Nilanjana
Case laws on section 9(1)(a) of Trademarks Act
Nilanjana Ganguly 27 Jan 2020

Case laws on section 9(1)(a) of Trademarks Act

SECTION 9 OF TRADE MARKS ACT,1999- ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION

 

SECTION 9 (1) (A) - Which are devoid of distinctive character, that is to say, not capable of distinguishing the goods and services from one person from those of another person.

EXPLANATION - The goods and services that do not have any separate or specific character or identity of its own. The goods and services that are similar to one another and cannot be distinguished.

 

CASE LAWS-

1.

Laxmikant V. Patel v. Chetanbhat Shah & Anr. on 4th December, 2001

FACTS:

Appellant had a business of Colour lab and studio since 1982 in the name of ‘Muktajivan’ Colour Lab and Studio. In order to expand, Appellant promoted his wife and brother-in-law to open a new colour lab in the name and style of ‘Muktajivan’ Colour Studio at two other localities in Ahmedabad. In 1997, Appellant filed a suit for passing off against the Respondents. The Respondents, who were earlier carrying on similar business in the name of ‘Gokul Studio’, sometime before or after institution of the suit for passing off by the Appellant, adopted the name and style of ‘Muktajivan’ Colour Lab and Studio. Respondents argued that Appellant was earlier carrying on business in the name of ‘M.J.’ and it was in the year 1995 that Appellant substituted ‘Muktajivan’ in place of ‘M.J.’ Respondents also argued that the locality where the Respondents had started their business was away from the area where the Appellant was carrying on his business.

 

 

ISSUES:

  1. Whether an injunction of passing off can be filed by the appellant against the defendant.
  2. Whether the distance between the two businesses matters much in case of injunction.

 

 

JUDGEMENT:

In the above case the petitioner files a case in Trial Court of Ahmadabad. The trail court was of the view that appellant carries his business in the trade name ‘Muktajivan’ Colour Lab at least since 1995 and the respondents had taken the name Muktijivan in his business name and had done on or about the date of institution of suit. Trial Court had refused the injunction on the ground that the business of the respondents was situated in other part of the city with a distance of 4-5 kms. 

Appeal was filed in the High Court against the order of the district court. High court was of the view that the respondents’ business had already come into existence on the date of the institution of the suit and therefore issuance of injunction is not possible. High Court was also of the view that there were no pleadings which suggested that other two businesses which uses the name Muktijivan as a trade mark was under the authority of the appellant. Hence finally it was held that injunction cannot be allowed on behalf of the appellant against the respondent. 

Appeal was further filed in the Supreme Court against the order of District Court and High Court. Supreme Court was of the view that an action for passing-off will lie wherever the defendant company’s name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion confusion between the two businesses. Whenever there is any confusion in business, an injunction will be granted immediately even if the defendant is innocent. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. If any of the above mentioned element is caused by the defendant then injunction can be allowed. Plaintiff does not have to prove actual damage in order to succeed in an action for passing off, likelihood of damage is sufficient.  Hence it was held that the distance between the two businesses of the plaintiff and respondent is not necessary and it does not matter much and the appeal was allowed.

 

 

 

 

 

2.

N. Ranga Rao & Sons v. Shree Balaji Associates & Ors on 4th January 2013

FACTS:

The petitioner was engaged in a business of manufacturing agarbatti sticks and dhoop sticks for more than a century. Petitioner had also submitted that he had honestly and in good means adopted the trade mark Cycle Brand with a picture of a cycle in it in the year 1954 and since then he had continuously using the said trademark domestically as well as internationally. However on one day the petitioner got a notice that a similar trade mark was applied for registration by another company known as Shree Balaji Associates in respect of brooms. The petitioner was totally against this application and filed a case in Deputy Registrar of Trade marks. The Deputy Registrar of Trademarks allowed the application of the petitioner and rejected the application filed by Respondent no.1 that is Shree Balaji Associates. After then the Respondent no.1 had appealed to the Intellectual Property Appellate Board against the order of Deputy Registrar of Trade marks. And the respondent no. 2 that is Intellectual Property Appellate Board allowed the application of Respondent no.1 therefore rejecting the opposition of the petitioner. Aggrieved petitioner filed a case in Madras High Court to restrain respondent no.1 from registering its trade mark.

 

ISSUES:

  1. Whether the petitioner can file a case against respondent no.1  from registering its trade mark.
  2. Whether the petitioner had established that his trade mark is a well known trade mark.

 

JUDGEMENT:

According to section 47 of Trade and Merchandise Mark Act, 1958 defensive registration is something which is only related to invented words and which have become well known and it also does not include any type of picture. Here in the above case the petitioner did not invent the word cycle and also the picture of the cycle was not invented by the petitioner and thus defensive registration is not possible. Here the Court was of the view that the word cycle or the picture of cycle or the word brand was not invented words and so it cannot qualify for defensive registration. It was also held that only an image of a cycle cannot be claimed to be invented and therefore the petitioner had no right in respect of the trade mark cycle brand or the picture of the cycle. It was also held that the petitioner cannot established that the petitioner’s mark was a well known mark because it does not fulfil any conditions which has been mentioned under section 11(6) of Trademark Act  and the petitioner had also failed to show any type of trade connection between respondent no.1 and himself regarding the word and the picture of the Cycle and hence the writ petition which was filed by the petitioner was dismissed. 

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