The unauthorized use of a trademark or service mark refers to using a registered mark without permission, potentially causing confusion and legal consequences.
Trademark infringement takes place when an individual or entity uses a mark that closely resembles or matches a registered trademark, potentially misleading consumers about the origin of goods or services. This not only dilutes the brand’s distinctiveness but also invites legal action under Indian trademark law.
Trademark infringement arises when an unauthorized party uses a mark that closely resembles a registered trademark, misleading consumers about the true origin of the products and services. In India, this act is consider a legal offense under the Trademarks Act, 1999.
Key Elements of Trademark Infringement
Unauthorized use- The defendant must be using the trademark without permission.
Valid trademark ownership- ownership of a legally organized trademark, registered or not, is essential for filing a claim.
Similarity of Marks- The disputed mark closely resembles or is identical to the registered trademark, leading to potential confusion.
Similarity of goods and services- The similarity or connection between the goods and services increases the chances of consumer confusion.
Likelihood of confusion- There must be a high chance that customers could mistakenly believe the goods and services come from the trademark owner.
Commercial use- The unauthorized use must be in a commercial context.
Types of Trademark Infringement
Direct infringement
It is outlined under section 29 of the Trademark Act, which specifically defines what constitutes trademark infringement.
Used by an unauthorised person- Trademark infringement arises when a mark is use without the consent of the register trademark owner. It’s use with proper authorisation is not considered infringement.
Identical or deceptively similar- The unauthorised use of a trademark must be either the same as or misleadingly similar to the registered trademark, causing potential confusion. Here deceptively similar means that there a possibility of customer confusion, is a possibility, not a necessity.
Registered trademark- Only registered trademarks are protected under the Trademark Act. For unregistered trademarks, disputes are settled through passing off under common law, which protects the goodwill of a business.
Class of goods and services- Trademark infringement occurs only if the unauthorised use is for goods and services in the same class as the registered trademark.
Indirect infringement
Vicarious liability- Under section 114, if a company infringes a trademark, all responsible individuals can be held liable unless they acted in good faith and were unaware of the infringement. Various liability applies when a person can control, know about, or benefit from the infringing act.
Contributory infringement- Confringing infringement occurs when a person knows about the infringement, contributes to it, or encourages it. Unlike vicarious liability, there’s no good faith exception in such areas.
What are the grounds of infringement?
Identity with a registered mark- Infringement happens when an unregistered mark is the same as a registered one in the same category of goods and services.
Likelihood of confusion- If an unregistered mark closely resembles a registered one, it may lead to confusion among customers.
Similar to a mark with reputation- Infringement is proven if the unregistered mark looks similar to a well-known registered trademark.
Unauthorized use on labeling or packaging- The use of an unregistered mark on labels and packaging without permission is considered trademark infringement.
Unfair advantage in advertising- If a registered trademark is misused in advertising to damage its image or gain unfairly, it’s an infringement.
Exceptions to trademark infringement
Section 30 of the Trademark Act 1999 lists situations where using a registered trademark is not considered infringement. It is used as a defence in an infringement case.
Use of Indicating Characteristics- When a trademark is use only to refer to the type of kind, quantity, quality, geographical origin, value, time of production, and other characteristics.
Registration Limitations – Limitations on registration are referred to as cases where a trademark is register with certain conditions or restrictions, and using it outside those defined terms does not amount to infringement.
Authorized use by the registered user or proprietor – When a trademark is use in connection with goods and services linked to the trademark’s rightful owner or an authorized user, as opposed to an unauthorized party
Goods or services adaptation – In cases where a trademark is use for goods and services. which are intend to function as part of, or accessories for, other products, and the use is reasonably necessary.
Use of identical or similar trademark- If the legitimate owner uses a registered trademark that is identical or similar to another registered trademark, in line with the rights granted by the registration.
Defences against trademark infringement
Fair use- A defence against trademark infringement. This implies that the user either had authorization or did not intend to deceive customers. The two types of fair use are –
Descriptive fair use- This defence applies when the trademark is use to describe the nature or quality of the product, not as a brand identifier.
