MOOT COURT CLINICAL PAPER

INTELLECTUAL PROPERTY RIGHTS

PROBLEM

ASSINGNMENT SUBMITTED
TO THE TAMIL NADU DR.AMBEDKAR LAW UNIVERSITY
IN PARTIAL FULFILLMENT OF THE REQUIREMENTS FOR
COMPLETION OF INTERNAL ASSESSMENT

SUBMITTED BY
R.RAGHAEV,
REGISTER NUMBER: H13071,
V YEAR, B.A.,B.L.,(HONS.),
A SECTION.

FACULTY SIGNATURE
 MOOT COURT CLINICAL PAPER

INTELLECTUAL PROPERTY RIGHTS PROBLEM

BEFORE THE CITY CIVIL COURT,

AT BANGALORE

OS. NO. 3/2017

ELLORA INDUSTRIES LTD ...................................................................... PLAINTIFF

V.

SANTHOSH WATCH CO.DEFENDENT

( MEMORIAL SUBMITTED ON BEHALF OF THE DEFENDENT)

 TABLE OF CONTENTS

LIST OF ABBREVIATIONS

INDEX OF AUTHORITIES

I. TABLE OF CASES
II. STATUTES & RULES
III. WEBSITES
STATEMENT OF JURISDICTION

STATEMENT OF FACTS
ISSUES RAISED
SUMMARY OF ARGUMENTS
ARGUMENTS ADVANCED
LIST OF ABBREVIATIONS

& And
AIR. All India Reporter
AP Andhra Pradesh
Anr. Another
C.P.C. Code of Civil Procedure, 1908
Ed. Edition
Etc. Etcetera
FCA Family Courts Act,1984
HMA Hindu Marriage Act,1955
ILR Indian Law Reports
Mad. Madras
No. Number
Ors. Others
p. Page Number
r/w Read with
Sec. Section
ss. Sections
SC Supreme Court
SCC Supreme Court Cases
SCR Supreme Court Reporter
S. No. Serial Number
U/s. Under Sec.
U/ss. Under Secs
v. Versus
Vol. Volume
Vols. Volumes
 INDEX OF AUTHORITIES

Table of Cases:

Khoday Distilleries Limited v. Scotch Whisky Association1,

Intel Corporation v. Anil Hada2,
Procter and Gamble Co. v. Satish Patel
Erven wanink vs. Townwnd
Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd3.,

Statutes:

1. Code of Civil Procedure,1908

2. The Trade Mark Act, 1999.

Websites:

www.scconline.in

www.manupatra.com

www.indiankanoon.org

www.lawctopus.com

1
(2008) 10 SCC 723,
2 2006 (33) PTC 553

3 (1997) 4 SCC 201.

 STATEMENT OF JURISDICTION
The Defence submits to the jurisdiction of this Honble Court U/s.
134 of the The Trade Mark Act, 1999.
Section 134: Suit for infringement, etc., to be instituted before District Court.
(1) No suit
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which
is identical with or deceptively similar to the plaintiffs trade mark, whether
registered or unregistered, shall be instituted in any court inferior to a District
Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a District Court
having jurisdiction shall, notwithstanding anything contained in the Code of Civil
Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a
District Court within the local limits of whose jurisdiction, at the time of the
institution of the suit or other proceeding, the person instituting the suit or
proceeding, or, where there are more than one such persons any of them, actually
and voluntarily resides or carries on business or personally works for gain.
Explanation.For the purposes of sub-section (2), person includes the registered
proprietor and the registered user.
STATEMENT OF FACTS

Ellora Industries started manufacturing the wall clocks,

watches, and time pieces etc. since 1980. The Ellora products
attained the good status in the market and high reputation
among the public under the trade name of Ellora.
In 2000, Santhosh watch company, started manufacturing the
watches, clocks, and time pieces etc. under the same trade
name of Ellora. It created confusion among the customers.
Ellora Industries filed a suit before the court seeking
permanent injunction against the defendant (Santhosh Watch
Company) restraining them from using the trade name Ellora.
This case also involves the issue of Passing off in the Trade
Mark Law.
 ISSUSE RASED

