1. INFRINGEMENT OF TRADEMARKS & ITS
PROTECTION
Presented at :-
Lakshmikumaran & Sridharan Attorneys,
Brigade Gateway Campus, Bangalore-55.
2. 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
4. 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.
5. 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….
6. 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.
7. 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.
8. 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.
9. 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.
10. 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.
11. 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.
12. 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.
13. LATEST TRENDS IN THE INDIAN JUDICIARY
1. 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.
14. 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.
15. 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.
