INFRINGEMENT & PASSING OFF OF

TRADEMARKS
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Infringement by Identical or Deceptively Similar Marks:

A person who is not the registered proprietor or authorized user of a trademark
infringes if they use, in the course of trade, a mark identical with or deceptively
similar to the registered trademark.
Example Company X has registered the trademark "Coca-Cola" for soft drinks.
Company Y starts selling a soft drink called "Coca-Kola" with a similar logo and
packaging. This could be considered infringement because it's deceptively similar to
the registered trademark "Coca-Cola."
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Infringement by Confusingly Similar Marks:

A person infringes if they use a mark that, due to its similarity with the registered
trademark and the similarity or identity of goods or services, is likely to cause
confusion or association with the registered trademark.

Example: Company A sells clothing under the brand "Nike." Another company,
Company B, starts selling shoes under the name "Nke," using a similar logo and
design. This may cause confusion among consumers, leading them to associate
"Nke" with the registered trademark "Nike."
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Infringement with Dissimilar Goods but with Reputation:

• Infringement occurs if a person uses a mark identical or similar to the registered

trademark, even for dissimilar goods or services, if the registered trademark has a
reputation in India.
• This use must take unfair advantage of or be detrimental to the distinctive
character or reputation of the registered trademark.
Example: Brand "Apple" is well-known for electronic devices. If a local grocery
store starts using the name "Apple" for selling fruits, it may still constitute
infringement because the trademark "Apple" has a strong reputation in India, and
using it for unrelated goods may take unfair advantage of its reputation.
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Infringement with Dissimilar Goods but with Reputation:

• Infringement occurs if a person uses a mark identical or similar to the registered

trademark, even for dissimilar goods or services, if the registered trademark has a
reputation in India.
• This use must take unfair advantage of or be detrimental to the distinctive
character or reputation of the registered trademark.
Example: Brand "Apple" is well-known for electronic devices. If a local grocery
store starts using the name "Apple" for selling fruits, it may still constitute
infringement because the trademark "Apple" has a strong reputation in India, and
using it for unrelated goods may take unfair advantage of its reputation.
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Infringement by Use as Trade Name or Business Concern Name:

• Using the registered trademark as a trade name, part of a trade name, or name of a
business concern dealing with goods or services covered by the trademark
constitutes infringement.
• Example: Company M registers the trademark "Maggi" for instant noodles.
Another unrelated business, Company N, starts a restaurant called "Maggi
Corner." This could be seen as infringement since "Maggi" is being used as part of
the business name, which deals with goods similar to those covered by the
trademark.
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Methods of Use Considered Infringement:

Various actions constitute use of a registered trademark, including affixing it to

goods or packaging, offering goods for sale under the trademark, using it on
business papers or in advertising, etc.
Example: Company P sells counterfeit watches with the logo of "Rolex" affixed to
them. Even though these watches are not genuine Rolex products, the act of affixing
the Rolex trademark to the watches constitutes infringement.
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Infringement by Unauthorized Application:

• Applying the registered trademark to materials without proper authorization from

the proprietor or a licensee constitutes infringement.
• Example: An individual prints t-shirts with the logo of "Adidas" without
permission from Adidas. Even though they are not selling goods under the Adidas
brand, applying the trademark to the t-shirts without authorization is considered
infringement.
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Infringement through Advertising:

• Advertising of the registered trademark can constitute infringement if it takes

unfair advantage, is detrimental to the trademark's distinctive character, or goes
against the trademark's reputation.
• Example: Company Q runs an advertisement campaign comparing its detergent
brand to "Tide," a well-known detergent brand. If the advertisement unfairly
undermines the reputation of "Tide" or misleads consumers, it may constitute
infringement.
INFRINGEMENT OF REGISTERED TRADEMARKS
(SECTION 29)

• Spoken Use of Words in the Trademark:

• Infringement can occur through the spoken use of words that are distinctive
elements of the registered trademark, not just their visual representation.

• Example: If a shopkeeper verbally promotes their store by saying, "Come to

'Reliance Store' for the best deals," it still constitutes infringement if the spoken
words "Reliance Store" are identical to a registered trademark.
EXCEPTIONS ( Section 30)

• Permissible Use of a Registered Trademark:

• A registered trademark can be used by any person to identify goods or services as

those of the proprietor, provided that:
• The use is in accordance with honest practices in industrial or commercial matters.
• The use does not take unfair advantage of or harm the distinctive character or
reputation of the trademark.
Example: An individual purchases a branded smartphone with the trademark
"Samsung" and later sells it second-hand to another person. This resale of the
smartphone, using the "Samsung" trademark to identify the product, is permissible as
long as it's done honestly and without harming the reputation of the trademark .
EXCEPTIONS ( Section 30)

• Trademark infringement does not occur in certain situations, including when:

• The use indicates characteristics of the goods or services, such as their kind,
quality, or geographical origin.
• The use is by a person in relation to goods or services connected with the
proprietor or a registered user of the trademark, with their consent.
• The use is reasonably necessary to indicate that the goods are adapted to be part of
or accessory to other goods or services, and does not falsely suggest a connection
with another person.
• The use is of a registered trademark that is identical or similar to another
registered trademark owned by the same proprietor.
EXCEPTIONS ( Section 30)

• Protection for Lawfully Acquired Goods:

• The sale or dealing in goods bearing a registered trademark by a person who

lawfully acquired them is not considered infringement solely because:
• The trademark was assigned to another person after the acquisition of the goods.
• The goods were put on the market under the trademark by the proprietor or with
their consent.
• Example: A person buys branded sportswear with the trademark "Nike" from an
authorized retailer. They later sell the sportswear online. This resale of the goods
bearing the "Nike" trademark, acquired lawfully, does not infringe on the trademark
rights, even if the ownership of the trademark changes hands after the acquisition.
Passing Off

• Passing off in trademarks refers to a legal concept where a person or business

misrepresents their goods or services as those of another, established business by
using a similar trademark or trade name.
• Passing off is not explicitly defined in the Indian Trademarks Act 1999. However,
Section 27 of the Act acknowledges the common law rights of a trademark owner.
This means that even if a trademark is not registered, the owner still has legal
recourse against unauthorized use.
• It is an important legal concept for protecting unregistered trademarks.
Basis Passing Off Trademark Infringement

Type of Remedy Common law remedy Statutory remedy

Registrability Trademarks need not be registered Trademarks must be registered

Plaintiff must prove similarity, Plaintiff must prove deliberate

What is Required confusion, and likelihood of similarity, and confusion is
damage to goodwill assumed
REMEDIES

• Civil Remedies (Sections 34 & 35)

• Criminal Remedies (Section 102 to 120)