TITLE OF THE WORK: A LEGAL STUDY ON

INFRINGEMENT OF TRADE MARKS AND REMEDIES

THEREUPON

SUBJECT: LAW OF TRADE MARKS AND DESIGN

NAME OF THE CANDIDATE: MRITTIKA GHOSH

UNIVERSITY ROLL NO.: L03/LLBH/191334

UNIVERSITY REGISTRATION NO.: L03-1211-0094-19

COLLEGE ROLL NO.: 18

SEMESTER: 8TH (HONOURS)

COURSE: B.A.LL.B. (HONS.)

ACADEMIC YEAR: 2023-2024

NAME OF THE COLLEGE:

JOGESH CHANDRA CHAUDHURI LAW COLLEGE

 CONTENTS

Sr. No. Topic Page No.

1 List of Abbreviations –

2 List of Cases –

3 List of Tables –

4 Introduction 1

5 Chapter I: Definition of Trade Mark and History of 3

Trade Mark in India
6 Chapter II: Definition and Elements of Trade Mark 5
Infringement
7 Chapter III: Types of Trade Mark Infringement 7

8 Chapter IV: International Legal Perspectives - with 12

special reference to International Conventions

9 Chapter V: National Legal Arena of Trade Mark 15

Infringement

10 Chapter VI: Law of Passing Off 16

11 Chapter VII: Remedies for Trade Mark Infringement 21

12 Chapter VIII: Role of Judiciary 24

13 Concluding Observations and Recommendations of 27

the Project Work

14 Bibliography 28
 LIST OF ABBREVIATIONS

IP Intellectual Property

IPR Intellectual Property Rights

TRIPS Trade-Related Aspects of Intellectual Property Rights

WTO World Trade Organization

WIPO World Intellectual Property Organization

LIST OF CASES

Sr. No. Cases

1 Amritdhara v. Satya Deo

2 Cadbury India Limited and Ors. vs Neeraj Food Products

3 The Coca-Cola Company vs. Bisleri International Pvt. Ltd.

4 Milmet Oftho Industries and Ors. vs. Allergan Inc.

5 D.M. Entertainment Pvt. Ltd. V. Baby Gift House And Ors.

6 ITC Limited v. Nestle India

 LIST OF TABLES

Tables
Sr. No.
1 Figure I: Three Part Approach of Trade Mark

2 Figure II : Types Of Trade Mark Infringement

3 Figure III : Trade Mark Infringement

4 Figure IV: Types of Indirect Infringement

5 Figure V: Remedies For Trade Mark Infringement

 A LEGAL STUDY ON INFRINGEMENT OF TRADE
MARKS AND REMEDIES THEREUPON

INTRODUCTION

Intellectual Property Rights (IPR) help people to assert ownership on their creativity
and innovations in various fields. There are many kinds of Intellectual Property Rights
and one of them being Trade Mark. In simple terms, Trade Marks are for products and
services to be identified with its maker and provider respectively. It becomes very
valuable since it is associated with quality and consumer’s expectation. Trade Marks
can be a name, number, logo, coined term, colours or combination of these and could
be the texture or shape of the goods too. Trade Mark protects both the interest of the
consumer and the trader as the consumer is able to relate the product with the quality
assured by its trader and also the trader being able to block his competitors from using
his mark and gain profits through imitation while making it distinct. Trade Mark define
the source of the product and makes it unique from its sub-standard replicas. In India
Trade Marks are protected by The Trade Marks Act, 1999 which came into force
repealing the Trade Marks and Merchandise Act, 1958 to meet the WTO and TRIPS
requirements. The present act offers a lot of new features to reap benefits out of
registering a Trade Mark to its proprietor which is covered under the objective of the
act and that being protection to the proprietor, prescribe conditions on acquisition, and
legal remedies for enforcement of Trade Mark rights.
Trade Mark infringement is an infringement of exclusive rights attaching to a Trade
Mark without the authorization of the Trade Mark owner or any licensee. Trade Mark
infringement typically occurs when a person uses a Trade Mark which may be either a
symbol or a design, with resembles to the products owned by the other party. The Trade
Mark owner may begin an officially permitted proceeding against a party, which
infringes its registration. There are two types of remedies are available to the owner of
a Trade Mark for unauthorized use of its imitation by a third party. These remedies are
an action for passing off in the case of an unregistered Trade Mark and an action for
infringement in case of a registered Trade Mark. An infringement action and an action
for passing off are quite different from each other, an infringement action is a statutory
remedy and an action for passing off is a common law remedy.

