Court : Supreme Court of India
Decided on : May-27-2008
Reported in : AIR2008SC2737; 2008(4)AWC3258(SC); 2008(56)BLJR1979; 2008BusLR625(SC); LC2008(2)253; (2008)4MLJ942(SC); 2008(37)PTC413(SC); 2008(9)SCALE40; 2008AIRSCW4560
..... allowing 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.64. the delay by itself, however, may not be necessarily a ground for refusing to issue injunction. it was opined:106. the ..... 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. white sr. john romilly ..... failed to notice the distinction, which is real and otherwise borne out from the precedents operating in the field. [see - kerly's law of trade marks and trade names, thirteenth edition pg. 600].110. had these tests been applied the matter might have been different. in a given case probably we would ..... act provides for filing of application and application for rectification and, thus, should be considered only from that point of view. registration of a trade mark is governed by the provisions of the act. section 9 thereof provides for restrictions for registration in parts a and b of the register ..... and united sates of america. ian barclay in his affidavit stated:the first applicant received notice of the advertisement of the said mark peter scot in the trade mark journal when it received a routine report from 'wildbore and gibbons dated 20th september, 1974. regrettably, the first applicant did not .....Tag this Judgment!
Court : Kolkata
Decided on : Aug-26-2008
Reported in : 2008(4)CHN608,LC2008(3)319,2009(41)PTC689(Cal)
..... as is conceded by both parties before us, that the enunciation of the principle of law with regard to the protection available even in respect of the descriptive trade mark was wrong. a descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source. we, therefore ..... practices in industrial or commercial matters; or(b) is detrimental to its distinctive character; or(c) is against the reputation of the trade mark.(9) where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to ..... names 'naukri.com' of the plaintiff and 'naukari.com' of the defendant, depicting the nature and type of business activity they carry on are identical or confusingly similar trade mark or service marks. it is also a possibility for an internet user while searching for the website of the plaintiff to enter into the websites of the defendant through only a small ..... in a passing off action. the following passages from the report are apposite.in the first place the plaintiff claims an injunction to restrain the defendants from infringing the registered trade marks consisting of the words 'shredded wheat' by the use of the words 'shredded wheat', or 'shredded whole wheat' or 'shredded whole wheat biscuit' or any words only colourably differing .....Tag this Judgment!
Court : Supreme Court of India
Decided on : May-16-2008
Reported in : AIR2009SC892; LC2008(2)195; 2008(37)PTC394(SC); 2008(8)SCALE354
..... judgment and order dated 28.9.1993 passed by a learned single judge of the high court affirming the final order dated 24.2.1992 passed by the deputy registrar, trade marks.background facts3. the factual matrix obtaining herein shorn of all unnecessary details is as under:appellant claims itself to be the largest manufacturer of heavy electrical apparatus in japan. the ..... electric drills (machines), spin dryers and can openers being electrically operated tools, all being goods include in class 7.5. registration was granted in respect of the said items being trade mark no. 273758. other registeration numbers were given in favour of the said group in respect of some other goods falling under class ix and xi.6. respondent herein is an ..... falling incl.9.toshiba 273760 26.7.1971 11 various goods includinglamps, ovens, waterheaters, fans, toasters,cookers, etc.8. it is stated that the appellant had since acquired about 35 trade marks registrations in india. the period of seven years expired in 1978. on the expiry thereof, it became conclusive of its validity in terms of section 32 of the act. the ..... including electric irons, immersion rods, toasters, table lamps, ovens and stoves. the said suit is still pending.13. in its affidavit before the registrar of trade marks, the appellant contended:14. annexed to my affidavit and marked annexure h are extracts from the import and export policy of the government of india (ministry of commerce) for the years:i) april 1985 to march .....Tag this Judgment!
