Intellectual Property Rights are the exclusive provided to the owner in order to protect the intangible property. The main idea is to protect the interest of the owner so that he has the monopoly rights to use his/her property. Intellectual Property includes brand names, logos, artistic works, designs, geographical indications etc.
1.1 Intellectual Property is divided into two categories:
- Industrial Property
1.1.1 Industrial Property: It includes those intellectual property rights which are used for the industrial purposes. This includes trademarks, patents, design and geographical indications.
1.1.2 Copyrights: This intellectual property rights include literary and artistic works of the owner. This includes performance rights, moral rights, and economic rights. Copyrights protects novels, paintings, sculptures etc.
- Intellectual Property in India
India under the TRIPS Agreement is under the obligation to protect the intellectual property rights. In India the intellectual property rights consist of Trademarks, Patents, Copyrights, Design and Geographical Indication etc.
In India, there has been regulatory authorities such as Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce and industry promotes and regulates IPR in India.
India has set up Intellectual Property Appellate Board which entertains the application of intellectual property rights.
The entity earns its goodwill through its goods and services. In order to protect its name and goodwill there was a need of such rights. Then the concept of trademark came.
A trademark in layman’s language is an exclusive and monopoly rights to protect the goods and the services of the owner. It refers to protection of brand names, service marks logos etc. The main idea of the trademark is to protect the good will of the owner.
With the globalization of exchange, brand names, exchange names, marks, and so on, have accomplished an enormous esteem that require uniform least measures of insurance and proficient strategies for authorization as were perceived under the TRIPS.
- Trademarks in India
Trade and Merchandise Marks Act, 1958 was completed and the new Trade Marks Act, 1999 was instituted. The said Act of 1999, with consequent alterations, adjusts to the TRIPS and is as per the global frameworks and practices.
Trademark defined under Section 2 (zb) of the Trade Marks Act, 1999 as, “trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.” A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, and numeral, shape of goods, packaging or combination of colors or any such combinations.
The Trade Marks Act gives, bury alia, for the enlistment of administration denotes, the recording of multiclass applications, expanding the term of enrollment of a trademark to ten years just as an acknowledgement of the idea of surely understood imprints, and so on. The Indian legal executive has been proactive in the security of trademarks, and it has expanded the assurance under the trademarks law to Domain Names.
- Registration of Trademark
According to Section 18 (1) of the Trademark Act, 1999, any individual professing to be the owner of a trademark utilized or proposed to be utilized by him may apply recorded as a hard copy in an endorsed way for registration. The application must contain the name of the imprint, products and enterprises, class in which merchandise and ventures fall, name and address of the candidate, time of utilization of the imprint.
Any Person implies a Partnership firm, a relationship of people, an organization, regardless of whether joined or not, a Trust, Central or State government.
Ventures for registration of trademark-
- Scan for the name, gadget, logo, and imprint planned to be connected as a trademark.
- Apply for registration of the trademark.
- Examination of the application by the library. Examination report issued by the library raising complaints under various segments of the Trademark Act, 1999.
- Replying to the official complaints and whenever required, request a consultation. Candidate needs to record evidence in the help of the trademark application.
- Notice of the trademark in authority paper/trademark diary with the end goal of resistance recorded by the general population inside 3 months from the date of production.
- On the off chance that no restriction is gotten, an endorsement of registration is issued for the candidate. The legitimacy time of a registration declaration is for a long time and from that point onward, the equivalent can be restored subject to the instalment of reestablishment charges.
- Trademark Protection:
Indian trademark law statutorily secures trademarks according to the Trademark Act, 1999 and likewise under the precedent-based law cure of going off. Statutory insurance of a trademark is managed by the Controller General of Patents, Designs and Trade Marks, an administration office which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.
As stated earlier in India Trademarks has both statutory as well as common law remedies to protect the trademark.
In India if a trademark is registered as per the Indian Trademarks Act, 1999 then the trademark has been infringed. But if there an unregistered trademark then the party has to file a passing-off suit.
- Infringement of Trademark
Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is defined as a use of a mark, by an unauthorised or an authorised person or a person who is not the registered proprietor, which is identical or deceptively similar to the trademark in relation to the goods or services in respect of which the trademark is registered. In simple words, it is defined as the violation of exclusive rights that are attached to a registered trademark without the permission of the registered owner or licensees. The courts have time and again assumed that similarity of two marks and the kind of goods and services results in causing confusion in the minds of general public. They may take an undue advantage of enjoying the hard-earned reputation of the registered trademark. In order to have a successful claim against a person infringement of trademark, what needs to be proved is that the infringing trademark is deceptively similar or identical to the registered trademark. 
