Nowadays, the consumers are more oriented towards Brand, and using a deceptive Name for a Brand can affect the market of the original Brand. The owner of Brand looks for remedies to protect the Brand whenever the brand value is used without the prior approval of the owner. The stoppage of non-permitted use of trademark is equally significant as Trademark Registration. Hence, the Trademark Act, 1999, is introduced for the protection of Trade names.
The Trademark Act, 1999, aims to provide an exclusive right for the use of the brand name by the brand owner and also stops the unauthorized use of the brand name by any other users or competitors. Therefore, for the protection of the brand name and the value created, the brand logo and name are registered under the Trademark Act, 1999. In case there is deceptive usage of the brand name or logo, the Act also provides for remedies to the brand owner to sue the person using the brand name. The unauthorized usage of a brand mark is termed as Trademark Infringement. The Act provides remedies for Trademark Infringement. In this article, we will discuss the meaning, types, and remedies of Trademark Infringement.
What is a Trademark?
A Trademark is a phrase, unique symbol, or word, which is used by an individual, business organization, or any other legal entity. A Trademark is used by brand owners to distinctively identify the service and source of products of a brand to the consumers and to differentiate the product and services of a brand with other similar products in the market. The Trademarks which are registered are designated with ® symbol.
The need of Trademarks to represent goods and services can be considered a three-prong approach by:
- Helping the consumers to recognize the source
- Helping the consumers to determine the quality
- Helping consumers to make the right purchasing decision.
It is very imperative to protect the misuses and Infringement of Trademark if any of the values are added to the trademark of products or services.
What is Trademark Infringement?
The Trademarks are protected under the Trademarks Act, 1999. The Trademark Act, 1999, provides for the provisions dealing with protection, Registration, and penalties for Infringement regarding the Trademarks in India. The Trademarks across the globe are given the status of intellectual property. Many organizations, both international and national, are working for the protection of Intellectual Properties like Trademarks. The Indian Patent Office is the organization in India which is working for the protection of Trademarks. The Controller General of Patent, Design, and Trademarks is the administrator of the Indian Patent Office in India.
In simple words, Trademark Infringement is unauthorized use of a mark by an unauthorized person, which is identical or deceptively similar to an already registered Trademark. The term deceptively similar means that when a common consumer looks at the mark, it will be confusing the consumer with the other registered trademark. Hence, this confusion will affect the registered Trademark product and services.
The provisions related to Trademark Infringement mainly focus upon three main objectives of any person who is using the registered trademark but is not the registered user of the trademark. The three main objectives are as follows:
- Damaging the reputation and uniqueness of registered trademark,
- The intention of usage of trademark, despite having the knowledge of such usage is unlawful, or
- Having a dishonest intention of taking undue advantage.
Furthermore, Trademark infringement can also be caused by an advertisement. The advertisement should take unfair advantage of the registered trademark and also damages the reputation and uniqueness of the registered trademark. If the visual representation and spoken use of certain words affect the uniqueness of a registered Trademark, then it will amount to Trademark Infringement.
In light of advertisement, multiple courts have elaborated on what can constitute Infringement of Trademark. In the case of Reckitt India Limited vs. Hindustan Unilever Limited, the defendant company has portrayed the Dettol Soap (product of appellant) as ordinary soap in the advertisement of their product Lifebuoy soap. The ordinary soap in the advertisement allows the germs to enter the skin through cracks of the skin. The appellant company claimed that such advertisement is causing huge damage to the goodwill and reputation of their Company product. The appellant contended that the common consumers would recognize the familiar characteristics of Dettol soap even if the logo of Dettol soap is not shown in the advertisement. The court gave ruling in favor of the appellant that the general public can view the advertisement and possibly refer to Dettol soap as ineffective soap.
What are the types of Trademark Infringement?
The following are the types of Trademark Infringement:
Under Section 29 of the Trademark Act, 1999, direct Infringement is defined. There are some elements that should be met before any direct breach to occur. The elements are as follows:
Usage by an Unauthorized Person
- The violation of a registered Trademark only happens when the use of a Trademark is done by a person who is not authorized by the holder of a registered Trademark. Hence, the use of the trademark by a person who is authorized by the holder of the registered trademark will not amount to Trademark Infringement.
Identical or Deceptively Similar
- The trademark being used by the unauthorized person should be either deceptively similar or identical to the registered trademark of the original holder. The meaning of term Deceptively Similar is that the common consumer ‘may’ get confused between two similar Trademarks and ‘may’ think that both the Trademarks are same. The word ‘may’ signify that it is only required to prove that there is a possibility of such kind of confusion and hence no need to prove the actual happening of such confusion. A mere chance of misrecognition of the Trademarks is enough to prove that there has been Trademark Infringement of a product or services of a registered Trademark.
- The Trademark Act, 1999, provides remedies to the Trademarks which are registered with the Trademark Registry. In case of Infringement of an unregistered Trademark, the Act will not apply. The common law of passing off is used in cases of unregistered Trademarks. Passing off is a tort law which is used where damage or injury is caused to the goodwill associated with the activities of other persons or group of persons.
Goods or Services Class
- The unauthorized person should use the trademark for the propagation of goods and services which fall under the same category or class of products or services under which the original trademark is registered. In such case, only it will be considered as Trademark Infringement of registered Trademark.
In the Trademark Act, 1999, there are no provisions which deal with indirect Infringement particularly. Hence, it cannot be said that there is no liability for Indirect Infringement. The Universal Principle of Law provides for the principle and application of Indirect Infringement. These principles hold not only accountable the principle infringer but also hold accountable the person who induces or abets the principal infringer for Infringement.
