LLM Group 3 Law of Intellectual Property and Information Technology Law of Trademarks 2023-24 Question Paper with Solutions

Trade mark: section 2(1)(zb). A TRADE MARK is a MARK CAPABLE OF BEING REPRESENTED GRAPHICALLY and CAPABLE OF DISTINGUISHING THE GOODS OR SERVICES OF ONE PERSON FROM THOSE OF OTHERS, which may include SHAPE OF GOODS, THEIR PACKAGING AND COMBINATION OF COLOURS. For the offences in Chapter XII other than section 107 it means a registered mark or a mark used to indicate a trade connection with a person having the right as proprietor; elsewhere, a mark USED OR PROPOSED TO BE USED to indicate that connection, as proprietor or by permitted use.

The relationship between them. Every trade mark is a mark, but not every mark is a trade mark. A MARK is simply a sign, and the list is inclusive. A sign becomes a TRADE MARK only when it is GRAPHICALLY REPRESENTABLE, so that it can go on the register, and DISTINCTIVE, so that it tells buyers where the goods come from. A laudatory word such as BEST is a mark but, used alone for goods, not a trade mark, because it cannot distinguish one trader's goods from another's.

Second, by registration. Registration creates a distinct STATUTORY PROPERTY: the EXCLUSIVE RIGHT TO USE THE MARK under SECTION 28(1) and the right to sue for INFRINGEMENT. A person may apply under SECTION 18(1) for a mark USED OR PROPOSED TO BE USED, so registration can confer statutory property before any use. But the proposal must be real. American Home Products Corporation v. Mac Laboratories Pvt. Ltd., (1986) 1 SCC 465, requires a GENUINE AND REAL INTENTION TO USE at the date of application, and a registration without it is liable to removal under SECTION 47(1)(a).

The two combined. Registration does not defeat an earlier user. By SECTION 34 a registered proprietor cannot restrain a person who has CONTINUOUSLY USED a similar mark from before his own use or registration, whichever is earlier; and S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, holds that the prior user's rights are superior even to a registration held by the other party. Property by use and property by registration therefore coexist, and use is the deeper root.

By use through others under the proprietor's control. PERMITTED USE, by a registered user or by a person using the mark with the proprietor's written consent, is DEEMED USE BY THE PROPRIETOR under SECTION 48(2). The property therefore grows in the proprietor's hands though he makes nothing himself. Wander Ltd. v. Antox India P. Ltd., 1990 Supp SCC 727, holds that a manufacturer who made goods under the proprietor's mark for the proprietor acquired no right by that use; it ENURED TO THE PROPRIETOR.

Acquisition across borders

By transborder reputation. A foreign trader may acquire protectable goodwill in India before trading here, if his reputation has reached Indian buyers. N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, upheld an injunction for WHIRLPOOL, advertised in magazines circulating in India, against later Indian registrants. Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, applied the FIRST IN THE WORLD MARKET test for pharmaceuticals. But Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, confirms the TERRITORIALITY doctrine: the reputation must be proved to have existed IN INDIA when the defendant began.

The modes in contest: one worked example

The facts. In 2015 Anil adopts the mark ZESTO for lemonade and sells it in Nagpur, without registering. In 2018 Bina, in Mumbai, who has never used the mark, registers ZESTO for soft drinks on a claimed intention to use. In 2020 Bina assigns her registration to Chandan Beverages, which launches ZESTO lemonade across Maharashtra. In 2022 Anil dies and his business passes to his son, Dev.

Who owns what. Anil acquired property by ADOPTION AND USE in 2015, and on his death it passed to Dev by TRANSMISSION. Bina's registration conferred statutory property only if her intention to use was GENUINE AND REAL, and if it was not, the registration is liable to removal under SECTION 47(1)(a) and to rectification under SECTION 57. Chandan took by ASSIGNMENT only what Bina had, and had to REGISTER ITS TITLE under SECTION 45 and, if the assignment was made without goodwill, as it must have been since Bina had none, obtain directions and advertise under SECTION 42.

Conclusion. A MARK under SECTION 2(1)(m) is any sign within an inclusive list of devices, words, names, shapes, packaging and colour combinations; a TRADE MARK under SECTION 2(1)(zb) is such a mark CAPABLE OF GRAPHICAL REPRESENTATION and CAPABLE OF DISTINGUISHING one person's goods or services from others'. Property in a trade mark is acquired ORIGINALLY by ADOPTION AND USE, which Century Traders v. Roshan Lal Duggar and Co. and Neon Laboratories Ltd. v. Medical Technologies Ltd. treat as the root of title and S. Syed Mohideen v. P. Sulochana Bai ranks above a later registration, and by REGISTRATION under SECTIONS 18, 23 AND 28 for a mark used or genuinely proposed to be used, as American Home Products Corporation v. Mac Laboratories Pvt. Ltd. requires; DERIVATIVELY by ASSIGNMENT under SECTIONS 38, 39, 42 AND 45 and by TRANSMISSION under SECTION 2(1)(zc); through PERMITTED USE by others deemed the proprietor's under SECTION 48(2), as Wander Ltd. v. Antox India P. Ltd. holds; across borders by TRANSBORDER REPUTATION within the territoriality limit of Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., and by INTERNATIONAL REGISTRATION under CHAPTER IVA; and jointly or concurrently under SECTIONS 24 AND 12.