1

INFRINGEMENT OF REGISTERED
TRADEMARKS ,
OFFENCES RELATING TO
TRADE MARK AND PASSING OFF
INTRODUCTION
Indian trademark law statutorily protects as per the Trademark Act, 1999 and
also under the common law passing off. Statutory protection of trademark is administered
by the Controller General of Patents, Designs and Trade Marks, a government agency
which reports to the Department of Industrial Policy and Promotion Ministry of
Commerce and Industry. statutorily protects as per the Trademark Act, 1999 and also
under the remedy of (DIPP), under the Ministry of Commerce and Industry.
The law of trademark deals with the mechanism of registration, protection of
trademark and prevention of fraudulent trademark. The law also provides for the rights
acquired by registration of trademark, modes of transfer and assignment of the rights,
nature of infringements, penalties for such infringement and remedies available to the
owner in case of such infringement.
Trademark law protects a trademark owners exclusive rights to use the mark,
thereby preventing any unlawful use of the mark by an infringer. Trademark protects the
mark from any unauthorized use of the mark which shall cause confusion in the minds of
the general public. Whenever the plaintiff proves that the defendant has caused confusion
in the minds of the public by using same or similar mark, a trademark infringement claim
shall prevail. The purpose of trademark is to give exclusive recognition as well as
protection to a trademark owner. A claim for infringement will take place in case of a
registered trademark whereas common law recognizes the act of passing off which
prevails in the case of unregistered trademark. Whenever the trademark owner proves that
the infringers mark would cause a depreciation of value of his mark or would harm the

reputation, goodwill of the prior mark, the trademark owner shall establish his right to
protection of the mark. The first and foremost task of the trademark owner is to prove that
the prior mark has a very high degree of reputation and the infringed mark is similar to
his mark and which would cause a confusion or deception regarding the product in the
market. A trademark is generally protected to get maximum protection although
unregistered trademarks also get protection under other circumstances. In case of passing
off, the registration of the trademark is irrelevant and it is a common law remedy which is
completely dependent on the goodwill acquired by the property.
Definitions and Principles
I.

Statutory Definition- According to Trade Marks Act, 1999.

As Per Section 2(1)(zb)- "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; and
1. in relation to Chapter XII (other than section 107), 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;
2. in relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so 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 includes a certification trade mark or collective mark.
A mark to be a trade mark must be used on the goods vended14 or should at least be
used in such a manner so as to impose the visual representation to the goods.
A service mark to distinguish services of tailors, caterers, advertisers, insurers,
construction agents and repairer, communicators, transporters and other personal
services, cannot be termed as trade mark since no buying and selling of goods are

involved. However the Nice Agreement concerning the international classification of

goods and services is followed by some countries for service mark registration.
The name or trading style of a company, firm, association, corporation or any
abbreviation thereof my also be a trade mark, if represented in a special and particular
manner. Any trade mark may either be new i.e. proposed to be used or has already been
used by the proprietor.
II.

Principles of Trade Mark Law

It is interesting to note that the law of trade marks; practically all over the world is based
on three broad concepts:
1. Distinctiveness or distinct character, or capable of distinguishing.
2. Deceptive similarity or similarity or near resemblance of marks and,
3. Same description or similarity of goods.
The following are the fundamental principles of the trade mark law as embodied in
the preamble and the various provisions on the Trade Mark Act, 1999a. Since registration confers on the proprietor a kind of monopoly right over the use of
the mark, which may consist of a word or symbol legitimately required by other traders
for bona fide trading or business purposes, certain restrictions are necessary on the class
of words or symbols over which such monopoly right may be granted . This principle is
laid down in Section 9- Absolute grounds for refusal of registration
b. Registration of a trade mark should not interfere with the bona fide use by other
persons of names or words in ordinary usage. This principle is embodied in Section and
Section 35.
c. Property rights in a trade mark acquired by use are superior to similar rights obtained
by registration under the Act. This is clear from the preamble which refers to better
protection of trade marks thereby necessarily implying the existence and availability of
some protection under the common law. It, therefore, follows that prior users of trade
mark should be protected against monopoly rights granted under the Statute.
This principle is enacted in Section 34.

d. There are two main interests to be protected in a trade mark. The first the interest of the
public. A trade mark ought not to be registered if its use will be apt to mislead the public
as to the origin of the goods they are purchasing. There is also the interest of the other
traders who are entitled to object if the use of the trade mark proposed for registration
will be calculated to enable the applicants goods to be passed off on the public as
such other traders goods. These interests are protected by Section 9 and Section 11.
e. Granting the benefits of registration under the Statute is not only a matter of interest to
the applicant seeking registration, but it is a matter in which the public is also interested.
It is, therefore, necessary that any member who wants to object to the registration should
be permitted to do so. The Act accordingly provides for advertisement of the application
and opposition thereto by any interested party.
III.Functions of a trade mark
The functions of a trade mark is to give an indication to the purchaser or possible
purchaser as to the manufacture or quality of the goods, to give an indication to his eye of
the trade source from which the goods come, or the trade hands through which they pass
on their way to the market.
INFRINGEMENT

