JAMIA MILLIA ISLAMIA

INFRINGEMENT
OF TRADEMARK
IN INDIA
SUBMITTED TO DR. S. Z. AMANI

SHARIQUE RAZA

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ACKNOWLEDGEMENT
All Praise to ALLAH (swt).

I would like to express my profound sense of gratitude to Dr. S.Z. Amani for providing me
his invaluable support, encouragement, supervision and useful suggestions throughout this
research work. His moral support and continuous guidance enabled me to complete my work
successfully. His intellectual thrust and blessings motivated me to work rigorously on this
study. In fact this study could not have seen the light of the day if his contribution had not
been available. It would be no exaggeration to say that it is his unflinching faith and
unquestioning support that has provided the sustenance necessary to see it through to its
present shape.

I express my deep sincere gratitude towards my parents for their blessing, patience, and moral
support. I express my gratitude to my all teachers and friends who has supported and
encouraged me.

SHARIQUE RAZA

9TH SEMESTER

5TH YEAR

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TABLE OF CONTENTS
1. Procedure Of Registration Of Trademark In India
2. Trademarks Law In India
3. Introduction
4. Importance Of Trademark
5. Conclusion
6. Bibliography

TRADEMARKS LAW IN INDIA

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Indias obligations under the TRIPS Agreement for protection of trademarks, inter alia,
include protection to distinguishing marks, recognition of service marks, indefinite periodical
renewal of registration, abolition of compulsory licensing of trademarks, etc.

With the globalization of trade, brand names, trade names, marks, etc. have attained an
immense value that require uniform minimum standards of protection and efficient
procedures for enforcement as were recognised under the TRIPS. In view of the same,
extensive review and consequential amendment of the old Indian Trade and Merchandise
Marks Act, 1958 was carried out and the new Trade Marks Act, 1999 was enacted. The said
Act of 1999, with subsequent amendments, conforms to the TRIPS and is in accordance with
the international systems and practices.

The Trade Marks Act provides, inter alia, for registration of service marks, filing of
multiclass applications, increasing the term of registration of a trademark to ten years as well
as recognition of the concept of well-known marks, etc. The Indian judiciary has been
proactive in the protection of trademarks, and it has extended the protection under the
trademarks law to Domain Names as demonstrated in landmark cases of Tata Sons Ltd. v.
Manu Kosuri & Ors1, and Yahoo Inc. v. Akash Arora2.

India, being a common law country, follows not only the codified law, but also common law
principles, and as such provides for infringement as well as passing off actions against
violation of trademarks. Section 135 of the Trade Marks Act recognises both infringement as
well as passing off actions.

Trademark infringement is an infringement of exclusive rights attaching to a trademark

without the authorization of the trademark owner or any licensee. Trademark infringement
typically 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 an
officially permitted proceeding against a party, which infringes its registration. There are two
types of remedies are available to the owner of a trademark for unauthorized use of its
imitation by a third party. These remedies are an action for passing off in the case of an
unregistered trademark and an action for infringement in case of a registered trademark. An
infringement action and an action for passing off are quite different from each other, an
1 [90 (2001) DLT 659]

2 [1999 PTC 201]

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infringement action is a statutory remedy and an action for passing off is a common law
remedy.

Accordingly, in order to ascertain infringement with regard to a registered trademark, it is

necessary only to establish that the infringing mark is deceptively similar to the registered
mark and no further proof is required. In the case of a passing off action, proving that the
marks are deceptively similar alone is not sufficient. The use of the mark should be likely to
deceive confusion. Further, in a passing off action it is necessary to prove that the use of the
trademark by the defendant is likely to cause injury to the plaintiff's goodwill, whereas in an
infringement suit, the use of the mark by the defendant need not cause any injury to the
plaintiff. Trademark infringement laws are of assistance the trademark holders to keep
awareness about infringement of trademark.

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INTRODUCTION
A trademark in relation to goods conveys to the general public and specifically to the
consumers about the origin and quality of those goods, thereby acquiring reputation in the
course of business and time. Therefore the concept of a trademark is the foundation of ones
business to distinguish from others. A good trademark is often the best salesman of the goods
and is a visual symbol of goodwill and stamp of quality.

