A trademark/service mark, is a word, name, symbol or device that is used in trade in respect of goods/services to indicate the source of the goods/services and to differentiate them from the goods/services of others. With the development of knowledge and information technology era, intellectual capital has achieved substantial importance. As a result, Intellectual Property (IP) and rights attached to it have become precious commodities and are being protected. There are well-established statutory, administrative, and judicial frameworks for protecting Intellectual Property Rights (IPRs) in India. It becomes appropriate to mention here that India has complied with its obligations as per the Agreement on Trade-Related Intellectual Property Rights (TRIPS) by enacting necessary Statutes and amending the existing ones. Well-known international trademarks have gained protection in India in the past by judicial rulings even though these trademarks were not registered in India.

Infringement of Trademarks:

Registration of a trademark is a prerequisite for initiating an infringement action. The following essential conditions should prevail for starting an infringement action:

  • The allegedly infringing mark must be either identical or deceptively similar to the registered trademark;
  • The goods/services in relation to which the infringing mark is used must be specifically covered by the registration of the registered trademark;
  • The use of the infringing mark must be in the course of the trade; and
  • The use must be in such a manner as to render the use likely to be taken as being used as a trademark.

A registered trademark is also infringed by use of a mark when because of:

  • Its identity with registered trademark and similarity with goods/services covered by registration; or
  • Its similarity with registered trademark and identity with goods/services covered by registration; or
  • Its identity with registered trademark and identity with goods/services covered by registration.
  • Identity with registered mark having reputation.
  • Similarity of Trade Name with registered Trademark.
  • Application of Registered mark on labelling, packaging, etc with knowledge that such application is without authorisation.
  • Use of registered Trademark in advertising, when such use takes unfair advantage, is detrimental or against the reputation of registered Trademark.

Under the Trademarks (TM) Act, the following acts would also amount to infringement of a registered Trademark:

  • Use of the registered trademark as a trade name or part of the trade name dealing in same goods or services for which the registered trademark is registered;
  • Use of the trademark in advertising if such advertising takes unfair advantage of and is contrary to the honest practice in industrial or commercial matters, or is detrimental to its distinctive character; or against the reputation of the trademark;
  • Under the TM Act, even oral use of the mark can constitute infringement.

Who can sue for infringement?

The registered proprietor, his legal heirs and the registered user(s) can sue for infringement. An assignee of a registered trademark can also sue for infringement. A passing off suit can be converted into a combined action of infringement and passing off, if the registration of the trademark is obtained before the final hearing of the passing off suit.

Remedies for Infringement

  1. Civil remedies: When instances of infringement occur, the Court of competent jurisdiction, not lower than the District Court can be moved for grant of an interlocutory injunction, Anton Pillar Orders, damages and account of profits.
  2. Criminal proceedings: Complaint may be made against the person causing infringement. (Both the actions under Civil law and Criminal law can be initiated simultaneously. Under the Civil proceedings, the plaintiff seeks relief for himself while under the criminal proceedings, the complainant seeks an award of punishment to the infringer).
  3. Administrative remedies: Opposing the registration of a deceptively similar trademark when the Trademark Registry is in the process of considering registering it can protect the earlier trademark. The Registry can also be moved for removal of a deceptively similar trademark if registered.

Burden of proof: It is a well-settled position in law that the plaintiff must prove that the essential features of his registered mark have been copied. The onus to prove ‘deception’ is on the part of the plaintiff who alleges infringement.

Vigilance: The Need of the Hour

To sum up, over time, the Trademarks law has changed and now it provides protection to trademarks at every stage. With the development of technology and communication, the law expects that users are reasonably aware of other trademarks before registering their own trademark. No one can use a similar mark which creates deception or confusion for the customers. The trademark owners must be more vigilant about similar marks in existence, in certain cases, including well-known marks beyond national boundaries.