Trade and Merchandise Marks Act, 1958

The American Home Products Corporation (the appellant) applied in 1958 to register the trademark ‘Dristan’ in India, claiming it would be used by the appellant. In fact, the appellant intended the mark to be used in India by its Indian associate, Geoffrey Manners & Co., which would become a registered user under a tech…

Vishwa Mitter, a dealer and constituted attorney of the owners of a registered trademark for beedies, filed a criminal complaint before a Sub‑Divisional Magistrate alleging offences under Sections 78 and 79 of the Trade and Merchandise Marks Act, 1958 and Section 420 of the IPC against several respondents. The magistra…

The plaintiffs, Whirlpool Corporation and its Indian joint‑venture TVS Whirlpool Ltd., claimed prior use and trans‑border reputation of the word mark "Whirlpool" and alleged that the defendants, trustees of Chinar Trust and related entities, had obtained a registration for the same mark in 1992 on the basis of proposed…

The Supreme Court examined a dispute over the trademark "Field Marshal" where the plaintiff sought injunction against the defendants for alleged infringement. The defendants challenged the validity of the plaintiff's trademark and filed rectification applications under the Trade and Merchandise Marks Act, 1958. The key…

The plaintiff, Paragon Rubber Industries, filed a suit in the District Court of Kottayam seeking relief under the Copyright Act, 1957 and the Trade and Merchandise Marks Act, 1958. The defendants challenged the suit's territorial jurisdiction, arguing that the court lacked jurisdiction under the 1958 Act. The trial cou…

Ramdev Food Products Pvt. Ltd., the registered proprietor of the trademark "Ramdev", sued its former family partners who were operating under the name "Ramdev Masala" for infringing its mark by manufacturing and selling spices under that name. The parties had earlier entered into a user agreement and a Memorandum of Un…

The plaintiffs, an unregistered partnership firm, sued the defendants for permanent injunction and damages alleging infringement of their registered trademark. The defendants moved to dismiss the suit under Order 7 Rule 11, arguing that Section 69(2) of the Partnership Act, 1932 barred any action by an unregistered fir…

The appellant, who had been using the trademark KUNDAN for his cable business since 1980, filed an injunction suit against the respondent for using the same mark. While the suit was pending, the respondent obtained registration of the mark in 1995. The appellant then filed a rectification application under Sections 45,…

Shalimar Chemical Works Ltd., the owner of the registered trade mark "Shalimar", sued Sureendra Oil & Dal Mills for infringement and sought a permanent injunction. The trial court admitted only xerox copies of the trade mark registration certificates as exhibits, marked them subject to objection, and dismissed the suit…

Khoday Distilleries Ltd (now Khoday India Ltd) manufactured whisky under the mark 'Peter Scot' and obtained registration in 1968. The Scotch Whisky Association and two respondents learned of the registration in 1974 but only filed an application for rectification in 1986, alleging that the mark was not distinctive and …

Whirlpool Corporation, a US company, had its "WHIRLPOOL" trademark registered in India in 1957 and renewed twice, but it lapsed after 1977. The Chinar Trust later obtained registration of the same mark and began using it, prompting Whirlpool to file a passing‑off suit and a rectification petition. While the suit was pe…

Cadila Health Care Ltd. (appellant) and Cadila Pharmaceuticals Ltd. (respondent) are successor companies of the former Cadila Group, each manufacturing drugs for cerebral malaria under the brand names 'Falcigo' and 'Falcitab' respectively. The appellant sought an injunction on the ground that the similarity of the two …

Satnam Overseas applied to the Registrar of Trademarks for rectification of the registration of the mark “KOHINOOR” (class 30, rice) on the ground that the respondent, Sant Ram & Co., had not used the mark for more than five years. The Registrar limited the respondent’s use to a few cities in Uttar Pradesh, which was l…

The appellants, licensees of arrack shops, were convicted under Section 57A(iii) of the Kerala Abkari Act, 1967 for selling liquor adulterated with methanol. Samples taken from their godowns revealed the presence of the noxious substance, and the prosecution argued that the licencees had either mixed or permitted the m…

Aphali Pharmaceuticals Ltd. manufactured an Ayurvedic product called "Ashvagandharist" which contained self‑generated alcohol but was not consumable as an ordinary alcoholic beverage. The company had previously enjoyed exemption from excise duty under item 3(i) of the Medicinal and Toilet Preparations (Excise Duties) A…

The appellant, Mis. Thukral Mechanical Works, acquired the registered trademark ‘Field Marshall’ for centrifugal pumps from Mis. Jain Industries and used it in its business. The first respondent, P.M. Diesels Pvt. Ltd., the original proprietor of the mark for diesel engines, sought removal of the mark under Section 46(…

Bengal Waterproof Ltd., holder of the registered trademark ‘Duck Back’, sued Bombay Waterproof Manufacturing Co. for infringement and passing off. The first suit (1980) was dismissed, and a second suit (1982) was filed alleging continuous infringement after the first suit. The trial court and High Court held the second…

The partnership firm V.H. Patel & Co. and its members sued former partner H.H. Patel for declaration that a retirement deed was void and for injunction against his use of three trademarks. The parties entered a consent order referring all disputes arising from the partnership agreement, retirement deed, trademark use a…

