Article on Trademark Infringement

ARTICLE ON TRADEMARK INFRINGEMENT

Infringement is the violation of exclusive right granted to a registered proprietor of a trademark, in India it is governed under Section 29 of the Trademarks Act, 1999.

A trademark is said to be infringed, when a registered trademark or a trademark deceptively similar to the registered trademark is used by a person, who is neither the registered proprietor nor the licensee and/or assignee of the said trademark in relation to the goods and services for which it is registered.

Infringement may occur when one party, the “infringer”, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against the party which infringes its registration.

ACTIONS THAT AMOUNTS TO INFRINGEMENT

  1. Infringing trademark is identical to or confusingly similar to the registered trademark.
  2. Infringing trademark is identical or deceptively similar to goods and services in respect to which trademark is registered.
  3. Infringing trademark is likely to cause confusion on part of the public or have association with the registered trademark because of its identity/ similarity with goods and services or registered trademark.
  4. Infringing trademark takes unfair advantage or is detrimental to the reputation of the
    registered trademark.
  5. Any advertisement if it takes unfair advantage or detrimental to distinctive character or against reputation.
  6. By the spoken use of words which constitute distinctive elements of registered trademark as well as by their visual representation.

REMEDIES AGAINST INFRINGEMENT

  1. CIVIL REMEDIES- When instances of infringement occur, the court of competent jurisdiction, not lower than District Court can be approached for grant of interlocutory injunction, Anton Piller Orders, damages, account of profits, confiscation and destruction of goods using the infringing trademark and cost of legal proceedings. Following sections can be invoked for remedy under Trade Marks Act 1999-
    • Temporary, permanent and interim injunction, restraining further use of trade mark.
    • DamagesAccount of profits
    • Order for delivery-up of the infringing goods, labels and marks for destruction or erasure
    • Cost of legal proceedings
    • Appointment of a local commissioner which is akin to an “Anton Piller Order” for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc.
    • Restraining the infringer from disposing of or dealing with the 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.
      • (Anton Pillar Order- A court order which requires the defendant to permit the plaintiff or their legal representative to enter into the defendant’s premises to obtain the legal evidences for that particular case)
    • Suit for Infringement under Section 134 of Trade Marks Act- Suit under this section can be instituted before a District Court/High Court within the local limits of whose jurisdiction, at the time of the institution of the suit, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. As per the Act, Person includes the registered proprietor and the registered user.
    • Relief available under Section 135(1) of Trademarks Act - As per Section 135(1), reliefs which a court may usually grant in a suit for infringement u/s 134 are-
    • Relief under Section 135(2) of Trademarks Act- Court can give Ex parte or interlocutory injunction order (Interim Relief- grant of order for short term help) in accordance with Section 36- 42 of Specific Relief Act, 1963 or Order XXXIX, Rules 1 & 2 and section 151 of the code of civil procedure, 1908 for the following-

CRIMINAL REMEDIES- A Complaint may also be filed against the person infringing the trademark (the actions under civil law and criminal law can be initiated simultaneously, under the civil law proceedings, the plaintiff seeks relief for himself while under the criminal law proceedings the complainant seeks award of punishment to the infringer.) Criminal Prosecution can be obtained by following two procedures-

  1. Complaint before Magistrate- In order to initiate prosecution under the Penal provisions of the Trade Marks Act, the right holder may file a complaint before the Magistrate seeking orders for investigations under section 156 (3) Cr. P.C. and may also move an application under section 93/94 of the Cr.P.C. for issuance of General Search Warrants for affecting general search and seizure.
  2. Direct complaint before the Police- The procedure for filing a direct complaint before the Police for infringement of Trademarks is contained in section 115(4) of the Trademarks Act. The minimum level Police Officer empowered under the Act is Deputy Superintendent of Police (DSP)/Assistant Commissioner of Police (ACP). The concerned DSP/ACP is required to then seek an opinion from the Registrar of Trademark and can only then initiate an action.

Following sections can be invoked for remedy under Trade Marks Act 1999-

  1. Penalty under Section 103 of Trademarks Act- Any person falsifies any trademark or falsely applies to goods or services any trade mark shall be punishable with imprisonment for a term which shall not be less than 6 months but which may extend to 3 years and with fine which shall not be less than Rs. 50,000 but which may extend to Rs. 2,00,000.
  2. Penalty under Section 104 of Trademarks Act- if any person who helped the accused by selling, providing or hiring services of the such good, 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 not be less than Rs 50,000 but which may extend to Rs. 2,00,000.
  3. Penalty under Section 105 of Trademarks Act- if a person commits any of the offence provided in section 103 or 104, he shall be punishable for the second and for every subsequent offence, 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 not be less than Rs. 1,00,000 but which may extend to Rs. 2,00,000.

LIMITATION- The period of limitation for filing a suit for infringement of a trademark is three years from the date of infringement. Where the infringement is a continuing one, a new course of action arises every time an infringement occurs.

ADMINISTRATIVE REMEDIES- The registration of a deceptively similar trademark can also be stopped by filing the opposition within four months from date of publication. One can also apply for rectification of Register by applying for removal of deceptively similar trademark in case if it is registered.

PASSING OFF

Passing Off is a common law tort, action under this can be invoked to protect the rights in an unregistered trademark. The action in law of passing off prevents one person from misrepresenting his goods or services as that of another. In simpler terms, Section 27 of the Trademarks Act, 1999 protects the rights of the proprietor of an unregistered trademark to register complaint against another person for passing off his goods as goods of the proprietor.

ESSENTIAL ELEMENTS TO CONSIDER FOR PASSING OFF- In the case of Reckitt & Colman Products Ltd., v. Borden Inc, (1990) 1 All.ER 873, Lord Olivercourt enumerated three essentials for a passing off action-

  1. Misrepresentation
  2. Goodwill owned by a trader
  3. Damage to goodwill

DIFFERENCE BETWEEN TRADEMARK INFRINGEMENT AND PASSING OFF:

The difference between an action in passing off and trademark infringement was expounded by the Delhi High Court in the landmark case of Cadbury India Limited and Ors. v. Neeraj Food Products, 2007 (35) PTC 95 Del as follows:

  1. An action for passing off is a common law remedy whereas an action for trademark infringement is a statutory remedy.
  2. The use by the defendant of the trademark of the plaintiff is a prerequisite in the case of an action for infringement while it is not an essential feature for an action for passing off.
  3. In order to establish infringement with respect to a registered trademark, it is only required to prove that the infringing mark is same or deceptively similar to the registered mark and no more proof is required while In the case of a passing off, only proving that the marks are same or deceptively similar is not sufficient.
  4. In a passing off claim it is necessary to verify that the use of the trademark by the defendant is expected to cause injury or damage to the plaintiff’s goodwill, whereas, in an infringement suit, the use of the mark by the defendant must not cause any injury to the plaintiff.
  5. When a trademark is registered, registration is given only with respect to a particular category of goods. Protection is, therefore, provided only to these goods in infringement action whereas in a passing off action, the defendant’s goods must not be the same; it may be different.

In, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, 1965 AIR 980 the Apex court held that there are some differences between the trial for passing off and trial for infringement of a trademark. In American Home Products Corpn. Vs. Lupin Laboratories Ltd., AIR 1995 The Court held that it is well-settled law that in the infringement of a registered trademark is important to carry in mind the difference between the search for infringement and the search in passing off. In a passing off action, the courts seem to see whether there is deception whereas, in infringement matter, it is important to note that the Trademark Act gives to the owner an exclusive right to the use of the mark which will be infringed in the case of indistinguishable and/or related marks, even though there is deception, infringement can still take place.