unit 7-11 Flashcards

Question

well known trademark determining factors:

Answer 1

- knowledge and reognition of the trademark in the geographical area as a result of promotion of the trademark - duration, extent and of any use of trademark or the promotion of the trademark - the registration duration and geog. area, - record of successful enforcements of the rights in that trademark. - the number of actual or potential consumers of the good/serivce - the number of people involved in the channels of distributions for example, TATA is a well known trademark, and is engaged in a wide spectrum of activities.

Answer 2

factors considered: 1. honesty of the concurrent use 2. the quantum of concurrent use shown by petitioners regarding duration, area, volume of trade and goods concerned 3. degree of confusion likely to follow from resemblance from applicants mark vs opponents mark 4. instance of confusion has been proved 5. relative inconvenience that may be caused by registration of applicants mark honesty is a huge factor, mere concurrent use cannot absolve the party of dishonest intention at the initial stage. per sec 11 - registrar can register it but with conditions and limitations as the registrar may thibnk fit to impose

Answer 3

- the commonly used name of any single cheemical element or compound or a name which is rdeclared by the WHO and notified to the registrar from time to time as an internation non-proprietory name or which is deceptively similar to such name- cannot be registered for veterinary substances, persticides, and pharmaceuticals however, this limitation is only for chemical compounds and names, but not other goods. if you want to name a clothing company radium, that will be fine.,

Answer 4

Where an application is made for the registration of a trade mark which falsely suggests a connection with any living person, or a person whose death took place within 20 years prior to the date of application for registration of the trade mark, the Registrar may require the applicant to furnish him with the consent in writing of such living person or of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnishes the Registrar with such consent. as it can be an obvious attempt to take unfair advantage of that persons reputation.

Answer 5

A single application may be made for registration of a trade mark for different classes of goods and services- to be filed in the office of Trade Marks Registry further, according to section 20 - when an application of a trademark has been accepted absolutely or subject to conditions- the application shall be advertised. in some cases the application may be advertised even before its accepted. then SECTION 21- opposition to registration, A Notice of opposition is to be given to the registrar and the copy of such notice is to be served upon the applicant. then applicant may file a counter statement and then registrar will give an opportunity to both parties to be heard. then there must be a submission of evidences from the parties to the registrar. upon hearing the parties etc the registrar may permit the registration with or without and conditions or limitations up to the registrar. **a trademark is registered under section 23** when the application has been accepted if: 1. the application hasnt been opposed and time for notice of opposition has expired 2. there has been an opposition but the registrar has decided in favour of the appicant- **The TM shall be registered within 18 months of filing of the application** THE EXCLUSIVITY in the mark shall be granted with effect from DATE OF APPLICATION for registration, so all statutory rights also originate from date of application. Where registration of trade mark is not completed within 12 months from date of application, by reason of default of applicant- it will be considered ABANDONED **Duration of registration under s. 25- 10 years**

Answer 6

--- **Key Legal Issue:** Whether Whirlpool Corporation, a foreign company without current commercial use in India, can claim **trans-border reputation** and seek injunction for **passing off** under trademark law. --- **Facts:** - Whirlpool Corporation, a U.S.-based company, owned the trademark **"Whirlpool"** and had significant international reputation. - Whirlpool had earlier registered the mark in India but allowed it to lapse. - N.R. Dongre and others attempted to use the "Whirlpool" trademark for their own products in India. - Whirlpool sought an injunction against the use, claiming **passing off** and trans-border reputation despite not currently selling in India. --- **Held:** The **Supreme Court granted an injunction** in favour of Whirlpool. --- **Key Observations:** 1. **Trans-Border Reputation Doctrine:** - The Court held that even without physical presence or active sales in India, Whirlpool had developed a reputation through international advertising, media, and global recognition. - This reputation was sufficient to claim protection under **passing off** laws. 2. **Passing Off: Section 27** - The defendant’s use of the name "Whirlpool" could mislead Indian consumers into believing there was a connection with the established U.S. brand. - This amounted to **misrepresentation** and injury to the goodwill of Whirlpool. 3. **No Need for Actual Use or Registration:** - The Court clarified that a trademark’s protection is not confined to registered marks or actual market presence if reputation exists. --- **Legal Significance:** - This case is a landmark in Indian **trademark jurisprudence** for recognizing **trans-border reputation**. - It expanded the scope of **passing off actions** beyond territorial boundaries, especially relevant in the age of globalization and cross-border commerce.

