Trademark Infringement & Passing Off

• Trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

• A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
• Its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark
• Its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
• Its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark.

Is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

• A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
• Is identical with or similar to the registered trade mark.
• Is used in relation to goods or services which are not similar to those for which the trade mark is registered.
• The registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.   

• A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
  
• A person uses a registered mark, if, in particu1ar, he-
• Affixes it to goods or the packaging thereof.
• Offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark.
• Imports or exports goods under the mark.
• Uses the registered trade mark on business papers or in advertising.   

• A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

• A registered trade mark is infringed by any advertising of that trade mark if such advertising-
• Takes unfair advantage of and is contrary to honest practices in industrial or commercial matters.
• Is detrimental to its distinctive character.
• Is against the reputation of the trade mark.   

• Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

Infringement Suit
The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. In an infringement action, an injunction would be issued if it is proved that the defendant is improperly using the plaintiff's mark. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion.  It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him

Passing Off
The doctrine of passing off is a common law remedy whereby a person is prevented from trying to wrongfully utilize the reputation and goodwill of another by trying to deceive the public through 'passing off' his goods. The law of passing off can be summarized in one short general proposition no man may pass off his goods as those of another. In order to succeed in suit for passing off plaintiff has to establish following three essential substance : -

• Firstly, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services.
• Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to belief that the goods or services offered by him are the goods or services of the plaintiff.
• Thirdly, he must demonstrate that he suffers or, in a quick time action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or service is the same as the source of those offered by the plaintiff.

The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, which is a sine qua non in the case of an action for infringement. Where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. The real question in each case is whether there is as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the plaintiff. The focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused.

Passing off Suit
In an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered :

• The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
• The degree of resembleness between the marks, phonetically similar and hence similar in idea.
• The nature of the goods in respect of which they are used as trade marks.
• The similarity in the nature, character and performance of the goods of the rival traders.
• The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
• The mode of purchasing the goods or placing orders for the goods and
• Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

The likelihood of association may arise in three sets of circumstances:
(1) where the public confuses the sign and the mark in question (likelihood of direct confusion);

(2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion or association)

(3) where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense).