Trade Mark Infringement Law India

Infringement of a trade mark occurs if a person other than the registered proprietor in the course of trade, in relation to the same good or services for which the mark is registered,
uses the same mark or a deceptively similar mark.

Essential of Infringement

The taking of any essential feature of the mark of taking the whole of the mark and then making a few additions and alteration would constitute infringement.

The infringement mark must be used in the course of trade, i.e in a regular trade wherein the proprietor of the mark is engaged.

The use of the infringement mark must be printed or usual any oral use of the trade mark is not infringement.

Any or all of the above act would constitute infringement if the same is done in such manner as to sender the used to the mark likely to be taken as being used as a trade mark.

Forms of Infringement

A registered trade mark is infringed if used in the course of trade by the person other than the registered proprietor or permitted user of trade mark. The infringement occurs because such mark used by the one other the registered proprietor or permitted user is likely to cause confusion in the mind of public or is likely to cause impression of association with the registered trade mark and such confusion is caused because of the identity of such mark with the registered trade mark with the registered trade mark as also the similarity of goods of services covered by such registered trade mark. Such confusion can also occur because of the similarity of such mark to the registered trade mark and the identity or similarity of goods or services covered by such registered trade mark. the confusion would also be caused because a such mark’s identity with the registered trade mark as well the identity of goods or services covered by such registered trade marks.

In case where the infringing mark in identical with the registered trade mark and the goods or services are also identical with the goods or services covered by the registered trade mark the court shall presume that such mark is likely to cause confusion of the part of the public.

Infringement of a registered trade mark would also occur is the person who is not registered proprietor or a permitted user of registered trade mark uses in the course of trade a mark which an identical or similar to the registered trade mark.

Infringement also would occur if such a person uses a mark which is used in relation to goods and services which are not similar to those for which the trade mark is registered.

Infringement would also occur if the registered trade mark has acquired a reputation in India and the uses of such mark or a mark identical or similar to it without due cause takes unfair advantage of or is detrimental to the distinctive chartered or repute of the registered trade mark.

A registered trade mark is also infringed by a person if he uses such Registered trade mark as his trade mark or part of his trade name, or name of his business concern or part of such name dealing is goods or services is respect of which the trade mark is registered.

For the infringement described above a person will be considered as using a registered trade mark if he in particular affixes it to goods or packaging thereof or offers or exposes goods for sale, puts them on the market or stock them for such purpose under the registered trade mark on offers or for such purpose under the registered trade mark or offers supplies services under the registered trade mark.

Such person would also be treated as using the registered trade mark if he import or export goods under such mark or uses such registered trade mark or uses such registered trade mark on his business paper or in advertisement.

A registered trade mark is also infringed by a person who applies such trade mark to a material intended to the used for labeling or packaging goods, as a business paper or it is used for advertising goods or services provided that when he applied the mark in such manner , new or head reason to believe that such application of the mark was not duly authorized by the proprietor or a licencee of the registered trade mark.

A registered trade mark is also infringed by any advertising of that trade mark if such advertising takes unfair advantage of an is country to honest practice in industrial or commercial matters. Also if it is detrimental to the distinctive character of the registered trade mark also if it is against the reputation of the registered trade mark.

A registered trade mark will also be infringed by the spoken use of words as well as by their visual representation in cases where the distinctive element of a registered trade mark consist of or include such works.

Using a deceptively similar mark

The infringement that deception or confusion has been caused may arise in the following ways:-

1. Deception or confusion as to goods- A person may buy the goods seeing one mark thinking that it is the brand, which in his mind, which in fact not the case. This is the most common type of confusion or deception.
2. Deception or confusion as to trade origin- A person looking at a mark may buy the goods thinking that it is coming from the same source as some other goods bearing a similar mark with which he is familiar. This is deception or confusion as to trade source.
3. Deception or confusion as to trade connection- A person looking at the mark may not think that it is the same as one with a deferent brand in his mind but the similarity may make him believe that the two are in some way or other connected with each other. The use of the mark might give rise to a brief in the purchasers, mind of there being some connection with the goods and the owner of the registered trade mark.

