Name: Shivam Singh
Roll Number: 1522 (Fifteen Hundred Twenty-Two)
Semester: UG SEM VI
Subject: Law of Intellectual Property Rights
CA - 1
Q.1 In the event of any infringement charges by a complainant, the defendant may make use
of such exceptions or laws to counteract the validity of such claims. The counter could be
either by examining the patent itself or by asking concerns about the possible consequences
that the complainant may experience. In the present case, the Indian corporation may argue
that its use of the name 'Greenbag' and the tree logo does not give rise to any violation as it is
covered.
In India, to prove the legitimacy of a trademark, the threshold is that the holder of a
trademark is a "well-known" corporation under Section 11(6) of the Trademarks Act, 1999.
The clause stipulates that only 'well-known' brands would be protected in the region. A
trademark may only be listed as a well-known trademark if it is expressly accepted in
compliance with Section 11(6) by application or by the judiciary. Thus, in the case before us,
the Indian start-up may claim that the trademarks used by Greenbag GmbH are not well-
known trademarks in India and do not follow the standards set out in Section 11 (6).
Furthermore, the threshold of 'general average intellect and imperfect memory' may be
challenged. This threshold requires that an infringement lawsuit can only be successful if it is
proven that the use of trademarks has created misunderstanding among users and that they
have not been able to discriminate between the identities of the two organisations.
In addition, Section 30(2) of the Act provides that the use of trademarks is permitted where a
trademark is used by another company to demonstrate the quality, purpose, etc. of its goods
or services. In the light of this, the Indian startup can argue that the name 'Greenbag' and the
tree logo indicate that the company only provides eco-friendly products and services. Thus, it
can be argued that the use of the trade mark was merely a description of the nature of the
goods and services provided by the defendant.
It may be contended that the Indian startup used the name and logo of the other company in
good faith and without any malice or ill intent. Secondly, if it is able to prove that it has no
global presence and isn’t a contender in the market of the german company and therefore the
use of trademark would not actually cause any damage to “Greenbag GmbH” then such use
of its trademark can be held to be valid.
Even if the German company is able to prove that it was a well-known trademark with a
trans-border reputation in India, the Indian start-up may still claim that the use of the
trademark was a concurrent use protected by Sections 12 and 30 of the Act. This means that
if the two trademarks were started to be used at about the same time, and the two parties had
no knowledge of the existence of the other. This concept was accepted by the Indian courts in
the case of Amrit Dhara.
In Goenka v. Anjali Kumar Goenka, where the term 'Goenka' was used by both parties at
different locations around the same time, and the court held that since both of them did not
relate to the existence of the other, it was honest and concurrent use, and both parties were
allowed to use the trade mark. The aspects to be assessed in order to determine honest
concurrent use are the extent of use in terms of quantity, area and duration; the honesty of
concurrent use, etc. Establishing good faith is an honest step in this direction.
Q.2 The start-up needs to ensure that the purpose of having a trademark is served by means of
its new mark. Its services must be distinguishable from any competitor and must clearly
indicate their association with the start-up. Firstly, it must ensure that it conducts an
inspection of the registered trademarks before finalising any trademark to ensure that later
there is no confusion.
The registration of the proposed trademark should be accepted and not challenged under any
absolute grounds mentioned in Section 9 or any relative grounds mentioned in Section 11 of
the Trademark Act, 1999.
The new name they come up with must be easily distinguishable and must be easily
identifiable by a person having average intelligence with improper recollection as has been
stated in the Amritdhara case.
It must ensure that the spectrum of distinctiveness is kept in mind while deciding upon it
new name. The Ambercoime test should be kept in mind and the hierarchy of names should
be adhered to. A fanciful or arbitrary mark would be more beneficial and would derive better
protection of the mark. These marks being inherently distinctive easily get trademarked and
create a place for itself in the market.
The company should avoid using a descriptive trademark as they are more difficult to protect
as they merely describe the quality of the product and hence, a monopoly cannot be acquired
over such words. Any words describing the quality, quantity, place of origin, date of origin
must be avoided for better protection. They must also be careful of not using such descriptive
words in any other language as their translation would in effect be equivalent to describing
the product and would have the same result. They should also not use any translation of
words that have already been trademarked as it would lead to controversy and dispute
between the two users.
They should keep in mind that the chosen mark is not a part of the customary practices of
India or hurts any religious sentiments as its registration itself would be barred by Section 9
of the Trademark Act, 1999. It should also not contain any obscene or scandalous material
like an abusive word or a protected emblem. The marks should not consist of the shape of
good which showcases the nature of the good itself like using a round ball type shape to pack
a tennis ball. The mark should not be of the shape which is required to achieve the technical
results ie. without that technical shape the good cannot function.
If these conditions are kept in mind the challenges provided for the act against registration
would not be raised. The Start-up would be able to enjoy protection of its marks and would
be able to operate peacefully in the market.
