A trademark is a category of intellectual property which consists of a sign, design, or expression which identifies respective products or services of a particular source from that of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity and image, trademarks are often displayed on the company buildings. In short, trademarks are used to identify the brand owner of a particular product or service.
Trademark infringement is the unauthorized usage of a trademark, which may be identical or similar to the original trademark. When this situation arises, the owner of the trademark may take action against infringement as the consumer is likely to get confused about the origin of the product or service. If the trademark is registered under the Trade Marks Act, 1999, then the registered user can sue under this act, however, in the case of unregistered trademarks the common law remedy can be sought.
Mere similarity does not amount to a case of infringement. Under the Trademarks Act, 1999 a person is said to have infringed a registered Trademark in the following cases:
- the person causing the infringement is not authorized to use the trademark,
- the infringing trademark is identical or deceiving when compared to the original trademark,
- the infringing trademark is used in the regular course of trade, in the same class as the registered proprietor,
- oral use of such trademark does not amount to infringement, and;
- the infringing trademark may contain the whole of the registered trademark or may include a few changes to make it seem modified.
Trademark infringement is a cognizable offence in India, and both civil and criminal action can be initiated against the infringer. The registration of the trademark is not necessary for institution of legal proceedings under the Indian law. The onus to prove infringement lies on the plaintiff and on proving the same, he is also entitled to recover the cost of the proceedings. The civil remedies available in case of trademark infringement include injunction, damages and account of profits. The Court may award a stay against the use of such infringing trademark by way of temporary or permanent injunction, and thereby restrict the future usage of such trademark. Civil law and criminal law proceedings can be initiated simultaneously. The remedies under criminal law include registering a complaint against the infringer and claiming award for punishment by way of seizure of the goods that incorporate the unauthorized trademark, arrest, fines and penalties. In the case of a criminal proceeding, the court dictates either of the punishments, namely, imprisonment for a period not less than six months that may extend to three year or a fine that is not less than Rs. 50,000 that may extend to Rs 2 lakhs.
‘Passing Off’ is a common law remedy for trademark infringement. The owner of an unregistered trademark may initiate an action for passing off in the appropriate Court. In this case, however, actual damage and deception must be proved in order for the plaintiff to get relief against the defendant who has caused injury to his business or his goodwill.
In India, there is an increasing need for registration of trademarks on a daily basis. Trademark infringement is a common sight, especially in developing countries like India. There are a lot of remedies for redressing the same, but the harsh reality is that they are not implemented in the spirit with which the legislators implemented the law. Violation of the trademark has a negative effect on the registered user, what the infringers don’t realize is that it is also detrimental to their brand in the long run. Trademark users should be made aware of the various remedies available to them and steps to avoid facing any kind of infringement of their own product and overcome the same with legal help and assistance.
A new legal framework for trademark infringement would provide greater relief to the registered proprietor. A combination of national and international laws, along with judgements from across the world would revamp the legal structure for trademark.
Jhanavi M, Trademark Infringement: Effects and Remedies, Ex Gratia Law Journal, (March 6, 2021), https://exgratialawjournal.in/blawg/ipr/trademark-infringement-effects-and-remedies-by-jhanavi-m/.