In India, trademarks are regulated by the Trademarks Act, of 1999 (the "Act"). The Act authorizes one party to use a registered trademark exclusively and gives another party permission to use a registered trademark in exchange for money.

The Act gives both registered and unlicensed trademark proprietors or owners the right to forbid unauthorized use of their trademarks. When a third party uses intellectual property without the owner's permission, the Act protects that trademark owner from that use.

In contrast to registered trademarks, however, unregistered trademarks only receive restricted legal security. In order to obtain comprehensive legal protection for the trademark, it is preferable to file it even though the Act does not require it. It is explained how recognized and unregistered brands are protected by law.

What is Trademark Infringement?

Trademarks are governed by the Trademarks Act, 1999 ('Act') in India. The Act grants a registered trademark owner an exclusive right to use it and authorizes another entity to use it in return for a payment. The Act provides trademark protection against third parties who use it without authorization from the trademark owner.

Before we get to know about what is trademark infringement, we need to understand what is a trade mark.

Trademark:

A trademark includes symbols, names, words, numbers, slogans, symbols or a combination of them all, which is used by an individual, business organization, or any other legal entity. In other words, it is a mark that distinguishes the goods and services of one owner from others.

Trademark Infringement:

A trademark infringement is the unauthorized use of a mark by an unauthorized person, which is identical or deceptively similar to an already registered Trademark.

In An Action For Infringement Of Trademark:

1. the plaintiff must be the registered owner of a trademark
2. the defendant must be use a mark deceptively similar to the plaintiff's mark
3. the use must be in relation to the goods in respect of which the plaintiff's mark is registered,
4. the use by the defendant must not be accidental but in the course of trade.

Infringement of Trade Mark:

Infringement Is A Breach Or Violation Of Another's Right.
As per Black's Law Dictionary Infringement means an act that interferes with one of the exclusive rights of a patent, copyright, and trademark owner. According to the Trademark Act, 'A registered trademark 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. Infringement of trademark means use of such a mark by a person other than the registered proprietor of the mark.

As per Trademark Act, a mark shall be deemed to be infringed mark if:

1. it is found a copy of the whole registered mark with a few additions and alterations,
2. the infringed mark is used in the course of trade,
3. the use of the infringed mark is printed or the usual representation of the mark in an advertisement. Any oral use of the trademark is not an infringement.
4. the mark used by the other person so nearly resembles the mark of the registered proprietor as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered.

Case Law on Infringement:

• Hearst Corporation Vs Dalal Street Communication Ltd., 1996 PTR 1 (Cal)

  The Court held that a trade mark is infringed when person in the course of trade uses a mark which is identical with or deceptively similar to the trademark in relation to the goods in respect of which the trademark is registered. Use of the mark by such person must be in a manner which is likely to be taken as being used as a trademark.
   

• Amritdhara Pharmacy Vs Satya Deo Gupta, AIR 1963 SC 449

  In the said case the test for determining the similarity in two words relevant to an infringement action was stated by Supreme Court that: You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods.
  
  In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in normal ways as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case.

Difference between Infringement and Passing off:

• Infringement is a statutory remedy provided under section 28(1) of The Trademark Act, 1999 for which registration of a trademark is a pre-requisite, while Passing off is a common law remedy and in Passing Off claims, registration of a trademark is not required.
   
• Under infringement, plaintiff is only required to show deceptive similarity, as there is presumption of confusion. In passing off, apart from proving deceptive similarity the Plaintiff is also required to prove confusion in public and likelihood of injury to the plaintiff's goodwill.

Remedies available for trademark infringement in India
Remedies available for trademark infringement in India including an action against infringement and passing off are as follows:

1. Civil Action:
   The competent Courts can be moved for grant of relief of injunction against infringement and/or passing off.
    
2. Criminal Proceedings:
   Criminal complaints can also be filed against persons who have infringed the trademark in addition to a civil action.
    
3. Administrative Remedies:
   Notice of opposition can be filed against trade mark applications published in the Trade Marks Journal. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trade Marks.
    
4. Border Measures:
   The Indian Customs Act 1962 confers power on the Central Government to prohibit importation or exportation of certain goods. In exercise of the powers conferred by that statute section, the Central Government has prohibited the import of those goods that have applied a false trade-mark or a false trade description. The Trade Marks Act 1999 provides that the proprietor or a licensee of a registered trademark may give notice in writing to the Commissioner of Customs to, prohibit the importation of any good if the import of the said good constitutes an infringement under the said Act.

Period Of Limitation For Filing A Suit For Infringement Of A Trademark In India
Further, it is pertinent to mention here that, as per the Limitation Act, 1963, in India if a mark of a registered proprietor is being infringed, then a suit for infringement can be brought against the infringer within 3 Years from the date of infringement/misuse.

Written By: Sanskar (BBALLB 8 Sem.)