This Article is written by Mallika Rani Garimella, a LLM student of Veeravalli College of Law, Adikavi Nannayya University

Trademark and its importance:

A trademark represents the goodwill and reputation of a business in the marketplace, and trademark infringement occurs when an unauthorized person uses a similar or deceptively similar trademark to obtain unfair benefits or take a free ride on the goodwill of the existing trademark Section 28 of Indian Trademark Act, 1999 discusses the rights that are vested in the registered proprietor of a trademark. It also grants the registered proprietor an exclusive right to use the trademark about the goods and services in respect of which the trademark is registered, and section 29 of the act states that trademark infringement occurs when any of these rights are violated. To put it simply, trademark infringement takes place when a person other than the registered proprietor uses the exact similar or deceptively similar trademark to the registered trademark for similar goods or services without the permission of the registered proprietor to gain unfair advantages.

Trademark Protection:

The increase in the production and distribution of goods required the emergence of trademark law. Every manufacturer has been producing a line of different products. For identifying and distinguishing them from goods of other producers, a variety of symbols, marks, or devices have been used. Thus, these words, names, symbols, shapes, devices, packaging, combinations of colours, or any combination adopted and used by the manufacturer to differentiate their goods from those of others are known as trademarks.

Section 2(1)(zb) of the Trade Mark Act, 1999 defines the term trademark as a mark capable of being represented graphically and capable of distinguishing their goods or services from that of another person,

Section 2(1)(m) of the Trade Mark Act, 1999 defines a mark to include a device, heading, brand label, name, ticket, signature, letter, word, numerical, shape of goods, packaging, or combination of colours or any other combination. This definition of mark is considered to be an inclusive definition, which means, it may include other things under the purview of this definition.

Obtaining trademarks with respect to the brand names of the various products/services offered by a business enables the business to protect its brand value legally more easily.

Benefits of Trademark Registration:

The registration of the trademark confers upon the owner the exclusive right to use the trademark about the goods or services in respect of which the mark is registered and to indicate so by using the symbol R, and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar marks due to special circumstances, such rights do not operate against each other.

Limitations on Registration:

Any part of the trademark which is non-distinctive, will not be given a monopoly right and will not be registered. The registrar is empowered to impose conditions or limitations at the time of accepting the application for registration of a trademark.

Further, Sec 28(3) of the Trade Mark Act, 1999, specifies that in case of two or more registered proprietors whose trademarks are identical to or resemble each other, in that case, the exclusive right to such marks cannot be asserted against each other but these registered proprietors have a right to file suit against the third person for infringement of their trademarks respectively.

Trademark Types:

· Word Marks

· Figurative Marks

· Shape Marks

· Position Marks

· Colour(Single) Marks

· Colour(Combination) Marks

· Sound Marks

· Motion Marks

· Multimedia Marks and even

· Hologram Marks

Classification Based Rights:

When registering a trademark, you register the mark within a (or a number of) certain classifications.

There are 45 different classes in the Nice classification system:

Trademark registration involves 35 covered goods and 10 covered services.

For example, a UK trademark in Class 1 covers “Chemicals used in industry, science, and photography…” whereas Class 43 covers "Services for providing Food and Drink; temporary accommodation; restaurant, bar, and catering services…”

Because of this, it may not be trademark infringement to use an identical or similar sign/mark within a different classification. (Though this can still be trademark infringement, and best avoided). When it comes to trademark infringement, each of the above basic attributes of trademarks comes into play.

There are also enhanced rights that belong to really well-known brands such as Coke-Cola, so even though you make a T-shirt with a well-known logo on it, you can fall foul of trademark laws! Trademark registration is important for most big businesses. Infringing goods can seriously harm businesses and a likelihood of confusion is almost certain to attract adverse attention to the brand.

Trademark Removal from Register:

It can be removed on application to the registrar on the prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can Suo Moto issue a Notice for removal of a registered trademark.

Trademark Laws Sources:

· The National Statues i.e. The Trade Marks Act, 1999, and rules made thereunder

· International Multilateral Convention

· National bilateral treaty

· Regional treaty

· Decision of the courts

· Office practice reduced in Manuals and guidelines of the courts

· Decision of Intellectual Property Appellate Board

· Text Books written by academicians and professional experts.

Trademark Infringement:

A Trademark Infringement is a violation of the exclusive rights attaching to a registered trademark without authorization of the trademark owner or any licensees. Infringement may occur when the infringer uses a trademark that I identical or confusingly similar to a registered trademark owned by another person, about products or services that are identical or similar to the products or services that the registration covers. A trademark that is not registered cannot be infringed as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner can commence proceedings under the common law for passing off or misrepresentation, or under legislation that prohibits unfair business practices. To establish infringement about a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark, and no further proof is required.

Types of Trademark Infringements:

1. Direct Infringement

2. Indirect Infringement

Direct Infringement:

· Unauthorized Use: The Infringement of a trademark only occurs when a person uses the trademark without the owner’s permission. If it is used with the owner’s knowledge, then it is not a violation.

· Identical or Deceptively Similar: If the used trademark is the same as the registered trademark or consumers are confused between the marks and think they are the same.

· Registered Trademark: The Act only protects the trademark registered under India’s Trademark registry. If there is an unauthorized use of an unregistered trademark, the passing of law will be employed. A claimant must demonstrate goodwill, misrepresentation, and damage to their reputation to establish a case.

