When a new business or corporation is registered, the first step for registering the corporation is to have a unique name, logo, sign or symbol which adds value to the product. These signs or symbols are the trademarks that also add to the goodwill of the corporation. It is also the mode of selling one’s product to the customer at a global level. They are the brand names and so it is important that the one corporation does not copy the symbols or signs of the other corporation.
As per section 2(e) of the Trademarks Act, 1999[i], trademark means that a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registered as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trademark, of that person.
For instance, Cadbury dairy milk chocolate has its own trademark which is unique and the logo, sign, or symbol cannot be used by any other firm which deals in chocolate or in any other product, and if anyone infringes the trademark of Cadbury that firm will be held liable for endorsing his product to the consumers.
What is the meaning of infringement of the trademark?
The infringement of a trademark means copying the trademark of other corporations directly or indirectly. It is the violation of the right of the corporation which is attained by them through registering the symbol, sign or logo through a written application. After registering the sign, symbol or logo the corporation is conferred with the rights to trade, it helps the consumer to distinguish the product, quality of the product is maintained and also helps in advertising it.
As per section 29 of the Trademarks Act[ii], infringement of the trademark is defined as the person who infringes the trademark who is not a registered proprietor uses the trademark for the course of trade which is identical or similar to the registered trademark because such trademarks are identified for the providing good and services to the consumer.
What is the punishment for infringing on the trademark?
If any person applies for a false trademark, applies any such trademarks to the goods or services, possess any plate, machines or other objects, tampers or alters the trademark or applies any false description about the trademark to the goods and services will be held liable as per section 103 of the Trademarks Act, 1999. The punishment for such activity is will be awarded punishment for a month of 6 months which may extend to 3 years and a fine of rupees 50,000 which may extend to rupees 2 lakhs.
However, if an offense is committed by a company, so in this case, every person who is in charge that is director, manager, secretary or any other officer of the company for the conduct of the business shall be held liable and will be punished as per section 114 of the Trademarks Act, 1999.
How the accused person can prove his innocence?
A person who has applied for the registered trademark on the goods and services or provides information about the origin or description of the trademark without any intention to deceive the corporation. Such a person will be held liable and will be punished by the court of law. However, if he proves his innocence in the court of law he won’t be held accountable. As per section 112 of the Act will be acquitted in the following scenario:
- The court of law will exempt such person who is employed on the behalf of the other person for making blocks, machines or other instruments which will be used in making a trademark.
- When a person is employed but his employment is not concerned with the profit of the sale of the goods or services.
- When a person on demand shares all the information on behalf of whose trademark was applied.
- After taking all the reasonable precautions against committing the offense he had no reason to suspect the authenticity of the trademark or trademark description.
Difference between a registered and not registered trademark
As per section 28 of the Trade and Merchandise Marks Act, 1958, any trademark which is a registered trademark gets the right to operate its business under it and if any other identical or similar trademark is also in the market which got registered, they also have the same right and each proprietor will be treated as sole registered proprietor. They can seek remedy under the court of law for infringement of the trademark.
Whereas as per section 27 of the Trademarks Act, 1999, any business which is operating under an unregistered trademark cannot seek remedy for the infringement of the trademark. There is no violation of right will take place.
Landmark judgments
Thev arious remedies have been granted to the plaintiff by the court of law for the infringement of the trademark in the following of the landmark judgments are:
Yahoo!, Inc. vs. Akash Arora &Anr., 1999[iii]
The suit was filed by the plaintiff for seeking a decree of the injunction against the defendant, where the defendant has used the similar domain name, “YahooIndia.com”. Therefore the court passed an order of injunction against the defendant who was involved in operating the domain under the name of “YahooIndia.com” for the purpose of providing goods or services to its user which is identical or similar to the trademark of the plaintiff.
Millet Oftho Industries & Ors.vs. Allergan Inc, 2004[iv]
The appellant and the respondent both are the pharmaceutical company. However, the appellant was an Indian company and the respondent was a pharmaceutical company who deals in several countries. An ad interim injunction was filed against the appellant for applying for a trademark on selling medicines which are similar to the respondent’s trademark.
The court held that in case of a medicinal product if a drug is allowed to be sold in India from a worldwide market which has the similar trademark to the other it could lead to confusion and the MNC, in this case, does not have an intention to affect an Indian company. So the ultimate test of who was 1st in the market will be taken and the court passed an injunction order against the respondent.
The Coca-Cola Company vs. Bisleri International Pvt. Ltd., 2009[v]
In this case, the court ordered an injunction against the defendant who sold his trademark Maaza to Coca-Cola and had also exported its product in foreign market under the trademark of Maaza.
However, a plaintiff who has suffered any loss due to the use of his trademark which is identical to the defendant trademark the court can order for repayment of such losses. By infringing the trademark the general public can easily get confused hence with immediate effect the court orders for an injunction which is an official order to stop someone from operating.
Conclusion
Trademark is the soul of any company which is being registered under it. With the registration of the trademark reputation of a company is built on it which is earned by the quality of goods or services availed by the consumer and also the competition in the market at a global level is too established. By infringing the trademark of a company that has soul earned it, is taking away its right to attain confidence over its consumer.
Edited by Pushpamrita Roy
Approved & Published – Sakshi Raje
Reference
[i]http://ipindia.nic.in/writereaddata/Portal/ev/TM-ACT-1999.html.
[ii]http://ipindia.nic.in/writereaddata/Portal/ev/TM-ACT-1999.html#s29.
[iii]https://indiankanoon.org/doc/1741869/.
