When any individual or organization uses the same or similar registered trademark of any person or organization i.e., brand name, logo, tagline, or any other part of the trademark in part or full, in their business, without any prior permission of the owner of the mark, then it amounts to infringement of the trademark. Trademark litigation enables the trademark owners to initiate suit against the infringers to obtain appropriate remedy.
Section 135 of the Trademark Act deals with trademark infringement and passing off actions of the trademark. Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
There are two types of Infringement:
The following acts when done by a person not authorized by the law to use the subjected trademark will amount to direct infringement:
Under the above-mentioned circumstances, the person is vicariously liable for the acts of the infringer. If the person has the knowledge of the infringement and decides to act upon it by contributing to the infringement to obtain any commercial or monetary gain out of it, it amounts to indirect infringement resulting in making the person vicariously liable.
It is a hybrid version of direct and indirect infringement, where a group of people is involved in the infringement.
Section 27 of the Trademarks Act, 1999 deals with the maintainability of the suit of passing off. It states that “wherever there is a possibility of marks being registered, if any third party uses the mark, then the action of passing off of goods can be maintained.” Passing off aims to protect traders against any form of unfair trade practices by using the benefits of the reputations build and acquired by a rival trader. The Law does not allow any person to misrepresent his goods and business that are the same as the goods and business.
The Law of passing off applies wherever there is a prospect of confusion between marks or get-up and where the prospective consumer can be confused about the mark’s ownership. Passing off aims to protect traders against any form of unfair trade practices by using the benefits of the reputations build and acquired by a rival trader. The Law does not allow any person to misrepresent his goods and business that are the same as the goods and business.
Elements of passing off:
Goodwill or reputation of the plaintiff in the industry
Act of misrepresentation
Damage suffered or ought to suffer if no action is taken.
Factors to be considered in Passing off claims:
Nature of the mark
Degree of resemblance or similarity
Nature of goods for which mark is being used
Goodwill and reputation of the mark
The similarity in nature, character, or performance of rival goods
Mode of purchase
Any other surrounding circumstances.
Note: It is a well-settled law that “registration of a trademark is not mandatory to constitute an act of passing off” and “registration of a trademark is no defence.” This was explained in the case of Century Traders v. Roshan Lal Duggar.
Trademark plays a vital role in the business. The importance of a trademark is known to all. Brand recognition has a direct impact on the growth of the business, hence trademark infringement is no joke and has to be taken seriously. If your mark is used by someone else without your permission, you can rightfully initiate a legal proceeding against that person for unauthorized use of the mark.
All you would have to do is send a legal notice (Cease and Desist Notice) to the person who has been using your mark. Once the notice is sent and duly acknowledged, you will have to wait for the person using the mark to reply to the notice. If they stop using the mark and abide by the notice, then there is no further process. But, if they continue to use the mark, then we can institute an infringement suit against them stating unfair business practices.
Who can file?
The Act provides civil and criminal remedies against the parties who use their trademark without authorization. According to section 134(2) of the Act, the proprietor of the trademark can file a trademark infringement suit in a court of competent jurisdiction, at his place of residence or business
According to section 134(2) of the Act, the proprietor of the trademark can file a trademark infringement suit in a court of competent jurisdiction, at his place of residence or business. There are three major categories to be considered while deciding the jurisdiction for filing trademark infringement/passing of claims:
Subject matter Jurisdiction
Injunction – Permanent and Temporary, Maraval Injunction
Delivery In and Destruction
Anton Pillar Order
Accounts of Profit
Accumulation of profit and Loss of business
The following remedies are available to the proprietors of well-known mark:
Restricting the registration of the mark
Removal of the infringing mark
How to file infringement suit claim:
The following elements are required to draft a trademark infringement claim suit:
1. The petition will start with describing the details of the trademark owner and its nature of business.
2. It will state certain self-serving statements of the proprietor of the mark like the description of business, usage claims, goodwill and reputation details of the business, etc.
3. Then it will state the details about the person who has been using the brand without permission.
4. The suit will highlight the issues of how the unauthorized use of the brand name by the infringer is done. For examples, issues like
A. Deceptive similarity
B. Likelihood of confusion
C. Breach of trust
D. Misleading public or consumers
E. Other necessary claims.
5. The suits will further have evidence related to the above-mentioned claims to support and strengthen the claims put forth.
6. It will state the financial, legal, and psychological consequences faced by the proprietor of the mark due to unauthorized use.
7. The suit will end by having a detailed prayer to the Hon’ble Court to render justice.