This article is written by Thejalakshmi Anil. The article provides an in-depth analysis of Section 28 of the Trade Marks Act (1999) and its intersection with other crucial Sections such as Sections 29, 31, 36 and 57. It explores the exclusive rights granted to registered trademark owners, including the right to use the mark and seek remedies for infringement, while also discussing limitations and exceptions to these rights. The article examines key legal principles and notable judgements that have shaped the interpretation and application of trademark law in India, addressing issues such as prior use, deceptive similarity, and geographical considerations.

Introduction 

Trademarks are pivotal in the commercial sphere, serving as the distinguishing markers that help consumers identify and differentiate between goods and services. They encompass a range of identifiers, including words, logos, slogans, and even colours and sounds. The protection of these marks not only ensures fair competition but also enhances consumer trust and economic efficiency. In the increasingly globalised and competitive market, trademarks play an increasingly important role in establishing brand identity. 

The Trade Marks Act (1999) (hereinafter, “the Act”) constitutes the legal framework which governs trade mark regulation in India. This article delves into Section 28 of the Trade Marks Act, 1999 which lays down the rights available to registered owners of trademarks. This Section grants exclusive rights to use the registered mark in connection with the specified goods or services and provides the legal standing to seek remedies against infringement. However, these rights are not unlimited and are subject to various conditions and limitations outlined in the Act. 

What is a trademark

Section 2(1)(zb) of the Act has defined trade mark as a mark that is capable of being represented graphically. This is required to distinguish between the goods and services of one person from those of another and may include the shape of goods, their packaging, and the combination of colours. Essentially, a trade mark is a visual symbol that is used in relation to any goods or services to indicate a kind of trade connection between the goods or services and the person using the mark. To bring a trade mark within the scope of a statutory definition, it should fulfil certain essential criteria:

• It should be a mark. This includes a device, brand, heading, label, ticket, name, colours or a combination thereof, among other marks. 
• It should be possible to represent this graphically.
• The customer should be able to distinguish the goods or services of one entity from those of others. In other words, it must possess a unique quality that allows consumers to identify and differentiate the source or origin of the products or services it represents.
• It must be used or proposed to be used with respect to goods or services.
• It should be used as a printed or visual representation of the mark.
• This use should be with respect to goods in any physical or other form. With respect to services, the use of the mark must be as a part of any statement related to the availability, provision, or performance of this service. 
• The use must be to indicate a connection in the course of trade between the goods or services and a person having the right to use this mark either as a proprietor or by way of the permitted user as the case may be. It is not necessary that the person using the mark should reveal their identity. 

A trademark functions as an indicator to the purchaser or prospective purchaser of the manufacturer or quality of goods. This also signifies the trade source from which the goods come or the trade hangs through which the goods pass in the market. Presently, a trademark performs three functions: firstly, it identifies the product and its origin. Secondly, it guarantees its unchanged quality, and thirdly, it advertises the product. It is also a symbol of the goodwill of business. 

Registration of trademarks

In accordance with common law, the only way to protect the rights of a trade mark holder against infringement is by an action for passing off. This involves proving the rights of a plaintiff each time a suit is filed. To avoid this, registration can afford better protection by providing a simple way of proving title to the mark and also by providing a remedy for infringement of that title. Apart from simplifying the right enforcement process, registration also permits third parties to use the mark as registered or unregistered users without the goodwill of the business. 

However, rights conferred by registration are subject to various limitations. Firstly registration does not provide immunity against an action for passing off. Secondly, the validity of this registration can be challenged as provided in Sections 31 and 57. Therefore, registration is only prima facie valid. Thirdly, under Section 36, rights conferred under registration cease to exist when the word becomes widely used as a generic name or description for the product/service by other traders not connected to the trademark owner and when the word is the only practical name for a product that was previously patented, and at least two years have passed since the patent expired.

