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From the producers of A.I.R. 2, 3 and 5 in CLAT 2019.
Legal Reasoning
IPR Practice Sheet
Passage (Q.1-Q.5): A trademark in relation to goods conveys to the general public and specifically to the
consumers about the origin and quality of those goods, thereby acquiring reputation in the course of business and
time. The law relating to protection of this form of industrial property is intricate and complex. The reputation of a
business symbolized by a mark, under common law, can be protected only by an action for Passing off. Even the
unregistered trademarks are also protected as the Act itself provides that an action of passing off remedy is
available for unregistered trademark. The action against passing off is based on the principle that “a man may not
sell his own goods under the pretense that they are the goods of another man. Passing off cases are often cases
of “deliberate and intentional misrepresentation.
Elements to be proved for passing off action:
1. Goodwill:- the Plaintiff has to establish a goodwill or reputation attached to the goods and services which he
supplies, in the mind of the purchasing public by association with the identifying get-up under which his
particular goods and services are offered to the public as distinctive specifically of his goods or services.
2. Misrepresentation: the Plaintiff must demonstrate a misrepresentation by the defendant to the public leading
or likely to lead the public to believe that the goods or services offered by him are the goods and services of
him.
3. Damage: the plaintiff must demonstrate that he suffered or in a quia timet action, that he is likely to suffer
damage by reason of the erroneous belief endangered by the defendant’s misrepresentation that the source
of the defendant’s goods or service is same as the source of those offered by the plaintiff.
The following factors to be considered in case of an action for passing off action of an unregistered trademark for
deciding the question of deceptive similarity:-
The nature of the marks, i.e, whether the marks are word marks or label marks or composite marks, i.e,
both words or label works.
The degree of resemblance between the marks, phonetically similar and hence similar in idea.
The nature of goods in respect of which they are used as trademarks.
The similarity in nature, character and performance of goods of the rival traders.
The class of purchasers who are likely to buy the goods bearing the marks they are likely to exercise in
purchasing and/or using the goods.
The mode of purchasing the goods or placing orders for the goods.
Passing off properly so called is not confined to the case of sale of goods. Passing off also restrains a defendant
from trading under a particular name though the defendant trader is not selling the goods. In passing off action, it
is immaterial whether the plaintiff and the defendant trade in the same field or trade in different products.
1. In Karnataka the plaintiff ran a sweet shop with the name of Deepam Sweets, and had been doing the trade for
over a decade, and had a pending trademark registration due. The defendant opened another sweet shop and
plaintiff’s popularity named it New Deepam Sweets. The plaintiff filed a suit against it stating that he had invested
a lot of money in establishing and popularizing his shop and the defendant owes him damages for the same.
Decide.
(a) The plaintiff can file a passing off suit against the New Deepam sweets, as all three elements of passing off
are present.
(b) The plaintiff cannot file a passing off suit as the New Deepam sweet is not associating itself to the goodwill of
deepam sweet.
(c) The plaintiff cannot file a passing off suit the defendant are not misrepresenting themselves as the previous
owners relations.
(d) The plaintiff cannot file a passing off suit as there are no damages to the plaintiff’s business because he is
still equally popular.
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2. The plaintiff is a retail store that had been established pre-independence with the name Kumran and Sons was
an old and popular place, for buying silk sarees in the city of Bengaluru. They were popular and for the longest
time the only trusted merchant of silk cloth. A few years ago another store with the name Kumar and Sons opened
up with the similar logo of plaintiff with the name written in purple ink bordered by a golden color stripe that
provided tailoring services to the people. The plaintiff seeks passing-off injunction. Will they gain it?
(a) The plaintiff will not get a remedy as their names are clearly different from each other.
(b) The plaintiff cannot get a remedy as they both trade in different goods hence the chances of confusion are
very different from each other.
(c) The plaintiff will get an injunction as the degree of resemblance between the marks, phonetically similar and
hence similar in idea.
(d) The plaintiff will get an injunction as the similarity in logo and trade may deceive the public and cause damage
to the plaintiff.
3. A company named X is a famous chocolatier and produces a variety of cocoa products and sells them in the
market under its name X. It is an old, famous and huge corporation that is branded itself as a household name
throughout the country. A small bakery in a town called Indrani, claims to make cakes and other chocolate based
confectionary using the product X and cater only within the limits of the town. They are very skilled bakers and
they make a name of themselves, even naming their dishes as X cake or X muffin. The company X files a suit of
injunction against them under the tm act. Decide if they would sustain.
