Registration of a trade mark confers the following rights on the
The exclusive right to use the trade
mark in relation to the goods or services in respect of which the
mark is registered.
The right to obtain relief in respect
of infringement of the trade mark.
There are two types of remedies are available to the owner of a
trademark for unauthorized use of its trade mark by a third party
i.e. an action for passing off in the case of an unregistered
trademark and an action for infringement in case of a registered
trademark. An infringement action is a statutory remedy and an
action for passing off is a common law remedy.
Trademark infringement is a violation of the exclusive rights
attaching to a registered trademark without the authorization of
the trademark owner or licensee. Infringement may occur when the
infringer, uses a trademark which is identical or confusingly
similar to a registered trademark owned by another person, in
relation to products or services which are identical or similar to
the products or services which the registration covers. The owner
of such registered trademark may commence legal proceedings against
Passing off occurs in the case of unregistered Brand Names.
Here, the owner or to say Brand holder has the preferred right over
the Brand owing to long and continuous use though the Brand being
unregistered (under the Trademark Act), an action of Infringement
cannot be initiated. A Passing Off action can be brought in by the
original owner or user of a Brand against another person, who in
the course of trade, misrepresents to its prospective or ultimate
customers about its goods or services in a manner so as to show
that they are connected to the goods or services of the original
owner and this is done in a calculated fashion to injure the
business or goodwill of the original owner or to earn benefit at
the cost of the original owner. It is also important that actual
deception and actual damage has to be proved for any relief of
passing off. It has been settled in catena of authorities that
essential characteristics of a passing off action are as
Made by a person in the course of
To prospective customers of his or
ultimate consumers of goods or services supplied by him
Which is calculated to injure the
business or goodwill of another trade
Which causes actual damage to a
business or goodwill of the trade by whom, the action is brought or
we'll probably do so.
One of the most important practical benefit given under Section
134 of the Trade Marks Act, 1999 is that a suit for infringement
can also be instituted before a District Court / High Court
(enjoying Ordinary Original Civil jurisdiction such as High Court
of New Delhi, Mumbai, Kolkata or Chennai), within the local limits
of whose jurisdiction, at the time of the institution of the suit,
the person instituting the suit, actually and voluntarily resides
or carries on business or personally work for gain. The person
includes the registered proprietor and the registered user. On the
other hand the suit for passing off can only be instituted before a
District Court, within the local limits of whose jurisdiction The
Defendant is residing, working for gain or carrying on its
business; or the cause of action has arisen.
In case of infringement / passing off trademark, a criminal
complaint can also be filed. The Courts can grant injunction and
direct the custom authorities to withhold the infringing material /
its shipment or prevent its disposal in any other manner, to
protect the interest of the owners of intellectual property rights.
This legal proposition can be enforced with / without involving the
concerned authorities as a party in the suit.
The relief which a court may usually grant in a suit for
infringement or passing off includes permanent and interim
injunction, damages or account of profits, delivery of the
infringing goods for destruction and cost of the legal proceedings.
The order of interim injunction may be passed ex parte or after
notice. The Interim relief's in the suit may also include order
(a) Appointment of a local commissioner, for search, seizure and
preservation of infringing goods, account books and preparation of
(b) Restraining the infringer from disposing of or dealing with
the assets in a manner which may adversely affect plaintiff's
ability to recover damages, costs or other pecuniary remedies which
may be finally awarded to the plaintiff.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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