Clause-wise explanation of Section 28

Section 28 vests the owner with exclusive rights to use the mark for registered goods/services and to seek legal remedies for infringement, subject to any limitations in the registration. Additionally, it lays down that when multiple owners have similar marks, each has equal rights against non-owners, but not against each other or authorised users. The essential requirements of this Section are: 

Exclusive right upon registration (Section 28(1))

The first clause establishes the fundamental rights of a trademark owner. Upon valid registration, the owner gains two key privileges: firstly, exclusive use, which refers to the right to be the only one using the trademark for the specific goods or services it’s registered for. Secondly, it provides legal protection, which is the ability to seek legal remedies if someone infringes on their trademark rights.

Limitations of the Section (Section 28(2))

The second clause clarifies that the rights granted in subsection (1) are not absolute. They are subject to any conditions or limitations that were included when the trademark was registered. This ensures that any specific restrictions or exceptions are taken into account.

Registered proprietors of similar trademarks (Section 28(3))

The third clause addresses situations where multiple parties own identical or very similar trademarks. It establishes that: 

• Merely being registered doesn’t give one owner rights over the others. 
• Each owner has the same rights against third parties as if they were the sole owner.
• These equal rights don’t apply against other registered owners or authorised users of the trademark. 
• Any conditions or limitations in the register still affect these rights.

Rights of the registered trademark holder

Right to exclusive use

Like all other intellectual property, registered trademarks confer negative rights to their owner or proprietor. This right bestows upon the proprietor the right to exclude others from using his property. The types of activities which can be prohibited have been set out in Section 29. However, this does not implicate an entitlement to the proprietor to use his property. Therefore, the right owner does not need this right in order to exploit a market for its goods and services. Thus, registration gives the owner the exclusive right to use the trademark in relation to the goods or services in accordance with which the trademark is registered. If there is an invasion of this right, then the owner can protect his trademark by obtaining an injunction, damages, or account of profits made by the other person. 

This is a statutory right that is not lost merely on the question of principles of delay (unreasonable passage of time before asserting a claim), laches (an equitable defence based on unreasonable delay that prejudices the defendant), or acquiescence (knowingly allowing infringement of one’s rights without objection). Mere delay after knowledge of infringement does not deprive the proprietor of statutory rights or of the appropriate remedy for the enforcement of those rights as long as the said delay is not inordinate. 

In the case of Revlon Inc vs. Hosiden Laboratories (India) (2001), the plaintiff was the registered owner of the trademark ‘JONTUE’ in respect of cosmetics and perfumes, among others in India and other countries. The defendant used the same trademark with respect to talcum powder, which the plaintiff objected to. The Delhi High Court held that by virtue of registration, the plaintiff clearly had the exclusive statutory right to use the registered trademark. Hence the use of this trademark by the defendant constituted infringement of this right by the defendant. The court held that the use of the trademark by the defendant was with a view of misleading the public and was clearly dishonest. The motivation of the defendant was to benefit from the goodwill and reputation attached to the trademark. Hence, the court ruled in favour of the plaintiff. 

In Deere and Co and Anr vs. S. Harcharan Singh and Anr (2015), the defendant was using the plaintiff’s word mark of ‘John Deere’ along with the unique green and yellow colour scheme and logo. The defendant has also copied the manner of use of the colours. The court ruled that such blatant similarity amounted to infringement and that the plaintiffs were entitled to the decree. 

Statutory rights limited to goods or services 

In trademark registration, trademark classes group various products together, often including diverse items. When a trademark is registered for an entire class without specifying particular goods, it might not receive protection for all items in that class. This is because it’s unlikely they’ll use the mark for every possible item in such a broad category. Conversely, if someone registers a trademark for specific goods within a class, their protection is limited to those particular items. Others can still use a similar mark for different products within the same class, as long as there’s no confusion between the products.

In the case of Vishnudas Trading As Vishnudas vs. The Vazir Sultan Tobaccoco (1996), it was held that given the diversity within classes, it’s both allowed and advisable for trademark applicants to be specific when registering their marks. Instead of claiming an entire class, they can and should register for one or more specific articles within that class. This is done by naming the particular goods they intend to cover with their trademark.

