Any word, phrase, symbol, design, or combination of these that differentiates your products or services could be considered a trademark. Customers use their registered trademarks to distinguish them from their competitors in the business world. The terms “trademark” and “service mark” are interchangeable. A service mark is used for services, while a trademark is used for goods. These are used to protect the brand from infringement. Trademark infringement is a serious offence in India, and the punishment for trademark infringement can include fines, imprisonment, or both, depending on the severity of the violation.
A Trademark:
- Identifies the origin of your products or services.
- Helps protect against fraud and counterfeiting.
- Provides legal protection for your trademark.
Let’s get to know the types of trademark infringement and their implications.
Types Of Trademark Infringement In India
There are two types of Trademark Infringement in India:
Direct Infringement
Section 29 of the Trademark Act describes direct infringement. For a direct trademark infringement, the following circumstances must be satisfied:
- Use By An Unauthorised Person: Any use of a trademark that is not authorised or approved by the registered trademark holder indicates a violation of the provisions of the law. Trademark infringement is not committed when an identity is used with the owner’s consent, considering it a registered trademark.
- Identical Or Deceptively Similar: The trademark being used by the unauthorised party must be identical to or confusingly similar to the trademark of the registered party. ‘Deceptively similar’ refers to the possibility that the average consumer may confuse the marks and believe they are from the same company. It is sufficient proof of trademark violation as long as there is a possibility of trademark infringement.
- Registered Trademark: Only trademarks that have been protected by the Trademark Act are the ones officially registered with the Trademark Registry of India. The common law of passing off could be applied to resolve disputes when an unauthorised mark is infringed. The tort known as passing off may be enforced when harm or damage is done to the goodwill associated with the actions of any other person.
- Class Of Goods & Services: For trademark infringement, the unauthorised use must be for promoting goods and services belonging to the same class as any registered trademarks.
Indirect Infringement
In contrast to direct infringement, the Trademark Act does not specifically address indirect infringement. However, this does not imply that there is no legal liability for trademark infringement that occurs indirectly. There are two distinct categories of indirect infringement:
- Vicarious Liability: According to Section 114 of the Trademark Act, the entire business will be held responsible for indirect infringement if any business owner violates this provision of the law. However, individuals who acted in good faith and were unaware of the violation will not be held accountable for trademark infringement.
- Contributory Infringement: Contributory infringement has three primary components, which are as follows:
- The individual is aware of the trademark infringement.
- The violator makes a significant contribution to the direct violation.
- The person encourages the primary infringer to violate the trademark.
In cases of indirect infringement, there are no exceptions because there is no probability that the contributory infringer will act honestly.
Exceptions to Infringement of Trademark India
Yet, there are some cases in which the use of a trademark might not be seen as an infringement. Individuals and enterprises must understand these exceptions to successfully navigate the complex world of trademark law. Recognising when a trademark isn’t used in a way that infringes on its rights is crucial, and it can be determined based on the following parameters:
Fair Use:
Using a trademark for informative, descriptive, or comparative purposes without obtaining permission is allowed under the fair use concept. Fair use authorises the use of a trademark for delivering analysis, mockery, news reporting, or educational material. This exemption ensures the defence of free speech while also complementing the rights of trademark owners. It is important to remember that fair use can be defined differently depending on the jurisdiction.
Nominative Use:
When a trademark is used to refer directly to the trademarked product or service, this is known as nominative use. It may not be considered trademark infringement when a trademark is used to describe or acknowledge a specific service or product. For example, a company that sells accessories for Apple iPhones may use the name “Apple iPhone” to indicate compatibility with the product, as long as it doesn’t cause confusion or imply authorization by the trademark holder.
Non-Competitive Use:
In the majority of cases, non-competitive use of a trademark isn’t related to infringement. It might be acceptable for a company to use a trademark if it’s unrelated to its goods or services and doesn’t lead to client misunderstanding. For example, if there’s no intention of deceiving readers, discussing a trademark in a blog post for illustrative purposes or evaluating a competitor’s goods in a comparative assessment may be appropriate.
