Infringement of trademark as defined under Section 29 of The Trade Marks Act, 1999 has given statutory recognition to certain types of passing off, e.g., when the goods are different and also to concepts like dilution of trade mark, erosion of distinctive character of the trade mark and damage to reputation. Infringement is to be established by proving that the mark or the goods or services in respect of which the person uses it is either identical or deceptively similar to the registered trademark and it is used in the course of trade in areas covered by the registration. The Supreme Court laying down the test of infringement relating to deceptive similarity in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980, held that :
"In an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be certained by a comparison of the two marks-the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark."
With more and more commercialization of the products, the court is overflooded with the infringement of trademarks cases. The Delhi High Court in La Chemise Lacoste & Anr. v. R.H. Garments & Ors. (2006 (32) PTC 481(Del.)) has decreed perpetual injunction in favour of the plaintiff and against the defendants who were making counterfeit product and infringing the trademark of the plaintiff.
In the instant case the plaintiffs were internationally renowned manufacturer and dealer of clothing articles including T-shirts since 1934 and had trademark registered for LACOSTE and CROCODILE device. They maintained most stringent quality standards using the best yarn available along with putting the finished garments through quality control test. The defendants were dealing in counterfeit products bearing registered trademark of plaintiffs ‘LACOSTE’, ‘CROCODILE’ and ‘CHEMISE LACASTOE’. Their labels and T-shirts sold by the defendants also reproduced the crocodile device of the plaintiffs in totality. The plaintiff contented that the reproduction of the artistic work and crocodile device by the defendants amounted to infringement of their copyright and thus contended for permanent injunction. The court agreeing to the contention of the plaintiff that they would suffer irreparable loss in case the defendants were not restrained from manufacturing counterfeit products passed a decree of perpetual injunction against the defendants.
Similarly the same court very recently in M/s Hindustan Pencils Ltd. v. Aparna Enamel Industries CS(OS) No.- 1528/2003) decided on May 8th, 2006 has decreed permanent injunction in favour of the plaintiff. In the present case, the plaintiff since 1957 was well established manufacturer of pencils and other stationery and was the registered proprietor of various trademarks NATARAJ, APSARA and devices of NATARAJ and had made huge expenses on advertisement and had also acquired vast goodwill and reputation in stationery business. The cartons of NATARAJ with the device NATARAJ were also registered under the Copyright Act. The defendants were using the trademark and devices of NATRAJ and APSARA in respect of hard board slate. The court negating the contention of the defendant that there was spelling difference, held that the nature of good sold by both the plaintiff and the defendants had similarity inasmuch as the customers were broadly the same. Such stationery items being purchased largely by children who would assume that the product of the defendant emanated from the plaintiff in view of the trademark. The defendants not only adopted the same trademark but also the devices, which clearly pointed to the dishonest intention of the defendants. The court with a view to set an example awarded damages to the plaintiff along with permanent injunction for unnecessarily dragging the plaintiff into litigation and thus prohibited in further infringing the copyright and trademark.
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.
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