January 7, 2023
What is Trademark Litigation?
Trademark litigation is approaching the court to adjudicate the dispute over a trademark. Though the trademark rights are territorial in nature but such litigation may be both domestic and international in nature.
What is trademark litigation in India?
Trademark litigation in India involves issues, matters, and disputes concerning trademarks. Trademark litigation has started to become one of the most sought after field of law due to the ever-increasing competitive marketplace and simpler means of duplicity. The Trademark litigation is mostly done for infringement or passing off cases. Anyone who is aggrieved by the misuse or misrepresentation of their trademark by using a nearly identical or deceptively similar trademark can approach the courts.
Trademark Infringement Litigation
Trademark litigation in India has several types, including civil and criminal. Furthermore, one of them would be trademark infringement litigation . Any of the duplicated marks or misuse of a trademark could be challenged in trademark infringement litigation by a third party. If the trademark holder notices that somebody else is affecting or misusing his or her reputation or goodwill, he or she may file a Trademark Infringement Litigation suit. A trademark holder is entitled to legal recourse against the infringer upon bringing a lawsuit for Trademark Infringement Litigation.
Trademark Infringement and passing-off
Trademark Infringement: If the rights of a registered trademark are violated then it comes under infringement. The violation can happened due to various reasons such as, use by an unauthorized person, using a mark identical or deceptively similar to the registered mark, using a mark that can cause deception or confusion due to similarity of goods or services used for, using the registered mark as trade name or a part of it, etc. Section 29 of the Trademark Act of 1999 makes reference to trademark infringement.
Passing-Off: The precise definition of passing off isn’t given in the act, but the courts have derived it from the principles of common law. Passing off basically means selling your goods or services as if they are of someone else’s. To establish passing off, the classical trinity test has to be passed which states that there has to be misrepresentation of trademark, that the misrepresented trademark has goodwill and reputation attached to it and the aggrieved party has undergone losses and damages because of such misuse and misrepresentation. The right against passing off is available to both the registered as well as unregistered trademark owners.
Types of Infringement
1. Direct Infringement: Infringement occurs when a registered trademark’s statutory rights are violated by using the registered mark or a mark identical or deceptively similar to it without permission. Section 29 of the Trademark Act, 2019 established the elements of infringement:
Registered Trademark – Only a registered trademark could be infringed. The common law principle of passing off will implement to an unregistered trademark.
Know The Difference between Register vs Unregister Trademark
Unauthorized person – The use of the Trademark should be by someone who isn’t the owner or the authorized representative but is still using the mark or a mark that is identical or deceptively similar to it.
Identical or deceptively similar mark- the test for assessing whether marks seem to be identical or similar is determined by seeing if there is any possibility of confusion or deception among the people of trade and customers.
Goods/Services – In order to demonstrate infringement, the infringer’s goods/services have to be similar or identical to the products which the trademark Registration represents.
2. Indirect infringement: Indirect infringement is derived from the principles of common law, which states that the person or organization might not be infringing the trademark but are:
Contributory Infringement- Either aiding or abetting the infringer .
Vicarious Liability- Having the control over the infringer or benefit from the infringement. Section 114 of the Act states that when a company commits a violation of this Act, the entire company is liable.
And therefore should be held liable for the same.
Who can sue for infringement of trademarks?
Anyone who is aggrieved by the misuse or misrepresentation of their registered trademark can file a suit for trademark infringement. Whereas any unregistered trademark owner can sue for passing off. It is important to know that for a suit of passing off, actual act should have had occurred. In cases when a registered trademark owner has to sue another registered trademark owner, a suit of infringement cannot be made as per law and only passing off is maintainable.
Remediesagainst Trademark Infringement or Passing Off
Civil remedies: Section 135 of the Act provides civil remedies such as injunctions, delivery up, profit of accounts.
- Temporary/Ad-interim Injunction: If the aggrieved is able to establish that there is prima facie case of infringement or passing off, the balance of convenience lies in their favour and if the injunction is not granted he will bear irreparable loss, then the court can grant an interim injunction till the disposal of suit.
- John Doe Orders: These orders issued by the court against the defendants that are not known or cannot be traced.
- Permanent Injunction: It is the final order of the court to refrain the infringing party from conducting activities permanently.
- Appointing Local Commissioner: On the request of the aggrieved, the court can direct the appointment of a local commissioner for conducting a raid at the known/ unknown premise of the infringing parties to seize the infringing goods, accounts, any promotional material, stationary, etc. and make a report of everything that is found.
- Damages or Accounts of Profits: The aggrieved can ask for the Damages for the loss incurred due to the misuse or misrepresentation of the mark, whereas theAccounts of profits requires the infringer to provide the actual profit that they have made because of the infringing act.
- Delivery-up and Destruction: The infringing goods are provided to the Plaintiff who has the right to destruct them.
Criminal remedies: Section 102 and 103 of the Act specifies the criminal liability and its penalty. The penalty for falsifying or applying false trademark is 6 months to 3 years of imprisonment with a fine of 50,000 to 2,00,000 rupees. Though if the court is of a reason it can also impose imprisonment for less than 6 months and a fine lesser than 50,000/-.
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
