DEFENSES AGAINST INFRINGEMENT OF TRADEMARKS

A trademark is a symbol that can differentiate between the products or services of one owner and those of other owners. Section 2(1)(m) of the Trade Mark Act 1999 specifies the 'mark' includes devices, brands, headings, logos, tickets, titles, signatures, words, letters, numbers, shapes of goods, packaging or colour variations, or any combination thereof.

Rights derived from trademark registration:

1. The exclusive right to use a trademark for the products or services named.
2. Right to restrict the use of the symbol by others.
3. Restriction of an exclusive privilege in the interest of the public.

Courts depend on market psychology to determine if a violation has occurred, and the following considerations are taken into account:

1. Strength of the mark
2. Proximity of the merchandise
3. Similarity between the markings
4. Evidence of real misunderstanding
5. Similarity between the channels of marketing used
6. The traditional buyer's degree of caution exercised
7. Purpose of the defendant

Know more about Benefits of Trademark in India. Watch this - 

DEFENCES AVAILABLE:

1. FAIR USE-

1. Classic Fair Use is when a brand of someone else is used to refer to the products or services of the customer. In other words, the brand often identifies a person, location, or feature of the products or services, the classic fair use protection enables the use of another's trademark in its primary descriptive sense. This typically happens when a trademark is descriptive, descriptive geographically, or is a personal name. In the pursuit of free competition, the doctrine of classic fair use tolerates some misunderstanding. The trademark proprietor must live with the consequence that others are free to use the word in its original, descriptive context by selecting a descriptive term.
2. Nominative Fair Use is when someone else's trademark is used to refer to the products or services of the trademark owner. This usage is called "nominative" since the owner of the label is "named" by it. As long as there is no risk of misunderstanding, the nominative fair use defence makes use of another's trademark. With comparative advertising, media attention, and independent stores, nominative fair use also occurs. The concept of nominative fair use originated because the market has a need to accept a trademark owner. Such usage is called "fair" since the trademark owner does not have any meaning of sponsorship or endorsement. With that in mind, where the defendant specifically used logo or stylized lettering, rather than merely the word mark, courts have more closely scrutinised nominative fair use arguments.

2. DOCTRINE OF LACHES- The Laches Doctrine stems from the idea that the Courts will not assist persons who sleep on their rights and will only assist those who are aware of their rights and are diligent. A group is said to be guilty of lache when, after a long pause in that respect, they come to the Court to claim their rights.

• Laches refers to the filing of a written petition with regard to procedural law, but unlike the law on limitations, there is no clear time after which a written petition is barred.
• The underlying principle is that, since the Court is to assist a person or group who is cautious and not indolent, the Court does not investigate stalled cases.
• The reasons for delay are widely accepted, if true and fair, because the Court does not deny petitions simply because of delay, but only if it is followed by other reasons.

3. DOCTRINE OF UNCLEAN HANDS- A fair protection that bars relief from a party engaged in unreasonable conduct (including fraud, deception, unconscionability or bad faith) relevant to the subject matter of the argument of that party. The doctrine of unclean hands is also known as the "clean hands doctrine" and the "dirty hands doctrine." The doctrine of unclean hands usually applies only to fair claims such as petitions for injunctive relief or particular performance, but some jurisdictions also allow it as a defence to legal claims.

While the doctrine of unclean hands is generally an affirmative defence argued by a defendant, a complainant may also claim it in opposition to an equal defence such as estoppel.

General unethical or dishonest action is not sufficient to justify the introduction of the doctrine of unclean hands. A party must show that its opponent has engaged in unreasonable conduct relevant to the subject matter of the litigation in order to prevail.

4. TRADEMARK OPPOSITION- 'Trademark opposition' means an objection lodged by a third party against the registration of a trademark within a span of 4 months after the advertising of the trademark. Any individual, whether natural or legal, may file an objection with the Registry. This includes any individual(s), corporation, partner company(s) and trust (s). Notably, no commercial interest in the matter or prior registered trademark in the Registry is needed of the person filing the opposition. Your trademark will be published in the Trademarks Journal after the examiner checks your trademark and finds that it passes for registration. The aim of publishing a Trademark in the Journal is to allow any third party to access the trademark and to object to it by filing a trade mark. Simply put, a trade mark objection against the registration of your trade mark is lodged by a third party.

If an opponent files an appeal, it will represent your trademark status as 'Opposed'.

5. MARKS IN DIFFERENT MARKETS- A difference in geographical position or a difference in the class of goods and services can be the difference in the sector in which the mark is used. However, this defence is not considered to be a successful one since it could obstruct the trademark owner's plans to extend the various goods or geographical locations to the market.

6. NON-USE OF TRADEMARK- A difference in geographical position or a difference in the class of goods and services can be the difference in the sector in which the mark is used. However, this defence is not considered to be a successful one since it could obstruct the trademark owner's plans to extend the various goods or geographical locations to the market. The responsibility of proving non-use lies with the concerned party, not with the owner of the trademark. Therefore, he would have the duty of proving the same if a defendant were to plead this defence. In the event of force majeure or any situation which is not due to the fault or error of the proprietor of the mark, the non-use of the trademark can be justified.

How to register your trademark in India, watch this - 

BY -ADITI GOEL.