(a) X can clearly claim and injunction as the bakery is ripping off from their established goodwill.
(b) X cannot claim the same, as there is no equivalent damage as the bakery is in a singular town while they are
a nationwide corporation.
(c) X will get an injunction as their product is being used to create recipe without a license so do so.
(d) X will not get an injunction as this is not dispute of trademark injunction as it deals with sale of product not
use of their name.
4. The Plaintiffs were selling tooth powder under the Trademark “Colmate” in cans bearing distinctive get-up and
color scheme. The color combination was purportedly applied by the defendants on their cans for a similar range
of products. Colmate alleged that Ansor had adopted similar trademark in terms of layout, get-up and color
combination with the obvious intention to encash upon the plaintiff’s goodwill and reputation. Will colmate
succeed?
(a) No, as trademarks are numbers and logos, not the color of the product.
(b) No as their name is completely different in name, meaning and spelling.
(c) Yes, as any form of recognition to the consumer that could deceive them and cause damage is infringing
colmate.
(d) Yes, as ansor is in the same trade as colmate and it could lead to unfair competition.
5. In the above para what is the one importance of trademark the author harps upon above any other characteristics
to decide passing off or infringement.
(a) That trademarks must establish some value addition to the business to claim damage.
(b) That trademark must show above all a repute that is solely the work of an owner.
(c) That the trademark must establish a consumer driven recognition and association.
(d) That the trademark must be beyond and above any other fraudulent nature itself to claim relief.
Passage (Q.6-Q.10): To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid
mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is
likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services
offered under the parties' marks. When a plaintiff owns a federal trademark registration on the Principal Register,
there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the
mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may
be rebutted in the court proceedings.
Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood
of confusion among consumers. The key factors considered in most cases are the degree of similarity between
the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely
to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include
how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the
range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion
caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the
plaintiff's mark.
The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those
factors, vary from case to case. And the amount and quality of the evidence involved can have a significant impact
on the outcome of an infringement lawsuit.
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In addition to claiming likelihood of confusion, a trademark owner may claim trademark "dilution," asserting that it
owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by
"blurring" the mark's distinctiveness or "tarnishing" the mark's image by connecting it to something distasteful or
objectionable-even if there is no likelihood of confusion.
An experienced trademark attorney, taking the particular circumstances of your case into consideration, should
be able to provide you with an opinion as to the validity and strength of a trademark owner's claims.
6. Plaintiff, a famous Italian designer Louis Vuitton filed a case against the defendant, a local designer from
Saharanpur India running her business in the name of Louis Vuton Designs. Defendant claims that while Plaintiff’s
brand focuses on western clothes, her company sells clothes designed only for children below the age of five
years. Decide.
(a) Plaintiff will lose her case as the audience for the products are different.
(b) Plaintiff will win because defendant copied the designs from adult clothes and used it on children’s clothes.
(c) Plaintiff will win as the act of the defendant copied the brand name causing confusion in the mind of the
customers.
(d) Plaintiff will win as defendant’s act resulted in dilution of trademark.
7. Piramal Inc, a global leader in IT services and consultancy business has decided to file a trademark infringement
case against Mr. Ramu who is a manufacturer of disinfectants and toilet cleaners using a brand name as “Piramal
Inc”. Mr. Ramu is also found of using the same logo and color combination as that of Plaintiff’s Piramal Inc. Decide.
(a) Mr. Ramu will be liable for copying the design and colour scheme of the plaintiff.
(b) Mr. Ramu will be liable for trademark infringement resulting in dilution of Plaintiff’s brand name.
(c) Mr. Ramu can plead relief based on the products falling in different categories.
(d) Mr. Ramu will be liable to pay damages to the original Piramal Inc.
8. Lakme Cosmetics India Ltd. is a leading cosmetic brand in India selling wide range of cosmetic products. In a
racket busted by Mumbai police found that the accused named Gopal and his friends were selling cheap quality
plastic eye lashes under the brand name of Lakme. Lakme Cosmetics India Ltd does not sell plastic eye lashes.
Decide.
