Category: Trademark

ISSUE:

Whether or not the action for passing off is maintainable against the registered proprietor of a trademark by the respondents who are not the registered proprietors of the 'whirlpool' trademark concerning washing machines?

Whether or not the respondent acquired a transborder reputation?

Whether such transborder reputation transcends territorial boundaries or not?

RULE:

The doctrine of transborder reputation recognizes that a trademark can acquire goodwill in a country even if it is not used or registered in that country. This is because consumers in one country may be aware of a trademark from another country through advertising, international trade, or other means.

ISSUE:

The issue here was whether fonts fit the definition of ‘artistic work’ as provided for under Section 2(c) of the Copyright Act, 1957 and whether they can therefore be registered for copyright under the same act.

RULE:

Fonts/typefaces are not artistic works under Section 2(c) of the Copyright Act, 1957. This means that fonts/typefaces cannot be protected by copyright in India.

ISSUE:

Whether Greenpeace's use of Tata’s Trademark and logo was a parody or an infringement?

RULE:

The use of a registered trademark for the purpose of criticism or protest is not trademark infringement, provided that the use is fair and bona fide.

ISSUE:

Whether Prius Auto is guilty of passing off their products through the "Prius" trademark, thereby harming Toyota's market reputation?

RULE:

Use of a registered trademark for a product or service that is not similar to the goods or services for which the trademark is registered is not trademark infringement.

ISSUE:

Does trademark dilution by blurring occur under the Trademark Dilution Revision Act of 2006 where a famous and distinctive mark is parodied, but the mark is only mimicked and not actually used?

RULE:

Trademark Dilution gives the owner of a well-known trademark the right to prevent others from using the mark in a way that would decrease its distinctiveness.

Trademark dilution by blurring does not occur under the Trademark Dilution Revision Act of 2006 where a famous and distinctive mark is parodied, but the mark is only mimicked and not actually used.

ISSUE:

Is there a likelihood of confusion between the parties' jeans?
Whether summary judgment for the trademark owner is appropriate on claims of trademark infringement and unfair competition?

RULE:

The principle of "likelihood of confusion" refers to the likelihood that consumers would confuse and mistake your mark for the mark of another company.

There are eight factors used in determining the likelihood of confusion as to the source of goods:

The strength of the mark

The degree of similarity of the marks

The proximity of the products

Bridging the gap

If the trademark owner intends to enter the alleged infringer’s market, it would lead to future confusion.

Actual confusion

The junior user’s good faith in adopting the mark

The quality of the respective goods

The sophistication of relevant buyers

ISSUE:

Whether the process of modification of whitening of almonds by Plaintiff was an invention?

RULE:

Sub-section (e) of Section 3 provides that, a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance is not considered as an invention unless the functional interaction between the features of the components achieves a combined technical effect which is greater than the sum of the technical effects of the individual features.

ISSUE:

Whether the defendant has infringed the plaintiff's W-NAMASTE logo through dilution?

If Plaintiff can successfully shown similarity between the two marks, can they also demonstrate that the mark and the goods or services that incorporate it are distinctive and enjoy a good reputation, which, if utilized in the same manner as the defendants are, would diminish such distinctiveness or exclusivity?

RULE:

Dilution of a Trademark is a surface of Trademark infringement, where the owner of a well-known trademark has the power to prevent others from using their mark on the ground that it kills their uniqueness or lessen their reputation.

For proving dilution of trademark, it is necessary to prove that the two alleged marks are similar and the Plaintiff’s mark must have a reputation in India, so that unauthorised use would tarnish the reputation.

ISSUE:

Whether ""DROPOVIT' is deceptive and similar to the word “PROTOVIT” and it offends the provision of Section 12(1) of the Trade and Merchandise Act, 1958?

Whether “DROPOVIT” was descriptive or an invented word for Section 9 of the Act?

RULE:

As far as the deceptive similarity is concerned, Courts have largely depended upon an ordinary man’s reasoning, that is, of the average customer.

These include the nature of the mark, the degree of visual and phonetic resemblance between the marks, the similarity between the products or services or the class of purchasers and the mode of purchasing, and lastly, any other circumstances relevant to the case, depending on the facts.

ISSUE:

Whether use of a registered trademark as a trade name for dissimilar goods/services amount to infringement?

RULE:

Sections 29(4) and 29(5) of the Trademarks Act,1999 are mutually exclusive

When a registered trademark is used as a company name in relation to dissimilar goods, there would be no cause of action.