1.
Likelihood of Confusion (Section 29(2)):
o A trademark is infringed if its unauthorized use is likely to cause confusion in the minds of
the public.
o Confusion can be caused due to phonetic, visual, or conceptual similarity.
2. Use in Advertising (Section 29(8)):
o If a registered trademark is used in advertisements in a manner that is misleading, tarnishes
the reputation, or unfairly benefits the infringer, it constitutes infringement.
3. Use in Business Name or Trade Name (Section 29(5)):
o Using a registered trademark as part of a business name without permission is also an
infringement.
4. Use for Dissimilar Goods (Section 29(4)):
o If a well-known trademark is used for goods or services unrelated to those for which it is
registered, it still amounts to infringement if it takes unfair advantage of or damages the
reputation of the trademark.
5. Counterfeit and Lookalike Products (Section 29(6)):
o The act prohibits unauthorized use of packaging, labels, and trade dress similar to a registered
trademark.
Section 30: When Trademark Use is Not Infringement
Section 30 provides defenses against trademark infringement, such as:
1. Use in Good Faith: If a mark is used in a descriptive manner, not as a trademark, it is not
infringement.
2. Parallel Imports: Importing genuine goods with the registered trademark does not amount to
infringement.
3. Types of Trademark Infringement
(A) Direct Infringement:
This occurs when a party uses a mark identical or similar to a registered trademark without authorization.
(Governed by Section 29 of the Act)
(B) Indirect Infringement (Contributory Infringement):
Even if a person does not directly infringe a trademark, but assists or induces another party to infringe, they
can be held liable.
4. Remedies for Trademark Infringement
(A) Civil Remedies (Section 134)
1. Injunction (Restraining Order): The court can issue an order preventing further use of the
infringing trademark.
2. Damages: Compensation may be awarded for losses suffered.
3. Seizure of Infringing Goods: Court orders may direct the confiscation of counterfeit products.
(B) Criminal Remedies (Section 103 & 104)
Punishment: Up to three years of imprisonment and a fine ranging from ₹50,000 to ₹2,00,000.
Seizure of Infringing Goods: Police have the power to seize counterfeit products.
(C) Administrative Remedies
Filing opposition against trademark registration at the Trademark Registry if a similar mark is
applied for registration.
Effect of Non-Registration of Trademarks
(A) No Statutory Protection Against Infringement
Registered trademarks enjoy statutory protection under Section 29 of the Trade Marks Act, 1999,
which provides remedies against infringement.
Non-registered trademarks do not receive this protection, meaning the owner cannot file a suit for
infringement under the Act.
(B) Reliance on Passing Off Action (Common Law Remedy)
If a trademark is not registered, the owner can only seek protection under the common law principle of
passing off.
Elements of Passing Off (Reckitt & Colman Ltd. v. Borden Inc., 1990):
1. Goodwill – The mark must have gained reputation in the market.
2. Misrepresentation – The defendant's use of the mark must mislead customers.
3. Damage – The original trademark owner must suffer financial or reputational harm.
Burden of Proof:
The trademark owner must prove that the defendant’s actions caused consumer confusion and
economic loss.
In contrast, a registered trademark holder does not need to prove goodwill, making their case
easier.
(C) Difficulty in Licensing, Franchising, or Assigning the Trademark
A registered trademark can be legally transferred, sold, or licensed under Sections 37-45 of the
Trade Marks Act, 1999.
Non-registered trademarks have no statutory rights of assignment or licensing, making business
expansion challenging.
(D) No Presumption of Ownership
A registered trademark owner has prima facie proof of ownership in court.
A non-registered trademark owner must prove long-term use, reputation, and goodwill before
claiming rights.
(E) Risk of Losing the Trademark to Another Entity
If a third party registers the same or similar trademark, they gain exclusive rights under the Act.
The original user of the mark may have to rebrand or file costly legal actions to reclaim rights.
(F) Limited Scope in Cross-Border Protection
Under international treaties such as the Madrid Protocol, only registered trademarks can seek
international protection.
Non-registered trademarks have no automatic recognition in foreign jurisdictions.
3. Limited Legal Remedies Available for Non-Registered
Trademarks
(A) Civil Remedies under Common Law
Passing off suit in a court of law.
Permanent or interim injunction to stop unauthorized use.
Claim damages for financial losses due to misrepresentation.
(B) No Criminal Remedies
Registered trademarks can invoke criminal penalties under Sections 103-105 of the Trade Marks
Act, 1999, including imprisonment and fines for counterfeiting.
Non-registered trademarks cannot avail these criminal provisions.
III. Conclusion
Trademark infringement applies only to registered trademarks and is protected under the Trade
Marks Act, 1999.
Owners of non-registered trademarks can only file passing-off suits under common law.
Registration provides stronger legal remedies, exclusive rights, and criminal liability for
infringers.
the trademark act 1999
