Unraveling the Complexities of Trademark Infringement in India

Trademark infringement is defined in Section 29 of the Trademarks Act, 1999, the statute that outlines the provisions regarding registration, protection, and penalties for trademark infringement in India.

What is Trademark Infringement?

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion or deception about the source of the goods and/or services.

Simply put, a brand infringement occurs when an unauthorized person uses a trademark that is 'identical' or 'deceptively similar' to another brand’s registered trademark.

Types of Trademark Infringement

1. Direct Infringement

There are four criteria that must be met for a direct infringement to occur, which are as follows:

• Use by an unauthorized person:A trademark infringement occurs when a person uses a mark that has not been authorized by the registered trademark owner. It is not considered an infringement if the use of the registered trademark is with permission from the registrant.
• Identical or deceptively similar:The trademark used by an unknown person must be identical to, or deceptively similar to, the registered mark. The term "deceptively similar" refers only to the idea that the general consumer may become confused between the trademarks and believe they are referring to the same thing. The phrase "may" implies that there is a possibility of misidentifying the marks, which is enough for establishing infringement.
• Registered trademark:In terms of enforcement, the Trademark Act merely extends trademark rights to trademarks that have been officially registered with the Indian trademark registry. In the instance of a violation of an unregistered mark, passing off law applies to resolve disputes, wherein it's a matter of someone else's goodwill being damaged as a result of another's actions.
• Goods or services:For trademark infringement, the unlawful utilization of a mark must be utilized in the advertising or sale of goods or services that belong to the same classification as the registered trademark.

2. Indirect Infringement

The basic idea of indirect infringement is derived from the common law principle which holds accountable not just the primary infringer, but anyone who encourages or induces that direct infringer to commit the infringement. Indirect infringement, also known as secondary liability, has two types: contributory infringement and vicarious liability.

A person will be liable for contributory infringement when:

• A person is aware of an infringement
• A person contributes or induces the direct infringer to commit the act

There is no exception as there exists no chance of the said contributory infringer to be acting in good faith.

A person will be vicariously liable when:

• A person has the power to influence the direct infringer's actions
• A person derives a financial benefit from the infringement

Vicarious liability usually applies in the case of employer-employee relationships, wherein if a company commits an infringement, then every person responsible for the company will be liable. The only exception to vicarious liability of a company for infringement is when the company has acted in good faith and had no idea about the infringement.

REMEDIES

1. Civil: When instances of infringement occur, the court of competent jurisdiction, not lower than District Court can be approached for seeking reliefs such as grant of injunction, damages, account of profits, confiscation and destruction of goods using the infringing trademark as well as the cost of legal proceedings.
2. Criminal: A Complaint under Criminal law may also be filed against the person infringing the trademark seeking award of punishment to the infringer. This can be initiated simultaneously with the civil law proceedings.

Trademarks are given the status of intellectual property throughout the world. Many organizations—both worldwide and national—endeavor to safeguard intellectual properties like trademarks.

The consequences of trademark infringement can be very serious. If you are found to have infringed on a registered trademark, you may be ordered to pay damages to the trademark owner. You may also be subject to an injunction, which would prevent you from using the infringing mark in the future. In some cases, trademark infringement can even lead to criminal charges.

It is therefore advised to get in touch with trademark experts like the team at Global Trademark Company and get a free consultation before taking a misstep that could cost your budding business a fortune!