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CS Professional · Intellectual Property Rights - Law and Practice · Trademarks

Kaveri Spices, a Chennai firm, has used the mark 'KAVERI GOLD' on masala powders for 15 years but never applied for registration. A rival in Pune starts selling similar masalas under 'KAVERI GOLDEN' with a near-identical label, causing confusion. What remedy is available to Kaveri Spices under the Trade Marks Act, 1999?

Kaveri Spices can sue for passing off. Section 27 bars infringement proceedings for an unregistered mark, but it expressly preserves rights of action and remedies for passing off, so the long-standing unregistered user is still protected against the deceptively similar mark.

  1. AA suit for infringement, because long use gives the same rights as registration
  2. BA suit for passing off, because the Act does not affect rights of action for passing off of unregistered marksCorrect
  3. CNo remedy at all, because an unregistered mark gets no protection under the Act
  4. DOnly a criminal complaint, because civil suits need a registered mark

Explanation

Section 27(1) bars infringement actions for unregistered marks, but section 27(2) preserves the right of action for passing off and its remedies. Kaveri Spices can therefore sue for passing off. Option A is wrong because long use does not convert the mark into a registered one for infringement purposes.

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