Trademark Infringement

Which Types of Trademarks Exist?

When examining them, keep in mind the following two categories of trademark infringement:

1. Direct Infringement: Section 29 of the Infringement Act provides a definition for direct infringement. It will be referred to as direct infringement in the following circumstances:

• Unauthorized Usage: A trademark is only used unlawfully when the mark's owner has given permission for that kind of usage. An infringement does not occur when the mark is used with permission from the registered trademark owner.
• Registering Trademarks: All trademarks registered with the Trademark Registry are entitled to remedies under the Act. The Trademark Act of 1999 does not apply in cases where an unregistered trademark is violated. If a trademark is not registered, passing off the law is in effect. When someone or something negatively impacts someone's reputation due to the actions of another person or group of people, it is subject to a statute called passing off.
• Nearly Identical or Matching: When someone uses a trademark that is confusingly close to the lawfully registered trademark of its owner, they are doing it illegally. Since consumers may mistake two similar trademarks for one another and think they are identical, the term "deceptively similar" has significance. The phrase says that one need only demonstrate that such confusion is conceivable. The mere possibility of trademark identification might serve as evidence of trademark infringement for products or services that bear a registered brand.
• Class of Goods or Services: The unregistered user is using the trademark to distribute products and services that fall under the same category as the products and services for which they have registered their trademark. Only cases of registered trademark infringement will be taken into account here.

2. Indirect Infringement: Unlike direct violations, indirect infringement is not specifically covered by any provisions in the Act. This implies that there is no liability for indirect violation. Indirect violations and their application stem from the universal law idea. Further liability extends to anyone who aids or abets the principal infringer in committing an offence. Two categories exist for indirect violations:

• Vicarious Liability: The entire organization is liable for any Infringement Act infractions, per Section 114 of the Act. That means that everyone who works for the company, including the primary offender, will also be held accountable for any indirect infringements unless they acted in good faith and were unaware of the infringement.

Vicarious responsibility occurs when one of the following conditions is met:

• The individual controls the primary infringer's activity;
• The individual actively engages in the infringing behaviour;
• The individual is aware of the infringing action and knows about it;
• The individual stands to profit financially from the infringing behaviour;
• A firm is only exempt from being held vicariously liable for an infringement where it operates in good faith and is unaware of the breach.
• Contributory Infringement: One way to define contributing infringement is when someone is aware of the infringement, when they encourage the principal infringer to continue the infringement, or when they provide meaningful assistance to the infringement. As there is no possibility that the offender will act with good intentions in the case of contributory infringement, there is no exception.

What Consequences Are Caused by Trademark Infringement?

In addition to civil fines, trademark theft is a serious felony in India, where offenders may face criminal prosecution. Additionally, Indian law does not require trademark registration in order to start a civil or criminal case. This is a result of the common law's passing off statute. The court may provide the following remedies in cases where a trademark is infringed upon or misrepresented as another:

• Temporary order
• Permanent injunction
• Profit explanation (damages relative to the profit earned by the violation)
• Items being destroyed when using the fictitious mark
• The cost of going to court.

Case Study on Trademark Infringement

Sardarbuksh vs. Starbucks

A coffee chain called "Sardarbuksh" with its headquarters in Delhi first appeared in 2015. Its logo and color palette were almost identical to that of Starbucks.

Conclusion: Based on the possibility of customer confusion, the Delhi High Court decided in favor of Starbucks. It was mandated that Sardarbuksh alter its name and logo.

Penalties and Punishments for Trademark Infringement

Depending on how serious the violation was, India might charge different fines. Penalties of the following kinds are usually enforceable:

Civil Liabilities:

1. Injunctions: Courts have the power to impose injunctions in order to stop the unapproved use of a trademark. By putting an end to this legal action, you can protect the original trademark's integrity from future unauthorized use.
2. Injuries: Losses are monetary awards to make up for financial damages or reputational injury sustained as an outcome of the violation. This could include:
   • Actual Damages: Restitution for measurable damages, such as lost profits or income.
   • Additional Damages: Restitution for intangible losses like ruined goodwill or brand reputation.
   • Earnings Account: A court order requiring the party infringing your trademark to reveal and surrender all profits derived from using it illegally.

Criminal Recourse:

• Terms of Prison: A minimum of six months and a maximum of three years in prison;
• Penalty: A fine of up to Rs. 2 lakhs, with a starting fine of Rs. 50,000.

Documents Needed to File a Case alleging Trademark Infringement

Please ensure you have the following papers with you before filing a trademark infringement application:

• A copy of your trademark advertisement from the journal.
• Trademark Registration Certificate, or LPC (Legal Proceeding Certificate) issued by the Registrar
• Information on the company's loss due to infringement