The grant of a trademark protects the business from unauthorised use by others. Since infringements are always carefully planned, even if a component of the trademark is copied, a suit for infringement may be instituted.
Trademark is an essential element of the overall intellectual property rights of a business. A trademark is what the consumers use to identify goods or services with a certain quality, origin, and utility of a brand. In this post, we highlight what you should do if you find someone else using your trademark, logo or any part of it.
What Is a Trademark?
A trademark is the whole gamut of identity that the business assumes in a competitive market. A trademark can include many aspects. Any logo (The M for McDonald’s), brand-name (Coca-Cola), a meaningless word (Sony), label (Arrow), numerals (Forever 21) or even a combination of colours used (The yellow and red colour scheme of McDonald’s or Maggi) qualify to be a trademark.
Since a business works hard to use all of these in its dealings, it casts an impression of a certain standard of quality in the goods. Thus, the law prohibits anyone else from employing the same combination and gives the impression that the goods belong to someone else.
What Should You Do if Someone Uses Your Registered Trademark?
In case you find someone with the same registered trademark, here are few pointers that should guide your course of action:
You should ideally ask yourself the following questions:
- Find out their area of business, does it fall in the same industry as yours?
- Do they deal in a product or service similar to your business?
- How long have they been in their business and how long has the infringing trademark been used?
- Perform a quick public search to ascertain whether their trademark is registered or not
- Whether a reasonable buyer looking at the goods or services is likely to confuse the two or feel they are similar?
In case the entity that has infringed your trademark falls within the same industry, a similarity in mark on the goods or services is likely to deceive consumers. Hence, it becomes actionable.
- Even if one of the trademarks is unregistered – either yours or the infringing trademark, courts look at prior use
- If both the trademarks are unregistered, there is a greater chance that the business that started using the mark first gets proprietary rights
- Even if your trademark has registration, legal outcomes may vary if the other business on an unregistered trademark can establish prior use with certain complementary factors. Having a steady customer base and reputation in a certain market would work in their favour
- If you own a registered trademark, your lawyer would help you establish rights accruing from the grant of trademark registration. The court can impose limitations such as barring the use of trademarks of the unregistered entity outside of their geographical market, or region.
Trademark Complain About Unauthorised Domain Name Use
- Domain names are virtual trademarks as they confer identity and address to the brand name
- The expansion of online shopping has made domain name protection even more necessary
- Rules similar to infringement apply to domain name infringement as well
- In a leading case, Maruti Udyog and Suzuki Moto Corp v. World Information Pages – it holds that the use of domain name “marutisuzuki.com” was deceptively similar to the “Maruti Suzuki”. This was held to be an infringement.
Using Your Name as a Trademark
The trademark law recognises the right of every person to use their name in a Bona fight manner for their own business. However, this must be honest, without causing confusion or deception. If there exists a person with the same name in the same market having goodwill and reputation. Then, another person with the same name may not entitle to do his business under that name.
Frequently Asked Questions
Q1: Can I trademark a name if someone else is using it?
Yes. If a business obtains an over a specific name – such as “Avon”, it doesn’t necessarily preclude other businesses from using it. However, the most important criteria to consider here is the industry and the nature of goods and services. A bicycle brand “Avon” is not likely to have confusion with a cosmetics brand “Avon”. Hence, the two trademarks may coexist without any likelihood of prejudice to either brand.
Q2: Can someone steal your trademark?
Absolutely. Steal, not in the physical sense of the term (even if they run away with your certificates) but in the applied aspects of it. Tata, Reliance and Birla have become such well-known trademarks. Anyone using these in their business is likely to dishonestly induce an assumption of association with these mega-companies.
Q3: Can I sue someone for using my business name?
The practical considerations for suing someone for using your business name would depend on whether they operate in the same industry. Deal in the same goods or services. If they do, the court would look at whether the business name used by the other party is deceptively similar to your business name. In doing so, the essential factor is whether a reasonable buyer intending to buy the goods would have confusion. Additionally, they believe the goods with the infringing to be the original. A classic example is a case against the brand “Parle-J”, which manufactured biscuits and wrapped them in almost identical wrapping as “Parle-G”.