In this article, Satyam Mishra discusses Infringement and passing off of goods under Trademark Act, 1999.

Difference between Infringement and Passing off

• Infringement is a statutory remedy provided under section 28(1) of The Trademark Act, 1999 for which registration of a trademark is a pre-requisite, while Passing off is a common law remedy and in Passing Off claims, registration of a trademark is not required.
• Under infringement, plaintiff is only required to show deceptive similarity, as there is presumption of confusion. In passing off, apart from proving deceptive similarity the Plaintiff is also required to prove confusion in public and likelihood of injury to the plaintiff’s goodwill.

Legal remedies – Infringement and Passing off of trademark

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• If the trademark is registered, section 28(1) of The Trademark Act, 1999 provides a right to get relief against the infringement of trademark in accordance with the provision of the Act.
• Passing off is not specifically mentioned in the act. An infringement proceeding cannot be initiated against unregistered trademark but Section 27(2) says that a passing off proceeding can take place for an unauthorized use of an unregistered trademark.

Things considered as Infringement or Passing off of Trademark

• Trademark infringement/Passing off is the unauthorized use of a trademark or service mark on competing or related goods and services. The success of a lawsuit to stop the infringement depends on whether the defendant’s use causes a likelihood of confusion in the average consumer.
• Under Indian legislation the same is provided in Section 29. According to Section 29, a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade in any way which causes confusion in general public.
• If that mark is being used in different form of business from that in which registered trademark is being used and have some identical or similar feature, still it amounts to infringement/passing off of trademark.

Remedy for infringement and passing off of Trademark

There is two type of remedy is provided in case of infringement/passing off of Trademark. Plaintiff has the option to initiate proceeding under any one or both of them.

1. Civil remedies,
2. Criminal remedies

Civil Remedies

• Suit for infringement/Passing off under section 134:- Suit for Infringement/Passing off arising out of the use by the defendant of any trademark which is identical with or deceptively similar to the plaintiff’s trademark, whether registered or unregistered shall be instituted in District Court having jurisdiction to try the suit.
• Relief under Section 135:- Under Section 135(1) In a suit for Infringement/Passing off if the court agree (on the request of plaintiff ), can grant either:

1. Damages or
2. An account of profits,

Together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.

Under Section 135(2) Court can give Ex parte or interlocutory injunction order in accordance with Section 36-42 of Specific Relief Act, 1963 or Order XXXIX Rules 1 & 2 and section 151 (Inherent power of the Court) of the code of civil procedure, 1908, for discovery of documents, preserving of infringing goods, documents or restraining the   defendant from disposing Assets which cause adversely affects the plaintiff.

Procedure under civil law

• In the case of infringement, a suit can be filed under section 134 of Trade Mark Act, 1999 in district court. Jurisdiction for the same will be, where the head office of plaintiff is situated or where the cause of action has arisen. Section 20 of CPC does not apply for the purpose of suit under 134 of Trademark Act,1999.
• If the court thinks fit it can allow any of the following order:
  • An injunction restraining further use of the infringing mark under Order XXXIX Rules 1 & 2 of CPC ie. temporary injunction or under Section 36-42 of specific relief act i.e. permanent injunction
  • Damages or an account of profits.
  • An order for delivery-up of infringing labels and marks for destruction or erasure.
• This remedies can be taken in case of infringement as well as in the case of passing off of trademark.

Criminal remedies

• Any person who uses a particular trademark without permission of the proprietor and makes that trademark deceptively similar shall be deemed to falsify a trade mark under section 102 of Trade Mark Act, 1999. Penalty for the same is given under Section 103 of the same act.
• Penalty under Section 103:- Any person falsifies any trademark or falsely applies to goods or services any trade mark shall be punishable with imprisonment for a term which shall not be less than 6 months but which may extend to 3 years and with fine which shall not be less than Rs50,000 but which may extend to Rs2,00,000.
• According to section 104 if any person who helped the accused by selling, providing or hiring services of the such good, possessing such goods for sale or any other possible way will be punished with imprisonment for a term which shall not be less than 6 months but which may extend to 6 years and with fine which shall not be less than Rs 50,000 but which may extend to Rs 2,00,000.

Except in the case where that person can prove that

1. He had taken all necessary precautions at the time of alleged offence.
2. He gave all the information in his power, to the prosecutor with respect to the person from whom he obtained such goods or things or services.
3. He had acted innocently
4. Under Section 105 if a person commits any of the offence provided in section 103 or 104 he shall be punishable for the second and for every subsequent offence, with imprisonment for a term which shall not be less than 1 year but which may extend to 3 years and with fine which shall not be less than Rs 1,00,000 but which may extend to Rs 2,00,000. Fines and imprisonment can be reduced if court thinks it fit.

This Section does not have retrospective effect

• Under Section 111 of the Act forfeiture of goods is provided in the conviction or acquittal under Section 103 if there is no intent to defraud the plaintiff, the court convicting or acquitting him may direct the forfeiture to Government of all goods and things by means of, or in relation to, which the offence has been committed.
• Section 115(3) make offence under Section 103 cognizable and under Sub-Section 4 of Section 115, any police officer not below the Rank of DSP and equivalent may, if he is satisfied that any of the offences referred to in sub-section (3) of Section 115 has been, is being, or is likely to be, committed, search and seize without warrant the goods or things involved in committing the offence, wherever found, and all the articles so seized shall, be produced before a Judicial Magistrate of the first class or equivalent. Provided that the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved in the offence relating to trademark and shall abide by the opinion so obtained.

Procedure under Criminal law

• A case filed under 103 is cognizable so FIR can be filed under section 154 CrPC if the police officer refuses to register a FIR the person can file complain before the magistrate under section 156(3) CrPC in accordance with the provision procedure laid down in Section 190 CrPC.
• Upon registering the FIR or on the order of magistrate (as the case may be) the investigation will be initiated and conducted by the police officer which include search and seizure of the good with infringed trademark.
• Benefit of criminal remedy in case of infringement is that victim can initiate proceeding even against unknown persons. Sometimes it happens that the identity of the manufactures and the distributors of the infringing material is not known to the complainant and the same operates as an obstacle in initiation of criminal action, but under Section 93 and 94 of CrPC under which one can request for initiation of a search and seizure proceedings against known and unknown persons.