TRADEMARK
1. Context
The Delhi High Court, in the case of Hamdard National Foundation (India) vs Sadar Laboratories Pvt. Ltd., restrained Sadar Laboratories from manufacturing and selling beverages under the impugned trademark 'Dil Afza'. The court observed that the trademark 'Rooh Afza' is prima facie a strong mark requiring a high degree of protection as it has acquired immense goodwill.
2. What is the dispute?
- The manufacturers of 'Rooh Afza' moved an appeal against the rejection of its application seeking an interim injunction against Sadar Laboratories Pvt. Ltd. for their product 'Dil Afza'.
- The appellant stated before the court that the trademark 'Rooh Afza' is a highly reputed mark in the market with regard to sharbat (sweet beverage).
- Furthermore, it was claimed about of the product 'Dil Afza' is deceptively similar to the get-up and trade dress of the appellant's product.
3. What is a Trademark?
- Trademark refers to the graphical representation of goods or services to make them distinguishable from others.
- It can be words, symbols, sounds, colors, the shape of goods, graphics representation or packaging, etc.
- It protects the owner against unfair competition and prevents damage to the reputation of the owner and consumer welfare.
- In India, trademarks are governed under the Trademarks Act, 1999 (it deals with the precise nature of rights one can acquire in respect of trademarks), under the aegis of the Department of Industrial Policy & Promotion (DIPP), Ministry of Commerce.
- The implementing body is the Controller General of Patents, Designs, and Trademarks.
3.1 Trademark Act, 1999
- Trademark Act, of 1999 was implemented by the government of India by complying with TRIPS obligation recommended by the World Trade Organisation.
- The Trademark Act, of 1999 gives the right to police to arrest in case of infringement of the trademark. The Act gives a complete definition for the term infringement which is frequently used.
- The act was amended in the year 2010 to include the provisions of International Registration of Trademarks, wherein the entire chapter 4A was included in the Act.
- The act was bought in consonance with the Madrid Protocol, which was adopted in 1989 by World Intellectual Property Organisation (WIPO).
3.2 Refusal of registration
Section 11 of the Act, gives relative grounds for the refusal of registration of a trademark.
A trademark cannot be registered because of (i) Its identity with an earlier trademark and similarity of goods and services, (ii) its similarity to an earlier trademark and the similarity of the goods, and confusion is probable.
3.3 Section 29
- Section 29 of the Trademark Act 1999 deals with trademark infringement. It says that if a person uses the same trademark which is registered by another company or person and creates confusion in the minds of people, they will be liable for trademark infringement.
- Difference between Passing Off and Trademark infringement.
- Trademark protects registered goods and services whereas Passing Off protects unregistered goods and services.
- Passing off is a common law remedy whereas Trademark infringement is a statutory remedy.
4. Madrid Protocol
- India Parliament has passed the Trade Marks (Amendment) Bill, 2009 for enacting special provisions relating to the protection of trademarks through international registration under the Madrid Protocol.
- As per the Amendment Bill, from the date of the international registration of a trademark where India has been designated or the date of the recording in the register of the International Bureau about the extension of the protection resulting from an international registration of a trademark to India, the protection of the trademark in India shall be the same as if the trademark had been registered in India.
- The Amendment bill is yet to be notified. India acceded to this protocol in 2013.
5. Courts verdict
- A Division bench of the Delhi High Court restrained the respondent (Sadar Laboratories Pvt. Ltd.) from manufacturing and selling any product under the trademark 'Dil Afza' till the final disposal of the trademark infringement suit.
- The court held that "it is not difficult to conceive that a person who looks at the label of 'Dil Afza' may recall the label of 'Rooh Afza' as the word 'Afza' is common and the meaning of the words 'Rooh' and 'Dil', when translated in English, are commonly used in conjunction.
- The court also said that as the product is a low-priced consumable item, "the average customer would not deliberate on the details of the product as one would do while taking a high-value investment decision.
6. Strong Trademark
A mark is said to be strong when it is well-known and has acquired a high degree of goodwill. The degree of the protection of any trademark changes with the strength of the mark; the stronger the mark, the higher the requirement to protect it.
For Prelims & Mains
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For Prelims: Trademark, Trademark Act 1999, Section 29 of trademark Act, Madrid Protocol.
For Mains: 1. What is Intellectual property and Explain the need for Intellectual property rights? Discuss the legislative structure to protect IPRs in India (250 Words)
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Source: The Hindu
