Trademarks: Registration of Trademarks; Difference between infringement of Trademark and Passing off, Remedies in suits for infringement or for passing off
Applicability of the Trademarks Act, 1999
The Trademarks Act, 1999 (hereinafter also referred to as “the Act”) extends to the whole of India.
What is a trademark ?
As per Section 2(zb) of the Act:
“trade mark”means a mark
- capable of being represented graphically, and
- capable of distinguishing the goods or services of one person from those of others
It may also include:
- shape of goods,
- packaging of goods, and
- combination of colours;
As per Section 2(zb)(i) in relation to Chapter XII (other than section 107) of the Act, a trade mark is a registered trade mark or a mark used in relation to goods or services for the purpose of indicating, or so as to indicate
- a connection in the course of trade between the goods or services, as the case may be, and
- some person having the right as proprietor to use the mark;
As per Section 2(zb)(ii) in relation to other provisions (i.e. those not mentioned in Section 2(zb)(i)) of the Act, a trade mark is
- certification trade mark or collective mark
- a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate
- a connection in the course of trade between the goods or services, as the case may be, and
- some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and
Registration of Trade marks
- Trade Marks Registry
As per Section 5(1) of the Act, the“Trade Marks Registry”established under the Trade and Merchandise Marks Act, 1958 is the Trade Marks Registry.
- Register of Trademarks
As mandated by Section 6(1) of the Act, a record called the “Register of Trade Marks” is kept at the head office of the Trade Marks Registry. It can be kept wholly or partly in computer floppies diskettes or in any other electronic form subject to such safeguards as may be prescribed by the Government. This register is kept under the control and management of the Registrar [Section 6(5)]. At each branch office of the Trade Marks Registry, a copy of the register and such of the other documents (mentioned in section 148 as the Central Government may, by notification in the Official Gazette, direct) are kept.
In this register, all registered trademarks are entered with the
- description of the proprietors
- notifications of assignment
- names, addresses and descriptions of registered users
- and such other matter relating to registered trade marks as may be prescribed.
As per Section 6(4), in this register No notice of any trust, express or implied or constructive, can be entered and no such notice can be received by the Registrar.
- Classification of goods and services
The Registrar classifies goods and services, as far as may be, in accordance with the International classification of goods and services for the purposes of registration of trade marks. Any question arising as to the class within which any goods or services falls is determined by the Registrar whose decision is final. (Section 7)
- Procedure for Registration
As per Section 18, any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark. A single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefore shall be in respect of each such class of goods or services.Every application for registration of Trademark is to be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situated.The Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.In the case of a refusal or conditional acceptance of an application, the Registrar has to record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision. The Registrar, however, under Section 19 has the power to withdraw his acceptance of an application for registration of a trademark, but after hearing the applicant. It would not be out of course to mention here, that the Registrar, if wants to exercise this power has to exercise it before the registration of trademark. The grounds for withdrawal of acceptance are:
- If the registrar is satisfied that the application has been accepted in error; or
- If the registrar is satisfied that in the circumstances of the case, the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted.
As per Section 20 of the Act, When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner.
As per Section 21 of the act, Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration.The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application. If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition.Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the costs of proceedings before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned. However The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter-statement on such terms as he thinks just.
As per Section 23, Subject to the provisions of section 19, when an application for registration of a trade mark has been accepted and either
(a) the application has not been opposed and the time for notice of opposition has expired; or
(b) the application has been opposed and the opposition has been decided in favour of the applicant,
the Registrar shall, unless the Central Government otherwise directs, register the said trade mark [within eighteen months of the filing of the application] and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 154, be deemed to be the date of registration.On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.
Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.
- Effect of Registration
As per Section 28, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.However, the exclusive right to the use of such trade mark shall be subject to any conditions and limitations to which the registration is subject.
Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trademarks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
As per Section 31, In all legal proceedings relating to a trade mark registered under the Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
Infringement of Registered Trademarks
When does infringement take place ?
As per Section 29 of the Act, a registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
A registered trade mark is infringed by a person who 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,
provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation.
Infringement of a registered trade mark by a person who is neither a registered proprietor, nor a person using by way of permitted use.
A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. However infringement takes place when such identical or deceptively similar mark is used in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—
- its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
- its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
- its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
Or, a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—
- is identical with or similar to the registered trade mark; and
- is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
- the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
What does “use” mean. ?
As per Section 29(6), for the purposes of section 29, a person uses a registered mark, if, in particular, he—
- affixes it to goods or the packaging thereof;
- offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
- imports or exports goods under the mark; or
- uses the registered trade mark on business papers or in advertising.
When does advertisement of trademark amount to infringement ?
A registered trade mark is infringed by any advertising of that trade mark if such advertising:
- takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
- is detrimental to its distinctive character; or
- is against the reputation of the trade mark.
When does infringement not take place ?
As per Section 30 of the Act, nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor if 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, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;
- a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market or in relation to services for use or available for acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend;
- the use by a person of a trade mark—
- in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or
- in relation to services to which the proprietor of such mark or of a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark;
- the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;
- the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.
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 of a trade mark by reason only of—
- the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or
- the goods having been put on the market under the registered trade mark by the proprietor or with his consent.
However this shall not apply where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market.
Difference Between Passing Off And Infringement
In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 Supreme Court 980 : PTC (Suppl) (2) 680(SC), their Lordships of the Supreme Court have pointed out as to what is the difference between the action for passing off and the action for infringement of trade mark. Their Lordships of the Supreme Court have held as follows:
- An action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action for infringement.
- The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods.
- The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine quo nonin the case of an action for infringement.
- No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases.
- In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the Court reaches the conclusions that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated.
- Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial, whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”
Relief in suits for infringement or for passing off
As per Section 135, The relief which a court may grant in any suit for infringement or for passing off includes
- Injunction (subject to such terms, if any, as the court thinks fit). However the order of injunction may include an ex parte injunction or any interlocutory order for any of the following matters, namely:—
- for discovery of documents
- preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit
- restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
- 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. However the court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case—
- where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark or collective mark; or
- where in a suit for infringement the defendant satisfies the court—
- that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and
- that when he became aware of the existence and nature of the plaintiff’s right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or
- where in a suit for passing off, the defendant satisfies the court—
- that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark for the plaintiff was in use; and
- that when he became aware of the existence and nature of the plaintiff’s trade mark he forthwith ceased to use the trade mark complained of.