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1. TRADEMARKS:
INFRINGEMENT, PASSING
OFF AND THE REMEDIES
ATTACHED
MEHAK RAI SETHI

2. INTRODUCTION
The concept of a trademark is the foundation of one’s business to distinguish from others. A good
trademark is often the best salesman of the goods and is a visual symbol of goodwill and stamp of
quality.
Every businessman who has spent considerable amount of money making his mark popular will try to
secure it from usage by unscrupulous competitors. Protection of trademark is important not only from
the business point of view but also for the protection of consumer from fraud and imposition.
PURPOSE OF TRADEMARK PROTECTION:
• It encourages fair trade in every way
• It aims to foster and not to hamper competition
• It also provides that no one, especially a trader, is justified in damaging or jeopardizing another’s
business by fraud, deceit, trickery or unfair methods of any sort
• It precludes the trading by one dealer upon the good name and reputation built up by another.

3. REGISTERED VS. UNREGISTERED TRADEMARKS
REGISTERED TRADEMARK UNREGISTERED TRADEMARK
A "registered trademark" confers a
bundle of exclusive rights upon the
registered owner, including the right
to exclusive use of the mark in
relation to the products or services.
Registration of a trade mark is not a
mandatory requirement in India. A
trade mark is registered for a period
of 10 years and is subject to renewal.
The Trademarks Act 1999 governs the
whole process of registration.
An "unregistered trademark" is one
which does not possess legal benefits.
But in some cases, an unregistered
trademark may get common law benefits.
Unregistered marks are defined as
marks which are not registered in
relation to goods or services (that is
names, marks or logos used in relation
to a business) under the Trademark
Act.
Possesses Legal/Statutory Benefits. Possesses Common Law Benefits
Owner of a Registered Trademark can prevent the use by
another party of an infringing mark by taking an
Infringement Action. (Section 29)
Owner of an unregistered trademark may be able to
prevent use by another party of an infringing mark
pursuant to the common law tort of Passing off. (Sections
27(2), 135(3)(c)

4. BENEFITS OF REGISTRATION OF TRADEMARKS
• Exclusive Rights: The owner of Registered Trademark enjoys exclusive right over the trademark. The
owner can use the same for all the products falling under the classes applied. Further, the owner
can enjoy the sole ownership of the Trademark and can stop other from the unauthorised use of
the Trademark under the same class where it is registered. It gives the right to sue the
unauthorized user of the Trademark Registered.
• Builds trust and Goodwill: The established quality of your product and services are known by
everyone through the trademark and which establishes trust and goodwill among the customers in
market. It helps in creating permanent customers who are loyal and always opt for the same brand.
• Differentiates Product: It makes easy for customers to find your products. It makes your product
and identity of products different from that of the existing and foreseen competitors and acts as
efficient commercial tool. The logo can communicate your vision, quality or unique characteristic of
your company and any organisation

5. • Recognition to product’s Quality: It gives recognition to the quality of the product.
Customers attach the product’s quality with the brand name and this image is created
in the market about the quality of a particular brand which helps in attracting new
customers as they can differentiate the quality of a product by the logo/brand name.
• Recognition to product’s Quality: It gives recognition to the quality of the product.
Customers attach the product’s quality with the brand name and this image is created
in the market about the quality of a particular brand which helps in attracting new
customers as they can differentiate the quality of a product by the logo/brand name.
• Protection against infringement: No competitor or other person can use the
wordmark or logo registered by you under trademark. However, if in any case one
uses it without the approval of the owner of trademark or make any deceptive use of
same, the owner can get the legal protection under the Act and stop the person doing
so.

6. INFRINGEMENT ACTION

7. WHAT IS INFRINGEMENT?
• Infringement is breaking the
law/terms/agreement, etc. which is a violation
the rightful owner of the registered trademark.
• It is a violation/invasion of a statutory right.
Therein, a Trader A uses the goods/services of a
Trader B, without the permission of the latter.
• This concept is covered under Section 29 of the Act.

