ABSTRACT:

This study focuses on what a trademark is, how it functions, its infringement, tests, and defenses regarding infringement. In this modern world, trademarks plays a major role in the market, while choosing the destined goods. Trademarks ensure the quality of the product, and for each sector of goods, there will be a few trademarks familiar to everyone that they always opt for. Trademark also plays a huge role in advertising, trading, and generating monetary benefits. And at the same time, this can be used by others to reduce the reputation of the company and also to make a commercial benefit by using others’ names.

Keywords: Trademark, infringement, Trade Mark Act, Monetary benefits.

 Introduction:

A trademark is a sign or a symbol that helps in distinguishing the goods or services of a trader from those of others. A trademark can be a name, logo, or slogan of an enterprise, which plays a crucial role in making the enterprise distinctive. According to Section 2(1)(m) of the Trade Mark Act, 1999, the term “Mark” includes a device, brand, heading, label, ticket, name, signature, word, letters, numerals, shape of goods, packaging, or combination of colors or any combination thereof.

It sometimes plays the role of an advertisement. And for sure, it ensures the quality of products and services that they provide. It also helps the customer to choose their desirable product or service from others. Thus, it plays a major role in domestic and international marketing.

Intellectual Property is classified into two. One is Copyright, and the other is Industrial property. Again, Industrial property includes patents, trademarks, industrial designs, and geographical indicators.

What is a Trade mark and what are its important features?

Section 2 (b) of the Trade Mark Act, 1999 defines what trademark is. According to the Act, “trade mark” means a mark capable of being represented graphically, which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and the combination of colors.

Encircled “TM” or “R” indicates registered trademark. It ensures legal protection to marks, names, and symbols. Thus public can understand the product as it is used for the trade of products of the proprietor. It also warns the public not to use the same to increase their brand value. It shows that it is solely used for identifying the brand.

Thus trademark functions as an identification mark of goods and their origin. It acts as a guarantee for the quality of the product. A trademark is a marketing strategy of a brand. It also gives a good image in the minds of consumers by setting a distinctive mark in their minds.

For these purposes, a trademark should have following features.

• It should be distinctive.

• It should be short.

• It should be easy to pronounce.

• It should be easy to spell.

• Preferably it should be inventive.

• Should not be similar to other products.

• Moreover, it should comply with registration guidelines and should not be a restricted one.

What are the types of Trademarks?

There are numerous types of trademarks classified in India. So that the businesses can register their trademarks and can get exclusive rights over their logos, names and other features. Trademarks are classified as:

• Word Marks

• Device marks

• Shape marks

• Color marks

• Sound marks

• Smell marks

• Collective marks

• Certification marks

•  Service marks

•  Trade dress

Trademark Infringement:

Trademark infringement can only be brought before a court if the trademark is already registered. This trademark, which is registered, must be used by another person for trade/ commercial purposes. If the use of a trademark is not intended for profit, that is, if there is no monetary gain for the use, it cannot be sued for trademark infringement. This means that to call it a trademark infringement, it is mandatory that it must be used in the course of trade. The use of an exact trademark is not mandatory for trademark infringement. Use of similar or identical signs, symbols, shapes, and marks is enough to declare it as a trademark infringement. That means if it creates confusion about the product, then it is trademark infringement.

For example, there is a popular biscuit company named ‘XYZ’, their biscuit pack is in red & white combination, and the name of the company is written in font Calibri with a symbol of wheat. And these are all registered. Meanwhile, another biscuit company, ‘KYZ’, using the same colour combination, symbol on their pack with the name ‘KYZ’ in the font Calibri. A customer who wanted the biscuit ‘XYZ’ under confusion took the pack of ‘KYZ’. Here, this customer can sue against ‘KYZ’ for trademark infringement. Even if he doesn’t complain, it is trademark infringement as this is an unfair trade practice of imitating others.

Not only the use of a trademark in retail, but its use in import-export is also considered as a trademark infringement. That means making confusion among the customers and gaining unfair monetary advantage from it, using another companies registered trademark is trademark infringement.

Mere application for the registration of a trademark is not an infringement unless its use is alleged and proved, according to Dhoda House v. S K Maingi[1]. If the registration of a trademark is not valid, then no infringement can be alleged. If the registration is conditional, then the conditional use by other’s free-will will not come under infringement.

Trademark infringement is only applicable in the case of goods, not for services. The use of these trademarks must be expressed in printed form. Oral use of a trademark is not considered trademark infringement. Thus, there are four essential elements to be identified to distinguish trademark infringement.

Essentials of Trademark Infringement:

1. The person who uses the mark should not be a registered proprietor or should not be person who is authorized to use the mark by registered proprietor.

