INFRINGEMENT OF

TRADEMARK
TRADEMARK INFRINGEMENT
CHAPTER IV-EFFECT OF REGISTRATION-
27. No action for infringement of unregistered trade mark.—
(1) No person shall be entitled to institute any proceeding to prevent, or to recover
damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person
for passing off goods or services as the goods of another person or as services
provided by another person, or the remedies in respect thereof.
28. RIGHTS CONFERRED BY
REGISTRATION.—
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if
valid, give to the registered proprietor of the trade mark the exclusive right to the use of the
trade mark in relation to the goods or services in respect of which the trade mark is
registered and to obtain relief in respect of infringement of the trade mark in the manner
provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be
subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical
with or nearly resemble each other, the exclusive right to the use of any of those trade
marks shall not (except so far as their respective rights are subject to any conditions or
limitations entered on the register) be deemed to have been acquired by any one of those
persons as against any other of those persons merely by registration of the trade marks but
each of those persons has otherwise the same rights as against other persons (not being
registered users using by way of permitted use) as he would have if he were the sole
registered proprietor.
CASES
•S. Syed Mohideen v. P. Sulochna Bai 2016(66)- No Turn Mattresses
•Dabur India Ltd v. Real Drinks Pvt. Ltd. 2014 (57) PTC 1 (SC).- Real Drink, Real
Manik and Real Soda. – Where defendant had registration for the marks-Real Manik
and Real Soda
INFRINGEMENT OF
REGISTERED TRADE MARKS
29. Infringement of registered trade marks.—
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, 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 taken as being
used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which because of—
(a) its identity with the registered trade mark and the similarity of the goods or services covered by
such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services
covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by
such registered trade mark, is likely to cause confusion on the part of the public, or which is likely
to have an association with the registered trade mark.
PRESUMPTION OF PUBLIC
CONFUSION
(3) In any case falling under clause (c) of sub-section (2), the court shall presume
that it is likely to cause confusion on the part of the public.
IDENTICAL
S. Oliver Bernd Freir Gmbh & Co. Kg v. Rasul Exports (2014) (57) PTC 475(Del)-
Rival marks are to be compared as a whole. Where two rival marks are identical, it
was not necessary for the plaintiff to prove further that the use of defendant’s trade
mark was likely to deceive and cause confusion as the registration showed the title of
the registered proprietor and the things spoke for themselves.
DECEPTIVE SIMILARITY
Section 2(1)(h)- “deceptively similar”.—
A mark shall be deemed to be deceptively similar to another mark if it so nearly
resembles that other mark as to be likely to deceive or cause confusion
Parle Products Pvt Ltd. And Anr vs Future Consumer Ltd.
And 4 Ors
GORBATSCHOW WODKA KG
V. JOHN DISTILLERIES
LIMITED
What emerges from these authorities is
(a) What is the main idea or salient features,
(b) marks are remembered by general impressions or by some significant detail
rather than by a photographic recollection of the whole,
(c) over similarity is the touchstone
(d) marks must be looked at from the view that first impression of a person of
average intelligence and imperfect recollection.
(e) overall structure, phonetic similarity and similarity of idea are important and both
visual and phonetic tests must be applied.
(f) the purchaser must not be put in a state of wonderment
(g) marks must be compared as a whole, microscopic examination being
impermissible.
(h) the broad and salient features must be considered for which the marks must not
be placed side by side to find out difference in design and
(i) overall similarity is sufficient.
BRITANNIA INDIA LTD. V. ITC
LTD. & ORS. I.A. 12115/2020 IN +
CS(COMM) 553/2020
M/S BIOFARMA V. SANJAY
MEDICAL STORES 1997 PTC (17)
355
Deceptive Similarity to be determined by:
1. nature of the marks- whether word, label or composite marks
2. degree of resemblances between marks, phonetically similar and hence similar in idea.
3. nature of goods in respect of which they were used to trade marks
4. similarity in nature, character and performance of the goods of the rival traders.
5. The class of purchasers who were likely to buy the goods bearing the marks, education,
intelligence, degree of care they were likely to exercise in purchasing the goods.
6. mode of purchasing the goods or placing orders for the goods and
7. any other surrounding circumstances.
Similarity of Goods and Service
Dissimilarity of Goods and Service
(4) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted 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.
KABUSHIKI KAISHA TOSHIBA
TRADING VS MR. S.K.SIL & ANR.
(2011) (47)PTC 484
“Considering (i) the duration for which the trademark TOSHIBA has been used by the plaintiff,
(ii) the geographical extent of trading area in which this mark is being used,
(iii) the volume of business being carried by the plaintiff using the mark TOSHIBA on its goods,
(iv) the extent of knowledge of the mark TOSHIBA in India, which is evident from the business
activities of the company in India and the wide range of the products being sold by it in India under
the brand name TOSHIBA,
(v) the extensive advertisement and promotion of the brand TOSHIBA throughout the world,
including in India the number of registration which the plaintiff company holds in a large number of
countries, including India in respect of the trademark TOSHIBA and
(vi) the number of consumers buying goods being sold under this brand name, I have no hesitation
in holding that the TOSHIBA is a well-known brand in India, brand TOSHIBA enjoys a trans
border reputation and has acquired the status of a well-known brand in India.”
Another case-Brahmos Aerospace Pvt Ltd v. FIIT JEE Limited (2014) 58 PTC 90
DOCTRINE OF DILUTION
In simple terms, trademark dilution occurs when an unauthorized party uses a
trademark in a manner that would tarnish or diminish the image of a well-known
trademark. Most often than not, trademark dilution occurs among businesses or
individuals that do not compete with each other.
Dilution is widely categorized into two types:
Blurring and tarnishment.
Dilution by blurring occurs when the distinctiveness of a popular trademark is
impaired due to a trademark which is created by an unauthorized party. For instance,
if a business uses the 'FACEBOOK' mark on a toothpaste, consumers may begin to
associate the well-known FACEBOOK mark with the toothpaste brand. This may
negatively impact Facebook's brand image.
ITC v. Philip Morris Products SA (2010) (42) PTC 572.- Plaintiff, owner of
“Welcomegroup” Logo
The court emphasized that the following four essential elements need to be
established in order for a dilution case to succeed, viz.,:
1. The diluting (impugned) mark is identical or similar to the injured (senior) mark;
2. The injured mark has a reputation in India;
3. The use of the impugned mark is without due cause;
4. The use of the impugned mark (amounts to) taking unfair advantage of, or is
detrimental to, the distinctive character or reputation of the registered trade mark.
On the other hand, dilution by tarnishment occurs when a person or a business
unauthorizedly uses a mark in an offensive, inappropriate or absurd context.
Generally, unauthorized parties create infringing marks to insinuate beliefs or
messages that go against the core values of the original mark's owner.
For instance, the unauthorized use of the "WHOLE FOODS" mark to associate it
with food items that use hydrogenated fats, artificial colors, and flavors can be
considered as an example of trademark dilution by tarnishment.
Or Drink Cocaine for Coca-Cola.
USE OF REGISTERED TRADE
MARK AS TRADE NAME
(5) 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.
• No-fault provision, higher degree of protection- no consumer deception required to
be proven.
INFRINGEMENT OF TRADE
MARK BY ADVERTISEMENTS
(8) A registered trade mark is infringed by any advertising of that trade mark if such
advertising—
(a) takes unfair advantage of and is contrary to honest practices in industrial or
commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
 WHAT IS PERMITTED?

Comparison Disparagement
Disparagement-Disparagement means matter which is intended by its publisher to be
understood or which is reasonably understood to cast doubt upon the existence or
extent of another’s property, whether tangible or intangible, or upon its quality.
•In Pepsi Co. vs. Hindustan Coca Cola Ltd, Coca-cola had infringed the plaintiff’s
rights. The advertisement had disparaged PepsiCo’s product, stating that the
beverage was a “Bachon Wala Drink” (A drink for kids). In furtherance, Coca Cola
had also used a beverage bottle with the same colors as PepsiCo. And had written
“Peppi” on it. While analyzing the meaning of disparagement, the court held that an
advertisement is considered to be defaming if it
is undervaluing, bringing discredit or dishonor upon the competitor’s product.
RECKITT & COLMAN OF INDIA
LIMITED VS. M.P.RAMCHANDRAN
& ANOTHER (1999 (19) PTC 741)
"I. A tradesman is entitled to declare his goods to be best in the words even though the
declaration is untrue.
II. He can also say that my goods are better than his competitors', even though such
statement is untrue.
III. For the purpose of saying that his goods are the best in the world or his goods are
better than his competitors' he can even compare the advantages of his goods over the
goods of the others.
IV. He, however, cannot while saying his goods are better than his competitors', say that his
competitors' goods are bad. If he says so, he really slanders the goods of his competitors. In
other words he defames his competitors and their goods , which is not permissible.
V. If there is no defamation, to the goods or to the manufacturer of such goods no action
lies, but if there is such defamation, an action lies and if an action lies for recovery of
damages for defamation, then the court is also competent to grant an order of injunction
restraining repetition of such defamation.
 DABUR INDIA LTD. VS. COLORTEK
MEGHALAYA PVT. LTD. AND ORS.
(02.02.2010 - DELHC)-
MANU/DE/0225/2010
•Odomas and Good Knigh Mosquito Repellent case.
•In Tata Press Ltd. v. MTNL and Ors. (1995) 5 SCC 139 (paragraph 25) the Supreme
Court held that "commercial speech" is a part of freedom of speech and expression
guaranteed under Article 19(1)(a) of the Constitution. But false, misleading, unfair
and deceptive advertising is not protected.
•First 3 points of Reckitt Coleman case were overruled as bad law.
HINDUSTAN UNILEVER LTD. V.
GUJARAT CO-OPERATIVE MILK
MARKETING FEDERATION LTD., AND
ORS. NOTICE OF MOTION (L) NO.
690/2017
Arguments: IN SUIT (L) NO. 204/2017
The main contentions of Amul were that while comparing television advertisements,
a frame by frame analysis of the advertisements should be avoided as in comparative
advertisement, puffery of its own products is allowed. Amul also contended that an
alert and aware customer can easily understand that 'vanaspati tel' refers to vegetable
oil and not 'Dalda'.
HUL contended that by showing vanaspati flowing into a cup, Amul wanted to
portray that all frozen desserts contain only vanaspati/vanaspati oil which translates
to Dalda and is admittedly bad for health. HUL clarified that Kwality Wall's range of
'frozen desserts' do not contain vanaspati. In fact, Kwality Wall's range of frozen
desserts contains milk/milk solids. The only difference is that frozen desserts use
vegetable fat instead of dairy fat, which actually makes them healthier as they have
lower saturated fat and do not have cholesterol.
DECISION OF THE COURT
Point 1- The difference in contents of ice-cream and frozen desserts.
To address the 1st point the Court looked into the Food Safety and Standards Regulations Rules, 2011.
Section 2.1.7 sub sections (1) and (3) of the Rules note –
"Ice Cream means the product obtained by freezing a pasteurized mix prepared from milk and /or other
products derived from milk."
"Frozen Dessert means the product obtained by freezing a pasteurized mix prepared with milk fat and / or
edible vegetable oils."
The Court held that by indicating that all frozen desserts use only vanaspati/vanaspati oil, which is admittedly
bad for health, Amul had disparaged the entire category of frozen desserts in general. HUL and Vadilal, being
the market leaders for frozen desserts, had produced substantial evidence to assert that they did not in fact use
vanaspati or vanaspati oil in making their products. The advertisements that were aired led the public to
believe that frozen desserts were of an inferior quality than milk-based ice creams.
Therefore, the Court held that the entire concept and intent of the commercials was disparaging.
Point 2-The difference between comparative advertising and product disparagement.

