Aspects of Infringement under the Trademarks Act 1999

Trademark
WHAT ? [Section 2(zb)]
Represented graphically; AND Distinguishing goods and services; AND May include shape of goods, their packaging and combination of colours

WHY?

Trade source Quality of Goods Graphical representation of the BRAND of a company

Infringement
Broadly means taking unfair advantage or being detrimental to the distinctive character reputation of a trademark Section 29
1. Registered marks [for similar goods & services] 2. Registered marks with reputation [for disimilar goods and services]

Aspects of Infringement
Section 27(2)- Passing Off Section 29(1)- General Section 29(2)- Specific Section 29(4)- Dilution Sections 29(5),(6),(7),(8),(9)Others

contd
Conditions to fulfill for causing infringement under 29(2)
1. Mark used either identical to or deceptively similar to the registered TM 2. The goods it is used for is specifically covered by registration 3. The use of the mark is in course of trade in areas covered by registration 4. The use is in such manner as to render it likely to be taken as being used as a trademark

.contd.
Marks covered under Section29(2)
1. Identical TM- Similar goods and services 2. Similar TM-Identical or Similar goods and services 3. Identical TM- Identical goods and services Consumer oriented Likely to cause confusion/deceptively similar Courts presume likely to cause confusion in case of (3) above

Dilution
Conditions to fulfill for causing infringement under Section 29(4)
1. 2. 3. 4. Identical with or similar to the injured TM Injured mark has reputation in India Use of the injured mark is without due cause Use takes unfair advantage of, or is detrimental to the distinctive character or reputation of the injured mark

Producer Oriented

Dilution contd.

Likelihood of confusion test does not hold good anymore

Hamdard National Foundation v. Abdul Jalil 2008(38)PTC109(Del)-Court stuck to the likelihood of confusion or deception test. Ford Motor v. Mrs. C.R. Borman 2008(2)CTMR474(Del.)(DB)Plaintiffs do not have to prove deception if reputation is proven ITC Ltd. v. Phillip Morris Products SA& Ors2010(42)PTC572(Del.) Landmark The Courts held1. Deceptively similar standard has been consciously eschewed by Parliament for 29(4) 2. Should be near identification of two marks- closest similarity 3. Other elements that make up for Dilution as in 29(4)

Dilution contd.
What the confusion is?
1. 2. Raymond Ltd. v. Raymond Pharma2010(44)PTC 25(Bom)(DB) Whether section refers to well known trademarks? Use of the term well known TMs in prosecution proceedings under section 11(2) and use of reputation in India in enforcement proceedings mentioned under Section 29(4) Conflict between Sections 11 and 29(4)? Most infringement proceedings have used well known trade marks Tata sons ltd. v. Manoj Dodia 2011(46)PTC(Del.)

3. 4.

Dilution contd.
1. 2. Tata sons ltd. v. Manoj Dodia 2011(46)PTC(Del.) Use of well known TM might not cause confusion to the source, but damage reputation Using another persons Well known TM taking advantage of the goodwill-constitutes unfair competition Dilution occurs when a well known trade mark loses its ability to be uniquely and distinctively identify and distinguish

3.

Passing Off
Ingredients
1. 2. 3. 1. 2. 3. Goodwill Misrepresentation Damages Trading must not only be honest but not even unintentionally be dishonest Protecting Commercial Goodwill Purchasers not exploited

Underlying Principle

Passing off contd..

Cadilla Healthcare v.Cadila Pharmaceuticals. AIR 2001 SC 1952 Five elementsA misrepresentation Made by a trader in course of trade To prospective customers of his or her ultimate consumers of goods or services supplied by him Which is calculated to injure business or goodwill of another trader (reasonable foreseeable consequence) Which causes actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so.

1. 2. 3. 4. 5.

Passing Off contd

Deception heart of passing off Dilution a consequnce Bata India Ltd. v Pyarelal AIR1985 All 242 well known markfancy name-likely to cause injury to plaintiff- likelihood of deception of BATAFOAM Daimler Benz v. Hybo Hindustan AIR 1994 Del 239 Likelihood of deception not considered-injunction granted only on the grounds of free riding- dilution and passing off overlap Kirloskar Diesel v. Kirloskar proprietory AIR 1996 BOm 149 aim of PO to protect erosion of goodwill Honda Motors v. Chiranjit Singh 2004(26)PTC 1 (Del) HONDA being of global reputation- deception and dilution of goodwill AND reputation

Passing off contd.

Reputation v. Goodwill
1. Not a property 2. Without existence of business 3. Reputation can exist without goodwill Legal Property Existence of business Goodwill only with reputation

Difference
Infg.
1. 2. 3. 4. Similarity of TM Regd TM No goodwill/rep Similar/identical G&S

Dilution
closest similarity Regd TM Reputation Dissimilar G&S

PO
likelihood of confusion Unregd/regd. Goodwill misrep imp