2. The mark must be in relation with the goods and services of which the trademark is registered.

3.  The mark must be identical or similar to the registered mark.

4.  The mark in use must be used as a trademark for commercial purposes.

As the trademark infringement creates confusion, court uses several factors to determine the disputes. Those factors includes the following key points;

1. Strength of the mark.

2. Proximity of the goods.

3. Similarity of the marks.

4. Evidence of actual confusion.

5. Similarity of marketing channels used.

6. Degree of caution exercised by the typical purchaser.

7. The defendant’s intent.

How does the Indian Laws define Trademark Infringement?

For safeguarding registered trademarks, India follows a very structured legal framework, the Trade Mark Act, 1999. defines the use of an authorized mark as a trademark in the course of trade as an exclusive right of a proprietor. And recognizes trademark infringement as the violation of this right.

Section 29 of Trade Marks Act, 1999 categorizes various infringements based on the relationship between the registered mark, the infringing mark and the associated goods or services.

Section 29(1) of the act defines “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.”

What are the tests for Trademark Infringement?

1. TRIPLE TRADEMARK TEST:

Triple trademark test is a test structured by Indian judiciary to decide whether the use of a mark by another caused a violation of other’s right. It looks at three major elements to determine whether a trademark has been violated. The three concurrent elements are as follows;

▪ Whether the mark in question is identical or deceptively similar to the registered trademark;

▪ Whether the goods or services in question are identical or of the same description, and

▪ Whether the trade channels or distribution networks used by the parties overlap.

Under Sections 29(1) to 29(3) of the Trade Marks Act, 1999, courts establish infringement where all three limbs are satisfied and presume the likelihood of confusion by the consumers:-

Under section 29(1) of the Trade Marks Act, 1999-

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

Under section 29 (2) of the Trade Marks Act, 1999-

(2) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to confuse the part of the public. If these key requirements are satisfied, then it amounts to trademark infringement.

Some related Case Laws, which interprets these sections are-

1. M/s Jain Electronics v. Cobra Cables Pvt Ltd and Ors[2]:

Facts of the case: In this case, the Cobra cables applied for the registration of the trademark, “COBRA”. Jain Electronics opposed the application, as the same has been registered for their company.

Ruling: The Hon’ble Delhi High Court upholds the findings of the Deputy Registrar and the IPAB. The findings satisfied the Triple Identity Test.

II.       Sumeet Research and Holdings Pvt Ltd v Sipra Appliances[3]:

Facts of the case: Sumeet Research and Holdings, the plaintiff, was the registered user of the trademark, “SUMEET”. Sipra Appliances started to use the same. The plaintiff filed a permanent injunction under the act for trademark infringement and passing off.

Ruling: The court granted a permanent injunction, holding that the plaintiff is the registered user of the trademark and that it satisfies the Triple Identity Test.

2. The Average Consumer Test:

Facts of the case: A dispute concerning the prominent part of a trademark and registration of part of a trademark was decided by Hon’ble Delhi High Court in the case Mountain Valley Springs India Private Limited v. Baby Forest Ayurveda Private Limited[4].  

Court applied the Average Consumer Test in which three essential factors were analyzed. The three key factors were,

1. Monopolies

2. Sophisticated consumer testing

3. Global appreciation

Ruling: In the above case, trademarks were not satisfying the conditions for the test and court dismissed the case. Court held that, the plaintiff cannot claim dominance over a generic term- forest. And it cannot be exclusively used by the plaintiff without specific registration for the word “FOREST”.  

3.  Pianist Test:

This test was established in the case, Pianist Co. Application[5]. It emphasizes the importance of considering customer behavior including nature and type of customers.   

What are the defences to avail against Trademark Infringement?

There are various defenses available against trademark infringement. Which are:

• Fair Use: In this case, the accused may take the defense that he was using it with the consent of true owner or argue that there were no intention to defraud.

• Prior Use: Prior user have more rights than the subsequent user even if he register the same. The reputation gained by it and duration of use should be proved.

• Non-use of mark by the registered proprietor: It has to be proved by the defendant that the non-usage is not by fault but by unforseable circumstances.

• Parody: When the use is not for commercial purpose, then court may allow it as parody, in the case of Tata Sons Ltd v. Greenpeace International[6].

• Invalidity of registration.    

Conclusion:

We can conclude that in India, trademark infringement is an offence recognised under the Trade Mark Act, 1999. And the law provides for punishments and remedies against trademark infringement. It is notable that our judiciary also provides defences against infringement. Still, the law has to be more stringent against these kinds of offences because in this world, where new startups are emerging and fraudulent activities are becoming a threat, trademark infringement laws help in closing loopholes.

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[1]  AIR 2006 SC 730

[2] (2011) 45 PTC 52 (Del HC)

[3] 2018 CS (COMM) 428/ 2016 (Del HC)

[4] CS (COMM) 523 / 2023

[5] (1906) 23 RPC 774

[6] I.A. No. 9089/2010 in CS (OS) 1407/2010