How To Defend Similarity Under Trademark Law in India?

“A trademark is a company’s persona and identity in the marketplace.” – Dr. Kalyan C. Kankanala

In a developing country like India with a huge populace, ensuring a secure environment to individuals/creators wherein they are not only recognised but have the incentive to launch new creation. The IPR is a set of laws which ensure this protection and recognition of the property rights. Trademark is one such category, among others, which provides protection to the owners. In order to know and understand various defences which can be resorted to in the case of similarity, we shall be clear regarding few concepts. Therefore, we shall begin by looking into the definition and importance of trademark, followed by the concepts of infringement & passing-off and lastly, we shall look into what are the grounds of defence.

Part I

Concept of Trademark

According to section 2(1)(m) of the Trade Marks Act, 1999 a Mark includes “a device, brand, heading, label, ticket, name, signature, word, letter, shape of goods, packaging or combination of colours, the numeral shape of goods, packaging or combination of colours or any combination thereof.”

Furthermore, Section 2(1)(zb) defines Trademark 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.”

A trademark is considered to be an asset to the owner as it provides a layer of protection for the goods/service. It is a mark which is capable of graphical representation. It usually helps the public in identification of the goods/services and to associate it with the brand/goodwill created by the owner. Moreover, a trademark serves as a means to achieve product differentiation, can be a source of advertisement, and protects the consumers and investors from deception or confusion.

Part II

There are broadly two types of remedies conferred upon the owner of a trademark for unauthorised use by other/s. It includes an action for passing off (in the case of an unregistered trademark) and action for infringement (in case of a registered trademark). The former being a common law remedy and the latter being a statutory remedy.

Infringement

A trademark has to be registered as per the provisions laid in the Act. According to Section 29 of the Act, a registered trademark is infringed if the said trademark is used by an unregistered proprietor or licensee for commercial and business purposes. The concept of ‘‘deceptive similarity’ as enshrined under 2(1)(h) of the Act points out at the use made by the other is confusingly similar and identifies with the registered trademark (which may also be reputed) and with the goods/services.

That is to say that defence in case of infringement is only w.r.t a registered trademark of an owner where they have statutory rights attached. In such cases, the owner may commence legal proceedings against the unregistered user. It is also to be noted that in the cases of infringement, the onus of proof lies on the plaintiff. In the case Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, it was held by the Hon’ble SC that in any action for infringement the onus to establish that the trademark used by the defendant is deceptively similar to the registered mark, is on the plaintiff.

Passing-Off

Furthermore, in the cases of unregistered trademark, the only relief available to the original owners is that of passing-off. A registered and unregistered owner of a mark can initiate a passing-off if he has proof of first use, a bona fide evidence of prior adoption and continuous and uninterrupted use as the trademark. Even in this case, it is important to establish that actual deception and actual damage for any relief of passing off.

Part III

Defences

Even though trademark provides a layer of protection to the owner but the Trademark Laws in India are holistic in nature, it also gives support to the infringer in its ways. In this part, we shall look into Section 30 of the Act, and other common/broad defences shall also be outlined. Section 30 of the Act elaborately talks about/lists down two things. First, limits on the effect of registered trademark. Second, actions which do not fall under the ambit of. Hence, an infringer may be freed from his liability if his act/use is within the scope of anything mentioned in Section 30.

1. The use is with honest practices in business.
2. It is nowhere in pursuit of taking unfair advantage or proving detrimental to the distinctive character or reputation.

[Case law to refer for the above points- Kamath v Lime and Chilli Hospitality, (2015)]

1. W.r.t the use of goods/service with which the mark is associated. When it is clear that the said infringing mark indicates the type, quality and quantity, intended purpose, value, geographical origin and the time of producing goods/rendering service or other essential characteristics of goods or services.

1. The mark is used outside the scope of registration.
2. Implied consent of use. It can happen in a case wherein the use is still in continuation earlier permitted by the original proprietor which wasn’t stopped or revoked.
3. Use of the mark in relation to spare parts and accessories which does not directly deceit the original goods/services.

(Refer case law: Hawkins v Murugan (2008)

Other Defences:

1. The defence in reference to Section 34, that is of the Prior User/adoption of the mark. If it is established by the defendant that they were the prior user of the registered identical/similar trademark, it can be a good defence.
2. The existence of the trademark in common trade being there for a long time and used by many people majorly in the said trade.

(Refer Case law: Neon Laboratories v Medical Technologies (2015))

1. Invalid registration.
2. Unrelated target audience/customers.
3. Delay and laches in initiating legal action.
4. Price and product differentiation.
5. Section 12: Honest and Concurrent Use.
6. The mark being generic in nature.
7. No likelihood of confusion/deception.

[Refer case law: Wander Ltd. And Another v. Antox India P. Ltd (1990)]

This Article is Authored by Aashvi Shah, 3rd Year B.A. LL.B (Hons.) Student at Institute of Law, Nirma University.

Also Read – How To Acquire A Trademark In India?