Author: Aashna, a student at University School of Law and Legal Studies
To the Point
A trademark is a mark which helps in distinguishing one good or service from the others in the market. It is a registered mark which recognises the originality of any brand. For instance, the tagline “Just do it” is linked with the brand called ‘Nike’. It is known worldwide- anybody can acknowledge the brand merely by its tagline. Thus, it clearly gives a novel identity to a given brand. Based on that, it won’t be wrong to conclude that an infringement of it poses a serious threat to the identity or credibility of a brand. Thus, the given article aims to bring light upon the alarming issue of trademark infringement in India, by highlighting the importance of a trademark and discussing the possible consequences of it. Moreover, it also focuses on the safeguards guaranteed under the Indian law to curb such cases of infringement.
Abstract
Trademark infringement is one of the major challenges that almost all the brands encounter. It is an essential tool which gives them a unique identity in the competitive sphere. Therefore, protecting their identities becomes crucial. Given the recent developments in the Intellectual Property (IP) rights and related areas, it is finally getting the attention and value it deserves. Therefore, various safeguards have been guaranteed against trademark infringement under the Indian law. However, despite the presence of various laws such as the frameworks laid out in the Trademark Act, 1999, there exist several threats to the novelty of a brand. Thus, this article aims at calling out the issue of trademark infringement with a special focus on the various legal safeguards and the existing gaps in their execution-with the help of some leading examples
Use of Legal Jargon
This article revolves around the Trademark law, 1999 which includes the expression of various terms, procedures and safeguards surrounding trademark, its infringement and related matters. It forms the basic foundation of the protection of a brand identity. A trademark is a registered tool which distinguishes one brand from another and is widely recognised. Distinctiveness refers to the novelty of a given brand- the factor which makes it different from others. Thus, it forms one of the criteria on the basis of which a trademark is recognised. When a party other than the rightful owner of a trademark uses it, it amounts to infringement of trademark. The owner of a trademark enjoys the exclusive right over the usage of a trademark which could include a tagline, a logo or even a colour. Moreover, it occurs when a mark is very similar to another registered mark, to a point that it almost resembles the other and is likely to deceive people or cause confusion about it. Thus, these terms play a key role in understanding the key idea of the article in a more efficient manner.
The Proof
The Trademarks Act, 1999 deals in detail with trademarks, its registration, limitations, infringement, grounds for infringement, safeguards against infringement, remedies against it etc. Thus, it won’t be wrong to claim that the Indian law is quite descriptive and deals with the issues revolving around trademarks efficiently. For instance, section 2 of the Trademarks Act, 1999 provides definitions for various key terms related to trademarks whereas chapter III of the Act deals with the procedure and the duration of registration. Even for infringement of trademarks, section 27-30 provides a well-defined framework of laws. Section 29 provides a comprehensive definition and enlightens upon the wide scope of infringement as per the Trademarks Act, 1999. When it comes to listing out the safeguards, there is no specific section explicitly mentioning the safeguards except for section 135 which provides remedies against infringement. However, there are many sections which indirectly hint at the same, for instance, section 9 and 11 deal with registration of trademarks. However, it also implies that no trademark which seems to be in conflict with an existing one would be registered. Moreover, these safeguards are not only limited to registered trademarks, even unregistered trademarks are protected through section 27 which talks about passing off. At the end, it also mentions the penalties for trademark infringement under section 103-105, which includes criminal penalties as well. Altogether, these provisions under the Trademarks Act, 1999 are comprehensive enough to protect a brand identity in India.
Case Laws
Cadila Healthcare Ltd. V. Cadila Pharmaceuticals (2001)
This case is one of the most landmark cases dealing with the issue of trademark infringement in India. Despite being an older case, it continues to be relevant in the present time. Cadila Healthcare Ltd. filed a suit against Cadila Pharmaceuticals claiming that the introduction of a new drug called “Falcitab”, which sounds deceptively similar to a drug previously introduced by the petitioner namely “Falcigo”, amounts to trademark infringement. They were similar even in the usage and diagnosis as well. So, the legal issue which arose was whether the introduction of this new drug actually amounts to trademark infringement. The Supreme Court ruled in favour of the petitioner, stating that in certain sensitive cases such as the one involving medicines, even a slight resemblance amounts to be a crucial threat. The given judgement is widely known for its ruling as well as the list of factors that it laid down for dealing with similar issues that may arise in the future. Thus, this case and its judgement was ahead of its time.
