Trademark is important for any business for building a brand and its brand image in the mind of customers to gain their trust and brand recall easily. Infringing trademark rights means taking undue advantage of that business brand value. It becomes important for businesses to know about the trademark infringement to avoid such things. This article will help you to know about the grounds for filing trademark infringement.
What is trademark infringement ?
Trademark infringement has defined in The Trademarks Act, 1999 under Section 29 as
‘A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.’
For understanding this in simple words trademark infringement means, violation of rights of a trademark owner which he gets after the registration of trademark.
Grounds for filing lawsuit of trademark infringement
You cannot claim any action if the trademark is not registered according to Section 27 of The Trademarks Act, 1999. Therefore, it is important that trademark is registered under the Act to file lawsuit for any infringement.
Following situations can be considered as ground for filing case of infringement of trademark.
- Deceptively similar or identical trademark in relation with similar goods or services:
This ground is most common ground for filing an Trademark infringement case in India, wherever there exists a prima facie case of similarity between the marks this ground can be invoked. The claim of infringement on the basis of similarity can be strengthen by carefully studying the Trademark Examination report of the mark so accepted and advertised by the Trademark registry, in case the trademark examiner has cited the opponent’s mark in the Trademark objection report, it makes the case strong as it is the prima facie case wherein even the Trademark examiner had considered the mark to similar and conflicting with the opponent’s mark.
Therefore, before filing for Trademark infringement case in India or Trademark opposition in India one must carefully read the entire file history of the mark to be opposed, for example, its Trademark objection report must be studied and all cited marks must be studied and what exact Trademark objection reply was submitted by the applicant of the mark to be opposed were as these all minor details may form a solid and crucial ground for strengthening the ground for Trademark opposition essentially based on deceptive similarity.
If someone is using a trademark which is identical or deceptively similar to the trademark which is registered under the Act and the goods or services are related to same industry, then it can be considered as a ground for filing criminal or civil lawsuit.
In Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. , the dispute between parties arose when defendant start selling medicine under name ‘Falcitab’ which was similar to the trademark registered medicine by plaintiff named ‘Falcigo’. Also both the medicines were for the treatment of same disease. Court observed and decided that, ‘Falcigo’ is widely known medical brand name and ‘Falcitab’ can create confusion.
Court also said that it is insignificant whether both parties trade in similar goods or services or field and has laid down some criteria.
- Similar or Identical trademark is creating confusion for common public:
If a trademark which is identical or similar to a registered trademark and causing confusion about the registered trademark is the ground for taking legal action against such infringement of trademark.
- Use of business name which is a registered trademark without ownership:
If a business is using a trade name which is similar to the registered trademark without ownership then such trade name will be considered as violation of trademark rights and this is ground for filing a lawsuit in the court for trademark infringement.
In the case of Yahoo!, Inc. vs Akash Arora & Anr, defendant was using a website domain name ‘yahooindia.com’ similar to the registered trademark ‘Yahoo!’ and ‘yahoo.com’. Court held that use of this domain is infringement of trademark of Yahoo.
- Unfair advantage of a trademark which is registered:
If someone is taking unfair advantage of registered trademark by using it in advertisements or in marketing of his own business without any legal permission then it will be considered as trademark infringement.
- Use of registered trademark for product packaging without any authorization:
If a registered trademark is used for packaging of products without having any proper authorization from the owner of such trademark will be infringement of trademark. In such case owner of that trademark can seek legal remedy.
If someone use registered trademark beyond the permitted limits it will be considered as infringement. For example, if permission is given for only XYZ product and not for others then use of trademark for other product will be infringement. Also, if someone use trademark even after the expiration of time period will be considered as infringement. For example, the use was permitted for one year, use of trademark after will be infringement of trademark rights.
In the case of The Coca Cola Company v. Bisleri International Pvt. Ltd., the defendant had authorization of use of registered trademark ‘MAAZA’ from The Coca Cola Company in India by master agreement. Dispute between the parties was for the use of this trademark products exported from India to Turkey. In this case court decided that use of trademark outside India will be infringement of rights and beyond the authorized use.
It is important for any business to know about their Trademark Rights because infringement of such rights can affect their business. We discussed the various grounds for filing the trademark infringement case and some case laws related to this. The topic of grounds for trademark infringement is very vast but we tried to cover the basic in this article.