Infringement of Registered Trademark (Section 29)

Section 29 of the Trade Marks Act, 1999 is the heart of the statutory infringement regime. It contains nine sub-sections, each addressing a distinct way in which a third party may violate the exclusive right that Section 28 confers on the registered proprietor. The 1999 Act enlarged the meaning of infringement substantially compared with the predecessor Trade and Merchandise Marks Act, 1958, which limited statutory infringement to use of identical or deceptively similar marks on the same goods. The new Act extends the action to similar goods, to dissimilar goods where the mark has a reputation, to use of the mark as a trade name or in business papers, and to disparaging or comparative advertising.

The structure of the section is best understood by stepping through it sub-section by sub-section. Each sub-section identifies a wrong, identifies the ingredients that must be made out, and locates itself within the larger Section 28 right. Section 30 then supplies the limits in the form of statutory exceptions and an honest-practices rule.

Section 29(1) — traditional infringement

Section 29(1) carries forward the rule that obtained under the 1958 Act. A registered trade mark is infringed by a person who, not being the registered proprietor or a registered user using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the registered trade mark in relation to goods or services in respect of which the trade mark is registered, in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

Four ingredients fall out of this. The defendant must (a) not be the proprietor or a permitted registered user, (b) use the mark in the course of trade, (c) use a mark identical with or deceptively similar to the registered mark, in relation to goods or services for which the mark is registered, and (d) use it in such a manner that the use is likely to be taken as use as a trade mark — that is, as a badge of origin rather than as descriptive matter or as a comparative reference.

Two points deserve emphasis. First, identity or deceptive similarity must be assessed against the essential and distinctive features of the registered mark, not its peripheral details. The Supreme Court in Parle Products (P) Ltd. v. J.P. & Co. (1972) 1 SCC 618 held that for purposes of infringement it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. Second, the defendant's intention is irrelevant — once the essential features are adopted, the absence of an intention to deceive does not save the defendant.

Section 29(2) and 29(3) — similarity, identity, and the presumption of confusion

Section 29(2) catalogues three combinations in which infringement is made out together with an additional confusion requirement. A registered trade mark is infringed if the defendant uses a mark which is (a) identical with the registered mark and is used in respect of similar goods or services, or (b) similar to the registered mark and is used in respect of identical or similar goods or services, or (c) identical with the registered mark and is used in respect of identical goods or services. In each of these three combinations, the use must be likely to cause confusion on the part of the public, or be likely to be taken to have an association with the registered mark. Validity of the mark is presupposed; if the registration falls foul of the absolute grounds in Section 9, no Section 29 wrong can stand on it.

Section 29(3) supplies a special evidential rule for the third combination — identity of mark and identity of goods or services. In that case, the court shall presume that the use is likely to cause confusion on the part of the public. The presumption is not rebuttable in the ordinary sense; it is a legal consequence that flows from double identity and removes the need for the proprietor to prove confusion separately.

The combined effect of these sub-sections is a graded regime. In double-identity cases, no proof of confusion is required (Section 29(3)). In other identity-or-similarity cases involving similar or identical goods, confusion must be shown but the threshold is read against the essential features of the mark (Section 29(2)). The factors that govern the deceptive-similarity inquiry — particularly in pharmaceutical cases — were spelled out by the Supreme Court in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, discussed below.

Section 29(4) — dilution by use on dissimilar goods

Section 29(4) is the dilution provision. A registered trade mark is infringed by a person who, not being the registered proprietor or a permitted registered user, uses in the course of trade a mark which (i) is identical with or similar to the registered trade mark, (ii) is used in relation to goods or services which are not similar to those for which the trade mark is registered, and (iii) the registered trade mark 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 trade mark.

