An Intellectual property right is the right that enables a man to retain ownership of the product created by his intellect. There are various intellectual property rights given to a person. Trademark is one such type of intellectual property right. It is important as the logo of the company is the basis that builds a trust relationship between the company and the customer.
A business owner who has spent some creativity or intellect and a considerable sum of money in trying to make his mark popular will want to protect the mark from being used by an unknown person in trying to market their product. The act of protecting one’s trademark from the use by a third person is crucial to protect the goodwill of a company.
What is a trademark?
The definition of trademark is given in Section 2 of the Trademark Act, 1999. It is defined as a mark that is capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors.
What is trademark infringement?
According to Section 27 of the Trademarks Act, 1999 a person is given the liberty to proceed legally against a person who has infringed the registered trademark of the proprietor to recover damages. Infringement occurs in a situation when the infringer uses someone else’s trademark which is deceptively similar to the trademark of the rightful owner of the goods and services that the registration encloses. The registered proprietor may file a suit against the party that infringes his trademark.
Then let us understand the Section that talks about the right given to the registered proprietor to bring an action against a person who infringes his trademark. It is Section 28 of the Trademark Act, 1999 that specifies that registration of a trademark grants an exclusive right to the registered proprietor to make use of the trademark regarding goods and services for which the trademark got registered and to take action against a person who infringes his trademark.
A person generally claims infringement of trademark when the mark is deceptively similar, confuses the customers as to the original owner, identical marks, and dilution of marks. The situation of confusion is caused in the minds of the customer when the two marks are deceptively similar as to confuse people. In the suit filed by the plaintiff against the defendant, he has to show that because of the similar marks, the consumers are likely to get deceived about the source of products bearing these marks. The concept of a dilution is a trademark law prohibits the use of a well-known trademark such that deceptive mark doesn’t affect its uniqueness. Let us understand the concept of dilution using an example. Dilution occurs when a well-known trademark is used by one company for a particular good or service and the other party uses the same trademark but for another goods or service.
Acts that constitute infringement
Trademark infringement is covered under Section 29 of the Trademarks Act, 1999. It is defined as the doing of act that is in contravention with the exclusive right granted to the rightful owner of the trademark. The infringement of a trademark is said to occur when uses a trademark similar to your trademark which may confuse the customer of your trademark. The trademark is used by someone who is not the registered proprietor who is neither assigned nor is given the license of the trademark he is using for the goods and services for which the trademark is registered.
The ingredients of Section 29(1) are:
1. The registration of the trademark’s rightful owner.
2. The other person’s mark is substantially similar to the plaintiff’s trademark such that it confuses the customer as to the originality of the trademark.
3. The defendant has taken whole or a part of the well-known trademark and made changes in it to make it look different.
4. The defendant is making use of the registered trademark in the course of trade regarding the goods and services that the original trademark deals with.
5. The use of the infringing trademark must be in printed form as an oral representation of the mark is not regarded as infringement.
6. The infringer is using the trademark in such a way that it is obvious that he is using it as a trademark.
7. The defendant is using the trademark in the wrong way and has not been authorized or permitted by the registered proprietor to use that mark.
Remedies against infringement
A suit for trademark infringement can be filed only till three years from the date when the infringement occurs. If the infringement of a trademark is continued, a new course of action will be taken every time the infringement of a trademark occurs.
1 .Under Trademark Act 1999, the remedies available to the owner whose trademark is infringed are:
Injunction against the use of the same trademark in the future.
Damages for the profit gained by the infringer by using the owner’s goodwill.
Reimbursement of the money spent by the proprietor in instituting a legal proceeding against the infringer.
Letting the registered proprietor appoint a local commissioner for search, seizure, and preservation of the infringed goods, account books, and preparation of the inventory.
2. A suit can be filed for infringement under Section 134 of the Trade Mark Act- A suit of such nature may be filed before a District or High Court under whose jurisdiction the time at which infringement suit was filed, and the person who institutes the suit resides, or carries on business for profit or loss. The person here is used to mean the registered proprietor and registered user.
3. A person may also seek relief under Section 135(1) of the Trademark Act, where the Court may grant relief under Section 134.
4. A person may also seek relief under Section 135(2) of Trade Mark Act- Under this Section, the Court may give ex parte injunction order under Section 36-42 of Specific Relief Act, 1963 or Order XXXIX Rules 1 & 2 of Section 151 of Code of Civil Procedure 1908.
Defenses available against trademark infringement
There are various defenses available against trademark infringement which we will discuss:
1. Fair Use- The infringer may take this defense if he proves that he took the consent of the registered proprietor of the trademark. He can also take this defense by proving that he had no bad intention to defraud the customer of the goods of the rightful owner.
2. Descriptive fair use- The infringer can take this defense when he uses the mark in good faith for descriptive purposes and not for a specific mark.
3. Prior Use- A prior user of the trademark is given more rights for the trademark than the registered user. The defendant can take up this defense by proving that he is using the trademark for a longer period and has acquired goodwill in that business than the registered user. It can also be taken as a defense when the defendant has not renewed his already registered trademark but is continuing the business under that same trademark.
4. No confusion or difference in essential features- In this situation, the Courts compare the phonetic similarity as well as the difference in features between the two trademarks.
5. Non-use of the trademark by the rightful owner- In this situation, the burden is on the defendant to prove that the registered proprietor is not using the trademark for a long time. He further needs to prove that he is genuinely interested in using that trademark which the owner of the trademark is not using. He also needs to show that it is not his fault because of which the owner is not using his trademark but it is due to some unknown circumstances.
6. Delay and Acquiescence- The plaintiff’s right is deemed to be waived off when he has not brought a suit against the defendant for infringement. He is said to explicitly permit the use of his trademark by the infringer.
Case laws on Trademark Infringement
Starbucks v. Sardarbuksh- In this case, Starbucks filed a case against Sardarbuksh for the similarity of logo and name with Starbucks, which is a very famous café brand and consequently causing confusion in the minds of customers owing to the similarity.
The decision came in favor of Starbucks and the Court ordered the defendant to change the name, not the logo as it was already changed by the plaintiffs. The judges also took into consideration the fact that this trademark infringement has caused economic loss and also affected the goodwill of Starbucks, which is a very popular coffee brand. The Court held that the defendants used this trademark to acquire fame by using a well-known trademark of Starbucks.
Coca Cola v. Bisleri- This is a cas