Defences to Trademark Infringement and Passing Off
Honest and Concurrent Use (Section 12)
Under Section 12 of the Trademarks Act, 1999, a defence is available when two parties have been honestly and concurrently using similar or identical trademarks for the same or similar goods/services without any intention to deceive or mislead the public.
In such cases, the Registrar may allow registration of both trademarks with necessary conditions or limitations to prevent confusion in the market.
Example 1. Two pharmaceutical companies have used the same mark “HealQuick” in different parts of the country for over 15 years, each unaware of the other's existence.
Answer:
Fair Use of Trademark
Use of own name or address
A person is entitled to use their own name or address in the course of trade, provided the use is in good faith and not intended to cause confusion or pass off another's mark.
Use for comparative advertising
The use of a competitor’s trademark in comparative advertising is allowed as long as it is not misleading, defamatory, or unfair. This falls under the doctrine of fair use in trademark law.
Use for criticism or commentary
Use of a trademark for criticism, parody, or commentary may be permissible, especially where freedom of speech and expression is involved. However, the use should not be commercial or deceptive in nature.
Example 2. A technology blog compares two smartphone brands and uses their trademarks in reviews and comparison tables.
Answer:
No Likelihood of Confusion
A defendant may argue that although a similar mark was used, there is no likelihood of confusion among the public due to clear differences in trade dress, target consumers, pronunciation, or visual representation.
This is often used where the goods/services are different, or the markets do not overlap significantly.
Example 3. A clothing brand named “AURA” sells only in elite boutiques, while another “Aura” operates as a local gym chain.
Answer:
Defences in Passing Off Action
No goodwill
The defendant can argue that the claimant has not established sufficient goodwill or reputation in the market, especially if the business is new, dormant, or lacks market presence.
No misrepresentation
If the defendant’s use of the mark or trade dress is clearly distinguishable or not likely to confuse customers, the element of misrepresentation is not satisfied.
No damage
Even if goodwill and some similarity are shown, the claimant must prove that they suffered actual or probable damage. Lack of any evidence of damage weakens the passing off claim.
Example 4. A small-town tailor claims passing off against a national fashion label using a similar name, but provides no evidence of confusion or financial harm.
Answer:
Remedies for Trademark Infringement and Passing Off
Civil Remedies
Injunction
The court may grant an injunction to restrain the defendant from continuing the infringing activities. This may be a temporary (interim) or permanent injunction depending on the stage and nature of the case.
An injunction ensures that the trademark holder's rights are protected until a final decision is reached or thereafter.
Damages
The trademark owner may claim monetary compensation for the loss suffered due to the infringement. The quantum of damages is determined based on the extent of loss, the nature of infringement, and other equitable considerations.
Account of Profits
Instead of damages, the court may order the defendant to provide an account of profits, meaning the infringer must disclose and surrender the profits earned through the use of the infringing mark.
Delivery up of infringing goods
The court may also order the seizure and delivery of infringing goods, packaging, labels, and materials to the trademark holder, or order their destruction to prevent further misuse.
Example 1. A court finds that a local company has been selling footwear under a deceptively similar mark “NIKKE”.
Answer:
Criminal Remedies (Sections 103-105)
Imprisonment and Fine
The Trademarks Act, 1999 provides for criminal penalties against persons involved in counterfeiting or falsifying trademarks, or selling goods bearing such marks.
- Imprisonment: May extend up to 3 years.
- Fine: May extend up to ₹2,00,000.
These remedies act as a deterrent against intentional and fraudulent misuse of registered trademarks.
Example 2. A vendor knowingly sells fake branded watches bearing the logo of a reputed company.
Answer:
Border Measures
Trademark owners can approach Customs Authorities to restrict the import or export of goods that infringe on registered trademarks under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.
This involves:
- Registering the trademark with Customs.
- Requesting suspension of suspected consignments.
- Providing proof and bond/security if required.
Example 3. A batch of counterfeit mobile accessories bearing a famous brand’s trademark is intercepted at an Indian port.
Answer: