LAW OF TORTS

“APPLICATION OF TORT LAW IN PROTECTION OF

TRADEMARK”

Submitted to:

Assistant Professor

Prof. Twinkle Maheshwary

Submitted By:

Anushree Singh

B.B.A. L.L.B (First Year) ‘Div - D’

SAP ID: 81022100058

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 APPLICATION OF TORT LAW IN PROTECTION OF TRADEMARK

-Anushree Singh

TABLE OF CONTENTS

I. INTERIM REPORT 3

II. INTRODUCTION 5

III. CAUSE OF INFRINGEMENT OF TRADEMARK 6

IV. INFRINGEMENT OF REGISTERED TRADEMARK 7

Principles Applicable To Infringement Cases 7

V. PASSING OFF IN A TORT LAW 8

Why Passing Off Is Necessary 8

VI. TORT LIABILITY AND INTELLECTUAL PROPERTY 10

LICENSING
VII. INDIRECT INFRINGEMENT FROM A TORT LAW 11
PERSPECTIVE
VIII. CONCLUSION 12

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I. INTERIM REPORT

Introduction

A trademark is a symbol used to differentiate the goods or services of one business,

company, or organisation from those of other firms, companies, or organisations. A
trade mark is a mark that can be visually represented and that is capable of
differentiating one person's goods or services from those of others.

It may include the form of the items, their packaging, or a combination of colours. A
mark may be a device, a trademark, a label, a ticket, a signature, a phrase, a
numerical, the shape of the goods, the packaging, or any combination of these
elements.

By linking a phrase, design, form, wrapping, or other identifiable element with a firm,
trademarks assist consumers in determining the source of products and services.
Clients of a business gain an understanding of the quality and qualities of the items or
services they purchase and form expectations about them over time.

If such expectations are met, clients can establish strong brand preferences, resulting
in repeat business, a larger market reputation, and sustainable business growth. In
legal parlance, this favourable market reputation is referred to as your brand's
goodwill - and it may be rather valuable.

Aim

The overarching goal of trademark law is to avoid unfair competition by safeguarding

the use of a symbol, term, logo, slogan, design, or domain name that distinguishes a
firm's goods or services in an unmistakable manner. This collection of common-law
principles eventually protects consumers by forbidding businesses from using
trademarks that are confusingly similar to those of other businesses with greater
"brand equity" and client loyalty.

The purpose of trademark law is to avoid customer confusion and to prohibit

businesses from diluting the marks of other businesses. Dilution happens when a
similar mark has a detrimental effect on the reputation of a distinctive trademark,
regardless of whether the similar mark causes consumer misunderstanding.

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 To protect trademark users, to regulate the circumstances governing the property, and
to offer legal remedies for the enforcement of trademark rights.

The Trademark Act, 1999 empowers the police to make arrests in instances of
trademark infringement. The Act contains a comprehensive definition of the
commonly used term "infringement." The Trademark Act establishes sanctions and
penalties for trademark violators. Additionally, it lengthens the period required for
registration, as well as registration of a non-traditional trademark.

Research Objectives

 To safeguard the rights of those who make and sell items bearing distinctive
trademarks against invasion
 To conquer by others who pass off their goods unlawfully and using counterfeit
trademarks as their own.
 To analyse the legal system for trademark protection in India by examining
constitutional provisions.
 To compliance with international obligations under various international covenants to
which India is a signatory country.

Research Questions

 What constitutes the use of a trademark?

 When the infringement of Trademarks is caused?

 If a mark is devoid of being represented graphically then can it be granted a status of a

trademark?

 Does Trademarks ensures protection and fulfilment of the constitutional rights?

Research Methodology

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 The author's study is based on a descriptive method in order to teach how to guard
against trademark infringement. Firstly, the author used qualitative research for valid
results then he tried to investigate and circumcision the constituents of the trademark
so as to protect the rights associated with unique trademarks against invasion.
Secondly, how the passing off by deceit was a form of unfair commerce caused by the
infringement. The questionnaires designed by the author is in the way that
infringement of the trademark law and rights must be concluded. Later on, it analyses
and conduct a legal survey of India's trademark protection system. The author
collected the descriptive data by gathering observations without intervening. The
author chose this method of approach so that it would be convincible and effortless
for the readers to interpret the knowledge.

