Asia IP

The trademark functions as an important business asset in establishing an association of the manufacturer with a product and also as a recall value for the consumer.

Consumers recognize the goods or services through its logo or brand name and rely on the same for the quality of the goods. Enforcing one’s trademark involves thwarting attempts by another to adopt a similar or identical mark as well as stopping others from associating with the manufacturer without its authorization.

Two kinds of remedies are usually available to trademark owners depending upon the registration of the trademark: an action for infringement in case of a registered trademark and an action for passing off in the case of an unregistered trademark.

The Indian Trade Mark law has kept pace with new methods of trademark infringement. Accordingly, the use of a deceptively similar trademark in print or electronic media, in trying to derive an association with a rival mark, is remedied by India’s courts.

Recently, clothing retail giant Pantaloon was issued an injunction by the court on a petition filed by Shopper’s Stop and Westside for trademark infringement and unfair trade practices. Pantaloon had allegedly tried to lure consumers by allowing attractive discounts to Shoppers Stop and Westside cardholders.

In another instance, the Delhi High Court restrained, via ex-parte interim injunction, Magic Media World from printing and circulating its magazine titled Revon, which is deceptively similar to the name of a the cosmetic brand Revlon, thereby giving the impression of some affiliation with the company. The defendants operated a website with the name revon in the domain name, where the magazine was put up. Revlon has its trademark registered all over the world, including India, and had sought to restrain the defendants from using this or any similar name for their magazine.

Similarly, German company Mont Blanc was issued a notice by the Supreme Court on a petition filed by Mumbai-based Add Corporation, which was charged with infringing on the former's trademark. The latter, which sells its pens under the name ADD, challenged the Delhi High Court order that restrained it from manufacturing and selling pens under the trademark Add Gel Spacewalker and Add Gel Goldtop.

Mont Blanc had alleged infringement of its ‘Starwalker’, ‘Miesterstruck’ and ‘3-ring device’ registered trademarks in India.

Add Corporation had pleaded prior use and stated that the mode of payment and packaging, appearance and customer base were different than those of Mont Blanc and that there was absolutely no likelihood of any confusion between the two products. The final judgement on the case is awaited.

In the case of infringement of logo, the Indian Tobacco Company moved the Delhi High Court against cigarette brand Marlboro, alleging that their new festive pack resembles and hence dilutes the ITC folded ‘hands’ logo. This ITC logo has been in use for a long time on various ranges of products of the company.

The company also has copyrights in the logo.

A trademark is said to be diluted if the use of the same or similar marks in relation to completely different goods or services would reduce or weaken the value of the original mark. In most cases, trademark dilution involves an unauthorized use of another’s trademark on products that do not compete with, and have little connection with, those of the trademark owner. Because of dilution, the trademark in and of itself loses its capacity to signify a single source.

The law on dilution aims to protect sufficiently strong trademarks from losing their singular association in the mind of consumers with a particular product.

Passing-off is available where there is a prospect of confusion of identity through the unauthorized use of similar marks or get up, and such use damages, or is likely to damage the goodwill and reputation of a business. Passing off can apply to virtually any name, mark, logo or get-up which distinguishes a company, business, product or service from the other.

Passing off is a remedy in torts and is utilized on the basis of common law for unregistered trademarks. it is essential in passing off that the misrepresentation is made in order to deceive others, with the likelihood of damage to the goodwill and reputation of the owner. The legal remedies for infringement, passing off and dilution under the Indian Trademarks Act 1999 are a decree of injunction, damages, delivery up of infringing goods, destroying infringing goods and material, etc.

LEX ORBIS Intellectual Property Practice

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Tolstoy Marg, New Delhi - 110 001, India

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About the Author

Manisha Singh Nair is a partner at Lex Orbis in New Delhi. She has the distinction of practicing in both the prosecution and enforcement arenas, and has extensive experience in the post-lodgment prosecution of patents, trademarks and designs.