What To Do If Someone Uses Your Trademark

Trademark is a brand, logo or symbol of a product or service. The customers/clients identify a product or service of an individual/company through its trademarks. Trademarks are essential for any establishment as it helps to create goodwill and retain customers. The law regulating Trademarks in India is the Trademarks Act, 1999 (“Act”).  The trademark of a product or service can be registered under the Trademarks Act, 1999.

The registration of trademarks is not compulsory, and it is voluntary under the Act. The registration of trademarks grants many benefits to the owner of the trademark. One such benefit is protection against infringement of the trademark. Infringement of trademark occurs when any person uses the trademark in an unauthorised manner.

When someone uses the trademark of an individual or company without their permission, the individual/company can file a suit for trademark infringement to prevent the unauthorised usage of their trademarks. 

Trademark Infringement

When a person uses your trademark without your authorisation or permission, it amounts to infringement of your registered trademark as per Section 29  of the Act. However, for trademark infringement, your trademark needs to be registered. When someone uses a trademark that is deceptively similar or identical to your trademark, then he/she is liable for trademark infringement under the Act. 

A trademark is deceptively similar or identical to another trademark if the consumers believe that the trademarked brand/products are the same as your brand/products. The trademark used by another person for their products should confuse the customers and lead them to believe that his/her products are your products.

Circumstances Not Amounting To Trademark Infringement

Section 30 of the Act specifies the circumstances that do not amount to trademark infringement even when the other person uses your trademark. When someone uses a trademark as per the honest practices in industrial or commercial matters, it does not amount to trademark infringement. However, the trademark used honestly should not take unfair advantage or harm your registered trademark’s reputation or distinctive character.

The trademark is not infringed when using the trademark concerning the goods/services indicate the kind, quantity, quality or other characteristics of the goods/services. Trademark infringement does not occur when it is used by someone for the products or services that fall under the different class or service of your registered trademark. 

Before filing a trademark infringement suit against someone who is using your trademark, the following points need to be checked:

• Is your trademark registered?
• Is your trademark used for the same products/services as your products/services?
• Is the area of business or industry of the person using your trademark the same as your business? 
• Is the geographical area of the trademarked products/services circulated in the same geographical area as your products/services?
• Whether a reasonable buyer who looks at the trademarked products/services is likely to feel they are similar or confused with your products/services?

If the answer to all the above questions is yes, then you can proceed to file a case for trademark infringement against the person who is using your trademark for his/her products or services. 

Action Against Trademark Infringement

When trademark infringement takes place, you can send a warning to the person using the same trademark to refrain from using it. You can directly send a notice to the person using your trademark of initiating legal action against him/her if he/she does not stop using it. If the person stops using your trademark after you issue notice, then the matter is closed. 

However, notice can be sent to the person using your trademark claiming the damages caused to your business due to the unauthorised trademark usage or the profits obtained by him from the use of your trademark. If the person denies your claim, you can file a suit for infringement against him. 

You can file both civil and criminal suit for trademark infringement under the Act. The registered owner of the trademark can file a civil suit for trademark infringement before the District Court of the appropriate jurisdiction, i.e. the place where the registered trademark owner resides or carries on business. The registered trademark owner can file a criminal suit against the other person for falsely applying the registered trademark to his/her goods or services.

Relief For Trademark Infringement

Section 135 of the Act provides relief in the civil suit of trademark infringement. The court can grant a permanent injunction preventing/restraining the person from using the registered trademark. The court can also award for paying the damages caused by the unauthorised usage of trademarks. The court can grant relief of account of profits, i.e. for paying the amount of the profits gained from the unauthorised usage of trademarks. 

When a criminal suit for infringement is instituted under Section 103 of the Act, the court can award punishment to the person using another person’s trademark. The punishment may be imprisonment for a term of six months, which can be extended up to three years and with a fine of Rs.50,000, which can be extended up to Rs.2 lakh.

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