Who must prove due cause where an identical mark of established reputation is adopted later?

The later adopter. Once the registered proprietor has established that its trademark had acquired substantial reputation and goodwill before the identical mark was adopted, the burden lies upon the adopter to establish by satisfactory evidence that the adoption was honest, bona fide, independent and with due cause. A statement that the mark was chosen arbitrarily, unsupported by any evidence connecting it with the adopter's name, business, family, place or any other independent reason, does not discharge that burden.

Trade Marks Act, 1999 — s.29(4) — Infringement of a registered trademark having a reputation in India — Dissimilar goods — Use without due cause — Unfair advantage and dilution — Dictionary word acquiring secondary meaning — Burden on the later adopter — Prior use — Passing off — Rendition of accounts — Trade Marks Act, 1999 — s.29(4) — reputation in India — dissimilar goods — Held: A registered trademark with a reputation in India is protected under Section 29(4) even against dissimilar goods, where the use is without due cause. That the goods are neither allied nor cognate is no answer to such a claim. (¶23, 31) Trade Marks Act, 1999 — s.29(4) — dictionary word — secondary meaning — Held further: An ordinary dictionary word cannot ordinarily be monopolised, but long, continuous and extensive commercial use may give it a secondary meaning. It is then exclusively associated in the minds of the purchasing public with one proprietor and is protectable. (¶25, 26) Trade Marks Act, 1999 — s.29(4) — due cause — burden on the later adopter — Held further: Once reputation is established, the burden lies on the later adopter to show adoption was honest, bona fide, independent and with due cause. A bare claim that the identical mark was chosen arbitrarily does not discharge it. (¶29, 33) Trade Marks Act, 1999 — s.29(4) — proof of actual confusion not required — relief — Held further: Section 29(4) requires no proof of actual confusion or actual damage; likelihood of unfair advantage or detriment suffices. The appeal was partly allowed with a permanent injunction, passing off and rendition of accounts being rejected for want of evidence. (¶36, 39)

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