Infringement of registered trade marks.

(1) A registered trade mark is infringed by a

person who, not being a registered proprietor or
a person using by way of permitted use, uses in
the course of trade, a mark which is identical
with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which
the trade mark is registered and in such manner
as to render the use of the mark likely to be
taken as being used as a trade mark.
 (2) A registered trade mark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted use,
uses in the course of trade, a mark which because of
(a) its identity with the registered trade mark and the similarity
of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or
similarity of the goods or services covered by such registered
trade mark; or
(c) its identity with the registered trade mark and the identity of
the goods or services covered by such registered trade mark, is
likely to cause confusion on the part of the public, or which is likely
to have an association with the registered trade mark.
 Presumption in case of identical marks and
goods or services
(3) In any case falling under clause (c) of sub-
section (2), the court shall presume that it is
likely to cause confusion on the part of the
public.
 Dissimilar goods and serivces
(4) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which
(a) is identical with or similar to the registered trade mark;
and
(b) is used in relation to goods or services which are not
similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and
the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive character or
repute of the registered trade mark.
 Tradename and registered mark
(5) A registered trade mark is infringed by a
person if he uses such registered trade mark,
as his trade name or part of his trade name, or
name of his business concern or part of the
name, of his business concern dealing in
goods or services in respect of which the trade
mark is registered.
 Use of a registered mark
(6) For the purposes of this section, a person uses a
registered mark, if, in particular, he
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the
market, or stocks them for those purposes under the
registered trade mark, or offers or supplies services
under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or
in advertising.
 Advertising
(8) A registered trade mark is infringed by any
advertising of that trade mark if such advertising

(a) takes unfair advantage of and is contrary to

honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
Deceptive Similarity in trademark
infringement
Definition
Factors/test
Cases
 Deceptive Similarity
S. 2(1)(h): "deceptively similar"-A mark shall be deemed to be deceptively
similar to another mark if it so nearly resembles that other mark as to
be likely to deceive or cause confusion.
1. In order to come to the conclusion whether one mark is deceptively
similar to another the broad and essential features of the two are to
be considered.
2. They should not be placed side by side to find out if there are any
differences in the design, and if so, whether they are of such character
as to prevent one design from being mistaken for the other.
3. It would be enough if the impugned mark bears such an overall
similarity to the registered mark as would be likely to mislead a person
usually dealing with one to accept the other if offered to him.
 Factors to be take into consideration to
decide deceptive similarity
1. The nature of the marks i.e. whether coined/ descriptive/ non-
descriptive/ surname/ geographical origin/ device/ letters/ numerals/
combination of two or more of the above
2. The degree of resemblance between the competing marks and essential
features thereof i.e. phonetic, visual or structural.
3. The nature of the goods in respect of which they are used or likely to be
used as trade marks.
4. The similarity of the nature, character, and purpose of the goods of the
rival traders.
5. The class of purchasers who are likely to buy the goods bearing the
marks.
6. The mode of purchase of the goods or of placing orders for the goods.
7. Any other surrounding circumstances
 Parle & Co. v J.P. and Co. Mysore
1. "Parle's Glucose Biscuits and the wrapper with the colour scheme-registered
in 1942.
2. buff color and depicts a farm yard with a girl in the centre carrying a pail of
water and cows and hens around her on the background of a farmyard
house and trees.
3. Defendant pleaded lack of knowledge of the registration.
4. They pleaded further that there was a good deal of difference in the design
of their wrapper.
5. Defendant's wrapper contained the picture of a girl supporting with one
hand a bundle of hay on her head and carrying a sickle and a bundle of food
in the other, the cow-and hens being unlike.
6. There was also said to be difference in the design of the buildings on the two
wrappers and the words printed on the two wrappers were distinct and
separate.
BDH Industries v Croydon Chemical Works
P.V. DINE/PV-DINE v PIODINE
Deceptive Similarity:
1. apart from the structural, visual and phonetic similarity or dissimilarity,
the question has to be considered from the point of view of a man of
average intelligence and imperfect recollection. While dealing with such
cases one of the important tests which has to be applied in each case is
whether the mark is of such a nature as is likely to cause an ordinary
consumer to confuse one product for another due to similarity of marks
and other surrounding factors.
2. it is to be considered as a whole and
3. it is the question of his impression.
4. Confusion with regard to medicinal products can have disastrous effects.
R.S. Kandasamy v New Jothi Match Industries
manufacturers of safety matches
New Jothi-north-"MANDAK" and with FROG as symbol. Theconsumers are mostly
illiterate and when they demand the product they have in mind the colour and
design of "MANDAK".
The firm designed and printed its trade mark with a dark blue background and
organge red border in a rectangular shape. The letter "R" was printed with a circle
near the figure Frog in order to assure the consumer that the label has been
registered under the Act.
He is selling his product as "MAGAR" with crocodile design. The quality of this
product is very inferior and it is being pushed into the market as though it is the
product of the respondent.
The colour scheme and lay out adopted by the first appellant with the label
"MAGAR" are a colourable imitation of the colour scheme and design of the
respondent. The in lay of 'R with reference to the figure crocodile is a clear
limitation and fraud on the label of the respondent's "MANDAK".
1. it could be enough if the impugned mark bears such an over all similarity to
the registered mark as would be likely to mislead a person usually dealing
with one to accept the other if offered to him.

