What is Trademark Infringement in India: Types, Grounds & Penalties

What is a trademark infringement?

Trademark infringement occurs when a person or entity uses a trademark that is identical or confusingly similar to a registered trademark without the permission of the trademark owner. This unauthorised use can mislead consumers and dilute the distinctiveness of the trademark, thereby harming the reputation and value of the brand. Infringement is not limited to the use of identical marks but also includes any marks that are sufficiently similar to cause confusion among consumers. The key aspect of trademark infringement is the likelihood of confusion, where the public might mistakenly believe that there is a connection between the infringing party’s goods or services and the original trademark owner’s brand.

Types of trademark infringement

Trademark infringement can be broadly classified into two categories: direct infringement and indirect infringement. Each type has specific characteristics and legal implications.

1. Direct infringement

Direct infringement occurs when a person or business entity uses a trademark that is identical to a registered trademark or a mark so similar that it is likely to cause confusion among consumers. This type of infringement directly violates the exclusive rights granted to the trademark owner, including the right to use the mark in commerce and prevent others from using similar marks. Direct infringement often involves unauthorised use of the trademark on goods or services that are similar to those covered by the original trademark registration, leading to potential confusion or deception among consumers.

2. Indirect infringement

Indirect infringement, also known as contributory, or vicarious infringement, occurs when a party facilitates or contributes to another party's direct infringement of a trademark. This can include actions such as providing services, resources, or platforms that enable others to engage in trademark infringement. Unlike direct infringement, where the infringer directly uses the trademark, indirect infringement involves a third party that indirectly supports the infringing activity. For instance, an online marketplace that allows counterfeit goods bearing a registered trademark to be sold could be held liable for indirect infringement.

What are the grounds of infringement?

• Use of an identical or similar mark: Using a mark that is identical or confusingly similar to a registered trademark on similar goods or services.

• Likelihood of confusion: Creating a likelihood of confusion among consumers regarding the origin of goods or services.

• Dilution of trademark: Using a famous trademark in a way that dilutes its uniqueness and diminishes its value.

• Passing off: Misleading consumers into believing that the goods or services offered by the infringer are associated with the trademark owner.

• False representation: Falsely representing a product or service as being affiliated with a trademark when it is not.

• Use in advertising: Using a registered trademark in advertising or promotion without permission, leading to confusion or deception.

What does not come under trademark infringement?

• Fair use: Using a trademark for purposes of identification, comparison, or commentary without implying sponsorship or endorsement by the trademark owner.

• Descriptive use: Using words or phrases that are descriptive of the goods or services, provided they are used in their ordinary meaning and not as a trademark.

• Non-commercial use: Using a trademark in a way that is purely non-commercial, such as in artistic expression, criticism, or parody.

• Parody and satire: Parodic or satirical uses of a trademark that are clearly distinguishable from the original mark and do not create confusion among consumers.

• Use in different industries: Using a similar mark in an industry or sector unrelated to that of the trademark owner, where there is no likelihood of confusion.

Defences against trademark infringement?

• No likelihood of confusion: Arguing that there is no likelihood of confusion between the trademarks in question, often by showing differences in appearance, sound, or meaning.

• Prior use: Claiming prior use of the trademark before the plaintiff’s registration, establishing the defendant's rights to the trademark.

• Fair use: Using the trademark in a fair manner for descriptive purposes, such as describing the product's characteristics without implying endorsement.

• Non-commercial use: Defending the use of the trademark as non-commercial, such as in academic, artistic, or commentary contexts.

• Lack of distinctiveness: Arguing that the plaintiff's trademark lacks distinctiveness and therefore does not qualify for protection.

Penalties for trademark infringement

• Injunctions: Courts may issue injunctions to prevent further use of the infringing mark by the defendant.

• Monetary damages: The infringer may be ordered to pay damages, which could include actual damages, profits made from the infringement, or statutory damages.

• Seizure of goods: Counterfeit goods bearing the infringing trademark may be seized and destroyed.

• Legal costs: The infringer may be required to pay the legal costs incurred by the trademark owner in pursuing the infringement case.

• Criminal penalties: In severe cases, criminal penalties, including fines and imprisonment, may be imposed on the infringer.

• Public notice: Courts may order the infringer to publish a public notice acknowledging the infringement and apologising for the unauthorised use.

Remedies against trademark infringement

• Cease and desist letter: The trademark owner may send a cease and desist letter to the infringer, demanding the cessation of the infringing activity.

• Civil litigation: The trademark owner may file a lawsuit seeking an injunction, damages, or both.

• Monetary compensation: The court may award monetary compensation for losses suffered due to the infringement.

• Account of profits: The infringer may be ordered to account for and hand over any profits made from the infringing activity.

• Corrective advertising: The infringer may be required to engage in corrective advertising to rectify any consumer confusion caused by the infringement.

• Destruction of infringing goods: Courts may order the destruction of goods bearing the infringing trademark.

What does it mean to have a registered trademark?

• Exclusive rights: The owner of a registered trademark has the exclusive right to use the mark in relation to the goods or services for which it is registered.

• Legal protection: Trademark registration provides legal protection against unauthorised use, allowing the trademark owner to take legal action against infringers.

• Brand recognition: A registered trademark enhances brand recognition and consumer trust, distinguishing the goods or services from competitors.

• Nationwide protection: In India, a registered trademark provides nationwide protection, ensuring that no one else can use a similar mark in any part of the country.

• Asset value: A registered trademark is an intangible asset that adds value to the business and can be licensed or sold.

• Use of ® symbol: Once registered, the trademark owner can use the ® symbol to indicate that the mark is officially registered and protected under law.

Conclusion

Understanding trademark infringement and its consequences are essential for businesses to protect their brand identity. Taking proactive steps to secure trademarks and responding to infringement can save companies from potential legal battles and financial losses. If you are a business owner looking to safeguard your intellectual property and ensure smooth operations, consider leveraging financial products like Bajaj Finserv Business Loan. With quick approvals and flexible repayment options, you can focus on growing your business while effectively managing any legal challenges that come your way.