INTELLECTUAL PROPERTY RIGHTS

IN THE HONBLE SUPREME COURT OF INDIA

Case Concerning
Infringement of Trademark

PARLE PRODUCTS (P) LTD

(Appellant)
Vs.
J. P. Co., MYSORE
(Respondent)

ON SUBMISSION TO THE HONBLE SUPREME COURT OF INDIA

MEMORIAL ON BEHALF OF THE APPELLANT

ROHIT DONGRE

SUBMITTED BY:
ROLL NO- 132

BATCH-XIII

TABLE OF CONTENTS
MEMORANDUM ON BEHALF OF THE APPELLANT

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INDEX OF AUTHORITIES........................

Judicial Decisions.03

Statutes and other authorities.03

Books.03

Dictionaries...03

Websites....03

ABBREVIATIONS........04
STATEMENT OF JURISDICTION.........................................................................................05
STATEMENT OF FACTS06
ISSUES RAISED................................................................................................07
SUMMARY OF ARGUMENTS...........................................................................................................08

__________________________________________________________________
___________________
WRITTEN SUBMISSION......09-11
______________________________________________________________________________
PRAYER FOR RELIEF12

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INDEX OF AUTHORITIES
JUDICIAL DECISIONS
National Judgments
1. Corn Products Refining Co. v. Shangrila Food Products Ltd.
2. K.K. Chinna Krishna Chettiar v. Sri Ambal and Co. and Anr.
3. Roche and Co. v. Geoffrey Manners and Co. Pvt. Ltd.

STATUTORY AND OTHER AUTHORITIES

1. Trade Marks Act, 1940
2. Trade and Merchandise Marks Act, 1958.

BOOKS
1. Law Relating to Intellectual Property Rights (2nd Edition) by V.K. Ahuja.

DICTIONARIES
1.Aiyar , P. Ramanatha, The Law Lexicon, Wadhwa & Co., Nagpur, 2nd edition, Rep. 2007
2. Bakshi , M.P, The Law Lexicon, Ashoka Law House, New Delhi., Edition 2005
3. Garner Bryan, Black Law Dictionary, West Group Publications, 7th Edition.

WEBSITES
1. www.manupatra.com
2. www.indiankanoon.com

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LIST OF ABBREVIATIONS
A.C...Appeal Cases
AIR..All India Reporter
Ed...Edition
LJ...Law Journal
LR...Law Report
No.Number
Ors..Others
P..Page Number
QB...Queens Bench
SC.Supreme Court
v..versus
VolVolume
www...world wide web

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STATEMENT OF JURISDICTION

The Appellant has approached the Honble Supreme Court of India under Article
136 of the Constitution of India.

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STATEMENT OF FACTS

The Appellants are manufacturers of biscuits and confectionery and are owners of certain
registered Trademarks. One of them is the word "Gluco" used on their half pound biscuit
packets. Another registered trade mark of theirs is a wrapper with its color scheme,
general set up and entire collocation of words registered under the Trade Marks Act,
1940. This wrapper is used in connection with the sale of their biscuits known as "Parle's
Gluco Biscuits" printed on the wrapper.

The Appellants claim that they have been selling their biscuits on an extensive scale for
many years past under the said Trade mark which acquired great reputation and goodwill
among the members of the public.

In March 1961 they discovered that the Respondents were manufacturing, selling and
offering for sale biscuits in a wrapper which was deceptively similar to their registered
trademark

This Act of the Respondent Constitutes an Infringement of their Trademark Rights. In

spite of lawyer's notice the Respondent persisted in manufacturing, selling and using the
wrappers complained of with regard to their biscuits.

The Appellants filed the suit claiming injunction.

The Suit was dismissed by the Trial Court and the High Court and gave the decision in
favour of Respondent, allowing the appeal to this Honble Court

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ISSUES RAISED

Whether the Respondents Trade Mark is an Infringement of

Appellants Registered Trade Mark?

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SUMMARY OF PLEADINGS

Whether the Respondents Trade Mark is an Infringement of

Appellants Registered Trade Mark?

Yes there was Infringement of Trademark on part of the Respondent, under Section 28 and 29 of
the Trade and Merchandise Marks Act, 1958. As the Respondents' wrapper is deceptively similar
to the Appellants which was registered.