Answer 7

Section 27 – No Action for Infringement of Unregistered Trademark Subsection (1): You cannot sue for infringement if your trademark is not registered. Subsection (2): But you can still sue for passing off, which protects your goodwill and reputation from misuse by others.

Answer 8

Subsection (1): A registered trademark owner gets the exclusive right to use the trademark and can seek legal remedy if someone infringes it. Subsection (2): These rights are subject to any conditions or limitations in the registration. Subsection (3): If two or more people have similar or identical trademarks registered, none can claim exclusive rights against the other, but they can act against third parties.

Answer 9

Section 29 – Infringement of Registered Trademarks Subsection (1): Using an identical or deceptively similar mark in the course of trade can amount to infringement. Subsection (2): Infringement includes use that causes confusion or association with a registered mark. Subsection (3): In some cases, courts will presume confusion (especially when marks and goods/services are identical). Subsection (4): Even using the mark for different goods/services can be infringement if the registered mark has a reputation and the use harms or takes advantage of that reputation. Subsection (5): Using a registered trademark in your business name can also be infringement. ubsection (7): Applying the mark to packaging or advertising without authorization is also infringement. Subsection (8): Even advertising can be infringing if it’s unfair, misleading, or harms the mark’s character or reputation. Subsection (9): Infringement includes spoken use of the mark if the trademark consists of words.

Answer 10

**Key Issue:** Whether **"Real Drinks"** was infringing the trademark **"REAL"** owned by **Dabur India Ltd.**, and whether Dabur was entitled to protection under **trademark law and passing off**. --- **Facts:** - Dabur India is the proprietor of the trademark **"REAL"**, used for fruit juices and beverages. - The mark **"REAL"** had been in continuous use by Dabur since 1996 and had acquired a strong **market reputation**. - **Real Drinks Pvt. Ltd.** started using the name "Real" for similar products (drinks and beverages). - Dabur filed a suit for **trademark infringement** and **passing off**, claiming the use by Real Drinks was misleading and harmed their brand. --- **Held:** The **Delhi High Court** granted an **injunction in favour of Dabur**. --- **Key Observations:** The court observed that while both parties held registrations for marks incorporating the word 'REAL', the context and presentation varied. Real Drinks Pvt. Ltd. had used 'REAL' in specific composites like 'REAL MANIK' and 'REAL SODA', primarily within the State of Goa. Conversely, Dabur's use of 'REAL' was extensive, nationwide, and associated with high sales and substantial marketing investments. Ultimately, the court upheld the Interim Application in favor of Dabur India Limited, restraining Real Drinks Pvt. Ltd. from using the mark 'REAL' outside Goa, thus protecting the distinctiveness and goodwill of Dabur's trademark. However, the Court clarified that this order was interim and did not constitute a final judgment on the merits of the case. 1. **Deceptive Similarity:** - The mark **“Real”** used by the defendant was **identical** to Dabur’s mark and used for **similar goods**, likely to **confuse or deceive** the public. 2. **Prior Use & Goodwill:** - Dabur was the **prior user** of the trademark and had built substantial **goodwill** in the market. - Consumers associate the mark **"REAL"** with Dabur's products. 3. **Passing Off:** - Even if "Real" were a **common word**, its **association with Dabur’s juices** had given it a **distinctive character**. - Real Drinks’ use was a case of **passing off**, riding on Dabur’s established reputation. --- **Legal Significance:** - Reinforces the principle that even **common or descriptive words**, once they acquire **distinctiveness**, can be protected as **trademarks**. - Upholds the importance of **prior use**, **market reputation**, and **consumer confusion** in granting injunctions.

