| Trade Mark- A Fundamental Concept | | | | (Marketing) Westside. |
| A trademark or trade mark is one of the elements | | | | Pantaloon’s ‘Central’ mall at |
| of Intellectual Property Right and is represented by | | | | Gurgaon had offered 30% discounts to its |
| the symbol ™ or ® or mark is a distinctive sign | | | | customers over the weekend. Loyalty card holders |
| or indicator of some kind which is used by an | | | | of competing retailers like Shopper’s Stop, |
| individual, business organization or other legal entity to | | | | Lifestyle and Westside, were lured by Pantaloon by |
| identify uniquely the source of its products and/or | | | | offering an additional 10% discount on select brands |
| services to consumers, and to distinguish its products | | | | of apparel. The advertisement asked such customers |
| or services from those of other entities. A trademark | | | | to: ”Present your membership card to avail this |
| is a type of intellectual property, and typically a | | | | offer.” |
| name, word, phrase, logo, symbol, design, image, or a | | | | Loyalty cardholders are mainstay of business for |
| combination of these elements. There is also a range | | | | most retailers. Shoppers’ Stop has a highly |
| of non-conventional trademarks comprising marks | | | | popular loyalty card programme branded “First |
| which do not fall into these standard categories. | | | | Citizen.” According to analysts, more than |
| The term trademark is also used informally to refer | | | | two-thirds of Shoppers’ Stop’s apparel |
| to any distinguishing attribute by which an individual is | | | | business is accounted for by its loyal customers. |
| readily identified, such as the well known | | | | “They (Pantaloon) are luring my customers by |
| characteristics of celebrities. When a trademark is | | | | using my name in an unfair manner,” said |
| used in relation to services rather than products, it | | | | Sandeep Mittal, the lawyer representing for both the |
| may sometimes be called a service mark, particularly | | | | petitioners. |
| in the United States. | | | | The Honourable Delhi high court has issued an |
| Rights & Remedies of a Trade Mark Owner- | | | | injunction restraining Pantaloon from using names of |
| The owner of a registered trademark may | | | | its rivals in the ads until the next hearing in the |
| commence legal proceedings for trademark | | | | matter fixed for 31st July. |
| infringement to prevent unauthorized use of that | | | | Taking potshots at these competitors is not new |
| trademark. However, registration is not required. The | | | | for Pantaloon. Last year, its Big Bazaar chain had put |
| owner of a common law trademark may also file suit, | | | | up hoardings, asking customers to “Keep |
| but an unregistered mark may be protectable only | | | | West-aSide,” “Shoppers! Stop” and |
| within the geographical area within which it has been | | | | “Change Your Lifestyle. Make a Smart |
| used or in geographical areas into which it may be | | | | Choice.” |
| reasonably expected to expand. | | | | 2. Amul wins trade mark case in Gujarat High |
| Two types of remedies are available to the owner | | | | Court, (Sep 24, 2007) |
| of a trademark for unauthorized use of his or her | | | | Amul has won the trade mark case in Gujarat High |
| mark or its imitation by a third party. These remedies | | | | Court and no one else can use it. |
| are: | | | | The Kaira District Co-operative Milk Producers? Union |
| - an action for infringement' in case of a registered | | | | Ltd. and GCMMF had filed trade mark infringement |
| trademark; and | | | | cases, against two local shop owners ? Amul |
| - an action for passing off' in the case of an | | | | Chasmaghar and its partners and Amul Cut Piece |
| unregistered trademark | | | | Stores in the District Court, Anand. |
| | | | | The District Court, Anand passed an order dated 25 |
| While former is a statutory remedy, the latter is a | | | | April 2007, ruling that it was a clear case of |
| common law remedy. In an action involving | | | | infringement and restrained the two from using the |
| infringement or passing off, a court may grant relief | | | | Amul trademark. |
| of injunction and/or monetary compensation for | | | | Amul Chasmaghar had challenged this interim |
| damages for loss of business and/or confiscation | | | | injunction in the Gujarat High Court. The Gujarat High |
| destruction of infringing labels and tags etc. | | | | Court ruled the decision in favor of Amul, terming |
| Although registration of trademark is prima facie an | | | | the order passed by the trial court as true, correct, |
| evidence of validity of a trademark, yet the | | | | legal and in consonance with the facts of the case, |
| registration can not upstage a prior consistent user | | | | as well as in accordance with the provisions of the |
| of trademark, for the rule is ‘priority in adoption | | | | Trade Marks Act 1999. |
| prevails over priority in registration`. | | | | 3. Trade Marks Disputes Involving Pharmaceuticals |
| Infringement of Trade Mark- | | | | Industry in India- |
| Trademark infringement is a violation of the exclusive | | | | A. Beecham Group Plc. vs. S.R.K. Pharmaceuticals |
| rights attaching to a trademark without the | | | | 2004 (28) PTC391 (IPAB) |
| authorization of the trademark owner or any | | | | The appellant was using the mark 'AMOXIL' in India |
