Introduction
Trademark infringement arises when one person uses a trademark that is either identical or confusingly similar to an existing registered trademark. This may include a distinctive symbol, logo, tagline, phrase, design, or a combination of these components representing the company's goods and services. This unlawful use has the potential to confuse consumers and capitalize on the registered trademark's reputation. Passing-off depends on the notion that one cannot sell, promote, present, advertise, or indicate the other person's goods or services as its own. In order to win a passing-off claim, the plaintiff must establish the defendant's false representations, the existence of goodwill and recognition amongst consumers related to its goods or services, and the loss or damage caused by the defendant's misrepresentation.
Related Provisions for Infringement & Passing Off
Section 29(1) of the Trademarks Act, 1999, states that a registered trademark is infringed by a person who, without being a registered proprietor or a person using by way of permitted use, uses during the course of trade a mark that is identical with, or deceptively similar to, the trademark in relation to goods or services for which the trademark is registered, and in such a way that the use of the mark is likely to be interpreted as being used as a trademark.
Section 11(3)(a) of the Trademark Act, 1999, provides that a trademark shall not be registered if, or to the extent that, its use in India is liable to be prevented by virtue of any law, in particular the law of passing off protecting an unregistered trademark used in the course of trade.
Section 27 of the Trade Marks Act, 1999, provides that no infringement action will lie in respect of an unregistered trademark but recognizes the common law rights of the trademark owner to take action against any person for passing off their goods/services as the goods of another person or as services provided by another person.
Civil Remedies against Infringement & Passing Off
As per Section 134 of the Act, a proprietor of a registered trademark for infringement of its trademark or for any other related rights and a proprietor of an unregistered trademark for passing off may institute a suit against the defendant for using a deceptively similar or identical trademark, whether registered or unregistered. The plaintiff shall institute the suit before any court inferior to the District Court that has the jurisdiction to try the suit. The jurisdiction of the District Court is determined within the local limits where the person actually or voluntarily resides, carries on any business, or works for profit at the time of instituting any suit or proceeding.
According to Section 135 of the Act, in any suit for infringement or passing off, the court may grant relief, which includes injunction and either damages or an account of profits with or without the ceding of infringed labels or marks for eradication.
Criminal Remedies against Infringement & Passing Off
As per Section 103 of the Trademarks Act, 1999, any person who intentionally applies for false trademarks, falsely applies trademarks to goods or services, or falsely applies a trade description shall be punished with imprisonment for six months, which may extend to three years, and with a fine of fifty thousand rupees up to two lakh rupees.
As per Section 104 of the Trademarks Act, 1999, any person who sells goods or provides services by applying a false trademark to them shall be punished with imprisonment for six months, which may extend to three years, and with a fine of fifty thousand rupees up to two lakh rupees.
Forfeiture of Goods—Section 111 of the Trademarks Act, 1999
Whenever a person is found guilty of an offense under Section 103 or Section 104 or Section 105 or it has been proven that he acted without any intention to commit any fraud, the court may direct the forfeiture of goods to the government and all means through which the offense has been committed. If an appeal is filed against a conviction and forfeiture is ordered by the court based on that conviction, the appeal will also be filed against the forfeiture. If forfeiture of goods is ordered on acquittal and the goods pertaining to it are worth more than fifty rupees, an appeal against such forfeiture may be filed within thirty days of the date of the order before the court that hears appeals from the court that ordered the forfeiture. If forfeiture is ordered in response to a conviction, the court that rendered the decision may mandate that any forfeited property be destroyed or otherwise disposed of as the court sees fit.
Conclusion
In conclusion, protecting trademark holders' rights and securing fair competition depend heavily on remedies or damages for trademark infringement and passing off. Legal measures like account of profits, damages, and injunctions are powerful deterrents against trademark infringement. The harm caused by infringement is significantly reduced by remedies like effective advertising and the forfeiture and destruction of forged goods that cause violation of the rights of the plaintiff. Businesses can continue operating a well marketplace where consumer trust is maintained and brand image is protected thanks to the legal framework, which also protects the interests of trademark owners.
India: +91-1141 8355 50