2. The question is not whether if the person is looking at two trade marks side
by side, there would be a possibility of confusion.

3. On the other hand, the point is whether anybody who sees the infringing
trade mark in the absence of the infringed trade mark shall be liable to be
deceived and to think that the trade mark before him is the same as the other
on which he has a general recollection.

4. For this we have to take into account the nature and kind of customers who
are likely to buy the goods.
1. Emphasis is laid on over all similarity alone and not similarity in each and every
minute detail.

2. The totality of the impression of the trade mark produced should be such as to
cause confusion or deception in the mind of the purchasers.

3. Tangible danger of confusion by a substantial proof is the main test to find out
whether the infringing mark is deceptively similar to the infringed mark.

4. The test of comparison of the marks side by side is not a sound one since a
purchaser will seldom have the two marks actually before him when he makes his
purchase.
5. The eye is not an accurate recorder of visual detail and that marks are remembered
rather by general impression or by some significant detail than by any photographic
recollection of the whole.
 Pepsi Co. Inc. And Anr. vs Hindustan Coca
Cola And Ors
Use of the Globe, PAPPI and YEH DIL MANGE MORE by COCA COLA in
advertisement
Whether infringement?
(a) That the defendants have not used the trade mark PAPPI and device
on their products in the course of their
trade nor in relation to any goods in respect of which the trade mark is
registered.
(b) That the defendants have not sold their merchandise goods under
the trade mark of the plaintiffs.
(c) That the defendants have not advertised their products under the
plaintiffs' trade mark.
(d) It is not disputed that comparative advertisements are permissible in
law.
 Irving's Yeastvite v. Hosenail-
comparative advertising-defendants use of plaintiffs mark not necessarily to indicate that product is
originating from the plaintiff and not from the defendant and likely not to deceive or confuse.
the exclusive right of the proprietor to use a mark conferred by Section 39 of the Trade Marks Act, 1905
had to be construed in the light of the definition of a trade mark contained in Section 3 of that Act,
being to indicate a commercial connection with the goods. Accordingly only traditional acts or piracy
were covered, not comparative advertising.

Bismag v. Amblins (Chemists) Ltd., (1940) 57 R.P.C. 209

"Bisurated for "medicinal stomachic powder for human use" and were selling "Bisurated Magnesia
powder". The defendants who were also selling medicinal preparations issued advertisements
comparing their "Bismuthated Magnesia Tablets" with the plaintiffs "Bisurated Magnesia Tablets" as
regards the composition and price to show that the defendant's "Bismuthated Magnesia Tablets
were the equivalent of and cheaper than the plaintiff's goods sold under the trade mark "Bisurated".

