Unit 3 of Intellectual Property Laws (syllabus: Module III — the Trade Marks Act 1999: the definition and functions of a mark, registrability and absolute and relative grounds of refusal, the registration procedure, assignment and licensing, infringement and passing off, and remedies). Below: what the unit covers, the provisions it turns on, and the cases an examiner expects you to name.
What this unit covers
- What is a trade mark, and what function does the law protect when it protects one?
- What difference does registration make, and how does infringement differ from passing off?
- How does a collective mark differ from a certification trade mark, and what is a well-known mark?
- When must the Registrar refuse a mark on absolute grounds, and can use cure the objection?
- When is a mark refused because of somebody else's rights?
- What amounts to infringement of a registered trade mark, and how do courts judge deceptive similarity?
- What must a plaintiff prove in passing off, and what factors decide deceptive similarity there?
- What defences are open to a defendant sued for infringement?
Treat that list as a self-test: recite each topic's rule from memory before you open its cases.
Provisions
- The Trade Marks Act, 1999, s. sections 2(1)(zb) and 2(1)(m)
- The Trade Marks Act, 1999, s. sections 27, 11(3) and 31
- The Trade Marks Act, 1999, s. sections 2(1)(g), 2(1)(e), 2(1)(zg), 43 and 135(3)(a)
- The Trade Marks Act, 1999, s. section 9
- The Trade Marks Act, 1999, s. sections 11 and 12
- The Trade Marks Act, 1999, s. sections 28, 29, 2(1)(h), 134 and 135
- The Trade Marks Act, 1999, s. section 27(2), preserving the common law action
- The Trade Marks Act, 1999, s. sections 30, 33, 34, 35, 36 and 142
Leading cases
- Dau Dayal v. State of Uttar Pradesh
- Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.
- Parle Products v. J.P. and Co.
- Hawkins Cookers Limited v. Murugan Enterprises