Defences available against Infringement of Trademark

Introduction

A trademark is a sign equipped for recognizing the goods or services of one enterprise from those of other enterprises.[1]

Section 2(1) (m) of the Trade Mark Act, 1999: "mark" incorporates a device, brand, heading, label, ticket, name, signature, word, letters, numerals, bundling or combination of colors or any thereof.

Trademark Infringement

Brand name encroachment is the unapproved use of trademark or administration stamp on or with respect to items and additionally benefits in a manner that is going to cause confusion, trickiness, or oversight about the wellspring of the product. A trademark proprietor who accepts its imprint is being encroached may file a civil action (i.e., claim) in either state court or government court for brand name encroachment, depending upon the conditions. In most cases, by and large, brand name proprietors choose to sue for infringement in federal court. Section 29 of the Trademark Act, 1999 explains trademark infringement. [2]

The norm for brand name encroachment is "probability for confusion".[3] Courts depend on consumer psychology for deciding if there has been an encroachment and the following elements are considered:

Available Defences against Infringement-

1. Fair Use- To plead this defence, the accused infringer should prove that he had acquired the assent of brand name proprietor or establish that he acted without any intention to defraud consumers of the goods. It is of two types-

• Descriptive- a situation where an imprint has been utilized in good faith, principally for a descriptive reason so as to refer to a particular mark or item.
• Nominative- a situation where a mark is joined so as to refer to the registered owner's item and not for the client's item. For this defense, given elements to be satisfied-

1. The product or service isn't recognizable without the imprint,
2. The imprint was used distinctly to a reasonable extent to encourage its recognizable proof,
3. The use doesn't dishonestly propose endorsement or sponsorship by the trademark proprietor.

2. Prior use- The defendant can take this defence, where he has been using the mark for a longer duration of time comparing with the registered client and has increased a reputation in the trade concerned. It is also pleaded where the defendant has not renewed previously registered trademark but has continued to conduct business under a similar mark.
3. No confusion or difference in essential feature- The distinction between the two trademarks being referred to is similarly as important as the likenesses between them when settling on encroachment of brand name. Considering same, the court considers phonetic similarity but also whether two marks vary in their basic features. In the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd,[4] it was held that two marks were distinctive in basic features and would not be a reason for confusion.
4. Marks used in different market- this defence is not considered to be good one since it could hinder the plans of brand name proprietor to venture into a market of various items or to various geological areas. In the case of Milmet Oftho Industries and Ors. v. Allergan Inc,[5] it was held that multinational companies have no right to claim exclusivity of the trademark if they did not enter or intend in a reasonable time to enter into business in India.
5. Non-use of the mark by the registered proprietor- Unused brand names fills no monetary need and goes about as a counterfeit obstruction to the registration of new mark.[6] The trademark may be used by a third party with the assent of the proprietor through a license or a formalized agreement. Burden of proving non-use is on the interested party, not on the brand name owner. Therefore, to plead this defense, defendant has the burden of proving the same.
6. Delay and Acquiescence- where there has been a delay in bringing action of the encroachment by the plaintiff it is decided that the plaintiff has postponed his rights as the brand name owner and implicitly or explicitly allowed use of its mark by the subsequent client. Acquiescence would add up to waiver, if not abandonment, of their rights. In the case of Khoday India Ltd v. The Scotch Whisky Association and ors,[7] it was held that acquiescence, so as to be ground to deny amendment, must be of such character as to build up gross negligence with respect to the applicant.
7. Parody- where the utilization isn't totally for a business reason, the court permits parody. In the case of Tata Sons Ltd v. Greenpeace International and Greenpeace India,[8] it was held that the reasonable remark, ridicule or parody of a registered brand name can be made if the intention of the maker is to draw attention to some activity of the owner of the brand name.
8. Invalidity of registered mark- In case of brand name encroachment, the defendant may argue that the registered mark of the plaintiff itself is invalid. The defence would succeed where the defence is able to set up that the registration has occurred so that it makes an unreasonable advantage for the plaintiff. In the case of Vishnudas Trading as Vishnudas Kishandas v. Vazir Sultan Tobacco Ltd.,[9] Hyderabad and Ors, the Supreme Court held that manufacturer dealing in one or more articles fall under the broad classification of goods and services, without bona fide intention to use mark, should not be allowed to enjoy monopoly over entire category of goods or services.

By-

ANKITA MISHRA