PRINCIPLES RELATING

TO
TRADEMARKS
1. Doctrine of Honest Concurrent User
• A trademark plays a key role with the establishment of a brand. It
helps in creating a sense of trust of the customer within the product by
just having a look at the trademark. Trademark, by definition, could be
a unique sign (comprising of a reputation, word, phrase, logo, symbol,
design, et al or a mixture of 1 or more of those elements), used for the
aim of prima facie identifying the goods/services of one trader from
those of other traders within the market; it’s going to come as no less
than a surprise to trademark proprietors that identical or similar mark
can exist in respect of identical or similar goods or services and one
such exception is “Honest Concurrent Use”.
Documents to prove Honest Concurrent Use

Some of the documentary evidence which can prove honest

concurrent use under Section 12 of the Act are:
1) If it is a mark already in use then the evidence to prove the time
period of the usage of the mark;
2) Advertisements of the mark and the proofs of the amount spent on
the advertisement of the mark;
3) The applicant can also produce books of accounts showing the
yearly sales figures for goods/services offered under the mark.
All the above evidence helps the applicant to prove that the
consumers have started connecting the mark with his
product/services offered under the mark.
Landmark Cases using the defense of Honest Concurrent
Use:

In the case of Kores(India) Ltd. v. M/s Khoday Eshwarsa and Son

[(1984)] five factors were laid down as being necessary for determining the
registrability of a trademark. These were:
1.The quantum of the concurrent use of the trademark in connection with
the goods concerned and the duration, area and volume of the trade.
2. The degree of confusion likely to follow from the resemblance of the
marks, which is to an indication of the measure of public inconvenience.
3. The honesty of the concurrent use
4. Whether any cases of confusion have in fact been proved.
5. The relative inconvenience, which would be caused if the marks were
registered, subject if necessary to any conditions and limitations.
(criteria for deciding Honest Concurrent Use of Trademarks)
In the case of Goenka Institute of Education and
Research vs. Anjani Kumar Goenka and Anr. (2009), the
appellant was allowed to use the mark “ Goenka” with a
condition so in order to include the name of their trust below
the name of their school so as to facilitate a crystal clear
differentiation between both the marks. the reason which
allowed the use of the doctrine of honest concurrent use was
that both the parties started using the mark “Goenka” at the
same time and both were based two different locations so
there would be minimal chance of public confusion .
Circumstances when Honest Concurrent Use can’t be used as a
defense:
The defense of Section 12 possesses diluted over time primarily thanks to these reasons:

1.Well-known Trademarks: The Act provides enhanced protection to Well-known Trademarks.

