Infringement action is based on invasion of the statutory right. If the same is not on the statutory right, then that would constitute passing off. In a passing-off action, the prior adoption and use of the trademark are imperative. Although Trademark Act, 1999 does not define the term passing off, the Act dealt with it under its sections 27(2), 134 (1) (c), and 135 of the Act. Passing off cases are often cases of “deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action and the absence of the intention to deceive is not a defence in an action for passing off though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. On the other hand, in pursuance of Section 2(1)(zb) of the Act, 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. It is well known and dealt with under Section 28 of the Act that once a trademark gets registered and validated, the owner of proprietary rights of that particular trademark has the exclusive authority to use the trademark. Despite if someone does so, they will call on the criminal along with civil charges as it is being a cognizable offence. This piece of writing is an attempt to elucidate infringement of Trademark in India with the help of case laws.
The law on trademarks has been pursuing its development since the industrial revolution. The large-scale production of goods and services culminated in stressing the manufacturers to have the upper hand over the competitive market economy through exhibiting their brand’s quality and goodwill. But then, how the same is possible if people couldn’t able to identify, which is the product that they’ve purchased earlier and found economical yet graded. In that regard, manufacturers began to use symbols, marks, or devices to distinguish their products from the rest of the market. Trademarks aided the manufacturers to extend their product’s market through advertisement and other promotional campaigns. While the significance of trademark was growing, on the other hand, competitors started deceitful duplicating/coping trademarks of renowned brands after realizing its concomitant benefits viz. Reputation, stamp of quality, and goodwill. The necessity to protect the trademark was addressed and led to the adoption of the law on trademark, worldwide. Consequently, the first multinational convention, the Paris Convention for the Protection of Industrial Property was adopted in 1883.
The rights conferred by the Trademark registration are exclusive to the registered proprietor of the trademark, which bestows him the right to use the trademark in relation to goods and services. However, pursuant to Section 28, such exclusive rights are limited and subject to conditions to which registration is subjected. The provision was elucidated in the following case,
N.R. Dongre v. Whirlpool Corporation
In this case, it was observed by the court that according to Section 28(1) of the Act, the registered proprietor is bestowed with an exclusive right to use the specific trademark in relation to goods yet only upon its valid registration. However, it is pertinent to note the opening sentence of Section 28(1) is ‘subject to other provision’, thereby the Act itself ascertain that the right conferred on the trader is limited and not an indefeasible right as it has been made subject to other provisions of the Act.
Furthermore, Section 27(2) of the Act went on to explain that “nothing in this Act shall be deemed to affect the right of action against any person for passing off the goods as goods of another person or the remedies in respect thereof.” Thus, it is apparent that all provisions of the Act including Section 28 come with the overriding sway of Section 27(2) of the Act. Similarly, Section 33 of this Act saves the rights of a prior user, which lays down that the Act shall not entitle an interference by a registered proprietor of the trademark on the use of the trademark by the prior user. Thus, it is comprehensible that the right created by Section 28(1) of the Act is not an absolute right and completely in the favour of a registered proprietor of a trademark as it is subservient to other provisions of the Act namely Sections 27(2), 33 so on.
Limitations on Registration
- Design or Functionality Limitation
- Fair use Limitation
- Parallel Importation
- Geographical Area Limitation
In the case of B. Kishore Jain v. Navaratna Khazana Jewellers, the respondent contended that the geographical separation enabled him to use the mark without causing inroads into the market of the applicant. By rejecting the respondent’s contention, the court held that the registrar of Trademark himself was empowered to restrict the use of the trademark with reference to the geographical location. Therefore, an artificial limitation could not then be created by the court, which would virtually amount to curtailing a right conferred upon the application by the statute.
A trademark conveys the origin and quality of the goods and products being sold to the general public and seeks to acquire a reputation in the course of business and trade. It is justifiable from the side of businessmen who are spending a considerable amount of money making their mark popular will try to secure the same. The protection has been facilitated through registration, which enables the registered proprietor to sue for infringement of the registered trademark. In general, an act of a person can be perceived as infringement if falsification of trademark has been committed. It is pertinent to note that registration confers on the proprietor a monopoly right over the use of the mark, and he can sue the infringer irrespective of the fact that the registered trademark is used or not.
