Co-published editorial

Luthra & Luthra How to protect unregistered and commercial signs in India

Proprietors of unregistered marks have an effective remedy to enforce their rights

In India, the primary legislation governing (India) Ltd ((2000) 5 SCC 573) the court the trade and therefore qualifies as a well- protection is the Trademarks Act observed that even if the rival marks are known trademark. This concept was 1999. The right to institute infringement similar, the defendant may escape liability explained by the Apex Court in Patel v Shah proceedings under the act is available only for if there are any differences in ((2002) 3 SCC 65), wherein it observed that a to the proprietors of a registered trademark. the overall get-up or . Therefore, descriptive word can be used as a trademark However, rights in an unregistered in order to succeed in a passing-off action, it provided that it becomes well known and trademark or commercial sign can be is essential to prove that consumers are acquires secondary distinctive meaning. In enforced through the common law remedy likely to be deceived. Godfrey Philips India Ltd v Girnar Food & of passing off. Therefore, the proprietor’s Beverages (P) Ltd ((2004) 5 SCC 257) the Apex rights in such marks, which are ineligible for Prior use Court observed that a descriptive trademark statutory protection in India, can be In a passing-off action the plaintiff must may be entitled to protection if it is shown enforced by proving the use and reputation establish priority in the mark, which to have assumed a secondary meaning of the mark in question. includes prior adoption and use of the mark which identifies it with a particular product and, as a result of such use, the creation of a or source. Ingredients of passing off reputation among consumers. In Uniply The courts have also accorded The basic principle underlying passing-off is Industries Ltd v Unicorn Plywood Pvt Ltd (AIR recognition to the reputation or goodwill that no individual should be allowed to sell 2001 SC 2083) the Apex Court observed that acquired by a mark without actual use in products under the pretence that they are the test to determine priority in a mark is to India. In Jolen Inc v Jain (MIPR 2010 (2) 176) the products of another. determine continuous prior use and the the Delhi High Court applied the principle of In a passing off action the proprietor is volume of sales or the degree of public cross-border reputation (established in NR required to prove the following factors: familiarity with the mark. The court further Dongre v Whirlpool Corporation (AIR 1995 • the mark’s reputation in India; explained that experimental, small-volume Delhi 300)) to recognise the plaintiff’s right • misrepresentation; and sales and marketing and promotional over the mark JOLEN owing to its prior • resultant injury to the plaintiff’s activities may be sufficient to establish adoption outside India and its international business or goodwill. continuous prior use of the mark. reputation and goodwill. The court held that the defendant’s registered Indian mark was a These factors have been applied by the Reputation and goodwill in India slavish imitation of the plaintiff’s well- Indian courts when determining whether a The rights in an unregistered mark may be known mark. Thus, actual use in India is remedy for passing off may be granted to a claimed only if the proprietor of the mark unnecessary in order to establish passing off. plaintiff seeking to enforce its rights in an successfully establishes that the mark has unregistered mark. In Cadila Health Care Ltd acquired a reputation and goodwill in India Misrepresentation v Cadila Pharmaceuticals Ltd ((2001) 5 SCC 73) in relation to the goods and services in Misrepresentation by the defendant is an the Supreme Court of India held that when respect of which it has been used. essential ingredient of a passing-off action. determining whether two marks in a passing- In Heinz Italia v Dabur India Ltd (2007 The plaintiff need not prove that the off action are deceptively similar, several (7) SCALE 608) the court relied on the defendant applied the mark with an factors must be taken into account, including: “enviable reputation” acquired by the intention to deceive consumers; rather, the • the nature and degree of similarity plaintiff to grant relief in a passing off relevant test is the likelihood of consumer between the marks; action, as the similarity between the rival confusion as a result of such • the nature of products; products was capable of confusing the misrepresentation. In Rich Products • the class of purchasers; and relevant consumers. Corporation v Indo Nippon Food Ltd (2010 • the trade channels. An unregistered trademark would be (42) PTC 660 (Del)) the Delhi High Court entitled to protection, notwithstanding that explained that the misrepresentation However, mere similarity in the marks is the mark is descriptive in nature, provided should be such that: insufficient. In SM Dyechem Ltd v Cadbury that it has acquired a secondary meaning in • it could be construed as an attempt to

