Well Known Trademarks and

its Passing Off: Sound Tracks

Priyanka Parag Taktawala

Well Known Trademarks and its Passing Off: Sound Tracks

Well Known Trademark:

well-known trade mark, in relation to any goods or services, means a mark which has become
so to the substantial segment of the public which uses such goods or receives such services that
the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first-mentioned goods or services.1

The main purpose of the section is to protect the trademark which has been identified with the
particular goods or services but also the protection of the mark from being used in relation to
other goods. Because if the consumers which uses the registered trademark products is likely to
be misled to believe that there is a connection between the two products or services in relation to
the source of origin2. The Trade and Merchandise Marks Act, 1958 did not deal with well known
trade marks.

In the Carrefour case, the plaintiff was the registered trademark holder of CARREFOUR
which was registered for variety of goods excluding furniture. And the defendants started using
the mark for the production of furniture. The court held that since the plaintiffs had established
the following things:

1) Developed goodwill in several countries.

2) 2500 registrations in various countries
3) Obtained several trademarks in India for the French name in 1995 and even gave
explanation as to how they came to decide this name while the defendants did not explain
the reason for choosing this name

Court held that the consumers for whom their product was identified associated the brand name
with the manufacturer and the consumers were likely to buy the products of the defendant as
having a connection in the course of trade and it was prima facie justified.3 The trader acquires

1
Section 2(1)(zg) Indian Trademark Act, 1999
2
James R. davis II Intellectual Property Law: Protect Your Brand From Counterfeiters American Bar Association
3
Carrefour v. V. Subburaman and Others 2007 (35) PTC 255 (mad).
rights of the trademark by using it in connection to the goods irrespective of the time duration of
such user or extent of his trade4

Escalator is the best example because Otis Elevator Companys promotion was used as
evidence to prove that the term had become generic and hence its registration was canceled. Otis
referred to the utmost in safe, efficient, economical elevator and escalator operation the term
escalator in the manner it was used proved that it had passed into the language as a generic
term5

Singer is also one of the well known trademarks that got recognized and became a generic word.
Singer was described particularly for a specific type of sewing machine and the Singer
Manufacturing Company was denied the right to stop competitors from calling their products as
Singer 6 After passage of time, the sewing machine got obsolete and the competitors no longer
used the same name and the rights of the proprietor were reestablished and then again the public
was aware about the source of one particular brand rather than generic term for all the products7

The familiar circle-R notice is a form of legal notice that the mark has been registered. A
registration notice would be considered proper only if it is actually been registered. The mere
filing of application is not enough to justify the same. Intentional use of false registration will
make the mark unregistrable8

For an unregistered mark, the simple term trademark or TM can be used as a notice. A symbol
T enclosed in a circle is very famous and has gained popularity in these years but it is not
advisable as it is not as effective as R it has no legally defined meaning9

Every trademark doesnt need the same care to protect it from being generic and losing its
validity. A new trademark requires attention to get it off to a proper start. The Eastman Kodak
Company thought it fruitful to stress on the slogan If it isnt Eastman, it is not Kodak10

4
M/s L.D. Malhotra Industries v. M/s Ropi Industries, PTC (Suppl) (2) 564 (Del)
5
Architectural Forum, January, 1946, p. 184, quoted in Haughton Elevator Co. v. Seeberg (Otis Elevator Company
substituted), 85 U.S.P.Q. 80, 81
6
Singer Mfg. Co. v. June Mfg. Co., 163 U.S 170 (1896)
7
Conclusion of Law No. 4 Singer Mfg. Co. v. June Mfg. Co., 163 U.S 170 (1896)
8
Four Roses Products Co. v. Small Grain Distilling And Drug Co., 29 F. 2d 959 (App. D.C. 1928)
9
Kellogg Co. v. National Biscuit Co., 305 U.S 111 (1938)
When a well known trademark is used by other good that are non competing in nature, a dilution
of the mark might result and the selling power would reduce

"Where a trade mark consisting of any invented word has become so well-known as respects any
goods in relation to which it is registered and has been used, that the use thereof in relation to
other goods would be likely to be taken as indicating a connection in the course of trade between
those goods and a person entitled to use the trade mark in relation to the first-mentioned goods,
then . . . the trade mark may on application in the prescribed manner by such proprietor be
registered in his name in respect of those other goods as a defensive trade mark .... ."11

It is seldomt hat a newcomera ttemptst o bodily adopt an arbitrarya nd coinedt rade-maraks

well-knowna nda s well-advertiseads the onei n issue. .. It is difficultt o find any reasoni n this
case for applicantw antingt o copyt he name" Kodak"e xceptt he desiret o profitf roma nother'gs
oodw il12

If there is a loss of distinctive quality of the mark into a generic term, it may be constituted as
dilution which might lead to total loss of the all the trademark rights. The public cannot deprive
the proprietor of his rights but the distinctive quality of the well known trademark will be
upheld as long as the end users are aware of the fact that the mark is associated with the product
or services of that particular manufacturer13

In the famous Asprin case14 the courts continued to protect the trademark irrespective of the
fact that it had become a house hold term thus the court held that trademark should not be
canceled solely on the basis of it coming a well known mark and the general public had become
habitual of referring to the mark as common noun.

10
Sidney A. Diamond Protect your Trademark by Proper Usage Journal of Marketing Vol. 26, No 3 (Jul., 1962), pp
17-22
11
Developments in the Law- Trade Marks and Unfair Competetion , 68 HARV. L. REV. 816, 851-52 (1955)
12
Robert, The New Trademark Manual, A Handbook On Protection Of Trademark In Interstate Commerce 163
(1947)
13
Ex Parte Societe Anonyme La Cellophane, Patentes y Marcas 195 (Argentina 1942)
14
Bayer & Co. v. United Drug Co., 272 Fed. 505 (S.D.N.Y. 1921)
Passing Off:

Registration helps the proprietor to sue for infringement of the trade mark that is already
registered irrespective of whether it is used by him or not. Registration gives the proprietor
monopoly over the right to use that particular mark. But the mark acquired by use are always
superior to the rights that are obtained by registration. Prior use of the mark is always protected
against monopoly rights though India follows first to register and not first to use. The mark has
noi meaning if it is not used for the same product. Non use within 1 year leads to the death of the
mark.

Infringement action is for the trade mark and not for the reputation of the proprietor selling it.
The infringer who copied the mark cannot plead it as a defense because he was dishonest in
copying the mark. Priority in use cannot be dishonest and so the infringer has a prima facie
strong evidence of prior use15

Registration does not create a trademark, a trademark is already existing, registration only gives
it protection. Registration doesnt grant any new rights, its the same that already existed in
common law. It is for the proprietor to decide whether or not he wants to get his trademark
registered. A trader acquires a right of property in a trade mark merely by using it in
connection with his goods or services irrespective of the length of such user and the extent of his
trade16

Section 27 of the Trade Marks Act, 1999:

27. No action for infringement of unregistered trade mark.

(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for,
the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing
off goods or services as the goods of another person or as services provided by another person,
or the remedies in respect thereof.17

15
Jerome Gilson Experts in Trademark Cases American Bar Association
16
M.s/ LD Malhotra Industries v. M/s Ropi Industries, PTC (Suppl) (2) 564 (Del)
17
Section 27 of the Trade Marks Act, 1999
Section 27 provides that no proprietor is entitled to initiate a suite to prevent the infringement of
unregistered trademark. Nor can he get any damages from such an infringement.
However, it recognizes the common law remedy to take action against any such person for
passing off his goods as the goods of the proprietor.
The registration of the mark provides exclusive monopoly rights to the proprietor to use that
mark in relation to the goods or services registered. It also helps the proprietor to obtain relief in
respect to the infringement. The exclusive rights would obviously be subject to the conditions
and limitations mentioned in the act18
28. Rights conferred by registration.
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give
to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark is registered and to obtain
relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to
any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical
with or nearly resemble each other, the exclusive right to the use of any of those trade marks
shall not (except so far as their respective rights are subject to any conditions or limitations
entered on the register) be deemed to have been acquired by any one of those persons as against
any other of those persons merely by registration of the trade marks but each of those persons
has otherwise the same rights as against other persons (not being registered users using by way
of permitted use) as he would have if he were the sole registered proprietor

Passing off is a common law remedy in which a person passes off his goods as the goods of
another. The laws on passing off are preserved and evolved with time notwithstanding any
conflict or overlap with the legislation19. The concept of passing off was first explained in Singer
Manufacturing Co. v. Loog20: No man can represent his goods or services as the goods or
servives of another and no one is permitted to use any mark, symbol or sign, device or anyother
means, whereby, without making any direct false representation to a buyer who buys from him

18
Section 29, Trade Marks Act, 1999
19
Inter Lotto (UK) Ltd. V. Comelot Group PLC, (2004) rpc 9
20
(1880) 18 Ch.D, 395
he enables such buyer to tell a lie or make false representation to someone else who is the end
consumer21
A man is not to sell his own goods or services under the pretence that it is the goods of the other
man. He is not permitted to practice such a deception not to use the means that contribute to that
end.he cannot be allowed to use the names, letters, marks by which he induces the buyers to
believe that the goods which he is trying to sell are manufactured by the other person22
Passing off has gone through a lot of changes. It was first based on the representation of the
goods being marketed as the goods of another proprietor. And now the concept is extended to
professional and non trading services and various forms of unfair trades where such
representation causes damage to the goodwill associated of the other person23

Essential characteristics of passing off action was first mentioned in Erven Warnink B. v.
Townend and Sons (Hull) Ltd24:
1) There should be a misrepresentation
2) Should be made by a person in the course of his trade
3) Made to his prospective customers or the end customers
4) Should be calculated to injure the business or the other trader
5) It should cause reasonable damage to the goodwill of the trader by whom the action is
brought will probably do so

Plaintiff has to prove 3 things that were mentioned in Reckitt and Colman Products Ltd. V.
Borden INC and others25:
1) There was a goodwill attached to the the goods or services which the plaintiff was
supplying and in the mind of the buyer it was associated with the plaintiffs good
2) There was a misrepresentation to the buyer that was likely to lead the people to believe
that goods offered by the defendant were the goods of the plaintiff
3) The plaintiff would suffer by reason of erroneous belief because of misrepresentation

21
Dabur India Limited v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd., 2012
22
Perry v. Truefitt, (1842) 6 Beav 66
23
Bata India Limited v/ M/s Pyare Lal and Co. AIR 1985 All. 242
24
1980 RPC 31
25
(1990) RPC 341 (HL)
An action of passing off can be initiated when the defendants name is used to deceive the public
so as to divert the business from the plaintiff. Where there is even a slight possibility of
confusion in business name, an injunction will be granted though the defendant adopted the
name innocently26

The defendants were dealing in jewellery. The court held that the business was in office spaces
and show rooms. The properties that would be purchased by the buyers were very expensive and
required indebth inquiry and rounds of negotiations before entering into any contracts and so the
likelihood of deception was minimal27
The court said that the fact that the defendant had obtained a registration of the design of the
bottle under the Designs Act did not stop him to move an action for passing off. Section 27(2) is
a statutory right that the remedy under common law for passing off was available.28
The action for passing off gives the way in which common law can protect the owners rights to
the mark. Passing off has 3 elements:29
1) Misappropriation of goodwill
2) By a competitor
3) Resulting in consumer confusion
All that is needed to prove passing off is that there is a likelihood that a significant number of
prospective buyers will be deceived with respect to the identity of the source of its goods or
services30
The passing off doctrain avoids the principle costs. If a second firm uses the first firms name or
distinctive trade dress that identifies the goods of the first firm and if the buyers purchase the
second firms goods, thinking of them the goods of the first firm, an action of passing off will lie,
because the second user has in effect taken the first users goodwill31
The common law action for misappropriation, in which the defendant is not accused of trading
on plaintiffs reputation by borrowing the mark but instead of converting to its own use the

