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Manage Unlawful Trademark Usage Strictly

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Trademark Infringement Process

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Analyze the trademark infringement
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Represent the case in trademark court
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Infringement of Trademark in India

Is someone stealing your brand name? If so, you need to take the right action against the Infringement of your trademark.

Brand infringement is plaguing the industry right now. Unfortunately, there are many who ignore the perks of hard work and instead choose the pass of deception – trying to pass on their trademark on their own. As a result, many businesses are either being destroyed or getting their names lost in the chasm of obscurity.

Such brand trademark infringement can have a detrimental impact on your business as well if you are not careful. Therefore, there is a need for you to find trademark infringement in India. And for that, we can help you.

What is the Infringement of trademark in India?

Before we help take action against trademark infringement, let us understand its meaning. To use a brand without the permission of the registered user is trademark brand infringement meaning.

Trademark infringement means breaching the right to use the registered trademark of others or using someone's registered trademark without their permission.

Let us now take a legal definition of Trademark Infringement

Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the "infringer," uses a trademark that is identical or confusingly similar to a trademark owned by another party in relation to products or services which are identical or similar to the products or services which the registration covers.

Criminalization of Trademark Infringement

An owner of a trademark may commence civil legal proceedings against a party which the Infringement of its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.

In many countries (but not countries like the United States, which recognize common law trademark rights), a trademark that is not registered cannot be "infringed" as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner may be able to commence proceedings under common law for passing off or misrepresentation or under legislation prohibiting unfair business practices. In some jurisdictions, Infringement of trade dress may also be actionable.

But why is trademark infringement such a big deal, and why shouldn't even the most common trademark infringement be ignored. The financial strain that a business name trademark infringement can put on your enterprise can make it hard for you to cope with the losses.

Damages caused by Infringement of a registered trademark

When you have registered your trademark, it means that the brand name belongs to you. It also means that your brand name makes people recognize your product. In that case, if someone were to steal your brand name, then you can already guess the damage it will bring to your business:

Erosion of brand loyalty

It is your brand that your customers trust. If someone infringes on your mark to sell a subpar product, it will put a blemish on your brand's name. It can then cause a chain reaction – lowering customer trust while eroding customer loyalty.

Customers might end up avoiding your company

If you fail to file a cease and desist notice for trademark infringement in India on time, you will end up with manipulated customers in your hand who avoid your brand. Customer trust tends to be extremely fickle. Therefore, any case of trademark name infringement drives your customers away first.

  • Confused customers would fail to reach out to you: Nine out of ten times, if a customer is dissatisfied with your product, they won’t contact you unless the issue is serious. And because confusing the customer is what brand thieves mostly bank upon, you won’t find your customers calling you if something wrong happens – you will just be ignored by your prospects.
  • You can lose your business: Think of what happens when your customers ignore you like the plague. When the customers get away from you, there is no business to be done. It will reduce all the confidence your business partners or creditors once had in you – promoting you to lose your business in India or anywhere your business has branding. 

Therefore, preventing even common trademark infringement should be at the top of your agenda when it comes to dealing with any case that comes your way.

What are the different types of trademark infringement in India?

The Intellectual Property Authority has divided trademark infringement into the following two types:

  • Direct Infringement
  • Indirect Infringement

 

Direct Trademark Infringement

Direct Infringement of trademark is defined under Section 29 of the Trademark Act. As per this section, the conditions of trademark infringement, in this case, are as follows:

Trademark used by an Unauthorized Person

In this case, the trademark is considered infringed upon only if an unauthorized person uses the registered trademark. In other words, a person that doesn’t have permission to use the trademark. If an authorized is using the brand name, there would not be considered any case of trademark infringement in India.

Identical or Deceptively similar Trademark

Here, the trademark in usage can either be deceptively similar or identical to the existing trademark in India.  The term “deceptive” means that a common customer may get confused between similar brands and may think of them as the same. Within the legal context, the word “may” is enough to prove that there is a possibility of Infringement if the brand name is too similar. Even a mere chance of misrecognition can be damaging to the brand. And thus, identical or deceptively similar trademarks fall under the direct infringement category.