Registration should be valid 

A common issue that arises is when the defendants in a case raise the plea that the plaintiff does not enjoy exclusivity because the mark is invalid and therefore an interim injunction should not be granted in their favour. The question that arises is whether the court should consider such a defence at the point of interim injunction and deprive the plaintiff of its rights in a registered trademark. This has led to diverging decisions. In some cases, the courts take the view that they are not empowered to consider the validity of the registration in civil proceedings and that it remains prima facie valid. 

However, the contrary view is that since clause 1 of Section 28 includes the phrase ‘if valid’, the rights holder qualifies for protection only if the registration is valid. This was inserted for the purpose that following registration an aggrieved person can apply for cancellation under Section 57 of the Act even if no suit for infringement is filed alleging infringement of the trade mark. Additionally, while Section 31 lays down a presumption of validity of a registered trademark, courts have held that this is a rebuttable presumption, with the onus resting on the person challenging the validity of the trademark that it is plausibly invalid. 

In SM Dyechem vs. Cadbury (India) Ltd (2000), the Supreme Court held that a decision on the question of the validity of registration in a proceeding for interim injunction would jeopardise the issue in rectification proceedings. Hence the court refused to consider the validity of the plaintiff’s mark by holding that the same is to be decided in the rectification proceedings, deferring to the expertise of the Intellectual Property Appellate Board (IPAB).

In the case of Lupin Limited vs. Johnson & Johnson (2012), a single judge of the Bombay High Court faced a similar question of whether a court can examine the validity of registration at the interim stage. Considering the diverging opinions of the court, this was referred to a full bench. In its 2014 decision, the court held that when the registration is ex facie illegal, fraudulent, or shocks the conscience of the court, the court can then inquire into the validity of the mark and even refuse an injunction. These three criteria are however subjective, and no yardstick has been laid down. However, this defence has a very high threshold of prima facie proof of invalidity. 

The Bombay High Court in this case reasoned that the phrases ‘if valid’ in Section 28 and the presumption of validity embodied in Section 31 permit the court to consider the defendant’s plea with respect to the invalidity of the plaintiff’s registration at the interlocutory stage. However, there is a heavy burden of proof on the defendant in such cases, with a strong presumption in favour of the plaintiff on the basis of registration at the interim stage. 

However, this has been criticised for interpreting the ruling in SM Dyechem broadly as suggesting that validity issues could be decided in proceedings other than rectification. This interpretation creates a possibility of inconsistencies between the decisions of IPAB and the High Court. Section 124(4) of the Act requires High Courts to align their decisions with IPAB’s final orders in rectification proceedings. Deciding on validity at the interlocutory stage could lead to inconsistencies, especially since IPAB is subordinate to High Courts. Moreover, civil court findings on validity could indirectly stay the effect of registration.

This reverses the jurisdictional shift that occurred in 2003. Before 2003, the High Courts decided to rectify proceedings alongside the trademark registry. The creation of IPAB transferred these proceedings to a specialised body, but the High Court’s ruling may reverse this jurisdictional shift.

Additionally, since the criteria lack clear standards, it could become a common defence in infringement actions. This approach may have expanded beyond the Act’s self-contained provisions, particularly Section 31(2), which outlines specific conditions for invalidating registrations.

There are also certain other limitations and conditions imposed upon the exclusive right of the owner arising out of the registration: 

1. Variation condition – This is when the proprietor agrees to vary the name and description of the goods appearing on the mark when they are used with respect to goods/ services other than those mentioned on the label. 
2. Association with other marks of proprietor under Section 16.
3. Condition to not use the mark in respect of certain specified goods/ services. 
4. Blank space condition – This condition lays down that the blank space will only be occupied by the matter of a non-trademark character. 
5. Limitation condition – This is imposed as to the area within which the registration is to operate.
6. Limitation with respect to colour is also imposed under Section 10.  

