Counterfeiting and Trademark infringement is often confused with being one and the same. While both counterfeiting and Infringement of trademarks are related to each other they are not identical. It can be said that: “All counterfeiting of marks is trademark infringement however not all infringement of trademarks is counterfeiting.”  Counterfeiting is a narrower concept under trademark infringement.

Both Infringement and counterfeiting are problems that can hamper the economy. They jeopardize the competitive position of companies in the global hemisphere. Companies that engage in counterfeiting and infringement of the Trademarks of others gain huge profits by negatively affecting the business of other companies who are honestly creating their goodwill and reputation. Counterfeit products also pose a threat to consumer health since they are made without proper supervision and don’t follow compliance. A good understanding of Counterfeiting and Infringement and their differences can help us in combat the spread of these goods.

What is Counterfeiting in the context of IPR

The Indian Trademark Act, 1999 doesn’t define counterfeit therefore we look towards the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement and legal dictionaries for counterfeiting definition.

1. The Trade-Related Aspects of Intellectual Property Rights (TRIPS) defines counterfeiting as:

“Counterfeit trademark goods” shall mean any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation;

• Webster’s New world law dictionary defines counterfeiting as:

To copy or imitate something without the right to do so and with the intent to deceive or defraud by representing the copy or imitation to be the original or to be genuine if no original ever existed.

The common elements that can be derived from these definitions are that Counterfeiting is the creation of an identical good in order to deceive or defraud the purchaser of the good.

What Is Infringement Under the Indian Trademark Act?

Section 29 of the Indian Trademark Act,1999 defines Infringement of the Trademark. According to this section, “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 is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and, in such manner, as to render the use of the mark likely to be taken as being used as a trade mark.”

Violating the exclusive rights of the registered owner of trademarks without their permission is called Trademark Infringement. There are many ways of infringing an owner’s trademark which include, creating a mark similar or identical to the registered mark to create confusion in the minds of the general public of its association, or using the registered trademark’s name or part of it in the infringing mark in the same goods and service, etc. These methods of identifying trademark infringement are also listed in Section 29 of the Trademark Act,1999.

Difference Between Counterfeit Marks and Infringing Marks

A counterfeit mark is indistinguishable from the original or genuine mark. Infringing marks are considered confusingly similar to the genuine mark or original mark. This means that infringing marks might either be exactly identical to the genuine mark or it might be a mark that is being used in such a way that leads to confusion, deception or misunderstanding about the actual source of the Trademark. Counterfeiting also includes copying the packaging, instructions, stickers, etc of the original product. Counterfeit Products are very difficult to distinguish from the original products because even the essential features of the goods are copied to be exactly the same.

The remedies available for counterfeiting and trademark infringement also vary. Counterfeiting of a mark is punishable under the Indian Penal Code and is a cognizable offense. In the case of the Infringement of a Trademark, civil remedies in the form of injunction and damages can be sought by the registered owner.

The mere existence of counterfeit products is proof enough to bring legal action against the defendant. While in Infringement the plaintiff is required to prove that any other mark is deceptively similar to their mark to the extent that they can create confusion in the mind of the average person and that the defendant is not a registered owner of the mark and neither has permission from the registered owner to use the mark. Hence, the burden of proof is much more strict in cases of counterfeiting.

BY-

SHAKSHI SWARNKAR

2 YEAR LLB

ILS LAW COLLEGE, PUNE