Article by Janhavi Dudam.
An owner of a trademark has the right either to use his trademark himself or assign it to others.
If the product and services used are identical or deceptively similar to which the mark is registered then it would constitute an infringement.
In the case of a registered trademark, the registered proprietor user may take action against the infringement.
But if a trademark is not registered, it is likely to maintain a common law remedy for passing off action.
Sec 29 of the Trademarks Act, 1999, provides that a registered trademark is infringed by an individual who, not being a registered owner or a registered user, uses a mark that is identical or deceptively similar to that of an equivalent product or services for which the mark is registered.
In this article, you will get to know when an act constitutes infringement of copyright, when it’s teetering on the edge and when one’s not infringing. So, let’s get going
Related Read: How to Register Your Trade Mark in India
Essentials of Infringement
To constitute an infringement, the following condition must be fulfilled-
- The person does not have the authorization to use the symbol.
- The infringing mark is either identical or deceptively similar to the already registered mark.
- The infringing mark shall be used in regular trade in which the registered proprietor or user is already involved.
- The infringing trademark shall be used in printed or within the event of usual representation of the trademark in advertising, invoices or bills. There is no violation if there is a pure oral usage of the mark.
- Use of either the entire registered trademark or an adopted one by making a few additions and changes also constitute infringement of trademark.
Test to decide Infringement
- It can be determined whether a trademark infringement has occurred, by the consideration of possible effects of trademark infringement on purchaser.
- If the totality of the trademark impression is likely to cause confusion or deception in the buyer’s mind, it amounts to an infringement.
- The key criterion for figuring out if the infringing mark is deceptively similar to that of the infringed mark is measurable confusion charges by significant evidence. In other words, deception, fraud or confusion on the part of the infringed is important for determining the infringement.
Common forms of Infringement
Some commonly noted forms of infringement are outlined below:
- The use by an unauthorized person of a mark identical or similar to that of a trademark in relation to similar or same trade. The use of identical, or similar marks in trade that is not similar or same can also constitute an infringement.
- Advertising of another registered trademark to support one’s trade often amounts to an infringement.
- A registered mark is also infringed when a person makes unauthorized use of such a mark on a material intended for the labelling or packaging of his products
- A registered trademark is also infringed when there is a normal representation similar to the registered mark and in cases where the distinctive elements of that mark are used in other works including spoken use of words and their normal representations.
- Usage of a deceptive label similar to products or services and trade origin that leads to confusion or deception in the buyer’s mind.
- Taking significant features of a trademark that is already in use leads to infringement.
- Unauthorized use of registered trademarks on repackaged or second-hand articles can constitute an infringement.
When Trademarks are not Infringed?
Sec 30 of the Trade Marks Act, 1999 deals with the following uses that are not considered as an infringement-
- Using the fair industrial and commercial practices that do not take undue advantage of or harm the distinctive character or prestige of the mark.
- Use with regard to goods or services which indicate character, quality or geographical origin.
- In the case of services on which the trademark has already been applied by the proprietor or registered user, the object of the use is to show that the services were carried out by the proprietor or registered user
- Where a trade mark is licensed under certain conditions or limitations, the use of that mark beyond the scope of those conditions or limitations shall not constitute an infringement. Accordingly, where registration is limited to certain territories, any use of the mark outside the territory shall not infringe, but such use may lead to the passing off.
- Use of the mark in connection with goods to which the mark has been legally applied or where the registered owner has consented to use the mark. This shall apply in cases where the goods are purchased in bulk and sold in retail under the trade mark. This may not apply to goods such as medicinal products or foodstuffs, where repacking may affect product quality.
- Usage of the mark in conjunction with parts or accessories of the products for which the mark is registered where use is reasonably appropriate to show that the products are so adapted. This usually happens in the case of machinery, cars, bikes, etc., where the parts, and accessories are manufactured by various people.
- The use of a mark or a similar mark in the exercise of independent registration right. That arises where more than one person registers identical, or similar marks.
- The assignment of the registered trade mark to another person shall not affect a person’s right to sell or deal in goods which are bearing a trade mark, legally purchased by him prior to assignment. However this clause shall not apply if the condition of the goods has been altered and deteriorated.
Now while the law has provided you an overview of what constitutes an infringement of trademark, let’s go in more deeper and look into some case-laws on the topic.
I will share with you some important judgments, showing whether the trademark was infringed or not and what are the grounds for infringement.
Important cases of infringement of the trademark
#1. S. M. Dyechem Ltd. v. Cadbury (India) Ltd, AIR 2000 SC 2114
In this case, it was held that the plaintiff had to prove that the essential feature of his registered trademark was copied.
The burden of proving ‘deception’ lies with the plaintiff who alleges the infringement. A mark is said to be infringed by another trader, if the latter uses one or more of its “essential features,”even without using the whole of it.
For identifying the essential feature, it depends partly on the decision of the courts, and partly on the standard of evidence before them.
The determination of an important feature is not to be ocular least alone; awareness of the sound of words forming part or whole of the mark cannot be omitted.
