Good morning to all of u . my name is pradnya ramesh godse.

My topic is infrignment ,pasing off

trademark etc.

What is trademark?

A trademark, trade mark, or trade-mark[1] is a recognizable sign, design, or expression which

identifies products or services of a particular source from those of others,[2][3] although trademarks
used to identify services are usually called service marks.[4][5] The trademark owner can be an
individual, business organization, or any legal entity. A trademark may be located on a package,
a label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are
often displayed on company buildings.

 KFC’ is the trademark for Kentucky Fried Chicken. So if you see the
word ‘KFC’ you immediately associate the same to fried chicken.
Another example would be ‘Amul’. A person seeing this word would
immediately associate the trademark to the dairy goods it produces like
milk, butter etc.
 A trademark can be a word mark, service mark or logo mark. An
example has been given below for the company Apple Inc., well known
for their electronic goods.
 A trademark identifies the brand owner of a particular product or service[6]. Trademarks
can be used by others under licensing agreements. the owner of a trademark may
pursue legal action against trademark infringement.
 Designation –
 TM MEANS that you have applied for a trademark, but the trademark has not
been registered yet . the govt takes 18-24 months to register ur trademark
after which you get a trademark registeation certificate .
 SM means service mark , for unregistered service mark , a mark used to
promote or brand service.
 R is for registered tm. Service mark is when a tm is used in relation to service rather
products , it may be called as service mark

 Functions of a trademark
 a) It identifies the goods or services of one trader and distinguishes
them from the goods of another trader.
 b) It signifies that all goods bearing a particular trademark come from a
single source and are of an equal quality.
 c) It is a prime instrument in advertising and selling the goods or
services.
MOVING ON my topic , infringement .in. is when there is
contravention or violation of specific act, law , agreement with
respect to trademark , there is a violation when you use a trademark
which is confusingly similar or identical; to a trademark that is already
registered . when this happens who buy certain goods or use the
services will not be able to distinguish between the brand hence, the
user who has the trademark registered will face losses.
 Infringement can only take place if a trademark has been registered. A
trademark owner whose trademark has not been registered cannot
bring an infringement suit. Section 29 and 30 of the Trademarks Act,
1999 specifically lays down the provisions for protection of the
registered trademark when infringed.
 In the below images, one depicts the registered McDonalds
trademark while the other depicts a copycat. Hence Mc Dowell’s
has infringed McDonald’s trademark.

Likelihood of confusion
Sometimes the trademark relating to a particular set of products and goods
may cause confusion in the minds of the buyer if they are similar. So when
two trademarks resemble each other, this will cause deception among buyers
thus defrauding the customers and infringing the right of the registered user of
the trademark. For example, if A sells matchsticks with the registered
trademark ‘ABC MATCHES’ and B, who newly enters the market decides to
sell matches with the trademark ‘ABCD MATCHES’, the people who go to buy
the products will be confused and thus may end up buying B’s products thus
causing loss to A.

Deceptive marks
Deceptive marks are likely to cause confusion in the general public. Thus to
know if there is a case of infringement, an overall similarity of the goods are
taken into account. Deception takes place in the three following ways:

a) Deception as to the trade origin

Let’s take an example of a textile company A that sells silk sarees called
‘Mysore Silk’. All the products have “Made in Mysore” or “Product of Mysore”
written on the trademark, which indicates its geographical indication, is
Mysore. It was later found that A manufactures all its goods from Kerala and
not Mysore. Hence, there is deception as to the trade origin and this is a clear
cut case of infringement by deception as to the trade origin.

b) Deception as to goods
If A sells, ORLWOOLA for shawls, it would suggest that the shawls are made
of all wool when in fact it is made of cotton. Here, this is a case of deception
as to the goods.
c) Deception as to the trade connection
If there is A who deceptively sells cars with the trademark ‘ TATA
ROADSPEED’, it is a case of infringement as it is very well know that ‘TATA’
is a registered trademark by the TATA Group. Thus the buyers might
associate A’s car to the TATA group.This is a case of deception as to the
trade connection.

Identical marks
When both the trademarks are clearly identical to each other that is, without
change in the spelling, style of writing, logo and phonetically similar, it is a
case of infringement. For example, if, A sells butter with the registered
trademark ‘SUCAM’ and D sells butter also with the name ‘SUCAM’, it is a
clear case of trademark infringement.

What is passing off?

“Nobody has any right to represent his goods as the goods of somebody else”.
This is the underlying rule that has been laid down in the whole sphere of
Intellectual Property Rights.

In simple words, if a person sells his goods as the goods of another, then the
trademark owner can take action as this becomes a case of passing off.
Passing off is used to protect the goodwill attached with the unregistered
trademark.

When the trademark has been registered by the owner, it becomes a suit for
infringement, but if the trademark has not been registered it becomes a case
of passing off.

Example: A runs a company that sells electronic goods. The trademark for his
company is ‘SPEEDELECTRO’. He has been using the trademark for over 12
years, but has not registered the same. A company XYZ decides to sell their
electronic goods also as ‘SPEEDELECTRONICS’. In the mind of the people
who decide to buy the goods, they would associate ‘SPEEDELECTRONICS’
as ‘SPEEDELECTRO’ and thus because of the acquired good will of A’s
company, they would purchase XYZ’s products.

Here XYZ is committing a case of passing off of goods as he is representing

his goods as the goods of A’s company. A can file a suit for passing off.