Nominative fair use- Using the mark to refer directly to the trademarked product and service.
Prior use- If an individual has use a trademark before it was officially register by another party, they retain the rights to it, particularly if they have establish a reputation associate with the mark.
Non-use by the registered owner- It occurs when the trademark has not use for a significant period, allowing the defendant to use it with a valid justification.
Delay and acquiescence- If the trademark owners take too long to act against infringement, they may lose the right to stop others from using the trademark.
Generic use- if a trademark becomes a common word for a product type, it loses protection.
Penalties and remedies for Trademark infringement
Civil remedies-
Injunction
Temporary injunction- The court stops the infringer from using the trademark until the case is over.
Permanent injunction- A final ban on the trademark use for the infringer after the court’s decision.
Damages
Actual damages- Money should be paid for the direct losses, like lost sales or earnings.
Additional damages- Extra compensation should be paid for things like damage to the brand name or reputation.
Account for profit- An order asking the infringer to reveal all the money they made by using the trademark.
Criminal remedies-
Imprisonment- A person found guilty of trademark infringement could face imprisonment lasting from 6 months to 3 years.
Fine- The infringer can be fined at least Rs. 50,000, with a fine up to Rs. 2,00,000.
Trademark Infringement Jurisdiction in India
Jurisdiction of Courts
The territorial jurisdiction in a trademark infringement case mainly depends on the place where the infringement has taken place. The location where the defendant operates and where the plaintiff has an address or does business.
While dealing with the Trade Marks Act, 1999, under section 13,4 the court in which the suit may be filed is the court within the local limits of the place. Where the plaintiff lives or runs their business, not where the defendant does.
Concurrent Jurisdiction
On occasions, there may be concurrent jurisdiction in which two or more courts are empower to try the trademark infringement case.
This may happen where the plaintiff and the defendant have their places of residence or business, or where the use of the infringing goods takes place, in different regions.
International Jurisdiction
Trademark infringement jurisdiction may also have international relations, especially in cases where the plaintiff as well as the defendant is from different nations.
Whereas, in such circumstances, the territoriality of the Indian judiciary can vary based on the closeness of the activities to India.
The Court also takes into account international agreements. such as the Paris Convention for the Protection of IP, when deciding on jurisdictional orders.
How to identify Trademark infringement
Analysis of trademark infringement includes the following key factors-
The trademark is similar to an already registered trademark.
Confusion is more likely if the infringing goods and services are similar to those under registered trademarks.
Marketing channels can impact the chance of customer confusion.
Highly distinctive trademarks get stronger legal protection.
Actual consumer confusion supports the infringement claim.
Options to track trademark infringement
Options to track trademark infringement are-
Social media monitoring
Online monitoring tools
E-commerce site monitoring
Customs and Border Protection records
Hire IP investigators
Website domain monitoring
What should I do if I suspect Trademark infringement?
Gather evidence- Collect proofs like images, products, ads, etc, that show unauthorized use of your trademark.
Verify your trademark rights- Ensure that your trademark is register and still valid.
Consult a trademark lawyer- Get legal advice from a trademark lawyer like A Star Legal Associates to get to know what to do further.
Send a cease and desist letter- The infringer will send a cease and desist letter to the infringer, asking him to stop using its trademark.
Monitor their response- If they comply, the issue solve. If not, then prepare a legal action.
File a lawsuit- If the infringer continues, legal action can be taken in court to pursue remedies like injunctions and financial compensation.
File a trademark infringement case
Consultation with a trademark lawyer- Take legal advice from a trademark lawyer to get clarity on your rights and understand the legal procedure involved.
Drafting the complaint- Write a well-structured complaint that explains the facts, mentions the trademark in question, the act of infringement, and the related legal provisions.
Filing the complaint- Submit the complaint in the court, either a district court or high court, depending on where the case falls under jurisdiction.
Sending a legal notice- Sending a legal notice to the infringer before initiating the lawsuit is often a useful legal step.
