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INFRINGMENT AND RIGHTS OF LICENSEES IN CASE

OF INFRINGEMENT OF TRADE MARK:
INTRODUCTION:
Infringement occurs when someone else uses a trademark that is same as or similar to
your registered trademark for the same or similar goods/services. Trademark
infringement claims generally involve the issues of likelihood of confusion, counterfeit
marks and dilution of marks. Likelihood of confusion occurs in situations where
consumers are likely to be confused or mislead about marks being used by two parties.
The plaintiff must show that because of the similar marks, many consumers are likely to
be confused or mislead about the source of the products that bear these marks.
In the case Castrol Limited Vs P.K. Sharma
Facts of the case: Plaintiff is the registered owner of the trade marks Castrol, Castrol Gtx
and Castrol Gtx 2 in respect of oils for heating, lighting and lubricating. During the
month of December 1994, plaintiffs came to know that the defendant was carrying on
business of selling multi grade engine oil and lubricants under the trade mark 'Castrol Gtx
& Castrol Crb' IN IDENTICAL containers as used by the plaintiffs. Plaintiff filed a suit
for perpetual injunction.
Held: The user of the said trade marks by the defendants, who have no right whatsoever
to use the same is clearly dishonest and is an attempt of infringement. The prayer of the
plaintiff is accepted.
In Ranbaxy Laboratories Ltd. vs. Dua Pharmaceuticals Ltd., the plaintiff company
manufactured drugs under the trade name "Calmpose". The defendant company
subsequently floated its similar product under the trademark "Calmprose". The said two
trade marks having appeared phonetically and visually similar and the dimension of the
two strips being practically the same including the type of packing, the colour scheme

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and manner of writing, it was found to be a clear case of infringement of trade mark and
the ad interim injunction granted in favors of the plaintiff was accordingly made absolute.
The Ordinance provides certain rights to LICENSEES in case if any person
infringes the Licensed Trade Mark. These rights may be studied as under:

GENERAL RIGHTS

RIGHTS OF LICENSEE AS AN ASSIGNEE

1. GENERAL RIGHTS
A. Initiation of Proceedings:
To call the proprietor to take infringement proceedings.
To bring infringement proceeding in his own name if the proprietor;

Refuses to do so, or

Fails to do so within TWO MONTHS after being called upon.

In case the licensee brings the proceedings in his own name, he must do
one of the following acts;

To JOIN the proprietor as PLAINTIFF, or

To ADD the proprietor as DEFENDANT, or

To get LEAVE OF THE COURT to do so.

B. INTERLOCUTORY RELIEF:
In case of Infringement a licensee may bring an application for an
INTERLOCUTORY RELIEF in his own name
It shall not require;

Joining of the proprietor as Plaintiff, or

Adding of the proprietor as Defendant, or

The leave of the Court to do so.

C. RIGHTS AGAINST INFRINGEMENT PROCEEDING TAKEN BY

PROPREITOR:

Any loss suffered or likely to be suffered may be taken into account, and

The Court may give directions as to the proceeds of the pecuniary relief holding
by the proprietor on behalf of the licensees

RIGHTS IN CASE OF SURRENDER OF TRADE MARK:

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If the proprietor wishes to surrender the Trade Mark, he can do so but the rights of
the licensees must be protected.
2. RIGHTS OF EXCLUSIVE LICENSEE AS AN ASSIGNEE

If the exclusive license provides the rights and remedies as if the license has been
an assignment then the exclusive licensee is entitled to following right subject to;
The terms of the license, and
The terms provided by the Ordinance.

RIGHTS:
To bring infringement proceedings against any person in his own name
other than the proprietor
Rights and remedies of exclusive licensee are concurrent to those of the
proprietor of the registered Trade Mark.
In proceedings in relation to a concurrent right by either the proprietor or
the exclusive licensee, it is necessary to
To join the other party as plaintiff, or
To add as defendant
To get leave from court to proceed alone.
Provided that this formality is not necessary for an application for
interlocutory relief by proprietor or exclusive licensee.
Assessment of Damages in Proceeding relating to Concurrent Right:
The Court shall take into account the following grounds;
(A). Terms of License
(b). any pecuniary remedy already awarded or available to either of
them in respect of the infringement
(c). Apportion of profits by Court if account of profits is directed.

REGISTERED USERS

No Trade Mark shall be registered if not intended to be used

EXCEPTION: If the registrar is satisfied that a company is to be formed and the

applicant intends to assign it to such company, such T.M. shall not be refused to
be registered.

REVOCATION OF REGISTRATION:
1. If a T.M. has not been used without any reasonable cause for long Five Years
after completion of the Registration Procedure.
2. Bona fide use has been suspended for an uninterrupted period of five years

Due to consequence of acts or inactivity of the proprietor it became the common

name of the Trade for a product or service

Its use misleading the public as to the nature, quality or geographical origin of the
product or service

USE OF TRADE MARK BY A PERSON NOT PROPRIETOR:

A Trade Mark may be used either by

Proprietor/owner or
Any person legally permitted by the Proprietor

If there is any doubt to whom the benefit of the Trade Mark shall be given
then it shall be given to none else
The proprietor or
The owner

Acts Not Constituting Infringement:Following acts do not constitute infringement of the right to the use of a registered
trademark:
i.

When a person uses a trademark in accordance with honest practices in industrial

and commercial matters that do not take unfair advantage.

ii.

When a person uses a trade mark in relation to goods or services indicating

character, quality or geographical origin

iii.

When a person uses a trade mark in relation to services to which the proprietor
has already applied the mark or registered user the object of the use is to indicate
that the proprietor or the registered user has performed the services.

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iv.

When a person uses a trademark, which is subject to any conditions or limitations,

beyond the scope of such conditions or limitations will not constitute
infringement.

v.

When a person uses a mark in relation to goods to which the mark has been
lawfully applied, or where the registered proprietor has consented to the use of the
mark. This applies to cases where goods are purchased in bulk and sold in retail
applying the mark.

vi.

When a person uses a mark in relation to parts of a product or accessories to the

goods in respect of which the mark is registered if the use is reasonably necessary
to indicate that the goods so adapted.

vii.

When a person uses a mark or a similar mark in the exercise of a right conferred
by independent registration.

viii.

When a person assigns a trademark to another, this will not affect the right of that
person to sell or deal in the goods bearing that mark.

Conclusion:
Thus we conclude from the above discussion that if any person infringes the trade make
and uses the same without the prior permission of the proprietor or licensee can be
charged as explained above.