Article by Diksha Mehta
(Student at Army Institute of Law, Mohali, Punjab)
Intellectual property rights form the part of 4th generation rights. In simpler terms, intellectual property means any creation, innovation, design, technology etc that is work of intellect of a person. We see that the ambit of term ‘property’ was widened after the recognition of intellectual property rights. It includes patents, trademarks, copyrights, ambush marketing etc. In India we have different legislations from copyrights act, trademark act, patent act etc. These legislations bestow certain rights on the proprietor of creative work, technology, design etc in order to avoid any infringements and misuse of rights. This blog will focus trademark infringement grounds while enumerating remedies, case laws. The trademark act,1999 deals with grounds of trademark infringement, remedies etc.
Section 1(zb) defines a trademark as mark capable of being represented graphically and
which is capable of distinguishing the goods or services. In simpler terms, they are the rights bestowed to the proprietor for a unique and distinguishing logos, design etc. Section 29(1) talks about infringement of a registered trade mark by a person who, not being a registered proprietor a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services.
There can be various basis of trademark infringement. One of the main grounds is Confusion which can be related to confusion of design, products, source etc. Section 29(2) talks about the direct infringement of trademark by an unregistered proprietor which because of its identical and deceptive similarity will likely to cause confusion in the minds of people. In the case of Merisant Company 2 Saral & Anr. v. Equal Minerals & Anr.[i], the Hon’ble High Court of Delhi dismissed the application of Merisant Company which was filed regarding the confusion that arose because of similar trademarks.
There are some of the other ground that cause trademark infringement from the use of goods and services in the course of trading business etc apart from what is originally registered for[ii], to the use of these services by a person in his own business.[iii] These things are averse to the reputation of trademark and will cause confusion amongst people. If this matter is not strictly handled this will lead to more counterfeit products in the market further leading to infringement of trademark. It will not only affect the business of registered trademarks but also hamper the market demand for trademarked goods.
One of the defining case laws in the area of trademark infringement has a major obiter dictum for the understanding of intricacies of infringement in trademark laws. In the case of James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.[iv], the Hon’ble Supreme Court held that in an action of alleged infringement of a registered trade mark, it has first to be seen whether the impugned mark of the defendant is identical with the registered mark of the plaintiff. If the mark is found to be identical, no further question arises, and it has to be held that there was infringement.
Moreover, the other element that is important in determining the trademark infringement is Intention. If a person who had a reason to believe that he/she is not duly authorised to apply for a registered trademark applies for it[v], then in this scenario there is a trademark infringement. Also, when there is any advertising of trademark that will hamper its reputation in one way or the other, it amounts to trademark infringement for that matter[vi]. Even the use of some describable words that are unique to a particular trademark if spoken[vii] with intention to gain undue market advantage by using the reputation of that trademark can lead to infringement of trademark.
Although we do not have any provisions to deal with any indirect infringements, but with the universal law principle, there is vicarious liability[viii] and a contributory infringement that can be comprehended from the act for the protection of trademark and can be recourse for the proprietor.
There are both civil and criminal remedies for the trademark infringement. Section 103 and 104of trademarks acts talks about the penalty for trademark infringement that provides for imprisonment for six months that can extend up to 3 years as well, also fine of fifty thousand rupees extending up to two lakhs rupees in certain cases respectively. For the faster redressal of the matter, a proprietor can file for criminal proceedings under section 156 of Cr.P.C. There can be simultaneous filling of a civil case so that a proprietor can get an injunction in order to stop the selling of counterfeit products in the market and prevent the accused from absconding in case of loopholes in the criminal aspect. Also, a filler can get damages in terms of compensation for the perpetual harm caused by the infringement of trademark. but these civil remedies can be advantageous as well as disadvantageous since there are no discrete classifications of damages in matters of trademark infringement. Moreover, we do not have any broader definitions for terms like goodwill, reputation etc.
Through this blog, I have tried to enumerate and analyse all possible grounds for trademark infringements. As the dawn of the new technology sets in, we need open our horizons for new challenges. Moreover, it’s the duty of government to keep upkeep with times and ensure that there are possible remedies for any kind of infringement.
We see that Intellectual Property Rights are new set of rights so people have been exploited since they are not aware of the legal framework in place. With the collaboration with different societies, trust, NGO’s government can run awareness campaign to address issues faced by companies and people. Moreover, there can be a government portal addressing queries of people pertaining to filling, remedies, access to court etc.
[i] Merisant Company 2 Saral & Anr. v. Equal Minerals & Anr., 2010 (42) PTC 686 (Del). [ii] The Trade Marks Act, 1999, No. 47 of 1999, Act of Parliament, Section 29(4), 1999. [iii] The Trade Marks Act, 1999, No. 47 of 1999, Act of Parliament, Section 29(5), 1999. [iv] James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.,1953 SCR 1028. [v] The Trade Marks Act, 1999, No. 47 of 1999, Act of Parliament, Section 29(7), 1999. [vi] The Trade Marks Act, 1999, No. 47 of 1999, Act of Parliament, Section 29(8), 1999. [vii] The Trade Marks Act, 1999, No. 47 of 1999, Act of Parliament, Section 29(9), 1999. [viii] The Trade Marks Act, 1999, No. 47 of 1999, Act of Parliament, Section 114, 1999. Image Source: https://3wutyd2qccyb43veml22d18g-wpengine.netdna-ssl.com/wp-content/uploads/2017/10/infringement-cropped-1024x549.jpg