Legal Remedy Against Trademark Infringement Under Indian Law

A Trademark is vital business identity which facilitates earning goodwill over time by rendering quality products and services. Eventually carving a niche amongst consumers.  

With this comes the possibility of unscrupulous elements trying to make quick profit by unauthorised use of your trademark or a deceptively similar one for marketing their products, eating into your hard earned reputation and gains.  

Trademark infringement is governed by Section 29 of the Trademarks Act, 1999.According to the said section Infringement of registered trade marks occurs when; 

(I) A person, not being a registered proprietor or a person having permission to use, uses in the course of trade,  

1)a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be associated with the registered trade mark. 

2) a mark which because of- 

(a) being identical with the registered trade mark and there is similarity of the goods or services covered by such registered trade mark; or 

(b) being similar to the registered trade mark and goods or services are identical as covered by such registered trade mark; or 

(c) being identical with the registered trade mark and goods or services are also identical covered by such registered trade mark, 

and the above situations are likely to cause confusion on the part of the public, likely to assume an association with the registered trade mark. 

(II) A registered trade mark is considered infringed also in a case when a person who, not being a registered proprietor or permitted to use, uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark; and 

 (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and 

 (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. 

(III) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. 

Likelihood of confusion i.e a presumption of association between marks amongst the consumers is the standard for determining trademark infringement. 

Indian Trade Marks Law provides legal remedy to protect the rights of bonafide owners of Trademarks. Although Registration of a Trademark is considered prima facie evidence of validity in the court of law and a Registered user of Trademark can prevent its misuse by initiating infringement action in court of law, Yet in cases where the Trademark is not Registered but it is a bonafide and honest adoption coupled with usage , legal remedy under Tort of Passing Off can be sought. 

In a suit for injunction against infringement of trademark, following civil remedy/reliefs can be sought against Trademark Infringement / Passing Off : 

i)Permanent and interim injunction against the Defendants and
ii)Damages or & Account of profits, and
iii)Delivery of the infringing goods for destruction.

One can also avail remedies under Criminal Law in case of false application of a Trademark and the use of false Trade Descriptions. The law provides for search and seizure of infringing articles and the offence is punishable with imprisonment and fine . 

_{The Author Can Be Contacted At sudhamanjulajha@gmail.com  OR Ph. +91-8929203324}