Trademark infringement in Court

 In India, trademark infringement cases are increasing as businesses prioritize brand identity and consumers rely heavily on brand recognition. Proving trademark infringement in court is crucial for maintaining a company’s brand image and avoiding customer confusion. This article explains the steps involved in proving trademark infringement in India, covering legal provisions, burden of proof, and the essential evidence required.

Introduction to Trademark Infringement

A trademark is any symbol, word, phrase, or design that identifies and distinguishes the goods or services of one business from another. In India, the Trade Marks Act of 1999 governs the registration, protection, and enforcement of trademarks. Trademark infringement occurs when there is unauthorized use of a mark that is identical or deceptively similar to a registered trademark, leading to confusion among consumers regarding the origin of goods or services.

Key Elements of Trademark Infringement

To succeed in proving trademark infringement in court, the following elements are essential:

1. Existence of a Registered Trademark 

   - A claim of infringement can only be brought if the mark in question is registered under the       Trade Marks Act, 1999. 

   - The plaintiff must prove that the trademark registration is valid, effective, and within its renewal period, as an expired trademark cannot be enforced.

2. Use of an Identical or Deceptively Similar Mark 

   - The infringing mark should be identical or similar to the registered mark.

   - The court evaluates the similarity in visual appearance, phonetic sound, meaning, and overall impression the mark gives to an average consumer.

3. Unauthorized Use in the Course of Trade 

   - Infringement requires unauthorized use of the registered mark in the marketplace. The defendant’s use of the mark must be in a business context.

4. Likelihood of Confusion

   - The court examines whether the public is likely to be confused about the source or affiliation of the goods or services due to the similarity of the marks.

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Steps to Prove Trademark Infringement in Court

·         Step 1: Establish Ownership of the Trademark

The plaintiff must provide evidence of ownership, typically through trademark registration documents, including the “Certificate of Registration” issued by the Controller General of Patents, Designs, and Trademarks in India. This serves as a primary proof of ownership and the exclusive rights granted to the trademark owner.

- Documents Needed: Certificate of registration, renewal certificates, proof of first use, any additional evidence to establish ownership.

·         Step 2: Show Unauthorized Use by the Defendant

The plaintiff must demonstrate that the defendant has used the trademark without permission. This can be shown through physical or digital samples of the infringing products, advertisements, or packaging that display the defendant’s use of the trademark. Evidence from online platforms, such as screenshots of the infringing mark on e-commerce sites, can also be crucial.

- Documents Needed: Product samples, screenshots, advertising materials, and any other materials showing unauthorized use.

·         Step 3: Prove Similarity Between Marks

The court will assess the degree of similarity between the plaintiff’s registered trademark and the infringing mark. This involves:

1. Phonetic Similarity: If the words sound alike.

2. Visual Similarity: If the logos, fonts, or designs are closely alike.

3. Conceptual Similarity: If the meaning conveyed by the marks is similar.

To prove similarity, plaintiffs may submit expert reports, graphical representations, or side-by-side comparisons of the two marks.

- Documents Needed: Expert analysis, visual comparisons, or phonetic analysis if applicable.

·         Step 4: Show Likelihood of Consumer Confusion

Proving likelihood of confusion is often challenging as it relies on the perception of an “average consumer.” Courts assess the possibility of confusion based on several factors:

- Market Segment: Are the goods or services aimed at the same customer base?

- Advertising Channels: Do the parties use the same platforms to market their goods?

- Proximity of Goods/Services: Are the goods or services related in any way?

The plaintiff may use market surveys, testimonials from consumers, or expert opinions to show that consumers are likely to be confused by the similarity.

- Documents Needed: Market survey reports, customer affidavits, consumer complaint records, expert opinions.

·         Step 5: Evidence of Damages or Potential Harm

While proving harm is not always necessary, it strengthens the case. Plaintiffs can submit evidence that shows a negative impact on their business due to the defendant’s use of the mark, which may include:

- Loss of Sales: Showing a decrease in revenue since the infringement began.

- Damage to Reputation: Evidence that the public associates the inferior quality of the defendant’s products with the plaintiff’s brand.

Such evidence helps in quantifying damages for compensation or injunction.

- Documents Needed: Financial records, sales reports, customer feedback, and reputation analysis.

Legal Defences Against Trademark Infringement

Defendants in a trademark infringement case may use several defences, including:

1. Prior Use of the Mark

   - The defendant may claim they used the trademark before the plaintiff registered it, particularly if their usage is recognized under Indian law’s “honest concurrent use” provision.

2. Fair Use 

   - Fair use allows for certain uses of a trademark for descriptive or nominative purposes, especially in comparative advertising.

3. No Likelihood of Confusion 

   - The defendant might argue that the mark is distinguishable or that there is no chance of consumer confusion due to the differences between the marks or products.