6.1.1 Remedies For Infringement of Trademarks
The owner of the Registered Trademark can commence legal proceedings against the infringer stating the unfair business practices. There are two types of remedies that are available to the owner of the trademark against the unauthorized use of its limitation by the third party. The Trade Marks Act protects the trademark with civil and criminal remedies. Civil proceedings can be initiated by the trademark owner before the District Court in whose jurisdiction the owner resides.
Civil Remedies for Trademark Infringement are available in following heads:
126.96.36.199 In form of Injunction:
The action of an injunction is referred as stopping one person from doing particular activity or task through the judicial process. With respect to trademark infringement, it is restraining a person from unauthorised use of the trademark. Through a temporary or permanent stay, the Court grants protection to the trademark owner.
188.8.131.52 In form of Damages:
Damages refer to the recovery of loss faced by the trademark owner through the trademark infringement. The monetary value of financial loss or brand impairment is recovered under this head. The amount of damages will be granted by the court after considering the actual and anticipated loss of owner due to infringement.
The damages in Trademark law as a relief has increasingly assumed importance and the main aim of the damages is to monetarily compensate.
184.108.40.206 Custody of infringing materials:
This remedy suggests that the Court may ask the infringer to deliver all the goods or products that are labelled with the brand name. Here, the Court may direct the authorities to withhold the related materials accounts and destruct all such goods. Where the trademark relates to services, i.e. a Service Mark is infringed; the order may be passed to stop the provision of the services immediately by the infringer.
In case of infringement/passing off trademark, the criminal complaint can also be filed and noted under the Trade Marks Act, 1999 which states the registered owner of the trademark has a chance to file the FIR through police on the infringer.
220.127.116.11 Jurisdiction for a suit of infringement:
The jurisdiction of to commence the proceedings against the infringer is also decided in line with the provisions prescribed. Section 134 of the Trade Marks Act, provides the jurisdiction of filing suit for infringement. The trademark owner may have instituted infringement suit before District Court. The appropriate District Court is the one falling within the local limits under whose jurisdiction, the person instituting the suit, i.e. the owner of trademark resides or carry on the business activities.
6.1.2 What Does Not Amount Infringement of Trademarks
Section 30 of the Trademarks Act, 1999 sets out the specific conditions wherein a trademark can’t be said to have been encroached. Such conditions can be utilized by the supposed infringer as guards in suits for encroachment of trademark and consequently get away from his risk. These conditions include:
- At the point when any individual makes utilization of a trademark as per legit rehearses in modern or business matters;
- At the point when such utilize isn’t in quest for taking undue preferred standpoint or ends up being impeding to the particular character or notoriety of the trademark.
- Utilization of a mark for the sign Whenever any trademark is utilized so as to demonstrate the kind, quality, amount, planned reason, esteem, topographical starting point, the season of generation of merchandise or of rendering of administrations or some other attributes of products or administrations.
- Utilization of mark which is outside the extent of enlistment When trademarks are enrolled, there are sure situations where they are subjected to specific conditions and confinements. At whatever point the supposed encroachment is under the ambit of those constraints, at that point it doesn’t comprise to be an instance of encroachment of trademarks.
- Suggested assent – Whenever the encroached utilization of a trademark is in the continuation of the allowed use by the first proprietor who has thusly not expelled or destroyed it, in such cases the utilization can’t be said to be an encroachment.
- Utilization of trademark in connection to parts and frill
- Utilization of trademarks indistinguishable or like one another
6.1.3 Onus to demonstrate infringement on Plaintiff
The Supreme Court on account of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories held that in an activity for infringement the onus would be on the Plaintiff to build up that the trade mark utilized by the defendant over the span of trade in the merchandise in regard of which his mark is registered, is misleadingly comparable.
6.1.4 By what means can the Plaintiff build up that the Defendant’s mark is indistinguishable or takes after the Plaintiff’s mark.
This issue was intricately examined by the Delhi High Court on account of Atlas Cycle Industries Ltd. v. Rear Cycles Limited, wherein the Court expressed that for a situation of trademark infringement, the offended party may build up that its trademark is indistinguishable with or so about takes after the offended party’s work either outwardly or phonetically or something else, that it is probably going to hoodwink or cause perplexity in connection to the case in regard of which the offended party got his mark registered.
Along these lines, if the basic highlights of the trade mark of the offended party have been embraced by the defendant, the way that there are some extra highlights in the defendant’s mark which indicate marked contrasts is unimportant in an activity for infringement.
6.1.5 LANDMARK JUDGEMENTS IN TRADEMARKS:
- The Bombay High Court on account of Thomas Bear And Sons (India) v. Prayag Narain, held that in making a decision about the probability of duplicity, the test isn’t whether the insensible the negligent, or the hasty buyer is probably going to be deluded, however we need to consider the normal buyer purchasing with customary alert.
