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Trademark Infringement And Their Defenses In India

Infringement occurs when other person uses a trademark that is same or similar to registered trademark for the same or similar goods/services. Section 29 of the Indian Trade Marks Act, 1999, talks about various aspect of infringement of registered trademarks.

As per Section 29(1), "a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark in relation to the goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark".

Sub-sections of the Section 29 of the Indian Trade Marks Act, 1999, describes that in course of the use of the trademark it is said to be infringing the right of the other company due to use of similar or identical trademark using for marketing of similar kinds of goods and services or use of identical or deceptively similar trademark for any kind of goods and services.

Section 29(9) of the Indian Trade Marks Act, 1999, states that the infringement can also be done by the spoken use of those words as well as by their visual representation.

Grounds Of Infringement:

According to Section 29 of the Trade Marks Act, 1999, the followings are the grounds to trademark infringement in India:
  • If the unregistered mark is identical to a mark registered for similar goods and services.
  • The similarity of an unregistered mark with the infringed mark is likely to create confusion in the minds of consumers.
  • The unregistered mark is similar to a registered trademark having a reputation in the market.
  • The registered trademark is used on labelling or packaging without authorization.
  • The registered trademark is used in advertising, taking unfair advantage detrimental or against the reputation of trademark.

Defences Against Trademark Infringement:

  1. Fair Use:
    In order to claim this defense, the accused infringer need to show that he got the consent of the authorized owner or either proves that he acted without intending to defraud or mislead the consumers of the goods. "Fair use" has been covered in two types:
    1. Descriptive Fair Use:
      Descriptive fair can be taken as a defence where a trademark is used in good faith for a descriptive purpose and not for a specific mark or goods and services.
       
    2. Nominative Fair Use:
      Nominative fair use can be taken as defence where a mark is listed in reference to the registered proprietor's goods and services rather than the goods and services of the user. It is justifiable when the use of the mark is required to make the goods and services easier to identify.
       
  2. Prior use:
    Prior user of the trademark has more rights than the subsequent user even if the subsequent user has registered the trademark. It can be taken up as a defence by the defendant when he is using the mark for a longer period of time than the registered user and has established reputation in his business.
     
  3. Non-use of the trademark by the Registered Proprietor:
    In this situation, the burden is on the defendant to prove that the Registered Proprietor is not using the trademark for a long time. Further, he needs to show that he has a legitimate interest in using that trademark which the owner of the trademark is not using.
     
  4. Delay and Acquiescence:
    In situations when there has been a delay in bringing action of the infringement by the plaintiff, it is stated that the plaintiff's right have been waived off as the trademark owner and implicitly or explicitly permitted use of its trademark by the subsequent user.
     

Remedies Of Trademark Infringement:

The proprietor of the Registered Trademark can initiate legal proceedings against the infringer by stating the unfair business practices. The Indian Trade Marks Act, 1999 provides for both civil and criminal remedies for trademark infringement against the unauthorized use of its limitation by the third party.

Civil remedies in form of Injunction: An injunction's role is defined as preventing one individual from carrying out a specific action or task through the judicial process. In simple terms, an injunction is a Court order that prohibits a party from taking certain actions such as continuing sales of an infringing product. An injunction can completely bar the unauthorized use of the trademark by a party through the judicial process. The Court grants protection to the owner of trademark through a temporary or permanent injunction.

Civil Remedies In Form Of Damages:
Damages are the monetary compensation for the loss incurred by the trademark owner as a result of trademark infringement. Under this remedy, the monetary value of a financial loss or brand impairment is recovered. The court will determine the amount of damages after examining the owner's actual and prospective losses as a result of the infringement.

Criminal Remedies:
A Criminal Complaint can also be filed against the person infringing the trademark. The Indian Trade Marks Act, 1999 describes that the registered owner of the trademark has a chance to file the FIR through police on the infringer and accordingly the infringer can be punished with the imprisonment for a period not less than six months that may extend to three years and with a fine of INR 50,000 that may extend to INR 2 lakh.

Case Laws On Trademark Infringement:

Coca Cola Vs. Bisleri International Pvt Limited & Others: The defendant (Bisleri International Pvt Ltd) by agreement transferred trademark rights of MAAZA to the plaintiff (Coca-Cola Company) and also gave away the formulation rights, IPR, and know-how along with the goodwill for India for bottling and selling a mango fruit drink MAAZA to Coca Cola.

In 2008, the defendant subsequently filed an application to register trademark "MAAZA" in Turkey and begin exporting the same fruit drink under name "MAAZA". Coca Cola claimed a permanent injunction and infringement damages for passing off and trademark since it was given to them by Bisleri.

The Hon'ble Delhi High Court in this case upheld the injunction against defendant "Bisleri" for using trademark "MAAZA" and passed an interim order of permanent injunction to prevent the plaintiff from irreparable loss and injury.

Industria De Diseno Textil Sa Vs Oriental Cuisines Pvt Ltd And Ors, Popularly Known As Zara Fashion Vs. Zara Food:

In this case, renowned fashion brand ZARA filed a suit for infringement and passing of their well- known brand ZARA against a restaurant "ZARA TAPAS BAR".

The Delhi High Court ruled out in favour of the renowned fashion brand ZARA, ordered the restaurant to change its name.

Conclusion:
The importance of registering a brand name is becoming more widely recognized in India. However, the proprietors are still passive about the unauthorized use of their registered trademarks. Violations of the right over trademark can occur within an organization, which impact the brand's value as well as the market share of the owner's company. With the help of a Trademark Attorney, one may be able to recover and compensate the damages occurred due to the infringement.

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