Legal 3rd assignment .pptx

COCA COLA Vs
BISLERI
Kevin J Kurien G_11
Rajshree Setty G_18
Suraj Kumar Das G_24
Shashank Tripathy G_28
Number of slides 43

What is a Trademark and why is it
important?
● A Trademark is a way of identifying a good or service
● Way of distinguishing ones product or service
● A trademark can be a word, phrase, symbol, design or a combination of these things
● A service mark is used for a service
● The source of the good or service can be identified
● Prevention against wrongful use of the mark
● Helps provide legal protection
● It is a proof of quality
● Provides a competitive advantage
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Rajasree Setty

The Trade Marks Act, 1999
The Trade Mark Act, 1999 defines a trade mark as a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from
those of other and may include shape of goods, their packaging and combination of colours.
● TM Act, 1999 consists of 13 chapters and 159 sections
● This Act provides for procedure of registering Trademarks, infringement of trademarks
and constitution of an Appellate board
● Trademark Act, 1999 deals with the protection, registration and prevention of fraudulent
use of trademarks. It also deals with the rights of the holder of the trademark, penalties
for infringement, remedies for the damaged as well as modes of transference of the
trademark
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Rajasree Setty

Origin of the Trademark Act, 1999
There was a need for specific legislation to deal with infringement and passing off of trademarks. The
Trademark Act, 1940 was enacted, this provided for registration of trademarks and statutory
protection against infringement.
As trade and commerce practices changed through the years, a need was felt for robust proprietary laws
which lead to creation of Trade & Merchandise Marks Act, 1958. This provided better protection,
and provided provisions for trademarks under the Indian Penal code, Indian Criminal Code.
Trade Related Aspects of Intellectual Property (TRIPS), 1994-The Indian Trade Mark Act, 1999
replaced the Indian Trade & Merchandise Marks Act,1958 in order to conform to the TRIPS agreement
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Rajasree Setty

Important Definitions
“transmission” means transmission by operation of law, devolution on the personal representative of a
deceased person and any other mode of transfer, not being assignment;
“registered user” means a person who is for the time being registered as such under section 49;
“registered trade mark” means a trade mark which is actually on the register and remaining in force;
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Rajasree Setty

Important Definitions
“permitted use”, in relation to a registered trademark, means the use of trade mark— (i) by a registered
user of the trade mark in relation to goods or services— (a) with which he is connected in the course of
trade; and
(b) in respect of which the trade mark remains registered for the time being; and (c) for which he is
registered as registered user; and
(d) which complies with any conditions or limitations to which the registration of registered user is
subject; or
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Rajasree Setty

Intellectual Property Appellate Board
The Intellectual Property Appellate Board (IPAB) is a quasi-judicial body in India established under the Trade
Marks Act, 1999 and Copyright Act, 1957 to hear and decide appeals from persons aggrieved by the decisions
of the Registrar of Trade Marks and Copyright and to act as a neutral forum for resolving disputes related to
intellectual property rights.
The IPAB has the power to hear appeals, review its own decisions, and rectify any errors made in the course of
its proceedings. It plays an important role in enforcing and protecting intellectual property rights in India and
helps to ensure that disputes are resolved in a fair, impartial and expeditious manner.
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Rajasree Setty

Intellectual Property Appellate Board
The Central Government, established the Intellectual Property Appellate Board to exercise jurisdiction,
power and authority conferred on it under the Trademark Act, 1999.
COMPOSITION OF IPAB
The IPAB shall consist of
● Chairperson
● Vice Chairperson
● And such numbers of members as deemed fit by the Central Government
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Rajasree Setty

Qualification for appointment of Chairperson and
Vice Chairperson
A person is qualified for appointment as Chairperson if he is:
● Is or was a judge of a high court
● Held the office of vice chairperson for at least two years
A person is qualified for appointments as Vice Chairperson if he is:
● Has, at least for two years held the office of a judicial members or a technical members
● Has been member of the Indian Legal Service and has held a post in Grade 1 of that service or
higher for at least 5 years
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Rajasree Setty