ISSUE 1:

Whether the plaintiff is entitled for permanent

injunction against the defendant

ISSUE 2

Whether the issue of passing off under trade

Mark law is involved in this case
 SUMMARY OF ARGUMENTS

ISSUE 1:
Whether the plaintiff is entitled for permanent injunction against
the defendant

It is humbly submitted before this Honble court

that since only a subsidiary or sub-ordinate office and not the
principal office of was not within jurisdiction of the Court, could not
be said to be ordinarily carrying on business within the
jurisdiction of the Court under Section 134(2) of the TMA.

ISSUE 2
Whether the issue of passing off under trade Mark law is involved in
this case

There is no issue of passing off under The Trade Mark

Act 1999 this case is just the hallucination of the plaintiff that the
ellora attainted state of distinctiveness for his company.( ellora
attainted state of distinctiveness as its own name o fhistory and
theirs)
 ARGUMENTS ADVANCED

ISSUE 1:
Whether the plaintiff is entitled for permanent injunction against
the defendant

Before this Honble court that since only a subsidiary or sub-

ordinate office and not the principal office of was not within jurisdiction of the
Court, could not be said to be ordinarily carrying on business within the
jurisdiction of the Court under Section 134(2) of the TMA4.

WITH REFERECE TO SECTION 205 OF Civil Procedure Code, 1908 the

plaintiff has no jurisdiction and by the virtue of Order 7 Rule 116 the Honble
court shall reject the plaint

4
Section 134 - Suit for infringement, etc., to be instituted before District Court (1) No suit: (a) for the
infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or Page 3
of 5 lawstreetindia All rights reserved (c) for passing off arising out of the use by the defendant of any
trade mark which is identical with or deceptively similar to the plaintiff\'s trade mark, whether
registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction
to try the suit. (2) For the purpose of clauses (a) and (b) of sub-section (1), a \"District Court having
jurisdiction\" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908)
or any other law for the time being in force, include a District Court within the local limits of whose
jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit
or proceeding, or, where there are more than one such persons any of them, actually and voluntarily
resides or carries on business or personally works for gain. Explanation.--For the purposes of sub-section
(2), \"person\" includes the registered proprietor and the registered user.

5
Section 20 - Other suits to be instituted where defendants reside or cause of action arises Subject to
the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose
jurisdiction -- (a) the defendant, or each of the defendants where there are more than one, at the time
of the

commencement of the suit, actually and voluntarily resides, or carries on business, or personally works
for gain; or (b) any of the defendants, where there are more than one, at the time of the
Doctrine of honest concurrent user:

In the case of honest concurrent user or of the special circumstances,

the Registrar may permit the registration by more than one proprietor of the
trade marks which are identical or similar in respect of the same or similar
goods or services7. Concurrent user need not be continues and uninterrupted
to satisfy the requirements of section 12 or that it must of great magnitude.

In this case, the use of the similar mark by the defendant is honest and it is
concurrent in nature. Moreover the plaintiff is not having an registered trade
mark and he is not in the position to avail the benefits of registered Trade Mark
in the Act of 1999.

commencement of the suit, actually and voluntarily resides, or carries on business, or personally works
for gain, provided that in such case either the leave of the Court is given, or the defendants who do not
reside, or carry or business, or personally work for gain, as aforesaid, acquiesce in such institution ; or (c)
the cause of action, wholly or in part, arises. Explanation - A corporation shall be deemed to carry on
business at its sole or principal office in [India] or, in respect of any cause of action arising at any place
where it has also a subordinate office, at such place.

