant’s mark must be one that has acquired a name in the industry. In fulfillment of the definition under section 2(1) (ZG) of the Trade Mark Act, 1999 the Complainant’s mark must be a mark that has become so to the substantial segment of the public which buys its goods or avails its services, that the use of its mark in relation to other goods or services is likely to be taken as indicating a connection in the course of selling goods or offering services between its own goods or services, and those of the Complainant’s.
Furthermore, the Complainant must satisfy the test to determine a well-known mark as under section 11(6) of the Trade Marks Act, 1999.
Whether There Is A Likelihood Of Confusion Between The Mark Of The Complainant’s And That Of The Respondent’s?
It must be observed whether the Respondent’s mark is confusingly identical. There arises a likely assumption that the impugned mark of the Respondent will be or is associated with the mark of the Complainant.
The Bombay High Court in Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd. observed that a large number of persons, if they saw or heard about the mark “Caltex” in connection with the applicant’s watches, would be led to think that the watches were in some way connected with the opponents who were dealing in petrol and various oil products with the Caltex mark, or they would at least wonder whether they were in any way connected with the opponents’. The Court considered the factors which tend to show that there was a likelihood of creating deception or confusion.
Use of Family Names or Surnames
In the case of using surnames as trade marks, the court in Mahendra & Mahendra Paper Mills v. Mahindra & Mahindra Ltd. observed that the name had acquired a distinctiveness and a secondary meaning in the business or trade circles and any attempt by another person to use the name in business and trade circles was likely to and in probability would create an impression of a connection with the plaintiffs’ group of companies.
Damages To Be Paid In Case Of Infringing Marks
Failure to prevent infringing use after having knowledge of the Complainant’s existing and identical trade name attracts exemplary damages in addition to ordinary damages to make good the loss suffered by the Plaintiff.