9. INDIRECT INFRINGEMENT
VICARIOUS LIABILITY
• 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
• the infringement action can be brought against both- the principal wrong-doer and the even against
every infringer who acted for such principal wrong-doer. The tortious principle of vicarious liability as is
applied in common law is also similarly in infringement actions brought under the Trademark Law.
• Here Master is liable for the infringements committed by the servants. [Kodak Ld. Vs Thomas Illingworth
and Co. Ld.(1926)], notwithstanding that the servant acted without Master’s knowledge [ Tonge Vs. Ward
(1869)], or even without/contrary to the masters instruction [Monro Vs. Hunter (1904)].
• Injunctions as a result may be granted against any such person who is employed in effecting the
wrongful act. Even though such person is innocent.

10. CONTRIBUTORY INFRINGEMENT
• Contributory liability occurs when the third party in question acts in concert with, assists ,
encourages the direct infringer
• This third party must know about and contribute to or induce the infringing actions. This crime is
based on the tort law concepts of imputed intent and enterprise liability
Eg. : Where a person supplies a manufacturer with a logo that has been
trademarked, knowing that it will be used for purposes that violate the TM
protection of the TM owner.

11. 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.
INDIRECT INFRINGEMENT : FACTORS TO DETERMINE
THE LIABILITY

12. DIRECT MODES OF INFRINGEMENT
As per the TM Act, 1999, a regd. trademark may be infringed in the following 8 ways: [SECTION 29]
1. When it is used by a person who is not the regd. proprietor/permitted user. And this person uses the TM in the
course of trade, a mark which is IDENTICAL or DECEPTIVELY SIMILAR to a registered TM in respect of the goods or
services for which the Trademark is registered.
2. When it is used by a person who is not the regd. proprietor/permitted user. And this person uses the TM in the
course of trade, a mark which because of:
a) Its identity to a regd. TM and its Similarity to the goods/services covered by such regd. TM, or
b) Its similarity of goods or services covered by such regd. TM or its identity with the regd. TM, or
c) Its identity with the regd. TM and identity of the goods/services covered by such regd. TM,
is likely to cause confusion on the part of the public or which is likely to have an association with the regd. TM.
3. In cases where the mark identifies with the regd. TM and the identity of the goods/services covered by
the regd. TM, the court shall presume that it is likely to cause confusion.

13. 4. 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.
5. 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.
6. 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.

14. ELEMENTS OF INFRINGEMENT:
A) USING THE TM OF A REGD. PROPRIETOR UNAUTHORIZEDLY, BY AN UNREGISTERED PROPRIETOR:
The term ‘using’ given under Section 29 means:
TRADER B is said to be infringing TM of TRADER A by ‘use’, if he:
(a) affixes the regd. TM to 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.
B) DECEPTION OR LIKELIHOOD OF CONFUSION
Use of a mark which so early resembles the other mark, such that it is likely to cause confusion or deception in
the minds of the consumers.
C) IN RESPECT OF IDENTICAL/SIMILAR GOODS/SERVICES
WHAT CONSTITUTES INFRINGEMENT:
- Using the mark in whole - Taking its essential features with additions or alterations
- Using a similar or identical mark - Using the mark in regular trade similar to that of the registered TM
owner
- Using the mark in respect of similar goods or services

15. DEFENCES IN CASE OF INFRINGEMENT
• The defendant in the infringement proceedings can have certain defences.
• The trademarks Act under Sections 30 to 35 talk about the defences that ate available for the defendant in
the infringement proceedings. The defendant can claim against the levelled infringement action by the
trademark owner. There are various grounds on the basis of which the defendant can counter claim against
the alleged infringement. These grounds form the defences for the defendant.
The following are the grounds defence:
• Fair use of the mark: If the use of mark is permitted under the Act it amounts to fair use of the protected
mark. Fair use could be for study or research or for any non-commercial purpose. Fair use or permitted use
of the mark is a valid defence in the infringement proceedings
• Generic mark: If the protected mark has become generic or common in the course of trade and commerce,
it would be a valid ground of defence in infringement proceedings On generic marks or marks which are
commonly used in trade one cannot have monopoly and therefore, question of infringement does not arise
• Prior use of the trademark: If the defendant in the infringement proceedings is a prior user of the
registered trademark, the same would be a valid defence for the defendant. In Kisan vs. Punjab food
(1983) it was it was held that if the defendant it using the prior to the registration by plaintiff is
continuation in using the mark does not constitute infringement.