RESEARCH PAPER

II. INTRODUCTION
The term "trademark" refers to a symbol used to differentiate one corporation,
company, or organization's goods or services from those of another.

Section 2 of the Indian Trade Marks Act, 1999 1, defines a trademark as ‘a mark
capable of being represented graphically and capable of identifying one person's
products or services from those of others, which may include the form of the items,
their packaging, and mix of colours.’ A mark may be a trademark, a heading, a ticket,
a signature, a phrase, a numerical, the shape of the goods, the packaging, or any
combination of these.

Passing off by deceit was a form of unfair commerce or actionable unfair trade in
which a person obtained economic gain from another person's established reputation.
And hence has applications in a particular industry or trade that will profit from it.

1
Abjyanker, S. D., & Panchal, N. P. (2001). Concept of trade mark under the Trade Marks Act 1999
and the protection of domain names under Indian Law. International Financial Law Review, 109.

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 This is viewed as an act of deception. In Wockhardt Ltd. vs. Torrent
Pharmaceuticals2, the court determined that intent to defraud or deceive should not be
considered when determining whether there was misrepresentation.

III. CAUSE OF INFRINGEMENT OF TRADEMARK

3
It is necessary to emphasise here that the mere use of a registered trademark by a
person does not always constitute trademark infringement, as it is contingent upon
certain other factors such as the characteristics of the marks used, the user's identity,
and the reason and manner in which the user used the trademarks. 4To establish that
the use of a trademark constitutes trademark infringement, several statutory
requirements must be completed. Thus, the general requirements set out in sections 29
(1), 29 (2), and 29 (3) are as follows:
 A trademark that has been infringed upon must be a registered trademark.
 A person who uses a trademark does not have to be the registered owner of the
trademark.
 A person who uses the trademark shall not be considered to be utilising it in a
permissible manner.
 It should be utilised in the course of business.

The above additional conditions must be satisfied to constitute infringement. Even if

one of the above elements is not satisfied, the act does not constitute trademark
infringement.

Similarly, section 29(2) of the Act encompasses such instances of infringement as

where a mark is used in a manner that is likely to cause public confusion or that is
likely to be associated with a registered trademark as result in:

 Its likeness to the products or services covered by the registered trademark and
its identification with the registered brand

2
Srinivasan, B. (2020). Arbitrability of Intellectual Property Disputes in India: A Critique. NLS
Business Law Review, 6, 29-60.
3
Cross, J. T. (1994). Contributory Infringement and Related Theories of Secondary Liability for
Trademark Infringement. Iowa L. Rev., 80, 101.
4
Weckstrom, K. (2012). Trademarks in new markets: simple infringement or cause for evaluation. J.
Int'l Com. L. & Tech., 7, 300.

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  Its resemblance to the registered brand and the nature of the products or
services covered by the registered trademark
 Its association with the registered trademark, as well as its association with the
products or services covered by the registered trademark. In this situation, the
court will assume that it is likely to produce public misunderstanding under
Section 29(3).

IV. INFRINGEMENT OF REGISTERED TRADEMARK

Infringement, in the broadest sense, refers to gaining an unfair advantage or causing
harm to the trademark's unique character or reputation. Keeping this in mind, Section
29 of the Trade Marks Act, 19995 provides a worried scenario and details when and
by whom possible trademark infringement occurs. For instance, it is believed to be
created by classes of individuals such as unauthorised persons, those who lack rights
via permitted usage, and advertisements.

This section contains a comprehensive description of a person's use of trademarks,

which covers even spoken use of a trademark if it contains a word. To comprehend
the legal concept of infringement, it is critical to grasp the main terms stated in
Section 29, as well as any subsequent court interpretations.

