How to File a Complaint against Trademark Infringement in India

Last Updated at: December 23, 2020
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Trademark Registration

Trademark infringement is a punishable offence in India. Registration enables the proprietor of the trademark to sue for infringement of the trademark. This is so because a trademark confers a monopoly right over the use of a mark. However, even without registration, some superior proprietary rights that exist in a trademark. In this post, we highlight how you can take action against trademark infringement. We also outline your rights over the trademark and details of a trademark to File a Complaint. 

  1. What are your rights if your trademark is registered? 

  2. What are the trademark classes? 

  3. FAQs

  4. Penalties in Trademark Infringement

The registration of a trademark provides an exclusive right to the business for using the trademark in respect of the goods and services for which the trademark is obtained. Thus, the owner of the trademark can also file a case for infringement against other business entities. 

Grounds for taking action for trademark infringement – When can you file a trademark complaint? 

In the following cases, we describe circumstances in which you are eligible to take action against the protection of your registered trademark – 

  1. When another business uses the mark that belongs to you in an identical or deceptively similar manner to their goods or services. For example, “Glucovita” and “Gluvita” were held to be deceptively similar.
  2. The infringement of your registered trademark is likely to cause confusion in consumers or which may give an impression of association with the registered trademark.
  3. When your registered trademark is infringed by a person seeking to take unfair advantage of the repute of the registered trademark. For example, The court held that Mahindra and Mahindra were a reputed business having a registered name. Another company, “Mahendra and Mahendra Paper Mills” was likely to mislead consumers into assuming a connection with the reputed company.
Eligible such as
  1. When your trademark issues by another entity as part of their trading name, name of the business or partly in the name of their business for the same goods and services for which your trademark grants.
  2. Further, when your trademark is used in an unauthorized manner without due authorization by you.
  3. When your trademark is applied to material intended to be used as labelling, on the packaging of goods, or for advertising of goods or services. For example, in Colgate Palmolive Company v. Anchor Health – the court held that similarity in shape and color combination would also amount to passing off.
  4. When your trademark infringement is by advertising against honest practises in industrial or commercial matters, against the reputation of your trademark.
  5. In case the distinctive elements of your trademark are words, the trademark can infringe by written, spoken use of these words as well as including them in visual representations by another company. Thus, even phonetic similarity is punishable. In a case, “Andala” and “Ambala” is similar in their pronunciation and thus, violative of trademark registration.

get Trademark registration

What are the trademark classes?

A trademark class describes in very broad terms the nature of the goods or services. India follows the European classification, in which trademarks divides into 34 classes of goods and 11 classes of services. A trademark in one class, let’s say for a business operating in the vehicle industry can grant to a business in another class constituting clothing and footwear. 

Frequently Asked Questions 

1. Where do I file trademark infringement cases in India?

A trademark infringement case can file in a district court where the person instituting the suit for infringement resides or carries on business. 

2. What is not trademark infringement?

There would be no trademark infringement if the resemblance between words, images etc of the alleged infringement would not confuse the ordinary purchasers of the goods. A trademark used by honest practices of the industry, not intending to take unfair advantage is also not violative of the trademark law. 

3. What are the different remedies available for trademark infringement?

Once a trademark complaint is successful, the court can provide several remedies for the complaint. Even before the case has the final decision, the court can grant an interim injunction. This is usually when the complaint causes irreparable loss to goodwill if the infringement allows continuing. The court may also award damages which may be punitive (to punish the offender) or compensatory (to compensate for business losses). Therefore, the court may also order to destroy goods with the infringing mark and compensate for the cost of legal proceedings. 

4. What are the elements of a trademark infringement claim?

A person seeking to file a trademark infringement claim must provide evidence of the registration and use of the trademark. Thus, records of communications with the Registrar of Trademarks and trademark registration certificate serve as strong evidence. 

In the age of technology, before filing the case against an entity, an online search would ascertain. It is If the other party has a prior claim to the trademark.  All other essentials of the trademark infringement such as deceptive similarity, causing detriment to the proprietor’s business, unfair use need to be demonstrated. 

Penalties in Trademark Infringement

In the case of civil charges, the court may order for

  1. Temporary and permanent injection
  2. Goods destruction
  3. Profit damage
  4. Legal proceedings cost

In the case of criminal charges, the court may sentence/ask for 

  1. 6 months to 3 years imprisonment
  2. Rs 50,000 to Rs 2,000,00 fine

Click here: Register Trademark

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How to File a Complaint against Trademark Infringement in India

1288

Trademark infringement is a punishable offence in India. Registration enables the proprietor of the trademark to sue for infringement of the trademark. This is so because a trademark confers a monopoly right over the use of a mark. However, even without registration, some superior proprietary rights that exist in a trademark. In this post, we highlight how you can take action against trademark infringement. We also outline your rights over the trademark and details of a trademark to File a Complaint. 

  1. What are your rights if your trademark is registered? 

  2. What are the trademark classes? 

  3. FAQs

  4. Penalties in Trademark Infringement

The registration of a trademark provides an exclusive right to the business for using the trademark in respect of the goods and services for which the trademark is obtained. Thus, the owner of the trademark can also file a case for infringement against other business entities. 

Grounds for taking action for trademark infringement – When can you file a trademark complaint? 

In the following cases, we describe circumstances in which you are eligible to take action against the protection of your registered trademark – 

  1. When another business uses the mark that belongs to you in an identical or deceptively similar manner to their goods or services. For example, “Glucovita” and “Gluvita” were held to be deceptively similar.
  2. The infringement of your registered trademark is likely to cause confusion in consumers or which may give an impression of association with the registered trademark.
  3. When your registered trademark is infringed by a person seeking to take unfair advantage of the repute of the registered trademark. For example, The court held that Mahindra and Mahindra were a reputed business having a registered name. Another company, “Mahendra and Mahendra Paper Mills” was likely to mislead consumers into assuming a connection with the reputed company.
Eligible such as
  1. When your trademark issues by another entity as part of their trading name, name of the business or partly in the name of their business for the same goods and services for which your trademark grants.
  2. Further, when your trademark is used in an unauthorized manner without due authorization by you.
  3. When your trademark is applied to material intended to be used as labelling, on the packaging of goods, or for advertising of goods or services. For example, in Colgate Palmolive Company v. Anchor Health – the court held that similarity in shape and color combination would also amount to passing off.
  4. When your trademark infringement is by advertising against honest practises in industrial or commercial matters, against the reputation of your trademark.
  5. In case the distinctive elements of your trademark are words, the trademark can infringe by written, spoken use of these words as well as including them in visual representations by another company. Thus, even phonetic similarity is punishable. In a case, “Andala” and “Ambala” is similar in their pronunciation and thus, violative of trademark registration.

get Trademark registration

What are the trademark classes?

A trademark class describes in very broad terms the nature of the goods or services. India follows the European classification, in which trademarks divides into 34 classes of goods and 11 classes of services. A trademark in one class, let’s say for a business operating in the vehicle industry can grant to a business in another class constituting clothing and footwear. 

Frequently Asked Questions 

1. Where do I file trademark infringement cases in India?

A trademark infringement case can file in a district court where the person instituting the suit for infringement resides or carries on business. 

2. What is not trademark infringement?

There would be no trademark infringement if the resemblance between words, images etc of the alleged infringement would not confuse the ordinary purchasers of the goods. A trademark used by honest practices of the industry, not intending to take unfair advantage is also not violative of the trademark law. 

3. What are the different remedies available for trademark infringement?

Once a trademark complaint is successful, the court can provide several remedies for the complaint. Even before the case has the final decision, the court can grant an interim injunction. This is usually when the complaint causes irreparable loss to goodwill if the infringement allows continuing. The court may also award damages which may be punitive (to punish the offender) or compensatory (to compensate for business losses). Therefore, the court may also order to destroy goods with the infringing mark and compensate for the cost of legal proceedings. 

4. What are the elements of a trademark infringement claim?

A person seeking to file a trademark infringement claim must provide evidence of the registration and use of the trademark. Thus, records of communications with the Registrar of Trademarks and trademark registration certificate serve as strong evidence. 

In the age of technology, before filing the case against an entity, an online search would ascertain. It is If the other party has a prior claim to the trademark.  All other essentials of the trademark infringement such as deceptive similarity, causing detriment to the proprietor’s business, unfair use need to be demonstrated. 

Penalties in Trademark Infringement

In the case of civil charges, the court may order for

  1. Temporary and permanent injection
  2. Goods destruction
  3. Profit damage
  4. Legal proceedings cost

In the case of criminal charges, the court may sentence/ask for 

  1. 6 months to 3 years imprisonment
  2. Rs 50,000 to Rs 2,000,00 fine

Click here: Register Trademark

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Avani Mishra is a graduate in law from the National Law Institute University, Bhopal. She qualified the Company Secretary course with an All India Rank 1 and is a recipient of the President’s Gold Medal for her academic distinctions. She also holds a B.Com degree with a specialization in Corporate Affairs and Administration.