7 August 2020TrademarksNV Saisunder

Understanding grounds for defence

While the Indian Trade Marks Act, 1999 contains various grounds of defences available to a defendant against claims of trademark infringement and passing off filed by a trademark proprietor, the most common defences that the defendant sets up against such claims are:

a) The trademarks of the plaintiff contain descriptive elements or lack distinctiveness and hence the plaintiff cannot expropriate exclusivity or monopolise use of such trademarks; and

b) There are delays or laches on the part of the plaintiff bringing such an action thereby tantamount to acquiescence of the plaintiff in the defendant’s use of a similar trademark.

In this article we shall deal with the legality of these grounds of defence under the Indian trademark law in light of various judicial principles laid down by Indian courts.

Defences of descriptiveness or lack of distinctiveness

Indian courts have, time and again, ruled on the defence of descriptiveness or lack of distinctiveness. They have held that where the defendant has sought to claim proprietary rights by way of an application filed in respect of a particular trademark that contains certain elements similar to the trademark of a plaintiff, then the defendant is not entitled to raise a defence that the plaintiff’s trademark contains a generic or descriptive expression, which lacks distinctiveness and because of which the plaintiff cannot expropriate exclusivity or claim monopolistic rights on similar elements.

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