Applicable on a Registered Trademark

All the legal remedies of trademark infringement mentioned under the Direct Infringement of trademark are only meant for a registered trademark. Thus, these rules won't be applied in the case of an unregistered trademark.

Goods or Services class

This trademark rules violation occurs when the unauthorized user leverages the trademark to sell goods and services of the class under which the trademark has been registered.

These are all direct cases of infringements. They are almost always visible and easy to go after. However, there is another class of trademark infringement cases where the crime isn’t so direct. Such cases of referred to us as indirect trademark infringement cases in India.

Indirect Infringement

Indirect Infringement of a trademark is defined in the Trademark Act 1999 as a class of Infringement where no provisions exist. The trademark registration courts rely on the universal principle to deal with cases of indirect Infringement. As per these principles, not only the infringer but also the person or the body of persons that induces the Infringement of the trademark is held accountable.

What are the different types of Indirect Trademark Infringement in India?

Following are the different aspects of indirect trademark infringement in India:

Types of indirect trademark infringement

Vicarious Liability

As per Section 114  of the trademark act, vicarious liability is any company committing the act of trademark infringement. It means that a company, as a whole, will have to take responsibility if any person belonging to that company engages in the act of trademark infringement in India. While it would be counted as the indirect infringing of trademarks, the whole organization would have to bear the trademark infringement penalties in India.

Here are the essential elements of Vicarious liability as per the trademark infringement rules:

  • The members of the company know about the Infringement
  • The company members contributed to the act of Infringement
  • The company persuaded or induced the principal infringer into committing the act. 

Note: There are no exceptions to the rules. In many instances, many claims that they acted in good faith when infringing on trademarks. However, within the eyes of the government of India, those who contributed to the criminal act held almost equal liability, regardless of how much “good faith” was there in them when they acted upon it.

Contributory Infringement

Contributory Infringement refers to someone who has – directly or indirectly – contributed to the act of trademark infringement. Following are the different elements of Contributory Infringement:

  • When the person knew about the act of Infringement
  • When the person has contributed to the act of Infringement
  • When the company cajoled or induced the principal infringer into committing the act. 

What is the best way to deal with Trademark Infringement in India?

If you don’t want your brand to be stolen by another party, then you must any infringer face the consequences of trademark infringement in the following ways:

Talk to your infringer

Sometimes, brand infringement doesn’t happen deliberately. In a world lacking in originality, sometimes, people have a hard time separating inspiration from copying someone. Therefore, before you take a cease and desist letter for trademark infringement approach, you must first talk to your infringers. If they are willing to stop their act at once and are ready to pay for any damages for trademark infringement in India, you are good to go. We mean that there is no need to send a trademark infringement warning letter right at the start.

Filing a complaint to the Trademark Authorities

While a pacifist approach to dealing with your trademark infringer can work, most of the time, it doesn’t. When that happens, you file an initial complaint for trademark infringement to the authorities. In most cases, it would make you deserving of quite a bit of compensation for trademark infringement in India.

Cease and desist from Trademark Infringement in India

If your brand holds a lot of value and even an inkling of Infringement can damage its reputation, go with the cease and desist notice for trademark infringement. Just contact a lawyer, ask him for a cease and desist notice format and choose the most effective way to stop the infringer from a stop using your trademark.

Tap into Civil and Criminal remedies

If you want to take a direct, no-fluff approach toward those trying to steal your brand name, you can tap into several civil and criminal remedies of Infringement. It can lead to you getting compensation due to the damage caused by the criminal action of trademark infringement in India.

File for a Preliminary Injunction

Trademark Infringement can be tackled with better a preliminary injunction. You file then when you doubt that someone is violating your trademark rights. It will stop the alleged brand-name stealer for a limited period. While it won’t be a permanent solution, it will help you take the matter to court until there is a prosecution of trademark infringement in India. However, remember that it is the way to deal with alleged trademark infringement. If you lose the case, it can backfire on you as well.