First hearing- During the first hearing, the judge goes through the case and issues a notice to the infringer, calling them for the next hearing.
Second hearing- Both the complainant and defendant present their evidence and arguments, after which a court may give a decision or schedule further proceedings.
Final judgement- The court delivers its final judgement, which can include remedies such as injunctions, awarding damages, or ordering the destruction of the infringing products.
Trademark Infringement Cost
Actual damages
Legal cost
Rebranding cost
Type of remedy sought, either civil or criminal remedy
Here we can see there are two trademarks one is of Starbucks and other is of Sardarbuksh Coffee & CO. Here both trademarks are similar to each other even the color combination is also the same, the Sardarbuksh Coffee & CO. has a turban man in between the trademark and wavy lines on the side, here the dispute occurs becuase both the trademarks looks similar, it can confuse people.
Starbucks was launch in 2001, and Starbucks asked the Sardarbuksh Coffee & CO. to change its logo. The Sardarbuksh changed its color combination to yellow and black, but the pattern looks similar, so the plaintiff filed a case in the High Court of delhi for trademark infringement. After the court hearing, won the case by Starbucks, and Sardarbuksh did not use the trademark.
Louis Vuitton vs Louis Viton Dak
Louis Vuitton is a fashion design brand, and Louis Vuiton Dak is a restaurant; both are internal brands. The names of both brands are similar here, the confusion can occur among people because both names sound the same. Here, Louis Vuitton filed a case of trademark infringement against the defendant for using a similar name. As Louis Vuitton was a well-known brand from an earlier time, the case was won by Louis Vuitton and ask the defendant to stop using its name. After that, the restaurant name was change from Louis Vuiton Dak to LOUIS VUITTON DAK.
Gems Bond vs James Bond
Here, we can see there are two types of gem packets. The Cadbury brand is a well-known brand in India. Here, the defendant created the same packaging and sold the same goods and products. The Cadbury Gems filed a case against the defendant for using the same mark and goods/products with the name James Gems. The packaging and products are similar to the Cadbury Gems brand. After that, the Gems Bond filed the case in the High Court, where the case was in their favour. And the court awarded 10 lakhs rupees to the plaintiff for the damages.
Role of Trademark Lawyers
Trademark lawyers advise on legal matters, detect infringement, and take action to protect the brand. They handle legal notices, negotiations, and represent clients in court if necessary.
How businesses can protect themselves from trademark infringement
Register your trademark legally.
Use the trademark properly.
Monitor the market, like regularly watching online platforms.
Use trademark watch services and Google Alerts to identify trademark infringers.
If you detect trademark infringement, take legal action.
Train employees on proper trademark use.
Include IP clauses in contracts.
Timely renew your trademark.
Trademark Infringement Consultants
A Star Legal Associates provides all types of services related to trademarks, Trademark infringement is one of them. So, if you are also facing problems related to trademark infringement in your business, then don’t waste time; directly consult.
Trademark infringement defines the authority by which a trademark case is brought and decided. Nowadays, where business operations are going global and internet activities are on the rise, the justification of trademark infringement jurisdiction becomes a rigorous legal exercise. In conclusion, businesses should be careful to prevent other parties from infringing on their trademarks and should know the legal procedures available to them.
FAQ
Who can sue for trademark infringement?
Trademark Owner
Where to file a trademark infringement case
A District Court
Can you sue for trademark infringement without registration
No,
Trademark infringement Section
Section 29 of the Trademark Act, 1999.
What are the limitations of trademark infringement
3 years from the date of publication.
How to stop the trademark infringement
Send a cease and desist letter to the defendant if they then also not stop using the trademark, then file a case in court.
What is the punishment for trademark infringement
Inprisonment of 6 months to 3 years.
A fine from 50000 to 2 lakhs.
When to send a cease and desist letter to the defendant
You need to send a cease and desist letter to the defendant when you find someone is using your trademark without your permission or has issued a trademark similar to your trademark.