#2. Heins Italia v. Dabur India Ltd., (2007)
In this case, the plaintiff was the owner of the trademark “Glucon-D” which was licensed in India under the Trade and Merchandise Marks Act, 1958.
In July 2002, the plaintiff found that the defendant, Dabur India had launched a similar product under the name “Glucose-D” using packaging that was deceptively similar to the packaging used for “Glucon-D”.
The Supreme court held that both the “Glucon-D” and “Glucose-D” were items containing glucose as it appears that there is a remarkable phonetic similarity in the two words.
Further, the color scheme of Glucon-D and Glucose-D is almost identical with a happy family superimposed on both.
The fact that the happy family in Glucose-D consisted of four whereas, in the case of Glucon-D the family was of three is of little consequence as the color scheme, and the overall effect of the packaging had to be seen.
The packaging of Glucose-D and Glucon-D was so similar that it could easily confuse a consumer. The Court granted an ad-interim injunction.
#3. Godfrey Phillips India Ltd. v. Girnar Food and Beverages Pvt. Ltd, (2004) 5 SCC 257
In this case, the appellant sold tea under what it called “an umbrella trademark”, namely “Tea City”.
According to the appellant there are different kinds of tea which are sold under this umbrella trade mark with specific trade marks in respect of particular kinds of tea. One of the kinds of tea sold in this manner was “SUPER CUP” which pertained to extra strong CTC tea.
The appellant claimed that it had been selling such tea under the trademark “SUPER CUP” since 1987-88 and had not only invested a large amount in advertising this particular product but had effected large sales as a result of which the appellant had built up goodwill and reputation in respect of the name “SUPER CUP”.
The appellant also alleged that the customer had come to associate that mark with the appellant’s extra strong CTC tea.
On the allegation that the respondent, also in the tea business, had wrongfully used the words ‘SUPER CUP’ in connection with the sale of its tea, the appellant filed proceedings before the High Court alleging passing off on its trademark “SUPER CUP” by the respondent and praying for an injunction to restrain the respondent from doing so and for other consequential reliefs.
It was held that a descriptive trade mark is entitled to protection if it has assumed a secondary meaning which identifies it with a particular product.
#4. Ruston & Hornsby Ltd. V. The Zamindara Engineering Co. (1969) 2 SCC 727
In this case, it has been held that Appellant has carried on the manufacture and sale of combustion engines and internal combustion engines powered by diesel.
The Appellant was a subsidiary of Ruston Hornsby (India) Ltd. The respondent was a firm that similarly operated within the manufacture and sale of combustion engines for diesel powered vehicles.
The appellant was the registered proprietor of the Ruston trade mark. The appellant learned that the respondent manufactured and sold internal combustion engines for diesel under the “RUSTAM” trade mark. The appellant instituted a lawsuit for a final injunction seeking to restrain the respondent from misusing the “RUSTON” trade mark.
District Judge Meerut dismissed the suit claiming that “RUSTON” and “RUSTAM” had no visual or phonetic similarity.
In appeal, the Allahabad High Court held that the utilization of the words “RUSTAM INDIA” wasn’t an infringement, because the engines of the Appellant were made in England and the engines of the Respondent were made in India.
The suffix “INDIA” received ample notice that the sold engine wasn’t a “RUSTON” engine produced in England and therefore the respondent could also be allowed to use the “RUSTAM INDIA” combination.
Supreme Court of India reversed the High Court’s decision by mentioning:
“It’s necessary to differentiate between an infringement and a passing off action. Additionally to the difficulty of the essence of the trade mark, the matter of an infringement case is extremely different from the matter of a passing off action.”
Yet in an act of infringement the difficulty is as follows:
Is the defendant employing a mark which is same as or which may be a colourable limitation of the plaintiff’s registered trademark?
This occurs so often that if the defendant might not use the plaintiff’s mark, the defendant’s products are often so on the brink of those of the plaintiff that an easy case of passing off are often proven. within the contrary, it’s possible that although the defendant might use the plaintiff’s name, the defendant’s products could also be so different from that of the plaintiff’s products, and therefore the prices can also be so different that there’ll be little possibility of public fraud.
Therefore, the Supreme Court held –
If the respondent’s trade mark is deceptively almost like that of the appellant the very fact that the word ‘INDIA’ is added to the respondent’s trade mark is of no consequence and therefore the appellant is entitled to achieve its action for infringement of its trade mark.
#5. Lohia Auto Industry v. Lohia Starlinger Ltd, AIR 2010 All 37
In a suit for infringement of trademark, both the plaintiff and the defendant were using the name “Lohia Group” for promotion of their services / business.
The Allahabad High Court observed that the term “Lohia Group” may be a generic word, and therefore the settled legal position is that one cannot have any monopoly right over the generic word.
The Court said that there is a distinction between generic words and common words.
Where the mark is deceptively almost like recognized non-profit name or generic name, the mark may come within the prohibition of section 9 of the Act. Though normally the trademark need to be taken as an entire, but is that the duty of the Court to seek out out whether the respective word/s, even being the generic word formed part and parcel of the brand or not.
