Distinctiveness Of Trademark

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Register to read the introduction… Whether, even without a comparison with another mark, will cause confusion to the public and as such deceives the public?[11]

Thus, the distinctiveness of a mark essentially means that the mark must be such that it identifies a product from a particular undertaking.[12] It is one of the essential requirements to be fulfilled before a mark can be registered as a ‘trademark’ under the Act.

iii. Connection with goods or services

It is clear from the definition of trademark elucidated above that the mark must be used in connection with goods or services. The apex court while highlighting this requirement observed:

‘A trademark is meant to distinguish the goods made by person from those made by another and hence cannot exist in vacuo. It can only exist in connection with the goods in connection with which it is to be used or intended to be used.’[13]

Section 47 of the Act further lays down that a trademark, once registered, can be removed from the Register if the registration was obtained without a ‘bona fide’ intention to use it in relation to goods and services. Hence, it is clear that another essential requirement for registration of trademarks under the Act is that the mark must have some connection with goods or services offered or intended to be
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they are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.[14]Passing off is not defined in the Trade Marks Act, 1999 though is referred to in ss. 27(2), 134(1) (c) and 135 of the Act.

As seen above, a passing off action prevents Trader A from passing off his goods as that of Trader B in the market. In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.[15], the Supreme Court laid down certain factors in order to decide an action of passing off on the basis of unregistered trademark. It held that factors like nature of the marks i.e. whether the marks are word marks or label marks, the degree of resembleness between the marks i.e. whether they are phonetically similar and other surrounding circumstances are relevant in determining the extent of dissimilarity between the competing marks.

In Satyam Infoway Ltd.[16] case, it held the following three elements to be established for an action of passing
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The Act provides that the jurisdictional District Court may grant an injunction as a relief in a suit for passing

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