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WRITTEN PLEADINGS
CONTENTION NO-1
Whether the Respondents Trade Mark is an Infringement of
Appellants Registered Trade Mark?
Yes, The Respondents Trademark is an Infringement of Appellants Trademark.
The Appellants have been selling their biscuits on an extensive scale for many years past under
the said Trademark which acquired great Reputation and goodwill among the members of the
public.
The Appellant's marks were Registered under the Trade Marks Act, 1940 which was however
repealed by S. 136 of the Trade and Merchandise Marks Act, 1958.
Under sub-s.(2) of the Section 136 of the Trade and Merchandise Marks Act, 1958Any Registration under the Act of 1940 if in force at the commencement of the Act of 1958 was
to continue in force and have effect as if made, issued and given under the corresponding
provisions of the Act of 1958.
Under S. 21(1) of the Act of 1940The Registration of a person in the Register as proprietor of a Trademark in respect of any goods
gave to that person the, exclusive right to the use of the Trade mark in relation to those goods and
that right was to be deemed to be infringed by any person who, not being the proprietor of the
trademark or a registered user thereof using by way of the permitted use, used a mark identical
with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of
trade, in relation to any goods in respect of which it was registered.

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Under s. 28(1) of the Trade and Merchandise Marks Act, 1958The registration of a Trademark in Part A or Part B of the register gave to the registered
proprietor of the trademark the exclusive right to the use of the trade mark in relation to the
goods in respect of which the trademark was registered and to obtain relief in respect of the
infringement of the trade mark in the manner provided by the Act.
Under s. 29(1) of the Trade and Merchandise Marks Act, 1958:
"A Registered Trademark is Infringed by a person who, not being the Registered proprietor of the
Trademark or a registered user thereof using by way of permitted use, uses in the course of a
trademark which is Identical with, or Deceptively Similar to, the trade mark, in relation to any
goods in respect of which the Trademark is registered and in such manner as to render the use of
the mark likely to be taken as being used as a trade mark."
Considering whether one mark is deceptively similar to another, the broad and essential features
of the two are to be considered. They should not be placed side by side to find out if there are
any differences in the design and if so, whether they are of such character as to prevent one
design from being mistaken for the other. It would be enough if the impugned mark bears such
an overall similarity to the Registered mark as would be likely to mislead a person usually
dealing with one to accept the other if offered to him.
In this case we find that the packets are practically of the same size, the color scheme of the two
wrappers is almost the same; the design on both though not identical bears such a close
resemblance that one can easily be mistaken for the other. The essential features of both are that
there is a girl with one arm raised and carrying something in the other with a cow or cows near
her and hens or chickens in the foreground.
In the background there is a farm house with a fence. The word used "Gluco Biscuits" in one and
"Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of
similarity between the two writings.

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The Supreme Court has laid down in Corn Products Refining Co. v. Shangrila Food Products
Ltd1, which was a case of infringement, that it would be for the court to decide whether the
marks were similar. It was observed that "in deciding the question of similarity between two
marks, the marks have to be considered as a whole".
Again in K.K. Chinna Krishna Chettiar v. Sri Ambal and Co. and Anr 2, where the question of
similarity arose at the stage of opposition to the appellant's mark by the respondents (who had a
registered trademark), it was observed that: "it is for the court to decide the question on a
comparison of the competing marks as a whole. The resemblance between the two marks must
be considered with reference to the ear as well as the eye".
In Roche and Co. v. Geoffrey Manners and Co. Pvt. Ltd 3, the question of 'deceptive similarity'
was raised by the appellant (a registered trade mark holder) for removal of the respondent's trade
mark, in rectification proceedings. It was again observed in the above case that: "it is necessary
to apply both the visual and phonetic tests". "It is also important that the marks must be
compared as whole. The true test is whether the totality of the proposed trade mark is such that it
is likely to cause deception or confusion or mistake in the minds of persons accustomed to the
existing trade mark
Every Human Being who will look at one of the packets today may easily mistake the other if
shown on another day as being the same article which he had seen before. If one was not careful
enough to note the peculiar features of the wrapper of the Appellants goods, he might easily
mistake the respondent's wrapper for the appellants if shown to him some time after he had seen
the Appellants. After all, an ordinary purchaser is not gifted with the powers of observation of a
Sherlock Holmes.
Therefore from above it can be said that the Appellants Trademark was infringed by the
Respondent under Section 28 and 29 of the Trade and Merchandise Marks Act, 1958.

1 [1960]1SCR968
2 [1970]1SCR290
3 [1970]2SCR213
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Also from the above cases and submissions it can be held that the Respondents' wrapper is
deceptively similar to the Appellants which was registered.

PRAYER

Wherefore, in the light of facts of the case, issues raised, arguments advanced and authorities
cited, this Court may be pleased to adjudge and declare that:
a)
b)

There was Infringement of Appellants Trademark by the Respondent.

Grant an injunction restraining the Respondent from Selling or using in
any manner whatsoever biscuits in wrappers similar in appearance to the

c)

Registered Trademark of the appellants on their packets.

To Provide Compensation to the Appellant for the Loss occurred.

Hence it must set the earlier decision and not pass any other further order(s), as this Hon'ble
Court may deem fit and proper under the circumstances of the given case, in the interest of
equity, justice and good conscience.

All of which is respectfully submitted.

Place: New Delhi

Date: 4th April, 2016

Rohit Dongre

(On behalf of the Appellant)

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