Trademark Infringement
Infringement occurs when someone else uses a trademark that is same as or similar to your registered trademark for the same or similar goods/services. Trademark infringement claims generally involve the issues of likelihood of confusion, counterfeit marks and dilution of marks. Likelihood of confusion occurs in situations where consumers are likely to be confused or mislead about marks being used by two parties. The plaintiff must show that because of the similar marks, many consumers are likely to be confused or mislead about the source of the products that bear these marks.
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Trademark Infringement in India – An Overview
Section 29 of Trade Mark Act, 1999 talks about various aspect related to infringement as given in a registered trademark is infringed as given in Sec.29(1) that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
Other sub-sections describes that in course of the use of the trademark it is said to be infringing the right of the other company due to use of similar or identical trademark using for marketing of similar kinds of goods and services or use of identical or deceptively similar trademark for any kind of goods and services. It is further given in subsection (9) of this section that the infringement can also be done by the spoken use of those words as well as by their visual representation
Direct Infringement
The definition of direct infringement under Section 29 of the Trademark Act, 1999, requires certain elements to be met. These elements include:
Usage by an Unauthorized Person
The use of a registered trademark by an unauthorized person constitutes infringement. However, if the use is by a person authorized by the holder of the registered trademark, then it will not amount to trademark infringement.
Identical or Deceptively Similar
The trademark used by the unauthorized person should be identical or deceptively similar to the registered trademark of the original holder. Deceptively similar means that there is a possibility of confusion between two similar trademarks, even if such confusion has not actually occurred. This chance of misrecognition is enough to prove trademark infringement.
Registered Trademark
Remedies are provided to registered trademarks under the Trademark Act, 1999. Unregistered trademarks are dealt with under the common law of passing off, which is used in cases where damage or injury is caused to the goodwill associated with the activities of other persons or group of persons.
Goods or Services Class
The unauthorized person should use the trademark for goods and services falling under the same category or class of products or services under which the original trademark is registered. Only then will it be considered trademark infringement of the registered trademark.
Indirect Infringement
The Trademark Act, 1999[1] does not have any specific provisions addressing indirect infringement. However, the Universal Principle of Law recognizes and applies to indirect infringement. This principle holds accountable not only the primary infringer but also any person who induces or aids the primary infringer for infringement.
There are different types of indirect infringement, including:
Vicarious Liability:
According to Section 114 of the Trademark Act, 1999, any company that commits an offense under this Act will be held liable. The entire company will be held responsible, meaning that all individuals in the company will be held accountable for the offense. Therefore, not only the primary infringer but also every person in the company will be liable for indirect infringement. An exception to vicarious liability is given to the person who acted in good faith and without knowledge of infringement.
The key elements of vicarious liability are:
When the person is controlling the activities of the primary infringer.
When the person had knowledge of the infringement and still contributed to it.
When the person is deriving financial benefits from the infringement.
The only exception to vicarious liability for a company that is liable for infringement is when the company can prove that it acted in good faith and had no knowledge of the infringement.
Contributory Infringement:
The essential elements of contributory infringement are:
When the person knew about the infringement.
When the person materially contributed to direct infringement.
When the person induced the primary infringer to commit infringement.
There is no exception available in the case of contributory infringement since there is no chance for the contributory infringer to act in good faith.
Remedy for Trademark Infringement
A Court has the authority to provide relief for trademark infringement or passing off, such as for counterfeit goods. In cases of trademark infringement, relief can be granted through an injunction, damages, or an account of profits, with or without an order for the infringing labels and marks to be delivered up for destruction or erasure.
Section 135 of the Trade Marks Act outlines the relief that can be granted in cases of trademark infringement, which includes an injunction, damages, or an account of profits, with or without an order for the delivery-up of infringing labels and marks for destruction or erasure. The Court may also issue an ex parte injunction or an interlocutory order for the preservation of infringing goods or evidence, restraining the defendant from disposing of assets that could hinder the plaintiff’s ability to recover damages, costs, or other remedies.
However, the Court cannot grant relief in the form of damages (other than nominal damages) or account of profits in certain cases. These include instances where the infringement is in relation to a certification trademark or collective mark, or if the defendant can prove that they were unaware of the plaintiff’s registered trademark or that they had stopped using it as soon as they became aware of it. Similarly, in cases of passing off, the defendant can avoid relief if they can prove that they were unaware of the plaintiff’s trademark and had stopped using it as soon as they became aware of it.