In the present era of mass production and consumerism, the establishment of a successful trademark depends on innovative packaging, advertising and marketing of goods. Domestic brand owners in India are resorting to novel ways to create their distinct identity and consequently boost consumer recognition of trademarks.
In a recent example, Indian Premier League cricket teams have sought to register their trademarks in various categories and product lines, in order derive value from the popularity of their brand name.
A trademark embodies recognition of a particular source or quality of the goods, which can boost or build the sale and goodwill of a product. Preservation of this commercial value in trademarks involves effective protection of the mark against infringement, passing off, disparagement and dilution by making use of the provisions of the trademark law and common law.
Protection under trademark law
Protecting a trademark involves initiation of civil or criminal remedies against infringement as specified under the Trade Marks Act, 1999, to seek injunctions, damages, delivery of goods or penalty and imprisonment.
Trademark infringement under section 29 of the act is defined as using in the course of trade a trademark that is identical or deceptively similar to a registered trademark, in respect of identical or similar goods, without the licence of the registered user, in a way likely to cause confusion in the minds of consumers.
Use of a registered trademark by another as his trade name or a part of it, in packaging or labelling of goods, on business papers and advertisements, or in disparaging commercials also amounts to infringement.
In cases of well-known trademarks, section 29(4) provides an additional ground that if a trademark has a reputation in India, then the use of an identical or similar mark without due cause, to obtain an unfair advantage, or use that is detrimental to the distinctive character or repute of the registered trademark, also constitutes infringement.
In Aktiebolaget Volvo and Ors v VN Prasad and Anr, the use of a trademark similar to the well-known mark Volvo was injuncted and damages of Rs500,000 (US$10,600) were awarded, in view of the deception practised by the defendants. The court held that the mark was a source identifier, as it stood for the high standards and superior quality of goods manufactured by the plaintiffs and sold all over the world.
Further, in the recent case of Ford Motor Company v CR Borman and Anr, the respondents attempted to register the trademark Ford for footwear, which was opposed by the appellants. Ford was a well-known trademark of the appellants since 1997. It was held that there was infringement, even if the nature of the goods in respect of which the trademark was used were different, since the trademark was being registered with a bad faith intention.
Copying essential features
A trademark may also be infringed by copying its essential features, with the onus of proving such copying on the plaintiff or the trademark owner. The ascertainment of an essential feature depends on both the judgment of the court and the nature of evidence placed before it. As held in SM Dyechem Ltd v Cadbury (India) Ltd, the ascertainment of an essential feature is not to be an ocular test alone; it is also possible to consider the sound of words which form part or whole of the mark.
When the issue of deceptive similarity is in contention, a number of aspects are considered, like the prima facie appearance of the mark, the degree of confusion to suggest a likely association with the earlier mark, the class of consumers who will purchase the product and the possibility of dilution of reputation of the earlier mark. At the same time, protection is granted to an “honest-concurrent user” who may present evidence of use in the form of an invoice or other record.
Protection under common law
Where a mark is not registered, the protection of the property right in the goodwill and reputation of the mark is possible by means of a passing off action, to avoid deception of consumers. Passing off, being a common law remedy, does not cover rights in the trademark per se.
In a passing off action, the plaintiff needs to establish that the mark had acquired goodwill and reputation through prior use; that the defendant’s conduct was calculated to injure such reputation or goodwill; and that the alleged conduct is actually likely to cause such injury. Such a claim is based on the goodwill generated as a result of the psychological aspect of the brand image, which comes through continuous use of the trademark in question.
Abhai Pandey is a lawyer with Lex Orbis IP Practice, a law firm specializing in intellectual property issues.
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