IP Case Law › Acts & Sections › Trade Marks Act, 1999
Trade Marks Act, 1999
Select a provision to see the judgments in the database that turn on it.
Section 11 (1)Section 11(1) (2)Section 11(1)(a) (1)Section 11(2) (2)Section 11(4) (1)Section 11(5) (2)Section 11(6) (3)Section 11(7) (3)Section 12 (2)Section 124 (1)Section 124(4) (1)Section 134 (1)Section 135 (2)Section 18 (2)Section 18(1) (1)Section 2 (1)Section 2(1)(zg) (5)Section 2(m) (2)Section 25(3) (2)Section 27 (3)Section 27(2) (6)Section 28 (3)Section 28(1) (1)Section 28(3) (5)Section 29 (12)Section 29(2) (1)Section 29(2)(b) (2)Section 29(4) (2)Section 29(5) (1)Section 29(8) (2)Section 30(1) (2)Section 30(2) (1)Section 30(2)(a) (2)Section 30(2)(e) (1)Section 30(3) (1)Section 30(4) (1)Section 31(1) (1)Section 34 (6)Section 35 (1)Section 47 (1)Section 47(1)(A) (1)Section 48(2) (1)Section 57 (1)Section 9 (2)Section 9(1)(a) (1)Section 9(1)(b) (1)Section 9(1)(c) (1)Section 91 (1)
Judgments citing this Act
ADS Spirits Pvt. Ltd. v. The Registrar of Trade Marks
Section 9(1)(a) of the Trade Marks Act, 1999 proscribes registration only where a mark is devoid of distinctive character, that is, incapable of distinguishing the goods or services of one person from those of another; it does not…
Absolute Grounds for RefusalArbitrary MarkDistinctivenessNon-speaking OrderTrade MarksAmazon Seller Services Pvt. Ltd. v. Amway India Enterprises Pvt. Ltd. & Ors.
The Direct Selling Guidelines, 2016, being advisory executive instructions without the force of law, cannot bind e-commerce platforms. Once goods bearing a registered trade mark have been put on the market with the proprietor's co…
E-commerceExhaustion Of RightsIntermediary LiabilityOnline InfringementTrade MarksAmrit Singh Mehta trading as Mehta Cosmetics v. Controller General of Patents, Designs and Trade Marks
Where a trade mark is registered after its normal renewal date, the proprietor is entitled to a six-month period from the actual date of registration to seek renewal. Further, a trade mark cannot be removed for non-renewal without…
Form O-2Form O-3Registration CertificateRemoval of TrademarkTrade MarksArun Kumar Gupta v. Registrar of Trade Marks
Issuance of notice in Form O-3 under Section 25(3) of the Trade Marks Act, 1999 is a mandatory pre-condition for removal of a trade mark from the Register on account of non-renewal. Mere expiry of registration or failure to file a…
Form O-3Mandatory NoticeRegistered ProprietorRemoval of TrademarkTrade MarksAshiana Ispat Limited v. Kamdhenu Limited & Ors.
A mere contractual promise to let someone adopt and use a mark is not the same as transferring ownership, where the contract makes ownership conditional on registration. Non-use of a mark for decades defeats a claim to common-law …
AssignmentDiscretionary OrderInterlocutory InjunctionLicenceDesignsCarlsberg Breweries A/S v. Som Distilleries and Breweries Ltd.
A single suit combining a cause of action for infringement of a registered design with a cause of action for passing off is maintainable under Order II Rule 3 of the Code of Civil Procedure, 1908 where both claims flow from the sa…
Composite SuitCopyright Design OverlapDesign InfringementPassing OffTrade MarksChristian Louboutin SAS v. Nakul Bajaj & Ors.
An e-commerce platform is not automatically entitled to the safe harbour under Section 79 of the Information Technology Act, 2000 merely because it calls itself an intermediary; the exemption applies only where the platform's role…
CounterfeitingE-commerceIntermediary LiabilityOnline InfringementTrade MarksColumbia Pictures Industries, Inc v. Registrar of Trade Marks & Anr.
Section 11(2) does not require a mark to have been formally declared well-known before its proprietor can invoke that status to oppose a similar or identical mark on dissimilar goods; it is enough that the mark is, in substance, e…
Bad Faith AdoptionCross-class ProtectionOppositionRemandCopyrightDr. Ashok M. Bhat v. Harichand Nagpal & Ors.
An injunction against use of a registered artistic work follows the artistic work onto any label, not merely the one impugned in the plaint. In Order XXXIX Rule 2A proceedings justification is no defence: so long as an order stand…
Contempt of InjunctionCounterfeitingExemplary CostsOrder XXXIX Rule 2ATrade MarksHamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Ltd.
While composite trade marks must be compared as a whole under the anti-dissection rule, it is permissible to examine a dominant or significant common element in determining the overall commercial impression, and a composite mark m…
Anti-Dissection RuleComposite MarksDeceptive SimilarityTrade DressTrade MarksHavells India Limited & Anr. v. Havai Home Products Pvt. Ltd. & Ors.
Even a registered proprietor may be restrained from using a trade mark where the ingredients of passing off are established. Section 27(2) preserves the common-law remedy of passing off notwithstanding the statutory rights arising…
Anti-Dissection RuleDeceptive SimilarityDishonest AdoptionPassing OffTrade MarksHavells India Ltd. & Anr. v. Amritanshu Khaitan & Ors.
In comparative advertising, a trader may compare one or more material, relevant and verifiable features of its product with a competitor's, including price, without being obliged to disclose every attribute of the rival's goods; f…
Comparative AdvertisingDisparagementHonest PracticesSection 29(8)Trade MarksIndustria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr.
Section 11(2) does not require an earlier mark to have a formal declaration of well-known status before its owner can oppose a later mark; the provision only requires that the mark is well known. The term 'entitled' in Explanation…
Anti-Dissection RuleBad FaithDeceptive SimilarityPhonetic SimilarityTrade MarksITC Limited v. Nestle India Limited
Common, laudatory or descriptive expressions used across an industry to denote the flavour or quality of a product cannot be monopolised by a single trader as a trade mark, even where that trader was the first to use the expressio…
Descriptive MarksGeneric MarksGoodwillPassing OffOtherJaikishan Kakubhai Saraf alias Jackie Shroff v. The Peppy Store & Ors.
A celebrity's personality and publicity rights extend to protection against commercial exploitation of name, image, voice and mannerisms, including through an unlicensed artificial-intelligence chatbot or distorted video content; …
AI And DeepfakesFreedom Of SpeechParodyPersonality RightsTrade MarksLaxmikant V. Patel v. Chetanbhai Shah & Anr.
A trading or business name, though not a registered trade mark, is protectable in a passing off action once it has acquired goodwill through use; the tort protects established business reputation rather than the name itself, and n…
GoodwillInterim InjunctionPassing OffPersonal Name MarksTrade MarksMarico Limited v. Agro Tech Foods Limited
A trade mark consisting of ordinary descriptive words remains vulnerable to a competitor's bona fide descriptive use under Sections 30(2)(a) and 35 of the Trade Marks Act, 1999, notwithstanding registration; such a mark attains pr…
Descriptive MarksDistinctivenessGeneric MarksPassing OffTrade MarksMarriott Worldwide Corporation v. Hotel Marriot Prime & Anr.
Where a defendant fails to contest a commercial suit despite service and a subsisting interim injunction, a court may grant summary judgment under Order XIII-A of the Code of Civil Procedure without recording oral evidence; and a …
DamagesDeceptive SimilarityPassing OffTrademark InfringementDesignsMohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares
Design infringement under the Designs Act, 2000 and passing off are separate causes of action resting on different rights, standards and defences; since a registered design is a time-bound statutory monopoly that enters the public…
Composite SuitCopyright Design OverlapDesign InfringementDesign RegistrationTrade MarksNandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd.
Registration in a particular class of goods does not confer a monopoly over the entire class; likelihood of confusion under Section 11 must be assessed by the real nature and target consumers of the competing goods, and honest, lo…
ClassificationDeceptive SimilarityDissimilar GoodsHonest Concurrent UseTrade MarksNeon Laboratories Ltd. v. Medical Technologies Ltd. & Ors.
Under Section 34 of the Trade Marks Act, 1999, actual continuous prior use of a mark in the market prevails over a rival's earlier-dated application for registration where the registrant remained inactive for a prolonged period; t…
Deceptive SimilarityNon-usePassing OffPrior UserTrade MarksNew Balance Athletics Inc. v. Astormueller AG and Ors.
Registration of a mark is no defence to a passing off action, since rights under Section 27(2) are independent of and override the bar in Section 28(3) on one registered proprietor suing another for infringement. Registration mere…
Anti-Dissection RuleDeceptive SimilarityInitial Interest ConfusionPassing OffTrade MarksOpella Healthcare Group v. Pureca Laboratories Pvt Ltd (Trade Marks)
Where a coordinate bench, following an unchallenged rectification order, has found the mark in question deceptively similar to the plaintiff's registered mark, the defendant has no real prospect of successfully defending the infri…
Deceptive SimilarityPassing OffPharmaceutical MarksPrior UseTrade MarksParle Products Pvt. Ltd. v. The Registrar of Trade Marks & Anr.
Where two parties file competing applications for registration of an identical or deceptively similar trade mark on a proposed-to-be-used basis, priority for registration under Section 18 of the Trade Marks Act, 1999 is determined…
Approbation and ReprobationPrior RegistrationPriorityProposed to be UsedTrade MarksReliance Industries Limited v. Pawan Kumar Gupta & Ors.
In assessing the likelihood of confusion for interim relief, courts must apply a more stringent standard where the infringing goods are edible products sold through online marketplaces to unsophisticated consumers, since even mino…
Dynamic InjunctionOnline InfringementPassing OffTrade DressTrade MarksRenaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors.
Section 29(4) of the Trade Marks Act applies only to marks used on dissimilar goods or services and cannot be invoked where the defendant's goods or services are identical to those of the registered proprietor, which instead falls…
Deceptive SimilarityDilutionSection 29(4)Trademark InfringementTrade MarksS. Syed Mohideen v. P. Sulochana Bai
Under the scheme of the Trade Marks Act, 1999, the rights of a prior user of a trade mark are superior to the rights flowing from registration, and the statutory remedy of passing off under Section 27(2) remains available to a pri…
Deceptive SimilarityGoodwillPassing OffPrior UserTrade MarksSatyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.
A domain name has all the characteristics of a trade mark and is entitled to protection against passing off; the fact that the Trade Marks Act, 1999 does not specifically legislate on domain names does not exclude a domain name fr…
Deceptive SimilarityDomain NamesGoodwillOnline InfringementTrade MarksSnapdeal Private Limited v. GoDaddy.com LLC & Ors.
A domain name registrar that sources alternative domain names from a common registry through an automated algorithm is an intermediary under Section 2(1)(w) of the Information Technology Act, 2000; merely making such domain names …
CybersquattingDomain NamesIntermediary LiabilityOnline InfringementTrade MarksSun Pharma Laboratories Ltd. v. Finecure Pharmaceuticals Ltd. & Ors.
Mere delay in approaching the Court is not, by itself, sufficient to refuse an injunction, particularly in the pharmaceutical field where confusion between similar marks may also affect public interest.
Deceptive SimilarityDelayInterim InjunctionPANTOCIDOtherTabassum Jamal Hashmi v. Ashok Kumar & Ors.
An individual's personality rights, encompassing name, image, voice, likeness and other distinctive attributes, are protectable by injunction against unauthorised commercial exploitation, and this protection extends to misuse effe…
AI And DeepfakesDynamic InjunctionIntermediary LiabilityPersonality RightsTrade MarksTata Sons Ltd. v. Greenpeace International & Anr.
Use of a registered trade mark in a non-commercial context, for the purpose of parody, satire or criticism of the proprietor's conduct, does not amount to infringement or dilution under Section 29(4) of the Trade Marks Act, 1999, …
Comparative AdvertisingDilutionFreedom Of SpeechParodyTrade MarksToyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. & Ors.
The law of passing off in India is governed by the territoriality doctrine, under which a plaintiff must prove actual goodwill and reputation for its mark among a substantial section of purchasers within the Indian market at the r…
GoodwillPassing OffPrior UserTransborder ReputationTrade MarksTV Today Network v. Saurashtra Aaj Tak & Anr.
In a passing-off action the focus is on protecting the goodwill of the earlier user from a later use that is likely to create confusion or an impression of association. Actual confusion or loss need not always be proved; likelihoo…
AajTakDeceptive SimilarityDisclaimerGoodwillTrade MarksUnder Armour, Inc. v. Aditya Birla Fashion & Retail Ltd.
Although composite marks must be compared in their entirety under the anti-dissection rule, a mark may contain a dominant element that contributes disproportionately to its overall commercial impression, and such a dominant elemen…
Anti-Dissection RuleComposite MarksDeceptive SimilarityDominant Mark