The trademark "Bisurated" was thus used only in relation to the actual goods of the plaintiffs, and the
use complained of was in substance precisely the same as what was done by the defendant in the
Yeast-Vite case.
 Duracell International Inc. and Anr. v. Ever Ready Ltd.

1. The first mark consisted of the word DURACELL covering

"...batteries.... for use in hearing aids, transistor radios and in
photographic equipment".
2. The other trade mark related to the get up of the plaintiff's batteries.
This mark was described as follows: "The trademark consists of the
colours black and copper applied to the whole surface of the side
walls of electric batteries, as represented in the form of application".
3. Two slightly different advertisements were complained of. Each
advertisement featured inter alia, (1) a monochrome photograph of a
battery the top third of which was in a light colour and the bottom
two thirds in a dark colour, and (2) the words; "In tests.... the gold
seal LR20 battery outlasted the equivalent sold by Duracell Batteries
Limited in every single appliance".
1. In order to constitute infringement, the use complained of must be a use in
the course of trade.
2. The defendants must be 'dealing or selling or in some other way trading in
the goods bearing the offending mark. Possession of such goods for the
purpose of comparison will not amount to infringement.
3. The right conferred by registration is a right to use the mark in the course of
trade and obviously this right is infringed only when the infringer also uses
the mark in the course of trade.
4. The use "in the course of trade" means in the course of business. It did not
mean use as a trademark. The purpose for which the mark was applied will
not prevent it constituting an infringement provided it was used in the
course of trade and was capable of indicating a connection in the course of
trade between the goods and the proprietor of the registered trade mark
 S.29(2): Infringement where there is likelihood
of confusion or association with registered mark

(2) A registered trade mark is infringed by a person who, not being a

registered proprietor or a person using by way of permitted use, uses in
the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the
goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or
similarity of the goods or services covered by such registered trade
mark; or
(c) its identity with the registered trade mark and the identity of the
goods or services covered by such registered trade mark, is likely to
cause confusion on the part of the public, or which is likely to have an
association with the registered trade mark.
 Trade mark is infringed if the alleged use of the mark
is likely to cause confusion or is likely to have an
association with registered trademark because of
a. Its Identity with TM and similarity of the goods or
services covered by such trade mark; or
b. Its similarity to the registered TM and the identity or
similarity of the goods or services
c. Its identity with the registered TM and the identity
of the goods or services covered by such trade mark.
1. Sub (3) if the mark and goods or services for
which the mark is registered is identical to the
infringing mark then presumption that such
use is likely to cause confusion on the part of
the public.
2. Only need to prove that defendant is using
identical mark in relation to identical goods/
services. Need not have to prove likelihood of
deception or confusion.
Test of likelihood of confusion : Premiere Brands UK v Typhoon Europe 2000[ETMR] 1071

