In this blogpost, Harsha Asnani, student, NIRMA University, Ahmedabad writes about what are the laws that govern infringement of trademark and passing off in India. The author further writes about the conditions when a person can be said to infringing a trademark or committing the tort of passing off, legal actions and remedies in cases of infringement and the cases which do not come under the ambit of infringement of trademarks.

Trademark has been defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours.[1] Once a trademark gets registered and validated, no person other than the owner of proprietary rights of the trademark has the exclusive authority to use the trademark in relation and vice versa.[2] However, the exclusive right to the use of the trademark shall be subject to certain conditions and limitations.

What is infringement of Trademark

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Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is defined as a use of a mark, by an unauthorised or an authorised person or a person who is not the registered proprietor, which is identical or deceptively similar to the trademark in relation to the goods or services in respect of which the trademark is registered. In simple words, it is defined as the violation of exclusive rights that are attached to a registered trademark without the permission of the registered owner or licensees. The courts have time and again assumed that similarity of two marks and the kind of goods and services results in causing confusion in the minds of general public. They may take an undue advantage of enjoying the hard-earned reputation of the registered trademark. In order to have a successful claim against a person infringement of trademark, what needs to be proved is that the infringing trademark is deceptively similar or identical to the registered trademark.

When can a person be considered as infringing a trademark

A registered trademark is said to be infringed in case of the following situation:

1. If the mark in dispute is identical with or deceptively similar to the registered trademark and is in relation to the same or similar goods or services;
2. If the identical or similar mark can cause confusion in the minds of general public to have an association with the registered trademark
3. If the registered trademark is used as a part of trade name or business concern for goods and services in respect of which the trademark is registered
4. If the trademark is advertised and as a result it takes unfair advantage or is contrary to the honest practices or is detrimental to the distinctive character and reputation of the registered trademark.
5. If the registered trademark is used in the material meant for packaging or labelling of other goods or as a business paper without due authorization of the registered user.

According to Section 103, a person is said to be applying for a trademark wrongfully in the following conditions:

1. If falsification of trademark has been committed;
2. If any trademark has been falsely applied to goods and services;
3. Makes, possesses or disposes of any instrument with the object and purpose of falsifying a trademark;
4. Falsely indicates name of the country or place where the goods have been made or the name or address of the person who is responsible for its manufacturing;
5. Alters or tampers with the indication of origin that is applied or required to be applied to a product.

The punishment for infringement of trademarks as a result of falsification shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees. Provided that the alleged offender has not committed such falsification based on the following grounds:

1. All reasonable precautions were taken against commission of such falsification and that at the time of commission of the alleged offence there was no genuine reason to suspect the genuineness of the trademark
2. That he had acted innocently
3. On demand of the prosecutor, such necessary documents of the manner and person from whom the goods were received.

What kind of legal action and remedies can be taken against infringement of Trademarks

Whenever a trademark is said to be infringed, both civil and criminal action can be brought about. The complaining party can either file a criminal complaint. The Trademark Act, 1999 recognises infringement of trademarks as a cognizable offence i.e. a police complaint can be lodged, and the infringers can be prosecuted directly. Even the courts are empowered with the authority to suo moto conduct raids and seizure operations. On the other hand, a civil action can also be brought about against such infringements. A suit can be initiated depending on whether the trademark is registered, pending or unregistered. Since trademark infringement is a continuing offence, there is no limit on the time period for filing a suit. The court of competent jurisdiction can give the following remedies[3] if the infringements are successfully proved:

1. Injunction/stay against the use of trade mark;
2. Appropriate Damages;
3. Handing over of accounts and profits;
4. Appointment of a local commissioner by the respective court for custody or sealing of infringing material and accounts. The court can even go up to the extent of granting injunctions and directing the custom authorities to withhold the infringing material from being shipped or being disposed so that the proprietary interest of the owner gets protected;
5. An application under Order 39 rule 1 & 2 of CPC for grant of temporary or ad interim ex-parte injunction. Interim orders are generally ex-parte or after notice.

What does not amount infringement of trademarks in India?

Section 30 of the Trademarks Act, 1999 lays down the certain conditions wherein a trademark cannot be said to have been infringed. Such conditions can be used by the alleged infringer as defences in suits for infringement of trademark and hence escape his liability. These conditions include:

1. When any person makes use of a trademark in accordance with honest practices in industrial or commercial matters;
2. When such use is not in pursuit of taking undue advantage or proves to be detrimental to the distinctive character or repute of the trademark.
3. Use of a mark for the indication- Whenever any trademark is used in order to indicate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or any other characteristics of goods or services.
4. Use of mark which is outside the scope of registration- When trademarks are registered, there are certain cases where they are subjected to certain conditions and limitations. Whenever the alleged infringement is under the ambit of those limitations, then it does not constitute to be a case of infringement of trademarks.
5. Implied consent – Whenever the infringed use of a trademark is in the continuance of the permitted use by the original proprietor who has subsequently not removed or obliterated it, in such cases the use cannot be said to be an infringement.
6. Use of trademark in relation to parts and accessories
7. Use of trademarks identical or similar to each other

What is Passing Off

Passing is recognised as a common law tort which is used to protect and enforce unregistered trademarks in India. Like protection of trademarks, Passing off also prevents a person from misrepresenting its goods and services from that of the other. The concept of passing off has emerged in the recent past. It has extended its ambit from goods to businesses and services. Today it is even applied to many forms of unfair trading and competition.

There are three elements of passing off popularly known as the classical trinity. These include Reputation, Misrepresentation and damage to goodwill. Common law courts have come up with a few basic characteristics of passing off which include the following:

1. Misrepresentation
2. Made by a person in the course of trade
3. To prospective or ultimate consumers of goods and services
4. To injure the business or goodwill of the other person
5. It causes actual damage to the person by whom the action is brought about.

Whenever such a case of passing off is brought before a court of law, it generally goes to the extent of deciding issues such as firstly, nature of mark, secondly, degree of resemblance, thirdly, whether the misrepresentation has resulted into causing confusion in the minds of people and ultimately causing loss to the plaintiff, fourthly, nature of goods, fifthly, similarity in the nature, character and performance of the goods of rival mark, sixthly, class of purchasers, their education and intelligence level, seventhly, mode of purchasing and surrounding circumstances.

[1] Section 2(1)(zb), Trademarks Act, 1999.

[2] 28

[3] http://www.legalservicesindia.com/article/article/trademark-infringement-and-remedies-1740-1.html