Trademark Infringement

What is Trademark Infringement?

As with the rising awareness about intellectual property number of trademark registration is increasing in India. Infringing the registered trademark can have a lot of legal consequences and liability. Infringement may occur when one party, the “infringer”, uses a trademark which is identical or too similar to a trademark owned by another party, in relation to a product or service which are identical or similar to the product or services which the registration covers.

It is a violation of the exclusive right attached to a trademark without the authorization of the trademark owner or any licensees.

Trademark Infringement:

Trade Marks Act describes “trademark infringement” as:

“A registered trademark is infringed by that person who is not a registered proprietor (owner of the trademark can also be a legal entity like LLP or Company Trust etc.) or a person using by way of permitted use, uses in the courses of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as  being used as trademark”.

What is Trademark Infringement?

Infringement occurs when a person or company uses a trademark without authorization from the owner of the trademark in a way that will be likely to confuse or deceive the existing public regarding the source of the services and the goods.

Is it trademark infringement if someone else is using my company’s name but for a different business?

Not necessarily. Since trademark infringement law seeks to prevent customer confusion, if a certain company name is the same or similar but is being used in two unrelated businesses or locations, it may not create customer confusion as to the source of the goods or services.

What is the Procedure for Trademark Registration?

For registering a trademark application can be filed online through the Trademark Electronic Application System (TEAS). A trademark application generally includes the following information:

• Name of the applicant.
• Full name and the address that the USPTO^[1] can correspond with.
• Depiction/drawing of the mark.
• Goods and Services that the mark will be used in connection with.
• Filing Fees.

Consequences if someone sues for trademark infringement:

An owner of the trademark who has a belief that his mark is being infringed may file a civil action in either state court or federal court for trademark infringement, depending on the circumstances. However, in most of the cases, the owner of the trademark chooses to sue in federal court. Even if the plaintiff files the matter in the state court, the defendant has the choice to move the case to the federal court.

If the owner of the trademark is able to prove infringement, available entries may include the following:

• An injunction from the court to the defendant to stop using the accused mark.
• An order requiring the destruction or forfeiture of infringing articles.
• Monetary relief that will include the profit made by the defendant and the damages sustained by the plaintiff and the cost incurred in taking any action.
• Order from the court that in certain cases defendant shall pay to the plaintiff his attorney’s fees.

A remedy for Trademark infringement:

The court may grant relief for trademark infringement or for passing off. Relief for infringement can be granted through an injunction, damages or on account of profit together with or without any order for delivering the infringed label.

Trade Marks Act mentions the following relief for trademark infringement:

• The relief which the court shall grant in any suit for infringement includes the grant of the injunction or to pay for the damages.
• Order for the injunction may include an ex-parte injunction or any interlocutory order for any of the following matters:
  1. Discovery of the required documents;
  2. To preserve the infringing goods, documents or other shreds of evidence which are related to the suit;
  3. To restrain the defendant from disposing of/dealing with his assets in a manner that may adversely affect the plaintiff ability to recover damages.
• The court will not grant relief by way of damages or on account of profit in any of the following case:
  • Where in a suit relating to trademark infringement, the infringement is in relation to the certified trademark or collective mark.
  • Where in the suit for infringement of trademark the defendant satisfies the court that:
    1. That at the time he commenced to use such trademark he was unaware of the fact and had no clue that the trademark of the plaintiff was on the register or that the plaintiff was a registered user;
    2. And when he became aware of the fact of existence and the plaintiff right in the trademark, he ceased to use such trademark.

Conclusion

Trademark infringement in India is a cognizable offence. The infringer may face criminal as well as civil charges. In India, Indian patent Office administered by the Controller general of patents, designs and trademarks  deals with the protection of trademark. It is essential for entrepreneurs to be aware of the regulations surrounding IP rights.

Read our article:How to File a Complaint against Trademark Infringement in India?