(a) This is a case of violation of trademark.
(b) Gopal caused deception to the customers making them believe that the product belongs to Lamke Co.
(c) Gopal diluted Lamke Company’s business by selling cheap product under it brand name.
(d) All of the above.
9. A sports teacher in school was found using a dialogue “How’s the josh? ” to motivate and encourage students,
whom he was training for a national level sports event. “How’s the josh?” is a dialogue from a movie named “Uri-
The surgical strike” where the army caption uses the same dialogue to motivate army men for surgical strike. The
producers of Uri filed a case against sports teacher claiming compensation for trademark infringement. Decide.
(a) Sports teacher will win as his act doesn’t lead to commercial gains while violating one’s trademark.
(b) Sports teacher will win as a particular dialogue is not registered as a trademark, but rights are granted for a
movie in entirety.
(c) Sports teacher will win as he did not violate any trademark, rather used the dialogue in good faith to motivate
students.
(d) Sports teacher will lose as he had no permission from the producers to use the dialogue to stain students.
10. “Aloo Bhujiya” is a main product sold by Haldiram’s Inc. 30% of the company’s revenue is dependent on the sale
of Aloo Bhujiya. Another snack manufacturer Bikaji Foods Ltd launched their product called “Bikaji Aloo Bhujiya”
and soon after the demand for Bikaji’s product increased in the market. Haldiram’s filed a case of trademark
violation stating that Aloo Bhujiya is their main product and carries company’s goodwill. Bikaji Foods Ltd. argued
the aloo bhujiya is a common snack originated in Rajasthan and therefor cannot be used as a trademark for a
company.
(a) Haldiram’s claim will fail as Aloo Bhujiya is a product and not their trademark.
(b) Haldiram’s claim will fail as there is no dilution of trademark.
(c) Haldiram’s claim will fail as Aloo Bhujiya is a generic term.
(d) None of the above.
Passage (Q.11-Q.15): Copyright has evolved around the idea of “authorship” to favor claims of rights in
ascertainably original and relatively recent products of imagination. Over time, copyright law has been remarkably
flexible in defining “authorship”. For example, an object qualifying for protection may originate from an individual
(e.g., a novel) or a group (e.g., a film). Common law jurisdictions have even fictionalized the idea by introducing
the “work for hire” doctrine, whereby an employer is considered the author of the merged contributions of
employees. But there are limits – and instances beyond the ingenuity of copyright lawyers – in which not even a
fictional person can comfortably be assigned responsibility for a cultural tradition, the value of which has been
produced collectively (rather than collaboratively) by a group.
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Moreover, traditional cultural expressions have often been understood as lacking individualization, originality,
recentness and fixity. Many individual traditional cultural expressions may satisfy some or all of these
requirements, but others do not.
Article 15.4 of the Berne Convention states that:
“(a) In the case of unpublished works where the identity of the author is unknown, but where there is every ground
to presume that he is a national of a country of the Union, it shall be a matter for legislation in that country to
designate the competent authority which shall represent the author and shall be entitled to protect and enforce
his rights in the countries of the Union.
(b) Countries of the Union which make such designation under the terms of this provision shall notify the Director
General by means of a written declaration giving full information concerning the authority thus designated. The
Director General shall at once communicate this declaration to all other countries of the Union.”
Today, the traditional cultural expressions most at risk are contemporary variants of ancient musical,
choreographic, graphic and other traditions. These works are likely to be the most attractive and accessible to
would-be exploiters. Contemporary copyright law actively protects new versions of preexisting works – the modern
retelling of a Greek myth, for example – as a “derivative work”. The resulting protection is more than sufficient to
tackle most cases of piracy, and in most jurisdictions the individual interpreter’s moral right of attribution is
protected.
11. Rama works for Zee Paper Works, a monthly magazine publishing company. She wrote a critically acclaimed
article for the magazine and got it published under her name. When she decided to get it copyrighted, Zee Paper
Works is objecting to the same. As per the given passage who among the following will be considered as an
author for copyright.
(a) Rama will be the author as critically acclaimed article is written by her.
(b) Both Rama and Zee Paper Works will be considered as author.
(c) Zee Paper Works will be considered as author because Rama is hired for work by the magazine publishing
company.
