Infringement of trade mark — remedies and defences — Intellectual Property Rights I Notes

Infringement of trade mark — remedies and defences

When a registered mark is copied, the owner does not have to prove reputation or lost customers — the registration itself is the right. But even that right can be lost by sleeping on it: sue 15 years too late and the court may say you acquiesced.

What amounts to infringement — s.29

A registered trade mark is infringed when a person, not being the proprietor or a permitted user, uses in the course of trade a mark that is:

identical to the registered mark and for identical goods/services (s.29(1)); or
identical/similar to the mark and for identical/similar goods, such that there is a likelihood of confusion (s.29(2)); or
identical/similar to a registered well-known mark, used for goods/services not similar, taking unfair advantage of or being detrimental to its distinctive character (dilution — s.29(4)); or
used in advertising in a way that takes unfair advantage or is detrimental (s.29(8)); or as a trade name/domain (s.29(5)).

Infringement is a statutory action — it needs only proof of registration and offending use, not goodwill.

Defences — s.30 and others

A defendant may plead:

use in accordance with honest practices / descriptive use (s.30(2)) — bona fide use of a descriptive term, or to indicate kind/quality;
use of one’s own name or place of business bona fide (s.35);
prior use — a continuous user from before the plaintiff’s registration/use (s.34);
the registration is invalid (attack under s.57);
acquiescence — the plaintiff knowingly tolerated the use for a long time (s.33); and
delay / limitation and honest concurrent use (s.12).

Remedies — s.135

In a suit (District Court or above, s.134), the court may grant:

injunction (temporary and permanent);
at the plaintiff’s option, damages or an account of profits;
delivery up or destruction of infringing goods and labels; and
Anton Piller / search-and-seizure and John Doe orders in appropriate cases.

Trade Marks Act, 1999, s.29(1): “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered…”

In Simple Terms: Infringement is unauthorised use of a mark identical or confusingly similar to a registered mark — no need to prove goodwill, the certificate is enough. The owner gets injunction plus damages or profits plus delivery-up. Defences include honest descriptive use, own-name use, prior use, invalidity and acquiescence.

🧩 WORKED EXAMPLE — the 15-years-late suit

Facts. ‘X’, proprietor of a registered mark, sues ‘Z’ for infringement 15 years after ‘Z’ openly began using the mark.

Rule. s.33 — a proprietor who knowingly acquiesces in the use of a registered mark for a continuous period of five years loses the right to seek invalidation/injunction against that use; long delay also supports an acquiescence/laches defence.

Apply. ‘X’ knew of ‘Z’s open use and did nothing for 15 years, well beyond five years; this is acquiescence, and an injunction may be refused even though the use would otherwise infringe.

Decoy. Registration does not guarantee a remedy forever; sleeping on the right forfeits the injunction.

Conclusion. The suit is defective on the ground of acquiescence/delay under s.33; ‘X’ is unlikely to get an injunction.

flowchart TD
    INF["Infringement of a REGISTERED mark (s.29)"]:::root
    INF --> ACT["Identical/similar mark on identical/similar goods; likely confusion"]:::leaf
    INF --> DIL["Dilution of well-known mark (s.29(4))"]:::leaf
    INF --> DEF["Defences (s.30/34/35/33)"]:::leaf
    DEF --> D1["Honest descriptive / own-name use"]:::leaf
    DEF --> D2["Prior use; acquiescence; invalidity"]:::leaf
    INF --> REM["Remedies (s.135): injunction + damages/profits + delivery up"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories (1965) — in infringement, once the marks are shown to be identical/deceptively similar the plaintiff need prove nothing more; this distinguishes it from passing off.
Cadila Health Care v Cadila Pharmaceuticals (2001) — the likelihood-of-confusion test governs infringement of similar marks.
Midas Hygiene Industries v Sudhir Bhatia (2004) — in a clear case of infringement/passing off, an injunction should ordinarily follow; delay alone is not fatal where dishonesty is shown.

📄 Full notes + Question Bank (₹199) — every topic in depth, model answers to all past KSLU questions, in one printable PDF. Get the bundle · 10 Solved Problems · All Intellectual Property Rights I topics