Trademark infringement can attract both civil and criminal proceedings. If you’re in the process of designing a trademark or are worried about a competitor infringing your registered trademark, this article is for you.
A trademark is any unique word, logo, symbol or combination of words, symbols, and numbers that makes a brand recognizable in the market. Trademark registration grants the proprietor of the marks exclusive rights of usage in relation to the category of their goods and services.
In India, infringement of a trademark means a violation of the exclusive rights granted to a proprietor registered under the Trade Marks Act, 1999. In simple terms, trademark infringement is the unlawful use of a mark that is identical or deceptively similar to a registered trademark.
The expression ’deceptively similar’ is used when an ordinary consumer looks at a mark and is confused about the origin of the goods or services. For example, bottled water brand ‘Bisleri’, is often targeted by copycats using deceptive packaging and trade names such as ‘Bislehari’ to fool customers and leverage the goodwill of the original brand.
Sections 29 and 30 of the Act lay down certain provisions for protecting the registered trademarks in case it is infringed on by someone else.
What Amounts to Infringement in India
Section 29 of the Act says that a registered trademark is infringed when an unregistered proprietor uses the said trademark for trade and business purposes. There are few elements taken into consideration when determining whether there has been an infringement of a trademark, they are:
- If the trademark in dispute is identical with or deceptively similar to the registered trademark and is in relation to the same or similar goods or services rendered by the proprietor of the trademark.
- Moreover, if the mark is soo identical and similar that it can cause confusion in the minds of the general public due to the association of the mark with the registered brand.
- If there is any similarity between the trade name with a registered trademark, it may amount to infringement.
- A mark that is identical to one registered in India which has a strong reputation. In such a case, it can amount to trademark infringement even if such a mark is used for goods and services that are not exactly related to the original.
- If a mark is advertised and as a result, it takes unfair advantage, is opposed to honest practises, or is damaging to the registered trademark’s distinctive character and reputation. That is taking unfair advantage of the situation and amounts to infringement.
- If the registered trademark is used in material intended for packaging or labelling of the disputed mark’s goods or business paper without the authorised proprietor’s permission it amounts to infringement.
What Doesn’t Amount to Infringement in India
Section 30 of the Act specifies the limitations on the rights of a registered trademark, as well as the commercial conduct that does not constitute infringement. These manoeuvres can also be utilised as a defence in trademark infringement actions. An infringer may be freed from his liability if the use of the trademark falls within the scope of provisions mentioned in section 30.
The section says that there is no infringement of trademark when:
1. When the mark is used to indicate quality, the kind, quantity, etc
When the allegedly infringing mark is used to indicate the kind, quality, or quantity of the goods and services rendered. For example, the proprietor of RICH’S WHIP TOPPIN filed a case of infringement against the proprietor of BELLS WHIP TOPPING. The court, however, ruled against the complainant saying that the ‘whip topping’ was indicating the sort of goods it sold and the services it rendered, and hence did not amount to infringement.
2. When the mark is used outside the scope of registration
For instance, if ‘XYZ Garden Market’ can be registered with the condition that the registered proprietor may not have exclusive rights to the words ‘garden’ and ‘market’. The use of the latter terms by anyone else will not amount to infringement.
3. When there is implied consent of use
Where a person uses the mark in relation to goods and services for which the registered user had applied for the trademark and may not have removed it or has at any time expressly or impliedly consented to the use of the trademark.
4. When a registered trademark is used in relation to accessories and parts
If a registered trademark for any goods and services is in relation to parts and accessories to other goods and services. Such usage is reasonably necessary and the effect of such usage may not be considered as the deceit of the original
5. When two registered trademarks are similar to each other
Such usage of a trademark is one of two or more registered trademarks, which is identical or similar, the exercise of the right to the use of that registered trademark does not amount to infringement.
The marketplace is ruthless and there are always people waiting to use the shortcuts to make more money. Make sure that they are not using you and your brand’s identity for that. Register your trademark easily using the Vakilsearch service today to secure the future of your brand. Then you can sue anyone who infringes your rights!