MOOT COURT SUBMISSION

( 2018-2019)

ABC company ……………………..(petitioner)

V/S

XYZ company…………………….(respondent)

Submitted to- By-

Prenksha menia Nishad shaikh
BA,LLB 4TH YEAR

MEMORIAL ON BEHALF OF PETIONER

 BEFORE THE DISTRICT COURT
PUNE

IN THE MATTER OF

ABC COMPANY………………………………..PETITIONER

V/S

XYZ COMPANY………………………………RESPONDENT

UPON SUBMISSION TO CHIEF JUDICIAL MAGISTRATE

MEMORANDUM ON BEHALF OF THE PETITIONER

MEMORIAL ON BEHALF OF PETIONER

 TABLE OF CONTENTS

1. TABLE OF CONTENT

2. Index Of Authorities

3. Statement of Jurisdiction

4. Statement of facts

5. Statement of Issues

6. Summary of agreements

7. Arguments Advance

8. Prayers

MEMORIAL ON BEHALF OF PETIONER

 INDEX OF AUTHORITIES

Cases Referred

 M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited

 S. Syed Mohideen v. P. Sulochana Bai

 of Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors

 Reckitt & Colman Products Ltd. v. Borden Inc.[7]

 Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd.[9],

 Corn Products Refining Co. v. Shangrila Food Products Ltd.[11]

 in Laxmikant V. Patel vs. Chetanbhai Shah

 Intel Corporation v. Dhinakaran Nair and others

List of Statutes Referred

 Intellectual property rights

 Trade mark act ,1999

Websites Referred

 www.scconline.com

 www.manupatra.com

MEMORIAL ON BEHALF OF PETIONER

  www.lexisnexis.com

 www.supremecourtcases.com

STATEMENT OF JURISDICTION

The Hon’ble district court of Pune has the jurisdiction to entertain this matter
under Article 134of the Trade Marks Act of 1999.

Section 134 of the Trade Marks Act, 1999 decides where a suit can be filed for
infringement, etc. the provision under Section 134 of the Trade Marks Act, reads
as follow:

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

MEMORIAL ON BEHALF OF PETIONER

 (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.

MEMORIAL ON BEHALF OF PETIONER

 STATEMENT OF FACT

1. A petition has been filed by ABC, a registered company, located in

PuneDelhi & Bombay dated 26th November 2018 for infringement of
trademark rights of the company under sec 34 of Trade Marks Act 1999.

2. ABC company is carrying out its business since 7 years and acquired a
trust of its customers

3. One of the bet selling product of ABC company was omega + and the
company had a turnover of about 7 million last year.

4. A newly emerged company with name XYZ launched its product with
Similar name omega plus

5. XYZ company made an application for purpose of registration of

Omegha plus

6. But the company started selling its product with name Omegha
Plus even before the examination of application by the registrar
which resulted in the huge loss to the ABC company

MEMORIAL ON BEHALF OF PETIONER

 STATEMENT OF ISSUE

I. Whether the ABC company, petitioner can get protection

on its unregistered trademark product ?

II. WHETHER ABC COMPANY IS ENTITLED TO REMEDIES

FOR INFRINGMENT AND PASSING OFF AGAINST XYZ
COMPANY?

MEMORIAL ON BEHALF OF PETIONER

 Argument advanced

III. Whether the ABC company, petitioner can get protection

on its unregistered trademark product ?

 Section 34 in The Trade Marks Act, 1999

. Saving for vested rights.—Nothing in this Act shall entitle the proprietor or a
registered user of registered trade mark to interfere with or restrain the use
by any person of a trade mark identical with or nearly resembling it in
relation to goods or services in relation to which that person or a
predecessor in title of his has continuously used that trade mark from a date
prior—

(a) to the use of the first-mentioned trade mark in relation to those goods
or services be the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect

of those goods or services in the name of the proprietor of a predecessor in title
of his; whichever is the earlier, and the Registrar shall not refuse (on such use
being proved), to register the second mentioned trade mark by reason only of
the registration of the first mentioned trade mark. prior to the use of the
registered mark.

MEMORIAL ON BEHALF OF PETIONER

Rights of Prior User of Trademark
Prevails over Registered Proprietor
M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited

In this recent judgement passed by the Delhi High Court, the Court recognized the
legal principle of Prior user of a mark. The Court’s verdict in the case has
reiterated the law that prior user of a trademark will override the subsequent user
even if the subsequent user has registered the trademark.

It is a well settled principle of Trademark Law that prior use of the goods will
override the subsequent user, even though subsequent user has a registered
trademark. Thus, the rights conferred by registration of trademark is subject to the
rights of the prior user of the mark.

In a recent case the Supreme Court in the case of S. Syed Mohideen v. P.

Sulochana Bai had held that the scheme of the Act is such where rights of the
prior user are recognised superior than that of the registration and even the
registered proprietor cannot disturb interfere with the rights of the prior
user.

Statutory recognition to the aforesaid principle can be found under Section 34 of

the Trademark Act, 1999which enumerates that a registered proprietor or

MEMORIAL ON BEHALF OF PETIONER

registered user of a trademark cannot interfere with the use of any identical or
similar mark is a person has been using a mark from an earlier date.

Another recent case which establishes a similar legal proposition is the case
of Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., wherein the
Supreme Court opined that a registered proprietor of a trademark does not possess
the right to prevent use by another party of an identical mark if that use common

The benefit of section 34 is available only when continuous Prior use the benefit is
not available early by applying for registration

Hence it is submitted as mentioned under Section 34 of Trademark Act

company ABC was a Prior user carrying on its business since 7 years and
hence protection can be granted to petitioner on its unregistered Trademark
product Omega +

IV. WHETHER ABC COMPANY IS ENTITLED TO REMEDIES

FOR INFRINGMENT AND PASSING OFF AGAINST XYZ
COMPANY?

MEMORIAL ON BEHALF OF PETIONER

 Section 27 of the Act recognizes common law rights of the trademark owner
to take action against any person for passing of goods as the goods of another
person or as services provided by another person or remedies thereof. The
remedy made available under Section 27 of the Act protects the rights of
the proprietor of an unregistered trademark to register complaint
against another person for passing off his goods as goods the goods of
proprietor. An unregistered proprietor of trademark can also oppose an
application for registration on grounds as enumerated under Section 11 of the
Act[5].

Lord Oliver in the case of Reckitt & Colman Products Ltd. v. Borden
Inc.[7]enumerated three elements for a successful passing off action:

(1) Goodwill owned by a trader,

(2) Misrepresentation and

(3) Damage to goodwill.

Thus, the passing action is essentially an action in deceit where the common
law rule is that no person is entitled to carry on his or her business on pretext
that the said business is of that of another[8].

Tests in the case of passing off–

The Supreme Court in the case of

Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd.[9],

laid down the test of passing off and observed that a passing off action
depends upon the principle that nobody has a right to represent his goods as
the goods of some body. In other words a man is not to sell his goods or
services under the pretence that they are those of another person. As per Lord

MEMORIAL ON BEHALF OF PETIONER

Diplock in Erwen Warnink BV v. J.Townend & Sons[10], the modern tort of
passing off has five elements, namely

 a misrepresentation
 made by a trader in the course of trade
 to prospective customers of his or ultimate consumers of goods or
services supplied by him
 which is calculated to injure the business or goodwill of another trade
(in the sense that this is a reasonably foreseeable consequence), and
 which causes actual damage to a business or goodwill of the trader by
whom the action is brought or (in a quia timet action) will probably do
so.

Further in the case of Corn Products Refining Co. v. Shangrila Food

Products Ltd.[11], it was observed that the principle of similarity could not to
be very rigidly applied and that if it could be prima facie shown that there was a
dishonest intention on the part of the defendant in passing off goods, an
injunction should ordinarily follow and the mere delay in bringing the matter to
Court was not a ground to defeat the case of the plaintiff.

The Supreme Court in a recent case of S. Syed Mohideen v. P. Sulochana

BaI

stated that passing off right is a broader remedy than that of infringement.
This is due to the reason that the passing off doctrine operates on the
general principle that no person is entitled to represent his or her
business as business of other person. The said action in deceit is
maintainable for diverse reasons other than that of registered rights which
are allocated rights under the Act.

MEMORIAL ON BEHALF OF PETIONER

The Hon’ble supreme court uphold the similar view in Laxmikant V. Patel vs.
Chetanbhai Shah

Elements of Passing Off Action

 GOODWILL
 DESEPTIVE SIMILARITY

Remedy for infringement and passing off of

Trademark
There is two type of remedy is provided in case of infringement/passing off of
Trademark. Plaintiff has the option to initiate proceeding under any one or both
of them.

1. Civil remedies,
2. Criminal remedies

Civil Remedies
 Suit for infringement/Passing off under section 134:- Suit for
Infringement/Passing off arising out of the use by the defendant of any
trademark which is identical with or deceptively similar to the plaintiff’s
trademark, whether registered or unregistered shall be instituted in
District Court having jurisdiction to try the suit.
 Relief under Section 135:- Under Section 135(1) In a suit for
Infringement/Passing off if the court agree (on the request of plaintiff ),
can grant either:

1. Damages or

MEMORIAL ON BEHALF OF PETIONER

 2. An account of profits,

 Permanent injunction was granted in

Intel Corporation v. Dhinakaran Nair and others
In this case the plaintiff mark was Intel which was well known the defendant
started using the mark artIntel in in the court observed that the use of word
Intel by the defendant in there was with the object of showing some
connection with the mark of plaintiff Intel and to take advantage of goodwill
and reputation of the plaintiff.

Hence it is submitted that the product launched Omega Plus though being
unregistered by ABC company is been protected by the principle of passing off
where the unregistered trademark product Gets remedies of passing off by one of
the way of permanent injunction under section 134 of Trademark act.

MEMORIAL ON BEHALF OF PETIONER

 PRAYER

For going reason

It is humble request to the honorable District Court that to grant

remedies to abc company for infringement and passing off against XYZ

company on its Omega plus product by granting permanent injunction to

XYZ company on its product Omegha Plus

MEMORIAL ON BEHALF OF PETIONER

MEMORIAL ON BEHALF OF PETIONER