WHAT IS TRADEMARK?

According to the Indian Trademarks Act, 1999,[i] a trademark is defined as a mark, which can be represented graphically and can distinguish the goods or services of one individual from those of others.

It is a sign capable of distinguishing the goods or services of one enterprise from other enterprises.

WHAT IS TRADEMARK INFRINGEMENT?

Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999. Simply put, when an unauthorized person uses a trademark that is ‘identical’ or ‘deceptively similar’ to a registered trademark, it is known as infringement.

If the respective marks and products or services are entirely dissimilar, trademark infringement may still be established if the registered mark is well known pursuant to the Paris Convention. In the United States, a cause of action for use of a mark for such dissimilar services is called trademark dilution. In some jurisdictions a party other than the owner (e.g., a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.

Section 29 of the Indian Trademarks Act, 1999[ii] defines “Trademark infringement” as:

A registered trade mark 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, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and, in such manner, as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark 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, a mark which because of:

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

 (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

 (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

 (d) is identical with or similar to the registered trade mark; and

 (e) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(f) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(g) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

TYPES OF TRADEMARK INFRINGEMENT

There are two kinds of Trademark Infringement:[iii]

• DIRECT INFRINGEMENT.
• INDIRECT INFRINGEMENT.

REMEDIES AGAINST TRADEMARK INFRINGEMENT

Section 135[iv] of the Trademarks Act, 1999 provides with the remedies and reliefs against trademark infringement. They are:

An order of injunction may include an ex parte injunction or any interlocutory order for any of the following matters, namely:

 (a) for discovery of documents;

 (b) preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;

 (c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

The court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case:

(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark or collective mark; or

(b) where in a suit for infringement the defendant satisfies the court— (i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and (ii) that when he became aware of the existence and nature of the plaintiff’s right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or (c) where in a suit for passing off, the defendant satisfies the court— (i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark for the plaintiff was in use; and (ii) that when he became aware of the existence and nature of the plaintiff’s trade mark he forthwith ceased to use the trade mark complained of.

SOURCES

[i] The Indian Trademarks Act, 1999.

[ii] The Indian Trademarks Act, 1999 §29.

[iii] CS Himanshu Bhatia, Infringement of Trademark, TAXGURU, https://taxguru.in/ (last visited on Dec 10, 2021, 8 PM).

[iv] The Indian Trademarks Act, 1999 §135.

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