Everything you need to know about trademark infringement and its types

 

Author: Aman Bhola, Trinity Institute of Professional Studies

INTRODUCTION

There has been high industrial growth worldwide, which has spurred the use of intellectual property development worldwide. According to a recent report by WIPO (world intellectual property organization), there has been a rise in the filing of trademark forms by 13.7 %. Intellectual property is an incentive system that protects innovation and authorship work from being used illegally without the maker's permission. The trademark is part of intellectual property whose primary function is to incentivize the owner and protect the consumer. 

 A trademark is the exclusive rights or, in layman’s language, an "Identification mark" of a service/ product, which makes it distinct for people who expect a certain quality when using these services/products and protects them from any illegal use of the mark.  

According Section 2(1)(i)(viii)(zb of trade mark act   “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours 

(https://indiankanoon.org/doc/1190072/)

Trademarks can be slogans, logos, or symbols that help us locate or trace back to the source. The first-ever evidence of a trademark was that ancient Greeks used artifacts. In England, historians found trademark evidence on swords symbols used to trace marks to identify the maker.  

The “ ®” symbol is used to give caution that the words, phrases, logo, etc. preceding it is a registered trademark. Before such registration, it is prohibited. The “TM” mark indicates that an application for Trademark registration of the word, phrase, logo, etc., is under consideration. 

 trademark infringement cases:

Coca-Cola vs. bisleri international pvt. Ltd   

Starbucks v sardarbuksh

What amounts to trademark infringement in India?  

Trademark rights protect from unlawful use of the trademark. This need for protection serves as the identification mark to the owner, providing some standard of quality excepted by a consumer but breaking confidence by other enterprises leads to trademark infringement.

According to the Trademark act 1999 s (29) (1), A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark about goods or services in respect of which the trademark is registered and, in such manner, as to render the use of the mark likely to be taken as being used as a trademark.

(https://indiankanoon.org/doc/84096/)

The trademark protection provided by the trademark act 1999 protects from infringement varies according to the services/ product. However, the minimum term of the protection supplied is ten years, which the trademark can renew six months before the trademark expiration.  

What are the types of trademark infringement?

So, for breach of trademark, we should study the following elements of trademark infringement; according to section 29 0f the trademark act of 1999 constitutes types of trademark infringement. 

Direct violation

Unauthorized person:

Violation of a trademark only happens when there is unauthorized use of the brand without permission or authorization of the right holder. If it is used with permission, it may not constitute an infringement.

“Identical” or Similar trademark:

Identical or deceptive similar: whether marks are similar or different is dependent on consumers. If consumers cannot differentiate between the trademark, it may amount to infringement of the trademark 

Indirect violation

Indirect infringement is a common law principle that states that it does not only hold only direct infringers but also the infringer who has encouraged he will be vicariously liable for his action 

Person vicarious liable for infringement:

1. The person will be held liable if he has control over the actions of others 

2. The person will be held liable if he or she has any personal gain in helping the direct infringer 

3. the person is well aware of the consequences of action still contributes to action

 What are the penalties for trademark infringement in India?

Any infringement of a trademark in India leads to cognizable offenses; the infringer may also face criminal charges and civil charges; the court always rewards the following remedies in case of infringement of the trademark.  

In the first injunction in case of infringement of the trademark, the actual owner of a brand can send a notification regarding the infringer and avert him from using the brand. The court can order the infringer to stop using the brand; this order is called an injunction

second damages, if the infringement of a service/product profit occurred to the infringer, has to be reimbursed to the owner by the court's issuance, and any destruction of the goods using the infringer mark must also be refunded.

In case of criminal proceedings, the court has the power to provide an imprisonment period of fewer than six months, with punishment that may extend to three years and a fine of no less than 50 000 that may extend to Rs 2 lakh.

Landmark judgment

Let us look into the case laws to understand the meaning of trademark infringement In India. 

