INTRODUCTION

Section 2(zb) of the trademark act defines a trademark as a mark that is capable of being represented in the form of a symbol, sign, design or expression that is capable of distinguishing between the goods or services of the person dealing in identical goods. Trademark also includes the shape of the goods, their packaging style and combination of colours. Trademark act also gives protection to the domain names which was decided through the landmark case of Tata Sons Ltd v. Manu Kosuri & Ors.

Trademark is registered through a single application for different categories, initially, for 10 years but it can be renewed for an indefinite time. Though it is not compulsory to register the trademark as it is just extra evidence for protection, held in the case of Betco Enterprise v. Pradhan perfumes.

There are different types of Trademarks like wordmarks, service marks like Google, device marks which include word and logo both like Nike, certificate marks like ISI, ISO mark, collective marks like Tata, reliance, unconventional marks like colour trademark (purple colour for dairy milk), sound marks like a ringtone of Nokia etc, Slogan or tagline like “I’m lovin’ it” is the trademark of McDonald.

Symbol of trademark- ™ (if not registered) ® (if registered)

Trademark and related rights Madrid agreement concerning the International Registration of Marks, 1979, Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, 198, Common Regulations under the Madrid Agreement concerning the International Registration of Marks and Protocol relating that Agreement.

A trademark can be utilized for distinguishing and recognizing a specific merchant’s products from others. Trademark likewise shows the origin of the products for example a client can distinguish the maker and additionally expect about the nature of products that all merchandise bearing the specific trademark is of a specific quality wanted by the customers. Trademarks are broadly utilized for notice purposes additionally which serves to customers in partner any great with the quality, reputation and generosity of any organization. So it is vital for any organization to avoid potential risk while permitting anyone to utilize its trademark in light of the fact that the name and reputation of the organization are straightforwardly connected with the trademark.

INFRINGEMENT OF TRADEMARKS

Section 29 of the Trademark Act, 1999 states about various aspects concerning the infringement as given in S.29(1) that A registered trademark 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 trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark.

The subsections of the provision laid out that in course of the utilization of the trademark, it is supposed to encroach the rights of different organizations because of the utilization of indistinguishable or comparable trademarks utilizing for showcasing of the same labour and products or utilization of a misleadingly comparative or indistinguishable trademark for some other sort of labour and products. It is additionally given in the Sub Section (9) of this provision that the encroachment should likewise be possible by the expressed utilization of the words just as by the visuals.

PASSING OFF TRADEMARK

Trademark Act, 1999 doesn’t have an express provision that explicitly portrays passing off however there is a number of common law decisions that let the courts attract its significance with regards to whether the encroachment of trademark done is so that the imprint isn’t only misleadingly like the trademark of that other organization however it is likewise equipped for making or is making confusion for the customers, which at last outcomes in harm for the matter of the organization. Like in the case of Perry v Truefitt, the court enumerated that the fundamental principle behind the tort of passing off is that “A man is not to sell his goods under the pretence that they are the goods of another man”

In a recent case of S. Syed Mohideen v. P. SulochanaBai, the Apex Court of the nation expressed that passing off right is a more extensive cure than that of encroachment. This is on the grounds that the passing off tenet works on the overall rule that no person is qualified to address their business as the matter of someone else. The said action of duplicity is viable for different reasons other than that of listed rights which are assigned rights under the Act.

DIFFERENCE BETWEEN PASSING OFF AND TRADEMARK INFRINGEMENT

The distinction between these two was expressed by judge Clauson on account of Listen LTD. v/s Harley. For this situation, he thought that in case you are restraining the encroachment of an enrolled mark, you can limit the man from utilizing the imprint, however in the event that you restrict him from selling the article under a similar name word which offended party or another person has been utilizing without separating it from the Plaintiff’s acceptable, then, at that point it is something alternate.

Another case is S. Syed Mohideen v. P. Sulochana Bai In this case, both the appealing party and respondent were the enlisted proprietor of ‘Irrutukadai Halwa’ however the respondent demonstrated in the Supreme Court that it isn’t just about the utilization of trademark yet it has become an easily recognized name for her family as they have been selling this halwa since the 1990s and have an alternate reputation to which court said that as it has become the Goodwill of respondent consequently nobody can utilize this specific trademark and it was likewise seen that passing off right is a more extensive cure than trademark.
Other differences are-

1. Trademark gives protection to registered labour and products while Passing Off gives protection to unregistered labour and products. This is one of the main contrasts between Passing Off and trademark encroachment. In any case, the highlight is noted here is that the cure gave in both Passing Off and trademark encroachment is something very similar.
2. The other distinction between Passing Off and trademark infringement is that in passing off it isn’t fundamental for the respondent to utilize the trademark of the offended party to bring an action of passing off but in trademark infringement, it isn’t the situation.
3. In the instance of trademark encroachment, the weight of proof lies on the offended party.
4. Passing off is a common law cure while Trademark infringement is a legal cure.
5. For trademark encroachment prosecution under criminal cure is very simple when contrasted with the instance of Passing off.
6. For the instance of Passing off, the cure must be looked for under Section 20 of Civil Procedure Code 1908, though trademark encroachment suits can be addressed under Section 134 of the Trademarks Act 1999.
7. For trademark encroachment registration is fundamental while for passing off Goodwill, harm, misrepresentation is fundamental.