INFRINGEMENT AND PASSING OFF ACTION UNDER TRADEMARK ACT, 1999
A Trade Mark is a kind of intellectual property. According to the trademark act,1999, section 2(1)(zb) defines “trademark” as a mark capable of being pictured diagrammatically and that is capable of distinguishing the products or services of one person from those of others and may embrace the form of products, their packaging, and combination of others. It suggests that it will be a word, device, mark, signature, name, label, numerals, slogan, or combination of colors used, or alternative establishment or company to distinguish it from alternative similar product or services originated from another. it's additionally popularly referred to as ‘brands name’. A trademark will be owned by any concern, company, individual, or legal entity. The rules and laws of trademark area unit ruled by the trademark act,1999, that protects the owner of the mark by guaranteeing the rights to use it or to authorize another to use a similar reciprocally of payment.
INFRINGEMENT OF TRADEMARK:
Infringement in literal suggests that violation of law or right. A trademark owner has the prerequisite either to use by himself or assign it to others and if some other person uses the trademark when he's not approved amounts to infringement i.e violation of the exclusive rights attaching to a registered trademark while not the authorization of the trademark owner.
Under chapter IV of Section twenty-nine of trademark act,1999 provides the precise which means of Trademark Infringement, which states regarding varied aspects regarding the infringement as given in S.29(1) that ‘Trademark that is registered is infringed by an individual who not being a registered owner of that trademark or an individual victimization through permissible use, uses within the course of trade, a mark that is identical with, or deceivingly just like the trademark in respect to product or services in respect of that the trademark is registered and in such means on offering the employment of the mark possible to be taken as being employed as a trade mark’.
Essential conditions of Infringement :
The one who is infringing the trademark is can’t use the trademark.
The trademark infringed is either similar or identical or deceivingly just like the already registered trademark.
The infringing trademark should be employed in the course of standard exchange that the registered businessman is already engaged.
The use of the infringing trademark should be written like an advert, bills, invoices, etc.(mere oral use of the trademark isn't infringement)
Infringement happens by victimization either the whole of the registered trademark or by creating many addition and alteration in the already registered trademark.
Who will sue for infringement?
An infringed litigant suit could also be either:
The registered trademark’s owner/proprietor or his legal successor.
A registered user of a trademark subject to a previous notice to the registered businessman and sequent failure of the registered businessman to require any action against an infringer.
An soul for registration of a trademark.
Legal heirs of the deceased businessman of a trademark.
Anyone in all the joint proprietors of a trademark.
A foreign businessman of a trademark registered in the Republic of India once infringement happens in India.
Who will be sued?
The infringer who by his action causes infringement or who threats to use a trademark infringing plaintiff’s right.
The master accountable for his servant’s act of infringement. it's the master in such a case who is to be sued.
The agents of an infringer.
Period of limitation and Jurisdiction of Infringement:
Under the limitation act,1963 amount of limitation for filing a suit for infringement of a trademark is 3 years from the date of infringement. And being a statutory right, Section 134 of the Trade Marks Act, 1999 provides the jurisdiction for filing an infringement suit. As per the provisions, a legal proceeding for infringement will be introduced before neighborhood Court among the local limits of whose jurisdiction, at the time of the establishment of the continuing, the person continuing or instituting the suit, or wherever there area unit over one such person any of them, really and voluntarily occupy or carries on business or in person works for gain.
CASE LAWS :
Coca-cola company v. Bisleri International Pvt.Ltd. -
The litigant (coca-cola) company is that the largest complete of soft drinks in operation in two hundred countries and litigant (Bisleri Int.Pvt.Ltd) could be accepted Indian complete that is especially known for its drinking water. The litigant, Bisleri by an agreement, had sold out and allotted the trademark MAAZA together with formulation rights. In 2008, the litigant company filed for registration of the mark MAAZA in Turkey and commenced exportation potable underneath the name MAAZA. The litigant, cola arranged a claim of injunction and compensation for infringement of trademark and spending off. The court accorded an interim injunction against the litigant (Bisleri) from victimization the trademark MAAZA in Bharat in addition to export, which was an infringement of the trademark.
Similar problems with jurisdiction have been handled within the case of Tata Iron & Steel Co.Ltd. v. Mahavir Steels & Ors. And LG Corporation & Anr.v. Intermarket Electroplasters(P) Ltd. &Anr.
PASSING OFF :
“Nobody has any right to represent his product because the product of someone else.” - Halsbury
Passing Off could be a common law civil wrong that protects or safeguards the goodwill and name of the trademark holder against injury caused by the false statement by the litigant. The only real objective is to shield the name and goodwill of a business. The passing-off action came in the 19th century and based on the basic principle “Nobody has any right to represent his goods as the goods of somebody else” it means that no one has the right to use or represent one’s goods as goods of someone’s else.
According to Duhaime's law dictionary, Passing Off is “making some false representation likely to induce a person to believe that the goods or services are those of another.” Which in simple words means, when a person/trader makes a false to his/her customer to make him/her believe that the goods or services which he is providing are of another person.
A trademark that has been registered by the owner and infringed then becomes a suit for infringement, but if the trademark hasn’t been registered by the owner and got infringed then there it becomes a case of passing off.
