PROTECTION FROM TRADEMARK INFRINGEMENT

1. INTRODUCTION TO TRADEMARKS

“A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.[1]”

Trademark is defined as a mark that can be graphically represented and is capable of distinguishing the goods or services of one entity from those of others. This includes the product’s shape, packaging, and colour combinations. The definition covers the rights of the owner or authorized user to use the mark in connection with goods or services, indicating a trade connection between them. Additionally, it encompasses marks used for certification or collective trademarks, highlighting their distinguishing qualities that prevent consumer confusion and establish a clear association with a particular owner or authorized user.2 Trademark owners build brand loyalty and product uniqueness through effective marketing and licensing, which in turn creates strong goodwill and market presence, making it challenging for new businesses to enter that specific industry. Registering a trademark provides legal protection, enabling a company to prevent others from using a similar mark. This protection helps distinguish a company’s products and services from those of others and safeguards its reputation against counterfeit products.

The registration period for a trademark is ten years, after which it may be renewed periodically. The Registrar will notify the proprietor upon the expiration of the trademark’s registration. The trademark will not be removed from the register if an application is submitted in the prescribed form, accompanied by the requisite fee and surcharge, within six months of the last expiration date. Upon successful application, the trademark will be renewed for an additional ten-year period.[2] Trademark rights are treated as private property and can be enforced through legal actions.

2. INFRINGEMENT OF TRADEMARKs

Trademarks not only represent a brand but can also guarantee the quality of products bearing the mark. i.e., a trademark signifies quality. Trade marks represent the value and goodwill of goods, measured by how the public perceives their quality and source. They are typically placed on products, their containers, displays, as well as tags and labels. The economic value of a successful trademark is the main reason for legal protection.

Trademark infringement is “the use of a trade mark by an unauthorized or unauthorized person or a person other than the registered owner who identical or confusingly similar to the mark in question. goods or services for which the mark is registered.[3]“

Simply put, this is defined as an infringement of the exclusive rights attached to a registered trademark without the permission of the registered owner or licensee. Courts have repeatedly held that the similarity of two marks and the type of goods and services would create confusion

in the mind of the public. They may take unfair advantage of the hard-earned reputation of a registered trademark. To sue someone for trademark infringement, it must be proven that the infringing mark is identical or confusingly similar to the registered mark. S.29 of the Trade Marks Act 1999, provides that infringement of a registered trade mark occurs where a person other than the owner or registered user of the trade mark uses a trade mark that is identical or similar to cause confusion with a registered trademark for similar goods or service.

The first and foremost aspect noted by the Hon’ble Apex Court in the case of Starbucks Corporation v. Sardar Buksh Coffee & Co.[4] was:

“… the product both the companies were dealing with as it is an unwritten yet significant rule that if companies to the suit is dealing with a different product, then having a name almost identical still won’t be counted as an infringement. However, in our scenario, the product was identical which took the proceeding to the next step. Further, the court observed that the name used by the defendant was, to a large extent, confusing. As a consequence, the court ordered the defendant to change the name of its outlet to “Sardarji-Bakhsh Coffee and Co.” from “Sardarbuksh Coffee & Co”. However, the court provided a privilege to the defendant that if any other third party, in future, uses the word mark “Bakhsh” the defendant can sue them for the same.”

The trademark owner has the exclusive right to use his trademark or transfer it to a third party. If a similar mark is used for identical or confusingly similar products or services, this constitutes trademark infringement. In the case of a registered trademark, the registered owner can sue for infringement. However, for unregistered trademarks, conventional remedies such as passing off may be applicable.

3. ESSENTIALS OF INFRINGEMENT

The Court in S.M. Dyechem Ltd. v. Cadbury (India) Ltd [5] observed:

“…To prove trademark infringement, the plaintiff must demonstrate the copying of the essential features of their registered trademark. The burden of proving deception lies with the plaintiff alleging infringement. Infringement can occur even if only some essential features of the mark are used. Identifying essential features depends on court decisions and evidence standards, including the sound of words in the mark.”

S.29 of the Trade Marks Act, 1999, outlines various forms of registered trademark infringement. It states that infringement occurs when an unauthorized person uses a mark identical or deceptively similar to a registered trademark in the course of trade, leading to consumer confusion or an association with the registered trademark. In particular, infringement is presumed if the mark’s identity or similarity and the goods or services’ identity or similarity cause confusion. Infringement also includes using a mark with a reputation in India to unfairly benefit from or harm the distinctive character or reputation of the registered trademark. Additionally, the use of a registered trademark as part of a trade name, on goods, packaging, business papers, or in advertising, without authorization, constitutes infringement. This includes importing, exporting, or applying the mark to materials for labelling or advertising, especially when done knowingly without authorization. Advertising that unfairly exploits the

trademark, damages its distinctiveness, or harms its reputation is also considered infringement. Finally, the spoken use of trademarked words can infringe upon the registered trademark just as their visual representation can.