16. WHO MAY SUE ?
The plaintiff in an infringement suit may be either:
1. The proprietor of the registered trademark or his legal successor.
2. A registered user of a trademark subject to a prior notice to the registered proprietor and consequent failure
of the registered proprietor to take any action against the infringer.
3. An applicant for registration of a trademark. He can file an infringement suit to protect his right to continue
with the suit which will sustain only if his trademark is registered before hearing the suit.
4. Legal heirs of the deceased proprietor of a trademark.
5. Any one of the joint proprietors of a trademark.
6. A foreign proprietor of a trademark registered in India when Infringement occurs in India.

17. WHO MAY BE SUED?
1. The infringer who directly by his action causes infringement or who uses or contemplates or threatens to
use a trademark infringing plaintiff’s right.
2. The master responsible for his servant’s act of infringement. For example, a worker who is engaged in the
business of making false labels is a servant of the master who orders the making of such labels. It is the
master in such a case who is to be sued.
3. The agents of an infringer.
4. Directors and promoters of a limited company cannot be joined as co-defendants unless they have
personally committed or directed infringing acts.

18. JURISDICTION [SECTION 134]
Suit for infringement or for passing off is to be filed in the court not inferior to a District Court having
jurisdiction to try the suit. District Court having jurisdiction includes a District Court within the local
limits of whose jurisdiction, at the time of the institution of the suit or other proceedings, the person
instituting the suit or other proceedings, or where there are more than one person, any of them who:-
a. Actually and voluntarily resides; or
b. Carries on business; or
c. works for gain;
can bring in an action against the defendant.
PERIOD OF LIMITATION:
Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a trademark is
three years from the date of infringement.
Where the infringement is a continuing one, a new course of action arises every time an infringement
occurs. For example, a continued sale of infringing article would give rise to a fresh cause of action.

19. EVIDENCE
The fact of registration of the plaintiff’s mark is to be proved by production of a copy of the entry on the
register certified by Registrar and sealed with the Trademark Registry. [SECTION 137]
Prem Nath vs. Registrar [AIR 1972 Cal 261]:
• The certified copy will contain all the entries in the register relating to the mark including the conditions, if
any, subject to which a mark is registered. In all legal proceedings relating to a registered trademark, the
original registration of a trademark and all subsequent assignments and transmissions will be prima facie
evidence of the validity.
• The plaintiff must establish that the use of the mark complained of comes within the scope of definition of
infringement.
• Where the defendant has absolutely copied the mark and made a facsimile representation of it, no further
evidence is required.
• Where the mark used by the defendant is not identical with the registered trademark, the court has to
determine the two marks are deceptively similar.
• Opinion evidence is not admissible, but statement of witnesses to the effect that they themselves would be
deceived are admissible.
• Evidence as what constitutes the essential feature of the mark is admissible.

20. DOCTRINE OF DILUTION
• Underlying Object:
• It is a presumption that the relevant customers start associating the mark or trademark with a new and different
source. It amounts to reducing the force or value of trademark and also gradually tampers commercial value of the
mark slice-by-slice. (independent commercial tort)
• TM Act does not refer to dilution, but dilution form of infringement in effect is provided under Section 29(4).
• Sec. 29 (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.
• It is a wider TM protection without the concomitant of the ‘likelihood of confusion’ requirement.
• It doesn’t require the need for proving ‘confusion’. [Gmbh Montblanc vs. Stationary; ITC Ltd. vs. Phillip Morris products
(2010)]
• There is no presumption about TM infringement, even if identity of two marks is established under Section 29.

21. ELEMENTS ESTABLISHING DILUTION
Plaintiff must prove the following:
I. Similarity of two marks or their identity.
II. Plaintiff has reputation in India
III. Use of mark without any due cause
IV. The use (amounts to) taking unfair advantage of or is detrimental to the distinctive character or
repute of regd. TM
INFRINGEMENT DILUTION
In case of infringement of TM in relation to similar
goods/services, there is a presumption of
infringement of the mark.
In case of infringement of mark by use, in respect of
dissimilar goods/services, there is no presumption of
infringement of the mark.
Therefore, each element of Section 29(4) has to be established.
- ITC Ltd. vs. Phillip Morris Products (2010)]

22. • Adidas Solomon AG vs. Fitnessworld Tradings Ltd. [2004] FSR 21
In this case, the law governing Dilution, Degradation and Free-riding was summarised as follows:
A mark which is deceptively similar or identical to the mark of the TM owner will cause injury to such
TM owner if it poses a threat to the mere existence of the TM in the market, owing to its potential to
cause the whittling away or dispersion of the identity of the mark and of its hold upon the ‘public
mind’.

