Trade Mark Infringement Laws
The expression “registered proprietor”, as defined under Section 2(v) of the Trade Marks Act, includes “the person for the time being entered in the register as the proprietor of the trade mark.”
Section 34 of the Trade Marks Act provides that the exclusive rights conferred by registration are subject to the rights of a prior user.
Section 28(1) of the Trade Marks Act, which confers an exclusive right to use the mark in relation to the specified goods
Section 45(1) of the Trade Marks Act, an assignment of a registered trademark must be in writing and must also comply with the formalities prescribed by law.
Section 34 of the Trade Marks Act provides that the exclusive rights conferred by registration are subject to the rights of a prior user
Section 28(1) confers statutory rights, If prior use is established, it operates as a statutory defence under Section 34 and takes precedence over the rights conferred by registration
document is “proved,” “not proved”, or “disproved” within the meaning of Section 3 of the Indian Evidence Act, 1872.
Points to remember in Trade Mark infringement cases
i) Registration does not prove use of the Trade Mark. User has to be proved
ii) Registrant cannot claim right over all the goods covered by a certain Class as its use and registration is for limited goods
iii) Registration obtained by false claim of user which means registration obtained by false claim of user amounts to fraud.
Section 35 of the Trade Marks Act, 1999 (“the Act”). Section 35 of the Act protects the bona fide use of a person’s own name or place of business, or that of their predecessor, against any remedy under the Act, including trademark infringement . The dispute began in June 2019, when Vasundhra Jewellers became aware of the respondent’s use of the ‘identical’ mark VASUNDHARA. CS(COMM) 363/2022 Date of decision: 21.09.2022
VASUNDHRA JEWELLERS PVT. LTD versus KIRAT VINODBHAI JADVANI & ANR
NON USE
The non-use of the trade mark registration renders it liable to be cancelled under Section 47 of the Trade Marks Act, 1999.
IDENTICAL GOODS AND SERVICES
If the goods are identical, Section 29(4) of the TM Act would be inapplicable, as Clause 29(4)(b) of the TM Act would not be satisfied. Section 29(4) of the Trade Marks Act, 1999 applies specifically when the goods or services are not similar (dissimilar) to those for which the trademark is registered.
Clause 29(4)(b) requires that the infringing mark "is used in relation to goods or services which are not similar to those for which the trade mark is registered.
Therefore if goods or services are identical or similar, Section 29(4) does not apply. Instead, infringement claims for identical or similar goods/services fall under other provisions of Section 29—such as Section 29(1), 29(2), or 29(3)—which deal with confusion or association regarding identical or similar goods and services.
Section 142 in The Trade Marks Act, 1999.
142. Groundless threats of legal proceedings
CAUSE OF ACTION
In Liverpool & London S.P. & I Assn. Ltd. v. M.V. Sea Success I41, the Hon'ble Supreme Court laid down the test for exercising power under Order VII Rule 11(a) CPC, as follows:
“139. Whether a plaint discloses a cause of action or not is essentially a question of fact. But whether it does or does not must be found out from reading the plaint itself. For the said purpose, the averments made in the plaint in their entirety must be held to be correct. The test is as to whether if the averments made in the plaint are taken to be correct in their entirety, a decree would be passed.”
ref: High Court of Delhi in RFA(OS)(COMM) 22/2025 Judgment dated 18.03.2026
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TWO WORD TEST
Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, (2001) 5 SCC 73 wherein Pianotist test was emphasised in the following words:
“You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks”
Section 2(1)(zg) of the Trade Marks Act, which defines the term "well known trade mark" as under:
?2. Definitions and interpretation.--: (1) In this Act, unless the context otherwise requires,--
(zg) ?well known trade mark?, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to .
Check conditions of Section 11(1)(6) are satisfied and also under Section 2(1)(zg) of the Act.