76 World Trademark Review December/January 2011 www.WorldTrademarkReview.com Country correspondent: India

sell the defendant’s products as those of details of the packaging, is relevant when another; and determining whether consumers are likely • it is likely to damage the goodwill and to be confused and whether the defendant reputation of that other person. is attempting to pass its own goods off as those of the plaintiff with a view to cashing The court observed that the intention to in on the plaintiff’s goodwill and reputation. deceive was not a necessary ingredient, The descriptive matter appearing on the provided that the unwary consumer was label may also be protected if it has actually or likely to be deceived. It is thus clear acquired secondary meaning. In Stokely Van that in a passing-off action the application of Camp Inc v Heinz India Private Limited the mark by the defendant in a manner (MANU/DE/1202/2010) the plaintiff’s rights calculated to deceive must be proven, and not in the phrase ‘Rehydrate Replenish Refuel’, the actual intention to deceive. used on the label of a sports drink, were not recognised, as the phrase had not attained Injury to the plaintiff’s business any secondary meaning in relation to the and goodwill plaintiff’s products. Actual or likely injury to the plaintiff’s Reshma Vaidya business or goodwill is essential in order to Associate Domain names maintain a passing-off action (Wander Ltd v [email protected] Domain names may also be protected by a Antox India P Ltd (1990 Supp (1) SCC 727)). passing-off action. The Apex Court in Satyam Identity or similarity of goods and Reshma Vaidya is an associate in the IP Infoway Ltd v Sifynet Solutions Pvt Ltd ((2004) 6 services is not essential in order to show team at Luthra & Luthra Law Offices. She is SCC 145) recognised the need to protect that injury to the plaintiff’s goodwill or involved in the practice of trademark and domain names and upheld a passing-off action business is likely. If the plaintiff proves that law and has worked on matters brought in order to enforce the plaintiff’s the adoption and use of the impugned mark relating to trademark prosecution, rights in its domain name. However, in order by the defendant would have the effect of trademark licensing, regulation of to protect a domain name under the law of diluting the goodwill associated with the pharmaceuticals and data protection. passing off, it is essential that the second-level mark, it will succeed in the passing off domain name is not a generic word, but rather action. For instance, in Honda Motors Co Ltd an invented or coined word. In Plus Inc v v Singh (2003 (26) PTC1 (Del)) a passing-off off action. The plaintiff must prove that the Consim Info Private Limited (2010 (42) PTC 507 action was maintained by a plaintiff which corporate name has acquired distinctiveness (Bom)) the court denied protection under the held registered marks in respect of or secondary meaning in trade circles. In law of passing off to a registered domain automobiles and power equipment against Mahendra & Mahendra Paper Mills Ltd v name, owing to its descriptive nature. a defendant using the goodwill in the Mahindra & Mahindra Ltd (2002 (24) PTC 121; trademark in respect of pressure cookers. In principles reiterated in Sony Kabushiki Advertising slogans order to secure relief in a claim for Kaisha v Mahaluxmi Textile Mills (2009 (41) Rights in advertising slogans may be , it is essential to PTC 184 (Cal)) the court observed that the enforced in certain cases where they have establish that the relevant consumers or name ‘Mahindra’ had acquired such acquired distinctiveness, and thus serve as traders would associate the offending mark distinctiveness in trade circles that a certain important source identifiers in relation to with the plaintiff’s mark (ITC Ltd v Philip quality standard for goods and services was the plaintiff’s business. In India, to date Morris Products SA (2010 (42) PTC 572 (Del)). associated with it. Therefore, the court there have been no cases in which a passing- granted an interlocutory injunction to off action in relation to advertising slogans Other commercial signs prevent the defendant from using the name has been successfully maintained. However, Other commercial signs which serve as ‘Mahendra’ in relation to its business. in Pepsi Co Inc v Hindustan Coca Cola the source identifiers include: Delhi High Court observed that advertising • the trade or corporate name under Trade dress slogans may be protected under the law of which the goods are sold or services are Trade dress serves as an important source passing off if all the necessary ingredients of provided; identifier as, to a large extent, it contributes a passing-off action are shown to exist. • the trade dress; to the overall image and serves to • the domain name; and create a lasting impression on consumers. Conclusion • the advertising slogans used to market The test of deceptive similarity applies in a Despite the absence of specific legislative products. passing-off action regarding the trade dress provisions governing the protection of of the product. The overall impression unregistered marks and commercial signs, A passing-off action can be upheld in created by the packaging and appearance of the proprietors of such marks and signs relation to each of these commercial signs, the rival products is taken into account. This have an effective remedy to enforce their provided that all the ingredients are was explained in Colgate Palmolive rights under the common law of passing off. present. Company v Anchor Health and Beauty Care An analysis of the relevant case law reveals Pvt Ltd (108 (2003) DLT 51; principles that on numerous occasions the courts have Trade name reiterated in N Ranga Rao and Sons v Garg granted relief to a plaintiff seeking to The rights to the corporate or trade name (2006 (32) PTC 15 (Del)), wherein the court protect its rights over an unregistered mark under which the plaintiff carries out observed that the impression created at first or commercial sign which has attained business can be protected under a passing- glance, without registering the minute goodwill and reputation in India. WTR www.WorldTrademarkReview.com December/January 2011 World Trademark Review 77