This article is written by Riya Tyagi, a student of NAS College Meerut.
This article examines the infringement related to trademark, when someone copies your name or logo to mislead customers, that’s trademark infringement. Whether the Trademark Act 1999 protects the remedy of infringement, and the main aim of this act is to prevent consumer confusion and unfair competition. In this article, we analyse the tests, defences, and remedies which are available under the Act.
We buy ‘Maggi’ or ‘Amul’ without thinking twice. That’s the power of a trademark – it signals quality instantly. But copycats try to steal that trust with names like ‘Maggi’ or ‘Amul’. This act steps in to stop this. It asks, would a normal customer get confused?
Under Section 2(zb) of the Trade Marks Act, 1999, a trademark means a mark capable of graphical representation and capable of distinguishing the goods or services of one person from those of others, which also includes the shape of goods, their packaging and their colour and combination. A trademark is the identity of a business; if it is registered, then protection is available under section 29.
WHAT IS INFRINGEMENT?
Trademark infringement occurs when a person, without authorization, uses a mark that is identical or deceptively similar to a registered trademark in relation to goods or services covered by the registration, thereby causing confusion among consumers.
Section 29 of the Trade Marks Act, 1999 lays down various forms of infringement.
Basic Infringement under Section 29(1):
A registered trademark is infringed when:
- A person who is neither a registered proprietor nor a permitted user uses the trademark;
- The mark used is identical or deceptively similar to the registered trademark;
- The use occurs in the course of trade; and
- The mark is used in relation to goods or services for which the trademark is registered.
Infringement through Likelihood of Confusion under Section 29(2)
Infringement also occurs where:
- The impugned mark is identical or similar to the registered trademark; and
- The goods or services are identical or similar;
- Such use is likely to create confusion or association in the minds of consumers.
Presumption of Confusion under Section 29(3)
Where identical trademarks are used for identical goods or services, the court shall presume likelihood of confusion on the part of the public.
Protection of Well-Known Trademarks under Section 29(4)
Even where the goods or services are different, infringement may occur if:
- The registered trademark has acquired a reputation in India;
- The impugned mark is identical or similar to the registered trademark; and
- The use takes unfair advantage of or is detrimental to the distinctive character or reputation of the registered trademark.
Infringement through Trade Name under Section 29(5)
A registered trademark is infringed if a person uses the trademark as part of a trade name or business name dealing in goods or services for which the trademark is registered.
Meaning of “Use” under Section 29(6)
A person is deemed to use a trademark if he:
- Affixes it to goods or packaging;
- Offers goods or services under the mark;
- Imports or exports goods bearing the mark;
- Uses the mark in advertisements, invoices, or business papers.
TESTS FOR DETERMINING INFRINGEMENT
Indian courts apply various judicial tests to determine whether trademark infringement has occurred.
1. Test of Deceptive Similarity
The court examines whether the impugned mark is deceptively similar to the registered trademark. Similarity may be visual, phonetic, or structural.
2. Phonetic Similarity Test
Even if two marks are spelt differently, infringement may arise if they sound similar when pronounced. In Amritdhara Pharmacy v. SatyaDeo Gupta, the Supreme Court held that the marks “Amritdhara” and “Lakshmandhara” were deceptively similar because of their phonetic resemblance.
3. Test of Overall Impression
Courts consider the overall commercial impression created in the mind of an average consumer rather than comparing marks side by side.
4. Imperfect Recollection Test
Consumers do not always remember trademarks with precision. Courts assess confusion from the perspective of a person with imperfect memory.
5. Test for Well-Known Trademark Dilution
A well-known trademark receives broader protection even for unrelated goods and services. Infringement occurs if the defendant unfairly benefits from the reputation of the established mark.
INFRINGEMENT AND PASSING OFF
Trademark infringement and passing off are related but distinct concepts.
Trademark infringement is a statutory remedy available only for registered trademarks under the Trade Marks Act, 1999.
Passing off is a common law remedy available even to unregistered trademark owners. The purpose of passing off is to prevent one trader from misrepresenting his goods or services as those of another.
The essential ingredients of passing off are:
- Goodwill or reputation;
- Misrepresentation; and
- Damage to goodwill.
IMPORTANT CASE LAWS
In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Supreme Court laid down important principles for determining deceptive similarity, especially in pharmaceutical products where confusion may affect public health.
In Yahoo! Inc. v. Akash Arora, the Delhi High Court held that domain names are entitled to the same protection as trademarks and restrained the defendant from using “Yahoo India.”
