A trademark is like an identification mark for any individual or company. It includes a name, word, number, symbol, or a combination applied to products or services of a company or individual to identify and distinguish the goods or services of one entity from others. It is pertinent to ensure trademark protection through registration under the Trademark Act 1999, to safeguard your brand against unauthorized use and exploitation by third parties.
Trademark infringement is using of a mark that is identical or deceptively similar to a registered trademark without authorization from the registered user.
In India, the Trade Marks Act 1999 governs trademark registration and its protection and is administered by the Office of the Controller General of Patents, Designs and Trademarks.
That the continued use of the registered trademark after being warned constitutes infringement. Those found to be infringing on another’s trademark can face legal consequences by way of filing:
Commercial Cases: The court may direct the offender to pay damages to the victim and/or destruction of all infringing products. Further, the Petitioner may request a Temporary injunction against the infringer, which halt their activity until the issue is resolved.
Understanding Trademark Infringement in India
Definition of trademark infringement under Indian law.
The definition of term “trade mark” is defined under Section 2(1)(zb) of the Act as a mark that is represented graphically and used to distinguish the goods and services provided by any person or company. It may include a symbol, signature, label, name, word, phrase, logo, design, image, color, shape of goods, packaging or a combination of these elements.
Two symbols are utilized to depict trademarks: ™ (the trademark symbol) and ® (the registered trademark symbol). While ™ is commonly used without the need for a complex legal procedure, trademark owners must register their trademark with the appropriate national authority in order to use ®.
Section 29 of the Act defines the Trademark Infringement as the unauthorised use of a trademark which may lead to confusion about the origin or authenticity of products or services. This unauthorized usage can mislead consumers and exploit the established reputation of the registered trademark. A Company may seek Consultation with a Trademark Lawyer to manage such issues.
Types of acts that constitute infringement
Direct Infringement
Section 29 of the Act defines Direct Infringement which covers the following elements:-
- Use by an unauthorised person: Trademark infringement happens when the mark is used by a person who is not authorised by the holder of the registered trademark.
- Identical or deceptively similar: The trademark used by the unauthorised person has to be either identical or deceptively similar to the registered trademark. In this context, the phrase ‘deceptively similar’ implies that an average consumer might mistakenly confuse the marks and perceive them as identical. The key word here is ‘may’ as it only needs to be established that there is a possibility and does not require evidence of the actual event. If there exists a possibility of misidentification of the marks, it is enough to establish infringement.
- Registered trademark: The Act protects the registered trademarks only that have been registered, which are duly registered with the trademark registry of India. In the case of breach of an unregistered mark, the principle of passing off is used to settle disputes. Passing off is a tort law that deals with situations where harm is caused to the reputation associated with the activities of another person or group.
- Class of goods or services: To constitute the infringement of the trademark, the mark used without authorisation has to be used for the endorsement of goods or services that fall under the same class of the registered trademark.
Indirect infringement
The Act does not contain any provisions that specifically address indirect infringement. This does not imply that indirect infringement is not subject to liability. Under Indirect Infringement, not only the principal infringer is held accountable, but also anyone who abets or induces infringement by a direct offender. There are two types of indirect infringement:
- Vicarious liability: Under Section 114 of the Act, any or all companies that commit trademark infringement are held liable. Therefore, not only the principal infringer but, every person responsible for the company will be liable for indirect infringement, except for a person who acted in good faith and without knowledge of the infringement.
- Contributory infringement: Contributory Infringement is any person intentionally providing, assistance, support, or contribution to the infringing activities of the direct infringer.
Pre-Filing Considerations for Trademark Infringement Case in India
Conducting a trademark search to assess infringement.
Trademark Registration and management is controlled in India by the Trade Marks Act 1999 and are administered by the Office of the Controller General of Patents, Designs and Trademarks(‘CGPDT’). An online trademark search database is available through the CGPDT website. Trademark search would avoid the infringement of applicable law(s), help in checking the availability of the trademark in order to avoid any duplicity, check proper trademark classification and every potential conflict can be avoided by conducting a meticulous search.
Steps to Check for a Trademark
- Access the website: https://ipindiaonline.gov.in.
- Click on the ‘trademarks’ tab and select ‘public search’.
- Choose a search criteria (Wordmark, Vienna code, or Phonetic) to proceed.
- Fill in all necessary details and click on the ‘search’ button.
- The search result will display the trademark status as registered, objected, or abandoned, aiding in the identification of the trademark.
Collecting evidence of infringement.
The evidence required varies depending on the situation, but the following items are typically useful:
- Labels/tags;
- Photos displaying the mark on goods;
- Packaging/storage or transport containers;
- Brochures, leaflets, price lists, etc.;
- Company letterhead;
- Invoices;
- Display devices;
- Photos of exhibition stands;
- Press publications/third-party opinions;
- Advertising extracts (print, online, TV, etc.);
- Photos of vehicles or company assets with the mark; and
- Website excerpts.
Properly gathering and securely storing evidence with accurate dates and detailed information is crucial. This evidence plays a vital role in supporting a trademark infringement claim.
Steps to File a Trademark Infringement Case in India
Step 1: Consultation with a Trademark Lawyer
An experienced trademark lawyer is essential to guide you through the challenging process of filing a trademark infringement case and securing suitable relief against the claim. When faced with trademark infringement, it’s crucial to connect with a trademark lawyer promptly to receive expert guidance on the best course of action and assistance with the demanding process of drafting and filing a complaint. Further, a legal notice is sent by the Trademark lawyer, which serves as a formal first step to address the issue of trademark infringement. It outlines the infringement, demands the infringer cease and desist, and outlines potential consequences. It helps the trademark owner prevent the exploitation of their distinguished mark.
