Trademark Infringement

What Is Trademark Infringement?

Trademark infringement is the unauthorised trademark use that will likely confuse consumers. A trademark is a word, phrase, symbol, or design used to identify and distinguish the goods or services of one party from those of others.

To be considered trademark infringement, the trademark’s unauthorised use most likely cause confusion among consumers. This means that consumers must be likely to believe that the goods or services offered by the infringer come from the same source as those offered by the trademark owner.

There are a number of ways in which trademarks can be infringements, including:

The use of a similar or identical mark,
The use of the mark in a way that may lead to confusion, or
The use of the mark to deceive consumers.

What Amounts to Trademark Infringement?

Trademark infringement occurs when someone uses a trademark without permission from the trademark owner. This can include using a similar or identical mark, using the mark in a way that is likely to confuse, or using the mark to deceive consumers.

Infringement of trademarks can include the use of a similar or identical trademark to sell products or services similar to those offered by the trademark owner, the use of a mark in a manner that is likely to confuse or deceive consumers, or the registration of a domain name that is similar to a trademark to sell services or products.

What is the Trademark Infringement Report?

A Trademark Infringement Report is a document used to identify and address instances of trademark infringement. It is typically prepared by a trademark owner or an attorney representing the owner. The report contains information about the infringing party, including their identity and the nature of the infringement.

One of the most important components of a Trademark Infringement Report is the comparative analysis of the trademarks. This analysis examines the similarities and differences between the infringing and original trademarks. It may involve reviewing the visual appearance, the sound or pronunciation, and the meaning or connotation of the trademarks.

Based on the results of the comparative analysis, the report proposes a course of action to address the infringement. This may involve legal action, such as filing a lawsuit, sending a cease and desist letter, or other measures to stop the infringer from using the trademark without permission.

The Trademark Infringement Report is an important tool for protecting intellectual property rights. It provides a detailed account of the infringement, which can be used to support legal action and deter future infringers. It also helps to ensure that trademark owners are aware of any unauthorized use of their trademarks, so they can take appropriate action to protect their brand and reputation.

What Documents Do You Need to Fight a Trademark Infringement?

You must gather evidence to support your case if you fight trademark infringement. Here are some documents that you may need:

Certificate of trademark registration
Proof of first use of the trademark
Evidence of the infringement
Cease and desist letter
Comparative analysis of the similar trademarks
Communications with the other party
Instances of consumer confusion
Legal documents

Types of Trademark Infringement

There are three main types of trademark infringement:

Direct Infringement

This occurs when someone uses a trademark without permission from the trademark owner.

Contributory infringement

This occurs when someone knowingly helps someone else to infringe on a trademark.

Vicarious infringement

This occurs when someone has the right and ability to control someone else’s use of a trademark and benefits from that use.

Who Can Initiate Proceedings for TM Infringement?

Any entity that owns a trademark can take legal action for trademark infringement
The entities that can initiate proceedings for trademark infringement include individuals, businesses, and organisations
A registered trademark owner may license the use of the trademark to others
Licensees may have the right to initiate legal action for trademark infringement if their rights under the license agreement are violated
An organisation representing a group of individuals or businesses may own a collective mark or certification mark
Such an organisation may have the right to initiate proceedings for trademark infringement on behalf of its members
The trademark owner or the owner’s authorised representative has the ultimate authority to initiate legal action for trademark infringement.

What Type of Legal Actions Can Be Taken for Legal Infringement?

Cease and desist notice: A cease and desist notice/ legal notice is a legal document that demands that the infringing party stop using the trademark in question. This is often the first step in resolving a trademark infringement case.
Trademark Opposition/Rectification Proceedings: If the entity/individual has applied for a same /similar trademark with the trademark registry, an opposition/rectification proceedings be initiated against the infringer in order to remove the infringing brand name from the Trademark Registry records.
Civil Proceedings-Interim and Permanent Injunction: Civil proceedings can be initiated to seek an Injunction which is a court order prohibiting the infringing party from using the trademark. A more formal legal action may be taken if the infringing party does not comply with the cease and desist letter. The injunction order can be accompanied with raid action seizing all the trademark infringing products of the infringer.
Criminal proceedings: Criminal proceedings can be initiated too for instances when some copies your trademark or applied or uses a similar trademark. If this is the case, the infringing party may face fines or imprisonment.

