Trademarks Risks

By, Vintee Mishra Brain League IP Services

© 2009 Brain League IP Services Pvt. Ltd

RISKS INFRINGEMENT PASSING OFF SUIT FOR THREAT OF LEGAL PROCEEDINGS

AND TRADE LIBEL

A FEW DAYS BACK ONE OF OUR CLIENT CAME TO US WITH SOME QUESTIONS RELATING TO RISKS AND REMEDIES RELATING TO TRADEMARKS…

INFRINGEMENT

A NEW OUTFIT HAS TURNED UP IN OUR LOCALITY. THEY'RE IN THE SAME LINE OF BUSINESS AS US AND HAVE STARTED TRADING; THEY'VE ALREADY STOLEN ONE PIECE OF WORK FROM US AS A RESULT OF USING A LOGO THE SAME AS OURS IN A RECENT PROMOTION! IT'S TAKEN US YEARS TO BUILD UP OUR REPUTATION! CAN THEY DO THIS? WHAT CAN WE DO TO STOP THEM?

WHAT CONSTITUTES INFRINGEMENT IDENTICAL OR DECEPTIVELY SIMILAR

MARKS COVERED GOODS AND SERVICES USE OF MARK IN COURSE OF TRADE USE OF MARK IN MANNER OF TRADE MARK PERMITTED USER MAGIC V MAGIX FOR FANS

INFRINGEMENT CONTI…

WE HAVE REGISTERED OUR LOGO AND NAME AS TRADE MARKS! IN FACT, THEIRS’ TRADEMARK ISN'T EXACTLY THE SAME AS OUR SIGN. IT'S SORT OF SIMILAR. AND TO BE FRANK, AT THE MOMENT I'M NOT ENTIRELY SURE WHAT IT IS THEY'RE DOING OR SELLING. BUT IT SEEMS IT IS AT LEAST SIMILAR.

INFRINGEMENT CONTI… IDENTICAL MARK - SIMILAR GOODS AND SERVICES MATRIX V MATRIX FOR MOUSE AND KEYBOARD SIMILAR MARK – IDENTICAL OR SIMILAR GOODS AND SERVICES MAGIC V MAZIX FOR FANS IDENTICAL MARK – IDENTICAL GOODS AND SERVICES MATRIX V MATRIX FOR COMPUTERS LIKELIHOOD OF CONFUSION/ASSOCIATION WITH TRADEMARK

NEW HOPE FOOD INDUSTRIES V. PIONEER BAKERIES NEW HOPE - CONFECTIONARY ITEMS AND BAKERY PRODUCTS TRADE NAMES AND MARKS “MILKA” AND “MILKA WONDER CAKE” PIONEER-SAME BUSINESS TRADEMARK “MILKA” INFRINGEMENT? YES

TEST OF INFRINGEMENT DECEPTIVE SIMILARITY 2 IDENTICAL TRADEMARKS –INFRINGEMENT NOT IDENTICAL – RESEMBLE-CAUSE CONFUSION ONUS – PLAINTIFF PURCHASERS LIKELY TO DECEIVE COMPARE ESSENTIAL FEATURES MARK AS A WHOLE RESEMBLACE – PHONETIC OR VISUAL XEROX V ZERRROGZZ

MEDILINE HEALTH CARE PVT. LTD. V. SHRI PAWAN KUMAR VARSHNEY, TRADING AS SALAKA PHARMA CARE PVT. LTD APPLICANT’S TRADE MARK ‘ANTIFLAM’ RESPONDENT TRADE MARK ‘NT FLEM’ PHARMA PRODUCTS INFRINGEMENT? YES THE COURT HELD SINCE THE GOODS ARE SAME, RIVAL MARKS PHONETICALLY SIMILAR AND RESPONDENT SUBSEQUENT USER, THEREFORE HELD INFRINGEMENT

INFRINGEMENT CONTI… CAN THERE BE ANY OTHER WAYS BY

WHICH WE CAN PROVE INFRINGEMENT BY THE NEW OUTFIT THAT HAS TURNED UP IN OUR LOCALITY ?