International Treaties governing
Trademarks
Globalization has made it necessary for trademarks to be protected in every country
1. Trade related aspects of Intellectual Property (TRIPS)- Came into force in
1995 and has 150 member countries
2. Berne or Paris Convention- Amongst the first IP treaties. In force since 1884.
3. Madrid Protocol- Connected with World Intellectual Property Organization
4. European Community Trademark- Can register trademark in anyone or all
member countries of the European Union with a single application.
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Rajasree Setty

Madrid Protocol
India is a signatory to the International filing protocol under the Madrid Protocol. This was brought
upon by amending the Trademarks Act in 2013.
The Principle Act of the the Trademark Act,1999 which did not allow Indian and foreign nationals to
register a trademark simultaneously in other countries was amended.
The madrid system is a cost effective way to register and manage trademarks worldwide. This allows
indian businesses who wish to apply for a trademark to file a single application, in one language and
with one fee in india for registering the trademark in all member countries.
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Rajasree Setty

Functions of a Trademark
Trademarks serve several important functions, including:
1. Identification: A trademark helps identify the source of goods or services and distinguishes them from those of other
companies.
2. Branding: Trademarks are an important tool for building and promoting a brand. They help to establish the reputation and
image of a company and its products or services.
3. Marketing: Trademarks can be used in advertising and marketing to create a positive image and increase consumer
recognition and loyalty.
4. Legal Protection: Trademarks provide legal protection for the owner, preventing others from using a similar mark that
could cause confusion among consumers.
5. Intellectual Property Right: A trademark is considered a form of intellectual property, and owners have the right to enforce
their trademark rights in court.
6. Valuation: Trademarks can add value to a company, making it easier to secure funding and investments, and can also be
bought and sold as a separate asset.
7. Global Recognition: Trademarks are recognized globally, which makes it easier for companies to expand their business into
new markets.
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-Trademark registry is a government office responsible for maintaining a register of trademarks and the issuance of trademark
certificates. In India, the trademark registry is governed by the Trademarks Act, 1999 and the rules made thereunder.
- Section 5 of the Trademarks Act, 1999 defines a trademark and explains the types of marks that can be registered as
trademarks, while Section 6 specifies the conditions for the registrability of a trademark.
-Section 5 states that a trademark may consist of any word, symbol, or combination thereof and may include shapes, logos,
and packaging designs. It also specifies that marks that are not capable of distinguishing the goods or services of one person
from those of another person cannot be registered as trademarks.
Trademark Registry Sec. 5
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Trademark Registry Sec. 6
Section 6 provides the following conditions for registrability of a trademark:
1. The trademark must be distinctive and must not be similar to an existing trademark.
2. The trademark must not be a prohibited mark as per the provisions of the Trademarks Act.
3. The trademark must not be descriptive or generic and must not have become a common name in the
trade for the relevant goods or services.
4. The trademark must not be deceptively similar to another trademark or geographical indication.
5. The trademark must not be contrary to law or morality or hurt the religious sentiments of any class or
section of citizens.
In summary, Section 5 defines what a trademark is, while Section 6 outlines the conditions that a trademark
must meet in order to be eligible for registration.
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Advantages of Trademark
Trademark registration provides several benefits to the owners of a registered trademark. Some of the main advantages of
trademark registration include:
1. Legal protection: A registered trademark gives the owner the exclusive right to use the trademark in connection with the
goods and services specified in the registration. This means that others cannot use a similar trademark for similar goods or
services without the owner's permission.
2. Evidence of ownership: Registration provides prima facie evidence of the validity of the trademark and of the registrant's
ownership of the trademark.
3. Nationwide protection: Trademark registration provides nationwide protection for the trademark, allowing the owner to
enforce their rights in any part of the country where the trademark is being used or is likely to be used in the future.
4. Enhanced reputation: A registered trademark can enhance the reputation and credibility of a business, making it easier to
attract customers and retain existing ones.
5. Licensing and assignment opportunities: A registered trademark can be licensed or assigned to others, providing a source
of income for the owner.
6. Legal remedy: If someone else uses a trademark that is similar to the registered trademark, the owner can take legal action
to stop the infringing use and seek damages for any losses suffered as a result of the infringement.
7. Bar to importation: A registered trademark owner can use the trademark registration to prevent the importation of goods
bearing infringing trademarks into the country.
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Trademark Registration Procedure
The trademark registration procedure typically involves the following steps:
1. Search: Before filing a trademark application, it is advisable to conduct a trademark search to ensure that the
trademark is available for use and registration. The search should include a review of existing trademarks that are
similar to the proposed trademark.
2. Filing the trademark application: The trademark application should be filed with the trademark office in the country
where the trademark will be used or where the applicant has a real and effective industrial or commercial
establishment. The application should include the trademark, a list of the goods and services for which the trademark
will be used, and the details of the applicant.
3. Examination: After filing the trademark application, the trademark office will examine the application to determine
