Theft of Intellectual Property in India

Trademark is a form of an intellectual property consisting of an identifiable symbol, pattern and different expression, etc., which recognizes the specific sources of product and services of others. The owner of the Trademark can be an individual, business firms, or any legal organization. A trademark is easily found on a package of the product, a label, a voucher, on the product itself. In general terms, a Trademark is a sign, symbol, word, or image that tells us the source of that product and connects the product with who manufactures them. In simpler terms, it differentiates a product or service from all other competitors of that kind and helps in identifying the source company’s ownership of the brand. In common they can also be called logos. The sign ™ (the trademark symbol) and ® (the registered trademark symbol) is used to show that it is a registered trademarks; the latter is only for use by the owner of a trademark that has been registered. Trademarks may or may not be registered and are denoted by the ® and ™ symbols respectively. Anyone who claims right in the mark can use the TM (Trademark) or SM(Servicemark) to inform the public of their designation. It is not compulsory to have registrations or even pending applications to use these marks. This registration sign, ® may be called a registered Trademark when the mark is registered.

There is a lot of confusion regarding whether a trademark is similar to copyright, patent, and geographical indication. So let’s erase this myth as a trademark is different from all. A copyright protects an original work of art or literature; a patent protects an invention whereas a geographical indication is used to identify goods having special attributes originating from a definite territory.[1]

History of Trademark

There are many sources of origin of trademarks, some say by Europeans, by Egyptians, and by Chinese but we take all this timeline and show that it is the oldest concept which becomes an intellectual property in modern times. The earliest timeline of Trademark we can found in 5000 BC, Ancient Europe which had and still have in Lascaux Caves in southern France marking to place their ownership on the walls.[2] During the same timeline but in a different country in China people used to make pottery which included their Chinese emperor’s name in power. It also showcased the location where pottery was created[3]. In Ancient Egypt, around 600 BC, a trademark identified a product’s origin with unique signs and images were incorporated by craftsmen to show where the particular product originated and who made it. The idea of emblems and symbols as trademarks became popular in medieval Europe[4].

The first legislative Act concerning trademarks was passed in 1266 under the reign of Henry III, which said that every bakery should have to use a unique and free from

deceptive/confusing mark which represents them for the items they sold. The first modern and codified trademark laws enforced in the late 19th century, came into effect in France, and this Act came into force after it was passed into law in 1857. The Trade Marks Act, 1938 of the United Kingdom changed the system completely, allowing for the registration of the word/mark based on “intent-to-use”, creating and testing of intellectual based process, and creating an application for publishing it. This Act, which was helpful as a model for similar legislation, contained other concepts such as “associated trademarks”, a consent to use the system, a defensive mark system, and a non claiming right system and now it has become an intellectual property.

Trademark Laws Origin in India

Before 1940, Trademark laws in India were based on the common law principles which were as equally followed in England before the enactment of the first Registration Act, 1875. The first statutory law of Trademark in India was the TRADE MARKS ACT, 1940 same as the provision of the U.K. Trade Marks Act, 1938.[5] The Trade and Merchandise Marks Act, 1958 enacted was replaced/modified by the Trade Marks Act, 1999 and is the governing law for registered trademarks. The reason for this Act to be enacted was to comply with the provisions of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) which was enacted by the World Trade Organisation (WTO) in 1999. It is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation.

As per the Trade Mark Act, 1999, “Trademark is defined under section 2(zb) of the Trade Marks Act, 1999 as, Trade Mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors. A Trademark may be the inclusion of a word, sign, symbol, expression, device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colors or any such combinations. ”

With the effect of 6th March, 2017, the new trademark rule came into effect. These new rules are intended to make the Trademark registration process hassle-free, simpler, and quicker. Some characteristics of the new rules are as follow:-

Sound marks can be registered.
3D marks can also be registered in the new rules.
e-filing is promoted.
Provisions about the well-known mark.
Separate fees structure for an individual/ startup/ small enterprise and others.
Hearing via video conferencing.
The number of forms has been cut down to 8 from existing around 75 forms.

Types OF Trademarks

There are seven types of Trademarks as per the Trademark Act, 1999:-

Service Mark
Collective Mark
Product Mark
Certification Mark
Shape Mark
Pattern Mark
Sound Mark

Service Marks

A Service Mark is any word, mark, sign, symbol, device, or any inclusion of used or intended to be used in trade to identify and distinguish the services of oneself from others and to show the source of services. It is denoted by ‘SM’.