A trademark is one of the elements of Intellectual Property Right (IPR) and is represented by
the symbol or . It is a distinctive sign, symbol or indicator which is used by an
individual, business organization or other legal entity to identify uniquely the source of its
products or services to consumers, and to distinguish its products or services from those of
other entities. It could typically be a name, word, phrase, logo, symbol, design, image, or a
combination of these elements. Trademarks are used to facilitate and enhance the marketing
of a commodity and is a sign that indicates to consumers the source and reputation of the
affixer of the mark and provides an important advertising and sales tool.

Every businessman who has spent considerable amount of money making his mark popular
will try to secure it from usage by unscrupulous competitors. Protection of trademark is
important not only from the business point of view but also for the protection of consumer
from fraud and imposition.

The Trademark Act of 1999, both in letter and spirit, lays down that, while it encourages fair
trade in every way and aims to foster and not to hamper competition, it also provides that no
one, especially a trader, is justified in damaging or jeopardizing anothers business by fraud,
deceit, trickery or unfair methods of any sort. This necessary precludes the trading by one
dealer upon the good name and reputation built up by another.

The first Trademark legislation was enacted in India in 1940, but before that, protection to
trademarks in the country was governed by the principles of common law based on English
cases. The law relating to protection of this form of industrial property is intricate and
complex.

The reputation of a business symbolized by a mark, under common law, can be protected
only by an action for Passing off. Registration of a trademark under the Trade Marks Act of
1999 gives statutory rights and slight infringement of it can invite an action for Infringement.

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However, even the unregistered trademarks are also protected as the Act itself provides that
an action of passing off remedy is available for unregistered trademark.

IMPORTANCE OF TRADEMARK
The importance of trademarks lies in their association with quality and consumer
expectations in a product or service. They can be seen as serving four main purposes:
First, identifying the product of its origin,
Secondly, advertising the product/service and lending it a brand name,
Thirdly, protecting the business reputation and goodwill, and
Fourthly, protecting consumers from deception, that is to prevent the buying public
purchasing inferior goods or services in the mistaken belief that they originate from or
are provided by another trader

INFRINGEMENT OF A TRADE MARK

Section 27(1) of the Trademarks Act, 1999 provides that a person shall be entitled to initiate
legal proceeding to prevent or recover damages for the infringement of a registered
trademark. Infringement occurs when someone else uses a trademark that is same as or
deceptively similar to registered trademark for the identical or similar goods or services as to
cause confusion in the mind of the public. This right of bringing an infringement action
against the defendant has been conferred by Section 28 of the Trademarks Act, 1999. Section
28 of the Act provides that the registration of a trademark gives to the proprietor of a
registered trademark an exclusive right to use the trademark in relation to the goods and
services in respect of which the trademark is registered and to obtain relief in respect of
infringement of the trademark.

Trademark infringement claims generally involve the issues of likelihood of confusion,

deceptive marks, identical marks and dilution of marks. Likelihood of confusion occurs in
situations where consumers are likely to be confused or mislead about marks being used by
two parties. The plaintiff must show that because of the similar marks, many consumers are
likely to be confused or mislead about the source of the products that bear these marks.

Dilution is a trade mark law concept forbidding the use of a famous trade mark in a way that
would lessen its uniqueness. In most cases, trade mark dilution involves an unauthorized use
of another's trade mark on products that do not compete with, and have little connection with,

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those of the trade mark owner. For example, a famous trade mark used by one company to
refer to hair care products, might be diluted if another company began using a similar mark to
refer to breakfast cereals or spark plugs.

WHAT CONSTITUTES INFRINGEMENT?

Section 29 of the Trademarks Act, 1999 deals with infringement. In this context, the
ingredients of Section 29 (1) are as follows:-

a. The plaintiffs mark is registered.

b. The defendants mark is identical with, or deceptively similar to plaintiffs registered
mark;
c. The defendant has taken any essential feature of the mark or has taken the whole of
the mark and then made a few additions and alterations.
d. The defendants use of the mark is in course of the trade in respect of goods/services
covered by the registered trademark.
e. The use of the infringing mark must be printed or usual representation of the marking
advertisements, invoices or bills. Any oral use of the trademark is not infringement.
f. The use by the defendant is in such manner as to render the use of the mark likely to
be taken as being used as a trademark.
g. The defendants use of the mark is not by way of permitted user and accordingly
unauthorised infringing use.

While the above is the general proposition of law as per Section 29 (1), the various
circumstances in which the trademark is infringed are enumerated in sub-sections 29(2) to (9)
of Section 29.

INFRINGEMENT- VARIOUS FACTORS

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In the case of Wockhardt Ltd. Vs. Aristo Pharmaceuticals Ltd.3, Madras High Court, after
holding the defendants mark SPASMO-FLEXON deceptively and phonetically similar to
SPASMO-PROXYVON, summarised the law as follows:

1. The registered proprietor of a trademark has exclusive right to the use of the
trademark in relation to the goods and services in respect of which the trademark is
registered and to obtain relief in respect of infringement of the trademark in manner
provided by the Act.
2. Whether it is deceptively or has become publici juris is a question of fact to be
established.
3. When a number of marks, all have a common element, may it be prefix, suffix or root,
i.e. essential part or the core of the mark, they come to be associated in the public
mind as an indication of the same source, which misleads or causes deception or
confusion.
4. It is the common element that has to be identified in an impugned mark and the
registered trademark and if such common element is highly distinctive and is not just
a description or a commonly used word, the likelihood of deception or confusion
would be very much there, despite the fact that it might differ in similarity in certain
letters.
5. The nature of the commodity, the class of purchasers, the mode of purchase and other
surrounding circumstances must also be taken into consideration.
6. Marks must be looked at from the first impression of a person of average intelligence
and imperfect recollection.
7. Marks must be compared as a whole, microscopic examination being impermissible.
8. The broad and salient feature must be considered, for which the marks must not be
placed side by side to find out the differences in design.
9. Overall similarity is the touchstone.
10. It is not the colour of the container or the difference of the product, but it is the
statutory right to the word that has to weigh.
11. The plaintiff need not in general show prima facie case that is required to be shown
must be something more than a case that will avoid the action being struck out as
frivolous or vexatious and even if the chance of success at the trial are only twenty per
cent, the statutory protection is absolutely necessary by way of an injunction in order
to prevent confusion or deception arising from similarity of marks.

3 (1999) PTC 540

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FOLLOWING ARE THE INSTANCES WHERE
THE ACTS CONSTITUTED INFRINGEMENT OF
TRADEMARK
i. TAKING SUBSTANTIAL FEATURE OF THE MARK
a mark is infringed by another trader, if, even using the whole of it upon or in
connection with his goods, he uses one or more of the essential features.
ii. ADDITIONS
Addition of extraneous matter, inconspicuous additions is infringement. If a person
incorporates whole or part of a registered Trademark of another, the addition of other
or matter would not save him from the charge of infringement.
iii. WHEN A MARK IS COPIED
If the defendant absolutely copied the mark and made a facsimile representation of it,
no further evidence is required. When the similarities are so close as to make it
impossible to suppose that such marks were devised independently of each other, in
absence of evidence of common origin, the conclusion that one party copied the mark
of another.
iv. MARKS LIKELY TO CAUSE CONFUSION
Likelihood of confusion occurs in situations where consumers are likely to be
confused or mislead about marks being used by two parties. The plaintiff must show
that because of the similar marks, many consumers are likely to be confused or
mislead about the source of the products that bear these marks. Where the visual,
aural and conceptual similarities is caused by the defendants trademark which causes
confusion in the minds of the public as to its origin, then the mark is held to be an
infringing mark. Furthermore, if the association between the marks causes the public
to wrongly believe that the respective goods comes from the same or economically
linked undertakings, there is a likelihood of confusion.4
v. USE OF RECONDITIONED OR SECOND ARTICLES
The use of plaintiffs mark on reconditioned goods may constitute infringement even
if it is clarified that goods are not original but reconditioned.5
vi. PRINTING OF LABELS
Unauthorised printing of labels of the plaintiff will constitute infringement. Moreover,
if a copyright subsists in labels, it will constitute infringement of copyright as well.

