Trademark Infringement in India

Trademark is registered for the purpose of recognizing the source of a particular goods or services. The source in turn helps people determine the quality of the products. Customers purchase their products on the basis of the quality of  product. This is why Trademark is of extreme importance in the economy. For the consumer, a Trademark reflects the quality of the goods or services.

A Trademark represents the brand value of the owner. Therefore, it is important to see whether any third person is infringing the Trademark or not, which could cause financial losses and goodwill of the owner of the Trademark. It is always better to be vigilant and prevent potential infringers from riding on the goodwill and reputation of the trademark owners that they have established in the market.

What does Infringement of Trademark means?

Trademark infringement in India is defined under section 29 of the Trademarks Act, 1999 which states that “whenever there is an unauthorized use of the Trademark which is deceptively similar or identical to a registered Trademark, then it is considered as infringement of a Trademark 

Now, let us take a look at the constituent elements of Infringement of trademark i.e. direct infringement of a Trademark are as follows-

  1. Unauthorized person: an unauthorized person is a person who is not a licensee or the owner of the registered Trademark.
  2. Identical or Deceptively Similar- Whether the product is identical or not is determined by whether there is a likelihood of confusion amongst the public or not. If there is confusion amongst the public between the two marks then there is likelihood of  infringement.
  3. Registered Trademark- Infringement could be done of only registered Trademark, and if it is done of an unregistered Trademark then the common law concept of passing off will apply.
  4. Goods/ Services- To establish infringement goods and services of both the parties should be the same.

Any unauthorized use of the exclusive statutory rights of a registered trademark constitutes infringement.

What is indirect infringement of a Trademark?

Indirect infringement is an infringement that is not caused directly, it causes another person to infringe upon the trademark. Indirect infringement is a common law principle which not only holds accountable the direct infringers but also the people who induce the direct infringers to commit the infringement.

There are two categories of direct infringement i.e. contributory infringement and Vicarious Liability-

A person is liable for contributory infringement under two circumstances-

  1. When a person is having knowledge of an infringement.
  2. When a person materially induces the direct infringer to commit the infringement.

A person is vicariously liable under  following circumstances-

  1. When the person has the ability to control the actions of the direct infringer.
  2. When a person derives a financial benefit from the infringement.
  3. When a person has knowledge of the infringement and contributes to it.

Vicarious liability is usually applied in the case of employer employee relationships.

Therefore, whether direct or indirect, any form of infringement involves legal proceedings and attracts liability towards the infringer. Therefore it is always advisable to get expert assistance to avoid any kind of hindrance while getting the Trademark registered.

Contact BIAT Legal LLP for your Trademark Registration.

Remedies Available To a Person For Infringement of Copyright

The fundamental object of copyright law is to give authors, owners unique rights or remunerating them with a select good fit for a predefined period to recreate the works for distribution and offering them to the public.

The law in this manner endeavors to prevent one from appropriating to himself what has been created by the works, aptitude, and capital of another. The copyright law is concerned with the negative right of avoiding replicating of physical material existing in the field of writing and craftsmanship.

The two essential schools of thought for copyright are the European framework translating copyright as Moral Right and the American framework keeping copyright as an Economic Right. Copyright as monetary right implies that copyright insurances are expected to empower development by securing what is legitimately the property of the maker in light of his work and “imaginative start” and is in this manner concerned more with adjusting the privileges of makers with business sector access.

Then again, Copyright as Moral Right view the work as being somehow an augmentation of the maker’s self and consequently sees a requirement for more far-reaching insurances. This distinction, for the most part, speaks to the contrast between the American (monetary) support and the European (good) defenses and is very much delineated by the varying methodologies of the United States and the European Union to the topic of securing privileges of the creators.

The teaching of Moral Right (every now and again found in French as Droit assurance), which is the basic premise of European school, is an altogether more extensive development of copyright. While financial rights can be purchased and sold, and are associated with the “work” as an item, moral rights are seen as something naturally controlled by the “writer” of the “works” due to his “virtuoso.” As one-course book phrases it, the ethical privileges of writers with deference to their works are understood as “basic, normal rights, emerging from an origination of the work as an expansion of the creator’s identity.[2]

Market financial aspects perceives licensed innovation as a public good which is:

(1) Non-excludable; and

(2) Non-rivalrous, implying that more than one individual can appreciate the property without barring each other from its advantages. Copyrights, however restraining infrastructures for a timeframe, are in this way endured in light of the fact that creators and designers would, seemingly, have no business sector motivating force to make truant the privilege to bar others from their works.

