Penalties and Remedies for Trademark Infringement and Passing Off
Registration of a trademark grants exclusive rights to the proprietor and allows legal action against infringement. The Trademark Act, 1999 provides remedies like injunctions, damages, and penalties for unauthorized use of registered marks. Infringement occurs when a registered trademark is used without permission, while passing off refers to misrepresentation of goods under common law. Legal protections, limitations, and consequences for infringement are outlined in the law.
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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 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. required for valid action have been
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 thisAct. [Section 115] Thanks!
