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
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
Disclaimer: The entire contents of this document have been prepared on the basis of relevant provisions and as per the information existing at the time of the preparation i.e. May 10, 2021. Although care has been taken to ensure the accuracy, completeness and reliability of the information provided, We assume no responsibility therefore. Users of this information are expected to refer to the relevant existing provisions of applicable Laws. The user of the information agrees that the information is not a professional advice and is subject to change without notice. We assume no responsibility for the consequences of use of such information. IN NO EVENT SHALL WE SHALL BE LIABLE FOR ANY DIRECT, INDIRECT, SPECIAL OR INCIDENTAL DAMAGE RESULTING FROM, ARISING OUT OF OR IN CONNECTION WITH THE USE OF THE INFORMATION.