The organization should always have a strong vigil team that can report abuse of its brands in offline or online marketplaces as quickly as possible so that early action can be taken. There are many legal references to turn to if a trademark is stolen or misused. The best way to go back in each situation depends on the specific facts of the case. Let us now discuss the various treatments and references available.
Send a cease and desist notice
In the event that you wish to explore the option of amicable resolution before taking any action, you may choose to send a cease-and-desist notice to the offender. In the notice, you must inform the infringer of your prior trademark rights, highlight the infringer’s illegal/disapproved activities, and list your demands for compliance within a specified timeline. Some of the demands you might list are:
- Immediately stop misusing your trademark, which includes misusing not only an identical mark, but also a confusingly similar one.
- Confusingly destroying inventory of products bearing your trademark or similar mark.
- Remove all objectionable posts/content from the violator’s website and social media that may have been used to promote/advertise any products or services confusingly bearing your brand or similar mark.
- remove/destroy all forms of advertisements, promotional materials, brochures, brochures, banners, flyers, billboards, banners, billboards or any other print/digital marketing materials, whether online or offline, which misuse your trademark or similar mark in a confusing manner.
- Disclose the names of other entities associated with the infringer, if any, in connection with the manufacture, sale or distribution of products/services that misuse your trademark, or bewilderingly similar mark.
- Obtaining a signed undertaking from the violator to avoid future misuse.
An amicable solution usually saves the cost and time to be spent in court proceedings, and if your claims are met, it is certainly the most cost-effective remedy. Having said that, if the offender does not respond or refuses to comply, it is also important to keep in mind the hiccups that the notice may bring to the case. The notice may alert the offender who can then file a warning petition with the court to block any prior order opposing him. The warning petition asks the court to inform the warning giver if another person has brought any action against him. If the offender files a notice petition before the court, it will not be possible to obtain:
A unilateral order may be delayed and the granting of a temporary injunction may be delayed, because it must include hearing both parties.
File a civil suit
In the event that the order is not closed with a cease-and-desist notice and compliance is not guaranteed, or if you wish to proceed directly to court proceedings, you may file a civil action. If your trademark is registered, you can file a claim for infringement by any party who misuses your trademark or any other sign confusingly similar to your trademark.
No action can be taken for infringement if your trademark is not registered, therefore, it is highly recommended to register to adequately protect your rights. This does not mean that unregistered trademarks have no protection at all; However, enforcing rights on the basis of an unregistered mark is a much more complicated process and success in the same is highly dependent on the qualitative evidence that you can present in court. A swipe action can be filed on the basis of unregistered trademarks. In simple terms, “pass” means that a third party is trying to pass on/misrepresent their merchandise as belonging to the original owner by misusing the latter’s trademark. To succeed in the passing procedure, the plaintiff has to meet a three-tiered test called the classic Trinity test where he must be able to demonstrate – (i) the good faith of the trademark through qualitative evidence of use, (ii) a misrepresentation on the part of the defendant and ( 3) The possibility of damage. Conversely, if you have a registration on hand, the onus is on the defendant to prove that their mark does not resemble yours and there will be no confusion. By registering, it is also easier to obtain a provisional injunction and even a unilateral provisional injunction.
A civil action for infringement or passing is brought before a local court competent to hear the action. In addition, trademark disputes can also be brought directly in higher courts of original jurisdiction – Delhi High Court, Bombay High Court, Madras High Court, Calcutta High Court and Himachal Pradesh High Court – if the matter falls within their territorial jurisdiction. In a civil action for infringement or subjugation, the plaintiff can apply for an injunction (temporary and permanent) to restrain the defendant from further infringement, damages, or calculating profits and the delivery and destruction of infringing products.
Violation of trademark rights is not just a civil wrong but a criminal offense as well, thus you can also contact the police. Applying false trademarks to products/services without the consent of the trademark owner and selling or offering such products/services are offenses punishable by imprisonment from six months to three years and/or a fine ranging from INR 50,000 to INR 2, 00,000 / -. However, the police authorities have to seek an opinion from the Trademark Registrar on the facts of the case before initiating any action against the infringer. It is a long process and generally delays the procedure. With this in mind, you can also file a complaint directly with a judge under Section 156(3) of the Criminal Procedure Act 1973 to obtain a warrant for investigation.
In the event of your trademark rights being infringed, you should contact a lawyer to evaluate the pros and cons of civil and criminal proceedings and choose the best remedy according to the facts of the case.
Border control measures
You can also stop importing any products that misuse your trademark or any confusingly similar mark. The Intellectual Property Rights (Imported Goods) Enforcement Rule 2007 and Section 140 of the Trademarks Act 1999 enable the enforcement of trademark rights at Indian borders. To benefit from this remedy, the trademark must be registered. The owner of a registered trademark may provide written notice to the customs collector to ban the import of any products if the import of such products constitutes a violation/infringement of the owner’s trademark rights. The term of protection under customs is five years from the registration of rights with the customs authorities or the validity of the registration of a trademark, whichever is earlier. After five years, the trademark owner must send a new notice to the customs collector.
The above resources and remedies are meant to stop misuse of your trademark on products and services offered in the marketplace, but what if the infringer also applies for registration of a confusingly identical/similar mark and the security of registration?
Can you stop the registration of such a mark or can you cancel this registration? Yes you can.
Once the mark is accepted by the Trademark Registry (TMR) after examination, it is published in a journal available for public inspection on the official website of TMR. If you have a legal or vigilant team monitor the journal, they may be able to tell you if an identical or similar tag has been published in the name of a third party. In such a case, you can file an objection to the registration of the published mark in the TMR. The deadline for submitting the opposition is four months from the date of publishing the mark in the magazine. Once the tag is opposed, the further process of the application is suspended until the opposition is adjudicated.
If the offender has registered a mark that is identical or confusingly similar, you may proceed to rescind against that registration. To file a revocation claim, you must be an ‘grieved person’, i.e. someone who is highly interested in revocation of the mark, or whose rights are significantly affected. An action for annulment can be filed in the TMR or in the relevant Supreme Court. Please note that all of the above remedies can only be taken if you had prior rights over the trademark and the infringer subsequently adopted a mark that is identical or confusingly similar.
(The author is an IP rights advocate and currently works as a managing partner with LexOrbis, an IP firm based in New Delhi, Mumbai and Bengaluru.)