Essentials that constitute passing off action :
The law of passing-off arises when there is “Misrepresentation”, which means where the defendant tries to make the public believe that the goods or services which he is providing are of the plaintiff.
One must prove that he/she has owned a ‘reputation’ in the mark which associates the public with that specifically.
And the offended party must show or prove that it has suffered an actual loss or damages to the trade or the goodwill of the trader by whom the action is brought.
(It must be proved that the misrepresentation must have caused harm to the goodwill or loss to the reputation.)
There are three main elements of the tort of passing off which were also called as “classical trinity” in Harrods v. Harrodian School
Reputation of goods
Possibility of Deception and,
Possibility of Damage
The above three factors are important and have been approved by the apex court in Laxmikant V. Patel v. Chetanbhat Shah.
CASE LAWS :
Honda Motors Co. Ltd. v. Charanjit Singh and Ors.:
In March 2002 the plaintiffs have a manufacturing company of motor cars, power equipment, motorcycle, etc. in japan that also provides financial services. The plaintiff is known for its innovative and productive techniques and promises to produce quality products in most of the countries including India under the trademark HONDA, which is of international repute. In the next month, the plaintiff came to know through a trademark journal that an application for registration of trademark HONDA in respect of pressure cookers had been filed in India. The plaintiff opposed, and the court held that by using the name “Honda” the defendants were creating confusion in the consumers’ minds, which was indirectly affecting the business of the plaintiffs adversely. An injunction was ordered to stop the defendants from using the name “Honda”.
SVS Oil Mills v. SVS Rajkumar :
Wherein, the Madras High Court injuncted the use of the ‘SVS with R in small print’ trademark finding is similar to a reputed SVS trademark in yellow polythene plastic cover placed in transparent carry bag with vegetable oil. The petitioner had not obtained registration of the trademark even though its sales were to the tune of Rs. 31 Crore.
Remedies available in an action Infringement or Passing off of Trademark:
To protect the registered trademark, there are the following remedies available for it:
1) Civil remedies:
Under section 135 of the trademark act, 1999, the civil remedies available in suits for infringement or passing off a trademark are stipulated. The remedies are injunction, damages, or Anton pillar orders or an account and handing over of profits and an order for delivering infringing labels and marks for destruction or erasure. The order of injunction specified under section 135(1) of the act, may include an ex parte injunction or interlocutory order.
2) Criminal remedies :
The Complaint may be made against the person causing infringement. Infringement of a trademark is a cognizable offence. There should be an occurrence of criminal activity for encroachment of enlisted trademark. Under section 103 and 104 of the trademark act,1999 is concerned with criminal law remedies namely penalty for applying false trademarks, false description, etc. The imprisonment term shall not be less than 6 months which may extend up to 3 years and the fine imposed for false application of trademark and selling of goods shall not be less than Rs.50,000 thousand which may extend up to Rs.2,00,000.
Provided that the court may for adequate and special reasons to be mentioned in the judgement, the court can impose a sentence of imprisonment for a term of less than 6 months or a fine less than Rs.50,000.
3) Administrative remedies:
Opposing the registration of a deceptively similar trademark when the trademark registry is in the process of considering registering can protect the earlier trademark and can also be moved for removal of a deceptively similar trademark if registered.
MAJOR DIFFERENCES BETWEEN INFRINGEMENT AND PASSING OFF:
In the case of Cadbury India Limited and Ors. vs. Neeraj Food Products, the High Court of Delhi explained ;
The difference between passing off action and an action for trademark infringement as under:
An action for Infringement of trademark is a statutory remedy under section 28 of the trademark act,1999. Whereas, an action for Passing off is essentially a common law remedy.
The use of the mark by the defendant of the trademark of the plaintiff is not essential in any action for Passing off, but it is a prerequisite in the case of Infringement. An action for infringement takes place when the defendant has used the mark of the plaintiff.
An action for Infringement is initiated for a registered trademark. Whereas, action for Passing off is initiated with the unregistered trademark.
In an action of Infringement it is necessary to establish that the infringing mark is identical or deceptively similar to the registered trademark. Whereas, in action for Passing off despite having identical or deceptively similar trademark it should also prove that infringing trademark is confusing the public and damage to the reputation of the business.
In the Infringement of trademark, a suit can be filed under section 134 of the trademark act,1999. Whereas, in action for passing off suit can be filed under Section 20 of the Civil Procedure Code, 1908.
The criminal remedies in an action for infringement are available under section 103 of the trademark act,1999. whereas, action for passing off the remedies is mostly civil in nature thus criminal remedies aren’t granted.
Registration of the trademark has become vital with the growth in the economy. To protect one to urge harm within the sense of reputation and goodwill one must register its name by which he sold his good, i.e. trademark. But those that even don't register their trademark, it doesn't mean they can't protect their rights, their interest, they can also protect the proper right by the concept called Passing off and if it is registered then they can protect their rights under the concept of infringement. Whereas if a company discovers that their trademark is being misused, they can move to court and can file against it. The remedy provided in both the infringement and passing off is mostly the same. It can be said that the protection of a well-known trademark is important not only from the business point of view but also for the protection of consumers from fraud and imposition.
6th semester, BA.LLB
BMS College Of Law, Bangalore.