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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 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:
Under the Trademark Act, the following acts would also amount to an infringement of the registered trademark:
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.
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.
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.
The following are the difference between infringement and passing off the trademark in India-
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 –
The detail explanations of the civil remedies are as follows-
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.
This remedy can be utilized in case of any infringement as well as passing off of the trademark.
The following are the cases where a person can prove its innocence-
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.
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.