TRADEMARK Noyonika Nair

INFRINGEMENT IPDR
 WHAT IS A TRADEMARK?
• a mark capable of being represented graphically
and which is capable of distinguishing the goods
Source
or services of one person from those of others
Identification and may include shape of goods, their
packaging and combination of colours [s. 2 (zb)]
• A criteria for registration is distinctiveness
[Ambercrombie and Fitch Co. v. Hunting World,
Spectrum of distinctiveness].
Trademark • Judged from the view of a person of average
Advertising intelligence and inperfect recollection.
• Absolute Grounds for Refusal when the marks
are devoid of distinctive chararacter [S.9(1)].
• Acquired Distinctiveness.
Quality • Relative Grounds for Refusal
• Likelihood of confusion [TREVICOL and
FEVICOL].
Process for
registration
of
Trademark
 RIGHTS OF A TRADEMARK
OWNER
Section 28 of the Trade Marks Act, 1999 deals with the rights conferred
by registration. On registration of a trademark, the trademark owner gets
the exclusive right to use the trademark in connection with the goods
and services in respect of which it is registered and he can also obtain
relief in respect of infringement, if one invades his right by using a
mark which is the same or deceptively similar to his trademark.
The right to obtain relief against infringement is subject to certain
limitations as under Section 30 of the Act which state that inter alia if
the mark is used in accordance with honest practices in commercial
matters, not to take unfair advantage of the repute of a trademark, it is
used in relation to goos or services to indicate quality and source, etc.
INFRINGEMENT OF
TRADEMARK
Any person who trespasses the rights conferred by registration of a trademark
infringes the registered trademark.
In case a trademark is not registered then the trademark can be protected under
passing off.
An infringement should constitute the following essentials (a) the infringing mark
must be either identical with or deceptively similar to the registered trade mark;
(b) the goods or services in respect of which it is used must be specifically covered
by the registrar.
The question of similarity between two trademarks and the likelihood of deception
or confusion arising from their use is not to be decided in vacum but to be
determined always in the background of the surrounding circumstances. The
following factors are taken into consideration:
DETERMINING
INFRINGEMENT
ESSCO v. MASCOT [AIR 1982 Del 308]
The question of similarity between two trademarks and the likelihood of deception
or confusion arising from their use is not to be decided in vacum but to be
determined always in the background of the surrounding circumstances. The
following factors are taken into consideration:
• The nature of the marks
• The degree of resemblance between the marks and essential features
• The nature of the goods in respect of which they are used or likely to be used as
trademarks
• The similarity in the nature, character and purpose of the goods of the rival traders
•The class of purchasers who are likely to buy the goods bearing the marks
•The mode of purchase of the goods or of placing orders for the goods
• Any other circumstances
AMRITDHARA PHARMACY V.
SATYA DEO
Here, the question of phonetic similarity was discussed. It was alleged by
the plaintiff that the two words Amritdhara and Lakshmandhara were
phonetically so similar so as to cause confusion among consumers and
hence Lakshmandhara should not be allowed registration. The names
were adopted as tradenames for the same type of medicines. The plaintiff
alleged passing off because they were being used for the same type of
medicines due to phonetic similarity for an average Indian consumer and
an ultimate purchaser. The Court stated that 'Amritdhara' meant ‘current
of nectar' or the ‘flow of nectar and 'Lakshman' and 'dhara' combined
together meant 'current or flow of Lakshman'. The Court held that one
word must be considered as a whole and compared with the other word as
whole. The Court then held that both the words are overall and
phonetically similar.
TEST FOR INFRINGEMENT
Durga Dutt Sharma v. Navratna Pharmy Laboratories
•The onus would be on the plaintiff,
•Where the two marks are identical, no further question to establish that there is
infringement arises,
•Where the two marks are not identical the plaintiff would have to establish that the
mark used by the defendant so nearly resembles the plaintiff’s registered trademark as
is likely to deceive or cause confusion in relation to goods in respect of which it is
registered,
•The court has to compare the two marks; the degree of resemblance. The purpose of
the comparison is for determining whether the essential features of the plaintiff’s
trademark are to be found used by the defendant. The base is to find out if the mark
used by the defendant as a whole is deceptively similar to that of the registered mark of
the plaintiff.
•The identification of the essential features of the mark is in essence a question of fact
and depends on the judgment of the court based on evidence led before it as regards
the usage of it he trade.
 PASSING OFF
In case of infringement of unregistered trademark the passing off can be used a common law
remedy of torts. The plaintiff has to prove that his goods or services have a reputation and
goodwill in the market. The basis of passing off is false representation. Ultimately it is to protect
the consumers from the ultimate confusion while buying the goods, services etc. There are three
elements of the tort of passing off which are as follows: (1) Reputation, (2) deception (3)
damage.
In Erven Warnink v. Towned [1980 RPC 31] the essential characteristics which must be present
in order to create a valid cause of action for passing off are:
• misrepresentation,
• that is made by a person in the course of trade,
• to prospective customers of his or ultimate consumers of goods or services,
• Supplied by him which is calculated to injure the business or good-will of another trader, and
• which causes actual damage to a business or goodwill of the trader by whom the action is
 DIFFERENCE BETWEEN
INFRINGEMENT AND
PASSING OFF
INFRINGEMENT PASSING OFF
Statutory right, conferred on the registered Common law remedy for non-registered marks,
proprietor of a registered trademark. an action for deceit that is passing off by a
person of his own goods as those of another.
Needs to be proved is that the plaintiff was the use of a mark for a sufficient long time so as to
first to adopt and use the mark and the mark is be known to the public is one of the conditions
registered. precedent to the filing of such action.
plaintiff must make out that the use of the Based solely on deception:
defendant mark is likely to deceive but where -misrepresentation,
the similarity between -that is made by a person in the course of trade,
two marks is so close and the court reaches the -to prospective customers of his or ultimate
conclusion that there is an imitation no further consumers of goods or services,
evidence is required to establish that the -supplied by him which is calculated to injure the
plaintiff’s rights are violated business or good-will of another trader, & -which
causes actual damage to a business or goodwill
of the trader by whom the action is brought.
 DEFENCES TO
INFRINGEMENT
• Delay and Laches: Delay alone may not be sufficient to deny relief, unless it has caused prejudice to the
defendant who saw delay as a conscious act of plaintiff to up his rights to claim infringement or passing
off. [Beiersdorf A.G. v. Ajay Sukhwani and Anr. (2009)]
• Acquiescence: a facet of delay, when a party allows the other to invade his right and spend money and the
conduct of the party is inconsistent with the claim for exclusive rights for trademark, trade name. Mere silence or
inaction does not amount to acquiescence [RamdevFood Products Pvt. Ltd. v. Arvindbhai Tambhai Patel and Ors.
(2006)].
• Honest and Bonafide
• Adoption, and
• Use.
• Difference in goods and services
• Difference in Counter of sale
• Class of Purchasers
• Nature of the Product
• Pricing
• Absence of the element of confusion or deception.
REMEDIES
To protect the registered Trade Mark, the following remedies can be resorted
to :-

