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Trademark Infringement

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Trademark Infringement

Introduction

In a country where the population of peoples is more than 120 crore and on a daily basis some new business ventures take place. In such a big country it is not so easy to ascertain the fact that whether your registered trademark is being used or infringed by someone or not.

The question which arises in the mind of the registered owner of a trademark is when someone else uses his trade name without his prior permission is that what steps he should take to protect its infringement. As lots of effort, it takes to build a market and goodwill for one mark and it is completely unfair and illegal when the benefit of such goodwill goes to a person who actually does not deserve that.

This type of practice not only affect the goodwill of the registered trademark user but also to the public at large who believe that they are using the services of the owner of the trademark but the reality is altogether different.

So here in this article we are going to discuss about the legal steps to be taken when anyone come to know regarding infringement of its registered trademark and when such act is being done by any person without any kind of permission from registered owner and making undue, illegal profit from such activity at the cost of registered owner.

 First let’s understand what shall be considered as Trademark Infringement. Section 29 of the Trade Marks Act specifies “Trademark Infringement” as: 
  1. A registered trademark is infringed by a person who, not being a registered proprietor (owner of trademark can also be a legal entity like LLP or Company or Trust, etc.,) or a person using by way of permitted use, uses in the course 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 a trademark.
  1. A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of:
  • a. its identity with the registered trademark and the similarity of the goods or services covered by such registered trademark; or
  • b. its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
  • c. its similarity to the registered mark and the identity or similarity of the goods or services covered by such registered trademark; or
  • c. its identity with the registered trademark and the identity of the goods or services covered by such registered trademark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark.
 
  1. In any case falling under clause (c) of sub-section 2 (above mentioned section), the Court shall presume that it is likely to cause confusion on the part of the public.
  1. A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trademark, a mark which:
  • a. is identical with or similar to the registered trademark; and
  • b. is used in relation to goods or services which are not similar to those for which the trademark is registered; and
  • c. the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.
  1. A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trademark is registered.
  1. For the purposes of this section, a person uses a registered mark, if, in particular, he:
  • a. affixes it to goods or the packaging thereof;
  • b. offers or exposes goods for sale, puts them on the market, or stocks them for those purposed under the registered trademark, or offers or supplies services under the registered trademark;
  • c. imports or exports goods under the mark; or
  • d. uses the registered trademark on business papers or in advertising.
  1. A registered trademark is infringed by a person who applies such registered trademark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.
  1. A registered trademark is infringed by any advertising of that trademark if such advertising;
  • a. takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
  • b. is detrimental to its distinctive character; or
  • c. is against the reputation of the trademark.
  1. Where the distinctive elements of a registered trademark consist of or include words, the trademark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

In case after a thorough reading of the above section, you feel that your trademark is infringed, Now let’s readout the remedies available to you:

Section 135 of the Trade Marks Act specifies the relief available to registered trademark user, in case of infringement of trademark. 

  1. The relief which a Court may grant in any suit for infringement or for passing off referred to in Section 134 includes injunction (subject to the terms, if any, as the Court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up to the infringing labels and marks for destruction or erasure.

Remedies for infringement of Trademark There are two types of remedies available to the Plaintiff in case of infringement of his trademark: 
  1. Civil
  2. Criminal
 Civil Remedies 
  1. Suit for infringement U/S 134: Suit for Infringement arising out of the use by the defendant of any trademark which is identical with or deceptively similar to the plaintiff’s trademark. Jurisdiction for the same will be where the head office of the plaintiff is situated or where the cause of action has arisen, section 20 of CPC does not apply for the purpose of suit under 134 of Trademark Act, 1999.
 
  1. Relief under Section 135: Under Section 135(1) In a suit for Infringement if the court agree (on the request of plaintiff ), can grant either:
  • Damages or
  • An account of profits, or both
 Criminal Remedies
  • Any person who uses a particular trademark without permission of the proprietor and makes that trademark deceptively similar shall be deemed to falsify a trade mark under section 102 of Trade Mark Act, 1999. Penalty for the same is given under Section 103 of the same act.
  •  
  • Penalty under Section 103: Any person falsifies any trademark or falsely applies to goods or services any trade mark shall be punishable with imprisonment for a term which shall not be less than 6 months but which may extend to 3 years and with fine which shall not be less than Rs50,000/- but which may extend to Rs2,00,000/-.

  • According to section 104 if any person who helped the accused by selling, providing or hiring services of the such good, possessing such goods for sale or any other possible way will be punished with imprisonment for a term which shall not be less than 6 months but which may extend to 6 years and with fine which shall not be less than Rs 50,000/- but which may extend to Rs 2,00,000/-.
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    “It is important to note down here that before opting for any legal remedies as available, the registered user of the trademark need to quantify the loss / damages incurred by them against such infringement.”


    Conclusion

    Hope the above article is quite informative for you to understand the steps to be taken in case of infringement of trademark. Still in case you any confusion/ clarification, please feel free to reach us at complianceship@gmail.com or www.complianceship.com

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