Answer 11

in the Parle products vs JP and co it was stated that overall similarity will be considered depending on essential features of the two - the marks will not be laid side by side to determine differences in design in comparison because the average buyer will not compare the two before purchase. if there is a likelihood of confusion wherein a consumer purchases goods beleiveing them to be associated with the other supplier/manufacturer when it is NOT from them- that will be considered deceptive similarity

Answer 12

since mahindra and mahindra had been using their name for 5 decades before the paper mills company - the name mahindra had become distinctive as people now associate it with a certain standard of goods and services - usage of the same name with different letters would still create confusion and an impression of connection to mahindra group of companies

Answer 13

there should be an overall comparison of the marks, not be dissected or split into its component parts and then each part compared to corresponding parts of the conflicting mark. the likelihood of confusion should be based on the entirety of the marks

Answer 14

Def. online news service under the mark "Speed Aajtak" was intended to cause confusion and deception in mind of consumers who would relate it to plaintiffs "Aajtak". plus advertisers intending to place ads on plaintiffs website could also be decieved and place ads on defendants websdute - which would cause considerable damage to plaintiffs business interest

Answer 15

- viagra held by pfizer, and adoption of v-gra or VIHAGRA was phonetically and deceptively similar to the plaintiff- in the mark, color and shape of tablet as well. so the trade dress was being violated of the plaintiff.

Answer 16

Happens when a famous mark is used on unrelated goods, weakening its uniqueness. Example: Using "Google" for a clothing brand – it blurs the distinct link between "Google" and search engines. 💡 Landmark Case: ITC Ltd. v. Philip Morris Products SA (2010) A dispute occurred between ITC, the Indian Tobacco Giant and Philip Morris and Others for trademark dilution of ITC owned Welcome group “W” namaste logo by Philip Marlboro (inverted M) logo to its Marlboro brand of cigarettes in India. The court emphasised that the following four essential elements need to be established in order for a dilution case to succeed, viz.,: 1. The diluting (impugned) mark is identical or similar to the injured (senior) mark; 2. The injured mark has a reputation in India; 3. The use of the impugned mark is without due cause; 4. The use of the impugned mark (amounts to) taking unfair advantage of, or is detrimental to, the distinctive character or reputation of the registered trade mark. And because there is no presumption of infringement in cases of dilution (i.e., where a mark is infringed by use in connection with dissimilar goods or services), each of these elements needs to be established in order to pull off an allegation successfully. **Notably, the "deceptively similar" standard is replaced with a higher "identical or similar" requirement.**

Answer 17

Happens when a famous mark is used in a way that harms its reputation, especially through offensive, immoral, or low-quality associations. Example: Using the "Apple" logo for an adult website – damages the brand's clean image. 💡 Landmark Case: Daimler Benz AG v. Hybo Hindustan (1994) "Benz" mark was used for men's underwear. The Delhi High Court said this tarnished the prestigious brand and restrained its use.

Answer 18

✅ **Trademark Infringement** **Infringement** happens when someone **unauthorizedly uses a registered trademark**, or a **similar mark**, in a way that is likely to: - **Confuse the public**, or - **Deceive consumers** into thinking there’s a connection with the original brand. 🧠 **Key Element:** Confusion or association in the minds of consumers. **Example:** Using **"Nikee"** for sports shoes can be infringement of **Nike’s** registered mark. --- ✅ **Disparagement** **Disparagement** happens when someone **makes negative or false claims** about another’s product or brand, leading to: - **Damage in reputation**, or - **Loss of goodwill** in the market. 🧠 **Key Element:** False or misleading statements that **belittle** the competitor's goods. **Example:** An ad saying “Brand X soap causes rashes, unlike ours” (without proof) can be **disparagement** of Brand X. --- 🧑‍⚖️ Landmark Case on Disparagement: **Colgate Palmolive v. Hindustan Unilever (2003)** - HUL’s ad showed colgates toothpaste less effective compared to its own pepsodent based on scientific study however, the court still held. held it as **disparagement** of Colgate’s product and restrained the ad. --- 🔑 Difference in One Line: - **Infringement** = **Wrongful use of a trademark**. - **Disparagement** = **Wrongful attack on someone else's product reputation**.