6
Order 7 Rule 11. Rejection of plaint.- The plaint shall be rejected in the following cases: (a) where it
does not disclose a cause of action; (b) where the relief claimed is undervalued, and the plaintiff, on
being required by the court to correct the valuation within a time to be fixed by the court, fails to do so;
(c) where the relief claimed is properly valued, but the plaint is written upon paper insufficiently
stamped, and the plaintiff, on being required by the court to supply the requisite stamp paper within a
time to be fixed by the Court, fails to do so; (d) where the suit appears from the statement in the plaint
to be barred by any law; (e) where it is not filed in duplicate; (f) where the plaintiff fails comply with the
provision of Rule 9. Provided that the time fixed by the court for the correction of the valuation or
supplying of the requisite stamp papers shall not be extended unless the court, for reasons to be
recorded, is satisfied that the plaintiff was prevented by any cause of an exceptional nature from
correcting the valuation or supplying the requisite stamp Page 4 of 5 lawstreetindia All rights reserved
papers, as the case may be within the time fixed by the court and that refusal to extend such time would
cause grave injustice to the plaintiff.

7
Trade Marks Act, 1999, Section 12
 ISSUE 2

Whether the issue of passing off under trade Mark law is

involved in this case

1. No Passing-off:
Closer home, Delhi High Court in Hindustan Radiators Co. V. Hindustan
Radiators Ltd8 has laid down some eight principles to be followed to determine
and for constituting an action for passing-off. It deals with the following two
principles also;
1. That there has not been much delay in the filing of the suit for injuction by
the plaintiff;
2. that the customers of the plaintiff, inter alia, include uneducated, illiterate
and unwary customers who are capable of being deceived, confused or misled.

In the passing off action, dissimilarity is required to be taken into

consideration.9 The above said two principles are not present in this case. The
customers of the Ellora Industries are well educated and they are capable
enough to be aware of the distinction between the two watch companies and
there no case of deceiving. Further, In the same tone, Halsbury (trade
Marks)10 says that a passing-off action the, degree of similarity of the name,
mark or other features concerned is important but not necessarily decisive, so
that an action for infringement of a registered trade mark may succeed on the
same facts where the passing-off action fails or vice versa11

8
AIR 1987 Del 353: (1987) I ARBLR 182
9
Thakur Balvantry Purushittaman V. Hasmukhbai Ptel, (1994), 2 Guj 1714
10 th
4 edn., 1984 vol. 48 para 187
11
National Sewing Thread Co. V. James Chadwick and bros. Ltd. 1953 AIR (SC) 357
And the using of the similar trade name Ellora is honest and genuine. Purely
there is no intention to damage the reputation and goodwill of the plaintiff and
there is no passing-off proved under the Trade Mark Act,1999

Modern Elements of Passing off

In the case Erven Warnink Vs. Townend, Lord Diplock gave the essential
modern characteristics of a passing off action. They are as follows: -
1.Misrepresentation
2. Made by a person in the course of trade
3. To prospective customers of his or ultimate consumers of goods or services
supplied by him.
4. Which is calculated to injure the business or goodwill of another trader.
5. Which causes actual damage to a business or goodwill of the trader by
whom the action is brought.
The above concept of passing off can be explained with the help of few case
laws:

IN other Defendant's case The defendant does not dispute the use of mark
Timken as trade name and trade mark in the same stylised format and colour
as that of plaintiff as well as use of domain name www.timkenservice.com for
its business. The defendant company was incorporated in 1989 when it
adopted the mark Timken. The defendant is resisting the injunction sought
by the plaintiff on the followigrounds:-

Adoption of trade mark is not dishonest - the defendant adopted the

trade mark Timken after the name of the Cat Timkey of the director of the
company.