(1) Civil remedies – When instances of infringement and passing off occur,
the court of competent jurisdiction (court not lower than District Court)
can be moved for grant of :

a. Interlocutory injunction
b. Anton Pillar Orders
c. Damages and
d. Account of profits
(a) Interlocutory injunction 
This form of injunction is the commonly sought and most often granted from of injunction. The
interlocutory injunction is an order restraining the defendants from continuance of the acts which amount
to infringement. 
An interlocutory / interim injunction may be granted ex parte that is without notice in cases of urgency.
Such ex parte injunction is however granted for a limited period only.
The plaintiff is seeking an ex parte interim injunction has to discharge the duty of making full disclosure
to the court of all facts which are material to the exercise of the court’s discretion whether or not to grant
the relief. 
Grant of interim / interlocutory injunction is discretionary, the plaintiff or the applicant cannot claim it as
a matter of right to have an ex parte order granted in his favour.
(b) Anton piller order 
These are ex parte order to inspect defendant’s premises. A court may grant such an order to the plaintiff
where there is a possibility of a defendants destroying or disposing of the incriminating material. Pass
such an order for inspection of the premises of the defendants.
(C) DAMAGES OR ACCOUNTS OF PROFITS

The plaintiff may be granted either damages or an account of profits but not both. In an
account of profit the infringer is required to give up ill-gotten gains in favour of the plaintiff
whose right he has infringed.

In case of damages the defendants has to compensate the plaintiff. The damages may even
be more than monetary profits reaped by the defendants by the misuse of the plaintiff mark.

(d) Mareva injunction

In such an order the court has power to freeze defendant’s assets where there exists a
probability of the assets being dissipated or cancelled so as to make a judgment against him
worthless and un-enforceable.
Passing off remedy

Passing off provides a remedy against a trader who deceives the plaintiff trader's
customers into believing that his goods are the plaintiff's goods. It redresses the
wrongful conduct of the defendant in passing off his goods as the goods of the
defendant.

The purpose of passing off action is to protect commercial goodwill and to ensure
that purchasers are not exploited and dishonest trading is prevented and for that
the plaintiff must establish that his goods or services have acquired a reputation in
the market. There is no need to establish actual deception in such cases.
Over the years, the Indian judiciary has been recognizing and accepting the common law remedy of
passing off. Inspired from Lord Diplock’s formulation in Advocaat case the Indian Supreme Court devised
the test for passing off in Cadila Healthcare v. Cadila Pharmaceuticals Ltd. as follows:
“The passing off action depends upon the principle that nobody has a right to represent his
goods as the goods of some body [else] . . . . [T]he modern tort of passing off has five
elements i.e.
(1) a misrepresentation
(2) made by a trader in the course of trade,
(3) to prospective customers of his or ultimate consumers of goods or services supplied by
him,
(4) which is calculated to injure the business or goodwill of another trader (in the sense
that this is a reasonably foreseeable consequence) and
(5) which causes actual damage to a business or goodwill of the trader by whom the action
is brought or (in a quia timet action) will probably do so.”
Bata India Ltd. v. Pyare Lal and Co.
In this case The plaintiff “Bata” company filed a suit for permanent injunction against
the defendants who were using the word “Bata” as “Bata foam”. The name “Bata” was
registered under the Trade Mark Act, 1940, in respect of canvas, rubber and leather
shoes, rubber footwear, etc. It was held that the plaintiff had a cause of action for
instituting the proceedings for passing off. The plaintiff made out a case of issuance of
an interim order of injunction in respect of the user of the name “Bata” on any of the
products by the defendants.

Borosil Glass Works Ltd. v. O. P. Batra