Infringement of Registered Trade Mark (Sec 29)

Definition: Infringement means taking unfair advantage of, or harming, the distinctive
character or reputation of a Trademark. Under the Trade Marks Act, 1999, it refers to the
violation of the exclusive rights granted to a registered proprietor.

Key Points:

1. Unauthorized Use:
o Using a mark that is "identical" or "deceptively similar" to a registered
Trademark.
o Sec 29 of the Act lists various actions that constitute infringement.
2. Types of Infringement:
o Direct Infringement: Includes:
 Unauthorized use of the registered Trademark.
 Use of a deceptively similar or identical mark causing confusion.
 Affixing the mark to goods/packaging, offering/exposing goods for
sale, importing/exporting goods, or using the mark in
advertising/business papers.
 Advertising that takes unfair advantage, harms the mark's distinctive
character, or damages its reputation.
o Indirect Infringement: Occurs when:
 A person induces or contributes to another's infringement.
 The person has control over the infringer, derives financial benefit
from the infringement, or is aware of and contributes to the
infringement (vicarious liability).

Test for Infringement:

 Use of identical/similar name for identical/similar goods/services.

 Likelihood of confusion among average consumers with imperfect recollection.

Parle Products v/s J.P. & Co. (1972)

Facts: In this case, the defendants started selling and offering for sale biscuits in a wrapper
which was deceptively similar to the regd. Tm "Gluco" and also a wrapper known as "Parle's
Gluco Biscuits", and hence, the plaintiff brought infringement suit. TC & HC dismissed the
case.

Issue: Whether there existed infringement?

Decision: The court observed that the packets are practically of identical the same size, colour
scheme of the wrappers, the design on both though not identical, bears such close resemblance that
one can easily mistaken for the other.

The essential features of both are that there is a girl, one arm raised and carrying something in
the other with a cow/cows near her and hens/chickens in the foreground.

Hence the court, held that, the defendant's wrapper is deceptively similar to the plaintiff's.
Therefore, for infringement nothing > is required to be proved.
Health & Glow Retailing Pvt. Ltd. vs Dhiren Krishna Paul (2009)

Fact: In this case, the plaintiff was selling cosmetics, hair care and beauty care goods while
defendant was using the name "Glow" for treatment of hair care. Plaintiff brought a suit for
infringement and passing off action against the defendant. The defendant sought to take the
plea of "bonafide use" of its own name & "bonafide description" u/s 35 of the act.

Issue: Whether the action for infringement or passing off is maintainable in this case?

Decision:  Maintainability: The court held that an action for infringement/passing off was
maintainable.

 Infringement Criteria (Sec 29(4)): The court specified that infringement can occur even
with dissimilar goods/services if the following conditions are met:

The infringing mark is identical or similar to the registered Trademark. b) The infringing
mark is used for goods/services that are not similar to those for which the Trademark is
registered. c) The registered Trademark has a reputation in India, and the use of the infringing
mark without due cause takes unfair advantage of or harms the distinctive character or repute
of the registered Trademark. The court rejected the defendant's contention and ruled in favor
of the plaintiff.

Balkrishna Hatcheries vs Nandos International Ltd. (2007)

In this case, it was found that the name (Nandos) is used in relation to g/s (restaurants) which
are not similar to those for which the TM (Nandos) is regd. (processed frozen food products)
and the regd. TM (Nandos) has no distinctive reputation in India and the use of the name
(Nandos) is not w/o due cause or doesn't take unfair advantage or is not detrimental to the
alleged distinctive character or repute of the regd. TM (Nandos).

The Bombay HC in this case laid down that in case of infringement not only the marks
should be similar but the sources should also be similar to the services of the plaintiff.

In this case the plaintiff had a regd. TM for goods and was used on goods & not on services,
whereas defendant was using his mark only on restaurant service.

The court held that, the case of the plaintiff doesn't fall either in Sec 29(2) or Sec 29(4) &
hence plaintiff is not entitled to any relief.

Exception to Infringement w.r.t Sec 30(2)(a) of the TM Act, 1999

i) Section 30(2)(a) of the Act provides some limitations/exceptions in which a regd. TM is

not infringed like Sec 30(2)(a) which provides that a regd. TM will not be infringed if the
mark is used in relation to g/s to indicate the kind, quality, quantity, intended purpose, value,
geographical origin or other characteristics of the goods/services.
ii) Similarly, Sec 30(2)(d) provides that if in the sale it becomes reasonably necessary for the
manufacturer of adaptable goods, to refer the TMs of relatable goods, such reference would
not amt. to an infringement of the TM under which relatable goods are sold.

Hawkins Cookers Ltd. vs Murugan Enterprises (2012)

Facts: In this case, the plaintiff, Hawkins Cookers Ltd. is the owner of the TM "HAWKINS"
and used it on several products including pressure cooker gaskets for the last 30 years. The
plaintiff Came to know that the defendant is using the TM "Hawkins" in their pressure cooker
gaskets. So, plaintiff instituted a suit for permanent injunction restraining defendant for infringement
of TM, passing off, etc.

Issue: Whether defendant "infringed the TM of Hawkins"?

Decision: Court held that defendant has its own well-established TM "Mayur". No
reasonable person or purchaser can ever assume a trade connection b/w Mayur brand of
gasket and Hawkins. Use of the expression "suitable for Hawkins pressure cooker" in front of
the defendant's product would clearly fall within the exception carried out U/s 30, of the TM
Act, 1999. So, contention of Honest me is satisfied.

Court finally held that since Mayur Enterprises use of "Hawkins" name was only indicative
and NOT being used as a TM, so there would be no question of infringement.

What are the features of passing off action? Differentiate b/w the infringement action
and passing off action?

 Passing off is a common law tort which can be used to enforce unregistered TM
rights.
 It is founded on the principle that "no man is entitled to represent his goods as being
the goods of another man."
 TM Act doesn't define the term "passing off" however certain references have been
given in the Act U/s 27(2), 134(i)(c), and 135.
 The law of passing off is based on common law and the object of this law is to protect
the goodwill and reputation of a business from encroachment by dishonest
competitors.
 3 elements of passing off action are:
o Plaintiff must prove that the mark has reputation.
o Plaintiff must prove that the defendant has misrepresented.
o Plaintiff must prove that it has suffered injury or loss.

Q: Why passing off is necessary?

o To preserve the reputation of plaintiff.

o To safeguard the public.
o To prevent dishonest competition.
 In an action of passing off the plaintiff has to establish prior use to secure an
injunction and that the use of the mark or similar mark in point of time is
misleading.

Parle Products vs JP & Co. (1972) (ye case upar diya h likh do)

Cadila Health Care Ltd. vs Cadila Pharmaceuticals Ltd. (2001)

Facts:

In this case, the appellant and the respondent were pharmaceutical companies which had
taken over the business of the erstwhile Cadila group. Both had got the rights to use the name
"CADILA" as a corporate name.

The present suit is related to a medicine being sold under the brand name "Falcitab" by the
respondent which according to the appellant, was a brand name similar to the drug sold by it
under its brand name "Falcigo."

Issue:

Whether defendant has infringed the right of plaintiff?

Decision:

The court observed that in the case of medicinal products it may cause economic loss to the
plaintiff. Moreover, confusion between the two medicinal products may lead to harmful
consequences on health and in some cases life itself and the drugs have a moment difference in
composition with completely different side effects.

 The court held that in an action for passing off on the basis of an unregistered trademark,
generally for deciding the question of deceptive similarity, the following factors need to be
considered:

 a) The nature of names

 b) The degree of resemblances between the names, phonetically similar and hence
similar in idea.
 c) The nature of the goods & services with which they are used as a trademark.
  d) The mode of purchasing the goods or placing orders for the goods.

 The Supreme Court ordered that the trial court shall decide the suit keeping in view the
observations made in the present judgement.

Carrefour v. V. Subburaman, 2007

Facts:

In this case, Carrefour, a well-known international retail chain, filed a lawsuit against V.
Subburaman, who was using the "Carrefour" name for his business. Carrefour claimed that
Subburaman's use of their name was likely to cause confusion among consumers and
amounted to trademark infringement and passing off.

Issue:

Whether the defendant's use of the "Carrefour" name infringed upon the plaintiff's trademark
and amounted to passing off?

Decision:

The court ruled in favor of Carrefour, finding that:

 The "Carrefour" name was well-known and had acquired distinctiveness and
reputation globally.
 The defendant's use of the "Carrefour" name was likely to cause confusion among
consumers, leading them to believe that there was an association between the
defendant's business and the plaintiff.
 The defendant's use of the name constituted trademark infringement and passing off.

The court ordered the defendant to cease using the "Carrefour" name and to pay damages to
Carrefour.