It is critical to register and renew the mark on a regular basis to ensure that the owner
retains the right to bring an infringement complaint. The registration confers a
legislative right and ownership on the registered proprietor over the mark. Section
27(1)6 makes it plain that no individual is authorised to bring a case to prevent the
infringement of an unregistered trademark, albeit he may bring a passing off action
under the common law remedies accessible to him.

 PRINCIPLES APPLICABLE TO INFRINGEMENT CASES

 The7 comparison entails an assessment of the possibility of uncertainty

regarding the provenance of the goods or services in question on a
5
Medury, R. (2019). Trade mark dilution before and after Section 29 (4) of the Indian Trade Marks
Act. In Annotated Leading Trademark Cases in Major Asian Jurisdictions (pp. 240-251). Routledge.
6
Dogan, S. L., & Lemley, M. A. (2006). Grounding trademark law through trademark use. Iowa L.
Rev., 92, 1669.

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 worldwide scale. This entails determining the mark's uniqueness and
considering a variety of characteristics common in passing off instances.
 When determining the risk of confusion, one must examine the clients,
who are reasonable yet do not exhibit excessive caution or carelessness.
They have a limited memory and hence may not be able to tell the
difference between seemingly identical things.
 The mark must be viewed in its whole. All pertinent similarities must be
evaluated in light of the fact that certain characteristics of the mark or sign
will be more unique and dominating than others.
 The defendant should have duplicated the fundamental elements. The
Supreme Court stated in S. M. Dyechem Ltd. Vs Cadbury India Ltd. 8 that
the plaintiff must establish that the defendant duplicated important
characteristics of the mark. The plaintiff who alleges fraud bears the
burden of proof. If the defendant duplicated the mark's essential qualities
in whole or in part, the mark is said to be infringed.

V. PASSING OFF IN A TORT LAW

For passing off is a type of intellectual property enforcement action that is brought
against the unlawful use of a get-up. The word "get up" refers to a product's
appearance and feel, as well as its outward appearance, which may contain certain
blemishes. These are deemed to be comparable to another party's products and include
both unregistered and registered trademarks.

The notion of passing off has evolved over time 9. Initially, it was limited to the
portrayal of one person's products as those of another. Later, it was expanded to
include commerce and services. It was later expanded to include professions and non-
trading activities. Today, it is used to describe a variety of kinds of unfair commerce

7
Christie, A. F. (2017). Private international law principles for ubiquitous intellectual property
infringement–a solution in search of a problem?. Journal of Private International Law, 13(1), 152-
183.
8
Kumar, A. (2008). Patent Protection through Interim Injunctions: Adding Sting to the Enforcement
of Indian Patent Law. National Law School of India Review, 202-219.
9
Cross, J. T. (1997). Giving Credit Where Credit Is Due: Revisiting the Doctrine of Reverse Passing
Off in Trademark Law. Wash. L. Rev., 72, 709.

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 and unfair competition in which one person's actions create harm or injury to the
goodwill connected with the actions of another person or group of individuals.

A trademark infringement case in passing off if the infringement is based on a

registered trademark is particularly significant due to its improbability of success.
This is due to the distinctions between registered and unregistered trademarks.

A legislative statute, such as the United Kingdom Trade Marks Act 1994 10, provides
for the enforcement of registered trademarks through infringement procedures.

Passing off does not confer monopoly11 rights on any names, marks, get-ups, or other
indicators. It does not see them as distinct property.

Passing off and trademark law both deal with overlapping factual conditions, but in
distinct ways. Rather than that, the passing-off statute is intended to prevent deception
in the course of public commerce. As an example, consider the scenario of any form
of link between two merchants' firms.

WHY PASSING OFF IS NECESSARY?

While the trademark protects registered products and services, the passing off
action protects unregistered goods and services.