(d) None of the above
12. Nandini, a trained Bharatanatyam dancer choreographed a classical dance sequence on Western musical tunes
made by Febin, a musician by profession. Nandini is planning to get her dance sequence choreographed. Advise
Febin about his rights.
(a) Febin will only get the copyright for the music piece and not the entire dance sequence.
(b) Febin will have no right as music is not copyrightable.
(c) Febin and Nandini will get joint copyright to the dance sequence as is the result of both party’s artistic work.
(d) It be should left to the registrar of copyrights to decide whom to award copyright protection.
13. Marc learnt the story of “Amrit Manthan” when he visited India in 2016. He wrote a script completely based on the
story and wishes to get his copyright registered in US. When Indian authorities got to know about this, the filed an
objection stating that “Amrit Manthan” is an age old story which is a part of Indian traditional culture of Hindu
community and therefore Marc cannot be granted rights for the same.
(a) Objection by Indian Authorities will be upheld and application made by Marc will be rejected.
(b) Objection by Indian Authorities will only be upheld if the details of the traditional cultural expression is declared
in writing to the Director General.
(c) Objection by Indian Authorities will overturned as the story is not a part of any particular traditional cultural
expression.
(d) None of the above.
14. Which among the following cannot be referred from the given passage?
(a) Copyright can be granted to single as well as co-authors.
(b) Traditional cultural expressions can be copyrighted when the author is not known.
(c) Copyright granted in one country shall be given same status in all the member countries under Berne
Convention.
(d) Traditional cultural expression where the source is not known is likely to be exploited.
15. Maheshwari community is known for its art of weaving Maheshwari fabric in India. Unknown to the public at large,
the person who introduced the weaving style, the copyright protection is granted to the community and the same
is declared to the Director General under Berne convention. H&M, an Italian clothing brand files for copyright of
Maheshwari fabric to manufacture coats. Italy is a signatory to Berne Convention. Decide.
(a) H&M will not succeed as copyright granted in the country of origin is enforced in all other member countries
to Berne Convention.
(b) H&M will not succeed as the source of Maheshwari fabric is known and it is not an original work of H&M.
(c) H&M will succeed as the author of Maheshwari fabric is unknown.
(d) Both (a) and (b)
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Passage (Q.16-Q.20): Trade secrets are intellectual property (IP) rights on confidential information which may be
sold or licensed.
In general, to qualify as a trade secret, the information must be:
commercially valuable because it is secret,
be known only to a limited group of persons, and
be subject to reasonable steps taken by the rightful holder of the information to keep it secret, including the
use of confidentiality agreements for business partners and employees.
The unauthorized acquisition, use or disclosure of such secret information in a manner contrary to honest
commercial practices by others is regarded as an unfair practice and a violation of the trade secret protection.
In general, any confidential business information which provides an enterprise a competitive edge and is unknown
to others may be protected as a trade secret. Trade secrets encompass both technical information, such as
information concerning manufacturing processes, pharmaceutical test data, designs and drawings of computer
programs, and commercial information, such as distribution methods, list of suppliers and clients, and advertising
strategies.
A trade secret may be also made up of a combination of elements, each of which by itself is in the public domain,
but where the combination, which is kept secret, provides a competitive advantage.
Other examples of information that may be protected by trade secrets include financial information, formulas and
recipes and source codes.
Depending on the legal system, the legal protection of trade secrets forms part of the general concept of protection
against unfair competition or is based on specific provisions or case law on the protection of confidential
information.
While a final determination of whether trade secret protection is violated or not depends on the circumstances of
each individual case, in general, unfair practices in respect of secret information include industrial or commercial
espionage, breach of contract and breach of confidence.
A trade secret owner, however, cannot stop others from using the same technical or commercial information, if
they acquired or developed such information independently by themselves through their own R&D, reverse
engineering or marketing analysis, etc. Since trade secrets are not made public, unlike patents, they do not provide
“defensive” protection, as being prior art. For example, if a specific process of producing Compound X has been
protected by a trade secret, someone else can obtain a patent or a utility model on the same invention, if the
inventor arrived at that invention independently.
16. Terry is attending a reception hosted at the offices of an employment agency. He wanders away from the area
where the reception is being held and walks into an office (the door was open). He leafs through the pages of a
file that was on the desk and finds out that his boss is negotiating to join one of his employer's main competitors.