The Supreme Court, hearing United Biotech Private Ltd's application, modified its earlier judgment dated 29 November 2017 concerning the interpretation of the Trade and Merchandise Marks Act, 1958. The order substituted specific wording in paragraphs 13, 14 and 37 to correctly refer to the parties and the civil appeals…

Mis Astra Pharmaceuticals manufactured 20% dextrose injections, a drug listed in the Indian Pharmacopoeia and therefore exempt from central excise duty. The company marked its containers with the name "AP‑Astra", which the Revenue Department argued created a monogram establishing a relationship between the medicine and…

Kabushiki Kaisha Toshiba (the appellant) held a registration for the mark TOSHIBA covering washing machines and spin dryers. The Indian respondent, using the similar mark TOSIBA for electrical appliances, applied to the Registrar for rectification of the registration under sections 46 and 56 of the Trade and Merchandis…

The Supreme Court considered two appeals arising from suits alleging infringement of copyright and trade‑mark rights – one by Dhodha House (sweet‑meats) filed in the Ghaziabad district court and another by Patel Field Marshal (diesel engines) filed in the Delhi High Court. Both lower courts had held they lacked territo…

The dispute arose when Inox India Ltd filed a trademark suit alleging that Cryogas Equipment Pvt Ltd and LNG Express infringed its proprietary engineering drawings and related literary works used in cryogenic semi‑trailers. LNG Express moved an application under Order VII Rule 11 of the CPC, arguing that the drawings w…

The appellant, ESKA YEF Ltd., manufactured Bifuran Supplement, Neftin‑50 and Neftin‑200 and claimed they were exempt from central excise duty as "animal feed supplements" under Item 68 of the Central Excise Tariff, relying on a 1984 notification. The Revenue argued that the products contained furazolidone, a veterinary…

Kali Aerated Water Works, a small‑scale unit manufacturing aerated water under the brand "Kalimark", applied for exemption from excise duty under Notification 1/93‑CE (as amended). The Central Excise Department denied the exemption, contending that the brand name belonged to a third party, K.P.R. Shakthivel, and that t…

Hardie Trading Ltd. (Hardie) owned the trademarks "Spartan" and "Spartan Velox" and a warrior device, which it used in India under a 1946 collaboration agreement with Addisons Paint and Chemicals Ltd. (Addisons). After the agreement lapsed, Addisons applied to delete Hardie's marks under s.46 of the Trade and Merchandi…

The Commissioner of Central Excise appealed against a judgment of the Central Excise, Customs and Gold (Control) Appellate Tribunal (CEGAT) which had allowed Mis. Grasim Industries Ltd., a subsidiary, to claim exemption under Notification No. 5/98‑CE. The subsidiary printed on its cement bags the words "Manufactured by…

The appellant, Cycle Corporation of India Ltd., sought rectification of the trade mark ‘Raleigh’ owned by the respondent, T.I. Raleigh Industries Pvt. Ltd., alleging that the proprietor had not used the mark bonafide for a continuous period of five years and that neither the respondent nor any registered user was using…

Infosys Technologies Ltd. owned the trademark "Infosys" in classes 7, 9 and 16. Jupiter Infosys Ltd., later renamed Jupiter International Ltd., filed applications under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 seeking removal/rectification of those marks on the ground of non‑use and other defects…

Mahindra & Mahindra Ltd., a long‑standing user of the registered trademark "Mahindra", sued Mahendra & Mahindra Paper Mills Ltd. for passing‑off and trademark infringement, seeking permanent and interim injunctions to stop the defendant from using the name "Mahendra & Mahendra". The Bombay High Court granted an interim…

S.M. Dyachem Ltd. (plaintiff) claimed that its registered trademark “PIKNIK” for food products was infringed by Cadbury (India) Ltd.’s use of “PICNIC” on chocolates and sought a temporary injunction. The High Court set aside the trial court’s injunction, holding that the marks differed in essential features and there w…

The respondents, Nirma Chemicals Works Ltd., owned the registered trademarks "NIRMA" and "NIMA" for soaps, detergents and other consumer items. The appellants, Bhavnesh Mohanlal Amin and others, began using the mark "NIMA" for electric flour mills (Class 7) and were served notice to cease. The respondents filed a suit …

The appellants, manufacturers of banana chips, had been using the trade mark "A-ONE" since 1986 and applied for its registration in 1999, which remained pending. The respondent filed a parallel application for registration of the same mark in 2000 and later sued the appellants for passing off. The appellants responded …

Gujarat Bottling Co. Ltd (GBC) entered into a 1993 licence agreement with Coca Cola to bottle and distribute beverages under several trade marks, which included a negative covenant prohibiting GBC from dealing in competing products during the agreement's term. A subsequent 1994 agreement, intended to register GBC as a …

Uniply Industries Ltd. and Unicorn Plywood Pvt. Ltd. both used the marks "Uniply" and "Uniboard" for plywood products. The appellant sought an ex parte temporary injunction against the respondent, which was initially granted, but the respondent later claimed prior use of the marks dating back to 1993. The trial court a…