26
Laxmikant V Patel v. Chetanbhai Shah (2002) 3 SCC 65 at p. 71
27
P.P Jewelers Pvt. Ltd. V. P.P Buildwell Pvt. Ltd. 2010 (43) PTC 1 (Del)(DB)
28
Gorbatschow Wodka KG v. John Distilleries Limited 2011 (47) PTC 100 (Bom) at p. 105
29
American Washboard Co. v. Saginaw Mfg. Co. 103 F. 281, 284 (6 th Cir. 1990)
30
Restatement of Unfair Competetion (Tent. Draft No 1, 1988)
31
Handler and Pickett, Trademarks and Trade Names- An Analysis and Synthesis II, 30 COLUM. L. REV 759, 765-
68 (1930
profits of the first users investment in establishing his reputation32 The common law will be
extended to protect only in geographic or product market in which the proprietor actually is
doing business33
Industrial craftsmen and articians were in a habit of marketing their handicraft with their name or
some mark which would be capable of identifying their product and services to denote the origin
of the goods made by them. All ceramics of Rome and silver of the Middle Ages were inscribed
with the name of the craftsmen whos handicraft it represented. This practice of marketing goods
with a distinctive name or mark has come down to this age what is termed as goodwill34
The tort of passing off imposes a strict liability upon the competitor who represents his goods in
a way to fool the purchasers to make them think as if the goods or services belong to the plaintiff
who is in competition to the defendant35
Different ways in which passing off can be committed:
1) The conduct of the business by the defendant under the same/ similar name to that of the
plaintiff36
2) Marketing the name confusingly similar to the name used by the plaintiff, provided that
that name, whether fanciful or descriptive and has also got a secondary meaning37 ieive tn
such a way so as to deceive the consumers38
3) The purpose of tort is to give compensation for the economic loss caused by the
competitor through misrepresentation by defendant 39
It is not easy to see why misleading of the public by close imitation of goods should be any
differently treated from misleading of the public in any other way40

It might be argued in the Coca Cola case presents difficulties for the critical analysis of Edge v.
Niccolls here advanced. For although a bottle is both functional and may also serve to identify

32
International News Serv v. Associated Press, 248 U.S 215 (1918) (liability when second firm sells first firms
news reports as its own)
33
J. McCarthy, supra note 1 p. 26.8-26.9
34
The International Trademark Question Lawrence Langer The Annals of the American Academy Of Political and
Social Science. Vol. 83 International Economics (May, 1919), pp. 133-140
35
McCulloch v. Lewis A. May Ltd. (1947) 2 All E.R. 845.
36
Jays Ltd. V. Jacobi (1933) Ch 411; Parker Knoll Ltd. V. Knoll International Ltd. (1962) R.P.C 265
37
Powell v. Birmingham Vinegar Brewery Ltd. (1897) A.C. 710
38
Edge v. Niccolls (1911) A.C. 693
39
Reddaway v. Banham (1896) A.C 199
40
Kerlys Law Of Trademarks and Tradenames (9th ed.) Para. 777
the product, it was assumed that the defendants would have been restrained from putting out a
beverage of the same color in a bottle of the same shape as that used by the plaintiffs. But this
case is distinguishable from the fact situation in Edge. First, the plaintiffs bottle was not of a
basic design and the defendants would have incurred no extra cost in making a bottle of a
different shape, whereas in Edge, the plaintiffs had adopted the simplest design for their porous
bags and sticks and it was admitted that the defendants would have been put to extra cost to
distinguish their product. Secondly, a bottle does not primarily have functional value in the use
of its contents, although it makes marketing easier, and the fact that the plaintiffs product came
in a bottle was not a factor motivating the purchaser to buy the plaintiffs product- if only
because all such beverages were sold in bottles- except in so far as the distinctive shape serves
to identify the product as the plaintiffs41
Defendant maybe restrained from bring out or producing a product of the same shape as that of
plaintiff when the shape itself identifies the product with a single source of origin. In order to
distinguish the flat ended cigars from those of the same shape it was not sufficient to supply
lables to be attached on the boxes from the cigars sold to public42
The defendants had infringed the plaintiffs trade mark in the name Oval Blue and also the
shape as that of plaintiffs since the plaintiffs had previously taken steps to prevent other
competitors who had made blue in the same shape43
The plaintiffs were manufacturing sisal matting and used striking designs on the same, the
defendants were matting an inferior material but had used same design as the plaintiffs. Suit for
passing off was refused on the ground that the designs used were not exclusively associated with
them44
In Universal Agencies case, interlocutory injunction was refused to the plaintiffs who alleged
that the competitors had distributed a corkscrew similar to their own product which had acquired
secondary meaning. But the court held that the plaintiffs were not entitled to claim monopoly in
shape of corkscrew. The shape was of no functional value45

41
Passing off and the Problem of Product Simulation. The Modern Law Review, Vol. 31 No. 6 (Nov., 1968) J.M
Evans
42
Elliott v. Hodgson (1902) 19 R.P.C. 518
43
Ripley v. Bandey (1897) 14 R.P.C 591
44
Hawkings and Tipson Ltd. V. Fludes Carpets Ltd (1957) R.P.C 8
45
Universal Agencies Ltd. Paul Swolj (1959) R.P.C 247
It is an absolute condition of any relief whatever that plaintiff in such cases show that the
appearance of his wares has in fact come to mean that some particular person makes them, and
that the public cares who does make them and not merely for their appearance and structure46
In New Way Packaged Products Ltd. Case, the court granted an interlocutory injunction
restraining the competitors from using the similar packaging to that of plaintiffs as it was original
and distinctive. Plaintiffs should prove an exclusive association of packaging.47
The court refused the plaintiffs an interlocutory injunction from passing off their bubble gum by
making them in the shape of false teeth. The plaintiffs failed to show that the shape was
associated specifically with them48

Sound Marks:

In recent times, The need to get a trademark for sounds has been booming across the globe. In
took the European Court 10 years to come to a conclusion that sound- marks are very much
capable of being concluded as trade-mark in the European countries. In Australia, amendment of
trademarks act was done in 1995 to widen the scope of the definition of a trade-mark so that
shape, colour, sound, or scent could be included in it. Meanwhile India is one of the few
countries which has opened its doors for registering sound marks as trademarks. In 2008, India
granted its first sound mark for the Yahoo three note yodel.49 Also, Allianz is said to have its
sound mark successfully registered in India. The Trademarks Registry has also accepted Intels
application for registration of its sound mark. The Trademarks Registry has also examined an
application for a sound mark filed by an Indian entity. ICICI Bank successfully secured
registration for its corporate jingle and is thus the first Indian entity to obtain a sound mark
registration a promising development in this area of trademark law.50

The Trademarks Act does not specifically and explicitly excludes sound marks from giving
registration and neither does it state that a trademark shall be visually perceptible. The act

46
Crescent Tool Co. v. Kilborn and Bishop 247 F. 299.
47
New Way Packaged Production Ltd. V. Lucking Ltd. (1960) R.P.C. 147
48
Blundell v. Sidney Margolis Ltd. (1951) 68 R.P.C 71
49
Pranav Gupata and Isha Tyagi ,Sound an unconventional trademark, Published: November 16,2015,
http://www.lawctopus.com/academike/sound-unconventional-trademark/
50
Rachna Bakhru and Manav Kumar ,Indias approach to unconventional trademark,Published :August,September
2011, http://rnaip.com/wp-content/uploads/2014/09/3305622266news.pdf
provides only that the trademark must be capable of being represented graphically besides being
capable of distinguishing51.

