Trademarks helps people recognize the source of the product or service they consume. As a result, source helps those people determine the quality of the product, which in long-run is the foundation of every purchasing decision those people make. That is why, trademark registration is extreme important and that’s why, Trademark Infringement is not a subject one can simply ignore.
What is the meaning of Direct trademark infringement?
Section 29 of Trademarks Act, 1999, defines Trademark Infringement as an act of using a trademark that is deceptively similar to identical to a registered trademark. It means that the user of the mark is encroaching the trademark rights of the registered trademark’s owner.
The constituent elements of infringement of a trademark are as follows:
- An unauthorized person: The trademark user that has no authority – the trademark license or registration – to use the trademark.
- Deceptively Similar or Identical Trademark: It’s a test that determines if the mark is identical is likely to create confusion among the public. Deceptively similar literally means that the mark is similar enough to deceive the masses, while identical means copying a registered trademark and using it without proper authorization.
- Registered trademark: Registered trademark is the one that has received registration from the Trademark Authority of India. Trademark infringement can only happen to a registered trademark.
- Goods and Services: Trademark Infringement remedies can only be established if the unauthorized person is using the mark to sell the same types of goods and services for which the trademark has been registered.
All these points describe Direct Trademark Infringement. The unauthorized user is directly encroaching on the rights of the registered trademark owner by directly using a mark that’s either similar or deceptively similar.
Direct infringement is quite apparent and therefore, the owner can find remedy for them easily. However, that’s not the case when the trademark infringement case is not so direct.
What is the meaning of Indirect Trademark Infringement?
Indirect Infringement of trademark is a common law principle that not only holds the direct infringer accountable for the act, but also those induce the direct infringer to commit the act.
In simple terms, people who know about trademark infringement and keep quiet about it also hold secondary liability of infringing a trademark.
Indirect variant of trademark has two types. They are as follows:
- Contributory Infringement
- Vicarious Liability
There are two circumstances in which a person can face charges for contributory infringement.
- Knowing about the infringement
- Buying the products or services with the infringed trademark. In other words, motivating the unauthorized user to continue to contravene the rights of a trademark holder.
Three circumstances in which a person holds vicarious liability are as follows:
- Controlling the actions of the direct infringer: If you’re supervising the infringing acts of the unauthorized user, you hold vicarious liability.
- Deriving financial benefit from the infringement: If you’re even indirectly earning profits from the trademark infringement, you’re vicariously liable.
- Contributing to the knowledge of trademark infringement: If you’ve given any ideas to the trademark infringer to deceptively steal trademark rights of another, then you hold almost the same liability as him.
Dealing with the cases of Infringement: Trademark Infringement Remedies
Where it’s direct or indirect, to a registered trademark whose rights are infringed upon, there is no difference. Therefore, if find out that someone is stealing your trademark, you must use the following remedies to deal with them:
- Taking to the infringer: Before escalating the matter to court, it’s always better to converse with the infringer. It might be that they don’t know that what they’re using is an infringed trademark. Dissolving matters out of court will help you save a lot of money.
- Sending the cease and desist notice: If the unauthorized user didn’t respond well to your telephonic conversation, you can then escalate the matter to court. You can send a notice to them to stop their operations or pay the consequences.
- Going ahead with the trademark hearing: Sometimes, the unauthorized user has the same financial power as you. In such cases, trademark hearings can become common and you’d need to consult with trademark attorneys for assistance.
Trademark Infringement is a rising issue in India where originality has taken a step back. People want to use what’s already establish to enhance their business without thinking about the ethical implications. Therefore, you must know all that you can about infringement. It will pre-emptively prepare you deal with any trademark infringement issue that you face. Read more on this blog(on Newstowns)