Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999. To put it in a similar way it is a situation when an unauthorized person uses a trademark that is ‘identical’ or ‘deceptively similar’ to a registered trademark, it is known as infringement.
There are two kinds of Trademark Infringement
1. Direct Infringement
2. Indirect Infringement
Any unauthorized use of the exclusive statutory rights of a registered trademark constitutes infringement. It is a kind of infringement which is prima facia applicable under Section 29 of Trademark Act, 2019 and constituent below mentioned elements of Infringement of trademark:
1. Unauthorized person – this means a person who is not the owner or the licensee of the registered trademark.
2. ‘Identical’ or ‘Deceptively similar ‘– the test for determining whether marks are identical or not is by determining whether there is a chance for a likelihood of confusion among the public. If the consumers are likely to get confused between the two marks then there is an infringement.
3. Registered Trademark – You can only infringe a registered trademark. For an unregistered Trademark, the common law concept of passing off will apply.
4. Goods/ Services – In order to establish infringement even the goods/ services of the infringer must be identical with or similar to the goods that the registered Trademark represents.
Indirect infringement is a common law principle that holds accountable not only the direct infringers but also the people who induce the direct infringers to commit the infringement. Indirect infringement is also known as secondary liability has two categories: contributory infringement and vicarious liability.
A person will be liable for contributory infringement in two circumstances:
1. When a person knows of the infringement
2. When a person materially contributes or induces the direct infringer to commit the infringement.
A person will be vicariously liable under the following circumstances:
1.When the person has the ability to control the actions of the direct infringer.
2.When a person derives a financial benefit from the infringement.
3.When a person has knowledge of the infringement and contributes to it.
Vicarious liability usually applies in the case of employer-employee relationships and the like. This finds indirect mention in section 114 of the Trademarks Act. According to this section, if a company commits an offence under Act then every person who is responsible for the company will be liable. Except a person who acted in good faith and without knowledge of the infringement.
On the whole, indirect infringement occurs when a person, though not infringing directly, causes another person to infringe on a trademark. With the growth in the e-commerce industry liability for indirect infringement is extremely important as holds every involved person accountable.
Thus, whether direct or indirect, any form of trademark infringement in India can attract liability. To avoid infringement of trademarks, you contact our trademark experts to get a consultation before launching your brand or product.
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