| licensees (provided that such authorization was within | | | | since 1990. This mark was registered in India in 1972 |
| the scope of the license). Infringement may occur | | | | in Class 5 in respect of Pharmaceutical goods. The |
| when one party, the "infringer", uses a trademark | | | | respondent started using the mark 'LYMOXYL' in |
| which is identical or confusingly similar to a trademark | | | | India from 1985. The respondent filed the application |
| owned by another party, in relation to products or | | | | for registration of the mark in 1987 in India in the |
| services which are identical or similar to the products | | | | same class with respect to similar goods. |
| or services which the registration covers. An owner | | | | The appellant brought an action against the |
| of a trademark may commence legal proceedings | | | | respondent stating that the mark is deceptively |
| against a party which infringes its registration. | | | | similar. The only difference between the two marks |
| Trade mark Law in India- | | | | is in the prefix 'LY' and 'M'. The rival marks are |
| The Indian law of trademarks is enshrined the new | | | | phonetically and deceptively similar and the goods are |
| Trade Marks Act, 1999 came into force with effect | | | | pharmaceutical goods under Sec. 12(1) of the Act. |
| from September 15, 2003. The old Trade and | | | | The Intellectual Property Appellate Board (IPAB) held |
| Merchandise Marks Act, 1958 was repealed at the | | | | that the respondent dishonestly adopted the mark |
| same time. The new Trademarks Act of 1999 is in | | | | by copying it from the appellant who had got the |
| line with the WTO recommendations and is in | | | | mark registered long ago. Hence the respondent |
| conformity with the TRIPS Agreement to which India | | | | cannot claim honest concurrent use, by virtue of |
| is a signatory. | | | | earlier use. The Appellate Board delivered a judgment |
| India has declared certain countries as convention | | | | prohibiting registration of the Trade Mark 'LYMOXYL'. |
| countries, which afford to citizens of India similar | | | | B. Ranbaxy Laboratories Limited vs. Anand Prasad |
| privileges as granted to its own citizens. A person or | | | | & 4 Others 2004 (28) PTC 438 (IPAB) |
| company from a convention country, may within six | | | | The appellant was the registered proprietor of the |
| months of making an application in the home country, | | | | mark 'FORTWIN' and had been using the mark since |
| apply for registration of the trademark in India. If | | | | 1975. The respondent applied for registration of the |
| such a trademark is accepted for registration, such | | | | mark 'OSTWIN'. Both the marks related to |
| foreign national will be deemed to have registered his | | | | pharmaceutical compositions in respect of treatment |
| or her trademark in India, from the same date on | | | | of bones. |
| which he or she made application in the home | | | | The appellant brought an action against the |
| country. | | | | respondent stating that the mark is deceptively |
| Scope of Foreign Investors With Regard to the | | | | similar. The IPAB held that the prefixes are 'FORT' |
| Registration of Trade Mark in India- | | | | and 'OST' while both the marks end with the suffix |
| Registration of trademarks is one of the important | | | | 'WIN'. It was further held that since the rival goods |
| protections that businesses should avail in India. Many | | | | are also pharmaceutical goods it might lead to serious |
| foreign and domestic Applicants have been able to | | | | consequences due to deception or confusion in the |
| successfully register their marks in India. Indian courts | | | | minds of the public. Hence on the possibility of harm |
| have upheld many of those registrations and granted | | | | being caused to common person the appeal was |
| favorable decisions to rights holders. | | | | allowed. |
| In addition to the registering of their trademarks in | | | | C. Wyeth Holdings Corp. & Anr. vs. Sun |
| India, businesses need to adopt other strategies for | | | | Pharmaceuticals Industries Ltd. 2004 (28) PTC 423 |
| protecting their trademarks. Some of them are | | | | (Bom) |
| mentioned below: | | | | In this case the plaintiff whose former name was |
| - Get trademark searches conducted in the Indian | | | | American Cynamid Company and who was the |
| Trade Marks Registry in the classes that are of | | | | proprietor of the trademark 'PACITANE' registered |
| interest to you including the ancillary classes. | | | | the mark in Class 5 of Pharma goods. The |
| - Get common law searches (this includes the | | | | respondent was using the mark 'PARKITANE' with |
| internet, market surveys, yellow pages and | | | | respect to similar goods. The plaintiffs filed a suit for |
| directories) conducted to ascertain whether third | | | | infringement and passing off and sought various |
| parties are using your trademarks and if so, the | | | | reliefs including interim injunction against the |
| extent of such use. | | | | defendant for using the mark 'PARKITANE'. |
| - Based on this information and after seeking the | | | | The Court held that in both the cases the goods are |
| local counsel’s opinion decide if the trademark is | | | | similar, being pharmaceutical preparations for |