OF

TRADE

MARK

AND

ACTION

AGAINST

INFRINGEMENT
Infringement may occur when one party, the "infringer", uses a trademark which
is identical or confusingly similar to a trademark owned by another party, in relation to
products or services which are identical or similar to the products or services which the
registration covers. An owner of a trademark may commence legal proceedings against a
party which infringes its registration.
Infringement of trade marks occurs when if a person other than the registered proprietor
in the course of trade, in relation to the same goods or services for which the trade mark
is registered, uses the same mark or a deceptively similar mark.
Trademark infringement claims generally involve the issues of likelihood of
confusion, counterfeit marks and dilution of marks. Dilution is a trade mark law concept

forbidding the use of a famous trade mark in a way that would lessen its uniqueness. In
most cases, trade mark dilution involves an unauthorized use of another's trade mark on
products that do not compete with, and have
little connection with, those of the trade mark owner. For example, a famous trade mark
used by one company to refer to hair care products might be diluted if another company
began using a similar mark to refer to breakfast cereals or spark plugs.
The acts that constitute an infringement of a trade mark are defined in Section 29 of
the Trade Marks Act, 1999.
Section29- Infringement of registered trade marks.
(1) 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 and in such manner as to render
the use of the mark likely to be taken as being used as a trade mark.
(2) 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 ofa. its identity with the registered trade mark and the similarity of the goods or
services covered by such registered trade mark; or
b. its similarity to the registered trade mark and the identity or similarity of the goods
or services covered by such registered trade mark; or (c) 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.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that
it is likely to cause confusion on the part of the public.
(4) 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 whicha. is identical with or similar to the registered trade mark; and

b. is used in relation to goods or services which are not similar to those for which
the trade mark is registered; and
c. 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.
(5) 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.
(6) For the purposes of this section, a person uses a registered mark, if, in particu1ar,
hea. affixes it to goods or the packaging thereof;
b. 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;
c. imports or exports goods under the mark; or
d. uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade
mark to a material intended to be used for labelling 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.
(8) A registered trade mark is infringed by any advertising of that trade mark if such
advertisinga. takes unfair advantage of and is contrary to honest practices in industrial or
commercial matters; or
b. is detrimental to its distinctive character; or
c. is against the reputation of the trade mark.
(9) 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 and reference in this section to the use of a mark shall be

construed accordingly.
Necessary and sufficient conditions- Essentials
Any person trespassing on the rights conferred by registration of a trade mark infringes
the registered trade mark. What are the rights conferred by registration in a particular
case must be determined in the context of any restrictive conditions or limitations entered
on the register. In precise terms, in order to constitute an infringement the act complained
of must fulfill the following requirement
(a) the mark used by the person must either identical with or deceptively similar to the
registered trade mark;
(b) the goods or services in respect of which it is used must be specifically covered by the
registration;
(c) the use made by the mark must be in the course of the trade in areas covered by the
registration;
d) the use must be in such manner as to render it likely to be taken as being use as a trade
mark e) the defendants should not be permitted users under Section 2(1)(r) which
includes both registered user and unregistered user.
These conditions are necessary and sufficient for establishing infringement.
However under Section 29 the following uses also constitutes infringement, if such
use is likely to cause confusion among the public or likely to have an association with the
registered mark:
Courts have fashioned their own tests for likelihood of confusion -- like those
announced in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973), known collectively as the DuPont31factors.
II. A registered trade mark is also infringed if the following conditions are satisfied:
a) mark identical with or similar to registered trade mark
b) goods or services not similar,
c) the registered trade mark has a reputation in India,
d) the use of the mark by defendant must be without the due cause, and
e) the use of the mark takes unfair advantage of, or is detrimental to, the distinctive

character or repute of the registered trade mark.

In Hearst Corporation v. Dalal Street Communication Ltd it was laid down that the
main ingredients of infringement are:
I. the Plaintiff must be the registered owner of a mark.
II. Defendants must use a mark deceptively similar to the Plaintiff mark.
III. The use of the mark must be in relation to the goods in respect of which the mark
is registered.
IV Use by the defendant must be in the course of trade
Forms of Infringement
A registered trade mark is infringed if used in the course of trade by a person other than
the registered proprietor or permitted user of such trade mark. The infringement occurs
because such mark used by the one other than the registered proprietor or permitted user
is likely to cause confusion in the mind of public or is likely to cause impression of
association with the registered trade mark. And such confusion is caused because of the
identity of such mark with the registered trade mark as also the similarity of goods or
services covered by such registered trade mark. Such confusion can also occur because of
similarity of such mark to the registered trade mark and the identity or similarity of the
goods or services covered by such registered trade mark. The confusion would also be
caused because of such marks identity with the registered trade mark as well as the
identity of the goods or services covered by such registered trade marks.
In a case where the infringing mark is identical with the registered trade mark and
the goods or services are also identical with the goods or services covered by the
registered the court shall presume that such trade mark is likely to cause confusion on the
part of the public.
Infringement of a registered trade mark would also occur if a person who is not
the registered proprietor or a permitted user of such trade mark uses in course of trade a
mark which is similar to identical to the registered trade mark. Infringement would also

