Trademark Infringement: Meaning, Types, Examples and How to Avoid TM Infringement

Meaning of Trademark Infringement:

The Trademark Infringement has been dealt with under Section 29 of the Trademarks Act, 1999. The awareness of intellectual property are in upsurge hence the need to protect the trademark from infringement is paramount. The trademark registration holds the responsibility of protecting the trademark from infringement. Nowadays infringing with the registered trademark has been meted out with a lot of legal consequences accompanied with the liability thereby. The provisions involved in the trademark infringement mainly focussed on the person who is utilising the registered trademark rather than the registered user of the trademark. In the case of values supplemental to the trademark product or services, it is very indispensable to protect the exploit and infringement of the trademark.

In common purview, Trademark infringement typically means the unauthorised usage of a mark by an unauthorised person that is similar or deceptively identical to a trademark that is already registered. Trademark Infringement has also been caused by advertisement. Trademark Infringement involves detrimental to the prominence and oneness of the registered trademark, despite knowing that the utilisation of the trademark is not lawful and endowed with the dishonest objective of taking unfair advantage upon the trademark. In India, the protection of trademark is governed by the Indian Patent Office. The Controller General of Patent, Design and Trademark is deemed to be administrator of the Indian Patent Office.

Types of Trademark Infringement:

Trademark infringement is of two types which are as follows:

1. Direct Infringement:

Direct infringement has been discussed under Section 29 of the trademark act. It stipulates that there are certain elements to be dealt with before any direct rupture is faced. The elements of the direct infringement involve the following:

• Usage by an unauthorised person:

Any person who is not the holder or who is not an authorised person of the registered trademark should not utilise the trademark. Therefore usage by such an unauthorised person amounts to direct infringement of the trademark.

• Similar or deceptively Identical:

The significance of trademark registration is to prove its own identity and uniqueness in comparison with other products or services. So infringement will take place if any products or services arise of similar nature with the already registered trademark. The consumers may get confused and hard to recognise and differentiate the products. Here the confusion need not be proved rather a mere change of misrecognition between the consumers of the products or services amounts to direct infringement of the trademark.

• Registered Trademark:

Trademark Act 1999, will render protection only when it is duly registered with the Trademark Registry. Here “Passing off” which is common law in tort comes into operation. Passing off will be reflected when a bruise or injury is caused to the goodwill which is collaborated with the transactions of other persons. Hence common law of passing off will be used in cases of unregistered trademark.

• Goods or Services Class:

When an unauthorised person uses the already registered trademark for the propagation of goods and services which create confusion among the public or third party amounts to direct infringement of the trademark.

2. Indirect Infringement:

The Trademark Act 1999, does not deal with exclusive provision for indirect infringement. But the Universal Principle of Law renders the principle and application of Indirect Infringement. It holds accountable not only the Principle Infringer but also the person who abets or induce the Principle infringer for the trademark infringement. They are as follows:

• Vicarious Liability:

Section 114 of the Trademarks Act, 1999 stipulates that any company which commit an offence under this act will be held liable. It also interprets that not only the principal infringer but every person of the company will be held liable in the case of indirect infringement. An exception to this vicarious liability will be reflected upon the person who has acted in good faith and without any knowledge of infringement.

• Contributory Infringement:

Any person who has knowledge about the infringement and has materially contributed to the infringement thereby induced the principle infringer for infringing will be held liable for contributory infringement. There is no exception to this contributory infringement, as there is no way for the contributory infringer to act in good faith.

Examples of Trademark Infringement:

The most fundamental backbone for any brand is its trademark. Hence everyone strives to protect their intellectual property by due registration. But even then there are chances which cause infringement in trademark. So here the following are the examples of trademark infringement that evolved and meted out:

• Louis Vuitton Vs. Louis Vuiton Dak

In this case, the Louis Vuiton Dak is a fried chicken restaurant in South Korea. But there is a clash between the well-known clothing designers Louis Vuitton and this Louis Vuiton Dak for infringement. It went for court filing and the court held that the restaurant is too identical to the clothing designer in respect of brand name, logo and the way of packaging. It is also very much similar to the iconic imagery and it is like the restaurant have mirrored the clothing designer brand, therefore it will amount to trademark infringement. Thereafter the restaurant changed its identity as Louisvui Tondak for which it was fined $14.5 million for non-compliance.

• Zara Food Vs. Zara Fashion

This case is for the brand name- Zara between food industries vs. fashion industry. Zara Fashion is a renowned fashion brand that has major operations across the world. It found a restaurant in Delhi operating under the same name that will amount to trademark infringement. It is more possible for the public or third party to get confused the one for the other and might take into consideration that the restaurant might have been started by the fashion brand. Therefore it went for court filing and the Delhi court ruled out in favour of Zara fashion and the restaurant was coerced to change its name and now Zara Food is operating under the name Tapas Bar.

• Apple Corps. Vs. Apple Inc.

In this case, two major institutions have been battled for the trademark “apple” for decades. The Apple Corps. Which is a music company that was first founded by Beatles after which eight years Apple Inc. was found by Steve Jobs. When Beatles sued Jobs, the latter agreed that he will not enter the music business of Beatles and paid him a cash settlement. Apple Inc. was again sued when it made known their iTunes. Finally, the case was resolved when Jobs consented to purchase the right of the trademark from Apple Corps. thereby sublet them back.

• 3M Vs. 3N

In this case, even though the products were appeared to be non-identical, the spotlight of 3M and the mere fact that 3N was capable enough to acquire customers and reap profit from the usage of similar mark amounts to trademark infringement.

