Trade mark infringement and Honest practice in relation to trade and business

A trademark is often defined as: “a word, name, symbol or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others”. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.

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.

Section 29 of Trade Mark Act, 1999 talks about various aspect related to infringement as given in a registered trademark is infringed as given in Sec.29(1) that 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 and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

Other sub-sections describes that in course of the use of the trademark it is said to be infringing the right of the other company due to use of similar or identical trademark using for marketing of similar kinds of goods and services or use of identical or deceptively similar trademark for any kind of goods and services. It is further given in subsection (9) of this section that the infringement can also be done by the spoken use of those words as well as by their visual representation

In Laxmikant V Patel Vs Chetanbhat Shah
S.C held that The law does not permits anyone to carry on his business in such a way as would persuade the customer in believing that goods and service belong to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudently or otherwise. The reasons are two:-

1) Honest and fair play is basic policy of business.

2)when a person adopts or intend to adopt a name in connection with his business or service which already belongs to someone else it results in confusion and he diverts the customer and client of someone else to himself and thereby resulting in injury.

The concept of infringement can be explained with the help of the following case laws:
In the case Castrol Limited Vs P.K. Sharma

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 the case of M/s Bikanervala v. M/s Aggarwal Bikanerwala

The respondent was running a sweet shop in with the name of AGGARWAL BIKANERVALA and the plaintiff was using the name BIKANERVALA from 1981 the same was registered by him in the year 1992. The plaintiff applied for permanent injunction over the use of the name AGGARWAL BIKANERWALA by the defendants for their sweet shop.

HELD -The Court granted an injunction in favour of the plaintiff and stopped the defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food articles for human consumption under the impugned trade mark/trade name/infringing artistic label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade name/infringing artistic work containing the name/mark 'BIKANER WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or deceptively similar to the plaintiff's trademark 'BIKANERVALA'.

Honest Concurrent User
The trademark law allows the trademark of an honest and concurrent user to coexist with another similar mark. The defense of honest concurrent user came into being through the cases of Dent v.Turpin and Southorn v. Reynolds.

In John Fitton & Co. the following five factors were laid down in order to have success in honest concurrent user defense.
1. The extent and use in time and quantity and the area of the trade.
2. The degree of confusion likely to ensue from the resemblance of the marks which is to a large extent indicative of the measure of public inconvenience.
3. The honesty of the concurrent use.
4. Whether any instances of confusion have in fact been proved, and
5. The relative inconvenience which would be caused if the mark were registered, subject if necessary to any conditions and limitations.

Section 12 of the TM Act in accordance with the aforementioned rationale provides for the registration of a trademark in case of its honest concurrent use by providing that ‘In the case of honest concurrent use or of other special circumstances which in the opinion of the

Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose’.

The following acts do not constitute infringement of the right to use a registered trademark:
1. Use of a trademark in honest practices in industrial and commercial matters that do not take unfair advantage.
2. Use of a trademark in relation to goods or services indicating character, quality or

Geographical origin.
3. Use of a trademark in relation to goods to which the mark has been lawfully applied.
4. Use of a trademark or a similar mark in the exercise of a right conferred by independent registration.

5. Assignment of a trademark to another.
What is meant by Honest Practice in relation to trade and business as enriched in section 30(1) of Trade Mark Act, 1999?

Honest Practice Defined by HIGH COURTS..
1) Radico Khaitan Ltd. Vs Carlsberg India Pvt. Ltd Honest practices in the industry/industrial or commercial matters have to be examined objectively and not subjectively for which it can be tested on two-fold basis:

(i) Reasonable man having knowledge in the trade.- (Whether he will think that the Said use is in the honest way after knowing fully well about trade)

(ii) Practice prevalent in the respective industry.- ( It means to see what others are doing in the same industry and if there is an established practice in the industry to use such expressions in particular manner then it would not be unfair to call that practice as honest practice

It was held that doctrine of objectivity rather than doctrine of subjectivity while applying test of honesty in trade and commerce

2) Hawkins Cooker Ltd Vs Murgan Enterprises

Honest practice is satisfied when one cannot decipher a commercial relation between registered proprietor of trademark and Other Person business. It means if the uses of trade mark by the defendant (unregistered user) it shows that there is no connection between plaintiff (registered proprietor) and defendant.

Honest Practice Defined By English Courts
3) Aktiebolaget Volvo and Anr. v. Heritage (Leicester) Limited
There was a past association between the plaintiff and the defendant as the defendant was an authorized Volvo dealer. Such dealership was revoked. It is thereafter the defendant started to use the work VOLVO in a similar style to the registered trademark accompanied by the prefix 'independent' and the suffix 'specialist' but both in much smaller lettering. Not only were that, past customers of Volvo also said to be informed accordingly. The object and intent of the defendant was clear that it wanted to indicate a connection with VOLVO and such user could hardly be called as an honest practice in industrial and commercial use. It squarely fell within the parameters of the defendant trying to take unfair advantage of the distinctive character and repute of the trademark VOLVO. Thus the mere use of suffix or prefix would not make any difference.

4) IN BMW vs. DEENIK
IT was held if the mark is used in such a way that it may create an impression that there is commercial connection between the other undertaking and in particular that the reseller business to trademark proprietor’s distribution network or that there is a special relation between the 2 undertaking – then it is not a honest practice and amounts to infringement.

Conclusion:
Over the time the trademarks law has changed to a great extent and now it provides protection to the trademark of a trademark owner at every stage. With the advancement of technology and communication, the law expects that users are reasonably aware of others trademarks before registering their own trademark. No one can use even a similar mark which creates deception or confusion for the customers. The trademark owners have to be more careful about similar marks in existence, even beyond national boundaries.
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# AIR 2002 SC 275
# 20009(56)DRJ 704
# 117(2005)DLJ 255
# 1861 2 J&H 139 70 ER 1003
# 1865 2 LT 75
# 1949 66 RPC,110
# 186(2012)DLT368, MANU/DE/6904/2011
# (2000).
# MIPR2008(1)128,MANU/DE/0004/2008
# case c-62/97(1999) ECR I 905

The  author can be reached at: rahulpandey@legalserviceindia.com