Doctrine of prior use 

When a business registers a mark without being aware of the previous user of a similar mark, in accordance with Section 34, priority is granted to the earlier user. Therefore, a priority of registration is subordinated to the priority of usage. In the case of Kamat Hotels (India) Limited vs. Royal Orchid Hotels Limited (2011), the court reaffirmed this principle and laid down a list of requirements that need to be met for the doctrine of prior usage: 

1. Both marks should be identical or similar.
2. The marks should be in the same category of goods. If it’s a different category, further rules like whether the mark is well known and whether its use is harmful to the prior user’s goodwill need to be considered. 
3. The prior use should be of a brand registered in Indian territory and cannot be invalidated by prior usage in other countries.
4. The mark should be used consistently and should not be used for a short term. The mark should have some reputation and link with the owner.
5. Lastly, the mark should have been in use before the date of registration or the usage of the mark that is being challenged.

In the case of S. Syed Mohideen vs. P. Sulochana Bai (2015), the Supreme Court ruled that if a subsequent user registered his trademark, the prior user would still have ownership rights over them. The rights of the prior user cannot be interfered with or disturbed by the subsequent registered user. 

In order to qualify for this exception, there needs to be sustained, consistent behaviour. To invoke the protection of Section 34, one must present compelling evidence of prior use, clearly demonstrating the mark’s application in relevant goods and services.

In the case of M/S S. Narendra Kumar & Co. vs. Everest Beverages and Foods Industries (2008), the Delhi High Court affirmed that interim injunctions may be granted to prior users, even when there is no conclusive proof of earlier use. The court recognized the prior user’s claim of using the mark before the registration date. 

However, the landmark Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Limited (2017) case introduced a geographical consideration. The Supreme Court determined that prior use claims are invalid if not established in the same region as the defendant and within the jurisdiction of the passing off action. Despite Toyota’s global use of the PRIUS mark since 1997, their failure to use it in India until 2010 – after Prius Auto Industries had begun using it locally in 2006 – resulted in the Court allowing Prius Auto Industries the use of the PRIUS trademark in India.  

Right to seek statutory remedy against an infringement

The essential requirements for a case of infringement being made are enlisted below: 

1. The plaintiff’s mark must be registered.
2. The mark of the defendant should be identical with or deceptively similar.
3. The defendant’s use of the mark should be in the course of trade with respect to the goods/ services covered by the plaintiff.
4. The use of the mark by the defendant should be in such a manner that it should be likely to be taken as being used as a trade mark. 
5. The defendant’s use of the mark is not by way of permitted user and accordingly unauthorised infringing use.

In the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical (1964) the Supreme Court held that an action for infringement is a statutory remedy which is conferred on a registered owner of a registered trademark for the purpose of protection of the exclusive right to use of the trade mark with respect to those goods. Hence, even if the get-up, packing and other writing or marks on goods show a difference, if the defendant adopts the essential features of the trade mark of the plaintiff, he would be infringing the right of the plaintiff. 

In the case of Laxmikant V. Patel vs. Chetanbhat Shah & Anr (2001), the Supreme Court laid down that carrying on business in such a way that it would persuade the customers or clients into believing that the goods and service belong to someone else is impermissible. The intention of the party in this case is irrelevant. This is because adopting a name that belongs to someone else results in confusion and also can lead to the diversion of clients from someone else to themselves, resulting in injury. 

In the case of Harding vs. Smilecare Limited [2002] F.S.R. 37, the trademark “Smile care” was used by both dental and financial services for dentists. Since the goods and services in both cases were completely different, both the infringement and passing off actions were dismissed. It was held that for an infringement action to succeed, there is a threshold that has to be crossed, which is that the goods or services must be identical with or similar to those for which the trademark is registered. 

While approaching the court in filing an action for infringement, the Delhi High Court in the case of Tata Oil Mills Co. Ltd vs. Wipro Ltd (1986) held that a mere delay in filing of the suit would not be fatal. This is because, even with delay the exclusive right under Section 28 cannot be lost. 

Test for comparing two marks 

In the case of Corn Products Refining Co. vs. Shangrila Food Products Ltd. (1959), the Supreme Court has laid down the test for looking at whether two marks are deceptively similar or not. The court laid down the doctrine of fading memory, wherein the question of whether two marks are so similar that it would cause confusion or deceive one is approached from the perspective of a man of average intelligence having imperfect recollection. The court looks at whether the overall visual and phonetic similarity between the two marks is likely to cause confusion to such a man or not. The other questions are who are the people who would likely be deceived and what rules of comparison need to be adopted while judging if such a similarity exists.  

