Trademark Enforcement

Trademark Enforcement In India
(Price Start at $ 96 /-)

Trademark registration confers statutory and exclusive rights upon the owner to use the mark, and among these crucial rights is the ability to safeguard the mark against any unlawful or unauthorized use. As a result, the trademark owner possesses the right to enforce both statutory and common law rights in the mark by initiating legal proceedings against any party engaging in such use.

Such a right of enforcement arises as part of the rights conferred under the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) to the statutory owner of a trademark. As a result, when an infringement of the registered mark occurs, the trademark owner can enforce their exclusive right of use and exercise statutory remedies to restrain a third party from unauthorized use of their proprietary trademark.

Best practices for enforcement of trademark rights

For effectively ensuring that trademark rights are adequately protected and enforced in instances of infringement and passing off, or otherwise, trademark the following pointers can be followed by trademark owners:

  • Continuous Monitoring to proactively keep an eye out for any similar or identical marks that may be applied for by third-parties, via public search or otherwise, so that the opposition proceedings/cancellation action can be initiated against any marks of concern;
  • Monitoring of the Market to check for any unauthorized use of ones trademark so as to quickly seek civil or criminal remedies against the same;
  • Maintenance of Documents relating to use of ones trademark (and associated reputation and goodwill) and keeping the registration of the same up to date with renewals, among others.

Strategies for Trademark Enforcement

Step 1: Cease and Desist Notice - Most commonly, the first step of enforcement of trademark rights in a case of infringement or passing off is to consult a competent counsel to prepare and issue a cease-and-desist letter to the infringing party. The purpose of issuing a cease-and-desist letter is inter-alia to:

  • Inform the infringing party of the proprietor’s existing trademark application(s)/registration(s) and prior rights thereto;
  • Inform the infringing party that their conduct is infringing on the proprietor’s rights.
  • Ask them to cease and desist from continuing to infringe from such infringing actions.

If such a notice fails to rectify the wrongful and illegal conduct of the party, the registered proprietor of the trademark can resort to legal actions.

Step 2: Remedies- The Act provides for several statutory remedies to a trademark owner for enforcement of rights to exclusive use of its trademark, such as:

Civil Remedies

Under Section 134 of the Act, in cases of infringement or passing off, a civil suit can be initiated against the defaulting party before a competent court. The relief obtained by a trademark owner, in such a suit, can be any of the following, or a combination of the same-

  • Injunction: An order of injunction may be passed by the court directing the infringing party to put an end to its unlawful/unauthorized use of the trademark;
  • Damages: The court may order the infringing party to pay monetary compensation to by way of damages for loss of goodwill and reputation or injury caused by its actions;
  • Account of profits: The court may grant the same in cases where the infringing party has gained unlawful profits due to its wrongful acts.

Criminal Remedies

A trademark owner can opt for to enforce their statutory rights in their registered trademark by seeking recourse under Sections 103 and 104 of the Act. These provisions set out thereunder provide that an infringing party that is found to be making unauthorized use of a registered trademark for the sale of products/services can be punished by imprisonment or monetary fine or both. Pursuant to the recourse provided in the Act, a trademark owner can also obtain an order from a competent court directing for the search and seizure of counterfeit and infringing goods.

Administrative Remedies

A trademark owner can also opt to exercise the following administrative or procedural remedies before the Indian Trade Marks Registry:

  • Opposition action, wherein the owner can oppose an application for any infringing mark within four months from the date of the advertisement of the infringing mark in the trademark journal and seek for the application to be refused inter alia based on the absolute and relative grounds outlined in the Act;
  • Rectification action, wherein the owner can initiate an action for rectification, removal or cancellation of an infringing trademark registration. This avenue can be effective when the party claiming this remedy can evidence that an infringing trademark has been registered wrongfully and erroneously included in the trademark register, and is liable to be removed from the same on the basis of the party’s prior rights in a pre-existing similar or identical mark etc.

Step 3: Mediation/Settlement- A trademark owner can to resolve trademark related disputes by way of mediation and settlement arrangement between involved parties.

Step 4: Customs Recordal- In order to ensure additional safeguarding of the registered trademark, the same can be registered with the Indian customs authority. Thereafter, the authority will take appropriate measures to stop any goods bearing the infringing trademark from being imported or exported, by keeping an eye out for such goods, and seizing them if found to be counterfeits.

Step 5: Follow Up & Compliance- Once any of the above methods of enforcement, in whichever way chosen, are completed, it is imperative to ensure and confirm that the infringing party actually complies with the result of such proceedings and all infringing/passing off activities are halted.

How can we help you?

We at Seedling Associates excel in crafting and implementing comprehensive trademark enforcement strategies and provide assistance to clients at every stage. Our team regularly and proactively monitors the market and conducts public searches, to ensure vigilance of the highest form to help maintain the exclusivity of your mark. We formulate effective strategies to deal with any marks that subsequently come into being, and can adeptly handle any opposition, rectification, and litigation proceedings as and when such assistance is required. Upholding your mark and its exclusivity will be our utmost concern, and any and all challenges to the same will be identified and removed meticulously.

Most common question about our services

When can trademark rights be enforced?

Enforcement of trademark and associated rights can be done in either of the following situations:

  • Registered Mark: Once the mark is registered, the registered owner of the mark acquires statutory rights thereto and can enforce such trademark rights in instances of infringement and/or passing off
  • Unregistered Mark: If the mark is unregistered but holds goodwill and reputation and the owner/user of the mark has priority rights thereto by virtue of continuous use of such mark in the course of trade, the owner rights in the mark are protected under common law, and such rights can be enforced in cases of passing off – even if the trademark that is alleged to be passing off has been duly registered.

What is Trademark Infringement?

Trademark infringement is where a party uses a mark that is either deceptively similar or identical to a registered mark in respect of goods/services without having authorization to do so.

What is Passing Off?

There is a recognition under the Act concerning suits claiming relief for passing off, which is a common law concept that can be used to enforce rights in unregistered trademarks and protects the goodwill attached thereto. Common law rights in a mark can be enforced by the user of a mark by demonstrating the following:

  • Goodwill of their mark;
  • Misrepresentation/unauthorized use of the mark by a defaulting party that can lead to confusion amongst consumers;
  • Damage thus caused.

Why is it advisable to conduct third-party trademark searches after registration of the mark?

It is advisable to conduct regular searches after registration of the mark to identify any applications that have been filed for a mark that is deceptively similar or identical to your mark. This helps in promptly identifying threats to the exclusivity and distinctiveness of your mark and opposing such marks as and when the same are advertised in the official journal of trademarks.

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