For example, a company such as Amazon may brand certain products with a trademark, but use a service mark on the internet searching service that it provides. FedEx is a registered courier delivery service provider[6].

Collective Mark

A collective mark is a mark used by members of cooperative organizations, unions or collective groups, or other groups to recognize their source of goods and services. Collective marks are normally used to inform the public about a particular characteristic of the product for which the collective mark is used. They are “Badges of origin” which indicates the specific source of the individual, his/her products, and services.[7]

Example: A lawyer can use the word “Bar Council” device as he is a registered member/bench of the judiciary .

Product Mark

A product mark is the same as a trademark. The difference between both is trademark is for product and services but product mark is for a product not for services.

Example: MUSTANG is a product mark used for a particular automobile that is sold under the FORD house mark.

Certification Mark

The certification mark is used to define that the product is a standard/standardized product. Certification mark defined in a legal term as a mark showing that the goods or services in which it is directly related to the certification by the proprietor of the mark in association with beginning/origin, matter, and in procedure/manner of manufacture of goods, in performance of services, attribute, accuracy, or other features.

Examples: Food products, electrical goods, cosmetics have marks to specify their safety and quality standard, etc.

Shape Mark

As per the Indian Trademark Act, 1999, Trademark may also include the shape of goods, their packaging as a Trademark. Any graphical representation which is able to produce products can register as a shape mark.

Examples: Ornamental Lamps, specially designed bottles of perfume, etc.

Pattern Mark

A Pattern Mark is a trademark wherein the pattern can distinguish products of other brands. This mark consists of a pattern which is able to identify the goods/ services as originating from a particular undertaking. It should have evidence of uniqueness.

Examples: repetitive diamond pattern on the cloth, speaker grill of a musical instrument amplifier.

Sound Mark

Due to the increase in the importance of the role of sound in an advertisement, we immediately came to know about it, and therefore it is regarded as a trademark, a sound logo technically referred to as an audio mnemonic.

Example: the MGM’s roar of a lion etc.[8]

Infringement of Trademark

Trademark Infringement is a breach of the original rights of the trademark holder without taking the license of the trademark from the owner or any authorization from them. Generally, infringement may occur when other parties the ‘infringer’, uses a trademark that is identical or similar[9] to the products or services than the owner may commence legal action against the infringer because an infringement of trademark usually[10], affect in loss of potential customers, finances and reputation of that owner in the market.

Trademark Infringement in India, definition as per section 29 of the Trade Marks Act, 1999, simply put, when an unauthorized/unlicensed usage of a mark by any organisation or person that is “identical” or “deceptively” similar to a registered trademark which is likely to cause some confusion in the mind of people regarding the origin of the goods or services, is an infringement of Trademark.

Elements of Infringement of Trademark in India

Unauthorized Person: When other than the owner or the licensee of registered trademark uses the Trademark.
‘Identical’ or ‘Deceptively similar’: It is a test to compare the difference between the marks whether they are identical or causing some confusion in the mind among the public. If consumers get confused then there is infringement.
Registered Trademark: Infringement only applies to trademark. For an unregistered trademark, the common law concept of passing off will apply.
Goods/Services: To present infringement of goods/services the infringer’s trademark must be identical or similar to goods/services that the registered trademark of the owner represents.

The above element is an example of direct infringement. There is another infringement present in India known as “indirect infringement”.

Indirect Infringement

Indirect infringement is a common law principle which not only holds accountable to direct infringers but also the person who induces them for infringement. Indirect infringement known for secondary liability, has two categories as contributory infringement and vicarious liability.

Under contributory infringement a person will be liable in the following two situations:

When a person knows about the infringement.
When the person materially contributes or allows/induces direct infringers to infringe.

