Professional Documents
Culture Documents
Infringement of
Trademarks - India
Abstract
This paper discusses the principles of passing off and infringement action under the Trademarks
Act, 1999. It provides for what acts constitute passing off and infringement of trademarks, what
are the remedies available, who can sue and be sued and the defenses available in case of
trademark violation. The paper also discusses the factors to be considered in case of passing off
and infringement action along with different judicial pronouncements given by Indian Courts.
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Co
issio ers of I la d Reve ue vs. Muller & Co.s Margari e Ltd.
A.C.
Chocosuisse Union des Fabricants Suisses de Chocolat vs. Cadbury Ltd., (1999) RPC 826
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1998 (18) PTC 18 Kar.
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Law of Trademarks and Geographical Indications, KC Kailasam, Publication: Wadhwa Nagpur; 2 nd Edition,
2005, pg. 343
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2003 (26) PTC 245 (Del.)
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2002 (24)PTC 207 (Del.)
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1979AC 731
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2002(24) PTC 1 (sc)
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d. Plaintiff and defendant need not be in the same field: in passing off action, it is
immaterial whether the plaintiff and the defendant trade in the same field or trade in
different products. Remedies in the form injunction was granted in favour of the
plaintiff on the basis of an action of passing off even though the plaintiff and defendant
were trading in altogether different products.17
e. Prior user to be established: for inherently distinctive marks, ownership is governed
by the priority of use of such marks. The first user in the sale of goods is owner and
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Factors to be considered in case of an action for passing off:The Honble Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals
Ltd.19, held that the following factors to be considered in case of an action for passing off action
of an unregistered trademark for deciding the question of deceptive similarity:1. The nature of the marks, i.e, whether the marks are word marks or label marks or
composite marks, i.e, both words or label works.
2. The degree of resemblance between the marks, phonetically similar and hence similar
in idea.
3. The nature of goods in respect of which they are used as trademarks.
4. The similarity in nature, character and performance of goods of the rival traders.
5. The class of purchasers who are likely to buy the goods bearing the marks they are
likely to exercise in purchasing and/or using the goods.
6. The mode of purchasing the goods or placing orders for the goods.
7. Any other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks.
Defences to a passing off action:In a suit for passing off, apart from denying the plaintiffs allegations generally, the defendant
may be able to plead the following in defence in his case:-
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New Facet of Passing-Off Action:The present Trademarks Act, 1999 which provides protection of trademark in its diverse
forms, cases of trade dress does not strictly fall within the statutory definition of
trademark under Section 2 (1)(zb), because the business or product that enjoys goodwill
independent of the brand value enjoyed by the trademark cannot always be included within
the protective sweep of the Trademarks Act. This is because of two reasons, firstly, trade
dress law is less explicitly set forth in statute law in India. Secondly, the trade dress
protection is broader than trademark protection. One of them being that the breadth of trade
dress protection is generally perceived to be broader than the conventional protection
afforded to trademarks and business name. The reason for this is that packaging and product
design cannot be registered for trademark protection, and also the trade dress infringement
claim requires the Court to focus on the plaintiffs entire selling image, rather than the
narrower single facet of trademark alone. These elements encompass the manufacturers
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QRG Enterprises vs. Surendra Electricals, 2005 (30) PTC 471 (Del.)
Boston Marine Patents Company Ltd. Vs. Wheeler & Thomson, (1954) 71 RPC 432
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Natio al Starch Ma ufacturi g Co. vs, Mu s Pate t Maize a a d Starch Co.
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Noor Illahi Maqbul Illahi vs. R.J Wood & Co., (1928) Lah. 487; AIR 1928 Lah. 924
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Infringement- various factors:In Wockhardt Ltd. Vs. Aristo Pharmaceuticals Ltd.35, Madras High Court, after
holding the defendants mark SPASMO-FLEXON deceptively and phonetically similar
to SPASMO-PROXYVON, summarised the law as follows:
1. The registered proprietor of a trademark has exclusive right to the use of the trademark
in relation to the goods and services in respect of which the trademark is registered and
to obtain relief in respect of infringement of the trademark in manner provided by the
Act.
2. Whether it is deceptively or has become publici juris is a question of fact to be
established.
