TRADEMARK INFRINGEMENT IN INDIA

1. Introduction
A trademark is a symbol in the form of a word. It is a device or a label which is
applied to articles of commerce with a view to stipulate the customers that the
particular article is a good manufactured or otherwise dealt in by a particular
person as distinguished from similar goods manufactured or dealt by other
persons. A trademark identifies the product of its origin and guarantees of its
unchanged quality. A trademark advertises the product and distinguishes it from
others. A trademark is a word, phrase, symbol or design, or combination of words,
phrases, symbols or designs is used in the course of trade which identifies and
distinguishes the source of the goods or services of one enterprise from those of
others. A trademark is different from a copyright or a patent or geographical
indication. A copyright protects an original artistic or literary work; a patent
protects an invention whereas a geographical indication is used to identify goods
having special characteristics originating from a definite territory.

Almost all jurisdictions including India employ a classification system in which

goods and services have been grouped into classes for registration. Most countries
follow the same classification system, namely the International Classification of
Goods and Services, which consists of 34 classes of goods and 8 classes of
services. (The WIPO recently revised the Nice Classification, adding three
service classes (43, 44, and 45) and restructuring Class 42, retaining certain
services. This provision has not yet been implemented in India).For example,
printed matter, newspaper and periodicals are classified in Class 16 while services
in the field of publication comes under Class 41.The registration of a trademark
confers on the registered proprietor of the trademark the exclusive right to use the
trademark in relation to the goods or services in respect of which the trademark
is registered. While registration of a trademark is not compulsory it offers better
legal protection for action for infringement. Any person can apply for registration
of a trademark to the Trademark Registry under whose jurisdiction the principal
place of the business of the applicant in India falls. In case of a company about to
be formed, anyone may apply in his name for subsequent assignment of the
registration in the company's favour. Before making an application for
registration it is prudent to make an inspection of the already registered
trademarks to ensure that registration may not be denied in view of resemblance
of the proposed mark to an existing one or prohibited one. An application for
trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one

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of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata,
Chennai and Ahmedabad depending on the place where the applicant resides or
has his principle place of business. The application is examined to ascertain
whether it is distinctive and does not conflict with existing registered or pending
trademarks and examination report issued. If it is found be acceptable then it is
advertised in the Trade Marks Journal to allow others to oppose the registration.
If there is no opposition or if the opposition is decided in favour of the applicant
then the mark is registered and a certificate of registration is issued. If the
applicant's response does not overcome all objections, the Registrar will issue a
final refusal. The applicant may then appeal to the Intellectual Property Appellate
Board, an administrative tribunal. A common ground for refusal is likelihood of
confusion between the applicant's mark with registered mark or pending prior
mark. Marks, which are merely descriptive in relation to the applicant's goods or
services, or a feature of the goods or services, may also be refused registration.
Marks consisting of geographic terms or surnames may also be refused. Marks
may be refused for other reasons as well. The term of a trademark registration is
for a period of ten years. The renewal is possible for further period of 10 years
each. Unlike patents, copyrights or industrial design trademark rights can last
indefinitely if the owner continues to use the mark. However, if a registered
trademark is not renewed, it is liable to be removed from the register.

Anyone who claims rights in a mark can use the TM (trademark) or SM (service
mark) designation with the mark to alert the public of the claim. It is not necessary
to have a registration, or even a pending application, to use these designations.
The claim may or may not be valid. The registration symbol, (R), may only be
used when the mark is registered.