In the case of Encore Electronics vs. Anchor Electronics and Electricals Pvt. Ltd (2007), the Bombay High Court held that phonetic similarity is an important indicator as to whether a mark has a deceptive or misleading similarity to another. The court therefore must look at the general profile of the Indian consumer and look at the cultural traits underlying the spelling and pronunciation of words. The court laid down that the test is not whether a customer who wishes to buy the product of the plaintiff is likely to end up with the product of the defendant. Here the test is whether a customer is likely to believe that the product of the defendant is associated with the trademark and trading style of the plaintiff. 

The Supreme Court in the case of K. R. Chinna Krishna Chettiar vs. Sri Ambal & Co., Madras & Anr (1969) while comparing the rival marks of Ambal and Andal laid down that the resemblance between the marks must be assessed with reference to both eyes and ears. The Court determined that the two marks were deceptively similar, noting a striking similarity and affinity in sound between “Andal” and “Ambal.” While acknowledging that Hindus in southern India might recognize “Ambal” and “Andal” as names of two distinct goddesses, the Court pointed out that these words do not directly relate to the character or quality of snuff. Consequently, the appeal was dismissed with costs

Right of trademark holder to identical trademark (Section 28)

In a situation where two or more persons registered for the same or similar mark in respect of the same goods or services, the exclusive right shall not operate against each other in accordance with Section 28(3) read with Section 30(2)(e). However, each of those persons will have the same rights as against any other person as he would have if he were the sole registered proprietor. If a licensee is non exclusive, they cannot restrain the statutory rights vested in the registered proprietor of the mark and also cannot prevent the use of the mark by any other licensee.

In the case of Eagle Flask Industries Pvt Ltd vs. Bon Jour International (2011), the Madras High Court read together Sections 30(2)(e) and 28(3) to hold that one registered trademark owner cannot stop another from using his own mark. Similarly in Sau Pritikaran Rajendra Katole vs. Sau Harsha Ravindra Katole (2014), the Bombay High Court held that if two similar marks are registered by different persons, both can use them simultaneously with prior/long use by one proprietor being immaterial.

In Abbott Healthcare Pvt Ltd vs. Raj Kumar Prasad (2014), the Delhi High Court addressed a trademark infringement suit filed against another party who had also registered an identical or similar trademark. The plaintiffs in this case had acquired a registration for the trademark ANAFORTAN in 1988. The defendants have been using a deceptively similar mark, AMAFORTEN since 2009. Both the products used the same formula, and compound and had similar usage. 

The plaintiff instituted a suit for infringement of the trademark, while the defendant argued that the suit was expressly barred by Section 28(3). However, this was rejected by the court which observed that this suit could be maintained against another registered owner, and the court can issue an interim injunction if it prima facie convinced that the registration of the defendant’s mark is invalid. Therefore, the court restrained the defendant from using the impugned trademark by way of injunction. This was appealed by the defendant in Raj Kumar Prasad & Anr. vs. Abbott Healthcare Pvt. Ltd (2014), however, this was dismissed by the division bench of the Delhi High Court. 

The Cadbury UK Limited vs. Lotte India Corporation Ltd. (2014) case dealt with trademark infringement and passing off. The Delhi High Court found that the names of the products in question – ‘Cadbury’s Choclairs’ (plaintiff’s product) and ‘Lotte Choclairs’ (defendant’s product) – were deceptively similar.  The court recognised that the plaintiff, Cadbury, had a well-established mark that had acquired significant goodwill and reputation in the market. It was determined that the defendant, Lotte India Corporation, was attempting to pass off their goods as those of the plaintiff by using a similar name. The plaintiff was therefore able to prove a prima facie case for the grant of an interim injunction in their favour, which was made absolute. 

