Brand Infringement in India
Section 30 of the Trade Marks Act, 1999 provides limits on the effect of registered trademarks and also enumerates certain acts which do not constitute brand infringement. These acts are also used as defense in suits for brand 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.
Suit for Groundless Threats and Declaration of Non-Infringement a real mischief!