Under vicarious liability a person will be liable in the following circumstances:

When the person has a sound mind and still participates/induces direct infringers for infringement .
When the person gets financial benefits from the trademark infringement.
When the person knows about the infringement and still contributes/induces for doing it.[11]

Rights & Remedies of Trademark Owner

The owner of the registered trademark may issue legal notice for trademark infringement done by the infringer to prevent them for unauthorized use of that trademark, legal proceedings can also be held in an unregistered trademark but an unregistered trademark may be protectable within the geographical area used in or in geographical area it can be reasonably expanded. There are only two main remedies given to the owner in unauthorized using of a trademark by the third party, these remedies are:-

An action for infringement can be done under a registered trademark.
An action for passing off should be done when it is the case of an unregistered trademark.[12]

India, being a common law country, follows not only codified law but also follows common law principles and provides for infringement and also passing off actions against violation of trademark. Section 135 of the Trademarks Act undertakes both these actions. Under both circumstances, the first one is a statutory remedy but the second one is a common law remedy. In an act of infringement or passing off, the court may grant relief of injunction or liquidated damages under loss of business/confiscation/destruction of infringing labels and tags, etc.[13]

What steps an owner/organization should take to stop this Trademark Infringement?

The right owner of the trademark should hire a watch service so they can monitor trademark journals to alert them to any published, deceptive/similar trademarks or descriptive trademarks which may help them to find infringement. It is advisable to the owners of the trademark that along with filing a trademark application in India, they should also make press releases, public cautionary notices and advertise about their marks so that the public, business organization, and other institutions are aware before entering into the market and this protects from third party violation. The holders of the trademark should take immediate steps to be registered in every level domain names in India, as the third party has many ways for registering domains for well-known marks for getting more profits by selling from well-known marks as the consumer doesn’t know the difference between real and reel and they got a chance to use it for maximum and more profits. As when the right holder of that mark knows about the infringement done by a third party then they should take the steps to protect their trademark utilizing filing oppositions, cancellations, conducting investigations, sending cease and desist notice to that infringed party or take civil and criminal actions against them.

Criminal Remedies

An action bought for infringement/ passing off a trademark, a criminal complaint can also be filed under the provisions of the Trademark Act, 1999. The offenses are cognizable, meaning that it is first heard by the police officers by filing an FIR(FIRST INFORMATION REPORT) and arresting him without the warrant directly.

Civil Remedies

Injunction/ stay for using an unauthorized trademark.
Monetary compensation can be claimed.
Accounts and handing over of their profits.
Appointment of a local commissioner by the court which akin to an “Anton Piller Order” means for search, seizure, and taking them in custody/sealing of infringing materials/accounts and preparation of inventory, etc. The application under Order 39, Rules 1 & 2 of the CPC for grant of temporary/ad interim ex-parte injunction.
Restraining the infringer from disposing of or dealing with assets in a manner that may directly affect the plaintiff’s business to recover damages, cost, or pecuniary remedies which may be finally awarded to the plaintiff.[14]

The court may grant an injunction and direct the custom authorities to hold the infringing goods/their shipment or prevent from any manner to protect the rights of owners of their intellectual property. This proposition can be done with/without the involvement of the concerned parties in the suit. The relief which a court may issue usually grants for a permanent or interim injunction, damage or accounts of profits, delivery of the infringing goods for the destruction of goodwill, and cost of legal proceedings.

https://legalreadings.com/cyber-insurance-an-inducement-for-internet-protection/

Most Recent Cases for Trademark Violation in India

In modern days many business firms are coming up and due to raising the Trade Mark infringement in this corporate world in India, there are an unnumbered of cases. Among the most recent and popular organization, cases are:-

“Brilliant Public School Society v. Brilliant Public School (23RD March 2020)”

This appeal arises out of order dated 17.7.2019 by which appellant’s (Brilliant Public School Society) grant for a temporary injunction, Order 39, Rules 1 & 2 read with Section 151 IPC has been rejected. The plaintiff is a society registered under the M.P. Society Registration Act, 1973 and runs a school at Bilaspur, Chhattisgarh whereas the defendant has a school under a trust of B.D. Sah Foundation Trust in Sitamarhi, Bihar.

Both organizations are engaged in the education sector by imparting school education but from different locations. Plaintiff filed suit seeking an injunction against defendant based on infringement of their registered trademark “Brilliant Public School” and also passing off action on pleading, inter alia, the plaintiff in the trade name “Brilliant Public School”. The Plaintiff had established and has been running the school since 2000 and the mark has been registered under the Trade Marks Act. The defendant argued that they(the plaintiff and the defendant) aren’t located in the same place but another and that they have been running the school from a long time since 1995, even before it was named ‘Brilliant Coaching Institute’ and afterwards changed it to ‘Brilliant Public School Sitamarhi’.

