INFRINGEMENT OF TRADEMARK

Trademark Infringement

Trademark infringement in common terms is the unauthorized usage of a mark that is identical or deceptively similar to a registered trademark. This means that when a consumer looks at the mark, it is likely to confuse him/her of the origin of the goods or services.

Types of Trademark Infringement

When looking into trademark infringement there are two types of infringement:

Direct Infringement

Direct infringement is provided by Section 29 of the Act. A trade mark can be infringed in the seven following ways:-

1. Identity with registered mark
2. Similarity with registered mark and identity of goods/services
3. Identity with registered mark and goods and services-presumption of confusion
4. Identity with a registered mark having reputation
5. Similarity of trade name with registered trademark
6. Application of registered mark on labeling, packaging knowing that it is sans authorization
7. Use of registered trademarks in advertisements

 

Deceptive Similarity

The protection of purchasing public is of utmost importance and the purchasing public should not be misled by the use of two marks. Further, it may be the case that the use of two trademarks can result in the earlier one losing its value.

Section 2(1)(h) defines “deceptively similar” as a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

The House of Lords held in Orr Ewing and Co.’s case[1] that no trader had a right to use trademark so nearly resembling that of another trader as to be calculated to mislead incautious purchasers.

The Supreme Court in Parle Products (P.) Ltd. v. J. P. and Co[2]., held that in order to come to the conclusion whether one mark was deceptively similar to another, the broad and essential features of the two were to be considered[3].

In Reliance Industries Ltd. v. Concord Enviro Systems Pvt. Ltd[4]. the court stated that the convoluted use of mode of comparison cannot be permitted.

In M/s Biofarma v. Sanjay Medical Stores[5], the Delhi High Court laid down the following factors in deciding the question of deceptive similarity:

• The nature of the marks
• The degree of resemblance between the marks
• The nature of goods in respect of which they were used to trademarks
• The similarity in nature, character and performance
• The class of purchasers who were likely to buy the goods bearing the marks they required.
• The mode of purchasing the goods
• Any other surrounding circumstances[6]

INDIRECT INFRINGEMENT 

Contrasting to direct infringement, there is no provision in the Act that deals with indirect infringement precisely. This does not mean that there is no accountability for indirect infringement.

The accountability has to be established in either of the two ways:

Contributory Infringement

It takes place when the person knows of the infringement or the person materially contributes to the direct infringement or the person induces the principal infringer to commit infringement. In the case of contributory infringement, there is no exception as there arises no coincidence of the contributory infringer to act in good faith.

If a person in any of the above mentioned ways contributes towards infringement without being the primary infringer then even that person can be held liable by the virtue of this.

Vicarious Liability

In accordance with Section 114 of the Companies Act, 1956, if a company commits an offence under this Act, then the whole company will be liable. Therefore not only the principal infringer but, every person responsible for the company will be liable for indirect infringement, excluding for a person who acted in good faith and without knowledge of the infringement. Hence, the vicarious liability of the infringement is established.

LANDMARK JUDGEMENTS

Some important judicial pronouncements regarding infringement of trademark:

M/s Dyechem Ltd. v. M/s Cadbury (India) Ltd.[7], in this case the appellant started using the mark ‘PICNIC’ for preserved dry fruits, chocolates etc. from 1988 and registered the same in 1989. The respondent started using the work ‘PICKNIC- CADBURY’S PICKNIC’ from 1989 for chocolates and applied for registration in 1999. In the suit for infringement and passing off the lower court granted injunction on the ground of phonetic similarity but the High Court reversed it and the same was appealed in the Supreme Court.

In this case, the Supreme Court applied the test of copying “essential features” to decide whether the parties are entitled to a passing off remedy or not.

It was held that the defendants have not committed any infringement even though there is phonetic similarity and refused to grant injunction. Given the status of Indian customers, it appears that phonetic similarity must be given more weightage to essential features.

 

In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.[8], the Supreme Court re-examined its earlier decision in S. M. Dyechem case regarding the test to be followed in the case of passing off. Court upheld the test laid down in Amrithdara Pharmacy v. Satya Deo[9], and rejected the applicability of the “essential features test” laid down in Dyechem case.

The Supreme Court did not allow the registration of trademark “Lakshamandhara” for a medicine due to its similarity with an earlier trademark “Amritdhara” registered for the similar medicine.

 

In Health and Glow Retailing Pvt. Ltd. v. Dhiren Krishna Paul, Trading as Health and Glow Clinic[10], the plaintiff was selling cosmetics, hair care and beauty products while defendant was using the mark for treatment for hair care. Plaintiff brought a suit for infringement and passing off.

The Court held that the action for infringement/ passing off was maintainable. The Court held that prima facie all the requisites of Infringement under S. 29(4) are satisfied in this case.

 

In Hawkins Cookers v Murugan Enterprises[11], Hawkins Cookers Limited are the proud registered owners of the trademark “Hawkins”, in respect of Pressure Cookers, and all parts thereof, including Gaskets, and as far as pressure cookers are concerned, is a renowned and reputed brand. Murugan Enterprises, the respondents were manufacturing pressure cooker gaskets and selling them under the Trademark ‘MAYUR’.

The grievance of the appellants however pertains to the fact that the gaskets were sold in packages which contained the words ‘suitable for HAWKINS pressure cookers,’ emphasizing upon the word Hawkins, by printing it in red, in contrast to the other words printed in black.

The Court held that it fell squarely within the parameters of the defendants trying to take unfair advantage of the goodwill attached to the plaintiffs’ mark. The Court also laid down the test of honesty for the purposes of infringement, and honest intention of the infringer was to be judged from the objective facts of the case.

 

[1] (1882) 7 AC 219.

[2] (1972) 1 SCC 618.

[3] Balsara Hygiene Products Ltd. Arun Chowdhury, 2005 (30) PTC 272

[4] 2016 (67) PTC 271 (Bom.), P. 284

[5] 1997 PTC (17) 355.

[6] Enterprise Holdings Inc. v. Enterprise Auto Rentals 2014 (58) PTC 111 (Del)

[7] AIR 2000 SC 2114

[8] AIR 2001 SC 1952

[9] AIR 1963 SC 449

[10] (2007) 35 PTC 474 (Mad.)

[11] MIPR 2008 (1) 128, 2008 (36) PTC 290 Del.

Author: Akanksha Yadav,
Vivekananda Institute of Professional Studies, GGSIPU, Law Student