· Class of Goods or Services: Unauthorized use of the trademark for the propagation of goods or services must come under the same class of unregistered trademark.

Indirect Infringement:

· Vicarious Infringement: When a person controls the infringement done by the direct infringer, it comes under vicarious infringement.

· Contributory Infringement: When a person knowingly aids, support, or contributes to the infringing activities of the direct infringer, it is a contributory infringement.

When a registered trademark is not infringed:

Section 30 of the Trade Mark Act, 1999, certain conditions where the trademark is not infringed. The alleged infringer can use it to defend themselves from the suit for infringement.

§ Using Indicating characteristics

§ Limitations on Registration

§ Authorized use by proprietor or registered user

§ Adaptation of Goods or Services

§ Use of Identical or Similar Trademarks

Defences against trademark infringement:

Fair Use: This means they either had permission from the trademark owner or didn’t intend to deceive customers. There are two types:

ü Descriptive Fair Use: When a trademark is used for a description purpose rather than targeted on a specific mark on goods and services.

ü Nominative Fair Use: When a trademark is used to refer specifically to the products or services.

Prior Use: If someone has been using a trademark before it was registered by someone else, they have rights over it, even if the later user registered it. This defence is valid if the defendant has used the mark longer and has built a reputation.

Non-Use by the Registered Owner: If the trademark owner hasn’t been using the trademark for a long time, the defendant can use it, provided they can prove they have a legitimate reason to do so.

Delay and Acquiescence: If the trademark owner delays taking action against infringement, their rights might be seen as waived, allowing others to use the trademark.

Generic Use: If the trademark has become generic for the type of goods/services, it loses its distinctiveness and cannot be protected. For example, aspirin and elevator.

Remedies:

In India, Sec 29 and Sec 30 of the trademark against the unauthorized usage of its restriction by the third party. The Trade Mark Act 1999 shields the trademark with civil and criminal remedies. Civil Proceedings could be started by the owner of the trademark before the District Court in whose jurisdiction the owner exists.

1. Injunction: An injunction is stated as stopping one individual from carrying out a particular activity or action through the judicial procedure. Regarding trademark infringement, it is limiting an individual from unauthorized usage of the trademark. Using a temporary or permanent stay, the court allows protection for the trademark holder.

2. Damages: The Recovery of loss suffered by the trademark holder through the trademark infringement. The fiscal value of financial loss or brand damage is recovered under this remedy. The sum of damages would be allowed by the court after considering the actual as well as the expected loss of the owner because of infringement.

3. Custody: The Court might ask the violator to deliver all the products that are categorized with the brand name. In such cases, Courts might direct the authorities to withhold the materials accounts and destroy all such products. Where the trademark relates to services, that is if a Service Mark has been infringed, the order might be passed to stop the provision of the services instantly by the violator.

Case Law: Dabur India Ltd Vs Real Drinks Pvt Ltd, 2014, In this case, the defendant has a registration for the marks namely ‘REAL MANIK’ and ‘REAL SODA’, and the words ‘REAL CAFÉ’ were written. It only the word used the word ‘REAL’ for its beverages, which means it was using only a part of its mark and not its whole registered trademark. Further, the defendant also changed its writing style of the word ‘REAL’ on the label of its products which made it more identical to the label on the products of the plaintiff. The defendant did not give any satisfactory explanation for doing such an act and thus, no defence under Sec 29(3) of the Act was available to the defendant, had the defendant used the whole registered trademark on the label of his line of products, instead of using it partially.

Conclusion:

In conclusion, trademark infringement poses a significant threat to intellectual property rights in India, particularly in industries such as pharmaceuticals, information technology, consumer goods, and e-commerce. The burden of proof lies with the plaintiff to establish trademark violation, and overall similarity between trademarks is a crucial factor in determining infringement. Intent to deceive is not a requirement for trademark infringement, and the court can grant reliefs such as injunctions to protect the rights of trademark owners. Business needs to understand the legal framework and take necessary measures to safeguard their trademarks in India.

References:

1. Department of Promotion of Industry and Internal Trade- Intellectual Property of India, ‘Trade Marks Act’ 1999, https://www.ipindia.gov.in, accessed on 17 October 2024.

2. Dr R. K Dewan & Co, ‘Dabur India Ltd vs Real Drinks Pvt Ltd’ Feb 6th (2014), https://lexology.com, accessed on 18 October 2024.

3. Intellect Vidhya ‘Trademark Infringement’ Nov 8th 2022, https://intellectvidhya.com, accessed on 18 October 2024.

4. Indian Kanoon, ‘Sec 29 in Trade Marks Act, 1999, https://indiankanoon.com, accessed on 17th October 2024.

5. Aravamudhan G & Nithin K, ‘Trademark Infringement in India’ Journal of Advanced Legal Research [ISSN (O):2582-7340], https://ijalr.in, accessed on 18th October.

6. Lawsikho, ‘Diploma in Intellectual Property: Prosecution, Licensing and Litigation’ 2022, https://lawsikho.com, accessed through a textbook

7. Indian Kanoon, ‘Sec 28(3) Limitations on Registration’ https://indiankanoon.org/doc/1045167/133698279/ accessed on 18th October 2024.

8. Wikipedia, ‘Trademark Marks Act 1999, https://en.m.wikipedia.org/wiki/TradeMarks-Act,-1999 accessed on 17th October, 2024.

9. EStartIndia Team, ‘Trademark Infringement Remedies’ https://estartindia.com accessed on 17th October, 2024.