A trademark is capable of distinguishing the goods or services of one person from that of another when used in trade and it is used for protecting the name of the product or service. Section 2 (z) (b) of ‘The Trade Marks Act, 1999’ defines a trademark as under:
“Trademark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours 1.
What is Trademark Infringement?
Trademark infringement is the unauthorized use of a trademark, a substantially similar mark or slogan on competing or related goods and services. Infringement can only be done in case of a registered trademark. It is an infringement of exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees. Holding a trademark signifies a company’s claim over the design and it represents the goodwill of a business or brand. Trademark infringement is the unauthorized taking away that goodwill to convey and fraudulently claim a trademark. A trademark is capable of distinguishing the goods or service of one person from that of another when used in trade and it is used for protecting the name of the product or service, hence trademark infringement is a fraudulent representation of the said capability to add value to products. Trademark infringement leads to confusion, deception, or a misunderstanding about the actual company from where a product or service came. The main exponent of trademark infringement is whether the accused’s use caused a likelihood of confusion in the average customer. Most common causes of trademark infringement include using closely or deceptively similar brand names or logos for associated goods and services and using a mark that creates false impression or confusion with the registered trademark.
What amounts to Trademark infringement in India (Ingredients)
Laws related to a trademark are contained in and dealt by The Trademark act, 1999. Section 29 of the same act deals with the trademark infringement i.e. when it will amount to trademark infringement?
1. Registered Trademark
Registered trademark means a distinctive mark or symbol i.e. logo, slogan, word, taste etc., to which a person/company/business is holding the right of ownership by fulfilling all the legal requirements under The Trademark act, 1999. Infringement can only be said if a trademark is registered and there cannot be any action against unregistered trademark’s infringement generally (common law tort of ‘passing off’ is an exception). Even a registered trademark can constitute trademark infringement when its use is concerning those goods or services which are not similar to those for which the trademark is registered.
2. Use in the course of trade
Trademark shall be used in the management of business or trade to constitute trademark infringement. Noncommercial use of a trademark where no gain to the person using it and no loss to the brand or monetary value of the company/business is caused will not constitute trademark infringement.
3. Identity and Similarity
Mark, logo, slogan etc., used shall be identical to the original trademark to constitute trademark infringement.
4. Confusion in the mind of consumers
Product or service should create confusion in the minds of consumers. Confusion doesn’t mean that consumers shouldn’t know trademark infringement. Even when the consumer is aware that a product/service is copycat but he/she is going for that product because of the similar appearance and fake brand value attached to the product ( and copycat products are available at a cheaper price, unavailability of the original product during that period or any other convenience), it will amount to trademark infringement. The only requirement under this head is that confusion created in the minds of consumers is likely to have an association with the registered trademark.
5. Unfair advantages
Unfair advantage or illegal gain means earning something by using the name, resource etc., of another company/business. When a trademark is used by the person who is not authorized to use it and such use in any manner gives him some profit (either monetary or favour in the market), it will amount to trademark infringement. Unfair advantage can be gained by a person by using a registered trademark as his trade name or part of his trade name.
6. Use for Packaging or labelling
Using a trademark for packaging or labelling of products is a prima facie act of unauthorized use. It shows the intention of the infringer and any such act will constitute trademark infringement.
7. Import and export of goods under the mark
Importing and exporting products under a registered mark trust the purchaser/seller of the company whose trademark it carries. Hence all unauthorized acts of import and export under the mark of an already registered trademark will constitute trademark infringement.
Kinds of Trademark Infringement
For a consumer, a trademark reflects the source and quality of the goods or services. It shows a customer from where a good came and how much he can trust in that particular product relying on the brand value attached to it. It means the trademark shows the goodwill and brand value of a business or company. Trademark infringement is to be regarded as an attack on the goodwill and brand value of the company. Trademark infringement can be done either indirectly or directly:
1. Indirect trademark infringement
It is also known as secondary liability. It is a common law principle which holds a person accountable for inducing direct infringer to infringe. A person committing indirect infringement can be made liable contributory or vicariously. In contributory infringement, a person will be held liable if he knows the infringement and materially contributed towards inducement. Vicarious liability is generally applied in the case of an employer-employee relationship.
2. Direct Infringement
Direct infringement of a trademark includes producing, selling (attempting to sell), or importing a product by using an already registered trademark in an unauthorized manner or by the person who does not have the authorization of using it.
Civil remedies to infringement of the trademark
Two types of remedies are available to the owner of the product/service in case of unauthorized use of trademarks (trademark infringement) i.e. civil and criminal. Civil remedies available in case of trademark infringement are as under:
The action of an injunction means stopping one person from doing a particular activity or task by the due process of law (judicial proceedings). In the matter of trademark infringement, it is a restriction on a person from unauthorized use of the trademark. The court can pass an injunction order to prevent a person from further using a trademark. If proceedings are going on and it doesn’t become clear whether there is trademark infringement or not, in that case, the court can pass a temporal order to stay the use of the trademark by the accused.
Damages refer to monetary compensation awarded to the person who suffered any wrongful loss because of the act of another person. Recovery of damages is the objective of most civil litigation 2. An order awarding damages for trademark infringement can also be passed by the court. Court generally awards such compensation which will be more than the loss suffered by the person.
3. Destruction and sealing of material
In the case of trademark infringement, the court is vested with the power to appoint a local commissioner for sealing of infringing material and account. The court may direct such local commissions to destroy infringing material wholly. The court may also ask the infringer to deliver all the goods or products which are labelled with the trademark in question before a court of law.
4. Measure for recovery of reputation
The court may direct the infringer to take measure to restore the reputation of the company/business which suffered because of him. This can be achieved through an apology in advertisements or by giving a statement which brings back the faith of the public in the company or business whose trademark was infringed.
Criminal remedies to infringement of the trademark
Trademark infringement is a cognizable offence under The Trademark act, 1999, and police are empowered to file a First Information Report (F.I.R.)and start an investigation.
1. Limitation Period
Trademark infringement is a continuing offence so there is no limit on the period for filing a suit.
Jurisdiction for a suit of infringement is decided in line with the provisions prescribed under section 134 of The Trademarks act, 1999. No suit for the infringement of trademark can be filled in any court which is inferior to the district court. The trademark owner can file a suit in the district court falling within the local limits under and which have jurisdiction to try the suit.
Landmark Judgments of Trademark Infringement
Below mentioned are the two landmark judgments of trademark infringement.
1. Yahoo! Inc. V. Akash Arora & Anr.
In this case, the court held that the disclaimer is not sufficient in case of trademark infringement because the nature of the internet is such that the use of a similar domain name cannot be rectified by a disclaimer.
2. Milmet of the Industries & ors V. Allergan Inc.
It was held in this case that in the fields of healthcare and medicine, all possibilities of deception and confusion should be prevented.
1. The Trade Marks Act, 1999.
Ritik Kumar hails from Aligarh Muslim University and spends most of his leisure time watching documentaries and playing tennis. His Interest areas are International Law and Commercial Law. For any clarifications, feedback, and advice, you can reach us at firstname.lastname@example.org