This article has been written by Ms. Aditi Mishra, a 4^th Year B.Com. LLB (Hons.) student from Institute of Law, Nirma University.

A trademark is a distinctive sign that is used by any individual, business, or other legal entity to identify the source of their products or services to consumers and to set them apart from those of other businesses. Section 2 (i) (zb) of the Trade Marks Act, 1999 defines ‘trademark’ as: “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours.”

Trademark Infringement

Section 29 of the Trade Marks Act, 1999 provide for Trademark Infringement. In the case where the exclusive rights of the possessor of the registered trademark are infringed, it is said to be an infringement of the trademark. Trademark Infringement can be of two kinds, namely, Direct Infringement or Indirect Infringement.

• Unauthorized use of a trademark, a substantially similar mark, or a catchphrase on rival or related products and services is known as trademark infringement.
• Infringement of a trademark can occur only in the event of a registered trademark. Without the owner’s or any licensees’ consent, it is a violation of the exclusive rights that are attached to a trademark.
• Having a trademark denotes a corporation’s ownership of the design and it symbolizes the reputation or goodwill of a company or brand. The illegal use of such goodwill to falsely represent and assert a trademark falls under the ambit of trademark infringement.
• Trademark infringement is a false representation of the claimed capacity to add value to products because a trademark may be used to differentiate the goods or services of one person from those of another when used in commerce and it is used to protect the name of the product or service.
• Infringing on another company’s trademark causes misunderstandings, deceit, or uncertainty about the actual source of a good or service. The key indicator of trademark infringement is whether the accused’s use gave the ordinary customer a chance to get confused.
• The most common causes for trademark infringement include employing brand names or logos that are confusingly similar to registered trademarks or are similar to them in some other way for related goods and services.

Ingredients For Trademark Infringement

• There has to be a registered trademark
• There should be a use of that trademark in the course of trade
• The said use must create confusion in the minds of customers
• There are unfair advantages to the person infringing the trademark
• The trademark is used for packaging or labelling
• There is import and export of goods under the mark

Indian Trademark Law on Infringement

The protection of trademarks against infringement, by law, is directed by the Controller General of Patents, Designs and Trademarks, a government agency that reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.

Remedies For Trademark Infringement

There are both Civil as well as Criminal remedies available against the infringement of trademark in India. Civil Remedies include Injunction, Claim for Damages, Accounts and Handing Over Profit, Destruction and Sealing of Material, Measure for Recovery of Reputation, etc. Let us look at the Criminal Remedies in detail.

Criminal Remedies

• Under the Trade Marks Act, 1999 – trademark infringement is a cognizable offence.
• The Police file a First Information Report (F.I.R.) and then the investigation is carried out accordingly.
• There is no limitation period for filing a suit for trademark infringement as it is a continuing offence.
• As per Section 134 of the Trade Marks Act, 1999 – no trademark infringement suit can be filed in a Court inferior to District Court.

The provisions of the Trade Marks Act, 1999 which provide for the criminal remedies for the infringement of trademarks:-

SECTION 103

This section provides for the penalty for applying false trademarks, trade descriptions, etc.

Punishment: imprisonment for 6 months – 3 years; fine of Rs. 50,000 – Rs. 2 lakhs; unless a lesser sentence or fine imposed by the Court.

SECTION 104

This section provides for the penalty for selling goods or providing services to which false trademark or false trade description is applied.

Punishment: imprisonment for 6 months – 3 years; fine of Rs. 50,000 – Rs. 2 lakhs; unless a lesser sentence or fine imposed by the Court.

SECTION 105

This section provides for the enhanced penalty on second or subsequent conviction. 

Punishment: imprisonment for 1 year – 3 years; fine of Rs. 1 lakh – Rs. 2 lakhs; unless a lesser sentence or fine is imposed by the Court.

• As a criminal remedy for an effective adaptation to the aforementioned provisions, the power of the person who violated it might be taken away. Only rational evidence of the violation will be considered in the police process.

Landmark Judgements

• Yahoo! Inc. vs. Akash Arora & Another (1999)

Herein this case, the defendant was using the domain name Yahoo India which was deceptively similar to the domain name of Yahoo Inc called Yahoo.com. He was rendering similar services to that of Yahoo Inc and was enjoying profits upon the reputation of Yahoo. The Court held that the similar domain name used by the defendant caused deception and confusion in the minds of the consumers and that a domain name is entitled for protection under the Intellectual Property Rights as a trademark. So, the defendant’s acts amounted to infringement of trademark and injunction orders were passed in favour of the plaintiffs as against the defendants refraining them from operating their business.

• Milmet Oftho Industries & Others vs. Allergan Inc. (2004)

Herein this case, both the Appellants and the Respondent were Pharmaceutical Companies. The Respondents filed a suit for injunction against the Appellants for passing off of the mark ‘OCUFLOX’ – the Respondents claimed that it was a medicine prepared, manufactured and marketed by them. They had the registered trademark in several countries and application for the same was even pending in India as well. On the other hand, the Appellants also claimed that it was their medicine, which they were selling in India, used for ear and eye treatment and their registration application for the same was pending. The Supreme Court held that the Respondents were the first to enter in the world market and adapt the mark so it does not matter if the mark was not used or registered in India. Thus, the injunction was granted and the Appellants were thereby restrained from using the mark – OCUFLOX.

• D. M. Entertainment Private. Limited. vs. Baby Gift House & Others (2010)

Herein this case, the famous singer Daler Mehndi had assigned all his rights, titles and interest in his personality inherent in his rights of publicity along with the trademark ‘DALER MEHNDI’ as well as goodwill vested therein to the Plaintiff Company. The Defendants were in the business of selling Daler Mehndi Dolls which were his cheap imitations and were identical to him. The Plaintiffs filed a suit against them. The Court granted injunction in favour of the Plaintiff stating that taking advantage of goodwill of a well-known trademark also amounts to trademark infringement.

• Makemytrip (India) Private Limited vs. Orbit Corporate Leisure Travels (2017)

Herein this case, MAKEMYTRIP filed a suit against GETMYTRIP for trademark infringement claiming that their mark was deceptively similar to MMT’s mark. But the plaintiffs had knowledge about this for a long time and they brought in a suit at a very later stage. The Court thus declared their judgement based on the law of acquiescence. They quashed the suit and allowed the defendant to carry on with their trade. It was a remarkable case which established that ignorance is not welcoming in cases of trademark infringement.

Conclusion

In India, the demand for trademark registration is steadily increasing, which shows how conscious individuals are becoming of the need to protect their own products. Nowadays, trademark infringement is a widespread occurrence. Even if there are various solutions to deal with the issue, not all of them are used properly. Every method used to stop infringement eventually makes the law more difficult to enforce. Any type of trademark violation has a negative effect on the person or the entity and lowers the brand’s value. Therefore, a little bit of awareness among people is needed in order to prevent any form of infringement on their own product and quickly overcome it with legal assistance and guidance.

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