For there to be product disparagement, there has to be three key ingredients,

1. a false/misleading statement regarding the goods,
2. that deceived consumers and
3. was likely to influence consumer behavior.
In the present case, Amul's TVCs had not only made a false statement regarding the constituents of frozen
desserts but had done so with the intention to potentially deceive ordinary customers who are aware of the
health issues associated with vanaspati.
Therefore, in light of the above, the Court held that:
a manufacturer or a tradesman is entitled to boast that his goods are the best in the world, even if such a claim
is factually incorrect, and
that while a claim that the goods of a manufacturer or the tradesman are the best may not provide a cause of
action to any other trader or manufacturer of similar goods, but the moment the rival manufacturer or trader
disparages or defames the goods of another manufacturer or trader, the aggrieved trader would be entitled to
seek relief including redressal by way of a prohibitory injunction.
The Court granted an injunction to HUL and restrained AMUL from airing the TV commercials and upheld
the generic disparagement of 'frozen desserts'.
It held that "the content, intent, manner and storyline of the impugned TVCs seen as a whole, convey a false,
untruthful, malicious and negative message" thereby disparaging "the entire category of products known as
Frozen Desserts of which the Plaintiff is a market leader" and "also disparaging the products manufactured
and sold by the Plaintiff and adversely affecting the business of the Plaintiff."
SPOKEN USE OF WORDS AS
TRADEMARK
(9) Where the distinctive elements of a registered trade mark consist of or
include words, the trade mark may be infringed by the spoken use of those
words as well as by their visual representation and reference in this section
to the use of a mark shall be construed accordingly.
 WHAT IS NOT
INFRINGEMENT
30. Limits on effect of registered trade mark.—
(1)Nothing in section 29 shall be construed as preventing the use of a
registered trade mark by any person for the purposes of identifying goods or
services as those of the proprietor provided the use—
(a)is in accordance with honest practices in industrial or commercial matters,
and
(b)is not such as to take unfair advantage of or be detrimental to the
distinctive character or repute of the trade mark.
 TESTS TO DETERMINE HONEST
PRACTICES
1. Standpoint of reasonable person in the trade knowing fully well about the trade.
2. Practices prevalent in the industry

Case-
Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, 2022 SCC OnLine SC 61
1. Section 29(4)- Transborder reputation
2. Section 30 (1)- Twin test of honest practice and not detrimental
INDICATIVE OF KIND, QUALITY
(2) A registered trade mark is not infringed where—
(a)the use in relation to goods or services indicates the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services;

Case- Orchid Chemicals & Pharmaceuticals Ltd v. Wockhardt Ltd. ( 2013 (56)PTC
558)
Metoprolal, Meto in public domain-
Court held that Section 28-30 have to be read together in harmonious construction.
NOT WITHIN REGISTRATION
(b) a trade mark is registered subject to any conditions or limitations, the use of
the trade mark in any manner in relation to goods to be sold or otherwise traded in,
in any place, or in relation to goods to be exported to any market or in relation
to services for use or available or acceptance in any place or country outside India or
in any other circumstances, to which, having regard to those conditions or
limitations, the registration does not extend;
ACQUIESCENCE
(c) the use by a person of a trade mark—
(i) in relation to goods connected in the course of trade with the proprietor or a registered user of the
trade mark if, as to those goods or a bulk or which they form part, the registered proprietor or the
registered user conforming to the permitted use has applied the trade mark and has not
subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the
use of the trade mark; or
(ii)in relation to services to which the proprietor of such mark or of a registered user conforming to
the permitted use has applied the mark, where the purpose and effect of the use of the mark is to
indicate, in accordance with the fact, that those services have been performed by the proprietor or a
registered user of the mark;
 CADBURY UK LIMITED & ANR. VS
LOTTE INDIA CORPORATION LTD. 24.01.2014 IA NO. 10425 OF 2013 & IA
NO. 12219 OF 2013

Point of contention-Choclairs
Plaintiff's mark enjoyed an international reputation which had spilled over to India
and particularly at the time the defendant entered the market (in 2009) with their
chocolairs products. The mere fact that the plaintiffs might not have chosen to
contest the fact that the defendant's mark included Chocolairs did not negate the
plaintiff's spill over reputation.
SECTION 33- EFFECT
OF ACQUIESCENCE
(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous
period of five years in the use of a registered trade mark, being aware of that use,
he shall no longer be entitled on the basis of that earlier trade mark-
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in
relation to which it has been so used, unless the registration of the later trade mark
was not applied in good faith.
(2) Where sub-section (1) applies, the proprietor of the later trade mark is not
entitled to oppose the use of the earlier trade mark, or as the case may be, the
exploitation of the earlier right, notwithstanding that the earlier trade mark may no
longer be invoked against his later trade mark.
USE IS REASONABLY
NECESSARY
(d) the use of a trade mark by a person in relation to goods adapted to form part of,
or to be accessory to, other goods or services in relation to which the trade mark has
been used without infringement of the right given by registration under this Act or
might for the time being be so used, if the use of the trade mark is reasonably
necessary in order to indicate that the goods or services are so adapted, and neither
the purpose nor the effect of the use of the trade mark is to indicate, otherwise than
in accordance with the fact, a connection in the course of trade between any person
and the goods or services, as the case may be;
Case- Hawkins Cookers Ltd v Murugan Enterprises RFA (OS) 09/2008
The Division bench highlighted that the respondent while writing "Suitable for
Hawkins Pressure Cooker" has given undue prominence to the word "Hawkins" by
printing it in a distinct red colour and the remaining words of the sentence are printed
in black colour.
HONEST CONCURRENT USE
(e) the use of a registered trade mark, being one of two or more trade
marks registered under this Act which are identical or nearly resemble each other,
in exercise of the right to the use of that trade mark given by registration under this
Act.
Case-
Sau Pritikiran Rajendra Katole v. Sau. Harsha Ravindra Katole, 2014 (57) PTC 350
Bom.-
Godwa prakashan. Concurrent use allowed.
EXHAUSTION OF RIGHTS
(3) Where the goods bearing a registered trade mark are lawfully acquired by a
person, the sale of the goods in the market or otherwise dealing in those goods by
that person or by a person claiming under or through him is not infringement of a
trade by reason only of—
(a)the registered trade mark having been assigned by the registered proprietor to
some other person, after the acquisition of those goods; or
(b)the goods having been put on the market under the registered trade mark by the
proprietor or with his consent.
Case- Kapil Wadhwa v. Samsung Electronics Co. Ltd. (2013 (53)PTC 112 (Del)
DB.- International Exhaustion of rights was upheld.
VESTED RIGHTS
34. Saving for vested rights
Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark
to interfere with or restrain the use by any person of a trade mark identical with or nearly
resembling it in relation to goods or services in relation to which that person or a
predecessor in title of his has continuously used that trade mark from a date prior-
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the
proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or
services in the name of the proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to
register the second mentioned trade mark by reason only to the registration of the
first-mentioned trade mark.