Therefore, to conclude we are in a position to state that a trademark can consist of a sound or a
musical note, with or without words. It is also important to note that no sound marks will
qualify, prima facie, if evidence of distinctiveness is not shown. A music piece consisting of
only one or two notes, movie songs and nursery rhymes aimed at children will not qualify as
sound marks.

1) ERVEN WARNIK BESLOTEN VENNOOTSCHAP V. J TOWNED AND

SONS(HULL) Ltd 1A IPR 66652

Facts: The plaintiff in this case was manufacturing a spirit based product i.e an alcoholic drink
with the name called ADVOCAAT. The plaintiffs were using spirit and eggs in the making of
this product also the majority of the shareholders i.e. 75% of the shareholders of the plaintiffs
company were from Netherlands. The above mentioned product gained popularity, reputation
and a goodwill in the English market. Now, the defendants in this case came up with a similar
kind of product which was of the same type as ADVOCAAT and they named it as OLD
ENGLISH ADVOCAAT. The plaintiffs filed a suit against the defendants for passing off and
infringement.

Contentions: The defendants here said that since the majority of the shareholders of the
plaintiffs company are from Netherlands and as such the English market wont get affected.
Therefore, they cannot be held liable for passing off. Secondly, the plaintiffs did not get their
trademark registered hence again they will not be liable for infringement.

Judgment: The court in this case said that even though it is not a registered trademark but it had
gained reputation and goodwill in that particular market because of its distinctive features.
Hence, the defendants shall be held liable for passing off and infringement. The judge in this

51
Luthra and luthra law offices, International report- Registering unconventional trademarks, Published:
August/September 2009 in World Trademark Review, http://www.iam-media.com/reports/detail.aspx?g=2585df7b-
fa7a-469d-85d2-601788181d36
52
1A IPR 666
case i.e. Lord Diplock elaborated and formulated a five point test for the passing off and
infringement of goods. They being

There should be a misrepresentation of the plaintiffs trademark or product.

That misrepresentation should be done by trader during the course of trade.
Due to the misrepresentation, the consumers are in confusion and are at a certain kind of
loss.
The above mentioned three points are affecting and injuring the manufacturer.
As a result of the above mentioned injury, damages shall be sustained by the person
causing such damage.

2) N.R. DONGRE AND OTHERS V. WHIRLPOOL CORPORATION AND

ANOTHER 1996 PTC (16) 583 (SC)53

Facts: The Whirlpool Corporation is a big multinational corporation which is incorporated in U.S
.A and the company mainly dealt in manufacturing, sales, distribution and servicing of washing
machines of all types. The plaintiff is using the trademark since 1937 and since then they have
managed to get 2000 trademark registrations in over 65 countries. The plaintiffs got the
registration of their trademark in India in the year 1956. The plaintiffs again could not renew
their trademark in 1977 but the company was constantly supplying its product to the U.S
Embassy in India. In 1986 the defendants had applied for registration of their trademark with the
name whirlpool. When the application was published in the newspaper the plaintiffs opposed
it. The Plaintiffs opposition was denied on the basis of non-use and non-reputation in India and
the registrar said that no confusion will be caused if the defendants are granted the same
trademark. The plaintiffs then filed an appeal against the order of the registrar seeking relief
under section 46 and 56 of the Indian Trademark Act, 1958. While the suit was pending before
the honble high court, the defendants were selling washing machines with the name whirlpool.
The plaintiffs purchased the same and found it to be off low quality. The plaintiffs then
instituted a suit against them asking for grant of permanent injunction and claimed damages for
passing off their goods.

53
1996 PTC (16) 583 (SC)
Contentions: Whirlpool said that though it didnt renew its trademark in India but it had its
trademark registration all across the world and also it had very good reputation and goodwill in
the Indian market. On the other hand the defendants argument was that the plaintiff were not
registered in India hence, making the defendants eligible to get trademark under the same name
and also the concept of trans-border reputation is not applicable in India.

Judgement: The court here clearly said that even though trans-border reputation is not allowed
in India still everybody is aware about the brand Whirlpool in India. Everybody had accessibility
to its product as it was supplying it to the U.S Embassy in India. The court said that it is an
extended version of well-known trade mark and hence trans-border reputation shall be held
applicable in this case. The defendants were held liable for passing off of the goods in the name
of the original company and hence permanent injunction was also granted.

3) TIME WARNER ENTERTAINMENT CO. V. A.K. DAS AND OTHERS, DELHI

HIGH COURT 1997 PTC 1754

Facts: The Time Warner Company is company which is engaged in TV programming and its
registered under the trademark named HBO. The company is in existence since 1972 and
operates in over 96 countries and has its trademark registered over in 140 countries. The
company filed for application of trademark in India in the year 1994. The plaintiffs were about to
enter into a joint venture with A.K. Das in India but this could not be possible because A.K. Das
was not able to come up with a proper business as per the MOU. Later, in 1996 the plaintiffs
found out those defendants are planning to come up with a television service named CBO (Cable
box office). Subsequent to this the plaintiffs filed a suit in the high court for passing off of their
good and asked for permanent injunction.

