Infringement Of A Trade Mark

Infringement occurs when someone else uses a trademark that is same as or similar to your registered trademark for the same or similar goods/services. Trademark infringement claims generally involve the issues of likelihood of confusion, counterfeit marks and dilution of marks. Likelihood of confusion occurs in situations where consumers are likely to be confused or mislead about marks being used by two parties. The plaintiff must show that because of the similar marks, many consumers are likely to be confused or mislead about the source of the products that bear these marks.

Dilution is a trade mark law concept forbidding the use of a famous trade mark in a way that would lessen its uniqueness. In most cases, trade mark dilution involves an unauthorized use of another's trade mark on products that do not compete with, and have little connection with, those of the trade mark owner. For example, a famous trade mark used by one company to refer to hair care products, might be diluted if another company began using a similar mark to refer to breakfast cereals or spark plugs.

The concept of infringement can be explained with the help of the following case laws:

In the case Castrol Limited Vs P.K. Sharma ¹

Facts of the case: Plaintiff is the registered owner of the trade marks Castrol, Castrol Gtx And Castrol Gtx 2 in respect of oils for heating, lighting and lubricating. During the month of December 1994, plaintiffs came to know that the defendant was carrying on business of selling multigrade engine oil and lubricants under the trade mark 'Castrol Gtx & Castrol Crb' IN IDENTICAL containers as used by the plaintiffs. Plaintiff filed a suit for perpetual injunction.

Held: The user of the said trade marks by the defendants, who have no right whatsoever to use the same is clearly dishonest and is an attempt of infringement. The prayer of the plaintiff is accepted.

In Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Ltd.² , the plaintiff company manufactured drugs under the trade name "Calmpose". The defendant company subsequently floated its similar product under the trademark "Calmprose". The said two trade marks having appeared phonetically and visually similar and the dimension of the two strips being practically the same including the type of packing, the colour scheme and manner of writing, it was found to be a clear case of infringement of trade mark and the ad interim injunction granted in favour of the plaintiff was accordingly made absolute.

Acts Not Constituting Infringement :-

Following acts do not constitute infringement of the right to the use of a registered trademark:

1. When a person uses a trademark in accordance with honest practices in industrial and commercial matters that do not take unfair advantage.
2. When a person uses a trade mark in relation to goods or services indicating character, quality or geographical origin
3. When a person uses a trade mark in relation to services to which the proprietor has already applied the mark or registered user the object of the use is to indicate that the proprietor or the registered user has performed the services.
4. When a person uses a trademark, which is subject to any conditions or limitations, beyond the scope of such conditions or limitations will not constitute infringement.
5. When a person uses a mark in relation to goods to which the mark has been lawfully applied, or where the registered proprietor has consented to the use of the mark. This applies to cases where goods are purchased in bulk and sold in retail applying the mark.
6. When a person uses a mark in relation to parts of a product or accessories to the goods in respect of which the mark is registered if the use is reasonably necessary to indicate that the goods so adapted.
7. When a person uses a mark or a similar mark in the exercise of a right conferred by independent registration.
8. When a person assigns a trademark to another, this will not affect the right of that person to sell or deal in the goods bearing that mark.

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