TRADEMARKS INFRINGEMENT IN INDIA : IPR
In this article, we discuss the concepts of trademarks infringement and passing off as they exist. In our earlier articles, we have discussed topics varying from basics of trademarks, to its attributes, search before registration and its types and classes.
A BRAND when registered as TRADEMARK is said to be infringed when a person, other than the registered owner/proprietor of that Brand, uses the brand name (either identical or similar to the registered Brand/Trademark) in relation to the same goods or services for which the Brand is so registered under the Trademarks Act. In other words, Trademark Infringement is the violation of the rights of a registration holder over his Brand (whether in form of words, name, logo, design, tag line etc.) by use of another without any authorization whatsoever.
One can say that Trademark infringement cases have become a commonplace activity these days owing to increased business competition and stimulation at every stage, be it regional, national, or international level.
The Markets today are becoming more and more brand conscious and aware and with increasing competition mixed with increased awareness, it has become imperative to protect your Brand against Infringement. The use of a confusingly similar or identical brand name confuses the users as regards the original owner who develops, establishes and promoter a product or service under a particular Brand (registered as Trademark) and thus infringement by any third party usually result in loss to the reputation, market share as well as turnover and profits of original owner of the registered Brand in same and similar areas of business.
Passing off occurs in the case of unregistered Brand Names. Here, the owner or to say Brand holder has the preferred right over the Brand owing to long and continuous use though the Brand being unregistered (under the Trademark Act), an action of Infringement cannot be initiated. In such a situation, action of PASSING OFF is an alternate remedy. A ‘passing off’ action can be initiated in the appropriate Court of law. A Passing Off action can be brought in by the original owner or user of a Brand against another person, who in the course of trade, misrepresents to its prospective or ultimate customers about its goods or services in a manner so as to show that they are connected to the goods or services of the original owner and this is done in a calculated fashion to injure the business or goodwill of the original owner or to earn benefit at the cost of the original owner. It is also important that actual deception and actual damage has to be proved for any relief of passing off.
An example of a case of infringement is where 'LAKSHMANDHARA' was held to be deceptively similar to the word ‘AMRITDHARA’. The Hon`ble Supreme Court of India observed that the ordinary purchaser would go more by the overall structure and phonetic similarity and the nature of medicine he had previously purchased or had been told about, or about which he has otherwise learnt and which he wanted to purchase.
One famous case for passing off was that about the use of the brand ‘HONDA’ by a manufacturer of pressure cookers. The company was sued by ‘HONDA’ the manufacturer of motors. The court held in this case that since the mark was creating deception and confusion in the minds of the public at large, there was damage being caused to the business of the motor company.
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Read another post titled Assignment and Licensing of Trademark in India
One can say that Trademark infringement cases have become a commonplace activity these days owing to increased business competition and stimulation at every stage, be it regional, national, or international level.
The Markets today are becoming more and more brand conscious and aware and with increasing competition mixed with increased awareness, it has become imperative to protect your Brand against Infringement. The use of a confusingly similar or identical brand name confuses the users as regards the original owner who develops, establishes and promoter a product or service under a particular Brand (registered as Trademark) and thus infringement by any third party usually result in loss to the reputation, market share as well as turnover and profits of original owner of the registered Brand in same and similar areas of business.WHAT IS PASSING OFF?
Passing off occurs in the case of unregistered Brand Names. Here, the owner or to say Brand holder has the preferred right over the Brand owing to long and continuous use though the Brand being unregistered (under the Trademark Act), an action of Infringement cannot be initiated. In such a situation, action of PASSING OFF is an alternate remedy. A ‘passing off’ action can be initiated in the appropriate Court of law. A Passing Off action can be brought in by the original owner or user of a Brand against another person, who in the course of trade, misrepresents to its prospective or ultimate customers about its goods or services in a manner so as to show that they are connected to the goods or services of the original owner and this is done in a calculated fashion to injure the business or goodwill of the original owner or to earn benefit at the cost of the original owner. It is also important that actual deception and actual damage has to be proved for any relief of passing off.
WHO CAN BRING A SUIT OF INFRINGEMENT
- The plaintiff in an infringement suit may either be:
- The owner/proprietor of the registered Brand/Trademark
- A registered user of a trade mark subject to a prior notice to the registered proprietor and consequent failure of the registered proprietor to take any action against the infringer.
- Legal heir and legal successor of the proprietor of registered trademark
- Legal heirs of the deceased proprietor of a trade mark.
- Joint proprietors of a trade mark.
WHO CAN BE SUED
- The infringer who directly or indirectly infringes or causes infringement or contemplates or threatens to use a trade mark belonging to the plaintiff.
- The agents of infringers if there is a principal agent relationship.
ESSENTIALS IN THE CASE OF INFRINGEMENT
The person must have registered the Brand (whether in form of words, name, logo, design, tag line etc) under its name as per the applicable provisions of Trademark Act 1999 to be entitled to file the suit.- The suit for infringement can be brought for unauthorized use of registered brand or even for intended or threatened use.
- The infringement must be of a nature as it would actually amount to infringement due to the similarity of the mark used with the registered mark or due the mark being identical to the registered mark.
- It is also essential to prove that the person being alleged for Infringement, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee of the mark.
- Existence of huge and natural likelihood of confusion, between the genuine trademark of the registered proprietor and the mark used by the alleged infringer. For Example, a company dealing in same business using the mark "Samsang", even though the spelling and way of presentation is different from the famous "Samsung" trademark
- Prominence, Popularity, and Convincing strength of the infringer's trademark by showing similarity in the overall impression caused by both the trademarks. Eg. In the pronunciation of mark, overall commercial impression, etc.
RELIEF IN SUITS FOR INFRINGEMENT OR PASSING OFF
The types of relief to which a plaintiff is entitled are-
- An injunction restraining further use of the infringing mark;
- Damages or an account of profits;
- An order for delivery-up of infringing labels and marks for destruction;
- Order for delivery of the infringing labels and marks for destruction;
- Seizure and confiscation of the infringing goods by the police department;
- Arrest of the infringers;
- Fine and penalties;
FEW POPULAR EXAMPLES OF INFRINGEMENT
Trademark infringement cases are very complex and need the resolute attention of experts in the field of trademarks who must be capable to fight for the rights of a trademark’s proprietor.
An example of a case of infringement is where 'LAKSHMANDHARA' was held to be deceptively similar to the word ‘AMRITDHARA’. The Hon`ble Supreme Court of India observed that the ordinary purchaser would go more by the overall structure and phonetic similarity and the nature of medicine he had previously purchased or had been told about, or about which he has otherwise learnt and which he wanted to purchase.
However, the Supreme Court of India has taken a different view in another case finding the marks DROPOVIT and PROTOVIT dissimilar from the point of view of visuals and phonetic similarities.
One famous case for passing off was that about the use of the brand ‘HONDA’ by a manufacturer of pressure cookers. The company was sued by ‘HONDA’ the manufacturer of motors. The court held in this case that since the mark was creating deception and confusion in the minds of the public at large, there was damage being caused to the business of the motor company.
To SUM UP…
