Trademark Infringement under Intellectual Property
1. What is a Trademark?
A trademark is a sign, symbol, word, or a combination of these, legally registered or established by use as representing a company or product. It distinguishes the goods or services of one enterprise from those of others.
Examples:
Word Marks: Nike, Apple
Logo Marks: ✔ (Nike swoosh), Apple’s logo
Slogans: Just Do It
2. What is Trademark Infringement?
Trademark Infringement occurs when a person or business uses a trademark that is identical or confusingly similar to a registered trademark without authorization, in a manner that is likely to cause confusion among consumers.
Essential Elements of Infringement:
Similarity between the registered and the allegedly infringing mark (visually, phonetically, or conceptually).
Likelihood of confusion in the minds of the average consumer.
Use in the course of trade (i.e., commercial use).
The infringing mark is used in relation to identical or similar goods or services.
3. Types of Trademark Infringement
A. Direct Infringement
Occurs when someone uses a registered trademark without permission, in the same class of goods or services.
B. Indirect Infringement
Occurs when a person facilitates or contributes to another’s infringement (for example, by manufacturing counterfeit goods).
4. Legal Provisions (Under Indian Law)
The Trade Marks Act, 1999 (India)
Section 29: Provides the legal framework for trademark infringement.
Section 134: Jurisdiction of filing a suit for infringement.
Remedies: Injunction, damages, account of profits, delivery up of infringing goods.
5. Defenses to Trademark Infringement
Fair use (descriptive or nominative use).
Prior use (using the mark before it was registered).
No likelihood of confusion.
Non-commercial use.
6. Remedies Available
Injunction – Prohibiting further use.
Damages or Account of Profits – Compensation for loss suffered.
Delivery up – Destruction or surrender of infringing goods.
Costs – Legal costs borne by the infringer.
7. Landmark Case Laws
✅ Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) – Supreme Court of India
Facts: Both companies were using the mark "Falcigo" and "Falcitab" for anti-malarial drugs.
Held: In pharmaceutical products, even a slight chance of confusion can be fatal. The Supreme Court laid down factors to determine deceptive similarity, such as:
Nature of the marks.
Degree of resemblance.
Nature of goods.
Class of purchasers.
Mode of purchasing.
Any other surrounding circumstances.
✅ Key Takeaway: Even phonetic similarity is enough to cause confusion in critical goods like medicines.
✅ Yahoo Inc. v. Akash Arora & Anr (1999) – Delhi High Court
Facts: Defendant was using the domain "YahooIndia.com" similar to the plaintiff’s registered trademark "Yahoo".
Held: The court restrained the defendant from using the name. It was held that use of a deceptively similar domain name constitutes trademark infringement.
✅ Key Takeaway: Trademark protection extends to domain names as well.
✅ Daimler Benz AG v. Hybo Hindustan (1994) – Delhi High Court
Facts: The defendant used the mark “Benz” and the symbol of a three-pointed star for underwear.
Held: The court held that such use amounted to infringement and dilution of the brand. The court emphasized the value and prestige associated with famous marks, and that they should not be allowed to be diluted.
✅ Key Takeaway: Even unrelated goods (cars vs. underwear) can cause dilution of well-known trademarks.
✅ ITC Limited v. Philip Morris Products SA (2010) – Delhi High Court
Facts: Philip Morris used the mark "Marksman" for cigarettes. ITC claimed it was deceptively similar to its brand “Navy Cut” by Wills.
Held: Although not visually similar, the court looked at packaging, market share, consumer perception, and found likelihood of confusion.
✅ Key Takeaway: Courts take a holistic view, not just visual similarity.
8. International Perspective
U.S. Law (Lanham Act): Similar provisions exist, focusing on "likelihood of confusion".
EU Law: Emphasizes protection of both identical and similar marks where confusion or unfair advantage can occur.
TRIPS Agreement: Mandates member countries to provide protection and enforcement of trademarks.
Conclusion
Trademark infringement is a serious violation under intellectual property law, aimed at protecting the identity and goodwill of businesses. Courts consider consumer confusion, intent, and market conditions when determining infringement. Trademark owners must be vigilant in protecting their marks through registration and enforcement actions.
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