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Accordingly, in order to ascertain infringement with regard to a registered Trade Mark,
it is necessary only to establish that the infringing mark is deceptively similar to the
registered mark and no further proof is required. In the case of a passing off action,
proving that the marks are deceptively similar alone is not sufficient. The use of the
mark should be likely to deceive confusion. Further, in a passing off action it is
necessary to prove that the use of the Trade Mark by the defendant is likely to cause
injury to the plaintiff's goodwill, whereas in an infringement suit, the use of the mark
by the defendant need not cause any injury to the plaintiff. Trade Mark infringement
laws are of assistance the Trade Mark holders to keep awareness about infringement of
Trade Mark.
In this backdrop, the objective of the study is to highlight the remedies for infringement
of Trade Marks under the present Indian Laws.

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 CHAPTER I: DEFINITION OF TRADE MARK AND HISTORY
OF TRADE MARK IN INDIA

 DEFINITION OF A TRADE MARK :

A Trade Mark is a phrase, unique symbol, or word, which is used by an individual,

business organization, or any other legal entity. A Trade Mark is used by brand owners
to distinctively identify the service and source of products of a brand to the consumers
and to differentiate the product and services of a brand with other similar products in
the market. The Trade Marks which are registered are designated with ® symbol.

The need of Trade Marks to represent goods and services can be considered a three-
part approach by:

 Helping the consumers to recognize the source.

 Helping the consumers to determine the quality.
 Helping consumers to make the right purchasing decision.

It is very imperative to protect the misuses and Infringement of Trade Mark if any of
the values are added to the Trade Marks of products or services.

Figure I: Three Part Approach of Trade Mark

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 HISTORY OF TRADE MARK IN INDIA :-

The Indian Trade Marks Act was passed in 1940, corresponding with the English
Trade Marks Act. After this there was an increasing need for more protection of Trade
Marks as there was a major growth in Trade and Commerce. The replacement to this
Act was the Trade Marks and Merchandise Act, 1958. This Act was to provide for
Registration and better protection of Trade Marks and for prevention of the use of
fraudulent marks on merchandise. This Law also enables the Registration of Trade
Marks so that the proprietor of the Trade Mark gets legal right to the exclusive use of
the Trade Mark. The objective of this Act was easy Registration and better protection
of Trade Marks and to prevent fraud.

The re-appellation of the Trade Marks and Merchandise Act gave rise to the Trade
Marks Act, 1999; this was done by the Government of India so that the Indian Trade
Marks Law is in compliance with the TRIPS obligation on the recommendation of the
World Trade Organisation. The object of the 1999 Act is to confer the protection to the
user of the Trade Marks on his goods and prescribe conditions on acquisition, and legal
remedies for enforcement of Trade Mark rights. It will for the first time protect service
marks and give provision of Registration for collective marks, it will also differentiate
between well-known Trade Marks and Trade Marks in general, and also special
treatment and rights are envisaged for well-known Trade Marks. The Act of 1999 also
gives Police the right to arrest in case of infringement. The rules of this act are called
as Trade Marks Rules, 2002. Both the Act and its set of rules came to effect on
September 15th, 2003. The Trade Marks Act, 1999 and its Trade Marks Rules, 2002
presently govern Indian Trade Marks Laws in India.1

1
Available at: https://www.altacit.com/(Visited on May 20, 2023, 09:15 AM).

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CHAPTER II: DEFINITION AND ELEMENTS OF TRADE MARK
INFRINGEMENT

 DEFINITION OF TRADE MARK INFRINGEMENT:

Trade Marks infringement in India is defined under Section 29 of The Trade Marks
Act, 19992. It states that when an unauthorized person uses a Trade Mark that is
'identical' or 'deceptively similar' to a registered Trade Mark, it is known as
infringement.

The use of a mark, by an unauthorised or an authorised person or a person who is not

the registered proprietor, which is identical or deceptively similar to the Trade Mark in
relation to the goods or services in respect of which the Trade Mark is registered, is
called Infringement. The term deceptively similar means that when a common
consumer looks at the mark, it will be confusing for the consumer with the other
registered Trade Marks. Hence, this confusion will affect the registered Trade Marks’
products and services.

In simple words, it is defined as the violation of exclusive rights that are attached to a
registered Trade Mark without the permission of the registered owner or licensees. The
courts have time and again assumed that similarity of two marks and the kind of goods
and services results in causing confusion in the minds of general public. They may take
an undue advantage of enjoying the hard-earned reputation of the registered Trade
Mark. In order to have a successful claim against a person infringement of Trade Mark,
what needs to be proved is that the infringing Trade Mark is deceptively similar or
identical to the registered Trade Mark.

The Trade Marks are protected under the Trade Marks Act, 19993. The Trade Marks
Act, 1999, provides for the provisions dealing with protection, Registration, and
penalties for Infringement regarding the Trade Marks in India. The Trade Marks across
the globe are given the status of Intellectual Property (IP). Many organizations, both
international and national, are working for the protection of Intellectual Properties like

2
Trade Marks Act, 1999 (Act 47 of 1999), India, available at: https://ipindia.gov.in/ (Visited on May
20, 2023, 10:10 AM)
3
Ibid.

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Trade Marks. The Indian Patent Office is the organization in India which is working
for the protection of Trade Marks. The Controller General of Patents, Designs, and
Trade Marks is the administrator of the Indian Patent Office.

 CONSTITUENT ELEMENTS OF INFRINGEMENT OF TRADE MARK:

1. Unauthorized person – This means a person who is not the owner or the licensee of
the registered Trade Mark.

2. 'Identical' or 'Deceptively similar' – The test for determining whether marks are
identical or not is by determining whether there is a chance for a likelihood of confusion
among the public. If the consumers are likely to get confused between the two marks
then there is an infringement.

3. Registered Trade Mark –Only a registered Trade Mark can be infringed. For an
unregistered Trade Mark, the common law concept of passing off will apply.

4. Goods/Services – In order to establish infringement, the goods or services of the

infringer must be identical with or similar to the goods of the registered Trade Mark.4

4
Available at: https://corpbiz.io/learning/Trade Mark-infringement-meaning-types-and-remedies/
(Visited on May 23, 2023, 05:05 PM)

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 CHAPTER III: TYPES OF TRADE MARK INFRINGEMENT

Following are the types of Trade Mark Infringement-

1. Direct Infringement
2. Indirect Infringement

Figure II : Types Of Trade Mark Infringement

1. Direct Infringement :-

Under Section 29 of The Trade Marks Act, 19995, Direct Infringement is defined.
There are some elements that should be met before any direct breach occurs. The
elements are as follows-

A. Usage by an Unauthorized Person :

The violation of a registered Trade Mark only happens when the use of a Trade
Mark is done by a person who is not authorized by the holder of a registered
Trade Mark. Hence, the use of the Trade Mark by a person who is authorized
by the holder of the registered Trade Mark will not amount to Trade Mark
Infringement.

5
Trade Marks Act, supra note 2

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 B. Identical or Deceptively Similar

The Trade Mark being used by the unauthorized person should be either
deceptively similar or identical to the registered Trade Mark of the original
holder. The meaning of term Deceptively Similar is that the common consumer
‘may’ get confused between two similar Trade Marks and ‘may’ think that both
the Trade Marks are same. The word ‘may’ signifies that it is only required to
prove that there is a possibility of such kind of confusion and hence no need to
prove the actual happening of such confusion. A mere chance of misrecognition
of the Trade Mark is enough to prove that there has been Trade Mark
Infringement of a product or service of a registered Trade Mark.

C. Registered Trade Mark

The Trade Marks Act, 19996, provides remedies to the Trade Marks which are
registered with the Trade Mark Registry. In case of Infringement of an
unregistered Trade Mark, the Act will not apply. The common law of passing
off is used in cases of unregistered Trade Marks. Passing off is a tort law which
is used where damage or injury is caused to the goodwill associated with the
activities of other persons or group of persons.

D. Goods or Services Class

The unauthorized person should use the Trade Mark for the propagation of
goods and services which fall under the same category or class of products or
services under which the original Trade Mark is registered. In such case, only it
will be considered as Trade Mark Infringement of registered Trade Mark.

6
Ibid.

8|Page
 Figure III : Trade Mark Infringement

2. Indirect Infringement :-

In The Trade Mark Act, 19997, there are no provisions which deal with Indirect
Infringement particularly. Hence, it cannot be said that there is no liability for Indirect
Infringement. The Universal Principle of Law provides for the principle and application
of Indirect Infringement. These principles hold not only accountable the principle
infringer but also hold accountable the person who induces or abets the principal
infringer for Infringement.

 The different types of Indirect Infringement are as follows-

A. Vicarious Liability

B. Contributory Infringement

7
Ibid.

9|Page
 Figure IV: Types of Indirect Infringement

A. Vicarious Liability:-

As per Section 114 of Trade Mark Act, 19998, any company committing an
offense under this Act will be liable. The Company will be liable as a whole,
and this means that all the persons will be liable for the offense. Hence, it can
be said that not only the principal infringer but every person of the Company
will be liable for indirect Infringement. An exception from Vicarious Liability
is given to the person who acted in good faith and without any knowledge of
Infringement.

 The Essential elements of Vicarious Liability are as follows-

1. When the person is controlling the activities of the principle infringer.

2. When the person had knowledge about the Infringement and still contributed to
such Infringement.
3. When the person is deriving financial benefits from Infringement.