23. DETERMINATION OF INFRINGEMENT
• Once infringement proceedings are instituted:
• The first task before court would be to assess the 'locus standi' of the person who has instituted the
proceedings.
• The second task would be to determine whether is any infringement.
• Thirdly, if infringement is determined identify the possible remedies for the same.
In Durga Dutt Sharma vs. Narayan Pharma Laboratories it was held that the test of infringement is to
assess and identify is there is any similarity between the registered mark and the alleged mark by
following rules of comparison.
• The rules of comparison postulate for:
• Comparing the marks visually, phonetically and conceptually
• Comparing the exact words, letters and numbers used in the mark
• Comparing the business and goods of the parties
It was viewed that where the two marks are identical or similar the infringement is made out no further question
arises. If there is no similarity even the near resemblance could constitute infringement provided there is likely
hood of confusion or deception.

24. PASSING-OFF ACTION

25. WHAT IS PASSING-OFF ?
• “A man is not to sell his own goods under the pretence that they are the goods of
another trader”
No man is permitted to use any mark, sign, symbol, device
Or
Means whereby without marking a direct representation himself to a purchaser who
purchases from him
He enables such purchaser to tell lie or make a false representation to someone who is
the ultimate purchaser

26. The term Passing off is not defined anywhere in the TM Act,1999 but the instances of the Passing Off which is
common law remedy ca be found under the following
• Section 27(2) : Nothing in the Act shall be deemed to affect the rights of action against any person for
passing off goods/services as the goods/services of another person or remedies in respect thereof.
• Section 134(1)(c): No suit … (c) for passing off arising out of the use by defendant of any TM which is
identical with or deceptively similar to plaintiff’s TM whether registered/unregistered shall be instituted in
any court inferior to District Court having jurisdiction to try the suit.
• Section135: Deals with Reliefs in suits for Infringement or for passing off:
• Injunction
• Damages/Accounts of Profits (At the option of plaintiff)
• With or without any order for Delivery-up of infringing labels and marks for destruction or erasure.
• Section135(3)(c):Court shall not grant relief by way of damages (other than nominal damages) or on account
of profits….(c) where in a suit for passing off the defendant satisfies the court –
i. That at the time he commenced the use of TM complained of , he was UNAWARE and had NO
REASONABLE GROUND for believing that the TM of plaintiff was in use ; and
ii. That when he became aware of the existence and nature of plaintiff’s TM, he forthwith ceased to use the
TM complained of.

27. WHAT CONSTITUTES PASSING OFF ?
• In the case of Spalding & Bros. v. AW Gamage Ltd (1915) . Lord Diplock very summarily adumbrated
the essential ingredients of passing off action as follows:
1. Misrepresentation;
2. Made by a trader in the course of trade;
3. To prospective customers of his ultimate consumers of goods or services supplied by him;
4. Which is calculated to injure the business or goodwill of another trader (in the sense that this is a
reasonably foreseeable consequence); and
5. Which causes actual damage to a business or goodwill of the trader by whom the action is
brought or (in a quia timet action) will probably do so.

28. • The list given by Lord Diplock was modified in subsequent cases by various judges and was later
reduced to mainly three elements, stated and enlisted by Nourse LJ in a case before him as
follows:
1. The Goodwill of the Claimant
2. The Misrepresentation made by the defendant; and
3. The Consequential damage
- Consorzio de Prosciutto di Parma v. Marks and Spencer plc., [1991] RPC 351
And
- Reckitt & Coleman Ltd. vs. Borden Inc. [1990] 1 All E.R. 873
ESSENTIAL ELEMENTS REDUCED TO THREE