Three points are critical. First, Section 29(4) is the only sub-section in which the goods or services are dissimilar — the others all require some degree of overlap. Second, Section 29(4) does not import a likelihood-of-confusion test. The Delhi High Court in ITC Ltd. v. Philip Morris Products SA 2010 (42) PTC 572 (Del) made the point clear: Parliament has consciously eschewed the deceptively-similar standard for Section 29(4); the identity or similarity standard is a notch higher, and the proprietor must establish a near identification or very close similarity of the marks. Third, all three Section 29(4) ingredients — reputation in India, use without due cause, and unfair advantage or detriment — must be independently proved; there is no presumption.

Section 29(4) is treated in detail, alongside the case-law on dilution by blurring and tarnishment, in the chapter on trade mark tarnishment and dilution.

Section 29(5) — use of the mark as trade name or business name

Section 29(5) extends the infringement action to a category of conduct that previously fell only within the law of passing off. The earlier-mark proprietor may also have argued before the Registrar under the relative grounds in Section 11 at the registration stage; Section 29(5) gives him a post-registration weapon. A registered trade mark is infringed by a person who uses the registered trade mark as his trade name, or as part of his trade name, or as the name of his business concern, or part of the name of his business concern, where the business concern deals in goods or services in respect of which the trade mark is registered.

The provision targets the practice of adopting another's registered mark as a corporate identifier — "Hindustan ABCD Limited" where ABCD is someone else's registered mark — and selling the same goods or services. The 1999 Act treats this as statutory infringement, regardless of how prominently the mark appears in the trading style. The breadth of the protected term "trademark" itself — including service marks and combinations covered by the definitions in Section 2 — feeds directly into the scope of Section 29(5).

Section 29(6) — what counts as use of a registered mark

Section 29(6) is a definitional sub-section. For the purposes of Section 29, a person uses a registered mark if he (a) affixes it to goods or the packaging thereof, (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered mark, or offers or supplies services under the registered mark, (c) imports or exports goods under the mark, or (d) uses the registered mark on business papers or in advertising.

The list is wide. It captures point-of-sale use, packaging use, advertising use, and import-export use. Use under Section 29(6)(c) — import or export under the mark — is the textual hook on which the exhaustion debate hangs and is the reason that India has been characterised in some accounts as a national-exhaustion jurisdiction so far as trade marks are concerned, with parallel imports treated as potentially infringing under Section 29(6)(c) read with Section 29(2) and (4). Section 30(3) and (4) carve out a domestic-exhaustion exception, but they do not extend international exhaustion to trade marks; that limitation is treated in our chapter on the limitations on the effect of a registered trade mark under Section 30.

Section 29(7) and 29(8) — labels, packaging and disparaging advertising

Section 29(7) brings within the infringement net the application of a registered mark to materials intended to be used for labelling, packaging, business papers or advertising goods or services, where the person applying the mark knows or has reason to believe that the application is not authorised by the proprietor or any other person entitled to authorise it.

Section 29(8) addresses comparative and disparaging advertising. A registered trade mark is infringed by any advertising of that mark if the advertising (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or (b) is detrimental to the distinctive character of the mark, or (c) is against the reputation of the trade mark. Sub-section (8) reinforces sub-section (6)(d) by laying down the parameters within which advertising use becomes statutorily wrongful.

The leading judgment on Section 29(8) is Pepsi Co. Inc. v. Hindustan Coca Cola Ltd. 2003 (27) PTC 305 (Del) (DB). The Delhi High Court Division Bench held that comparative advertising is permissible so long as it does not undervalue the rival product, but that an advertisement that depicts the rival's drink as a "bachon wali drink" — fit only for children — and ridicules the choice of that drink amounts to disparagement and is actionable. The court drew a line between honest puffery (a tradesman saying his goods are best, even if the statement is not true) and slander of goods (calling the rival's product bad or inferior). Comparative advertising may use a registered mark, but it cannot defame it.

Section 29(9) — spoken use of word marks

Section 29(9) places a long-standing principle on a statutory footing. Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation. The phonetic and the visual tests for deceptive similarity were always alternatives in the case-law; sub-section (9) confirms that the proprietor's right covers both modes.

