INFRINGEMENT OF TRADEMARK AND ITS REMEDIES By - Kimika Bhardwaj

INFRINGEMENT OF TRADEMARK AND ITS REMEDIES

Authored By - Kimika Bhardwaj

Trademark plays a major role in establishing brand faithfulness. The main aim of trademark law is to avert unjustifiable rivalry by safeguarding the utilization of design, logo, domain name and so on that remarkably distinguises the products of a firm. Subsequently, focusing on brand name insurance is similarly as significant for the independent business visionary for the endeavor business. The definition of trade mark is very wide and means, a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.[1]

Infringement of a trademark is the unapproved utilization of brand name. It happens when an individual other than the registered holder in the line of trade or business, with regard to identical goods and services for the registered mark, utilizes the same mark.

Essentials of Infringement

• Copying any fundamental element or copying the entire of the mark and making a few of inclusions and changes.
• It should be utilized in the course of trade, business or profession.
• Infringing marks should be printed or regular depiction of the mark in accounts or advertisements.
• Any verbal utilization of brand name isn't infringement.
• Infringement of registered trademarks
• If infringing mark is same as registered trademark
• Unjust advantage of registered trademark
• If there is Import or export of goods under registered trademark.
• If any advertising is in contravention to sincere use in trade or business
• If there is use of spoken words and visual depiction of registered marks
• If a registered trademark is used for packaging goods
• If a registered trademark creates confusion in the mind of public

Remedies Available Against Infringement of Trademark

There are three kinds of remedies that protects the registered trademark:

1) Civil remedies

2) Criminal remedies

3) Administrative remedies

Civil remedies

1. Interlocutory injunction

An interlocutory injunction is a kind of impermanent directive, which is functional during the pendency of the case in the court. It the the most essential remedies for infringement of trademark. Consequently, an interlocutory directive can force or keep a party from doing specific acts which could lead to the violation of plaintiff's right.

1. Damages

It means to financial pay granted to the individual who experienced any improper misfortune due to the acts of someone else.

1. Anton Piller orders

This order is passed where there is a high chances that the respondent might obliterate significant proof in his charge. It is a injunction which permits a person to enter the premises of another person to search for and take copies of evidences which are needed for a court case, and are used especially in cases of infringement of trademark and copyright.

1. Account of profits

This remedy is granted in cases where a defendant has profited from unfair conduct and is an alternative remedy to damages.

Criminal Remedies

Criminal complaints are filed under sections 103 and 104 of the Trademarks Act, 1999.[2] In the event of criminal proceedings, the following are the remedies ordered by the court to the trademark infringement offender: accompanied by imprisonment of at least six months and up to three years ; accompanied by a fine that cannot be less than 50,000 Rupees and upto 2 lakh rupees.[3]

According to The Trademark Act of 1999, trademark infringement is a cognizable offence, and police is authorised to submit a First Information Report (F.I.R.) and proceed with investigation.

1. The Time Limit

There is no time restriction on how long you have to file a lawsuit because trademark infringement is persisting crime.

1. Jurisdiction for a Suit

The provisions outlined in The Trademarks Act, 1999 are used to determine the proper jurisdiction for a lawsuit claiming trademark infringement. No lawsuit for trademark infringement may be filed in a court that is lower than the district court. The district court[4] with authority to hear the case and located within the municipal limits may receive a lawsuit from the trademark holder.

Administrative Remedies

When the Trade Mark Registry is debating whether to award a trade mark, the mark may be protected by opposing the registration of a confusingly similar trade mark.The examiner of the trademark registration conducts inquiries. After the registration process is complete, a third party will always file a trademark opposition, contesting the already-registered mark in the trademark journal. Correcting a trademark that has already been registered is another administrative option. This helps to clear up trademark uncertainty in a way.  Because the remedy is administrative in character, it is implemented by monitoring the commercial activities of the items bearing the infringing trademark. Therefore, in order to prevent import and export of items that are marked with a trademark that is fraudulent by nature are both prohibited.

Case Laws on Trade Mark Infringement

• Medley Pharmaceuticals Ltd. v. Winsome Laboratories Ltd.[5]

A medical treatment containing the medication was given the distinct trade name "Nimsaid" by the plaintiff firm for composition of drug named "Nimesulide". Under the falsely similar trade marks "Nimaid" and "Nimaid-P," the defendants were producing and marketing identical medical treatments. It was decided that the product names of the plaintiff and defendant were similar. Both formulations included the same medication. The court held that the plaintiff's mark was registered and protection was granted to plaintiffs.

• Lark Laboratories Ltd. v. Nabros Pharma Pvt. Ltd.[6]

In this case the defendant copied the registered trademark of plaintiff and carried out breach of infringement. The court granted injunction against defendant.

• Ashwini Chemical Works, Hyderabad v. Aswini Homeo Pharmacy[7]

In this case the plaintiffs were the prior user of ''ASWINI'' trademark. The trademark used by defendant was ''ASHWINI''. Both plaintiffs as well as defendant were using the same product. Therefore, the court granted injunction preventing defendants from using similar trademark.

• Dell Computer Corpn. v. Arun Kumar[8]

In this case plaintiff was the registered owner of trademark "DELL" in more than 130 countries. It had received immense position. The defendant used the trademark and failed to abstain despite of legal notices and summons. The suit was decreed against the defendant.

• Baker Hughes Ltd. v. Hiroo Khushlani[9]

In this case there was an agreement between appellant and respondent that respondent can use name Baker only when allowed by appellant. Here the injunction was granted restraining the respondent for using same name as appellants.

Conclusion

The marks connected with goods come to acquire reputation and goodwill around them. The trademark law has evolved with the purpose of acknowledging the proprietary right to a trader to utilize a mark for his goods and services. Plaintiff must prove that the essential features of registered mark have been copied. Various kinds of remedies are available to the owner of the product/service in case of unauthorized use of trademarks. Thus, the registration of trademark is essential for the products and services in order to save the Brand from Trademark Infringement.

[1] S. 2 (zb), The Trade Mark Act, 1999.

[2] The Trade Marks Act, 1999 ( 47 of 1999).

[3] S. 105 of the Trademarks Act, 1999.

[4] S. 134 of the Trademarks Act, 1999.

[5] AIR BOM R 145.

[6] AIR BOM R 145.

[7] AIR 2010 (NOC) 505 (AP).

[8] (2005) 31 PTC 651.

[9] (2004) 12 SCC 628.