TRADEMARK INFRINGEMENT AND PASSING OFF:

PENALTIES AND REMEDIES UNDER TRADEMARK LAW

IPR-I

Unit: 2 (Part 3)

Dr. Amrendra Kumar

Assistant Professor, Law Centre-II
INTRODUCTION

• As we know that registration of the trademark provides “exclusive right” to registered

proprietor to use the trademarks taken as whole in relation to the goods in respect of
which it is registered. Besides, it also enables the registered proprietor to sue for
infringement of registered trademark.
• If a registered trademark is used or invaded by another person or trader without
permission or consent of registered proprietor, he would be liable for an action for
infringement of registered trademark. ‘An action for infringement’ herein means legal
protection to a registered trademark from violation and invasion by other through
statute.
• No action for the infringement of a trademark could be instituted if the trademark is
unregistered. There is alternative remedy available for the proprietor of unregistered
trademark when it is infringed under the ‘Law of Passing off’. ‘An action of passing off’
means nobody is allowed to represent his goods as the goods of somebody else under
common law.
• The action for infringement and passing off could be laid down under the provisions of
‘Trademark Act, 1999’. However, it also provides certain limits on the effect of
registered trademarks i.e. exception to the infringement action as well.
• The relief which a court may grant in any suit for infringement and/or passing off
includes injunction, damages and delivery of the infringed goods besides the penalties
for offences committed.
INFRINGEMENT ACTION: [Section 29]

• The infringement action is a ‘statutory remedy’ available to the registered proprietor or

to the registered user [ Section 29], based on statutory rights conferred by registration of
a trade mark [Section 28], subject to the limitations or restrictions. [Sections 30, 34, 35]
• when a registered trade mark is used by a person who is not entitled to use such a trade
mark under the law, it constitutes infringement of registered trade mark . ‘Section 29’
dealing with infringement of trademark explicitly enumerates “nine grounds” which
constitute infringement of a registered trade mark.
• A registered trade mark is infringed, if the mark is identical and is used in respect of
similar goods or services; or the mark is deceptively similar to the registered trade mark
and there is an identity or similarity of the goods or services covered by the trade mark;
or the trade mark is identical and is used in relation to identical goods or services; and
that such use is likely to cause confusion on the part of the public or is likely to be taken
to have an association with the registered trade mark. [Section 29(1-3)]
• A person shall be deemed to have infringed a registered trade mark, if he uses a mark
which is identical with or similar to the trade mark, and is used in relation to goods or
services which are not similar to those for which trade mark is registered; and the
registered trade mark has a reputation in India and the use of the mark without due cause
would take unfair advantage of or is detrimental to the distinctive character or repute of
the registered trade mark. [Section 29(4)]
Conted.

• A person is prohibited from using someone else’s trade mark, as his trade name or name
of his business concern or part of the name of his business concern dealing with goods or
services in respect of which trade mark is registered. [Section 29(5)]
• A person shall be deemed to have used a registered trade mark in circumstances which
include affixing the mark to goods or packaging, offering or exposing the goods for sale
or supply of services, importing or exporting the goods, using the trade mark as trade
name or trade mark on business paper or in advertising. [Section 29(6)]
• A person shall also be deemed to have infringed a registered trade mark if he applies such
registered trade mark to a material intended to be used for labeling or packaging goods as
a business paper, or for advertising goods or services knowing that the application of such
mark is not authorized by the proprietor or licensee. [Section 29(7)]
• Advertising of a trade mark to take unfair advantage of, or against the honest industrial or
commercial practices or which is detrimental to the distinctive character or is against the
reputation of the trade mark shall constitute an infringement. [Section 29(8)]
• Where the distinctive element of a registered trade mark consists of words, the spoken use
of such words as well as visual representation for promoting the sale of goods or
promotion of service would constitute infringement. [Section 29(9)]
• An infringement action is available to the ‘registered proprietor or registered user’ to
enforce his exclusive right over the trade mark in relation to the goods in respect of which
it is registered.
LIMITATION OR EXCEPTION TO INFRINGEMENT: [Section 30-35]