Contentions: The plaintiffs contention is this case was that they have a very good reputation and
goodwill across the world. And they have established this goodwill over a very long time and
hence they have exclusive ownership over the said trademark. They also said that the defendants
were initially getting into a joint venture with them and when that did not work they came up

54
1997 PTC 17
with CBO so as to get a head start in their business as they were new entrants in the Indian
market. On the other hand the defendants contention was that they were in this business of
commercial exhibition of Hindi movie since four to five years under the name cable video India
limited and it was in 1995 they decided to make it an exclusive Hindi movie channel under the
name CBO. They also contended that the terms box office are generic terms and they do not
belong to anyone.

Judgement: The case was decided in favor of the plaintiffs and the court here said that y had the
fraudulent intention of passing off the goods of the plaintiff as they were operating under a
different name and subsequent to the failure of joint venture they changed the name to CBO.
Also , the fact that box office is a generic term and does not belong to anyone , does not
disqualify the plaintiffs to get trademark over it as they have been using this name from a very
long time and have built a reputation for the same. The defendants were held liable for passing
off of goods and permanent injunction was granted for the same.

4) PLAYBOY ENTERPRISE V. BHARAT MALIK AND ANOTHER, DELHI HIGH

COURT 2001 PTC(21) 32855

Facts: Playboy enterprise is the publisher of a well known adult magazine. The magazine was
first published in the year 1953 in U.S.A and since then it has gained a lot of popularity and also
the plaintiff is the only owner of the trademark Playboy which includes India as well. The
defendants in this case came up with a magazine called Playway which also was of same nature
as that of Playboy having adult contents in it. The plaintiffs when they came to know about it
filed a suit of permanent injunction and that the defendants were passing off the goods.

Contention: The plaintiffs contention in this case was that the defendants used the word play
with an ill motive and intention. Also the word playway is phonetically same as that of playboy.
The defendants on the other hand their magazine registered in the Press and registration of
Books, Act 1867. They said that the plaintiffs magazine was not registered in PRB Act. They
further contended that the word was not coined by the plaintiffs but it was coined by
J.M.SYNGE in his famous book called the Playboy of the western world. The defendants also
55
2001 PTC(21) 328
contended that there was no similarity between the contents of the two magazines. Playboy
contained pictures of fully nude foreign models whereas in playway topless nude Indian models
pictures were there.

JUDGEMENT: The court here held that even though plaintiffs magazine was not registered in
PRB act but because of its long and continuous use and because of its popularity all around the
world it is entitled to get exclusive ownership of the trademark Playboy. Hence, the permanent
injunction was granted and the defendants were held liable for passing off of the plaintiffs
product.

5) CADILA HEALTHCARE LIMITED V. CADILA PHARMACEUTICAL LTD

(2001) 5 SCC 7356

In this case the court laid down certain tests which will help in determining passing off. The
following factors are to be determined while determining passing off for unregistered trademark:

The first thing to be seen is the nature of the trademark whether it is label mark or word
mark or composite mark.
The second thing is how similar the marks are i.e. degree of resemblance between the
marks.
The third thing is the nature of the goods in respect to the trademark that they are using.
The fourth thing similarity between the goods of the rivals trademark needs to be seen.
The fifth thing is to check the class of purchasers who are actually going to buy the goods
which bear the trademark.
The sixth thing is the mode in which the good is being purchased or the order is being
placed for the same.
The last point is to notice surrounding situations which may help in finding out the
dissimilarity between the competing marks.

56
(2001) 5 SCC 73
 6) DAIMLER BENZ AKTIEGESELLSCHAFT AND ANOTHER V. HYBO
HINDUSTAN 1994 PTC 28757

Facts: The plaintiffs in this case are a very reputed car company in the category of luxury cars.
They have a subsidiary company in India as well. The plaintiffs have filed a suit for permanent
injunction against the defendants. The defendants in this case have been using the trademark
benz along with its symbol of three pointed human being for selling off undergarments.

Contention: The plaintiffs in this case have contended that they have created a goodwill and
reputation over a long span of time and using their trademark for selling undergarments or any
other thing is passing off the goods using their name and clearly in infringing their trademark.
The defendants contention is that the trademark benz and its symbol they are using to sell of
product which is not at all similar to that of the product that is actually manufactured by benz i.e.
cars hence their cannot be any kind of confusion per se in the minds of the consumer as they are
two very different kinds of product.

Judgement: The court in this case granted permanent injunction and made certain observations,
they being:

.There are marks which are different from other marks. There are names which are
different from other names. There are names and marks which have become household
words. Benz as name of a Car would be known to every family that has ever used a
quality car. The name Benz as applied to a car, has a unique place in the world. There
is hardly one who is conscious of existence of the cars/automobiles, who would not
recognize the name Benz used in connection with cars..

.In my view, the Trade Mark law is not intended to protect a person who
deliberately sets out to take the benefit of somebody elses reputation with reference to
goods, especially so when the reputation extends world wide. By no stretch of
imagination can it be said that use for any length of time of the name Benz should be
not objected to.

57
1994 PTC 287
 None should be continued to be allowed to use a world famed name to goods which
have no connection with the type of goods which have generated the world wide
reputation.

Benz is a name given to a very high priced and extremely well engineered
product. In my view, the defendant cannot dilute, that by user of the name Benz
with respect to a product like under-wears

7) TATA SONS LTD V. THE ADVANCED INFORMATION TECHNOLOGY

ASSOCIATION, CASE NO. D2000-004958

Facts : The plaintiff is an Indian company. It is one of the prominent company of the Tata
Group of Companies. The word "TATA" is the trade mark of Tata group of companies. Every
activity or company related to Tata will function under the Trademark of TATA. "TATA" is a
very rare and distinct Indian surname and was the surname of the founder of the Tata group of
companies which was established in the year 1917. The plaintiff is the registered owner of the
trade mark TATA in India. The first time registration was in the year 1942. It also has
registration in various other countries viz., Bangladesh, Brunei, Kuwait, Malaya, Nepal, Sabah,
Sarawak, Singapore and Pakistan. The Respondent is this case have started a website and
registered its domain name <tata.org> with NSI.

Contentions: The contentions of the plaintiff are that they are the exclusive owner of the
mark/name TATA. The plaintiffs contend that the respondent have a malafide intention as they
got the domain name "tata.org" registered in its name but has not got the web site activated. The
using of the same name would lead to confusion among the minds of the consumers and can
damage the plaintiffs. The plaintiffs are using the name only to pass off their goods using the
plaintiffs well-known trademark name. The Respondent did not give any reply for the same.

