Professional Documents
Culture Documents
Passing Off & Infringement
Passing Off & Infringement
Remedies
Reference
Title: Intellectual Property Law, Eastern Law Book
co.
Author: P. Narayanan,
Name of Chapter: Trademarks
Topic: Passing off & Infringement
INFRINGMENT
• When any person who is not being a registered owner
of a mark, uses such mark with malafide intention to
deceive the consumers in course of trade, infringement
is said to take place.
• Registration of a trademark is a prerequisite for
initiating an infringement action. The following
essential conditions must exist for initiation of an
infringement action:
• The allegedly infringing mark must be either
identical or deceptively similar to the registered
trademark;
• The goods / services in relation to which the
allegedly infringing mark is used must be
specifically covered by the registration of the
registered trademark;
■ The use of the allegedly infringing mark must
be in the course of trade; and
■ The use must be in such a manner as to render
the use likely to be taken as being used as a
trademark.
29. 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 of—
(a) 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
29. Infringement of registered trade marks
(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 which—
(a) 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
29. Infringement of registered trade marks
PASSING-OFF
• Passing off, is not defined under Trade Marks Act,
1999
• Section 27(2) of the Trademarks Act, 1999] is a
common law tort used to enforce Unregistered
Trademark rights. Section27(2) of the Trademarks
Act, 1999, recognizes the common law rights of the
user.
• trademark owner to take action against any
person for passing off goods as the goods of
another person or as services provided by another
person or the remedies thereof. For an action of
passing off, registration of a trademark is
irrelevant.
a. Misrepresentation;
b. that was made by defendant in course of trade;
c. to the probable or end users of such goods or services;
d. same was a planned move to damage trade and
reputation of other and
e. results in causing actual or probable damages to the
plaintiff.
Reckit and colman Products v Borden INC
•Classical Trinity
a. Goodwill or reputation
b. Misrepresentation
c. Loss suffered by plaintiff
Exceptions to Infringement Actions
•Section 30(1)
a. Acquiescence [S. 30(2)(c)]
b. Effect of Acquiescence [Section 33]
c. Exhaustion of rights [s. 30(3)]
Exceptions to Infringement Actions (Section 34)