What is Trademark Infringement

A trademark is said to be infringed upon when it is found that someone is making unauthorized use of a trademark in connection with goods/services in a way that has the potential to confuse/deception about the actual source of those goods/services in the market by average consumers.

Trademark Infringement is generally considered as a violation of the exclusive and absolute rights of the registered owner/authorized user of the original mark. However, trademark infringement can only be established for a mark that has been duly registered. For a mark that is not registered other remedies like that of passing off/misrepresentation are available. 

What amounts to and does not amounts to infringement of a trademark in India?

The mark may be identical/similar to the original mark and maybe about goods/services, which are also identical/similar. The mark may also be similar in terms of not only the presentation but also in terms of the sound or meaning. The provisions for the protection of registered trademarks when infringed are set out under Section 29 and 30 of the Trade Marks Act, 1999.

Section 29 of the Trade Marks Act, 1999; a registered trademark amounts to infringement when a person is not a registered proprietor:

• A mark goes through trademark filing online and gets identical with a registered trademark and similarity of goods/services
• A mark similar to a registered trademark and identical goods/ services
• A mark identical with a registered trademark and goods/services as well
• A mark identical with a reputed registered trademark
• Trade name similar to the registered trademark

Section 30 of the Trade Marks Act, 1999; a registered trademark not amounts to infringement :

• Use of mark to indicate the type, quality and quantity
• Use of the mark which is not in the scope of registration
• Use of the mark in relation to parts and accessories
• Use of two identical or similar registered mark to each other
• Implied consent of use

What are the legal steps to prove trademark infringement?

For a person to prove infringement, the following steps must be followed:

• Show registration or a protectable right in the Trademark owing to continuous and consistent usage over a certain period of time.
• Show that the alleged infringer is using a mark that is confusingly similar which leads to deception on the counter side of the consuming public.

What are the factors need to be considered for identifying the trademark likelihood of confusion?

Some of the factors taken into consideration for determining the likelihood of confusion are as follows:

• The similarity found in the overall impression of the marks (this stems from the anti-dissection rule which dictates that the overall look of the marks must be compared and not their individual dissected parts)
• The similarity in the goods/services being sold
• Real evidence of actual confusion on the part of the public
• The true intent of the offender/infringer (Dishonesty and malice to ride on the reputation and goodwill of the original mark)

What are the civil remedies available for trademark infringement?

The remedy available to the owner in such circumstances would be to file a civil suit after which the following remedies will be made available upon proving infringement:

• The injunction to stop using the mark
• Destruction of the infringing articles
• Damages in monetary terms, which includes any profits made from the infringing articles.