Questions 11 and 12 both address the critical concept of Trademark Infringement, while Question 12 extends into the Relative Grounds for refusing a trademark registration. Below is a comprehensive explanation based on the Trade Marks Act, 1999.
Trademark Infringement
Under Section 29 of the Trade Marks Act, 1999, Infringement occurs when a person, who is not the registered proprietor or an authorized user, uses a mark in the course of trade that is:
Identical or Deceptively Similar: A mark that so nearly resembles a registered trademark that it is likely to deceive or cause confusion.
Used for Similar Goods/Services: Using the mark for the same or similar goods for which the original mark is registered.
Dilution of Reputation: For "well-known" trademarks, infringement can occur even if the unauthorized mark is used for completely different goods (e.g., using "Ferrari" for a clothing line), as it takes unfair advantage of the brand's reputation.
Unauthorized Business Name: Using a registered trademark as part of a trade name or business concern.
Remedies Available to the Plaintiff
If a trademark is infringed, the owner (plaintiff) can seek several types of legal remedies:
A. Civil Remedies (Section 135)
Injunction: The most common remedy.
The court orders the infringer to stop using the mark immediately. This can be Temporary (during the trial) or Permanent (after the trial). Damages or Accounts of Profits: The plaintiff can either ask for monetary compensation for the loss suffered (Damages)
or request the profits made by the infringer using the fake mark (Accounts of Profits). Order of Erasure: The court can order the infringer to remove or "erase" the offending mark from all goods, labels, and advertisements.
Delivery Up: The court may order the infringer to hand over all infringing goods and materials (labels, blocks, dies) to the plaintiff for destruction.
B. Criminal Remedies (Sections 103 & 104)
Imprisonment: Falsifying a trademark or applying a false trademark is a criminal offense punishable by a prison term of 6 months to 3 years.
Fines: Along with jail time, the court can impose a fine ranging from ₹50,000 to ₹2,00,000.
Search and Seizure: Police officers (not below the rank of DSP) have the power to search and seize infringing goods without a warrant after obtaining an opinion from the Registrar.
Relative Grounds for Refusal of Registration
While Section 9 (Absolute Grounds) looks at the nature of the mark itself (like being generic), Section 11 (Relative Grounds) focuses on the mark's relationship with existing trademarks.
A trademark registration may be refused if:
Identity with Earlier Mark: The proposed mark is identical to an earlier registered trademark, and the goods/services are also identical.
Likelihood of Confusion: The mark is similar to an earlier mark and used for similar goods, creating a "likelihood of confusion" among the public.
Conflict with a Well-known Mark: If an earlier trademark is "well-known" in India, a new mark will be refused even for different goods if it would harm the reputation of the famous brand.
Existing Rights (Passing Off/Copyright): Registration can be refused if the use of the mark could be prevented by the law of Passing Off (protecting unregistered marks) or if it infringes an existing Copyright.
Bad Faith: If the application is made in "bad faith"—for example, trying to register a competitor's brand name just to block them.
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