• However, Section 29 shall not be construed as preventing the use of a registered trade mark
by any person for the purpose of identifying goods or services as those of the proprietor
provided the use is in accordance with honest practices in industrial or commercial matters;
and is not such as to take unfair advantage of or be detrimental to the distinctive character or
repute of the trade mark.
• A registered trade mark is not infringed where the use in relation to goods or services
indicates the kind, quality, quantity or other characteristics of goods or services; and the use
of the trademark the registration does not extend to such conditions or limitations. 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. [Section 30]
• 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. [Section 33]
• 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. [Section 34]
• The proprietor or a registered user shall not be entitled to interface with any bonafide use by a
person of his own name or that of his or his predecessor’s place of business, or the use by any
person of any bona fide description of the character or quality of his goods or services.
[Section 35]
ACTION OF PASSING OFF: [Section 27]

• No person shall be entitled to institute any proceeding to prevent, or to recover damages

for, the infringement of an unregistered trade mark. However, the TM Act shall not 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 for unregistered trade mark. [Section 27]
• The passing off is an actionable wrong under law of tort wherein a person passes off his
goods as the goods of another to exploit the goodwill and reputation in his business.
Law of tort dealing with passing off the goods, is substantially based on judicial
decisions. The TM Act deals with only the rules of procedure and remedies for passing
off.
• The essential characteristics of passing off required for valid action have been
prescribed as: (1) Misrepresentation; (2) made by a person in the course of trade; (3) to
perspective consumers of his goods or services provided by him; (4) which is calculated
to injure the business or goodwill of another trader; and (5) which causes actual damage
to the business or goodwill of trader by whom the action is brought or probably do so.
• However, the defendant may set up valid defense in action for passing off as such: (1)
the mark or name which is sought to be restrained, is devoid of distinctiveness; (2) the
use of the defendant’s mark or name is not to be likely to pass off as those of plaintiff's
goods; (3) the goods or business of the defendant is totally different with plaintiff; (4)
defendant has not misrepresented with facts or harm the goodwill of the plaintiff; and
(5) the plaintiff is not entitled to relief on account of delay, estoppel and acquiescence.
PENALTIES AND REMEDIES: [Sections 101-105&135]

• The TM Act also deals with the matters relating to penalties for offences and remedies
for the civil action. The offences are relating to “applying false trademark” or
“falsifying the trademark” along with other infringing action.
• A person shall be deemed to apply a trade mark or mark or trade description to goods or
services who (a) applies it to the goods themselves or uses it in relation to services; or
(b) applies it to any package in or with which the goods are sold, or exposed for sale, or
had in possession for sale or for any purpose of trade or manufacture. [Section 101(1)]
• A trade mark or mark or trade description shall be deemed to be applied to goods
whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to,
the goods or to any package or other thing. [Section 101(2)]
• A person shall be deemed to falsify a trade mark who, either-(a) without the assent of the
proprietor of the trade mark makes that trade mark or a deceptively similar mark: or (b)
falsifies any genuine trade mark, whether by alteration, addition, effacement or
otherwise. [Section 102]
• It also deals with the penalty for applying false trade mark, trade description, etc. and
imposes punishment with imprisonment for a term which shall not be less than six
months but which may extend to three years and with fine which shall not be less than
fifty thousand rupees but which may extend to two lakh rupees. [Section 103]
Conted..

• It prescribes enhanced penalty on second and subsequent conviction for offences

committed under sections 103 and 104 and imposes punishment with imprisonment
which shall not be less than one year but which may extend to three years and with fine
which shall not be less than one lakh rupees but which may extend to two lakh rupees.
[Section 105 ]
• It expressly stipulates that the relief which a Court may grant in any suit for infringement
or for passing off referred to in Section 134 includes injunction (subject to such terms, if
any, as the court thinks fit) and 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 marks for destruction or erasure. [Section 135 ]
• A suit can be initiated in any court inferior to a District Court having jurisdiction to try
the suit either under the law of passing off or for infringement for these remedies under
the Trade Marks Act, 1999 depending on whether the trade mark is unregistered, pending
registration or registered respectively. [Section 134]
• No court inferior to a Metropolitan Magistrate or Judicial Magistrate of the First Class
shall try an offence under this Act. [Section 115]

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