Nevertheless, the proprietary rights in a trademark acquired through usage are superior to the rights that are obtained by registration under the Trade Marks Act of 1999. The act precludes the trading of one person upon the brand name created by another, though it aims to foster competition in the market, it firmly restrain one trader from jeopardizing the business of another with an ulterior fraudulent motive. This act has its trace from the common law based on England precedents, where the reputation of a business symbolized by any marks or design can be protected by the action of passing off. Registration of trademark under this Act fortifies the trademark and slight encroachment can invite the actions of infringement.
The Act also emphasizes that the prior user of the marks should be protected against the monopoly statutory right, therefore, a registered trademark would be considered as not holding any meaning unless it is being used in relation to goods. In other words, if there are no goods to offer, then there is no use of trademark i.e. nonuse of a trademark even it is a registered one, which results in its death.
The Act clarifies that an infringement action is not primarily on reputation but trademark. Withal, since the infringer is extremely dishonest as he has copied the mark, he is left with no defence options but to bear the legal ramifications unless he is capable of producing the prima facie evidence of priority in use.
‘Registration does not create a Trademark; a trademark is created by usage and protected by registration’
However, by the virtue of Section 28 and 29, the registered proprietor gets a right to sue any rival trader if, inter alia, there is any use of an identical or similar mark in respect of identical or similar goods and services for which the mark is registered.
Forms of Trademark Infringement
Taking Substantial feature of the mark
If a trader copies the trademark of another wholly or partially or any mark resemblance, then it would constitute an infringement of the trademark. Section 28(3) addresses the circumstances, wherein two or more people are registered proprietors of trademarks having a close resemblance or identical. The provision makes it clear that the exclusive right to use of any of those trademarks shall not be deemed to have been acquired by one registrant as against the other registered owner of the Trademark. But, they have the right against the third party.
In the case of Dabur India Ltd. v. Real Drinks Pvt. Ltd, the Court stated that although the defendant has a registered for the marks REAL MANIK and REAL SODA, with the word REAL CAFE written below, it used only REAL for its beverages. Further, it has changed the font of the word “REAL” on the label, which was identified quite similar to the plaintiff’s brand name. Since the court was not satisfied with the explanation as to why the defendant has chosen to alter his writing style, it was held that the plaintiff is not precluded from restraining the defendant from using an identical mark for the same goods merely by the virtue of the defendant claiming to be registered proprietor of an identical mark for the same goods and more so when it has been determined that it uses is dishonest and likely to confuse.
The addition of extraneous matter, inconspicuous additions is infringement. If a whole or part of a registered Trademark of another has been incorporated by a person, the addition of the rest of the matter would not save him from the charge of infringement.
When a mark is copied
When there is an absolute copy of the mark by the defendant, who has made a facsimile representation of it, no further evidence is required. If marks are almost similar as to make it impossible to suppose that such marks were devised independently of each other, in absence of evidence of common origin, the court will conclude that one party copied the mark of another.
Marks likely to cause confusion
The likelihood of confusion is where the consumer is likely to be confused about the similarity in the trademarks of the two traders. In the case of Compass Publishing BV v. Compass Logistics Ltd,  it was held that if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertaking, there is a likelihood of confusion. Therefore, it constitutes an infringement.
Use of reconditioned or second article
In the case of Rolls-Royce v. Dodd, it was observed by the court that the use of the plaintiff’s mark on reconditioned goods may constitute infringement even if it is clarified that goods are not original but reconditioned.
Printing of labels
Unauthorized printing of the label constitutes infringement. If copyright subsists in labels, it will constitute an infringement of copyright as well.
Goods manufactured by a third party would constitute an infringement
When the owner of a mark gets the goods manufactured by a third party under a contract, solely for the mark, the sale of the goods bearing the mark by such a manufacturer to another person would constitute infringement.
Marks used along with other’s mark
In the case of Levi v. Shah, it was held that the use of the plaintiff’s mark along with the defendant’s name even if prominently displayed constitutes infringement.
Similar marks in medical products
If it is the case where the products under confusion are medical produce caused by similar marks of the defendant would constitute infringement, no matter whether the similarity in marks is very minimal or less.
Court held in Torrent Pharmaceutics Ltd. V. Wellcome Foundation Ltd that In case of marks that have acquired an international reputation, an action for its protection against un-authorized use will lie even if the owner of the trademark does not have any business activity in India
Not Included As Trademark Infringement
Section 30 of the Act, enumerates certain acts wherein a person cannot be considered as infringing a trademark. Such conditions can be used by the alleged infringer as defenses in suits for infringement of trademark to avoid liabilities. Those conditions are as follows,
1. When any person makes use of a trademark to indicate quality, kind, quantity, intended purpose, value, geographical origin so on.