Steps for Infringement Vigilance

Monitor trademark filings: Regularly check trademark filing records of Trademark Registry (Govt. Records) to ensure that no one is attempting to register a trademark that is similar to your own.
Monitor online marketplaces: Keep an eye on popular online marketplaces such as Amazon, eBay, and Alibaba to ensure that no one is selling counterfeit/similar branded products that infringe on your trademark.
Conduct regular web searches: Conduct regular web searches to identify any instances of trademark infringement that may be taking place on websites or social media platforms.
Set up Google Alerts: Set up Google Alerts for your trademark or brand name to receive notifications whenever new content containing those keywords is published online.
Work with a trademark monitoring service: Consider working with a trademark monitoring service that can monitor trademark filings, online marketplaces, and web searches on your behalf.

Platforms where trademark infringement may occur

Online marketplaces: As mentioned above, popular online marketplaces such as Amazon, eBay, and Alibaba and many more are common places for trademark infringements to take place by different sellers.
Social media platforms: Social media platforms such as Facebook, Instagram, and Twitter are also common places for trademark infringement to occur, as individuals and businesses may use your trademark or brand name without permission.
Stand Alone Websites: Infringing stand-alone websites create copycat products and aim to deceive customers by using similar naming and designs to legitimate websites. They can divert traffic and sell unauthorised replicas. Trademark owners need to be watchful and take legal action, such as sending cease and desist letters, to protect their brand and rights.

Why is Monitoring Trademark Infringement and Timely Action Important?

Trademark dilution: Trademark dilution is a risk when a brand name becomes so common that it loses its distinctiveness and becomes generic. This can happen to well-known brands and can’t be protected by trademark law. To prevent it, brand owners should register their trademarks, monitor for infringers, educate the public, and take legal action if necessary. Failure to do so can result in the loss of brand recognition and legal protection.
Protecting your brand reputation: If your trademark is being infringed upon, it can damage your brand reputation and confuse customers. Monitoring and acting against infringement can protect your brand reputation and maintain customer trust.
Preventing financial losses: Trademark infringement can result in lost sales and revenue, particularly if counterfeit products are sold in your name or a similar brand name is adopted by a third party hogging all the traffic of your client. You can prevent financial losses and protect your bottom line by taking timely action.
Maintaining legal rights: If you do not take action against trademark infringement, you may be seen as not defending your trademark rights. This can weaken your legal position if you need to take legal action in the future.
Stopping the infringement: Taking timely action against trademark infringement can help to stop the infringing activity before it becomes widespread, making it easier to contain and prevent further damage to your brand.
Prevent imitators from making profit on your product: timely action to be taken against infringements who sell their product misleading customer that those are your products and selling inferior quality products. Hence, harming the reputation by providing low quality products and causing loss to sales.

Passing Off Trademark Infringement

Passing off is a common law tort that protects the goodwill associated with a trademark. It occurs when someone uses a trademark that is identical or deceptively similar to another trademark, in a way that is likely to cause confusion among consumers.

Example of Trademark Infringement

DM Entertainment v. Baby Gift House and Ors.

Daler Mehendi, a renowned pop star from Punjab, commands a vast following among fans of Punjabi pop music. To handle his burgeoning career, DM Entertainment was established in 1996. However, the defendant company began profiting from the artist’s popularity by selling miniature dolls of him, causing significant distress to the plaintiff company. As a result, the plaintiff company sought a permanent injunction to prevent infringement of the artist’s right to publicity and false endorsement, which could lead to passing off.

