Court : Chennai
..... be stayed till the disposal of the opposition filed by the plaintiff and that when the defendant has not filed any rectification application after challenging the registration of the plaintiffs trade mark as invalid before this court, the statutory direction as enshrined in section 124(1)(b)(ii) of the act has to be complied with.5. contending on the other ..... like proceedings, it is appropriate to stay further proceedings of the case. it is her further contention that as per section 124(1) (a) of the trade marks act, 1999, registration of the plaintiff's trade mark has been challenged as invalid in the written statement specifically, that even the defendant in the written statement has pleaded that in view of the opposition proceedings ..... the subject matter in issue in the proceedings before the learned registrar of trade marks and in the present suit before this court are substantially one and the same. hence, the suit has to be stayed till the disposal of the opposition proceedings before the ..... no.1003963 in class 5 claiming user since 31.12.1998. against the said application, the applicant has filed necessary opposition proceedings under amd no.192440 before the registrar of trade marks, ahmedabad and the said opposition is still pending. 2.(b) till a decision is pronounced by the concerned authority in the opposition proceedings, the present suit should be stayed. .....Tag this Judgment!
Court : Delhi
..... case of de cordova and ors. v. vick chemical coy. (1951) 68 r.p.c.103 where vick chemical coy were the proprietors of the registered trade mark consisting of the word "vaporub" and another registered trade mark consisting of a design of which the words "vicks vaporub salve" formed a part. the defendants advertised their ointment as 'karsote vapour rub" and the court ..... . in parle products (p) ltd. v. j.p. & co., mysore, air 1972 sc 1359, supreme court inter alia observed as under:- according to karlys law of trade marks and trade names (9th edition paragraph 838) "two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. a person ..... reiterated by supreme court in kaviraj pandit durga dutt sharma v. navaratna pharmaceutical laboratories, ptc (suppl) (2) 680 (sc), that if the defendant resorts to colourable use of a registered trade mark, such an act of the defendant would give rise to an action for passing off as well as for infringement. in an action based upon infringement of a registered ..... case there is an invasion of the statutory right provided to him for use of that trade mark in relation to the goods for which the trade mark has been registered in his name. section 29(1) of trade marks act, 1999 provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use .....Tag this Judgment!
Court : Mumbai
..... a passing off action by the former. 16. in the present case also, i can see no intention on the defendants part to have abandoned the trade mark. mr. dhond sought to rely upon several circumstances which would indicate the contrary. i do not intend considering the same in any detail as the ..... for registration." 15. i am in respectful agreement with the above observation. while considering the plaintiff's action for passing off vis-a-vis a registered trade mark also, the relevant date must be the date of the application for registration and not the date on which the registration is actually obtained. i have ..... 10-11-1969 and the evidence of user filed by the opponents is from october, 1970. since the applicant's entitlement to registration of a trade mark has to be decided with reference to the facts as on the date of the application for registration, the evidence of user by the opponents subsequent ..... date is the date of opposition. on a due consideration of the matter, i am of the view that for the purpose of registration of a trade mark the rights of the parties have to be usually determined as on the date of the application. this view is taken by romer j. in jellinek ..... was not actually used by the proprietor in the course of his activities. the submission was sought to be supported by relying upon section 27 of the trade marks act, 1999, which saves passing off actions. 7. the question was considered by a learned single judge of this court in sun pharmaceutical industries limited v .....Tag this Judgment!
