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Critical Study of Infringement and Passing Off Under the Trademarks Law in India

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Critical Study of Infringement and Passing Off Under the Trademarks Law in India CRITICAL STUDY OF INFRINGEMENT AND PASSING OFF UNDER THE TRADEMARKS LAW IN INDIA A Thesis Submitted to Goa University for the Award of the Degree of DOCTOR OF PHILOSOPHY IN LAW By MR. VINOD GAJANAN SHIRODKAR Research Guide DR. G. SHABER ALI M.A., LL.M., (NLSIU), M.L., Ph.D., Coordinator for PG & Research Centre At V M Salgaocar College of Law Research Centre, Miramar, Panaji Goa Affiliated to Goa University, Taleigao Plateau, Panaji, Goa i DECLARATION I hereby declare that this thesis titled, “CRITICAL STUDY OF INFRINGEMENT AND PASSING OFF UNDER THE TRADEMARKS LAW IN INDIA” submitted for the award of the Degree of Doctor of Philosophy in Law, to Goa University, Panaji is an Original Research work done by me. I also hereby declare that this thesis or any part of it has not been submitted to any other University for the award of any Degree or Diploma or Fellowship. Date: Vinod G Shirodkar Place: ii DR. G. SHABER ALI M.A., LL.M., (NLSIU), M.L., Ph.D., Coordinator for PG & Research Centre V M Salgaocar College of Law Miramar, Panaji Goa CERTIFICATE This is to Certify that the thesis titled, ‘CRITICAL STUDY OF INFRINGEMENT AND PASSING OFF UNDER THE TRADEMARKS LAW IN INDIA’submitted for the award of the Degree of Doctor of Philosophy in Law, is a record of the research work done by Mr Vinod Gajanan Shirodkar under m guidance and supervision during 2019. I certify that this is bonafide work of Mr. Vinod G Shirodkar DR. G. SHABER ALI Research Guide Place: Panaji Goa Date: iii ACKNOWLEGEMENTS I pay my Homage to God Almighty for having Grace on me in my path of education and life. I dedicate my Research study to my father late Shri Gajanan Shirodkar who always wanted me to study and my Mother late Shrimati Shanta Shirodkar and my dearest brother Late Shri Dilip G Shirodkar whom I truly miss during this moment of my Life. I thank and express my tremendous gratitude to my Research Guide, Sir. Dr Shaber G Ali, Associate Prof. VM Salgaocar College of Law who helped me in every moment of my research and encouraged me and believed in me during my research period and who truly went out of way to guide me and help me in my research as a elder brother. I sincerely give thanks to Prof. Sir. Dr MRK Prasad, Principle of VM Salgaocar College of Law for all the inspiration and motivation given to me during my Law studies. I thank Prof. Dr Sairam Bhat, Prof. of Law at National Law School Bangalore for all the guidance and encouragement. I thank Sir Dr. Marian Pinheiro the former Principal of VM Salgaocar College for all his encouragement given to me and I also sincerely thank Sir. Dr. K S Rao for motivating me in my studies. I thank Dr Sonal Sardesai who truly helped me in my research studies as and when I needed during all my research period. I thank all the Senior Staff and teaching faculty of V M Salgaocar College namely; Dr Kim Couto, Dr Sandhya Ram, Asst. Prof. Pearl Monteiro, Dr Naguesh iv Colvalkar and Dr B S Patil who, all, as my teachers have taught me Law and I shall always be grateful and thankful to