The different types of Indirect Infringement are as follows:
- As per Section 114 of Trademark Act, 1999, any company committing an offense under this Act will be liable. The Company will be liable as a whole, and this means that all the person will be liable for the offense. Hence, it can be said that not only the principal infringer but every person of the Company will be liable for indirect Infringement. An exception from Vicarious Liability is given to the person who acted in good faith and without any knowledge of Infringement.
- The essential elements of Vicarious Liability are as follows:
- When the person is controlling the activities of the principle infringer
- When the person had knowledge about the Infringement and still contributed to such Infringement
- When the person is deriving financial benefits from Infringement
- The only exception to Vicarious Liability for the Company who is liable for Infringement is when the Company can prove that the Company has acted in good faith and had no idea or knowledge about the Infringement.
- The essential elements of Contributory Infringement are as follows:
- When the person knew about the Infringement
- When the person Materially contributed to direct Infringement
- When the person induced the principle infringer for committing Infringement
- There is no exception available in case of Contributory Infringement as there is no chance of the contributory infringer to act in good faith.
When will it not be considered a Trademark Infringement?
Under the Trademarks Act, 1999, Section 30 lays down certain conditions when it is considered that there is no Infringement of Trademark. The conditions prescribed under Section 30 can be used as a defense by the alleged infringer. The conditions are as follows:
- When any person is making use of the registered trademark in accordance with the honest practices in commercial or industrial matters;
- When the use of a registered Trademark is not in pursuit of taking any undue advantage or prove the use to be detrimental to the distinctive character or reputation of the trademark;
- When the registered trademark is used to indicate the quality, kind, intended purpose, geographical origin, value, time of production, or any other characteristics of services and products.
- When the use of a Trademark is identical or similar to each other
- When the use of a Trademark is in relation to accessories and parts
- When the use of trademark is in the continuance of the permission from the original owner of the registered trademark who has not removed the consent in such cases, the user cannot be said as Infringement of Trademark.
- When the use of trademark is under the ambit of limitations and conditions prescribed when the original registered trademark was registered with the Registry, then such use cannot be considered as Infringement of Trademark.
Read our article:Trademark Renewal and Restoration in India
What are the Remedies available for Trademark Infringement?
There are two types of remedy available in case of Infringement of Trademark. The plaintiff has the option to initiate any one or both of the proceedings against the defendant. The two types of remedies are as follows:
The civil remedies in case of Infringement of Trademarks are as follows:
- Damages in the form of compensation will be provided to the owner of the registered trademark.
Account of Profits
- Damages in the form of profits gained from the products or services by Infringement of Trademark will be given.
Destruction of Goods
- The destruction or erasure of the goods and services can also be ordered for the Infringement of Trademark is done.
- The court can pass Ex parte or Interlocutory Injunction for the discovery of documents, restraining the defendant from disposing of any assets which can cause adverse effect to the plaintiff, preservation of infringing goods and services.
- An Injunction is an order which will restrict the further use of the infringing trademark.
- The court can order interim reliefs which can also include an order for:
- For search and seizure of infringing goods, preparation of inventory and account books, etc., the appointment of a local commissioner.
- To restrain the infringer from dealing with or disposing of assets, which can have an adverse effect on the plaintiff’s ability to recover costs and damages which will be awarded to the plaintiff.
Cost of Proceedings
- The court can order the defendant to bear the proceeding cost of the appellant.
The remedies dictated by the court to the infringer of trademark in case of criminal proceedings are as follows:
- With an Imprisonment for a period which should not be less than 6 months and can be extended to 3 years;
- With a fine which should not be less than 50,000 Rupees and which can be extended to 2 lakh Rupees.
What is the Procedure for obtaining Remedies of Trademark Infringement?
The Procedure under the Civil and Criminal Law is as follows:
Procedure under Civil Law
- A case under Section 134 of Trademark Act, 1999, can be filed in the District Court in case of Infringement of Trademark; the jurisdiction of the district court will be there where the head office of the plaintiff is situated or the place where the cause of action has arisen. For suit under Section 134 of Trademark Act, 1999, Section 20 of CPC does not apply to the filing of such a lawsuit.
- The court if thinks fit can pass the following order:
- An Injunction under Order XXXIX of CPC (Civil Procedure Code) or under Section 36-42 of Specific Relief Act, which will be restraining the further use of the infringing trademark.
- Damages or Accounts of Profits
- Destruction or erasure of infringing labels
Procedure Under Criminal Law
- An FIR can be filed under Section 154 of the CrPC (Criminal Procedure Code). In case the police officer refuses to file an FIR, the person can file a complaint under Section 156(3) of CrPC before the Magistrate.
- After the FIR is registered or an order is passed by Magistrate, an investigation will be initiated and conducted by a police officer. The investigation can include the seizure and search of the goods and services with infringed trademark.
- The benefit of criminal remedy in case of Infringement of Trademark is that the victim can initiate a proceeding against an unknown person also. Sometimes the identity of distributors and manufactures is not known to the victim, and this operates as an obstacle in filing a criminal complaint against the infringer of trademark. Section 93 and 94 of CrPC provides for the initiation of a seizure and search proceeding against an unknown person
The awareness to protect brand name through Registration is increasing day by day in India. The owners are still passive about the unauthorized use of the registered trademark of their products and services. The violations sometimes occur internally in the Company, which results in decreasing of the brand value of the product. The Trademark Registration is necessary for the products and services in order to save the Brand from Trademark Infringement.
The process of Trademark Registration is time-consuming and lengthy. We at Corpbiz have experienced professionals to help you in enabling Trademark Registration. Our team of professionals will guide you with the process of Trademark Registration. Our professionals will assure successful and timely completion of your work. We aim to provide quality services to our clients to strengthen our bond with clients instead of focusing on monetary benefits.
Read our article: Basic Definition of Trademark Registration, Objection and Assignment