a widely known trademark gets protection in all the classes (NICE Classification) regardless of
its registration within a particular class. (Daimler Benz Aktiegesellschaft & Anr. v. Hybo
Hindustan)
2.New and innovative methods of advertisements tend to achieve bent a bigger number of
potential users. Online Advertisements and advertisements on social media have also
contributed to a fast brand building of a corporation or business house.
3.The trans-border reputation of brands or marks: thanks to globalization, the brands are
recognized by consumers or customers everywhere on the planet. ( N.R. Dongre v. Whirlpool
Corporation)
4.Possibility of brands expanding their business in the future thereby expanding the chances
of reaching wider consumers. Therefore the defense that the merchandise or service is
different from the merchandise or service on which the mark is already in use is now having a
lesser impact, since the earlier proprietor of the mark may expand his business within the
future.
To conclude, when claiming honest concurrent use after
receipt of a similarity objection or opposition, the applicant
or the defendant should produce strong evidence to
substantiate such claims of extensive, honest and
concurrent use of the trademark. Extensive, honest and
concurrent use of the disputed mark does not negate
but mitigates the likelihood of consumer confusion due
to the conceptual similarity of the marks. The primary
objective of a Trade Mark is to act as a source identifier,
and if two identical or similar marks can exist without any
public confusion then the mark can be registered subject to
the subjective discretion of the Registrar.
 2. Doctrine of prior user
• It is a well settled principle of Trademark Law that prior use of the goods will
override the subsequent user, even though subsequent user has a registered
trademark. Thus, the rights conferred by registration of trademark is subject to the
rights of the prior user of the mark. In a recent case the Supreme Court in the case of
S. Syed Mohideen vs. P. Sulochana Bai, had held that the scheme of the Act is such
where rights of the prior user are recognized superior than that of the registration and
even the registered proprietor cannot disturb interfere with the rights of the prior user.
• Statutory recognition to the aforesaid principle can be found under
Section 34 of the Trademark Act, 1999 which enumerates that a registered proprietor
or registered user of a trademark cannot interfere with the use of any identical or
similar mark is a person has been using a mark from an earlier date. Another recent
case which establishes a similar legal proposition is the case of
Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., wherein the Supreme
Court opined that a registered proprietor of a trademark does not possess the right to
prevent use by another party of an identical mark if that use commenced prior to the
use of the registered mark.
Statutory provision:
According to Section 34 of the Trademarks Act, 1999
"the proprietor of registered trademark or a registered
user cannot interfere with the use of any identical or
similar mark if the person has been using the mark
from an earlier date".
The section provides for protecting the vested rights
preventing a proprietor or registered user of a
trademark from interfering with the honest use of an
identical trademark or a mark nearly resembling with
the registered mark.
Fundamental requirements for the acknowledgement
of "Prior Use are:
Acknowledgement of "Prior Use" constitutes the following:
(1) the use of a mark identical or nearly resembling the registered
mark, by a third person, must be in relation to the goods and
services for which the first-mentioned mark is registered;
(2) the use must be a continuous use of the trademark in India;
(3) the trademark must be used by the proprietor in order to avail
the protection;
(4) the mark must have been used from a date prior to the use of
the registered trademark or the date of registration whichever is
earlier.
It is now settled that a prior user of a trademark has rights
even over a later registered user and no action lies against a
prior user of the trademark in a passing off action.
Common law remedy
As enumerated under Section 27 of the Act, common law rights mandate the trademark
owner to take an action against any person for passing off their goods or services as the
goods or services of another person. In general, the tort of passing off comprises the
following elements:
•Misrepresentation – The most significant principal behind the tort of passing off is an act
of misrepresenting own goods and/or services as the goods and/or services emanating
from another source;
•Goodwill – Another element of passing off action is misrepresentation of goods and/or
services which has resulted in confusion and deception in the market or is likely to cause
confusion and deception in the market. Misrepresentation of goods or services by a person
is intended to harm the business and goodwill of the actual owner; and
•Damage – Due to misrepresentation of goods and/or services by a person other than the
owner, severe loss and damage to the business and goodwill of the actual owner has been
occurred.
The prior user may institute a passing off action against the opposite party
if the aforementioned elements are satisfied. The rationale behind the law
of passing off is to defend the rights of the owner and to protect him against
any misuse of his trademark which results into the loss of goodwill and
reputation. The onus lies upon the prior user to prove that the goods and/or
services offered by him under his trademark have acquired substantial
reputation in the market, which is calculated to be violated by the other
person. However, before adjudicating a case, it is seen if the rival marks are
identical and are being used in respect of identical goods or services.
Further, the prior user must prove that use of the mark by the opposite party
is likely to deceive and/or cause confusion in the course of trade. Upon
reaching the conclusion that there has been a misrepresentation, no further
proof or evidence is required to establish the tort of passing off.
Some recent judgements:
• Shambhu Nath & Brothers & Ors vs Imran Khan

The petitioners claimed to have adopted the trade mark TOOFAN

(Device) in 1987. The petitioners filed an application for registration of
the mark TOOFAN (Device) which was granted registration in April
2012. The respondent applied for registration of the trade mark SNJ
TOOFAN claiming use since August 1, 2016. The Hon’ble High Court
of Calcutta observed that upon comparing the rival marks and nature of
goods the trademark SNJ TOOFAN of the defendant appears
deceptively similar to the registered trademark TOOFAN of the
petitioners. It was further established that the respondent is seeking to
pass off his goods as that of the petitioners and resultantly, an order of
injunction was passed in favour of the petitioners.
• Turning Point Institute Private Limited vs M/s Turning Point

The plaintiffs, Turning Point Institute Private Limited claimed to have used
the mark TP TURNING POINT (Device) in relation to their services since
March 1994, whereas the defendants M/s Turning Point claimed to have used
the mark TP TURNING POINT (Device) since 1998. The defendants’ mark got
registered in November 2005. The plaintiffs have established their use since
1994 by adducing documentary evidencing corroborating their claims. Thus,
rights to use the mark are conferred upon the plaintiffs owing to the prior use of
the mark TP TURNING POINT (Device) by them.

It was observed by the Hon’ble Court on the basis of documentary evidence

adduced by plaintiffs that use of the mark TP TURNING POINT (Device) by
them in respect of their services may be considered distinctive and deserves to
be protected as use of the same has been prior in point of time when compared
to use of the mark by the defendants. The Hon’ble Court injuncted the
defendants from using the mark TP TURNING POINT (Device), or any other
similar word mark or device mark or as a part of their corporate name qua their
Hence, "first user" rule is a seminal part of the Act and it has
always enjoyed pre-eminence. The proprietor of a prior user,
by using and making known the mark or get up in relation to
his goods, and thus causing it to be associated or identified
with those goods, will acquire a quasi-proprietary right to the
exclusive use of the mark and invasion of this right by any
person who, by using the same or some deceptively similar
mark and inducing the customers to buy from him goods not
of the proprietor of a prior user as his own amounts to Passing
off.
 DOCTRINE OF EXHAUSTION
• Doctrine of Exhaustion basically means that an owner of a particular good ceases
to have control over further sale of his goods once he has made a valid transaction
of sale. In other words, if the trademarked goods are once put on the market by the
owner or by his consent, and once purchased legitimately, the trademark owner or
any one deriving his title from him cannot prevent sale of such good, as the
exclusive right to sell goods bearing the mark is ‘exhausted’ by the first sale; then
the exclusive right to sell goods bearing the mark cannot be exercised twice in
respect of the same goods. Hence, this doctrine is otherwise called as the doctrine
of first sale. What’s more, there are different modes of exhaustion as well, which
are recognized internationally.

1.Doctrine of International exhaustion works on the assumption that the whole

world is one market or one country and thus goods once sold in any part of such
market or country operates as exhaustion of rights of the trademark owner over such
goods.
2.Doctrine of Regional exhaustion is when goods bearing a trademark are first
sold by or with the consent of the owner in any Country, which is a part of any
specific region, then the owner cannot prevent subsequent sale in his own
Country or in any other Country which also is a part of that specific region. The
European Union has adopted regional exhaustion.

3.Doctrine of National exhaustion stipulates that once a product has been sold
in the domestic market for the first time by or with the consent of the owner, for
which he has received a consideration, he then ceases to have control over any
subsequent sale of the same in the domestic market, in the sense, he can neither
prevent subsequent sale of the said product nor can he claim any profit arising
from a subsequent sale nor can he sue for infringement of his trademark. The
rationale behind this principle is that the owner has already derived a profit
arising out of the first sale; hence, he cannot keep deriving profit out of a sale that
was not made by him.
SEC 30 OF TRADEMARK ACT, 1999:

30(3): Where the goods bearing a registered trade mark are lawfully
acquired by a person, the sale of the goods in the market or otherwise
dealing in those goods by that person or by a person claiming under or
through him is not infringement of a trade by reason only of—(a) the
registered trade mark having been assigned by the registered proprietor to
some other person, after the acquisition of those goods; or
(b) the goods having been put on the market under the registered trade mark
by the proprietor or with his consent.
30(4): Sub-section (3) shall not apply where there exists legitimate reasons
for the proprietor to oppose further dealings in the goods in particular, where
the condition of the goods, has been changed or impaired after they have
been put on the market.
DOCTRINE OF DECEPTIVELY
SIMILARITY
Judicial Approach Towards
Deceptive Similarity With
Regards To The Cadila Case
Pre-Cadila Case Judicial View
In Amritdhara Pharmacy v. Satyadeo Gupta, the Apex Court observed that when an
ordinary purchaser buys a medicine, he will look for the overall structure, the nature of
medicine, and more or less the phonetic similarity of medicine, he has purchased earlier.
The Court in the above case applied the test of Average Intelligence and Imperfect
Recollection to judge the “Deceptive Similarity” between “Laxmandhara” and
“Amritdhara”.
Further, the Court in the case of S M Dyechem Ltd. V. Cadbury
(India) Ltd., laid down certain principles while emphasizing the dissimilar
aspect as a test, and then following the similar aspect, test applied in the cases before.
Principles laid down by the Court were:
•Does the common feature of the product hold any distinct aspect?
•Does the dissimilarity between the two is enough to make it look unlike?
•Whether in case of common parts, consumer should not pay much regard to the
dissimilar parts, while, at the same instance not disregarding the common parts?

•The High Court of Madras in the Wockhardt Ltd. v. Aristo

Pharmaceuticals Ltd., appreciated the probability of the mispronunciation of
the letters “P” and “F”. It was also observed that an ordinary person of an average
intelligence and imperfect recollection would not attempt to check the visual and
phonetic dissimilarity between the two marks.
Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.
It was a landmark case of the Supreme Court wherein it has overruled the
judgment of the Cadbury case and provided the grounds for conducting the test to
decide “Deceptive Similarity”.

Principles to decide “Deceptive Similarity”:

•Nature of the mark viz. word mark, label mark or the composite mark (includes
both word and label)
•What degree of resemblance does the mark hold viz. phonetically similar or in
the idea?
•The Trademark is used for what nature of goods?
•The education intelligence and the degree of care that is likely to be exercised by
the class of purchaser while purchasing or using the goods need to be construed.
•The mode of purchase or the platform used to place the orders
•The other immediate conditions relevant to detect the dissimilarity from the rival
mark should be considered.
 Post-Cadila Case Judicial View

In the case of N.R. Dongre V. Whirlpool Corporation, the Court held that
without the existence of goods if the advertisement is communicated then it is
said to be the use of the Trademark. The knowledge of the Trademark may
reach across the countries.

Likewise, it was held in Ireland Pharmaceuticals v. Intas Pharmaceuticals

that while considering the visual or phonetic similarity between the competing
marks, the word is to be taken in its entirety. Therefore, an alteration of a few
letters in the trademark by the defendant would not enable him to have the
reputation which the plaintiff has earned over the year
SECONDARY MEANING DOCTRINE
• Every trademark has a tendency to identify the goods sold under them
as originating from a particular source. This tendency with the efflux
of time gets strengthened and a particular trademark gets registered or
mentally associated in the minds of the consumers as distinctive of the
product and its source. It can also be referred as ‘strength’ of the mark.
Some trademarks are distinct from their beginning due to their
inherent characters and they are given legal protection immediately
upon use as a trademark. Thus there is a correlation between ‘strength’
and ‘secondary meaning’ of a trademark. A non-inherently distinctive
mark must have that quantum of strength or secondary meaning to
qualify as trademark.
What is Secondary meaning?
As a concept, secondary meaning acknowledges that words with a regular and distinctive
meaning of their own could become synonymous with a specific product. The general public
then specifically identifies a product by this secondary meaning. The plaintiff is also required to
show that the main significance of the secondary meaning is related to the producer rather than a
product. A relevant example would be Apple. While the word apple has a primary meaning,
many people also recognize it for its second meaning. And, that secondary meaning is specific
to a brand of computers, not just computers in general.
To be a trademark that has acquired secondary meaning, the mark must have become
recognizable as a brand for particular services and/or goods from only one source. This
particular mark could be eligible for registration down the line once there is enough use that
gives you the ability to prove secondary meaning under applicable trademark law.
In order to be eligible for protection, the trademark must be distinctive and identifiable. It must
distinguish these services or goods from competitors' versions. Trademarks may vary some in
terms of distinctiveness. They can either be inherently distinctive, or they could gain
distinctiveness through recognition by consumers after regular use. The extent of distinctiveness
(inherent or acquired) is directly related to the scope of protection the trademark is entitled to.
When Must a Trademark Obtain Secondary Meaning?
The courts typically look at four factors when determining whether a trademark has
acquired secondary meaning:
•Length of time and how the mark has been utilized;
•How much advertising and promotional work has been done for the owner's
business;
•What efforts the mark's owners have made to create a conscious connection
between the mark and its owner in the mind of a consumer; and
•The extent that the public identifies the name with the mark's services or goods.
These four criteria are not absolute. In other words, a mark's owner could fail one,
but as long as the mark meets a majority of the criteria, it can still be declared to
have secondary meaning.
Methods Used to Determine Secondary Meaning

Proving secondary meaning can be difficult when a trademark is geographically

descriptive. Some courts have recognized that surveys or other quantifiable
proof are two of the best ways to show secondary meaning.
Sales volume totals and advertising can also be used as evidence, in addition to
consumer surveys. Examples of descriptive words that ultimately gained
registration include:
•ChapStick — lip balm
•Xerox — copy machines
•Bufferin — buffered aspirin
You can categorize trademarks on the Spectrum of Distinctiveness as based on
levels of distinctiveness or strength, from the strongest to the weakest:
•Fanciful Marks — These are ones that are made up terms, and there is no
correlation to the products being described. An example would be Exxon for gas.
•Arbitrary Marks — These are marks that consist of existing words or terms that
have no relationship or meaning to the described goods. This would include Apple
again for computers.
•Suggestive Marks — Terms that suggest relation or meaning, but still do not
describe the goods outright. This would be something like Coppertone as suntan
lotion.
•Descriptive Marks — These are terms that describe characteristics of goods or
the goods themselves. It's hard to get trademark rights for descriptive marks
without gaining secondary meaning. One example would be Shoeland which sells
shoes.
The plaintiff has the burden of proof in a secondary meaning case. This is
obviously not an easy burden to satisfy since a high degree of proof is required in
order to establish the necessary secondary meaning for a descriptive mark. The
plaintiff can prove secondary meaning using both circumstantial and direct
evidence.
 DOCTRINE OF FOREIGN
EQUIVALENT
• The Doctrine of Foreign Equivalents (the “DoFE”) is part of trademark law. It applies
to trademarks that have a term in a foreign language. Essentially, the DoFE says that
marks that include foreign-language terms should be translated into English for the
purpose of determining if the trademark application should be allowed or refused.
• Thus, a foreign-language translation of a generic English word is likewise generic and
should be refused. Also, if the translated meaning of a foreign-language mark is
sufficiently similar to another registration that confusion is likely to result, then the
application should be refused. However, there are limits to the DoFE.
• The DoFE was applied in these examples:
• MARAZUL (which translates to “blue sea”) is likely to cause confusion with a
previous mark for BLUE SEA for similar goods.
• LA PEREGRINA (which translates to “the pilgrim”) is likely to cause confusion with a
previous mark for PILGRIM for similar goods.
• SAPORITO (which translates to “tasty”) is merely descriptive because it describes a
characteristic of the product.
Doctrine used in India Regime:
Upon a period of time and revolution in using the mark to get registered under Trademark by the
inventor, applying the said doctrine has made India to borrowed the doctrine from the U.S. Indian courts
have used this doctrine in many cases. It is not strictly followed in India although is applied when
required. This doctrine is especially of importance in India as not only the marks in foreign languages
must be tested for descriptiveness but also the marks in local languages. Currently there are 22
languages that are recognized by the Constitution and various other languages and scriptures. Rule 28 of
the Trademark Rule, 2015 also specifies that the applicant has to provide for transliteration and
translation of the marks that are in language other than Hindi or English. The applicant has to specify the
language in which the mark is written as well.
The presence of the said doctrine can be seen through various case laws in India as well, wherein in the
case of Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat the dispute was regarding the mark
“VOLVO”. The defendant raised a contention that the word Volvo means “to roll”, “rolling up”, “roll
into” in Latin and plaintiff’s products were used for rolling, and hence the mark was descriptive.
However, the court stated that the doctrine of foreign equivalents would not be applicable in this
situation. The court held that the doctrine does not intend to translate every language in English; rather
the test is whether the buyers are aware enough to translate the foreign language. It stated that since
Latin is an obscure and forgotten language, it is unlikely that the buyers would understand the word;
therefore it was held that the mark “VOLVO” was not descriptive.
In the case of Kamani Oil Industries Pvt. Ltd. vs Bhuwaneshwar
Refineries Pvt. Ltd., the dispute was regarding plaintiff’s mark
“RISO LITE”. The defendant claimed that the mark was descriptive
as rice is called “RISO” in Italian. However, the court refused to
apply the doctrine of foreign equivalents and stated that in India it is
highly unlikely that the buyers would know Italian and those they
would translate plaintiff’s mark in English. Therefore, the mark
“RISO LITE” was not held to be descriptive.
Limits to the Doctrine of Foreign Equivalents

Courts have decided that the DoFE applies only when it is likely that “the
ordinary American purchaser would stop and translate [the term] into its
English equivalent.” A key requirement is that the translation must
be literal and direct, with no other relevant meanings or shades of
meaning.
Because of the “stop and translate” requirement of the Doctrine of
Foreign Equivalents, dead or obscure languages may not be subject to the
DoFE. The DoFE only applies to languages that are common and modern.
Whether a particular language is common enough to trigger the DoFE is
determined on a case-by-case basis.
If you want to include a foreign-language term in your trademark, be sure
to use terms that are not literal translations of English-equivalent generic
terms or that have a similar meaning to other trademark registrations.
DOCTRINE OF ACQUIESCENCE
• Acquiescence implies your passive consent to allow another person to
use your registered TM regardless of knowing that someone else is
using your TM. So, once this ‘passive consent’ is not challenged by
you within a statutory limit of five years, you lose the opportunity to
sue the other party for infringement.
• According to section 33 of the Trade Marks Act, 1999, the other
user can take up the defense of acquiescence against TM
infringement provided, he has adopted and used the TM in good
faith. Here, good faith implies ignorance or lack of knowledge on
part of the other user of the existence of the TM infringed by him.
However, the scope of this section has been challenged on several
occasions. There is still plenty of uncertainty whether this
doctrine can deny relief of permanent injunction.
ACQUIESCENCE’ PRIOR TO THE TRADE
MARKS ACT, 1999

Before the enactment of the Trade Marks Act 1999, defense of ‘acquiescence’ was not
clearly established under the Trade and Marks Act, 1958, or under the Trade Marks Act
1940, but still the other user of the TM used it as a defense against the owner of the TM
under the relevant provision that referred to ‘acquiescence’ by the owner of the TM under
the TM law applicable at that time. For instance, legal opinion allowed the other user of
the TM to take the defense of ‘acquiescence’ within the expression ‘special
circumstances’ in section 10(2) of the Trade Marks Act, 1940, which read as under:

Sec.10 (2): “In case of honest concurrent use or of other special circumstances which, in
the opinion of the Registrar, make it proper so to do he may permit the registration by
more than one proprietor of trade marks which are identical or nearly resemble each
other in respect of the same goods or description of goods, subject to such conditions and
limitations, if any, as the Registrar may think fit to impose.”
Later, when Trade Marks Act, 1940 was revoked and Trade and Merchandise
Marks Act, 1958 was effectuated, the other user took the defense of
‘acquiescence’ against the owner of the TM within the expression ‘special
circumstances’ under clause (1) of sub-section (b) of Section 30 of the Trade and
Merchandise Marks Act, 1958, which read as under:
Sec.30. “Acts not constituting infringement: (1) Notwithstanding anything
contained in this Act, the following acts do not constitute an infringement of the
right to use of a registered trade mark – (b) the use by a person of a trade mark
in relation to goods connected in the course of trade with the proprietor or a
registered user of the trade mark if, as to those goods or bulk of which they form
part, the registered proprietor or the registered user conforming to the permitted
use has applied the trade mark and has not subsequently removed or obliterated
it, or has at any time expressly or impliedly consented to the use of the trade
mark.”
The Trade and Merchandise Marks Act, 1958, has been replaced by the Trade
Marks Act, 1999. The Trade Marks Act, 1999, which came into force in 2003,
has made a clear provision for the defense of ‘acquiescence’ for the other user of
the TM against the owner of the TM under sec.33 of the Act.
Sec.33 of the Trade Marks Act, 1999 provides for the defense of
‘acquiescence’ to the other user of the TM against the owner of
the TM and is an improvement over the earlier reference to the
acquiescence within the statutory provision under the Trade and
Merchandise Marks Act, 1958 and Trade Marks Act,1940.
Sec.33 of the Trade Marks Act, 1999 establishes the defense of
‘acquiescence’ to the user of the TM against registered owner of
the TM with more clarity.
BURDEN OF PROOF ON THE OTHER USER

An analysis of several judicial judgments over a period of time proves

that the person claiming the defense of acquiescence has the burden of
proving the following:
1.That the TM holder was aware of the infringing activity.
2.That the TM holder was involved in an activity of encouragement –
‘encouragement’ here includes things such as inaction by the TM holder
to send any specific notice of infringement to the other user.
3.That the other user has acted upon such act or omission to the
detriment of the TM holder.
Case Law:
Khoday India Limited vs The Scotch Whisky Association and others
Date of Judgment: May 27, 2008
In this case, the issue was whether the TM ‘Peter Scot’ should be deleted from the Register of Trademarks
(section 46 of the Trademarks Act provides for rectification of the register).

In 1968, Khoday India Ltd (KIL) began manufacturing ‘Peter Scot’ whisky, and in 1974 got its TM registered.
After 13 years, the Scotch Whisky Distillers Association (SWDA) – an industry body of distillers, blenders and
exporters of Scotch whisky – moved the Assistant Registrar Trademarks for cancellation of the registered TM
‘Peter Scot’ because the TM was deceptively similar to a foreign mark (Scotch whisky).
The Supreme Court bench, comprising Justice Sinha and Justice LS Panta, gave the verdict in favor of KIL and
said they could continue being the registered proprietor of the ‘Peter Scot’ TM. One of the factors that could have
influenced the court to such a judgment was the delay or acquiescence by SWDA, i.e., SWDA waited for 12 long
years to move the Registrar for deletion of the said TM, although it was aware about registration of the ‘Peter
Scot’ TM as early as September 1974. The court held that because of the peculiar facts and circumstances of the
case, the action of the respondents was barred under the principles of acquiescence/waiver.
To sum it up, the point driven home by Justice Sinha is that if you delay enforcing your rights, you run the risk of
sending an indirect and wrong indication to the other user that you have either waived your rights or acquiesced it
in the infringement.
 FAIR USE DOCTRINE
• What is fair use?
• Trademarks enable the public to recognize goods or services as
originating from a particular source. A trademark owner can stop
others from using its trademark to prevent confusion about the source
of the goods or services. In some circumstances however, someone
may use another party’s trademark if the use is considered a “fair
use.” This “fair use” exception is recognized throughout most of the
world.
A registered ‘trademark’ accords its owner a negative right to prevent third parties
from inter alia adopting, using or registering an identical or a deceptively similar
trademark. However, such a right is not absolute and subject to the exception of
‘fair use’. The doctrine of ‘fair use’ is encapsulated under Section 30 of
the Trademarks Act, 1999 (“Act”), which is an affirmative defense available
against a claim of infringement by the proprietor of a registered trademark.
Specifically, Section 30(1) of the Act lays down the following broad conditions:
a) when the Usage is in accordance with the fair practices in the industrial or
commercial matters [bona fide use];
b) when the Usage is not to take unfair advantage of or be detrimental to the
distinctive character or repute of the trademark.

‘Fair use’ of a trademark by any party, other than the proprietor, may be broadly
categorized into –
1.Descriptive Fair Use- It is related to a use of registered Trademark in
a descriptive manner, i.e. used in relation to goods and services
indicating the kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of goods or of rendering of
services or other characteristics of goods or services under section 30(2)
(a) of the Act.
2.Nominative Fair Use- It is related to the use of goods and services of
registered Trademark by a person in relation to goods adapted to form
part of or to be accessories, provided that its is “Reasonably Necessary”
in order to indicate that the goods so adapted are compatible with the
goods sold under the Trademark, under section 30(2)(d) of the act. It
generally applies to the news, commentary, criticism, parody,
comparative advertisement and any other non-commercial use of a
registered Trademark.
In Hawkins Cookers Ltd. vs Murugan enterprises, where defendants were using the
registered Trademark of “Hawkins” for their gaskets. The court in this case has held that the
defendant was using the trademark in relation to refills, spare parts, and accessories adopted for use
in or with the goods of the proprietor may not amount to infringement, if the defendant establishes
(i) that the use of mark is reasonably necessary for describing that the article is adapted for use with
the Plaintiff’s goods. (ii) that the use was bona fide and (iii) that the effect of the use is not likely to
deceive the public as to the trade origin. In appeal the division bench held that the defendant was
using the word “HAWKINS” similar to the original mark is, therefore the defendant was not
allowed to take defense of this Nominative Fair use.

In a case of Consim Info Pvt Ltd. Vs Google India Pvt. Ltd, Madras High Court relied upon the
two US Ninth Circuit Judgments, to interpret the meaning of the words “Reasonably necessary”
under section 30(2)(d), and has held that for any unauthorized use of trademark and label it as
“Nominative Fair Use”, for this it must meet three tests Viz, (1) the product or services in question
must be one which do not gets identified easily by any consumer, (ii) only the mark or marks may
be sued as is reasonably necessary to identify the product or services. (iii) the user must do nothing
that would, in conjunction with the mark, suggest sponsorship or endorsement by the proprietor of
the Trademark
Therefore, the key factors Indian courts take while deciding of the matters
related to nominative Fair use are-
1.Whether such use is bonafide and reasonably necessary for identification
purposes or not?
2.Whether such use is intended to suggest sponsorship or endorsement with
the proprietor.
3.Whether such use will likely cause confusion amongst the consumers or
not? And,
4.The manner in which the brand owner’s trademark is used and whether
stylization and font is copied.

Therefore, courts while deciding upon the nominative fair use doctrine, at the
same time the courts also consider the right of the actual owner .