Abstract
The article thoroughly introduces Indian trademark law, highlighting the value of registered trademarks and the penalties for infringement under Section 29 of the Trademarks Act, 1999. It addresses criminal and civil penalties, such as jail time and fines, for situations involving trademark infringement, such as confusion, unfair advantage, and resemblance. A list of circumstances that do not violate Section 30 is provided.
Famous cases such as Pernod Richard India v. Frost Falcon Distilleries, Renaissance Hotel Holdings v. B. Vijaya Sai, and ITC Ltd v. Central Park Estates show how the law has been interpreted, addressing deceptive similarity, extending the definition of trademark infringement, and navigating the boundaries of jurisprudence for trademarks registered outside of India.
The notion of passing off in tort law is examined in this article, which cites Cadillac Healthcare v. Cadilla Pharmaceuticals to support its validity in terms of goodwill, representation, and possibility of damage. To maintain the identities of Indian and international enterprises, it advocates for additional steps beyond the current civil remedies. It calls for a greater focus on protecting unregistered trademarks within the legislative framework.
Keywords
Trademark, Trademark Infringement, Legal Remedies, Passing Off
Introduction
A trademark can be defined as a sign or mark represented graphically and used to distinguish between different brands of goods and services. Once the Trademark registry office registers a trademark, no other third party can use the same sign or mark without prior approval. In other words, once a trademark is registered then the person registering it gets exclusive permission to use it for his products or brand Section 29 of the Trademark Act,1999[1] defined trademark infringement as the use of the same or deceptively same design or mark or symbol which some other party already registers with the trademark registry.
To protect a business’s brand identity and build customer trust, trademarks are essential. Trademarks assist companies in setting themselves apart from the competition and avert consumer confusion by granting the exclusive right to use a distinctive name, logo, or symbol. Good trademarks are an important asset for businesses, as they act as a symbol of the calibre and reliability of a good or service. Market expansion is facilitated, client loyalty is nurtured, and brand recognition is improved.
To further protect the distinctive features that set a company apart, trademarks serve as legal shields, enabling companies to pursue legal action against unlawful usage, copying, or counterfeiting. The establishment and maintenance of a brand’s uniqueness and integrity in a cutthroat commercial environment mostly depend on trademarks.
Situations which would amount to trademark infringement
- When a sign or symbol is exactly similar or almost similar to the registered trademark.
- If the said sign or symbol creates a sense of confusion in the mind of people, relating it with some other goods of another brand.
- If an unfair advantage is taken from the goodwill which is associated with the registered trademark which is bad for its name and reputation.
- If the trademark is being used without taking due permission of the person with whom the said trademark is registered.
- If the registered trademark is used along with a trade name or other business name for products and services for which it is registered.
Legal remedies for trademark infringement
In our country trademark infringement is both a criminal and a civil offense which means police complaints can be registered against the offenders and police can exercise the right to arrest. Under the Trademark Act,1999 an offence of infringement can lead to imprisonment not less than 6 months which may extend to 3 years and a fine up to 2 lakhs but not less than 50,000 or both. On the other hand, a civil complaint can also be registered against the infringer and will be dealt with accordingly. In such cases the judges can take any of the following recourse: –
- Granting injunction or stay order.
- Providing damages to the rightful holder of the registered trademark.
- Compelling the infringer to share profits with the rightful owner of the registered trademark.
Along with civil and criminal remedies, administrative remedies are also available in cases of trademark infringement. Under administrative remedies a registered trademark is corrected to avoid further confusion. Import and export of goods which are concerned with the disputed or illegal trademark is restricted to avoid any confusion. Lastly, an examination is conducted by the authorities and the conclusion is written down in a registered trademark journal to avoid any confusion.
Situations which would not amount to trademark infringement
Sec 30 of the trademark acts[2],1999 lays down certain conditions where the trademark cannot be said to be violated. These are as follows-:
- When a person uses the trademark in good faith with honest intention for business and commercial purposes
- When a person uses the trademark by the established practises by law.
- When a person uses the trademark either with the express or implied consent of the original owner of the trademark.
- Whenever any trademark is used to represent the sort, quality, amount, intended purpose, value, geographical origin, the time of manufacture of goods or rendering of services or any other attributes of goods or services
Landmark cases in trademark infringement
In the landmark case of Renaissance Hotel Holdings Inc. V B. Vijaya Sai and others[3], the appellant had filed a restraining order against the respondent to stop the use of ‘Sai Renaissance’ which has been used by the appellant since 1981 and has goodwill and popularity attached to it. On reaching the high court, the court held that proof of actual deception and damage should be available to consider it as an infringement of the trademark.
