The holder of a “registered” trademark has exclusive right over his/her mark. If a registered trademark is infringed by another trader, he is liable for an action against him for infringement of that registered trademark. (See Section 29 of Trade Marks Act, 1999) NO ACTION for infringement of an UNREGISTERED trademark can be instituted. (See Section 24 of Trade Marks Act, 1999)
The period of limitation for filing a suit for infringement is Three Years from the date of infringement. It is pertinent to mention herein that even after registration of trade mark under the Trade Marks Act, 1999 a trade mark can still be rectified and/ or cancelled on an application made by an aggrieved person in the prescribed manner to the Intellectual Property Board (IPAB, an Appellate Authority under the Act or the Registrar of Trademarks.
Some Defences for Infringement
In any litigation relating to infringement or passing off action, the following defences may be available against an infringement or passing off action to a Defendant:
1. Delay and Laches
In an infringement of trade mark, delay by itself may not be a ground for refusing to issue injunction as has been observed by Lahoti, J. in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia and Ors. (2004) in the following terms:
“The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.”
It may be further noted that the concept of acquiescence is recognised under the Section 33 of the Trade Marks Act, 1999 meaning thereby that when the proprietor of an earlier trademark cannot contest the validity of registration or the use of a subsequent trade mark, if he has acquiesced in the use of the subsequent trademark for a continuous period of 5 years.
3. Honest and Bonafide Adoption or Use
Honesty of adoption and user is the sine qua non for considering an application under Sec. 12. If either the adoption or subsequent user of the mark is proved to be dishonest, no amount of user will help the applicant. The adoption and use by a trader of a mark may be honest despite his knowledge of a similar mark already on the register, however, there should be no mala fide on the part of the trader.
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