Infringement of TM

Introduction
Infringement-Unauthorised use of TM which may be identical or
deceptively similar to the original TM
Essential condition of Infringement
i)person is not authorized to use the Tm
ii) Infringing TM is either similar or identical or deceptively similar to
the already registered TM
iii) Infringing TM must be used in the course of regular trade in which
the registered proprietor or user is already engaged.
iv) Use of infringing Tm must be printed or in case of usual
representation or mark in advertisement, invoices or bills
v) Using either whole of the TM or an adopted one by making few
addition and alteration
vi) Likelihood of causing confusion on the part of public
Test for determining Infringement
- Likely impact on purchaser
- Totality of impression of TM is likely to cause confusion or deception
in the mind of purchaser – Infringement
Common forms of Infringement
i) Use of identical or similar mark to TM
ii) Advertisement of registered TM of another for promotion of one’s
trade
iii) Unauthorised application of such TM to material intended to be
used for labelling or packaging his goods
iv) Usual representation
v) Deceptive similar mark use as to goods or services and as to trade
origin
vi) Taking substantial features of registered TM
vii) Unauthorised use on reconditioned or second-hand articles
viii) “ printing of labe
Lakme Ltd. Subhas Trading
Facts :Plf. Cosmetics products- TM ‘Lakme’
Deft: ‘Like-me’
Held:
Sri Sai Agencies Pvt Ltd v. Chintala Rama Rao
Facts: Plf – ‘Mathura Ghee’
Deft: ‘Mathurag Ghee’- pictorial monogram almost similar to plf.
Held
Pidilite Industries Ltd v. S.M Associates
Facts : Plf Registered proprietor of TM ‘M-SEAL’
Deft. ‘SM-SEAL’- adapted and used with all essential characters of plf TM
Held: Bom HC
Bombay oil Industries Pvt Ltd. V.Ballarpur Industries
Plf- ‘SHAFFOLA’ – for edible oil
Def: ‘SHAPOLA’
Bhavnesh Moham Lal v. Nima Chemical
Respt- registered TM ‘NIRMA’ and ‘NIMA’ for detergent powder
‘NIMA’ was not being used .
Appellant: used ‘NIMA’ for flour
Held:
Cases of Infringement
1.CASTROL, INDROL, MONOGRAM- industrial oils & greases
Infringement- ‘INDROL- colour combination,get-up, lay-out
2. Plf- FEVICOL
Deft: FIXAVOL
3. Plf: dental cream COLGATE
Deft: COLLEGIATE
 Rolls-Royce v. Dodd
Facts: deft- a motor engineer concerned with repair of automatic gear boxes
of the kind used in Rolls-Royce and Bentley Motor Cars.
- Built a car having a grill similar to the plf’s grill using plf’s registered TM
emlem & logo
- Car had Rolls-Royce engine
- Suit for injunction
- Defence- he had built the car only to advertise his business and he was not
selling cars
- Held
Who can file suit
i) Registered proprietor or his LRs
ii) Registered user of TM
iii) Legal heirs of deceased proprietor of TM
iv) Any one of joint proprietor
v) A foreign proprietor of TM registered in India and the infringement has taken place in
India
vi) An applicant for registration of TM
Against whom
vii) The person who directly infringes or passes off the TM of plf
viii) The agent of infringer
iii) The master in whose employment and under whose authority the
servant commits infringement
iv) Directors and promoters of limited company
Jurisdiction of Court- District Court
Limitation- 3 years
Infringement is a continuing one-
Burden of proof- plf
Defences
i) Does not constitute infringement
ii) Deft has been honest and concurrent user
iii) Deft is prior user of the disputed mark
iv) deft has also obtained concurrent registration
v) Plf debarred from suing or claiming relief by his own conduct in the form
acquiescence, delay or laches
Issues
i) Whether the plf is entitled to file the suit and claim relief?
( Registered proprietor)
ii) Whether the use of the infringing TM or the proposed use of the mark
actually amount to infringement?
iii) The strength of the defence(s) set up by the deft.
iv) Whether the plf is entitled to any interlocutory relief?
v) Whether there have been actual instance of deception & confusion
amongst the public
vi) Relief
Procedure -CPC
Remedies
Civil Remedies
i) Injunction
ii) Damages or Account of profit
iii) Delivery-up of infringing goods or labels and marks
iv) Destruction of “ “
v) Anton Pillar order
vi) Mareva injunction
vii) Quia Timet Action- apprehension deft who has taken certain steps
In the direction of using a similar TM and is likely to use a mark
deceptively similar to the mark- obtain preventive relief
Quia Timet – Latin word ‘because he fears or apprehends’
Principle – ‘A stitch in time always saves nine’
Cases in domain name registration
Jurisdiction- Metropolitan Magistrate or JMFC
ii) Criminal Remedies
a) falsification& falsely applying TM-Imprisonment- 6 months- 3 years
fine of Rs. 50,000- Rs.2 lakh
b) Selling goods or providing services- Imprisonment- 6 months- 3 yrs
To which false TM or false trade fine-Rs. 50,000/--Rs 2 lakh
Description is applied
c) Removal of piece of goods - forfeiture of goods fine Rs.1000/
( stamping of piece of goods,
Cotton yarn and threads)
d)Falsely representing TM -Imp- 3 years or fine or both
As registered
e) Improper description of a - Imp- 2 years or fine or both
Place of business as connected
with TM office
f) Falsification of entries in the same as above
Register
offence repeated – Imp- 6 months- 1 year, fine Rs.1lakh
Powers of police officer to search and seizure – goods, die, block, machine,
plate, other instruments for committing infringement
Aggrieved- apply for restoration of seized goods within 15 days to Magistrate-
parties heard – order passed
III Administrative remedies
Powers of Administrative authorities in case of infringement
i) classification of goods and services for the purpose of regn
ii)Publication of alphabetical index of classification of goods/services
iii) Correcting and Amending the Register
iv) Renewal, removal and restoration of registration
v) Assignability and transmissibility of registered TM
vi) Registration of assignments and transmissions