Trademark infringement is unauthorized use of a trademark, brand or logo by a person or a company without any prior permission or consent of the registered proprietor of such trademark in a manner to cause deception, confusion or false advertising about the source of such product or services. The affected party can institute suit against such infringement before the appropriate court.
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:
1. Direct Infringement: The following acts when done by a person not authorized by the law to use the subjected trademark will amount to direct infringement:
- nauthorized use of marks identical, similar, or deceptively similar to the registered mark
- Such action must be in direct reference to the goods or services of the same category
- Use of registered trademark without appropriate license or consent of the registered owner.
- It can confuse the minds of the general public with having an association with the registered trademark.
- There is a chance for a likelihood of confusion among the public.
- If the consumer is likely to get confused between the two marks, then there is an infringement.
- Indirect infringement happens when an individual/ organization under the influence of another person infringes on a trademark, without directly infringing.
- When a person knows of third-party infringement and doesn’t act on it reasonably, it contributes to it for his benefit.
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:
1. Goodwill or reputation of the plaintiff in the industry 2. Act of misrepresentation 3. Damage suffered or ought to suffer if no action is taken.
Factors to be considered in Passing off claims:
1. Nature of the mark 2. Degree of resemblance or similarity 3. Nature of goods for which mark is being used 4. Goodwill and reputation of the mark 5. The similarity in nature, character, or 6. performance of rival goods 6. Mode of purchase 7. 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: 1. Territorial jurisdiction 2. Pecuniary jurisdiction 3. Subject matter Jurisdiction 4. Online jurisdiction
|Civil remedies – Order 20 of C.P.C and Section 135 of the Indian Trademark Act, 1999||Criminal remedies- Chapter XII of the Indian Trademark Act, 1999||Administrative remedies|
|Injunction – Permanent and Temporary, Mareva Injunction||Section 103: Imprisonment – minimum 6 months and maximum of 3 Years||opposition against a similar mark;|
|Damages||Section 104: Fine- Rupees Fifty Thousand and can be extended upto Rupees Two Lakhs.||rectification of a registered mark|
|Delivery In and Destruction||Search and Seizure||recordable with Customs to prevent the import or export of goods bearing the infringed trademark|
|Anton Pillar Order|
|Accounts of Profit|
The following remedies are available to the proprietors of well-known mark:
- Restricting the registration of the mark
- Removal of the infringing mark
- Punitive damages
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 consumer 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.