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Trademark Law Declared by the Supreme Court of India in Twenty-First Century (2000–2009) — I
The Parliament of India makes, amends, and unmakes law. The Supreme Court of India (hereinafter, the Supreme Court), under Article 141 of the Constitution of India, declares the law and makes and unmakes the law. These constitutional powers of two branches are related but separate. The Supreme Court in the first decade of 21st century has delivered 23 decisions on the trademark law. On an average, the Supreme Court has decided 2.3 (point three) trademark cases in a year; or one trademark case in 158.82 (point eight two) days or in .43 (point four three) years. A review of reported 21st century decisions reveals that the Court has: (i) declared trademark law in 17 decisions; (ii) not only interpreted the provisions of the statutes but has also constructed them; (iii) not declared anything on the constitutionality of the trademark statutes as no such question of constitutionality was brought before it; (iv) delivered all the decisions unanimously as no dissenting or concurring judgment is reported; and (v) decided maximum number of cases by Division Bench (21) and remaining 2 cases by Full Bench. It is also observed that no sitting or acting Chief Justices of India was on the Bench in any of the cases. Paper proceeds with the same argument and method as developed in the first four papers on patent law, copyright law, design law and trademark law in twentieth-century published under the theme ‘IP Laws Declared by the Supreme Court’. This Paper seeks to cull out the principles of trademark law as declared by the Supreme Court in the first decade of the twenty-first century.
Keywords
Trademark, Supreme Court of India, Law Declared, Article 141, The Constitution of India, The Trade Marks Act, 1940, The Trade and Merchandise Marks Act, 1958, The Trade Marks Act, 1999, Decisions, Constructed Meaning, Principles, Bench, Unanimous, Concurr
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- Raza A and Alam G, Patent Law Declared by the Supreme Court of India, Journal of Intellectual Property Rights, 28 (1) (2023) 46–67.
- Raza A, Alam G and Talib M A, Copyright Law Declared by the Supreme Court of India, Journal of Intellectual Property Rights, 28 (2) (2023) 151–170.
- Raza A and Alam G, Design Law Declared by the Supreme Court of India, Journal of Intellectual Property Rights, 28 (3) (2023) 236–241.
- Raza A and Alam G, Trademark Law Declared by the Supreme Court of India in Twentieth-Century, Journal of Intellectual Property Rights, 28 (4) (2023) 334–346.
- The decisions on trademark law have been taken from the Judgment Information System of the Supreme Court (JUDIS), https://main.sci.gov.in/judgments (accessed on 12 June 2023). For the purposes of citations: Supreme Court Reports (SCR), TruePrint copies from Supreme Court Cases (SCC), SCC OnLine, Supreme Court Almanac (SCALE) and All India Reporter (AIR) have been referred and relied upon. Where, the judgment is not reported in the above-mentioned judgment reporters, reliance has been placed on the judgment copy as available on JUDIS.
- Act 47 of 1999.
- Vide notification No. S.O. 1048(E), dated 15 September 2003, Gazette of India, Extraordinary, Part II, Section 3(ii).
- Act 43 of 1958.
- (2000) 3 SCC 250.
- (2009) 2 SCC 768.
- (2004) 6 SCC 145.
- Act 9 of 1932.
- (2000) 3 SCC 250, 257.
- (2000) 3 SCC 250, 260.
- (2000) 3 SCC 250, 261.
- The Court explained it with an example: ‘If the plaint referred to such a contract it could only be as a historical fact. For example, if the plaint filed by the unregistered firm refers to the source of the firm’s title to a motor car and states that the plaintiff has purchased and received a Motor Car from a foreign buyer under a contract and that the defendant has unauthorisedly removed it from the plaintiff firm’s possession, it is clear that the relief for possession against defendant in the suit does not arise from any contract with defendant entered into in the course of plaintiff firm’s business with defendants but is based on the alleged unauthorised removal of the vehicle from the plaintiff firm’s custody by the defendant. In such a situation, the fact that the unregistered firm has purchased the vehicle from somebody else under a contract has absolutely no bearing on the right of the firm to sue the defendant for possession of the vehicle. Such a suit would be maintainable andSection 69(2)would not be a bar, even if the firm is unregistered on the date of suit. The position in the present case is not different.’ (2000) 3 SCC 250, 261.
- (2000) 5 SCC 573.
- The questions for consideration before the Court were: (i) Whether the defendant could, in the interlocutory proceedings, based on infringement and passing off, raise any defence that the registration of plaintiff’s mark was itself ‘invalid’ because the plaintiff'’s mark did not satisfy the ingredients of clauses (a) to (e) ofSection 9 (1) and was, in particular, not ‘distinctive’ as required by section 9(1)(e)?; (ii) Whether plaintiff could rely on the presumption inSection 31and also contend that under Section 32 the ‘validity’ of the registration of the plaintiff’s mark had become conclusive on the expiry of 7 years long before defence was raised in the suit (such time reckoned from date of application for rectification under Section 23(1)) and whether there were any exceptions to the said bar? (iii) Whether, assuming thatSections 31and 32 did not come in the way of the defendant, on merits the word ‘PIKNIK’ was not distinctive and did not satisfysection 9(1)(e)?; (iv) For grant of temporary injunction, should the Court go by principle of prima facie case (apart from balance of convenience) or comparative strength of the case of either parties or by finding out if the plaintiff has raised a ‘triable issue’?; (v) Whether, assuming that plaintiff’s registration was valid, the comparative strength of the case on the question of infringement is in favour of plaintiff?; (vi) Whether, alternatively, the plaintiff had made out that for grant of temporary injunction treating the suit as a ‘passing off’ action, the relative strength of the case, was in plaintiff’s favour?; and (7) Whether there was unreasonable delay on the part of the plaintiff in filing suit and whether the High Court was justified in interfering in appeal in interlocutory proceedings? (2000) 5 SCC 573, 586–587.