whether it meets the requirements for registration. The examination will include a review of the trademark's
distinctiveness, the goods and services for which it will be used, and any prior trademarks that are similar to the
proposed trademark.
4. Publication: If the trademark office finds the application to be acceptable, the trademark will be published in the
trademark journal. This provides an opportunity for third parties to oppose the registration of the trademark.
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5. Opposition: If a third party believes that the trademark registration should not be granted, they may file an opposition to the
trademark application. The opposition must be filed within a specified period of time after the publication of the trademark.
6. Registration: If no opposition is filed or if the opposition is unsuccessful, the trademark office will register the trademark
and issue a certificate of registration.
7. Renewal: Trademarks must be renewed at regular intervals to maintain their validity. The renewal procedure typically
involves filing a renewal application and paying the renewal fee.
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Concept of Distinctiveness in Trademark
Distinctiveness is a crucial concept in trademark law, as it is a key factor in determining the registrability of a trademark. Distinctiveness refers to
the degree to which a trademark is capable of distinguishing the goods or services of one person from those of another.
Trademarks can be categorized into five categories, based on their distinctiveness:
1. Fanciful: These are trademarks that have been invented for the sole purpose of functioning as a trademark, such as KODAK or XEROX.
Fanciful trademarks are considered to be the most distinctive and are therefore the easiest to register and enforce.
2. Arbitrary: These are trademarks that consist of common words that have no relationship to the goods or services for which they are used,
such as APPLE for computers or BLACKBERRY for smartphones. Arbitrary trademarks are also considered to be highly distinctive.
3. Suggestive: These are trademarks that suggest or imply a characteristic or quality of the goods or services, but do not directly describe
them. For example, COPPERTONE for suntan lotion or JAGUAR for cars. Suggestive trademarks are considered to be distinctive, but
may require a secondary meaning to be established in order to be registrable.
4. Descriptive: These are trademarks that directly describe the goods or services, such as QUICK MAIL for express mail services or
HOTEL.com for hotel reservation services. Descriptive trademarks are not inherently distinctive and may only be registrable if they have
acquired secondary meaning through use.
5. Generic: These are trademarks that have become the common name for the goods or services, such as ASPIRIN for pain relievers or
THERMOS for insulated containers. Generic trademarks cannot be registered as trademarks, as they do not serve to distinguish the goods
or services of one person from those of another.
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In determining the distinctiveness of a trademark, several factors are considered, including:
1. Type of mark: Trademarks can be either arbitrary, fanciful, suggestive, descriptive, or generic. The more arbitrary or fanciful
the mark, the more distinctive it is considered to be.
2. Similarity to other marks: If the trademark is similar to existing trademarks, it is less distinctive and less likely to be granted
protection.
3. Use of the mark: A trademark that has been in use for a long time and has acquired a secondary meaning is considered to be
more distinctive than one that has only recently been introduced.
4. The market for the goods or services: If the trademark is used in a highly competitive market, it may be harder to establish
distinctiveness.
5. Consumer recognition: If the trademark is well-known and recognizable among consumers, it is more likely to be considered
distinctive.
6. Evidence of intentional copying: If the trademark was created with the intention of copying or mimicking an existing
trademark, it is less likely to be considered distinctive.
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Features of a Good Trademark
There are several features that are considered to be important in a good trademark:
1. Distinctiveness: A good trademark should be distinctive, meaning it should be capable of distinguishing the goods or
services of one person from those of another. Distinctiveness is a crucial factor in determining the registrability of a
trademark.
2. Memorability: A good trademark should be memorable, making it easy for consumers to recall and associate with the
goods or services it represents. A memorable trademark can help build brand recognition and customer loyalty.
3. Easy to pronounce: A good trademark should be easy to pronounce, making it easier for consumers to remember and
share with others.
4. Simple and straightforward: A good trademark should be simple and straightforward, making it easy for consumers
to understand and recognize. Complex trademarks can be difficult to remember and may be confusing to consumers.
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5. Unique: A good trademark should be unique, meaning it should not be confusingly similar to existing trademarks. This is important to ensure
that consumers are not misled and that the trademark owner has the exclusive right to use the trademark.
6. Adaptable: A good trademark should be adaptable, meaning it should be usable in a variety of media, including print, digital, and broadcast.
This helps to ensure that the trademark is protected in all forms of marketing and promotion.
7. Not descriptive: A good trademark should not be descriptive, meaning it should not directly describe the goods or services for which it is
used. Descriptive trademarks are not inherently distinctive and may only be registrable if they have acquired secondary meaning through use.
8. Not generic: A good trademark should not be generic, meaning it should not have become the common name for the goods or services it
represents. Generic trademarks cannot be registered as trademarks and do not serve to distinguish the goods or services of one person from those
of another.
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Opposition to registration sec 21 of TM act
⬥ Any person can make application to Registrar for opposition to registration.
⬥ Opposition application has to be made within 3 months from date of advertisement.
⬥ Registrar can extend the period up to one month.
⬥ Notice of opposition should be submitted in Form TM-5.
⬥ Copy of opposition shall be sent to applicant and he has to reply within two months with his