occur if such person uses a mark which is used in relation to goods and services which
are similar to those for which the trade mark is registered.
Infringement would also occur if the registered trade mark has acquires a
reputation in India and the use of such mark or mark identical or similar to it without due
cause takes undue advantage of is detrimental to the distinctive character or repute of the
registered trade mark.
A registered trade mark is also infringed by a person if he uses such registered trade
mark as his trade mark or part of his trade mark, or name of his business concern or part
of such name dealing in goods or services in respect of which the trade mark is
registered.
A trade mark is also infringed by a person who applies such trade mark to a
material intended to the used for labeling or packaging goods, as a business paper or it is
used for advertising goods or services provided that when he applied the mark in such
manner, knew or had reason to believe that such application of the trade mark was not
duly authorized by the proprietor or a license of the registered trade mark.
A registered trade mark is also 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. Also if it is detrimental to the distinctive character of the
registered trade mark. Also if it against the reputation of the registered trade mark.
A registered trade mark will also be infringed by words spoken as well as by
their visual representation in cases where the distinctive elements of a registered trade
mark consist of or include such work.
Using a deceptively similar mark
The infringement that deception or confusion has been caused may arise in the following
ways:
1. Deception or confusion as to goods- A person may buy the goods seeing one mark
thinking that it is the brand, which is in his mind, which in fact is not the case. This is the
most common type of confusion or deception.
2. Deception or confusion as to trade origin- A person looking at a mark may buy the

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goods thinking that it is coming from the same source as some other goods bearing a
similar mark with which he is familiar. This is deception or confusion as to trade source.
3. Deception or confusion as to trade connection- A person looking at the mark may
not think that it is the same as one with different brand in his mind but the similarity may
make him believe that the two are in some way or the other connected with each other.
The use of the mark might give rise to a belief in the purchasers, mind of there being
some connection with the goods and the owner of the registered trade mark.
Test of Infringement- deceptive similarity
In Durga Dutt Sharma v. Navaratna Pharmacy Laboratories, the Supreme Court has
stated the law as follows1. Where the two marks are identical, no further questions arise for, then the infringement
is made out.
2. Where the two marks are not identical the plaintiff would have to establish that the
mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is
ikely to deceive or cause confusion in relation to the goods in respect of which it is
registered.
3. The onus would be on the plaintiff.
4. The court has to compare the two marks- the degree of resemblance which is necessary
to exist to cause deception not being capable of definition by laying down objective
standard. The persons who would be deceived are of course the purchasers of the goods
and it is the likelihood of their being deceived that is the subject for consideration. The
purpose of the comparison is for determining whether the essential features of the
plaintiffs trade mark are to be found used by the defendant. The ultimate test is whether
the mark used by he defendant as a whole is deceptively similar to that of the registered
mark of the plaintiff.
5. The Resemblances may be phonetic, visual, or in the basic idea represented by the
plaintiffs mark.
6. The identification of the essential features of the mark is in essence a question a fact
and depends on the judgment of the court based on evidence led before it as regards the

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usage of the trade.

In Cox Distillery and another v. McDowell and Co. Ltd and another it was held that
while deciding whether one trade mark is the infringement of another trade mark, the
court has to see the following:
i. Whether the broad features and scheme of the two marks are such that an innocent
purchaser would consider one to be the other.
ii. The Court has not to process on the line as to what are detailed points of dissimilarities
between the two marks, as if the court was solving a pictorial quiz to count the number
of hidden or not so hidden dissimilarities in two, apparently similar pictures.
iii. The test is, what would be the impression on the mind of a person who is acquainted
with the plaintiffs mark, on seeking the defendants infringing mark, when the two
marks are not side by side before him. If he is likely to consider the infringing mark as
that of plaintiffs goods, there is clear deceptive similarity resulting in infringement of
plaintiffs trade mark. So, the best test is of impression on the mind of an innocent
purchaser.
Acts constituting Infringement
Taking essential or substantial feature of a mark sufficient
The question of resemblance and the likelihood of deception are to be considered by
reference not only to the whole of the mark, but also to its distinguishing or essential
feature, if any.
In GTC v. ITC, the defendants, GTC had copied the roundel design with the
intersecting rectangle with the words, GOLD FLAKE written across, the presence of
three stars, the color scheme and the rectangular border lines in strips of red and tarnished
gold, which formed the essential features of the plaintiffs label. Injunction was granted,
although the defendants were registered proprietors of different labels containing inter
alia the words GOLD FLAKE
Goods known by a particular name
If the use of a registered trade mark is such that the goods bearing the mark come to be
known and identified by a particular word among the public, the use of such word by any

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other trader may constitute infringement45.