29. TYPES OF PASSING-OFF
• Reverse Passing off: In general passing off, it involves the passing of the goods as if they
belong to a reputed trader. In reverse passing off it involves passing somebody else’s goods
as your own goods. It is equally punishable as the regular passing off.
• Contributory Passing off: It doesn’t involve use of some establish trademark or
misrepresentation but it involves assisting or adding somebody to use the establish
trademark pass off his goods as of some reputed trader. Eg: Where a person supplies a
manufacturer with a logo that has been trademarked, knowing that it will be used for
purposes that violate the TM protection of the TM owner

30. MODES OF PASSING-OFF
•False Misrepresentation
•Adoption of a Trademark either in whole or in part
•Colourable reproduction of trademark
•Copying the label, scheme or get up of the mark

31. EVIDENCE
• Section 31(1)- In all legal proceedings relating to a trade mark registered under this Act (including
applications under section 57), the original registration of the trade mark and of all subsequent
assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
• Section 137- Evidence of entries in register, etc., and things done by the Registrar.—
(1) A copy of any entry in the register or of any document referred to in sub-section(1) of section 148 purporting
to be certified by the Registrar and sealed with the seal of the Trade Marks Registry shall be admitted in
evidence in all courts and in all proceedings without further proof or production of the original.
(2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that he is
authorised by this Act or the rules to make or do shall be prima facie evidence of the entry having been
made, and of the contents thereof, or of the matter or things having been done or not done.
Evidence of infringement: 2 cases-
• Defendant’s mark- exact copy of Plaintiff’s mark (identical marks)
• Probability of deception/deceptive similarity (where marks are not identical)

32. ACQUIESCENCE: A FACET OF DELAY [SECTION 33]
• Form of estoppel by words or conduct.
• Doctrine eluded under ‘equitable estoppel’
• The principle would apply where:
• Sitting or by allowing another to invade the rights and spending money on it
• It is a course of conduct inconsistent with claim for exclusive rights for TM, Trade name, etc.
• The defence of acquiescence would be satisfied when the Plaintiff assents or lay by in relation to the
act of another person.
• In this view of assent or laying by and consequent acts, it would be unjust to grant reliefs.
• This defence would not be struck down by the Courts when there are chances if fact alleged, when
proved are capable of establishing acquiescence.

33. CASES ON ACQUIESCENCE
• Habib Bank Ltd. vs. Habib Bank AG [(1982) RPC 1]
The two companies were separate legal entities, though associated and both carried on business in the
United kingdom each having their own identity and goodwill. Through a chance of circumstance the
plaintiff had been nationalised and they sought to stop the defendants from using the name Habib in their
title because the plaintiffs had earlier assisted the defendants to setup business and both parties had
happily coexisted for number of years and had their own separate reputations it was held that the plaintiffs
were estopped from taking action against the defendants.
• Kirloskar Proprietary Ltd. vs. Kirloskar Dimension P. Ltd. [AIR 1997 Kant. 1]
The plaintiff knew that the 1st defendant incorporated a company in the year 1990 itself. The plaintiffs
themselves through one of the group of companies entrusted certain work to the 1st defendant-company.
This fact clearly shows that the First defendant had established its business and started carrying on
business from the year 1990. In the instant case also the plaintiffs knowing fully well that the defendants
started their business from the year 1990 onwards stood by and let the defendants to build up their trade
till the date of filing of the suit. Therefore, the court held that the conduct of the plaintiffs in keeping quiet
till the defendants had established their business disentitled the interim relief in their favour.

34. ELEMENTS WHICH CONSTITUTE FRAUD OF ACQUIESCENCE
• Willmott vs. Barber (1880) and Sunpharmaceuticals vs. Wyeth Holdings Corp. (2005)
A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for
him to set up those rights.
5 Elements of Fraud/Misrepresentation:
1. Plaintiff made a mistake as to his legal rights
2. Plaintiff must have expended some money or must have done some act…. On the faith of his mistaken
belief
3. Defendant (possessor of the legal right), must know of the existence of his own right which is
inconsistent with the right claimed by the Plaintiff. If he does not know of it in the same position as the
plaintiff, and the doctrine of acquiescence is founded upon conduct with the knowledge of your legal
rights.
4. Defendant must know of the plaintiff’s mistaken belief of his rights.
5. Defendant must have encouraged the Plaintiff in his expenditure of money or in the other acts which he
has done, either directly or by abstaining from asserting his legal right.
FRY, L.J. concluded- where all these elements exist, there is fraud of such a nature that it would empower
the court to restrain the possessor of legal right from exercising it. (these are cumulative elements)