- The Supreme Court’s choice on account of James Chadwick and Bros. Ltd. v. The National Sewing Thread Co. Ltd. can be viewed as a basic obiter dicta which helped in streamlining the translation of trademark encroachment law in India. The Court for the situation expressed that in an activity of supposed encroachment of an enlisted trade mark, it has first to be seen whether the reproved mark of the respondent is indistinguishable with the enrolled mark of the offended party. On the off chance that the mark is observed to be indistinguishable, no further inquiry emerges, and it must be held that there was encroachment. On the off chance that the mark of the litigant isn’t indistinguishable, it must be seen whether the mark of the respondent is misleadingly comparable as in it is probably going to betray or cause perplexity in connection to merchandise in regard of which the offended party got his mark enrolled. For that reason, the two marks must be looked at.
- In Yahoo!, Inc. v Akash Arora and Anr [1999 (19) PTC 201 (Del)]
In what is referred to till date as a Landmark judgment in cybersquatting, the Delhi High Court held that an area name served indistinguishable capacity from a trademark and was accordingly qualified for equivalent assurance. As the area names of the offended party ‘Yahoo!’ and litigant ‘Yahoo India!’, were almost indistinguishable and phonetically comparable, there was each probability that web clients would be confounded and cheated into trusting that the space names had a typical source or an association. The court additionally saw that the disclaimer utilized by the litigants was not adequate in light of the fact that the idea of the Internet is with the end goal that utilization of a comparable area name can’t be amended by a disclaimer, and that it didn’t make a difference that ‘yahoo’ is a lexicon word. The name had procured uniqueness and peculiarity and was related with the offended party.
- The Bombay High Court, in Rediff Communication v. Cyberbooth and (Anr 2000 PTC 209) likewise saw that the esteem and significance of an area name resembles a corporate resource of an organization.
6.2 PASSING OFF OF TRADEMARK
Passing off [Section 27(2) of the Trademarks Act, 1999] is a common law tort used to enforce Unregistered Trademark rights. Section27(2) of the Trademarks Act, 1999, recognizes the common law rights of the trademark owner to take action against any person for passing off goods as the goods of another person or as services provided by another person or the remedies thereof. For an action of passing off, registration of a trademark is irrelevant. 
The Trademark Act, 1999 under Section 27 provides for the remedy of passing off for misuse of an unregistered trademark by the Defendant. It enumerates that no person shall be entitled to institute any proceeding to prevent infringement of an unregistered trademark. The law further entails that the provision shall not affect the rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
Section 27 of the Act recognizes common law rights of the trademark owner to take action against any person for passing of goods as the goods of another person or as services provided by another person or remedies thereof. The remedy made available under Section 27 protects the rights of the proprietor of an unregistered trademark to register complaint against another person for passing off his goods as goods the goods of proprietor. An unregistered proprietor of trademark can also oppose an application for registration on grounds as enumerated under Section 11 of the Act.
In an action of passing off, the Plaintiff has to establish prior use to secure an injunction and that the registration of the mark or similar mark in point of time, is irrelevant.
6.2.1 Why passing off is necessary?
The Trademark is providing protection to registered goods and services, but the passing off action is providing a protection to unregistered goods and services. The most important point is that the remedy is same in both the cases but the Trademark is available to only the registered goods and services and passing off is available to unregistered goods and services. To more knowledge of this context we can summaries the case of Durga Dutt vs. Navaratna Pharmaceutical; in this case the Supreme Court is set out the distinction between infringement and passing off. The action for infringement is a statutory remedy conferred on the registered owner of a registered Trade mark and has an exclusive right to the use of the trade mark in relation to those goods. And the passing off is available to the unregistered goods and services.
The second most important point is that the use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but in the case of an action for infringement this will not applicable.
The third important distinction between these two is that 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 marked differences or indicate clearly a trade origin different from that of the registered owner of the mark would be immaterial; but in case of passing off the defendant may escape liability if he can show that the added matter is sufficiently to distinguish his goods from those of the plaintiff.
In the cases of infringement the burden is always lies to the plaintiff. In the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd. In this case an infringement action is fail where plaintiff cannot prove registration or that its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show that by imitating the mark otherwise, the defendant has done what is calculated to pass off his goods as those plaintiff.
6.2.2 Traditional Trinity Test in Passing off Action
Master Oliver on account of Reckitt and Colman Products Ltd. v. Borden Inc. enumerated three components for an effective passing off activity:
(1) Goodwill claimed by a trader,
(2) Misrepresentation and
(3) Damage to generosity.
Therefore, the passing activity is basically an activity in misdirection where the custom-based law decide is that no individual is qualified for portable his or her business on guise that the said business is of that of another.
