What is Trademark Infringement?

Trademark infringement section 29 of the Trademarks Act, of 1999 defines that there is a law protecting trademarks in India. The Act provides rules relating to registration, protection, and penalties against trademark infringement. Worldwide, trademarks are treated as intellectual property. There are many organizations, both international and national, that seek to protect intellectual properties such as trademarks.

It is the unauthorized use of a mark that is identical or deceptively similar to a registered trademark. A deceptively similar term here means that when an average consumer sees the mark, it is likely to confuse him/her as to the origin of the goods or services. In India, the body concerned with the protection of trademarks is the Indian Patent Office administered by the Controller General of Patents, Designs, and Trademarks. 

Types of Trademark Infringement India

When considering trademark infringement, it is important to know that there are two types of infringement

• Direct Infringement

Direct infringement is defined under section 29 of the Trademark  Act. Direct infringement requires certain elements to be met; They are as follows

• Identical or Deceptively Similar 

The trademark used by the unauthorized person must be either identical or deceptively similar to the registered trademark. The term 'deceptively similar' here means that the ordinary consumer may confuse the marks and believe them to be the same. The operative word here is 'may', it only needs to prove that it is a possibility and not necessarily proof of actually happening. As long as there is a possibility of misidentification of the marks, it is sufficient to prove infringement.

• Use by Unauthorized Persons 

This means that trademark infringement occurs only when the mark is used by a person not authorized by the holder of the registered trademark. If the mark is used with the authorization of the holder of the registered trademark, which does not constitute infringement.

• Registered Trademarks

This Act protects only trademarks registered in the Trademark Registry of India. In case of infringement of an unregistered mark, the common law of passing off is used to resolve disputes. It is a tort law that is used when there is injury or damage to the goodwill associated with the activities of another person or group of persons.

• Class of Goods or Services

Trademark infringement requires the unauthorized use of a mark to disseminate goods or services falling under the same class as the registered trademark.

• Indirect Infringement

Unlike direct infringement, there is no provision in the Act relating to indirect infringement. It doesn’t mean that there is not any liability for indirect infringement. The principle and application of indirect infringement arise from the principle of universal law. It holds accountable not only the principal violator, but anyone who instigates, and directly incites the offender to commit the violation. For indirect infringement, there are two types of

• Vicarious Liability 

As per Section 114 of the Act, if a company commits an offense under this Act, the entire company shall be liable. Therefore, not only the principal infringer, but every person liable to the company will be liable for indirect infringement, even if the person acted in good faith and without knowledge of the infringement. Here are the elements of vicarious liability :

The only exception to a company's vicarious liability for infringement is when a person can control the activities of a principal infringer - when that person knows of and contributes to the infringement - when that person can profit financially from the infringement.

• Contributory Infringement

There are only three basic elements for contributory infringement:-

• When the individual recognizes the infringement.
• When the person materially contributes to the actual infringement.
• When the person induces the principal infringer to infringe In the case of contributory infringement, there is no exception as the contributing infringer must have acted in good faith.

Specification of Trademark Infringement Examples

Examples of infringement cases include instances where one company files a lawsuit because it says another company is profiting from its trademark without approval.

• Marvel and DC Comics' control of 'superheroes'

The word "superhero" is trademarked by two companies: DC Comics and Marvel Comics. Everyone takes aggressive legal action when other comic book publishers use the term. Critics of this practice have denounced these companies as trademark bullies, but other publishers have yet to contest their ownership of the term. Others feel that the value of trademarks is not worth the cost of hostility and lawsuits from independent publishers.

• Apple Corps v. Apple Inc.

Critics of this practice have denounced these companies as trademark bullies, but other publishers have yet to contest their ownership of the term. Others feel that the value of trademarks is not worth the cost of hostility and lawsuits from independent publishers. However, the lawsuit was filed again after Apple Inc. introduced iTunes. The lawsuit was settled when Jobs agreed to buy the rights to the trademark from Apple Corps and then give it back.

• Wrigley's Doublemint

Although the Wrigley Company tried to trademark "Doublemint" as the name of its chewing gum, it was unable to do so in Europe because the name was deemed not creative enough. The Madrid Protocol details the laws governing the registration and enforcement of trademarks in the European Union.

Trademark Infringement Cases

Although definitions of infringement differ in the United States as well as around the world, all companies face the risk of going to court if their trademark is likely to be confused with another company's trademark. Chances also increase in cases where the products are similar or they use the same purchase channel.

The truth is that many companies want to avoid the infringement of trademark cases —

They can be long, expensive, and don't always have the desired results. A trademark lawsuit can cost anywhere between $120,000 and $750,000 and take years to fully resolve.

Although large corporations are unlikely to face this infringement lawsuit, when they do, they are likely to suffer some form of image damage. Trademark infringement lawyer work is very important in these infringement cases. Few court cases involve infringement of trademark lawsuits including large companies

• 3M vs. 3N

Although the products are somewhat different, 3M's reputation and infringement are that 3N was able to gain customers and profit from similar marks.

• D2 Holding Vs. "House of Cards" – 

D2 Holdings filed a lawsuit against MRC II Distribution Company, which brought the series "House of Cards" to Netflix. D2 has retained the trademark "House of Cards" since 2009 for use in entertainment services and goods. In its request, it is asking for multiple stop-and-go, including items such as fan merchandise. MRC had filed for the trademark with the USPTO and, having failed, may have known that the trademark was currently held.

