This article on ‘Trademarks: Infringement, Remedies, & Landmark Cases’ was written by Dhruvi Joshi, an Intern at Legal Upanishad.
Trade Secrets are protected by intellectual property (IP) rights that can be licensed or sold. Generally speaking, information must meet the following criteria to be considered a trade secret:
- have commercial value due to their secrecy;
- be known only to a small group of people; and
- be subject to reasonable security measures taken by the rightful owner of the information, including the use of confidentiality agreements for business partners and employees.
This article will mostly address what a trademark is, how to prevent trademark infringement, and the civil, administrative, criminal remedies and the Landmark Judgement of ‘Coca-Cola Company vs. Bisleri International Pvt. Ltd‘.
If it is made public, the law can help safeguard it. Patents, copyright, and trademarks all provide legal protection. Business names, logos, slogans, and other items can be protected under trademark law.
WHAT IS A TRADEMARK?
Business names, logos, slogans, and other items can be protected under trademark law. Names and logos are the most popular types of items that may be registered as trademarks. Anything that enables customers to tell your products or services from those of another is considered a trademark. Think about Intel and you’ll hear a specific jingle; think of Nokia and you’ll see two people holding hands and hear its catchy music. Additionally, trademarks can be registered for sounds, colours, and forms. One of the reasons why these less common trademarks are less frequent is that they are more difficult to register.
A trademark needs to be distinctive to prevent confusion with a mark that has already been registered. Additionally, it cannot be descriptive; for example, your new trainer brand cannot be called “sports shoes.” The name Pluma would also be inappropriate since it may be mistaken for Puma.
You run the risk of later learning about a company with a similar name or even getting a letter ordering you to stop using your mark because it infringes on the rights of someone who has already registered a trademark if you begin using a logo or name without first registering it as a trade mark and without first making sure it is free to use.
WHAT IS TRADEMARK INFRINGEMENT?
The Trademarks Act of 1999 protects trademarks. This act’s sections 28 and 29 discuss rights granted by registration and trademark infringement, which deal with the unlawful use of a trademark, respectively. When someone uses a mark that is not his and the name or logo is extremely close to the one who made it, it is an infringement. It is so identical that it confuses customers and gives them the idea that they can’t even tell various items apart effectively.
REMEDIES FOR TRADEMARK INFRINGEMENT
Both registered and unregistered trademarks can be violated through the use of remedies. In the former scenario, it serves as an action to begin the legal processes for infringement, but in the latter scenario, it aids in shifting the legal responsibility for the violation to common law.
Police can file an FIR and launch an investigation since trademark infringement is a cognizable violation. Criminal penalties for trademark violations are uncommon. As follows:
- According to Section 103, the minimum sentence is six months and it can be increased to three years.
- Additionally, Section 104 mentions a fine of 50,000 rupees, which may be increased to 2 lakhs.
- While Section 105 discusses the expanding form of punishment made available by this statute,
- As a criminal remedy for an effective adaptation to the aforementioned rules, the authority of the person responsible for the violation may be seized. Only reasonable evidence of an infraction will support the police’s use of this technique.
The Trade Marks Act of 1999 specifies the number of legal remedies available to those whose trademarks have been violated. As follows:
- A frequent civil remedy that can be offered is an injunction or authoritative directive from a court of law. Perpetual injunctions and temporary injunctions are the two types of injunctions that may be obtained.
- A perpetual injunction is given based on the case at hand and when a decision is expected, therefore it has a permanent aspect. In the event of a temporary injunction, a certain period is taken into account, in this example, the period until the court makes its final rulings on the subject.
- Under Order 39 Rules 1 and 2 of the Code of Civil Procedure, the same might be requested. This effectively defeats the lawsuit’s intended outcome and permits the defendant to continue using the mark in a manner that is similar to that of the plaintiff.
- The court may require the infringer to take certain actions to restore the reputation of the infringer’s company. This might be accomplished by publicizing his apologies or taking steps to restore the consumers’ confidence.
- The harmed party may seek damages because his or her business has suffered losses as a result of losing the exclusive right to use the trademark that he or she owns.
- Handling the profit accounts and issuing a directive for the delivery or removal of the infringing goods is a legal remedy that is frequently requested.
Criminal remedies are often seen to be far more pertinent than civil remedies. Administrative remedies are another option for stopping trademark infringement, in addition to civil and criminal sanctions. Below is a list of the treatments that fall under different categories of administration:
- Through the use of Sections 9(1) or 11 of the Trade Marks Act, 1999, to oppose a mark that is confusingly similar to the original mark. If such a circumstance occurs, 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 technique to carry out administrative remedies. This helps to clear up trademark uncertainty in a sense.
- Because the remedy is administrative in character, it is implemented by monitoring the commercial activities of the items bearing the infringing trademark. Therefore, to prevent hesitation, the import and export of items that are marked with a trademark that is fraudulent by nature are both prohibited. These three administrative remedies are frequently helpful in avoiding trademark infringement.
The Delhi High Court was adamant in the well-known case of The Coca-Cola Company vs. Bisleri International Pvt. Ltd. that if there is any degree of infringement, then the court’s jurisdiction is likely to be present to consider the relevant litigation. The misunderstanding caused by the brand name MAAZA being misidentified as belonging to the defendant’s firm rather than the plaintiffs’ corporation led to the case’s resolution. Both domestically and internationally, the defendant utilized the trademark.
Additionally, the plaintiff asserted losses incurred by the business by filing for a permanent injunction. The court imposed an interim injunction against the defendant after concluding that the defendant is liable for trademark infringement as a result of using the brand outside of what is allowed.
In India, the demand for trademark registration is steadily increasing, which shows how conscious individuals are becoming of the need to protect their products. Nowadays, trademark infringement is a widespread occurrence. Even if there are various solutions to deal with the issue, not all of them are used properly.
The legislation at hand is ultimately hampered by loopholes in every technique used to stop violations. Any type of trademark violation hurts the person or the entity and lowers the brand’s value. In addition to direct infringement, there can also be indirect infringement. Even if there are no rules that address indirect infringement, there are nonetheless obligations under the universal law concept. Therefore, a little bit of awareness among people is needed to prevent any form of infringement on their product and quickly overcome it with legal assistance and instruction.
- ‘What are the Remedies of Trademark Infringement in India?’ (Registration wala, 23 April 2022) <https://www.registrationwala.com/knowledge-base/ipr-services/trademark/trademark-infringement-remedies> accessed at 6/07/2022
- Coca-Cola Company vs. Bisleri International Pvt. Ltd <https://lawcirca.com/the-coca-cola-company-vs-bisleri-international-pvt-ltd-20-october-2009/>
- Essenese Obhan and Taarika Pillai, ‘Selecting The Best Remedy For Trademark Enforcement In India’ (Mondaq, 15 July 2020) https://www.mondaq.com/india/trademark/965594/selecting-the-best-remedy-for-trademark-enforcement-in-india accessed at 6/07/2022
- ‘Trademark infringement and its remedies’ (Law Circa, 20 December 2020) https://lawcirca.com/trademark-infringement-and-its-remedies/#:~:text=A%20trademark%20is%20capable%20of%20distinguishing%20the%20goods%20or%20service,to%20add%20value%20to%20products. accessed at 6/07/2022