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Tag: Intellectual Property Law

  • The Role of Intellectual Property Law in Innovation

    Introduction

    Innovation is one of the major factors of growth in the economy, technology, and society. It is due to innovation that countries can solve issues and improve living conditions. The key word in the previous sentence is “innovation,” since the realization of innovative idea requires a lot of time, money, research, and skills. Moreover, if innovator does not protect his or her innovation legally, innovator runs risks of being copied again without getting neither recognition nor profit.

    Here is where IP law comes into account. IP law allows creators, inventors, and all people involved in the activity to hold legal rights to creativity they produce, thus giving them more incentives for innovations. IP law provides protection for inventions, creative works, brands, and confidential information ensuring that innovations possess a safe environment for development

    TMWala can assist innovators, startups, and companies in dealing with IP registrations and IP issues. TMWala will give innovators access to legal trademark services and advice that will help companies preserve IP in its totality.

    Understanding Intellectual Property Law

    The branch known as Intellectual Property law is responsible for ensuring that creators and innovators retain the exclusive rights to their intellectual creations for a particular time. The law allows for control over the way in which creative work is reproduced, used, or commercialized, as well as the expectation for obtaining credit and reward for the intellectual activity.

    Types of Intellectual Property Rights:

    Patents: Patents are granted to an inventor for an invention or using technology. The patent permits the inventor to manufacture and make use of the invention or grant related licenses for the prescribed period.

    Copyright: Copyright protects the original works of authors, literary, or artistic works, including books, films, programs, and other creative work.

    Trademarks: Trademarks protect the names, logos, slogans, and symbols so that the products provided by the entrepreneur may be distinguished from the other similar products.

    Trade secrets: Business information that provides competitive advantages is protected.

    Designs: The design of an item is protected along with the item itself.

    Each kind of property is meant for a specific purpose, and altogether they help develop the creativity and progress in different areas.

    Encouraging Innovation

    A key goal of IP laws is to provide an incentive to inventors and innovators. The creation of new products, processes, or services usually requires a high financial investment and takes a lot of time. Without IP protection, competitors can easily copy successful innovations, thus diminishing what motivates businesses and individuals to invest in new ideas.

    IP law grants innovators exclusive rights over inventions or any other object of proprietary rights. They can thus recover their investments in the creation of their product by making use of licensing, marketing, and other means. 

    For instance, pharmaceuticals spend billions of amount on searching for and testing new medicines. Patenting allows them to enjoy monopoly rights over the sale of their product for a certain period, and they can thus recover the costs of the development of the drug before any generic medicine appears on the market.

    Promoting Research and Development

    The significance of intellectual property law lies in its crucial contribution to the advancement of research and development (R&D). Many companies feel confident investing in initiatives that include innovations knowing that the achieved results will be legally protected. Research institutions, universities, and businesses often work together due to intellectual property rights that create opportunities for sharing ownership, licensing inventions, and commercializing results of their cooperation.

    On the other hand, this strong protection of intellectual property allows for constant advancements in different fields, like artificial intelligence, healthcare, environmental technology, and digital solutions, allowing researchers to find the motivation for finding new concepts.

    The impact of intellectual property is especially felt by startups and small businesses as unique inventions, logos, or technological solutions become valuable assets for attracting investors and competing with larger companies.

    Facilitating Technology Transfer

    Moreover, knowledge transfer is facilitated through the creative use of IP rights since they permit the licensing of innovations. IP holders may allow other entities to implement the technologies while being compensated financially.

    The use of technology transfer is beneficial because it promotes knowledge dissemination and cooperation between companies, academic institutions, and countries. The less developed nations have the chance to receive access to the latest technologies thanks to the principle of respecting the intellectual property legislation.

    Apart from that, licensing enables businesses to broaden their activity without actual producing and supplying goods. Thus, it allows innovations to leave the research laboratories and appear in practice where they can help consumers and industries.

    Supporting Economic Growth

    A well-developed intellectual property regime has a role to play in boosting economic development. Industries that rely on intellectual property for their operations provide jobs, stimulate the entrepreneurial spirit, and attract investments. Firms with valuable intellectual assets benefit from favourable market position and more opportunities for growth.

    Most of the times, startups and small businesses use trademarks, patents, and copyrights as means of gaining credibility and securing a competitive edge. For instance, the registered trademark contributes to brand recognition and prevents rivals from using the same names or identities.

    Strong IP protection contributes to foreign investment as companies prefer to do business in countries where innovation and brands are protected by law. Therefore, countries with developed intellectual property systems manage to achieve increased levels of innovation, trade, and economic competitiveness.

    Challenges and Criticism

    Intellectual property law has faced numerous challenges, despite its importance. The excessive protection or the abuse of intellectual property rights can also hinder competition and raise costs as well as limit public access to various important products and information. For instance, there are many debates concerning pharmaceutical patents, where it is often necessary to find a fair compromise between rewarding the innovation process and ensuring that medicines are available.

    Intellectual property disputes can also be expensive and time-consuming, which can be particularly difficult for startups and small businesses, that might not have enough resources for a lawsuit. Moreover, enforcing intellectual property laws in international markets can be difficult due to various legal systems and regulations.

    With the development of technology, new problems have arisen, such as online piracy, piracy, unauthorized replication, software violations, and counterfeit products. Therefore, the companies must find the ways of protecting their intellectual property at the same time as various government bodies try to adapt the law to new challenges with time.

    Intellectual Property in the Digital Era

    New digital awareness, artificial intelligence, and online support are changing the scope of intellectual property. Digital content can duplicate easily and travel, more complexity in compliance with copyright laws appears. We cannot underestimate the role of inventions and creative works produced by AI in the matter of ownership, authorship, and liability.

    In the modern business environment, companies must be more proactive in the sphere of the protection of intellectual property. Digital brands, online-content, software, and new technologies call for proper legal measures in order not to be abused.

    Changing conditions provide an opportunity for third parties services such as TM Wala, which can help businesses protect their trademarks and make their brands even stronger. TM Wala eases the process of trademark registration and provides appropriate legal advice thus helping entrepreneurs and companies focus on innovations while their intellectual property is duly protected.

    Conclusion

    Intellectual property law plays a significant role in promoting innovation by protecting the rights of inventors, creators, and businesses. By offering incentives, IP law plays a role in fostering investments in research and development, enabling technology transfer, strengthening business activity, and promoting economic growth. Through its legal recognition and protection, IP law allows innovators to be rewarded for their creativity, thus encouraging future innovations for the benefit of society.

    Further, to cope with the challenges caused by globalization and the advancement of digital technologies, intellectual property systems should continue evolving. In this regard, a balanced approach is needed to protect innovators while making knowledge and technologies available for further advancement.

    Protect your brand with our expert Intellectual Property Services, designed to help startups, entrepreneurs, and businesses secure their valuable intellectual assets. For businesses and entrepreneurs, intellectual property protection represents a crucial step towards the achievement of long-term success. TMWala can offer innovators and entrepreneurs with reliable trademark support and guidance to secure their brands and build up strong identity associated with their innovative endeavours.

    FAQs

    1. What is intellectual property (IP)?
    Ans. IP protects creations such as inventions, brands, designs, and creative works.

    2. Why is IP law important?
    Ans. It protects innovation and encourages creativity.

    3. What is a trademark?
    Ans. A trademark protects your brand name, logo, or slogan.

    4. What does a patent protect?
    Ans. A patent protects new inventions and technologies.

    5. What is copyright?
    Ans. Copyright protects original creative works like books, music, and software.

    6. What are trade secrets?
    Ans. They are confidential business information that provides a competitive advantage.

    7. How does IP support businesses?
    Ans. It safeguards assets, builds brand value, and attracts investors.

    8. Why should startups protect IP?
    Ans. IP helps startups secure their innovations and compete effectively.

    9. Can IP rights be licensed?
    Ans. Yes, IP owners can license their rights to others for commercial use.

    10. How can TMWala help?
    Ans. TMWala assists with trademark registration and IP legal guidance.

  • EVIDENCE IN SUPPORT OF APPLICATION: RULE 46 OF THE TRADE MARK RULE, 2017

    When a trademark application is under registration and an opposition is filed, the applicant has the opportunity to respond to the opponent’s claims by filing a counterstatement. After the counterstatement is submitted, the opponent provides evidence in support of the opposition. Once this evidence is received, the applicant must submit additional evidence to strengthen their case.

    As per Rule 46 of the Trade Mark Rule, 2017, the applicant is required to file this evidence within the prescribed timeframe after receiving the opponent’s evidence.

    This article provides an overview of Evidence in Support of Application under Rule 46, including timelines, contents, required documents, and key procedural considerations.

    RULE 46 OF THE TRADE MARK RULE, 2017

    Under this rule, after receiving evidence in support of the opposition, the applicant must either file evidence in support of the application or submit a letter stating that they do not wish to present any evidence and will rely on the contents of the counterstatement. This is provided under Rule 46. Rule 46 states:

    “Evidence in support of the application.— (1) Within two months on the receipt by the applicant of the copies of affidavits in support of opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counterstatement and or on the evidence already left by him in connection with the application in question. 

    In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery.

    If an applicant takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his application.”

    PRESCRIBED TIME PERIOD

    • Two months from receipt of evidence in support of opposition or notice of non-filing.
    • Missing the deadline leads to abandonment of the application.

    TMWala can assist in tracking deadlines, preparing affidavits, and ensuring timely submission to avoid abandonment.

    CONTENTS OF EVIDENCE IN SUPPORT OF APPLICATION

    Evidence submitted should:

    • Respond to all objections or contentions raised by the opponent in the Evidence in Support of Opposition.
    • Include documents and records that prove the distinctiveness, prior use, or rights of the applicant in the trademark.
    • Documents need to be attached as annexures to a verified affidavit.

    DOCUMENTS TO BE SUBMITTED WITH EVIDENCE

    The applicant should adduce common documents, including:

    • Applicants’ Company/firm details – such as MSME registration, GST certificate, etc.
    • Applicants’ Trademark-related documents – such as registration certificates, applications, renewal certificates, etc.
    • Supporting materials – such as invoices, advertisements, sales data, promotional materials, or correspondence showing use and reputation of the mark.

    THINGS TO KEEP IN MIND

    • Ensure para-wise verification of the affidavit. Make sure it has a date, place of verification, and signature of the opponent or person authorised to sign it.
    • Address every objection raised by the opponent.
    • Keep content clear, concise, and relevant.
    • Attach organized and legible exhibits.
    • Submit as much relevant evidence as possible to strengthen the case.

    TMWala can help in organizing evidence, drafting affidavits, and ensuring proper formatting and submission.

    CONCLUSION

    The Evidence in Support of Application is a critical stage in opposition proceedings. It allows the applicant to substantiate their claims and counter the opponent’s arguments with proof. Properly prepared evidence, supported by relevant documents and a structured affidavit, can greatly enhance the applicant’s position before the Registrar.

    Strict adherence to procedural requirements and timelines under Rule 46 is essential, as failure to submit evidence may lead to abandonment. TMWala provides professional guidance in drafting affidavits, compiling evidence, and managing timelines to ensure a strong legal presentation of your application.

    FAQs

    1. What is Evidence in Support of Application?
      It is the applicant’s affidavit with supporting documents submitted after receiving the opponent’s evidence or notice of non-filing.
    2. What is the time limit?
      2 months from receipt of the opponent’s evidence or notice.
    3. What documents are needed?
      Company/firm records, trademark certificates, invoices, advertisements, sales data, etc.
    4. What if the evidence is not filed on time?
      The trademark application is deemed abandoned.
    5. How can TMWala help?
      TMWala assists in drafting affidavits, organizing documents, and ensuring timely submission to strengthen your application.

  • Delhi High Court Protects Amul’s Trademark: Pharma Firm Barred from Using “AMUL” Brand

    Case 10: Kaira District Cooperative Milk Producers Union Ltd. & Anr. v. Bio Logic and Psychotropics India Pvt. Ltd. & Anr.

    Citation: 2024 LiveLaw (Del) 1035
    Court: Delhi High Court
    Date Decided: 10 September 2024
    Judge: Justice Mini Pushkarna

    Background

    Kaira District Cooperative Milk Producers Union Ltd., widely known as Amul, is a prominent dairy cooperative in India, recognized for its extensive range of dairy products. Amul holds registered trademarks for the brand name “AMUL,” which has become synonymous with quality dairy products across the country.

    Bio Logic and Psychotropics India Pvt. Ltd., a pharmaceutical company, began marketing an antipsychotic medication under the brand name “AMUL.” These products were sold through various e-commerce platforms. Upon discovering this usage, Amul issued a cease and desist notice to the defendants. In response, the defendants claimed to have invented the trademark in 2013 and filed a trademark application for “AMUL” eight days after receiving the legal notice.

    Amul filed a suit seeking a permanent injunction to restrain the defendants from using the “AMUL” mark or any other mark deceptively similar to it, alleging trademark infringement and passing off.

    Legal Issues

    1. Whether the defendants’ use of the “AMUL” mark for pharmaceutical products constitutes infringement of Amul’s registered trademark under the Trade Marks Act, 1999.
    2. Whether such use amounts to passing off, leading to confusion among consumers and dilution of Amul’s brand identity.
    3. Whether Amul is entitled to a permanent injunction and damages for the unauthorized use of its well-known trademark.

    Parties’ Contentions

    Plaintiff (Amul):

    • Asserted that “AMUL” is a well-known trademark with significant goodwill and reputation in the market.
    • Claimed that the defendants’ use of the identical mark for pharmaceutical products is likely to cause confusion among consumers and tarnish the brand’s image.
    • Argued that the defendants acted in bad faith by adopting the “AMUL” mark without any plausible justification.

    Defendants (Bio Logic and Psychotropics India Pvt. Ltd.):

    • Contended that they had invented the “AMUL” trademark in 2013 and had been using it for their pharmaceutical products since then.
    • Filed a trademark application for “AMUL” shortly after receiving the legal notice from Amul.
    • Did not file a written statement or provide substantial evidence to support their claims.

    Decision

    The Delhi High Court granted a permanent injunction in favor of Amul, restraining the defendants from using the “AMUL” mark or any other mark deceptively similar to it for their pharmaceutical products. The court observed that the defendants had no plausible justification for adopting the “AMUL” mark and acted with mala fide intent to ride upon Amul’s immense reputation and goodwill. The court also imposed costs and damages totaling ₹5 lakhs against the defendants for infringing Amul’s well-known trademark. Additionally, the court directed the defendants to destroy the infringing goods that had been confiscated by the Local Commissioner and returned to them, in the presence of Amul’s representatives.

    Ratio Decidendi

    • The unauthorized use of a well-known trademark, even in a different class of goods, constitutes infringement under Section 29(4) of the Trade Marks Act, 1999, if it takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.
    • Adoption of an identical or deceptively similar mark without a plausible justification indicates mala fide intent and is actionable under trademark law.
    • In cases of infringement of well-known trademarks, courts may grant permanent injunctions and award damages to protect the brand’s reputation and prevent consumer confusion.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 29(6), 29(8), 29(9), 134
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

    Bibliography

    Kaira District Cooperative Milk Producers Union Ltd. & Anr. v. Bio Logic and Psychotropics India Pvt. Ltd. & Anr., 2024 LiveLaw (Del) 1035

    • ‘Delhi High Court restrains Bio Logic and Psychotropics India Pvt Ltd from using mark similar to “AMUL”‘ (SCC Online, 21 September 2024) https://www.scconline.com/blog/post/2024/09/21/dhc-restrains-bio-logic-and-psychotropics-india-pvt-ltd-from-using-mark-similar-to-amul/
    • ‘Delhi High Court Restrains Businesses From Using Amul’s Trademark On Their Pharmaceutical Products, Directs Payment Of ₹5 Lakhs In Damages & Costs’ (LiveLaw, 19 September 2024) https://www.livelaw.in/high-court/delhi-high-court/amul-trademark-infringement-pharmaceutical-tablets-costs-damages-270042
    • ‘Court Stops Trademark Infringement of “AMUL”‘ (BananaIP, 21 September 2024) https://bananaip.com/pharma-companys-buttery-slip-court-stops-trademark-infringement-of-amul/

    Author: Suhani Sharma

  • Delhi High Court Grants Ex-Parte Injunction to Moti Mahal

    Case 8: Moti Mahal Delux Management Services Pvt. Ltd. & Ors. v. SRMJ Business Promoters Pvt. Ltd. & Anr.

    Citation: CS(COMM) 1115/2024
    Court: Delhi High Court
    Date Decided: 12 December 2024
    Judge: Justice Mini Pushkarna

    Background

    Moti Mahal Delux Management Services Pvt. Ltd. (“Moti Mahal”), a renowned restaurant chain with a legacy dating back to 1920, owns several registered trademarks, including “MOTI MAHAL,”“MOTI MAHAL GROUP,”“MOTI MAHAL MANAGEMENT SERVICES,” and “TANDOORI TRAIL.” These marks are associated with high-quality North Indian cuisine and have garnered significant goodwill both in India and internationally.

    SRMJ Business Promoters Pvt. Ltd. (“SRMJ”) was previously a franchisee of Moti Mahal under a Franchise Agreement dated 5 October 2013, which expired on 5 October 2022. Despite the termination of the agreement, SRMJ continued to operate its restaurant business using the marks “MOTI MAHAL DELUX TANDOORI TRAIL” and “MOTI MAHAL DELUX,” prompting Moti Mahal to file a suit seeking a permanent injunction against SRMJ for trademark infringement, passing off, and unfair trade practices.

    Legal Issues

    1. Whether SRMJ’s continued use of the marks “MOTI MAHAL DELUX TANDOORI TRAIL” and “MOTI MAHAL DELUX” after the termination of the franchise agreement constitutes trademark infringement under the Trade Marks Act, 1999.
    2. Whether such use amounts to passing off and unfair trade practices, causing confusion among consumers and diluting Moti Mahal’s brand identity.
    3. Whether Moti Mahal is entitled to an ex-parte ad-interim injunction to prevent irreparable harm pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiffs (Moti Mahal Delux Management Services Pvt. Ltd. & Ors.):

    • Asserted that they are the rightful and exclusive owners of the registered trademarks in question, which have acquired immense goodwill over the years.
    • Claimed that SRMJ’s continued use of the marks post-termination is unauthorized and constitutes deliberate infringement and passing off.
    • Argued that SRMJ’s actions are likely to cause confusion among consumers and damage the reputation and distinctiveness of Moti Mahal’s trademarks.

    Defendants (SRMJ Business Promoters Pvt. Ltd. & Anr.):

    • At the time of the ex-parte hearing, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of Moti Mahal, restraining SRMJ and its affiliates from:

    • Using the marks “MOTI MAHAL,”“MOTI MAHAL DELUX,”“MOTI MAHAL DELUX TANDOORI TRAIL,” or any other mark deceptively similar to Moti Mahal’s registered trademarks.
    • Operating any restaurant or catering business under the impugned marks.
    • Using any logos, signage, promotional materials, or digital content bearing the infringing marks.

    The court held that Moti Mahal had established a prima facie case for the grant of an injunction, with the balance of convenience in its favor, and that it would suffer irreparable harm if the injunction were not granted.

    Ratio Decidendi

    • The unauthorized use of a registered trademark by an ex-franchisee post-termination of the franchise agreement constitutes infringement under Sections 29(1) and 29(2)(c) of the Trade Marks Act, 1999.
    • Such use also amounts to passing off and unfair trade practices, leading to consumer confusion and dilution of the trademark’s distinctiveness.
    • In cases where the plaintiff demonstrates a strong prima facie case and the likelihood of irreparable harm, courts may grant ex-parte ad-interim injunctions to preserve the status quo pending final adjudication.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2)(c), 29(4)
    • Code of Civil Procedure, 1908: Order XXXIX Rules 1 and 2
    • Copyright Act, 1957: Sections 2(c), 17

    Bibliography

    Author: Suhani Sharma

  • Delhi HC Restrains ‘Baap Ki Adalat’ for Trademark Infringement

    Case 4: Independent News Service Pvt. Ltd. & Rajat Sharma v. Ravindra Kumar Choudhary & Ors.

    Citation: 2024 SCC OnLine Del 3142
    Court: Delhi High Court
    Date Decided: 30 May 2024
    Judge: Justice Anish Dayal

    Background

    Independent News Service Pvt. Ltd. (INS), the proprietor of the 24-hour Hindi news channel “India TV,” and its Chairman and Editor-in-Chief, Rajat Sharma, filed a suit against Ravindra Kumar Choudhary and others. The plaintiffs alleged that the defendants were using the mark/logo “Baap Ki Adalat,” which was deceptively similar to their registered trademark/logo “Aap Ki Adalat,” a well-known television program featuring interviews with prominent personalities. The defendants, particularly Choudhary, a self-proclaimed political satirist, were creating and publishing various video and audio content on social media platforms under the impugned mark.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the mark/logo “Baap Ki Adalat” infringed upon the plaintiffs’ registered trademark/logo “Aap Ki Adalat” under the Trade Marks Act, 1999.
    2. Whether the defendants’ actions constituted passing off, leading to confusion among the public.
    3. Whether the unauthorized use of Rajat Sharma’s name, photograph, and video violated his personality rights.

    Parties’ Contentions

    Plaintiffs (Independent News Service Pvt. Ltd. & Rajat Sharma):

    • Asserted that “Aap Ki Adalat” is a registered trademark and a widely recognized television program, thereby possessing significant goodwill and reputation.
    • Claimed that the defendants’ use of “Baap Ki Adalat” was deceptively similar, both phonetically and visually, leading to confusion among the public.
    • Alleged that the defendants’ use of Rajat Sharma’s name, photograph, and video without consent infringed upon his personality rights.

    Defendants (Ravindra Kumar Choudhary & Ors.):

    • At the time of the interim injunction, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of the plaintiffs, restraining the defendants from:

    • Using the mark/logo “Baap Ki Adalat” or any other mark/logo deceptively similar to “Aap Ki Adalat” in any manner, including as a trademark, logo, trading style, domain name, social media posts, audio-video content, or in relation to any services.
    • Using the photograph, video, or name of Rajat Sharma in any manner that would violate his personality rights.

    The court directed the defendants to remove the infringing content from their social media platforms and scheduled the next hearing for 18 October 2024.

    Ratio Decidendi

    • The court found a prima facie case of trademark infringement and passing off, noting the deceptive similarity between “Aap Ki Adalat” and “Baap Ki Adalat.”
    • Recognized the significant reputation and goodwill associated with the plaintiffs’ trademarks, and the potential for confusion and deception among the public due to the defendants’ use of a deceptively similar mark.
    • Acknowledged the violation of Rajat Sharma’s personality rights through the unauthorized use of his name, photograph, and video.

    LEGAL ANALYSIS

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

    • (1) 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.
    • (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
    • (4) 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— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2
    • Common law principles relating to passing off and personality rights

    Bibliography

    Author: Suhani Sharma

  • Delhi HC Rules in SPARX vs HRX Trademark Dispute: No Injunction Granted

    Case 3: Relaxo Footwears Ltd. v. XS Brands Consultancy Pvt. Ltd. & Ors.

    Citation: 2024 SCC OnLine Del 3141
    Court: Delhi High Court
    Date Decided: 13 May 2024
    Judge: Justice Anish Dayal

    Background

    Relaxo Footwears Ltd., a prominent Indian footwear manufacturer, has been using the “SPARX” brand since 1976. The company developed a distinctive “X” device mark derived from its “SPARX” logo, which it used prominently on its footwear products. In 2024, Relaxo filed a suit against XS Brands Consultancy Pvt. Ltd., associated with the “HRX by Hrithik Roshan” brand, alleging that the defendants’ use of a similar “X” mark on their footwear products infringed upon Relaxo’s trademark rights.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the “X” mark infringed upon Relaxo’s registered trademark under the Trade Marks Act, 1999.
    2. Whether the similarity between the two “X” marks could cause confusion among consumers, constituting passing off.
    3. Whether the defendants’ use of the “X” mark was honest and concurrent, given their market presence since 2013.

    Parties’ Contentions

    Plaintiff (Relaxo Footwears Ltd.):

    • Asserted that their “X” mark, derived from the “SPARX” logo, had acquired distinctiveness and was associated exclusively with their products.
    • Argued that the defendants’ use of a similar “X” mark on identical goods (footwear) was likely to cause confusion among consumers.
    • Claimed that the defendants’ adoption of the “X” mark was dishonest and aimed at capitalizing on Relaxo’s established reputation.

    Defendant (XS Brands Consultancy Pvt. Ltd. & Ors.):

    • Contended that their “X” mark was distinct and had been used in conjunction with the “HRX” brand since 2013.
    • Argued that the marketplace was crowded with similar “X” marks, and Relaxo had previously agreed to coexist with other entities using similar marks, undermining their claim to exclusivity.
    • Maintained that their use of the “X” mark was honest, concurrent, and had not caused any actual confusion in the market.

    Decision

    The Delhi High Court refused to grant an interim injunction against the defendants. The court observed that:

    • The defendants had been using the “X” mark in conjunction with the “HRX” brand since 2013, indicating honest and concurrent use.
    • Both parties used their respective “X” marks alongside their principal brand names, reducing the likelihood of consumer confusion.
    • The balance of convenience favored the defendants, given their substantial investment in developing the “HRX” brand and the absence of evidence showing actual consumer confusion.

    Ratio Decidendi

    • The court held that the mere similarity of the “X” marks was insufficient to establish infringement or passing off, especially when both marks were used alongside distinctive brand names.
    • Emphasized the importance of considering the overall presentation of the marks, including their use in conjunction with other brand identifiers.
    • Recognized the defendants’ honest and concurrent use of the “X” mark since 2013, which weighed against granting an injunction.

    LEGAL ANALYSIS

    Principles of passing off under common law

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

    • (1) 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.
    • (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
    • (4) 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— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

    Bibliography

    Author: Suhani Sharma

  • Ethical Considerations in Trademark Law: Why Playing Fair Matters

    Introduction

    In this age of competition, the name, logo, and identity of a brand are everything. Brands are recognized by their names and logos, so that is part of the reason people trust them. But what if somebody unjustly replicates a well-known brand’s emblem or title?

    This is where the ethical aspects of trademark law come in.There’s more to trademark law — registering logos or slogans — than just trademark law; it’s also about doing the right thing.

    Being ethical means that you play fair, that you respect other people’s work, and that you do not mislead customers.

    Let’s break this down to understand what it means in layman’s terms.

    What is a Trademark?

    A trademark can be a sign, symbol, word, or logo that helps people identify your business or product.

    For example Nike Swoosh, the McDonald’s golden arches or the Apple logo have become so synonymous with the companies that you can tell immediately who owns them.

    Trademarks provide confidence to consumers that they know what they are purchasing.

    This is why it’s so important that trademarks are used fairly and ethically.

    What Are Ethical Considerations in Trademark Law?

    Ethics in trademark law is about ensuring that:

    • You don’t replicate someone else’s brand.
    • You can make a ton of products under one logo or product line without confusing the customer into thinking they are all alike.
    • You are sensitive towards cultural and religious sentiments.
    • You don’t use trademarks in a way that damages the business or reputation of others.

    It’s about being honest and fair with your making and using your brand.

    Why Are Ethics Important in Trademark Law?

    The ethics in trademark law matter because:

    1. Protects Honest Businesses: If anyone was allowed to copy brands freely, this would harm original creators. Ethics safeguard people who work tirelessly to create their brands.
    2. Prevents Customer Confusion: Consider if you bought a sneaker designed to look like a Nike shoe, and when you bought it realized it was not the real thing — you would feel ripped off. We have ethics that guard against that kind of confusion.
    3. Encourages Creativity: Ethics, on the other hand encourage businesses to forge their own unique identities rather than imitating.
    4. Respects Society and Culture: Trademarks cannot offend public sentiments or tarnish religious symbols.
    5. Builds Long-Term Trust: In fact, ethical branding creates cult-like consumers who will trust you for years to come.

    Best Practices and Alternatives: A Case for Ethics

    Let’s understand this with simple examples:

    Ethical Practice

    • Creating a Unique Logo: Rather than copying, you come up with yourown new logo.
    • Choosing An Original Brand Name: You do not use names that are similar to known brand names.
    • Respecting National Symbols: You are not disrespecting a national flag or a religious symbol in your brand.

    Unethical Practice

    • Copying a Famous Logo: Creating a logo that was close to Nike’s Swoosh and deceiving customers.
    • Using Confusing Brand Names: We’re talking about Naming your company ”Adibas” to get people to think its Adidas.
    • Disrespecting religious Values: Using sacred images or holy slogans just to gather attention without understanding their meaning.

    Ethical Guidelines under Indian Trademark Law

    There are also some ethical rules enshrined within the Trade Marks Act, 1999 in Indian law:

    • The examiners also accept that you cannot register a trademark that offends religious sentiments.
    • You cannot register anything that is immoral or against public order.
    • You cannot trademark something too alike an existing brand.

    It safeguards that trademarks are not misleading, fair, and honest.

    How Young Entrepreneurs Can Be Ethical

    If you are a young entrepreneur launching a brand, this is what you can do to remain ethical:

    • Research Before You Create: Ensure your logo or name isn’t too similar to another person’s.
    • Respect Culture and Religion: Be sensitive in how you use names, images or slogans.
    • Be Original: All of your idea’s have more impact than ones you have taken from someone else.
    • Register Your Trademark: Legally protect your creativity so that no one else can abuse it.

    It is good for all of us, and ultimately, it is good for your brand success too!

    Ethics and Global Trademark Practices

    There is a lot of emphasis on ethical trademark practices even at the international level (WIPO – World Intellectual Property Organization):

    • Equal fairness is expected from global companies.
    • Trademarks that deceive, confuse or are harmful to public interests are prohibited.
    • No matter, whether you’re a small business owner in India or a big startup dreaming international, ethics matter everywhere.

    Conclusion: Ethics = Stronger Brands

    It is not about who files first

    It’s about who plays fair.

    Ethical considerations ensure that:

    • Good businesses thrive.
    • Customers are happy.
    • Innovation continues.

    Young innovation entrepreneurs need to remember that success without values is temporary.

    But success in the realm of ethics, engenders trust, loyalty and respect — the cornerstones of any great brand.

    Thus, create your brand with creativity, guard it with trademark law and reinforce it with ethics.

    Because, after all, playing fair is the smartest business strategy!

    “Create Uniquely. Protect Legally. Grow Ethically.”

    Author Details: Aditya Krishna Gupta, 3rd year, BA LL.B. ,Jiwaji University, Gwalior 

    Reference Links:

    https://www.wipo.int/trademarks/en

    https://www.businesstoday.in/latest/corporate/story/patanjali-trademark-disputes-brand-name-legal-row-255678-2021-06-15

  • SECTION 27 OF THE TRADE MARKS ACT, 1999

    The Trade Marks Act, 1999 provides legal protection to registered trademarks, allowing owners to exclusively use and also to sue other trade marks for infringement. Section 27 of the Trade Marks Act also provides statutory protection to unregistered trademarks by upholding common law rights through the passing-off principle. In accordance with section 27 of the Act even though an unregistered trademark cannot be protected through an infringement case, the owner may still pursue legal action if someone tries to mislead consumers or damage the company’s reputation by abusing the mark.

    Let’s discuss section 27 of the Trade Marks Act, 1999 in detail.

    Section 27(1) of the Trade Marks Act:

    According to Section 27(1) of the Trade Marks Act an infringement suit cannot be filed against an unregistered trademark i.e. the trade mark not registered under the Trade Marks Act, by any person. 

    Illustration: 

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ cannot file an infringement suit against the copied trademark of the ‘Y’ since the mark ‘PickliBoo’ is not registered by ‘X’. 

    Section 27(2) of the Trade Marks Act:

    Section 27(2) of the Trade Marks Act protects registered as well as unregistered trade mark. This section recognises common law rights of the trade mark owner to take action against any person for passing off goods or services as the goods or services of another person. Accordingly, even if a trade mark is not registered, the owner of such trade mark can still take action under the common law principle of passing off. 

    And, for this, the owner of the unregistered trade mark must prove that the said trade mark has reputation and goodwill in the market, there has been misrepresentation in the market and owing to this the use of the other copied mark would substantially damage the business of the owner of the unregistered trade mark.

    Illustration:

    A person ‘X’ uses a trademark ‘PickliBoo’ for confectionery goods. The trademark ‘PickliBoo’ of ‘X’ is not registered under the Trade Marks Act, however, enjoys substantial goodwill and reputation in the market and have extensive market base. If other person ‘Y’ copies the mark ‘PickliBoo’, ‘X’ can file a Passing off suit against the copied trademark of the ‘Y’.

    Conclusion

    In conclusion, section 27 of the Trade Marks Act restricts legal action for infringement to registered trademarks only. Nonetheless, it recognizes passing off as a powerful remedy to protect business reputation and goodwill for unregistered trademarks.

    Learn more about common law rights and passing off at WIPO and IP India.

    Register your trademark with us starting at only Rs. 999/-

  • SECTION 21 OF THE TRADE MARKS ACT, 1999

    A trademark is a unique symbol, logo, word, design or combination of these which is capable of being distinguished from the goods and services of one person or entity from that of another person or entity. By virtue of registration of a trade mark the owner of the trade mark enjoys exclusive right to use the same. The Trade Marks Act, 1999, which grants the registered trademarks legal protection and the owner exclusive rights, also regulated process of trade marks registration in India. Section 21 of the Act provides provisions related to opposition proceedings, allowing any person to challenge the registration of a trademark before it is officially granted.

    In addition, the Trade Marks Act, 1999 also provides process for opposition to a trade mark, where any individual or entity can challenge a trademark application if they feel, it violates their rights or creates confusion in order to preserve a fair and competitive market. This process of opposing a trade mark is outline under section 21 of the Trade Marks Act.

    Here is an article that discusses the provisions of section 21 of the Trade Marks Act in brief.

    Explanation of the terms used in the article:

    1. Oppose/Opposition: to contest or to challenge a trade mark.

    2. Opponent: The person who has filed opposition or the person who is opposing the Trade Mark applied for the registration.

    3. Applicant for Registration: The person who has filed application for the registration of the Trade Mark.  4. Opportunity to be heard: Giving the parties involved in the case equal and fair chance to present their arguments before deciding the case.

    Section 21(1) of the Trade Marks Act:

    According to Section 21(1) of the Trade Marks Act, any aggrieved person can oppose a trademark. It is not necessary for a person opposing a mark to be prior applicant or registered owner of trademark. However, it is a necessary requirement that the opposition must be in writing, in a prescribed manner and be filed within 4 months from the date of advertisement or re-advertisement of an application for registration in the Trade Marks Journal. 

    Section 21(2) of the Trade Marks Act:

    Section 21(2) of the Trade Marks Act imposes a duty on the Registrar of Trade Marks to serve a copy of the notice of opposition to the Applicant for Registration (person who filed application for registration of the trade mark). Further, section 21(2) of the Act imposes duty on the Applicant for Registration to reply to the notice of opposition by sending the counterstatement to the Registrar within two months from the date on which the Applicant for registration received the copy of the Notice of opposition.

    The Applicant for Registration, in the counterstatement, must state the grounds on which he relies for his trade mark application. Failure in doing say might result in the Application being abandoned and the same will not proceeded for registration. 

    Section 21(3) of the Trade Marks Act: 

    According to section 21(3) of the Trade Marks Act, if the Applicant for Registration sends the counterstatement within the prescribed period i.e. two months from the date of receipt of notice of opposition by the Applicant for Registration, the Registrar of Trade Marks is bound to serve a copy of the same to the opponent. 

    Section 21(4) of the Trade Marks Act: 

    After the Applicant gives the counterstatement in reply to the notice of opposition, the opposition process moves on to the evidence stage. According to section 21(4) of the Trade Marks Act, both the parties to the case i.e. the opponent and the applicant for registration are required to serve evidence in support of their claims. The opponent is required to file evidence in support of notice of opposition within two months from the date he receives the copy of the counterstatement.

    And the Applicant for Registration is required to file evidence in support of trade mark Application and counterstatement within two months from the date he receives the evidence filed by the opponent. Further, this sub-section provides that if the Registrar of the Trade Marks thinks fit, it must also provide both the parties the opportunity to be heard. 

    Section 21(5) of the Trade Marks Act: 

    Section 21(5) of the Trade Marks Act provides provision related to the decision by the Registrar of the Trade Marks. Accordingly, it provides that after considering the arguments of both the parties, evidence submitted and objections raised by the opponent in the notice of opposition, the Registrar of Trade Marks must decide whether to grant the registration to the trade mark applied for registration unconditionally, impose any conditions/ limitations on the same or refuse the registration. 

    Section 21(6) of the Trade Marks Act:

    According to section 21(6) of the Trade Marks Act, if the opponent or the applicant does neither resides nor conduct its business in India after receiving of the notice of opposition or the counterstatement, the Registrar can demand security for costs of proceedings before him. In case of failure to give the security for cost of proceedings, the notice of opposition or the application, as the case may be, will be treated as abandoned.

    Section 21(7) of the Trade Marks Act: 

    According to section 21(7) of the Trade Marks Act, if any party i.e. the opponent or the applicant for registration, desires to make any correction of any error or any amendment in the notice of opposition or a counter-statement, he can request to the Registrar of Trade Marks for the same. And, if the Registrar thinks fit, he may allow such correction or amendment. 

    CONCLUSION

    In conclusion, section 21 of the Trade Marks Act provides the provisions related to the process of opposing a trade mark in India. Accordingly, the opposition can be filed by any person within four months from the date of advertisement or re-advertisement. A copy of the said notice needs to be served by the Registrar of Trade Marks to the Applicant and the Applicant is bound to file counterstatement within two months from the date of the receipt of the copy of the notice, else the trade mark Application may be deemed to be abandoned.

    After the counterstatement is given, both the parties are required to be provide evidences to support their claims. After considering such evidences, giving opportunity to be heard and objections raised by the opponent in the notice of opposition, the Registrar may either grant registration to the trade mark or refuse the same.

    For a detailed legal perspective on trademark opposition, you can visit this resource to explore case studies and official guidelines.

  • How GST and Financial Year-End Planning Impact Your Trademark Registration

    In the ever-evolving landscape of the Indian business world, the taxation policies and intellectual property rights often intersect at varied points impacting the way businesses manage their assets. One such critical intersection is between the GST and Financial Year and trademark registration. While GST affects some very integral aspects of business operations, its impact on trademark registration in India is sometimes overlooked.

    As the month end along with GST and Financial Year 2024-25 filling approaches, businesses must plan strategically. One must ensure to optimize their tax benefits, ensure the necessary compliance, and safeguard their intellectual property. Let’s explore how GST and Financial Year affects trademark and trademark registration in India, and how businesses can bring into line their trademark strategies with financial year-end planning, and what measures they can and should take to minimize costs and maximize efficiency.

    GST and Its Role in Trademark Registration

    What is GST?

    The Goods and Services Tax (GST) is an indirect form of taxation which was introduced in India on July 1, 2017. It famously replaced a manifold of indirect taxes such as service tax, VAT, and excise duty and more. GST as the name suggests is levied on the supply of goods and services. GST and Financial Year are crucial aspects businesses must consider for compliance. These also include professional and legal services, those of which are associated with trademark registration.

    Although GST may not apply directly to the act of registering a trademark by itself, but it is applicable to various services related to trademarks. Some of which may include legal consultancy, licensing, renewals, and litigation. Businesses and individuals seeking trademark registration and trademark protection must understand the GST and Financial Year are crucial aspects businesses must consider for compliance. implications at large to ensure compliance and avoid any unnecessary financial burdens in form either penalties or charges.

    Taxes on Trademark-Related Services

    The following services incur the Goods and Services Tax (GST):

    1. Legal and Consultancy Services

    Most companies will acquire the services of a legal consultant or a Trademark Search and Filing Agent for trademark registration, as it is considered a professional service. This service also incurs a GST which increases the cost of attaining trademark protection. This is another cost that has to be factored into the budget of businesses during the GST and Financial Year planning.

    2. Trademark Registration and Renewal

    Trademarks in India are legally protected for a period of ten years; thus, they should be renewed to maintain legal protection. Therefore, expenses for services related to the maintenance of trademarks which includes legal counsel and filing requests and other forms have also been incorporated in the GST. Companies that do not budget for renewals are liable to incur GST and Financial Year burdens.

    3. Licensing and Assignment of Trademarks

    Trademark owners earn income for permitting other businesses to use their trademark, whether it is through licensing or assigning. According to GST and Financial Year, the act of granting permission or associated with the transfer of rights to a trademark is also taxable. Therefore, income from licensing the trademark is taxable, so businesses must ensure they use the tax and file the appropriate returns.

    Trademark Registration and Renewals Timing

    Strategic timing of trademark applications and renewals can help businesses get the most out of GST and Financial Year. These processes may allow companies to claim input tax credits sooner, which may improve cash flow management.

    Businesses should register their trademarks by March 31 to get GST and Financial Year tax benefits in the current fiscal year. 

    Auditing Trademark Expenses Financially

    A financial audit before the end of the financial year ensures that all trademark-related expenses, including GST payments, are correctly recorded. This practice helps businesses find tax-saving opportunities, avoid compliance issues, and prepare for tax filings each year. GST Compliance of Trademark Holders for GST Compliance. Businesses involved in trademark-related transactions need to stay in compliance with GST. 

    These steps can help businesses stay compliant: 

    Businesses involved in trademark licensing need to figure out if they need to register for GST. If the turnover exceeds the prescribed limit, then GST registration is mandatory.

    • Issuing GST-Compliant Invoices: Proper invoicing ensures that businesses can claim input tax credits and comply with GST regulations.
    • Timely GST Return Filing: Businesses should file their GST returns regularly, including all trademark-related transactions, to avoid legal issues and penalties.

    Implications of Non-Compliance

    Non-compliance with GST and Financial Year regulations can have severe consequences, including:

    1. Financial Penalties

    Failing to comply with GST obligations can result in penalties, increasing the financial burden on businesses. This can be particularly challenging for startups and small enterprises with limited resources.

    2. Legal Repercussions

    Non-compliance with GST and Financial Year laws related to trademark transactions may lead to legal disputes, affecting the company’s reputation and operations. Businesses may face litigation if they fail to collect or pay GST on trademark-related services.

    3. Denial of Input Tax Credit (ITC)

    Incorrect GST and Financial Year filings or failure to claim ITC on trademark expenses can lead to higher tax liabilities. Businesses must ensure that all GST payments related to trademark services are recorded accurately to maximize tax benefits.

    Best Practices for Managing GST and Trademark Registration

    To minimize tax liabilities and ensure smooth trademark registration processes, businesses should follow these best practices:

    1. Engage Professionals

    Consulting with tax and legal professionals helps businesses navigate the complexities of GST and trademark registration. Experts can provide guidance on claiming ITC, maintaining compliance, and optimizing financial planning.

    2. Implement Efficient Accounting Systems

    Using advanced accounting software can streamline GST compliance by tracking trademark-related expenses and automating tax calculations. This reduces errors and ensures timely filing of GST returns.

    3. Regular Training and Awareness Programs

    Businesses should educate their finance and legal teams about GST regulations and their impact on trademark transactions. Regular training programs help employees stay updated on compliance requirements and avoid costly mistakes.

    4. Proactive Financial Planning

    Instead of treating trademark registration as an isolated legal requirement, businesses should integrate it into their overall financial strategy. Planning trademark-related expenses alongside GST obligations ensures a smoother and more efficient financial year-end process.

    Conclusion

    Understanding how GST affects trademark registration in India is essential for businesses looking to protect their brand while maintaining financial compliance. With the Financial Year 2024-25 approaching, strategic planning can help businesses optimize tax benefits, ensure compliance, and streamline trademark registration and renewal processes.

    By aligning GST considerations with trademark strategies, businesses can safeguard their intellectual property, minimize financial risks, and contribute to a transparent and efficient economic environment. Proactive planning and adherence to GST regulations will ultimately help businesses enhance their financial health while securing their brand identity in a competitive market.

    By implementing these strategies, businesses can not only safeguard their trademarks but also optimize their financial and tax planning to stay ahead in the ever-evolving business environment.

    Wish to read similar articles? Click the link to read more: https://legalguruindia.com/blog-how-the-new-trademark-law-changes-impact-indian-startups-in-2025/

    Link to Official Government GST Portal: https://www.gst.gov.in

    Author: Apoorva Lamba, 2nd Year LLB. Student of Madhav Mahavidyalaya, Jiwaji University, Gwalior