Value of evidence in deciding deceptive resemblances
The question of infringement is a matter upon which the Judge must decide. He cannot
abdicate the decision in that matter to witnesses before him. On the other hand, it is
equally true that he must be guided in all these matters by evidence before him, and
where the evidence is that there has been no confusion, that is a material fact which the
Judge must take into account. Opinion evidence of what the public might think is in
admissible, but the evidence of experts in a highly specialized trade is admissible. Prima
facie view on likelihood of confusion may be modified by evidence to the contrary from
knowledgeable persons. When the intrinsic similarities of the rival marks do not provoke
the conclusion that in use one will approximated to the other, there should be
evidence to show whether as a matter of experience the similarity has in fact rendered
them likely to be confused48.
Plaintiffs mark used along with defendants name
Use of the plaintiffs mark along with the defendants name even if prominently
displayed may constitute infringement.
This principle is equally applicable to trade marks which are not registered.
In Blackwell v. Crabb , it was held that Crabbs pickles on a label resembling
Blackwells pickles on a label was not infringement of plaintiffs label as the customers
would be able identify the goods by the name of the manufacturer. The elements of labels
were common to the trade.
Use of disclaimed feature
A disclaimed feature is not an essential particular.But copying of the manner of
representation of the disclaimed feature, especially when that representations distinctive,
will constitute infringement. Disclaimer, however does not affect the issue in a passing
off action
When mark is copied
If the infringer has absolutely copied the mark and made a facsimile representation of it,
no further evidence is required. That is sufficient by itself without more. The thing speaks

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for itself. When the similarities are so close as to make it impossible to suppose that
such marks were devised independently of each other, in the absence of evidence of a
common origin, the conclusion must be that one party copied the mark of the other53. In
such cases lack of explanation of the circumstances in which the device was adopted is
important.
Goods
The expression in relation to any goods in respect of which the trade mark is registered
in Section 29(1) makes it clear that there is no infringement of the mark unless the
infringer uses the mark in relation some goods covered by the registration. Where the
goods are goods of the same description or closely associated with plaintiffs goods, no
action for infringement will lie, but an action for passing off may lie.
Section 29(9) under which the advertising of the mark constitutes infringement in certain
circumstances.
Malicious falsehood- comparative advertisement- poster claiming to under cut
competitors process - The issues for the court in a malicious action concerning
comparative pricing were:1. Whether the defendants statements were directed at the claimant;
2. The meaning of the statements;
3. Whether the meaning was false;
4. Whether they were intended and likely to be taken, seriously;
5. Whether they were published maliciously; and
6. Whether there was a likelihood of the claimant sustaining actual damage as result of
publication of the statements.
Infringement and passing off- comparative advertisement- disparagement
In order to succeed in an action the plaintiffs have to establish the following key
elements:
1. A false or misleading statement of fact about a product.
2. That statement either deceived, or had the capacity to deceive, a substantial segment of

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potential consumer.
3. The deception was material, in that it was likely to influence consumers purchasing
decisions.
Use in accordance with Section 2(2) of the 1999 Act
The expression uses in the course of trade, a mark.. in Section 29(1) shows that the
defendant must use the mark in conformity with definition of use under Section 2(2)
and need not necessarily use it as a trade mark. In other words, the purpose for which the
mark is applied is immaterial.
Use of mark as part of trading style or corporate name
The use of a registered trade mark as part of trading style of another dealing in same kind
of goods will constitute infringement of the mark. Such use is now an infringement under
Section 29(5) of the Trade Marks Act, 1999.
In Ellora Industries v. Banarasi Dass, the plaintiff was the registered proprietor of the
trade mark ELORA for watches, time pieces, clocks, etc., The defendants sold time
pieces under the mark Gargon but used their trading style Ellora Enterprise on the
cardboard container and in advertisement. Injunction was granted
Use of translation of the registered trade mark as a part of corporate mark
In Bhatia Plastics v. Peacock Industries, it was held that the use of the peacock
(English translation of Mayur, a registered trade mark) as part of the defendants
corporate name was held infringement of the registered trade mark.
Use of mark as part of title of publication
In Biochem Pharmaceutical Industries v. Biochem Synergy Ltd, the plaintiff had
registered the word BIOCHEM in Part B in respect of pharmaceutical preparations and
used it over 33 years. The defendants were manufacturers of bulk drugs, intermediates
and chemicals. Their corporate name included the word BIOCHEM. Interim injunction in
respect of infringement alone granted.
Use of a registered trade mark as a part of the corporate name of a third party
manufacturing similar goods is an infringement of the registered trade mark.
In Century Continuous Stationary Pvt. Ltd. v. Radhey Shyam Gupta, the plaintiff

