How to fight Trademark Infringement bonafide if your mark is different?

How to fight Trademark Infringement bonafide if your mark is different?. As per the Indian legal system, the intention of the person is the ultimate game changer. In trademark law as well, the bonafide intention of an individual is also necessary to state trademark infringement. So the question that arises is "How do you deal with a situation where someone is using a similar trademark to yours, but they might not be doing it on purpose?" Section 28 provides the exclusive rights to the trademark owners after the trademark is registered. Anyone using a similar or identical mark as that of your registered trademark can be cancelled or removed from the registry by filing an opposition through form TM-O. Read the complete article below to know more about trademark infringement in India. 
Understanding Trademark Infringement in India
In simple terms, trademark infringement means that someone else is using your trademark (logo, word, mark) without your permission to confuse the customers for their own personal benefit.  
In case of American Home Products Corporation v. Mac Laboratories Pvt. Ltd. (1986), the court held that registration of a trademark grants exclusive rights to the registered proprietor, allowing them to protect the trademark through legal action for infringement.This case emphasises the significance of trademark registration in establishing exclusive rights and enforcing them against infringement. 
However it is important to note that every individual does not intentionally infringe upon your trademark. There are certain cases where the third party does not intentionally use your mark. They use your mark because they are unaware about the existence of your mark. Section 29 of the Trade Marks Act, 1999 talks about situations where trademark infringement can occur. 
In case of Joseph Rodgers & Sins Ltd. v. W.N. Rodgers and Co, the court emphasized that while the law prohibits the use of another business's name in a manner that creates confusion among consumers regarding a connection between the two entities, an exception exists. According to the court's opinion, individuals should have the right to use their own name for their business, provided it's done in a manner that doesn't cause confusion and is done in good faith. However, it's important to note another legal principle that prohibits any person from representing or labelling their business as that of someone else. This principle does not allow for any exceptions.
Determining the Difference in Trademarks
Section 9 and 11 of the Trade Marks Act, 1999 states that a mark needs to be distinctive, unique and different from those of others to be eligible for trademark registration in India. First, a comparison is conducted of the marks' resemblance in terms of look, sound, and meaning. Their uniqueness can be affected by even minute changes in spelling, word pronunciation, or design aspects.
Second, each trademark's linked goods or services are compared to one another. Customers are more likely to become confused if the trademarks are being used for goods that are comparable or related. Another crucial factor is each trademark's uniqueness. More unique and distinctive trademarks usually have stronger legal protection. Another factor to consider is the geographic dimension. If trademarks are used in distinct geographic areas and are not likely to confuse consumers in those areas, they may coexist. Trademark distinctions are mostly determined by consumer perception. Customers are more likely to commit trademark infringement when they are likely to misconstrue one trademark with another. Every trademark's purpose of usage is also investigated. Proof of intentional replication or an endeavour to profit from the goodwill of another brand bolsters the infringement case. Another important factor is prior registration with the trademark registry. In general, registered trademarks are protected more strongly and can stop confusingly similar marks from being registered. 
Fight Trademark Infringement bonafide if your mark is different 
Section 35 of the Trade Mark Act offers protection against claims of trademark infringement. It states that the owner of a registered trademark cannot challenge the legitimate use of their own name, the name of their business, or that of their predecessors by another person. This provision allows individuals to use their personal or business names in a genuine manner, even if they resemble registered trademarks. In India, many prominent brands like Adani, Tata, Kotakj, etc., operate under trademarks that are family names. Similarly, numerous smaller or lesser-known brands use the names of their founders as trademarks.
When faced with claims of trademark infringement, defendants can use this provision if they can prove that their personal name has a longstanding association with their business and that its use is legitimate. This provision recognizes the importance of personal and familial names in business and aims to safeguard individuals who use their names in good faith, without intending to create confusion among consumers.
In the case of Goenka Institute of Education and Research v. Anjani Kumar Goenka, the Delhi High Court clarified the application of the defence of bona fide use under Section 35 of the Trade Marks Act. The court ruled that this defence would only be applicable when a natural person uses their full name and not when a legal entity, which has the option to adopt a different name, uses it. Additionally, the court highlighted that once a surname acquires distinctiveness and establishes a secondary meaning in the market, it cannot be utilized by another artificial person or entity.
Moreover, In the case of Precious Jewels v. Varun Gems, the Supreme Court ruled in favour of allowing individuals to use their own name as a trademark. Both the plaintiff and defendant in this case shared the same family surname of 'Rakyan'. They were engaged in similar businesses, with the defendants trading under the name 'Neena and Ravi Rakyan', and the plaintiffs operating under the name 'Rakyan's Fine Jewellery'.
When the plaintiff filed a suit to restrain the defendants from using the surname 'Rakyan', the court dismissed the suit. The Supreme Court cited Section 35 of the Act, which permits individuals to conduct their business under their own name in an honest and bona fide manner. Therefore, the court upheld the defendants' right to use their surname in their business activities, emphasizing the protection afforded by law to individuals using their own name in good faith.
REMEDIES FOR BONA FIDE USE 
In the recent case, Anil Rathi v. Shri Sharma Steeltech, an interesting aspect of the bona fide defence under Section 35 of the Trade Mark Act was brought to light. The court examined the usage of common family names as trademarks when there were existing family agreements governing the use of the mark.
Both parties in the case were involved in manufacturing steel products and were part of the Rathi Foundation, which owned the mark 'RATHI'. The foundation regulated the mark's usage among the Rathi family members through an MOU and Trust Deed. The plaintiff filed a suit alleging trademark infringement against the defendant for granting a licence for the mark's usage to third parties. The plaintiff relied on Section 28 of the Trade Mark Act, asserting the registered proprietor's exclusive right to use the mark and the defendant's breach of the MOU and Trust Deed. Further, the defendants used the defence of bona fide use under Section 35, citing 'Rathi' as their surname.
The Delhi High Court determined that the defendant's issuance of the licence for mark usage constituted infringement of the agreements outlined in the MOU and Trust Deed. These agreements permitted mark usage but not its sub licensing to third parties. Additionally, the court rejected the defendant's defence under Section 35, clarifying that bona fide use is limited to personal use and does not extend to granting licences or use by artificial entities. Since the defendant's use of the mark via licensing was not bona fide, the defence was dismissed. The court also emphasized that Section 35 could not be used when an agreement regarding mark usage was contravened.
The judgement in Anil Rathi's case, delivered in September 2020, has significantly contributed to clarifying the legal interpretation of bona fide use under Section 35 of the Trade Mark Act, 1999. Summarising the precedents established by judicial pronouncements over the years on this matter, the key considerations before applying the bona fide defence under Section 35 include:

The mark must pertain to a person's own name, the name of the place of business, or their predecessors.

The mark, consisting of the name, should have a historical association with the person's business for a significant duration.

The mark can only be used by natural persons and not by artificial entities.

The mark's use must not violate any agreement concerning its usage.

HOW CAN COMPLIANCE CALENDAR HELP? 
Compliance Calendar provides tailored solutions for all your compliance needs. Compliance We are a team of experienced and professional trademark attorneys who not only register your trademark but also protect your trademark during the complete process. You can register your trademark today easily and conveniently with our specialized team and experts.  For any further clarifications and suggestions, kindly connect on 9988424211 or mail at info@ccoffice.in.

As per the Indian legal system, the intention of the person is the ultimate game changer. In trademark law as well, the bonafide intention of an individual is also necessary to state trademark infringement. So the question that arises is "How do you deal with a situation where someone is using a similar trademark to yours, but they might not be doing it on purpose?" Section 28 provides the exclusive rights to the trademark owners after the trademark is registered. Anyone using a similar or identical mark as that of your registered trademark can be cancelled or removed from the registry by filing an opposition through form TM-O. Read the complete article below to know more about trademark infringement in India.

Understanding Trademark Infringement in India

In simple terms, trademark infringement means that someone else is using your trademark (logo, word, mark) without your permission to confuse the customers for their own personal benefit.

In case of American Home Products Corporation v. Mac Laboratories Pvt. Ltd. (1986), the court held that registration of a trademark grants exclusive rights to the registered proprietor, allowing them to protect the trademark through legal action for infringement.This case emphasises the significance of trademark registration in establishing exclusive rights and enforcing them against infringement.

However it is important to note that every individual does not intentionally infringe upon your trademark. There are certain cases where the third party does not intentionally use your mark. They use your mark because they are unaware about the existence of your mark. Section 29 of the Trade Marks Act, 1999 talks about situations where trademark infringement can occur.

In case of Joseph Rodgers & Sins Ltd. v. W.N. Rodgers and Co, the court emphasized that while the law prohibits the use of another business's name in a manner that creates confusion among consumers regarding a connection between the two entities, an exception exists. According to the court's opinion, individuals should have the right to use their own name for their business, provided it's done in a manner that doesn't cause confusion and is done in good faith. However, it's important to note another legal principle that prohibits any person from representing or labelling their business as that of someone else. This principle does not allow for any exceptions.

Determining the Difference in Trademarks

Section 9 and 11 of the Trade Marks Act, 1999 states that a mark needs to be distinctive, unique and different from those of others to be eligible for trademark registration in India. First, a comparison is conducted of the marks' resemblance in terms of look, sound, and meaning. Their uniqueness can be affected by even minute changes in spelling, word pronunciation, or design aspects.

