INFRINGEMENT OF TRADEMARKS & ITS PROTECTION

Presented at :-Lakshmikumaran & Sridharan Attorneys,Brigade Gateway Campus, Bangalore-55.

WHAT IS A TRADEMARK?“A sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises”

Trademarks can be any;

WORD NAME SLOGAN SYMBOL PACKAGE

DESIGN SOUND THREE

DIMENTIONAL MARKS

PICTURES

WHAT DO THESE SYMBOLS MEAN?

WHAT IS INFRINGEMENT OF TRADEMARK?

A trademark is said to be infringed , when a registered trademark is used by a person, who is neither the registered proprietor nor the licensee of the said trademark, in relation to the goods and services for which it is registered.

The violation of exclusive right granted to the registered proprietor of trademark in India is governed by The Trademark Act, 1999.

ACTS AMOUNTING TO INFRINGEMENT 1.A trademark is infringed by a person not being a registered proprietor uses in course of trade a mark which:

i. Is identical or deceptively similar to goods or services in respect to which trademark is registered; or

ii. Is likely to cause confusion on part of public or have association with registered trademark because of its identity or similarity with goods or services or registered trademark, or

iii. Takes unfair advantage or detrimental to reputation of registered trademark.

contd….

Contd…2. by person who applies the registered mark to material

intended to be used for packaging or labeling.

3. any advertisement if takes unfair advantage or detrimental to distinctive character or against reputation.

4. By the spoken use of words which constitute distinctive element of registered trademark as well as by their visual representation.

5. By person if uses registered mark or name of business concern as his trade name without authorization.

WHEN IS A PERSON SAID TO BE USING A REGISTERED TRADEMARK?

A person uses a trademark if he,1. Affixes it to goods or packaging,

2. Offer or exposes goods for sale or supplies service under the registered trademark,

3. Import or export goods under the mark,

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

ACTS NOT CONSTITUTING INFRINGEMENT

Following acts will not constitute infringement :-1. If the use is in accordance with the honest

practices in industrial and commercial matters.2. If the use does not take unfair advantage or not

detrimental to distinctive character or repute the trademark.

3. Use in relation to goods indicating character quality and geographical origin.

4. Where trademark registered subject to any condition , any use beyond the scope of such condition.

5. If mark lawfully applied or consented by proprietor.6. Use of mark in relation to part or accessories to the

goods , if reasonably necessary to indicate that goods are so adapted.

7. Assignment or right conferred by independent registration.

PROTECTION OF TRADEMARKS IN INDIA

STATUTORY PROTECTION:-

Protection is provided under The Trademarks Act, 1999.

Act provides various remedies for infringement such as,

1. Injunction

2. Damages or accounts of profits

3. Order for delivery or destruction of infringing label or mark.

4. Seizure or confiscation of infringing goods.

5. Arrest of infringer, fine, penalties.

PROTECTION UNDER COMMON LAW

Provide protection to Unregistered trademark. An action of “passing off” can be initiated. WHIRLPOOL CORPORATION VS. N.R DONGRE & Ors. 1996,ARBLR 488SC

Supreme Court applied the principle of trans-border reputation.

Granted injunction against defendant from using the trademark Whirlpool.

DAIMLOR BENZ VS. HYBO HINDUSTAN

(AIR 94 del 239) Plaintiff filed suit for permanent injunction restraining the use of its trademark “BENZ” along with device of three pointed human being on undergarment.

Court restrained defendant from using mark “BENZ” along with the device of three pointed human being on undergarment.

KAMAL TRADING CO. Vs. GILLETE UK LTD. 1988 IPLR 135 Bombay H.C.

Defendant were using mark “ 7’O CLOCK” on their toothbrushes.

injunction was sought by Gillete limited.

court held Gillete has acquired reputation all over the world using the mark “7’o clock”. Hence use of identical mark will deceive customer.

LATEST TRENDS IN THE INDIAN JUDICIARY1. When there is delay or laches in filing the

opposition.

KHODAY DISTILLERIES LTD Vs. THE SCOTCH WHISKY ASSO. 2008 (37) PTC 413 (SC)

Respondent became aware of the appellants mark in September 1974 but filed suit after 14 years.

Court applied principle of acquiescence also added that class of buyer who supposed to know the value of money , the quality and content of scotch whisky. They are supposed to be aware of process and place of manufacture and their origin.

2. When the name is descriptive in nature.

CADILA HEALTHCARE LTD. Vs. GUJ. CO-OP MILK MARKETING FED. (2009(41) del. 336)

Court explained word can be descriptive in two ways. What particular thing means and what it is generally understood to be, are two different aspects altogether.

The expression “sugar free” , when used in relation to sweetener/sugar substitute, may not be descriptive in meaning but it is certainly descriptive in understanding.

ROLLS ROYCE M.C LTD. et. al Vs. DAVIS. ( 2:15-cv-00417)

Rolls-Royce Motor Cars Ltd. sued on January 21, 2015 Georgia rapper Royce Rizzy, formerly known as Rolls Royce Rizzy, for trademark infringement in New Jersey federal court claiming his stage name and apparel sold on his website infringe and dilute the automaker's “famous and distinctive” mark. 

Thank

you

RAJEEV KUMAR MANDAL E-Mail:-rajeevmandal07@gmail.comContact no. 08088078033.