There are two types of remedies which 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.

Infringement

The concept relating to infringement of marks is contained in section 29 of the Trademarks Act 1999. In layman’s language, infringement involves unauthorized violence of the exclusive rights attaching to a registered trademark.  The use of marks is so similar or identical with the mark of the proprietor that it may causes confusion among the public. A brand’s image always creates a great impression of the registered strong mark in the minds of the public so that they can recognize the goods of the proprietor on the basis of the said mark, and in such a scenario, the use of a similar mark tends to create a dilemma among the regular user of those goods. 

Passing Off

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. During the course of trade, if another person misrepresents to its prospective or ultimate customers about its goods or services in a manner so as to show that the original brand owner and the other person are connected to the goods or services, a Passing Off action is introduced for the original brand owner so that the other person will not get chance to injure the business or goodwill of the original owner or to earn benefit at the cost of the original owner. It is also noted 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 follows:

• Misrepresentation
• Made by a person in the course of Trade Mark
• 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.

Remedies

A criminal complaint can also be filed, in case of infringement / passing off trademark. To protect the interest of the owners of intellectual property rights, the Courts can grant injunction and direct the custom authorities to withhold the infringing material / its shipment. This legal proposition can be enforced with / without involving the concerned authorities as a party in the suit.

Permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings are the relief which a court may usually grant in a suit for infringement. The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the suit may also include order for:

• Appointment of a local commissioner, for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc.
• 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.

If you have questions about the information presented here or if you would like to receive personalized advice, contact BDS Legal Services and get a free consultation.   

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