Defenses Available against Infringement of Trademark

According to the Section 2(1)(m) of the Trade Mark Act, 1999: “mark” includes a device, brand, heading, label, ticket, name, signature, word, letters, numerals, shape of goods, packaging or combination of colours or any combination thereof.

If you are or will become a business person, knowledge of trademark basics will be extremely valuable. A trademark serves two functions. First, it is an indication that all goods identified by the mark come from or are sponsored by the same source. Second, the mark is a guarantee of the uniform quality of the goods it identifies.

Trademark infringement

Section 29 of the Trademarks Act, 1999 describes trademark infringement. According to it, “a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to the goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark”.

Defences available for trademark infringement are 

1 Fair use

The classic fair use defense concerns the good faith use of a mark for is primary (descriptive) meaning, rather than its secondary meaning (which is when consumers associate a particular term or mark with a particular product provider or brand).  

2 Nominative fair use 

The nominative fair use defense protects your ability to use a trademark to refer to a trademark owner or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising. Courts impose three requirements on defendants who want to take advantage of the nominative fair use defense: 
(1) The trademark owner, product, or service in question must not be readily identifiable without use of the trademark; 
(2) The defendant must use only as much of the mark as is necessary to identify the trademark owner, product, or service; and 
(3) The defendant must do nothing that would suggest sponsorship or endorsement by the trademark owner. 

Coca-Cola may compare it’s product to Pepsi, and a local news station can report on things like an event being held at a Starbucks. 

3 Descriptive fair use

This refers to a situation where a mark has been used in good faith, primarily for a descriptive purpose rather than in order to refer to a specific mark or product.
Descriptive fair use permits use of another’s trademark to describe the user’s products or services, rather than as a trademark to indicate the source of the products or services. 
An example of descriptive trademark fair use is the use of the mark PIN in Pinterest Inc v Pintrips Inc. The court held that the PINTRIPS and PIN marks used by Pintrips did not infringe Pinterest's PIN and PINTEREST registered trademarks because the defendant's use of the PIN mark was descriptive of a feature of the service, that is the ability to pin locations on a map, not as a mark.  The court further stated that the availability of alternatives for the term “pin” for tagging locations on a map did not make the defendant's use of the mark less descriptive.

4 Prior Use

The rights of the prior user of the mark will override the subsequent user even if the subsequent user has registered the trademark. This allows a defendant to take up this defence where the defendant has been using the mark for a longer duration of time as compared to the registered user and has gained a reputation in the trade concerned.
Case M/s R.J. Components and Shafts v. M/s Deepak Industries Ltd7,

The defendant had not registered the trademark but the court ruled in the favor of defendant. 

What are the fundamental requirements for the acknowledgment of "Prior Use"?

Acknowledgement of "Prior Use" constitutes the following:

(1) the use of a mark identical or nearly resembling the registered mark, by a third person, must be in relation to the goods and services for which the first-mentioned mark is registered;
(2) the use must be a continuous use of the trademark in India;
(3) the trademark must be used by the proprietor in order to avail the protection;
(4) the mark must have been used from a date prior to the use of the registered trademark or the date of registration whichever is earlier.

5 Non-use of the Mark by the Registered Proprietor

Unused trademarks serve no economic purpose and act as an artificial barrier to the registration of new mark. If a mark is unused by a registered proprietor from a so long time then it can be a good defense
In the case of Munish Kumar Singla Trading (Chakshu Food Products) v. Jollibee Foods Corporation which was discussed above, the defendant had not been using the trademark registered by them even after twelve years of registration. This is also a case of unjustified non-use of trademark.. 

6 Delay and Acquiescence

In the case where there has been a delay in bringing action of the infringement by the plaintiff it is often ruled that the plaintiff has waived his rights as the trademark owner. If it comes to the knowledge of the plaintiff that his trademark has been used by someone else then he must take action against it. If the plaintiff does not take action for a long period then the has waived his rights as the trademark owner. 

Case Khoday India Ltd v. The Scotch Whisky Association

7 The invalidity of Registered Mark

In the case of trademark infringement, the defendant may argue that the registered mark of the plaintiff itself is invalid.

Trademark Infringement Remedies

1 Monetary compensation.
2 injunction
3 Court-ordered forfeiture or destruction of the infringing goods
4 Payment of plaintiff’s attorneys’ fees.