8
Ibid.

10 | P a g e
  Exception –

The only exception to Vicarious Liability for the Company who is liable for
Infringement is when the Company can prove that the Company has acted in
good faith and had no idea or knowledge about the Infringement.

B. Contributory Infringement:-

 The essential elements of Contributory Infringement are as follows:

1. When the person knew about the Infringement.

2. When the person materially contributed to direct Infringement.
3. When the person induced the principle infringer for committing Infringement.

 There is no exception available in case of Contributory Infringement as there

is no chance of the contributory infringer to act in good faith.9

9
Available at: https://www.mondaq.com/india/trademark/521372/trademark-infringement-in-india--
direct-and-indirect (Visited on May 27, 2023, 10:30 AM).

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Chapter IV: International Legal Perspectives - with special reference
to International Conventions

Trade Marks like all other IPR are National Rights. This means that a Trade Mark once
registered, only offer protection against unauthorized used by third parties within the
country of Registration. Unlike Copyright there is no automatic extension of a National
Trade Mark to other countries.

There is however a number of International Conventions and Agreements that give

some International recognition to National Trade Marks; these are the Paris
Convention, the Madrid Agreement and the Protocol to the Madrid Agreement
(commonly known as Madrid Protocol). There is also Community Trade Mark System
that creates a Trade Mark that gives rights throughout the European Community.

 Paris Convention:-

The Paris Convention was established in 1883 to create some interaction and
recognition between various countries of each other’s National Intellectual Property
Rights. For all IPR of a registrable nature, this was achieved by the concept of Priority.

Priority recognizes the first filing date for a particular IPR in any Convention Country
in respect of the same proprietor made during the priority period. The period of priority
differs from IPR to IPR, but in the case of Trade Marks the period is six months. This
has given a level of protection for Trade Marks because the first to file Trade Marks
application is in most countries, the person with the better claim to a Trade Mark.

Another provision of the Paris Convention relevant to Trade Marks which gives
International protection to “well known” Trade Marks. A person can own a “well
known” mark in registered or unregistered form even in countries where the action of
passing off does not exist.

This International recognition of Trade Marks is of limited application because it only

applies to Trade Marks that have become “well known” in other Convention Countries.
The Paris Convention gives no definition of the phrase “well known” and therefore
countries of the Paris Intellectual Property Convention are only bound by it. The
World Intellectual Property Organization (WIPO) has commented that this is
unsatisfactory for a provision having international effect.

12 | P a g e
  Madrid Agreement:-

In 1891, the Madrid Agreement was implemented to simplify the procedure for filling
Trade Mark Registration in many countries. Up until that point, anyone wanting to
obtain Trade Mark Registration in, say ten countries had to file ten separate applications
at ten separate Trade Marks registries in accordance with the ten different procedural
requirements.

The Madrid Agreement allows anyone established or domiciled in a Madrid Agreement

country, with a Trade Mark Registration in his or her country of establishment or
domicile to file one International Application that can be intended to one or more other
Madrid Agreement countries as specified. The Central International Application is filed
with countries as specified. The Central International Application is filed with WIPO
in Geneva designating to which countries it is to be extended. WIPO then takes
responsibility for passing the application on to each of the designated national registers
where the application proceeds according to the National Laws and Procedures of each
country.

England did not sign the Madrid Agreement because the procedures that the Trade
Marks registry would had to apply in dealing with Madrid Agreement Applications are
in conflict with the established procedures used by the Trade Mark registry. The
particular areas of dispute were-

a) The need for base Registration;

b) The 12 months examination period; and

c) The concept of central attack

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  TRIPS Agreement

This Agreement is administered by the WTO. It establishes minimum level of

harmonization of Intellectual Property Law across the world. The Agreement mandates
the member states to amend their Intellectual Property Laws to bring in harmony with
the Agreement. The least- developed countries have been given an extended period to
make the necessary changes in their respective Intellectual Property Laws including
Trade Mark law. It imposes an obligation on its participant states to apply the Paris
Convention’s standards relating to Trade Marks. It broadened the definition of the signs
of capable of being marks, by extending registration to marks for services. There are
certain important principles postulated in the basic agreements.10

10
Available at : https://www.wipo.int/trademarks/en/ (Visited on June 1, 2023, 01:30 PM)

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 CHAPTER V: NATIONAL LEGAL ARENA OF TRADE MARK
INFRINGEMENT

A Registered Trade Mark is infringed if used in the course of trade by a person other
than the registered proprietor or permitted user of such Trade Mark. The infringement
occurs because such mark used by the one other than the registered proprietor or
permitted user is likely to cause confusion in the mind of the public or is likely to cause
impression of association with the registered Trade Mark.11

Infringement would also occur if such person uses a mark which is used in relation to
goods and services which are not similar to those for which the Trade Mark is
registered.

