No exclusivity to geometric figures

The Trademarks Act, 1999, was enacted with the objective of providing registration and better protection of marks and preventing the users of fraudulent marks from carrying on trade. While section 27(1) of the Indian Trademarks Act mandates that marks have to be registered to get protection under the provisions of the act, it also recognizes the common law remedy of passing off.

The courts have thus taken a very proactive stand when it comes to protection of trademarks and addressed issues of infringement judiciously in case of unregistered marks depending on the facts and circumstances of each case.

Infringement and passing off

In the case of Jayna Engineering Works v Ashwani Sharma & Anr a passing off remedy was sought for the infringement of the mark Jayna or Jayna Label on various grounds. Jayna Engineering Works (JEW) were registered owners of the trademark and sought an injunction restraining Ashwani Sharma and another defendant from using a deceptively similar mark, alleging both passing off and infringement of their trademark. The dispute relates to the use of the marks Jyoti and Jyoti Label, which was purported to be very similar to Jayna and Jayna Label owned by JEW.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a New Delhi-based law firm specializing in intellectual