DEFENCES AGAINST TRADEMARK INFRINGEMENT
The Trade Marks Act, 1999 provides several defences against infringement claims.
Descriptive Use
Use of words indicating the character, quality, quantity, intended purpose, geographical origin, or other descriptive features of goods does not amount to infringement if used honestly.
Use of Own Name
A person may use his own name or place of business bona fide without constituting infringement.
Prior Use Defence under Section 34
Prior use prevails over registration under Indian trademark law. A registered proprietor cannot restrain another person who has continuously used the mark prior to the plaintiff’s use or registration.
Use by Resellers and Distributors
Use of a trademark by authorized dealers, resellers, or distributors in relation to genuine goods does not constitute infringement.
Nominative Fair Use
A person may use another’s trademark for identification or comparison purposes provided such use is honest and does not create confusion.
REMEDIES FOR TRADEMARK INFRINGEMENT
Indian law provides both civil and criminal remedies against trademark infringement.
Civil Remedies
Under Section 135 of the Trade Marks Act, courts may grant:
- Permanent injunction;
- Interim injunction;
- Damages;
- Account of profits;
- Delivery and destruction of infringing goods and materials.
Courts may also grant:
- Ex parte injunctions in urgent matters;
- Anton Piller orders for search and seizure of infringing material;
- Mareva injunctions to freeze assets of defendants in exceptional cases.
Criminal Remedies
Trademark infringement may also attract criminal liability.
Under Section 103 of the Act:
- Imprisonment may extend from six months to three years;
- The fine may extend from ₹50,000 to ₹2,00,000.
Section 104 provides enhanced punishment for repeat offenders.
Section 115 empowers police authorities to conduct search and seizure operations in counterfeit trademark cases.
WHEN SHOULD A TRADEMARK OWNER FILE A SUIT?
A trademark owner should consider initiating legal action when:
- An unauthorized person uses an identical or deceptively similar mark;
- Counterfeit goods are sold under the trademark;
- Consumer confusion is likely;
- Business reputation or goodwill suffers damage;
- Cease and desist notices are ignored.
PROCEDURE FOR FILING A TRADEMARK INFRINGEMENT CASE
Step 1: Collect Evidence
The trademark owner should collect invoices, screenshots, product samples, advertisements, photographs, and other evidence of infringement.
Step 2: Send a Cease and Desist Notice
A legal notice is generally sent demanding immediate discontinuation of the infringing activity.
Step 3: Consult a Trademark Lawyer
An intellectual property lawyer evaluates the strength of the case and identifies the appropriate forum.
Step 4: File Civil Suit
A civil suit may be filed before the appropriate District Court or High Court having jurisdiction.
Step 5: Seek Interim Relief
The plaintiff may request an interim injunction to immediately restrain further infringement.
Step 6: Initiate Criminal Proceedings
In serious counterfeiting cases, criminal complaints may also be filed before the competent authorities.
CONCLUSION
Trademark law plays a vital role in protecting commercial identity, consumer trust, and market reputation. The Trade Marks Act, 1999 provides comprehensive protection against unauthorized use of trademarks through both civil and criminal remedies. Indian courts have consistently emphasized the importance of preventing consumer confusion and safeguarding the goodwill associated with trademarks.
At the same time, the law balances the rights of trademark owners with honest commercial practices by recognizing defences such as descriptive use, prior use, and nominative fair use. With the rapid expansion of digital commerce and online branding, trademark protection has become more significant than ever before. Businesses must therefore ensure timely registration, active monitoring, and prompt legal action to preserve their brand identity and reputation in a competitive marketplace.
Frequently Asked Questions
1. What is trademark infringement?
It is the unauthorised use of a registered trademark causing confusion or deception.
2. How do courts determine trademark infringement?
Courts examine similarity, likelihood of confusion, and market impact.
3. What is the difference between infringement and passing off?
Infringement involves registered trademarks, while passing off protects business goodwill.
4. What defences are available in trademark disputes?
Common defences include honest use, descriptive use, and lack of confusion.
5. What remedies can courts provide in infringement cases?
Courts may grant injunctions, damages, account of profits, and seizure of infringing goods.
REFERENCES
https://www.legalfidelity.com/trademark-infringement
https://ijsi.in/wp-content/uploads/2023/08/18.02.08.20230801.pdf
https://kayserlegal.com/blog/trademark-infringement-vs-passing-off-key-differences-explained
