Trademark Infringement in India: Laws, Penalties, and Legal Remedies

Introduction to Trademark Infringement in India:

Trademark infringement in India refers to the unauthorized use of a mark that is identical or deceptively similar to a registered trademark, leading to confusion or deception among consumers regarding the origin of goods or services. This infringement undermines the exclusive rights granted to the trademark owner and can damage the brand’s reputation and market position.

The legal framework for trademark infringement India is governed by the Trade Marks Act 1999, which provides both civil and criminal remedies for infringement cases. This trademark law in India aligns with international standards and offers protection for registered trademarks, including well-known marks.

What Is a Trademark:

A trademark is a unique sign, word, phrase, logo, or design that identifies and distinguishes the goods or services of one business from those of others. Trademarks can include brand names, slogans, packaging, designs, shapes, and even sounds or colours associated with a product or service. It is a form of intellectual property that serves as a source identifier for products or services.

Trademark registration in India legally recognizes a business’s ownership of its brand and helps consumers distinguish between competing products in the marketplace. Trademarks are defined under the Trade Marks Act, 1999, as marks capable of distinguishing the goods or services of one person from those of others and can include a wide range of visual or graphical representations.

Trademark Infringement: Meaning and Types:

Trademark infringement occurs when a person or entity uses a trademark that is identical or confusingly similar to a registered trademark without the authorization of the trademark owner. This unauthorized use can mislead consumers, cause confusion about the origin of goods or services, and harm the reputation or value of the original brand. The key factor is the likelihood of confusion; if the public might mistakenly believe there is a connection between the infringer’s goods or services and the original trademark owner, infringement is established.

Types of Trademark Infringement in India:

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Key Provisions under the Trademark Act, 1999:

Key provisions under the Trade Marks Act, 1999, relating to trademark infringement, are primarily detailed in sections 29, 30, 103, 104, 106, and 135. These sections define what constitutes infringement, outline exceptions, and specify available remedies and penalties.

Section 29: Grounds of Trademark Infringement in India:

A registered trademark is considered infringed in the following scenarios:

1. Identity with a registered trademark: Use of an identical mark for the same class of goods or services.
2. Likelihood of confusion: Use of a similar mark likely to cause confusion or association with the registered trademark.
3. Use as a trade name or business name: Use of the registered trademark as part of a trade or business name.
4. Unauthorised use in packaging or labelling: Use of the registered trademark on packaging, labelling, or business papers without authorization.
5. Unfair advantage in advertizing: Use of the trademark in advertizing to gain an unfair advantage or harm the reputation of the trademark.
6. Similarity to a Mark with Reputation: Use of a mark similar to a well-known registered trademark, even for dissimilar goods, if it takes unfair advantage or is detrimental to the distinctive character or reputation of the mark.

Section 30: exceptions/defences to infringement:

Certain uses are not considered infringement, including:

1. Use of the mark to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of goods or services.
2. Use in accordance with honest practices in industrial or commercial matters.
3. Use within the limitations or conditions of registration.
4. Use by authorized users or for necessary adaptation of goods or services.

Sections 103, 104, 105: criminal offences and penalties:

1. Section 103: Falsification or false application of a trademark can lead to imprisonment (minimum six months, up to three years) and a fine (Rs 50000 to Rs 200000).
2. Section 104: Selling goods or providing services with a false trademark also attracts similar penalties.
3. Section 105: Repeat offenders face enhanced penalties (minimum one year imprisonment, up to three years, and a fine of Rs 100000 to Rs 200000).

Section 135: civil remedies:

Courts can grant the following reliefs in infringement suits:

1. Injunctions: Temporary or permanent orders restraining further infringement.
2. Damages or Account of Profits: Monetary compensation or surrender of profits gained from infringement.
3. Destruction of Infringing Goods: Order for destruction or removal of infringing products from the market.

How to Identify Trademark Infringement:

To identify trademark infringement in India, you should look for specific signs and follow a systematic approach based on legal and practical considerations.

Steps to identify trademark Infringement:

Trademark search: Conduct a comprehensive search to find marks that are identical or similar to your registered trademark in the relevant market or class of goods/services.

Visual and Phonetic Comparison: Assess the similarity in appearance, sound, and meaning between the marks.

Market Analysis: Observe if the infringing mark is used in the same business sector, on similar products, or targets the same customer base.

Consumer Confusion Test: Consider whether an average consumer is likely to be confused or misled into believing there is a connection between the two brands.

Evidence Collection: Gather documentation such as product packaging, advertisements, website screenshots, and sales invoices showing the use of the infringing mark.

Legal Review: Consult the grounds for infringement as defined in Section 29 of the Trade Marks Act, 1999, and seek legal advice to determine if the use constitutes infringement.

Examples of Trademark Infringement Cases in India:

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

• Facts: Bisleri sold the "Maaza" trademark and related rights to Coca-Cola but later attempted to use the "Maaza" mark again in India.
• Issue: Coca-Cola alleged trademark infringement due to Bisleri’s continued use of the mark after assignment.
• Decision: The court granted an injunction against Bisleri, affirming Coca-Cola’s exclusive rights to the "Maaza" trademark.

