Injunction restrains use of well known mark

The Trade Marks Act, 1999, seeks to protect bona fide prior use and to protect lawfully acquired trademarks from being infringed. When a well known mark that has a good reputation is used even with regard to dissimilar goods, it triggers confusion. This proposition has been reiterated in a number of judgments.

The relevant provision of the act, which is section 29(4), reads: “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 (a) is identical with or similar to the registered trademark; and (b) is used in relation to goods or services which are not similar to those for which the trademark is registered; and (c) the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.”

The specifics

The recent case of Eicher Goodearth Pvt Ltd v Laxman Marketing Pvt Ltd & Ors, centred on the infringement of a registered trademark that had become well known after long and extensive use. In it the court granted a permanent injunction in favour of the plaintiff, holding that even if the marks are meant for dissimilar goods when the justification for its use is not convincing, then the injunction cannot be lifted.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a New Delhi-based firm.