The trademarks registered in India are increasing day by day with the rising wave of recognition about intellectual property. Infringing on a registered trademark can have a lot of legal repercussion and liability. Consequently, it’s foremost for the business person to be aware of intellectual property regulations in India to evade infringing on someone else trademark and to protect trademark belonging to him or her.
Section 29 of the Trade Marks Act describes “trademark infringement” as:
- A registered trademark is infringed by a person who, not being a registered proprietor (owner of the trademark can also be a legal entity like LLP or Company or Trust, etc.,) or a person using by way of permitted use, a mark which is identical with, or deceptively similar to, the trademark in relation to services or goods in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark.
- The registered trademark is contravened by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of:
- its identity with the registered trademark and the similarity of the goods or services covered by such registered trademark; or
- its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
- its similarity to the registered mark and the identity or similarity of the goods or services covered by such registered trademark; or
- Its distinctiveness with the registered trademark and the identity of the goods or services covered by such registered trademark is likely to cause confusion on the part of the general public, or which is likely to have a confederation with the registered trademark.
- In any case falling under clause (c) of sub-section 2 (above mentioned section), the Court shall presume that it is likely to cause confusion on the part of the public.
- A registered trademark was contravened by a person who, not being a registered owner or a person using by way of permitted use, uses in the course of trademark, a mark which:
- is identical with or similar to the registered trademark; and
- is used in relation to goods or services which are not similar to those for which the trademark is registered; and
- The registered trademark has a position in India and the use of the mark without due cause takes inequitable advantage of or is unfriendly to, the characteristic character or repute of the registered trademark.
- A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business effect or element of the name, of his business concern dealing in goods or services in respect of which the trademark is registered.
- For the purposes of this section, a person uses a registered mark, if, in particular, he:
- affixes it to goods or the packaging thereof;
- offers or exposes goods for sale, puts them on the market, or stocks them for those purposed under the registered trademark, or offers or supplies services under the registered trademark;
- imports or exports goods under the mark; or
- uses the registered trademark on business papers or in advertising.
- A registered trademark is contravened by a person who applies such registered trademark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, realized or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
- A registered trademark is infringed by any advertising of that trademark if such advertising;
- takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
- is detrimental to its distinctive character; or
- is against the reputation of the trademark.
- Where the idiosyncratic components of a registered trademark subsist of or include words, the trademark may be contravened by the spoken use of those words as well as by their visual delineation and reference in this section to the use of a mark shall be construed accordingly.
Remedy for Trademark Infringement
A Court may allow relaxation for trademark infringement or for passing off .Trademark transgression relief can be provided through an instruction, damages and destruction or an account of profits, jointly with or without any order for the deliver-up of the transgress labels and marks for demolition or deletion
Section 135 of the Trade Marks Act mentions the following relief for trademark infringement:
- The relief which Court may permit in any suit for contravention or for passing off referred to in Section 134 includes instruction at the option of the plaintiff, either damages or an account of profits, jointly with or without any order for the delivery up to the infringing labels and marks for destruction or erasure.
- The order of injunction under sub-section (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:
- for the discovery of documents;
- conserving of transgressing, documents or goods other evidence which is related to the subject-matter of the suit;
- Preventing the accused defendant from eliminating of dealing with his assets in a manner which may adversely affect the plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
- Notwithstanding anything contained in sub-section(1), the Court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case:
- wherein suit for infringement of a trademark, the infringement complained of is in relation to a certification trade mark or collective mark; or
- wherein suit for infringement the defendant satisfied the Court:
- At the time he commenced to use the trademark complained of in the suit, he was unconscious and had no reasonable ground for believing that the trademark of the plaintiff was on the register or that the plaintiff was a registered user using by way of authorized use; and
- when he became aware of the actuality and nature of the plaintiff’s right in the trademark, he immediately concludes to use the trademark in relation to the goods or services in favor of which it was registered; or
- wherein suit for passing off, the defendant satisfied the Court:
- At the time he commenced to use the trademark protested and complained of the suit he was unconscious and had no reasonable ground for believing that the trademark of the plaintiff was in use; and
- When he became aware of the existence and nature of the plaintiff’s trademark he immediately ceased to use the trademark complained of.