Trademark Infringement

In general terms, infringement has been referred to as the act which involves the interference of the third parties with the exclusive rights of the owner with respect to patents, copyright, and trademark. On the other hand, trademark infringement has been referred to as the violation of the exclusive or the statutory rights of the owner and the proprietor concerning the trademark, without proper permission or authorization for the use of the trademark. The registration of trademarks accords certain rights to the owner/proprietor with respect to his/her registered trademarks. The rights are for using the trademark exclusively and also give him the right for suing the other party if he or she has been using the registered trademark illegally and unjustly.

The offense for the infringement of the trademark arises when the offending mark makes its resemblance or is identical to the already registered trademark, which subsists with the rights of exclusivity in the course of trade concerning goods and services. The mark of the other party concludes being deceptively similar or identical to the already registered trademark, then the owner of the trademark would be liable for taking legal action of infringement against the other party. Secondly, if the registration of the offending mark would cause public deceit and confusion with the already registered trademark, then it would amount to the offense of infringement.
The action for infringement of trademark can be taken under Section 29 of the Trademarks Act, 1999. The acts which would constitute the acts of infringement are:
i. If the already registered trademark of the owner or the proprietor has been used by the other party without his prior consent or permission or authorization;
ii. If the mark is identical or deceptively similar to the already registered trademark, which if registered would cause public deceit and confusion.
iii. If the court is of the opinion that the registration of the mark would cause public deceit and confusion.
iv. If the use of the trademark is acting as a violation of the distinctiveness and reputation of the already registered trademark.
v. If the impugned mark is phonetically, structurally, and visibly similar to that of the registered trademark.
vi. If the packaging and the outer appearance of the impugned mark are similar to that of the registered trademark.
vii. If the commercial advertisement has been done with a mala fide intention that act as a violation of the distinctiveness and reputation of the already registered trademark.

The action for the infringement of trademark can be constituted with respect to the registered trademark by its owner is:
i. If the impugned mark of the defendant is identical to the already registered trademark of the plaintiff or the applicant.
ii. If the impugned or the opposing mark is found to be identical with the registered mark.
iii. If the impugned or the opposing mark is deceptively similar to the already registered trademark.
iv. If the registration of the impugned mark is allowed, and the registration is likely to deceive or cause confusion among the public.

In the case of M/S Mahashian Di Hatti Limited Vs. Mr. Raj Niwas, Proprietor of MHS [181(2011) DLT 55] the plaintiffs were in continuous use of the mark ‘MDH’ since 1991 with respect to certain products such as “Kashmiri Mirch” and “KasooriMethi” and the plaintiff has all rights of exclusivity over its products. It was in 2011 when the disputes arose between the parties, wherein the plaintiffs came to know that the defendants were using products with the same packaging and outer appearance. The plaintiffs were aggrieved by the action of the defendants and subsequently filed a suit for claiming injunction with respect to trademark infringement under Section 29(1) of the Trademarks Act,1999 as the products were phonetically similar. The court held the defendants liable for the visual similarity of the mark and restrained the defendants from manufacturing and selling any goods similar to that particular trademark.

In the case of Kaira District Cooperative Milk Producers Union Ltd and Another V/S. Maa Tara Trading Co. and Other [CS./107/2020], the plaintiffs were the actual owners and proprietors of the mark ‘Amul’, and the disputes arose between the parties when the defendants were found to be using the mark ‘Amul’ being deceptively similar in terms of both structurally and visibly and were sold at confectionaries. It was contended by the plaintiffs that the mark ‘Amul’ was a well-known registered mark and that the use of the mark by the defendants would cause public deceit and confusion among all. The plaintiffs filed a suit for trademark infringement under Section 29 of the Trademarks Act,1999 to the Calcutta High Court for claiming remedies of the injunction. The court passed an order in favor of the plaintiffs and restricted defendants from using the mark ‘Amul’.

In the case of Sun Pharma Laboratories Limited vs D. D. Pharmaceuticals Private Limited, 2021, the plaintiffs were the owners of the trademarks BUPRON and were the actual owners of the drug. The disputes arose between the parties when the plaintiffs found that the defendants were using a similar trademark with the name BUPRO. The plaintiffs were aggrieved by the action of the defendants and argued that this would cause confusion among the general public. The defendants contended to the claims of the plaintiffs by stating that the marks would not cause infringement as the trademarks have been adopted with respect to the names of active ingredients namely Bupropion Hydrochloride. The court disagreed with the arguments put forth by the defendants and that the use of the drugs by the trademark BUPRO would cause a likelihood of confusion and hence granted an injunction in the favor of the plaintiffs by restraining the defendants from using the mark.

In the case of Exxon Mobil Corporation vs Mobil fuels Private Limited & Another, 2021, the plaintiffs were the owners and proprietors of the mark MOBIL, which was a part of their mobile application, that had its source in the Google Play store. The disputes arose between the parties when the plaintiffs found that the defendants have been using the name MOBIL. The plaintiffs were aggrieved by the action of the defendants and filed a suit for trademark infringement. The court passed an order in the favour of the plaintiffs and restrained the defendants from using the mark.