Trade mark is a part of Intellectual Property Right. A trademark incorporates
any word, name, symbol, or device, or any combination, utilized, or planned to
be utilized, in commerce to recognize and distinguish the goods of one
manufacturer or seller from goods manufactured or sold by others, and to
demonstrate the source of the goods. Trademark is a mark or symbol which is
capable of recognizing the goods or services of one from those of others.
Owner of Trademark:
Trademark gives protection to the owner of the mark by assuring the exclusive
rights to use in to distinguish the goods or services or authorize another to
utilize in return of payment. It works like a weapon in the hand of enlisted
owner or registered proprietor of the mark to prevent different traders from
unlawful utilization of the mark of the registered owner. Under section 28 of
the Act, the registration of a trade mark will provide to the registered owner
of the trademark, the exclusive right to the utilization of the mark according
to the goods in regard of which the mark is registered and to get help in regard
of the trademark as provided under the Act.
The owner of an trade mark has a privilege to file a suit for infringement of
his right and obtain:
- Account of profits
Registration of Trademark:
According to section 18 (1) of the Trade mark Act, 1999, any individual claiming
to be the owner of a trademark utilized or proposed to be utilized by him may
apply writing in hard copy in endorsed way for registration. The application
must contain name of the mark, goods and services, class in which goods and
services fall, name and address of the applicant, period of use of the mark.
Any Person means a Partnership firm, association of persons, an organization,
regardless of incorporated or not, a Trust, Central or State government.
Steps for registration of trademark
- Search for the name, device, logo, and mark planned to be applied as
- To apply for registration of trademark.
- Assessment of application by the registry. Assessment report provided by
the registry raising objections under various sections of the Trademark Act,
- Replying to the official objections and whenever required, ask for
hearing. There is need to file evidence in support of the trademark
application by the applicant.
- Advertisement of trademark in official gazette/trademark journal with
the goal of opposition filed by the public within 3 months from the date of
- In the event that no restriction is provided, a certificate of
registration is issued for candidate. The validity period of registration
certificate is for ten years and after that the same can be renewed subject
to the payment of renewal fees.
Infringement of Trade Mark:
Infringement is a breach or violation of another's right.
According to Black's Law Dictionary Infringement implies a demonstration that
meddles with one of the exclusive privileges of a patent, copyright and
trademark proprietor. As per the Trademark Act, 'A registered trade mark is
infringed by an individual in the event that 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 regard
of which the exchange mark is enrolled. Infringement of trademark implies
utilization of such a mark by an individual other than the enlisted owner of the
According to Trademark Act, a mark will be regarded to be infringed mark if:
- it is discovered duplicate of entire registered mark with a few
additions and alterations,
- the infringed mark is utilized over the course of trade,
- the utilization of the infringed mark is printed or usual representation
of the mark in advertisement. Any oral utilization of the trademark isn't
- the mark utilized by the other individual which almost looks like the
characteristic of the registered owner as is probably going to deceive or
cause confusion and in relation to goods in respect of which it is
Protection Against Infringement of Trade Mark:
Under section 29 of the Trade mark Act, 1999, the utilization of a trade mark by
an individual who not being registered owner of the trade mark or an registered
client thereof which is indistinguishable with, or misleadingly like an
registered trademark amounts to the infringement of trademark and the registered
owner can make a move or acquire relief in respect of infringement of trademark.
In a case Supreme Court has held that in an action for infringement if the two
marks are indistinguishable, at that point the infringement made out, otherwise
in the case the Court needs to look at the two marks, the degree of resemblance
by phonetic, visual or in the basic ides as presented to the registered owner,
regardless of whether the essential features of the mark of the registered
proprietor is found to be used by other person the Court may conclude the
In an action for infringement of trademark:
- the offended party must be the registered proprietor of a trademark
- the respondent must utilize a mark misleadingly similar with the
offended party's mark.
- the utilization must be corresponding to the goods in regard of which
the offended party's marks is registered,
- the utilization by the defendant must not be accidental however over the
course of trade.
Differences Between Passing Off and Infringement:
The action for passing off is not quite the same as an infringement activity.
The activity for infringement is a statutory remedy whereas the action for
passing off is a common law remedy. Accordingly, so as to establish infringement
with regard to a registered trademark, it is essential just to set up that the
infringing mark is identical or deceptively similar to the registered mark and
no additional evidence is required. On account of a passing off action,
demonstrating that the marks are indistinguishable or misleadingly similar alone
isn't adequate. The utilization of the mark ought to probably misdirect or
Further, in a passing off action it is important to demonstrate that the
utilization of the trademark by the defendant is probably going to make injury
or harm the offended party's goodwill, though in an infringement suit, the
utilization of the marks by the respondent need not bring on any injury to the
offended party. In any case, when a trademark is registered, registration is
given only with regard to a particular category of goods. Protection is,
accordingly, provided distinctly to the goods. The defendant's goods need not be
the same, in passing off action; it may be allied or even different.
In Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. 2004 (6) SCC 145 it was
held by the Court that three elements are needed to be considered to establish
an action for passing off, which are as follows:
- The first element in an action for Passing off, the term passing off
itself alludes, that to restrain the defendant from passing off its goods
and services to the public as that of the plaintiff's. It is an action to
also safeguard the public but not only preserve the reputation of the
plaintiff. The defendant should sell its goods and offer its services in a
manner as laid down or as perceived to the public into thinking that the
defendant's goods or services are for the plaintiffs.
- That second element that must be established by the plaintiff is
misrepresentation by the defendant to the public and what has to be
established is the likelihood of confusion in the minds of the public that
the goods or services offered by the defendant are the goods or the services
of the plaintiff. In assessing the likelihood of such confusion, the court
must allow for the 'imperfect recollection of a person or ordinary memory.
- The third component of a passing off action is loss or its probability.
However, trade mark enrollment under the Act just has impact in India. To get
trade mark rights and protection in different nations it is important to utilize
and additionally register the trade mark in those nations. Trade mark protection
is regional in nature. A different registration should be made in each and every
nation where insurance is desired. To acquire protection outside India, it is
important to file applications in the concerned nations exclusively.
Furthermore, you ought to be mindful so as to apply for registration in a nation
before you begin utilization of your trade mark that nation. In certain nations,
for example, Continental Europe, China, Japan and Indonesia, the primary
individual to apply for registration will be given the rights to an trade mark,
as opposed to the individual who first uses the trade mark. In this manner,
another party could legally steal your trade mark by applying for registration
regardless of whether you were the principal individual to utilize the trade