After taking aforesaid considerations from appellant and basis of a provision under Sections 28 & 29 of the Trade Marks Act,1999, it was held that this makes the case a case of infringement of trademark where the plaintiff has registered trademark but the defendant has no such trademark been registered in the same name.The Court passed the order in the favour of appellant for application to grant a temporary injunction against the defendant and the defendant was restrained from using the plaintiff’s trademark “Brilliant Public School”. [15]

“Dr. Reddys Laboratories Limited v. Eros International Media Limited (23 March 2021)”

Plaintiff Dr. Reddys Laboratories Limited is a multinational pharmaceutical company engaged in the business of manufacturing, marketing, and distribution of pharmaceutical, nutritional and cosmetic products and has its headquarters located in Hyderabad. It is registered proprietor of the word mark ‘DRL dated 9th February, 2007 in class-05. The plaintiff uses its business with ‘DRL’ mark and uses it for promotion materials, press reports, and other publications. Defendant No.1, Eros International Media Limited is a leading global motion movie production and distribution company incorporated in 1981. It was producing and releasing a movie Haathi Mere Saathi directed by Mr. Prabhu Somo who is the defendant No. 2. Plaintiff seeks an urgent interlocutory injunction to restrain the release of a feature film named ‘Haathi Mere Saathi’ via any media platforms such as cinemas, OTT, etc., It has disparaged Plaintiff’s registered trademark/brand ‘DRL’. In the last week of February, 2020, the plaintiff discovered the defendant media portraying the plaintiff’s wordmark/brand ‘DRL’ in the trailer of the video as a part of the name ‘DRL township ‘

in a derogatory manner. The infringed scene contains the eradication of the organisation named ‘DRL’ for the construction of its ‘DRL Township’. The plaintiff is aggrieved that they have thrown poor light of their mark and harmed their reputation and goodwill with a mala fide purpose.The plaintiff issued notice on 3rd March, 2020 for deletion of the scene but no reply was received and the defendant released the trailer on Youtube on 3rd/4th March, 2021. The p;aintiff filed a suit before the court under Section 29(6) & (8 ) of the Trade Marks Act, 1999. On consideration of the facts and circumstances, the plaintiff had failed to prove a three-pronged test for granting of the injunction. Plaintiff did not have a prima facie case in favor of them and it was held there was no infringement of the trademark of the plaintiff and thus, no injunction was granted on the defendant’s movie.[16]

“Larsen & Toubro Limited v. Radheshyam Singh (17 March 2020)”

This present suit was filed under Sections 134, 135 & 27 of the Trade Marks Act,1999 and Section 51 of the Copyright Act, 1957 for permanent injunction restraining the defendants from infringement & passing off the Trademark, violation of copyright, rendition of accounts, and delivery up and damages, etc. The suit has been filed by the plaintiff nos. 1 & 2, are companies incorporated under the Companies Act, 1956. Plaintiff no.1 is a technology, engineering, construction, and manufacturing company. It is one of the largest and most respected companies in India’s private sector. L&T has an international presence with a global spread of offices. The plaintiff over a while has been using word/mark Larsen & Toubro and L & T as a Trademark about its said goods and business. It uses the mark in various formats/stylized viz Larsen Toubro, L&T, LT, LK, and this mark is duly registered in India under the Trade Mark Act, 1999.

Plaintiff no. 2 is a registered proprietor of Trademark GIC/GIC in class 9 with electrochemical control for electronic goods, products such as analog time, switches, auto reset synchronous timers, and programmable time switches under the Copyright Act, 1957. It is also mentioned on the products that the products are manufactured by plaintiff no.1 and marketed by plaintiff no.2. The defendants( Radheshyam Singh & Pradeep Jain) are engaged in selling, manufacturing, marketing, purveying, supplying, soliciting trade of various analog time switches, electrical and electronics goods, and other allied/related products. To the best of the plaintiff’s knowledge, the defendants are acting collusion and in connivance of each other and started using the trademark viz Larsen & Toubro, Larsen, Toubro, L&T, LT, LK, GIC/GIC to their impugned goods and business in a combination of logo/label form. This mark is giving false trade descriptions, identical and deceptively similar to the plaintiff’s trademark. Due to this activity of defendants, the plaintiffs are suffering huge losses in the business and reputation and all these losses are in monetary terms.

