TRADEMARK

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IN News

• The Delhi High Court made a significant ruling concerning a trademark dispute.
• The court cancelled a trademark registration titled "Dolma Aunty Momos," previously held by Mohammed Akram Khan.
• This decision came after Dolma Tsering, widely known as "Dolma Aunty" among Delhi residents, took legal action against Khan for unauthorized use of her trademark.

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Trademarks Act of 1999

• The Trademarks Act of 1999 governs the regime of trademarks and their registration in India.
• It guarantees protection for trademarks registered with the Controller General of Patents, Designs, and Trademarks, also known as the trademark registry.
• According to Section 25 of the 1999 Act, once registered, a trademark is valid for 10 years and can be renewed by the owner periodically.
• Also, using someone’s registered trademark without their authorisation amounts to its violation or infringement, as can using a substantially similar mark for similar goods or services.

What is ‘Passing off’?

• In Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited (2001), the Supreme Court said that passing-off is a “species of unfair trade competition or of actionable unfair trading”. One brand, through deception, attempts to pass off its product or service as another, to profit from its existing reputation.
• The apex court ruled that the infringing products need not be identical, but the similarity in the nature, character, and performance of the goods of the rival traders has to be established to sustain a claim of “passing off”.
• Example: A situation where a brand logo is misspelt in a way that it isn’t easy for consumers to discern. For instance, ‘Adidas’ and ‘Adibas’. In such infringement cases, the trademark owner can take legal action and is entitled to remedies such as injunctions (orders to cease an action), damages, and accounts.

When can a trademark’s registration be refused?

• Section 11(1) of the 1999 Act states that a trademark cannot be registered because of “its identity with an earlier trade mark and similarity of goods or services covered by the trade mark”, since “there exists a likelihood of confusion on the part of the public…”
• Similarly, a trade mark that is similar to another, even for two different goods or services, shall not be registered under a different proprietor’s name. This can be done if the first trade mark is “a well-known trade mark in India” and “use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark,” Section 11(2) states.
• Additionally, Section 11(3)(a) of the Act says that a trademark shall not be registered if its use in India is liable to be prevented by “any law,” in particular, the law of passing off, which protects an unregistered trade mark.
• Besides this, Section 47 allows registered trademarks to be taken off the register once an application is made by an “aggrieved” person to the registrar or the appellate board. The grounds of such an application include “no bona fide use” (that is, not based on genuine intentions) of the trade mark or not registering the trademark with a “bona fide” intention, among others.

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