Second, each trademark's linked goods or services are compared to one another. Customers are more likely to become confused if the trademarks are being used for goods that are comparable or related. Another crucial factor is each trademark's uniqueness. More unique and distinctive trademarks usually have stronger legal protection. Another factor to consider is the geographic dimension. If trademarks are used in distinct geographic areas and are not likely to confuse consumers in those areas, they may coexist. Trademark distinctions are mostly determined by consumer perception. Customers are more likely to commit trademark infringement when they are likely to misconstrue one trademark with another. Every trademark's purpose of usage is also investigated. Proof of intentional replication or an endeavour to profit from the goodwill of another brand bolsters the infringement case. Another important factor is prior registration with the trademark registry. In general, registered trademarks are protected more strongly and can stop confusingly similar marks from being registered.

Fight Trademark Infringement bonafide if your mark is different

Section 35 of the Trade Mark Act offers protection against claims of trademark infringement. It states that the owner of a registered trademark cannot challenge the legitimate use of their own name, the name of their business, or that of their predecessors by another person. This provision allows individuals to use their personal or business names in a genuine manner, even if they resemble registered trademarks. In India, many prominent brands like Adani, Tata, Kotakj, etc., operate under trademarks that are family names. Similarly, numerous smaller or lesser-known brands use the names of their founders as trademarks.

When faced with claims of trademark infringement, defendants can use this provision if they can prove that their personal name has a longstanding association with their business and that its use is legitimate. This provision recognizes the importance of personal and familial names in business and aims to safeguard individuals who use their names in good faith, without intending to create confusion among consumers.

In the case of Goenka Institute of Education and Research v. Anjani Kumar Goenka, the Delhi High Court clarified the application of the defence of bona fide use under Section 35 of the Trade Marks Act. The court ruled that this defence would only be applicable when a natural person uses their full name and not when a legal entity, which has the option to adopt a different name, uses it. Additionally, the court highlighted that once a surname acquires distinctiveness and establishes a secondary meaning in the market, it cannot be utilized by another artificial person or entity.

Moreover, In the case of Precious Jewels v. Varun Gems, the Supreme Court ruled in favour of allowing individuals to use their own name as a trademark. Both the plaintiff and defendant in this case shared the same family surname of 'Rakyan'. They were engaged in similar businesses, with the defendants trading under the name 'Neena and Ravi Rakyan', and the plaintiffs operating under the name 'Rakyan's Fine Jewellery'.

When the plaintiff filed a suit to restrain the defendants from using the surname 'Rakyan', the court dismissed the suit. The Supreme Court cited Section 35 of the Act, which permits individuals to conduct their business under their own name in an honest and bona fide manner. Therefore, the court upheld the defendants' right to use their surname in their business activities, emphasizing the protection afforded by law to individuals using their own name in good faith.

REMEDIES FOR BONA FIDE USE

In the recent case, Anil Rathi v. Shri Sharma Steeltech, an interesting aspect of the bona fide defence under Section 35 of the Trade Mark Act was brought to light. The court examined the usage of common family names as trademarks when there were existing family agreements governing the use of the mark.

Both parties in the case were involved in manufacturing steel products and were part of the Rathi Foundation, which owned the mark 'RATHI'. The foundation regulated the mark's usage among the Rathi family members through an MOU and Trust Deed. The plaintiff filed a suit alleging trademark infringement against the defendant for granting a licence for the mark's usage to third parties. The plaintiff relied on Section 28 of the Trade Mark Act, asserting the registered proprietor's exclusive right to use the mark and the defendant's breach of the MOU and Trust Deed. Further, the defendants used the defence of bona fide use under Section 35, citing 'Rathi' as their surname.

The Delhi High Court determined that the defendant's issuance of the licence for mark usage constituted infringement of the agreements outlined in the MOU and Trust Deed. These agreements permitted mark usage but not its sub licensing to third parties. Additionally, the court rejected the defendant's defence under Section 35, clarifying that bona fide use is limited to personal use and does not extend to granting licences or use by artificial entities. Since the defendant's use of the mark via licensing was not bona fide, the defence was dismissed. The court also emphasized that Section 35 could not be used when an agreement regarding mark usage was contravened.

The judgement in Anil Rathi's case, delivered in September 2020, has significantly contributed to clarifying the legal interpretation of bona fide use under Section 35 of the Trade Mark Act, 1999. Summarising the precedents established by judicial pronouncements over the years on this matter, the key considerations before applying the bona fide defence under Section 35 include:

The mark must pertain to a person's own name, the name of the place of business, or their predecessors.
The mark, consisting of the name, should have a historical association with the person's business for a significant duration.
The mark can only be used by natural persons and not by artificial entities.
The mark's use must not violate any agreement concerning its usage.

HOW CAN COMPLIANCE CALENDAR HELP?

Compliance Calendar provides tailored solutions for all your compliance needs. Compliance We are a team of experienced and professional trademark attorneys who not only register your trademark but also protect your trademark during the complete process. You can register your trademark today easily and conveniently with our specialized team and experts. For any further clarifications and suggestions, kindly connect on 9988424211 or mail at info@ccoffice.in.