Sub-section (1) of Section 135 of the 1999 Act reads :- Section Relief in
suits for infringement or for passing off.(1) The relief which a court may grant
in any suit for infringement or for passing off referred to in section 134
includes injunction (subject to such terms, if any, as the court thinks fit) and
at the option of the plaintiff, either damages or an account of profits, together
with or without any order for the delivery-up of the infringing labels and marks
for destruction or erasure.
 The plaintiff had actual knowledge of the existence/incorporation of the
defendant company from the database of the Registrar of Companies as the
plaintiff incorporated three subsidiary companies in India in 1996, 1998 and
2006. 3.5. The delay on the part of the plaintiff to approach this Court
amounts to laches, acquiescence and waiver. The plaintiff claims to have
knowledge of the alleged infringement in October 2008, whereas the suit has
been filed in January 2010. The defendant referred to and relied on Khoday
Distilleries Limited v. Scotch Whisky Association,12 Intel Corporation v. Anil
Hada,13 , Procter and Gamble Co. v. Satish Patel, 14Amritdhara Pharmacy v.
Satya Deo Gupta, 15, GTE Corp. v. Williams,16 Toyota Jidosha Kabushiki
Kaisha v. Deepak Mangal, 17 and Cluett Peabody and Co. Inc. v. Arrow
Apparels,18.

The defendant has been honestly and openly using the mark in India
prior to plaintiff acquiring any reputation in relation to its goods and services.
The defendant referred to and relied on Milment Oftho Industries v. Allergan, 19

The plaintiff cannot claim monopoly over the entire description of goods
covered under a class under the Trade Marks Act, 1999 and preclude others
from using the same mark for other goods. The classification of goods and
services, in various classes under the Trade Marks Act, 1999, itself,
contemplates more than one proprietor of a mark for different goods. The
defendant referred to and relied upon Vishnudas Trading v. Vazir Sultan
Tobacco Co. Ltd.,20

Section 29(4) which introduced the concept of well-known marks and

dilution by treating the use of a mark even on dissimilar class of
goods/services as an infringement.

Section 29(4) is prospective in nature and cannot prohibit acts which

were perfectly legal prior to the introduction of Section 29(4) in view of Section
159(2) and (5) of the Trade Marks Act, 1999.

Section 2(1)(zg) of the Trade Marks Act, 1999 Well-known trade mark is
defined in Section 2(1)(zg) of the Trade Marks Act which is reproduced

12
(2008) 10 SCC 723,
13
2006 (33) PTC 553
14
(1996) 64 DLT 646,
15
AIR 1963 SC 449
16
731 F.2nd 676 (10th Cir. 1984),
17
2010 (43) PTC 161
18
1998 PTC (18) (Bom.)
19
2004 (28) PTC 585 (SC)
20
(1997) 4 SCC 201.
hereunder: "Section 2. Definitions and interpretation.- (1) In this Act, unless
the context otherwise requires,-

(zg) "well - known trade mark", in relation to any goods or services,

means a mark which has become so to the substantial segment of the public
which uses such goods or receives such services that the use of such mark in
relation to other goods or service would be likely to be taken as indicating a
connection in the course of trade or rendering of services between those goods
or services and a person using the mark in relation to the first- mentioned
goods or services."

The doctrine of unclean act

Bombay High Court while dealing with a trademark infringement matter in the recent
case of M/S.J.K. Sons vs M/S.Parksons Games & Sports (decided on March 18, 2011)

This decision leads to a whole new defense in trademark infringement cases i.e. the
defense of unclean hands. If the defendant in a trademark infringement and passing off
suit can show that the plaintiffs mark itself is an imitation of another trademark then
the Plaintiff may be said to have approached the court with unclean hands and the relief
may be denied.
 PRAYER
THEREFORE, in light of the issues raised, arguments advanced, may this Honble Court

be pleased to adjudge and declare that:

1. The petitioner does have jurisdiction over this case so the Hon,ble court shall reject the plaint.

2. The Honble court has to no passing off under the the Trade Mark Law.

AND/OR

Pass any other order it may deem fit, in the interest of Justice, Equity and Good Conscience.

All of which is most humbly and respectfully submitted.