Indias obligations under the TRIPS Agreement for protection of trademarks,

inter alia, include protection to distinguishing marks, recognition of service
marks, indefinite periodical renewal of registration, abolition of compulsory
licensing of trademarks, etc. India, being a common law country, follows not only
the codified law, but also common law principles, and as such provides for
infringement as well as passing off actions against violation of trademarks.
Section 135 of the Trade Marks Act recognizes both infringement as well as
passing off actions.1

1. http://www.ssrana.in (last visited on 29.10.2107)

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 2 Trademark Infringement and Remedies
Infringement is when there is a contravention or a violation of a specific act, law
or agreement. With respect to trademarks, there is a violation when you use a
trademark without the authorization of the owner.
To be more specific, the infringer (the person doing the infringing act) uses a
trademark which is confusingly similar or identical to a trademark that is already
registered. When this happens, the people who buy certain goods or use the
services, will not be able to distinguish between the brands; hence, the user who
has the trademark registered will face losses.
Trademark infringement is the unauthorized use of a trademark or service mark
(or a substantially similar mark) on competing or related goods and services. The
success of a lawsuit to stop the infringement turns on whether the defendant's use
causes a likelihood of confusion in the average consumer.
When infringement occurs, a trademark owner (the plaintiff) may file a lawsuit
against the infringing user of the same or similar mark (the defendant) to prevent
further use of the mark and collect money damages for the wrongful use. An
infringement action may be brought in state court or in federal court if the mark
in question is protected under the Lanham Act, which applies to both registered
and unregistered marks that are used in commerce that Congress may regulate.
The success of an infringement normally turns on whether the defendants use
causes a likelihood of confusion and so weakens the value of the plaintiffs mark.
A mark need not be identical to one already in use to infringe upon the owners
rights. If the proposed mark is similar enough to the earlier mark to risk confusing
the average consumer, its use may constitute infringement if the services or goods
on which the two marks are used are related to each otherthat is, they share the
same market.
Infringement can only take place if a trademark has been registered. A trademark
owner whose trademark has not been registered cannot bring an infringement
suit. Section 29 and 30 of the Trademarks Act, 1999 specifically lays down the
provisions for protection of the registered trademark when infringed.
Trademark infringement is a violation of the exclusive rights attaching to a
registered trademark without the authorization of the trademark owner or any
licensees (provided that such authorization was within the scope of the license).
Infringement may occur when the infringer (i.e. the person doing the infringing
act), uses a trademark which is identical or confusingly similar to a registered
trademark owned by another person, in relation to products or services which are
identical or similar to the products or services which the registration covers. The
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owner of such registered trademark may commence legal proceedings against the
infringer.
Trademark infringement in India is defined under Section 29 of the Trademarks
Act, 1999. Simply put, when an unauthorized person uses a trademark that is
'identical' or 'deceptively similar' to a registered trademark, it is known as
infringement.
Now, let us take a look at the constituent elements of Infringement of trademark:
1. Unauthorized person this means a person who is not the owner or the licensee
of the registered trademark.
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 Trademark You can only infringe a registered trademark. For an
unregistered Trademark, the common law concept of passing off will apply.
4. Goods/ Services In order to establish infringement even the goods/ services
of the infringer must be identical with or similar to the goods that the registered
Trademark represents.
Any unauthorized use of the exclusive statutory rights of a registered trademark
constitutes infringement.
The infringement explained above is direct infringement. There is another aspect
to trademark infringement in India, i.e. indirect infringement.2
A trademark which is not registered cannot be infringed as such, and the
trademark owner cannot bring infringement proceedings. Instead, the owner can
commence proceedings under the common law for passing off or
misrepresentation, or under legislation which prohibits unfair business practices.
In some jurisdictions, infringement of trade dress may also be actionable. To
establish infringement with regard to a registered trademark, it is necessary only
to establish that the infringing mark is identical or deceptively similar to the
registered mark and no further proof is required.

Trademark infringement is an infringement of exclusive rights attaching to a

trademark without the authorization of the trademark owner or any licensee.
Trademark infringement typically occurs when a person uses a trademark which

2. http://www.mondaq.com (last visited on 29.10.2017)