The Court stated that logos used by both of them to indicate Lohia group was distinct and different, and injunction couldn’t be granted.
#6. Milment Oftho Industries v. Allergen Inc, (2004) 12 SCC 624
The respondents, a pharmaceutical company manufacturing pharmaceutical products in several countries, filed a suit against the appellants, an Indian drug company, for an injunction supported by an action for passing off in respect of the mark “Ocuflox”used on a medical preparation manufactured and marketed by the respondents, claiming that they were the prior users of the mark Ocuflox.
This was in respect of an eye care product containing ofloxacin and other compounds, that they first used this mark in 1992, after which they marketed the product in other countries like Europe, Australia, South Africa and South America, and that they had obtained registration in Australia, Bolivia, Ecuador, Mexico, Peru, South Africa, Canada and U.S.A, that that they had also applied for registration of the mark in several other countries including India where-under their application were pending.
The appellants, who sold “Ocuflox” a medical preparation containing ciprofloxacin which was used primarily for treating the eyes and ears of patients, claimed that the defendants coined the word “Ocuflox” by taking the prefix “Ocu” from “Ocular” and “flox” from “ciprofloxacin” which was the basic constituent of their product.
This trademark was granted registration by the Food and Drug control Administration in 1993 and the plaintiffs had also applied for registration of the mark “Ocuflox” in 1993. The respondent obtained a ad-interim injunction, but this was vacated by the single judge bench who held that the respondent’s product wasn’t being sold in India and since the appellants had introduced the product first in India, the respondents weren’t entitled to an injunction. It was held that the marks were the same and were in respect of pharmaceutical products.\
The mere fact that the respondents had not been using the mark in India would be irrelevant if they were first within the world market. Read the entire case here.
#7. Satyam Infoway Ltd. v. Sifynet Solution Pvt. Ltd, AIR 2004 SC 3540
The Appellant was carrying a web business under the name of ‘Sify”. Now, a domain name that may pertain to provision of services within the meaning of section 2(z) has all the characteristics of trademark.
The appellant filed an action against the respondent on passing-off under section 29 of Trade Marks Act, 1999.
The Respondent had started a web business under the domain name of ‘Siffy net’.
The Court found that the words ‘Sify’ and ‘Siffy’ are visually and phonetically similar, the reputation and goodwill of the appellant was evident from news items in newspapers and other publications.
Moreover, the doubtful explanation given by the respondent for the selection of word ‘Siffy’ and paired with the reputation of appellant, rationally led to the conclusion that the respondent was seeking to cash-in on the appellant’s reputation as a provider of service on the web. The balance of convenience was in favour of the appellant and therefore the injunction was granted against the respondent.
#8. Baker Hughes Ltd. V. Hiroo Khushlani, (2004) 12 SCC 628
The injunction was granted restraining respondent from using name “Baker” as part of their corporate name.
The appellants had 40% shares in respondent company. The agreement was between appellant and respondent whereunder respondent was permitted to use the name Baker as part of its corporate name. Subsequently appellant sold their share in the respondent company.
The appellant had very huge turnover and goodwill in India.
The respondent could use name Baker only permitted by appellant as per agreement between them. Since the products of appellant and respondent were identical, there was likelihood of confusion.
When the same name was used by the respondent, it was held that the grant of injunction is proper.
#9. Medley Pharmaceuticals Ltd. v. Winsome Laboratories Ltd, 2009 (5) AIR BOM R 145
Plaintiff company adopted a particular trade mark “Nimsaid” for a medical preparation containing the drug “Nimesulide”.
Defendants were manufacturing and selling same medical preparations under a deceptive similar trade mark “Nimaid” and “Nimaid-P”. It was held that the plaintiff’s and defendant’s names of product were resembling.
The drug used in both preparations was identical.
The Court observed that the statutory provisions relating to the infringement of trade mark is based on the same fundamental idea as that of the law relating to passing off but it differs in two aspects- it’s about one method of passing off which is that the use of a trade mark and therefore the the statutory liability is absolute in the sense that in an action for infringement, the Court won’t inquire whether the infringement is probably going to deceive or cause confusion etc.
So, the question of dishonesty is immaterial. In this case the plaintiff’s mark is registered mark and therefore the plaintiffs are entitled to statutory protection.
The scope of the infringement of a trademark is widened in each case but has been sufficiently explained by the Indian Courts.
Since you are expending a lot of cash to brand your logos and company name as well as earn goodwill with your customers, it is best that you register your trademark as soon as possible.
There is some confusion for some brands on whether they can copyright their names and logos or not. The short answer is that you can.
However, first get to know the different facets of copyright law for your business and how to register a copyright before jumping in.
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- All About Single Letter Trade Marks in India
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- How to Create a Memorandum of Association for Your Company
- How to Create an Article of Association for Your Company
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Author Bio: Janhavi Sitaram Dudam is a law and Company Secretary student and an intern at WinSavvy. She pursues her law degree from Vivekananda Education Society’s College of Law. Connect with her on LinkedIn.