The12 critical issue is that while the remedy is same in all circumstances, the
trademark applies exclusively to registered products and services, whereas
passing off applies to unregistered goods and services. To have a better
understanding of this backdrop, we can summarise the case of Durga Dutt vs.
Navaratna Pharmaceutical13, the Supreme Court established the distinction
between infringement and passing off in this case. Infringement is a statutory
remedy available to the registered owner of a registered trade mark who has

10
Annand, R. E. (1996). Lookalikes under the New United Kingdom Trade Marks Act
1994. Trademark Rep., 86, 142.
11
Charleton, P., & Reilly, S. (2015, April). Passing Off: An Uncertain Remedy. In Annual
Conference (p. 2).
12
Morison, W. L. (1956). Unfair Competition and Passing-off-The Flexibility of a Formula. Sydney L.
Rev., 2, 50.
13
Sahay, S. (2006). Piracy of Trade Dress and the Law of Passing off: National and International
Perspective.

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 the exclusive right to use the trade mark in connection with such products.
Additionally, passing off is permitted for unregistered goods and services.

The second most critical element is that while the defendant's use of the
plaintiff's trade mark is not required in a passing off action, it is required in an
infringement action.

The third critical distinction between these two is that if the defendant has
adopted14 the essential features of the plaintiff's trade mark, the fact that the
packaging, labelling, and other writing or marks on the goods or packets in
which he offers his goods for sale marked differences or clearly indicated a
trade origin other than that of the registered owner of the mark would be
irrelevant; however, in the case of passing off, the defendant may escape
liability.

VI. TORT LIABILITY AND INTELLECTUAL PROPERTY LICENSING

Due to the broad applicability of tort law's functions, an interface has developed
between the fields of intellectual property licencing and tort law, which by definition
encompasses legal obligations that extend beyond the boundaries of the licence
contract.
However, despite the fact that tort liability has grown well established in the field of
trademark licensing over the last several years, there appears to be a shortage of case
law and companion papers on tort liability in the sectors of know-how and patent
licencing.

M. F. Goldstein15 has reviewed the evolution of a licensor's vicarious responsibility in

the sphere of trademark licencing in Products Liability and the Trademark Owner.
When a Trademark Becomes a Guarantee, the author tracks the evolution of severe
responsibility for product endorsers or certifiers, as well as for regular trademark
licensors.
14
Krieger, D. J. (1982). The broad sweep of aesthetic functionality: A threat to trademark protection
of aesthetic product features. Fordham L. Rev., 51, 345.
15
M.F. Goldstein (1977). Product Liability and the Trademark Owner. When a Trademark is a
Warranty, 67 TRADEMARK REP. 587

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 The Lanham Act's16 Section 5 and Section 45 require the trademark owner to maintain
genuine control over the type and quality of the goods on which the brand is used.
This duty has evolved into the legal basis for the trademark owner's stringent
responsibility responsibilities to third-party customers. The essay continues by stating
that warranty responsibility may very likely apply to all items advertised under family
names or corporate trademarks.

Along with strict product responsibility, trademark liability cases have been
established on the basis of tort or quasi-contractual 17 theories such as careless
misrepresentation, apparent authority and estoppel, and implied guarantee.
Liability18 for intellectual property licencing is based on conduct that go beyond just
waiving or licensing the underlying intangible rights.

In the case of trademarks, the owner is required by law to exert control, and third-
party claimants19 prevail under the theory of strict responsibility. The injured party
need simply establish that the product's fault posed an excessive risk and was the
direct cause of the harm.

VII. INDIRECT INFRINGEMENT FROM A TORT LAW PERSPECTIVE

Over the last century, the law of indirect infringement has developed independently,
but parallel to, that of patent, copyright, and trademark law. In all three domains, it is
impossible for intellectual property owners to defend their rights against direct
infringers, and the owners have sought remedies against other parties they claimed
were liable for indirect infringement of their intellectual property rights.