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respondent was the prior user and the registered proprietor of the mark CENTURY for
stationary for use in computers. Defendant appellants were manufacturing paper for use
in computers-Stationary included paper-Plaintiff entitled to injunctive relief.
Similarity in design of the article
Where the defendant has copied the design or shape of the article sold by the plaintiff, it
may be a relevant matter for consideration under passing off and not under infringement;
for design or shape of the article does not form part of the trade mark. A distinctive
picture of the shape of the goods may be registered as a trade mark in which case it may
be infringed by the use of such picture but not by making an article of that shape.
No association between the products of the two companies
In Raymond Limited v/s Raymond Pharmaceuticals Private Ltd, there was
infringement of trade mark 'Raymond' . Defendant was using the mark as part of its
corporate name since 1983. No action taken till 2005. The name 'Raymond' found to be a
common name .There was no attempt by defendant to take unfair advantage of the
plaintiff. Both companies in different business and goods .No association between the
products of the two companies. Held that plaintiff is not entitled to Interim injunction.
Mere laches or acquiescence cannot deny the Relief of injunction
Pfizer Products Inc v/s Rajesh Chopra, there was an application seeking interim
injunction against infringement of trade mark "Zoloft" .Defendant also claiming
ownership of the mark and filed application for registration while seeking cancellation of
the mark of the plaintiff. Both the parties were using the marks for pharmaceutical
products. Defendant did not claim to be a long user of the mark. It was held that mere
laches or acquiescence cannot deny the Relief of injunction. Prima facie case of
infringement as well as of dishonest passing off made out, so interim injunction granted.
Acts not constituting infringement
Statutory provisions- Section 30 of the Trade marks Act, 1999 deals with certain
instances of use of the trade mark which in the circumstances mentioned therein do not
constitute infringement. Apart from these specific cases, any use of the trade mark

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beyond the scope of the registration will not be considered an infringement of the mark.
Section 28(2) provides that the exclusive right conferred by registration is subject to any
conditions or limitations entered on the register. Section 28(3) protects the rights of
proprietors of similar marks concurrently registered. In appropriate cases the validity of
the registration itself can be challenged, for the rights conferred by registration are
subject to the registration being valid78. The registered proprietor cannot interfere with
the rights of prior users of similar marks79. The right to bona fide use of a name, place of
business and descriptive words is protected by Section 35.
Section 30 of the Trade Mark Act, 1999- Limits on effect of registered trade mark(with
conditions)
Use for identifying the goods or services as that of the proprietor- Section 30(1)
Use not covered by registration- Section 30(2) (b)
Use of a registered proprietors goods- Section 30(2) (c) (i)
Use on parts and accessories- Section 30(2) (d)
Use of similar marks by other registered proprietors
ACTION FOR INFRINGEMENT

Jurisdiction-Section 134 of the Trade Marks Act, 1999 deals with jurisdiction in matters
relating filing a suit for infringement. Section 134- Suit for infringement, etc., to be
instituted before District Court
(1) No suit(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is
identical with or deceptively similar to the plaintiffs trade mark, whether registered or
unregistered, shall be instituted in any court inferior to a District Court having
jurisdiction to try the suit.
Under Section 134(2) the District Court within whose territorial jurisdiction the person
instituting the suit or proceeding actually or voluntarily resides or carries on business or
personally works for gain can entertain a suit for infringement of registered trade mark.

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This may act as deterrent against infringement by persons carrying on business far away
from the place of business of the potential plaintiff.
Maintainability of suit for infringement- Where a suit filed for infringement is
subsequent to the date of application for registration, the suit is maintainable since the
mark when registered will date back to the date of application for registration. The
question of jurisdiction being a mixed question of fact and law can be decided at the
interlocutory stage. If the plaintiff has pleaded the necessary facts in the plaint to invoke
territorial jurisdiction, that is sufficient.
ProcedureThe procedure to be followed in conducting a suit for infringement is not laid down in the
Act or the Rules frames there under. They are governed by the relevant provisions of the
Civil Procedure Code and the rules if any framed by the High Court.
Persons who can be sue in infringement
a) The registered proprietor of the trade mark or his legal successors
b) A registered user of the trade mark subject to the provisions if Section 52
Applicant for registration of a mark;Assignee of a registered mark;Legal heirs of the
deceased proprietor;Limited companies;Executors of the proprietor; Sole Selling agents
and importers;registered user; Court Receiver;Foreigners
The persons who may be sued
Section 29(2) to (9) lists various kinds of uses which constitute infringement. Any person
who uses the registered trade mark within the scope of any one or more of such uses can
be sued for infringement.
Applicant for registration;Directors and promoters of a limited company;Master
responsible for servants acts;Personal Liability of directors;Joint tort feasor;Plaintiffs
title
The defenses which may be set up by the defendant
The defendant may set up any of the following defenses in an action for infringement
against him depending upon the applicability of the relevant defenses to his case.
1. That the plaintiff in the suit has no title to sue. Questioning the proprietorship of the

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trade mark owner may do this.

2. That the use of the mark by the defendant is not an infringement or is protected by the
provisions of Section30 which lists out the acts which do not constitute infringement.
3. That the defendants right to use the contested marks arises by virtue of concurrent
registration.
4 That the defendant is the prior user if the disputed mark
5. That the defendant has been an honest concurrent user.
6. That the use of complained of is merely the defendants bonafide use of his own name,
addresses and description of goods which are protected by the act
7. That the exclusive rights claimed by the plaintiff over the disputed trade mark have
ceased to exist by virtue of the word claimed by the plaintiff becoming a common word,
that is public juris. The words that are within the public domain cannot be claimed as
exclusive proprietorship.
8. That the defendant can attack the validity of the registration of the plaintiff.
9. That the plaintiff is debarred from suing or claiming the relief sought by his own
conduct. Example- by his own acquiesce delay or laches or his having acquired his rights
on the trade mark fraudulently.
Defenses which cannot be setup
1. Honest adoption of the mark is not a defense.
2. The defendant cannot plead that he had adopted the plaintiffs mark without the
knowledge of the existence of the plaintiffs trade mark
3. Innocent infringement cannot be pleaded
PASSING OFF OF TRADE MARKS
What is passing off?
Passing off is selling ones own goods under the pretence that they are the goods of
another man.

