Do you want to know the theory of Infringement and Passing off Trademark?

Narendra Kumar

24 May, 2019

Getting the trademark after all hush and rush and then someone infringes your right is beyond bearable. Today in this article we will guide you to the theory behind Infringement and passing off trademark in India.

Infringement and Passing off of Trademark in India

1. Infringement of Trademark in India

Infringement of trademark means when the registered trademark is used by any other person who is neither permitted nor registered proprietor to use that the goods or services. Trademark infringement in India means the violation of the exclusive rights reserved to the registered proprietor under the Trademark act, 1999. The registered trademark user has the right to use the same in relation to the goods or services in respect of which the trademark is registered.

Under section 29 and 30 of the Trademark Act, 1999 the provision for the protection of a registered trademark in case of the same is infringed upon by a person not being a registered proprietor or licensee is lay down.

Now, coming to the detail explanation of section 29 of the trademark act, 1999-

Section 29 of the trademark act, 1999 provides the remedy in infringement of trademark cases. Following are the circumstances under which a mark is stated as infringed:

• The alleged infringement trademark must be either identical or deceptively similar to the registered trademark;
• The goods or services in relation to which the alleged infringement trademark is used must be specifically covered by the registration of the registered trademark
• The use of the alleged or infringed trademark must be in the course of trade, and the use must be in such a manner to render the use likely to be taken as being used as a trademark.
• When the identity with registered trademark and similarity with goods or  services covered by the registration
• When the similarity with registered trademark and identity with goods or services covered by registration; or
• When the identity with registered trademark and identity with goods or services covered by the registration.

Under the Trademark Act, the following acts would also amount to an infringement of the registered trademark:

• Use of the registered trademark as a trading name or part of the trade name dealing in same goods or services for which the registered trademark is registered; or ƒ
• Use of the trademark in advertising comes in infringement if such advertising takes unfair advantage of and is contrary to the honest practice in industrial or commercial matters, or is detrimental to its distinctive character; or against the reputation of the trademark. ƒ
• Under the Trademark Act, even oral use of the mark can constitute to the trademark infringement

Some cases to know more about Trademark Infringement-

When any trademark is used by the defendant and the mark is identical to the plaintiff’s registered trademark then it comes under the infringement of the trademark. Now, if looking at the comparison of the trademark of two parties in cases the trademark adopted by the defendant is identical to that of the plaintiff, and then there is no duty of plaintiff’s to prove the same.

However, when the two marks are not identical, and if the plaintiffs have the doubt on the mark used by the defendants, then the plaintiff would be required to establish that the mark used by the defendant is somewhere resembles the plaintiff’s registered trademark as is likely to deceive or cause the confusion in the minds of public.

The Supreme Court in the case Kaviraj Pandit Durga Dutt Case held that in an action for infringement the onus would be on the plaintiff to establish that the trademark used by the defendant in the course of registered trade is deceptively similar.

Now, you must be thinking how the plaintiff can establish that the defendant’s mark is identical or resembles the plaintiff’s mark.

So, let’s us understand this with an example-

The issue was discussed by the Delhi high court in the case of Atlas Cycle Industries Ltd vs. Hind Cycles Limited, wherein the court stated that in case of trademark infringement, the plaintiff may establish the trademark is identical with or so nearly resembles the plaintiff’s work either visually or phonetically or otherwise it may deceive or cause confusion in relation to the case.

Who can sue for Infringement?

The registered proprietorship, his legal heirs or representatives can sue for the infringement. An assignee of a registered can also sue for the infringement of the trademark. There are some cases where passing offsuit can be converted into a combined action of infringement and passing off but with the condition, the registration of the trademark is obtained before the final hearing of the passing offsuit.

1. Passing off the Trademark in India –

Passing off the trademark means when an unregistered trademark is used by the person who is not the actual owner of the trademark or registered proprietor of the goods or service of the trademark owner. In another language, the user of an unregistered trademark is barred from instituting an infringement action. However, the mark in question has become well known in India, the user of such a trademark is not without recourse and may seek a remedy by means of passing off action.

It seems quite similar with the infringement of trademark but it is a tort actionable under common law and mainly used to protect the goodwill attached with the unregistered trademark. The core purpose of the act is that one should not be benefitted from the labor of another.

