Infringement of a trademark in India means a violation of the exclusive rights that are granted to the proprietor registered under the Trade Marks Act, 1999. The rights that are violated are those which are granted in relation to goods and services.
Sections 29 and 30 of the Act lay down certain provisions for protecting the registered trademark in case it is infringed on by someone else.
Section 29 of the Act says that a registered trademark is infringed when an unregistered proprietor or licensee uses the said trademark for trade and business purposes.
1. Identity with registered mark: a mark that is similar to the registered one and there is also a similarity between the business activity thus rendered.
2. Similarity with registered mark and identity of goods/services: As mentioned above, there should be no similarity between the mark or the services rendered so as to avoid any confusion in public
3. Identity with registered mark and goods and services-presumption of confusion: this is a mark which is similar to one that already exists and also means that the goods and services rendered are similar. Do remember that in such cases the courts can decide if the use will be a cause of confusion for the general public
4. Identity with a registered mark having reputation: A mark which is identical to one registered in India with a reputation. It’s a concern even if such a mark is used for goods and services that are not exactly related to the original.
5. Similarity of trade name with registered trademark: The name of a trade that is similar to the goods and services that are being run under the original registered trademark
6. Application of registered mark on labelling, packaging knowing that it is sans authorization: This basically means that the a person who has no claim in the registered trademark used it without the consent of the person who actually owns the trademark
7. Use of registered trademarks in advertisements: Such a move takes unfair advantage and works in contrary to honest commercial and industrial practices. This is also detrimental to its distinctive character or is against the reputation of the trade mark.
What does amount to infringement in India?
Section 30 of the Act lists down limits on the effect of registered trademark and also enumerates certain acts which do not amount for infringement. These moves are also used as a defence in suits of infringement of trademarks. Am infringer may be freed from his liability is his use of the trademark falls within the scope of anything mentioned in Section 30.
The section says there is no infringement of trademark:
1. Use of mark to indicate the kind, quality, quantity, etc: When the said infringing mark is used for goods and services covered by the registered trademark to mark the kind, quality, and quantity of the goods and services rendered. For example, the proprietor of the RICH’S WHIP TOPPIN filed a case of infringement against the user of BELLS WHIP TOPPING. The court, however, ruled against the complainant saying that the ‘whip topping’ was indicating the sort of goods it sold and the services it rendered, and hence did not amount for infringement.
2. Use of mark outside the scope of registration: For example, ‘XYZ Garden Market’ can be registered with the condition that the registered proprietor may not have exclusive rights to the words ‘garden’ and ‘market’. Hence, the use of the latter by anyone else will not amount to infringement.
3. Implied consent of use: Where a person uses the mark in relation to goods and services for which the registered user had applied for the trademark and may not have removed it or consented to its use
4. Use of registered trademark in relation to accessories and parts: A trademark registered for any goods and services in relation to parts and accessories to other goods and services. Such a usage is reasonably unnecessary and the effect of such a usage may not be considered as a deceit of the original
5. Use of the two registered trademarks that are similar to each other: Such a usage of trade mark being one of two or more registered trade mark, which are identical or similar in exercise of the right to the use of that registered trade mark