Trademark Infringement And Solutions
These days’ creative ideas and expressions are getting recognized enormously globally, especially after the concept of Intellectual property rights. Trademark Registration is a way to secure your mark under the Trademark Act,1999. Registration of trademark gives right to a person to have full control and an authority over the particular mark. If somebody use registered mark of someone else, it’s the matter of Trademark Infringement and for that an aggrieved person can take action against the person who is violating his mark.
To understand Trademark infringement, first, we need to know what a trademark is. A Trademark, according to section 2 (zb) of Trademarks Act 1999, is a mark used in relation to goods or service for the purpose of distinguishing it from one another. Trademark can be in the form of a logo, symbol, design or a word. It helps the purchaser to recognise the manufacturer or to know the quality of goods.
Meaning Of Trademark Infringement
A Trademark owner has the right to use himself or assign others the use of his Trademark. A registered trademark is deemed infringed by a person who, not being a registered proprietor or the registered user, uses in the course of his trade, a mark which is identical or deceptively similar in relation to the same goods or services in respect of which the Trademark is registered.
Essential Conditions Of Infringement
In order to constitute infringement, the following requirements must be fulfilled:
- Unauthorized access of someone else trademark;
- If, the trademark is either similar, identical or deceptively similar to the earlier registered Trademark;
- If someone else is using already registered trademark without the permission of the owner of trademark, then it is infringement of trademark;
- The use of the infringing Trademark must be printed or in the case of the usual representation of the mark in an advertisement. Mere oral use of Trademark is not considered infringement;
- Using either whole of the or an adopted one of the registered Trademark by making a few addition and alteration.
Test For Determining Infringement
In order to decide whether there has been an infringement of a Trademark or not, the likely impact of infringing of Trademark on purchaser is viewed. If the totality of impression of Trademark is likely to cause confusion or deception in the mind of the purchaser, it amounts to infringement. Confusion by a substantial proof is the main test to find out whether the infringing mark is deceptively similar to the infringed mark. The likelihood of confusion is sufficient, and there is no need to prove that actual confusion has been caused.
The test used to determine the infringement of a trademark by the courts is called the likelihood of confusion test. Following factors are considered by the courts while evaluating whether Trademark infringement has occurred:
- The similarity of the goods or services of Trademark holders to the alleged infringers;
- Strength of the Mark;
- The similarity of the alleged infringing mark to that of Trademark being infringed;
- The intention of the alleged infringers while choosing their mark;
- Evidence of confusion from the consumers;
- The extent of care exercised by customers while purchasing goods or services.
Common Forms Of Infringement
A Trademark can be infringed in different ways. Some commonly noticed forms of infringement are mentioned hereunder:-
- Using mark identical or similar to an existing trademark by an unauthorised person.
- A registered Trademark is also infringed when a person makes the unauthorised application of such Trademark to a material intended to be employed for labelling or packaging his goods.
- Taking substantial features of already registered Trademark which is in use amounts to infringement.
- Advertisement of registered Trademark of another for promotion of one’s trade also amounts to infringement.
- Use of a deceptively similar mark as to goods or services and as to trade origin, which results in confusion or deception in the mind of the buyer amounts to infringement.
- Unauthorised printing of label of registered Trademark would also mean infringement.
When Is Trademark Not Infringed?
As per Section 30(2), the use of a registered Trademark in the following manner would not amount to infringement:
- Use of the Trademark by any person for the purposes of identifying goods or services as those of proprietor provided the use is in accordance with the honest practice in industrial or commercial matters, and further, the use is not such to take unjust advantage of or to be detrimental to the unique character or repute of the Trademark;
- A registered Trademark is also not infringed where the use is in relation to goods or services indicating the kind, quality, quantity, intended purpose, value, etc.
- Where a mark is used outside the scope of registration-
- The use by a person of a Trademark in relation to goods associated in the course of business with the proprietor or a registered Trademark user if the registered proprietor/registered user conforming to the permitted use has applied for the Trademark and has not subsequently removed or obliterated it, or has not at any time expressly or impliedly consented to the use of the Trademark.
