THE ICFAI UNIVERSITY, DEHRADUN

TRADEMARK LAW

ASSIGNMENT 1:
INFRINGEMENT OF TRADEMARK

SUBMITTED TO- SUBMITTED BY-

THE ASSISTANT PROFESSOR B.A.LLB[HONS.]-“A”

THE ICFAI UNIVERSITY, 17FLICDDN02006

DEHRADUN
INFRINGEMENT

❖Trademark infringement is the unapproved utilization of a trademark or administration stamp on or regarding

❖Trademark infringement is a violation of the exclusive rights attaching to a registered trademark without the
authorization of the trademark owner or any licensees.

❖A trademark which is not registered cannot be infringed as such, and the trademark owner cannot bring
infringement proceedings.

❖The owner can commence proceedings under the common law for passing off or misrepresentation, or under
legislation which prohibits unfair business practices.

INFRINGEMENT UNDER TRADEMARK ACT

SECTION 29 OF THE TRADE MARKS ACT DESCRIBES “TRADEMARK

A registered trademark is infringed:

❖By a person who is not being a registered proprietor/permitted user

❖uses in the course of trade

❖a mark which is identical with/deceptively similar to the trademark

❖in relation to goods or services in respect of which the trademark is registered and in such manner

❖as to render the use of the mark likely to be taken as being used as a trademark.
Use of the registered trademark as a trade name or part of the trade name dealing in same goods or services for
which the registered trademark is registered;

❖Use of the trademark in advertising if such advertising takes unfair advantage of and is contrary to the honest
practice in industrial or commercial matters, or is detrimental to its distinctive character; or against the
reputation of the trademark

❖Under the TM Act, even oral use of the mark can constitute infringement

A registered trademark 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 trademark, a mark which is identical with or similar to the registered
trademark and;

❖is used in relation to goods or services which are not similar to those for which the trademark is registered;
and

❖the registered trademark 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 trademark

A registered trademark is infringed by a person if he uses such registered trademark, 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 trademark is registered.

❖A person uses a registered mark, if he affixes it to goods/packaging.

❖Offers or exposes goods for sale/puts them on the market/stocks them under the registered trademark/offers
or supplies services under the registered trademark.
❖Imports or exports goods under the mark.

❖Uses the registered trademark on business papers or in advertising.

A registered trademark is also infringed by use of a mark when because of:

❖Its identity with registered trademark and similarity with goods/services covered by registration; or

❖Its similarity with registered trademark and identity with goods/services covered by registration; or

❖Its identity with registered trademark and identity with goods/services covered by registration.

❖Identity with registered mark having reputation.

❖Similarity of Trade Name with registered Trademark.

❖Application of Registered mark on labelling, packaging, etc. with knowledge that such application is without
authorization.

ESSENTIALS OF INFRINGEMENT

1. Person infringing the trademark is not authorized to use the trade mark.
2. The infringing trademark is either similar or identical or deceptively similar to the already registered
trademark.

3. The infringing trademark must be used in the course of regular trade in which the registered proprietor or user
is already engaged.

4. The use of infringing trademark must be printed or in case of usual representation of mark in advertisement,
invoices or bills.

5. Mere oral use of trademark is not infringement.

6. Using either whole of the registered trademark or an adopted one by making a few addition and alteration.

ACTION AGAINST INFRIGEMENT

The registered proprietor, his legal heirs and the registered user(s) can sue for infringement.

An assignee of a registered trademark can also sue for infringement.

A passing off suit can be converted into a combined action of infringement and passing off, if the registration of
the trademark is obtained before the final hearing of the passing off suit.

JURISDICTION
Being a statutory right, Section 134 of the Trade Marks Act, 1999 provides the jurisdiction for filing an
infringement suit.

As per the provisions, a suit for infringement can be instituted before a District Court within the local limits of
whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or
proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or
carries on business or personally works for gain.

CIVIL REMEDIES-Section 135 of the Trademarks Act, 1999

1. Injunction/ stay against the use of the trademark

2. Damages can be claimed

3. Accounts and handing over of profits

4. Appointment of local commissioner by the court for custody/ sealing of infringing material/ accounts

5. Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad interim ex-parte injunction.

6. Delivery of infringing labels and marks for destruction or erasure.

7. Anton Pillar order

CRIMINAL REMEDIES- Section 103 and 104 of Trademarks Act, 1999

1. Infringement of a trademark is a cognizable offense

2. There should be an occurrence of a criminal activity for encroachment of enlisted trademark.

4. Fine not less than fifty thousand rupees which may extend up to two lakh rupees in case of false application
of trademark and selling of goods to which false trademark has been applied.

5. Section 115 (4) of the Act talks about the powers of police for the process of search and seizure of any such
products which calls for action against infringement of the trademark. Before such action is taken, the police
must obtain a “Certificate of opinion” from the registrar.

CASES

DM ENTERTAINMENT V. BABY GIFT HOUSE AND ORS.

Daler Mehendi, the famous pop star from Punjab has a large fan base and is extremely popular amongst Punjabi
pop music lovers.

DM Entertainment was incorporated in 1996 to manage the artist’s escalating career.

The defendant company was making a large business by selling miniature dolls of the artist and cashing on his
popularity.

The plaintiff company was extremely aggrieved and filed for permanent injunction from infringing the artist’s
right of publicity and false endorsement leading to passing off.

The plaintiff company was assigned all rights, titles and interests in the personality of the artist along with the
trademark, Daler Mehendi.

The plaintiff argued that the unauthorized or unlicensed use of the artist’s reputation with respect to goods or
services will deceive the public into believing that the goods and services are associated with the singer and
hence, would lead to passing off.
The plaintiff further submitted that such use was done for commercial exploitation without adequate permission
from the person or any other authorized by him and shall constitute infringement of the person’s right to
publicity.

Character merchandising is an area of law that is still unexplored in India. This was the first case that dealt with
the issue of celebrity merchandising where the publicity rights of the artist was given due recognition.

COCA COLA COMPANY V. BISLERI INTERNATIONAL PVT. LTD.

The defendant, Bisleri by a master agreement, had sold and assigned the trademark MAAZA including
formulation rights, know-how, intellectual property rights and goodwill for India with respect to a mango fruit
drink known as MAAZA to Coca Cola.

In 2008, the defendant company filed for registration of the mark MAAZA in Turkey and started exporting fruit
drink under the name MAAZA. The plaintiff, Coca Cola claimed permanent injunction and damages for
infringement of trademark and passing off.

The court granted an interim injunction against the defendant (Bisleri) from using the trademark MAAZA in
India as well as for export, which was infringement of trademark