Passing Off, Infringement and

Remedies

Unit-II: Topic 4th (2.4)

 Text Book
Title: Law Relating to Intellectual Property Law,
Lexis Nexis
Author: V.K. Ahuja
Name of Chapter: Trademarks
Topic: Passing off & Infringement

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

(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 particular, he—
(a) 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 registeredtrade mark is infringed by a person who applies such
registered trade mark to a material intended to be used for labeling 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 advertising—
(a) 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
• Section 29 of the Act provides for infringement of
trademarks. The section provides nine sub sections that
enumerate different ways in which infringement
occurs.

• Section 27(1) of the Trade Mark Act, 1999 specifically

entitles a person to initiate a legal proceeding to
prevent infringement and recover damages of
infringement of his registered trade mark.

• Section 28 confers upon the registered proprietor the

right to exclusively use his registered trade mark and
to obtain relief against the person who unauthorizedly
uses the trade mark
 the use of a trademark as its infringement certain
statutory conditions have to be met. So general
conditions laid down in section 29 (1), 29(2) and 29 (3)
are :
• A trademark of which infringement is caused must be
a registered trademark
• A person using the trade mark shall not be the
registered proprietor of the concerned trademark
• A person using the trademark shall not be a person
using it by way of permitted use
• it should be used in course of trade
• In addition to these general conditions, specific
conditions are laid down in each subsection of
section 29(1), 29(2) and 29(4) of the Act to cover
diverse scenario when infringement of a registered
trademark is said to be caused. Section 29 (1) of the
Act lays down following additional conditions
• mark so used must be either identical with or
deceptively similar to the registered trademark
• use must be in relation to goods or services in
respect of which the trademark is registered
• it should be used in such a manner that will render
such use of marks likely to be taken as being used as
a trademark.
constituent elements of Infringement
of trademark
• Unauthorized person – this means a person who is not the
owner or the licensee of the registered trademark.
• 'Identical' or 'Deceptively similar '– the test for determining
whether marks are identical or not is by determining
whether there is a chance for a likelihood of confusion
among the public. If the consumers are likely to get
confused between the two marks then there is an
infringement.
• Registered Trademark – You can only infringe a registered
trademark. For an unregistered Trademark, the common law
concept of passing off will apply.
• Goods/ Services – In order to establish infringement even the
goods/ services of the infringer must be identical with or
similar to the goods that the registered Trademark
represents.
Indirect Infringement of a Trademark

• Indirect infringement is a common law principle that

holds accountable not only the direct infringers but also
the people who induce the direct infringers to commit
the infringement. Indirect infringement is also known
as secondary liability has two categories: contributory
infringement and vicarious liability.
• A person will be liable for contributory infringement in
two circumstances:
1. When a person knows of the infringement
2. When a person materially contributes or induces the
direct infringer to commit the infringement.
Vicarious liability

• A person will be vicariously liable under the following circumstances:

1.When the person has the ability to control the actions of the direct infringer.
2.When a person derives a financial benefit from the infringement.
3.When a person has knowledge of the infringement and contributes to it.
• Vicarious liability usually applies in the case of employer-employee
relationships and the like. This finds indirect mention in section 114 of
the Trademarks Act. According to this section, if a company commits
an offence under Act then every person who is responsible for the
company will be liable. Except a person who acted in good faith and
without knowledge of the infringement.
• On the whole, indirect infringement occurs when a person, though not
infringing directly, causes another person to infringe on a trademark.
• What constitutes the use of a trademark:
• According to Section 29(6) of The Trade Mark
Act,1999 a person is said to use the mark if, in
particular, he
• affixes it to goods or the packaging thereof;
• offers goods for sale under registered trademarks
• Stocks goods for sale or to expose them for sale or to
put them
• in a market under registered trademark.
• Offers or supplies services under the registered
trademarks
• imports or exports goods under a registered trademark
• uses the registered trademark on business papers
• uses the registered trademarks in advertising
• Glaxo Smith Kline Pharmaceuticals Ltd. v.Unitech
Pharmaceuticals Pvt. Ltd.,(Decided on 16th December,
2005)
The plaintiff alleged that the defendant’s mark Fexim is
deceptively similar to the registered trade mark “Phexin”
which is used for pharmaceutical preparations. The
packing material was also deceptively similar and it was
claimed by the plaintiff that defendant is intending to not
only to infringe the trademark but also to pass off the
goods as that of the plaintiff as the two marks are also
phonetically similar. `PHEXIN', any label/packaging
material deceptively similar and containing the same
pattern as that of the plaintiff.
• M/s Bikanervala v. M/s Aggarwal Bikanerwala,17
(2005) DLT 255 the plaintiffs was running his
business under the Trade Mark “BIKANERVALA”
and alleged that respondent’s Trade mark
“AGGARWAL BIKANERWALA” claiming that the
said trade mark is deceptively similar to the trade
mark of the plaintiff who was using from 1981 and
also got registered it in the year 1992. Court held in
favour of the plaintiff and restrained the defendant
from manufacturing, selling, offering for sale,
advertising, directly or indirectly dealing in food
articles for human consumption under the impugned
trade mark/trade name/infringing artistic label
'AGGARWAL BIKANERWALA' or from using any
trade mark/trade name/infringing artistic work
containing the name/mark 'BIKANER
WALA/BIKANERVALA’.
 If prior use is established by the plaintiff, a suit for
infringement action can be brought. Registration of
trade mark by any party is not essential for
establishing an infringement suit-(Dhariwal
Industries Ltd. and Anr. v. M.S.S. Food Products.,
2005 SC 1999)

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.

• Passing off means where one passes off his

goods and services that of other, thereby creating
confusion among public

• In N R Dongre v. Whirpool (1996) 5 SCC 714

Court elucidated principle of passing off by
stating “a man may not sell his own goods under the
pretence that they are goods of others”.
• In Erven Warnik v. Townend(Advocates case)., (1980)
R.P.C 31 listed following essential elements for effective
passing off action:

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)

• Nothing in this Act shall entitle the proprietor or a

registered user of registered trade mark to interfere with or
restrain the use by any person of a trade mark identical
with or nearly resembling it in relation to goods or
services in relation to which that person or a predecessor
in title of his has continuously used that trade mark from a
date prior-

(a) to the use of the first-mentioned trade mark in relation

to those goods or services be the proprietor or a
predecessor in title of his; or
(
b) to the date of registration of the first-mentioned
trade mark in respect of those goods or services in
the name of the proprietor of a predecessor in title of
his;

whichever is the earlier, and the Registrar shall not

refuse (on such use being proved) to register the
second mentioned trade mark by reason only to the
registration of the first-mentioned trade mark.
 OFFENCES AND PENALTIES

• 104. Penalty for selling goods or providing services to which false

trade mark or false trade description is applied
• 105. Enhanced penalty on second or subsequent conviction.
• 107. Penalty for falsely representing a trade mark as registered
• 108. Penalty for improperly describing a place of business as
connected with the Trade Marks Office.
• 109. Penalty for falsification of entries in the register
• 111. Forfeiture of goods
• 112. Exemption of certain persons employed in ordinary course of
business
• 114. Offences by companies
• 115. Cognizance of certain offences and the powers of police officer
for search and seizure
 REMEDIES
• Under the Trademarks Act 1999, Registration of a
trademark is not a pre-requisite in order to sustain a
civil or criminal action against violation of trademarks
in India. Both civil and criminal remedies are
simultaneously available against infringement and
passing off.

• CIVIL REMEDIES:-Under Sections 134 &135 of the

Trademarks Act, 1999, the court grant relief in any suit
for Infringement or for Passing Off includes
Permanent & Interim injunction and either damages or
an account of profits together with or without any
order for delivery up of the infringing labels and marks
for destruction or erasure.
• In criminal action for infringement of registered
trademark [Section 103 of the Trademarks Act, 1999],
the offence is punishable with imprisonment for a term
which shall not be less than six months but which may
extend to three years and with fine which shall not be
less than INR 50,000 but which may extend to INR
200,000.
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