This verdict of the High Court was overturned by the SC which held that once it is proved that a similar trademark is being used for similar kinds of products which can very well confuse the customers falls within the ambit of trademark violation.
In the case of Pernod Richard India Pvt Ltd V Frost Falcon distilleries limited[4], Sc ponders upon the question of deceptive similarity. In this case, the plaintiff contests that the defendant’s liquor brand ‘Casinos Pride’ is violating the trademark of the plaintiff’s ‘Blender’s Pride’. The court held that the plaintiff is asking for the exclusive right to use the said trademark as a whole under sec 17 of the trademark act[5] but it comprises the word ‘pride’ whose exclusive access cannot be granted to the plaintiff and hence there is no trademark infringement.
In the landmark case of ITC Ltd V Central Park Estates Private Ltd[6], The SC of India explores the territorial jurisprudence of the trademarks registered outside India. In this case, the plaintiff has a well-known restaurant registered by the name of ‘Bukhara’ and after some time the defendants also opened a restaurant named ‘Balk Bukhara’. The plaintiff in this case has asked the court to protect the trademark under section 11(2)[7] of the act.
The court held that, unlike American jurisprudence, Indian Jurisprudence recognises the validity of transboundary trademarks and their fame. That is why American jurisprudence will not be applicable here and the petitioner’s trademark is protected under section 11(2) of the Trademark Act.
The concept of passing off
The concept of passing off has emerged in recent years and is used to protect the unregistered trademark in our country. It comes under the ambit of tort law. This concept traces its origin back to the English common law. It is based on the trinity of goodwill, representation, and the likelihood of damage as its essential elements. Although in India, passing off is not recognised as a substantive law under the trademark act our courts have used this concept various times in various cases.
The honourable Supreme Court upheld the passing-off test in the case of Cadillac Healthcare Limited v. Cadilla Pharmaceuticals Limited (2001)[8], noting that the remedy for a passing-off action is predicated on the idea that no one has the right to represent another person’s goods as his own. To put it more clearly, it means that one cannot pretend to be selling someone else’s goods or services to sell their own.
Trademark ownership is determined by a mark’s priority in usage, which establishes the unique attribute that the mark processes. Due to seniority in using such a mark, the first user or first mover becomes the rightful owner. The plaintiff must demonstrate that they were the first to use the mark in a given amount of time to establish ownership of the mark.
Since passing off is a common law remedy rather than a statutory remedy, a person can get the remedy of passing off under section 20 of the civil procedure code[9] whereas a suit can be initiated under sec 134 of the Trademark Act,1999[10] to get the benefit.
In Durga Dutt Sharma v. Navratna Pharmaceuticals (1960)[11], the Supreme Court emphasized the distinctions between the two while acknowledging the importance of both. According to the top court, the right to sue for infringement is granted by statute to the registered owner of a registered trademark, who also has the exclusive right to use the trademark in connection with goods. Unregistered goods and services, on the other hand, are protected by the passing-off action defence.
Conclusion
Trademark Act,1999 and other civil laws have helped many Indian businesses and commercials to save the identity of their goods and product lines. Courts of our country have made many important decisions regarding concepts like passing off and similarity tests so they can protect the identity of both Indian and foreign businesses.
What is required now is that our courts and government should emphasize unregistered trademarks cause many trademarks in our country are unregistered which needs to be protected. Although civil remedies do exist for this other aspects to protect unregistered trademarks should be considered under the ambit of statutory law of the Trademark Act, 1999.
The article is authored by Shivam Tah, who is second-year law student of BCom LL.B in Nirma University.
[1] Trademarks Act. 1999.
[2] Trademarks Act 1999.Sec 30
[3] Civil Appeal No 404 Of 202
[4] IA 2821/2021 in CS(COMM) 94/2021
[5] Trademarks Act 1999.sec 17
[6] 2022 SCC Online Del 4132
[7] Trademarks Act 1999.sec 11(2)
[8] 2001(2) PTC 541 SC
[9] Civil Procedure Code 1908.sec 20
[10] Trademarks Act 1999.sec134
[11] AIR1962KER156