Infringement and Passing off of Trademark

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Infringement and Passing off of Trademark

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.

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