Remedies available for Trademark Infringement

In the era of Digitization, businesses are growing rapidly through the internet and have crossed all boundaries, as have their identities and competitions. For a successful business, it’s very important to secure all the assets of the business, whether they are tangible or intangible. Trademarks or brand names are intangible assets of the business, but they play a very big role in business development and customer retention.

A brand’s name is the key to identity for any industry, be it goods or services. Most people don’t know the service provider or manufacturer of their favourite product or recommended service, but they do know the brand name of the product or service and use it to identify the goods or services associated with the brand name.

Business competition has reached new heights; these days, competitors are willingly adopting similar brand names of their competition and doing business to gain upon the goodwill of the actual brand owner. They use a similar logo, similar product packaging, and sometimes even a similar name for the business as well. Such an act lets the end customer believe that the products are from the original brand owners and start consuming them.

These scenarios lead to mainly two things; first, the capture of the brand goodwill of others to trade upon it, and second, the demolition of the brand goodwill of competitors by unreasonable price hikes, quality compromises, poor service, etc. All such acts are considered misuse of a trademark and a punishable offence under the law of land.

There are certain remedies available to the aggrieved person to protect his rights. There are two types of remedies available against the infringement of trademarks, namely:

Civil Remedies:

It is illegal to infringe or copy a registered trademark, and a suit can be filed against them under Section 134 of the Act. The party infringing may need to bear any of the following consequences mentioned below:

• Damages
• Order on account of profits
• Delivery of infringing materials
• Destruction of goods
• A permanent or temporary injunction to use such a mark
• Refraining from using a trademark that will deceive or mislead the public.

Penalties:

Except for these civil actions and remedies, there are certain penal provisions in the Act. Section 101 clarifies the meaning of applying trademarks and trade descriptions and Section 102 states about who shall be deemed to falsify a trade mark. The penalties of these offences are mentioned in the table below:

 

Section	Title	Imprisonment	And/Or	Fine
103	Penalty for applying false trademarks, trade descriptions, etc.	Not less than 6 months but may extend to 3 years.	And	Not less than Rs. 50, 000 but may extend to Rs. 2 lakhs.
104	Penalty for selling goods or providing services to which false trade mark or false trade description is applied.	Not less than 6 months but may extend to 3 years.	And	Not less than Rs. 50,000 but may extend to Rs. 2 lakhs.
105	Enhanced penalty on second or subsequent conviction.	Not less than 1 year but may extend to 3 years.	And	Not less than Rs. 1 lakh but may extend to Rs. 2 lakhs.
107	Penalty for falsely representing a trade mark as registered.	May extend to 3 years.	Or	Fine or both.
108	Penalty for improperly describing a place of business as connected with Trade Marks Office.	May extend to 2 years.	Or	Fine or both.
109	Penalty for falsification of entries in the register.	May extend to 2 years.	Or	Fine or both.

 

The plaintiff has been engaged in the business of milk and dairy products, ice creams, faluda, milk shakes, etc. under the registered trademark GIANI’s since the 1960s. In the beginning of May 2009, the plaintiff came across the defendant’s product, sold in the market under the trademark GIAN’s. The plaintiff filed the suit under Sections 27(2), 28 and 29(1) of the Act. Eventually, the court restrained the defendant from manufacturing, selling, distributing, and promoting in any manner the above-mentioned items using the trademark GIAN’s or any other similar trademark because it gave the impression that both the products were coming from the same source or that GIAN’s had some link with GIANI’s, and therefore, it awarded Rs. 20,000 to the plaintiff[1].

One such other case is that of Hero Honda. The defendant not only infringed on the logo and the mark but was also manufacturing products of poor quality and substandard packaging. The defendant replicated the product of the plaintiff and then sold it under the name and goodwill of the plaintiff. The plaintiff filed the suit, and a decree of permanent injunction was passed in favour of the plaintiff, restraining the defendant from selling the parts of the motorcycle deceptively under the registered trademark of the plaintiff and to destroy the present stock. Moreover, a decree of damages for a sum of Rs. 5 lakhs was also passed against the defendants[2].

 

Principles of Passing-Off: 

When the matter of infringement arises related to an unregistered trademark either not applied for trademark registration or under the process of registration can be protected through the principle of Passing-Off. The only remedy available for an unregistered trademark under common law, is the tort of passing off. But it is not easy to succeed in such actions; three essentials are necessarily to be proved by the plaintiff to protect the unregistered trademark in passing off, namely:

• The brand name or product is misrepresented in the market.
• The evidence of the brand’s goodwill in the market, whether through increased sales or public recognition.
• The damages he has suffered that have interrupted his sales or ruined his goodwill.

In one of the cases, the Privy Council held that passing off is an action that essentially protects goodwill and not an unregistered trademark, which means that it is to preserve the goodwill of a person and not aimed at protecting an unregistered trademark[3]. A passing-off action is a remedy for the invasion of a right of property not in the mark, name, or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one person’s goods as the goods of another[4].

Therefore, it is quite evident that unregistered trademarks do get protection under the common law, but the desired relief is not granted easily, and moreover, it is very difficult to prove that the brand exists unless you have spent a good amount of money on marketing and advertising.

 

Conclusion

It appears that trademark infringement is seen in relation to the violation of exclusive rights accorded to the registered owner, which can be used by that owner in relation to goods and services, but the same benefits are not enjoyed by the owner of an unregistered trademark. Therefore, though it is not mandatory to register a trademark, seeing the contemporary circumstances and rising competition, it becomes important that every business owner get trademark registration for their brands.

About the Author:

This article is authored by Adv. Dhriti Laddha. She is an enrolled advocate with the Bar Council of Rajasthan. At present, she is practicing at the High Court of Rajasthan and is associated with Alonika and SDSA Lawyers. She pursued her B. A. LL.B. from Vidyasthali Law College, Jaipur, affiliated to Rajasthan University. She is keen to build her litigation practice in the civil arena, and currently she is involved in matters related to succession law, property law, matrimonial matters, consumer protection act, tenancy disputes, IP, cheque bounce, etc. Intellectual Property Law is also one of her core areas of interest.

 

[1] M/S Giani Gurcharan Singh & Sons vs Madhusudhan Singh And Another, CS(OS) No. 1233/2009, (Delhi High Court, 14/02/2011).

[2] Hero Honda Motors Ltd. vs Shree Assuramji Scooters, 125 (2005) DLT 504.

[3] Star Industrial Co. Ltd. v. Yap Kwee Kor [1976] Fleet Street Patent Law Reports 256.

[4] A.G. Spalding & Bros. v. A.W. Gamage Ltd. (1915) 32 R.P.C. 273.