Act for Acts

Marks with International Reputation – Trademark Registration in Cochin

Marks with international reputation – special consideration

In the case of marks which have a acquired international reputation, an action for its protection against unauthorized use will lie even if the owner of the trade mark does not have any business activity in India. Reputation of a product may precede its introduction and may exist without trade in such product in the country. Where two products in question were pharmaceutical preparations with deceptive similarity and the foreign manufacturer company choose the name first and use it on its product in several countries around the world excluding India where after the Indian company entered the market with their product and the foreign company together with certain Indian pharmaceutical Companies set up a joint venture company for sale of its products in India and had applied for registration of the disputed trade mark before the Registrar of Trade Marks, Indian company can be restrained from using the trade mark. Moreover, if it is possible for a purchaser of the Indian company’s product in India to do so under the impression that he is buying the foreign company’s product, the Indian company as the subsequent adopter of the mark must be restrained from doing so. Further once the foreign product is released in the Indian market, the consequences may well prove disastrous given the fact that in India drugs are available without prescription.

“The defendant’s use is in relation to goods/service covered by plaintiff’s registration”

marks

The expression “in relation to the goods or services in respect of which the trademark is registered” occurring in section 29(1) is significant. It will follow that if the defendant’s use of the mark is not in respect of some or any of the goods or service covered by the registration, an infringement action may not lie. In such cases, the option for the plaintiff is a passing off action.

Where the defendant’s goods are identical to those of the registered one and where the defendant’s goods have been promoted for uses and used in ways identical to those, falling within the class in which they are registered, for which the registered owners goods are promoted and used, the defendant cannot claim that his goods fall within a different class than that for which the owners mark is registered.

Plaintiff’s action must be prompt

The very life of a trademark depends upon the promptitude with which it is vindicated. It is not necessary to plead the user of the registered trademark, respectively.

Merely threatening a person in cases of this kind, without taking proceedings, is not sufficient if the plaintiff really does stand by and allow a man to carry on business in the manner complained of to acquire reputation and expend money, he cannot then after a long lapse of time turn round and say that the business ought to be stopped

Delhi High Court has considered at length the question of delay and has held that delay will not defect statutory rights. In Hindustan Pencils Pvt. Ltd versus India Stationary Products, the relevant observations are: “Even though  there may be some doubt as to whether latches or acquiescence can deny the relief of a permanent injunction, judicial  opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff’s rights, then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied The defense of latches or inordinate delay is a defense in equity. In equity, both the parties must come to the Court with clean hands. An equitable defense can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else’s right cannot claim the continued misuse of the usurped right”.

“The circumstance which attended the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted, it would be difficult in most cases to purify it subsequently.”

Defense of Estoppel

The doctrine of estoppel can only be invoked to promote fair dealings Where infringement is deliberate and willful and the defendant acts fraudulently with knowledge that be is violating plaintiff’s rights, essential elements of estoppel are lacking and in a such a case, the protection of plaintiff’s rights by injunctive relief never is properly denied. It is only in cases of an honest concurrent user by the Defendant that inordinate delay or latches may defeat the claim of damages or rendition of accounts. But the relief of injunction cannot be refused. This is so because it is in the interest of the general public which is a third party in such cases which has to be kept in mind. Where the plaintiff, however, is guilty of acquiescence, different considerations may apply. Acquiescence may mean an encouragement by the plaintiff to the defendant to use the infringing mark. It is as if the plaintiff wants the defendant to be under the belief that the plaintiff does not regard the action of the defendant as being violative of the plaintiff’s rights. Furthermore, there should be a tacit or an express assent by the plaintiff to the defendant’s using the mark and in a way encouraging the defendants to continue with the business. In such a case, the infringer acts upon an honest mistaken belief that he is not infringing the trade mark of the plaintiff and after a period of time, when the infringer has established the business reputation, the plaintiff turns round and brings an action for injunction, the defendant would be entitled to raise the defense of acquiescence….Acquiescence cannot be inferred merely by reason of the fact that the plaintiff has not taken any action against the infringement of its rights.

Own name defense to infringement

Section 35 of the Act provides that “Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name”. This provision is to be read in conjunction with section 30 (1)(A) and (b) which require that such use is to be “in accordance with honest practices in industrial or commercial matters” and “is not such as to take unfair advantage or be detrimental to the distinctive character or repute of the trade mark”.