counter statement.
⬥ If reply is not sent within two months, application for registration will be deemed to have been
withdrawn.
⬥ Registrar will scrutinize the evidence, hear the parties and then decide the matter.
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Infringement of TM
● A mark which is identical with, or deceptively similar to the registered TM
or
● its identity with the registered trademark or
● its similarly to the registered trade mark or
● If it is likely to cause confusion on the part of the public, or
● which is likely to have an association with the registered trademark.
● takes unfair advantage of or is detrimental to, the registered trademark or
● Use of TM for labeling or packaging goods, as a business paper, or for
advertising goods or services or
● The trade mark may be infringed by the spoken use of those words as well
as by their visual representation.
● Offers or exposes goods for sale
● Imports or exports goods under the same TM.
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Suit for Infringement
A suit to be filed in a Dist. Court having jurisdiction.
The jurisdiction is governed by C.P.C. 1908.
The infringement must have taken place within the territorial jurisdiction of the
court.
Suit may be filed where plaintiff/defendant resides or carries on business.
Suit for passing off action can also be challenged before Dist. Court.
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Assignment of TM
● Trademarks like any asset can be transferred from one owner
to another.
● The transfers could be temporary through licensing or
permanent through an assignment.
● Assignment of trademarks is a process in which the owner of
the trademark transfers the ownership of the mark either with
or without the goodwill of the business.
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The Trade Marks Act, 1999
"Assignment" means an assignment in writing by act of the parties
concerned.
A mark may be assigned or transferred to another entity in any of the
following manners:
● Complete Assignment
● Partial Assignment
● Assignment with goodwill
● Assignment without goodwill
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Complete Assignment to another entity
The owner transfers all its rights with respect to a mark to another entity, including the transfer of
the rights such as right to further transfer, to earn royalties, etc.
Partial Assignment
The transfer of ownership is restricted to specific product or service only. The owner may retain
the right to further transfer, to earn royalties etc.
Assignment with goodwill
The transfer of ownership is restricted to specific product or service only. The owner may retain
the right to further transfer, to earn royalties etc.
Assignment without goodwill
This is an assignment where the owner restricts the assignee to use trademark for the products
he uses it for.This means that assignor & assignee both can use the same trademark but in
dissimilar goods or services.
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Trademark licensing
Trademark licensing is when a trademark owner allows others to use the mark without
transferring of ownership.
The TM Act 1999 does not use any word i.e. licensing but it uses the word Registered
users.
Sections 48 to 54 deals with the provisions of registered users/ licensing of TM.
Two parties are involved i.e. licensor and licensee
"registered user" means a person who is for the time being registered as such under section
49.
Registration as registered user:
● A person other than TM owner may be registered as registered user.
● Application to the Registrar jointly by licensor and licensee.
● Copy of the agreement between by licensor and licensee need to be attached.
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Trademark licensing
The grant clause that includes the trademarks licensed, geographical territory, term of the
agreement etc. should be clearly laid down.
Any other restrictions/conditions imposed by the proprietor.
Consideration in form of royalty and the percentage to be paid.
Grounds on which the licensor can terminate the agreement.
Power of the Registrar to cancel the registration of registered users: Sec. 50
● On Application made by the registered users
● If the TM is not registered
● Proprietor or registered users failed to disclose material facts/ misrepresented the
Registrar.
● Notice shall be issued by the Registrar.
● Opportunity of hearing shall be given.
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Passing off
Passing off happens when someone deliberately or unintentionally
passes off their goods or services as those belonging to another party.
This action of misrepresentation often damages the goodwill of a
person or business, causing financial or reputational damage.
Passing off happens when someone deliberately or unintentionally
passes off their goods or services as those belonging to another party.
This action of misrepresentation often damages the goodwill of a
person or business, causing financial or reputational damage.
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Concept of “Passing Off”
"No man can have any right to represent his goods as the goods of another person."
False representation is usually used under this.
unfair competition destroys honest businesses and should not be allowed.
The object of the this law is to protect the goodwill and reputation of a business.
Means adopted for passing off
1. Direct false representation
2. Adoption of similar T M/ a colourable imitation of the TM.
3. Copying the get-up/trade dress/ colour scheme of the label.
4. Imitating the design or shape of the goods
5. Adoption of an essential part of a rival traders' name etc.
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Infringement v/s Passing off
1. Registration of TM is required.
2. If the marks are identical or
deceptively similar no further
proof is required.
3. Statutory remedy is available.
4. Can institute the suit for
infringement.
5. Applies only to goods.
6. prosecution under criminal law is
easier.
1. Registration of TM is not required.
2. The use of the mark or symbol must
be likely to receive or cause
confusion.
3. Remedy under common law.
4. Can institute the suit for passing off.
5. Applies to any business whether
trading or non-trading, profit making
or non-profit.
6. prosecution under criminal law is
difficult.
Infringement Passing off
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Introduction to Case
Coca Cola Co. Vs Bisleri international pvt ltd
*Stakeholders involved in the dispute
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Kevin J Kurien
G-11
(Plaintiff) (Defendant)

