Trade Mark Law and Intellectual Property in India
Trade Marks Act, 1999 is an act which provides laws relating to registration and protection of trade marks for goods and services and for the prevention of use of fraudulent marks. Trade Marks Act provides protection not only to the registered marks in India, but also to the Foreign trademarks, marks which have world wide reputation and domain names.
Trademarks are marks, which are capable of distinguishing the goods of one person from another. They act as an identity and status that an individual ascertains to its product or services to establish monopoly over such name,shape of goods,their packaging and combination of colors.
By the registration of a trade mark, exclusive rights to use the trademark are granted to the owner which prevents others from profiting from the good will and reputation earned by the owner of the mark. It allows the owner of the trademark to obtain Injunction against the other for infringement or passing off. They can be registered for a period of 10 years and can be renewed by paying a nominal fee as prescribed, for further extension of time.
Penalty for applying false trade marks and trade description with a intent to defraud is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees.
Difference between Passing off and Infringement?
Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner. A trademark is said to be infringed, when the other person tries to use the goodwill and reputation of the registered trademark and make profits from such registered trademark. Passing off suit can be initiated in the case of even non registered trademarks.
The principle underlying the tort of passing off is that “A man is not to sell his own goods under the pretense that they are the goods of another man” (Perry v Truefitt, 1842)
If someone leads consumers to believe that their goods or services are connected with another business when they are not, they may give the other business grounds to sue for passing off. While filing for infringement,the Plaintiff is only required to show deceptive similarity,as there is a presumption of confusion. Whereas in,Passing off the Plaintiff apart from proving the dissimilarity shall also produce the proof of confusion in public and the likelihood of damage of goodwill of the Plaintiff.
Some of the examples of judgement in the past:
Example for Passing off, DM Entertainment Vs Baby Gift Ors: Daler Mehendar, is a famous pop star from Punjab, and has a large fan base and popular among punjabi music lovers. DM Entertainment was incorporated to manage the artist's escalating career.This company was assigned with all the rights,titles and interests in the personality of the artist. The defendant company was making large profits by selling miniature dolls of the artist, without obtaining licence from the plaintiff company. A suit to obtain injunction against the defendant was filed, as the unauthorized use of the artist's reputation for selling goods will make the buyers believe that the brand is associated with the singer, leading to passing off.
Example for Test of Similarity: In Mumtaz Ahmed Vs Pakeeza Chemicals, it has been laid that, In order to come to the conclusion, whether a product is deceptively similar to another, they should not be placed side by side to find out if there's any difference,it would be enough if the impugned mark bears such an overall similarity to the registered mark as would likely to mislead a person.