Trademark Infringement by Company360.in

INTRODUCTION

A trademark means a unique symbol or word used to represent a business or its products and the word ‘infringement’ means violation. Therefore, trademark infringement refers to violation of the exclusive rights attached to a trademark without any authorization of the trade owner or any licensee. In simpler words, it is the unauthorized usage of a registered trademark.

In India, the trademark registration rights are protected by the Trademarks Act, 1999. It deals with the trademark registration, protection and prevention of infringement of trademarks. It also deals with the rights of holder of the trademark, penalties for any fraud committed, remedies for the damages and mode of transference of any trademark.

McDonalds vs McDowells Trademark Infringement

TYPES OF TRADEMARK INFRINGEMENT

There are two types of trademark infringement :

1) DIRECT INFRINGEMENT : It is defined under Section 29 of the Trademarks Act, 1999. There are few elements that are required for a breach to occur such as use by an unauthorized person, identical or deceptively similar registered trademark, etc.

2) INDIRECT INFRINGEMENT : There is no specific provision in the Act which defines indirect Infringement. However, it is liable. According to section 114 of the Act, if a company commits an offence of indirect Infringement , the whole company will be liable which is vicarious liability. The only exception to it is a person who acted in good faith and without knowledge of the infringement.

GROUNDS FOR FILING TRADEMARK INFRINGEMENT CASE

According to the Trademarks Act, 1999 a trademark is infringed if :

• Used by an unauthorized person : This means when the trademark is used by a person who is not the authorized holder of the registered trademark.

• Identical or similar trademark : If the trademark used by unauthorized person is either identical or similar to the registered trademark, then it is considered as infringement of trademark.

• Registered trademark : The Trademarks Act, 1999 only protects the trademark which are registered.

• If the infringed mark is used in advertisements or is printed.

Section 134 of the act provides the jurisdiction of filing a case for infringement. The person may file a suit in case of infringement of a registered trademark. The person filing a suit must fulfill the requirements as mentioned below :

• The plaintiff must be the registered holder of the trademark.

• The defendant must have used a trademark similar to that of plaintiff which may lead to confusion.

• The act of defendant must not be done accidently or in good faith.

• The used of mark by the defendant must be for the similar goods or services for which the trademark is registered.

CASE LAW : Yahoo!, Inc. v. Akash Arora & Anr

The plaintiff had a domain name ‘Yahoo!’. The defendant had a domain name ‘Yahoo India!’ which was identical and similar to the plaintiff’s registered trademark. In this case, the court thought that the internet users would be confused and deceived that both the domain names have same source. The defendant took a defense that it had disclaimer on it’s site stating that it has different source than ‘Yahoo!’. But the court held that mere disclaimer is not enough and the plaintiff is the authorized holder of ‘Yahoo!’.

REMEDIES AVAILABLE

The owner of the registered Trademark has few available remedies available in the court of law such as :

• In form of injunction : The action of an injunction means stopping one person from doing particular task or activity. Through a temporary or permanent stay, the court grants protection to the registered trademark owner.

CASE LAW : The Coca Cola Company v. Bisleri International Pvt. Ltd.

The defendant, Bisleri by an ace understanding, had sold and doled out the trademark MAAZA including formulation rights, know-how, intellectual property rights and generosity for India regarding a mango natural product drink known as MAAZA to Coca Cola. In 2008, the defendant organization petitioned for enrollment of the imprint MAAZA in Turkey and began trading natural product drink under the name MAAZA. The plaintiff, Coca Cola guaranteed lasting order and harms for encroachment of trademark and going off.

The court ordered an interim injunction against the defendant (Bisleri) from utilizing the trademark MAAZA in India just as for send out, which was encroachment of trademark.

• In form of damages : Damages refer to the recovery of loss faced by the trademark owner. The amount of compensation is decided by the courts.

• Custody of infringing materials : In this remedy, the court may ask the defendant to deliver all the goods or services with the plaintiff’s brand name or else destruct them


Trademark Registration in India Private Limited Company Registration in India Trademark Objection in India
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