Trademark Infringement and remedies available to owner

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  • Trademark Infringement

Today’s consumers are Brand oriented and therefore, using deceptive name can affect the market for original brand hugely. When the brand value is used without prior approval, the owner looks for the legal remedies to protect its brand value. Stopping non-permitted use of the trademark is equally important as trademark registration. Therefore, the special Act for the protection of trade names is enforced as Trademark Act, 1999 with an aim to provide exclusive right to use the brand name and stop unauthorised use by any other person including the competitors. Therefore, to protect the brand name and the value created, the brand name and logo are registered as a trademark under this Act.

 What is Trademark?

A trademark is a word, phrase or a unique symbol, which is used by an individual, business organization or other legal entity to distinctively identify the source of their products or services to customers, and to differentiate their products or services from other entities. A registered trademark is designated with encircled R symbol (®).

 What is Trademark Infringement?

Section 29 of the Trade Marks Act prescribes the infringement of a trademark. In simple words, when the exclusive rights of the owner of the registered Trademark are violated, it is said to be an infringement of Trademark. The trademark registration provides the exclusive rights to the brand name to the proprietor i.e. the applicant. The certificate of trademark registration provides exclusive rights to the proprietor to use the brand name for their business activity falling under the class in which it is registered. In case, a third party uses the brand name in course of trade without permission of the owner, it is the violation of owner’s right and is called as the infringement of Trademark.

Most common cases of trademark infringement include using closely or deceptively similar brand names or logos for associated goods and services; and using a mark that cerates false impression or confusion with the registered trademark. For proving trademark infringement, the intention of creating confusion or commercial use is ground for support.

Certain situations under the law are also prescribed which are not considered as the infringement of trademark. Using the brand name by the licensee of the registered trademark is not covered under infringement as the licensee is authorised by assignment agreement or otherwise. However, if the licensee uses the trademark for the products or services, which is not covered under the agreement, the said usage can be claimed as unauthorised use. The same is mentioned under Section 30 of the Act.

Indian Trademark Law on Infringement:

As said, the trademark law in India was built with an intention to protect the trademarks statutorily under the Trademark Act, 1999. Where Trade Marks Act provides protection to registered Trademarks, the Passing Off of an unregistered trademark is actionable under common law to protect the goodwill attached to the unregistered trademark.

The Legal protection of a trademark is administered by the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.

What are the Remedies for Trademark Infringement?

The owner of the Registered Trademark can commence legal proceedings against the infringer stating the unfair business practices. There are two types of remedies that are available to the owner of the trademark against the unauthorized use of its limitation by the third party. The Trade Marks Act protects the trademark with civil and criminal remedies. Civil proceedings can be initiated by the trademark owner before the District Court in whose jurisdiction the owner resides.

Civil Remedies for Trademark Infringement are available in following heads:

  1. In form of Injunction:

The action of an injunction is referred as stopping one person from doing particular activity or task through the judicial process. With respect to trademark infringement, it is restraining a person from unauthorised use of the trademark. Through a temporary or permanent stay, the Court grants protection to the trademark owner.

  1. In form of Damages:

Damages refer to the recovery of loss faced by the trademark owner through the trademark infringement. The monetary value of financial loss or brand impairment is recovered under this head. The amount of damages will be granted by the court after considering the actual and anticipated loss of owner due to infringement.

The damages in Trademark law as a relief has increasingly assumed importance and the main aim of the damages is to monetarily compensate.

  1. Custody of infringing materials:

This remedy suggests that the Court may ask the infringer to deliver all the goods or products that are labelled with the brand name. Here, the Court may direct the authorities to withhold the related materials accounts and destruct all such goods. Where the trademark relates to services, i.e. a Service Mark is infringed; the order may be passed to stop the provision of the services immediately by the infringer.

In case of infringement/passing off trademark, the criminal complaint can also be filed and noted under the Trade Marks Act, 1999 which states the registered owner of the trademark has a chance to file the FIR through police on the infringer.

Jurisdiction for a suit of infringement:

The jurisdiction of to commence the proceedings against the infringer is also decided in line with the provisions prescribed. Section 134 of the Trade Marks Act, provides the jurisdiction of filing suit for infringement. The trademark owner may have instituted infringement suit before District Court. The appropriate District Court is the one falling within the local limits under whose jurisdiction, the person instituting the suit, i.e. the owner of trademark resides or carry on the business activities.

Conclusion:

In India, the awareness to protect the brand name through register is increasing. However, the owners are still passive about the unauthorised usage of their registered trademark. Violations of the right over trademark can occur even internal to an organisation, which affect the brand value as well as the market share of the owner’s business. With the help of a Trademark Attorney, one may recover and compensate all the damages occurred due to the infringement.

About the Author:

Shrijay Sheth
Shrijay, co-founder of LegalWiz.in, is best known for his business acumen. On this platform, he shares his experiences backed by a strong understanding of digital commerce businesses. His more than a decade-long career includes a contribution to some of the highly successful startups and eCommerce brands across the globe.

2 Comments

  1. Thomaskutty 09/05/2018 at 1:02 pm - Reply

    very good

  2. Himani 16/05/2018 at 5:35 pm - Reply

    I actually added your blog to my favorites and will look forward for more updates. Great Job, Keep it up. First of all let me tell you, you have got a great blog .I am interested in looking for more of such topics and would like to have further information. Hope to see the next blog soon.

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