Types of Trademark Infringement

In India, trademark infringement can be classified into two primary types: Direct Infringement and Indirect Infringement. Understanding these distinctions is critical for businesses and individuals aiming to protect their intellectual property.

Direct Infringement

• Unauthorized Use: This occurs when a trademark is used without the owner's permission. Usage with consent does not constitute infringement.
• Identical or Deceptively Similar: Infringement happens if the trademark used is identical to or so similar to the registered trademark that it confuses consumers.
• Registered Trademark: Only trademarks registered under India’s trademark registry are protected against infringement. Unregistered trademarks rely on the common law of passing off, which requires proving goodwill, misrepresentation, and damage.
• Class of Goods or Services: The unauthorized use must pertain to goods or services within the same category as those for which the trademark is registered.

Indirect Infringement

• Vicarious Infringement: This occurs when an entity has the ability to control the infringer and benefits from the infringement but does not prevent it.
• Contributory Infringement: This type involves a party knowingly assisting or contributing to the infringing actions of the direct infringer.

Grounds for Trademark Infringement Notice

According to Section 29 of the Trade Marks Act, 1999, the grounds for trademark infringement in India are defined to safeguard registered trademarks from unauthorized use and to maintain a brand's integrity in the market. The following scenarios constitute trademark infringement:

1. Identity with a Registered Mark: Infringement occurs when an unregistered mark is identical to a registered trademark for identical goods or services.
2. Likelihood of Confusion: Infringement is established if an unregistered mark is similar to a registered trademark, causing consumer confusion.
3. Similarity to a Mark with Reputation: If an unregistered mark is similar to a registered trademark with significant reputation, it constitutes infringement.
4. Unauthorized Use on Labeling or Packaging: Using a registered trademark on labeling or packaging without authorization counts as infringement.
5. Unfair Advantage in Advertising: Utilizing a registered trademark in advertising to gain unfair advantage or harm its reputation is considered infringement.

Exceptions to Trademark Infringement

Section 30 of the Trademarks Act 1999 outlines scenarios where a registered trademark does not constitute infringement, providing a legal defense against infringement claims. A registered trademark is not infringed under the following conditions:

• Using Indicating Characteristics: When the trademark is used to describe attributes of goods or services.
• Limitations on Registration: If the trademark has specific conditions or limitations, any use adhering to these conditions is not considered infringement.
• Authorized Use by Proprietor or Registered User: Usage by the trademark owner or a legally registered user does not constitute infringement.
• Adaptation of Goods or Services: The use of the trademark is permissible if it involves adapting it as part of other goods or services.
• Use of Identical or Similar Trademarks: The legitimate owner may use a registered trademark that is identical or similar to another registered trademark under their registration rights.

When faced with trademark infringement, it's essential to act promptly and strategically to protect your intellectual property rights.

Trademark Notice

If you encounter trademark infringement, sending a Trademark Infringement Notice is a crucial initial step. This formal legal communication is directed at the individual or entity using a mark that closely resembles your registered trademark. It serves as a warning, detailing the infringement and demanding immediate cessation. The primary goal is to protect your brand’s identity and reputation by preventing consumer confusion.

When to Send a Trademark Infringement Notice?

You should send a legal notice for trademark infringement in the following situations:

• Unauthorized Use: When someone uses your trademark without permission.
• Similarity: If the infringing trademark is identical or confusingly similar to your registered trademark.
• Direct Competition: When the infringing trademark is used for similar or identical goods or services.
• Public Use: If the infringing trademark is used commercially on packaging, advertising, or websites.
• Substantial Similarity: When the infringing mark copies significant parts of your trademark.

Essentials to Include in Trademark Infringement Notice

1. Your Information: Clearly state your name, contact details, and your status as the rightful owner of the registered trademark.
2. Infringer’s Information: Include the name and contact details of the infringer.
3. Trademark Name: Specify the exact name of your registered trademark.
4. Registration Details: Mention the registration number and date of your trademark (if applicable).
5. Products/Services: Describe the specific goods or services your trademark covers.
6. Describe the Infringing Mark: Clearly explain the trademark used by the alleged infringer.
7. Explain the Similarity: Detail how the infringing mark is similar to your registered trademark.
8. Provide Evidence (Optional): Include screenshots or copies demonstrating the infringing use.
9. Cease and Desist: Demand that the infringer stop using your trademark immediately.
10. Specify Actions: Outline actions you expect from the infringer, like removing the infringing mark from products and marketing materials.
11. Set a Deadline: Provide a reasonable timeframe (15-30 days) for the infringer to comply.

Inform of Potential Lawsuit: State that you will pursue legal action if they fail to comply within the specified timeframe.

Procedure to Draft a Legal Notice for Trademark Infringement

1. Introduction: Briefly state the purpose of the notice regarding the trademark infringement.
2. Identification of Parties: Identify yourself as the trademark owner and provide your contact details, alongside the infringer’s information.
3. Trademark Details: Specify the name of the infringed trademark and its registration details.
4. Nature of Infringement: Describe the infringing mark and how it is similar or identical to your registered trademark, including evidence if available.
5. Demand for Action: State your demand for the infringer to cease and desist immediately.
6. Response Timeframe: Set a reasonable deadline for the infringer to respond.
7. Consequences of Non-Compliance: Inform the infringer about potential legal action if they do not comply.
8. Conclusion: Reiterate your ownership of the trademark and your commitment to protecting your rights.

Protect Your Brand with Compliance Calendar LLP: Expert Trademark Infringement Notice Services

At Compliance Calendar LLP, we recognize that your trademark is a representation of your brand’s identity and reputation. Protecting this vital asset against infringement is crucial. Our legal experts are here to assist you in drafting and issuing effective trademark infringement notices to safeguard your brand’s integrity.

Drafting of Trademark Infringement Notice

Our team of experienced lawyers specializes in crafting trademark infringement notices. We meticulously analyze the details of the infringement within the framework of trademark laws to ensure your notice is robust. This includes:

• Identifying the Infringement: Detailing how your trademark rights have been violated.
• Legal Grounding: Citing relevant trademark laws and registration details supporting your claim.
• Demand for Action: Clearly stating the cease and desist demands.

Issuance by Lawyer

Once drafted, the notice is reviewed and issued by our qualified lawyers. We ensure that the notice communicates the seriousness of the infringement with precision and authority, including:

• Email Delivery: Immediate delivery to the infringer via email for swift communication.
• Registered Post: Sending a hard copy of the notice via registered post for a legal record.

Why Choose Compliance Calendar LLP?

• Expertise: Our legal team’s extensive knowledge of trademark law ensures your notice is crafted with care and legal expertise.
• Timeliness: We act quickly to prevent further damage to your brand, understanding the urgency of trademark infringements.
• Comprehensive Support: From initial consultation to the final issuance of the notice, we provide end-to-end support.