4 Compass Publishing BV vs. Compass Logistics Ltd., (2004) RPC 41

5 Rolls-Royce vs. Dodd, 1981 FSR 517

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vii. GOODS MANUFACTURED BY THIRD PARTY WOULD CONSTITUTE
INFRINGEMENT
When the owner of a mark gets the goods manufactured by a third party under a
contract, solely for the mark, sale of the goods bearing the mark by such a
manufacturer to other person would constitute infringement.
viii. MARKS USED ALONG WITH OTHERS MARK
Use of the plaintiffs mark along with the defendants name even if prominently
displayed constitutes infringement.6
ix. SIMILAR MARKS IN MEDICINAL PRODUCTS
When the goods or products involved are medicinal products, confusion of sources or
drugs or medicinal preparation caused by similar marks of the defendant would
constitute infringement, although similarity in the marks would have been very less.
x. MARKS WITH INTERNATIONAL REPUTATION USED
UNAUTHORISEDLY
In case of marks which have acquired international reputation, an action for its
protection against un-authorised use will lie even if the owner of the trademark does
not have any business activity in India.7

WHO CAN SUE FOR INFRINGEMENT?

The plaintiff in an infringement suit may be either:

1. The proprietor of the registered trademark or his legal successor.

2. A registered user of a trademark subject to a prior notice to the registered proprietor
and consequent failure of the registered proprietor to take any action against the
infringer.
3. An applicant for registration of a trademark. He can file an infringement suit to
protect his right to continue with the suit which will sustain only if his trademark is
registered before hearing the suit.
4. Legal heirs of the deceased proprietor of a trademark.
5. Any one of the joint proprietors of a trademark.
6. A foreign proprietor of a trademark registered in India when Infringement occurs in
India.

WHO CAN BE SUED?

6 Levi vs. Shah (1985) RPC 371

7 Torrent Pharmaceuticals Ltd. Vs. Wellcome Foundation Ltd. (Guj. H.C) 2001 (2)
CTMR 158

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 1. The infringer who directly by his action causes infringement or who uses or
contemplates or threatens to use a trademark infringing plaintiffs right.
2. The master responsible for his servants act of infringement. For example, a worker
who is engaged in the business of making false labels is a servant of the master who
orders the making of such labels. It is the master in such a case who is to be sued.
3. The agents of an infringer.
4. Directors and promoters of a limited company cannot be joined as co-defendants
unless they have personally committed or directed infringing acts.

JURISDICTION
Suit for infringement or for passing off is to be filed in the court not inferior to a District
Court having jurisdiction to try the suit.8 District Court having jurisdiction includes a District
Court within the local limits of whose jurisdiction, at the time of the institution of the suit or
other proceedings, the person instituting the suit or other proceedings, or where there are
more than one person, any of them who:-

a. Actually and voluntarily resides; or

b. Carries on business; or
c. Works for gain; can bring in an action against the defendant.

PERIOD OF LIMITATION
Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a
trademark is three years from the date of infringement. Where the infringement is a
continuing one, a new course of action arises every time an infringement occurs. For
example, a continued sale of infringing article would give rise to a fresh cause of action.

ISSUES IN INFRINGEMENT SUITS

The issues that arise in an infringement action are the following:-

8 Section 134 of the Trademarks Act, 1999

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 a. Whether the plaintiff is entitled to file a suit; i.e. whether he is proprietor of a
registered trademark or a registered.
b. Whether the use or proposed use of the mark by the defendant is an infringement of
the registered trademark.
c. Whether the defendant has succeeded in establishing one or more of the defences set
up by him.
d. If the plaintiffs succeeds in the suit, what reliefs he is entitled to?
e. Whether the plaintiff is entitled to any interlocutory relief?
f. Whether there has been an actual instance of deception and confusion amongst the
public?

EVIDENCE IN INFRINGEMENT ACTIONS

The fact of registration of the plaintiffs mark is to be proved by production of a copy of the
entry on the register certified by Registrar and sealed with the Trademark Registry. 9 The
certified copy will contain all the entries in the register relating to the mark including the
conditions, if any, subject to which a mark is registered. In all legal proceedings relating to a
registered trademark, the original registration of a trademark and all subsequent assignments
and transmissions will be prima facie evidence of the validity. The plaintiff must establish
that the use of the mark complained of comes within the scope of definition of infringement.
Where the defendant has absolutely copied the mark and made a facsimile representation of
it, no further evidence is required. Where the mark used by the defendant is not identical with
the registered trademark, the court has to determine the two marks are deceptively similar.
Opinion evidence is not admissible, but statement of witnesses to the effect that they
themselves would be deceived is admissible. Evidence as what constitutes the essential
feature of the mark is admissible.10

ACTS NOT CONSTITUTING INFRINGEMENT

(SECTION 30)
Following acts do not constitute infringement of the right to the use of a registered trademark:

