As a business owner, one of the most important things to look out for is somebody impersonating your brand or trade mark. A brand that you have possibly spent large sum of money on to create, strengthen, and establish in your field of business. In today’s interconnected world and the subsequent rise of e-commerce, the possibility of somebody using your brand name without your consent (either knowingly or unknowingly) is becoming more and more feasible. You could also be in a situation where somebody is using your mark without your consent and you have no knowledge of this fact. Both of these situations require you to take steps to protect your trademarks, your branding, and your investments. As with any legal issue, it is always advisable to consult professionals to obtain adequate advice. So what do you do if you think your trademark is copied? Here are some of the things you should keep in mind before deciding on what course of action you should take:
Find out if somebody is using your mark
Keeping track of potential unauthorised users of your trade mark on your own can be an overwhelming task. It is usually helpful to obtain professional help in the form of trade mark attorneys who can be dedicated to ensuring that your mark isn’t being used without your consent in any way.
One of the most common ways to do this is to conduct regular searches of the Trade Mark Journal to see if there are any conflicting marks. The Trade Mark Journal is published once a week by the Trade Mark Registry, and depicts all the marks that have been advertised for that week. When a mark is advertised, it means that the Registry has no objections to it, but the mark is in public view so that members of the public who believe it might be unauthorised use may oppose its registration if necessary.
Another aspect of this is regular searches across the Indian Trade Marks database, which gives access to more information than the Journal as it covers all applications that have been filed, regardless of their current status. Searches are an important part of both filing for a trade mark as well as enforcing the rights granted by it. It is indeed possible to monitor this yourself; either manually or by using trademark tracking software such as TrueTrack. This kind of software allows a user to actively monitor various databases for a comprehensive search to ensure that nobody is using a mark similar to you. The advantage of this sort of software is that the search process is automated and error-free. However, the vast nature of available marks, as well as the judgement as to whether a mark is actually infringing on your rights, often means that these activities are best handled by trade mark attorneys who have both the time and expertise to give you the required information and advice on the course of action you should take.
Determine if unauthorised use has occurred
Once you’ve found a potentially conflicting mark, the next step is to confirm that it actually constitutes illegal use. Contrary to what some people believe, a trade mark doesn’t always grant you universal rights over the word or logo that you’ve protected. Trade mark protection is granted for specific Classes of goods and services, which is stated at the time of filing the application. Classification is determined by an international agreement called the Nice Agreement, and as previously mentioned, a trade mark attorney can help you determine the exact Class of goods and services your business falls under.
One of the key factors to establish a case for unauthorised use is that the conflicting marks should be in similar categories of goods and services, since there is the potential for regular customers to be confused between them. This is why, for example, there is no issue between Jaguar (the car company) and Jaquar (who make bathroom fittings), as nobody who is trying to buy a car is going to accidentally buy a sink instead. If they were in the same class then there would certainly have been legal issues.
However, there is still the possibility to initiate action if you are confident of proving that your brand is so well-known that its reputation extends beyond the Class of goods or services that it pertains to.
For example, brands like Mercedes-Benz, Google, or Adidas are so well-known that it is reasonable to claim that somebody using those brands for unrelated goods is trying to do so to take advantage of their brand recognition without consent.
Another thing to keep in mind is that minor differences in the brand (such as misspellings, pluralisation, or homonyms) are usually enough to establish a case of unauthorised use, as courts often take similarities in pronunciation or appearance to determine if there has been any unauthorised use. Therefore, somebody attempting to use the word ‘Gogol’ for their search engine, or “MacDolans” for their restaurant is certainly going to run into problems.
Determine what kind of unauthorised use has occurred
If you’ve been able to establish that your mark is indeed being used without your consent, the next step is to determine what sort of violation it is. Indian law recognises two major modes of unauthorised use as being illegal, which are infringement and passing off. Under Indian law, it is certainly possible to present a combined suit for both of these. These remedies have the same purpose (which is to protect the branding and goodwill of a person), but they have different methods of enforcement and different requirements as well.
Passing off is what is referred to as a common law remedy, which means that it is enforced by a court based on previously established legal principles. The advantage of this remedy is that your mark doesn’t have to be registered for you to enforce your claim. There are two criteria that you need to prove to enforce your rights under this kind of suit:
- The other mark is similar to your mark; and
- The other mark is likely to cause confusion or deception in the mind of the public regarding the origin of the goods, which will damage the goodwill of your brand.
One drawback of this kind of suit is the fact that you can only file it in a court where:
- The other party resides or works or carries on their business;
- Where the cause of action (i.e. the unauthorised use) arises.
In addition to this, the Indian Penal Code also penalises unauthorised use of another person’s mark, but enforcing these provisions may prove to be a significant amount of effort due to the various restrictions involved.
Infringement is a remedy provided under the Trade Marks Act, 1999. For you to be able to claim that your mark is being infringed on however, you need to be the owner of a registered trade mark. However, the burden of proof is lower here than it is to prove a case of passing off, as you only need to establish that the marks look similar. There is no need to establish that the marks are likely to cause confusion or deception in the minds of the public. The Trade Marks Act, 1999, also creates criminal liability for infringement, making it a more attractive option to the owner of a brand.
Another advantage of filing an infringement suit is the fact that you can file suit before a District Court (or a High Court with original jurisdiction such as Delhi, Bombay, Calcutta, and Madras) in the area that you (or any licensees) live and work in. This is more convenient than the procedures for filing a suit for passing off.
Under Indian laws, the penalties that can be imposed on somebody for infringement or passing off include injunction (basically preventing the imposter from continuing to use the mark), destruction of the offending goods, damages, and an account of all profits made from use of the mark. Depending on the extent of unauthorised use, the relief given by a court can include any or all of these. However, if you are able to catch an infringing mark at the point of advertisement itself, you can oppose its registration before the Trade Mark Registry and avoid the hassle of going through the traditional court system.
Opposing a trademark is much easier if you have filed a trademark application yourself. While unregistered marks have some amount of protection, there a large number of benefits of registering a trademark. Once a trademark application has been filed, your ability to protect your brand is made much stronger.
The ability to catch an infringing mark at that stage is of course difficult to do without professional legal assistance and the expertise that a specialised trademark attorney can offer. At Ediplis Counsels, we offer a complete range of trademark-related services, from filing your application to enforcement of your mark, so that you can concentrate on growing your business and brand.