There has for some time been an open deliberation in the United States about whether one ought to hold all the more nearly to John Locke’s perspective of property as an unending right in personhood, which is a result of one’s blending his/her work with nature.

To be sure, numerous changes to copyright laws have been made that convey the United States nearer to European models.

Remedies available against infringement of Copyright

There are mainly three kinds of remedies available to the owner of copyright against the infringers and they are as follows-

Civil Remedies

It includes remedies of injunction, damages and an account of profits. These are the remedies which the court can grant.

Criminal Remedies

It includes imprisonment with heavy fine and seizure of infringing copies of the work, which will be delivered to the copyright owner.

Administrative Remedies

In this administration or Registrar of Copyright can order to stop importation of duplicates products in India.

Section 53 of the Copyrights Act, engages the Registrar of Copyrights in making a request precluding the importation into India of such duplicates for the utilization of the proprietor of the copyright in any work, party his obligation authorized agent in the wake of making such request as he esteems.

7 Factors for Identifying Trademark Likelihood of Confusion

There are certain reasons why companies seek to protect their brand name under Trademark protection. They invest a certain amount of money in their brand name to build a successful brand. 

There are lots of brands available in the market and how you can avoid to infringe third person’s Trademark. You can start by understanding more about how infringement works.

7 Factors for Identifying Trademark Likelihood of Confusion

This is where the rules of Trademark likelihood of confusion come under section 2(d) of the Trademark Act states that-

“No Trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it…..(d) consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive..

Why identifying Trademark Confusion Matters

Identifying identical Trademarks in the market which can cause confusion in the minds of customers is as important as your initial naming process as it is for any Trademark watching you have in place. Obviously you do not want to submit an application that will be rejected. At the same time it is important to see that no one is infringing your important assets.

The 7 factors for identifying Trademark Likelihood of confusion:

  1. Relatedness of Goods and Services-  Before application of the Trademark it is very important to see for identical goods and services also. The connection between similarity of the two brand names and the relative closeness of the goods and services is an important one. 
  1. Similarity of Marks- One should search for similarity of marks whether visually or phonetically. Similar marks can cause confusion in the minds of consumers. 
  1. Similarity in Appearance- Marks can also be too similar and confusing when it comes to their appearance and design.
  1. Similarity in Sounds- Similarity in sound is phonetic match between the sounds that means that there is likelihood of confusion amongst consumers. For eg Seycos vs Seiko, Entelec Vs Intelect.
  2. Similarity in Meaning- among the important factors influencing likelihood of confusion is the marks meaning in relation to the goods and services description. Being identical in sound and appearance might still be completely different in their commercial impression. For eg. Cross-Over Vs Crossover.
  1. Design Marks- The likelihood of confusion between design marks is determined based on the similarity of their visual presentation. No one usually views marks side by side and the recollection of marks is very general. Therefore, visually similar marks can be confusing even if they constitute completely different goods and services.
  1. Likely to Deceive- Can’t get any easier of this- deception is quite obviously a bad thing. However, deception would involve intent which can be extremely difficult to prove in practice.

For any Trademark related query contact BIAT Legal LLP.

Copyright Infringement

Intellectual property right is a legal right that is given to a particular person for a specified period of time to protect their original work from the unauthorized use from any third party.

Copyright

Copyright is a type of Intellectual Property that is given to the owner of the original work or creator, which gives them exclusive right to reproduce and distribute the copyrighted work.

Copyright subsists in following original works-

  1. Literary Work
  2. Dramatic Work
  3. Artistic Work
  4. Musical work
  5. Cinematographic work
  6. Sound Recording

Copyright Protects two types of Rights and they are as follows-

  1. Economic Right- It allows the owner to derive financial reward from the use of their work by others.
  2. Moral Rights- It allows the owner of the copyright (original work) to take certain actions to preserve and protect their work.

