In India, trademarks are regulated by the Trademarks Act, of 1999 (the
"Act"). The Act authorizes one party to use a registered trademark exclusively
and gives another party permission to use a registered trademark in exchange for
The Act gives both registered and unlicensed trademark proprietors or owners the
right to forbid unauthorized use of their trademarks. When a third party uses
intellectual property without the owner's permission, the Act protects that
trademark owner from that use.
In contrast to registered trademarks, however, unregistered trademarks only
receive restricted legal security. In order to obtain comprehensive legal
protection for the trademark, it is preferable to file it even though the Act
does not require it. It is explained how recognized and unregistered brands are
protected by law.
What is Trademark Infringement?
Trademarks are governed by the Trademarks Act, 1999 ('Act') in India. The Act
grants a registered trademark owner an exclusive right to use it and authorizes
another entity to use it in return for a payment. The Act provides trademark
protection against third parties who use it without authorization from the
Before we get to know about what is trademark infringement, we need to
understand what is a trade mark.
A trademark includes symbols, names, words, numbers, slogans, symbols or a
combination of them all, which is used by an individual, business organization,
or any other legal entity. In other words, it is a mark that distinguishes the
goods and services of one owner from others.
A trademark infringement is the unauthorized use of a mark by an unauthorized
person, which is identical or deceptively similar to an already registered
In An Action For Infringement Of Trademark:
- the plaintiff must be the registered owner of a trademark
- the defendant must be use a mark deceptively similar to the plaintiff's
- the use must be in relation to the goods in respect of which the
plaintiff's mark is registered,
- the use by the defendant must not be accidental but in the course of
Infringement of Trade Mark:
Infringement Is A Breach Or Violation Of Another's Right.
As per Black's Law Dictionary Infringement means an act that interferes with one
of the exclusive rights of a patent, copyright, and trademark owner. According
to the Trademark Act, 'A registered trademark is infringed by a person if he
uses such registered trade mark, as his trade name or part of his trade name, or
name of his business concern or part of the name, of his business concern
dealing in goods or services in respect of which the trade mark is registered.
Infringement of trademark means use of such a mark by a person other than the
registered proprietor of the mark.
As per Trademark Act, a mark shall be deemed to be infringed mark if:
- it is found a copy of the whole registered mark with a few additions and
- the infringed mark is used in the course of trade,
- the use of the infringed mark is printed or the usual representation of
the mark in an advertisement. Any oral use of the trademark is not an
- the mark used by the other person so nearly resembles the mark of the
registered proprietor as is likely to deceive or cause confusion and in
relation to goods in respect of which it is registered.
Case Law on Infringement:
Hearst Corporation Vs Dalal Street Communication Ltd., 1996 PTR 1 (Cal)The Court held that a trade mark is infringed when person in the course of trade
uses a mark which is identical with or deceptively similar to the trademark in
relation to the goods in respect of which the trademark is registered. Use of
the mark by such person must be in a manner which is likely to be taken as being
used as a trademark.
Amritdhara Pharmacy Vs Satya Deo Gupta, AIR 1963 SC 449In the said case the test for determining the similarity in two words relevant
to an infringement action was stated by Supreme Court that: You must take the
two words. You must judge them, both by their look and by their sound. You must
consider the goods to which they are to be applied. You must consider the nature
and kind of customer who would be likely to buy those goods.
In fact you must
consider all the surrounding circumstances and you must further consider what is
likely to happen if each of those trade marks is used in normal ways as a trade
mark for the goods of the respective owners of the marks. If considering all
those circumstances, you come to the conclusion that there will be a confusion-
that is to say, not necessarily that one man will be injured and the other will
gain illicit benefit, but that there will be a confusion in the mind of the
public which will lead to confusion in the goods-then you may refuse the
registration, or rather you must refuse the registration in that case.
Difference between Infringement and Passing off:
Remedies available for trademark infringement in India
Remedies available for trademark infringement in India including an action
against infringement and passing off are as follows:
- Infringement is a statutory remedy provided under section 28(1) of The
Trademark Act, 1999 for which registration of a trademark is a
pre-requisite, while Passing off is a common law remedy and in Passing Off
claims, registration of a trademark is not required.
- Under infringement, plaintiff is only required to show deceptive
similarity, as there is presumption of confusion. In passing off, apart from
proving deceptive similarity the Plaintiff is also required to prove
confusion in public and likelihood of injury to the plaintiff's goodwill.
Period Of Limitation For Filing A Suit For Infringement Of A Trademark In
- Civil Action:
The competent Courts can be moved for grant of relief of injunction against
infringement and/or passing off.
- Criminal Proceedings:
Criminal complaints can also be filed against persons who have infringed the
trademark in addition to a civil action.
- Administrative Remedies:
Notice of opposition can be filed against trade mark applications published
in the Trade Marks Journal. Proceedings can be initiated for
rectification/cancellation of registered trademarks before the Registrar of
- Border Measures:
The Indian Customs Act 1962 confers power on the Central Government to
prohibit importation or exportation of certain goods. In exercise of the
powers conferred by that statute section, the Central Government has
prohibited the import of those goods that have applied a false trade-mark or
a false trade description. The Trade Marks Act 1999 provides that the
proprietor or a licensee of a registered trademark may give notice in
writing to the Commissioner of Customs to, prohibit the importation of any
good if the import of the said good constitutes an infringement under the
Further, it is pertinent to mention here that, as per the Limitation Act, 1963,
in India if a mark of a registered proprietor is being infringed, then a suit
for infringement can be brought against the infringer within 3 Years from the
date of infringement/misuse.
Written By: Sanskar
(BBALLB 8 Sem.)
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