The plaintiff company had been assigned all rights, titles, and interests in the artist’s personality, including the trademark ‘Daler Mehendi.’ They argued that using the artist’s reputation without authorisation or a license for goods or services would mislead the public into believing that the products were associated with the singer, resulting in passing off. The plaintiff also contended that such use for commercial gain without adequate permission from the artist or anyone authorised by them constituted an infringement of the artist’s right to publicity.

In India, character merchandising is still an unexplored area of law. This was the first case to address the issue of celebrity merchandising and recognise the importance of protecting the publicity rights of the artist.

The Coca Cola Company v. Bisleri International Pvt. Ltd.

By a master agreement, Bisleri had sold and transferred the trademark MAAZA along with formulation rights, know-how, intellectual property rights, and goodwill for India with respect to a mango fruit drink known as MAAZA to Coca-Cola. In 2008, Bisleri filed for registration of the same trademark in Turkey and began exporting a fruit drink under the name MAAZA. The plaintiff, Coca-Cola claimed infringement of trademark and passing off and demanded permanent injunction and damages.

The court granted an interim injunction against Bisleri from using the MAAZA trademark in India and for export, as it was deemed an infringement of the trademark.

What Are The Remedies Available For Trademark Infringement?

In case of trademark infringement, civil and criminal remedies are available to the trademark owner. The process for initiating such proceedings may differ depending on the jurisdiction, but here is a general overview:

Civil remedies: If a trademark owner believes their trademark has been infringed upon, they can file a civil suit against the infringing party. This can result in a court order to stop the infringing activities and possibly award damages or other monetary compensation to the trademark owner.

Damages: If the trademark infringement has caused financial harm to the trademark owner, they may be entitled to damages. Damages can include compensation for lost profits and other costs associated with the infringement.
Account of profits: In some cases, the trademark owner may be entitled to an account of profits, which requires the infringing party to pay over any profits they have made due to the trademark infringement.
Raid Action: A raid action is a civil remedy available in certain jurisdictions, especially in India, where a person can seek immediate relief from a court to stop someone from taking their trademark, copyright, or other intellectual property. As part of a raid action, local law enforcement officials help seize and preserve evidence and prevent further infringement.

Criminal remedies: Criminal proceedings can be initiated too for Trademark infringement. The infringing party can face criminal charges, fines, and even imprisonment.

Process for initiating proceedings: To initiate civil proceedings, the trademark owner will usually start by sending a cease and desist letter to the infringing party, requesting that they stop using the trademark. If this does not work, the trademark owner can file a lawsuit in the relevant District/High Court.

To initiate criminal proceedings, the trademark owner must file a complaint with the relevant law enforcement agency or public prosecutor. The agency or prosecutor will investigate the complaint and decide whether to bring criminal charges against the infringing party.

Exceptions to Infringement of Trademark India

There are a few exceptions to trademark infringement in India. These exceptions include:

Fair use: This allows the use of a trademark for purposes such as criticism, commentary, or news reporting.
Comparative advertising: This allows the comparison of one product with another, as long as the comparison is fair and accurate.
Innocent infringement: This occurs when someone uses a trademark without knowing that it is already registered.

Penalties for Trademark Infringement

The penalties for trademark infringement in India can be severe. They can include:

Imprisonment for up to three years, or
A fine of up to Rs. 20 lakh, or
Both

How to Different From It From Trademark Watch?

Trademark Watch	Civil Remedies under Social Welfare Laws
Monitors marketplace for potential trademark infringement	Addresses a range of social issues that harm the welfare of society
Tracks new trademark applications, domain name registrations, and other sources	Designed to protect consumers, public health, and prevent discrimination
Identifies potential infringers early on and takes action to protect the trademark owner’s rights	Involves legal actions taken against individuals or organisations that engage in harmful activities
Focused specifically on protecting a trademarked brand or product	Addresses broader social issues beyond trademark infringement