Answer 19

✅ **Reckitt & Colman of India Ltd. v. M.P. Ramachandran and Anr.** **Citation:** [1999 PTC (19) 741] --- ⚖️ **Facts:** - **Reckitt & Colman** were the manufacturers of **Robin Blue**, a well-known blue whitener with a registered design and packaging. - **Defendant** (M.P. Ramachandran) marketed a rival product under the brand name **Ujala**. - Ujala’s advertisements: - Used **similar packaging** to Robin Blue. - **Referred to the price** as ₹10, which **uniquely matched** Robin Blue in the market. - **Disparaged** Robin Blue by calling it a **bad buy**—more expensive with less utility. - Also showed it as **badly bottled**, further diminishing its image. --- 👨‍⚖️ **Held (Calcutta High Court):** - The court held that this **amounted to infringement and disparagement**. - The **defendant’s advertisement** indirectly but **clearly targeted Robin Blue**. - An **injunction was granted** to stop further disparagement. - The court laid down **five guiding principles** for dealing with **comparative advertising and infringement**. --- 📌 **The Five Principles Laid Down (summarized):** 1. **Comparison is allowed**, but it must be **honest and not misleading**. 2. It is **permissible to compare** one's goods with another’s for **truthful advantage**. 3. However, **no advertiser can say their product is better by degrading another's**. 4. One **cannot mislead consumers** by falsely representing the other’s product. 5. Comparative advertising must not lead to **disparagement** of the competitor’s product. --- 🧠 Key Takeaway: This case is a **landmark on comparative advertising and disparagement** in Indian trademark law. It draws a clear line between **permissible puffery** and **illegal disparagement**.

Answer 20

he Hon’ble Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.19, held that the following factors to be considered in case of an action for passing off action of an unregistered trademark for deciding the question of deceptive similarity:- 1. The nature of the marks, i.e, whether the marks are word marks or label marks or composite marks, i.e, both words or label works. 2. The degree of resemblance between the marks, phonetically similar and hence similar in idea. 3. The nature of goods in respect of which they are used as trademarks. 4. The similarity in nature, character and performance of goods of the rival traders. 5. The class of purchasers who are likely to buy the goods bearing the marks they are likely to exercise in purchasing and/or using the goods. 6. The mode of purchasing the goods or placing orders for the goods. 7. Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”

Answer 21

In this context, the ingredients of Section 29 (1) are as follows:- 1. The plaintiff’s mark is registered. 2. The defendant’s mark is identical with, or deceptively similar to plaintiff’s registered mark; 3. The defendant has taken any essential feature of the mark or has taken the whole of the mark and then made a few additions and alterations. 4. The defendant’s use of the mark is in course of the trade in respect of goods/services covered by the registered trademark. 5. The use of the infringing mark must be printed or usual representation of the marking advertisements, invoices or bills. Any oral use of the trademark is not infringement. 6. The use by the defendant is in such manner as to render the use of the mark likely to be taken as being used as a trademark. 7. The defendant’s use of the mark is not by way of permitted user and accordingly unauthorised infringing use. While the above is the general proposition of law as per Section 29 (1), the various circumstances in which the trademark is infringed are enumerated in sub-sections 29(2) to (9) of Section 29.