File for Permanent Injunction

Permanent Injunction is the most common way to deal with the current trademark infringement cases. It is effective, can stop your infringer in its tracks, and the chances for you to win them are high. However, it is costly. Depending upon the popularity of the trademark, the average cost of a trademark infringement suit format can reach dangerous proportions.  

Different Legal Remedies against Infringement of Trademark in India

Following are the different remedies for Infringement of trademarks in India:

  • Civil remedies of Infringement of trademarks
  • Criminal remedies of Infringement of trademark
  • Administrative Remedies of Infringement of trademark 

What are Remedies?

Remedies are solutions to deal with the infringement cases of unregistered and registered trademarks. It is through these trademark infringement remedies that a suit is initiated in the courts of law.

Civil Remedies against Trademark Infringement

Legal Notice Format For Trademark Infringement In India

Following are the civil remedies for infringing trademarks that the Trademark Act, 1999 lays down:

Injunction

Injunctions, whether permanent or temporary, refer to the authoritative direction of the court of law.

  • Permanent Injunction refers to the order that the one against home trademark infringement notice has been filed to follow permanently unless said otherwise.
  • Temporary Injunction refers to the order that the alleged infringer has to follow temporarily.

Infringement Damages

Damages for trademark infringement can be asked for by the aggrieved party on legitimate grounds. However, it is only applicable after the infringer has ceased its operations and it is proven that the aggrieved party has suffered a loss. It is taken into account when calculating damages for trademark infringement in India.

The civil remedies handle the profit accounts and removal of products that contain infringed trademarks. 

Criminal Remedies against Trademark Infringement

When it comes to criminal remedies, the Trademarks Act of 1999 details the punishments for the Infringement of Trademarks in India.

Imprisonment

The most basic criminal action against trademark infringement in India is imprisonment for six months, or, depending upon the extent of the act, it can extend to up to 3 years.

Financial penalty

Another section of the criminal remedies against trademark registrations states that the one who contravenes the trademark rights of another has to pay the penalty of 50,000 rupees,

Seizing the Property

The civil and criminal liabilities for trademark infringement can also lead to the cease of property of the infringer to pay for the damages caused by the infringement of the trademark. 

Administrative Remedies for Trademark Infringement

Under the palate of administrative remedies, the following points are present:

Trademark opposition

During the trademark registration process, it is within the power of the trademark authorities to investigate the to-be-registered trademark.

Trademark Correction

To eliminate any confusion around the brand, the applicant can make changes to the registered trademark.

Checking the trade activity

The authorities can check the activity – products or services – on which the infringing trademark is used before taking action. 

Defenses against the Infringement

Before taking any legal action against trademark infringement, the applicant must first consider whether there is an infringement case or not. Intellectual property laws can be tricky to understand; therefore, groundless threats of trademark infringement are getting quite common. Therefore, there is a need to understand which cases should not be considered Infringement in India:

The trademark in question has not been used in any way that can damage the reputation or the distinct character of the trademark.

When the trademark registered is used to communicate product/service quality, purpose, geographical origin, time of production, or other characteristics.

  • When the trademark is identical to each other
  • When the trademark is used in relation to parts and accessories,
  • When the trademark usage is in line with the regulations mentioned in the trademark act
  • The above points can be used to put forth points in the defense against trademark infringement cases in India.

Eligibility Criteria for Trademark Infringement

In order to be eligible to up against Trademark Infringement, you need to come up with all the details that can back up your case. Simply put, the requirements for trademark infringement are as follows:

  • The trademark in question should either be identical to deceptively similar to the existing trademark.
  • The trademark in question was created with the intention of harming your brand.
  • Infringement should be direct in nature because no direct provisions exist for indirect cases of trademark infringement.
  • You should be able to handle the financial aspects of filing a trademark infringement criminal lawsuit.
  • If you seek trademark infringement damages, you should present to the court the accurate documentation to prove your case.

Documents Required for Trademark Infringement

Here is a list of documents required to fight a trademark infringement case. The applicant must make sure to keep hard as well as soft copies of these trademark infringement requirements:

  • Trademark registration certificate
  • Trademark infringement proof
  • Legal notice against Infringement of trademark
  • All the evidence to support your case in the trademark infringement case
  • Document stating the reason why you are suing for trademark infringement
  • Evidence to support your suit for Infringement of trademark by prior use

All the aforementioned documents must be first certified and supervised under an adequate trademark attorney. 

Process for Trademark Infringement

The following is the procedure for Trademark Infringement:

There are two approaches you can take to deal with  your trademark infringement case in India,

Procedure of trademark infringement under Civil Law

If you want to take a less vindictive approach towards the trademark infringement case, then you must follow the specific points given below:

  • A lawsuit against trademark infringement can be filed in the District Court under Section 134 of the Trademark Act, 1999.
  • Afterwards, the court will file an injunction order. That would eventually include payment of damages to accounts of profits and destruction of infringing labels.

Procedure of trademark infringement under Criminal law

Take a more vindictive approach towards dealing with your infringer. You can take the following approach to deal with the criminal offense of trademark infringement in India.

  • File an FIR against the infringer. If the police refuse to file an FIT, you can file a complaint with the magistrate.
  • After the registration of the FIR or the passing of the magistrate's order, trademark investigation begins. The law will seize the products if your trademark infringement grounds are correct.
  • Criminal remedies against trademark infringement allow the applicant to file a case against unknown individuals. 

Trademark Infringement cases in India

Since we have discussed much of the trademark infringement, the damages it causes to your enterprise, and the remedies that can be used in such cases, let us look at some real-life examples of Trademark Infringement cases that received national and international coverage.

Eclairs: Cadbury v. ITC

Cadbury had previously registered three trademarks in India that included the name Eclairs. It even holds the right to use the shade of purple on chocolate wrappers in some regions. The three registered trademarks are for.

  • Chocolate Eclairs
  • Orange Flavoured Chocolate Eclairs
  • Chocolate Eclairs Pop

But Cadbury, despite being registered in 1972, didn't use any of these trademarks. So on the grounds of being latent, more than one decade later, the court announced the verdict in favour of ITC in 2015 on account of the non-usage of the registered brand name.

London Dairy v. Londonderry

The plaintiff, London Dairy, which sells premium-quality ice cream, and the defendant, Londonderry, which sells inexpensive confectionery items, both of these brands sound similar phonetically, creating confusion among the customers. London Dairy stated this was a clear case of Infringement to which the Bombay High Court disagreed because, according to the court, everything besides the sound of their brand names was different. The court held that no law says that a single pronunciation test will be sufficient to overcome all other points of differentiation. Also, there were no visual or structural similarities between their products, no similarities in colours, trade dress, goods, and pricing.

BATA v. Bata

In the 1980's Bata, the shoemaker company filed for trademark infringement against a company for using the same brand name, which sold foam materials. The court questioned the latter that a customer coming to purchase shoes would not inquire if a product is made by the shoemaker BATA. As a result, although both companies operated in distinct commercial realms, Bata, the shoemaker, won the case.

Paypal v. PayTM

These companies provide digital payment gateways to their customers, and Paypal and Paytm target the same audience in the Indian market. But Paytm is far more popular than Paypal in the Indian market. Paytm is used by the masses, whereas Paypal is an internationally recognized brand whose operations in India are limited to eBay shoppers, forex investors, crypto enthusiasts, and some IT software professionals who regularly transact with the global world. Paypal's cause of worry is that if Paytm finds its place in the global market, then Paypal will lose its position and business in the global marketplace. Fearing this, in 2016, Paypal filed for trademark infringement against Paytm for using its logo and having this homogeneity with each other's brand name. In their trademark infringement lawsuit filed in the Indian trademark office, Paypal accused Paytm of using the same two-tone colour scheme as theirs.

Our Assistance to file the Trademark Infringement

We at Registrationwala provide end-to-end solutions for Trademark Infringement. Our services include:

  • Collection of information and starting the process
  • Drafting the application
  • Reviewing the draft and making changes if necessary
  • Representing you in Trademark Infringement

Registrationwala.com is a leading legal consultancy firm providing comprehensive services relating to Trademark Infringement. Contact us now if you seek us to represent you in case of Trademark Infringement.