One thing that this exception does not clarify is whether this exception applies to all goods or any goods or only those goods that the trademark has registered for. According to the general rule of statutory interpretation, the exception depends on the rule. Therefore the exception is limited to the trademark registered for a particular good and not all goods. This interplay was examined in A. Kumar Milk Foods Pvt. Ltd. vs. Vikas Tyagi & Anr. (2013) by the Delhi High Court. In this case, the plaintiff was the registered proprietor of the mark ‘Shreedhar’ for products including ‘milk products, ghee etc’ which fell under Class 29. 

The defendants were registered under the same mark but for products falling under Class 30 which includes ‘atta, maida, etc.’ However, when the defendants started using the trademark for goods falling under Class 29, this was objected to by the plaintiffs.  The defendants argued that clause 3 of Section 28 does not contain any reference to the goods with respect to which the registration is granted. 

Therefore, it was argued that regardless of the class of goods, as long as both parties are registered with respect to an identical/similar mark, neither party could seek to restrain the other in an infringement action. However, according to the plaintiffs, since the registration was not in the same class of goods by reading Sections 28(1) and (3) together, the defendants can be restrained from using the impugned mark in respect of the goods for which the plaintiff held registration. 

The court allowed the plaintiff’s claim and granted an interim order against the defendants. According to the court, the legislative intent of providing different classifications of goods and requiring the owners to register under specific classes shows that clause 3 of Section 28 should apply only on two conditions: firstly, the two marks are “ identical with or nearly resemble each other”; and secondly, they are in respect of the same class of goods and services.

Relevant cases

Wockhardt Limited vs. Aristo Pharmaceuticals Limited (1999) 

Facts 

In this case, the appellant was the owner of the registered trademark “SPASMO-PROXYVON” for pharmaceutical preparations. The defendant was using the trademark “SPASMO-FLEXON” for similar pharmaceutical products. The appellant argued that the trademark of the product of the defendant was deceptively and phonetically similar to their trademark. Therefore, the appellant filed for an injunction against the defendant, claiming trademark infringement and passing off. Both trademarks shared the common prefix “SPASMO”.

Issues

Whether the use of “SPASMO-FLEXON” by the defendant constitutes trademark infringement and passing off of the appellant’s registered trademark “SPASMO-PROXYVON”?

Judgement

The Madras High Court while upholding the claim of the appellant also summarised the position of law in this case. The court reasoned that it’s a question of fact to establish whether a trademark is descriptive or publici juris (the right of the public to enjoy). The court held that when a number of marks have a common element, which in this case is the prefix ‘SPASMO’, the people have a tendency to link it to the same source leading to deception or confusion. If the common element between the impugned mark and the registered mark is highly distinctive and not just a description or a commonly used word, this increases the likelihood of deception despite the fact that there might be small differences in certain letters. 

According to the court, the perspective to be adopted in such cases is that of an unwary purchaser and not that of a doctor’s prescription or advice of chemists, druggists, or pharmacists. In such a case, there may be a likelihood that these dealers may sell similar sounding products, especially when they treat the same ailment. Hence, consumers may be easily confused or misled in such cases, and there is an increased confusion risk. The court also said that the marks must be looked at from the first impression of a person of average intelligence and imperfect recollection. Additionally, the court held that plaintiffs don’t require a strong prima facie case and even a 20% rate of success can justify an injunction to prevent confusion from similar marks. 

The Indian Hotels Company Ltd. vs. Ashwajeet Garg And Ors (2014) 

Facts

In this case, the plaintiff was the owner of the Taj Group of Hotels and had adopted the mark JIVA in relation to the business of SPA. The defendants in this case were using the mark ZIVA also for the purposes of SPA. The plaintiff argued that this was phonetically and visually similar, creating confusion in the minds of the consumers. In this case, the only difference between the two marks was the first letter and there was striking phonetic similarity. 

Issue

Whether the Defendants’ use of the mark “ZIVA” infringes on the Plaintiff’s registered trademark “JIVA”?

