Trademark infringement, as defined by Section 29 of the Trademarks Act, involves unauthorized usage of a registered trademark. In India, trademark infringement is both a civil and criminal offence punishable by both imprisonment and fines. Remedies for infringement include injunction, compensation, and even destruction of infringing goods. Passing off on the other hand is another tool which extends protection to unregistered trademarks.

The limitation period for filing a suit for infringement is three years from the date of the alleged infringement.

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• Collection and Discovery of Documents
• Drafting and Pleading

What is Trademark Infringement?

As per Section 29 of the Trademarks Act, trademark infringement with respect to registered trademarks simply means violating the exclusive rights attached to a trademark i.e. usage of the mark without the permission of the registered owner or licensees on/with some other products in order to deceive the general public or creates confusion with the registered mark. Such unauthorised usage may lead to financial and reputation losses.

Types of Trademark Infringement in India

Direct Infringement: It is further divided into three types:

• Similar or Deceptive: If someone uses a mark which is similar to a registered trademark or has been used in such a way that it deceives or confuses people with the registered trademark, then it is a direct infringement.
• Used without Owner's Permission: If someone uses the exact registered mark but without obtaining permission from the owner of the mark, then it amounts to direct infringement.
• Use of a similar trademark in the same class: For constituting direct trademark infringement, the product or service concerned with unauthorized use should also fall under the same class of the registered trademark.
• Indirect Infringement: It is also further divided into two types:
  • Vicarious Infringement: When a person, instead of directly infringing a trademark, controls the actions of some other person who directly infringes it, then it is said to be vicarious infringement.
  • Contributory Infringement: When a person knowingly contributes to or influences the direct infringement, then it amounts to contributory infringement.

What Constitutes Trademark Infringement?

In the following cases, a registered trademark is said to be infringed:

• If the mark in dispute is identical with or deceptively similar to the registered trademark and is concerning the same or similar goods or services.
• If the identical or similar mark can confuse the minds of the general public to have an association with the registered trademark.
• If the registered trademark is used as a part of the trade name or business concern for goods and services in respect of which the trademark is registered.
• If the trademark is advertised and as a result, it takes unfair advantage or is contrary to honest practices or is detrimental to the distinctive character and reputation of the registered trademark.
• If the registered trademark is used in the material meant for packaging or labelling of other goods or as a business paper without due authorization of the registered user.

Moreover, if a person wrongfully applies for registration of a trademark as specified in Section 103 which results in trademark infringement then such an applicant shall be punished with imprisonment not less than six months but which may extend to three years along with a fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees. Furthermore, the section also provides for defence in such instances.

What does not Constitute Trademark Infringement?

Section 30 of the Trademarks Act, 1999 lays down certain conditions wherein a trademark cannot be said to have been infringed which can be used as defences by the alleged infringer during the suits for infringement. Those conditions are as follows:

• When the usage of a trademark by a person is in accordance with honest practices in industrial or commercial matters.
• When the usage was not intended for taking undue advantage or when the usage is proved not to be detrimental to the distinctive character or repute of the trademark.
• Using any trademark to indicate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or the rendering of services, or any other characteristics of goods or services.
• Using any trademark which is outside the scope of registration.
• Using of trademark by implied consent.
• Using of trademark in relation to parts and accessories.
• Using of trademarks which are identical or similar to each other.

What Remedies are Available Against the Infringer?

In India, trademark Infringement is a cognizable offence i.e. offences where police have the authority to arrest without a warrant.

The infringer of a trademark can face both civil and criminal charges which are as follows:

• Imprisonment for the minimum period of 6 months which can extend up to 3 years.
• Minimum fine of Rs. 50,000 which may extend to Rs. 200,000.

Apart from these serious consequences, the court may also pass the following orders:

• Injunction: The court may by order direct the infringer to do or not to do certain acts either temporarily (temporary injunction) or permanently (permanent injunction).
• Compensation: In cases of trademark infringement, the courts may provide compensation along with the cost of legal proceedings.
• Destruction of Goods: The court may even pass an order for the destruction of goods with infringed trademark.

What is Passing Off?
Passing off is a common law tort. In India, it is used to protect unregistered trademarks. Similar to the protection extended to registered marks under Section 29 of the Trademark Act, 1999 it also prevents a person from misrepresenting their goods and services. This common law principle is embodied in Section 27 of the Act. There are three elements of passing off popularly known as the classical trinity which include— reputation, misrepresentation and damage to goodwill.