Illustrative case laws

1. Plaintiff was selling cosmetic products under the registered Trade Mark “Lakme”. Defended was using the Trade Mark “Like-Me” for the same class of products. It was held that there was striking resemblance between the two wards. The two words are also phonetically similar. There is every possibility of deception and and confusion being caused in the mind of the prospective buyer of the plaintiff’s products. injunction was made permanent (PTC 1996,567).
2. The plaintiffs are registered proprietors of trade marks ‘CASTROL’ ’INDROL’ ‘INDROL’ ‘MONOGRAME’ in respect of industrial oils and greases and also held copyright in INDROL device. Infringement was alleged on ground of deceptive similarity by the use of trade mark INDROL with similar colour combination, get up and lay out in connection with similar product, i.e. brake fluids. Interim injunction granted in favour of the plaintiff and the same was confirmed by the High Court (PTC 1995, 37).
3. Plaintiff were registered proprietors of the trade mark ‘MITASO’, the defendants used the marks ‘META-SHOW’. Infringement was alleged on the ground that the two mark on the face of it were deceptively similar phonetically and any ordinary customer could be easily misled in treating the goods of one as coming from the source of another, injunction restraining the defendants from using the trade mark ‘META-SHOW’ was granted (PTC 1995,105).
4. The party in the trade mark registry made an application for registration of trade mark “FIXACOL”. The opponents were registered proprietors of trade mark ‘FEVICAL’ who pleaded rejection of the application on the grounds of deceptive similarity and confusion. The application was refused registration on the above grounds (PTC 1995, 105).
5. The plaintiffs were a reputed manufacturer of dental cream COLGATE. Defendants use the mark COLGATE with is phonetically similar to the plaintiff’s mark with the deceptively similar latter in white with red background so as to cause confusion in the minds of the customer and to pass off its products as COLGATE. Hence the mark was restrained through injunction (PTC 1995, 389).
6. The Supreme Court in Amritdhara v. Satya Deo observed that the ordinary purchaser would go more by the overall structure and phonetic similarity and the nature of medicine he has previously purchased or has been told about, or about which he has otherwise learnt and which he want to purchase . The word ‘Amritdhara’ were held deceptively similar through registration of ‘LAKSHMANDHARA’ was allowed on the basis of honest concurrent user (AIR 1963 SC 453).

Beside the obvious and most prevalent infringement by use of a deceptively similar mark the following activity also amount to infringement:

Taking substancial feature of the mark would be infringement

A mark is infringed by another trader if even without using the whole of it upon or in connection with his goods, he uses one or more of the essential features, however infringement is not to be jugged by the ocular test alone. It has therefore long been accepted that if a ward forming part of mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark it self to used that word as the mark of or part of the mark of another traders.

Addition

Addition of the extraneous mater, inconspicuous addition is infringement, if a person incorporates whole or part of a registered trade mark another, the addition of other or matter would not save him from the charge of infringement. Addition are something made to the infringing mark which are either not easily visible or are so inconspicuous that they could be seen only bye careful scrutiny which is not accepted of an ordinary customer. The inconspicuous addition indicates fraudulent intention and trade mark would be struck down on grounds of infringement.

Use of registered trade mark along with a name other than that of registered proprietor constitutes infringement

Use of trade mark of registered proprietor with the name other than of a registered user constitutes infringement. In Levi v Shah, (1985 RPC 371) the plaintiffs had registered trade mark consisting of labels respectively colored red, orange, white, black and blue sewn “LEVI’s” also a registered trade mark was invariably added to the tabs. The defendants sold jeans and white tabs similar to the registered trade mark sewn into the pockets. It was held as a case of infringement.

When mark is copied, it amounts to infringement

If the infringer has absolutely copied the mark and made a facsimile repression of it, no further evidence is required. When the similarity are so close as to mark it impossible to suppose that such marks were devised independently of each other, in the absence of evidence of a common origin, the conclusion is always that one party copied the mark of another.

Use on reconditioned or secondhand articles

The use of the plaintiff’s mark on reconditioned goods may constitute infringement even if it is clarified that goods are not original but only reconditioned. In Rolls-Royce v. Dodd, (1981 FSR 517), The defendant, a motor engineer concerned with the repair of automatic gear boxes of the kind used in Rolls-Royce and Bentley motor cars, built a car having a grill similar to the plaintiffs grill using plaintiffs registered trade mark emblem and logo. The car head Rolls-Royce engine. The defendants contended that he had built the car only to advertise his business and he was not selling cars. It was held to be an infringement and injunction was granted.

Printing of labels in infringement

Unauthorized printings of labels of the plaintiffs will constitute infringement. If a
Copyright subsist labels; it will constitute infringement of such copyright as well.

Goods manufactured by third party would constitute infringement

When the owner of the mark gets the goods manufactured by the third party under the contract, solely for the mark, sale of the goods bearing the mark by such a manufacturer to other persons would constitute infringement.


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