TRADEMARK INFRINGEMENT

What is Trademark Infringement?

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

Types of Trademark Infringement

1. Direct infringement- There a few elements that have to be met for a direct breach to occur; they are as follows:
i) Use by an unauthorised person: This means that violation of a trademark only happens when the mark is used by a person who is not authorised by the holder of the registered trademark.
ii) Identical or deceptively similar: The trademark used by the unauthorised person needs to either be identical to that of the registered trademark or deceptively similar to it. The term ‘deceptively similar’ here only means that the common consumer ‘may’ be confused between the marks and may think of them being the same. The operational word here being ‘may’, it only needs to be proven that this is a possibility and does not require proof of actually happening. As long as there is a chance of misrecognition of the marks, it is enough for proving infringement.
iii) Registered trademark: The Act only extends protection to trademarks that have been registered with the trademark registry of India. In the case of breach of an unregistered mark, the common law of passing off is used to settle disputes.
iv) Class of goods or services: For the infringement of the trademark, the unauthorised use of the mark has to be used for the propagation of goods or services that fall under the same class of the registered trademark.
2. Indirect infringement- Unlike direct infringement, there is no provision in the Act that deals with indirect infringement specifically. This does not mean that there is no liability for indirect infringement. The principle and application of indirect infringement arise from the universal law principle. It holds accountable not only the principal infringer but also anyone that abets, induces that direct offender to infringe.
There are two types of indirect infringement:
i) Vicarious liability: According to Section 114 of the Act, if a company commits an offence under this Act, then the whole company will be liable. Therefore not only the principal infringer but, every person responsible for the company will be liable for indirect infringement, except for a person who acted in good faith and without knowledge of the infringement.
The elements for vicarious liability are:
- When the person can control the activities of the principal infringer
- When the person knows of the infringement and contributes to it
- When the person may derive financial gains from the infringement
The only exception to vicarious liability of a company for infringement is when the company has acted in good faith and had no idea about the infringement.
ii) Contributory infringement: There are only three basic elements to contributory infringement:
- When the person knows of the infringement
- When the person materially contributes to the direct infringement
- When the person induces the principal infringer to commit infringement
In the case of contributory infringement, there is no exception as there exists no chance of the contributory infringer to act in good faith.

Remedies for Trademark Infringement

1. In form of Injunction- The action of an injunction is referred as stopping one person from doing particular activity or task through the judicial process. With respect to trademark infringement, it is restraining a person from unauthorised use of the trademark. Through a temporary or permanent stay, the Court grants protection to the trademark owner.
2. In form of Damages- Damages refer to the recovery of loss faced by the trademark owner through the trademark infringement. The monetary value of financial loss or brand impairment is recovered under this head. The amount of damages will be granted by the court after considering the actual and anticipated loss of owner due to infringement.
3. Custody of infringing materials- This remedy suggests that the Court may ask the infringer to deliver all the goods or products that are labelled with the brand name. Here, the Court may direct the authorities to withhold the related materials accounts and destruct all such goods. Where the trademark relates to services, i.e. a Service Mark is infringed; the order may be passed to stop the provision of the services immediately by the infringer.
In case of infringement/passing off trademark, the criminal complaint can also be filed and noted under the Trade Marks Act, 1999 which states the registered owner of the trademark has a chance to file the FIR through police on the infringer.