Intellectual Property RightsTrademark In IndiaTrademark Infringement – Know Your Rights

INTRODUCTION

A trademark is depicted as a symbol, a label, sign or a design in order to represent a product by the manufacturer or the brand and it helps customers distinguish the products or services of one company from that of the other companies.

With a trademark, marketing products or services by method becomes considerably easier since product recognition is secured and made easy. The trademark owner has the right to prohibit anyone else from using his trademark or symbol without his prior consent.

Besides being an integral part of a company or brand’s goodwill, a trademark is a tool that can help a company bring in revenues. The customers are more persuaded by a unique trademark that is a depiction of the product and the brand . A logo, a visual mark, or a slogan can all be trademarks.

Trade mark infringement is an unauthorized usage of a trademark that is identical or, deceptively similar to a registered trademark. Such infringement is likely to cause confusion amongst the like-minded persons and can result in huge losses for the trademark owner.

LEGAL FRAMEWORK OF TRADEMARK IN INDIA

There was no trademark legislation in India prior to 1940. A number of trademark infringement problems occurred, which were settled under Section 54 of the Specific Relief Act of 1877, and registration was adjudicated under the Indian Registration Act of 1908.

Soon after, the Trade and Merchandise Marks Act of 1958 was enacted to improve trademark protection and prevent the misuse or fraudulent use of trademarks on products.

Moving forward, the Government of India replaced the Trade and Merchandise Marks Act, 1958 with the Trade Marks Act, 1999 (“the Act”) in order to comply with the World Trade Organization’s (“WTO”) Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) mandate.

The Act’s objective is to provide legal protection to trademark owners and provide remedies for the infringement of trademark rights. The Act provides penalties for trademark infringement which includes imprisonment and/or fine.

Types of Trademarks

1. Service Marks

A service mark is any mark that is used to identify and distinguish the services of one provider from those of another. Service marks do not cover material goods but only the allocation of services.

2. Collective Marks

Employees, members of a collaborative association, or any other group or organisation use a collective mark to identify the source of products or services. A collective mark is a mark that is used for a collection of organisations with similar qualities, as well as for goods and services.

3. Certification Marks

A certificate mark verifies or confirms the particular attributes of products or services with which it is associated.

4. Trade dress

Trade dress refers to characteristics of a product’s visual appearance, such as the design or shape which is used in the package of the products or services.

REGISTRATION OF A TRADEMARK

Any person claiming to be the owner of a trademark or claiming to be the owner of a trademark that he intends to use in the future may submit an application to the Trademark Registry (“Registry”).  The process of trademark registration is as follows:

1. Trademark Search

The first and foremost step is to choose a unique trademark for one’s brand. It is really important to choose a trademark which captures the essence of the services or products supplied by the company. In order to negate the chances of potential trademark disputes or opposition while registration, the companies should conduct thorough research before finalizing the trademark.

2. Filing

After ensuring that the chosen trademark is not already registered in the Registry, the company or brand can file for registering the same. Filing for trademark can be done both physically and online. However, in the light of the Covid-19 pandemic, e-filing is a usually more preferable.

3. Examination

Once the trademark application is filed in the Registry, the same is duly examined for any discrepancies. The entire process of examination might take around 12-18months and during the examination, the examiner might accept the trademark absolutely, conditionally or object to the same.

If the trademark is accepted, then it is published in the Trademark Journal. If otherwise, the trademark owner would be given a month’s time to fulfil the requirements or provide response to the objections raised by the examiner.

4. Publication

Once the trademark is published, anyone who has any objection regarding the trademark can raise an opposition. If after 3 or 4 months, no opposition is raised, the trademark is registered. On the contrary, if there is any opposition, the Registrar provides a fair chance of hearing.

5. Registration Certificate

After the trademark is published in the Trademark Journal and is registered, a registration certificate is issued.

6. Renewal of Trademark

The term of a trademark registration is ten years, after which it is subject to renewal.

Grounds for Refusal of Trademark

Absolute grounds for refusal – The absolute grounds for refusal is stipulated under Section 9 of the Act. A trademark shall be subject to absolute rejection in the event of the following:

1. It is deceptive in nature and causes confusion in the minds of the public.
2. Hurting religious sentiments.
3. The mark is obscene, scandalous or prohibited in nature.
4. A mark which does not possess any novel or distinctive character.
5. Trademarks which outline the shape of goods which is necessary to obtain a technical result.
6. Marks of shape which gives substantial value to the goods.
7. If the usage of the said trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Relative grounds for refusal – Section 11 of the Act, provides relative grounds for the refusal of registration of a trademark, which are as the follows:

1. A trademark cannot be registered if there is a likelihood of confusion due to its identity with an earlier brand and resemblance of products or services, or its likeness to an earlier trade mark and similarity of goods.
2. In case the previous trademark with which the trademark bears resemblance is well recognised in India, it must be registered for products and services that are not identical to those for which an earlier trademark is registered.

INFRINGEMENT OF TRADEMARK

In India, trademarks are protected under the Act.  The Act lays down the rules dealing with registration, protection and protection against infringement of trademarks. Besides the Act, there are several international and national organisations that seek to safeguard Intellectual Property (“IP”) such as trademarks.