them. I thank Shri Prashant Chodankar for all his well wishes in my studies as a friend and so also I thank my library staff, Mr Anand Naik, Mr Ramakant Naik, and Mr Bharat Amonkar for always helping me by providing all the required books whenever needed. I thank Sir D P Pednekar, Administrator and Mr Inacio Braganza Account Officer of V M Salgaocar College for always having concern for my studies. I sincerely thank Miss Sonam Vaman Tari for always helping me in my studies by giving her precious time as and when required. My sincere thanks to the Lawyers, Judges, Police, and Administrative officers of Trademark as well as other Government offices like Registrar of Companies, Customs, Professionals from different fields , Traders and service providers, Educational Institutions and Goa University for all the help and motivation provided for me I my Research. I thank Management and staff of Real Group of Companies for extending help and support to me during my studies. I thank my brothers and sisters for all their love and blessing in my life and studies. I express my gratitude to Shri Nishakant Narshiv Pednekar for his unlimited help, valuable suggestions and support in my Research and who always stood by me graciously during my studies. Last but not the least I thank my Loving wife Dr. Beena Shirodkar who always walked with me together in our life’s journey and I sincerely v acknowledge that wherever I stand today is only because of her Love and Care. So also I would like to thank two little friends of mine, one is my son Navin who has always inspired me with his marvelous talents and astonishing oratory style and another is my loving pet ‘Kane’ a German shepherd dog who is no more in this world but whose love will always remain in our hearts forever. vi CONTENTS Page No. DECLARATION i CERTIFICATE ii ACKNOWLEGEMENTS iii - v CONTENTS vi – xvii ABBREVIATIONS xviii - xix LIST OF CASES xx – xxii LIST OF STATUTES ND RULES xxiii CHAPTER I 1-22 1. INTRODUCTION 1.1 INTRODUCTION 1 1.2 IMPORTANCE OF THE PRESENT 6 RESEARCH 1.3 OBJECTIVES OF THE STUDY 11 1.4 RESEARCH QUESTIONS 11 1.5 HYPOTHESIS 12 1.6 METHODOLOGY ADOPTED 13 i. Primary Source of data: 15 ii. Secondary Source of data: 16 1.7 LIMITATATION OF RESEARCH STUDY 16 1.8 STRUCTURE OF THE THESIS 17 vii CHAPTER - II 23-106 2 CONCEPT, SIGNIFICANCE AND DEVELOPMENT OF TRADEMARK AND TRADEMARK LAW IN INDIA 2.1 INTRODUCTION 23 2.2 CONCEPT OF TRADEMARK 24 2.3 FUNCTIONS OF TRADEMARK/SERVICE 25 MARK a) To Identify the Manufacturer and Service 25 Provider b) To Protect the Goodwill and Reputation of the 27 Proprietor c) Gives Legal Right to the owner as to its Usage 27 d) To Guarantee the Product and its Quality 28 e) Advertises and builds image of Product and 29 services with proper representation 2.4 NEED AND IMPORTANCE OF TRADEMARK 30 1 BUILDS REPUTATION 31 2 PURCHASING DECISIONS 32 3 EFFECTIVE COMMUNICATION TOOL 33 4 MAKES IT EASY FOR CUSTOMERS TO 33 FIND YOU 5 TRADEMARK CONNECTS WITH PEOPLE 34 ON SOCIAL MEDIA 6 TRADEMARKS ARE VALUABLE ASSETS 35 7 PERPETUAL LIFE 36 viii 8 GIVES UNIQUENESS TO BRAND & 37 DISTINCTNESS BENEFIT 9 PROTECTS YOUR PRODUCT NAME 37 10 HELPS THE BUSINESS GROW 39 11 GLOBAL ECONOMIC GROWTH 40 12 CONFIDENT PURCHASING DECISION 41 13 ENCOURAGE HEALTHY COMPETITION 42 14 COMMERCIALISATION AND GROWTH