35. GOODWILL REPUTATION
It is inseparable from business to which the goodwill
relates. (no independent existence)
Goodwill is generated by actual availability of the
good/service in connection with which the mark is used.
It is separable from business to which the goodwill relates.
(independent existence)
Business gone = Goodwill gone. Reputation never goes with the business.
Goodwill, which is the basis for a passing off action,
requires actual business to be transacted using the mark,
either by making the products available or by provision of
services.
Reputation, on the other hand, is knowledge and
awareness of the premium a particular a brand/mark
commands although the good/service in connection with
which the mark is used, may not be available in a
particular territory/market
Eg: a shoe designer like Jimmy Choo may be so popular outside the country that his reputation spills over into India
through word of mouth or trade talk or interviews, although his shoes may not be available in India.
Reputation is sufficient for a passing off action to be instituted for a well-known mark.
In other words, actual business using the mark need not be transacted in India for the owner of a well-known mark to
prevent others from using the mark. Existence of reputation, which can be established from literature, is sufficient
Relevant date for determining whether plaintiff has established necessary goodwill/reputation will be seen from the
date of commencement of conduct complained of i.e. time of first actual or threatening passing off.
Example- 6 months too short period to establish a reputation. Reputation generated through media can be
established.

36. CADBURY INDIA LIMITED AND ORS. V. NEERAJ FOOD PRODUCTS 142 (2007) DLT 724
PASSING-OFF INFRINGEMENT
It’s a Common-law remedy It’s a Statutory Remedy
Is an action of ‘Deceit’, as the person accused of passing
off is alleged to have been using the goods of oneself and
portrays the same to be the goods of another
Here the Plaintiff being the ‘registered proprietor’, claims
himself to be the exclusive right-holder w.r.t. the disputed
goods
No requirement of ‘use’ is there in this action The use by the defendant of the IP of the plaintiff may be
a pre-requisite herein
In the case of passing off, the defendant may escape
liability if he can show that the added material is sufficient
to distinguish his goods from those of the plaintiff
If the essential features of the trademark of the plaintiff
have been adopted by the defendant, the fact that the
getup, packing and other writing or marks on the goods
or on the packets in which the defendant offers his goods
for sale show marked differences or indicate clearly a trade
origin different from that of a registered proprietor of the
mark, would be immaterial for the case of infringement of
the trademark. The liability of the defendant for such
infringement may be absolute

37. REMEDIES
FOR
INFRINGEMENT
AND
PASSING OFF

38. STATUTORY REMEDIES
[SECTION 135]
1. Damages:
The assessment and calculation of damages is done mainly with the object of placing the plaintiff in the
same position where he would have been, had there been no infringement of his TM. This sets the basis
for grant of damages.
In the “Fererro Rocher v. Ruchi International [MANU/DE/1265/2018], staggering damages of Rs.
10,00,000/- were awarded to the claimant wherein, the claim was over the use of ‘trade dress’ and not
‘registered trademark’. The acts of the defendant in adopting and using the identical/deceptively
similarly impugned marks and dress in respect of identical goods has caused and will continue to cause
irreparable damage and loss, further, the impugned mark which forms a part of their trading name,
infringes the claimant’s right under S.29(5) of the Trademarks Act. Claimants were entitled to damages
owing to the immense loss of goodwill and reputation.