1. Where the plaintiff has no title to sue;

2. Where the registration of the trademark is not valid and liable to be expunged;
9 Section 137 of the Trademarks Act, 1999

10 Prem Nath vs. Registrar, AIR 1972 Cal 261

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 3. When the use of the mark by the defendant is not an infringement under Section 29;
4. When a person uses a trademark in accordance with honest practices in industrial and
commercial matters that do not take unfair advantage.
5. When a person uses a trade mark in relation to goods or services indicating character,
quality or geographical origin
6. When a person uses a trade mark in relation to services to which the proprietor has
already applied the mark or registered user the object of the use is to indicate that the
proprietor or the registered user has performed the services.
7. When a person uses a trademark, which is subject to any conditions or limitations,
beyond the scope of such conditions or limitations will not constitute infringement.
8. When a person uses a mark in relation to goods to which the mark has been lawfully
applied, or where the registered proprietor has consented to the use of the mark. This
applies to cases where goods are purchased in bulk and sold in retail applying the
mark.
9. When a person uses a mark in relation to parts of a product or accessories to the goods
in respect of which the mark is registered if the use is reasonably necessary to indicate
that the goods so adapted.
10. When a person uses a mark or a similar mark in the exercise of a right conferred by
independent registration.
11. When a person assigns a trademark to another, this will not affect the right of that
person to sell or deal in the goods bearing that mark.

CASE ANALYSIS ON INFRINGEMENT

Castrol Limited Vs P.K. Sharma11

Facts of the case

Plaintiff is the registered owner of the trade marks Castrol, Castrol Gtx And Castrol Gtx 2 in
respect of oils for heating, lighting and lubricating. During the month of December 1994,
plaintiffs came to know that the defendant was carrying on business of selling multigrade
engine oil and lubricants under the trade mark 'Castrol Gtx & Castrol Crb' IN IDENTICAL
containers as used by the plaintiffs. Plaintiff filed a suit for perpetual injunction.

Held

11 2000 (56) DRJ 704

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Honble Delhi High Court while passing an ex parte decree held that the user of the said trade
marks by the defendants, who have no right whatsoever to use the same is clearly dishonest
and is an attempt of infringement. The prayer of the plaintiff is accepted and they are
restrained by a decree of injunction from selling, advertising directly or indirectly in
multigrade engine oil with the aforesaid trade marks in containers which are similar to the
containers being used by the plaintiffs.

Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Ltd.12

Facts of the Case

The plaintiff company manufactured drugs under the trade name "Calmpose". The defendant
company subsequently floated its similar product under the trademark "Calmprose".

Held

The Honble Delhi High Court held that the two trademarks having appeared phonetically
and visually similar and the dimension of the two strips being practically the same including
the type of packing, the colour scheme and manner of writing, it is a clear case of
infringement of trade mark and the ad interim injunction granted in favour of the plaintiff.

No one can use the trademark which is deceptively similar to the trademark of other
company. As in the case of Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech
Pharmaceuticals Pvt. Ltd.13, the plaintiff claimed that defendants are selling products under
the trademark FEXIM that is deceptively similar to the plaintiffs mark PHEXIN, which is
used for pharmaceutical preparations. The defendants are selling anti-biotic tablets with the
trademark `FEXIM' with the packing material deceptively similarly to that of the plaintiff,
whereby intending to not only to infringe the trademark but also to pass off the goods as that
of the plaintiff as the two marks are also phonetically similar. The Court restrained the
defendant from using the trademark `FEXIM' or any trademark deceptively similar to the
trademark of the plaintiff `', any label/packaging material deceptively similar and containing
the same patter PHEXIN n as that of the plaintiff.

12 AIR 1989 Delhi 44

13 [MANU/DE/2840/2005]

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If a party using the deceptively similar name only for a single shop and not spreading its
business by use of that particular name then also that party could be stopped from using the
trade name of other company. This is given in the case of M/s Bikanervala v. M/s Aggarwal
Bikanerwala14 where the respondent was running a sweet shop in with the name of
AGGARWAL BIKANERVALA and the plaintiff was using the name BIKANERVALA
from 1981 and also got registered it in the year 1992. hence they applied for permanent
injunction over the use of the name AGGARWAL BIKANERWALA for the sweet shop by
the defendant. Court held in favour of the plaintiff and stopped defendant from
manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food
articles for human consumption under the impugned trade mark/trade name/infringing artistic
label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade
name/infringing artistic work containing the name/mark 'BIKANER
WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or
deceptively similar to the plaintiff's trademark 'BIKANERVALA'.