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may be either a symbol or a design, with resembles to the products owned by the
other party. The trademark 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 trademark for unauthorized use of its imitation by
a third party. These remedies are an action for passing off in the case of an
unregistered trademark and an action for infringement in case of a registered
trademark. 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.
Indirect infringement is a common law principle that holds accountable not only
the direct infringers but also the people who induce the direct infringers to commit
the infringement. Indirect infringement is also known as secondary liability has
two categories: contributory infringement and vicarious liability.
A person will be liable for contributory infringement in two circumstances:
1. When a person knows of the infringement
2. When a person materially contributes or induces the direct infringer to commit
the infringement.
A person will be vicariously liable under the following circumstances:
1. When the person has the ability to control the actions of the direct infringer.
2. When a person derives a financial benefit from the infringement.
3. When a person has knowledge of the infringement and contributes to it.
Vicarious liability usually applies in the case of employer-employee relationships
and the like. This finds indirect mention in section 114 of the Trademarks Act.
According to this section, if a company commits an offence under Act then every
person who is responsible for the company will be liable. Except a person who
acted in good faith and without knowledge of the infringement.3
On the whole, indirect infringement occurs when a person, though not infringing
directly, causes another person to infringe on a trademark.
With the growth in the e-commerce industry liability for indirect infringement is
extremely important as holds every involved person accountable.
In case of infringement / passing off trademark, a criminal complaint can also be
filed. It may be noted that under the Provisions of the Trade Marks Act, 1999, the

3. Ibid.

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offences under the Act are Cognizable, meaning there by that police can register
an FIR (First Information Report) and prosecute the offenders directly. 4
3 Essential factors to be considered

i. Likelihood of confusion
The standard is "likelihood of confusion." To be more specific, the use of a
trademark in connection with the sale of a good constitutes infringement if it is
likely to cause consumer confusion as to the source of those goods or as to the
sponsorship or approval of such goods. In deciding whether consumers are likely
to be confused, the courts will typically look to a number of factors, including:
(1) the strength of the mark;
(2) the proximity of the goods;
(3) the similarity of the marks;
(4) evidence of actual confusion;
(5) the similarity of marketing channels used;
(6) the degree of caution exercised by the typical purchaser;
(7) the defendant's intent.5
So, for example, the use of an identical mark on the same product would clearly
constitute infringement. If I manufacture and sell computers using the mark
"Apple," my use of that mark will likely cause confusion among consumers, since
they may be misled into thinking that the computers are made by Apple
Computer, Inc. Using a very similar mark on the same product may also give rise
to a claim of infringement, if the marks are close enough in sound, appearance,
or meaning so as to cause confusion. So, for example, "Applet" computers may
be off-limits; perhaps also "Apricot." On the other end of the spectrum, using the
same term on a completely unrelated product will not likely give rise to an
infringement claim. Thus, Apple Computer and Apple Records can peacefully
co-exist, since consumers are not likely to think that the computers are being
made by the record company, or vice versa.
Between the two ends of the spectrum lie many close cases, in which the courts
will apply the factors listed above. So, for example, where the marks are similar
and the products are also similar, it will be difficult to determine whether

4. http://www.legalservicesindia.com (last visited on 29.10.2017)

5. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.)

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consumer confusion is likely. In one case, the owners of the mark "Slickcraft"
used the mark in connection with the sale of boats used for general family
recreation. They brought an infringement action against a company that used the
mark "Sleekcraft" in connection with the sale of high-speed performance boats.
Because the two types of boats served substantially different markets, the court
concluded that the products were related but not identical. However, after
examining many of the factors listed above, the court concluded that the use of
Sleekcraft was likely to cause confusion among consumers.6
Sometimes the trademark relating to a particular set of products and goods may
cause confusion in the minds of the buyer if they are similar. So when two
trademarks resemble each other, this will cause deception among buyers thus
defrauding the customers and infringing the right of the registered user of the
trademark. For example, if A sells matchsticks with the registered trademark
ABC MATCHES and B, who newly enters the market decides to sell matches
with the trademark ABCD MATCHES, the people who go to buy the products
will be confused and thus may end up buying Bs products thus causing loss to
A.
ii. Deceptive marks
Deceptive marks are likely to cause confusion in the general public. Thus to know
if there is a case of infringement, an overall similarity of the goods are taken into
account. Deception takes place in the three following ways:
a) Deception as to the trade origin
Lets take an example of a textile company A that sells silk sarees called Mysore
Silk. All the products have Made in Mysore or Product of Mysore written
on the trademark, which indicates its geographical indication, is Mysore. It was
later found that A manufactures all its goods from Kerala and not Mysore. Hence,
there is deception as to the trade origin and this is a clear cut case of infringement
by deception as to the trade origin.