Coca-Cola vs. bisleri international pvt. Ltd    

     

Introduction of the case

Coca-Cola vs. bisleri international Pvt. ltd is one of the significant landmark cases of the trademark law in India the defendant bisleri international Pvt. Ltd is earlier known as Aqua mineral Pvt. Ltd, which produces bottled water and makes Mazza, Mazza is a mango fruit drink. Bisleri sold its trademark rights to Mazza to Coca-Cola, a producer of soft drinks. So, there was a trademark dispute over Mazza as Bisleri registered Mazza as a trademark in another country and earned profits.

Facts of the case 

18 September 1993, the bisleri international Pvt. Ltd sold Mazza's intellectual property rights irrevocably to Coca-Cola with five other brands called thumbs up, limca, gold spot, and Citra, making Coca-Cola the sole owner of the trademark. The plaintiff signed the trademark deed of trademark for $1,000,000.

Bisleri International Pvt. Ltd signed the license agreement to complete the IP transfer to the plaintiff was executed in October 1994. the contract was signed by both Mr. Rajesh Kumar and his wife; both were the owners of the secret formula of 'Mazza.'

In 2008, the plaintiff applied for trademark “MAZZA” registration in turkey and exported the Mazza using its original trademark. On this, Coca-Cola issued a legal notice regarding the trademark infringement that stopped the defendant from making any more infringements to the trademark deal made between them.

 

The argument raised by both parties 

Coca-Cola argued that bisleri international Pvt infringed a brokered trademark. Ltd using the trademark and selling the product in another country 

Coca-Cola filed the case in the high court of Delhi in which bisleri raised the argument that the trademark of maaza was assigned to Coca-Cola only in the Indian market so, the selling of Mazza in turkey was not an infringement of the brand. 

Judgment

The court decided bisleri international Pvt. ltd announced a decision in favor of coca-cola. the court announced that the agreement of deed was broken by bisleri international Pvt. ltd  by using the sold trademark in other countries  

The court ordered an injunction stopping the bisleri international Pvt. Ltd from using the trademark of maaza as it was sold to coca-cola

Starbucks v sardarbuksh

Introduction of the case

One of the major landmark cases in intellectual property is Starbucks vs sadarbukh major landmark case of trademark infringement talks about descriptively similar marks of both logo, name, and products section 11 of the Trademark act 1999, the case was filed in Delhi high court. Later on, was taken on in the supreme court of India 

Facts of the case

one of the major landmark cases of trademark infringement is Starbucks vs sardarbuksh coffee where Starbucks is the plaintiff and sardarbuksh is the defendant the case, Starbucks American multinational chain of coffeehouses its trademark is registered and is well known. A green color Starbucks logo is crowned maiden with long hair and green lines surrounding it in a circle whereas defendant sardarbuksh is an Indian franchise who is also known for making coffees has very similar logo moreover name of the brand also very similar leading to a trademark dispute between both parties

The argument raised by both parties 

Whether the trademark was infringed by SardarBuksh under section 11 of trademark act 1999

Whether the trademark of SardarBuksh is deceptively similar to that of Starbucks and is this leading to dilution of the senior mark, i.e. of Starbucks.

Judgment 

Judgment was announced on 1 august 2018 that the defendant (SardarBuksh) had to change their name to Sardarji-Bakhsh Coffee & Co

Furthermore, the court also issued the judgment that the defendant must not use or record or attempt to register 

“Sardar” and “Baksh” 

“Bakhsh” or “Baksh”

“Star” or “Buck”

It was also put on notice to the defendant if third parties try to use the word Bakhsh, the defendant has the power to issue a lawsuit 

The court further also issued for the defendant to change the name of all the franchises (other shops) under the name of SardarBuksh

Conclusion

If one is ever thinking of exploiting any liberty provided under trademark law or any liberty covered by intellectual property rights as a whole, they should cross-check it twice to see whether rights over such a particular thing have been already acquired by any other person and move ahead following due process of law.

Formulating and providing privileges to the general public for their beneficiary is the second most important task performed by the government, however, enacting laws to govern such privileges provided to the general public still remains at the first position.