Timeline
● 1993: Coca-Cola buys the Maaza brand from Parle along with others like Limca, Gold
Spot, Citra and Maaza brands.
● 2005-07: Coca-Cola files for registration of Maaza in global markets such as Turkey and
Europe
● 2008: Bisleri challenges in court Coca-Cola's claim to overseas ownership of Maaza
trademark
● 2009: Delhi High Court says Coca-Cola has rights over Maaza in India; Bisleri
challenges order
● 2013: Court says Bisleri can continue to manufacture Maaza in India for export purposes
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Kevin J Kurien
G-11

Facts of Case
The plaintiff(Coca Cola) is the largest brand of soft drinks operating in 200 countries and the
defendant(Bisleri) in this case is a well-known Indian brand which is highly regarded for its bottled
water.
On September 18, 1993 the defendant sold
● Deed of assignment for transferring and assigning the trademark for Maaza in India.
● The assignment of goodwill agreement.
● Transferring of know-how for a trademark.
● Confidentiality and non-use agreement.
● Agreement for general assignment.
● Agreement in respect of relinquishment of franchise rights for compensation.
of their products (Thumbs Up, Limca, Gold Spot, Citra and Maaza inter alia) to the plaintiff. The case
concerns with the product Maaza only.
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Kevin J Kurien
G-11

