It is the responsibility of a trademark owner to ensure their trademark rights are communicated, monitored and protected, and if necessary, defended through legal action.
Under the Trademarks Act 1999 a person infringes a registered trademark if the person “uses as a trademark” a sign which is:-
“substantially identical” with or “deceptively similar” to the registered trademark on goods or services covered by the trademark registration;
substantially identical with or deceptively similar to the registered trademark on goods or services of the same description as, or closely related to, the goods or services of the registration, where such use is likely to deceive or to cause confusion; and
substantially identical with or deceptively similar to a well known trademark on unrelated goods or services, if it can be demonstrated that such use would be likely to suggest a connection between those unrelated goods or services and the proprietor of the well known mark, such that the interests of the registered proprietor are likely to be adversely affected.
Uses As A Trademark
It is necessary that the mark has been used to distinguish goods or services dealt with in the course of trade by a person from those dealt with or provided by another person. The use must be actual use as a trademark indicating origin of those goods or services. Use of the trademark as a mere description will not constitute infringement.
Includes marks which are the same as, or marks which closely resemble the registered trademark in it is essential features based on a side by side comparison.
Includes marks which so nearly resemble the registered trademark (including visual or aural similarity or similarity in meaning) that use of the mark is likely to deceive or cause confusion, for example “chandeal” was held to be deceptively similar to “chantelle”.
A trademark known to a significant number of persons in the relevant sector of the public.
Note: a registered trademark is considered to have been registered as from the date of filing the application for registration.
A person will not infringe a registered trademark where they use in good faith their , or a predecessor in business’, name or location of business, or a sign which indicates the kind, quality, quantity, intended purpose, value or some other characteristic of the goods or services.
Similarly, use of the mark in comparative advertising or to indicate the purpose of the goods or services, for example as being accessories or spare parts for the trademarked goods or services, does not constitute infringement.
Use of a person’s own registered trademark is a defence to infringement of another registered mark. Also, where the person uses a mark they themselves would be entitled to register, or at the consent of the registered trademark owner, there is no infringement. Use of a disclaimed part of a registered trademark, or use of a trademark in a manner which does not contravene conditions or limitations to which a registration is made subject, are not infringing uses.
There are two types of remedies available for the infringement of Trademark. These remedies are:-
1. Infringement Action: An action for infringement, which is a statutory right, is dependent on the validity of the registration of the mark. Infringement of a Trademark is a violation of property rights. Trademark registration is prima facie proof of ownership of the mark. In case of infringement there is often no need to prove that your Trademark has a reputation or goodwill. The question of fraud or the probability of deception is immaterial, the plaintiff just have to prove that he is the true owner of the Trademark and the defendant is using a mark that is identical or deceptively similar to the registered mark and no further proof is required. The jurisdiction and procedure, in infringement suit, is governed by the Civil Procedure Code. The period of limitation for filing the suit for infringement is three years from the date of infringement. The relief and remedy in infringement proceedings include:-
Restraining the future use of the mark;
Damages or on account of profits;
Order for delivery of the infringing labels and marks for destruction;
Seizure and confiscation of the infringing goods by the police department;
Arrest of the infringers;
Fines and penalties.
2. Passing Off: An action of passing off is a direct subject matter of the law of tort or common law of right. Passing off is not defined in The Trade and Merchandise Marks Act, but it provides the rules of procedure and the remedies available. In the case of unregistered yet well known marks, the owner of the mark can initiate a passing off action in the appropriate Court of law. The cause of action in favour of the plaintiff will arise if the defendant in the course of trade misrepresents to prospective or ultimate customers of goods and services and the goods or services of the defendant is connected to the goods or services of the plaintiff and is calculated to injure the business or goodwill of the plaintiff and which actually causes damages to the business or goodwill of the plaintiff. Actual deception and actual damage has to be proved for any relief. Passing off action can only be initiated in a place where the defendant resides or carries on business or where any part of the cause of action arose.
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