Therefore, the plaintiffs filed this suit against the defendants and the court after considering the facts and arguments from both sides said that, the suit of plaintiffs is decreed to the extent that the defendants, its promoters, proprietors, shareholders, directors, its agents, servants, employees, successors, assignees, licensees, etc., or any other person claiming through under the defendant no.1 is permanently restrained from using the trademarks similar to plaintiff’s similar and deceptively marked. The plaintiff is held entitled to appropriate damages assessed at Rs. 1,00,000/- to be paid by both the defendants jointly and severally.[17]

“ Mankind Pharma v. Novakind Bio Sciences Private Limited (20 April 2021)”

Through this application the Plaintiff sought an interim injunction. The application included temporary injunction restraining the defendant/respondent either through their dealers, distributors, stockiest, agents, associates, employees, servants and assigns infringing and passing off the plaintiff/appellant’s family’s marks with word Kind as a part of their trade name/trademark about medicinal and pharmaceutical preparations. Ex-parte ad-interim orders in terms of prayers (a) to (d) and (f) passed in the favor of the plaintiff and against the defendant. The plaintiff was the fifth largest pharmaceutical company in India and had registered proprietorship of the mark ‘MANKIND’ in all 45 classes with 75 registrations. The grievances in the present suit are that the defendants adopted the mark ‘SEBAKIND’ which came to notice by the plaintiff in September 2020. Prima facie, the suffix “KIND” for its pharmaceutical products was likely to confuse/deceive the public. From the given facts the products of the defendant were pharmaceutical products and thus, justifiable to the plaintiff for ad interim injunction.Till the next date of hearing the defendant is restrained from further manufacturing, either on its behalf or clearing sale in the market, any pharmaceutical product bearing the “KIND” suffix or which may infringe registered trademarks of the plaintiff and re-notify before the court on 17th May 2021.[18]

Conclusion

It can be concluded that due to increase in promotion and competition among several companies new cases and concepts are coming out so this sector is growing speedily and that is why the Indian Trade Mark laws must be updated with coming changes by the different companies and usage of their marks. New amendments may come due to growth of manufacturing and service sector which requires new methods of knowledge to all law pursuers and people.

REFERENCES

[1] Radhika Shukla, Trademark Infringement and Remedies, LegalservicesIndia, available at: http://www.legalservicesindia.com/article/1740/Trademark-Infringement-and-Remedies.html

[2] History of Trademark, Respect for Trademark(WIPO), available at: https://respectfortrademarks.org/tricks-of-the-trademark/history-of-trademarks/

[3] History of Trademarks: Everything You Need to Know, UPCOUNSEL, available at:. https://www.upcounsel.com/history-of-trademarks

[4] Ibid.

[5] Trademark Legislation in India, IPR Law India, available at: https://iprlawindia.org/trademark-legislation/

[6] Tanya Sharma, Types of Trademarks in India, QuickCompany.in, August 30, 2016, available at: https://www.quickcompany.in/articles/types-of-trademark-in-india

[7] Ibid.

[8] Parita M, Types of Trademark in India, Nearlaw.com, January 17, 2018, available at: http://kanoon.nearlaw.com/2018/01/17/types-trademark-india/ .

[9] Chadha & Chadha IP, India: Infringement & Passing off, Mondaq, August 19, 2016, available at: https://www.mondaq.com/india/trademark/520486/infringement-passing-off

[10] Trade Mark Law in India & its Violation, LegalservicesIndia , available at: http://www.legalservicesindia.com/article/307/Trade-Mark-Law-in-India-&-Its-Violation.html

[11] Intepat Team (Intepat IP Services Pvt Ltd), India: Trademark Infringement In India-Direct And Indirect, Mondaq, August 23, 2016, available at: https://www.mondaq.com/india/trademark/521372/trademark-infringement-in-india-direct-and-indirect

[12] Supra note 10.

[13] Supra note 1.

[14] Lionel Aranha, Geographical Indications, Businesslaws, March 8, 2018, available at: https://businesslawfaculty.blogspot.com/2018/03/geographical-indications_8.html

[15] Brilliant Public School Society v. Brilliant Public School, Miscellaneous Application no. 79 of 2019.

[16] Dr. Reddys Laboratories Limited vs Eros International Media Limited, CS(COMM) 126/2021.

[17] Larsen & Toubro Limited vs Radheshyam Singh, CS(Comm) no. 564/19.

[18] Mankind Pharma vs Novakind Bio Sciences Private Limited, CS(COMM) 188/2021.

BY PRANAV VERMA | NAVRACHANA UNIVERSITY