The appropriate theories have changed slightly according to the sector of intellectual
property. While strict responsibility is necessary for direct infringement of patents,

16
15 U.S.C. § 1127 (1970)
17
Pike v. Frank G. Hough Co.(1969). 275 Cal. App. 2d 680, 80 Cal. Rptr. 501.
18
Lemley, M. A. (1999). Beyond preemption: The law and policy of intellectual property
licensing. Cal L. Rev., 87, 111.
19
Mootz III, F. J. (2002). Sounds of Silence: Waiting for Courts to Acknowledge That Public Policy
Justifies Awarding Damages to Third-Party Claimants When Liability Insurers Deal with Them in
Bad Faith. Nev. LJ, 2, 443.

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 copyrights, or trademarks, liability 20 for indirect infringement has always required a
proving of the third party's purpose, knowledge, or control with respect to the direct
infringement. Indirect infringement requirements differ according to patent,
copyright, and trademark law, and they appear to be changing in case law. Indirect
patent, copyright, and trademark infringement law is developed from common law
theories of joint culpability for coordinated activity, aider and abettor liability, and
liability for authorising or directing the behaviour of another. These common law
theories have grown into a large and well-formed body of tort law that controls a
person's liability for another's torts.
Unfortunately, not only has the law of indirect infringement grown fragmented within
intellectual property law, across the constituent fields of patent, copyright, and
trademark law, but it has also become disassociated from the broader body of tort law.
Cases and commentators in each substantive field of intellectual property law have
tended to focus only on that area, and have frequently overlooked the larger legal
framework in which the concept of indirect infringement functions.
Indirect infringement21 of a patent, copyright, or trademark is a statutory tort, and
hence is a subset of this more comprehensive field of tort law. In general, a person's
liability for another's tort should be determined by his or her action, culpability, and
relationship to the other person, rather than by whether the tort is a statutory one 22,
such as intellectual property infringement, or a common law one, such as trespass or
carelessness.

VIII. CONCLUSION
Trademark data provide information on two critical components of innovation:
marketing innovation and innovation in service industries.
Certain empirical research has demonstrated a correlation between trademark
numbers and other known indices of innovation performance.

20
Adams, C. W. (2007). Indirect Infringement from a Tort Law Perspective. U. Rich. L. Rev., 42, 635.
21
Cf. Sony Corp. of Am. v. Universal City Studios (1984). Inc., 464 U.S. 417, 435.
22
Duffy, J. F., & Hynes, R. (2016). Statutory Domain and the Commercial Law of Intellectual
Property. Va. L. Rev., 102, 1.

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 For example, trademark registrations23 at the firm level have been found to be
positively connected with innovation as measured by survey replies, patents, and the
number of new product launches.
Another advantage of trademarks as a data source is their widespread availability and
relative ease of access. Unregistered marks, on the other hand, need further evidential
measures. In a passing off proceeding, the claimant must establish that their use of the
disputed trademark carries goodwill and that they would suffer or are likely to incur
harm as a result of the adverse party's use of their property.
Although the doctrine of indirect infringement is founded on common law
principles24, it arose independently of general tort law in the fields of patent,
copyright, and trademark law. Nonetheless, the rule of indirect infringement is mostly
consistent with ordinary tort law. Despite the fact that it is controlled by laws, the law
of indirect infringement of patents most closely resembles normal tort law25.
The passing off action is applicable to unregistered goods and services, and the
remedy for both infringement of suit and passing off is same. Then passing off occurs
in three instances: first, when the claimant's good will is harmed; second, when
misrepresentation occurs; and third, when damages occur, when the situation is
identical to that in an infringement complaint. Finally, when the notion of passing off
is interpreted in relation to domain names and technical advancements, the concept of
passing off26 takes on a new dimension.

23
Nguyen, H., & Lis, A. (2012). Canada Opens Up to Registration of Nontraditional
Trademarks. Landslide, 5, 48.
24
Adams, C. W. (2007). Indirect Infringement from a Tort Law Perspective. U. Rich. L. Rev., 42, 635.
25
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 435 (1984).
26
A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1022-24 (9th Cir. 2001).

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