- The use of a registered Trademark, being one of two or more trademarks registered under this Act which are identical or resemble each other, in the exercise of the right to use of that Trademark given by registration under this Act.
- Where a registered Trademark is used by a person who has acquired it through assignment or is authorised under a licence, such use would not constitute infringement.
Solutions For Trademark Infringement
The Trademarks Act 1999 provides legal remedies/solutions in case of Trademark infringement. The remedies are of both Civil and Criminal nature. These include:-
- An aggrieved person can send Legal Notice for violation of trademark to the opposite party.
- By sending a Legal Notice for cease and desist, in most cases an aggrieved person get relief otherwise can proceed further.
- Granting injunction against the use of the mark by the court and appointment of a local commissioner for custody/sealing of infringing material and accounts;
- Handing over the accounts and profits;
- Awarding appropriate Damages;
- The order of injunction may include an ex-parte injunction or any interlocutory orders for any of the following matters –
- For the discovery of documents;
- Maintenance of infringing goods, documents or other evidence which are related to the subject matter of the suit;
- Restraining the defendant from disposing of or using his assets in a way which adversely affects the plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be awarded to the plaintiff.
- Criminal remedies include minimum imprisonment for six months and maximum of three years and fines ranging between 50,000 to two lakh rupees for falsifying and falsely applying for Trademark.
Limitation For Filing Suit
As per limitation act 1963, the period of limitation for filing suit for infringement of Trademark is three years starting from the date of infringement. Where the infringement is a continuing one, a new cause of action would arise every time an infringement occurs.
Where Can The Suit Be Filed?
The suit for infringement arising out of use by the defendant of any trademark which is identical or deceptively similar to the plaintiff’s Trademark shall be instituted in District Court having jurisdiction to try the suit under section 134 of the Trademark act 1999.
What Is Passing Off?
Passing off is a common law used to enforce unregistered Trademark rights. The object of this remedy is to protect the goodwill and reputation of a business from encroachment by dishonest competition.
Difference Between Passing Off And Infringement
- Registration of a Trademark is not a necessity for passing off, whereas it is necessary in case of infringement.
- Passing off is essentially a common-law remedy; infringement is a statutory remedy.
- Use of Trademark of the plaintiff by the defendant is not essential in action for passing off, but it is a sine qua non (essential condition) in case of infringement.
- The common field of activity is not required to be established in passing off, whereas the use of an offending mark on the same goods or services is required in infringement.
- M/S Castrol Limited & others .v. Iqbal Singh Chawla & others
Here, in this case, the Delhi high court passed the order in favour of Castrol limited and granted an injunction restraining Iqbal Singh Chawla from using the mark ACTIV or ACTIVE.
Note- The burden of proof of trademark infringement lies on the plaintiff. This was held by the apex court in Kaviraj Pandit Durga Dutt Sharma vs Navratna Pharmaceutical Laboratories. The court held that the plaintiff has to establish that the Trademark used by the defendant is deceptively similar to the Trademark of the plaintiff.
- The Coco-Cola Company vs Bisleri International Pvt. Ltd.
The defendant, Bisleri by an agreement, had sold and assigned the trademark “MAAZA” including formulation rights, intellectual property rights and goodwill for India with respect to a mango fruit drink known as MAAZA to Coco-Cola.
In 2008, the defendant company applied for registration of the mark “MAAZA” in Turkey and started exporting fruit drink under the name MAAZA. The plaintiff, “Coco-Cola” claimed permanent injunction and damages for infringement of Trademark and passing off.
The court after that granted an interim injunction against the defendant in this case from using the Trademark, i.e., “MAAZA” in India as well as for the purpose of export, which was an infringement of Trademark.
Infringement of Trademark attracts both Civil and Criminal Cases but for that Registration of Trademark is very necessary. It gives full right to file case against the person, whoever violates anyone trademark right.