As we all have listened various times a well known maxim “ubi jus, ibi remedium” means “where there is a right, there is a remedy” it means everything comes with a solution. We have a law for trademark registration; simultaneously we have a law for its infringement also under the same legislation. Trademark means a mark which can be identified graphically in shape numbers or in colours, many small and large industries use this mark to make their product identifiable in the market and to create good reputation out of that. Trademark can be registered or unregistered and for the violation of both the remedies are provided respectively i.e. Trademark Infringement and passing off.
What is Trademark Infringement?
Infringement basically means violation of law. When any Trademark get registered the owner of the trademark got some exclusive rights over it and violation of those exclusive rights means Trademark Infringement. The meaning of Trademark Infringement is defined under Section 29 of the Trademark Act as the usage of registered Trademark by an unauthorized person that leads to the financial loss to the Trademark owner and will deceive the goodwill of company in the market. For example, Bisleri is a brand for packed water and some are selling water under the name of Bilseri in the market; this is an identical term and subject to Trademark Infringement.
What are the factors which can be considered while filing for Trademark Infringement?
- The mark used by the unauthorised person is identical to the registered Trademark as stated in above example of Bisleri and Bilseri. Similarly, other example can be noticed in India like Adidas and Abibas.
- The mark used creates confusion in the mind of consumers that the company is associated with the registered company.
- The Trademark is used to advertise the goods or anything out of which the concerned company is getting financial benefits or getting any unfair advantage.
- If the registered Trademark is used for packaging or labelling of any other goods.
- If the registered Trademark is used as part of Trade name for any other work.
The Trademark Act, 1999, provides punishment for the falsification (when he/she tries to make similar Trademark without the permission of real owner) of Trademark under Section 103 as imprisonment for a term which shall not be less than six months, but which may extend to three years and with fine which shall not be less than fifty thousand rupees and may extend to two lakh rupees: Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.
What are the legal actions and remedies provided for Trademark Infringement?
The aggrieved person who is facing the losses can choose either of the options criminal proceeding or civil proceedings.
Following remedies can be provided by the court:
- Injunctions.
- Stay orders.
- Damages.
- Handing over of accounts and profits.
- Any other remedies which the court deems fit.
What are the pleas for Trademark Infringement?
Prove that the registration can be cancelled on certain basis upon which the whole proceedings are based.
Plea of innocence; that the person is unaware of the acts.
Plea of Section 30 of the Trademark Act, 1999, which provides some provisions under which Trademark Infringement is not applicable. These provisions are enumerated below: –
- If there is honest practice in industrial or commercial matter; and is not used for taking unfair advantage of reputation in the trade market.
- If the product shows all the necessary details in relation to kind, quantity, quality, intend purpose, value, origin etc.
- Where Trademark registration is subject to limitation and conditions; the use of registered Trademark is out of that scope.
- When the registered Trademark is used with the permission of real owner.
- Where the goods bearing the trademark are lawfully acquired by a person, the sale in the market for those products is not subject to Trademark Infringement.
Global status of Trademark Infringement:
In many of the countries unregistered Trademark can’t be infringed and they cannot go for the infringement proceedings. Instead of this can go for the passing off law under the unfair business practice. India gave recognition to the foreign registration also as stated in the case Milmet of tho Industries & ors. v. Alkrgan Inc.
It was held by the Hon’ble Supreme Court of India that irrespective of the registration of trademark in India or any other country it will be protected equally.
Case Laws:
Yahoo!, Inc. v. Akash Arora &Anr.
The defendant had a domain name ‘Yahoo India!’ which was identical and phonetically similar to the plaintiff’s trademark ‘Yahoo!. The court held that internet users would be confused and deceived into believing that both the domain names have the same source. The defendant took a defence that it had put a disclaimer on its website. However, it was observed that a mere disclaimer was not sufficient because the nature of the internet is such that use of a similar domain name cannot be rectified by a disclaimer and it does not matter that ‘yahoo’ is a dictionary word. The name possesses acquired distinctiveness and uniqueness and was largely associated with the plaintiff.
The Coca Cola Company v. Bisleri International Pvt Ltd.
The defendant, Bisleri by a master agreement, had sold and assigned the trademark MAAZA including formulation rights, know-how, intellectual property rights and goodwill for India with respect to a mango fruit drink known as MAAZA to Coca Cola.
In 2008, the defendant company filed for registration of the mark MAAZA in Turkey and started exporting fruit drink under the name MAAZA. The plaintiff, Coca Cola claimed permanent injunction and damages for infringement of trademark and passing off.
The court granted an interim injunction against the defendant (Bisleri) from using the trademark MAAZA in India as well as for export, which was infringement of trademark.
Conclusion:
There are various provisions regarding the Trademark Infringement, but in spite of that many small scale industries business are unaware of these facts and are continuously facing these type of infringement in their day to day basis. They are not well versed with the procedure of registration and other related provisions. Therefore, business owners must enlighten themselves about the provisions of Trademark infringement, so that they can eliminate future legal hassles.