Counterfeiting and infringement are two concepts that are often considered synonymous and similar to one another and the differences between the two are most often overlooked.

Counterfeiting as defined in the English dictionary and as commonly understood by the general public stands for a fraudulent imitation of something, or an exact imitation of something with the intention to deceive or defraud.

Infringement with specific reference to trademarks, is defined under Section 29 of the Trade Marks Act, 1999 as the unauthorised use of an identical or deceptively similar trademark. The term “Counterfeiting” is however not defined under the Trade Marks Act.

Prima facie these two concepts seem to deal with imitating and/or deceiving the public, however, the underlying difference between counterfeiting and trademark infringement lies in the fact that trademark infringement is a much broader and comprehensive concept when compared to counterfeiting. Another difference between the two concepts can be drawn on account of the legal remedies available. For trademark infringement, one can seek civil remedies in the form of injunction and damages. On the other hand, counterfeiting is a cognizable offence and punishable under the Indian Penal Code.

These two concepts were the bone of contention in a recent case before the Delhi High Court. The Plaintiff in the case is Montblanc Simplo GmbH, engaged in the manufacture, distribution and sale of luxury writing instruments, watches and leather goods.  MONTBLANC is one of the most widely recognised luxury brands in the world around and often their brand is identified by the “the Star Device”. The Plaintiff started production of the celebrated writing under the brand name of MEISTERSTUCK since 1924 and have registered the trademarks- MONTBLANC, MEISTERSTUCK as well as the “the Star Device” logo globally, including in India.

The Defendants operate an e-commerce website under the domain name www.digaaz.com. In 2013, the Plaintiff came across the fact that the Defendants were selling counterfeit product of MONTBLANC writing instruments on their website at discounted rate of 75% representing the products as that of the original products of the Plaintiffs.

Thereafter, the Plaintiffs filed the present suit seeking for permanent injunction restraining the Defendants from manufacturing, selling and/or offering for sale, advertising any goods bearing the trademarks MONTBLANC, MEISTERSTUCK, the Star Device, etc. or any similar trademark and/or device as those of the Plaintiff and also seeking a damage claim of Rs. 20,05,000.

On perusal of the facts and evidences submitted, the Court was of the opinion that the Defendants have in fact been involved in selling and distributing counterfeit products using the Plaintiff’s trademarks on their website. Accordingly, a permanent injunction against the Defendants was issued, however, the claim for damages for rejected for want of evidence to show the exact extent of actual damages suffered by the Plaintiff.

All infringements are not counterfeits, though, all counterfeits are infringements

In the present judgment, the Defendants have blatantly counterfeited the Plaintiff’s genuine products incorporating their registered trademarks, whereby amounting to both counterfeiting as well as trademark infringement.

To precisely define and differentiate the two concepts- Counterfeiting includes exact imitation, whereby the genuine and the counterfeited products become substantially indistinguishable. On the contrary, trademark infringement, besides including exact imitation of marks, would also include use of confusingly similar or deceptively similar marks. Thus, trademark infringement is a wider concept that encompasses everything between the lengths of a mere deception to exact imitations.

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