Trade Mark Act, 1999

Section 29 — the respondent/defendant has taken a stand that he has commenced his business with the label 'NAYA JET BRAND' on 01.2.1997 having entirely different from the quality of plaintiff such as 'NAYA JET BRAND' with different colours and figures of the figure brand represented in English, Tamil and Hindi in dark blue, orange, red and yellow colour with attachment of each figures of 'NAYA JET BRAND' colour combination and also a plea to the effect that there are lot of differences of the figures of'JET BRAND' of the plaintiff and 'NAYA JET BRAND' of the defendant in all aspects a cursory look of the appellant/plaintiffs label Ex.A. 1 and the Ex.A. 3 label of the respondent/defendant, this Court is of the considered view that the respondent/defendant has adopted the appellant/plaintiffs label Ex.A. 1 with small/minute changes in regard to the visual of flying of aeroplane and adding a word 'NAYA' before the word 'JET BRAND' in English and further there is phonetic similarity of'JET BRAND' except the word 'NAYA' and these will not alter the situation in any way in favour of respondent/defendant including the one the respondent/defendant even selling the lungies in the name of 'QUEEN JET BRAND' from 16.7.1999 with a device of aeroplane flying will not enure to his benefit and accordingly, this Court holds that the respondent/defendant with a dishonest intention has adopted the trading style label similar to that of appellant/plaintiff and has practised deception and has committed an act of passing off infringement of trade mark of the appellant/plaintiff and resultantly, the appellant/plaintiff is entitled to the relief of permanent injunction restraining the respondent/ defendant, his men, agents etc. claiming under him from using or attempting to use or enabling others to use the word NAYA JET the devise of the aeroplane or in combination thereof and (or in any other Trade Mark identical or deceptively similar or in any other manner infringing the plaintiffs Trade mark registered in Regn. No. 467004 in clause 24 in respect of Textile cloth including lungies and further that the respondent/defendant is directed to produce before the trial Court all his accounts of sales and profits from the year 1996-1997 for determining the damages/compensation payable by him to the appellant/plaintiff and in this regard, the appellant/plaintiff is directed to file necessary application by means of separate proceeding and the trial Court shall determine the same in the manner known to law and the points 1 to 4 are answered accordingly thereby perforcing this Court to interfere with the findings rendered by the trial Court and consequently allows the appeal to promote substantial cause of justice. [Para 25 & 33]

Trade Mark Act, 1999 Section 45

Infringement of trade mark THEOBID

I also find that under Section 2(l)(w) a registered trade mark is a trade mark which is on the Register and is in force. Registered trade mark is thus different from registered proprietor. Assignment under Section 2(b) is an assignment in writing by act of parties concerned. Assignment does not require registration. The Register of Trade Mark under Section 6 is to contain trade marks with the name etc of proprietor. Section 37 empowers the person entered in the Register as proprietor of trade make to assign the same. Section 38 makes the trade mark a tradeableproperty I commodity subject to restrictions in Sections 40 to 44. Thus registered trade mark is different from proprietor thereof. Thereafter, Section 45(1) provides "where a person becomes entitled by assignment ..to a registered trade mark, he shall apply in the prescribed manner to the Registrar to Register his title..." meaning thereby that assignment of title in registered trade mark is complete on assignment within the meaning of Section 2(b), i.e., on writing between the assignor and the assignee. For assignment to be complete, the Registrar is not involved. It is further borne out from language supra of Section 45(1) that the assignee acquires title to registered trade mark on assignment and not by registration. Registration is of title acquired by assignment. The inquiry which a Registrar is to make before such registration of title acquired by assignment is of satisfaction of proof of title and as to disputes if any as to assignment. This inquiry is limited to this extent only in contradistinction to inquiry which the Registrar is to make before registering a trade mark. A dispute as to assignment can be raised by the assignor or by some person claiming prior assign¬ment and not by strangers or by persons claiming adversely to the assignor. [Para 11]

Secondly and more importantly, though Section 45(2) couched in peremptory language, is however subject to a direction to the otherwise of the court. The ultimate decision, therefore, is of the court, whether to admit into evidence or place reliance on any document of assignment or transmission of trade mark, inspite of the same being not entered in the Register. The legislature has thus after laying down the general rule of an unregistered document of assignment being not admissible in evidence, still left the discretion in the court, to be of course exercised in accordance with law and depending on facts and circumstances of each case. Section 45(2) appears to have been inserted more for the reason of ensuring the enforcement of Section 45(1). In the absence of Section 45(2), assignees of registered trade mark would not have bothered to apply for registration with the Registrar and which would have led to disputes as to who is the registered proprietor. It is in the nature of Section 35 of the Stamp Act prohibiting the courts from admitting into evidence documents not duly stamped. However, the intent there also is not to extinguish the rights under the documents but only to ensure collection of stamp duty. This provision is unlike that of Registration Act, whereunder there can be no conveyance of title without a registered document. For the same reason, the latter part of Section 45(2), after providing for the prohibition provides "unless., the court otherwise directs." Seen in this light, the contention of the counsel for the plaintiff that there can be no hiatus and the title as registered proprietor cannot remain in abeyance is well founded. [Para 15]

I thus find that the plaintiff notwithstanding being not registered is entitled to exercise rights as a registered proprietor of trade mark THEOBID. [Para 16]

Trade Marks Act, 1999
Section 27
Passing off. "DABUR Dashmularishta" and "DABUR Ashokarishta" Sufficient evidence adduced by the palintiff to prove that the plaintiff is only the proprietor and prior user of the labels are of the palintiff. Labels of the defendant are simple imitations or substantial reproductions of the plaintiffs labels therefore the profits of the defendant are the losses suffered by the plaintiff.

HELD that the defendant must be directed to produce its account books. Compensatory damages awarded .The ploy of defendant is that it simply picked up the label in the advertisement of the plaintiffs product and used it as their label for 'Dashmularishta' . Suit decreed in terms of Para 21 (i), (ii and (iii) of the plaint with costs along with damages to the tune of Rs. 1 lac as against the relief of Para 21 (iv) of the plaint. The decree be drawn accordingly.

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Trade Marks Act, 1999
Section 29

Deceptively similar " For a deceptive similarity, the resemblance must be such as to be likely to . deceive or cause confusion. What degree of resemblance is necessary is, from the nature of things, a matter incapable of definition a priori. Each case must depend upon on its own facts and circumstances, in the considered opinion. The risk of deceptive and confusion ought not to be fancifully and it must be a real one the decree of similarity of the two marks in sight and sound, looking not just at the registered mark as a whole but also at its salient or essential features or the idea behind it, the whole range of potential customers for the goods protected by the registered mark, and not just customers for the goods of the particular type marked by the defendant, the nature and kind of customer likely to purchase the plaintiffs' and defendants' goods; the manner in which the purchasers of the goods are generally made."

Name and style "Shri Pattathu Amman Textiles" the offending mark trade mark consistent of a device of an Aeroplane with the word Jet brand reputed in English, Tamil and Hindi in blue, red and yellow colour combination . However defendant doing the business under the name and style of 'Naya Jet Brand Lungies' Sri Periyur Amman Textiles from 16.7.1999 onwards in the name of 'QUEEN JET BRAND' therefore deceptive adoption of device of the Aeroplane.

Trade Mark Act, 1999
Section 29

The respondent/defendant has tated that he has commenced his business with the label 'NAYA JET BRAND' on 01.2.1997 having entirely different from the quality of plaintiff such as 'NAYA JET BRAND' with different colours and figures of the figure brand represented in English, Tamil and Hindi in dark blue, orange, red and yellow colour with attachment of each figures of 'NAYA JET BRAND' colour combination and also a plea to the effect that there are lot of differences of the figures of'JET BRAND' of the plaintiff and 'NAYA JET BRAND' of the defendant in all aspects a cursory look of the appellant/plaintiffs label Ex.A. 1 and the Ex.A. 3 label of the respondent/defendant, this Court is of the considered view that the respondent/defendant has adopted the appellant/plaintiffs label Ex.A. 1 with small/minute changes in regard to the visual of flying of aeroplane and adding a word 'NAYA' before the word 'JET BRAND' in English and further there is phonetic similarity of'JET BRAND' except the word 'NAYA' and these will not alter the situation in any way in favour of respondent/defendant including the one the respondent/defendant even selling the lungies in the name of 'QUEEN JET BRAND' from 16.7.1999 with a device of aeroplane flying will not enure to his benefit and accordingly, this Court holds that the respondent/defendant with a dishonest intention has adopted the trading style label similar to that of appellant/plaintiff and has practised deception and has committed an act of passing off infringement of trade mark of the appellant/plaintiff and resultantly, the appellant/plaintiff is entitled to the relief of permanent injunction restraining the respondent/ defendant, his men, agents etc. claiming under him from using or attempting to use or enabling others to use the word NAYA JET the devise of the aeroplane or in combination thereof and (or in any other Trade Mark identical or deceptively similar or in any other manner infringing the plaintiffs Trade mark registered in Regn. No. 467004 in clause 24 in respect of Textile cloth including lungies and further that the respondent/defendant is directed to produce before the trial Court all his accounts of sales and profits from the year 1996-1997 for determining the damages/compensation payable by him to the appellant/plaintiff and in this regard, the appellant/plaintiff is directed to file necessary application by means of separate proceeding and the trial Court shall determine the same in the manner known to law and the points 1 to 4 are answered accordingly thereby perforcing this Court to interfere with the findings rendered by the trial Court and consequently allows the appeal to promote substantial cause of justice.

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Trade Marks Act, 1999
Section 29(4)(5) —
Suit for permanent injunction restraining infringement of trademark, passing off, damages, delivery of accounts . Plaintiff is the proprietor of the trademark SASKEN and of its logo it has world wide presence.
Defendant working under the name and style of Sasken Biotech Pvt. Ltd.
HELD "I accept the contention of the learned counsel for the plaintiff that the trademark "Sasken" is an invented word and the defendants have no jurisdiction to use the same either as a trademark or as part of their corporate name in relation to pharmaceutical goods of any kind. The defendants are thus guilty of infringement of trademarks within the meaning of Section 29(4)(5) of Trademark Act, 1999. As regards the case of passing off, it is well established law that no actual confusion and deception is necessary in order to prove the case.
Therefore relief of Rs 2 lac as punitive damages and cost of the suit awarded.

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Trade Marks Act, 1999, Sections 134 & 135
Copyright Act, 1957, Sections 27(2) & 51
Plaintiff not residing or working for gain in Delhi . Territorial jurisdiction Invocation of jurisdiction of Court on the basis of vague allegations that the goods of defendants were being sold throughout the country including Delhi makes no sense. Delhi court has no jurisdiction.

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Trade Marks Act, 1999
Section 92
Intellectual Property Appellate Board (Procedure) Rules, 2003 — Rule 14
Rules of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision.
Therefore the application for taking on record additional documents should be allowed as IPAB has powers to regulate their own procedures but Rule permits and allows IPAB to extend the time for doing any act prescribed under the Rules whether such time as specified has expired or not . HELD Respondent filed six additional affidavits by way of evidence which have not been taken on record because of the delay . Further Held that one last opportunity should be granted to the petitioner and the respondent to file documents and also file affidavit by way of evidence in support of their cases . Impugned orders liable to be set aside.

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