If the trademark is not registered by any party but one party started using it before the other
then first one would have the legal authority on that particular mark. As in the case of
Dhariwal Industries Ltd. and Anr. v. M.S.S. Food Products 15, where appellants were using
the brand name MALIKCHAND for their product and the respondents were using the name
MANIKCHAND which is similar to the previous one and both parties have not registered
their trademarks. Court held in this matter that even though plaintiff have not registered their
trademark they are using it from long time back and hence court granted perpetual injunction
against the respondents.

Even if a company is not doing business in country, but it is a well-known company or well-
known goods, then also it would be entitled to get authority over its trademark. As given in
case of N.R. Dongare v. Whirlpool Corp. Ltd.16, where the defendants have failed to renew
their trademark WHIRLPOOL and in the meantime the plaintiffs have got registration of the
same. In this case court said that though there was no sale in India, the reputation of the

14 [117 (2005) DLT 255]

15 [AIR 2005 SC 1999]

16 [(1996) 5 SCC 714]

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plaintiff company was travelling trans-border to India as well through commercial publicity
made in magazines which are available in or brought in India.

The WHIRLPOOL has acquired reputation and goodwill in this country and the same has
become associated in the minds of the public. Even advertisement of trade mark without
existence of goods in the mark is also to be considered as use of the trade mark. The
magazines which contain the advertisement do have a circulation in the higher and upper
middle income strata of Indian society. Therefore, the plaintiff acquired transborder
reputation in respect of the trade mark WHIRLPOOL and has a right to protect the
invasion thereof.

WHAT THE PLAINT SHOULD CONTAIN?

There is no special form of pleading prescribed for an action for infringement. The pleadings
must contain a clear and conscience statement of all material facts relied upon by the
plaintiff, but not evidence. It should specifically allege what the defendant has infringed or
threatened to infringe in case of registered mark. In case of passing-off, the plaintiff must
specifically allege the wrong that has been done to his goodwill or business and also the act
of misrepresentation committed by the defendant. Particulars of the acts committed by the
defendant which form the basis of allegation must be given. Where the fraud is desired to be
raised, it must be clearly pleaded, and particulars of fraud must be stated. Where both the
infringement and passing off are combined in the suit, the plaintiff should state that by virtue
of such user the mark has become distinctive of his goods.

RELIEFS IN SUIT FOR INFRINGEMENT

Under Section 135 of the Trademarks Act. 1999, the reliefs which a Court may grant for
passing off and for infringement includes the following:-

1. Accounts of Profit
Account of profits are the actual profits which the defendant has made by infringing
the legal rights of the plaintiff. Sub-section (1) of Section 135 provides for grant of
relief which includes, at the option of the plaintiff, either damages or an account of

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 profit. In taking account of profits, the damage the plaintiff have suffered is totally
immaterial. The object of account of profit is to give to the plaintiff the actual profits
the defendant has made and of which it is established that the profits were improperly
made.17 Section 135 (3) expressly enacts that where the court is satisfied that it is a
case of innocent infringement, it shall grant only nominal damages. Further, in such
situation, the Court shall not grant an account of profits.
2. Damages
Damages are the compensation awarded to the Plaintiff by the defendant for the legal
injury caused by him to the plaintiff. Damages are the notional compensation paid to
the plaintiff irrespective of the actual amount of loss suffered by the plaintiff.

FOLLOWING ARE THE MATTERS WHICH ARE GENERALLY TAKEN INTO

ACCOUNT IN AWARDING DAMAGES INCLUDE THE FOLLOWING

i. Any loss of trade actually suffered by the plaintiff directly from the acts complained
of, or properly attributable to injury to the plaintiffs reputation, business, goodwill
and trade and business connection caused by the acts complained of.
ii. Damages may be awarded even though there is no deception.
iii. Where the defendants goods are similar in quality to the plaintiffs goods, the
defendants wrongful act may cause injury to the plaintiffs business reputation.

