A trademark infringement is unauthorized use of the registered trademark for goods and services such that it is likely to cause confusion.
It is done either to damage the reputation of a registered trademark, take undue advantage with dishonest intention or intention to unlawfully use it.
Trademark Infringement has been expressly stated in Section 29 of the Trademarks Act, 1999 which defines that- usage of a particular mark, by an unauthorised/authorised individual who is not the rightful owner of the mark or the registered proprietor, which is deceptively similar or identical to the goods and services of the registered trademark. The similarity between the two marks which provide similar goods and services can create confusion in the minds of a reasonable man. The rights vested in a registered trademark is exclusively catered to the registered owner and will lead to violation of exclusive rights if not used without proper trademark search or prior permission of the owners.
The essentials of proving whether there has been an infringement or not are to assess whether certain elements of the registered trademark has been adopted by the infringer, in his trademark.
Factors such as- infringers trademark being deceptive similarity or identical to a registered trademark, which is likely to create confusion in the minds of the public will be regarded as infringement.
The Supreme Court in the case of Parle Products Ltd v JP and Co stated that in order to determine whether one mark was deceptively similar to the other, the courts would require to place both the marks side to side to assess any difference between both and also look at factors which might confuse the public regarding both the trademarks.
DIFFERENT TYPES OF BRAND INFRINGEMENT
- Clear copying of brands – the products use same marks for the similar products
- Lookalike products- The basic elements like design, color scheme, arranging pattern, shape and size are copied.
- Use of a Well-known mark – The well-known mark is copied for a new category of product/ not similar to take advantage of the reputation and confuse consumers such that the dubious brand earns heavily.
- Use of a brand name as a corporate or trade man- This is to create a false perception that there exists a relation between the original trademark and the other company’s mark.
- Comparative Advertising – the holder of trademark has the exclusive right over his trademark but the advertiser in order to make their product appear better/superior or as good as uses the trademark of associated products.
CONSEQUENCES FOR TRADEMARK INFRINGEMENT
If the Trademark is registered and the company fails to file an opposition within the allocated period, they shall be provided with an opportunity to file a Trademark Infringement suit which can be both a Civil/Criminal proceeding against the company which has infringed their Trademark. The grounds for filing a Trademark Infringement suit in India are covered under Section 29 of Indian Trademarks Act, 1999.
The grounds for filing an infringement suit are as follows when the trade is being carried in a similar class and the trademark is identical or deceptively similar so as to cause confusion amongst the public if the trademark is of nature as to cause confusion amongst the public regarding the source and ownership of the product.
A trademark infringement suit can also be filed if the products are dealt under different classes if the former is a well know trademark and has an established reputation in a certain geographical area. A trademark is deemed to be infringed if the infringing party uses a similar logo while dealing with other parties under the deceptively similar logo which is capable of causing confusion to a reasonable human. A trademark is considered to be infringed if the infringer who intends to apply such a trademark for packaging, advertising his own products and reaping profits out of the brand value of the registered trademark. Thus in short if any use of a mark which is detrimental to the interest of a registered trademark holder and results in the unfair advantage of such an infringer which is unethical in business, any mark which is devoid of any distinctive character and is blatantly similar to an existing mark and is capable of harming the reputation of registered marks come under the ambit of Trademark Infringement. There are both Civil and Criminal remedies available against such infringement.
REMEDIES FOR TRADEMARK INFRINGEMENT
An infringement suit can be filed only by the holder of a registered Trademark and in case of an unregistered mark, the aggrieved party can resort to common law remedy of passing off, the provisions related to Trademark infringement has been covered under Section 29 and 30 and the remedies can be either of civil or criminal remedies depending upon the requirement of the parties.
The company as seen above builds a reputation in the market through its incessant consistency and quality which eventually renders them a brand value and reputation for them in the market. The customer base of such a brand value expects a certain quality of goods or service from the company and any compromise with such quality may directly harm the brand reputation of the company and maybe prove to be in the detrimental interest of the trademark holder. His exclusive right over the usage of the trademark is also been violated by the infringer, hence in such case, the Trademark holder has a right to be entitled to a certain sum of damage calculating the probable loss of goodwill of the brand and exploiting his exclusive trademark.
2) CLAIM IN PROFITS:
The Trademark holder is entitled to receive all the profits which the infringer earned by such misrepresentation which resulted in an undue advantage for the infringer who reaped in profits exploiting the brand value of the trademark holder.
The Court in a civil proceeding under Order 39 Rule 1 and 2 can pass an injunction order against the alleged infringer’s mark barring him from using the same. The injunction shall be of two types, the first one being a permanent or perpetual injunction wherein the infringer shall not be permitted to use the logo ever after in the future and the other one is a temporary injunction which shall be in force until the decision is rendered in the case by the tribunal, this is passed to ensure that the trademark holder does not suffer any loss due to the exploitation of his trademark by the other party during the course of the trial.
These are primarily the civil remedies available in a trademark infringement case.
CRIMINAL LAW REMEDIES:
Though criminal remedies are not generally opted by the parties and are invoked only in certain cases where the party is unable to satisfy the civil remedies, there is usually initiation of criminal enforcement. There are certain provisions in the Indian Trademarks Act, 1999 which deals with criminal law aspects of fine and imprisonment in case of infringement of a trademark. The provisions are as follows:
1) Section 103 of the Indian Trademark Act, 1999:
This provision states that any person is found in violation of using a registered trademark resulting in the infringement of exclusive use of trademark rights of the owner shall be punished for an imprisonment of 6 months which shall be extended up to a maximum period of 3 years.
2) Section 104 of the Indian Trademarks Act, 1999:
This provision deals with the fine amount payable if a person if found guilty of a trademark infringement. The provision prescribes a fine amount of Rs. 50000 which can be increased up to the amount of Rs. 200000 as per the circumstance and requirement of every individual case.
3) Section 105 of the Indian Trademark Act, 1999:
This provision provides that if a person is found guilty of infringing trademarks for the second time or is a repeated offender, then the punishment both in terms of imprisonment and the fine amount shall be increased so that it shall be deterrent for people who infringe such trademark.
It can be noticed that the Act is determined in protecting the rights of a registered Trademark holder and is thrived at punishing an infringer with mala fide intention to curb the amount of such infringement.
Thus, when the trademark is infringed either a civil action or a criminal action can be taken against the infringer provided it is filed in the competent jurisdiction and for a successful proof of infringement the court directs the following orders:
1. Permanent Injunction/ prohibition on the use of the trademark
2. Compensation for damages and cost of legal proceedings
3. Transferring accounts and profit.
4. Appointing a local commissioner for the seizure of goods, cease on exports or being disposed of.
5. Ex-parte Injunction
Trademark Infrigement Case Study
1. Louis Vuitton v. Louis Vuitton dak
2. Zara Foods v Zara Fashion