TRADEMARK INFRINGEMENT AND ITS REMEDIES

Introduction

A trademark is a unique symbol, word, or phrase used by a company or other legal entity to distinguish their product from that of another business and identify their product. To protect the brand name and value, the Trademark Act was established in 1999, granting the trademark owner exclusive rights to use the mark and preventing unlicensed individuals from doing so. As a result, both the logo and name can be registered as trademarks under the Act of 1999.

Trademark Infringement

The Trademark Act of 1999 safeguards Indian trademarks. According to the act, trademark infringement is the violation of exclusive rights claimed by the registered owner. In simpler terms, it occurs when someone uses a brand without the owner’s authorization. If the infringement occurs, the owner can file a lawsuit against the violator. In case the trademark is registered, the demand can be made on the grounds of common law, misrepresentation, and unfair commercial practices. It is the responsibility of the owner or plaintiff to prove the infringement in court.

However, certain conditions are not considered trademark infringement under the Trademark Act. If someone has a license from the registered trademark owner, it is not considered an infringement because the license is granted under an assignment agreement. Still, if the licensee uses the trademark for goods and services not covered by the assignment agreement, the usage can be considered unlawful.

Types of Trademark Infringement

A trademark is a symbol that indicates to a consumer the source and quality of goods or services. It helps the buyer to identify where a product comes from and how reliable it is based on the trust associated with the brand. The trademark represents the goodwill and brand value of a company or business. Any infringement against a company's trademark should be considered an attack on its reputation and brand value. Both direct and indirect trademark infringements are possible.

Direct Infringement

Utilizing a registered brand unlawfully or without authorization through production, sale, or importation is direct trademark infringement.

Indirect Infringement

According to a common law principle, if someone causes a direct infringer to infringe, they are held liable. If a person commits indirect infringement, they may be held accountable either vicariously or contributory. Contributory infringement occurs when a person is aware of the infringement and materially contributes to the inducement. In the case of an employer-employee relationship, vicarious liability is often applied.

Ingredients of Trademark Infringement:

Identical or Deceptively Similar

Trademark infringement occurs when someone uses a registered trademark without permission, and that use is either “identical” or “deceptively similar” to the registered trademark. The term “deceptively similar” means that the average person may not be able to tell the difference between the two trademarks and might mistake them for being from the same brand. To prove trademark infringement, it is sufficient to show that there is a possibility of misrepresentation of the trademark. This kind of infringement can cause conflict, as it confuses the public when a similar mark is used.

Unauthorised Use of Trademark

Trademark infringement occurs when an unauthorized person uses a registered trademark without the owner's permission. However, if a mark or logo is used with permission from the authorized person, it is not considered infringement.

Registered Trademark

To receive protection for a trademark, it must be registered with the Indian trademark registration. If an unregistered trademark is infringed upon, the basic principle of passing off can be used to resolve the dispute.

Confusion in The Mind of Consumer

Products and services need to be unique and avoid trademark infringement. However, sometimes similar products or services may confuse consumers into thinking they are the same as a registered trademark. This confusion can happen even if the client knows the product is not authentic, but chooses it anyway due to convenience or a lower price. In such cases, the trademark is still being infringed upon if the confusion in the minds of consumers is linked to the registered trademark.

Unfair Advantages

The terms "unfair advantage" or "illegal gain" refer to the act of making money by using the name, resources, or other assets of another company or business. When someone who is not authorized to use a trademark does so in any way that benefits them (either financially or in terms of market position), it is considered trademark infringement. This can happen when a person uses a registered trademark as their trade name or as part of their trade name, giving them an unfair advantage.

Remedies for Infringement of Trademark

If a trademark owner wants to take legal action against an infringer, there are two types of remedies available to them: Civil and Criminal. Depending on the jurisdiction, the trademark owner may file a Civil remedy action in the District Court. The following Civil remedies are available for trademark infringement: -

Injunction –An injunction is a court order that prohibits an individual from engaging in certain conduct. In the case of trademark infringement, it prohibits the use of the trademark without permission. There are two types of injunctions: temporary and permanent.

Temporary injunctions are issued when a court does not have to decide whether there has been an infringement or not. In such cases, the court might issue a temporary order for a certain period until the final decision is made.

On the other hand, a permanent injunction is a court's final decision, which is permanent and is based on the lawsuit.

Damages– The registered owner of a trademark can receive compensation for damages incurred due to trademark infringement. Such damages can include recovering the monetary value or brand injury caused by the infringement. The court may award damages after evaluating the actual and anticipated loss suffered by the owner as a result of the infringement.

Criminal Remedy

Trademark infringement is a serious violation under trademark legislation, and the police have the authority to file a complaint and initiate an investigation. It is important to note that trademark infringement is a continuous offence, which means that there is no time limit for filing a lawsuit.

According to the Trademark Act, the jurisdiction in which a complaint about infringement against an infringer may be filed is specified. To file an infringement lawsuit, the trademark owner must approach the district court located within the local jurisdiction where the owner carries on or resides in trade and business activities.

Conclusion:

Trademark infringement is a significant threat to the value of a brand. The Trademark Act of 1999 in India offers legal protection to owners and remedies for infringement. To establish trademark infringement, certain key elements must be proven. Remedies fall into two main categories: civil and criminal. Owners should be vigilant, monitoring the market for potential infringements, and taking swift legal action when necessary. The Act aims to foster a business environment where intellectual property rights are respected.