Court : Delhi
Reported in : LC2007(3)46; 2007(35)PTC388(Del)
..... for filing of the evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under rule 50 (1) of the trade marks rules, 2002 and that the answer to question no. 2 is that the non-filing of the evidence affidavit within the prescribed time would by itself ..... give any discretion to the registrar in this connection. the object is apparent that the delays be cut down in deciding the application for registration of a trade mark.16. it is, thereforee, quite clear that the answer to question no. 1 is that the registrar does not have the power to extend the time ..... mentioned therein.7. reading rule 50, it is clear that the evidence by way of affidavit in support of an opposition to the registration of a trade mark has to be filed within two months of the service of a copy of the counter-statement on the opponent. this period of two months is further ..... counter-statement in form tm-6 on 14.10.2002. it has been contended on behalf of the petitioner that under rule 50 (1) of the trade marks rules, 2002, evidence by way of affidavit in support of the respondent no. 1's opposition ought to have been filed within two months which was extendable ..... registrar to extend time. he also placed strong reliance on a decision of a full bench of this court in the case of hastimal jain trading as oswal industries v. registrar of trade marks and anr. 2000 ptc 24 (fb).6. section 21 of the 1999 act contains provisions in respect of the opposition to registration. sub .....Tag this Judgment!
Court : Delhi
..... to imitate the trade mark of others, in case those who are sued before the courts are not made to pay such damages as would really pinch them. awarding token damages may, therefore, not serve ..... the market, but may get an inferior product on account of such unscrupulous persons using trademarks of others for their own commercial benefit, at the cost not only of the trade mark owner, but also the consumer who purchases their product. another purpose behind awarding punitive damages is to deter those who may be waiting in the wings and may be tempted ..... sold or the service being rendered under that well known brand will prove to be of expected standard or quality. 10. well known marks and trans-border reputation of brands was recognized by courts in india, even before trade marks act, 1999 came into force. in daimler benz. akietgesellschaft v. hybo hindustan, air 1994 del 239, the manufacturers of mercedes benz sought an ..... accorded a statutory protection in the trademarks act, 1999, irrespective of whether it is an indian mark or foreign mark. section 29(4) of trade marks act, 1999, which is relevant in this regard, reads as under:- 29(4) a registered trade mark is infringed by a person who, not being a registered proprietor or a person, using by way of permitted use, uses in the .....Tag this Judgment!
Court : Delhi
..... by, when another is invading the rights and spending money on it. it is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. it implies positive acts; not merely silence or inaction such as is involved in laches. in harcourt v. white10 sr. john romilly said: ..... allow another to invade the rights and spending money on it; (ii) it is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name, etc. 106. the defence of acquiescence, thus, would be satisfied when the plaintiff assents to or lay by in relation to the acts of ..... trademark which they had coined. the appellant failed to show any prior user. it was therefore held that defence under section 33(1)(b) of the trade marks act was not available to him. in marie stops int. (supra), the plaintiff which was the owner of trademark "marie stopes" had engaged the ..... as by the company. the mou provided that both the parties could continue to use the trademark but their territories were distributed. the registrar of trade marks, without issuing notice to petitioner no.1 removed his name from the register of trademarks. this court was prima facie of the view that the ..... on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks. hence, no infringement of the trademark "indian express" by the defendants is made out on account of use of trademark "new indian express" by .....Tag this Judgment!
Court : Delhi
..... by, when another is invading the rights and spending money on it. it is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. it implies positive acts; not merely silence or inaction such as is involved in laches. in harcourt v. white10 sr. john romilly said: ..... right in the defendant as was laid down in rodgers v. nowill12. "delay simpliciter may be no defence to a suit for infringement of a trade mark, but the decisions to which i have referred to clearly indicate that where a trader allows a rival trader to expend money over a considerable ..... section 15 to 20 and not with reference to sub-section (2) of section 134 of trade marks act. this judgment does not help the defendant for the simple reason that if section 20 of the code of civil procedure is applied, this ..... disputed. in the case of saranya zaveri (supra), it was held that in a suit falling under clause 3(c) of section 134 (1) of trade marks act, 1999, the territorial jurisdiction of the court has to be decided with reference to general provisions of the code of civil procedure, namely, under ..... mere negligence and acquiescence." therefore, acquiescence is one facet of delay. if the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. if the acquiescence in the infringement amounts to consent .....Tag this Judgment!