Judgement

The court held that there is a likelihood of confusion with the ordinary customer likely to believe that ‘ZIVA’ is associated with the mark ‘JIVA.’ The marks, when compared from the perspective of an unwary purchaser of average intelligence and imperfect recollection, show that there is a likelihood of confusion in case both the marks were permitted to remain in the market. Hence, the court granted the plaintiff’s request for a permanent injunction against the defendants from using the mark “ZIVA” and allowed the plaintiff to proceed with rectification proceedings for the defendants’ registered mark. The suit was adjourned for three months for the plaintiff to apply for rectification in the prescribed manner.

Lupin Limited vs. Eris Lifesciences Pvt. Ltd. (2014)

Facts

In this case, the plaintiff had extensively used the mark NEBISTAR since 2004, whereas the defendants began using the mark NEBISTOL in 2014. The plaintiffs argue that the two marks are deceptively similar, while the defendants argue that this is dissimilar to the plaintiff and there are multiple marks in the market with NEBI as a prefix. 

Issue

Whether the marks NEBISTAR and NEBISTOL are deceptively similar?

Judgement

The court ruled in favour of the plaintiff that the marks were indeed deceptively similar. The arguments of the defendants regarding the common industry practice were rejected by the court. The court emphasised that marks should not be split and a trademark should be considered in its entirety. Additionally, it was held that once such marks are deemed deceptively similar, differences in packaging or price are irrelevant. Hence, a prima facie case was established by the plaintiff in this instance. 

K. R. Chinna Krishna Chettiar vs. Sri Ambal & Co., Madras & Anr (1969)

Facts

In this case, the appellant and the respondent were manufacturers and dealers in the snuff business. In 1956, the appellant filed for registration of the trademark, which was opposed by the defendant on the ground that the proposed mark was deceptively similar.

Issue

Whether the marks “Andal” and “Ambal” are deceptively similar?

Judgement

The Supreme Court found that there is a deceptive similarity between the two marks. The court reasoned that there is a striking similarity and affinity of sound between the marks “Andal” and “Ambal”. The court held that the two words are deceptively similar in sound. The words have no direct reference to the character and quality of snuff.

Conclusion

Trademarks play a crucial role in the commercial world by serving as distinctive markers that help consumers identify and differentiate between various goods and services. These marks act as important assets which can embody reputation, and quality and help build customer trust. The legal framework surrounding trademarks, as outlined in the Trade Marks Act, ensures that these marks are protected and that their use is regulated to maintain fair competition and consumer trust. 

The registration of trademarks also simplifies the enforcement of rights, providing a means of proving ownership and addressing infringement issues. However, registration alone does not offer absolute protection, and the validity of trademarks can be challenged under certain conditions. The rights conferred upon trademark holders, including the exclusive right to use the mark and seek remedies against infringement, are subject to various limitations and conditions.

Through relevant legal cases, it is evident that the courts play a critical role in interpreting and enforcing trademark laws, ensuring that the rights of trademark holders are upheld. Ultimately, trademarks are not only essential for identifying products and maintaining quality but also for protecting the goodwill and reputation of businesses in the market.

Frequently Asked Questions

What is the difference between a prior user and a registered trademark?

Prior use becomes significant when a trademark is not registered. This protects established businesses from losing market presence as a result of subsequent registrations. On the other hand, a registered trademark provides stronger and broader protection by conferring a host of exclusive rights on its owner. 

How to prove prior use of a trademark? 

To prove prior use of a trademark, the usage of a trademark by a third party should be comparable to the merchandise and ventures for which the first mentioned mark is enrolled. This utilisation should be a consistent utilisation of the brand name in India. The brand name should be consistently used by the owner in order to get protection. The mark should have additionally been used from a prior date before the utilization of the registered trademark or the date of enlistment whichever is earlier. 

References

• https://www.remfry.com/wp-content/uploads/2017/11/demystifying-the-concepts-of-tm-exclusivity-and-validity-wtr.pdf
• https://spicyip.com/2014/01/interpreting-s-28-of-the-trademark-act-delhi-high-court.html
• Law of Trade Marks including International Registration under Madrid Protocol & Geographical Indications by K C Kailasam, Ramu Vedaraman & Anuradha Ramu (4th edition) 
• https://www.setindiabiz.com/learning/trademark-registration-process

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