What amounts to Infringement of a Trademark in India?
Infringement of a Trademark in India means violation of the exclusive rights granted to the registered proprietor under the Trade Marks Act, 1999 to use the same in relation to the goods or services in respect of which the trade mark is registered. Section 29 and Section 30 of the Trade Marks Act, 1999 lay down the provisions for protection of a registered trademark in case the same is infringed upon by a person not being a registered proprietor or licensee.
Section 29 of the Trade Marks Act, 1999 provides that a registered trademark is infringed when a person not being a registered proprietor or licensee, uses in course of trade;
1. Identity with Registered Mark and Similarity of Goods / Services
A Mark which is identical to the registered trademark and there is similarity of the goods or services covered by the trade mark in a manner causing confusion to the general public; or
2. Similarity with Registered Mark and Identity of Goods / Services
A Mark which is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark in a manner causing confusion to the general public; or
3. Identity with Registered Mark and Identity of Goods / Services – Presumption of Confusion
A Mark which is identical to the registered trademark and there is similarity of the goods or services covered by the trade mark. It is pertinent to note that in such cases the Courts will presume that such use will cause confusion on part of public; or
4. Identity with Registered Mark having Reputation
A Mark which is identical or similar to the registered trademark having reputation in India, even if such mark is used in relation to goods or services which are not similar to those for which the trademark is registered?
5. Similarity of Trade Name with Registered Trade Mark
A trade name or part of trade name and such concern is dealing in the goods or services in respect of which the trade mark is registered.
6. Application of Registered Mark on Labelling or Packaging etc. with knowledge that such application is without Authorisation
Applies registered trademark to material intended to be used for labeling, packaging, business paper or advertisement provided such person when he applied the mark knew or had reasons to believe that the application of the mark was not duly authorised by the Registered User or Licensee thereof.
7. Use of Registered Trademark in Advertising, when such use takes unfair advantage, is detrimental or against the reputation of registered Trademark
An advertising using a registered trademark and such advertising;
takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
is detrimental to its distinctive character; or
is against the reputation of the trade mark.
What does not amounts to Infringement of a Trademark in India?
Section 30 of the Trade Marks Act, 1999 provides limits on effect of registered trademark and also enumerates certain acts which do not constitute infringement. These acts are also used as defense in suits for infringement of trademarks and an infringer may escape his liability if his use of the registered trademarks falls within the ambit of the section. Section 30 of the Trade Marks Act, 1999 provides that there is no infringement of registered trademark;
1. Use of Mark to indicate the kind, quality, quantity etc.
When the infringing mark is used in relation to goods or services covered by the registered trademark to indicate the kind, quality, quantity etc. of the goods or rendering of services. For example in a case before the Delhi High Court proprietor of the mark “RICH’S WHIP TOPPING” registered in Class 30 for non-dairy topping, icing, filling and generally for other goods in that Class instituted a trademark infringement proceedings and passing off action against the user of the mark “BELLS WHIP TOPPING”. The Delhi High Court in this case held that as the word “WHIP TOPPING” is indicative of quality of goods sold under and its use can not be considered as infringement of registered trade mark “RICH’S WHIP TOPPING” unless it is established that the mark “WHIP TOPPING” has acquired secondary meaning.
2. Use of Mark, which is outside the scope of Registration
When the registered trademark is registered subject to conditions or limitations and the trademark is used in a manner, which outside the scope of registration. For instance; a trademark such as “ABC Garden Market” may be registered with the condition that the registered proprietor will not have the exclusive right to use the words “Garden” and/or “Market”. In such case use of the words “Garden” and/or “Market” by person will not amount to infringement of the registered trademark.
3. Implied Consent for Use
Where a person uses the mark in relation to goods or services for which the registered owner had once applied the mark and had not subsequently removed it or impliedly consented to its use;
4. Use of Registered Trademark in relation to parts and accessories etc.
A trade mark registered for any goods may be used in relation to parts and accessories to other goods or services and such use is reasonably necessary and its effect is not likely to deceive as to the origin;
5. Use of two Registered Trademarks identical or similar to each other
The use of registered trade mark being one of two or more registered trade marks, which are identical or similar in exercise of the right to the use of that registered trade mark.
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