JUDGEMENT: The decision was that the respondents domain name shall be transferred to the
plaintiffs. The panel explicitly mentioned that the word TATA is a well-known trademark. It was

58
CASE NO. D2000-0049
said that the word TATA I synonymous to quality of products and it is highly reliable. Every
strata of the Indian society is aware of the TATA products giving it distinct feature.

8) MAHENDRA AND MAHENDRA PAPER MILLS LTD. V. MAHINDRA AND

MAHINDRA LTD

Facts: The defendants in this case started using the word Mahendra and Mahendra for their
business activities. The plaintiffs filed an objection to this as they were using the term Mahindra
and Mahindra for over 50 years now and their trademark is now a well-known trademark as they
have built good reputation and goodwill for themselves.

JUDGEMENT: The Supreme Court in this case held that the name Mahindra and Mahindra have
acquired distinctiveness in their business domain. The consumers associate the trademark
Mahindra with a certain standard quality of goods and services. Hence, the use of the name
Mahendra and Mahendra by the defendants for their business activities would lead to
confusion in the minds of the people and they may find a connection with the plaintiffs company.

9) CARREFOUR V. SUBBURAMAM AND OTHERS, 2007 (35) PTC 22559

Facts: The plaintiff is the owner of a trademark called CARREFOUR which is registered in
India for a number of products but it excludes furniture. The plaintiff filed a suit against the
defendants when they found out that even the defendants were trying to operate their business
under the same name. The plaintiffs had an explanation as to how they derived at the French
word Carrefour as their trademark but the respondents had no explanation for the same.

JUDGEMENT: The court in this case found out that the plaintiffs had developed a goodwill and
reputation in several countries. The plaintiffs also had 2500 trademark registrations across
various countries for various products including furniture. They have been operating in India
from 1995 which is a considerably very long span of time. The court here said that the
defendants use of the plaintiffs trademark would create certain confusion in the mind of the

59
2007 (35) PTC 225
people and they might associate the products with the plaintiffs trademark. Hence, the
defendants trademark is eligible to get cancelled.

10) DURGA DUTT SHARMA V. NAVRATNA PHARMACEUTICALS

LABORATORIES (1965) 1 SCR 73760

Facts: The plaintiffs that are navratna pharmaceutical laboratories are owners of two registered
trademarks one is navratna pharmaceuticals and other navratna laboratories. The defendant in
this case wanted to get the trademark registered in the name navratna pharmacy. He was denied
registration on the ground that both the trademark are very similar and it may lead confusion in
the minds of the people. The Navratna Pharmaceuticals Laboratories filed a suit against the
defendant on the grounds of passing off and claimed for injunction. Then a subsequent case was
filed by the defendant in the high court wherein he just asked that the word navratna shall been
cancelled from the trademark registry as it is a very common hindi word and no single person
can claim ownership over that name. The high court said that the name cannot be removed from
the registry. Following this the defendant again filed another suit in the supreme court for
cancellation of the word navratna from the trademark registry.

JUDGEMENT: The Supreme Court said that navratna pharmaceutical and navratna pharmacy
both are not eligible to get registration under this name. But at the same time if a particular trade
name has acquired distinctiveness then in that case they are eligible to get registration. In this
case the Navratna Pharmaceutical Laboratories have been operating in Indian Market for over 50
years and have now become a well-known trademark. And since both the names are phonetically
similar it would lead to confusion in the minds of the consumers and hence cannot be granted
registration.

60
(1965) 1 SCR 737
 11) ROLEX SA V. ALEX JEWELLERY PRIVATE LTD, 2009 (41) PTC 284 (Del)61

FACTS: The plaintiffs in this case are owners of a well known trademark Rolex and have been
into existence with the same name from a very long time. The defendants came up with a
trademark called Alex Jewellery pvt. ltd which according to the plaintiffs was deceptively similar
to their trademark name and the defendants are using this name purposely so that they can pass
off their goods using the plaintiffs goodwill and reputation.

JUDGEMENT: The court held that Rolex is a well known trademark among a certain section of
the people who use high priced watches and hence using of the word Alex by the defendants
may cause confusion in the minds of such class of people.

12) PARLE PRODUCTS (P) LTD V. J.P. AND CO. ,(1972) 1 SCC 61862

The court in this case held that in order to come out to a conclusion that one mark was
deceptively similar to that of the other, the essential and broad features of the two are to be
considered. It should not be placed side by side to find out the differences and if at all any
differences are found, it needs to be checked whether such similarity is of such a nature so as to
prevent one design from being mistaken for the other.

13) HEALTH AND GLOW RETAILING PVT. LTD V. DHIREN KRISHNA PAUL,
2007 (35) PTC 474 (MADRAS).63

Facts: The defendants in this case were using the same trademark as that of the plaintiff i.e.
health and glow. The plaintiffs have been using this trademark from a very long time and had
built a reputation and goodwill for themselves thereby making their trademark as a well-known
trademark. The plaintiffs had a good explanation as to how they arrived at this formation but the
defendants had no explanation to the same.

61
2009 (41) PTC 284 (Del)

62
(1972) 1 SCC 618
63
2007 (35) PTC 474
JUDGEMENT: The court held that the defendants were trying to use undue advantage of the
reputation of the plaintiffs trademark and they have used their trademark without any due cause.
The defendants were held liable for passing off and infringement of the plaintiffs trademark.

14) KABUSHIKI KAISHA TOSHIBA TRADING AS TOSHIBA CORP. V. S.K. SIL ,

2011 (47) PTC 484 (DEL)64

The court in this case said that a well-known trademark is provided protection under our
statutory provisions irrespective of whether it is an Indian trademark or a foreign trademark. In
this case Toshiba was considered to be a well-known trademark after considering the following
factors, they being:

The geographical limit of the trading area where the mark was being utilized.
The duration of the mark from when its being used.
The size of the business for which the trademark is being used.
The promotion activities done by the trademark holder across the world including India
i.e. marketing, advertising etc.
The number of registrations for the mark across the world.
The number of consumers who actually use the goods bearing the same trademark.

