TRADEMARK INFRINGEMENT: AN OVERVIEW By- Madhvi Patidar@lexcliq

I.INTRODUCTION

The Trademarks Act, 1999, is the legislation that protects trademarks in India. The Act lays down the rules dealing with registration, protection and penalties against infringement regarding trademarks. Trademarks are given the status of intellectual property across the globe. There are many organisations, both international and national, that endeavour to protect intellectual properties such as trademarks.

In India, the organisation that deals with the protection of trademarks are the Indian Patent Office administered by the Controller General of Patents, Designs and Trademarks. In simple words, trademark infringement is the unauthorised usage of a mark that is identical or deceptively similar to a registered trademark. The term deceptively similar here means that when an average consumer looks at the mark, it is likely to confuse him/her of the origin of the goods or services.

Section 29 of the Trade Marks Act describes “trademark infringement” as, ‘A registered trademark is infringed by a person who, not being a registered proprietor (owner of trademark can also be a legal entity like LLP or Company or Trust, etc.,) or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark.[1]’

 

II.TYPES OF TRADEMARK INFRINGEMENT

When looking into trademark infringement, one must know that are two types of infringement:

  1. Direct infringement

Direct infringement is defined by Section 29 of the Act. There a few elements that have to be met for a direct breach to occur; they are as follows:

  • Use by an unauthorised person: This means that violation of a trademark only happens when the mark is used by a person who is not authorised by the holder of the registered trademark. If the mark is used with the authorisation of the holder of the registered trademark, it does not constitute infringement.
  • Identical or deceptively similar: The trademark used by the unauthorised person needs to either be identical to that of the registered trademark or deceptively similar to it. The term ‘deceptively similar’ here only means that the common consumer ‘may’ be confused between the marks and may think of them being the same. The operational word here being ‘may’, it only needs to be proven that this is a possibility and does not require proof of actually happening. As long as there is a chance of misrecognition of the marks, it is enough for proving infringement.
  • Registered trademark: The Act only extends protection to trademarks that have been registered with the trademark registry of India. In the case of breach of an unregistered mark, the common law of passing off is used to settle disputes. It is a tort law that is used where injury or damage is caused to the goodwill associated with the activities of another person or group of persons.
  • Class of goods or services: For the infringement of the trademark, the unauthorised use of the mark has to be used for the propagation of goods or services that fall under the same class of the registered trademark.
  1. Indirect infringement

Unlike direct infringement, there is no provision in the Act that deals with indirect infringement specifically. This does not mean that there is no liability for indirect infringement. The principle and application of indirect infringement arise from the universal law principle. It holds accountable not only the principal infringer but also anyone that abets, induces that direct offender to infringe. There are two types of indirect infringement:

  • Vicarious liability: According to Section 114 of the Act, if a company commits an offence under this Act, then the whole company will be liable. Therefore, not only the principal infringer but, every person responsible for the company will be liable for indirect infringement, except for a person who acted in good faith and without knowledge of the infringement. The elements for vicarious liability are: – When the person can control the activities of the principal infringer – When the person knows of the infringement and contributes to it – When the person may derive financial gains from the infringement the only exception to vicarious liability of a company for infringement is when the company has acted in good faith and had no idea about the infringement.
  • Contributory infringement: There are only three basic elements to contributory infringement: – When the person knows of the infringement – When the person materially contributes to the direct infringement – When the person induces the principal infringer to commit infringement in the case of contributory infringement, there is no exception as there exists no chance of the contributory infringer to act in good faith.

 

III.PENALTIES FOR TRADEMARK INFRINGEMENT

In India, the infringement of a trademark is a cognisable offence which means that the infringer may also face criminal charges along with civil charges. It is also not required by the Indian law for the trademark to be registered for the institution of civil or criminal proceedings. As mentioned before this is due to the common law principle of passing off. In the case of trademark infringement, the court may award the following remedies:

  1. Temporary injunction
  2. Permanent injunction
  3. Damages
  4. Account of profits (damages in the amount of the profits gained from the infringement)
  5. Destruction of goods using the infringing mark
  6. Cost of legal proceedings

In the case of a criminal proceeding, the court dictates the following punishment:

  1. Imprisonment for a period not less than six months that may extend to three years
  2. A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh.

 

IV.CASE LAWS

  • COCA COLA VS BISLERI [2]

Who is going to take the “MAAZA”?Well, it is mandatory to mention the famous case of coca cola and bisleri over the trademark Maaza where Bisleri assigned its trademark Maaza to Coca Cola to sell and export products in and from India and immediately after, filed a trademark Application in Turkey. It was held that the rights over the trademark were completely assigned to Coca Cola and Bisleri cannot use the trademark in or outside India.

  • WHATMAN INTERNATIONAL LTD V. P MEHTA AND OTHERS [3]

Wait… How much does a Filter paper Cost?

The famous Indian case where Whatman received a gigantic compensation of 3.85 crores from the Defendant, who traded upon its goodwill and caused damages to various intellectual property rights of Plaintiff in the last 25 years. This was the most trending case where the true value of trademark was realized and the counterfeited filter papers which were the exact copy of Plaintiff’s Filter paper sold under various trademarks by the Defendant and his acts of malafide intentions was permanently stayed.

  • ICC DEVELOPMENT (INTERNATIONAL) LTD V ARVEE ENTERPRISES [4]

Who won the World Cup?

This is one of the 2 cases related to Ambush Marketing (trend where Advertising is done through ambushing the event to compete for exposure) in India till date. Here the Plaintiff had the Registration for “ICC CRICKET WORLD CUP SOUTH AFRICA 2003” and logo and the mascot “Dazzler” in India and worldwide and chose to file a suit to stop the Defendant who was advertising as ‘Philips: Diwali Manao World Cup Jao’ and ‘Buy a Philips Audio System, win a ticket to World Cup’. It was held by the Court that World Cup is a generic word and the Defendant has not used the Plaintiff’s Logo or Mascot ‘Dazzler’, neither is the Event of World Cup protected by any International Treaty or Domestic Law, therefore the advertising campaign offering tickets of the Event cannot be held unlawful.

  • STARBUCKS COFFEE V SARDARBUKSH COFFEE [5]

How many Bucks for coffee?

A funny yet interesting case where the famous Starbucks became the victim of smart minds of Indian Infringers where the man used Sardar instead of Star yet in such a deceptive way and on such a large scale that people were made to believe they belong to the same owner. However, the Court allowed the Defendant the right to use the modified version of the Trademark Sardar Baksh to Sardarji Baksh and also gave Defendant the chance to Defendant to sue the person who uses Baksh in future.

 

V.CONCLUSION

Trademark Infringement is the issue of the moment and has attracted with it the laws related not only to Intellectual Property but also Tech Laws, Media Laws, Sports Laws, Marketing Laws etc. The Trademark Legal framework has to be a combination of National and International Laws and shall work in consonance with Trans-border Laws where the Judgments from various countries being used as citations shall act as a guide towards framing a new legal structure in India.

 

 

References-

[1] https://www.indiafilings.com/learn/trademark-infringement-in-india/

[2] https://indiankanoon.org/doc/109517976/

[3] https://indiankanoon.org/doc/131756857/

[4] https://indiankanoon.org/doc/358048/

[5] https://www.mondaq.com/india/trademark/785334/true-brew-starbucks-corporation-v-sardarbuksh-coffee-co

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