b) Deception as to goods
If A sells, ORLWOOLA for shawls, it would suggest that the shawls are made of
all wool when in fact it is made of cotton. Here, this is a case of deception as to
the goods.
c) Deception as to the trade connection

6. AMF Inc. v. Sleek craft Boats, 599 F.2d 341 (9th Cir. 1979).

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If there is A who deceptively sells cars with the trademark TATA
ROADSPEED, it is a case of infringement as it is very well know that TATA
is a registered trademark by the TATA Group. Thus the buyers might associate
As car to the TATA group. This is a case of deception as to the trade connection.
iii. Identical marks
When both the trademarks are clearly identical to each other that is, without
change in the spelling, style of writing, logo and phonetically similar, it is a case
of infringement. For example, if, A sells butter with the registered trademark
SUCAM and D sells butter also with the name SUCAM, it is a clear case of
trademark infringement.
What is passing off?
Nobody has any right to represent his goods as the goods of somebody else.
This is the underlying rule that has been laid down in the whole sphere of
Intellectual Property Rights.
In simple words, if a person sells his goods as the goods of another, then the
trademark owner can take action as this becomes a case of passing off. Passing
off is used to protect the goodwill attached with the unregistered trademark.
When the trademark has been registered by the owner, it becomes a suit for
infringement, but if the trademark has not been registered it becomes a case of
passing off.
Example: A runs a company that sells electronic goods. The trademark for his
company is SPEEDELECTRO. He has been using the trademark for over 12
years, but has not registered the same. A company XYZ decides to sell their
electronic goods also as SPEEDELECTRONICS. In the mind of the people who
decide to buy the goods, they would associate SPEEDELECTRONICS as
SPEEDELECTRO and thus because of the acquired good will of As company,
they would purchase XYZs products.
Here XYZ is committing a case of passing off of goods as he is representing his
goods as the goods of As company. A can file a suit for passing off.
Passing off: Essential factors to be considered
i. The nature of the trademarks
That is, whether it is a word mark or the logo mark that has been deceptively used.
For example, A is a well-known manufacturer of toothbrushes with the trademark
TOOTHY and the logo mark has a symbol of a toothbrush with toothpaste on

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it. B decides to sell toothpastes with the same trademark TOOTHY and the same
logo. This is a case of passing off and A can take action against B.
ii. Degree of resemblance between the marks
Whether they are phonetically similar or written in the same way. For example,
A runs a business OYO ROOMS which is famous for their hospitality services
and this is the trademark that they have been using for several years. It was found
out that B was also providing the same services but with the trademark TOYO
ROOMS. The public would be confused and would think that since TOYO
ROOMS and OYO ROOMS sound phonetically similar, they are from the
business run by A. Thus B would get profits because of the resemblance between
the trademarks. This is a case of passing off.
iii. Nature of goods in respect of which they are being used
For example A is an established, well known seller of soaps by the trademark
123Soaaps and B decides to sell soaps by the trademark 567 Soaps. The
nature of the goods is soaps and so the consumers will be confused regarding the
products. They would assume that both the soaps are from As well known
business and purchase Bs goods, thus causing losses to A. This is a case of
passing off.
iv. Mode of purchasing the goods or placing the orders for goods
For example A is an established seller of vegetables. To order vegetables,
consumers have to go onto the internet and use As website called VEGGIES
where orders can be placed. B decides to copy A and also starts VEGGIES a
website, which allows consumers to place orders for vegetables online. This is a
case of passing off since not only is the trademark similar but also the mode of
purchasing the goods is similar.7
In, Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
laboratories,8 the Apex court held that there is certain differences between the
action for passing off and action for infringement of a trademark. In American
Home Products Corpn. v. Lupin Laboratories Ltd.9, the Court held that it is well
settled law that when considering the infringement of a registered trademark. It
is important to bear in mind the difference between the test for infringement and
the test in passing off action. In a passing off action, the courts look to see whether
there is misrepresentation whereas in infringement matter, it is important to note
that the Trademark Act gives to the proprietor an exclusive right to the use of the

