Getting the trademark after all hush and rush and then someone infringes your right is beyond b...
Trademark has become one of the easiest ways for consumers to identify the source and to make a decision. Trademark has helped in the recognition of brand and brand value. Therefore it becomes all the more critical for trademark owners to protect it from misuse or infringement by others. In this article, we shall look at Trademark infringement in India.
The Trademarks Act of 1999 is the legislation that governs and regulates trademarks in India. This Act provides for rules that deal with the registration, protection, and penalties against Trademark infringement. Trademark is an important intellectual property across the globe. There are numerous organizations that seek to protect such intellectual properties.
The Indian Patent Office administered by the Controller General of Patent, design, and trademark deals with trademark protection in India.
Trademark infringement is a term used when there is any unauthorized use of a mark that is similar or deceptively similar to a registered trademark. Here the term deceptively similar means that when a common man looks at the mark, it confuses such person of the origin of the goods or services.
Infringement of a Trademark is a punishable offence in India. Registration of a Trademark allows the proprietor to sue for such an infringement. It is so because a trademark confers a monopoly right over the use of a mark.
When we study about Trademark infringement in India, then there are two types of infringement that we must be aware of-
In case of direct infringement, a mark is used by a person who is not authorized by the holder of a registered trademark. Such use should be identical to that of registered trademark or deceptively similar to it for constituting direct infringement. The unauthorized use of the mark has to be for the propagation of goods or services that fall within the same class of registered trademark.
Unlike direct infringement, there is no provision in the Act that deals with indirect infringement. However, it doesn’t mean that there is no liability for indirect infringement. Indirect infringement is further divided into two types-Vicarious liability and contributory infringement.
In the following cases, you may take action:
If the resemblance in words, images, etc., of the alleged infringement doesn’t cause any confusion to the ordinary purchasers of the goods, there is no infringement of the trademark. A trademark used by honest practices of the industry, not looking to take any unfair advantage, also doesn’t amount to trademark infringement in India.
If your registered trademark has been infringed upon, then the owner of such trademark may commence legal proceedings against the infringer. It may be noted that an unregistered trademark cannot be infringed, and the trademark owner can’t bring infringement proceedings.
The trademark owner can begin an officially permitted proceeding against the infringer. A criminal complaint can also be filed, and it may also be noted that under the Trade Marks Act, 1999, the offences are cognizable, which means that police can register FIR and prosecute offenders directly.
The jurisdiction to commence the proceedings is also decided in line with the provisions prescribed. Such a case can be filed in a district court where the owner of the trademark resides or carries his or her business. Section 134 of the Trademarks Act specifies the jurisdiction for filing suit.
The owner of the trademark can bring legal proceedings against the infringer. There are two forms of remedies that are available- Civil and criminal remedies.
Civil proceedings are initiated by the owner of the trademark before the district court where the owner lives. Civil remedies can be in the form of an injunction where one person is stopped from doing a particular activity or task. It means refraining a person from unauthorized use of the mark. Civil proceedings can also be in the form of damages where the loss due to infringement is recovered. The amount of damages shall be granted by the court once it considers the actual and the anticipated loss of the owner.
In Criminal remedy, a complaint can be filed against the infringer. It may be noted that both civil as well as criminal proceedings can be initiated simultaneously. A criminal prosecution can be obtained by-
Another critical thing to take note before filing a complaint is that the plaintiff should prove that the registered trademark has been infringed. Therefore the onus to prove the infringement lies on the plaintiff.
It is advisable to send a letter (cease and desist notice) before commencing infringement proceedings to the alleged infringer. It is a beneficial option and can address the infringement issue without resorting to litigation proceedings of Trademark infringement in India.
Such a decision completely depends upon the individual situation. Below we have specified reasons why a cease and desist letter may be sent.
However, it may be noted that one of the drawbacks of sending such notice or letter is that it provides ample time to the infringer to destroy evidence.
In case of civil charges, the court can order for-
In case of criminal proceedings, the court can order for-
A comprehensive framework has been made to protect trademarks in India. After all, trademarks are one of the most useful intellectual properties across the globe. Therefore provisions have been made to protect it and file a complaint in case of infringement. Both civil and criminal remedies allow the owner of the registered trademark to not just get compensated but also imprison the person on trademark infringement in India.
Read our article: How can I Avoid Trademark Infringement?