Showing posts with label TRADE AND MERCHANDISE MARKS ACT. Show all posts
Showing posts with label TRADE AND MERCHANDISE MARKS ACT. Show all posts

Sunday, June 13, 2010

Trade and Merchandise Marks Act, 1958 - Trade Marks Act, 1999

Code of Civil Procedure, 1908 Rule 1 & 2
Appeals to challenge order dismissing application for ad-interim injunction restraining respondents from committing acts of infringement in respect of their trade mark "MILKA WONDER CAKE" by using trademark "MILKA" in respect of cakes - Held, As observed by the Apex Court in the judgment reported in 2002 (110) CC 518, 2002 AIR(SC) 275 ( Laxmikant V. Patel v. Chetanbhai Shah, ) . Refusal to grant injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff would not be capable of being undone at a later stage.

We do not wish to comment more about the validity of the appellant's trade mark in the present appeals as it would have a bearing on the same issue, which is stated to be pending before the Intellectual Board in the proceedings initiated by the respondents for rectification.

While considering the question of balance of convenience, the possible confusion that may cause in the mind of an ordinary person of average memory and imperfect recollection along with the possibility of difficulties and loss that may be caused to a party complaining infringement, has to be taken note of. In the case on hand, the product is cake and it will not be possible for an ordinary person to identify a particular product as both the products are found to be more or less identical. Therefore it would definitely cause confusion among the customers. The appellant has stated in so many words about the investment and the amount spent by him for sales promotion. Considering the prima facie evidence produced by the appellant and the balance of convenience, we are convinced that the appellant is entitled for an order of injunction pending disposal of the suit.

Friday, June 11, 2010

Trade and Merchandise Marks Act, 1958,

The Trade Marks Act 1999
Section 29(4)
Reckitt & Colman Products Ltd. Vs. Borden Inc (1990) 1 WLR 491 Cited with approval. Held the principles enunciated have been incorporated in Statutes.
Rustom Ali Molla & Ors. Vs. Bata Shoe Co.Ltd. AIR 1957 Cal 120, is no longer good law.
Appeal in a suit for infringement and passing off of the trade mark SONY.
The complaint against the respondents is that they were applying the same trade mark on their
products, being hosiery goods, briefs and underwear, without the authorisation
or consent of the appellants. In connection with this suit, an application for
interim injunction was taken out by the appellants before the trial court, seeking
restraint order on use of the mark SONY by the respondents. Such prayer was
rejected. Against this order of rejection of prayer for temporary injunction by the
trial court, appeal before this Court was preferred by Sony Corporation.

Full Bench
“We agree with the views expressed by the Hon'ble Division Bench in the order out of which this reference arises”. (Para 30)

Reference by DB.
“We are saying so as we ourselves are of the view that if a person is the holder of a trade mark which has acquired a wide reputation transcending international barriers even though in respect of a specified clause or category of goods, that trade mark cannot be allowed to be violated by another person in respect of different category of goods because in our view that other person will be deliberately using the trade mark of the former with an intent to get some undue advantage because of its reputation and goodwill."
Answered in affirmative

Held that in such cases there is no purpose in ordering accounts against
persons dealing in piracy, no accounts are kept of such sales. It has further been held that merely because the
defendants chose not to contest the suit the defendants cannot escape the liability for damages. In fact this court has also taken judicial notice of the sales at least in Delhi by such vendors. I do not find any reason to disbelieve the witness of the plaintiffs regarding damages and find the plaintiffs entitled to a decree for Rs 14 lacs.

Thursday, May 20, 2010

Trade and Merchandise Marks Act, 1958

Section 56 — Wide Power of expunction for equitable right of waiver, delay, acquiescence or estoppel
"Shall" in the context of the Copyright Board, in contradistinction to "may" in section 56 in the relevant trade mark law in relation to the Registrar of Trade Marks or the High Court, as the case may be, creates a mandate upon the Copyright Board to proceed with the expunction where a case therefor is made out by the applicant. Use of "shall" in section 50 of the Copyright Act, 1957 is with a purpose including causing dilution in the rigorous use of equitable right of waiver, delay, acquiescence or estoppel. Application for the impugned registration was filed on 11.5.1999 and the registration thereof was granted on 1999. According to submission of the respondent, it was aware about the existence of mark Rolex as on 26.8.1991 when the petitioner wrote a letter to it about the infringement of the trade marks of the petitioner by the respondent. We believe that that is enough to conclude that the petitioner had interest in the subject matter of the impugned registration. Respondent had a statutory obligation to give a notice of its proposed application for registration which he failed to do.

Monday, May 17, 2010

Trade and Merchandise Marks Act, 1958

Section 46(l)(b) & 56 —
Rectification of register . Removal of mark from registration for non-user — Field Marshall — When before the Board non-user of mark for more than five years on the part of registered owner is established, such owner may show application of section 46(3) to his case, i.e. bona-fide intention to use the trade mark on the date of application for registration — Such bona-fide intention has to be proved by registered proprietor — Valuable right of registered proprietor can be taken away under Section 46, only when conditions thereof are satisfied—An assign er can transfer only such right which he possesses. If his title is not extinguished by reason of a provision of a statute for non-user of the trade mark for a period of five years, any assignment made shall be valid subject to situation — The right of a registered trade mark is not lost automatically on the expiry of five years and one month. It does not provide for a 'sun set' law. It has to be adjudicated upon. Whether the registered proprietor of the trade mark had taken recourse to trafficking or not must be determined in an appropriate proceeding — Appeal allowed.[Paras 12 to 14, 19 to 25, 27, 33 & 34}

Friday, January 29, 2010


Section [28.] Rights conferred by registration.

Plaintiffs trade mark MICRONIX and that of the defendant MICROTEL. Neither visually nor phonetically MICRONIX and MICROTEL have any similarity though name of both the trademarks starts with the word 'MICRO'. Micro is a generic term as it refers to state of art technology and cannot be monopolised by any person as both the parties are in same trade using micro technology as in every electronic and electrical items, micro chips are used and that is why both the articles cannot be confused as to their source or origin by use of word "MICRO" as a prefix to the mark or trade name. Even from the look the style and colour combination and get up of both the trademarks are entirely different and there is not even a remotest similarity.
So far as the letters of the word "BOOSTER" and the word "R" are concerned these have such similarities, which in spite of trademark being little different because of microchip technology, which are definitely deceptive and confusing. Defendant can be injuncted only from using the word "BOOSTER" in the same style as being used by the plaintiff and in no other respect.


Order 39, Rule 1

Section [28.] Rights conferred by registration.

Synopsis Plaintiff, the registered proprietor of the trade marks and the first person to adopt and use the same - Defendant failed to file written statement - Allegations deemed to be admitted.
Plaintiff, the registered proprietor of the trade marks along with the device of a lamb constituting original artistic work within the meaning of the Copyrights Act, and the first person to adopt and use the same. Defendant, an ex-employee of plaintiff, failed to enter appearance despite a valid service. They also failed to file written statement in rebuttal of the allegations made in the plaint. The allegations in the plaint are deemed to be admitted.
Accordingly, a degree for permanent injunction is passed in favour of the plaintiff and against the defendants restraining them from manufacturing, selling and offering for sale directly or indirectly dealing in Blankets, Shawls, Lohis and other woollen piece made goods under the trade mark KASHGARI and device of a Lamb as well as the mark KASHGIRI as part of their trading style and from any other mark or device which is deceptively similar to that of the plaintiffs trade mark and device.