TM Infrindgement

 JAMIA MILLIA MILLIA ISLAMIA

INFRINGEMENT OF TRADEMARK IN INDIA SUBMITTED TO DR. S. Z. AMANI

SHARIQUE RAZA

0|Page

ACKNOWLEDGEMENT  All  Al l Pra ise is e to ALLAH ALL AH (swt) (s wt) . I would like to express my profound sense of gratitude to Dr. S.Z. Amani for providing me his invaluable support, encouragement, supervision and useful suggestions throughout this research work. His moral support and continuous guidance enabled me to complete my work  successfully. His intellectual thrust and blessings motivated me to work rigorously on this study. In fact this study could not have seen the light of the day if his contribution had not  been available. It would be no exaggeration to say that it is his unflinching faith and unquestioning support that has provided the sustenance necessary to see it through to its  present shape. I express my deep sincere gratitude towards my parents for their blessing, patience, and moral support. I express my gratitude to my all teachers and friends who has supported and encouraged me.

SHAI!"# A$A %&H S#'#S&#  (&H )#A 

1|Page

 TABLE OF CONTENTS *. -. /. 0. (. 2.

+rocedure f egistration f &rademark In India &rademarks aw In India Introduction Importance f &rademark  1onclusion 3ibliography

 TRADEMARKS LAW IN INDIA

|Page

India4s obligations under the &I+S Agreement for protection of trademarks, inter alia, include protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of compulsory licensing of trademarks, etc. 5ith the globali6ation of trade, brand names, trade names, marks, etc. have attained an immense value that require uniform minimum standards of protection and efficient  procedures for enforcement as were recognised under the &I+S. In view of the same, extensive review and consequential amendment of the old Indian &rade and 'erchandise 'arks Act, *%(7 was carried out and the new &rade 'arks Act, *%%% was enacted. &he said Act of *%%%, with subsequent amendments, conforms to the &I+S and is in accordance with the international systems and practices. &he &rade 'arks Act provides, inter alia, for registration of service marks, filing of  multiclass applications, increasing the term of registration of a trademark to ten years as well as recognition of the concept of well8known marks, etc. &he Indian 9udiciary has been  proactive in the protection of trademarks, and it has extended the protection under the trademarks law to :omain ;ames as demonstrated in landmark cases of Tata Sons Ltd. v.  Manu Kosuri & Ors 1, and Yahoo Inc.  v. Akash Arora2.

India, being a common law country, follows not only the codified law, but also common law  principles, and as such provides for infringement as well as passing off actions against violation of trademarks. Section */( of the &rade 'arks Act recognises both infringement as well as passing off actions. &rademark infringement is an infringement of exclusive rights attaching to a trademark  without the authori6ation of the trademark owner or any licensee. &rademark infringement typically occurs when a person uses a trademark which may be either a symbol or a design, with resembles to the products owned by the other party. &he trademark owner may begin an officially permitted proceeding against a party, which infringes its registration. &here are two types of remedies are available to the owner of a trademark for unauthori6ed use of its imitation by a third party. &hese remedies are 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 and an action for passing off are quite different from each other, an

1 !"0 #001$ DLT %&"'  !1""" PTC 01' (|Page

infringement action is a statutory remedy and an action for passing off is a common law remedy. Accordingly, in order to ascertain infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are deceptively similar alone is not sufficient. &he use of the mark should be likely to deceive confusion. I+? and is represented by the symbol @ or . It is a distinctive sign, symbol or indicator which is used by an individual, business organi6ation or other legal entity to identify uniquely the source of its  products or services to consumers, and to distinguish its products or services from those of  other entities. It could typically be a name, word, phrase, logo, symbol, design, image, or a combination of these elements. &rademarks are used to facilitate and enhance the marketing of a commodity and is a sign that indicates to consumers the source and reputation of the affixer of the mark and provides an important advertising and sales tool. #very businessman who has spent considerable amount of money making his mark popular  will try to secure it from usage by unscrupulous competitors. +rotection of trademark is important not only from the business point of view but also for the protection of consumer  from fraud and imposition. &he &rademark Act of *%%%, both in letter and spirit, lays down that, while it encourages fair  trade in every way and aims to foster and not to hamper competition, it also provides that no one, especially a trader, is 9ustified in damaging or 9eopardi6ing another4s business by fraud, deceit, trickery or unfair methods of any sort. &his necessary precludes the trading by one dealer upon the good name and reputation built up by another. &he first &rademark legislation was enacted in India in *%0B, but before that, protection to trademarks in the country was governed by the principles of common law based on #nglish cases. &he law relating to protection of this form of industrial property is intricate and complex. &he reputation of a business symboli6ed by a mark, under common law, can be protected only by an action for +assing off. egistration of a trademark under the &rade 'arks Act of  *%%% gives statutory rights and slight infringement of it can invite an action for Infringement.

&|Page

However, even the unregistered trademarks are also protected as the Act itself provides that an action of passing off remedy is available for unregistered trademark.

IMPORTANCE OF TRADEMARK  •

• • • •

&he importance of trademarks lies in their association with quality and consumer  expectations in a product or service. &hey can be seen as serving four main purposesC