Infringement of Trademark in India

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

Brand infringement is plaguing the industry right now. 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, there are many businesses that 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 about the

Therefore, there is a need for you to find trademark infringement in India. And for that, we can help you.

What is 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 infringement meaning

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

Let us now take a legal definition of this term.

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 licence). Infringement may occur when one party, the "infringer", uses a trademark which 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.

An owner of a trademark may commence civil legal proceedings against a party which infringes 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 in countries like the United States, which recognize common law trademark rights), a trademark which 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 which prohibits unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable.

But why is trademark infringement is such a big deal, and why even the most common trademark infringement shouldn’t 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 loses.

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 is your brand name that 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 the name of your brand. It can then cause a chain reaction – lowering customer trust while also 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 really 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 that your business partners or creditors once had in you – promoting you to lose your business in India, or anywhere where 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:

The trademark is being used by an unauthorized person: In this case, the trademark is considered infringed upon only if the registered trademark is being used by an unauthorized person. 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 is in use: Here, the trademark is in usage can either be deceptively similar to 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 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 trademark fall under the direct infringement category.
Only applicable on registered trademark: All the legal remedies of trademark infringement mentioned under the Direct infringement of trademark are only meant for registered trademark. Thus, if the case of an unregistered trademark, these rules wont’ be applied.
Goods or services class: This case of trademark rules violation occurs is the unauthorized user leverages the trademark to sell goods and services of the class under which the trademark has been registered.

These are all the 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 indirect trademark infringement cases in India.

Indirect Infringement

Indirect infringement of trademark is defined in the Trademark Act, 1999, as 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 trademark is held accountable.

What are the different types of indirect trademark infringement in India?

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

Vicarious Liability
Contributory Infringement

Vicarious Liability

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

Note: There are no exceptions to the rules. In many instances, many claim 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 of the “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 principle 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. What we mean to say is 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 deal with your trademark infringer can work, most of the times, it doesn’t. When that happens, you file an initial compliant for trademark infringement to the authorities. In most cases, it would make you deserving of quite a bit of compensation in trademark infringement in India.
Cease and desist for 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 stop using your trademark.
Tap into civil and criminal remedies of trademark infringement: If you want to take a direct, no fluff approach towards those who are 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 preliminary injunction: Trademark Infringement can be tackled with better a preliminary injunction. You file then when you have a 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, keep in mind 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 is high. However, it is costly. Depending upon the popularity of the trademark, the average cost of a trademark infringement lawsuit can reach dangerous proportions.

Different legal remedies against infringement of trademark in India

Following are the different remedies against the 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 both unregistered and registered trademarks. It is through remedies that a trademark infringement suit is initiated in the courts of law.

Civil remedies against trademark infringement

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 on a temporary basis.
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, 1999, details the punishments for 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, 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 process of trademark registration, it is within the power of the trademark authorities to conduct an investigation of the to-be-registered trademark.
Correcting the trademark: 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 any action.

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 and 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:

When a registered trademark owner is using the registered trademark to do ethical business 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 defence 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; or
The trademark in question was created with the intention of harming your brand; or
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 different documents required to fight a trademark infringement case. The applicant must make sure to keep a 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 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

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

File an FIR against the infringer. In case 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. If your trademark infringement grounds are correct, the law will seize the products.
Criminal remedies against trademark infringement allow the applicant to file a case against unknown individuals as well.

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 the comprehensive services relating to Trademark Infringement.

Frequently Asked Questions about Trademark Infringement in India (FAQs)

Q1. What is trademark infringement?

Q2. What is an infringed trademark?

An infringed trademark is a brand name that has been used by an unauthorized user.

Q3. What is common law trademark infringement?

Common law trademark infringement refers 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 of the things to do while filing the trademark infringement form?

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

Q5. What is the punishment for trademark infringement?

The common penalties of trademark infringement in India?

Imprisonment
Financial penalty
Seize of infringed products

Q6. Where to file trademark infringement case?

You can file trademark infringement either through civil court or in the police station.

Q7. Who can send trademark infringement notices?

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?

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?

There are different remedies to deal with trademark infringement

Civil Remedies
Criminal Remedies
Administrative Remedies

Q10. How to report trademark infringement?

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

Q 11. How to avoid trademark infringement?

The best practices for trademark infringement in India.

Choose a unique trademark
Watch out for every incidence of trademark copying
Always be in touch with our trademark registration experts.

Q12. Where to file a trademark infringement case?

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?

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

Q14. How to sue for Trademark Infringement?

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?

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

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

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

Reach out to the infringer before taking the final step
Consider settling the matter out of court
Move forward when there is no way out
Gather all the documents by your side

Q17. When is trademark infringement alleged?

Trademark infringement is alleged when someone tried to use your trademark, or a mark that is similar to yours without your consent.

Q18. How to prove trademark infringement?

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.