Step 2: Drafting the Complaint
The petition shall consist of a Memo of parties, Synopsis, list of dates and all the details specified in the respective forms and shall be accompanied by the affidavit of the Petitioner. Further, all relevant documents in support of the relief sought in the petition are to be filed by the Parties. If interim orders are sought by the Petitioner, an application under Order XXXIX Rule 1 and Rule 2, Code of Civil Procedure, 1908 shall be filed setting out the grounds for such interim order. All Averments shall be made in the main petition specifying as to which of the documents filed form part of the record. The provisions of the Commercial Courts Act, 2015, Delhi High Court (Original Side) Rules, 2018 are applicable to main petitions.
Step 3: Filing the Complaint
In the process of filing court fees, it is essential to adhere to the relevant rules, which are determined based on the cost of the suit and the pecuniary jurisdiction of the court. The documentation required varies depending on the specifics of each case, as does the evidence needed. When initiating a suit, it is necessary to file an affidavit and relevant documents to substantiate the claim. It is advisable to seek the consultation of a trademark lawyer to ensure the relevance of the documents required for the proper hearing of the case.
Process for Trademark Infringement Case in India
A Suit for Infringement under Section 134 of the Trade Marks Act, 1999 can be instituted before a District Court/High Court as per the territorial and pecuniary jurisdiction of the Court. As per the Act, ‘Person’ includes the registered proprietor and the registered user.
Filing of Suit- Reply- Replication- Admission/ Denial – Framing of Issues – – Evidence/ Examination- – Final Arguments-Judgment.
Role of Trademark Lawyers in India
In a trademark infringement case, trademark lawyers in India plays a crucial role in assessing the case, handling legal documents, representing the plaintiff in court, negotiating settlements or licensing agreements, and providing guidance on enforcing court orders.
Case Studies and Examples
COCA COLA VS. BISLERI: One of the landmark judgments over the trademark ‘Maaza’, between Coca Cola and Bisleri, where Bisleri assigned its trademark Maaza to Coca Cola to sell and export products in and from India. Subsequently, Bisleri filed a trademark Application in Turkey. It was held that the trademark rights were entirely assigned to Coca Cola and Bisleri cannot use the trademark in or outside India.
STARBUCKS COFFEE V SARDARBUKSH COFFEE: Another Landmark judgment, between Starbucks & Sardarbuksh, wherein they have used ‘Sardar’ instead of ‘Star’, in such a deceptive way and on such a large scale that people believed they were part of the same brand. However, the Court allowed the Defendant the right to use the modified version of the Trademark Sardar Baksh to Sardarji Baksh and with liberty to the Defendant to sue the person who uses Baksh in future.
Conclusion
Trademark Infringement case in India may be settled by simply sending a legal notice to the Infringer. However, if that does not solve the issue, then the owner can initiate a suit for Infringement or file a Complaint with relevant authorities and can request direction for either interim or permanent injunction and cease & desist can be granted along with damages as compensation to the owner from the infringer. It is crucial to legally safeguard trademarks by proper registration to maintain the integrity of a company’s branding and reputation.
Secure Your Brand with MAHESHWARI & CO.
At MAHESHWARI & CO., our expert team of trademark lawyers in India is dedicated to protecting your brand from infringement and ensuring your intellectual property rights are fully safeguarded. With extensive experience in handling complex trademark infringement cases in India, we offer strategic legal solutions tailored to your specific needs. Whether you’re facing a trademark violation legal cction or seeking to enforce your trademark rights, we are here to provide comprehensive support every step of the way. Contact MAHESHWARI & CO. today for a consultation and let us help you navigate the complexities of trademark protection in India.
FAQs
1. What constitutes trademark infringement in India?
Trademark infringement case in India occurs when an unauthorized party uses a mark that is identical or deceptively similar to a registered trademark, leading to confusion among consumers regarding the origin of the goods or services. Trademark infringement in India involves the use of a trademark that creates confusion or deception about the source of a product or service. This can include the unauthorized use of logos, symbols, or brand names that are similar enough to a registered trademark to cause confusion among consumers.
2. How long does it take to resolve a trademark infringement case in India?
The duration to resolve a trademark infringement case in India can vary significantly depending on the complexity of the case, the workload of the courts, and the willingness of the parties to settle. On average, it may take anywhere from 18 months to 3 years to resolve a trademark dispute resolution through the court system. However, if the case is particularly complex or involves multiple parties, it may take even longer.
3. What are the costs involved in filing a trademark infringement case?
Filing a trademark infringement case in India involves several costs, including legal fees, court fees and expenses related to gathering evidence. The costs can vary depending on the complexity of the case and the litigation fees charged by trademark lawyers in India handling the case.
4. Can trademark disputes be settled outside of court in India?
Yes, trademark dispute resolution can often be achieved outside of court through mediation, arbitration, or negotiation. These alternative dispute resolution methods are encouraged as they are generally faster and less costly than going through the court system.
5. What should I do if I receive a notice of trademark infringement?
If you receive a notice of trademark infringement in India, it is crucial to act promptly and seek legal advice from experienced trademark lawyers in India. It’s advisable to respond to the notice within the stipulated time frame, either by negotiating a settlement or by preparing to defend your use of the trademark in court.
Author: Tarun Biswas, Partner
Co Author: Neha Buttan, Senior Associate