| available for use or not. | | | | treatment of Parkinson's disease, the customers |
| - Should the trademark be available for use, | | | | buying these goods are the same and the trade |
| immediately apply for the registration. | | | | channels are the same. Since the defendants did not |
| - The rights holder should also consider hiring a | | | | show any search of the Register before adopting |
| watching service to monitor the trademark journals in | | | | the impugned mark, prima facie adoption of the mark |
| order to alert them to any published, deceptively | | | | was not honest. Further, the Court held that despite |
| similar trademarks or descriptive trademarks that | | | | protests, if the defendants have chosen to continue |
| might be of concern. | | | | to sell the products, it cannot be said to be |
| - Should the rights holder own a trademark that has | | | | acquiescence by the plaintiff. Therefore the Court |
| been used and has acquired goodwill and reputation, it | | | | held that injunction is to be granted in favour of the |
| is advisable that along with filing of the trademark | | | | plaintiff. |
| application in India, they should also make press | | | | |
| releases, publish cautionary notices and advertise the | | | | The Court further held that in case of pharmaceutical |
| mark to ensure that the relevant section of the | | | | products, the test is of possibility of confusion and |
| public is aware that they are entering the Indian | | | | not probability of confusion. The plaintiffs have been |
| market and are protecting their trademark from any | | | | in the field since 1950 and as such the balance of |
| kind of third party violation. | | | | convenience is in their favour. The Court granted |
| - The rights holder should also take immediate steps | | | | injunction in favour of the plaintiffs. |
| to register their domain names including country | | | | D. Hoechst Aktiengesellschaft vs. Artee Minerals |
| coded top level domain names in India, as there have | | | | & Anr. 2004 (28) PTC 470 (IPAB) |
| been many instances of third parties registering | | | | The appellant was the registered proprietor of |
| domains for certain well known marks with the | | | | trademark 'ARELON'. This mark was registered in |
| intention of extracting money by selling these domain | | | | class 5 with respect to pharmaceutical goods relating |
| names to the rights holders. | | | | to preparation for killing weeds and destroying |
| - Should the rights holder discover that their | | | | vermin. The respondent filed an application for |
| trademark is being infringed, they should take | | | | registration of the mark 'ARTEELON' in the same |
| immediate steps to protect their trademark, either | | | | class with respect to pharmaceutical goods. |
| by the means of filing oppositions, cancellations, | | | | The appellant opposed the application for registration |
| conducting investigations, sending cease and notices | | | | of trade mark filed by the respondents on the |
| or initiating appropriate civil and criminal actions. | | | | ground that the registration of the impugned mark |
| | | | | would be contrary to provisions of Sections 9, 11, |
| Cases of Trade Mark Violation in India- | | | | 12(1) and 18 of the Trade and Merchandise Marks |
| Trade mark infringement especially among the | | | | Act, 1958. |
| corporate classes in India is rising on an alarming rate. | | | | The IPAB held that the rival goods were same and |
| Few of the notable cases have been described in | | | | the only difference was the letters 'TE'. The |
| brief. | | | | Appellate Board further held that the possibility of |
| 1. Pantaloon dragged to court by Shoppers’ | | | | confusion and deception is not ruled out and hence |
| Stop and Lifestyle; Westside also contemplates | | | | affirmed the order rejecting the application for |
| similar action, (July 14th, 2008). | | | | registration filed by the respondent. |
| Shoppers’ Stop and Lifestyle have dragged | | | | The IPAB further held that the benefit of use under |
| their rival Pantaloon to court as they were | | | | Section 54 is given only in case of rectification |
| miffed with an advertisement issued by the flagship | | | | proceedings when use of an associated trademark is |
| company of Kishore Biyani owned Future Group that | | | | deemed to be use of the registered trademark |
| offered 10% extra discount to their loyal customers | | | | against which rectification proceedings are initiated for |
| vide an advertisement issued in The Times of India, | | | | non-use of the mark. |
| New Delhi, dated 28th June, 2008. The complainant | | | | Conclusion- |
| retailers have accused Pantaloon of trademark | | | | In conclusion it can be drawn that Indian Trade Mark |
| violations and unfair business practices, says a Live | | | | Law must me updated on frequently keeping in pace |
| Mint report. All the three parties operate department | | | | with the dynamic and new methods of Trade Mark |
| store format store chains in lifestyle segment. | | | | infringement. Both Courts and Enforcement |
| Even Westside has taken objection to the ad saying, | | | | authorities must be well equipped and be trained for |
| “We have sent a notice to them to which they | | | | efficient disposal of cases relating to Intellectual |
| have not responded,” said Smeeta Neogi, Head | | | | Property. |