How can I Avoid Trademark Infringement?

Narendra Kumar

24 May, 2019

For the recognition of the source of goods and services, every business entity has its own trademarks. Trademark is of extreme importance as consumers base their purchases on these trademarks. So it is very important to not let your trademark infringed. Trademark infringement will make you lose your finances and goodwill.

In this blog, we will try to understand what does infringement of trademark mean? What or whatnot comes under the infringement of a trademark? What are the remedies for trademark infringement?

What is Trademark Infringement?

Trademark infringement is basically the breach of exclusive rights attached to the registered trademark, in which you use somebody else’s registered trademark without seeking any permission. In accordance with the Trademark Act, 1999, if an authorized or unauthorized person or a person who is not a registered proprietor uses a mark in relation to the goods and services, which is identical or similar to, the registered trademark, is known as the trademark infringement.

How to know the Trademark is Infringed?

Following are the cases where the trademark is considered to be infringed:

• The use of the registered trademark for the trade name or business concern for goods and services in relation to the user registered trademark
• The trademark is identical or similar to the registered trademark and dealing in the same or similar goods or services.
• The used trademark is causing confusion among the general public because of its identity being close to another registered trademark.
• The advertising of trademarks for taking the unjust benefit or demonstrating a dishonest practice, or ruining the distinctive character or reputation of a registered trademark
• Using the registered trademark without any prior authorization for the material, which is meant for packaging or labeling of other goods or as a business paper.

Wrongful Application of Trademark Infringement as per Section 103

• Committing an alteration of a trademark
• False Application of a trademark for the goods and services
• Making, possessing or disposing of any product or instrument with the intent of falsifying the registered trademark
• Maliciously indicating the name of the country or place where the goods are being made or using the name or address of the person who is in charge of its manufacturing
• Altering or tempering the indication of origin which is applied or need to be applied to a product

Do you know, in case of the falsification of the trademark infringement you will be put behind bars for a period of at least six months, which may extend up to three years and there will be an additional penalty of 50 thousand rupees (Rs. 50,000) which may also extend up to two lakh rupees (2, 00,000). Provided that the falsification is not done on the following grounds-

• If all the required precautions are already taken in relation to the commission of such falsification and there was no authentic reason to testify the genuineness of the trademark
• Acting innocently in relation to the guidelines
• If the documents are available of the manner and person from which the goods are received.

Legal Actions and Remedies for the Trademark Infringement

In case of infringement of trademark, you may have to bear the consequences of both civil and criminal action. Infringement of a trademark is a cognizable offense in accordance with the Trademark Act, 1999 which means that a police complaint can be lodged and you can be prosecuted directly for the infringement. Even the courts have the authority to suo moto conduct raids and seizure operation.

While, on the other hand, a civil action can also be taken against the infringer. With respect to the status of the trademark; registered, pending, or unregistered a suit can be initiated against you. There is no limitation period for filing the suit, as the offense of trademark infringement is a continual misdeed or a breach.

Now let us go ahead and see what happens if the infringement is proved by the court of competent jurisdiction-

Measures and Legal Actions by the Court

Once the infringement is proved inside the court, the main authority can give the following measures or remedies-

• The court will issue the orders or put stay against the use of the trademark
• You will be asked to pay the appropriate damages
• You have to hand over all the accounts and profits
• The respective court will appoint a local commissioner for the custody or sealing of infringement materials and accounts
• The court may even grant injunctions and give directions to the customs authorities for holding the infringing materials and can be stopped from the disposition to protect the propriety interest of the owner.
• The court may pass interim orders which are generally released after the notice or ex-parte. An application for the grant of temporary or ad interim ex-parte injunction is conveyed by the application under order 39 rules 1 & 2 of Civil Procedure Code (CPC).

What is not considered as the Infringement of Trademark?

There are cases where people are falsely implicated for using the trademark. Section 30 of the Trademark Act, 1999 lays down the guidelines and certain conditions which help you to understand whether it is a case of Trademark Infringement or not. These guidelines help the falsely projected infringers to use them as a defense while fighting a case against somebody in the court.

Below are the following conditions which do not amount to infringement of trademarks in India-

1. If you have made the use of a trademark as per the honest practices favorable in industrial or commercial matters
2. When you are not trying to pursue an inappropriate benefit or damage the distinctive character or repute of the trademark
3. Using the mark for indicating the following things-
   • The time of production of goods
   • Type, quality, or quality of products
   • Intention, purpose, or value of products
4. Geographical origin of the goods
5. Your trademark doesn’t fall under the scope of registration. There are cases when registration of a trademark is subjected to certain conditions and limitations. If the infringement comes under those limitations then it doesn’t lead to the Infringement of Trademark.
6. When the trademark is used as the continuation of the permitted use granted by the original proprietor, for which the permission is not subsequently removed or obliterated.
7. Using the trademarks for the related parts and accessories

Conclusion:

Trademark Infringement is a cognizable offense. One should not involve in the cases of infringement of trademark discussed above. The consequences of these ill activities may be severe. But don’t you worry our team at Enterslice conducts thorough research before registering any trademark. We follow the proper code and take appropriate measures for the hassle-free registration of the trademark. It is our responsibility to hand you over the smudge-free unique and distinct trademark.

For the getting, the trademark registered, or any information regarding it please contact Enterslice.