Court : Mumbai
Decided on : Dec-19-2008
Reported in : LC2009(1)387
..... (supra) the apex court in paragraph 5 held thus:5. the law on the subject is well settled. in cases of infringement either of trade mark or of copyright, normally an injunction must follow. mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. the ..... and/or whereby the defendants have altered their position so that it would be inequitable to grant interim relief to stop them from using the trade mark until the suit is decided?..reliance has been placed on the observations made by this court in the case of anglo-french drugs & industries ltd ..... to the products used by various companies. it is reiterated in the affidavit that the defendants have honestly and in a bona fide manner adopted the trade mark 'beally' having meaning 'to be friend or to associate or to connect by some mutual relationship or friendship'. reliance is placed on photographs of ..... private limited.11. to the said affidavit a sur-rejoinder has been filed by the defendants. it is submitted that 'bisleri' is not the trade mark of the plaintiffs and therefore the plaintiffs cannot raise any objection to the defendants' using 1 litre or 500 mili litre packaged drinking water bottles ..... filing affidavits dated 29th january 2008 and 24th june 2008. in the affidavit dated 29th january 2008 the defendants relied upon the registration of their trade mark 'beally'. it was contended that the product of the defendants was being marketed mainly in 20 litre jars. it is contended that the product .....Tag this Judgment!
Court : Supreme Court of India
Decided on : Dec-18-2008
Reported in : AIR2009SC1443; JT2009(2)SC59; LC2009(1)14; 2009(39)PTC193(SC); 2009(1)SCALE497; (2009)2SCC768; 2008(1)LC105(SC)
..... application for registration as such shall be enertained unless the agreement between the parties complies with the conditions laid down in the rules for preventing trafficking in trade marks.(2) the permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for ..... the court while construing a statute takes into consideration the parliamentary intent in amending the provisions thereof. it seeks to enhance the period of moratorium of use of the registered trade mark from one month to three months so as to prevent speculative assignment. thus, a case of speculative assignment is specifically required to be made out. such an application may be ..... periodical renewal thereof as is required under the act. first respondent withdrew the application against m/s. jain industries. the prayer in the application was to take off the registered trade mark from the register in respect of centrifugal pumps (goods) so far as the registration made in favour of the appellant is concerned.16. it is in the aforementioned situation, we ..... and every centrifugal pump manufactured by them and sold in the name of `field marshal'. (c) the defendants shall maintain proper accounts of the sale of centrifugal pumps under the trade mark 'field marshal' and shall file them in court as and when directed.10. correctness or otherwise of the said order has not been questioned. the second rectification application filed by .....Tag this Judgment!
Court : Delhi
Decided on : Mar-25-2008
Reported in : 2008(102)DRJ503; LC2008(3)62; 2008(37)PTC24(Del)
..... and services, as far as may be, in accordance with the international classification of goods and services for the purposes of registration of trade marks. rule 22 of the trade marks rules, 2002 provides that for the purposes of registration of trade marks, goods and services shall be classified in the manner specified in the fourth schedule. clearly, registration of trademarks is in relation to specified ..... in connection with which the trademark is registered. there are exceptions which shall be alluded to presently.20. section 29(1) of the trade marks act, 1999, which deals with the issue of infringement of registered trade marks indicates that a 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 ..... a prima facie case and also that the balance of convenience lies in its favor, not granting an interim injunction restraining the defendant from further infringing the plaintiff's registered trade mark would result in causing irreparable injury to the plaintiff.29. for all these reasons, even de hors the question of passing off, i am of the view that the ..... not amount to infringement. this is what is specifically provided for under section 30(2)(e).23. but, does section 30(2)(e) also cover cases where identical or similar trade marks are registered in respect of different classes of goods or services? the answer is - no. section 28 deals with the rights conferred by registration. and, it has already been .....Tag this Judgment!
Court : Delhi
Decided on : Oct-03-2008
Reported in : LC2008(3)384; 2009(39)PTC347(Del)
..... defendant, its directors, assignees, distributors, dealers are, during the pendency of suit restrained from manufacturing, selling or dealing in medicinal preparations under the trade mark theobid-d or any other trade mark as may be deceptively similar with trade mark theobid of the plaintiff. however, in view of prima facie extensive use by defendant since 2007, and so as to enable the defendant to ..... madras high court is different from consistent view of this court.11. i also find that under section 2(1)(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 ..... , the same result will follow, besides giving a premium to third parties. in that situation, in the interregnum there will be none to enforce rights in the registered trade mark. 'registered proprietor' in section 28, rather than adopting a pedantic interpretation has to be interpreted as including a person having title as registered proprietor by way of assignment ..... 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 .....Tag this Judgment!
