Infringement, Unfair Competition, and Enforcement Remedies
Infringement is unauthorized commercial use of a confusingly similar mark. Unfair competition is broader: it reaches passing off and false designations even where trademark registration is absent.
Core rules
- Under IP Code Section 155, infringement requires use in commerce of an identical or similar mark for identical or similar goods/services likely to cause confusion.
- Counterfeiting involves a spurious mark identical to a registered mark on the same goods.
- Under Section 168, unfair competition includes passing off goods as another's, false representations, and misleading trade dress.
- Civil remedies include injunction, damages, accounting, delivery or destruction of infringing goods, and attorney's fees.
- Criminal penalties apply to certain infringement and counterfeiting offenses; administrative enforcement and customs measures are also available.
- Courts consider the dominancy and holistic tests, the goods' relatedness, and evidence of actual confusion.
Worked example
A seller offers 'NIKE' shoes with a swoosh-like device at a night market. The mark and goods are identical to the registered owner's, and the seller's use is commercial. Confusion is obvious. The owner may seek a temporary restraining order, injunction, damages, and destruction, and may pursue criminal action. If the seller instead used 'NIKE' on unrelated floor wax, confusion might be less likely unless the mark is well known and dilution or connection is shown.
Traps
Do not confuse infringement with unfair competition; plead both when facts fit. Registration is not always required for passing off, but proof of goodwill and confusion is. Criminal cases require proof beyond reasonable doubt, not just a cease-and-desist letter. Do not ignore customs recordation and administrative options. Damages must be proved.