Infringement of a trademark occurs if a person other than the registered proprietor in the course of trade, in relation to the same goods or services for which the mark is registered, unless the same mark or a deceptively similar mark.
Essentials of Infringement
- The taking of any essential feature of the mark or taking the whole of the mark and then making a few additions or alterations would constitute infringement.
- The infringing mark must be used in the course of trade
- The infringement is caused when the trademark is printed or used by any other representation like, embossing, sticking on invoices or bills. There cannot be any oral infringement.
- The occurrence of any one or combined use of all the above acts constitutes an infringement of trademark.
Forms of Infringement
A registered trademark is infringed if used in the course of trade by the person other than the registered proprietor or permitted user of the trademark. The common examples or forms of infringement can be enumerated as below.
- When the trademark is used by a person other than the registered user, there is a strong probability to cause a confusion in the mind of the general public that there is an association between the two users when actually it is not so.
- When the trademarks are identical and the goods & services which it covers are also similar there is a probability of causing confusion.
- Infringement would also occur if the registered trade mark which is used in relation to the goods and services which are not similar to those for which the trade mark is registered.
- Infringement would also occur if the registered trade mark has acquired a reputation in India and the use of such mark or a mark identical or similar to it without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.
- A registered trade mark is also infringed by any advertising of the trademark if such advertising of the trademark takes unfair advantage of and is contrary to honest practices in industrial or commercial registered trade mark. Also if it is against the reputation of the registered trade mark.
What is meant by a deceptively similar mark?
When infringement is caused by using a deceptive trademark in order to cause confusion with the original mark, it is called ”deceptively similar”. Deception is caused in the following ways:
- Deception or confusion as to goods: A person may buy the goods seeing one mark thinking that it is the brand, which is in his mind, which in fact is not the case. This is the most common type of confusion or deception.
- Deception or confusion as to trade origin: A person looking at a mark may buy the goods thinking that it is bearing a similar mark with which he is familiar. This is deception or confusion as to trade a source.
- Deception or confusion as to trade connection: A person looking at the mark may not think that it is the same as one with a different brand in his mind but the similarity may make him believe that the two are in some way or other connected with each other. The use of the mark might give rise to belief in the purchaser”s mind that there is some connection with the goods and the owner of the registered trade mark.
The plaintiffs are reputed manufacturers of a toothpaste Colgate. Defendants used the mark Colmate, which is phonetically similar and the mark is made in similar red alphabets on white background in a deceptively similar manner. This amounts to infringement and the defendants are liable to an action for infringement.
Who can sue for infringement?
The following can be sued in case of infringement:
- The proprietor of a registered trademark or his legal successor.
- A registered user of a trade mark, subject to prior notice to the registered proprietor and consequent failure of the registered proprietor to take any action against the infringer.
- An applicant for registration of a trade mark, even before his trade mark is registered in order to continue the use of the trade mark if registered.
- Legal representative of the deceased proprietor of trademark.
- One of the joint proprietors of the trade mark
- Any foreign proprietor of a trade mark registered in India when infringement occurs in India.
Who can be sued?
- The infringer, who directly causes infringement, or who contemplates or contemplates or threatens to use a trade mark, infringing the plaintiff”s right.
- The master, who is responsible for his servant”s act of infringement: For example, the worker is engaged in making fake labels; the master of such worker will be sued.
- The agents of an infringer.
- Directors and promoters of a limited company cannot be made parties as co-defendants, unless they have personally committed or directed infringing acts.
Passing off - Passing off occurs when one trader attempts to pass off his goods by misrepresenting them so as to make the consumers believe that his goods as those of another trader e.g. using a new cosmetic by the name Likeme with a similar get up to pass off as the popular brand Lakme.
The action against passing-off also lies in instituting a suit. The action is often combined into a suit for infringement and passing off to claim the relief is recognised by law.
Reliefs in suits for infringement or passing off
- The relief, which the court may grant in any suit for infringement or passing off includes an injunction at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery up of the infringing labels and the marks for destruction.
- The court shall not grant relief by way of damages or an account of profits in the following cases:
- where in a suit for infringement of a trade-mark, the infringement complained of is in relation to certification of trademark; or
- Where the a suit for infringement the defendant satisfies the court:
- 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 trade mark of plaintiff was on register or that the plaintiff was a registered user by way of permitted use:
- that when he became aware of the existence and nature of the plaintiff”s right in the trade mark, he forthwith ceased to use the trademark in relation to goods in respect of which it was registered:
- where in a suit for passing off the defendant satisfies the court:
- That at the time he commenced the use of trademark, complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark was in use.
- That when he became aware of the existence and nature of the plaintiff trade mark, he forthwith ceased to use the trade mark complained of.
Types of relief in Trademarks case
- Injunctions restraining further use
- Damages or account of profits
- An order for delivery of infringing labels for destruction
Types of Injunctions under Trade mark
- Anton Pillar Order
- Mareva Injunction
- Interlocutory Injunction
- Perpetual Injunction.
Anton Pillar order
This is an ex parte order to inspect the defendant”s premises. A court may grant such an order to the plaintiff where there is a possibility of the defendant destroying or disposing of the incriminating material. Such an order is for inspection of the premises of the defendant.
An ex parte order means an order, passed on the application of the plaintiff without giving the defendant a notice of the application. Since a notice would enable the defendant to tamper with evidence of his infringement; hence ex parte order.
The conditions requisite for making an order are:
- There must be a strong prima facie case in favour of the plaintiff.
- Such an order, if not granted, will cause irreparable damage to the applicant for injunction.
- There must be clear evidence that the defendants have in their possession incriminating documents or things and there is a real possibility that they may destroy such material if any notice of application is served.
In such an order, the court has power to freeze the defendant”s assets where there exists a probability of the assets being dissipated or cancelled so as to make a judgment against him.
This form of injunction is the most commonly sought and most often granted form of injunction. It serves to take action against the defendant on the basis of past infringement. The interlocutory injunction is an order, restraining the defendant from continuance of the acts which amount to infringement. This serves the purpose of preventing further infringement.
An interim injunction may be granted ex parte i.e. without notice in cases of urgency. Such ex parte injunction is however granted for a limited period only.
The plaintiff, 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 exercise of the court”s discretion whether or not to grant the relief. The Court may reject the application of an ex parte injunction but this 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.
A Perpetual injunction is an order restraining the defendant totally, for all times to come, from doing any act, which infringes the right of the proprietor of the Trade mark. A Perpetual injunction is generally granted when the suit is finally decided. A Perpetual injunction usually follows when the grant of interim injunction against infringement was granted at the beginning of the suit. It can be granted also in cases where no interim injunction was granted.
Damages & accounts of profits
The plaintiff in an action for infringement may be granted either damages or an account of profit, but not both. In an account of profits, the infringer is required to give up his wrongly achieved gains in favour of the plaintiff, whose rights he has infringed.
In case of damages, the defendant has to compensate the plaintiff. The damages the defendant has to compensate the plaintiff. The damages may even be more than the monetary profits, reaped by the defendant by misuse of the plaintiff”s mark.
The quantum of damages awarded is determined by the quantum of loss actually sustained by the plaintiff which was the natural & direct consequence of the unlawful acts of the defendant. Speculative and unproven damages are also not considered in determining the quantum of damage.
In calculating the account of profits, the damage suffered by the plaintiff is immaterial. The account of profit is made out of sale of infringing goods.
[gravityform id=1 name=UntitledForm]