Section 29 of the Trade Marks Act, 1999 describes the Indian legal framework that deals with the infringement of registered trade marks. This section specifies the conditions when a mark used by someone other than the registered proprietor or an authorized user would amount to infringement. This section covers different scenarios, such as direct use of identical or similar marks, use in relation to dissimilar goods or services, and cases of unfair advantage or harm to the reputation of a trademark.
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Section 29(1): Infringement by Identical or Deceptively Similar Marks
Meaning: A registered trademark is infringed when someone uses a mark that is:
Identical or deceptively similar to the registered trademark.
In relation to the same or related goods/services for which the trademark is registered.
The use of the mark must be such that the public is likely to view it as a trademark.
Example: If a company uses a logo that is identical to the famous "Nike" logo on sports goods, it could lead the public to believe that the goods are associated with the Nike brand, thus infringing their trademark.
Section 29(2): Infringement Based on Identity or Similarity
Meaning: A registered trademark is infringed when:
(a) The mark used is identical to the registered trademark and the goods or services are similar.
(b) The mark used is either identical or similar to the registered trademark and the goods or services are either identical or similar.
(c) The mark used is identical to the registered trademark and the goods or services covered by both marks are identical.
In all of these cases, there must be a likelihood of confusion among the public or an association with the registered trademark.
Example: If a new shoe company adopts a logo very much like "Reebok" for its athletic shoes, and the public is likely to confuse the new mark with Reebok because of the similarity of the mark and the nature of the goods, it amounts to infringement.
Section 29(3): Presumption of Likelihood of Confusion
Meaning: In clause (c) of Section 29(2), the court shall presume that confusion of the public is likely when both the mark and the goods/services are identical.
Thus, this provision would easily prove infringement in cases when the mark and the goods/services are identical since it presumes that confusion of the public is inevitable when the mark and the goods/services are identical.
Example: A new beverage company uses the exact same name and logo as Coca-Cola for its soft drinks. The court will presume that this is likely to cause confusion among consumers.
Also, Checkout the Examples of Trademarks
Section 29(4): Infringement Involving Marks with a Reputation
Meaning: In cases where:
The mark is identical or similar to the registered trademark.
The mark is used on goods or services that are not similar to those for which the trademark is registered.
The registered trademark has a reputation in India.
The mark takes unfair advantage of or is detrimental to the distinctive character or the reputation of the registered trademark.
Though the goods or services could be different, this principle safeguards well-known marks against dilution and misuse across unrelated fields.
Example: A new company uses the mark "Gucci" on non-luxury items like household cleaning products. Even though cleaning products aren't related to high fashion, the famous reputation of "Gucci" in fashion could be unfairly exploited, leading to infringement.
Also, Get to Know the Trademark Registration Process In India
Section 29(5): Infringement by Trade Name Use
Meaning: A registered trademark is infringed if a person uses the trademark as part of his trade name, business name, or name of the business concern for goods or services covered by the registered trademark.
Example: A new restaurant opening under the name "McDonald's Pizzas" might infringe the McDonald's trademark for fast food, even if the specific service is pizza, because the use of the name could cause confusion regarding the affiliation with McDonald’s.
Section 29(6): Specific Use Cases of Registered Marks
Meaning: This section specifies several ways in which a person may use a registered trademark in infringement:
(a) Applying the mark to goods or packaging.
(b) Selling, offering for sale, or advertising goods or services in commerce under the mark.
(c) Using the mark on services when used or intended to be used in commerce.
(d) Exporting goods under the mark.
These activities are held as "use" of the mark and may become infringing if not authorized.
Example: If a person sells counterfeit Apple products carrying the Apple logo or uses the Apple mark in marketing materials without permission, then this is also infringement under Section 29(6).
Section 29(7): Infringement through unauthorized application to material
Meaning: This sub-section deals with the situation wherein a person applies a registered trademark to material for labeling, packing, advertising or business documents with the intention that an application was not authorized by the owner of the mark or a licensee.
