What is Trademark infringement and its types in India?

Introduction

Trademark infringement is a significant concern in India under the strict provisions of the Trademarks Act, 1999. This legislation safeguards trademarks, crucial intellectual property assets. Understanding the Types of Trademark Infringement and implications is vital for businesses and individuals, outlining legal protections and consequences. This blog offers an overview, discussing what constitutes trademark infringement, the Types of Trademark Infringement, along with its legal implications, emphasizing the importance of protecting intellectual property rights in commercial ventures.

What is a Trademark Infringement?

Trademark infringement refers to the unauthorized use or violation of a registered trademark. It occurs when someone uses a trademark or a similar mark in a way that creates confusion or misleads consumers about the source of goods or services. This unauthorized use can dilute the distinctiveness of a trademark and harm the reputation and business interests of the trademark owner. Trademark infringement is a serious legal issue and can result in legal action, damages, and injunctions to protect the rights of the trademark owner.

In India, trademarks are protected by the Trademarks Act, 1999. The Act establishes the guidelines for trademark registration, protection, and infringement penalties. All around the world, trademarks are considered to constitute intellectual property. Several national and international organizations work to safeguard intellectual properties like trademarks.

What are the types of Trademark infringement?

There are two types of trademark infringement to be aware of when researching them:

1. Direct infringement

Section 29 of the Infringement Act defines direct infringement. In case of the following situations, it will be called as Direct Infringement-:

• Usage by an unauthorized individual:  A trademark is only used infringingly when its owner has given the use of the mark permission to do so. It is not an infringement if the mark is utilized with the permission of the registered trademark proprietor.

• Registered Trademark: All trademarks registered with the Trademark Registry are given remedies under the Act. The Trademark Act, 1999 will not be applicable in the case that an unregistered trademark is violated. If a trademark is not registered, the normal law of passing off is applied. A law known as passing off is applied when someone or something damages the reputation associated with the actions of another person or group of people.

• Almost Identical or Matching: The trademark being used illegally by the person or people which is matching or confusingly similar to the registered trademark of the legal owner. The phrase “deceptively similar” has meaning since the public might confuse two similar trademarks and believe they are identical. According to the term, it is only necessary to show that there is a possibility for such confusion. A simple possibility of trademark recognition is effective in proving Trademark Infringement of a registered Trademark’s products or services.

• Goods or Services Class: The unregistered user of the trademark is using it to circulate goods and services that fall into the same group or class as the goods and services for which the unregistered user’s trademark is registered. Only trademark infringement of a registered trademark will be taken into account in this case.

2. Indirect infringement

There is no particular provision in the Act that addresses indirect infringement, unlike direct violation. This does not mean that indirect infringement is exempt from accountability. The universal law principle is the source of indirect violation and its implementation. Anyone who helps or encourages the primary infringer to commit an offence is also liable. Indirect violation is classified into two types:

• Vicarious Liability: According to Section 114 of the Act, the entire firm is responsible for any violations of the Infringement Act. As a result, not only the primary offender but also every individual accountable for the company will be liable for indirect infringement, unless they acted in good faith and had no knowledge of the infringement. The following situations give rise to vicarious liability:- The person has control over the main infringer’s actions;- The person is aware of the infringing behaviour and participating actively in it;- The person stands to profit financially from the infringing behaviour The only situation in which a firm is not held vicariously liable for an infringement is when it acted in good faith and was unaware of the violation.

• Contributory infringement: Contributory infringement is simply comprised of three fundamental components: When someone encourages the primary infringer to commit infringement, when they are aware of the infringement, or when they materially contribute to it. There is no exception in the situation of contributory infringement since there is no prospect that the contributory infringer will act in good faith.

What are the implications of Trademark Infringement?

Implications of Trademark Infringement in India are substantial. Not only is it considered a serious offense, but it can also lead to both civil and criminal penalties for the infringer. It’s important to note that trademark registration is not a prerequisite for initiating civil or criminal proceedings under Indian law. This is due to the existence of the passing off law, which is a common law protection against unauthorized use of trademarks. When a trademark is infringed or passed off as another, the court has the authority to grant various forms of relief, including but not limited to:

• Short-term injunction
• Permanent injunction
• Explanation of profits (damages in the amount of the profit generated from the infringement)
• Destruction of items while utilizing the fake mark
• The expense of legal action

 Suggested Read – Things to consider before trademark registration

The following punishment is mandated by the court in criminal cases:

• Imprisonment for a minimum of six months and a maximum of three years
• A penalty of not less than Rs 50,000 and not more than Rs 2 lakh

Conclusion

An owners of different types of trademarks can file a civil action for trademark infringement in either a federal court or a state court if they believe their mark is being used unlawfully. The applicant has the option, to begin with, the remedies against the defendant. The most common defences against such infringement, partial competition, and trademark dilution lawsuits include trademark misuse, descriptive and nominative fair use, and fraud in obtaining a trademark registration.