Passing off: Essential factors to be considered

The nature of the trademarks
That is, whether it is a word mark or the logo mark that has been deceptively
used. For example, A is a well known manufacturer of toothbrushes with the
trademark ‘TOOTHY’ and the logo mark has a symbol of a toothbrush with
toothpaste on it. B decides to sell toothpastes with the same trademark
‘TOOTHY’ and the same logo. This is a case of passing off and A can take
action against B.

Degree of resemblance between the marks

Whether they are phonetically similar or written in the same way. For example,
A runs a business ‘OYO ROOMS’ which is famous for their hospitality services
and this is the trademark that they have been using for several years. It was
found out that B was also providing the same services but with the trademark
‘TOYO ROOMS’. The public would be confused and would think that since
‘TOYO ROOMS’ and ‘OYO ROOMS’ sound phonetically similar, they are from
the business run by A. Thus B would get profits because of the resemblance
between the trademarks. This is a case of passing off.

Nature of goods in respect of which they are being used

For example A is an established, well known seller of soaps by the trademark
‘123Soaaps’ and B decides to sell soaps by the trademark ‘ 567 Soaaps’. The
nature of the goods is soaps and so the consumers will be confused regarding
the products. They would assume that both the soaps are from A’s well known
business and purchase B’s goods, thus causing losses to A. This is a case of
passing off.

Mode of purchasing the goods or placing the orders for

goods
For example A is an established seller of vegetables. To order vegetables,
consumers have to go onto the internet and use A’s website called ‘VEGGIES’
where orders can be placed. B decides to copy A and also starts ‘VEGGIES’ a
website, which allows consumers to place orders for vegetables online. This is
a case of passing off since not only is the trademark similar but also the mode
of purchasing the goods is similar (The Website).
Similarity in nature, character and performance of the
goods
Let’s take a case where a person, X, sells washing machines by the name
‘WHIRLPOOL’ and he has been carrying out this business for over 20 years.
Y also decides to sells washing machines named ‘WHIRL-POOL’. Both of the
washing machines have the same price and the same features, thus
confusing the consumer and causing harm to A, who has been using his
brand for a long time. This is a case of passing off.

This is a pictorial representation of an example for passing off of goods where

OREO biscuits have been passed off as GO-GO’s biscuits.

Difference between Trademark Infringement and

Passing Off
TRADEMARK INFRINGEMENT

i. Statutory remedy

ii. Registration of trademark is required

iii. Prosecution under Criminal Law is easier.

iv. Presumption of confusion among the public is the main criteria to

be proved by the Plaintiff in case of infringement of a trademark.

v. Can institute the Trademark infringement suit where the proprietor

resides or carries on professional/ personal business.[ As per Section
134, Trademarks Act,1999]

PASSING OFF

i. Common Law Remedy

ii. Registration of trademark is not necessary

iii. Prosecution under Criminal Law is relatively harder.

iv. Not only presumption of confusion among the public but also
deception of the public and injury to the goodwill of the Plaintiff has to
be proved.

v. Can institute the Passing Off suit only where the defendant resides
or carries out work.[ As per Section 20, Civil Procedure Code,1908]

 Registration –

Exclusive right – the owner of reg. Tm enjoys exclusive right

over ther tm. The owner cam also enjoy sole ownership of the tm.
It gives the right to sue the unauthorises user of the trademark
reg.
1. Trademark research
This research reveal all the information about an identical trademark that has already been
filed with the trademark authorities.

2. Trademark filing
After the formulation of search report , application for the future report will be made, this
application can be filed online. An application shall be contain the following mandatory
details: logo/mark/tagline or the mark, name & address of the owner(
individual/company/firm), classification of the trademark class, date since which the
logo/mark/tagline is used, description of the goods and service, once the application is filed
the registry will issue official receipt with the file date and number allotted to the
application.

3. Vienna code classification

The Vienna codification was established by the Vienna agreement (1973). It is an
international classification of the figurative elements of marks. Vienna code classification is
next stage after filing the application

4. Examination
This is the next stage after Vienna codification. Upon completion of Vienna codification, the
application will reach the desk of a designated officer(to). The to has the right to either to
accept the application or send it to the other stage or raise objection. The to review the
application and issue the examination report for this purpose.

5. Journal publication
6.
This is the next stage after the application is pass by the to, wherein the purpose trademark
is published in the trademark journal, the trademark journal is published every week. Once
the mark is published in the journal, public have a opportunity to object to if it they have
substantial grounds. The third party has to file the trademark opposition within three
months (extendable by 1 month) from the date of publication of the trademark.

7. Trademark registration
If there are no opposition within 4 months from the date of the advertisement in the trade
marks journal, when the trade mark registration certification will be issued. The registered
trademark is valid for the period of 10 years from the date if application. Registration can be
renewed indefinitely as long as the renewal fees are paid every 10 year.
 International trade law is the law regarding international commerce

It has two aspects public & private, the public aspect of ITL seeks to coordinate commercial
policies of states & its the part of public international law, the private of INTL government
international commercial translate between the people belonging to different states . This is
convered under private international law.

Purpose of international trade law.

The purpose if ITL is promote free trade. Its mean a person should be free to buy the
product from anywhere of globe, in the same way the person is free to see this product at
highest possible price at any place .

Free trade :- before the enomores of the modern state system people including merchant
could move freely subject to their own physical limitation . there were no customize tariff
but wheather the organisation state system come into extensive 17th century custom duty
where introduce