Further, infringement would also occur if the registered Trade Mark has acquired a
reputation in India and the use of such marks or a mark identical or similar to it without
due cause takes unfair advantages of or is detrimental to the distinctive character or
repute of the registered Trade Mark.

A registered Trade Mark is also infringed by a person who applies such Trade Mark to
a material intended to be used for labelling or packing goods as a business paper or it
is used for advertising goods or services provided that when he applied the mark in such
manner, knew or had reason to believe that such application of the mark was not duly
authorized by the proprietor or a license the registered Trade Mark. As well as by their
visual representation in case where the distinctive elements of a registered trade mark
consists of or include such works.12

11 B. L. Wadhera, Law Relating to Intellectual Property 165 (Universal Law Publishing Co., New
Delhi, 4th edn., 2007).
12
Ibid.

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 CHAPTER VI: LAW OF PASSING OFF

Section 134(1) (c) of The Trade Marks Act, 199913 establishes the Law of Passing
Off.

 MEANING OF PASSING OFF :-

“If a person sells his goods as the goods of another” then the Trade Mark owner can
take action as this becomes a case of passing off. Passing off is used to protect or
safeguard the goodwill attached to an unregistered Trade Mark. When the Trade
Mark has been registered by the owner and infringement happens, then it becomes a
suit for infringement, but if the Trade Mark has not been registered by the owner
and infringement happens then it becomes a case of passing off.

The principle of passing off, i.e. “Nobody has the right to represent his goods as the
goods of somebody else” was decided in the case of Perry v Truefitt14 . The passing off
law has changed over time. Previously it was restricted to depicting one person’s goods
as another. Later it was extended to trade and services. This was later expanded to
business and non-business activities. Now, it applies to many forms of unfair trade and
unfair competition where one person’s activities harm the goodwill associated with the
activities of another person or group of individuals.

It is difficult to prove passing off as claimants need to demonstrate that at least some of
the public is at risk of confusion between the two businesses. The most important
question in Passing off is whether the conduct of the defendants is such as to confuse
the public that the business of the defendants is a plaintiff or a cause of confusion
between the business activities of the two. This Act of misrepresentation often damages
the goodwill of a person or business, causing financial or reputational damage.15

13
Trade Marks Act, supra note 2
14
(1842)
15
Available at: https://blog.ipleaders.in/trademark-passing-off/ (Visited on June 10,2023, 07:20 PM)

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 SUIT FOR PASSING OFF:-

Passing off occurs when one trader attempts to pass off his goods by misrepresenting
them so as to make the consumers believe that his goods are the same as those of another
trader .

The action against passing off also lies in instituting a suit .The action is often combined
into a suit for infringement and passing off to claim the reliefs recognized by law.

 REMEDIES FOR PASSING OFF:-

To succeed in passing off claims, the Plaintiff must show that the misrepresentation
made by the Defendant, which has damaged the goodwill. In a passing off action, the
Plaintiff can claim any of the following remedies:

 Injunction :-

An Injunction is a judicial process or order restraining a person from continuing

with wrongful act. The general rules governing the grant of injunction are contained
in Sections 36 to 42 of the Indian Specific Relief Act, 1963 and Order XXXIX Rules
1 & 2 and Section 151 (Inherent power of the Court) of the Code of Civil Procedure,
1908.

Where the acts of infringement are of such a nature that they are not likely to be
repeated, the Court instead of granting an Injunction may pass an order that the Plaintiff
having established infringement of their Trade Mark will be at liberty to apply for an
Injunction, should such an occasion arise.

 Injunction for prohibiting from using Trade Mark

An Injunction to prevent further use of the trademark by the defendant. An

Interim Injunction may continue until the claim has been fully tested and is
intended to prevent the goodwill of the claimant from further harm during
the intervening period. The Injunction is an effective remedy in the
prevention of Infringement of Registered Trade Mark or Unregistered Trade

17 | P a g e
 Mark. Section 135 of the Trade Marks Act, 199916 provides injunctive
relief.

 Types of Injunction : An Injunction can be given in various types:

 Anton Piller Order- These are prior partial orders to inspect the
Defendant’s premises. The Court may order the Plaintiff where the
Defendant is likely to destroy or dispose of materials which contain the
Trade Mark of the Plaintiff.

 Mareva Injunction- In such order, the Court has the power to freeze the
assets of the Defendant where the property is likely to be dissolved or
cancelled, so granting judgment against him will not be enforced.