Section 27 of the Trademark Act, 1999 provides that no infringement action will be initiated with respect to the unregistered trademark. However, the same recognizes the common law rights of the trademark owner to take the action against any person for passing off the trademark.

Difference between Infringement and Passing off the Trademark in India

The following are the difference between infringement and passing off the trademark in India-

• Infringement is a statutory remedy that is provided under section 28(1) of the trademark act, 1999. Under this section, the registration of a trademark is a prerequisite while passing off the common law remedy and in case of passing off the claims the registration is not required.
• Under the infringement, the plaintiff is only required to prove the deceptive similarity as there is a presumption of the mere confusion. And in case of passing off trademark, apart from proving deceptive similarity the plaintiff is also required to prove the confusion the public and the likelihood of injury to the plaintiff’s goodwill.

Remedy for the Infringement and Passing off of a Trademark

Under the act, there are two types of remedy is provided in case infringement or passing off of the trademark.  It is the discretion of the plaintiff to initiate a proceeding under any one or both of them to get the remedy. The following are the two remedy provided in case of infringement –

• Civil remedies
• Criminal remedies

Civil Remedies-

The detail explanations of the civil remedies are as follows-

• Suit for infringement or passing off under section 134 arising out of the use by the defendant of any trademark that is identical or deceptively similar to the plaintiff’s trademark irrespective of the factor whether the trademark is registered or unregistered. This shall be instituted in District court having jurisdiction to try the suit.
• Relief under section 135- in a suit for infringement or passing off if the court agree on the request of plaintiff then they can grant either –

1. Damages or
2. An account of profits

Under Section 135(2) Court can give Ex parte or interlocutory injunction order in accordance with Section 36-42 of Specific Relief Act, 1963 or Order XXXIX Rules 1 & 2 and section 151 (Inherent power of the Court) of the code of civil procedure, 1908, for discovery of documents, preserving of infringing goods, documents or restraining the   defendant from disposing Assets which cause adversely affects the plaintiff.

What are the Procedures to file a case under Civil law for Infringement?

• In case of any infringement, a suit can be filed under section 134 of the Trademark Act, 1999 in the district court. The jurisdiction of the court lays where the head office of the plaintiff is situated or where the cause of action has arisen. However, section 20 of the CPC does not apply for the purpose of the suit under 134 of trademark act, 1999.
• If the court thinks the case fit, it can allow any of the following order-
• An injunction that restrains further use of the infringing mark under Order XXXIX Rules 1 & 2 of the CPC i.e. temporary injunction or under section 36-42 of specific relief act i.e. permanent injunction.
• Damages or an account of profits
• An order for delivery up of infringing labels and marks for destruction or erasure.

This remedy can be utilized in case of any infringement as well as passing off of the trademark.

Criminal Remedies

• Any person that uses a particular trademark without the permission of the proprietorship and makes that trademark deceptively similar shall be deemed to fraud a trademark under section 102 of the trademark act, 1999. Hence, the penalty for the same is to be given under section 103 of the same act.
• The penalty under section 103:- any people who falsify the trademark or fraud applies to the goods or services any trademark shall be punishable with the imprisonment for a term that shall not be less than Rs 50,000 but which may extend to Rs 2, 00,000.
• Under section 104, if any person who helped the accused by selling, hiring or providing services of the goods, or possessing such goods for sale or any other possible way will be punished with imprisonment for a term which shall not be less than 6 months but which may extend to 6 years and with fine which shall be not less than Rs 50,000 but which may extend to Rs 2, 00,000.

Cases where a Person can Prove its Innocence-

The following are the cases where a person can prove its innocence-

• If the person has taken all the necessary precautions at the time of the alleged offense
• If the person has submitted all the information related to his power, to the prosecutor with respect to the person from whom the goods or services are obtained.
• The person had acted innocently

Under section 105, if any person commits any of the offense mentioned in section 103 and 104 he shall be punishable with imprisonment for a term which shall not be less than 1 year but which may extend to 3 years and with fine which shall be not less than Rs 1, 00,000 but which may extend to Rs 2, 00,000.

In conclusion,

We have tried to explain you all the details of Infringement and passing off trademark in India. Hope you like it.  Read our article on trademark registration to know more about Trademark Registration.