E.g. while adjudicating a case between ‘RICH’S WHIP TOPPING’ and ‘BELLS WHIP TOPPING’, the High court of Delhi held that the word ‘WHIP TOPPING’ is indicative of the quality of the product being sold and use of which cannot be considered as infringement of the trademark.
2. When a registered trademark is registered with conditions if someone uses the mark, which is outside the scope of registration.
Let’s assume that there is a registered trademark ‘Nallan Green Apple Grocery market”. In case of use of the words ‘Green apple’ or ‘Grocery Market’ by any other trader will not amount to infringement.
- Implied consent to use the mark from the side of the original proprietor.
- Use of a registered trademark in relation to parts and accessories
- Use of two trademarks identical or similar to each other
- Use of a trademark in compliance with honest practice.
If an infringement has taken place, the right to sue rests on the proprietor of the registered trademark or his legal successor. If the aggrieved party is a deceased person, then his legal heirs can file a suit against the infringer. In other cases, the plaintiff in an infringement suit can be the joint proprietor, a foreign proprietor of a trademark registered in India when infringement occurs in India. It is pertinent to note that the third party has no locus Standi to bring the infringement suit before the competent court. However, like other suits, an infringement suit is also subjected to limitation. As per the trademark Act of 1999, the period of limitation of a suit of infringement of a trademark is three years from the date of infringement. As per Section 137 of the Act, the evidence in infringement actions would be the fact of registration of the plaintiff’s mark is to be proved by the entry on the register certified by the registrar and sealed with trademark registry. If the defendant has absolutely copied the mark and made a facsimile representation of it, no further evidence is required.
In the case of Prem Nath v. Resigtrar, the court elucidated the necessity of witness statements where the marks are not identical but deceptive in nature. In India, the infringement of a trademark is a cognizable offence i.e. the infringer will have to face criminal charges in association with civil charges. It is pertinent to note that Indian laws don’t insist that the trademark has to be registered for the institution of civil or criminal proceedings. In the case of trademark infringement, the court may award the remedies: Temporary injunction Permanent injunction Damages Account of profits (damages in the amount of the profits gained from the infringement) Destruction of goods using the infringing mark Cost of legal proceedings In the case of a criminal proceeding, the court dictates the following punishment: Imprisonment for a period, not less than six months that may extend to three years A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh.
- (Dr) T. Ramakrishna, Trademark Infringement and Deceptive Similarity, National Law School of India University, Bengaluru (Mar.2, 2022, 16: 04 PM), https://iprlawindia.org/wp-content/uploads/2021/03/Rinu-Kallan-.pdf.
- Sunil Prakash Dhadwad, Passing off and Infringement of Well-Known Trade Mark’s in India, IJLMH, Volume 1, Issue 4, https://www.ijlmh.com/wp-content/uploads/2019/03/Passing-off-and-Infringement-of-Well-Known-Trade-Mark%E2%80%99s-in-India.pdf
- Trade Mark Act, 1999, No. 47, Acts of Parliament, 1999 (India)
- V K AHUJA, INTELLECTUAL PROPERTY RIGHTS (Lexis Nexis 2022)
 Laxmikant Patel v. Chetanbhai Shah, 2002(24) PTC 1 (S.C).
 The Trade Mark Act, 1999, No. 47, Acts of Parliament, 1999.
 N.R. Dongre v. Whirlpool Corporation, AIR 1995 Delhi 300.
 B. Kishore Jain v. Navaratna Khazana Jewellers, 2008 (37) PTC 536 (Mad).
 Cluett Peabody & Co. Inc v. Arrow Apparels, 1998(18)PTC 16 (BOM).
 Dabur India Ltd. v. Real Drinks Pvt. Ltd, 2014 (57) PTC 213 (Del).
 Compass Publishing BV v. Compass Logistics Ltd, 2004, RPC 41.
 Rolls-Royce v. Dodd, 1981 FSR 517.
 Levi v. Shah, (1985) RPC 371.
 Torrent Pharmaceutics Ltd. V. Wellcome Foundation Ltd, 2001 (2) CTMR 158.
 Prem Nath v. Resigtrar, AIR 1972 Cal 261.
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