What is the Difference b/w Infringement and Passing Off?
Delhi High Court for the first time expounded the difference between passing off and trademark infringement in the landmark case of Cadbury India Limited and Ors. v. Neeraj Food Products, 2007 as follows:

• An action for passing off is a common law remedy whereas an action for trademark infringement is a statutory remedy.
• The use by the defendant of the trademark of the plaintiff is a prerequisite in the case of an action for infringement while it is not an essential feature for passing off.
• To establish infringement concerning a registered trademark, it is only required to prove that the infringing mark is the same or deceptively similar to the registered mark. On the other hand, in the case of passing off, only proving that the marks are the same or deceptively similar is not sufficient.
• In a passing-off claim, it is necessary to verify that the use of the trademark by the defendant has caused or is expected to cause injury or damage to the plaintiff's goodwill.
• Trademark registration is given only for a particular category of goods. Therefore, the protection can only be extended to those goods whereas, in a passing-off action, the defendant's goods need not be the same or of the same category.

What is the Limitation Period for Filing the Suit?
As per the Limitation Act, 1963 the period of limitation means the prescribed period as provided in the Act, within which any suit, appeal, or application shall be instituted. The prescribed period is three years from the date of the alleged offence. However, in case of a continuing offence, a new limitation period starts after every subsequent infringement.

Documents Required for Filing Trademark Infringement Case
There are certain documents which are required before filing for a trademark infringement suit, which are as follows, make sure to have the following documents with you:

• Copy of advertisement of your trademark in the journal.
• LPC (Legal Proceeding Certificate) of trademark by the Registrar.
• Trademark registration certificate.
• Documents, data, or evidence, etc., for proving loss to the company due to infringement.

Procedure for Filing Trademark Infringement Suit:

• Step 1: Sending Notice: Before the institution of the suit, the first and foremost step is sending a legal notice to the infringer. This is not a mandatory step, you may prefer directly filing the suit. However, it is always recommended to send a notice first as it might result in an amicable settlement, which will not only save you your valuable time but also the cost of legal proceedings.
• Step 2: Suit against Infringement: The first step in case of infringement of your trademark is to file a suit by presenting a plaint in the court having appropriate jurisdiction. The plaint must contain all the required particulars and important facts along with the cause of action.
• Step 3: First Hearing: On receiving the suit, the judge first observes the suit and issues notice to the opposite party for a second hearing after verifying all the details and documentation.
• Step 4: Court Fee: The court fee must be submitted before the date of the second hearing. The court fees vary from state to state.
• Step 5: Second Hearing: In the second hearing, both parties contest their case and provide suitable arguments and proof supporting their claims. If the court is satisfied with the arguments, it may release a final judgment or give a date for the next hearing in the court.
• Step 6: Final Judgement: After the arguments of both parties, the court releases its final judgment. The remedies or punishment are decided by the court.

Pricing for Institution of the Suit:
Generally, two costs are involved for the institution of an infringement suit, the first one is case filing and court fees which are paid to the court and the second one is the legal representation fee which is paid to an Advocate. Trademark infringement poses significant challenges for companies seeking to protect their brand identities. The unauthorised use of trademarks confuses consumers and undermines the value and reputation built by the trademark owner. Register Karo is a legal services platform that provides businesses and individuals with a wide range of legal solutions.

There are several reasons why someone should choose RegisterKaro for their legal needs:

• Experienced team: It has a team of experienced lawyers who specialize in various areas of law. This means that clients can receive expert advice and representation for their legal matters.
• Convenience: It offers online legal services, which means that clients can access legal solutions from the comfort of their own homes or offices. This can save time and make the legal process more convenient.
• Affordability: It offers transparent and affordable pricing for its legal services. Clients can choose from various packages and pay only for their needed services.
• Range of services: It offers a wide range of legal services such as incorporation, trademark registration, GST services, resolving disputes, etc. This means that clients can meet all their legal needs in one place.
• Technology-enabled: It uses technology to streamline legal processes and make them more efficient. This can result in faster turnaround times and better communication with clients.

Contact Compliance Calendar LLP now to get professional guidance for your trademark infringement.