7. http://www.pocketlawyer.com (last visited on 29.10.2017)

8. AIR 1965 SC 980.
9. 1996 PTR 7 (Bom).

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mark which will be infringed in the case of identical mark and in the case of
similar marks, even though there is misrepresentation, infringement can still take
place.

In Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd.10 it was held by the Court
that to establish an action for passing off three elements are needed to be
established, which are as follows:
(a) The first element in an action for Passing off, as the phrase passing off itself
suggests, is to restrain the defendant from passing off its goods or services to the
public as that of the plaintiffs. It is an action not only to preserve the reputation
of the plaintiff but also to safeguard the public. The defendant must have sold its
goods or offered its services in a manner which was deceived or would be likely
to deceive the public into thinking that the defendants goods or services are the
plaintiffs
4 Civil remedies in Trademark:

i. Injunction/ stay against the use of the trademark

ii. Damages can be claimed
iii. Accounts and handing over of profits
iv. Appointment of local commissioner by the court for custody/ sealing of
infringing material / accounts
v. Application under order 39 rule 1 & 2 of the CPC for grant of temporary
/ ad interim ex-parte injunction

The Courts can grant injunction and direct the custom authorities to withhold the
infringing material / its shipment or prevent its disposal in any other manner, to
protect the interest of the owners of intellectual property rights. This legal
proposition can be enforced with / without involving the concerned authorities as
a party in the suit.

The relief which a court may usually grant in a suit for infringement or passing
off includes permanent and interim injunction, damages or account of profits,
delivery of the infringing goods for destruction and cost of the legal proceedings.

The order of interim injunction may be passed ex parte or after notice. The Interim
reliefs in the suit may also include order for:

(a) Appointment of a local commissioner, which is akin to an Anton Pillar

10. 2004 (6) SCC 145.

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Order, for search, seizure and preservation of infringing goods, account books
and preparation of inventory, etc.

(b) Restraining the infringer from disposing of or dealing with the assets in a
manner which may adversely affect plaintiffs ability to recover damages, costs
or other pecuniary remedies which may be finally awarded to the plaintiff.11

5 Differences between Trademark Infringement and Passing-off

Trademark Infringement
i. Statutory remedy
ii. Registration of trademark is required
iii. Prosecution under Criminal Law is easier.
iv. Presumption of confusion among the public is the main criteria to be proved
by the Plaintiff in case of infringement of a trademark.
v. Can institute the Trademark infringement suit where the proprietor resides or
carries on professional/ personal business. [As per Section 134, Trademarks Act,
1999]
Passing off
i. Common Law Remedy
ii. Registration of trademark is not necessary
iii. Prosecution under Criminal Law is relatively harder.
iv. Not only presumption of confusion among the public but also deception of the
public and injury to the goodwill of the Plaintiff has to be proved.
v. Can institute the Passing Off suit only where the defendant resides or carries
out work.12 [As per Section 20, Civil Procedure Code, 1908]
6. Conclusion
It is evident from the above discussion that India has a robust IP system and a
very proactive judiciary that has been enforcing IP rights in an innovative and
creative manner. While there are some areas in which courts have yet to weigh
in, such as the Internet, taken together with the potential of a large market and an
increasingly competitive scenario where brands are being valued as source

11. https://www.law.cornell.edu (last visited on 29.10.2017)

12. Supra note 7.

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identifiers, one has good reason to be optimistic about the future of trademarks
and the ability of trademark owners to protect their brands in India.

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BIBLIOGRAPHY

1. http://www.ssrana.in
2. http://www.mondaq.com
3. http://www.legalservicesindia.com
4. http://www.pocketlawyer.com
5. https://www.law.cornell.edu

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