In Yahoo Inc. vs. Sanjay V. Shah18, the Delhi High Court held that he defendants passed off
their goods as if the goods were manufactured by the plaintiff using the deceptively similar
Yahoo. The Honble High Court not only granted permanent injunction restraining the
defendants from the use of the trademark Yahoo, but also decreed for damages amounting
Rs. 5, 05,000/- in favour of the plaintiff.

3. Injunction
Injunction is one of the reliefs which an aggrieved person may obtain in any suit for
infringement of a registered trademark or for passing off of the registered trademark
or unregistered trademark. The remedy of injunction is an effective remedy in
preventing the infringement of registered trademark or unregistered trademark.
Section 135 of the Trademarks Act, 1999 grants the relief of injunction. While
granting an injunction, the Court should always rely on the fact that whether the

17 Graham vs. Plate, Seb. P. 208.

18 2006 (32) PTC 157 (Del.)

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 balance of convenience lies with the plaintiff and whether an irreparable damage or
injury would occur to the plaintiff if injunction is not provided for against the
defendant.

Section 135 (2) further provides for ex parte injunction or any interlocutory order for
any of the following matters, namely:-

i. For discovery of documents;

ii. Preserving of infringing goods, documents or other evidence which are related
to the subject-matter of the suit;
iii. Restraining the defendant of or dealing with his assets in a manner which may
adversely affect plaintiffs ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.

In the case of Prabhu Shankar Aggarwal vs. Anand Kumar Deepak Kumar,19 the Delhi
High Court held as follows:-

Whenever a court considers it necessary in a particular case to pass an order of injunction

without notice to the other party, it must accord the reason for doing so, and also how the
object of granting injunction itself would be defeated if ex parte order is not passed, due to
delay. An order passed without such reasons is liable to be vacated.

INJUNCTION MAY BE OF FOLLOWING TYPES

I. Anton Piller Order

These are ex parte orders to inspect defendants premises. A Court may grant such an
order to the plaintiff where there is a possibility of the defendant destroying or
disposing of the incriminating material.
II. Mareva Injunction
In such an order, the Court has the power to freeze defendants assets where there
exists a probability of the assets being dissipated or cancelled so as to make
judgement against him worthless or un-enforceable.
III. Interlocutory Injunction
It is the most commonly sought and most often granted form of injunction. It serves to
take action against the defendant on the basis of past infringement. The interlocutory
injunction is an order restraining the defendant from continuance of the acts which
amount to infringement. It serves the purpose of preventing further infringement.
IV. Perpetual Injunction

19 2002 (24) PTC 292 (Del.)

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 It is an order restraining the defendant totally, for all times to come, from doing any
act which infringes the right of the proprietor of the trademark. Perpetual injunction is
generally granted when the suit is finally decided.

CONCLUSION
Thus, from the above discussion it can be said that protection of trademark is important not
only from the business point of view but also for the protection of consumer from fraud and
imposition. However, it is beneficial if combined action for infringement and passing off is
brought in one suit as incorporating a plea of infringement, if the mark gets registered can
always amend the plaint. But in an action for infringement alone the plaintiff may not be
allowed to include a fresh cause of passing off in order to save the action. Since the scope of
passing off action is wider than an infringement action, if an action fails, there is a chance of
other succeeding. As stated in the preamble of the Trademarks Act, 1999, the law provides for
a better protection of trademarks, the fact that the trademark law provides protection to
trademarks has come out to be a reality. The present Act expressly recognises the common

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law remedy and thus saves both the registered and unregistered trademarks from being
misused.

BIBLOGRAPHY

BOOKS REFERRED
Kailasam and Vedaraman Law of Trademarks and Patent Geographical-indications
Act-Intellectual Property Rights (Pocket Size Edn.)
Intellectual Property Rights in India by VK Ahuja
Venkateswaran on Law of Trademark law and Passing off by Kapil Wadhwa, Dr.
Abhishek Manu Singhvi
Law Relating to Intellectual Property Rights by Dr. M.K Bhandari

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JOURNALS REFERRED
India Law Journal
Indian Society of International Law
Journal of Law and Economics

WEBSITES VISITED
www.wikipedia.org
www.cll.com
www.tm-india.com
http://www.academia.edu/7795675/TRADEMARK_LAW_IN_INDIA_-
A_Critical_and_Comparative_Study
www.thomsonreuters.com
www.indlii.org

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