39. 11.Accounts of Profits
Account of profits acts as a remedy alternative to damages and it is upon the claimant to elect. This remedy is
also available against equitable action of breach of confidence and as common law tort of passing off. the
rationale is to prevent unjust enrichment by defendant. In actual practice, both remedy of awarding damages
and accounts should be considered to be alternatives.
Note: The plaintiff has the option to choose a remedy or elect the remedy which he desires between Damages
and Account of Profits. These may be accompanied by Delivery up of infringing labels and marks for
destruction or erasure.
These remedies shall not be granted by the court if:
 The INFRINGEMENT complained of is in relation to certification/collective TM ; or
 In suit for INFRINGEMENT Defendant satisfies the court –
i. That at the time he commenced to use the TM complained of in the suit, he was UNAWARE and had NO REASONABLE
GROUND for believing that it was plaintiff’s registered TM or Plaintiff was a permitted user; and
ii. That when he became AWARE of the existence and nature of plaintiff’s right in the TM, he forthwith ceased to use the TM in
relation to goods/services in respect of which it was registered. ; or
 In suit for PASSING OFF Defendant satisfies the court –
i. That at the time he commenced the use of TM complained of , he was UNAWARE and had NO REASONABLE
GROUND for believing that the TM of plaintiff was in use ; and
ii. That when he became aware of the existence and nature of plaintiff’s TM, he forthwith ceased to use the TM
complained of.

40. 111. Injunction
“A Court order commanding or preventing an action. To get an injunction, the complainant must show that there is no
plain, adequate, and complete remedy at law and that an irreparable injury will result unless the relief is granted”.
• It is available to the IP owner against both possible and actual infringement of his TM
• This remedy may be granted subject to terms and conditions laid down by the court on case to case basis.
American Cynamide Co V. Ethicon Ltd [1975] 1 All ER 504
Elements to be proved by the Plaintiff before the Court for the grant of Injunction
 Prima facie case
 Balance of Convenience
 Irreparable loss or injury
• The order of injunction may include an ex-parte injunction or any interlocutory order for any of the
following matters, namely : [Section 135(2)]
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect
plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

41. • Three-N- Products Pvt. Ltd. vs. Karnataka Soaps and Detergents Ltd. 2006 (4) CHN 733
"It is true that because of registration, the respondent No. I is entitled to use the marks AYUR in relation
to soap, but the mere factum of registration does not licence it to pass off their product with the mark
AYUR’. It is settled position of the law that for granting order of injunction in the case of passing off the
essential things are:
• Who is the senior user,
• Whether the two competing marks are used in the same product
• Whether there is any likelihood of confusion in the mind of the customers if both the marks are allowed to be
used simultaneously
The word AYUR' may be a generic and common word but it is held by judicial pronouncement that the
mark "AYUR of the plaintiff has acquired secondary significance. The defendant No. I initially did not use
the mark AYUR', and without the said mark the defendant had a large volume of business with its own
reputation. The court was not satisfied with the later adoption of the AYUR' by the respondent for the
said product.

42. TYPES OF ORDERS COURT MAY PASS
• Anton Pillar Order- In appropriate case, the Court has inherent jurisdiction on the application by the
Plaintiff made ex parte and in camera to require the defendant to permit the plaintiff to enter his
premises and take inspection of relevant documents and articles and take copies or remove them
for safe custody.
RATIONALE: to ensure that the infringing articles are removed or destroyed or else there would be a great
danger that the ends of justice will be defeated.
• Mareva Injunction- To protect the interests of the plaintiffs during the pendency of the suit, and is
granted to restrain the defendant from disposing of their assets within the jurisdiction until the trial
ends or the judgment in action for infringement is passed.
• John Doe Order- These are the orders issued by the court to search and seize against
unnamed/unknown defendants; which virtually translates into untrammelled powers in the hands of
the plaintiffs, aided by Court-appointed local commissioner to raid any premises where infringing
activities may be carried out.

43. CRIMINAL REMEDIES AGAINST COUNTERFEIT OF
TRADEMARKS
• Counterfeiting involves manufacturing and/or distributing cheap imitated products under someone
else’s brand/business/trade name and trademark.
• The Trade Marks Act, 1999 does not explicitly define or talk about counterfeit of trademarks. However,
Section 102 of the Act, which deals with “Falsifying and falsely applying trademarks” correspond to the
concept of trademark counterfeits.
• Besides trademark infringement and passing off actions (civil actions), the proprietor of a trademark
may resort to criminal actions against trademark counterfeiting. Section 103 & 104 of the Trade Marks
Act, 1999 provide for criminal penalties for applying and selling goods and services under false
trademarks. The penalty ranges between imprisonment for a term not be less than six months, which
may extend to three years and with fine which shall not be less than fifty thousand rupees, but may
extend to two lakh rupees.

