Meaning of Infringement (Section 29)

Use of identical or deceptively similar mark

According to Section 29 of the Trademarks Act, 1999, infringement occurs when a person uses a mark that is identical or deceptively similar to a registered trademark without permission.

Such use must be in the course of trade and must be related to the goods or services for which the trademark is registered.

Likelihood of confusion

If the unauthorized use of a mark leads to confusion in the minds of the public regarding the origin of goods/services, it amounts to infringement.

This includes instances where consumers mistakenly assume a connection or association between the infringing party and the original trademark owner.

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Types of Infringement

Unauthorized use on identical goods/services

Infringement occurs when a person uses a mark that is identical or nearly identical to a registered trademark for the same goods or services for which the trademark is registered.

This is the most direct form of trademark infringement and does not require proof of confusion.

Use on similar goods/services causing confusion

When a mark is used on similar goods or services and leads to a likelihood of confusion among consumers, it also constitutes infringement.

Here, similarity of products and target consumers plays a vital role.

Unauthorized use of registered trademark on dissimilar goods/services if it gains repute

If a registered trademark has acquired a high degree of reputation or goodwill, then using the same or a similar mark on dissimilar goods or services may still amount to infringement under Section 29(4).

This applies particularly when the use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.

Dilution of trademark

Dilution refers to the weakening of the distinctive character or value of a famous trademark through unauthorized use.

Even if there is no confusion, if the mark is tarnished or blurred through unauthorized association, it may constitute dilution.

Injury to reputation

Use of a well-known trademark in a context that harms its reputation or image — such as in association with inferior or inappropriate goods — may also amount to infringement.

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Meaning and Nature of Passing Off Action

Common law remedy

Passing off is a common law tort used to enforce unregistered trademark rights. Unlike statutory remedies, it is based on judicial precedents and equitable principles.

The remedy aims to protect a business from misrepresentation by others that damages or exploits the reputation and goodwill established by the business in the market.

Protection of goodwill

The primary objective of a passing off action is to safeguard the goodwill and reputation associated with a mark, name, packaging, or any other identifiable feature of a trader’s goods or services.

Even in the absence of registration, the law recognizes the right of a business to prevent others from unfairly benefiting from its established identity and consumer trust.

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Essentials of Passing Off Action (The Classic Trinity)

To succeed in a passing off action, the claimant must prove three essential elements, often called the “classic trinity”.

Goodwill

The claimant must establish that their goods or services have acquired a distinct reputation or recognition among the public under a specific mark, name, or get-up.

Goodwill is considered a form of economic asset, created over time through consistent quality and marketing.

Misrepresentation

The defendant must have made a false representation (intentional or not) that leads or is likely to lead the public to believe that their goods or services are those of the claimant.

This misrepresentation may be visual, verbal, or through packaging, branding, trade dress, or advertising.

Damage

The misrepresentation must cause, or be likely to cause, harm to the claimant’s goodwill, including loss of sales, customer confusion, or damage to reputation.

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Distinction between Trademark Infringement and Passing Off