15) RECKITT AND COLMAN PRODUCTS LTD. V. BORDEN INC AND OTHERS,
(1990) RPC 341 (HL)65

The classical trinity test for claim off passing off was laid down in this case. The three things
to be seen to consider it as passing off are as follows:

There has to be goodwill or reputation attached to the products or services which the
plaintiffs supply in the minds of the consumer.
There should be misrepresentation i.e. the goods sold by the defendants should create
confusion and make people believe that those goods are plaintiffs goods.

64
2011 (47) PTC 484 (DEL)
65
(1990) RPC 341 (HL)
 On account of such misrepresentation the plaintiff is likely to suffer certain loss in his
business activity.

16) GORBATSCHOW WODKA KG V. JOHN DISTILLERIES LIMITED, 2011 (47)

PTC 100 (BOM)66

FACTS: The plaintiff here was a manufacturer of one of the premium brands of vodka in the
world. The plaintiffs marketed the vodka in a bottle which had quite unique and distinctive
shape. The plaintiff had applied for its registration of its bottle shape which was pending. In the
meanwhile the defendant was to launch its vodka brand with a trademark called salute whose
bottle shape was more like that of the plaintiffs bottle. The plaintiff filed a suit against the
defendants for passing off and infringement of its trademark and demanded for a permanent
injunction.

JUDGEMENT: The court here said that the plaintiff has established a trans-border reputation for
themselves and they are a well-known brand across the world including India. The court also
noted that the shape given to the plaintiffs vodka bottle was clearly to mark its distinctiveness in
the market. The defendants bottle shape was considered to be similar to that of the plaintiffs and
also the plaintiffs could not really give a valid or bona fide explanation to the shape of the bottle.
The case was decided in favor of the plaintiffs and injunction was granted and the defendants
were held liable for passing off and infringement of goods.

17) JOLEN INC. V. DOCTOR AND COMPANY, DELHI HIGH COURT 2002 PTC
(25) 2967

FACTS: The plaintiffs in this case were manufacturers of bleach cream in the name of JOLEN.
They were manufacturing this product since 1955 all across the world. They plaintiffs sold the
cream in a blush green carton and the word Jolen was written on white with j in small case and
the rest of the letters in the upper case. They had their trademark registered in various countries
which includes India as well. In the year 1992 the plaintiffs found out that the defendants were
also selling bleach cream under the name Jolen and also used the color combination and

66
2011 (47) PTC 100 (BOM)
67
2002 PTC (25) 29
everything in the same way. The plaintiff then filed a suit in the court and asked for permanent
injunction and also the defendants shall be held liable for passing off and infringement of the
plaintiffs trademark.

JUDGEMENT: The court in this case said that the word jolen is a unique word and it has been
invented and the fact that both the trademark are exact replica of each other other it definitely
means defendants have copied it from the plaintiffs. The plaintiffs have been selling their
product under this trademark for a very long time and have built a goodwill and reputation for
themselves across various countries. The defendants were trying to pass off their goods using the
good reputation of the plaintiffs trademark. Hence, Permanent injunction was granted in this
case.

18) SATYAM INFOWAY LIMITED V. SIFYNET SOLUTIONS PVT. LTD, AIR 2002
SC 354068

FACTS: The plaintiffs in this case had registered several domain names for its business like
sifynet.com, sifymall.com etc in the year 1999. They said that the word sify is a combination of
its business name satyam infoway. The plaintiffs had acquired great goodwill and reputation in
the Indian market. The defendants in this case started using siffy as their domain name. The
plaintiffs filed a suit against the defendant demanding for permanent injunction.

JUDGEMENT: The court here said that the plaintiffs were prior user of the word sify and they
had gained reputation and goodwill in the market with this name in relation to internet and
computer based services. Letting the defendants use the word siffy would create confusion in the
minds of the people. The court granted permanent injunction in this case.

68
AIR 2002 SC 3540
 19) BATA INDIA LTD V. PYARE LAL AND CO. , AIR 1985 ALL 24269

FACTS: The plaintiffs had filed a suit against the defendants who were using the name
BATAFOAM to sell products like mattress, sofa, cushions etc. The plaintiffs have been using the
trademark BATA from a very long period of time and have established goodwill and reputation
in Indian market with the same trademark. The plaintiffs had demanded for a permanent
injunction and also destruction of all the labels used by the defendants to sell products under the
name BATA.

JUDGEMENT: The court in this granted permanent injunction and destruction of all the labels
and said that the use of the word BATAFOAM by the defendant to sell of the goods would create
confusion in the minds of the people. Also that the plaintiffs have acquired goodwill and
reputation in the Indian market and are a well-known trademark and the defendants were merely
trying to pass off their goods using the goodwill of the plaintiff.

20) BIKANERVALA V. NEW BIKANERVALA, 2005 (30) PTC 113 ( DELHI)70

FACTS: The plaintiffs in this case are into manufacturing and marketing of enthnic food items
including sweets and namkeens. They have been operating in the Indian market from the past
100 years and have established a tremendous goodwill and reputation for themselves. The
defendants in this case came up with their business and named it as new bikanervala. The
plaintiffs came to know about it and they filed a case against the defendants. The defendants
argued that nobody can have a trademark on a name which has geographical indication and
hence they using the word New trademark is completely valid and it will not amount to passing
off and infringement.

JUDGEMENT: The court here said that even though the word Bikaner has a geographical
indication to it but when it gets combined with vala it becomes a all together a new and
innovative word. Also the Trademark Bikanervala has been in the Indian market for over 100
years and they have achieved a reputation and goodwill which is beyond imagination. It is a
well-known trademark and the defendants using the word New Bikanervala will lead to

69
AIR 1985 ALL 242
70
2005 (30) PTC 113 ( DELHI)
confusion in the minds of the consumers and they might associate defendants sweets and
namkeens to that of the plaintiffs. Hence, the defendants shall be held liable for the passing off
and permanent injunction was granted in this case

Bibliography:
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Author(s): Stephen L. Carter
Source: The Yale Law Journal, Vol. 99, No. 4 (Jan., 1990), pp. 759-800

2) The International Trademark Question

Author(s): Lawrence Langner
Source: The Annals of the American Academy of Political and Social Science, Vol. 83,

3 ) Passing-off and the Problem of Product Simulation

Author(s): J. M. Evans
Source: The Modern Law Review, Vol. 31, No. 6 (Nov., 1968), pp. 642-655

