Infringement: A Thoughtful Mistake

26th June, 2024 - 7:56 am Categories: Trademark Infringement 0 Comments

INTRODUCTION

As we have seen, this world is evolving with digitalization, industrialization and most importantly, intellectual property registration. If we see, we get to know that industrialization is the primary reason for the existence of intellectual property law because it gave the idea to register the idea and make it a secure way to protect the rights of the creators who have mind, talent, and innovation to create something which is for the benefit of society or public at large. There are many types of intellectual properties such as copyrights, patents, geographical indications, plant varieties and farmers’ rights. Still, trademarks are the most significant, mostly used in the industrial and business sectors. Every company, startup, factory or any profession wanted to look unique in the 1000s because it is their uniqueness that connects them to the public at large and makes their service or product attractive. However, even after knowing the consequences and results of using the same mark which is identical to others, people do it sometimes, for publicity, to grab attention, to make their product similar so that it can be popular and people can buy it without any doubt. It is serious as it is an infringement of the trademark. If we describe a trademark in simple words, it is a unique identification mark of the company or business which includes letters, words, animation, numbers, etc.

IDENTICAL USE

When we make a mark or a logo for our company, we choose something that can represent our product in the market and according to section 2(zb), the trademark is defined as a “trade mark” which 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”[1]. The condition is no one can use the same as used by the other. Identical use of the logo or trademark leads to conflict in the companies and can tarnish the value of the product of other companies. There is a term used in the deceptively similar trademark means a logo or mark is as same or as similar as no one can tell the difference at first sight. “Deceptively similar and in simple terms, it means that a mark need not be identical to be called deceptively similar to that of another, but if it so nearly resembles the other mark, there is a high chance that it will deceive the general public or cause confusion in their mind”[2] if we see in recent times, there was a famous case of Starbucks vs Sardarbucks[3], in which the startup Sardarbucks use the similar type of logo and trademark which is identical to the Starbucks logo. If we talk about, how it is deceptively similar then, we can analyze that in sound both have similarities, by seeing their logo, a normal person with weak eyesight may get confused in differentiating between the logos. It’s not only about normal people; sometimes, well-educated and aware people can also feel deceived by the sound and graphical use of the trademark. Plenty of cases of deceptively similar trademarks infringe the rights of others. A recent case of subway vs suburb is also an example of such type of case. The concept of deceptively similar is given in the famous case of Cadila Healthcare Ltd v. Cadila Pharmaceutical Ltd. in 2001[4]. In which there were certain guidelines established by the court to stop the infringement of the trademark. “It ruled that the following factors should be taken into account in determining whether a mark is deceptive: a) the nature of the products or services the mark relates to; b) the degree of resemblance between the two marks, and c) The type of mark—whether it be a word, symbol, or phrase, and the target audience that the company offers are also significant factors.”[5]

[Image Sources: Shutterstock]

TRADEMARKS INFRINGEMENT

The cases of trademark infringement occur when similarity to the mark is found and the owner of the trademark has rights regarding the use of the trademark and the type in which it can be used and also gives the option of remedies to the proprietors to take action against the infringement as conferred in section 28 of the trademark act, 1999. These actions involve, -1) damages (in case the use of a trademark is done illegally which causes damages to the owner, in such a situation the owner has the right to seek damages or compensation), 2) injunction (the use of trademark stopped. It can be permanent as by the order of the court or temporary for a specific period, and 3) profits (in case the offender earned profits through the illegal use of trademark, then the owner can seek the profits earned through the use and can take accounts).

To make a user liable for infringement of a trademark, some conditions need to be fulfilled and these are- 1) the resemblance to the trademark or original mark- the infringement occurs when the similarity appears, 2) the second condition is that it should be used for trade (not for education purpose), 3) the use of the trademark must be visible to the public domain such as advertisements or trades. These conditions are essentials which constitute an infringement of the trademark. When it comes to the litigation it is on the plaintiff to prove all the essential features of infringement, if he/she fails to do so, then the suit may lack the ground of infringement.[6]

CONCLUSION

In this world of rapid progress and development, given criteria and grounds are sufficient for the time being but as we know we are heading towards an artificial intelligence era where everything will be in digital mode or virtual. The use of a trademark may have new grounds of infringement for trade and purposes. However, in recent times, people are well aware of the trademark and issues with the use of deceptively similar trademarks but the ignorance towards not to use it as it is unethical and immoral, makes a bigger problem for the world. India is a diverse country with different types of products and varieties in it and we see, that she has a bright future in the industrial sector and digital sector however, the infringement of a trademark is a discouragement to new startups and innovative minds who can help in making it progressive and developed. Innovation is always necessary to do anything but it is also a burden on the courts and legislation to take care of the rights of the people so that they can make this country progressive and help further for its progressive future.

Author: Mansi Tyagi, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] The Trademarks Act, 1999, act no. 47 of 1999

[2] Section 2 h, the trademark act, 1999.

[3] CS (COMM) 1007/2018.

[4] Civil appl. No. 2372 of 2001, SLP (civil) 15994 of 1998.

[5] Simant Tyagi, Subway Vs. Suberb: The Deceptive Similarity In Trademark Law, 28 Oct 2023

[6] S. m. dyechem ltd. Vs. Cadbury (india) ltd., AIR 2000 SC 2114