Avadhoot SumantAdvocate,

15, Chandan Bldg, IInd Floor,B/h, Jubilee Garden,Near Sardar Bhavan.Vadodara 390 001.

Phone:-[0265] 2433362, 2438763.

email:- vidhi_avadhoot@yahoo.com

TRADEMARK LITIGATION

PASSING OFF AND INFRINGEMENT

What is there in a name, that which you call a Rose, by any other name, would smell as sweet - William Shakespeare.

SARIDON is the most valuable asset of our company - President Roche.

Trademark of Malborough - A cowboy on a horse, with a cigarette dangling is worth $ 40 billion. Coca-Cola Brand names are worth $ 30 billion. Parle earned more than 300 crores from human thumb and a picture of lemon.

TRADEMARK is a common law IPR. Registration of Trademarks is not compulsory; only optional : But always desirable.

There are different types of marks. Trademark, is a type of identification tagged to goods in trade, to show a connection between the goods and the person entitled to use the mark. It enables a purchaser to make a knowledgeable choice.

REGISTRATION OF TRADEMARKS:

1) Who may apply for Trademark? 2) Where the Trademark Application can be made? 3) Importance of Search of Registered Trademarks and pending applications.

Unregistered Trademark is also protected

Reason is property in mark is considered by law on account of

its use in trade.The trademark without being

used in trade has no recognition in law.

Violation of rights in respect of trademark

Adaptation / Lifting of the mark of another or the similar mark.

Effect of false claim on proprietorship and misrepresenting the origin/source of goods

Integrated relationship between the basic subject of law that i.e. trademark and the consequential area of passing off and infringement.Trademark is right Passing off and infringement are remedies.

Right has no life without remedy

The remedy can be best understood only if we know the basic features of rights.

Therefore the features of trademark are very essential to be understood for applying the principals of violation and remedy.

The soul of passing off and infringement is deceptive similarity.

That in addition to conceptual clarity of trademark the boundary of law precedence also plays crucial role.

TRADE MARKS ACT, 1999: Definition of (i) Trademark : includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape or goods, packaging or combination of colours or any combinations thereof.

(iii) Name [sec.2(1)(o)]: includes any abbreviation of a name.

(iv) Goods [sec.2(1)(j)]: means anything which is the subject of trade or manufacture.

Essential Requirements of Trademarks : (i) It must be a mark, i.e. a device, brand, label, ticket, name, abbreviation of a name, signature, word, letter, numeral or any combination thereof.

[Even, SMELL AND COLOUR!!!]

(ii) It must be used or proposed to be used in relation to goods in trade. (iii) It must be applied to goods in trade. (iv) The use is for the purpose of indicating a connection between the goods, the mark and person entitled to use the mark in relation to the said goods.

Preferred commercial requirements of the mark: It must be :-

a) Smart, small and simple. b) easy to remember. c) easy to pronounce.d) respecting the sensibilities of the market.

There might be apparent conflict between legal and commercial requirements while choosing a mark; Trademark Attorney should minimize it.

Two fold mechanism of passing off and

infringement Both the concepts are applicable at two

levels Firstly in the administrative machinery i.e.

before the registrar at the entry level of trademark

Secondly in the judicial machinery i.e. by civil and criminal courts adjudicating the violation of ownership rights of trademark

Human perception is foundation of both the

concepts The concept of passing off and infringement

both are having life link with it sec. 2(1)(h) That underlined principle of sec. 2(1)(h) is

“near resemblance” and “likely to deceive” The statutory words confirm that there is

great scope of human indulgence in decision making process and operational field of both the concepts

Care and Caution to avoid passing off and

infringement

The trademarks are broadly of two kinds. The fanciful and either descriptive or

generic. The trademark attorney should actively

advice for proper combination or preferably the fanciful trademark should be used.

For eg. The ordinary fruit apple being adopted for computers

Trademark of IPCL i.e. fountain in the circle may similar with the trademark of Hyundai Having similar fountain in oval shape.

Therefore though the concept of property not known to socio-economic psyche let us adopt Nandi for transport and Narad for courier instead of arrows and Jet signs.

Think global act local

The Bharat knows the harmony

Live & believe in “VASUDHAIV KUTAMBKAM” Accept the

Mother earth as family and live in

harmony