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Trademark Infringement in India

The number of trademarks registered in India is increasing day by day with the rising wave of awareness about intellectual property. Infringing on a registered trademark can have a lot of legal consequences and liability. Hence, its important for Entrepreneurs to be aware of intellectual property regulations in India to avoid infringing on someone else trademark and to protect trademark belonging to him or her.

Trademark Infringement

Section 29 of the Trade Marks Act describes “trademark infringement” as:

1. A registered trademark is infringed by a person who, not being a registered proprietor (owner of trademark can also be a legal entity like LLP or Company or Trust, etc.,) or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark.
2. A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of:
   1. its identity with the registered trademark and the similarity of the goods or services covered by such registered trademark; or
   2. its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
   3. its similarity to the registered mark and the identity or similarity of the goods or services covered by such registered trademark; or
   4. its identity with the registered trademark and the identity of the goods or services covered by such registered trademark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark.
3. In any case falling under clause (c) of  sub-section 2 (above mentioned section), the Court shall presume that it is likely to cause confusion on the part of the public.
4. A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trademark, a mark which:
   1. is identical with or similar to the registered trademark; and
   2. is used in relation to goods or services which are not similar to those for which the trademark is registered; and
   3. the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.
5. A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trademark is registered.
6. For the purposes of this section, a person uses a registered mark, if, in particular, he:
   1. affixes it to goods or the packaging thereof;
   2. offers or exposes goods for sale, puts them on the market, or stocks them for those purposed under the registered trademark, or offers or supplies services under the registered trademark;
   3. imports or exports goods under the mark; or
   4. uses the registered trademark on business papers or in advertising.
7. A registered trademark is infringed by a person who applies such registered trademark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
8. A registered trademark is infringed by any advertising of that trademark if such advertising;
   1. takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
   2. is detrimental to its distinctive character; or
   3. is against the reputation of the trademark.
9. Where the distinctive elements of a registered trademark consist of or include words, the trademark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

Remedy for Trademark Infringement

A Court may grant relief for trademark infringement or for passing off (eg: counterfeit goods). Trademark infringement relief can be provided through an injunction, damages or an account of profits, together with or without any order for the deliver-up of the infringing labels and marks for destruction or erasure.

Section 135 of the Trade Marks Act mentions the following relief for trademark infringement: 

1. The relief which a Court may grant in any suit for infringement or for passing off referred to in Section 134 includes injunction (subject to the terms, if any, as the Court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up to the infringing labels and marks for destruction or erasure.
2. The order of injunction under sub-section (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:
   1. for discovery of documents;
   2. preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;
   3. restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
3. Notwithstanding anything contained in sub-section(1), the Court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case:
   1. where in suit for infringement of a trademark, the infringement complained of is in relation to a certification trademark or collective mark; or
   2. where in suit for infringement the defendant satisfied the Court:
      1. that at the time he commenced to use the trademark complained of in the suit, he was unaware and had no reasonable ground for believing that the trademark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and
      2. that when he became aware of the existence and nature of the plaintiff’s right in the trademark, he forthwith ceased to use the trademark in relation to the goods or services in respect of which it was registered; or
   3. where in suit for passing off, the defendant satisfied the Court:
      1. that at the time he commenced to use the trademark complained of in the suit he was unaware and had no reasonable ground for believing that the trademark of the plaintiff was in use; and
      2. that when he became aware of the existence and nature of the plaintiff’s trademark he forthwith ceased to use the trademark complained of.

Click here to know more about the penalty for trademark infringement.