 Interlocutory Injunction- It is one of the most commonly used forms of an

Injunction. It acts to take action against the Defendant based on former
violation. Interlocutory prohibition is an order to prevent the Defendant from
continuing usage of the Trade Mark, which is leading to infringement of the
Unregistered Trademark. It has the objective of preventing one from further
infringement.

 Perpetual Injunction- It is an Injunction that prevents the Defendant

completely, for all time from performing any act that violates the right of the
owner of the Trade Mark. A Perpetual Injunction is usually granted when
the case is finally settled.

 Infringing goods to be destroyed- A search and seizure order from the

Court prohibits the Defendant from delivering all goods or products that are
labelled with the Brand name. The Court can direct the return of related
material accounts and destroy all such goods.

 Sue for damages or seek to account for lost profits- Damages are
compensation for the loss which can be recovered by the real owner of the
Trade Mark from the Defendant. The monetary value of financial loss or loss

16
Trade Marks Act, supra note 2

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 for the reputation of the brand is recovered under damage. The amount of
the damage and the account of lost profits will be awarded by the court after
taking into consideration the actual and certain loss of the owner because of
the passing off.17

 DEFENCE FOR PASSING OFF:-

 Use of own name carefully- The Defendant has the right to use his name, mark
or any symbol and the fact that there may arise of confusion. If any confusion
arises, which comes in the attention of that Defendant, it is the obligation upon
the Defendant to take reasonable care to qualify the representation to avoid
confusion among customers.

1. The name, sign or other marks that are sought to be withheld is not specific
to the plaintiff’s goods or business.

2. There is no presence of goodwill in the mark.

3. The plaintiff has given consent or encouraged the usage of the mark.

4. A separate case of passing off.18

 The goods and services or business of the plaintiff and the defendant are
completely different-

If both the Defendant and Plaintiff are sharing the same Trade Mark but they
are providing different goods and services or business then they can take the
defence in the case of passing off.
For example- LLOYD is a Trade Mark that is used by both the Plaintiff and
Defendant but one is an educational institution and the other is providing the
services of electric appliances. So, in this case, one can take the defence of
providing different services.

17
Ibid.
18
Ibid.

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 The passing off law is complicated, and it’s hard and expensive for the Plaintiff
to prove the claims as compared to Trade Mark Infringement. The Plaintiff has
to prove goodwill, misrepresentation, and damage has been caused in his part.19

19
Ibid.

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 CHAPTER VII: REMEDIES FOR TRADE MARK
INFRINGEMENT

The Possessor of the registered Trade Mark could start legal proceedings against the
violator who had infringed the registered Trade Mark by stating the unfair business
actions.

In India, Section 29 and Section 30 of the Trade Marks Act, 199920 states the remedies
for infringement of Trade Marks.

There are two types of remedies available in case of Infringement of Trade Mark. The
Plaintiff has the option to initiate any one or both of the proceedings against the
Defendant. Trade Marks Act, 199921 shields the Trade Mark with civil and criminal
remedies. Civil proceedings could be started by the owner of the Trade Mark before the
District Court in whose jurisdiction the owner exists.

The two types of remedies are as follows-

1. Civil Remedies;
2. Criminal Remedies.

1. Civil Remedies:- Civil Remedies for Trade Mark Infringement are available
which consists of-
A. Injunction-
An Injunction is stated as stopping one individual from carrying out
particular activity or action through the judicial procedure. Regarding
Trade Mark Infringement, it is limiting an individual from unauthorized
usage of the Trade Mark. By means of a temporary or permanent stay,
the Court allows protection towards the Trade Mark holder.
B. Damages-
Damages state towards the recovery of loss suffered by the Trade Mark
holder through the Trade Mark Infringement. The fiscal value of
financial loss or brand damage is recovered under this remedy. The sum

20
Trade Marks Act, supra note 2
21
Ibid.

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 of damages would be allowed by the Court after considering the actual
as well as the expected loss of the owner because of infringement.
C. Custody of Infringing Materials-
This type of remedy proposes that the Court might ask the violator to
deliver all the products or products that are categorized with the brand
name. In such cases, the Court might direct the authorities to withhold
the associated materials accounts and destruct all such products. Where
the Trade Mark relates towards services, that is if a Service Mark has
been infringed; the order might be passed to stop the provision of the
services instantly by the violator.

2. Criminal Remedies :-

Trade Marks Act, 199922 also provides several provisions that could be counted as a
Criminal remedy for the infringement of the Trade Mark.

Sections 103 of the Act states the Criminal remedy for the Infringement of the Trade
Mark of any person or business which specifies a period of 6 months of imprisonment
which could be extended till a time frame of 3 years for Infringing Trade Mark rights.