4. REMEDIES AVAILABLE

The trademark owner has the right to sue the infringer. Infringement occurs when an entity other than the registered owner uses the same or a confusingly similar mark in relation to the same products or services for which the trademark is registered. If a trademark is not registered, it cannot be the subject of infringement proceedings[6]; however, the owner may seek legal recourse under common law for fraud or misrepresentation or under laws against unfair trade practices. Remedies act as measures for the infringement of both registered and unregistered trademarks.

Courts can issue injunctions, either perpetual or temporary. A perpetual injunction is permanent and granted when the suit is decreed. A temporary injunction is for a specified period, typically until the court issues a final order. These can be sought under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908. Injunctions prevent the defendant from continuing to use the infringing mark, thereby protecting the plaintiff’s trademark. The aggrieved party can claim damages for the loss suffered due to the infringement of their exclusive trademark rights. Also, the plaintiff can seek an account of profits made by the infringer and an order for the delivery or removal of infringing products.

The Act also underlines criminal remedies for the Plaintiff. S.103 of the Act outlines penalties for the improper use of trademarks, trade descriptions, and related matters. Penalties apply to cases involving the fabrication, wrongful application, or falsification of trademarks, false representation of origin, and tampering with origin indications. Penalties for trademark falsification include imprisonment for six months to three years and fines ranging from fifty thousand rupees to two lakh rupees. Exceptions apply if reasonable efforts to prevent falsification were made and there was no legitimate doubt about the trademark’s legitimacy at the time of the alleged violation.

Further, s.139 provides, any person who sells, lets for hire, exposes for sale, or possesses goods or services with a false trademark or trade description, or without the required indications of the country of origin or manufacturer details, is subject to penalties, exceptions being, (a) they took all reasonable precautions and had no reason to suspect the genuineness of the trademark or that an offense had been committed; (b) they provided all information about the source of the goods or services upon the prosecutor’s demand; or (c) they acted innocently. In case of non-compliance, imposition of imprisonment from six months to three years and a fine from fifty thousand to two lakh rupees.[7] Police can seize the assets of individuals liable for infringement, subject to reasonable grounds proving the infringement.

5. PASSING OFF

The court observed in Kaviraj Pandit Durga Dutt v. Navratna Pharmaceuticals Laboratories[8]:

“… As while an action for passing off is a common law remedy being in substance an action for deceit, i.e., a passing off by a person of his own goods as the goods of another, it is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of his exclusive rights to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is not an essential in an action for passing off, but is the sine que non (absolute necessary) in the case of infringement.”

The concept of “passing off” is not explicitly defined in the Trade Marks Act, 1999, but s.27 acknowledges the common law rights of trademark owners to take legal action against misrepresentation. The Indian Supreme Court describes passing off as a form of unfair commercial competition where one party seeks to benefit economically from another’s established reputation through deceit. To establish a passing off action, key elements must be proven: misrepresentation, the defendant’s conduct in business, misrepresentation to clients, intent to harm the plaintiff’s reputation, and actual harm caused to the plaintiff’s business or reputation. The defendant’s motive is irrelevant once the plaintiff’s reputation is established.

Reliefs in infringement or passing off cases, as outlined in s.135(1) of the Act, include permanent and temporary injunctions, compensation or account of profits, and orders to surrender infringing labels and destroy or erase infringing markings. The Trade Marks Act, 1999, also recognizes trademark counterfeiting as a cognizable offence, allowing complaints to be made to the police and enabling courts to conduct suo moto search and seizure operations. Civil action can be taken against violations, regardless of whether the trademark is registered, pending, or unregistered. Courts may grant injunctive relief, compelling the infringing party to cease using the infringing trademark, especially when consumer confusion is likely. Monetary damages may also be awarded to compensate for losses suffered by the trademark owner and profits gained by the infringer, with the potential for substantial damages in cases of wilful or reckless infringement.

6. CONCLUSION

The protection of trademarks is essential to maintain the integrity and distinctiveness of brands, ensuring that consumers can reliably identify the source of goods and services. Trademarks serve as a critical marketing tool that encapsulates the brand’s reputation, quality, and identity, fostering consumer trust and loyalty. Legal protection against unauthorized use prevents confusion in the marketplace, which could dilute the brand’s value and mislead consumers. Furthermore, it enables trademark owners to safeguard their investments in developing and promoting their brands. Protecting trademarks also deters counterfeit activities and unfair competition, thereby promoting fair trade practices. This legal framework not only benefits trademark owners by securing their exclusive rights but also protects consumers from deception and ensures that they receive the expected quality and standards associated with the trademark. Overall, robust trademark protection underpins the economic value of brands, supports consumer confidence, and contributes to a well-functioning marketplace.

7. BIBLIOGRAPHY

a) “Trademarks”, WIPO- World Intellectual Property Organization, available at: www.wipo.int (last visited on 16/06/2024)

The Trademarks Act, 1999, available at: i

[1] “Trademarks” WIPO, available at: https://www.wipo.int/ (last visited 14/06/2024) 2 The Trademarks Act, 1999, s.2(1)(zb)

[2] Supra note 2, s.25

[3] Supra note 2, s.29

[4] CS (COMM) 1007/2018

[5] AIR 2000 SC 2114

[6] Supra note 2, s.28

[7] The Trademarks Act, 1999, s.104

[8] AIR 1965 SC 980