Trademarks: The distinction between infringement and passing off – By Raunaq Bali
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A Trade Mark is a form of intellectual property that may comprise a visual symbol, icon, image or expression which is used to identify goods or services which are provided by a specific source. These marks set apart those goods or services from those offered by other entities. Trademarks can be owned by an individual, a company, or any other legal/juristic person. Trade Marks are usually used on the packaging and labels of the products, and wherever possible, on the products as well.
A Trademark is said to be infringed when it is used by a person other than the registered proprietor, or by a person not using it for a permitted purpose. In other words, the unauthorised usage of a trademark in the course of business or trade constitutes infringement. However, it is not necessary for infringement to occur, the mark used without authorisation is the same as the registered trademark. Usage of a mark which is deceptively similar to another mark may also constitute infringement.
Section 29 of the Trademark Act, 1999 lays down a fairly comprehensive provision as to what constitutes infringement. S.29(1) provides that a registered trade mark is infringed by a person who is not a registered proprietor or by a person who is not using it by way of permitted use, and who is using a mark in the course of trade. This mark must be identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark alleged to be infringed is registered and, in such manner, as to render the use of the mark likely to be taken as being used as a trade mark. If all the conditions laid down in Section 29 are fulfilled, such an act would comprise infringement.
Usage of identical or deceptively similar marks to promote or sell similar goods or services or even a different type of goods or services may constitute infringement.
Passing off, though erroneously used interchangeably with infringement, is quite different from infringement. It isn’t defined anywhere in the Trade Marks Act, 1999, and has largely evolved from common law judgements by the courts of law. It is premised on the principle that no person is entitled to represent the business of another as his own.
While registration of a trademark is a mandatory requirement for the enforcement of a claim in a suit against infringement, no such requirement exists for a suit against passing off. Thus, a person with an unregistered trade mark may be allowed to sue only against passing off, but not infringement.
For a suit alleging infringement, the plaintiff is required to prove that the mark is being used without authorisation and that the mark is deceptively similar to the registered trademark of the plaintiff, and no proof of confusion need be attached since there is a legal presumption of confusion owing to the identical or deceptively similar nature of the infringing mark.
The requirements for a suit alleging passing off are slightly different from suits against infringement. In suits alleging passing off, the plaintiff, apart from proving that the defendant’s mark is deceptively similar, must also prove that the public is being confused or deceived in reality, owing to the nature of the infringing mark. There is no presumption of deception in these suits and the plaintiff must prove that there exists a likelihood of injury to the plaintiff’s reputation and goodwill.
The views are that of author’s own and not necessarily the views of IPTSE Academy. This blog is a platform for academic discussions and hence authors have been given flexibility to convey their thought process.
Student, Faculty of Law
University of Delhi