• Adidas Vs. Forever 21

In this case, Adidas filed a suit of trademark infringement against Forever 21 on account of the counterfeit product when Forever 21 used the retailer’s three-stripe design on the products. Here Adidas claimed that it has invested millions of rupees for branding three-stripe design and it has also held enormous patents on it. Therefore in this scenario, the usage of the retailer’s three-stripe design on the products by Forever 21 amounts to trademark infringement.

How to avoid Trademark Infringement:

The following are the significant process that needs to be adhered to avoid trademark infringement. They are as follows:

• Research & Analysis:

The first step to begin to settle on a trademark is reaching and analysing. It is very essential to ascertain whether any similar name, logo, design or word has already been established. This process can be commenced by checking with the Trademark Registry. We need to check not only the name we want to use but also for the identical names.

• Enlist Help:

In addition to research and analysis, it is also necessary to hire a trademark attorney. This is due to the reason that the trademark attorneys will have access to other databases and they are also endowed with the rights to make access to state trademark records and common law marks. Also, outsourcing can be made to a trusted trademark search company. This sort of assistance will render the outcome result of already existing/non-existing of the similar trademark crystal clear.

• General Liability Insurance:

Consideration for General Liability Insurance is deemed paramount. This is because if we are sued for trademark infringement, then general liability insurance will assist pay for the legal expenditure which includes attorney fees, expert witness testimony, court expenditures and final fees for settlement or judgement in case of losing the case.

• Trademark Registration:

In common purview, it is not only significant to avoid infringement but also measures need to be taken to protect the intellectual property. When we invent some logo, word, name or design which has its uniqueness and which is not identical with other goods or services then it is very essential to safeguard the same. Here this safeguard can be meted out by duly registering the trademark. Therefore Trademark Registration is considered very essential.

• Document your findings:

Timestamps and documentation are very essential in circumstances of the dispute. It will be significant and supporting evidence to prove the trademark has been registered. In case of infringement, we can prove the identity of the trademark and we can provide information regarding the process underwent for registration and establishment of the trademark.

Trademark Infringement Law in India:

The Trademark Infringement is dealt with under the following Civil and Criminal Law in India.

Procedures Under Civil Law:

Section 134 of the Trademark Act 1999, will be regulated for filing of cases before the District Court in case of Infringement of Trademark. The jurisdiction will be determined on the basis where the Plaintiff resides, the head office of the plaintiff is situated or where the cause of action arises. Section 20 of Civil Procedure Code, 1908 (CPC) will not apply for filing of the suit under Section 134 of the Trademark Act, 1999. The court after due perusal and consideration if it thinks fit, shall pass an injunction order under Order XXXIX of CPC or Sections 36 to 42 of Specific Relief Act, 1963 which will prevent further usage of infringing trademark or the court shall pass an order for damages/accounts of profits and destruction or eradication of infringing labels.

Procedures Under Criminal Law:

Section 154 of Criminal Procedure Code, 1973(Crpc). At some point in time, the police can refuse to file an FIR, during when the person can file a complaint before the magistrate under Section 156(3) of Crpc. In continuation of filing of an FIR and order passed by the magistrate, an investigation will be commenced and conducted by the police officer. The investigation shall include the seizure in addition to the search of the goods and services with the infringed trademark.

The availability of benefit in criminal law is that in case of infringement of trademark the victim can take up a proceeding against an unknown person also. This will be regulated under Sections 93 and 94 of Crpc. But in some circumstances, the identity of the distributors and the manufactures could not be ascertained by the victim and this will operate as a hurdle in the filing of the criminal complaint against the person who infringed the trademark.

Remedical measures and penalities:

CIVIL REMEDY:

The civil remedy in the case of Trademark infringement will be in the following forms:

• Damages:

The damages incurred by the owner of the registered trademark will be meted out in the form of compensation.

• Account of Profits:

The damages which are in the form of profit reaped from the goods or services by infringing the trademark will be duly given.

• Destruction of Goods:

The goods destructed or eradicated by the infringement of trademark will be ordered to compensate for the loss incurred.

• Injunction:

The court shall pass an ex parte or interlocutory injunction for the discovery of documents by preventing the defendant from disposing of any assets which will impact any adverse effect to the plaintiff thereby preserving the infringing goods or services and restraining the further use of the infringing trademark. The court shall also order for interim relief which includes search and seizure of goods that are infringed, preparing of inventory and account books and for the appointment of a local commissioner. And also to prevent the defendant from disposing of the goods or services that harm the plaintiff’s capability to revamp the costs and damages that might be awarded to the plaintiff.

• Cost of Proceeding:

The court shall order the defendant to bear the proceeding cost and expenditure of the plaintiff.

CRIMINAL REMEDY:

The criminal remedy pronounced by the court upon the infringer of the trademark in case of criminal proceedings shall be:

• Imprisonment for a period not less than 6 months but shall be extended to 3 years;

• A fine not less than Rs.50, 000 which shall be extended to 2 lakh rupees.

How can Compliance Calendar help?

Compliance Calendar LLP assist in discovering the existence of trademark infringement to a large extent. It will verify whether the trademark has got its uniqueness and is duly authenticated. It will ensure that the public or the third party shall not get confused or they should not feel hard to recognise or differentiate the existing goods or services.

In Trademark Infringement, the Compliance Calendar can help to legally protect the trademark. It will analyse and find out the existence of similar trademarks by vast research and will prevent the infringement of the trademark. CCL will prevent the public or third party from suffering loss by aiding to identify the already established trademarks.

Compliance Calendar LLP not only prevent the infringement of trademark but also safeguard the establishment of the trademark by directing towards registration of a trademark. It safeguards and protects the intellectual property of the public in general and society at large. CCL plays a pivotal role in trademark registration thereby preventing trademark infringement.