Trademark infringement is the result of any unauthorized use of a trademark that is “identical” or “deceptively similar” to a registered trademark, which is known as infringement. Trademark Infringement is mentioned u/s 29 of the Trademarks Act, 1999. The passing-off action calls for the protection of unregistered goods and services. The most important differentiation is that the remedy in both the cases remains the same, however, the trademark protection is limited to registered products and services, whereas on the other hand, passing off is applicable to unregistered goods and services.
The distinction between Trademark Protection and Passing off was defined elaborately by the Honorable Apex Court in the case of Durga Dutt v. Navaratna Pharmaceuticals. The distinction is as follows:
|Trademark Protection||Passing off|
|Trademark Protection shields documents goods and services.||Passing off shields unregistered goods and services.|
|The respondent’s use of the petitioner’s or plaintiff’s trademark is necessary.||The respondent’s use of the petitioner’s or plaintiff’s trademark is NOT necessary.|
|It is a statutory therapy.||It is a standard law remedy.|
|Cases for trademark protection can be alleged u/s 134 of the Trademarks Act, 1999.||Cases for passing off can be alleged u/s 20 of the Civil Procedure Code, 1908.|
|For a trademark protection, registration is important.||For passing off, reputation, damage and misrepresentation are important.|
Understanding the terms
As mentioned in the introduction above, let us focus on who is what.
Unauthorized Person: A person who is not the owner or has the license of the registered trademark.
Identical or Deceptively Similar: It is a test to determine if marks are identical (alike) or not via determining if there is a chance of probability of confusion among the public. If the public or consumers are confused between any two marks, there is an infringement of the trademark.
Registered Trademark: A trademark can be infringed only if it is registered, if someone infringes an unregistered trademark then a common law of passing off shall apply.
Goods and Services: To establish infringement of goods or services has taken place, the goods or services of the infringer must be identical or similar to the goods and services that the registered trademark represents.
Infringement Actions in Trademark
Section 29 of the Trademarks Act, 1999 specifies the provision for infringement of registered trademarks which says that a “person who, without being a registered proprietor or a person using by way of permitted use, uses in the course of business a mark that is identical to, 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 taken as being used as a trademark, infringes on the trademark.”
Precedents on Trademark Infringement
In Playboy Enterprises, inc v. Bharat Malik, the plaintiff had filed a suit before the Honorable High Court of Delhi asking for a permanent injunction against the defendant, Playway Magazine Company. It was alleged that both the plaintiff’s and the defendant’s magazines are primarily “sex-oriented” and that the infringer magazine, Playway was also fraternized with information on current affairs, national interests, interviews from celebrities, comics etc. The plaintiff complained that the use of the word “PLAY” from the mark PLAYBOY was ill-motivated, illegal, deceptive, and even phonetically similar to the mark PLAYBOY, resulting in a blatant infringement of the plaintiff’s registered trademark. The Honorable High Court contended to refrain the defendant from using the trade name “Play” on account of the same word being the soul of the plaintiff’s registered trademark and the defendant had used it with the motive to destroy the goodwill of the company of the plaintiff.
In Astra IDL Ltd v. TTK Pharma Ltd., the High Court of Bombay mentioned the test for determining infringement of the trademark. The Honorable Court contended that with regards to deciding if there has been any sort of infringement or not, the effect or impact of infringing a trademark on the purchaser needs to be taken into consideration. The infringement of trademark is only said to be caused when the complete image and impression of the trademark is likely to cause deception in the consumer’s mind.
Passing off in Trademark
No actions for infringement shall take place in the case of an unregistered trademark as mentioned u/s 27 of the Trademarks Act, 1999. When a trader misrepresents and that harms the goodwill of the plaintiff, the action of passing off arises. In layman’s words, when a trader makes a misrepresentation during the course of his or her business that harms the business of some other trader and actually causes damage and harm to the business of the trader’s business or goodwill, a passing off action arises.
Precedents on Passing off in Trademark
In the case of K. Narayanan v. S. Murali, the Honorable Apex Court contended that mere filing for an application for trademark infringement would not account for a part of the cause of action in a suit for passing off. The Court further contended that a suit might be filed where a trademark is infringed upon, but the cause of action in order to file the suit would not arise within the jurisdiction of the Court only because of an advertisement in the Trademarks Journal or any other journal notifying the fact that filing of such an application has been published.
The case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., contains the issue of passing off the action with regards to internet domain names. Taking into consideration that India horribly falls behind an effective legislation to administer domain names with the purview of the Trademarks Act, 1999 is not ample enough to shield domain names, as observed by the Honorable Apex Court. There is an absence of statutory remedy to safeguard the domain names on the internet, however, a common-law remedy of passing off is available to protect the internet domain names.
After reading the blog, one thing must have been cleared that it is generally preferred to register a trademark as it gives the legatee, legal ownership of the mark. In addition to that, the owner of the mark does not have to establish a prior usage in terms of an infringement, and a suit for the same accords the owner to file for an allegation for compensation. Hence, even though this is not mandatory and the Trademarks Act, of 1999 gives an option, it is always preferred and holds more importance if the mark is registered.
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