chapter  16
11 Pages

“Denominative” use of another’s trademark can constitute prima facie “due cause” under Section 29(4) of the Indian Trade Marks Act

WithRenuka Medury

The Court stated as follows: the use of a trademark, as the object of a critical comment, or even attack, does not necessarily result in infringement. Sometimes the same mark may be used, as in Esso; sometimes it may be a parody. If the user’s intention is to focus on some activity of the trademark owners, and is “denominative”, drawing attention of the reader or viewer to the activity, such use can prima facie constitute “due cause” under Section 29, which would entitle the plaintiff to a temporary injunction, as in this case. TATA contended that the use of the TATA trademarks by Greenpeace India as part of the video game amounted to dilution by tarnishment of the “TATA” trademark, and the TATA “T” within a circle device trademark. TATA resorted to the provisions of Section 29 of the Act to support its case of tarnishment.