Infringement and passing off

A trademark is often defined as: “a word, name, symbol or device that is used in trade with
goods to indicate the source of the goods and to distinguish them from the goods of others”. A
service mark is the same as a trademark except that it identifies and distinguishes the source of a
service rather than aproduct. The terms "trademark" and "mark" are commonly used to refer to
both trademarks and service marks. Every businessman who has spent considerable amount of
money making his mark popular will try to secure it from usage by unscrupulous competitors.
Protection of trademark is important not only from the business point of view but also for the
protection of consumer from fraud and imposition. The Trademark Act of 1999, both in letter
and spirit, lays down that, while it encourages fair trade in every way and aims to foster and not
to hamper competition, it also provides that no one, especially a trader, is justified in damaging
or jeopardizing another’s business by fraud, deceit, trickery or unfair methods of any sort. This
necessary precludes the trading by one dealer upon the good name and reputation built up by
another. It has been a frequently debated question in India, whether the registration of a trade
mark confers an absolute right in respect of the trade mark to a registered proprietor, and if so,
are there any threats or legal hurdles that can threaten such a right. The rights of a registered
proprietor under the Act need to be analysed. The Act provides that the registered proprietor has
an exclusive right to the trade mark in respect of the goods for which the mark has been
registered and can obtain reliefs against those who use a similar mark. (Section 28(1) of the Act)
The Act also specifies that a person is entitled to institute proceedings to prevent the
infringement of a registered trade mark and damages. (Section 27(1) of the Act) Normally, the
following conditions have to be satisfied to initiate an action for infringement: (a) the plaintiff
must be the registered owner of the trade mark; (b) the defendant must use a mark deceptively
similar to the plaintiff’s mark; (c) such use must be in relation to the goods in respect of which
the plaintiff’s mark is registered; and (d) the use by the defendant must not be accidental, but in
the course of trade. Thus, where a registered trade mark is infringed by an unregistered mark,
and the aforesaid conditions are satisfied, the registered proprietor can obtain an order of
injunction against the infringer. (Section 29 of the Act) In addition, to protect a registered
owner’s exclusive right to use, the Act provides that a trade mark which is identical or
deceptively similar to another proprietor’s registered trade mark in respect of the same goods or
description of goods cannot be registered. (Section 12 (1) of the Act) However, there is an
exception to Section 12(1) of the Act, in case of honest or concurrent use, or use in special
circumstances, when the Registrar of Trade Marks has the discretion to permit more than one
proprietor to register identical or similar trade marks in respect of the same goods. (Section
12(3)) With regard to the hypothetical, prima facie, Company A’s interests will be protected and
Company B will not be allowed to register the same trade mark, because Company A has
registered its trade mark first and has diligently renewed it. However, Company B’s mark may
be allowed to be registered, if it can prove that it has been using its mark over a long period of
time in pursuance of honest trade and business. To counter and negate this, Company A will
have to tender evidence that Company B had knowledge of Company A, its business and its
registered mark, and leveraged this information to promote its business. Every registered
trademark has some exclusive rights attached to it; the violation of such rights without the
authorization of the trademark owner is termed as trademark infringement. Infringement occurs
when someone else uses a trademark same or similar to a registered trademark for the same or
similar goods/services. Section 29 of the Trademark Act,1999 states about the various aspects
related to infringement as given in S. 29(1) a registered trade mark is infringed by a person who,
not being a registered proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to
goods or services in respect of which the trade mark is registered and in such manner as to render
the use of the mark likely to be taken as being used as a trade mark. Other subsections describe
that in course of the use of the trademark it is said to be infringing the rights of other company
due to use of similar or identical trademark using for marketing of similar kind of Page 12 of 18
goods and services or use of identical or deceptively similar trademark for any other kind of
goods and services. It is further given in the Sub Section (9) of this section that the infringement
can also be done by the spoken use of those words as well as by their visual representation. An
action for infringement is taken in case of a registered trademark. An infringement action is a
statutory remedy and in order to establish infringement with regard to a registered trademark, it
is necessary only to establish that the infringing mark is deceptively similar to the registered
mark and no further proof is required. In an infringement suit, the use of the mark by the
defendant need not cause any injury to the plaintiff. In this context, the ingredients of Section 29
(1) are as follows:-

1. The plaintiff’s mark is registered.

2. The defendant’s mark is identical with, or deceptively similar to plaintiff’s registered mark;

3. The defendant has taken any essential feature of the mark or has taken the whole of the mark
and then made a few additions and alterations.

4. The defendant’s use of the mark is in course of the trade in respect of goods/services covered
by the registered trademark.

5. The use of the infringing mark must be printed or usual representation of the marking
advertisements, invoices or bills. Any oral use of the trademark is not infringement.

6. The use by the defendant is in such manner as to render the use of the mark likely to be taken
as being used as a trademark.

7. The defendant’s use of the mark is not by way of permitted user and accordingly unauthorised
infringing use. While the above is the general proposition of law as per Section 29 (1), the
various circumstances in which the trademark is infringed are enumerated in sub-sections 29(2)
to (9) of Section 29.