OF 43 COMMERCE & INDUSTRY 15 REPEAT ORDERS 44 16 PREVENTION OF UNFAIR TRADE 45 PRACTICES AND PROECTION OF CONSUMERS 17 QUALITY PRODUCTS 47 18 KNOWLEDGE AND EDUCATION 48 COCERNING PRODUCTS 19 ADVERTISING SERVES A LINK 49 2.5 CLASSIFICATION/TYPES OF 51 TRADEMARKS a) Trademark in reference to goods 51 b) Service Mark in reference to services 52 c) Certification Trade Mark 52 d) Collective Trade Marks 53 2.5.1 Forms of Trade Marks/ Service Marks in day 55 today usage 2.5.2 Classification of trademarks in this Modern Age 56 ix I. Conventional trademark 57 II. Nonconventional trademark 57 I. CONVENTIONAL TRADEMARKS 57 a) Generic/Generalized Trademark 57 b) Arbitrary Trademark 58 c) Descriptive Trademark 59 d) Suggestive Trademark 59 e) Fanciful Trademark 60 II. NON-CONVENTIONAL TRADEMARKS 60 a) Shape Trademark 61 b) Sound trademark 63 c) Colour trademark 63 d) Smell or Olfactory trademark 64 e) Touch trademark 65 f) Taste trademark 65 g) Motion 65 h) Hologram 66 2.6 TRADEMARKS EVOLUTION AND THE 66 DEVELOPMENT OF ITS LAW 2.6.1 Development from Global /International 66 Perspective 2.7 TRADEMARK PROTECTION AND 76 DEVELOPMENT IN INDIA 2.7.1. Trademark protection in India before 1940 77 a) Development of trademark in India during 77 Ancient Period x b) British Period : 78 a. The Common Law and Equity Principles 80 b. Indian Penal Code (IPC) 1860. 82 c. Specific Relief Act 1877(1963 as amended in 83 2018) d. The Indian Merchandise Mark Act 1889 84 e. The Sea Customs Act1878 85 f. Indian Registration Act, 1908. 87 2.7.2 Trade Mark Protection in India after 1940 87 a) The Trademarks Act, 1940 88 b) The trademarks(Amendment)Act1941 91 c) The Trademarks (Amendment)Act1943 92 d) The Trade and Merchandise Marks Act, 1958 93 e) The Customs Act, 1962 95 f) The Trade Marks Act 1999 96 g) The Trade Marks Amendment Act 2010 101 h) The Trade Marks Rules, 2017 101 CHAPTER - III 107-195 3. CRITICAL ANALYSIS OF INFRINGEMENT AND PASSING OFF WITH REMEDIES 3.1 INTRODUCTION 107 3.2 PREAMBLES OF TRADEMARK 109 LEGISLATIONS VIS-A-VIS INFRINGEMENT AND PASSING OFF 3.3 MEANING OF INFRINGEMENT 112 xi 3.3.1 ELEMENTS OF INFRINGEMENT: 113 a. RegisteredTrademark: 113 b. Unauthorized Use 113 c. Identical or deceptively similar trademark 114 d. Trademark used in the Course of business/trade 114 e. Representation of the trademark 114 f. Trademark should belong to certain class of 114 goods or service 3.3.2 DIFFERENT WAYS OF INFRINGEMENTS 115 a) Identical Mark for Identical Goods or Services 116 b) Similar Mark for Identical Services or Goods 116 c) Identical Mark for Similar Goods or Services 117 d) Similar mark for similar Goods or Services 117 e) Likelihood of Confusion 117 f) Test of Similarity of Ideas 119 g) Anti Dissection Rule 119 h) Initial Interest of Confusion 120 3.3.3 RIGHTS OF PRIOR USER UNDER 124 TRADEMARK LEGISLATIONS: 3.3.4 DUAL RIGHTS OF REGISTERED 128 TRADEMARK OWNER IN INFRINGEMENT CASES: 3.3.5 LIABILITY UNDER TRADEMARK ACT: 129 3.4 PASSING OFF 130 3.4.1 Concept of Passing off 130 3.4.2 Trademark Legislation and ‘Passing off action’: 132 xii 3.4.3 Actual damage’ not necessary Element for 136 Infringement /Passing Off 3.4.4 Defendant might trade in different type of goods 136 or services than Plaintiff’s 3.4.5 TRANS-BORDER
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