Bata India Ltd v. Chawla Boot House

• Facts: Chawla Boot House used a similar red-and-white colour scheme and font style on its signboards, closely resembling Bata’s trade dress.
• Issue: Bata claimed infringement of its distinctive trade dress, which could cause consumer confusion.
• Decision: The court ruled in favour of Bata, recognizing trade dress protection and the likelihood of confusion due to visual similarity.

Legal Remedies Available to Trademark Owners:

Legal remedies for trademark infringement in India are available under the Trade Marks Act, 1999, empowering trademark owners to take action through civil, criminal, administrative, and border enforcement mechanisms.

Civil remedies:

Trademark owners can initiate civil proceedings in designated courts to seek:

• Injunctions: Courts can grant temporary or permanent injunctions to restrain the infringer from further use of the trademark.
• Damage or account of profits: Compensation for losses suffered due to infringement or recovery of profits wrongly earned by the infringer.
• Delivery or destruction of infringing goods: Courts may order the removal, delivery up, or destruction of goods and materials bearing the infringing mark.
• Anton Piller Orders: To prevent the defendant from destroying infringing goods or evidence, courts may order search and seizure of such materials.

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Civil remedies:

Trademark infringement can also attract criminal liability, especially in cases of counterfeiting or wilful violation:

• Imprisonment: Offenders may face imprisonment ranging from six months to three years.
• Fines: Fines can range from Rs 50000 to Rs 200000, with higher penalties for repeat offenders.
• Seizure of Goods: Police can seize counterfeit or infringing goods upon court orders.

Administrative Remedies:

Administrative actions available to trademark owners include:

• Opposition Proceedings: Filing an opposition against the registration of a deceptively similar mark in the Trade Marks Journal.
• Rectification/Cancellation: Initiating proceedings to rectify or cancel the registration of a conflicting or wrongly registered trademark.
• Customs Recordation: Notifying customs authorities to block the import or export of goods that infringe on registered trademarks.

Border Enforcement Measures:

Trademark owners can work with customs authorities to:

• Block Import/Export: Prevent the importation or exportation of goods bearing infringing or counterfeit trademarks, protecting against the international spread of infringement.

Passing Off (for Unregistered Trademarks):

Owners of unregistered trademarks can initiate a passing off action under common law to prevent misuse or misrepresentation of their mark, even if it is not registered.

Procedure for Filing a Trademark Infringement Suit in India:

The procedure to file a trademark infringement suit in India involves several key steps, governed by the Trade Marks Act, 1999, and the Code of Civil Procedure (CPC):

Preliminary steps –

• Consultation with a trademark lawyer: Seek professional advice to assess the merits of your case and gather necessary evidence such as trademark registration certificates, proof of use, and instances of infringement.

Determining jurisdiction –

• Section 134 of the Trade Marks Act, 1999: The suit can be filed in the District Court or High Court where the plaintiff (trademark owner) resides or carries on business, even if the defendant is not based there.
• Commercial Courts Act, 2015: If the claim value exceeds Rs 3 lakhs, the suit must be filed in a commercial court of the commercial division of a high court, ensuring faster and more streamlined proceedings.
• Limitation Period: The suit must be filed within three years from when the infringement became known to the plaintiff.

Preventive Measures for Trademark Protection in India:

Preventive measures for trademark protection are essential for safeguarding your brand and ensuring exclusive rights over your mark in India. Here are the most effective strategies, as supported by current Indian legal practices:

1. Register your trademark with the Trademark Registry under the Trade Marks Act, 1999.
2. Use the ® symbol after registration to publicly indicate your exclusive rights and deter potential infringers.
3. Renew your trademark every 10 years to keep protection active.
4. Use your trademark consistently in commerce to maintain your rights and avoid challenges based on non-use.
5. Monitor the market and online platforms for unauthorized or confusingly similar marks.
6. Take prompt legal action against infringers by sending cease and desist notices or initiating civil or criminal proceedings for infringement or passing off.
7. Engage legal experts to handle opposition, rectification, and enforcement actions efficiently.

Conclusion:

In conclusion, trademark infringement in India presents significant challenges for businesses striving to protect their brand identity and market position. The unauthorized use of identical or deceptively similar marks not only confuses consumers but also undermines the goodwill painstakingly built by trademark owners. The Trade Mark Act, 1999, provides a robust legal framework for addressing such violations, offering both civil and criminal remedies—including injunctions, damages, destruction of infringing goods, and even imprisonment and fines for offenders. Understanding the laws, penalties, and available legal remedies is crucial for businesses to respond effectively to infringement and deter future violations.

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Read Also:

• Trademark Symbols ™, ®, ℠ Explained: What They Mean and When to Use Them

Frequently Asked Questions (FAQs) –

Q.1. What is trademark infringement in India?

Trademark infringement in India occurs when someone uses a mark that is identical or deceptively similar to a registered trademark without authorization.

Q.2. Which law governs trademark infringement in India?

Which law governs trademark infringement in India?

Q.3. What are the different types of trademark infringement?

Types include Direct Infringement, Indirect Infringement, Dilution, Counterfeiting, Cybersquatting.

Q.4. Can I take legal action if my trademark is not registered?

Yes, you can file a passing off action under common law if your unregistered trademark has acquired distinctiveness and goodwill.

Q.5. What is the limitation period to file a trademark infringement suit in India?

A trademark infringement suit must be filed within three years from the date of knowledge of the infringement.