How to proceed in case of trademark infringement

Overview: A trademark is a mark used in relation to goods or services so as to indicate a connection in the course of trade between the goods or services and some person having the right as proprietor to use the mark. It may consist of a word or invented word, signature, device, letter, numeral, brand, heading, label, name written in a particular style, or any combination thereof or a combination of colors and so forth. For ex: the distinct arched style of the letter ‘M’ used as a trademark by McDonalds or the distinct style of the font of ‘Coca-Cola’ which is used as a trademark by the beverage company. 

Purpose: The main purpose of a trademark is to identify the product or service. Once it serves this purposed over years of continuous use, it can also serve as an advertisement for the product. The use of a trademark signifies that the product is associated with the proprietor and its use by anyone else would amount to violation of his rights in the mark. 

Areas of Application of Law: Section 29 of the Trademarks Act, 1999. 

Process: Below is the step by step process for obtaining an injunction and/or damages for trademark infringement: 

  1. To begin with the applicant must be sure that his TM is registered and in use for product/service. The period of limitation for filing a suit for infringement of a trade mark is three years from the date of infringement.
  2. Engage a lawyer who will file a suit for trademark infringement at the requisite forum- the respective state district court or high court (depending on where the cause of action arose and amount of damages sought). You will be required to share all information that could be used in court to show that use of the trademark or an identical mark by someone else is a violation of your rights as proprietor of the mark and submit all below mentioned documents for this purpose.
  3. The applicant should ensure that he has read and understood the trademark infringement suit prepared by the lawyer before he files it and thereafter make sure that all affidavits and Vakalatnama (giving the lawyer the rights to represent you in court) are duly signed by him.
  4. On the first day of hearing, if the court is satisfied of merits in the case, a notice will be issued to the opposite party and date for the next hearing will be given.
  5. Within a few days from the first hearing, the applicant has to file requisite amount of process fee with the court registry. After this the notice will be prepared by the court authorities and this along with a copy of the suit will be served upon the opposite party either by the court through speed post/courier/ordinary post/email.
  6. On the next date, the applicant’s lawyer will present arguments in court to show that use of a similar or identical trademark by the opposite party puts the applicant at a disadvantage as it creates confusion in the minds of the users. This confusion could amount to deception.
  7. In order to do so, he can present statements of losses that applicant has been suffering due to use of the mark by the opposite party, he can present the trademark registration document showing that he is proprietor of the mark and that over the passage of time the mark has become synonymous with the applicant’s product or services.
  8. This process where the applicant’s lawyer will try to establish the applicants rights in the trademark will continue until the court may pass an interim order temporarily restraining/ injuncting the opposite party from using the applicant’s trademark till the case is finally decided by the court.
  9. If the applicant is seeking damages for use of his trademark by the opposite party, the lawyer can show the court profits and sale statements by the applicant’s product/service carrying the trademark over the last 5-10 years.
  10. The lawyer can also stress upon the fact that the applicant did not license or assign the mark to the opposite party.
  11. If the court is satisfied that use of such mark by the opposite party is indeed in violation of his rights in the trademark, it would rule in favour of the applicant and as a result the opposite party would be barred from using the trademark or another similar trademark.
  12. If damages are sought in the suit, the court may direct the opposite party to pay damages to the applicant for using his trademark. Quantum of such damages would vary from case to case.

Documents required to be submitted in the court if any: document showing trademark registration, use of trademark on product/service, copy of the product or service - on which a deceptively similar/identical trademark is being used, profit and loss statement/balance sheet (in case of a company), statement showing money spent on advertisement of the product/service bearing the trademark. 

Punishment/Expected Relief: The person against whom trademark infringement is alleged would be permanently restrained/ injuncted from using the applicant’s trademark or a similar trademark. The court could also direct for damages to be paid if it deems fit. 

Landmark Judgments

  1. Tata Sons Limited vs Greenpeace International & Anr 
  2. Cadbury Ltd. And 2 vs Itc Ltd. 

 

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