3. When a number of marks, all have a common element, may it be prefix, suffix or root,
i.e. essential part or the core of the mark, they come to be associated in the public mind
as an indication of the same source, which misleads or causes deception or confusion.
4. It is the common element that has to be identified in an impugned mark and the
registered trademark and if such common element is highly distinctive and is not just a
description or a commonly used word, the likelihood of deception or confusion would
be very much there, despite the fact that it might differ in similarity in certain letters.
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Jurisdiction:
Suit for infringement or for passing off is to be filed in the court not inferior to a District Court
having jurisdiction to try the suit.40 District Court having jurisdiction includes a District Court
within the local limits of whose jurisdiction, at the time of the institution of the suit or other
proceedings, the person instituting the suit or other proceedings, or where there are more than
one person, any of them who:a. Actually and voluntarily resides; or
b. Carries on business; or
c. works for gain;
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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.
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Acts Not Constituting Infringement (Section 30):Following acts do not constitute infringement of the right to the use of a registered trademark:
i.
ii.
Where the registration of the trademark is not valid and liable to be expunged;
iii.
When the use of the mark by the defendant is not an infringement under Section 29;
iv.
When a person uses a trademark in accordance with honest practices in industrial and
commercial matters that do not take unfair advantage.
v.
When a person uses a trade mark in relation to goods or services indicating character,
quality or geographical origin
vi.
When a person uses a trade mark in relation to services to which the proprietor has
already applied the mark or registered user the object of the use is to indicate that the
proprietor or the registered user has performed the services.
vii.
viii.
When a person uses a mark in relation to goods to which the mark has been lawfully
applied, or where the registered proprietor has consented to the use of the mark. This
applies to cases where goods are purchased in bulk and sold in retail applying the mark.
ix.
When a person uses a mark in relation to parts of a product or accessories to the goods
in respect of which the mark is registered if the use is reasonably necessary to indicate
that the goods so adapted.
x.
When a person uses a mark or a similar mark in the exercise of a right conferred by
independent registration.
xi.
When a person assigns a trademark to another, this will not affect the right of that person
to sell or deal in the goods bearing that mark.
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Any loss of trade actually suffered by the plaintiff directly from the acts complained
of, or properly attributable to injury to the plaintiffs reputation, business, goodwill
and trade and business connection caused by the acts complained of.
II.
III.
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Anton Piller Order: these are ex parte orders to inspect defendants premises. A Court
may grant such an order to the plaintiff where there is a possibility of the defendant
destroying or disposing of the incriminating material.
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II.
assets where there exists a probability of the assets being dissipated or cancelled so as
to make judgement against him worthless or un-enforceable.
III.
Interlocutory Injunction: is the most commonly sought and most often granted form
of injunction. It serves to take action against the defendant on the basis of past
infringement. The interlocutory injunction is an order restraining the defendant from
continuance of the acts which amount to infringement. It serves the purpose of of
preventing further infringement.
IV.
Perpetual Injunction: it is an order restraining the defendant totally, for all times to
come, from doing any act which infringes the right of the proprietor of the trademark.
Perpetual injunction is generally granted when the suit is finally decided.
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Saville Perfumery Ltd. Vs. Jump Perfect Ltd. (1941) 58 RPC 147 (161) upheld in M/S S.M. Dyechem Ltd vs.
M/S Cadbury (India) Ltd., AIR 2000 SC 2114
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Conclusion:Thus, from the above discussion it can be said that protection of trademark is important
not only from the business point of view but also for the protection of consumer from fraud
and imposition. However, it is beneficial if combined action for infringement and passing off
is brought in one suit as incorporating a plea of infringement, if the mark gets registered can
always amend the plaint. But in an action for infringement alone the plaintiff may not be
allowed to include a fresh cause of passing off in order to save the action. Since the scope of
passing off action is wider than an infringement action, if an action fails, there is a chance of
other succeeding. As stated in the preamble of the Trademarks Act, 1999, the law provides for
a better protection of trademarks, the fact that the trademark law provides protection to
trademarks has come out to be a reality. The present Act expressly recognises the common law
remedy and thus saves both the registered and unregistered trademarks from being misused.
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Durga Dutt Sharma V. Navaratna Pharmaceuticals Laboratories, AIR 1965 SC 980, p.990
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