Which statement is correct:
(a) Terry is not under a duty because he was invited onto the premises and did not break into any room or filing
cabinet
(b) Terry is under a duty because the employment agency was under a duty of confidence to his boss
(c) Terry is not under a duty because he gatecrashed the reception
(d) Terry is under a duty because in all the circumstances of the case, he should have realised that the file
contained confidential information
17. David and Victoria are famous celebrities. They held a birthday party for their seven year old son Wayne in the
secluded gardens of their large country house. A large number of other celebrities attended. David and Victoria
had a contract with the Daily Rag allowing it to have exclusive rights to photographs of the party. David and
Victoria were paid £250,000 each under this contract which required them to take all due precautions to prevent
any of the guests taking photographs. The Daily Rag duly sent along their photographer. Unknown to David and
Victoria, someone took a number of photographs surreptitiously which appeared the following day in the Daily
Sun. Some of the photographs were not very flattering. The Daily Rag published its photographs the following day
(earlier than it had planned). It was accepted that David and Victoria did everything possible to prevent anyone
else taking photographs. Which one of the following statements is correct in relation to any cause of action that
David and Victoria may have?
(a) None -because the Daily Rag is bound under contract to pay them as agreed
(b) David and Victoria have an action in breach of confidence against the Daily Sun, notwithstanding any other
potential causes of action
(c) None - the law of confidence does not protect commercial confidences and, in any case, publication of the
photographs in the Daily Sun was in the public interest because the photographs would be interesting to the
public
(d) David and Victoria can sue the Daily Sun for breach of contract
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18. Arcadia plc makes and sells electronic locking devices which contain computer programs and data in encrypted
form. Arcadia owns all the intellectual property rights relating to the locking devices. A rival manufacturer, Paddy's
Padlocks Ltd bought one the locking devices from a retail outlet and managed to decrypt the programs and data.
There was no express restriction on the use of the locking devices by a person buying them. Paddy's Padlocks
now makes and sells a competing locking device using the information it recovered from Arcadia's locking device.
Ignoring issues of infringement of copyright and/or database right, which one of the following statements is correct
in terms of breach of confidence?
(a) Although there are no express restrictions, the fact that the programs and data are in encrypted form sends
out a message that the information is confidential and an obligation of confidence will be imposed at law
(b) Information which is subject to other intellectual property rights, such as copyright, cannot also be protected
by the law of confidence
(c) The mere fact that the programs and data in Arcadia's locks are in encrypted form does not, per se, impose
an obligation of confidence
(d) Arcadia could have imposed an obligation of confidence on third parties buying one of its devices by attaching
an appropriate statement to the devices
19. Boaters Ltd entered into a licence agreement with MadHatter plc under which Boaters was given confidential
information about a secret process used as part of the manufacturing process for making Panama Hats. In relation
to the cost of manufacturing Panama Hats, the secret process accounted for about one-quarter of that cost. Under
the licence, which endured for three years, Boaters was to pay MadHatter a 10% royalty on the income Boaters
obtained from the sale of the Panama Hats made using the secret process. After the end of the licence agreement,
Boaters continued to use the secret process for a further two years. MadHatter sued for breach of confidence and
claimed an account of profits made by Boaters over those two years. Which one of the following is the most likely
outcome in respect of the claim for an account of profits, assuming MadHatter was successful in its claim for
breach of confidence?
(a) The account of profits would be based on the royalty MadHatter would have obtained under the licence
agreement had it still been in existence, that is, 10% of the income Boaters obtained from the sale of the
Panama Hats during those two years
(b) b. MadHatter would not be entitled to an account of profits as this is not a remedy available in breach of
confidence cases and it should have opted for an award of damages instead
(c) c. MadHatter would be entitled to all the profit made by Boaters as it could not have made the Panama Hats
it did make without using the secret process
(d) MadHatter would be entitled to one quarter of the profits made by Boaters
20. Which one of the following is a legitimate purpose of a covenant in restraint of trade in respect of an ex-employee?
(a) To protect an employer's trade secrets of which the former employee became acquainted during his
employment
(b) To protect an employer from competition by his former employee
(c) To prevent a former employee exercising his skill and experience for other employers who may be competitors
of the former employer
(d) To prevent a former employee soliciting customers of the former employer, whether or not the employee had
dealings with particular customers
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