The question of infringement of trademark has been subject to
widespread deliberation. Section 29 of the Trademark Act 1999 talks
about various aspects related to infringement as given in Section
29 (1) that a registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which is
identical with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which the trade mark is
registered and in such manner as to render the use of the mark
likely to be taken as being used as a trade mark.
Where a case of similar marks are in fact similar to the extent
of being deceptive was concerned, certain principles were set out
in the case of Cadilla Healthcare v. Cadila Pharmaceuticals. In
'Reckitt Coleman v. MP Ramachandran [1999 PTC (19) 741 (Cal)]
the Court held (in reference to disparative advertisements) that
for a Court to adjudge infringement of trademark, the
'essential features' of the two impugned marks must be
similar or identical. In lieu of the fact that the relief claimed
by the plaintiff in a suit of infringement of its trademark is
usually, an injunction by way of infringement and damages (and
injunction) by way of passing off, it is necessary that the Courts
follow the two cardinal principles set out by the SC in the above
mentioned cases. Further, in Colgate Palmolive v. Mr. Patel 108
(2003) DLT 5, that once the essential feature of the registered
trademark is 'adopted', no further burden lies on the
plaintiff to prove that the similarity is also deceptive in
In a recent case P.P. Jewellers Pvt. Ltd. v. P.P. Buildwell
Pvt. Ltd, the Court, quite appreciatively carried out, with
fair conviction the rationale given in the above cases.
'PP Jewellers Pvt. Ltd.' filed a suit for infringement
of trademark against the defendants, 'PP Buildwell Pvt.
Ltd.', regarding the use of the mark 'PP' by the
defendants. PP Buildwell Ltd., allegedly, had acquired a trademark
over the letters 'PP' by way of continuous and extensive
use of the same in their trade practices. It was claimed by PP
Jewellers Pvt. Ltd. that PP Buildwell's use of the said mark
was an infringement on their formidable reputation and goodwill in
the said mark and further, that PP Buildwell are guilty of passing
PP Jewellers Ltd alleged that the PP Buildwell Pvt Ltd. have, by
adopting the letter mark 'PP' as part of their corporate
names, passed off their services as that being offered by the PP
Jewellers Ltd . The Court considered several cases while deciding
the issue of passing off, in particular, Kaviraj Pandit Durga Dutt
Sharma v. Navaratna Pharmaceutical Laborataries, AIR 1965 SC 980
and Harrods Ltd. v. Harrodian School Ltd,  R.P.C. 697 and
opined that the simple fact that PP Buildwell Pvt. Ltd. added a
suffix to the letters 'PP' meant that they had no
mala fide intention to defraud or confuse consumers. The added
material in the form of 'Buildwell' or 'Mall' or
'Shopping Mall' were sufficient to distinguish the PP
Buildwell Pvt Ltd marks from that of the PP Jewellers Ltd. They
also stated that they had entered the construction business and as
such the chances of a customer mistaking one company for the other
was real possibility.
The Court adjudged that PP Jewellers Ltd. used the mark
'PP' as a mere prefix for their commercial
products. The actual mark used by the plaintiffs was a combination
of the letters PP and the name of the business viz. PP Jewellers or
PPJ. Hence, the Court opined that 'the letters 'PP'
when not supplanted by the business name would not acquire a
connotation entitling such a mark protection from
infringement.' In other words, the letter mark
'PP' was not subject to trademark protection under Sec. 29
of the Trademarks Act, 1999. The Court relied upon this fact to
hold that the term 'PP' per se would not
constitute an 'essential feature' of the mark and as such
merely the use of the term, 'PP' by 'PP Buildwell Pvt.
Ltd.' would not institute an infringement.
Moreover, the Court found that profile of the customers to which
the two parties cater to, are different. PP Buildwell, being
builders, cater to customers from the higher strata of the society
who are expected to be educated and intelligent enough to
distinguish the defendant's company from the plaintiff. Also,
the degree of care, expected to be exercised by a customer while
seeking commercial places is high, and as such, passing off is
highly unlikely .In this view, the Court held inter alia, that
there was nothing distinctive about the letters 'PP'
themselves, and therefore, a relief on the virtue of the letter
mark itself cannot be granted.
We have been receiving requests from our Pharma clients/readers of the blog for the analysis of the decision/ facts that led to rejection of Lumacaftor (Polymorph) patent application in India since last year.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).