Answer 22

1. Passing off action is based on common law principle that nobody has any right to represent his goods as somebody else. Such action is recognised both in respect of unregistered as well as registered trademark. An action for infringement on the other hand is based on the right acquired by registration and is possible only in respect of registered trademarks. 2. An action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restriction laid down in the Act.49 On the other hand, in a passing off action registration of trademark is not relevant. It is based on property in goodwill acquired by use of the mark. 3. The proprietor of an unregistered trademark whose mark is unauthorisedly used by another cannot sue for infringement of a trademark. His only remedy lies in bringing a passing off action. 4. In an infringement action, the plaintiff is not required to prove the reputation of his mark, which is not the case in case of passing off. In passing off action, the plaintiff has to prove that his mark has acquired reputation in relation to any goods delt with by him. 5. An infringement action can result in the restraining of defendant from using the registered trademark whereas in a passing off action the defendant is restrained from selling the article without clearly distinguishing from the goods of the plaintiff. 6. In an action for infringement, the use of trademark of the plaintiff, in relation to goods is a sine qua non for the action. In contradiction, in a passing off action, it is deceit as practiced on the public and not the use of the trademark that is to be shown.

Answer 23

Procedural Difference:- 1. In an infringement action, if there was colourable imitation, the fact that the get up was different was not relevant in an infringement action though it might have had relevance in a passing off action. 2. In passing off action identity or similarity of marks is not sufficient, there must also be likelihood of confusion. But in case of infringement if the marks are identical or similar no further proof is required. 3. An infringement action is based on the violation of the proprietary right and deception can be one of the ways whereas in a passing off action deception or likelihood of deception is the only thing to be established. 4. An infringement action does not require the use of the mark. The proprietor could have never used the mark in the course of the business and still bring an action for infringement whereas in a passing off action the plaintiff must establish that the mark by usage has become distinctive of his goods i.e. the goods are identified by the mark. 5. In an action for infringement, the plaintiff must make out that the use of the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Whereas, in case of passing off thedefendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from the goods of the plaintiff. 6. In case of a passing off action, the defendant’s goods need not be same as that of the plaintiff, they may be allied or even different. In case of an action for infringement, the defendant’s use of the offending mark may be in respect of the goods for which the mark is registered or similar goods.

Answer 24

🚘 **Case Name:** **Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.** **Citation:** (2018) 2 SCC 1 **Court:** Supreme Court of India --- ⚖️ **Facts:** - **Toyota**, the Japanese automobile giant, owns the trademark **“PRIUS”** (globally associated with its hybrid car launched in 1997). - **Prius Auto Industries Ltd.**, an Indian company, was using the name **“Prius”** for **auto parts** in India since **2001**. - Toyota filed a suit for **passing off**, claiming that the defendants were using the **PRIUS mark deceptively**, benefiting from Toyota's global reputation. - The defendant argued that **“PRIUS” was not a well-known mark in India** at the time they started using it (2001). --- 🔍 **Issues:** 1. Whether **Toyota had goodwill or reputation** for the “PRIUS” mark **in India** before 2001. 2. Whether there was **passing off** based on **transborder reputation** of the mark. --- 👨‍⚖️ **Supreme Court’s Judgment:** - The Court held that **Toyota could not prove that “PRIUS” had acquired reputation or goodwill in India** before 2001. - **Mere international reputation (transborder reputation)** is **not sufficient**; the brand must be **known to Indian consumers** at the relevant time. - Since the **defendants adopted the mark in good faith** and Toyota failed to show Indian presence or promotion of “PRIUS” before 2001, **no passing off** was established. --- 📌 **Legal Significance:** - The case clarified the **limits of transborder reputation** in Indian trademark law. - To claim passing off, the **plaintiff must show reputation in India**—just international fame is not enough. - Reinforced the **territorial nature of trademarks**: goodwill must exist in the market where the claim is made.

Answer 25

31. Registration to be prima facie evidence of validity.—(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. (2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.