Cadila Healthcare and the test for deceptive similarity

The most important Indian judgment on the methodology of the deceptive-similarity inquiry is Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73. The Supreme Court overruled the earlier decision in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. AIR 2000 SC 2114, which had given priority to dissimilarities of essential features over phonetic and visual similarities, and re-established the four-decade line of Indian authority that focused on overall similarity.

The court laid down that, in deciding whether one mark is deceptively similar to another in a passing-off action on the basis of an unregistered trade mark — and the same approach broadly applies to the Section 29 infringement inquiry — the following factors are to be considered: (i) the nature of the marks (word marks, label marks, composite marks), (ii) the degree of resemblance, phonetically and in idea, (iii) the nature of the goods, (iv) the similarity in nature, character and performance of the rival goods, (v) the class of purchasers likely to buy the goods and their education and degree of care, (vi) the mode of purchasing or placing orders, and (vii) any other surrounding circumstances. The weight to be given to each factor depends on the facts.

The Supreme Court in Cadila also held that where medicinal products are involved, a stricter approach must be adopted: confusion between two medicinal products may be life-threatening, not merely inconvenient, and a lesser quantum of proof of confusing similarity is therefore appropriate. The court drew on R.J. Strasenburgh Co. v. Kenwood Laboratories, Inc. 106 USPQ 379 (1955) and on McCarthy on Trade Marks for the proposition that drugs are poisons, not sweets, and that confusion among medicinal products may produce physically harmful results. The Cadila standard governs every modern infringement suit involving pharmaceutical preparations.

The same medicinal-products principle was reaffirmed in Milmet Oftho Industries v. Allergan Inc. AIR 2004 SC 3355, where the Supreme Court restrained the Indian use of the mark OCUFLOX for an eye and ear preparation in light of its prior worldwide use by the respondent for an eye-care drug. The court held that even where both products are sold under prescription, a similar mark on a similar drug cannot be allowed if it can result in confusion among physicians or pharmacists, particularly given the international character of the medical field.

Trade dress, get-up, and Section 29

The Section 29 infringement action protects not only the mark but the essential features of registered marks that include get-up and trade dress. The Delhi High Court in Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd. 2003 (27) PTC 478 (Del) observed that no party can have a monopoly over a particular colour, but if there is substantial reproduction of a colour combination in the same order on the container or packaging which has, over a period, been imprinted on the minds of customers, it is liable to cause not only confusion but also dilution of the distinctiveness of the colour combination. The court emphasised that the touchstone is the unwary, illiterate and gullible customer rather than the diligent or literate one.

In Parle Products (P) Ltd. v. J.P. & Co. the same approach prevailed: when the rival wrappers were practically of the same size and the colour scheme was almost identical, the design on both bearing such a close resemblance that one could easily be mistaken for the other, the registered trade mark was held to have been infringed even though the brand names (Gluco / Glucose) were not identical. The Supreme Court rejected the side-by-side comparison method and held that the test is one of overall similarity from the perspective of an ordinary purchaser with imperfect recollection.

Section 29 and the convergence with passing off

Under the 1958 Act, statutory infringement was confined to use of a deceptively similar mark on the same goods, while passing off was available across goods. The 1999 Act has narrowed the gap considerably. Section 29(2) extends infringement to similar goods or services, Section 29(4) extends it to dissimilar goods or services where the mark has a reputation, and Section 29(5) extends it to use as a trade name. The proprietor of a registered mark of repute can therefore obtain through the infringement action much of what previously required a passing off claim.

Two operational consequences follow. First, the proprietor of a registered mark no longer needs to combine an infringement action with a passing off claim merely to capture small differences in goods or services — the infringement action itself does that work. Second, however, the common-law passing off remedy preserved by Section 27(2) continues to matter for unregistered marks and for fact-patterns that fall outside the Section 29 catalogue. The two causes of action overlap but do not coincide; they are treated more fully in the chapter on the passing off action under Sections 27, 134 and 135.

