How to Protect Your Trademark for Unregistered Goods & Services

The Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) provides a trademark proprietor with the exclusive right to use the registered trademark in respect of the goods and services for which the registration has been made.[1]Where a registered trademark is being used in circumstances not covered by the scope of registration i.e., used in respect of goods and services different than those which form the subject of the registration, there is no infringement of the trademark.[2] Therefore, a trademark proprietor cannot restrain others from using a trademark registered by him for certain goods/ services in respect of other goods/ services through a trademark infringement suit.

It must be noted at the outset that on perusal of Section 28 of the Act, it is clear that there lies no suit for infringement of a trademark by its proprietor against a person having registration of said trademark in a different class or in respect of different goods/ services.[3]Therefore, the question that arises is that whether persons who, without any registration, use a registered trademark in respect of goods and services not covered by the trademark registration can be restrained from doing so by the proprietor of such registered trademark. Such use of the registered trademark, which falls outside the ambit of Section 28 of the Act, could be in respect of goods/ services that belong to the same class as the goods/ services in respect of which trademark is registered as well as goods/ services covered by a class different than the one mentioned in the registration.

The answer to the question raised lies in the common law remedy of passing off. This is because a plaintiff’s right in a passing off action is independent of the statutory rights received from trademark registration and is against the conduct of the defendant which led to or is intended or calculated to lead to deception entailing a negative impact on the goodwill of the plaintiff.[4]In considering the goodwill of an entity, it is pertinent to remember that the same is not necessarily limited to the country where its goods/ services are freely available as such goods/ services, though not available, are often widely advertised resulting in the acquisition of wide reputation.[5]

In an action of passing off, it is immaterial whether the goods of the parties are different, their trade channels are different or that the prices are different. In determining whether two marks are deceptively or confusingly similar, the focus in a passing off action has shifted from the requirement of common field of activity to the state of mind of the public at large.[6] Further, once the plaintiff’s goodwill in the market is proved, a mere probability of confusion in the mind of the public at large is sufficient to prove an action of passing off and there is no need for proof of any prejudice or actual damage.[7]

In addition to this common law remedy, a trademark registered in respect of certain goods/services can also be restricted from being use in respect of other goods/services through establishment of the well-known status of such mark as a trademark being a well-known trademark under Section 29(4) of the Act renders the alleged difference in goods and services of the Plaintiffs and the Defendant immaterial.[8]

Use of Registered Trademark in Respect of Goods or Services of a Different Class

There are numerous judicial pronouncements where the use of a known trademark for different class of goods or services has been considered on the basis of its likeliness to cause confusion among consumers and dilution of registered trademark. The Courts have on multiple occasions restrained the use of a registered trade mark for a product unconnected with the product of the proprietor in respect of which the trademark was registered.[9]

Where the goods in respect of which an identical or deceptively similar trademark is being used is not of the same description as the goods for which the trademark is registered, the trade connection test is applied to determine the likelihood of confusion.[10] However, it is pertinent to note that the lack of trade connection between different products in respect of which the trademark is being used by the plaintiff and defendant in no manner means that there can be no likelihood of deception or confusion.[11]Furthermore, a passing off action does not require the plaintiff and defendant to be in direct competition for there to be an injury to plaintiff resulting from defendant’s use of plaintiff’s mark.[12]

The Bombay High Court in Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd.[13], while ruling on whether there was any tangible danger of confusion between Caltex watches and Caltex petrol and various other oil products, observed that although the goods of the parties were completely different and there was no trade connection between them, there existed a likelihood of deception or confusion as persons seeing the mark attached to the watches would assume that they have the same origin as Caltex petrol. In Bata India Ltd v. Payrelaland Co. Meerut City and Ors.[14], the Allahabad High Court dealt with a case where the plaintiff was manufacturing shoes, while the defendant was producing foam and analogous products. Rejecting the argument that there was no possibility of any deception on the purchaser of foam materials in the market, the Court stated that a passing off action lies even if the defendants are not manufacturing or producing any goods similar to that of the plaintiff where there exists the possibility of a misrepresentation being caused or wrong impression being created regarding the product’s origin.

The apex Court in Mahendra & Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited[15], rejecting the appellant’s contention that its products are, in no way similar to the products and businesses of the respondent, held that the respondent using the word ‘Mahindra’ and ‘Mahindra & Mahindra’ in its business concerns for a long span of time extending over five decades has led to the name acquiring certain distinctiveness and a secondary meaning. As a result, the public now associates the name ‘Mahindra’ with a certain standard of goods and services and therefore, any attempt to use the name would create the impression that there exists a connection with the respondent’s group of companies. Accordingly, the appellant/ defendant, which was yet to commence its business, was restrained from using the name of ‘Mahendra’ or ‘Mahendra & Mahendra’.

In Aktiebolaget Volvo & Ors. v. Mr. Vinod Kumar &Ors.[16],the Delhi High Court considered the question whether the plaintiff’s trademark VOLVO, which was registered for various category of goods including buses, cars, automobile parts etc. could said to be infringed or passed off by the defendant selling its ice creams under the VOLVO mark without any registration. In this case, the plaintiff had filed a suit for permanent injunction on account of infringement of the trademark as well as for an action for passing off. The defendants contested the suit on the ground that the goods sold by them under the VOLVO mark were neither similar nor identical to the goods for which the trade mark is being used by the plaintiff and therefore, it does not or is not likely to result in causing any confusion or unfair advantage to the defendant or being detrimental to the character or reputation of the trademark registered in favour of the plaintiff. Negating this contention, the Court noted that in light of the plaintiff’s use of the mark all over the world from 1915 and in India from at least 1975, the mark had attainted certain distinctiveness and reputation and hence, its infringement or dilution is impermissible under in terms of Section 29(4)(c) of the Trade Mark Act.

In Kirloskar Diesel Recon Pvt. Ltd. and Ors. v. Kirloskar Proprietary Ltd.[17], the well-known trademark of the plaintiff enabled it in obtaining an injunction restraining defendant from passing off his goods and services as those of proprietor by using the mark in respect of dissimilar goods and services. In Kamal Trading Co. &Ors. v. Gillette U.K. Limited[18], it was held that, though the nature as well as class of the goods manufactured by the plaintiffs and defendants were different, there existed a likelihood of deception to the customer on the grounds that customers were left with the impression that the toothbrushes of the appellant come from the house of Gillette. On similar lines, in the recent case of Kaira District Cooperative Milk Producers Union Ltd. and Anr. v. Maa Tara Trading Co. and Ors., the Calcutta High Court passed an interim order restraining the defendant from using the plaintiff’s registered AMUL mark in respect of marketing candles, although the defendants operate in a different class of business, on account of the well-known status of the plaintiff’s mark.[19]

Use of Registered Trademark in Respect of Different Goods or Services in the Same Class

Where a person uses a registered trademark in respect of goods and services belonging to the same class as those goods and services for which the trademark has been registered, the remedy available to the trademark proprietor against a person who is using the same trademark in respect of different goods or services in the same class, is that of action for passing off. Additionally, the proprietor can make the case that the registered trademark is a well-known one and therefore, enjoys protection across all goods/ services and classes.

The Supreme Court in Corn Products Refining Company v. Shangrila Food Products Limited[20] laid down that where the competing marks are being used in respect of goods having different description, the trade connection applies to ascertain the likelihood of deception or confusion. In that case, the appellant held registration of the mark ‘Glucovita’ in Class 30 in respect of dextrose or glucose powder and also for infants’ food and opposed the respondent’s application for registration of ‘Gluvita’ in Class 30 in respect of biscuits. The apex court stated that the fact that glucose was used to manufacture the biscuits established a trade connection between the two commodities and concluded that the appellant’s trademark had acquired a reputation among the public and respondent’s proposed mark was likely to cause confusion or deception.

Notwithstanding the above, it is pertinent to note that the registration of trade mark for products or goods in a category falling under one class does not vest monopoly over the entire class of the goods with the proprietor of such registered mark. Therefore, a mark identical or similar to a registered trademark can be used or registered for goods/ services falling within the same class as the registered trademark, because granting monopoly in respect of the entire class of goods and services to the registered proprietor would lead to trafficking in the trademark which is not the object and the purpose of the Trade Marks Act.[21]

In this regard, the case of Nandhini Deluxev. KarnatakaCo­operativeMilkProducers Federation Limited[22], where the appellant had applied for registration of the trademark ‘Nandhini’ for goods like meat, fish, poultry and hen and other food articles whereas the respondent was using its registered trademark ‘Nandini’ for milk and milk products. Though both the marks fall under the same class i.e., class 29 and 30, it was held that there being no intention on part of the respondent to manufacture products manufactured by the appellant, the trademark proprietor cannot enjoy monopoly over the entire class of goods. Therefore, it was held that the appellant can register the mark “Nandhini” for any of the goods under class 29 and 30 excluding the ones covered by the respondent’s trademark i.e., milk and milk products.

Recently, in Cutis Biotech v. Serum Institute of India Pvt. Ltd.[23], the Bombay High Court upheld the order of the lower court[24] in rejecting interim injunction to the plaintiff seeking to restrain the defendant from using the mark ‘Covishield’ for COVID-19 Vaccines. In light of the application for registration of the trademark ‘Covishield’ under Class 5 by both the plaintiff and the defendant, the Court stated that even if the plaintiff were to succeed in such registration, the same would be in respect of the disinfectant spray, sanitizer etc. produced by the plaintiff and not of such nature that grants monopoly for all goods under Class 5. Relying on the Nandhini Deluxe Case, it was held that as the product of the defendant is vaccines and defendant has no intention to use the mark manufacture products similar to those produced by the plaintiff, there is no scope of misrepresentation or confusion in the mind of people about the plaintiff’s product.

References :

[1]Section 28, Trade Marks Act, 1999.

[2]Relaxo Rubber Limited & another v. Aman Cable Industries & Anr.,1998 18 PTC 759.

[3]Triumphant Institute of Management Education v. Aspiring Mind Assessment Pvt. Ltd. &Ors., 210 (2014) DLT 618; P.M. Diesels Pvt. Ltd. v. Thukral Mechanical Works, PTC (Suppl.) (2) 863 (Delhi).

[4]N. R. Dongrev. Whirlpool Corporation, 1996 (16) PTC 583 (SC); Wander Ltd. and Another v. Antox India Pvt.Ltd., 1990 Supp. SCC 727.

[5]Whirlpool Co. v. N.R. Dongre, (1996) 5 SCC 714; Kamal Trading Co. &Ors. v. Gillette U.K. Limited, 1988 (8) PTC 1 (Bom); Apple Computer Inc. v. Apple Leasing & Industries, 1991 (18) IPLR Delhi 63.

[6]Bhavnesh Mohanlal Amin v. Nirma Chemical Works Ltd., 2005 SCC OnLineGuj 86; Bhavnesh Mohanlal Amin v. Nirma Chemical Works Ltd., (2006)1SCC185.

[7]Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. &Ors, (2018) 2 SCC 1.

[8] Mahindra and Mahindra Limited v. MNM Marketing Pvt. Ltd., 2014 SCC OnLine Bom. 1343.

[9]Bata India Ltd. v. Pyare Lal and Co. Meerut City and Ors., AIR 1985 All 242; Larsen and Toubro Limited v. LachmiNarain Trades and Ors., 149(2008)DLT46; Daimler Benz Aktiegesellschft and Anr. v. Hybo Hindustan, AIR 1994 Delhi 239.

[10]Corn Products Refining Company v. Shangrila Food Products Limited, AIR 1960 SC 142.

[11] Kirloskar Diesel Recon Pvt. Ltd. and Ors. v. Kirloskar Proprietary Ltd AIR 1996 Bom 149.

[12]Honda Motors Company Limited v. Charanjit Singh and Ors., 2003 (26) PTC 1 Del.

[13]AIR1969Bom24.

[14]AIR1985All242.

[15] (2002) 2 SCC 147.

[16] 2011 SCC OnLine Del 1180.

[17]AIR 1996 Bom 149.

[18]1988 (8) PTC 1 (Bom).

[19][Ga/1/2020 In CS/107/2020].

[20]AIR 1960 SC 142

[21]Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd., (1997) 4 SCC 201.

[22] (2018) 9 SCC 183.

[23] 2021 SCC OnLine Bom 616

[24]Cutis Biotech v. Serum Institute of India Pvt. Ltd., Trademark Suit No. 1/2020, available Here.