1. Test is one of global appreciation taking into account all factors relevant to the
circumstances of a particular.
2. The visual, phonetic and conceptual similarities.
3. The distinctiveness of the mark: the more distinctive the mark, the greater the
likelihood of the confusion
4. The degree of similarity for which the mark is registered and the goods in respect of
which sign is used.
5. Eyes of the average consumer.
6. Question to be asked whether the public would be led to think that the goods or
services come from a common source. If yes, then similar.
7. Classification of goods not the determining factor
8. The test of similarity of the goods is looked at from a business and commercial point
of view.
9. The nature and composition of the goods, the respective uses of the articles and the
trade channels through which they are bough and sold.
 S.29(4): Where the registered mark has a
reputation
(4) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person. using by way of
permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark;
and
(b) is used in relation to goods or services which are not
similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and
the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive character
or repute of the registered trade mark.
1. Infringing mark is similar or identical to registered TM
2. Such mark is used in relation to goods or services which are not similar
3. The registered trademark has a reputation in India.
4. The use of the infringing mark is without due cause and takes unfair
advantage of or is detrimental to the distinctive character or repute of
the registered TM.
5. Use of TM on dissimilar goods but mark has gained reputation in India.
6. Confusion not necessary
7. gradual whittling away or dispersion of the identity and hold upon the
public mind of certain arbitrary or fanciful marks - or blurring as it has
become known.
8. Detriment can also take the form of degradation or tarnishment to the
repute of a trademark
1. Taking unfair advantage of the distinctive character or repute of the
mark is a concept which is related but slightly different to detriment, and
encompasses situations where there is clear exploitation and free riding
on the coattails of a famous mark or an attempt to trade upon its
reputation.
2. As regards blurring, however, the assessment was more complex. As
touched on above, dilution occurs where the distinctiveness of a mark is
eroded due to its use in connection with different or less exclusive types
of product that diminishes or lessens its link in the eyes of the public
with the goods or services for which the mark was created. However,
even where marks were identical, dissimilarities in the goods/services to
which they related could counteract or eliminate the possibility of the
risk of association between them and as such eliminate any possibility of
consequential dilution.
1. Patten J said that it was necessary to show that in
all the circumstances of the case the prospect of
dilution was made out; it was "not established
merely by the use of a similar or even identical
sign for a dissimilar class of goods or services".
2. Lucas Bol case: Claeryn" for gin was held to be
infringed by the use of the (identically
pronounced) sign "Klarein" for detergent
3. INTEL CASE: INTEL MARK- INTEL
S.29(5): Where the registered trade mark is a
trade name
(5) A registered trade mark is infringed by a
person if he uses such registered trade mark,
as his trade name or part of his trade name, or
name of his business concern or part of the
name, of his business concern dealing in
goods or services in respect of which the trade
mark is registered
 S.29(8): Advertisements
(8) A registered trade mark is infringed by any
advertising of that trade mark if such
advertising-
(a) takes unfair advantage of and is contrary to
honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
 Mark is infringed in the context of any advertising if
such advertising-
1. Takes unfair advantage of and is contrary to honest
practices in industrial or commercial matters; or
2. Is detrimental to its distinctive character; or
3. Is against the reputation of the trademark.
When is an advertisement of a registered trade mark not
in consonance with honest business practices or is
detrimental to the distinctive character or the
reputation of the TM?
 Honest practice
Honest practice is not defined.
European Courts have considered when a practice is not
honest:
a. All acts that create confusion with regard to the goods and
activities of the competitor.
b. False allegations in the course of trade of such a nature as
to discredit the establishment, the goods, or the industrial
or commercial activities of a competitor.
c. Indications that mislead the public as regards the origin,
manufacturing, quantity, manufacturing of the goods of the
competitor.
 Comparative advertising allowed
1. Comparative advertising is permitted:
2. If it is not misleading
3. It compares goods or services meeting the same needs or intended
for the same reasons.
4. It objectively compares one or more material
5. It does not create confusion in the market place between the
advertiser and a competitor or between the advertisers TM, trade
names and those of a competitor.
6. Does not discredit or denigrate the TM or trade name of the
competitor
7. Does not take unfair advantage of the reputation of TM of a
competitor
 Reckitt and Colman v MP Ramachandran

A tradesman is entitled to declare his goods to be best

in the world even though the declaration is untrue.
He can also say that my goods are better than his
competitors, even though such statement is untrue.
He can also compare the advantages of his goods over
the goods of the others
However, he cannot say that his competitors goods are
bad. If he does so, he defames the goods of his
competitor which is not permissible.
 Dabur India Limited v Colgate Palmolive India
Ltd. (Dant manjan)
Dabur India Ltd. v Emami Ltd (Chyawanprash-
summer)
Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd.