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Introduction
The foundations of the Trademarks Act are based on the
safeguarding of
the economic rights of the owners of the trademark and also to
protect
the common man to not to fall a prey to those who use deceptive
practices in this trade. The purpose is to protect commercial
goodwill,
to ensure that people's business reputations are not exploited.
Since
business goodwill is an asset, therefore it is a property which
the law
protects against encroachment.
Economic Dimensions in the Trademarks Law
The Trademarks Act basically deals with the protection of economic
interests against economic offences. The provisions under the Act
deal
with the offences such as passing off, infringement, deceptively
similarity and the likes. It is well known that trademark can be
registered or non-registered In case of the violation of the
registered
trademark; a suit for infringement will lie. Similarly, in case of
a
non-registered trademark the action for passing off shall be
maintainable. All such offences have been discussed subsequently
in
required details with the help of case laws.
Cases Relating to Economic Aspects of the Trademark Law
Passing Off
In the case of Weston Electronics v. Rajesh
and Co.1 , plaintiff co. manufactured electronic
goods and sold them under the registered trademark of
Weston. Defendant was passing off its goods as
those of
the plaintiff. Held, use of trademark ：Weston； by the defendant
is
likely to result in defendant's goods being passed off as those
of the
plaintiff and at least the possibility of confusion resulting in
the
minds of unwary purchasers with imperfect money cannot be ruled
out.
Thus there is clear offence of passing off against the defendants.
Similarly, in the case of Smithkline Beecham v.Hindustan Lever
ltd2 , it
was held that mere publication of an advertisement in a journal
cannot
establish a trans-border reputation. Such reputation if any is
confined
to a particular class of people, i.e., the person subscribing to
the
said specialized journals and the same can・t be said to be
extended to
the general consumers. Thus any adverse effect on the firm in such
a
case can・t be amounted to the offence of "passing off".
The English Law has a similar opinion. It is evident from the case
of Reckitt and colman v.Borden where the plaintiff sold lemon juice
in a
yellow plastic lemon shaped container. Jiff was embossed on
the side
and printed on a neck label. There were strong evidence that the
purchasing public would think that they were buying a Jiff lemon
if
confronted by the defendant's lemon juice in a similar packaging.
It
was held that the defendant's proposed get up would amount to a
threat
of passing off against which an injunction should be granted.
Also the court's opinion in the case of Gillette Company is
mentionable. In the case of Gillete UK ltd. v. Edenwest
ltd.4-the plaintiffs manufactured and sold a disposable
razor blade called Gillette G-II. The defendants purchased and
resold counterfeit Gillette G-II blades without realizing that
they were not genuine products. The plaintiffs sued for passing
off and seeking an injunction. The defendant contended that it
never tried to harm the plaintiffs economic
interests and were unaware of the fact that the blades were
counterfeit.
It was held that the defendant's innocence on such a claim
couldn't
protect them against a suit for "passing off" so as to affect
the
economic interests of the plaintiffs.
Infringement
With regard to infringement of trademarks, a lot of cases have
been
filed in various courts in various parts of the world. In recent
times,
special courts have been constituted for the same purpose and even
they
are flooded now with cases. Some of the recent most and important
case
are discussed here.
In the case of
Panacea Biotec ltd. v. Recon ltd5. the plaintiff
manufactured nimesulide tablets under the brand name nimulid.
Within a
short span, the trademark acquired a good prestige in the market.
Now
the defendants started manufacturing drugs under the name remulid.
The
plaintiff sought interim injunction against the defendants as
their act
was adversely affecting their economic interests and that too,
unlawfully. Held-the trademark of the medicine in question is a
pointer
to the drug from which it is manufactured. When a name is derived
from
the name of the principal ingredient, no distinctiveness or
exclusiveness can be claimed by trader in respect of the part of
the
name taken by him for his trademark.
The English jury has also
given important judgments on this issue. In the case of Philips
electronics v. Remington products6, Philips owned a registered
Trademark for a device called Philishave. It was a
unique
three-headed rotary shaver, which it had manufactured and sold for
many
years. Now when the defendant brought its product Remington DT55,
a
three headed razor in the market, plaintiffs alleged the
infringement of
their trademark and further claimed that it is violative of the
article
6-bis of the Paris convention on trademarks. It was held that the
three-headed shaver was incapable of distinguishing the goods of
Philips
from others and was devoid of distinct character. So the act of
the
defendants cannot be said as an infringement, amounting to
hampering the
economic interests of the plaintiffs.
Deceptive Similarity
When some product is launched in the market which has the same or
closely similar trademark to any other well established product,
some
people tend to buy the new product. This is an economic offence
and
punishable. Some of the Indian and foreign cases are being
discussed
here to have the opinion of the judiciary on the issue.
In the case of Hitachi ltd. v Ajay Kmar Agarwal7 the applicants
who
were the registered users of the trademark Hitachi filed suit
against the defendants contending that the trademark
Hitaishi was
deceptively similar to that of Hitachi. The single judge bench
held that
because the later word is being used in devanagari script (Hindi),
there
is no case of deceptive similarity. But in appellate court it was
held
that on application of the rule of the ear, hitaishi seems to be
deceptively similar to Hitachi. The ordinary Indian man pronounces
the
two words almost similarly and thus it is difficult for an
ordinary man
to precisely understand the phonetic impact. Thus the defendant's
trademark is deceptively similar to that of the applicants.
Similarly the case of Lakme ltd.v. Subhash
Trading8 also deserves mention. In this case the plaintiff
was the registered proprietor of the trademark "Lakme" in respect of cosmetics and perfumery.
The
defendant also adopted a trademark Lakeme in respect of nail enamel
polish and
cosmetics. Held- when both words are articulated it would be
difficult
for an ordinary person to distinguish between the two sounds.
Applying
the test of phonetic resemblance, there is a striking resemblance
between the two words and there is a real danger and deception
being
caused by the two words in view of the affinity of these words. So
injunction was granted against the defendants.
In the much -celebrated case of Hindustan lever ltd. v. Susi
chemicals
pvt. Ltd,9 the plaintiffs since the year 1968 had been marketing
detergent cakes under the name and trademark Rin which is
registered. The wrapping of the cake is done in typical blue
background
red bold lettering with white shades. Majority of its customers
from
rural areas who don't understand English recognize the product by
wrapper itself. It came to the knowledge of the plaintiffs that
the
defendants are manufacturing and selling a detergent cake with the
brand
name Step. The word Step is written in the same characteristic
manner as that of Rin. Even the shape, size and weight of the
defendant's products were same. The plaintiffs contented that it
is
harming their economic interests as their sales in the rural areas
has
fallen steeply. Held- a great confusion has been created in the
market
due to the deceptive act of the defendant plaintiffs economic
interests
are unlawfully harmed.
Thus permanent injunction was granted
against the
defendant.
But the court has rightly decided the case of Kellogg・s
cornflakes co.
giving relief to the defendant. In the case of
Kellogg's Company
v.
Pravin kr. Bhadabhai10, the appellant sold corn flakes in cartons
having
the name Kellogg's corn flakes. Later the defendants started
manufacturing and selling corn flakes in the cartons on which it
was
written in bold letters Aims Aristo corn flakes. The court
held
that though the small red and green border was there in both types
of
cartons, but there was a clear demarcation in the way of writing
of the
words. When viewed as a whole one can see that the words
Kellogg's and
aims are prominently displayed on each and therefore there can be
no
confusion.
Conclusion
The asset protected is the reputation of the plaintiff・s business
as in
the relevant market. It is manifested in the various indica which
lead
the client or customer to associate the business with the
plaintiff,
such as,
# Name of the business
# The mark
# The design
# The make-up
# The color of the plaintiff's goods
# The distinctive characteristics of the services supplied by the
plaintiff
# Or the nature of his special processes.
A trademark adds up to the goodwill of the firm or the
organization.
Though there are no specific provisions in the said act which are
related to economy of trademarks, but a reasonable and prudent man
can
look deeply in the Act and find that the whole structure of the
trademark law is based on economic principles. It is to safeguard
the
economic interests of the legal user of the trademark, and that is
the
need of the day.
Endnotes:
1 1995 PTR 70 (Del)
2 2000 PTC 83 (Del)
3 [1990] 1 WLR 491, HL
4 [1994] RPC 279
5 1996 PTR 209 (Del)
6 [1998] RPC 283
7 1995 PTR 122 (Del)
8 1996 PTR 202 (Del)
9 1997 PTR 41 (Del)
10 1996 PTR 95 (Del)
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Economic Dimensions in Trademark Law:
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mahesh_nlu@legalserviceindia.com /
