In India, the Trade Marks Act, 1999 (“Act”) and the Rules there under guide the process
of registration and enforcement of rights relating to trade marks. The Indian regime
affords protection to registered as well as unregistered marks. In case of misuse of a
registered mark, the right holder can initiate an infringement action against the violating
party. For misuse of unregistered marks, the right holder is entitled to claim protection
under the law of passing off. For succeeding in an action for passing off, the Plaintiff
must meet these threefold criteria – (1) established goodwill or reputation of the Plaintiff
attached to the relevant goods or services under its mark, (2) misrepresentation by the
Defendant which is likely to deceive public in to believing that the Defendant’s goods/
services emanate from the Plaintiff and (3) damage suffered or likely to be suffered by
the Plaintiff.
