Trademark infringement is defined under section 29 of the Trademarks Act, 1999. As per this section, infringement of a trademark is basically unauthorized usage of the mark which is similar or identical to the mark which has been already registered by another person in a similar trade or business.
The elements of trademark infringement are-
- Unauthorized usage- the use of the mark should be done by an unauthorized person. If the person is authorized by the owner of the trademark, then that will not be considered an infringement.
- Identical or similar – the mark used by the unauthorized person should be identical or deceptively similar to the already registered mark. The word deceptively similar means that there is a possibility that the average consumer may confuse the infringing mark with the already registered mark.
- Registered mark – the mark which is being infringed should be registered as per the provisions of the Trademark Act, 1999. If the mark is not already registered, then the unauthorized use of the identical or deceptively similar mark will not be considered an infringement.
- Similar class of goods and services – finally, the mark should be used for the goods and services which fall under the same class as that of the registered trademark.
In cases where the trademark is infringed, the owner of the trademark can take both criminal and civil action against the other party. As per the Trademarks Act, 1999 the infringement of the trademark is a cognizable offence and the owner of the trademark can file a police complaint against the other party. In case the owner of the trademark decides to institute criminal proceedings, then the other party can be punished for the imprisonment of a term, not less than six months but which can be extended to the period of 3 years along with a fine of not less than INR 50,000 but which can be extended to INR 2,00,000.
On the other hand, in the civil action, the owner of the trademark can get the following reliefs:
- Permanent, temporary or ad-interim ex-parte injunction
- Damages for the infringement
- Accounts of profits
- Appointment of the local commissioner
- passing off
Section 30 of the Trademarks Act, 1999 talks about what does not constitute infringement. As per section 30, the trademark is not infringed-
- Where the trademark is used to indicate the quality, kind, quantity etc. of the goods and services provided by the owner of the trademark.
- where a trademark is registered subject to some conditions and limitations and the mark is being used outside the scope of those conditions and limitations
- Where the owner of the trademark has given implied consent for the use of the mark.
- When the mark is being used in relation to accessories and parts of the other goods and services
- Where the registered marks are similar.