Frequently Asked Questions about Trademark Infringement in India (FAQs)

Q1. What is Trademark Infringement?

A. Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license).

Q2.  What is an infringed trademark?

A. An infringed trademark is a brand name an unauthorized user has used.

Q3. What is common law Trademark Infringement?

A. Common law trademark infringement factors refer to the passing of a trademark of another person as your own. It is a term that mostly refers to unregistered trademarks.

Q4. What are some things to do while filing the trademark infringement form?

A. Before filing the trademark infringement form, one must thoroughly check the grounds for Infringement.

Q5. What is the punishment for trademark infringement?

A. The common penalties of trademark infringement in India?

1.    Imprisonment

2.    Financial penalty

3.    Seize infringed products

Q6. Where to file a trademark infringement case?

A. You can file trademark infringement through civil court or a police station.

Q7. Who can send Trademark Infringement notices?

A. The registered owner of the trademark whose trademark is being infringed upon can send the trademark infringement notice.

Q8. Who can sue for Trademark Infringement in India?

A. The aggrieved owner of the registered trademark whose trademark has been infringed upon can sue for trademark infringement.

Q9. What are the remedies available for the Infringement of a trademark?

A. There are different remedies to deal with trademark infringement

1.    Civil Remedies

2.    Criminal Remedies

3.    Administrative Remedies

Q10. How to report Trademark Infringement?

A. You can reach out to the police, the magistrate, or the civil court to deal with trademark infringement.

Q11. How to avoid Trademark Infringement?

A. The best practices for trademark infringement in India.

1.    Choose a unique trademark

2.    Watch out for every incidence of trademark copying

3.    Always be in touch with our trademark registration experts.

Q12. Where to file a Trademark Infringement case?

A. If you want to take the civil remedy route, a trademark infringement case should be filed with the Delhi High Court. If you seek to take the criminal remedy approach, you can either reach out to the policy of the district magistrate.

Q13. Infringement of Trademark is mentioned in which section?

A. Trademark infringement is mentioned in Section 29 of the trademarks act.

Q14. How to sue for Trademark Infringement?

A. You can sue for trademark infringement by reaching out to the district court and sending a notice to the infringer.

Q15. How to determine Trademark Infringement?

A. You must assess the case on all levels before considering its trademark infringement.

Q16. What are some things to do while filling out the trademark infringement form?

A. You must take the following steps while filling out the trademark infringement form:

1.    Reach out to the infringer before taking the final step

2.    Consider settling the matter out of court

3.    Move forward when there is no way out

4.    Gather all the documents by your side

Q17. When is Trademark Infringement alleged?

A. Trademark infringement is alleged when someone tries to use your trademark or a mark similar to yours without your consent.

Q18. How to prove trademark infringement?

A. You prove trademark infringement by providing proof of prior usage or proving that the infringing mark is either similar to or deceptively similar to yours.

Q19. Is Trademark Infringement a criminal offense?

A. Yes, trademark infringement is a criminal offense in India.

Q20. What are Trademark Infringement examples? 

A. Following are some of the most prominent trademark cases that will let you see things more clearly:

1.    Academy Awards vs. GoDaddy

2.    Coca-Cola vs. Bisleri

3.    Louis Vuitton vs. Louis Vuiton Dak

Q21. Who enforces Trademark Infringement laws?

A. Trademark infringement is governed as per the Trademarks Act of 1999 under the IP Authority of India.

Q22. Can I sue for Trademark Infringement?

A. Yes, if you are a licensee of the trademark in question, you can sue for trademark infringement.

Q23. How much does Trademark Infringement cost?

A. The cost of filing trademark infringement proceedings can vary depending on how long the issue takes to resolve.

Q24. Who can sue for Infringement of trademark?

A. Any registered trademark owner.

Q25. How to file trademark infringement?

A. Read the article. It is dedicated entirely to how to file a trademark infringement case to the RoT.

Q26. Can you sue for trademark infringement?

A. Yes, but you must be a registered trademark owner with substantial evidence(s) of Infringement.

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