LEGAL ASPECTS OF BUSINESS

ASSIGNMENT
ON
PASSING OFF OF TRADEMARK

SUBMITTED BY:

SHEEREEN KERKETTA

M117-19

SECTION - B
TRADEMARK
A trademark is a symbol, design, logo, word, or a phrase that represents
a brand or a product. A trademark process occurs when an organisation
or an individual declares ownership of a distinctive mark, logo or symbol
by registering themselves by filing a trademark registration application
with the Indian Trademark Registrar Office, Controller General of Patents
Designs and Trademarks. After when a trademark is registered, it gets all
the privileges to avail legal protection against all sort of trademark
infringement under the Trademark Act of India.

CERTIFICATIONRADEMARK
In trademark, there is another kind of trademark certification. The
purpose of the certification trademark is to let others know that some
competent person has certified the goods in respect of certain
characteristics of the goods such as origin, mode of manufacture, quality,
etc. The proprietor of a certification trademark does not himself deal in
the goods. It is in addition to the user’s trademark on his goods or
products. Unlike the old Act which gave power to the Central Government
to register a certification trademark, the new Act provides power to the
final authority to the Registrar for registration of certification trademark.
In Trade Marks Act, 1999, sections 70 to 78, deal with the registration of
certification trademarks.
PASSING OF/ INFRINGEMENT OF TRADEMARK
Infringement refers to taking unfair advantage or being detrimental to the
distinctive character or reputation of a trademark.
Section 29 deals with infringement of trademarks. In this section, it lays
down that when a registered trademark is used by an individual who is
officially or legally not entitled to use such a trademark under the law, it
constitutes infringement. This section clearly states that a registered
trademark is infringed, in the case when the mark is identical and used in
respect of similar goods or services; or the mark is deceptively similar to
the registered trademark, and there is an identity or similarity of the
goods or services covered by the trademark, or the trademark is similar
and used in relation to identical goods or services, and that is likely to
cause confusion or to have an association with the registered trademark.
Sub-section (4), in the Act, states that a person shall be deemed to have
infringed a registered trademark, if they use a mark which is identical
with or similar to the trademark, and is used abruptly in relation to goods
or services which may harm the goodwill of other product of whose
trademark is registered; and the use of registered trademark without due
cause would take unfair advantage which will impact the image of the
original one.
Sub-section (5), restricts a person from using someone else’s trademark,
as his registered trademark is under a trade name or name of his
business concern or business concern dealing with goods or services.

WHEN A PERSON SHALL BE DEEMED:

• A person shall be penalised to have used a registered trademark in
circumstances which include affixing the mark or logo to goods or
packaging, exposing or offering the goods for supply or sale of
services, importing or exporting the goods abroad, using the
 trademark as a trade name or trademark on business paper or in
advertising or even social media.
• A person shall also be penalised to have infringed a registered
trademark if he applies such registered trademark to be used for
packaging or labelling goods as a business paper, or for advertising
goods or services knowing that the proprietor or licensee do not
authorise the application of such mark. Advertising of a trademark
to take unfair advantage, or against the honest industrial or
practices or which is detrimental to the character or is against the
reputation of the trademark shall constitute infringement under the
Act of section 29(8). Where the distinctive element of a registered
trademark consists of words, the spoken use of such words as well
as a visual representation for promoting the sale of goods or
products or the promotion of service would constitute infringement
under Section 29(9) of the Act.
There are three types of trademark infringement, as mentioned below:

1. Application of False Trademark: Involved in any process in

manufacturing, processing or packaging of products or services
with an unauthorised trademark.
2. Distributing of Products with False Trademark: By selling or
dealing in any products or services that have a false or
unauthorised trademark.
3. False Claim of a Trademark Registration: Claiming a
trademark which is wrongly or falsely registered.

SOME CASES OF INFRINGEMENT:

• Louis Vuitton v. Louis Vuiton Dak - A fried chicken restaurant in

South Korea lost a trademark battle with Louis Vuitton due to the
name being kind of similar to the designer's trademark. Not only
the name was similar, but the packaging and logo were, too, which
led to a dispute between these two different company based on
different locations. Even when the brand existence or establishment
is from some other place, it does affect the brand when imitated
because it has some brand value in its name or logo.
• Adidas v. Forever 21 - Adidas had filed a suit against clothing
retailer Forever 21, claiming that the retailer's three-stripe design
on products has imitated. Adidas claimed that it had put so many
efforts and millions into branding those three-stripe design and
holds numerous patents on it.
• IndiGo, India's biggest airline carrier, is facing turbulence from a
big giant. Tata Motors has issued notices on 'Indigo' name
infringement as they forayed into sedans under the name Indigo in
2002 to the airline's parent Interglobe Aviation.
The Calcutta High Court in Hearst Corporation versus Dalal Street
Communication Ltd. said that inaction for infringement –
(a) the plaintiff must be an owner of a registered trademark;
(b) the defendant must use a logo or mark deceptively similar to the
plaintiff’s mark or logo;
(c) the use must be in relations to the goods or products in respect of
which the plaintiff’s mark or logo is registered;
(d) the use must not be accidental by the defendant in the course of the
trade. In the present, the plaintiff had been printing a monthly
magazine from 1933 and selling the same in the name of its
registered trademark ‘Esquire’ since 1942. The plaintiff also owned
the copyright of the script, get-up and style in which the trademark
‘Esquire’ is retailed with.
From October 1994, the defendant started printing a magazine every
month with the name of ‘Esquare’. It was seen whether there was a
similarity between the two names with respect of the same description of
goods, both phonetically as well as visually, the judges noticed that the
covers of the magazines of the defendant would appear to be framed
without any content preference, with the idea of attracting the male
interest. For these reasons, based on the phonetic similarity and identical,
it appears that an imperfect recollection and unwary purchaser of average
intelligence would be likely to confuse the defendant’s use of the logo or
mark ‘Esquare” on the magazine with the publication of plaintiff ‘Esquire’.
An another way of considering the issue of infringement is whether the
defendant’s mark was an imitation or clone of the plaintiff’s logo or mark.
Of course, this implies a certain lack of bona fides on the imitators’ or
cloners part. An injunction was issued to save the defendant from
infringing the registered trademark of the plaintiff.
RELIEF IN SUITS FOR INFRINGEMENT/PASSING OFF:
• Civil Litigation: A suit can be filed either under the law of passing
off or infringement under the Trademarks Act, 1999 depending on
unregistered, pending registration or registered trademarks.
• Jurisdiction and Venue: Suit for passing off / infringement can be
filed either in the High Court or in the District Court, all depending
on the suit valuation. The suit can be at any place where the
business is carried by the rights holder or one of the rights holders.
• Elements of the Complaint: The rights holder is required to
demonstrate in the complaint that the alleged infringing act involves
a mark or logo that is identical to a trademark of the rights holder;
the infringing representation of a trademark is being misused in
connection with goods or services and might lead to confusion or
the dilemma in public regarding the origin and authenticity of the
infringing goods/services.