INTRODUCTION
Trademark infringement, a pervasive issue in intellectual property, poses significant threats to brand owners and consumers alike. This illegal practice involves the unauthorized use of a registered trademark or a similar mark that is likely to cause confusion among consumers. Whether intentional or unintentional, trademark infringement undermines the integrity of established brands dilutes their distinctiveness, and can lead to financial losses for rightful trademark holders.
WHAT IS TRADEMARK INFRINGEMENT?
Trademark infringement occurs when someone uses a registered trademark or a similar mark without authorization, leading to confusion or deception among consumers. When a registered trademark or a substantially identical mark is used without permission, causing confusion among consumers, it constitutes trademark infringement. Trademark infringement takes place when an individual or entity utilizes a registered trademark, or a mark resembling it, in a manner that confuses consumers and misrepresents the source or association of goods or services.
WHAT PROCEDURES ARE TO BE FOLLOWED?
- Documentation and Evidence Gathering: Collect all relevant documentation and evidence related to the infringement, including copies of the registered trademark certificate, evidence of prior use of the mark, examples of the infringing use, and any correspondence or communication related to the infringement.
- Cease and Desist Letter: In many cases, the first step is to send a cease and desist letter to the alleged infringer. The letter should state the trademark owner’s rights, provide evidence of infringement, and demand that the infringer immediately cease all unauthorized use of the mark. It may also include a request for a written response within a specified timeframe.
- Negotiation and Settlement: Depending on the response received from the alleged infringer, negotiations may take place to reach a settlement or resolution. This may involve discussions on ceasing the infringing activity, potential compensation or damages, and other terms to resolve the dispute amicably. It is advisable to involve legal counsel in these negotiations to protect the trademark owner’s interests.
- Alternative Dispute Resolution: If negotiations do not lead to a satisfactory resolution, alternative dispute resolution mechanisms such as mediation or arbitration may be pursued. These processes can provide a more efficient and cost-effective means of resolving the dispute outside of court.
- Civil Litigation: In cases where a resolution cannot be reached through negotiation or alternative dispute resolution, the trademark owner may choose to file a lawsuit in civil court. The lawsuit typically seeks remedies for trademark infringement, such as injunctions to stop the infringing activity, damages, accounts of profits, and legal costs.
- Enforcement and Ongoing Monitoring: If the trademark owner successfully obtains a favourable judgment or settlement, they must monitor and enforce their trademark rights to ensure compliance with the court’s orders or settlement terms. Regular monitoring of the marketplace and potential infringing activity is crucial to promptly address any future infringements.
What are the Remedies?
- Injunctive Relief: Injunctive relief is a court order that requires the infringing party to immediately cease all unauthorized use of the trademark. This remedy aims to stop the infringing activity and prevent further harm to the trademark owner.
- Damages: The trademark owner may seek monetary damages as compensation for the harm caused by the infringement. Damages can include actual damages, which compensate for the actual loss suffered by the trademark owner, and may also include
any profits the infringing party made from the unauthorized use of the mark. - Account of Profits: In some jurisdictions, the trademark owner may be entitled to an account of profits, which requires the infringing party to disclose and surrender any profits they earned as a result of the trademark infringement. This remedy aims to prevent the infringing party from benefiting financially from their wrongful conduct.
- Destruction or Seizure of Infringing Goods: The court may order the infringing party to destroy or surrender any goods or materials bearing the infringing mark. This remedy removes infringing products from the market and prevents further circulation.
- Corrective Advertising or Public Notice: In certain cases, the court may order the infringing party to publish corrective advertising or public notices to rectify any confusion or damage caused by the infringement.
- Preliminary and Permanent Injunctions: In addition to the initial injunctive relief, the court may issue preliminary and permanent injunctions. A preliminary injunction is a temporary order issued early in the legal proceedings to maintain the status quo until the case is resolved, while a permanent injunction is a final order that prohibits the infringing party from using the mark permanently.
- Disposal of Infringing Materials: The court may order the disposal or destruction of infringing materials, such as labels, packaging, or promotional materials, to prevent their further use in association with the unauthorized mark.
- Criminal Prosecution: In some jurisdictions, trademark infringement may be a criminal offense. The trademark owner can report the infringement to the appropriate law enforcement authorities, and if the infringer is found guilty, they may face fines, imprisonment, or other criminal penalties.
What is the relief in case of Trademark Infringement?
- Injunctive Relief: This is a common and important form of relief sought in trademark infringement cases. An injunction is a court order prohibiting the infringing party from using the trademark unlawfully. It aims to immediately stop the infringing activity and prevent further harm to the trademark owner’s rights.
- Damages: The trademark owner may seek monetary damages as compensation for the harm caused by the infringement. Damages can include:
- Actual Damage
- Statutory Damages
- Disgorgement of Profits: In addition to or instead of damages, the trademark owner may seek the disgorgement of the infringing party’s profits derived from the unauthorized use of the trademark. Disgorgement of profits aims to deprive the infringer of any financial gain obtained through the infringement.
- Corrective Measures: The court may order the infringing party to take corrective actions to rectify the harm caused by the infringement. These measures may include:
- Recall or Destruction of Infringing Products
- Corrective Advertising or Notices
- Attorney’s Fees and Costs: In some cases, the court may award the prevailing party their attorney’s fees and litigation costs. This provision aims to incentivize the enforcement of trademark rights and compensate the trademark owner for the expenses incurred in pursuing legal action.
- In some jurisdictions, additional remedies may be available, such as:
- Exemplary or Punitive Damages: In cases of willful or deliberate infringement, the court may award exemplary or punitive damages to punish the infringing party and deter similar conduct in the future.
- Criminal Penalties: Trademark infringement can be a criminal offense in certain jurisdictions, and the infringing party may face fines, imprisonment, or other penalties if found guilty.
CONCLUSION
The procedure to address trademark infringement typically involves gathering evidence, consulting with intellectual property attorneys, sending cease and desist letters, negotiating settlements, pursuing alternative dispute resolution methods if necessary, and, in some cases,
initiating civil litigation. It is crucial for trademark owners to be proactive in monitoring their trademarks, promptly identifying and addressing potential infringements, and enforcing their rights to maintain the integrity and exclusivity of their brands
Rossel Aggarwal
Associate Intern at Lawgenix-Legal Geniuses