4. Invalidity of Registration

   - A defendant may challenge the validity of the trademark registration, arguing that it should never have been registered due to lack of distinctiveness.

Remedies Available in Trademark Infringement Cases

If the plaintiff successfully proves trademark infringement, the court may grant several remedies:

1. Injunction 

   - The court may order a temporary or permanent injunction, stopping the defendant from using the infringing mark.

2. Damages or Account of Profits 

   - The plaintiff may be awarded financial compensation based on the loss suffered or the profits earned by the defendant through infringement.

3. Delivery-Up for Destruction 

   - The court can order the defendant to surrender all infringing goods, packaging, and promotional materials for destruction.

4. Cost of Litigation 

   - The plaintiff may also be awarded the costs incurred during litigation.

Case Laws Illustrating Trademark Infringement in India

Understanding case precedents helps in grasping the application of trademark law in India. Below are some landmark cases related to trademark infringement:

1.     Mangalam Organics Ltd vs Patanjali Ayurved Ltd on 29 July, 2024

·        Background: Mangalam Organics claimed trademark and copyright infringement against Patanjali Ayurved, alleging that Patanjali's camphor product mimicked Mangalam’s unique cone-shaped packaging.

·        Initial Injunction: On August 30, 2023, the Bombay High Court issued an ex-parte interim injunction against Patanjali, prohibiting further production or sale of the infringing product and appointing a Court Receiver to seize these items.

·        Alleged Violation by Patanjali: Despite the court’s order, Patanjali continued to sell the disputed product, leading Mangalam to file a contempt application alleging wilful disobedience.

·        Patanjali’s Response: Patanjali admitted to the breach, submitted an apology, and claimed it was unintentional. They also reported sales of the infringing product worth Rs. 49,57,861, though Mangalam argued this figure was underestimated.

·        Court’s Decision: The court, noting Patanjali’s persistent non-compliance, required Patanjali to deposit Rs. 50,00,000 as a penalty and set the matter for further hearing on July 19, 2024, while extending the injunction in Mangalam’s favour.

2.     Lego Juris A/S vs Gurumukh Singh

·         The Madras High Court recently canceled the trademark registration of Hyderabad-based Leo Foods for its products "Lego Cuteheart" and "Lego Coffybond," ruling in favour of the toy company Lego. Justice PB Balaji found that Leo Foods had almost identically adopted Lego's distinctive mark, including its style and colour, with no satisfactory explanation, indicating dishonest intent. Lego, founded in the 1930s and registered in India since 1967, argued that its global reputation and goodwill qualified it for protection across all classes of goods, as stipulated under Section 11(2) of the Trademarks Act. The company claimed Leo Foods had infringed upon its mark by using "Lego" on confectionery items, even though Lego had no confectionery products itself.

·         Leo Foods defended its use of “Lego,” asserting that it combined “LE” and “GO” from Hindi, meaning "take and leave," and argued that it had conducted a thorough search in the trademark registry for confectionary traders, finding no conflict. Leo Foods further argued that it used the mark only in Hyderabad and Telangana, whereas Lego primarily operated in major cities.

·         The court, however, found that Lego's mark was well-known, entitling it to protection regardless of the product class. It held that Leo Foods' search limited to confectionery traders showed a mala fide intent, as they should have been aware of Lego’s global presence. The court emphasized that both companies’ target audience—children—could easily be misled, assuming the confectionery to be Lego-affiliated. Consequently, the court directed the removal of Leo Foods' "Lego" trademarks from the registry, ruling that Lego’s brand was protected from unauthorized use that could damage its reputation and distinctiveness.

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Conclusion: Key Takeaways for Proving Trademark Infringement in India

·         Proving trademark infringement requires careful documentation, including valid registration of the trademark, evidence of unauthorized use, similarity between marks, and likelihood of consumer confusion. Legal representation and a strategic presentation of evidence are critical for a successful outcome. By following the steps and understanding the necessary legal grounds, businesses can better protect their brands in the competitive Indian market.

·         In both Mangalam Organics Ltd vs Patanjali Ayurved Ltd and Lego Juris A/S vs Gurumukh Singh, courts underscored the importance of protecting trademark rights and addressing trademark infringement with a view to maintain brand integrity and safeguard consumer interests. These rulings highlight the judiciary's dedication to enforcing intellectual property laws, especially where well-known brands are at risk of dilution or misrepresentation. For companies operating in India, these cases serve as a powerful reminder to respect established trademarks and adhere to court orders, as non-compliance can lead to severe penalties. By championing established brands' rights across diverse product categories, these decisions illustrate the evolving landscape of trademark law in India, where consumer perception and brand reputation remain pivotal in infringement rulings.