Illustration: A person printing the Nike mark on tag labels, packing materials and advertisement materials without permission; this would amount to infringement within this section.
Also, Get to Know What is Section 11 Of Trademarks Act 1999
Section 29(8): Infringement through advertisement
Meaning: Registered trademark is infringed if its use for purpose of advertising:
(a) Takes unfair advantage of mark, or is contrary to honest practices in industrial or commercial matters.
(b) Is detrimental to a distinctive character of the mark.
(c) Damages the reputation of the trademark.
This provision prevents the mischief of misuse of a famous mark in advertisement even if not directly used on goods or services.
Example: Selling irrelevant products such as shoes or electronic gadgets using the logo of Coca-Cola for advertising might fall under infringement, when using the reputation or distinctiveness of the brand.
Section 29(9): Infringement by Use in Oral Form of Words
Meaning: When words make part of the elements distinctive of a registered trademark, their use in an oral form apart from its graphical use infringes the trademark.
For example: This also applies if a person talks about "Coca-Cola" in terms of advertising or marketing products, even though it does not appear in writing - it is still infringement.
Key Takeaways
Trademarks Infringements: This is when one party uses a mark such that is identical or closely misleading like registered marks for the same or substantially same goods/services, causing customers or potential customers to be deceived or associate with the actual registered mark.
Well-Known Marks: Section 29(4) specifically safeguards marks that have a reputation, even though used on different goods or services, from being diluted or unfairly exploited.
Field of Use: The scope of infringement includes not only direct use of marks on goods but also uses on business names, advertising and packaging.
This section ensures strong protection for registered trademarks and provides detailed legal avenues to address unauthorized use that could harm a trademark's distinctiveness or reputation.
Know the Key differences between Trademark & Patent
In Conclusion,
Section 29 of the Trade Marks Act, 1999, deals with the complete framework for protecting registered trademarks against infringement in India. The section defines what would amount to infringement, be it by use of an identical or deceptively similar mark, or through unauthorized use in a business name or by exploiting a trademark's reputation.
It runs a broad scope of possible infringements, ranging from the most direct misappropriation of a mark on goods and services to more subtle violations such as advertising, packaging, or even spoken words. The protection further extends to well-known trademarks to ensure that the distinctiveness and reputation are not sullied by unfair or exploitative practices.
The section provides a legal remedy for trademark owners whose marks are misused, while also providing clear guidance to businesses on what marks can or cannot be used in the marketplace. Be it through counterfeit goods, deceptive marketing, or use of an unauthorized famous brand, Section 29 gives trademark owners the necessary tools to ward off confusion, maintain the integrity of the brand, and defend intellectual property rights. Section 29 of India's trademark law is vital in helping to support competition, protect consumers from confusion, and encourage innovation by protecting those persons who invest their efforts in creating valuable marks.
FAQs on Section 29 of the Trademark Act 1999
Q1. What is Section 29 trademark infringement?
Infringement occurs when a person uses an identical or deceptively similar mark to a registered trademark in relation to the same or similar goods/services, likely causing confusion or association with the original mark.
Q2. Can a trademark be infringed if goods or services are different?
Yes, if the registered trademark has a reputation and the use of a similar mark takes unfair advantage of or harms its distinctiveness, even if the goods/services are not similar.
Q3. Is using a trademark in advertising considered infringement?
Yes, using a registered trademark in advertising if it unfairly benefits from the trademark's reputation or damages its distinctiveness can be an infringement.
Q4. Does a trademark infringe using a trademark in a business name?
Yes, for a registered trademark or the like mark in a trade name for goods or services to which the trademark applies,
Q5. Does spoken use of a trademark count as infringement?
Yes, if words of the trademark are among its elements of distinctiveness, a trademark's spoken use, just like its written usage, infringes the registered trademark.
