Dilpreet
Role of Arbitration in contravention of Trademarks
Dilpreet Singh 20 Jan 2020

Role of Arbitration in contravention of Trademarks

Introduction

Arbitration is a mechanism in which a dispute is brought before one or more arbitrators who make a final decision on the dispute, by consensus of the parties. The parties opt for a private dispute resolution method of preferring arbitration, rather than going to court. Arbitration agreements are regulated by the terms of The Arbitration and the Conciliation Act. Infringement of the mark is defined as the unauthorized use of a label or service mark. Such use may be linked to goods or services, and may lead to confusion, deceit, or misunderstanding of the actual company from which a product or service originated. Trademark owners are allowed to take legal action against an individual who infringed the mark. If the court finds the accused person guilty then it can forbid the person from using that mark and grant him to pay any monetary compensation to the party affected.

A registered trademark is word, symbol or combination identifying and differentiating a company or a commodity in the market. A registered service mark is a service of a specific company. Trademark also gives exclusive notice to the public.

 

Contravention or Infringement of Trademark

Trademark infringement pursuant to Section 29 of the Trademarks Act, 1999 is characterized as the use of a mark by an unauthorized or permitted individual or a person who is not the registered owner, which is identical or deceptively similar to the mark in relation to the goods or services for which the mark is registered. It is described in simple words as the infringement of exclusive rights attached to a registered trademark without the permission of the registered owner or licensees. The courts have concluded time and time again that resemblance between two labels and the kind of goods and services leads to misunderstanding in the minds of the general public. They can benefit unduely from enjoying the registered trademark's hard-earned reputation.

A registered trademark is said to be infringed in the following situation:

1.      if the disputed trademark is identical or deceptively similar to the registered trademark and is related to the same or similar goods or services.

2.      if the same or similar trademark may cause confusion in the general public to associate with the registered trademark.

3.      If the registered trademark is used as part of a trade name or business concern for goods and services in respect of which the trademark is registered.

4.      If the trademark is advertised and, as a consequence, it takes unfair advantage or is contrary to honest practices or is detrimental to the distinctive character and reputation of the registered trademark.

5.      If the registered trademark is used in the material meant for packaging or labelling of other goods or as a business paper without due authorization of the registered user.

 

In India, trademark litigation occupies an enormous area in the cases related to intellectual property. The case concerning the trademark is an inter partes adjudication. That being so, the alternative dispute resolution approaches will definitely provide the ailing judiciary with an acceptable redress. Therefore, it is interesting that in cyber squatting situations, arbitration plays a dominant role in the standardized process described in the Uniform Domain Name Dispute Resolution Policy and the Dispute Resolution Policy,1999 for Indian Domain Name.

Interim Relief under Section 9 of Arbitration and Conciliation Act

A plain reading of section 9 indicates that a party may apply to the court for an interim measure of protection before or during the arbitral proceedings or at any time after the arbitral award is made but before it is enforced in accordance with section 36. Prayers for interim protection measures may include:

–Appointment of a guardian of a minor or an unsound person

–Preservation or interim custody or sale of goods where goods are of a perishable nature

–Securing the amount of claims

–Allowing inspection or interim injunction or appointment of a receiver

–Any other relief as the court may, in its sole discretion, deem appropriate, taking into account the case

 

 

Recent cases on infringement of trademark

Verizon Trademark Services LLC v. Bhaban Sankar swain, 2016 SCC Online Del 5109

The present complaint was filed by the plaintiffs requesting, inter alia, an order of permanent injunction prohibiting the defendant from directly or indirectly trading in goods and/or services under the trademark' VERIZON' or any other trademark that is deceptively identical to the plaintiff trademark ' VERIZON.' The plaintiffs also petition for an order to forfeit accounts of the defendant's accumulated income and a Rs. 20, 05,000/-injunction for damages against the defendant. The plantiff are granted fair litigation costs, which are quantified in Rs. 2 lakhs.

 

 

Volvo Trademark Holding AB v. Cosmos1, 2003 SCC Online WIPO 627

On 15 August 2003, the Complaint was filed with the Arbitration and Mediation Centre of the WIPO (the "Centre"). On 18 August 2003, the Centre forwarded an application for registrar verification in connection with the domain name at issue to Intercosmos Media Group d / b / a directNIC.com via email. It was held that real or positive knowledge of the rights of the Complainant in the trademarks is a factor which supports a finding of bad faith.

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