Legal Reasoning Questions for CLAT | QB Set 2

The trademark registration and enforcement landscape in India, as far as legal provisions are concerned, is no different from that in other Commonwealth jurisdictions. A trademark is a type of intellectual property, and typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks that do not fall into these standard categories.

The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorised use of that trademark. However, registration is not required. The owner of a common-law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.

In the situation of contradiction between the registered mark and passing off, both can exist simultaneously with the registered mark without infringing the rights of one another. The following trademarks are not registrable in India on the grounds of inherent registrability:
i) those devoid of any distinctive character; that is to say, not capable of distinguishing the goods or services of one person from those of another person;
ii) those of such nature as to deceive the public or cause confusion;
iii) those containing or comprising any matter likely to hurt the religious susceptibilities of any class or section of citizens of India;
iv) those comprising or containing scandalous or obscene matter.

Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorisation of the trademark owner or any licensees (provided that such authorisation was within the scope of the license). Infringement may occur when one party, the “infringer”, uses a trademark that is identical or confusingly similar to a trademark owned by another party, about products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against a party that infringes its registration.

(Source- Trademark Laws in India. (n.d.).

Questions:

1. Which of the following statement(s) is/are the suitable illustration(s) of trademark infringement?
I) A food joint under the name Tom’s kitchen, sues Mr. Figg because their pet cat’s name is also Tom.

II) Sony Corporation filed a suit claiming dilution of its well-known SONY trademark against a sole proprietor running tours and travels business under the name, Sony Tours and Travels.

III) A person is free to record a TV program to view it later, but he transfers or distributes it to others.

IV) X, a pharmaceutical company made a medicine registered under the mark AMOXYL in 2005 in class 5 in respect of Pharmaceutical goods. Y, another pharmaceutical company made a medicine registered under the mark LYMOXYL in 2007 in the same class.

(a) I and II
(b) II and III
(c) I and III
(d) II and IV

2.
KT, the famous pop star from Dhanbad has a large fan base and is extremely popular amongst pop music lovers. KT Entertainment was incorporated to manage the artist’s escalating career. The Cute Toys company was making a large business by selling miniature dolls of the artist who can sing few lines on compositions and cashing on his popularity. KT Entertainment company was extremely aggrieved and filed for a permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off. KT Entertainment company argued that the unauthorized or unlicensed use of the artist’s reputation for goods or services will deceive the public. Decide:

(a) The allegations by KT Entertainment company are appropriate because this would lead the public into believing that the goods and services are associated with the singer.

(b) The allegations by KT Entertainment company are appropriate because Cute Toys company did not take consent from the artist.

(c) The allegations by KT Entertainment company are inappropriate because both the businesses are different and that will not cause any confusion to people in general.

(d) The allegations by KT Entertainment company are inappropriate because it is not an infringement of trademark.

3.
France Industries Limited, the Plaintiff, found hardware fittings and bathroom accessories retailer using their well-known mark ‘PINE’ and hence filed a trademark & copyright infringement suit before the Court of law. The defendant had filed two applications for registration of the mark PINE and pirated artwork that was advertised. Decide:

(a) There is a trademark infringement because the parallel names are likely to cause a sense of muddle in the minds of the customer and no license is being obtained from plaintiff.

(b) There is a trademark infringement because the defendant used the same name without the consent of the plaintiff.

(c) There is no trademark infringement because both the businesses are different and they will never overlap.

(d) There is no trademark infringement because the defendant has the fundamental right to choose guaranteed by the Constitution.

4.
Ibis is a company that has launched a mango drink by the name CHILLZ. It has a tagline that goes—“Hardum fresh!” and registered the same. One other Rakesh and Co. also launched a grape drink by the name FIZZ later in the same year. It has a tagline that goes—“Every time aur bhi fresh!” Ibis company sued Rakesh and Co. for trademark infringement. Decide:

(a) There is a trademark infringement because the names are analogous.

(b) There is a trademark infringement because the taglines are analogous.

(c) There is no trademark infringement because both the drinks differ in flavor.

(d) There is no trademark infringement because the taglines are poles apart.

5.
From those of another person; ii) those of such nature as to McDonald’s, a multinational fast food corporation, which has developed its business in past 300 years. McDonald’s is an international chain famous for its hamburgers, cheeseburgers, and French fries sued a person named Sunny for Trademark infringement.
All rights regarding the McDonald’s business are reserved with the company under The Trademark Act. Sunny is a famous street food vendor selling 100 types of Dosas. He is running a hereditary shop — all the dishes in the menu are the same since 500 years but has not registered name of any dish.
On his menu, he has an item called “Sunny special Mc Dosa.”
Decide if suit for violation of trademark can be brought or not:

(a) Sunny is guilty of trademark infringement because the right to use the prefix ‘Mc’ was reserved with McDonald’s.

(b) Sunny is guilty of trademark infringement because the itinerary sold by both McDonald’s and Sunny were the same.

(c) Sunny is not guilty of trademark infringement.

(d) Sunny is not guilty of trademark infringement because Sunny has the fundamental right to choose guaranteed by the Constitution.

Answers

1. Answer: D
Sol. It is the correct answer because of the correct pairing of statements. Both Statement II and IV are the illustrations of trademark infringement. In Statement II, the use of the word, Sony by Defendant did cause confusion among the consumers. In Statement IV, the mark is deceptively similar. The only difference between the two marks is in the prefix “Ly” and “Am”. The final marks are phonetically and visually similar and the goods are pharmaceutical goods. As per the principles laid down in the passage, trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees. Infringement may occur when one party, the “infringer”, uses a trademark that is identical or confusingly similar to a trademark owned by another party, about products or services which are identical or similar to the products or services which the registration covers.

2. Answer: D
Sol. It is the correct answer. As per the passage, trademark includes name, word, phrase, logo, symbol, design, image, or a combination of these elements. In present situation the Cute Toys Company had not used their name, word, phrase, logo, symbol, design, image, or a combination of these elements thus option (d) is correct. On same reasoning options (a) and (c) are incorrect.

3. Answer: A
Sol. It is the correct answer. As per the principles laid down in the passage, trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees. The following trademarks are not registrable in India on grounds of inherent registrability:
i) those devoid of any distinctive character; that is to say, not capable of distinguishing the goods or services of one person from those of another person;
ii) those of such nature as to deceive the public or cause confusion.

As per the above principles, in the present situation, trademark infringement is a violation of the exclusive rights attached to a trademark. Hence the allegation of trademark violation is correct. Thus, option A is the correct answer.

4. Answer: B
Sol. It is the correct answer because the taglines of the passage clearly states that the owner of a common-law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
Option A and B are incorrect because of non-similarity between the taglines and the drink names. Option C is incorrect because the passage and facts suggest the drinks can differ but taglines need to be registered and protectable.
Hence there is no infringement here because the taglines are not confusingly similar.

5. Answer: C
Sol. It is the correct answer. As per the passage and the trademark law, the right to use “Mc” was reserved by McDonald’s under registration and protection. Sunny’s use of “Mc” for his Dosa item causes a violation even if the goods are not identical because McDonald’s prefix ‘Mc’ is distinctively associated with them.
Thus infringement arises from misuse of the prefix. Both can carry their business simultaneously. On the same reasoning option B and A becomes incorrect.
Option (d) is incorrect because there is no mention of the fundamental rights guaranteed under the Constitution in the question as well as the passage.