Trademark Infringement lawsuit in India

 

In India Trademarks are protected by Trademark Act, 1999. The act describes the rules and penalties relating to trademark infringement and legal action that can be taken against those infringers. In India Trademark infringement is a cognizable offense which means that the offender can face both criminal as well as civil prosecution. 

In case civil suit is filed on account of trademark infringement, the court may undertake to award the following remedies-

• Temporary injunction

• Permanent injunction

• Damages

• Account of profit (damages equivalent to the profits earned from the infringement)

• Destruction of goods bearing the unauthorized trademark

• Cost of legal proceedings

In case criminal suit is filed against the infringer, the court may take following action against him-

• Court may impose an imprisonment for a period not less than six months that may extend upto three years.

• A court may impose a fine of a sum not less than  50,000 which may extend to 2 Lakh rupees.

Landmark Trademark Infringement suits

Following are the landmark Trademark infringement suits in India-

Zara: Fashion or Food

The plaintiff is the well known brand having existence all over the world, while the defendant is a restaurant operating in a lone Indian city. In this case Delhi High court restricted the defendant person from using the trade name of the plaintiffs as it was creating confusion amongst the minds of customers and Delhi High court had also imposed cost on Defendants.

Eclairs: Cadbury Vs ITC

Cadbury has registered its three brand names i.e. chocolate excarirs, orange flavoured chocolate eclairs and chocolate eclairs pop in the year 1972 but have never used that name since then. After a decade ITC won the suit because of the non use of the mark by cadbury.

London Dairy Vs. Londonderry

Plaintiffs are the seller of premium flavoured ice creams whereas defendants sell the inexpensive confectionary items. Phonetically these brands sound similar to the customers. You must be thinking that since these brands sound similar therefore infringement suit can be imposed against the defendant, but Bombay High Court is of the different opinion that however the names are similar but there is no similarity between the two in terms of goods and services, description etc. The court observed that “there is no law that says a single test of pronunciation will be sufficient to overcome all other points of differentiation”. 

The HC’s order held that there were no visual or structural similarities between the products, and, for the want of demonstration of deceit, misrepresentation or similarities in colour, trade dress, goods, and pricing, sided with the defendant (Londonderry).

Bata Vs Bata

In the year 1980, the shoemaker attempted to block a company selling foam materials from using the same brand name. 

The court in this case Bata the shoemaker won the case as the foam maker named Bata was creating confusion in the minds of the public and therefore restricted the use of the name by the court.

Paypal Vs Paytm

In the year 2016 Paypal filed an infringement case against Paytm. Both the businesses carry the same business and target the same market. In India Paytm is immensely popular, everyone including cab drivers to retailers use Paytm.Paypal’s popularity in India is limited to ebay shoppers, forex investors, crypto enthusiasts, and IT software professionals who transact with the global world regularly. 

Paym has been accused of stealing Paypal’s logo in order to expand its own user base. In their trademark infringement lawsuit with the Indian trademark office, the US-based e-wallet alleges that PayTM had no other reason to utilize the same two-tone colour scheme as PayPal’s. 

As the case is still ongoing, the final decision may take several years. The court’s verdict will surely be an interesting one.

Conclusion

Thesperts in BIAT legal LLP can get your trademark registered in no time. Protest your brand identity from infringement without breaking the bank. Get in touch with us today.