A trademark is intended to serve the purpose of acknowledging the source or origin of goods or services to which that particular mark belongs. With the growth of globalization and e-commerce consumers started identifying their products with that of certain marks and symbols so as to distinguish these products from other similar products in the market. Over a prolonged period of usage, the products with particular marks started gaining popularity as well as recognition among consumers of goods. With advertising came the propensity to copy the well-known trademarks or adopt deceptive trademarks to enhance profits and gain unscrupulous financial gain by trading on the reputation of another trademark. Therefore with the rise of competition, the proprietors of those marks realized the need for uniform legislation to grant registered proprietor an exclusive right to use the trademark as prescribed under the law relating to trademarks.
Read Also: What is Trademark?
Infringement of trademark Act in India
Infringement of a trademark refers to the violation of exclusive rights guaranteed to the registered proprietor of that particular trademark. Trademarks Act, 1999 governs the law of trademark in India. Section 29 and Section 30 throw light on the protection of a registered trademark in case of any infringement of the same.
Section 29 of the Trademarks Act, 1999 talks about infringement of a trademark by a person who is not a registered proprietor or licensee and uses the same in the course of trade –
a) Identity with Registered mark and Similarity of Goods/Services. Firstly, A trademark which is identical to the registered trademark and there is a similarity of goods and services covered by that trademark which causes confusion to the general public.
b) A similarity with Registered mark and Identity of Goods. Secondly, A trademark which is similar to the registered trademark and there is a similarity of goods and services covered by that trademark which causes confusion to the general public.
c) Identity with Registered Trademark and identity of goods/services. Thirdly, A trademark which is similar to the registered trademark and there is a similarity in the goods and services covered by that trademark. In such cases, the court will presume that such use of the trademark will cause confusion to the general public.
d) Identity with registered trademark having a reputation. Fourthly, A trademark that is identical or similar to the registered trademark in India, having a reputation in India, even if such trademark is used in relation to the goods and services which are not similar to those for which the trademark is registered.
e) A similarity in Trade name with Registered Trademark. Fifthly, A trade name or a part of a trading name having similarity with the registered trademark concerned.
f) Application of Registered Trademark on Labelling or Packaging etc. with the knowledge that such application is without authorization. Sixthly, This occurs when a registered trademark intended to be used for labeling, packaging, business paper or advertisement is used for by a person who is not duly authorized by the Registered User or License thereof.
g) Use of Registered Trademark in Advertising, when such use takes unfair advantage, is detrimental or against the reputation of the registered trademark. Seventhly, Three conditions must be fulfilled in this regard –
i) takes unfair advantage of and is contrary to honest practices in the commercial sector; or,
ii) is detrimental to its distinctive character; or,
iii) is against the reputation of the trademark.
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What does not amount to Trademark Act in India?
Section 30 of the Trade Mark Act, 1999 provides certain conditions on which a trademark is said not to be infringed. This provision may also be used as a defense in suits to escape any sort of liability. Therefore, this stands as an important provision in the Act.
A look at Section 30
a) Use of trademark to indicate the kind/quality, quantity, etc.
When the infringed trademark is used in relation to goods or services covered by the registered trademark to indicate kind, quality, quantity, etc. of the goods or rendering of services.
b) Use of Trademark, which is outside the scope of registration.
When the registered trademark is registered subject to the limitations and the trademark is used outside the scope of registration. Therefore, in this case, a trademark is not deemed to be infringed.
c) Implied consent for use.
In this case, a person uses the trademark in relation to the goods and services for which the registered owner had once applied for, and has not subsequently removed it or impliedly consented to its use. Therefore, a trademark is said not to be infringed.
d) Use of Registered Trademark in relation to parts and accessories etc.
For instance, there is a trademark registered for product A. Such a trademark can be used in relation to parts and accessories to product B. This won’t affect the trademark of product A and thus, will not amount to trademark infringement.
e) Use of two registered trademarks identical or similar to each other.
Let’s say there are two registered trademarks ‘A’ and ‘B’ which are absolutely similar or identical to each other. Then both these trademarks won’t infringe each other’s rights with respect to the activities concerned under the trademark.
Cases and developments on Trademark Infringement –
Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories – In this case, the apex court held that in case of an infringement of a trademark, the burden of proof will lie on the plaintiff that the trademark used by him and the defendant is deceptively similar in course of trade.
James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd. – Thee apex court, in this case, stated that in any action of trademark infringement, the first thing that is necessary to find out is that whether the impugned mark of the defendant is identical to the plaintiff. If it is so, no further questions arise and the trademark will be deemed to have been infringed.
Cadbury India Limited and Ors. v. Neeraj Food Products – In this case, the Delhi High Court outlined the difference between ‘passing off’ and ‘trademark infringement.’ The court held that passing off is a common law remedy whereas trademark infringement is a statutory remedy. The liability of the plaintiff in case of passing off need not be absolute but in case of trademark infringement, it is absolute.