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Trademark Infringement

The number of trademarks registered in India is increasing day by day with the rising wave of awareness about intellectual property. Infringing on a registered trademark can have a lot of legal consequences and liability. Hence, its important for Entrepreneurs to be aware of intellectual property regulations in India to avoid infringing on someone else trademark and to protect trademark belonging to him or her.
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What Is Trademark Infringement?

Trademark infringement happens when someone uses a trademark or a similar mark without permission from the owner. This use is likely to confuse consumers about where the goods or services come from. It goes against the owner’s exclusive rights to use the mark in business.

There are two different types of Trademark Infringement, and you can check the same below:

Benefits of Trademark Infringement

Following are the benefits of Trademark Infringement:-

Unauthorized Use:

This includes any use of the trademark without the owner's permission, even if it's not on the same products or services.

Confusingly Similar:

The infringing mark doesn't have to be identical to the original, but it should be close enough to confuse consumers.

Likelihood of Confusion:

This is the key factor in determining infringement. Courts will consider factors like the similarity of the marks, the types of goods or services involved, and the target audience to decide whether consumers are likely to be misled.

Consequences:

Trademark infringement can lead to legal action, including:
Injunctions: Orders to stop using the infringing mark.
Monetary damages: Compensation for the trademark owner's losses and the infringer's profits.
Attorney's fees: Covering the trademark owner's legal expenses.
Criminal penalties: In some cases, especially for willful counterfeiting.

Documents

Trademark Registration Certificate:

Proof of ownership of the trademark.

Evidence of Infringement:

Examples include.

  • Copies of infringing products or advertisements
  • Witness testimony
  • Expert opinions

Statement of Damages:

An estimate of the financial harm caused by the infringement.

Power of Attorney:

If a lawyer is representing the trademark owner.

Court Filing Fees:

Fees required to initiate the lawsuit.

Procedure of Filing Suit for Trademark Infringement

Gather Evidence:

Collect documents, photos, samples, or other evidence that demonstrates the infringement.

Cease and Desist Letter:

Send a formal letter to the infringer demanding they stop using the trademark. This can sometimes resolve the issue without litigation.

Consult an Attorney:

Consult with an experienced trademark attorney for help. They can evaluate the strength of your case and help you plan your legal actions.

Choose Jurisdiction:

Decide which court to sue, usually based on where the infringement happened or where the infringer does business.

File a Complaint:

You need to create and submit a formal complaint. This complaint should explain the infringement, state the specific allegations, and request the remedies you want.

Serve the Complaint:

Deliver the complaint to the infringer, officially notifying them of the lawsuit.

Discovery:

Exchange evidence with the opposing party through a process called discovery.

Pre-Trial Motions:

File motions to dismiss, summary judgment, or other preliminary matters.

Choose Jurisdiction:

Decide which court to sue, usually based on where the infringement happened or where the infringer does business.

Trial:

Present evidence and arguments before a judge or jury, who will decide the outcome of the case.

Judgment:

The court issues a final decision, potentially awarding damages, injunctions, or other remedies.

FAQ's on Trademark Infringement

The jurisdiction where you file depends on various factors, like the location of the infringer, where the infringement occurred, and the specific rules of your country. Consult an attorney for guidance on the proper court for your case.
You can search national trademark databases, often available online from your country’s intellectual property office. Services like USPTO (US) or TESS (EU) can help you check international registrations.
Register your trademark with the relevant authority. Be vigilant and monitor for potential infringement. Consult an attorney for legal advice and action if necessary.
It can be hard to prove a trademark infringement. Therefore, it’s well worth taking advice from an intellectual property lawyer to check the merit of your claim and the risk of being exposed to paying the other side’s costs if you lose the case.
If you’re considering bringing a trademark infringement claim, be aware that one of the common responses from the defendant is to counterclaim that your trademark should be cancelled or revoked.
They may argue that your trademark needs to be more descriptive or misleading or hasn’t been often used in the last five years (which would make it liable to cancellation). Another defence to trademark infringement is that the infringing mark had pre-existing rights to the mark, and your application shouldn’t have been approved.