Court : Gujarat
Decided on : Dec-15-2008
Reported in : (2009)2GLR1376; 2010(41)PTC675(Guj)
..... business or personally works for gain. under the circumstances as the plaintiff company carries on business at ahmedabad, suit filed by the said company for infringement of registered trade-mark 'dolaren' and also for infringement of copyright, civil court at ahmedabad would have territorial jurisdiction. relying upon the decision of the hon'ble supreme court in the ..... therefore, the learned chamber judge has committed an error in granting injunction in favour of the plaintiff and against the defendant. it is submitted that considering provisions of trade mark act, 1999 more particularly section 134 of the said act, for passing off action, the civil court, ahmedabad would not have any territorial jurisdiction as admittedly the defendant ..... in any manner, whatsoever with the business of the plaintiff, his agents, servants, distributors and retailers from manufacturing, marketing, selling and advertising their goods by using impugned trade-mark boleran along with the copyright in the artwork of its label and on packages.(e) the defendant be ordered to produce accounts for the sale of boleran along with ..... in the business of manufacturing, marketing, selling and exporting medicinal and pharmaceutical preparations and the defendant is also manufacturing, selling and exporting an identical product under deceptive similar trade-mark 'bolaren' and copyright consisting the artistic work in its label, packages etc. which is an identical or rather ditto-to-ditto same as that of the plaintiff's .....Tag this Judgment!
Court : Mumbai
Decided on : Jan-25-2008
Reported in : AIR2008Bom100; 2008(2)ALLMR405; 2008(2)BomCR739; (2008)110BOMLR409; LC2008(1)275; 2008(36)PTC478(Bom)
..... defendant a valid defence in an action for infringement and passing off. the decided cases furnish other instances. among them is a judgment of the delhi high court where a trade mark of a medicinal preparation (nimulid) is wholly derived from the principal drug used in its manufacture (nimesulide). (panacea biotec ltd. v. recon ltd. : air1997delhi244 . griffon laboratories (p) ..... matters of infringement and passing off involving pharmaceutical products in cadila: at paragraph 32 page 1964public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other nonmedicinal product. drugs are poisons, not sweets. confusion between medical products may, therefore, be life threatening, not merely inconvenient. ..... appellate judges based themselves in arriving at the conclusion that there was no reasonable apprehension of confusion or deception was, as we have earlier stated, that there were various trade marks with a prefix or suffix 'gluco'or 'vita'and that made it impossible to say that the common features 'glu' and 'vita' were only associated with the ..... are meant for curing the same ailment but the compositions are different;(iii) there is no phonetic or structural similarity between the two marks. under section 30(2)(a) of the trade mark act, 1999, a registered trade mark is not infringed where the use in relation to goods or services indicates inter alia the kind, quality, intended purpose or other .....Tag this Judgment!
Court : Delhi
Decided on : Jan-04-2008
Reported in : LC2008(1)128; 2008(36)PTC290(Del)
..... as contained in section 30(2)(d) of the said act which is follows:30. limits of effect of registered trade mark.-.(2) a registered trade mark is not infringed where-.(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or ..... in industrial or commercial matters and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. section 30(2)(a) of the said act provides an exception where the user is in relation to goods or services inter alias for its ..... of whether a trader, not being an authorized dealer, in that case, in bmw motor cars was entitled to use the name bmw being a registered trade mark of the bmw manufacturing company in the context of holding itself out as having specialist expertise in servicing bmw cars. in its conclusion, paragraph 3, the ..... the fact that the own product corresponds in quality and technicality or as regards its other properties to the product designed by the third party's trade mark.(5) whether the permissibility of user of a third party's trademark would be affected on the ground that the economic operator who refers to ..... to indicate the intended purpose of a product and the difficulty for a consumer to understand if there is no express reference to the third party's trade mark.(4) the factors to be taken into account while determining an honest commercial practice and whether the mention of a third party's trademark in connection .....Tag this Judgment!