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Object of the law of passing off

The object of the law of passing off is to protect some form of property- Usually the
goodwill of the plaintiff in his business or his goods or his services or in the work which
he produces or something of that kind. The goodwill of the business is ordinarily
represented by a mark, name, get up or other badge.
Goodwill, misrepresentation and damage are the three elements of the tort of passing off,
which is often referred to as the classical trinity of passing off.
General Principles and the Scope of the Law of passing off
It has been held in various decisions the no man is entitled to represent the goods or
business as being the goods or business of another whether such representation is made
by the use of any mark, name sign, or symbol, device or other means. It is therefore
actionable wrong for any person to pass off his goods or business as the goods or
business of another by whatever means that result may be achieved
The basic underlying principle of such an action was stated by Lonngdale M.R. in Perry
v. Truefitt121 to be A man is not to sell his own goods under the pretence that they are
the goods of another man. Accordingly a misrepresentation achieving such a result is
actionable because it constitutes an invasion of proprietary rights vested in the plaintiff.
Passing off future goodwill
The court has to decide the case on the basis of the goodwill which is established at the
date the defendant commences the complained of. The action of passing off can, as the
law stands, adequately protect the development of a growing business. Thus if a claimant
has at the relevant date only a modest business in one or two line of goods, he can still
succeed in a passing off action against a company selling other goods.
Scope of the Law
The concept of passing off which is a form of tort has undergone changes in course of
time. At first it was restricted to the representation of ones goods as those of another.
Later it was extended to business and services. Subsequently it was further applied in
professions and non- trading activities. Today it is applied to many forms of unfair
trading and unfair competition where the activities of one person cause damage or injury

20

to the goodwill associated with the activities of another person or group of persons.
Characteristic Elements of Passing off
The three elements of passing off- classical formulation
The three elements of a passing off action are (1) Reputation (2) Deception (3) Damage.
These are sometimes referred to as the Classical trinity128.
Once misrepresentation is established it is reasonable to infer that customers of the goods
bought them on that misrepresentation, unless there is evidence to the contrary129.
Essential Characteristics of Passing Off- modern formulation
The essential characteristics which must be present in order to create a valid cause of
action for passing off as stated by Lord Diplock130 are: (1) Misrepresentation, (2)
madeby a person in course of trade, (3) to prospective customers of or ultimate
consumers of goods or services supplied by him, (4) which is calculated to injure the
business or goodwill of another trader and (5) which causes actual damage to a business
or goodwill of another trader by whom action is brought (in a quia timet action) will
probably do so. These principles have been time and again reiterated in various cases
decided by the Supreme Court, High Court and the Lower courts as well.
Means adopted for passing off
The methods adopted by persons for representing their goods or business as goods or
business of other persons include: (1) direct false representation; (2) adoption of a trade
mark which is the same or a colorable imitation of the trade mark of a rival trader; (3)
adoption of an essential part of the rival traders name; (4) copying the get-up or color
scheme of the label used by a trader; (5) imitating the design or shape of the goods; and
(6) adopting the word or name by which the rival traders goods or business is known in
the market.
1.Proof of damage
Although damage or likelihood of damage is the gist of an action of passing off, to
maintain an action proof of damage is not necessary. But the plaintiff must show that
there is reasonable probability of his being injured by the defendants action, even if the

21

conduct of the defendant might be calculated to deceive the public that the crux of the
passing off action lies in actual or possible or probable deception.
2.Evidence in a Passing off action
It is not necessary to prove that all persons or substantially all persons in the market are
aware of his mark or get up. However the plaintiff must show that to a substantial
proportion of persons who are purchasers or probable purchasers of goods of the kind in
question the name, mark or other symbol or origin indicates the goods of the plaintiff;
It is latin word which means because he fears or apprehends. In legal terminology it
has been defined as an action by which a person may obtain an injunction to prevent or
restrain some threatened act being done, would cause him substantial damage, and for
which money would be no adequate or sufficient remedy
3. Likelihood of Confusion or deception
Tests of comparison of marks or get-up
Where the alleged passing off is based on the similarity of trade marks, or get up, the
principles of comparison of the marks or get-up are the same as those which arise under
infringement or in opposition proceedings. No general rule can be laid down on what is a
colorable imitation or not. Each case must be dealt having regard to its own
circumstances.
Likelihood of comparison and deception
To establish a likelihood of deception or confusion in an action for passing off where
there has been no direct misrepresentation generally requires the presence of two factual
elements1. That a name, mark or other distinctive feature used by the plaintiff has acquired a
reputation among a relevant class of persons; and
2. That members of the class will mistakenly infer from the defendants use of a name,
mark or other feature which is the same or sufficiently similar that the defendants goods
or business are from the source of or connected.
In arriving at the conclusion of fact as to whether deception or confusion is likely, the
court will regard to:

22

A. the nature and extent of the reputation relied upon;

B. the closeness or otherwise of the respective fields of the activity in which the plaintiff
and the defendant carry on business;
C. the similarity of the mark, name etc. used by the defendant to that of the plaintiff;
D. the manner in which the defendants makes use of the name, mark etc. complained of
and collateral factors, and
E. the manner in which the particular trade is carried on, the class of persons who it is
alleged is likely to be deceived and all other surrounding circumstances.
Medicines and pharmaceutical- essentials laid down
5. Issues in a Passing off action
The following issues arise in an action for passing off:
1. Whether the plaintiff has established a goodwill or reputation in connection with a
business, profession, service or any other activity, among the general public or among a
particular class of people, prior to the first use of the defendant.
2. Whether the defendants activities or proposed activities amount to misrepresentation
which is likely to injure the business or goodwill of the plaintiff and cause or likely to
cause damage to his business or goodwill.
3. Whether the defendant succeeds in one or more of the defenses set by him.
4. If the plaintiff succeeds what relieves he is entitled to.
6. Defenses in Passing off Action
In an action for passing off the defendant may setup the following defenses:
1. The name, mark or other symbol, the use of which is sought to be restrained, is not
distinctive of the plaintiffs goods or business.
2. The defendants use of the name, mark or other symbol is not such as to be likely to
pass off his goods or business as those of the plaintiff.
3. The defendant has a right of his own to use the name, mark or other symbol
complained of.;4. Isolated cases of passing off.
5. The plaintiff is not entitled to relief on account of delay, estoppel, and acquiescence,
deceptive use of the mark or symbol, misrepresentation of facts or fraudulent trade.

23

6. The goods or businesses of the plaintiff and of the defendant are wholly different.
7. Defendant using the word complained of for bona fide description of his goods
Procedure in suits for passing off
A suit for passing off arising out of the use by the defendant of any trade mark
resembling the plaintiffs trade mark must be instituted in a court not inferior to a District
Court having jurisdiction in a Court not inferior to a District Court having jurisdiction to
try the suit. Where the passing off does not involve the use of any trade mark or where
there is no sale of goods the suit may be filed in a subordinate judges court or a court
superior to it.
Section 135(c) relates to jurisdiction of court in respect of passing off arising out of the
use of a trade mark. However under the definition of trade mark in Section 2(1)(zb)
includes service marks as well. Accordingly in Section 135(c) applies to both trade marks
relating to goods and those relating to services
The plaintiff in a suit for passing off must be the owner of a trade mark which has
acquired reputation in relation to some goods or the owner of the goodwill in a trade
name, or get-up relating to some goods or business or profession. The defendant in the
suit must be a person who has passed off or whose activities are likely to pass off his
goods or business as the goods or business of the plaintiffs.
Passing off action may be instituted by many plaintiffs in a representative capacity
provided there is common interest, common grievance and a remedy beneficial to all.
The rules governing the preparation of the plaint and the subsequent proceedings are the
same as in any other suit and are governed by the Code of Civil Procedure.
Persons who can be sued and who can sue in an action for passing off
a. The plaintiff in a suit for passing off must the owner of a trade mark which has
acquired reputation in relation to some goods or the owner of the goodwill in a
trade name, or getup relating to some goods or business or profession. An
unregistered firm can file a suit for passing off against a third party
notwithstanding the prohibition contained in Section 69(2)160 of the Partnership
Act, as a suit for passing off is not for enforcing rights arising from any contract.

24

b. A mortgagee of a business and its trade name, who had never used and had no
intention to use the trade mark, cannot sue for passing off.
c. The defendant in a suit for passing off must be a person, who had passed off or
whose activities are likely to pass off his goods as the goods of another person, the
plaintiff.
d. A person who is the agent of the registered proprietor of a trade mark and has the
sole franchise for selling the goods of the registered proprietor and who had
extensively advertised the mark in the territory has locus standi to file a suit for
passing off, though not for infringement of the mark.
e. The proprietor of an unregistered trade mark using the mark through a licensee can
bring an action for passing off. Section 69(2) of the Partnership Act is not a bar to
filing such a suit .
Directors Liability
Before a director can be held personally liable for a tort committed by his company, he
must not only commit or direct the tortuous act or conduct but he must do so deliberately
or recklessly and so as to make it his own, as distinct from the act or conduct of the
company.
Passing off action by many plaintiffs in a representative capacity
A representative action cannot be brought unless the whole of the claim is appropriate to
that form of action. The suitability for representative proceedings will normally be
established where for the purposes of the dispute the threefold test of common interest,
common grievance and a remedy beneficial to all is satisfied. The court has discretion to
refuse or allow the proceedings to continue as representative action where it would be
unfair or inconvenient for them to continue thus.
DIFFERENCE BETWEEN INFRINGEMENT ACTION AND PASSING OFF
ACTION
1

Infringement Action
Based on property acquired by

Passing off Action

Based on property

registration of the trade mark, user

acquired

of mark not relevant.

