India, characterised by its mixed-market structure, accommodates numerous industries functioning under the principles of a free market. Within this market framework, competition is very intense. Flourishing in such an open market environment demands the establishment of brand recognition and brand value. A straightforward option to achieve this objective is through trademarks.
Once a trademark acquires such value, safeguarding it from misuse and infringement by external entities becomes imperative. The distinction between unauthorised use, identity, and deceptive similarity serves as the foundation for determining infringement, with remedies ranging from temporary and permanent injunctions to damages and account of profits. In this blog, we shall see what is infringement of trademark in India.
Understanding Infringement of Trademark in India
The Trademarks Act, 1999 stands as the legal safeguard for trademarks in India. This comprehensive legislation establishes the guidelines pertaining to the registration, protection, and consequences of infringement concerning trademarks. Trademarks, universally acknowledged as precious intellectual property, benefit from safeguarding provided by numerous international and national entities dedicated to preserving intellectual property rights, which includes trademarks.
In the context of India, the task of overseeing trademark protection rests with the Indian Patent Office. This institution operates under the jurisdiction of the Controller General of Patents, Designs, and Trademarks. Succinctly put, trademark infringement arises when an unauthorized entity employs a mark that is either identical to or confusingly similar to a registered trademark. The term “deceptively similar” indicates a scenario where an average consumer might be led to confusion regarding the origin of the associated products or services.
Types of Infringement of Trademark in India
Infringement of trademark in India includes two distinct categories, each defined by specific criteria:
1. Direct Infringement
Direct infringement, under Section 29 of the Act, involves certain key elements, including:
Unauthorised Use: This is basically the use of the trademark by someone who is not authorised by the holder of the trademark. If the mark is used with the owner’s permission, infringement does not arise.
Identity or Deceptive Similarity: The trademark utilised by the unauthorised party must be either identical to the registered trademark or deceptively similar to it. The term “deceptively similar” implies that an ordinary consumer might perceive the marks as the same, potentially leading to confusion. The crucial aspect here is the possibility of confusion, rather than actual occurrence.
Registered Trademark: The Act extends protection solely to trademarks registered with the Indian trademark registry. In cases involving unregistered marks, disputes are resolved through the doctrine of passing off, a tort law used to address damage to the goodwill associated with another entity’s activities.
Goods or Services Classification: Infringement applies when the unauthorised use of the mark occurs in relation to goods or services falling under the same class as the registered trademark.
2. Indirect Infringement
Indirect infringement of trademark in India lacks specific provisions in the Act but is not devoid of liability. Indirect infringement principles derive from universal legal principles and include two forms:
Vicarious Liability: As per Section 114 of the Act, if a company violates the Act, the entire company bears liability. Consequently, not only the primary infringer but all individuals accountable for the company share responsibility for indirect infringement. Exceptions exist for those acting in good faith without knowledge of infringement. Elements of vicarious liability encompass:
- Control over principal infringer’s actions
- Knowledge of infringement and contribution to it
- Potential financial gains from the infringement
Contributory Infringement: Contributory infringement involves three basic criteria:
- Awareness of infringement
- Substantial contribution to direct infringement
- Inducement of principal infringer to commit infringement
Unlike vicarious liability, contributory infringement lacks the “good faith” exception, as acting in good faith isn’t feasible for a contributory infringer.
Penalties for Infringement of Trademark in India
There are various penalties for infringement of trademark in India, which include:
Criminal and Civil Consequences
Infringement of trademark in India constitutes a cognizable offense, exposing the infringer to both criminal and civil liabilities. Remarkably, trademark registration isn’t obligatory for initiating civil or criminal actions, primarily due to the influence of the common law principle of passing off. In cases of trademark infringement or passing off, courts can grant the following remedies:
- Temporary Injunction: A preliminary order granted by the court to prohibit the party involved in infringement from continuing their unlawful actions throughout the duration of the ongoing legal case.
- Permanent Injunction: An enduring court directive that bars the infringing party from perpetuating the infringing conduct in the future.
- Damages: The court can provide financial restitution to the affected party to address the losses endured as a consequence of the infringement.
- Account of Profits: This involves computing the damages by considering the gains obtained by the infringing party through their infringing actions.
- Destruction of Goods: Courts have the authority to order the destruction of goods that bear the infringing trademark.
- Cost of Legal Proceedings: The infringing party might be required to cover the legal expenses of the aggrieved party.
Criminal Proceedings and Punishments
In instances of criminal proceedings, the court imposes the given penalties:
- Imprisonment: The individual found guilty could be subjected to imprisonment for a period of not less than six months, and possibly up to three years.
- Fine: A monetary penalty, ranging from a minimum of Rs 50,000 to a maximum of Rs 2 lakh, may be imposed.
Final Thoughts
Trademark infringement stands as a critical concern within India’s legal environment, safeguarding intellectual property rights and ensuring fair competition. The Trademarks Act of 1999 serves as the cornerstone of this protection, including both civil and criminal dimensions. The Act’s provisions address direct and indirect infringement, and the Indian Patent Office, under the Controller General of Patents, Designs and Trademarks, plays a vital role in upholding these rights.
The Act’s ability to impose criminal consequences, including imprisonment and fines, reflects its commitment to curbing trademark violations. As trademark infringement continues to evolve in the era of globalisation and digitalisation, the legal framework remains resilient, ensuring that intellectual property remains well-protected and promoting innovation and creativity.