Facts (Continued)
On November 12, 1993, the plaintiff and defendant entered into a deed of assignment by way of which
the following agreements as regards MAAZA were concluded.
In October 1994 the Licensing Agreement for MAAZA between the plaintiff and Golden Agro
Products Pvt. Ltd. was entered into and executed. It is the plaintiff's case that by this agreement all the
trademarks, formulation rights etc. were irrevocably conveyed to the plaintiff forever.
In March 2008, the defendant became aware of the fact that the plaintiff had filed for registration of
MAAZA trademark in Turkey.
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Kevin J Kurien
G-11

Facts (Continued)
On September 7, 2008 the defendant sent the plaintiff a legal notice repudiating the
Licensing Agreement thereby ceasing the plaintiff from manufacturing Maaza and using
its trademarks etc. directly or indirectly, by itself or through its affiliates.
As per the plaintiff, the notice claimed that the plaintiff had breached the said
agreement by attempting to register Maaza in Turkey as the agreements/assignments
between the parties allowed the plaintiff to use Maaza in India alone. The notice also
stated the defendant's intention to start using the trademark Maaza in India. The
plaintiff subsequently filed a lawsuit.
38
Kevin J Kurien
G-11

Issues raised
● Whether the exports of the products of the trademark ‘Maaza’ can be
considered as an infringement as claimed by the defendant.
● Does the Delhi High Court have territorial jurisdiction to deal with the
matter?
● Is there any infringement of the trademark or passing-off?
● Is the plaintiff entitled to get a permanent injunction
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Kevin J Kurien
G-11

Laws Involved
The Trademarks Act, 1999[4]
Section -20 - deals with Advertisement of Application
Section- 29 - deals with Infringement of registered trademarks.
Section – 41 - deals with Restriction on assignment or transmission when exclusive rights would be
created in different parts of India.
Section – 134 - deals with Suit for infringement, etc., to be instituted before District Court.
The Specific relief act, 1963[5]
Section – 41(h) - deals with Injunction when not be granted.
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Kevin J Kurien
G-11

Arguments
● The plaintiff argued that any restriction by the defendant on the use of the trademark ‘Maaza’ and its
manufacturing formula after a licensing agreement had already been made between the parties, will be considered
as a part of infringement of Plaintiff’s right.
● The defendant argued that in accordance with the licensing agreement, they had allowed the use of the trademark
of Maaza to the plaintiffs only in India.
● The defendant also contended and stated that the plaintiff filed by the plaintiff in the Delhi High Court has no
territorial jurisdiction on the case
● The plaintiff stated that there is an infringement of its exclusive usage rights of its registered trademark in respect
of ‘Maaza’ as they had the sole and exclusive right to use the trademark within and outside India.
● The plaintiff stated that the suit filed by the company for injunction lay within the jurisdiction of the Delhi High
Court.
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Kevin J Kurien
G-11

Judgement
Decided by – Hon’ble Justice Manmohan Singh
The court passed an order on 28th October, 2008 restraining the defendant and its officers, agents, and other
employers from using the trademark ‘Maaza’ and any other deceptively similar trademark with relations to
mineral water alcoholic drinks and other aerated drinks and any other preparation of beverage bases
They were also restrained from using and and disclosing the know-how, formulations, and Intellectual Property
Rights to any other persons. Two local commissioners were also appointed by the court to keep a check on the
activities by the plaintiff and the defendant.
The court further stated that the parties were bound by a deed of assignment between the plaintiff and
defendant and that if there was any breach of the agreement, the harmed party would be entitled to seek
damages from the other party.
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Kevin J Kurien
G-11

Conclusion
One of the most crucial elements of Intellectual Property rights is the trademark, which
determines whether any word, name, symbol, configuration, device, shape of goods, packaging,
combination of colours, and brand name are protected. By offering his registered trademark
protection, the idea safeguards the original registered proprietor's exclusive rights.
The subsequent case also provided insight into numerous relevant portions of the Trademarks
Act of 1999, the Specific Relief Act of 1963, and the Code of Civil Procedure of 1908. The
argument further asserts that trademarks are a global phenomena that provide protection to their
owners outside of Indian borders and that they have the power to punish infringers and pass-off
perpetrators.
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Kevin J Kurien
G-11

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