While browsing through the online portals I saw a logo exactly matching the logo of popular sports brand “Nike”, but to my surprise the brand name appearing below the said logo was written in deceptively similar fashion i.e. “Nikah”.
In layman’s language this is infringement of Trademark. This example evidences that such infringements are happening every nuke and corner of India, be it online, print media or the hoarding on the roads, advertisements, etc.
One of the market dynamics relates to the fact that the product and goodwill created in the mind of customers is often related to some catchy name or a logo of that product or name of the manufacturer of that product. Due to established brands and increasing numbers of “brand freak” people around, the trademark infringement cases in India are increasing year on year.
So technically let us understand what is infringement of Trademark? Unauthorized use of trademark which may be identical or deceptively similar to the original trademark would amount to infringement. In case of registered trademark the registered proprietor or registered user may take action against infringement. However, in case of unregistered trademark the common law remedy of passing off action is maintainable.
Mere deceptive similarity or resemblance will not amount to infringement. Certain essentials have been identified to frame a particular event as an infringement of Trademark. Following are such essentials constituting an infringement:
- Person infringing the trademark is not authorized to use the trade mark.
- The infringing trademark is either similar or identical or deceptively similar to the already registered trademark.
- The infringing trademark must be used in the course of regular trade in which the registered proprietor or user is already engaged.
- The use of infringing trademark must be printed or in case of usual representation of mark in advertisement, invoices or bills. Mere oral use of trademark is not infringement.
- Using either whole of the registered trademark or an adopted one by making a few addition and alteration.
Now, let’s have a look at the number of cases which have been filed during last five years which are related to matters involving infringement of trademark.
Significant changes in the Trademark Registry and Courts are seen since India became a member to Madrid Protocol in July 2013. Presently, more than 2000 infringement cases are standing in the Courts of India. The graph speaks with reference to the number of infringement cases filed in past five years in India.
How is a Trademark protected in India? To protect the registered trademark, the following remedies can be resorted.
- Civil remedies: When instances of infringement occur, the court of competent jurisdiction, not lower than District Court can be moved for grant of interlocutory injunction, Anton Pillar Orders, damages and account of profits.
- Criminal proceedings: Complaint may be made against the person causing infringement. (Both the actions under civil law and criminal law can be initiated simultaneously. Under the civil law proceedings, the plaintiff seeks relief for himself while under the criminal law proceedings the complainant seeks award of punishment to the infringer.)
- Administrative remedies: Opposing the registration of a deceptively similar trademark when the Trademark Registry is in the process of considering the grant of a trademark can protect the trademark. The Registry can also be moved for removal of a deceptively similar trademark, if registered.
As per the extant provisions of Limitation Act, 1963 the period of limitation for filing suit for infringement of trade mark is three years from the date of infringement. Where the infringement is continuing one, a new cause of action would arise every time an infringement occurs.
Onus to prove the infringement lies on?
It is well-settled position in law that the plaintiff must prove that the essential features of his registered mark have been copied. The onus to prove ‘deception’ is on the part of the plaintiff who alleges infringement.
Case of Infringement
A recent famous case punched the clock was Prius Auto Industries Ltd. & Ors. Vs. Toyota Jidosha Kabushiki Kaisha, judgment delivered on 23rd December 2016 wherein Hon’ble Delhi High Court has restrained two Indian auto spare parts manufacturers from infringing the trademarks like “Prius” and “Innova” of Japanese car-maker Toyota and directed them to pay Rs 10 lakh as damages to Toyota for “knowingly and intentionally” using its brands to earn “undue profits”.
Case of No Infringement
Any action by a person will be treated as an infringement of the trademark if the relevant provisions of the Trade Marks Act, 1999 are satisfied. In International Foodstuffs Co LLC v. Parle Products Private Limited and Anr. (Notice of Motion No. 2624 of 2012 in Suit No. 2497 of 2012). “London Dairy” is a mark of Dubai based company namely M/s International Foodstuffs Co. LLC which sells premium quality ice cream and on the other hand “Londonderry” a trademark of M/s Parle Products Private Limited which is selling confectionery items. Phonetically, they are the same. However, the Hon’ble Bombay High Court in April, 2016 refused to grant an injunction on trademark infringement. Reason being everything besides the sound of the brand was different. The order held that there are no visual or structural similarities between the Products. Further, for the want of demonstration of deceit or misrepresentation in color, trade dress, the goods and their pricing, there is no similarity in any of the above stated parameters.
The study reveals that a comprehensive framework has been evolved to protect the trade marks, whether registered or unregistered. Not only adequate remedies have been provided but also stringent provisions for punishment of offences are prescribed under the Trade Marks Act, 1999.