A trademark is a legal claim to the exclusive use of a specific brand name or symbol. It provides an opportunity to distinguish your company or product so that as your business grows, your brand can grow along with it. Allowing others to use your trademark dilutes its value, and defending a trademark can be confusing. However, MyAdvo is here to make it simple for you!
What is Trademark Infringement?
No one has the right to use your registered trademark without your permission. If a person uses your Trademark without authority or license, he is guilty of trademark infringement. If you discover that someone has infringed upon your IPR, you can approach a court to take a legal action against that person. The court may forbid the infringer to continue with his actions and also award compensation to you. In certain cases, trademark infringement could lead to a fine or even jail.
A trademark is said to be infringed when a person other than the registered proprietor, uses the same mark or a deceptively similar mark in relation to the same good or services for which the mark is registered. This deceptive similarity is likely to cause confusion in minds of the public or is like to cause an impression of association with the registered trademark.
Passing-Off in Trademark
Passing-off means that if one has a registered trademark and another sells goods or provides services under the same trademark without the permission of the first, there may be an infringement of a trademark. The law of passing off concerns unfair competition as in such a situation, the infringer benefits from the reputation of the origin associated with the registered trademark.
Passing off is a common law tort which can be used to enforce unregistered trademark rights where the second user an unregistered trademark of the first user and in doing so, misguides the public into thinking that the goods or services are being offered by the first. Passing off essentially occurs where the reputation of one business is misappropriated by the other party carrying on the same business, such that party B misrepresents the reputation and damages the goodwill of party A.
Second business by the infringer leads to:
- Misleading the public into thinking that the infringer’s goods are associated with the first one;
- Damages to the first one in terms of money and reputation.
Who can file a Trademark Infringement Case?
The following people are eligible to sue in case there is any passing off or infringement:
- Proprietor of the trademark;
- Legal successor/heirs of the proprietor;
- A registered user, only when the registered user has sent a notice to the infringer and consequently failed to take any action;
- If it’s a joint proprietorship, any of the proprietors
- A foreign proprietor a trademark registered in India, and when infringement occurs in India
Before you enter the courtroom, there are other methods of defending the trademark, most involving your own use of the trademark. By establishing and building your trademark recognition, you create the basis for a defense that few infringers will be able to fight. Here are a few things you can do to avoid infringement of another Trademark:
1. Design your Trademark with originality
Keep it as distinctive as possible to make infringements on the trademark obvious. Run a search on your trademark for similarities to existing registered trademarks. Extend your search using a trademark search firm to check common-law trademarks as well.
2. Register your trademark with the Patent and Trademark Office
Use an intellectual rights attorney to help you through the registration process. Once you’ve registered, it places you on a more solid ground for defending your trademark against infringements. Keep your registration up to date, renewing whenever your registration expires.
3. Display the trademark registered sign
A small R in a circle of the trademark registered with the Patent and Trademark Office, next to your trademarked item must be used as often as possible. Each display helps to establish your trademark in the marketplace and shows that you’re actively using the trademark. The more people that can see the trademark symbol associated with your trademark item, the easier it is to defend against infringement.
4. Check the already registered Trademarks
Avoid becoming a generic term. Refer to the trademark as a distinctive brand name in any materials you release. Monitor the use of your trademarked brand name by the media using professional monitoring services. Issue corrections to anyone misusing the trademarked brand name, asking that they issue a retraction to avoid having the name slip into generic use.
5. Watch for infringement of your Trademark
Check for your Trademark infringement, especially one that can lead people to confuse your trademarked brand for that of another company’s. Look for similarities in symbols to your trademarked graphics, or in name to your trademarked brand name.
Use a trademark search firm with a monitoring service to help you find possible infringement cases. Pursue infringement fully, using an attorney to legally force the infringing party to cease using the trademarked material. Pursue even smaller infringers, as allowing any use can jeopardize your ability to fight larger infringement claims.
How to defend a Trademark?
To defend your trademark, it is advised to consult a Trademark lawyer, who can help you in the following ways:
- Send a Reply to the legal notice received regarding infringement of Trademark.
- Send a reply to the Infringement case filed by the Trademark owner in civil or criminal court.
- Prepare a case to defend your trademark in the court.
- File a counter-case against the other Trademark owner, to establish that your Trademark was registered before the other Trademark, or to prove that there is no connection in the Classes under which the Trademarks are registered.
You can get connected to the best Trademark lawyers in India through MyAdvo. Email us at info@myadvo.in or call us at +919811782573.