INFRINGEMENT CONTI… DILUTION

MARK IDENTICAL OR SIMILAR –TRADEMARK ® GOODS AND SERVICES NOT SIMILAR TRADEMARK ® - REPUTATION IN INDIA USE WITHOUT DUE CAUSE USE- UNFAIR ADVANTAGE, DETRIMENTAL TO DISTINCTIVE CHARACTER AND REPUTE – TRADEMARK ® BARVEE FOR DOLLS – EARLIER MARK V BARWE FOR BAR AND RESTAURANTS

MEANING OF REPUTATION SUFFICIENT KNOWLEDGE OF EARLIER MARK EXIST TO

MAKE ASSOCIATION KNOWN TO SIGNIFICANT PART OF PUBLIC SUFFICIENT TO BE KNOWN IN ONE AREA CONSIDER MARKET SHARE, GEOGRAPHICAL EXTENT, DURATION OF USE AND SIZE OF INVESTMENT

ROLEX SA V. ALEX JEWELLERY “ROLEX” REGISTERED FOR WATCHES IN AROUND THE WORLD INCLUDING INDIA. DEFENDANT ALSO STARTS SELLING JEWELLERY UNDER THE NAME OF “ROLEX” IN INDIA. DILUTION? YES HELD USE WITHOUT DUE CAUSE AND DEFENDANT TAKING UNFAIR ADVANTAGE OF PLAINTIFF’S BUSINESS WHICH WAS DETRIMENTAL TO ITS DISTINCTIVE CHARACTER AND REPUTE

INFRINGEMENT CONTI… USE TRADEMARK ® AS-

TRADE NAME OR PART OF IT NAME OF BUSINESS OR PART OF IT SAME CLASS OF GOODS AND SERVICES AFFIX TO GOODS OR PACKAGE EX-IM GOODS UNDER THE MARK BUSINESS PAPER OR ADVERTISING OFFER FOR SALE OR ACTUAL SALE, MARKETS, STOCKS GOODS

AND SERVICES APPLIED TO MATERIAL FOR PACKAGING OR LABELLING COMPARATIVE ADVERTISEMENT - DISPARAGEMENT

INFRINGEMENT BY ADVERTISING COMPARATIVE ADVERTISING

DECLARE OWN GOODS AS BEST DECLARE OWN GOODS BETTER THAN OTHERS, EVEN IF UNTRUE COMPARE ADVANTAGES OF OWN GOODS WITH OTHERS NOT SLANDER OR DEFAME DISPARAGEMENT

FALSE OR MISLEADING STATEMENT STATEMENT CAPABLE OF DECEPTION DECEPTION INFLUENCE PURCHASING DECISION

IS THIS COMPARATIVE ADVERTISEMENT?

LOCALITY OF INFRINGEMENT TERRITORIAL RIGHT TRADE MAY NOT OVERLAP USE OF OFFENDING MARK - MUST IN INDIA IMPORT FOR RE-EXPORT SUFFICIENT USE USE OF OFFENDING MARK – IN COURSE OF

TRADE

ACTS NOT CONSTITUTING INFRINGEMENT HONEST PRACTICES EG – LIVTEC V LIVDEE NO UNFAIR ADVANTAGE DETRIMENTAL TO

DISTINCTIVE CHARACTER OR REPUTE. EG – COMPARATIVE ADVERTISEMENT DESCRIPTIVENESS. EG – COOLAIR FOR AIR

CONDITIONERS

ACTS NOT CONSTITUTING INFRINGEMENT USAGE SUBJECT TO CONDITIONS AND

LIMITATIONS RESALE OF GOODS OR SUPPLY OF SERVICES

ON WHICH MARK APPLIED AND NOT REMOVED EG – PARALLEL IMPORTATION

ACTS NOT CONSTITUTING INFRINGEMENT

USE ON PARTS OR ACCESSORIES EG – CAR AND

CAR ACCESSORIES

LAWFUL ACQUISITION OF GOODS WITH

TRADEMARK

MCDONALDS V MCCURRY MCDONALDS -RIGHT CLAIMED OVER THE WORD “MC” SIMILAR SERVICES- BOTH IN RESTAURANT BUSINESS MCCURRY - “MC” / “MAC” IS A COMMON NAME OF A PERSON, USED COMMONLY IN BUSINESS ACROSS VARIOUS DOMAINS INFRINGEMENT? NO COURT HELD HONEST PRACTICE. NOT TAKING UNFAIR ADVANTAGE.

DEFENCES NO TITLE TO SUE INVALID REGISTRATION OF TRADEMARK ACT DOES NOT CONSTITUTE

INFRINGEMENT CONCURRENT REGISTRATION PRIOR USER INNOCENT INFRINGEMENT LONG DELAY, LACHES AND ACQUIESCENCE

PASSING OFF GOOD THING WE REGISTERED THOSE TRADE MARKS THEN. WE'VE JUST STARTED USING A NEW ONE TOO – IF WE DON’T GET THAT REGISTERED AS WELL THE NEW OUTFIT WILL BE FREE TO USE IT , WE GUESS. IS THIS SO?