In Reed Executive PLC v. Reed Business Information Ltd., the law is clarified thus: When a man uses his name in connection with his goods or services he is using it as a trade mark to tell you. This comes from me- John Doe”. Sometimes people think that use of a name on goods or for services is not use as a trade mark. They contrast use as a trade mark with use “just as a name” But use of a name in connection with goods or services, even in small print, is trade mark use, though not of the upfront in-your-face kind the subject of vast advertising spend. The Court also gave guidance on the meaning of “honest practices etc.” It did not go down the route suggested to us by Mr. Hobbs. On the contrary it said that the “condition of honest practices constitutes in substance the expression of a duty to act fairly in relation to legitimate interests of the trade mark owner” The test is for the national court to carry out an overall assessment of all the circumstances-and in particular to assess whether the defendant “might be regarded as unfairly competing with the proprietor of the trade mark”.

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The court concluded by saying that “a man may use his own name even if there is some actual confusion with a registered trade mark. The amount of confusion which can be tolerated is a question of degree- only of objectively what he does, in all the circumstances, amounts to unfair competition, will there also be infringement. In practice there would have to be significant actual deception-mere possibilities of confusion especially where ameliorated by other surrounding circumstances (mere aural confusion but clearly different bottles) can be within honest practices. No doubt in some cases where a man has set out to cause confusion by using his name he will be outside the defense (the English passing off cases cited above) in other he may be within it if he has taken reasonable precautions to reduce confusion. All will turn on the overall circumstances of the case.

When validity of registration questioned or rectification proceedings pending

The law on this point is contained in the judgment of the Bombay High Court in Hindustan Embroidery Mill Pvt.Ltd. versus K. Ravindra & Co., where the judge pointed out that “it is not the practice of this court to consider the validity of the registration of a trade mark on a motion for interlocutory injunction taken out by the person who has got the mark registered in his name. While a mark remains on the Registrar (even wrongly), it is not desirable that others should imitate it. I am unable to accept the contention that the pendency of the rectification application prevents the plaintiffs from exercising the statutory rights under the Trade Marks Act or from seeking interim reliefs based thereupon”. Registration is prima facie evidence of the mark. Once the mark is registered, howsoever wrongly the marks remains on the interim injunction to prevent infringement can be granted. In such a prima facie case, the defendant may have hardly anything to say to defend his case, except to put up a counter claim and raise the plea that-

  1. Defendant is a prior user of the mark (section 34)or his use comes within the exceptions provided in section 30, 34 or 35 of the Act.
  2. Registration of the plaintiff’s mark is invalid.
  3. The defendant’s use of his mark comes within the exceptions of section 30, 35 and 36 or 12.
  4. The plaintiff’s mark is registered subject to certain conditions or limitations and the defendant’s use is outside the purview of the registration.
  5. The defendant is using the mark in relation to goods upon which the registered owner or registered user affixed the mark or on a bulk upon which a mark was affixed and of which the goods form a part and the mark had not been removed or obliterated.
  6. The use of the mark is in relation to goods adapted to form part of or to be accessory to, other goods or services and the use of the mark is necessary to indicate that the goods or services are so adapted and are genuine.
  7. The goods in which the defendant is dealing have been lawfully acquired and the owner of the marks has assigned the mark subsequently to another person or that the goods have been put on the market by the proprietor or with his consent.
  8. The defendant or his predecessor in title has used the mark continuously from a date prior to the use or registration of the plaintiff’s marks.
  9. The defendant’s use of the marks was bona fide use of his own name or that of his place of business or that of any of his predecessors in business or bona fide description of the character or quality of his goods.

The defendant may also plead:

  • The plaintiff is not entitled to sue for infringement, not being the proprietor of a registered trade mark, his assignee or his legal representative or a registered user.
  • The plaintiff’s mark was registered without any bona fide intention on the part of the plaintiff to use the marks or that there was no bona fide use of the plaintiff’s mark for a continuous period of five years or longer, and that the mark is liable for rectification under section 47 of the Act. He may also set up the plea of abandonment of the marks by the plaintiff, in which case the onus is on the defendant to prove abandonment.
  • The suit is barred by limitation see section 120, read with section 40 of the Indian Limitation Act, 1908.
  • Principle of estoppel. See Newman Patel and the judgment of Privy Council in Lindsay Petroleum Co. versus Hurd.
  • Where it is held that if acquiescence proved, that would have been a complete answer for test of acquiescence.
  • Relief of injunction being a discretionary equitable relief, the person invoking equitable jurisdiction of the court must come with clean hands and disclose all material facts. Court will be justified in refusing injunction, or withdrawing the interim relief already granted, when the plaintiff does not come with clean hands.

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