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Trademark Infringement Element


Last Updated on June 7, 2024 by D. Lalitha B.L (Hons)

Since trademarks are imperative for isolating one connection to another, trademark infringement is a crucial problem in the Indian business local region. Common law and registered trademarks are both incredibly very highly protected under Indian law. This article will examine the components of encroachment of trademark in India, with a specific accentuation on common laws and defences.

Understanding Trademark Infringement Elements in India:

  • Trademark Law in India:
  • Civil Remedies:
  • Injunctions.
  • Damages.
  • Accounting for profits.
  • Criminal Penalties:
  • Imprisonment.
  • Fines.
  • Trademark Infringement Elements:
    • Basics for establishing trademark infringement cases in India.
    • Additional defences available to defendants.
  • Fair Use Doctrine:
  • Allows accurate use of the plaintiff’s trademark to describe the defendant’s goods/services.

Common Law Trademark Infringement Elements:

  • Trademark Strength:
  • A strong trademark:
  • Distinctive in nature.
  • Has gained a secondary significance in the eyes of customers.
  • A weak trademark:
  • Descriptive or generic.
  • Absence of a secondary meaning.
  • Trademark Dilution:
  • Definition:
  • Weakening of a trademark’s distinctiveness or reputation due to unauthorised use.
  • Types:
  • Blurring:
  • Occurs when the trademark’s distinctiveness is weakened by unauthorised use.
  • Tarnishment:
  • Occurs when the trademark’s reputation is damaged by unauthorised use.

Trademark Infringement Defenses:

Consider the below defences often used in court:

  • The defendant was using the trademark prior to the plaintiff.
  • Trademark abandonment has taken place.
  • Use is permissible under the Fair Use
  • The trademark is merely descriptive or has become genericised.
  • There was fraud during registration.
  • The defendant was prejudiced by the owner not promptly claiming its rights.
  • Trademark owner engaged in serious impropriety, aka unclean hands.

In the occasion that these safeguards are recognised by the court, an offended party will get no type of help and could lose their privileges over the brand that is being mentioned.

Trademark Infringement Elements in India:

To win a case, an offended party should demonstrate three trademark encroachment elements:

  • that it owns a valid trademark;
  • that the defendant used the same or a similar trademark in commerce without the plaintiff’s consent; and
  • that the defendant’s use of the trademark caused a likelihood of confusion.
  • Valid Trademark Ownership:
  • A crucial component in a trademark infringement case.
  • Requirements under Indian law:
    • Distinctive qualities.
    • Non-generic nature.
    • Absence of intent to deceive consumers.
  • Use by Defendant:
  • A crucial aspect in proving trademark infringement.
  • Requirement:
  • Active utilisation of the plaintiff’s trademark in the defendant’s business operations.
  • Areas of usage:
    • Products.
    • Services.
    • Advertising.
    • Any other relevant context.
  • Likelihood of Confusion:
  • Important component of trademark infringement in India.
  • Requirement:
  • Evidence that the other party is utilising the trademark is probably confusing customers.
  • Importance:
  • Establishes the potential for consumer uncertainty about the source of goods or services.

Additional Common Law Trademark Infringement Elements:

Notwithstanding the as of late referenced components, a few extra factors are considered for deciding encroachment in common law trademark infringement proceedings. These variables add to the assurance of the trademark’s solidarity and the presence of trademark dilution. These are:

  • Trademark Strength:
    • Frequently disregarded but crucial in situations of violation.
    • Types of trademarks and their strengths:
  • Fanciful:
  • Unique words created solely as a brand (e.g., Xerox, Clorox, Pepsi).
  • Highest level of legal protection.
  • Arbitrary:
  • Preexisting terms used arbitrarily (e.g., Apple for computers).
  • Offers strong protection if unique in the industry.
  • Suggestive:
  • Requires mental pause but has some link to goods/services (e.g., Airbus for planes).
  • Considered strong trademarks.
  • Merely Descriptive:
  • Describes product or service features (e.g., International for airlines, Speedy for oil change).
  • Limited rights without acquired distinctiveness.
  • Generic:
  • Identifies product or service (e.g., Blue Jeans, Computers).
  • Cannot be protected; never trademarkable.
  • Weakness of trademark can damage infringement cases significantly.
  • Trademark Dilution:
  • It can constitute infringement even without the likelihood of confusion.
  • Primarily affects famous companies.
  • Types:
  • Blurring:
  • Lesser-known company using famous trademarks on differing products/services.
  • No infringement if goods/services are dissimilar.
  • Exception for something genuinely exceptional trademarks (e.g., fanciful).
  • Tarnishment:
  • Includes an unpleasant element.
  • Lesser-known companies’ subpar products or dubious item damage the reputation of larger brands.
  • Serious potential for goodwill damage.
  • usually considered to be an infringement because of potential harm to brand reputation.

Is Trademark Litigation Appropriate?

Cease and Desist vs. Trademark Litigation:

  • Cease and Desist Letter:
  • Often effective in achieving the intended results for the owners of trademarks.
  • Trademark Litigation:
  • Considered when cease and desist Letter fails or when losses are important.
  • Factors influencing decision:
  • Extent of brand damage.
  • Defendant’s intent.
  • Lawsuit:
  • Potential to recover damages if the violation resulted in significant injury.
  • Increased potential damages if violations proven to be willful.


  1. Intellectual Property: What Is It?

Not at all like many types of property, which are perceptible and can be really observed, intellectual property is said to be more unique and roughly comparable to a thought or idea. There are four broad categories of intellectual property. These categories of law are called:

A trademark-related design, an exclusive innovative recipe from a fast-food establishment, or even an expression are examples of intellectual property.

  1. How to Record a Case for Trademark Encroachment?

Whenever you’ve associated with a trademark lawyer having the crucial encounter, you can team up to compile information and set up a complaint of trademark infringement. In India, this duty is with you and your legal counselor to show that encroachment has happened while introducing a case. While several incidents of trademark violation in India are settled all through out-of-court settlements, occasional conflicts continue to initial.

  1. What constitute the essential components of trademark infringement?

The vital components of trademark infringement normally incorporate – The presence of a valid and safeguarded trademark. The use of a similar or same mark by another party, and the potential for confusion between the two marks in consumers’ minds.

  1. Can trademark violation occur without intentional copying?

Indeed, trademark violation can happen without deliberately replicating. It is adequate if consumers most likely to be confused by the unauthorized use of a similar or the same mark.

D. Lalitha B.L (Hons)

D. Lalitha, B.L (Hons)., MBA., PGDIPL is a seasoned legal professional with extensive experience in contract drafting and reviewing, now ventures into the realm of content writing. With 6 years of experience, she brings a deep understanding of complex legal concepts and a knack for clear communication. Eager to leverage her expertise to craft compelling legal content, she committed to producing informative and engaging articles that resonate with diverse audiences.