Answer 26

--- 🔹 **Section 102 – Falsifying and Falsely Applying Trade Marks** - **Falsifying a trademark**: Making or altering a trademark without the owner's consent. - **Falsely applying a trademark**: Putting someone else's trademark (or a similar one) on goods/services or packaging **without permission**. - Such marks are called **false trademarks**. - In a case, the **accused must prove** they had the trademark owner's **consent**, not the other way around. --- 🔹 **Section 103 – Penalty for Using False Trademarks or Descriptions** - Punishment for: - Falsifying trademarks. - Using false trademarks or trade descriptions. - Making tools to create fake marks. - Giving wrong info about origin or manufacturer. - Tampering with country-of-origin marks. - **Penalty**: Minimum 6 months to 3 years imprisonment, and **fine** between ₹50,000 to ₹2,00,000. *(Court can reduce it for special reasons.)* --- 🔹 **Section 104 – Penalty for Selling Goods with False Trademarks** - Punishment for: - Selling or possessing goods/services with **fake trademarks** or **missing required info** (like country of origin or manufacturer). - Not punishable if: - Took reasonable precautions. - Didn't suspect anything wrong. - Shared details of the supplier when asked. - Acted innocently. - **Penalty**: Same as Section 103. --- 🔹 **Section 105 – Harsher Punishment for Repeat Offenders** - If a person is **convicted again** under Sections 103 or 104: - **Stricter punishment**: At least 1 year (can extend to 3 years) and **fine** between ₹1,00,000 to ₹2,00,000. - Court can reduce for special reasons. - Previous convictions **before the Act began** aren’t counted. --- Let me know if you'd like a flowchart or visual summary too!

Answer 27

--- 🔹 **Section 134 – Jurisdiction for Infringement and Passing Off Suits** - **Where to file suit**: - All suits for: - Trademark infringement (registered marks), - Rights in a registered trademark, - **Passing off** actions involving similar or identical marks, - Must be filed **only in a District Court**. - **Jurisdiction Exception**: - The District Court can include the court **where the plaintiff resides, works, or does business**—even if the cause of action arose elsewhere. - **Explanation**: - “Person” includes both **registered proprietor** and **registered user** of the trademark. --- 🔹 **Section 135 – Reliefs Available in Infringement or Passing Off Cases** - **Court can grant**: - **Injunction** (including temporary/ex parte) - **Damages** or **account of profits** (plaintiff can choose) - **Destruction/erasure** of infringing labels and marks - **Interim reliefs** (ex parte or interlocutory): - Discovery of documents - Preservation of infringing goods and evidence - Preventing the defendant from hiding or disposing of assets - **No damages or profit relief** (except nominal) if: - Case involves **certification/collective marks**, or - Defendant proves: - They were **unaware** of the plaintiff’s rights at the time of use, - Stopped using the mark immediately upon learning of the plaintiff’s rights (for both infringement and passing off cases) --- 🔹 **Section 142 – Groundless Threats of Legal Action** - If someone **threatens legal action** for alleged trademark infringement (via ads, letters, etc.), the person threatened can: - File a suit for: - **Declaration** that the threats are unjustified, - **Injunction** to stop the threats, - **Damages** (if any) - **Defence**: Threat-maker must prove: - The trademark is **validly registered**, and - The threatened act **would amount to actual infringement**. - **Exceptions**: - If the trademark owner **promptly files and pursues** an infringement suit, this section doesn’t apply. - **Legal practitioners or trademark agents** are not liable if they act in a professional capacity. - **Jurisdiction**: - Such suits must be filed in a **District Court or higher**. --- Let me know if you'd like a visual guide or comparison table between these sections!

