Infringement of trademark
In accordance with Chapter IV of the Trade Marks Act, it is a prerequisite to have a registered trademark for initiating an infringement action. As per Section 29 of the Act, a registered trade mark is infringed by a person who is not the registered proprietor of the mark and still uses a registered mark or uses a mark that is deceptively or confusingly similar to the registered mark. Following essential conditions must exist for initiation of an infringement action:
- The alleged infringing mark must be either identical or deceptively similar to the registered trademark;
- The goods/services in relation to which the allegedly infringing mark is used must be specifically covered by the registration of the registered trademark;
- The use of the alleged infringing mark must be in the course of trade; and
- The use must be in such a manner as to render the use likely to be taken as being used as a trademark.
A registered trademark is also infringed by use of a mark when because of:
- Its similarity/identity with registered trademark and identity/similarity with goods/services covered by registration; or
- Its identity with registered trademark and identity with goods / services covered by registration Is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark.
If an identical or similar mark is used with respect to goods or services which are not similar to those for which a registered trademark is registered, such use would amount to infringement as well if a registered trademark has a certain reputation in India and the use of the mark without due authorization takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark. Under the Trade Marks Act, the following acts would also amount to an infringement of the registered trademark:
- Use of the registered trademark as a trade name or part of the trade name dealing in same goods or services for which the registered trademark is registered; or
- Use of the trademark in advertising if such advertising takes unfair advantage of and is contrary to the honest practice in industrial or commercial matters, or is detrimental to its distinctive character; or against the reputation of the trademark.