- (2000) 5 SCC 573, 588.
- (2000) 5 SCC 573, 589.
- (2000) 5 SCC 573, 591.
- (2000) 5 SCC 573, 591–592.
- (2000) 5 SCC 573, 593.
- (2000) 5 SCC 573, 594.
- (2000) 5 SCC 573, 596.
- 1962 RPC 265 (HL).
- (2000) 5 SCC 573, 597–598.
- (2000) 5 SCC 573, 598.
- (1900) 17 RPC 48.
- (2000) 5 SCC 573, 600.
- Act 5 of 1908.
- (2000) 5 SCC 573, 601.
- (2001) 5 SCC 73.
- (2001) 5 SCC 73, 84.
- (2001) 5 SCC 73, 80.
- (2001) 5 SCC 73, 93.
- (2001) 5 SCC 73, 94.
- Act 23 of 1940.
- (2001) 5 SCC 73, 94.
- (2001) 5 SCC 73, 95.
- (2002) 3 SCC 65.
- (2002) 3 SCC 65, 71.
- (2002) 3 SCC 65, 72.
- (2002) 3 SCC 65, 73.
- (2003) 1 SCC 129.
- (2003) 11 SCC 92.
- (2003) 11 SCC 92, 104.
- (2003) 11 SCC 92, 105.
- (2003) 11 SCC 92, 108.
- (2003) 11 SCC 92, 108–109.
- (2004) 6 SCC 145.
- (2004) 6 SCC 145, 150.
- (2004) 6 SCC 145, 151.
- (2004) 6 SCC 145, 152.
- (2004) 6 SCC 145, 156.
- (2004) 12 SCC 624.
- (2004) 12 SCC 624, 627–628.
- (2005) 3 SCC 63.
- (2009) 2 SCC 768.
- (2005) 3 SCC 63, 68.
- (2005) 4 SCC 194.
- (2005) 6 SCC 404.
- (2005) 6 SCC 404, 414.
- (2006) 1 SCC 185.
- (2006) 9 SCC 41.
- (2006) 9 SCC 41, 49.
- (2006) 9 SCC 41, 51.
- (2006) 9 SCC 41, 53–54.
- (2006) 9 SCC 41, 54–55.
- (2006) 9 SCC 41, 55.
- (2006) 9 SCC 41, 56.
- (2006) 6 SCC 213.
- (2006) 8 SCC 726.
- (2006) 8 SCC 726, 755.
- (2006) 8 SCC 726, 758.
- (2006) 8 SCC 726, 760.
- (2006) 8 SCC 726, 763.
- (2006) 8 SCC 726, 763–764.
- (2006) 8 SCC 726, 765.
- (2006) 8 SCC 726, 766.
- (2006) 8 SCC 726, 769.
- (2006) 8 SCC 726, 770.
- (2006) 8 SCC 726, 771.
- (2006) 8 SCC 726, 773.
- (2006) 8 SCC 726, 775.
- (2007) 10 SCC 632.
- (2007) 3 SCC 780.
- (2007) 3 SCC 780, 789.
- (2007) 3 SCC 780, 791.
- (2007) 3 SCC 780, 791–792.
- (2007) 6 SCC 1.
- (2007) 6 SCC 1, 7.
- (2008) 5 SCC 150.
- (2008) 10 SCC 595.
- (2008) 10 SCC 595, 606.
- (2008) 10 SCC 766.
- (2008) 10 SCC 766, 782.
- (2008) 10 SCC 766, 785.
- (2008) 10 SCC 479.
- (2008) 10 SCC 479, 493.
- (2009) 2 SCC 768.
- (2009) 2 SCC 768, 777.
- (2009) 2 SCC 768, 779.
- (2009) 2 SCC 768, 782.
- (2009) 2 SCC 768, 782–783.
- For a detailed discussion on the theoretical underpinnings of trademark law in the light of the reported decisions of the Supreme Court in last 72 years, see: Raza A and Alam G, Theoretical Underpinnings of Trademark Law: Decisions of the Supreme Court of India, Journal of Intellectual Property Rights, 27 (5) (2022) 351–366.
- In the paper, the expression ‘interpretation-construction’ has been used in thesamesenseasexplicated by Lawrence B Solum. See: Solum L B, The Interpretation- Construction Distinction, Constitutional Commentary, 27 (2010) 95–218.
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