Answer 28

Here’s a **precise and technically accurate summary** of **Section 47** of the Trade Marks Act, 1999 – *Removal from Register and Imposition of Limitations on Ground of Non-Use*: --- 🔍 **Section 47 – Removal or Limitation of Registered Trade Marks Due to Non-Use** **1. Grounds for Removal (Sub-section 1):** A **registered trademark** may be **removed** from the register in respect of specific goods or services upon application by a **person aggrieved**, if: - **(a)** The trademark was registered: - Without any **bona fide intention** of use by the applicant (or company/registered user under Section 46), - **And** there has been **no bona fide use** of the mark by any proprietor up to **3 months before** the date of application. - **(b)** The mark was not used **bona fide** for a **continuous period of 5 years or more** from the date of actual registration, up to **3 months before** the application date. ✅ **Exception (Proviso):** The tribunal **may refuse** to remove the mark **even if (a) or (b) is satisfied**, if it is shown that there was **bona fide use** in relation to: - (i) **Similar goods/services**, or - (ii) **Associated goods/services** in respect of which the mark is registered. **2. Imposing Geographical or Market-Based Limitations (Sub-section 2):** If it is shown that: - There was **no bona fide use** of the trademark: - In a **specific place in India** (for goods/services other than export), or - For **goods exported to a particular market outside India**, or - For **services used or accepted in a particular place/market**, **And** another person: - Has been allowed under **Section 12** to register a **similar/identical** mark for such place/market, - Or is found by the tribunal to be eligible for such registration, ➡️ Then, the tribunal may **limit the existing trademark registration** to exclude such use. **3. Special Circumstances Exclusion (Sub-section 3):** Non-use **cannot** be relied upon for removal or limitation if it is shown that: - The non-use was due to **special circumstances in the trade**, - Including **legal or regulatory restrictions** on trademark use in India, - And **not** due to an intention to abandon or not use the mark. APPLICATION can only be made by person "AGGRIEVED" and burden of proof is on the aggrieved to prove they are infact suffering due to the trademark registration

Answer 29

**Automatic Protection**: No need for formal registration; protection is automatic upon creation. **National Treatment**: Authors enjoy the same rights in other member countries as those countries give to their own nationals. three basic principles are the following: (a) Works originating in one of the Contracting States (that is, works the author of which is a national of such a State or works first published in such a State) must be given the same protection in each of the other Contracting States as the latter grants to the works of its own nationals (principle of "national treatment") [1]. (b) Protection must not be conditional upon compliance with any formality (principle of "automatic" protection) [2]. (c) Protection is independent of the existence of protection in the country of origin of the work (principle of "independence" of protection). If, however, a Contracting State provides for a longer term of protection than the minimum prescribed by the Convention and the work ceases to be protected in the country of origin, protection may be denied once protection in the country of origin ceases [3]. rights that must be recognized as exclusive rights of authorization: -The right to translate, make adaptations -the right to perform in public dramatic, dramatico-musical and musical works, -the right to recite literary works in public, -the right to communicate to the public the performance of such works, - the right to broadcast (with the possibility that a Contracting State may provide for a mere right to equitable remuneration instead of a right of authorization), - the right to make reproductions in any manner or form (with the possibility that a Contracting State may permit, in certain special cases, reproduction without authorization, provided that the reproduction does not conflict with the normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author; and the possibility that a Contracting State may provide, in the case of sound recordings of musical works, for a right to equitable remuneration), - the right to use the work as a basis for an audiovisual work The Convention also provides for **"moral rights"**, that is, the right to claim authorship of the work and the right to object to any mutilation, deformation or other modification of, or other derogatory action in relation to, the work that would be prejudicial to the author's honor or reputation. **Duration** 50 years after authors death, in applied arts or photographic work- minimum 25 years protection from CREATION of work

Answer 30

– The trademark holders of the energy drink “ Monster” filed a suit against the brewery that manufacturers the beer of “ The Vermonster. “ The makers of Monster energy drinks argued that the name of Vermonster would confuse consumers. [5]This case was dismissed because there was a clear cut difference between both the marks. Further, one was an energy drink, and another was a beer. There is no likelihood of confusion being caused in the minds of consumers.