Registration is not relevant

by

use

in

of

goodwill
the

mark.

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Defendant must use the offending

Defendants goods need not be same;

mark on the same goods for which

itmay be allied or even different

plaintiffs mark is registered..

If the marks are identical or

Identity or similarity of the marks not

deceptively similar no further proof

sufficient. The use of the mark or

is required

symbol
must be likely to deceive or cause

Use of the mark by the defendant

confusion.
Use of mark by the defendant must be

need not cause any injury or

likely to cause injury or damages to

damages to the plaintiff.

the

Use of the registered trade mark or

plaintiffs goodwill
Use of plaintiffs trade mark not

mark similar to it necessary and

essential.

sufficient.

Use of get up, color scheme, lay out,

shape
of

the

goods,

trade

name

etc.sufficient.
Passing off can be committed orally
also.
6

Applies only to goods

Applies to any business whether

trading or
non- trading, profit making or non0
profit

7
8

Based on violation of statutory right.

making or professionals or services.

Based on violation of a common law

Use of the mark as a trade mark is

right.
Objection to use of plaintiffs mark

sufficient. Use of additional matter

may be

indicating a different trade source is

off set by added matter clearly

26

not material.

distinguishing the defendants goods

from

10

Action for infringement is a

the plaintiffs
Action for passing off is a common

statutory remedy.

law

remedy

10 Infringement need not necessarily

Passing off by use of mark need not

lead to passing off.

necessarily lead to infringement

OFFENCES AND REMEDIES FOR INFRINGEMENT AND PASSING OFF OF

TRADE MARKS
In case of infringement / passing off trademark, a criminal complaint can also be filed. It
may be noted that under the Provisions of the Trade Marks Act, 1999, the offences under
the Act are Cognizable, meaning there by that police can register an FIR (First
Information Report) and prosecute the offenders directly.
Civilremedies:
Injunction/ stay against the use of the trademark
1. Damages can be claimed
2. Accounts and handing over of profits
3. Appointment of local commissioner by the court for custody/ sealing of
infringing material / accounts .
4. Application under order 39 rule 1 & 2 of the CPC for grant of temporary /
ad interim ex-parte injunction
The Courts can grant injunction and direct the custom authorities to withhold the
infringing material / its shipment or prevent its disposal in any other manner, to protect
the interest of the owners of intellectual property rights. This legal proposition can be
enforced with / without involving the concerned authorities as a party in the suit.
Administrative remedies

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Apart from the civil remedies aforementioned the act also vests certain powers in the
various administrative authorities to grant reliefs and remedies to the aggrieved persons.
These powers may be exercised in respect of
(i) Classification of goods and services for the purpose of registration
(ii)Publication of alphabetic index of classification of goods and services
(iii) Granting of refusing to register trade marks
(iv) Correcting and amending the register
(v)Renewal , removal and restoration of registration
(vi) Assignability and transmissibility of registered trade marks
(vii) Rregistration of assignments and transmissions , and
Other aspects relating to trade marks. It may be noted that it is the registrar who mostly
exercises these powers under the guidance of the Central Government.
Criminal Remedies:
The Act also provides for offences relating to a trademark, whether registered or
unregistered. The Trade Marks Act enumerates the following offences:1.
2.
3.
4.
5.

Falsifying a Trade Mark

Falsely applying a Trade Mark
Making or possessing instruments for faking a Trade Marks
Applying false trade description
Applying false indication of country of origin

6. Tampering with an indication of origin already applied to goods

7. Selling goods or possessing or exposing for sale of goods falsely marked
8. Falsely representing a trade mark as registered
9. Improperly describing a place of business as connected with the Trade
marks Office .
The accused in respect of the offences 1 to 7 above is punishable with imprisonment for a
term, which may extend to 2 years, or with fine, or with both. However, if the offence is
pertaining to drugs [as defined under Drugs & Cosmetics Act] or food [as defined under
Prevention of Food Adulteration Act] the offender shall be punishable with imprisonment

28

for 3 years or fine or both. Offence No. 8 is punishable with a fine. Offence Nos. 9 & 10
are punishable with an imprisonment extending upto 6 months or with fine or both.
Offence No. 11 is punishable with imprisonment for a term, which may extend to 2 years,
or with fine, or with both
CONCLUSION
As the above analysis has indicated trade marks are valuable corporate assets and
in cases where they are correctly exploited, they provide their trade mark proprietors with
more fame, distinctiveness and benefits. Thus the respective owners of trade mark rights
by contemplating their value and significance and by devoting material efforts into their
future evolution, they invest significant amounts for their protection. The Trade Marks
Act provides, inter alia, for registration of service marks, filing of multiclass applications,
increasing the term of registration of a trademark to ten years as well as recognition of the
concept of well-known marks, etc. The Indian judiciary has been proactive in the
protection of trademarks. India, being a common law country, follows not only the
codified law, but also common law principles, and as such provides for infringement as
well as passing off actions against violation of trademarks. Section 135 of the Trade
Marks Act recognises both infringement as well as passing off actions.