Burden of proof under Section 29

The allocation of burden differs across sub-sections. Under Section 29(1) and (2), the proprietor must establish use of an identical or deceptively similar mark on the registered or similar goods or services, in the course of trade, in such a manner as to be taken as use as a trade mark. Confusion must be shown for Section 29(2) but is presumed under Section 29(3) for double-identity cases. Under Section 29(4), the proprietor must affirmatively prove (i) reputation in India, (ii) use without due cause, and (iii) unfair advantage or detriment to distinctive character or repute — there is no statutory presumption for the dilution head, and the standard of similarity is higher than in Section 29(1) and (2).

Once infringement is made out, the burden shifts to the defendant to bring himself within one of the limits in Section 30 — for example, by showing that the use was in accordance with honest practices in industrial or commercial matters and was not such as to take unfair advantage of, or be detrimental to, the distinctive character or repute of the mark; or by showing that the use was for the purposes of identifying goods adapted to be accessory to the registered proprietor's goods, as in Hawkins Cookers Ltd. v. Murugan Enterprises 2008 (36) PTC 290 (Del).

Remedies for Section 29 infringement

Section 135 is the remedies provision. The court may grant (a) an injunction restraining further use of the infringing mark, subject to such terms as the court thinks fit, (b) damages or, at the option of the plaintiff, an account of profits, and (c) an order for delivery up of the infringing labels and marks for destruction or erasure. Sub-section (2) empowers the court to grant ex parte injunctions and interlocutory orders intended to preserve evidence or documents and to restrain the defendant from dealing with assets in a manner that would defeat the plaintiff's ability to recover damages.

Section 134 prescribes the forum: a suit for infringement, or for any right in a registered trade mark, or for passing off, must be instituted in a court not inferior to a District Court having jurisdiction. Sub-section (2) allows the suit to be instituted in the District Court within whose jurisdiction the plaintiff resides or carries on business — a forum convenience that is unique to trade-mark and copyright statutes in India. Following the abolition of the IPAB, appellate jurisdiction now sits with the High Courts under the framework explained in our chapter on the trademark tribunal and civil court jurisdiction.

Distinguishing Section 29 from cognate provisions

Section 29 is sometimes confused with Section 28 and with the limits in Section 30; the lines should be kept clean.

Section 29 vs Section 28. Section 28 confers the right; Section 29 catalogues the wrongs. Section 28 is concerned with what the proprietor has by virtue of registration; Section 29 is concerned with what the defendant has done that violates that right. A complaint under Section 29 always presupposes a Section 28 right.

Section 29 vs Section 30. Section 30 limits Section 29. Even where the proprietor has made out one of the Section 29 wrongs, the defendant may escape liability by bringing his use within the honest-practices rule in Section 30(1) or one of the specific exceptions in Section 30(2) — descriptive use, use within the limits of conditions on the registration, use of permitted-by-proprietor marks, accessory use, or use of a coordinate registered mark.

Section 29 vs Section 27. Section 27(1) bars the infringement action for unregistered marks; Section 27(2) preserves the passing off remedy. Section 29 lives in the world that Section 27(1) creates: it operates only for registered marks. An unregistered proprietor cannot invoke Section 29 — but he can sue for passing off under the common-law action that Section 27(2) preserves. Penal liability for falsifying or falsely applying a registered mark is separately catalogued in the offences and penalties under Sections 101 to 121.

Practical and exam takeaways

For state judiciary, CLAT PG and SEBI Legal Officer papers, the most testable angles on Section 29 are:

1. The five wrongs the section catalogues — identity-on-similar (29(2)(a)), similarity-on-identical-or-similar (29(2)(b)), double identity (29(2)(c) read with 29(3) presumption), dissimilar goods of repute (29(4)), and use as a trade name (29(5)).
2. The Cadila standard for deceptive similarity, including the heightened scrutiny for medicinal products.
3. The Pepsi v. Coca-Cola distinction between permissible puffery and actionable disparagement under Section 29(8).
4. The interplay between Section 29(6)(c) (use by import or export) and the absence of international exhaustion for trade marks under Section 30.
5. The convergence with — but not absorption of — the passing off action preserved by Section 27(2).