Term of Copyright

Copyright is provided for the term of life of the author plus 60 Years after the life of the author.

Importance of Copyright

  1. It gives right to the original creator of work to reproduce, duplicate, transcribe and translate the work.
  2. The owner can prevent the misuse of the original work, and take legal action against the infringer.
  3. The owner of the original work has the exclusive right to set monetary benefits from their work.
  4. Encourages society for creativity as owners enjoy the benefits and protection of their creative work.

Copyright Infringement

Owners develop original work and get it registered after applying for the same. After its registration the owners have exclusive right to reproduce, duplicate give license of its work to others but if some third person without taking permission from the owner reproduces, or duplicates the work then it is called as copyright infringement, in which owner can take legal action against the infringer.

Exception to copyright infringement under section 52 of the Copyright Act, 1957

  1. Private or personal use, including research
  2. Criticism or review, whether of that work or any other work.
  3. The reporting of current events or current affairs, including the reporting of a lecture delivered in public.

Remedies for Copyright Infringement

  • Civil Remedy- If any work of the copyright owner infringes, then according to section 55 of the Copyrights Act, 1957, Copyright owner is entitled to all such remedies by way of injunction, damages and accounts.
  • Criminal Remedy- according to section 63 of the Copyrights Act, 1957, the copyright holder can take criminal action against the infringer, in which there is a provision for at least 6 month of infringement which may be extended upto 3 years along with the fine for Rs. 50,000 which may be extended to Rs. 2 Lakh.

Power of police to seize infringing copies

Any police officer, not below the rank of Sub inspector, may, if he is satisfied that an office under section 63 in respect of the copyright infringement occurs, can seize a copy without seeking any warrant to produce before the Magistrate.

Conclusion

The purpose of copyright is to protect the rights of the owners of original work and to provide economic benefit to them. Now if any third person without knowledge of the Owner of copyright infringes his work, then they are causing commercial loss to the creator of original work. Therefore, laws have been created to protect the owners of the copyright from any infringement. Therefore it is always advisable to register your wok as soon as possible to enjoy the rights of the owner of copyright.

Britannia wins Trademark Infringement matter against Future Group

Recently Brittania company was earning the profits where all the companies are facing losses during the Covid-19 Pandemic period. Britannia company has broken all records and increased its revenue from 18% to 23%. The company’s growth is not limited to just financial returns, it has also won a major legal battle, albeit out of court.

Recently Brittania industries had filed an infringement suit against the Future Group Company claiming that Kishore Biyani Led company has copied the packaging of its several products of its popular biscuits brand. Britannia industries further stated that future consumer brand “Tasty Treat” have copied the packaging of its popular biscuit brand and is deceptively similar to the pack of Britannia biscuits packs. It was a case for Trademark infringement as well as for passing off. 

“Deceptively Similar” Marks means that the mark of both the parties are similar or look alike of an already registered Trademark in order to deceive or confuse the end consumers leading to unethical and wrongful loss in business and risk in the long created goodwill. The definition of Deceptive similar is discussed under section 2(h) of the Trademark Act, 1999 and according to the section it dec=scrbes “deceptive Similarity as:-

“A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that the other mark as to be likely to deceive or cause confusion.”

The concept of deceptive similarity has been widely recognised as a ground for trademark infringement under various trademark regimes. Under the Indian legal system also, deceptive similarity is considered as a ground for not granting the registration of the trademark to an applicant by the Registrar of Trademarks.

The ground for deceptive similarity is hugely known for the purposes of Trademark infringement under various Trademark regimes. 

However, the Trademark Act does not ascertain any criteria that can decide the ambit and scope of the phrase “deceptive similarity” hence leaving a vacuum in its wake. For cases related to Intellectual Properties, some criteria to test deceptive similarity, as have been recognised by the courts, can be:

  1. Deceptive similarity
  2. Principle of phonetic and visual similarity
  3. Goodwill, reputation, test of likelihood and so on.

In the above case parties agreed to settle the matter amicably out of the court and the future group was ready to compromise by compensating the plaintiffs. Future group further also agrees on changing the design of its packs.

For Trademark related query contact BIAT Legal LLP