44. U.S. TRADEMARK POLICY
• Federal registration of a trademark provides protection under a federal law known as the Lanham
Act. Although federal registration of a trademark is not required, federal registration provides
benefits to the owner of a mark and is generally recommended. [Similar to India, there is no
Compulsory Registration required for a Trademark in the U.S.]
• These benefits include:
 Notice to the public that one claims rights to a mark;
 Legal presumption that one owns the mark;
 Exclusive right to use the mark nationally for the goods or services listed in the registration; and
 A foundation for registering the mark in foreign countries and
 Preventing the importation of foreign products that infringe upon the mark.
• Federal registration also grants the right to use the ® symbol, which denotes federal
registration of a trademark or service mark. Failure to use the symbol for marks that are
registered potentially limits the recovery of damages and profits under 15 U.S.C. § 1111.

45. E.U. TRADEMARK POLICY
Dual system of protection in the EU
• There are two main ways to register a trade mark in the EU. They can either be registered at national
level at the industrial property offices of EU countries, or at EU level as a ‘European Union trade
mark’ (EUTM) at the European Union Intellectual Property Office (EUIPO).
• National and EUTMs coexist and are complementary to each other. The same trade mark can be
registered at EU and/or national level. The EUTM system consists of one single registration
procedure that grants the owner an exclusive right in all EU countries. This dual system meets the
requirements of companies of different sizes, markets and geographical presence.
• National trade marks may be better for small and medium-sized enterprises (SMEs) or local firms
who don’t need EU-wide protection. The laws governing national trade mark registration in the EU
were first harmonised in 1989. The EU trade mark was created in 1994.

46. INDIA US EU
No Compulsory Registration required for
Trademark.
Term + Renewal : 10+5+5+5….
No Compulsory Registration
required for Trademark.
Term + Renewal :10+10+10…
No Compulsory Registration required for
Trademark.
Term + Renewal :10+10+10…..
A trademark may be registered, even for a
mark which has not yet come into use, i.e. on a
"proposed to be used" basis. Moreover,
rectification can occur only when there is an
objection from a third party. Registered
trademark owners are not required to
periodically prove that their marks are in use in
order to maintain their registrations.
Registration can be obtained
only when the mark has been
used in U.S. interstate
commerce or in commerce
between a foreign country and
the United States.
Same as India
The first use may be anywhere in the world
accompanied by a transborder reputation of
the mark in India. This transborder reputation
can be established through the mere
availability of literature or advertising materials
featuring the mark in question, which need not
even be directed to Indian customers.
General use of the mark in
commerce in the United States
or in commerce between a
foreign country and the
United States is required to be
proved to establish rights in
the mark.
An established goodwill among actual
customers of the relevant product or
service in the respective country needs to
be proved
The term “use” has been given a broad
meaning by the Indian courts. In a 2003
judgment of Hardie Trading v. Addison Paints,
the Supreme Court of India ruled that “use”
may be “non-physical” but must be “material,”
In EU, the ‘use’ must be “genuine” and
not mere token use

47. INDIA US EU
In India, the principle of dilution has
traditionally been well recognized. Many
proprietors of globally well-known
trademark, including APPLE, CARTIER,
CATERPILLAR, DUNHILL, FORD, HONDA,
HYUNDAI and MERCEDES-BENZ, have
succeeded in passing-off actions in India
against users of identical or similar marks in
relation to dissimilar goods.
Only the owner of a famous
and distinctive mark has a
cause of action for dilution.
The trademark need not be “famous” but it
must be known by a significant part of the
public concerned with respect to the products
or services covered by the mark
In India, trademark opposition against a
Trademark needs to be filed within 4
months from the date on which the mark is
advertised or re-advertised in the
Trademark Journal.
In the US, the time limit is 30
days from the date on which
the mark is published in the
Gazette (maximum 180 days).
In EU, for Community Trademarks, the time limit
is 3 months from the date of publication of the
CTM application.
Trade mark registry is under the charge of
the Registrar of Trade Marks who is also the
Controller General of Patent, Designs and
Trade Marks.
There are 2 types of
registers in US- Principal
Register and Supplemental
Register.
Follows dual system of protection which co-
exist together.