Types of Trademark Infringement

Section 29 of the Act defines infringement of registered trademarks as to when a trademark is not used being used by the intended or registered proprietor or when a mark which is identical or deceptively similar to a registered trademark is being used for products or services in a manner that it creates confusion in the minds of the customers.

1. Direct Infringement

Use by an unauthorised person: Only the trademark owner has the right to use the trademark or provide a license to someone to use the trademark. In the event the trademark is used without the due knowledge or consent of the trademark owner, the same amounts to direct infringement of the trademark.

Identical or deceptively similar: Any mark which is identical or deceptively similar to that of a registered trademark is likely to create confusion or affect the goodwill of the registered trademark. Therefore, owner of any such mark which is identical or deceptively similar to that of a registered trademark will be liable for trademark infringement.

2. Indirect Infringement

There is no particular provision in the Act dealing with indirect infringement. Indirect infringement takes place when the infringement is facilitated by someone else. Indirect infringement includes any type of infringement wherein one person induces the other person to infringe a trademark by encouraging or intentionally assisting him to do so.

Vicarious liability: Under Section 114 of the Act, if a firm commits a breach of the Act, the entire company is accountable. As a result, everyone accountable for the firm, not only the lead offender, will be liable for indirect infringement

Contributory infringement: Contributory infringement is made up of only three elements. When the person is aware of the infringement – When the person contributes meaningfully to the direct infringement – When the person persuades the major infringer to conduct the infringement. There is no exemption in the situation of contributory infringement since the contributing infringer has no prospect of acting in good faith.

RIGHTS AND REMEDIES OF A TRADEMARK OWNER

Rights of an Unregistered Trademark holder/owner

An unregistered trademark does not entail any legal benefits but are usually subject to common law benefits. The owner of an unregistered trademark may be able to prevent infringement of the trademark pursuant to the common law tort of passing off.

Passing off is based on the principle that ‘a man may not sell his own goods under the pretence that they are the goods of another man’. The owner of the trademark shall need to prove the following essential ingredients in order to prove passing off:

1. he has established goodwill in his trademark;
2. the infringer’s action amounts to misrepresentation and is bound to cause confusion in the minds of the customers;
3. the claimant has suffered or is likely to incur harm as a result of the defendant’s action.

Rights of a Registered Trademark holder/owner

Right to Assign- The registered trademark owner shall have the power to transfer the trademark and to issue effective receipts for any consideration provided for such assignment, according to Section 37 of the Act.

Right to statutory remedy against Infringement- The registered owner of a trademark shall be entitled to legal remedies under the Act if the trademark is infringed upon. By filing a lawsuit against the suspected infringement, the owner may be able to get an injunction as well as damages or an account of profits.

Right to exclusive use – Registration of a trademark provides the trademark owner an exclusive right over the said trademark. Post registration, only the registered trademark owner has the exclusive right to use or assign the trademark.

Remedies available for Trademark Infringement

The remedies available for trademark infringement can be broadly classified into two segments- Civil Remedies and Criminal Remedies.

Civil Remedies

Civil remedies for trademark injunction include Injunction, Ex-Parte Injunction, Damages, followed by measures of recovery of reputation, destruction/sealing of the materials, etc.

1. Injunction

In the event of trademark infringement, an order of injunction can be passed by the Court restricting the Defendant from the unauthorized use of the trademark. The relief broadly granted by the Courts in case of trademark infringement is injunction, interim injunction or ex-parte injunction.

2. Damages

Damages refer to the monetary compensation awarded to the trademark owner who suffered wrongful loss because of the infringement. Such an order awarding damages can be passed by a Court after trademark infringement is duly proven.

3. Measures for recovery of reputation, destruction or dealing of the materials, etc.

In addition to the above, the Court may further direct the infringer to restore the reputation and goodwill of the brand/business by providing public apology. The Court is also vested with the power to appoint a Commissioner for sealing or destroying the products which bears the label of the impugned trademark.

Criminal Remedies

Section 102 – 109 of the Act enumerates the civil remedies available for registration or registered trademarks.  Criminal remedies for falsely applying for trademarks, providing false descriptions, selling goods with false trademarks, false representation, etc., are all punishable by imprisonment, fine or both under the Act.

AMLEGALS REMARKS

In this age of Internet, infringement of any IP is very widespread in nature. The trademark owners need to be aware of the use of their trademarks across all jurisdictions and protect the same around the globe.

Trademark owners should know the rights that they are entitled to and seek for remedies at the earliest in the event of any infringement. With the growth of the market and the increase in the goods being produced, availing trademark registration for safeguarding the business/brand’s goodwill is of utmost importance.

Trademark infringement usually leads to a negative impact on the brand’s reputation and goodwill, which should be negated at all times. As discussed above, the process of trademark registration is a fairly efficient and quick process and the trademark owners to should follow the procedure for registration of their trademarks. Businesses and companies should treat IP as one of their most valuable assets.

Even though the common law provides protection to unregistered trademarks, it is always advised to get the trademark registered in order to avail all the civil remedies. Therefore, it is important that one understands the value of a brand and safeguard it at the earliest.

-Team AMLEGALS assisted by Ms. Darshi Shah (Intern)