4 ) Trademarks and Competition: The Recent History

Author(s): Daniel M. McClure
Source: Law and Contemporary Problems, Vol. 59, No. 2, The Lanham Act after Fifty Years (
Spring, 1996), pp. 13-43

5 ) Antitrust Problems in Trademark Franchising

Author(s): James K. Eckmann
Source: Stanford Law Review, Vol. 17, No. 5 (May, 1965), pp. 926-941

6 ) Trademark Strategy Revisited

Author(s): Dorothy Cohen
Source: Journal of Marketing, Vol. 55, No. 3 (Jul., 1991), pp. 46-59

7 ) Unfair Competition. Remedies for Passing off Defendant's Goods Through Plaintiff's
ExclusiveDealers
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8) Legal Recourse against Trademark Infringement in Jordan

Source: Arab Law Quarterly, Vol. 12, No. 3 (1997), pp. 330-334
Published by: Brill

9) Properly Used, Trademarks Are Forever

Author(s): Sidney A. Diamond
Source: American Bar Association Journal, Vol. 68, No. 12 (December, 1982), pp. 1575-1579

10 ) Experts in Trademark Cases

Author(s): Jerome Gilson
Source: Litigation, Vol. 8, No. 2, EXPERTS (Winter 1982), pp. 40-43, 56-57

11) The International Regulation of Intellectuel Property

Author(s): Keith E. Maskus
Source: Weltwirtschaftliches Archiv, Bd. 134, H. 2 (1998), pp. 186-208

12 ) INFRINGEMENT OF THE TRADEMARK "COCA-COLA"

Author(s): DON N. CURDIE
Source: The Business Lawyer, Vol. 27, No. 1 (November 1971), pp. 297-310

13) Protect Your Trademark by Proper Usage

Author(s): Sidney A. Diamond
Source: Journal of Marketing, Vol. 26, No. 3 (Jul., 1962), pp. 17-22

14) Trademark Strategy

Author(s): Dorothy Cohen
Source: Journal of Marketing, Vol. 50, No. 1 (Jan., 1986), pp. 61-74

15) The Influence of Instructions on Respondent Error

Author(s): Edward M. Smith and Joseph Barry Mason
Source: Journal of Marketing Research, Vol. 7, No. 2 (May, 1970), pp. 254-255

16) The Problem of Trademark Dilution and the Antidilution Statutes

Author(s): Walter J. Derenberg
Source: California Law Review, Vol. 44, No. 3 (Jul., 1956), pp. 439-488

17) The term 'well-known' in South African trade-mark legislation: some comparative
interpretations
Author(s): Roshana Kelbrick
Source: The Comparative and International Law Journal of Southern Africa, Vol. 38, No. 3 (
NOVEMBER 2005), pp. 435-452

18) Hey, that's my name! Trademarks, copyrights, patents what you need to know
Author(s): BAILA H. CELEDONIA
Source: Business Law Today, Vol. 4, No. 1 (SEPTEMBER/OCTOBER 1994), pp. 52-57

19) INTELLECTUAL PROPERTY LAW: PROTECT YOUR BRANDS FROM

COUNTERFEITERS
Author(s): James R. Davis, II
Source: GPSolo, Vol. 28, No. 2, The Best Articles Published by the ABA (MARCH 2011), pp.
36-37, 46
20)Colour and Sound Marks: A Brief Overview of Civil Protection in Light of Jordanian
Legislation
Author(s): Ramzi Madi
Source: Arab Law Quarterly, Vol. 24, No. 1 (2010), pp. 41-72

21) ERVEN WARNIK BESLOTEN VENNOOTSCHAP V. J TOWNED AND SONS(HULL)

Ltd 1A IPR 666

22) N.R. DONGRE AND OTHERS V. WHIRLPOOL CORPORATION AND ANOTHER

1996 PTC (16) 583 (SC)

23) TIME WARNER ENTERTAINMENT CO. V. A.K. DAS AND OTHERS, DELHI HIGH
COURT 1997 PTC 17

24) PLAYBOY ENTERPRISE V. BHARAT MALIK AND ANOTHER, DELHI HIGH COURT
2001 PTC(21) 328

25) CADILA HEALTHCARE LIMITED V. CADILA PHARMACEUTICAL LTD (2001) 5

SCC 73

26) DAIMLER BENZ AKTIEGESELLSCHAFT AND ANOTHER V. HYBO HINDUSTAN

1994 PTC 287

27) TATA SONS LTD V. THE ADVANCED INFORMATION TECHNOLOGY

ASSOCIATION, CASE NO. D2000-0049

28) MAHENDRA AND MAHENDRA PAPER MILLS LTD. V. MAHINDRA AND

MAHINDRA LTD

29) CARREFOUR V. SUBBURAMAM AND OTHERS, 2007 (35) PTC 225

30) DURGA DUTT SHARMA V. NAVRATNA PHARMACEUTICALS LABORATORIES

(1965) 1 SCR 737

31) ROLEX SA V. ALEX JEWELLERY PRIVATE LTD, 2009 (41) PTC 284 (Del)

32) PARLE PRODUCTS (P) LTD V. J.P. AND CO. ,(1972) 1 SCC 618

33) HEALTH AND GLOW RETAILING PVT. LTD V. DHIREN KRISHNA PAUL, 2007 (35)
PTC 474 (MADRAS).

34) KABUSHIKI KAISHA TOSHIBA TRADING AS TOSHIBA CORP. V. S.K. SIL , 2011
(47) PTC 484 (DEL)
35) RECKITT AND COLMAN PRODUCTS LTD. V. BORDEN INC AND OTHERS, (1990)
RPC 341 (HL)

36) GORBATSCHOW WODKA KG V. JOHN DISTILLERIES LIMITED, 2011 (47) PTC 100
(BOM)

37) JOLEN INC. V. DOCTOR AND COMPANY, DELHI HIGH COURT 2002 PTC (25) 29

38) SATYAM INFOWAY LIMITED V. SIFYNET SOLUTIONS PVT. LTD, AIR 2002 SC
3540

39) BATA INDIA LTD V. PYARE LAL AND CO. , AIR 1985 ALL 242

40) BIKANERVALA V. NEW BIKANERVALA, 2005 (30) PTC 113 ( DELHI)