Section 104 of the Act also states penalties that need to be granted as a sanction against
an Infringement. The section lays down a penalty of fifty thousand rupees which could
be increased to an extent of two lakhs in case any person is found to contravene
the Trade Mark rights.

Also, the Punishment of Trade Mark Infringement is also stated in Section 105 of
the same Act.

A seizure of powers of the individual responsible for infringing could be carried

out as a Criminal remedy for an effectual adaptation towards the above provisions.
This process carried out by Police is subjected to rational grounds of proving the
Infringement only.

22
Ibid.

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 Figure V: Remedies For Trade Mark Infringement

 Administrative Remedies :-

Along with Civil and Criminal Remedies of Trade Mark Infringement,

Administrative remedies are also available for Trade Mark Infringement. The
Administrative remedies which are available are:

Opposing a Trade Mark that is identical to the original mark, could be carried out under
Sections 9(1) or 11 of the Trade Marks Act, 199923. If such a condition arises,
questionings could be done through the Examiner upon the Trade Mark Registration.
A Trade Mark opposition is filed by a third party, in that way opposing the prevailing
Trade Mark in the Trade Mark journal after the completion of its Registration process.
One another way of carrying out Administrative remedy is by means of correcting
the Trade Mark which has been already registered. In this way, it could remove the
confusion of Trade Marks. Since this type of remedy is administrative in nature, it is
carried out through keeping a check in the trade activity of the products that stand an
infringed Trade Mark. Therefore, import and export of goods that are termed with a
Trade Mark that is deceitful by nature are limited with the intention of avoiding
hesitation.24

23
Ibid.
24
Available at: https://www.estartindia.com/ (Visited on June 12, 2023, 05:55 PM)

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 CHAPTER VIII: ROLE OF JUDICIARY

1. Amritdhara v. Satya Deo25

The Supreme Court in this case observed that the ordinary purchaser would go more by
the overall structure and phonetic similarity and the nature of medicine he has
previously purchased or has been told about, or about which he has otherwise learnt
and which he wants to purchase. The word ‘Amritdhara’ which was held deceptively
similar though Registration of ‘Lakshmandhara’ was allowed on the basis of honest
concurrent user.

2. Cadbury India Limited and Ors. vs Neeraj Food Products26

This suit has been filed by the Plaintiff under the Cr.P.C pleading for Interlocutory
Injunction against the Defendant from using the names such as ‘James’ which closely
resembles the Plaintiff’s product ‘Gems’. The Plaintiff has also prayed that a further
Injunction against the Defendant restraining him from passing off its goods of the
Plaintiff, by reproducing in any material form. The Plaintiff is the market leader in India
for manufacturing chocolate goods under several brands and one of them being under
the Registered Trade Mark called ‘Gems’. The Plaintiff filed the Suit after it was
informed about the introduction of a similar chocolate food product very identical to its
size and shape with a phonetically similar name called ‘James’. The Defendant argued
that the Plaintiff registered its product mark as Cadbury’s ‘Gems’ and the Defendant’s
product is ‘James’ which are totally different. The Court relied on the Supreme Court’s
precedent where it was held that if the Defendant’s name is identical to the Plaintiffs
then there is no need for the Plaintiff to prove anything before the Court and can expect
a subsequent Injunction order. The Court in the present case after a lengthy explanation
said there is indeed an Infringement and dishonesty on the part of the Defendant and
under the Trade Marks Act, 1999, the Plaintiff is entitled for a relief.

25 (AIR 1963 SC 453)

26
142 (2007) DLT 724, MIPR 2007 (2) 269

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 3. The Coca-Cola Company vs. Bisleri International Pvt. Ltd.27

In this famous case, Delhi High Court was firm with the fact that if there exists any
amount of infringement, then the Court’s jurisdiction is likely to be present in order to
entertain the concerned suit. The Defendant, Bisleri by a master agreement, had sold
and assigned the Trade Mark “MAAZA” including formulation rights, know-how,
Intellectual Property Rights and goodwill for India with respect to a mango fruit drink
known as “MAAZA” to Coca Cola.
In 2008, the Defendant Company filed for Registration of the mark “MAAZA” in
Turkey and started exporting fruit drink under the name “MAAZA”. The Plaintiff, Coca
Cola claimed permanent injunction and damages for infringement of Trade Mark and
Passing Off.
The Court granted an Interim Injunction against the Defendant (Bisleri) from using the
Trade Mark “MAAZA” in India as well as for export, which was infringement of Trade
Mark.

4. Milmet Oftho Industries and Ors. vs. Allergan Inc.28

The Supreme Court granted Trade Mark protection to a well-known foreign brand. The
court restrained an Indian company from using the mark OCUFLOX. The judgment
was given irrespective of the fact that the mark was neither used nor registered in India.
The court held that the Respondent was the first to enter the market and adopt the mark.
It does not matter that the Respondent has not used the mark in India if they are the first
to enter the world market.
In the field of health care, it is highly important that all chance of deception and
confusion should be avoided, keeping in mind that the public interest is not jeopardized.

5. D.M. Entertainment Pvt. Ltd. V. Baby Gift House And Ors.29

Daler Mehndi, the famous Pop Star from Punjab has a large fan base and is extremely
popular amongst Punjabi Pop Music lovers. DM Entertainment was incorporated in

27
(2009) 164 DLT 59
28
2004 (12) SCC 624
29
MANU/DE/2043/2010

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1996 to manage the artist’s escalating career. The Defendant’s Company was making a
large business by selling miniature dolls of the artist and cashing on his popularity. The
Plaintiff’s Company was extremely aggrieved and filed for Permanent Injunction from
infringing the artist’s right of publicity and false endorsement leading to Passing Off.

The Plaintiff’s company was assigned all rights, titles and interests in the personality
of the artist along with the Trade Mark, Daler Mehndi. The Plaintiff argued that the
unauthorized or unlicensed use of the artist’s reputation with respect to goods or
services will deceive the public into believing that the goods and services are associated
with the singer and hence, would lead to Passing Off. The Plaintiff further submitted
that such use was done for commercial exploitation without adequate permission from
the person or any other authorized by him and shall constitute infringement of the
person’s right to publicity.

Character merchandising is an area of law that is still unexplored in India. This was the
first case that dealt with the issue of celebrity merchandising where the publicity rights
of the artist was given due recognition.

6. ITC Limited v. Nestle India30

The mark “MAGICAL MASALA” was initially used by ITC Ltd. in 2010 for Sunfeast
Yippee Noodles and then by Nestle in 2013 for their noodles, leading to action for
injunction being brought by ITC for “passing off” in the case of ITC v. NESTLE, also
known as “the Curious Case of The Magic Masala.” The court ruled that the mark could
not be protected as a “descriptive mark” because it was just a laudatory expression and
not a description of the product. The court further noted that granting a monopoly over
the two names would be unfair because they are widely used terminology. The case was
dismissed after it was further stated clearly that the two had no potential to confuse
consumers because they were not product descriptors.

30
2020 SCC Online Mad 1158

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 CONCLUDING OBSERVATIONS AND RECOMMENDATIONS
OF THE PROJECT WORK

In India, there is a growing need for registration of Trade Marks day by day, clearly
indicating the awareness developing among people to safeguard their own products.
The owners are still passive about the unauthorized use of the Registered Trade Mark
of their products and services. The violations sometimes occur internally in the
Company, which results in decreasing of the brand value of the product. The Trade
Mark Registration is necessary for the products and services in order to save the Brand
from Trade Mark Infringement.

The passing-off action is applicable in unregistered goods and services. The scope of
passing off is wide as compared to infringement of the Trade Mark.

Even though the process and remedies of passing off suit are the same for both
registered and unregistered marks, the burden of proof becomes greater when it is for
unregistered marks as it becomes difficult to establish goodwill and reputation. To
allow unregistered Trade Marks, the Act provides relief to a certain extent to several
users who would otherwise not be able to take any kind of legal remedy for
infringement of their marks.

Trade Mark infringement is a common sight nowadays. Although there exists several
remedies to cope up with the same, not many are implemented the way they should be.
Loopholes in every procedure being carried out to eliminate infringement ultimately
hinders the law in hand. Violation of any kind of Trade Mark leads to a negative impact
on the individual or the entity thereby reducing the brand value. Along with direct
infringement, there arises indirect infringement as well. Although there are no
provisions related to indirect infringement, liabilities exist abiding by the principle of
universal law. Hence, what is required is a little bit of awareness among individuals in
order to avoid facing any kind of infringement on their own product and overcome the
same swiftly with legal help and guidance.

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 BIBLIOGRAPHY

 STATUTE:

 Trade Marks Act, 1999 (Act 47 of 1999).

 BOOK:

 Wadhera B.L.: Law Relating to Intellectual Property,

Universal Law Publishing Co., New Delhi, 4th edn.,2007.

 WEBSITES:

 https://ipindia.gov.in/
 https://www.altacit.com/
 https://corpbiz.io/learning/TradeMark-infringement-meaning-types-
and-remedies/
 https://www.mondaq.com/india/trademark/521372/trademark-
infringement-in-india--direct-and-indirect
 https://www.wipo.int/trademarks/en/
 https://blog.ipleaders.in/trademark-passing-off/
 https://www.estartindia.com/

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