Abandonment or Expiration:
The use of a trademark by third parties might not amount to trademark infringement if the trademark’s holder has abandoned its use or if the trademark has already expired. However, it could be considered expired if a trademark has not been renewed or is not being actively used in business. As a result, the trademark no longer possesses legal protection, and third parties can freely use it without violating anyone’s rights.
It’s important to remember that legal interpretations vary, and situations involving trademark use could complicate matters. Unrecorded trademarks are vulnerable to infringement because only after trademark registration does the user or proprietor acquire the exclusive right to use the trademark along with the goods or services they provide.
Documents Required to File a Case for Trademark Infringement in India
Make sure you have the appropriate documents when filing a trademark infringement claim:
1. An exact copy of your trademark’s journal advertisement
2. Trademark LPC (Legal Proceeding Certificate) issued by the Registrar
3. A certificate confirming trademark registration
4. A report regarding potential infringement damages to the organisation
Procedure to File a Case for Trademark Infringement in India
- File a complaint for infringement: The first step in a trademark infringement proceeding is to file a case in the district court objecting to the use of the trademark in dispute. The application you submit must contain all the relevant details and facts related to your case.
- First Hearing: After receiving the case, the judge examines it, reviews all the facts, and subsequently notifies the opposing party for a second hearing.
- Submission of court fee: Before the due date of the subsequent second hearing, the court fee must be paid.
- Second Hearing: At the second hearing, both parties argue their claims by providing convincing justifications and evidence. If the court is satisfied with the arguments presented, it may issue a final judgement or schedule a date for the next court hearing.
- Final Verdict: Following the arguments of both parties, the court announces its ultimate verdict. The court determines the corrective measures or punishment for trademark infringement in India.
[Note: Ensure to notify the infringement first before proceeding with the filing of a case and initiate legal processes only if no response is received from the infringing party.]
Penalties (or) Punishment for Trademark Infringement in India
In India, violating the exclusive rights of trademark owners is a serious offence for which the law prescribes an array of restrictions and penalties designed to discourage and punish violators. The Trademarks Act, of 1999 specifies the monetary penalties and punishment for trademark infringement in India. According to Indian law, it is not essential to register a trademark before initiating a civil or criminal case.
Legal Remedies For Trademark Infringement:
The rightful owner of a registered trademark may file a complaint against the infringer, alleging that they have engaged in unfair commercial practices.
Any unauthorised use of a trademark by a third party is subject to two different types of remedies, which are readily accessible to the trademark owner. The Trademark Act offers both civil and criminal remedies to safeguard trademarks. Depending on the applicable jurisdiction, the trademark owner can initiate civil proceedings in the District Court.
In criminal cases, the court imposes the following punishment:
- Imprisonment for an initial sentence of six months and a maximum of three years;
- A penalty of up to two lakh rupees and not less than INR 50,000.
In civil cases, the court imposes the following penalties:
- Injunction: The term “injunction” refers to a court order that forbids a person from performing a particular activity or task. In terms of trademark infringement in India, it involves prohibiting someone from using a trademark without approval. The court can protect the legal owner of a trademark through a temporary or permanent stay order.
- Damages: Damages are compensation for any losses incurred by the trademark owner as a result of trademark infringement. The court will determine the amount of damages considering the actual and anticipated losses suffered by the owner due to trademark infringement.
Conclusion
Trademarks have become one of the most popular forms of intellectual property rights in the modern economy, where branding is essential. This IP is a double-edged sword because there are as many individuals who want to register trademarks as there are those who want to steal them. To safeguard your hard-earned reputation and avoid unnecessary legal battles, it is crucial to register your trademark. By taking this proactive step, you can establish your exclusive rights to your brand and prevent others from capitalising on your success. With the help of Taxxinn, you can easily get your trademark registered.
Related Reads,
How to Patent My Software in India? Intellectual Property Registration Guide.
What are the different types of Trademark classes in India?
Do I Need a Digital Signature Certificate for Trademark and Patent Registration?