Court : Mumbai
Reported in : AIR1991Bom76; 1990(3)BomCR379
..... should also look at the class of customers who are likely to buy these goods. , the appellants in this connection pointed out that the trade marks of the 1st respondents were used in connection with laundry blue which could be purchased across the counter, while their colours were designed for industrial ..... a likelihood that this bird is being mistaken or accepted as an eagle, that possibility is itself sufficient to entitle the registrar to say that 'this trade mark is likely to deceive or cause confusion'. this reasoning was upheld by the supreme court when the case went in appeal before the supreme court, : ..... of ordinary intelligence as an eagle, and, as we said before, whether, if he asked for eagle goods and he got goods bearing this trade mark of the respondents, he would reject them saying, 'this cannot be an eagle; i asked for eagle goods and the bird i see before ..... written on either side of the two birds -- 'bul' on one side and 'bul' on the other side. trade mark the word mark 'bul bul' is already registered. as against this, the registered trade mark of the 1st respondent consists of the picture of a single bird sitting on a twig with the words 'robin ..... its bottom. the registration was applied for in respect of goods falling in cl. (2) viz. colours. the appellants applied for the registration of this trade mark for the states of maharashtra, gujarat, karnataka, kerala, tamil nadu and the union territory of delhi. the appellants are now willing to restrict the registration .....Tag this Judgment!
Court : Mumbai
Reported in : 2003(5)BomCR295; 2004(28)PTC193(Bom)
..... herein which commenced business only in 1998.39. the next question is whether the first defendant has infringed the plaintiffs registered trade mark. the plaintiffs registered trade mark consists of the mark 'm-seal' with a disclaimer of the word 'seal'. the trade mark was registered on 16.8.1972. the registration is valid till 16th august, 2007 as is clear from the certificate produced ..... first defendant has infringed the plaintiffs copyright in respect thereof.65. dr. shivade submitted that the plaintiff had expressly or impliedly consented to the first defendant using to the said trade mark. he founded this defence on section 30(b) of the act which reads as under :30.'acts not constituting infringement - (1)notwithstanding anything contained in this act, the ..... fact that the deed of assignment in the facts of this case would require to be considered keeping in mind the surrounding circumstances, including the deed of assignment of the trade mark.13. dr. tulzapurkar also challenged dr. shivades interpretation of the deed of assignment of copyright.14. it is necessary firstly to ascertain the copyright works claimed by the ..... as a director of kliptronic components pvt. ltd.3. the association of motiwala with the plaintiffs predecessors was thus substantial, indicating his knowledge of and familiarity with the said trade mark and copyright.4.on 1st september, 1992, a partnership firm electro components manufacturing co., was formed of which k.e. motiwala was a partner. he resigned as a .....Tag this Judgment!
Court : Mumbai
Reported in : AIR2009Bom84; 2009(111)BomLR796; LC2009(1)237; 2009(40)PTC91(Bom)
..... fide description of the character or quality of his goods.therefore, the plaintiff has to prove that the defendant has used the plaintiff's trade mark or word mark 'atul' dishonestly and malafide. the dishonest and malafide use by a trader dealing in the said goods would only be shown if the ..... 2 and class- 5 of schedule- iv of the act. it is the plaintiff's case that it commenced its use of the said trade mark and word mark since 1955. the averment in that regard is made in paragraph 7 of the plaint. the defendant has not admitted the said averment in ..... and atul chemical industries ltd. in the district court, surat and the city civil court, ahmedabad. the plaintiff was, therefore, desirous of protecting its trade mark even against others. by virtue of the common name 'atul', the plaintiff has met with such confrontation more than once. the plaintiff must, therefore, ..... between the parties.11. it is the case of the plaintiff that certain other parties had also tried to infringe the plaintiff's registered trade mark and hence the plaintiff has instituted legal proceedings in ahmedabad city civil court and surat district court being 2 suits filed therein and an appeal ..... its officers. the defendant has examined himself.10. the plaintiff has essentially relied upon the applications made to the trade marks registry for the issue of the trade mark as well as the word mark 'atul', the affidavits filed by the officer of the plaintiff on behalf of the plaintiff and the registration certificates .....Tag this Judgment!