GENERAL PRINCIPLES MISREPRESENTATION COURSE OF TRADE PROSPECTIVE AND ULTIMATE CONSUMERS INJURIOUS TO BUSINESS OR GOODWILL ACTUAL DAMAGE TO BUSINESS OR

GOODWILL

ELEMENTS OF PASSING OFF GOODWILL OR REPUTATION DEPENDS ON NATURE OF GOODS, QUANTUM OF SALES, EXTENT OF ADVERTISEMENT, AREA OF USAGE DECEPTION

DEPENDS ON NATURE AND EXTENT OF REPUTATION, FIELDS OF ACTIVITY, SIMILARITY OF MARK, CONSUMERS LIKELY TO RECEIVE DAMAGE TO GOODWILL OR REPUTATION

ACTUAL OR PROBABLE DIVERSION OF SALES, INJURIOUS ASSOCIATION, MISAPPROPRIATION OF BUSINESS REPUTATION

HONDA MOTORS V. CHARANJIT SINGH PLAINTIFF - “HONDA” FOR MOTORS DEFENDANT – “HONDA” FOR PRESSURE COOKERS. PASSING OFF? YES COURT HELD SUCH USE OF TRADEMARK “HONDA” IS CREATING DECEPTION OR CONFUSION IN THE MINDS OF THE PUBLIC AT LARGE AND SUCH CONFUSION IS CAUSING DAMAGE OR INJURY TO THE BUSINESS, REPUTATION, GOODWILL AND FAIR NAME OF THE PLAINTIFF.

MEANS ADOPTED FOR PASSING OFF DIRECT FALSE REPRESENTATION ADOPTION OF OR COLORABLE IMITATION OF

SAME TRADEMARK ADOPTION OF COMPLETE OR ESSENTIAL PART OF RIVAL TRADER’S NAME – DUNKIN DONUT V DUNKEN TYRE

IMITATING DESIGN OR SHAPE OF GOODS

COPYING OF GET UP OR COLOUR SCHEME

DEFENCES NON DISTINCTIVENESS DELAY, LACHES, ACQUIESCENCE,

MISREPRESENTATION OF FACTS OR FRAUDULENT TRADE GOODS AND BUSINESSES TOTALLY DIFFERENT BONAFIDE USE ISOLATED INSTANCE

THREAT OF LEGAL POCEEDINGS AND TRADE LIBEL ONE OF MY BRIGHT-EYED ASSISTANTS HAS HAD THE IDEA OF GOING OFF AND BUYING STUFF FROM THEM UNDER COVER - TO GATHER EVIDENCE. AFTER DOING SO, CAN WE TELL THEM THAT WE'RE SUING!

THREAT OF LEGAL POCEEDINGS AND TRADE LIBEL THREAT LIBEL SUIT MAY BE FILED ONLY FOR THREAT FOR INFRINGEMENT OF REGISTERED MARK

REMEDIES

BUT WHAT RECOMPENSE CAN WE GET OUT OF THEM EVENTUALLY? AND DO WE HAVE TO GO TO COURT?

REMEDIES CONTI… CIVIL – INJUNCTION, DAMAGE, PROFIT CRIMINAL – IMPRISONMENT,FINE, BOTH ADMINISTRATIVE – ANTON PILLAR ORDER,

MAREVA INJUNCTION

OFFENCES FALSIFYING TRADEMARK FALSELY APPLYING A TRADEMARK MAKING OR POSSESSING INSTRUMENTS FOR FALSIFYING TRADEMARK APPLYING FALSE TRADE DESCRIPTION APPLYING FALSE INDICATION OF COUNTRY OF ORIGIN TAMPERING WITH AN INDICATION OF ORIGIN CAUSING ANY OF ABOVE

OFFENCES CONTINUED SELLING GOODS OR POSSESSING OR EXPOSING

FOR SALE OF GOODS FALSELY MARKED REMOVING PIECEGOODS FALSELY REPRESENTING TRADEMARK AS REGISTERED IMPROPERLY DESCRIBING PLACE OF BUSINESS AS CONNECTED WITH TRADEMARK OFFICE FALSIFICATION OF ENTERIES IN REGISTER

THANK YOU