6.2.3 Tests on account of passing off
The Supreme Court on account of Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd., set out the trial of passing off and saw that a passing off activity relies on the rule that no one has a privilege to speak to his merchandise as the products of some body. As it were a man isn’t to offer his products or administrations under the misrepresentation that they are those of someone else. According to Lord Diplock in Erwen Warnink BV v. J.Townend and Sons, the advanced tort of passing off has five components, in particular
- A Misrepresentation
- Made by a trader over the span of trade
- To planned clients of his or extreme shoppers of products or administrations provided by him
- Which is computed to harm the business or generosity of another trade (as in this is a sensibly predictable outcome), and
- Which makes real harm a business or generosity of the trader by whom the activity is brought or (in a quia timet activity) will most likely do as such.
6.3 DIFFERENCE BETWEEN INFRINGEMENT AND PASSING OFF OF TRADEMARKS
|Trademark Infringement||Passing Off|
|It is a statutory remedy.||It is a common law remedy.|
|For an action to be infringement, registration of such trademark is relevant.||For an action to be passing off, registration of the trademark is irrelevant.|
|It protects the exclusive rights of the registered owner.||It protects the limited interest of the unregistered owner.|
It is to be
shown that the infringing mark is similar or deceptively similar to the
registered mark in relation to similar goods/services, and the likelihood of
‘confusion in the minds of general public’ is presumed.|
Besides proving similar or deceptively similar marks, the likelihood of ‘confusion in minds of the general public’ is also to be proved.
A suit for
relief can be instituted under Section 134 of the Trademarks Act, 1999.|
Section 20 of the Code of Civil Procedure, 1908 shall be applied to decide the jurisdiction of the Court for filing the suit.
The contrast between a passing off activity and an activity for trademark infringement was clarified by the Delhi High Court on account of Cadbury India Limited and Ors. v. Neeraj Food Products as under:
- An activity for passing off is a common law remedy though an activity for trademark infringement is a statutory remedy.
- Passing off activity basically is an activity of double dealing that is, a passing off by his very own man products as those of another while if there should be an occurrence of infringement, the Plaintiff by virtue of being registered proprietor of the questioned trademark, cases to have a restrictive ideal to utilize the mark in connection to those merchandise.
- The utilization by the defendant of the trademark of the offended party might be essential on account of an activity for infringement while it’s anything but a basic element of an activity for passing off.
- On the off chance that the basic highlights of the trademark of the offended party have been embraced by the defendant, the way that the getup, pressing and other composition or marks on the products or on the parcels in which the defendant offers his merchandise available to be purchased demonstrate marked contrasts or show unmistakably a trade birthplace not quite the same as that of a registered proprietor of the mark, would be insignificant for the instance of infringement of the trademark. The obligation of the defendant for such infringement might be total.
- On account of passing off, the defendant may escape risk in the event that he can demonstrate that the additional material is adequate to recognize his products from those of the offended party.
The reason behind protection of a trademark is so that no one else is entitled to sell your goods under the guise that it belongs to them.
The need for passing off arises whenever there is a requirement to protect an unregistered trademark whereas infringement actions arise in case of registered trademarks.
For an action for infringement of trademark to prevail, there has to be an identical imitation of the registered trademark in respect of similar goods/services.Whereas for passing off action, there has to be an identical imitation which is causing considerable confusion in the minds of the users and likelihood of injury to the goodwill of manufacturer or service provider.
Registration gives an exclusive right to the manufacturer with regards to the mark and in the case of an infringement, the right is statutorily protected.
You should always be aware as an owner of a particular trademark, whether there are other people selling goods under the same trade name that you are using. This will decrease the value of your goods in the market and you will have to face losses. Better be safe than sorry!
In the end it
is presumed that the passing off activity is connected in unregistered
merchandise and ventures, and in infringement of suit and passing off in both
the cases the remedy will be same. At that point the passing off is emerge in
three cases first when it is harmed the petitioners great will, besides in
distortion and thirdly in harms, where the position is same like in
infringement suit. What’s more, ultimately when the idea of passing off is
perusing with area name and mechanical changes then the idea of passing off is
in various measurement.
 Act (47 of 1999)
 Id note no. 1
 Id note no. 1
 ILR 1973 Delhi 393
 (1940) 42 BOMLR 734
 AIR 1951 Bom 147, (1951) 53 BOMLR 556, ILR 1952 Bom 344
 AIR 1962 Ker 156
  1 All E.R. 873
  AC 731
 142 (2007) DLT 724, MIPR 2007 (2) 269, 2007 (35) PTC 95 Del
By: Medha Mohan Malik
Law Student, Amity Law College, Noida
Legal Intern, Lex Excel – Advocates & Solicitors