In Intellectual Property Law, infringement of a trademark occurs when a person uses a mark that is identical or deceptively similar to a registered trademark without the owner’s authorization, in a way that is likely to cause confusion in the market.
In India, this is governed primarily by Section 29 of the Trade Marks Act, 1999.
1. Essentials of Trademark Infringement
To successfully prove infringement in court, the plaintiff must establish the following essential elements:
Registration: The plaintiff’s trademark must be registered under the Act. (If the mark is unregistered, the remedy is "Passing Off" under common law, not infringement).
Unauthorized Use: The defendant must be using the mark without a valid license or consent from the registered proprietor.
In the Course of Trade: The infringing mark must be used for commercial purposes (business/trade) and not just for personal or non-commercial use.
Identical or Deceptively Similar: The mark used by the defendant must be so similar to the plaintiff's mark that it is likely to deceive or cause confusion among the public.
Similar Goods/Services: Generally, the defendant must be using the mark for the same or similar class of goods or services for which the plaintiff’s mark is registered.
Printed/Visual Representation: The use must be in a way that the consumer perceives it as a "trademark" (e.g., on packaging, advertisements, or invoices).
2. When is a Trademark Infringed? (Section 29)
The Act specifies several scenarios that constitute infringement:
Identity of Marks & Goods: Using an identical mark for identical goods.
Similarity & Likelihood of Confusion: Using a similar mark for similar goods where there is a risk of public confusion.
Identity of Mark & Similarity of Goods: Using an identical mark for similar goods.
Well-Known Trademarks: Using an identical or similar mark even for dissimilar goods if the original mark is "well-known" and the unauthorized use takes unfair advantage of its reputation.
3. Remedies Available to the Plaintiff
If a trademark is infringed, the owner has access to three primary categories of legal recourse:
A. Civil Remedies (Section 135)
These are the most common remedies sought in a civil suit:
Injunctions:
Interlocutory/Temporary Injunction: An urgent order to stop the defendant from using the mark while the case is pending.
Permanent Injunction: A final court order permanently restraining the defendant from using the mark.
Damages: Monetary compensation for the actual loss of business suffered by the plaintiff.
Account of Profits: Forcing the defendant to pay the plaintiff the actual profits they earned through the use of the infringing mark.
Order for Erasure/Destruction: An order to remove the infringing mark from all goods, labels, and advertisements, or to destroy the infringing materials entirely.
B. Criminal Remedies (Section 103 & 104)
Unlike many other civil disputes, trademark infringement is a criminal offense in India:
Imprisonment: Between 6 months and 3 years.
Fines: Between ₹50,000 and ₹2,00,000.
Search and Seizure: Police officers (not below the rank of DSP) have the power to search premises and seize infringing goods without a warrant if they are satisfied that an offense is being committed.
C. Administrative Remedies
Notice to Customs: The trademark owner can record their registration with the Customs authorities to prevent the import of counterfeit or infringing goods into the country.
Infringement vs. Passing Off
| Feature | Infringement | Passing Off |
| Statutory Basis | Section 29, Trade Marks Act | Common Law (Uncodified) |
| Registration | Mandatory | Not Required |
| Burden of Proof | Easier (show similarity) | Harder (must prove reputation/goodwill) |
| Nature of Action | Proprietary right violation | Action against deceit/misrepresentation |
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