Infringement of Trade mark

Infringement, very broadly means taking unfair advantage or being detrimental to the distinctive
character or reputation of a trade mark.
When a registered trade mark is used by a person who is not entitled to use such a trade mark
under the law, it constitutes infringement.
A person shall also be deemed to have infringed a registered trade mark if he applies such
registered trade mark to a material intented to be used for labelling or packaging goods as a
business paper, or for advertising goods or services knowing that the application of such mark is
not authorised by the proprietor or licensee.
The infringement action is a statutory remedy available to the registered proprietor or to the
registered user, based on statutory rights conferred by registration of a trade mark – Right of
exclusive use.

Trademark infringement claims generally involve the issues of

1. likelihood of confusion
2. deceptive marks, identical marks
3. dilution of marks

What constitutes Infringement?

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 alteration
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.
Instances where the acts constituted infringement of trademark:

A. Taking substantial feature of the mark

A mark is infringed by another trader, if, even using the whole of it upon or in connection
with his goods, he uses one or more of the essential features.

B. Addition of extraneous matter

If a person incorporates whole or part of a registered Trademark of another, the addition of
other or matter would not save him from the charge of infringement.

C. If the defendant absolutely copied the mark

When the similarities are so close as to make it impossible to suppose that such marks were
devised independently of each other, in absence of evidence of common origin, the
conclusion that one party copied the mark of another.

D. Marks likely to cause confusion

Likelihood of confusion occurs in situations where consumers are likely to be confused
or mislead about marks being used by two parties. The plaintiff must show that
because of the similar marks, many consumers are likely to be confused or mislead about
the source of the products that bear these marks. Where the visual, aural and conceptual
similarities is caused by the defendant’s trademark which causes confusion in the minds
of the public as to its origin, then the mark is held to be an infringing mark. Furthermore,
if the association between the marks causes the public to wrongly believe that the
respective goods comes from the same or economically linked undertakings, there is a
likelihood of confusion.

E. Use of reconditioned the use of plaintiff’s mark on reconditioned goods may constitute
infringement even if it is clarified that goods are not original but reconditioned.

F. Printing of labels:-
Un-authorized printing of labels of the plaintiff will constitute infringement. Moreover, if
a copyright subsists in labels, it will constitute infringement of copyright as well.

G. When the owner of a mark gets the goods manufactured by a third party under a contract,
solely for the mark, sale of the goods bearing the mark by such a manufacturer to other
person would constitute infringement

H. Use with other’s mark:-

Use of the plaintiff’s mark along with the defendant’s name even if prominently
displayed constitutes infringement.
 I. Similar marks in medicinal products:
When the goods or products involved are medicinal products, confusion of sources or drugs
or medicinal preparation caused by similar marks of the defendant would constitute
infringement, although similarity in the marks would have been very less

J. In case of marks which have acquired international reputation, an action for its protection
against un-authorised use will lie even if the owner of the trademark does not have any
business activity in India.

Who can sue for infringement?

The proprietor of the registered trademark

An applicant for registration of a trademark. He can file an infringement suit to protect his right to
continue with the suit which will sustain only if his trademark is registered before hearing the suit

Legal heirs of the deceased proprietor of a trademark

Any one of the joint proprietors of a trademark.

A foreign proprietor of a trademark registered in India when Infringement occurs in India

Who can be sued?

The infringer who directly by his action causes infringement or who uses or contemplates or
threatens to use a trademark infringing plaintiff’s right.

The master responsible for his servant’s act of infringement.

The agents of an infringer.

Directors and promoters of a limited company cannot be joined as co-defendants unless they have
personally committed or directed infringing acts.
Period of Limitation
Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a
trademark is three years from the date of infringement. Where the infringement is a continuing
one, a new course of action arises every time an infringement occurs. For example, a continued
sale of infringing article would give rise to a fresh cause of action

CASELAW:
Delhi High Court in Infosys Technologies Ltd. v. Adinath Infosys Pvt. Ltd. & Ors, ( November,
2011) held that by using the word INFOSYS which is the registered trade mark of the plaintiff as
the key feature of its corporate name, defendant has clearly infringed the registered trade mark of
the plaintiff. The Court restrained the defendant from using the expression “INFOSYS” or any
other expression which is identical or deceptively similar to the trade mark “INFOSYS” as a part
of its corporate name or for providing any of the services in which the plaintiff-company is engaged
PASSING OFF of trademark:
The passing off action depends upon the principle that nobody has a right to represent his goods as the
goods of somebody. In other words a man is not to sell his goods or services under the pretence that they
are those of another person.

The Trademark is providing protection to registered goods and services, but the passing off action is
providing a protection to unregistered goods and services. The most important point is that the remedy is
same in both the cases but the Trademark is available to only the registered goods and services and passing
off is available to unregistered goods and services

When the passing off arise?

The passing off action is arise when there is misrepresentation, when it is harm the existence
plaintiff’s goodwill, when it is made by a trader in the course of trade, which is injure the business
of another trader and which cause actual damage to the business or goodwill of the trader by the
whom action is brought

These cases are most of the times cases of deliberate and intentional misrepresentation.

1. Goodwill:
The Plaintiff has to establish a goodwill or reputation attached to the goods and services
which he supplies, in the mind of the purchasing public by association with the identifying
get-up under which his particular goods and services are offered to the public as distinctive
specifically of his goods or services.

The action of passing off lies where there is a real possibility of damage of goodwill to
some business or trading activity. Therefore, the plaintiff has to establish a goodwill in
his business or his goods or services with which the trade or public will be led to associate
the defendant’s activities.

2. Misrepresentation and deception:

Misrepresentation in the simplest form of passing off. If A says falsely these goods I am
selling are B’s goods. It is a clear case of passing off. In simple way we can say that
misrepresentation should lead.
 3. Damage:
- In case both the parties are in same line of business
- In case they are in different lines of business

Difference between Infringement and Passing off:

Infringement Passing off

Statutory remedy Common law remedy

Underlying principle – Underlying principle –

right of exclusive use of TM once the same is Nobody has any right to represent his goods
registered as somebody else’s

For registered TM only For registered as well as unregistered TMs

Plaintiff is required to establish the deceptive Has to prove...

similarity only. (a) Deceptive similarity
No further proof is required (b) Goodwill / repute
(c) Confusion among public
(d) Injury to goodwill

Prosecution under criminal remedies is easier Such prosecution is difficult

Less time consuming and costly Is time consuming; and

Costs much more than an action for

infringement

Therefore if one is the owner of a trade mark and in order to benefit from the action for
infringement, it is advisable to register one’s trade mark.
Reliefs in suit of passing off and infringement:
1. Accounts of profit
2. Damages – for legal injury
3. Injunction