LAW, TradeMark,

1. Name-KatheriyaBhavna
BA.LLB(HoNS), L.L.Min , Business Law
Infringment of Registered Trade Mark

2. Introduction of Trade Mark
 A trademark is a sign capable of distinguishing
the goods or services of one enterprise from
those of other enterprises. Trademarks are
protected by intellectual property rights.
 Trade mark is a branch of Intellectual Property
Right. A trademark includes any word, name,
symbol, or device, or any combination, used, or
intended to be used, in commerce to identify and
distinguish the goods of one manufacturer or
seller from goods manufactured or sold by others,
and to indicate the source of the goods. In short,
a trademark is a brand name. Trademark is a
mark or symbol which is capable of distinguishing

3.  TM provides protection to the owner of the mark by
ensuring the exclusive rights to use in to identify the goods
or services or authorize another to use it in return of
payment. It works like a weapon in the hand of registered
proprietor or owner of the mark to stop other traders from
unlawful use of the mark of the registered owner.
 Under section 28 of the Act, the registration of a trade
mark shall give to the registered proprietor of the
trademark, the exclusive right to the use of the mark in
relation to the goods in respect of which the mark is
registered and to obtain relief in respect of the trademark
in the manner provided under the Act.
 The proprietor of a trade mark has a right to file a suit for
infringement of his right and obtain:
1. Injunction,
2. Damages,
3. Account of profits

4. Registration of TM:
 As per sec.18 (1) of the Trade mark Act, 1999, any person claiming to
be the proprietor of a trademark used or proposed to be used by him
may apply in writing in prescribed manner fro registration.
 The application must contain the name of the mark, goods and services,
class in which goods and services fall, name and address of the
applicant, period of use of the mark.
 Any Person means a Partnership firm, association of persons, a
company, whether incorporated or not, a Trust, Central or State
government.
Steps for registration of trademark-
1. Search for the name, device, logo, and mark intended to be applied
as trademark.
2. Apply for registration of trademark.
3. Examination of application by the registry. Examination report issued
by the registry raising objections under different sections of the
Trademark Act, 1999.
4. Replying to the official objections and if required, ask for hearing.
Applicant needs to file evidence in support of the trademark application.
5. Advertisement of trademark in official gazette/trademark journal for
the purpose of opposition filed by the public within 3 months from the
date of publication.
6. If no opposition is received, a certificate of registration is issued in
favour of applicant. The validity period of registration certificate is for ten

5. Infringement of Trade Mark:
 Infringement is a breach or violation of another's right.
As per Black's Law Dictionary Infringement means an act that
interferes with one of the exclusive rights of a patent, copyright and
trademark owner.
 According to the Trademark Act, '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.
 Infringement of TM means use of such a mark by a person other
than the registered proprietor of the mark.
 As per Trademark Act, a mark shall be deemed to be infringed
mark if:
1. it is found copy of whole registered mark with a few additions
and alterations,
2. the infringed mark is used in the course of trade,
3. the use of the infringed mark is printed or usual representation of
the mark in advertisement. Any oral use of the trademark is not
infringement.
4. the mark used by the other person so nearly resembles the mark
of the registered proprietor as is likely to deceive or cause confusion

6.  Protection Against Infringement of Trade Mark:
 Under section 29 of the Trade mark Act, 1999, the use of
a trade mark by a person who not being registered
proprietor of the trade mark or a registered user
thereof which is identical with, or deceptively similar
to a registered trademark amounts to the infringement
of trademark and the registered proprietor can take
action or obtain relief in respect of infringement of
trademark.
 In a matter Supreme Court has held that in an action for
infringement if the two marks are identical, then the
infringement made out, otherwise the Court has to
compare the two marks, the degree of resemblance by
phonetic, visual or in the basic ides represented by the
registered proprietor, whether the essential features of
the mark of the registered proprietor is to be found used by
other person than only the Court may conclude the matter.

7.  In an action for infringement of TM:
 (a) the plaintiff must be the registered owner of a
trademark
(b) the defendant must be use a mark deceptively
similar to the plaintiff's mark
(c) the use must be in relation to the goods in respect
of which the plaintiff's mark is registered,
(d) the use by the defendant must not be accidental
but in the course of trade.
 Cases-1.Color combinations as trademarks
Colgate Palmolive Company v Anchor Health and
Beauty Care Pvt Ltd 2003 (27) PTC 478 (Del)
 The court stopped the defendant from using red and
white in its packaging and trading as the plaintiff had
proprietary rights over the combination when used for
toothpastes.

8.  2.Sholay Media Entertainment v Parag Sanghvi CS (OS)
1892/2006
 This case concerned a remake of Indian film Sholay. The
defendant was restrained from infringing the plaintiff’s copyright
and registered trademarks in the title of the film Sholay and its
key character, Gabbar Singh, and any other deceptively similar
marks/names
 3. Afford the same degree of protection to domain names as
to trademarks
Satyam Infoway Ltd v Siffynet Solutions Pvt Ltd(2004 (28)
PTC 566 (SC)
 The Supreme Court of India affirmed the inclination of the Indian
judiciary to The Supreme Court held, among other things, that
domain names are business identifiers and should be protected
as far as possible by the law of passing off. The court also stated
that domain names require specific protection under the law of
passing off since they are not limited territorially, and as a result
may not be adequately protected by national laws such as the
Trademarks Act.

9. Example of TM

10.  Trademark infringement in India is defined under Section 29 of the
Trademarks Act, 1999. Simply put, when an unauthorized person uses a
trademark that is 'identical' or 'deceptively similar' to a registered
trademark, it is known as infringement.
 1. Unauthorized person – this means a person who is not the owner or
the licensee of the registered trademark.
 2. '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.
 3. Registered Trademark – You can only infringe a registered trademark.
For an unregistered Trademark, the common law concept of passing off
will apply.
 4. 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.
 Any unauthorized use of the exclusive statutory rights of a registered
trademark constitutes infringement.
 The infringement explained above is direct infringement. There is
another aspect to trademark infringement in India, i.e. indirect
infringement.

11. What is 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.
 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.

12. Conclusion
 On the whole, indirect infringement occurs when a
person, though not infringing directly, causes another
person to infringe on a trademark.
 With the growth in the e-commerce industry liability
for indirect infringement is extremely important as
holds every involved person accountable.
 Thus, whether direct or indirect, any form of trademark
infringement in India can attract liability. To avoid
infringement of trademarks, you contact our trademark
experts to get a consultation before launching your
brand or product.