HOW DOES TRADE MARK INFRINGEMENT OCCUR?

HOW DOES TRADE MARK INFRINGEMENT OCCUR?

What is a trademark?

A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another. Trademarks are protected by intellectual property rights. Trademark is an important asset of any company. Any business is known by its name and protecting the name is equal to protecting the business.

What is trademark infringement?

Trademark infringement is when a business uses the name, logo, or domain name of another business without authorization, or uses one that is similar enough to potentially confuse consumers.

Section 29 of the Trade Marks Act prescribes the infringement of a trademark. In simple words, when the exclusive rights of the owner of the registered Trademark are violated, it is said to be an infringement of Trademark.

The Legal protection of a trademark is administered by the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry.

What counts as trademark infringement?

A registered trademark is said to be infringed in case of the following situation:

i) If the mark in dispute is identical with or deceptively similar to the registered trademark and is in relation to the same or similar goods or services;

ii) If the identical or similar mark can cause confusion in the minds of general public to have an association with the registered trademark

iii) If the registered trademark is used as a part of trade name or business concern for goods and services in respect of which the trademark is registered

iv) If the trademark is advertised and as a result it takes unfair advantage or is contrary to the honest practices or is detrimental to the distinctive character and reputation of the registered trademark.

v) If the registered trademark is used in the material meant for packaging or labelling of other goods or as a business paper without due authorization of the registered user.

What does not counts as trademark infringement?

The following acts do not constitute infringement of the right to use a registered trademark:

i) Use of mark to indicate the kind, quality, quantity, etc;

ii) When any person makes use of a trademark in accordance with honest practices in industrial or commercial matters;

iii) Use of mark outside the scope of registration;

iv) Implied consent of use;

v) Use of the two registered trademarks that are similar to each other;

Penalties for Trademark Infringement:

In India, the infringement of a trademark is a cognisable offence which means that the infringer may also face criminal charges along with civil charges.

 In the case of trademark infringement, the court may award the following remedies:

i) Temporary injunction

ii) Permanent injunction

iii) Damages

iv) Account of profits (damages in the amount of the profits gained from the infringement)

v) Destruction of goods using the infringing mark

vii) Cost of legal proceedings

In the case of a criminal proceeding, the court dictates the following punishment:

i) Imprisonment for a period not less than six months that may extend to three years

ii) A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh

Note: This Post was last updated on May 10, 2021

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Sunita

Founder & Director | COO & CHRO at eTaxFinance | Content Writer at eTaxFinance Blog | Department Head for Intellectual Property & Startup Team | Head-Corporate Strategy and Planning