When another person uses a trademark that is the same as or similar to a registered trademark for the same or similar products or services, this is considered an act of trademark infringement . Infringement of registered trademarks is discussed in detail in Section 29 of the Indian Trade Marks Act (1999), which was passed in 1999.
In accordance with the provisions of Section 29(1), “a registered trademark is infringed upon 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 the goods or services in respect of which the trademark is registered and in such a manner as to render the use of the mark likely to be taken as being used as a trademark.” A registered trademark
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Use of Trademark
In the course of using the trademark, it is said to be infringing the right of the other company due to the use of a similar or identical trademark using for marketing of similar kinds of goods and services or the use of an identical or deceptively similar trademark for any kind of goods and services. This is described in the sub-sections of Section 29 of the Indian Trade Marks Act, 1999.
According to Section 29(9) of the Indian Trade Marks Act, 1999, an act of infringement might be considered to have occurred either when the words in question are shown visually or when they are stated out.
Reasons of Trademark Infringement
Infringement Reasons According to Section 29 of the Trade Marks Act, 1999 in India, the following are acceptable explanations for trademark infractions that have been committed:
if the unregistered mark is identical to a mark that has already been registered for products or services that are comparable.
Consumers are likely to be confused due to the similarity between an unregistered mark and a mark that has been infringed upon because of their similarities.
The unregistered mark functions in much the same way as a registered trademark would, which is to say that it has a reputation in the market.
‘Without permission, the registered trademark is used anywhere on the labelling or packaging of the product.
The registered brand is being utilised in advertising, which constitutes an unfair advantage that is either damaging to the reputation of the trademark or is working against it.
Fair Use is one of the possible defences that can be raised against trademark infringement. In order to be eligible for this defence, the accused infringer needs to demonstrate that he obtained the consent of the authorised owner of the trademark or that he acted without intending to defraud or mislead the consumers of the goods.
The concept of “fair usage” has been broken down into two categories:
Descriptive Fair Use: When a trademark is used in good faith for a descriptive purpose and not for a specific mark or goods and services, a fair use defence known as descriptive fair use may be available to the user.
Fair Use in Nominative Contexts Fair use in nominal contexts refers to situations in which a mark is used in reference to the goods and services of the registered proprietor rather than the goods and services of the user. This type of use can be used as a defence. It is permissible to do so in the event that the use of the mark is necessary in order to render the products and services more readily identifiable.
Previous use: Even if the future user of the trademark has registered the trademark, the prior user of the trademark has more rights than the subsequent user has. When the defendant has been using the mark for a longer period of time than the registered user and has built reputation in his line of work, he may utilise this as a defence against the claim that another person is infringing on his trademark.
The failure of the Registered Proprietor to utilise the Trademark: In this scenario, the burden of proof lies with the defendant, who must demonstrate that the Registered Proprietor has not used the Trademark for an Extensive Amount of Time. In addition to this, he is required to demonstrate that he has a genuine interest in making use of that trademark, an interest that the trademark’s owner does not share.
Delay and Acquiescence: In situations where there has been a delay in bringing action of the infringement by the plaintiff, it is stated that the plaintiff’s right have been waived off as the trademark owner and implicitly or explicitly permitted use of its trademark by the subsequent user. This is referred to as the “delay and acquiescence” defence.
In the event of a trademark infringement, the owner of the registered trademark has the ability to begin legal action against the party responsible for the infringement by claiming that the infringer engaged in unfair business practises. The Indian Trade Marks Act, which was passed in 1999, includes provisions for both civil and criminal remedies in the event that a trademark is infringed upon by a third party through the unlawful use of its limits.
Injunctions are a sort of civil remedy that can be used to stop an individual from carrying out a certain action or task through the judicial system. An injunction’s role is described as preventing an individual from carrying out a specified action or duty.
An injunction is a court ruling that, in layman’s terms, forbids a party from taking specific acts, such as continuing to sell a product that infringes on another party’s intellectual property rights. The legal method can be used to issue an injunction that prevents a party from making any illegal use of the trademark at all. An injunction, either temporary or permanent, may be issued by the court to provide the owner of a trademark with legal protection.
Damages are the monetary recompense for the loss that was incurred by the trademark owner as a result of the trademark being infringed upon by another party. Civil remedies in the form of damages Under the terms of this remedy, the monetary value of a damage to a brand or a financial loss is recovered. Following an analysis of the owner’s actual and potential financial losses as a direct result of the infringement, the court will decide the total amount of damages to be awarded.
Criminal Remedies: You also have the option of filing a criminal complaint against the person who is infringing on your trademark. According to the Indian Trade Marks Act, 1999, the registered owner of a trademark has the opportunity to file a first information report (FIR) through the police on an infringer, and the infringer may be punished with imprisonment for a period of not less than six months that may extend to three years and with a fine of INR 50,000 that may extend to INR 2 lakh, depending on the severity of the infraction.
Case Laws Regarding the Violation of Trademarks: Coca-Cola vs. Bisleri International Pvt Limited and Others: The defendant, Bisleri International Pvt Ltd, reached an agreement with the plaintiff, Coca-Cola Company, to transfer the trademark rights of MAAZA to Coca-Cola. As part of the deal, Bisleri International Pvt Ltd also agreed to give Coca-Cola the formulation rights, intellectual property rights, and know-how for MAAZA, as well as India’s goodwill, in exchange for the right to bottle and sell MAAZA.
The subsequent events took place in 2008, when the defendant submitted an application to register the trademark “MAAZA” in Turkey and started exporting the identical fruit drink under the name “MAAZA.” Coca Cola asserted that they were entitled to a permanent injunction and damages for trademark and passing off infringement because Bisleri had originally handed them the trademark.
In this particular instance, the Honorable Delhi High Court sustained the injunction against the defendant “Bisleri” for utilising the trademark “MAAZA.” The court also issued an interim order of permanent injunction to protect the plaintiff from suffering damage that cannot be repaired.
Industria De Diseno Textil Sa vs. Oriental Cuisines Pvt Ltd And Ors, More Often Known As Zara Fashion Vs. Zara Food: In this case, prominent fashion brand ZARA filed a complaint against a restaurant called “ZARA TAPAS BAR” for infringement and passing off of their well-known brand ZARA.
The well-known clothing brand ZARA prevailed in their case before the High Court of Delhi, which resulted in the court ordering the eatery to change its name.
The significance of registering a brand name as a business asset in India is receiving an increasing amount of attention as of late. Despite this, the owners of the businesses continue to take a passive stance towards the unauthorized use of their registered trademarks. It is possible for trademark rights to be violated within an organization, which can have a negative effect on the value of the brand as well as the market share of the firm that owns the brand. One might be able to recover and be compensated for the losses that were incurred as a result of the infringement with the assistance of a Trademark Attorney.
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