Answer 31

1. copyright protection is limited to life of author+ 60 years post death. after that it falls into public domain 2. doctrine of fair use such as private study, research, criticism etc 3. non voluntary license - statutory license and compulsory license

Answer 32

for work to be original its important that it should not have been copied from another work The word "original" **doesnt** mean that the work itself should be containing novel information but rather it should have originality in the method of expression of thought Copyright Acts are not concerned with the originality of ideas, but with the epression of thought. Macmillan v. Cooper," that it was the product of the labour, skill and of one man which must not be appropriated by another, not the elements, the materials, upon which the labour and skil and capital of the first had been expended and been expended sufficiently to impart to the product some quality or character which the raw material itself did not posses. Regarding derivative work, the standard of creativity required to qualify as work was higher than standard for primary works The **Doctrine of Sweat of the Brow** is a principle in **copyright law** that grants protection to a work **based on the skill, effort, labor, or industry** put into creating it, rather than on creativity or originality. --- 📌 **Key Idea:** Under this doctrine, a work (like a compilation or a database) can be protected by copyright **simply because significant effort or "sweat" went into its creation**, even if there’s little or no creativity. --- 🏛️ **Origin:** - Historically followed in **UK copyright law** (pre-Human Rights Act era). - Upheld in **older Indian judgments** that followed British jurisprudence. - Rejected by the **U.S. Supreme Court** in *Feist Publications v. Rural Telephone Service Co.*, (1991), which held that **originality, not effort**, is the core of copyright protection. --- 📚 **Does it Apply in India?** ✅ **Partially, but with limitations.** India *formerly* leaned towards the sweat of brow doctrine, especially in cases like: - **Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.**, 1964 (UK case but followed by Indian courts) - **Govindan v. Gopalakrishna, AIR 1955 Mad 391** 🔹 **Key Indian Case**: - **Eastern Book Company v. D.B. Modak** (2008, SC) - The Supreme Court rejected pure "sweat of brow" and adopted a **middle path**. - Held that some amount of **creativity or judgment** is necessary. - Applied a **“modicum of creativity”** standard – similar to *Feist* but not identical. 🧠 **Current Indian Position:** - **Pure mechanical labor is not enough.** - **Some creativity + skill + judgment** is required for copyright protection. - India does **not** follow the "sweat of the brow" doctrine **in its pure form** anymore.

Answer 33

🔹 **Section 14 – Meaning of Copyright** Section 14 defines **what rights are granted under copyright** for different types of works. 📘 For Literary, Dramatic, Musical, Artistic works: - **Right to reproduce** the work. - **Issue copies** to the public. - **Perform or communicate** the work to the public. - **Make adaptations or translations**. 📽️ For Cinematograph Films: - Right to make copies (includes stills). - Sell or rent copies. - Communicate the film to the public. 🎧 For Sound Recordings: - Make other sound recordings using the original. - Sell, rent, or communicate to the public. > 📌 **Note:** Rights differ slightly depending on the category of the work. --- 🔹 **Section 15 – Special Provisions for Designs** This section deals with the **overlap between copyright and industrial design** protection. Key Points: - If a **design** is capable of being registered under the **Designs Act, 2000**, and: - It **is registered**, **copyright ceases** as soon as it is registered. - If **not registered**, **copyright subsists** only **until it is reproduced more than 50 times** by industrial process. > 📌 **Purpose:** To prevent *dual protection* under both copyright and design laws for mass-produced articles. --- 🔹 **Section 17 – First Owner of Copyright** This section specifies **who owns the copyright** in different situations. General Rule: - **Author is the first owner** of the copyright. Exceptions (ownership belongs to another): 1. **Employer** in case of works created during the course of employment (e.g., newspapers, magazines). 2. **Government** – if work is made under government direction. 3. **Public undertakings** – when work is done under contract for them. 4. **Commissioned works** like portraits, photographs, or cinematograph films – the person who commissions may own it, subject to agreement. > 📌 **Bottom line:** While the author is usually the owner, contracts and certain situations (like employment or commissioned works) can change that.