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- Is the use of the word “Shyam” by the defendant Shyam Sel and Power Ltd an infringement of the registered trademark “Shyam”of Shyam Steel Industries Ltd?
- Whether the defendant is passing off his merchandise by unlawfully exploiting the reputation of the plaintiff?
Trademark has been characterized as an imprint equipped for graphical representation and which is fit for recognizing the merchandise or services of one individual from the goods and services of the others and may incorporate the shape of products, the packaging of the products, and mix of colors. Upon the registration and validation of a trademark, no individual other than the proprietor of the trademark has the exclusive right to utilize the trademark liable to specific conditions and impediments.
Trademark Infringement according to Section 29 of the Trademarks Act, 1999 is characterized as the utilization of a mark, by an authorized or unauthorized individual or by an individual who isn’t the registered owner, which is indistinguishable or misleadingly like the trademark in connection to the merchandise or services in regard of which the trademark is duly registered. It is characterized as the infringement of the exclusive right that is appended to the registered trademark without the consent of the registered proprietor or licensee. So as to have an effective case against an individual for of trademark infringement, what should be demonstrated is that the violating trademark is misleadingly comparable or indistinguishable to the trademark that is registered. Addressing the second issue, Passing off is a tort which is utilized to secure and implement unregistered trademark. Besides the protection of a trademark, Passing off additionally keeps an individual from distorting its merchandise and services from those of the other. The idea of has stretched out its ambit from products to organizations and services as well. Today it is even connected to numerous types of unfair competitions and trading. There are three components of passing off famously referred to as the classical trinity. These incorporate Misrepresentation, Reputation, and damage of good will. Following are the basic theories of passing off:
- Made by an individual over the span of trade to imminent or ultimate buyers of merchandise and services To harm the good will or business of the other individual
- It inflicts genuine harm upon the individual by whom the activity is realized.
The Court expressed that in a suit of alleged trademark infringement, it is first to be decided whether the trademark of the defendant is indistinguishable with the registered trademark of the plaintiff. If it is observed to be indistinguishable, no further inquiry emerges, and it must be held that there was trademark infringement.
In the case of Shyam Steel Industries Ltd v. Shyam Sel and Power Ltd, both the plaintiff and the defendant are in the manufacturing and selling business of TMT bars. At the close of 2018, the defendant began to use the word “Shyam” on the packaging material of the TMT bars. The plaintiff alleged that the defendant had done this to exploit the reputation of the plaintiff’s business, because the plaintiff had been using this word “Shyam” since the year 1950. The plaintiff also alleged trademark infringement against the defendant for the use of the word “Shyam” on the packaging wrapper which is a registered trademark of the plaintiff.
Countering the allegation of the plaintiff, the defendant claimed honest adoption of the trademark “Shyam” and also put forth that they had been using the same trademark for a long time now thus making it a part of the business name of the defendant company. Besides, “Shyam” is a religious name that can be adopted by anyone, and therefore no particular individual or company can have a monopoly over the word “Shyam”.
The case is still pending in Court, but in my opinion, the defendant should not be injuncted against teh use of the word “Shyam” in accordance to the logical and valid arguments given by the defendant against the allegations of the plaintiff.
Author: Sramana Mittra, LLB student from Rajiv Gandhi School Of Intellectual Property Law, IIT Kharagpur, Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at email@example.com
 Supreme Court of India Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited on 26 March, 2001
 Reckitt and Coleman Properties Ltd v Borden Inc: HL 1990
- 1 WLR 491,  RPC 341,  UKHL 12
 James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.
National Sewing Thread Co. Ltd vs James Chadwick & Bros. Ltd.(J.& P. … on 7 May, 1953 1953 AIR 357, 1953 SCR 1028