A list of well-known trademarks recognised under Section 11(6) to (10) often features in dilution arguments under Section 29(4); proof of well-known status simplifies the reputation limb. The exam-trap to avoid is treating Section 29(4) as simply Section 29(2) with broader goods. It is not. Section 29(4) requires reputation in India, use without due cause, and unfair advantage or detriment — none of which Section 29(2) requires — and it eschews the likelihood-of-confusion test entirely. Conflating the two is the most common error in answers and must be guarded against.

Frequently asked questions

What is the difference between Section 29(2) and Section 29(4)?

Section 29(2) operates where the defendant uses an identical or similar mark on identical or similar goods or services and the use is likely to cause confusion or association in the public mind. Section 29(4) operates where the defendant uses an identical or similar mark on dissimilar goods or services and the registered mark has a reputation in India; here the proprietor must additionally show use without due cause and unfair advantage or detriment to the distinctive character or repute of the mark. Likelihood of confusion is required in Section 29(2) but expressly not required in Section 29(4).

When does the court presume confusion under Section 29?

Section 29(3) supplies a statutory presumption only in the double-identity case — where the defendant's mark is identical with the registered mark and is used in respect of identical goods or services. In every other Section 29(2) combination — identity-on-similar or similarity-on-identical-or-similar — confusion or association must be proved. The Section 29(3) presumption removes the proprietor's evidential burden in the most clear-cut category of infringement and reflects the strong likelihood of confusion when both mark and goods coincide.

Is comparative advertising permitted under the Trade Marks Act?

Comparative advertising is permitted under the Act subject to the conditions in Section 29(8). A trader may compare his goods with those of a competitor, may declare his own goods to be best, and may even claim that his goods are better than the rival's, even if the statement is untrue. What he cannot do is call the competitor's goods bad or inferior, or use the rival's mark in a way that takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark. Pepsi v. Hindustan Coca Cola is the leading authority distinguishing puffery from actionable disparagement.

How does Section 29(5) differ from passing off?

Section 29(5) makes statutory infringement of using the registered mark as a trade name or business name where the business deals in the registered goods or services. Before the 1999 Act this conduct was actionable only as passing off. The advantage to the proprietor under Section 29(5) is that he need not establish goodwill, misrepresentation and damage as he would for passing off; the statutory action turns on the registration and on the defendant's use of the mark as a corporate identifier in the same field of trade. Passing off remains available alongside Section 29(5) for unregistered marks or for fact-patterns outside the registered class.

What standard of similarity applies in pharmaceutical infringement cases?

The Supreme Court in Cadila Healthcare v. Cadila Pharmaceuticals held that a stricter standard applies to medicinal products. Confusion in non-medicinal products may cause economic loss; confusion between medicinal products may have disastrous effects on health and even on life. The court held that public interest supports a lesser quantum of proof of confusing similarity in medicinal cases, and that vigilance is particularly needed where the rival drugs are meant for the same ailment but have different compositions. Milmet Oftho Industries v. Allergan reaffirmed the principle and extended it to drugs marketed under similar marks worldwide.

Does Section 29 require proof of intent to deceive?

No. The infringement action is a strict-liability statutory remedy. Once the proprietor establishes the elements of one of the Section 29 wrongs — including, in Section 29(2) cases, likelihood of confusion or association — the defendant's intention is irrelevant. The Supreme Court in S.M. Dyechem v. Cadbury (India), although later overruled on the dissimilarity point by Cadila, restated this principle: if the essential features have been copied, the intention to deceive or to cause confusion is not relevant in an infringement action. Even unintentional confusion suffices, because the proprietor's right under Section 28 is property-based, not deception-based.