All about Trademark Infringement in India

With technological advancement, trademark has become a form of a word. The number of trademark registrations is increasing with awareness about intellectual property rights. Trademark infringement attracts a lot of legal consequences and liability.

Here in this article, we will discuss about trademark, the importance of trademark in the industry, trademark infringement, ingredients of trademark infringement and the effects of infringement of trademark in India.

Trademark

Trademark is a unique expression which relates to the product or service that distinguishes it from the others.  Moreover, this expression can be a word, logo, graphics or any other combination. In India, most businesses look for registration of logo or name only.  The only way to protect your trademark is to get the trademark registration under The Trademark Act, 1999. Furthermore, the main purpose behind it is to help people to distinguish it from other goods which are manufactured.

Protect your business with Trademark Registration

Starting up a brand is no cakewalk. Therefore, to make sure we enjoy exclusive ownership over the brand name or logo and for restricting others usage we should register our trademark.

Significance of Trademark Registration

Trademark Infringement

If there is unauthorized use of trademark it is called infringement of trademark. Thereafter, the trademark owner has the right to file suit and collect money damages for the wrongful use.

The infringement of trademark cases will only succeed if there is a likelihood of any confusion. Additionally, if the marks are similar enough to mislead customers and they share the same market, it will come under trademark infringement.

Above all, Trademark represents the brand. This is why we should ensure there is no infringement as it causes loss of finances to the owner of the Trademark. It is always better to take precautions and be vigilant and protect our trademark.

Trademark Infringement under Indian Law

The Trademark Act, 1999 talks about trademark infringement in section 29. An unauthorized use of an identical or deceptively similar trademark for similar goods and service is trademark infringement.

Circumstances under which Trademark Infringement occurs

Situations under which there is trademark infringement-

• If the mark is identical or deceptively similar and dealing with similar services or goods.
• Moreover, if similar marks confuse the customers.
• If the similarity of the trademark causes unfair advantage or harms the reputation of the registered trademark.
• Finally, if there is the usage of similar packaging or labelling without due authorization.

The burden of proof of trademark infringement

The Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories held that the burden of proof for trademark infringement is on the plaintiff. Furthermore, the Plaintiff has to establish that the trademark used by the defendant is deceptively similar to the trademark of the plaintiff dealing with similar goods for which they are already registered.

Method to establish similarity between two trademarks

In Atlas Cycle Industries Ltd. v. Hind Cycles Limited, the Delhi High Court extensively decided on the question of how will the plaintiff establish that the defendant’s mark is identical or resembles the plaintiffs.

The Court additionally stated that, in matters of trademark infringement, the plaintiff is entitled to establish that the trademark is identical and resembles the trademark of the plaintiff and it could deceive the customers and cause confusion.

Jurisdiction for instituting a suit for Trademark Infringement

Section 134 of the Trademarks Act, 1999 provides the jurisdiction for filing a suit for infringement. We can file suit in the District Court within within which we reside or carry our business or personally work for gain.

Prescribed Punishment for Trademark Infringement

• Section 103 of the Trademark Infringement Act, 1999 states the punishment for falsification of the trademark. Punishment should not be from six months to three years and with a fine between fifty thousand rupees to two lakh rupees.

Effect of Trademark Infringement

The person infringing the trademark may take undue advantage of the hard-earned reputation of the trademark which is registered.

Remedies available for Trademark Infringement

• Civil and criminal remedy is available.
• It is a cognizable offence under the Trademark Act, 1999. Police complaint can be filed in this, and the Courts are empowered to suo moto conduct raids and seizure operations.

As per the Limitation Act, 1963, the period for limitation is three years from the infringement. But as a matter of fact there is no time limit prescribed if the infringement is a continuing offence as new cause of action arises every time infringement occurs.

Trademark Infringement Remedies

Conditions where there is no Trademark Infringement

Section 30 of the Trademark Act, 1999 state about situations which don’t amount to trademark infringement.

Further, it states if one uses the trademark diligently, usage is outside the scope of registration, or the trademark is not used for undue advantage, or if there is an implied consent by the original proprietor for the usage then we cannot say that it is infringement.

Besides the conditions which don’t fall under trademark infringement are as follows-

• If the usage is outside the scope of registration.
• If there is implied consent by the original proprietor for the usage.
• Use of a trademark in relation to the parts and accessories.
• Usage of an identical or similar trademark.

Passing Off

The concept of passing off has emerged in the recent past to protect the unregistered trademark. It prevents people from misrepresenting its goods and services from the other parties.

There are three ingredients of passing off popularly known as the classical trinity. These include Reputation, Misrepresentation and damage to goodwill.

Characteristics of passing off

The Court looks into Passing off case.Additionally, the Court looks into the issue of nature of mark and goods, degree of resemblance misrepresentation, similarities in nature etc.

• Misrepresentation
• Harming business and goodwill of other person
• To attract prospective consumers
• It causes actual damage to the original proprietor

Conclusion

With technological advancement, the need to protect our intellectual property is a must. We see trademarks all around us. Trademark registration comes under the Trademark Act, 1999. Legal consequences for trademark infringement come under this. It creates a comprehensive framework for the protection of trademark. Most importantly, the Act states the remedies and stringent provisions for trademark infringement punishment.

For more information on trademark registration and infringement, contact our team of experts at LawyerINC.