Trade Mark Infringement

Trade Mark Infringement

Section 29 of the Trade Marks Act sets out the circumstances in which one trade mark infringes another. The main concern is that trade mark should be registered If the plaintiff’s trade mark is registered, and infringement, within the meaning of any of the sub-sections of Section 29 is seen to exist, then Section 28(1)3 would entitle the plaintiff to obtain relief against infringement if the registration is valid. Thus, though registration is necessary for infringement to be found to exist, the registration must also be valid, in order for the plaintiff to obtain relief thereagainst.

Trade Mark Infringement Vide judgement dated 20th April, 2004 in Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd., (2004) 5 SCC 627, the Supreme Court held that any mark which is held to be a descriptive trademark is liable to be protected if it has assumed a secondary meaning, which identifies it with a particular product or being from a particular source. The relevant extract of the said judgement of the Supreme Court is set out below:

“4. Without going into the question whether the conclusion arrived at by the Division Bench that the trade mark is descriptive is correct or not, it appears to us, and as is conceded by both parties before us, that the enunciation of the principle of law with regard to the protection available even in respect of the descriptive trade mark was wrong. A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source. We, therefore, remand the matter back to the Division Bench of the High Court so that it may address its mind to this question without disturbing the other conclusions arrived at at this stage. In the event the Division Bench answers the additional issue formulated by us against the appellant, it will be open to the appellant to raise all the issues which have already been concluded and which are the subject-matter of this appeal in any further appeal as it may be entitled to prefer from the final decision of the Division Bench. The Division Bench is directed to dispose of the appeal as expeditiously as is conveniently possible. It is made clear that the trial of the suit may also be proceeded with and concluded expeditiously without being inhibited either by the pendency of the appeal or by any observation in the orders of the High Court on the interlocutory application.”