Starbucks Corporation v. Sardarbaksh Coffee & Co. (2018)
In 2018, Starbucks Corporation filed a suit against Sardarbaksh Coffee & Co. in the Delhi High Court, arguing that there was a trademark infringement on the part of Sardarbaksh Coffee & Co. The brand name and the logo of the defendant was deceptively similar to the petitioner’s registered brand name, which is the trademark of the company. So, the major issue that was dealt with in the given case is whether the logo or brand name of the defendant was deceptive in nature or created a confusion among the consumers. The High Court ruled in favour of the plaintiff, stating that the overall branding was deceptively similar to that of the plaintiff and could clearly stir confusion among the masses. As a result, the defendant was ordered to modify its brand name to “Sardarji Baksh”. This judgement holds relevance as it clearly is an example of what practices amount to trademark infringement and the safeguards guaranteed under the Indian law.
ITC Ltd. v. Nestle India Ltd. (2020)
In the given case, ITC Ltd. filed a suit against Nestle India Ltd. claiming trademark infringement, based on the introduction of a new product called “the magic masala noodles” which sounded similar to the “magic masala” flavour previously introduced by the petitioner. So, the key legal issue was whether the term “magic masala” being a descriptive term, should be recognised as copying and deceiving the consumers to create confusion. The Madras High Court ruled in favour of the defendant stating that it was a very general term thus cannot be considered as a novel identity of the petitioner. This case is very relevant in putting light upon the fact that the Indian courts play an equally important and proactive role in guaranteeing safeguards to various brands. Every law which has been outlined in the Trademarks Act, 1999 and related acts, is interpreted carefully based on the varying circumstances in a case.
Conclusion
Thus, in the modern era, where there are many emerging players in different fields of markets- hinting at a potential rise in the practice of infringement of trademark through imitating others- trademark laws play a crucial role in guaranteeing novelty and protecting the identity of different brands. There are two key players to safeguarding brands; the Trademarks Act,1999 offering a variety of legal safeguards and the various judgements that have been ruled by the Indian judiciary which in itself speaks volume about its relevance. Therefore, safeguarding trademarks is beneficial to businesses on one hand and on the other hand, it also increases the credibility of the Indian legal system.
FAQs
What are the requirements for a trademark to be registered?
As per the Trademarks Act, 1999, various grounds have been mentioned for refusal to register a trademark under section 9 and 11. Thus, for a trademark to be registered, it should not fall under any of the mentioned grounds, these include;
Distinctive
Not deceiving
Not hurtful
Not prohibited by law
Not scandalous or obscene
Not in conflict with existing trademarks
Not infringing earlier rights
Must be of a use in relation to a good or service
What are the grounds for refusal to register a trademark?
As per the Trademarks Act, 1999 there are various grounds for refusal to register a trademark. These are covered under section 9 and 11 of the Act. Section 9 talks about absolute grounds whereas section 11 talks about the relative grounds for refusal to register; these include:
Absolute Grounds
Deceptive in nature
Hurtful
Scandalous/Obscene
Prohibited Symbols
Resembles an existing object
Relative Grounds
Identical to an earlier mark
Well-known trademark
Existing rights
What are the different remedies available in case of a trademark infringement under the Indian law?
Various remedies are available in case of a trademark infringement, as per section 135 of the Trademarks Act, 1999, the remedies available include:
Injunctions
Damages or account of profits
Delivery/destruction of infringing goods
What is passing off?
Passing off serves as a legal remedy under the Trademarks Act, 1999, which seeks to protect unregistered trademarks. It has been mentioned in section 27 of the Trademarks Act, 1999. Thus, it ensures/guarantees safeguards to even the trademarks which have not been registered.
Can unregistered trademarks be protected?
Yes, unregistered trademarks can seek protection as per the Indian law. Section 27 of the Trademarks Act, 1999 talks about passing off which provides safeguards to an unregistered trademark against infringement.
Sources
https://www.indiacode.nic.in/bitstream/123456789/15427/1/the_trade_marks_act%2C_1999.pdf
‘Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd’, (2001), Link: http://www.scconline.com/DocumentLink/1QgHg7x5
ITC Ltd. v. Nestle India Ltd. (2020),
Link: http://www.scconline.com/DocumentLink/EMxzy0pA
Starbucks Corporation v. Sardarbaksh Coffee & Co. (2018), Link:
https://www.livelaw.in/news-updates/trademark-infringement-suit-delhi-high-court-starbucks-198747