• GoDaddy  Vs. Academy of Motion Picture Arts and Sciences – 

The legal fight between the academy and domain retailer GoDaddy over cybersquatting got to an end. The lawsuit involved GoDaddy allowing confusingly similar domain names such as 2011 Oscars.com. While the academy claimed that GoDaddy allowed it to profit from the sites, the court ruled that GoDaddy was not profiting in bad faith.

• Louis Vuitton Vs. Louis Vuitton Duck –

In this case, a South Korean fried chicken restaurant lost a trademark battle with Louis Vuitton because the shocking name was similar to the designer's trademark. Not only was the name the same, but so were the packaging and logo.

• Adidas v. Forever 21 – 

Adidas has filed a lawsuit against clothing retailer Forever 21, claiming the retailer's three-stripe design on products is counterfeit. Adidas claims it has contributed millions to the branding of the three-stripe design and holds numerous patents.

Trademark Infringement vs Copyright Infringement

You're probably more familiar with copyright infringement than trademark – ​​perhaps because the former covers creative works such as art, films, books, plays, music, recordings, and more.

Trademark Infringement

• Similar to copyright infringement, infringement of a trademark has legal consequences. However, it is more brand and business-focused than copyright - as it centers around someone's ability to identify a brand with a product or service.
• If the logo or brand confuses the average consumer and associates them with the other then treading into infringement territory. If you use a trademark name and randomly connect it, you're also treading a dangerous path to infringement.

 For example, if you use a derivative of Starbucks and make it "Starbucks Jim," it disrupts the relationship between Starbucks and coffee and affects its brand.

Copyright Infringement

• Unauthorized distribution or profit made from one's work without their permission is directly related to copyright infringement.

• You may allow someone else to use your work based on a license or assignment.

However, the lines blur when you run into "fair use" and "derivatives" of creative work.

Fair use is when you take an existing work and copy it for "transformational" purposes like commentary or parody. There is no hard line in the sand to define what is and is not fair use, as it varies from court case to court case. Derivative works are new works based on already existing pieces, such as translations, remixed music, art reproductions, abridgments, etc.

What are the Trademark Infringement Penalties?

Trademarks are not required to be registered for civil or criminal proceedings under Indian law. As mentioned earlier this is due to the common law principle of passing off. In case of infringement or passing off, the court may grant the following remedies:

• Temporary Injunction
• Permanent Injunction
• Damage occurs
• Account of Profits (Loss in Amount of Profits from Violation)
• Destruction of goods using infringing marks
• Costs of legal action

In the case of criminal proceedings, the court determines the following sentence:

1. Imprisonment for a minimum of six months which may extend to three years
2. A fine not less than Rs 50,000 which may extend to Rs 2 lakh

Trademark Infringement How to Prevent & Protect it?

 Infringement litigation can be extremely expensive and time-consuming for brands, whether they are pursuing legal action or defending the use of their trademarks. Brands need to take the right preventative measures to ensure they don't face this challenge down the road.

• Trademark Search

Before registering your trademark, a thorough trademark search is essential. The amount of new brands and marketplaces is constantly increasing, and even a unique logo or phrase may already be in use by another brand. Is there already a product with the same trademark? Is your trademark misleading other brands?

These questions will help you better understand the brands that are doing well in your market, but they will also help you identify the brand name and other strong ones.

In India, trademark infringement is a cognizable offense which means that the infringer can face criminal charges along with civil charges.

• Register your Trademark and Actively Use it

Once you've conceptualized a strong brand and cross-referenced your logo and branding with existing brands, make sure your branding is protected. To apply for your trademark, it must be properly registered. This will ensure that you can address counterfeiters if you find them using your brand's trademark, and is an essential step in protecting your unique idea.

If you are registering a trademark in the United States, you can file through the USPTO. The cost of trademark registration can vary depending on the type of application you file and other factors, typically falling in the range of $225 - $400.

• Trademark Monitoring

Registering your trademark does not mean your brand will automatically be protected. You still need to keep an eye out online to watch for any potential misuse of your trademark.

• Litigation Process

When an infringement of your trademark finds out, it is necessary to address it as quickly as possible. Infringements can be detrimental to the brand image.  Contact your legal team or attorneys who can handle violations for you as soon as they are discovered. Although the legal process can be time-consuming, legal penalties and sanctions can be a way to deter scammers from further infringing on your trademark.

For Trademark Infringement What are the Remedies?

Courts may grant relief for an infringement or passing off (eg: counterfeit goods). Infringement relief may be granted by injunction, damages, or on account of profits, with or without an order for the delivery of infringing labels and marks for destruction or erasure.

Section 135 of the Trade Marks Act mentions the following reliefs for trademark infringement.

• The relief which the Court may grant in any suit for infringement or passing off referred to in section 134 shall be an injunction (subject to such conditions, if the Court thinks fit) and, at the option of the plaintiff, damages or any order for delivery to the infringing labels, with or without any order for delivery and destruction or obliteration of the profits. Drop sign.
• An injunction under sub-section (1) may include an ex-parte order or any interlocutory order for any of the following matters, namely:

• To find documents;
• Preserving infringing goods, documents, or other evidence related to the subject matter of the claim;
• Preventing the defendant from disposing of or dealing with its property may adversely affect the plaintiff's ability to recover damages, costs, or other monetary remedies that may ultimately be awarded to the plaintiff.