Infringement and Passing off of Trademark

Author(s): Sana Singh
Date: 03-Jul-2020
Post in: Trademarks

An infringement action occurs on the invasion of a statutory right of the registered trademark holder. Such action may be instituted when a person uses a mark which is identical or deceptively similar to that of the registered proprietor. There are broadly two types of remedies a person has in such situations:

Infringement Suit: The registered owner of the mark has the exclusive right to institute a suit before a court having civil jurisdiction. While infringement of a trademark is a continuing offence, a suit may be filed within 3 years’ time from the date of the infringement or within 3 years’ time from the date of knowledge of infringement.
Passing off: An action for passing off is a common law remedy which allows an unregistered owner of a mark to seek civil action against misrepresentation, whether intentional or unintentional, on part of the infringer. The basis of a passing off action is that the plaintiff is likely to or has already suffered damages/ economic loss due to such misrepresentation.
Criminal Action: Chapter XII of The Trade Marks Act, 1999 provides for imprisonment for a term not less than six months which may extend up to three years and/or a fine not less than fifty thousand rupees which may extend up to two lakh rupees.

The court may grant the following reliefs in a suit for infringement or passing off:

Damages (nominal or compensatory) on accounts of profits obtained as a result of the unauthorized use.
Permanent or temporary injunction against any further unauthorized use of such mark by the defendant.
An order for delivery up of the infringing labels and marks for the purpose of destruction or reassure.

Infringement and Passing off of Trademark

Infringement and Passing off of Trademark

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