CAREER COLLEGE OF
LAW
NAME –SHARJEEL KHAN
TOPIC – TRADEMARK INFRINGEMENT AND PASSING
OFF REMEDIES
CLASS - BA.LLB 3RD YEAR – 5TH SEM
SUBJECT- IPR
GUIDED BY- MRS. PRATIMA PARIHAR
Trademark
• A trademark refers to a design, or expression which is
recognizable and identifies products or services that are of a
particular source. The trademark which identifies the services is
called service marks.
• A trademark owner may be a business organisation or an
individual or any other legal entity. It may be located on a label,
voucher, package or the product itself.
• Trademarks are being displayed on the building of a company
for the sake of identity.
Importance of trademarks:
• It plays an essential role in protecting the consumers and
promotes the global economic growth.
• It enables the consumers to make quick, confident
purchasing decisions.
• Trademarks and the related intellectual property
encourages the vibrant competition for the benefits of brand
owners, consumers and society at large. A trademark is
different from the copyright and a patent.
• Where copyright helps protecting the artistic and literary works
which is original in nature, a patent helps protecting the invention
and a geographical indication is used for identifying the goods
having special characteristics originating from a definitive territory.
• Registration of a trademark offers a better legal protection while
during infringement. • It is strongly advisable that before making
an application for registration make an inspection of the trademark
to ensure that such application of the registration should not be
denied due to the resemblance of a proposed mark with an existing
one or a prohibited one.
Reasons for the refusal of registration are as
follows:
The marks which are descriptive in nature relation to the
applicant’s goods or services or a part of feature of the same may
also be denied registration. A mark which comprises the common
surnames or geographical terms may also be reduced. Refusal of
trademarks may be with other relevant reasons as well.
Trademark registration term is 10 years. After the renewal, it can
be possible for further period of 10 years. If the registered mark is
not renewed after the period of 10 years, then it can be removed
from the register of trademarks which is maintained by the
registrar.
• Anyone who claims the rights in a mark by registration
can use the trademark or a service mark may use such
designation to alert the public of his/her claim.
• The registration symbol “R”, indicates that the mark is
registered. It cannot be used if the mark has not been
registered. Under trademarks law, section 135 provides
both infringement as well as an action of passing off.
Trademark infringement and remedies:
The infringement of the trademark involves the violation of the exclusive
rights which are attached to the registered trademark without any due
permission of the trademark or the involved licensees, provided that such
permission was granted within the scope of the license. Infringement
occurs with two main reasons:
• The infringer uses a trademark which is identical to a registered
trademark owned by another person.
• Infringer uses a trademark which is confusingly similar to such mark. •
The owner of the registered trademark may proceed legally against that
infringer.
Infringement proceedings:
• Infringement proceedings cannot be brought for a mark which is not
registered, as it cannot be infringed as such.
• The brand owner can instead commence proceedings under the
common law for an action of passing off or misrepresentation or under
the legislation which prohibits unfair business practices.
• The trade dress infringement can also be considered as “actionable” in
some jurisdictions.
• To establish the infringement of a registered trademark, it is enough to
show that the infringing mark is identical or deceptively similar to the
registered mark. There is no further proof requirement.
The following remedies are available to the owner of the
trademark for an unauthorized use of its imitation by a third
party:
• An action for infringement will be taken in the case of
registered trademark.
• An action for passing off will be taken in case of
unregistered trademarks.
• Both the above mentioned things are different from each
other. Statutory remedy will be given in case of infringement
and for passing off, the remedy will be provided by a
common law.
• When infringing or passing off of a trademark occurs, even
the criminal complaint can also be filed. The offences under
the provisions of the trademarks act, 1999 cognizable and
hence the police has the power to register an FIR and
prosecute the offenders directly.
Following are some of the civil remedies in the trademark:
• Damages can be claimed; • Injunction/stay against the
use of the trademark
• Appointment of local commissioner by the court for
custody or sealing of infringing material or accounts
• Accounts and handing over of profits;
• Application under 39 rule 1 and 2 of the Code of Civil
Procedure (CPC) for grant of temporary/ad interim-ex
parte injunction. The courts may grant the injunction
and also direct the relevant authorities to hold back
the infringing material or its shipment or it may
suppress the disposal in any other manner in order to
protect the interest of the owners of the relevant
intellectual property rights.
COCA COLA VS BISLERI
Who is going to take the “MAAZA”?
Well it is mandatory to mention the famous case of
coca cola and bisleri over the trademark Maaza where
Bisleri assigned its trademark Maaza to Coca Cola to
sell and export products in and from India and
immediately after, filed a trademark Application in
Turkey. It was held that the rights over the trademark
were completely assigned to Coca Cola and Bisleri
cannot use the trademark in or outside India.
PARAMOUNT SURGIMED LIMITED V PARAMOUNT BED
INDIA PRIVATE LIMITED & ORS
Who’s to climb the Mount?
A clear case where the principle of ‘He who comes to equity
must come with clean hands’ was disrespected by the Plaintiff
who obtained interim injunction by not mentioning true details
and was subsequently overruled by Justice Inderjeet Kaur
where the Defendants were allowed to continue trading and
manufacturing the hospital beds under the name of
Paramount so as to prevent the irreparable loss and damage to
their business which they had built up over the years.
Passing off has been applied broadly to cover things of a
great diversity such as:
• Similarities between the packaging of products
• Protect the product trade dress; • It is totally different
or distinct from the registered trademark, but often it
sits together with the law of registered trademarks.
• For a passing off action, there is no necessity that the
trademark needs to be a registered one.
Remedies for passing off :
If you are successful in a passing off claim, there are
several remedies available. You can:
•Apply for an injunction to prevent the business from
using your trade mark or goodwill
•Apply to have the infringing goods destroyed
•Sue for damages or seek account for lost profit
•Request an inquiry to establish loss
THANK YOU
EVERYONE
SOURCE - INTERNET
