Unfortunately, disclaimers are very hard to implement and there is little possibility that using a disclaimer will eliminate likelihood of confusion. This holds true regardless of whether there is actual sale of the goods or . This case was indeed remarkable for it made it clear that awareness and knowledge is important before proceeding with a suit. With the confusion of a brand-name MAAZA being passed off from the plaintiffs company to that of the defendants, brought in the solution to the case. Moreover, the mark holder may also be compensated to account for any profits that the infringer made using the mark. Registration of trademark confers the right on the owner to sue for infringement of the trademark. One of the most important trademark infringement remedies provided by the Lanham Act is the right of seizure and destruction of infringing items. These often make the process of coming to a decision easier for the courts. To count as infringement, the products or services must also be identical or similar to those registered under the trademark. . Following this, the other factors that are looked into are the marketing skills, advertisement techniques, the intention of the defendant in embracing the mark, the purchasing skills of goods and services among the consumers and so on. 2. Trademarked content may include a brand name, logo, jingle, or other distinguishing material. Plaintiffs can also seek temporary restraining orders (TROs) in order to end infringement prior to a preliminary injunction hearing. 1127 (a). Remedies are a measure for infringement of both the registered & unregistered brand names. The court inferred that the defendant is liable for infringement due to usage of trademark beyond the permissible extent and as a result it issued an interim injunction against the defendant. . On this ground the court quashed the suit thereby allowing the defendant to carry on. Even when the consumer is aware that a product/service is copycat but he/she is going for that product because of the similar appearance and fake brand value attached to the product ( and copycat products are available at a cheaper price, unavailability of the original product during that period or any other convenience), it will amount to trademark infringement. An optic mark in the form of words, colors, numbers, symbols that represents any goods or services is what a trademark symbolises. This can be achieved through an apology in advertisements or by giving a statement which brings back the faith of the public in the company or business whose trademark was infringed. This is an exhaustive article which deals with remedies available for any kind of infringement associated with trademarks along with judgements which simplify the same. The remedies for trademark infringement are a bit more harsh than dilution. These are some reasons marks can be refused, but it's not limited to this list. There are two types of remedy available in case of Infringement of Trademark. If a defendant fails to abide by an order or meet certain deadlines, the plaintiff is successful by default. Criminal remedies The Trademarks Act 1999 is the primary statute governing Indian trademarks . While recovering these actual damages is a possibility, it can be very difficult, as damage to the reputation of a business is hard to prove. Second, the court will examine if the plaintiff has experienced irreparable harm. Nigeria: Trademark Infringement In Nigeria And Legal Remedies. Trademark infringement leads to confusion, deception, or a misunderstanding about the actual company from where a product or service came. Civil remedies available in case of trademark infringement are as under: The action of an injunction means stopping one person from doing a particular activity or task by the due process of law (judicial proceedings). Registered trademark means a distinctive mark or symbol i.e. In the case of trademark infringement, it prohibits the individual from using the trademark without permission. In trademark infringement cases, monetary damages are a form of legal remedy that can be sought by an injured plaintiff. of the Act talks about penalties that need to be provided as a sanction against an infringement. The plaintiff has the option to initiate any one or both of the proceedings against the defendant. There are fewer trademark infringement remedies available to common law trademark owners, but thanks to state and federal unfair competition laws, the possibility for financial compensation still exists. Although injunctions are the most common trademark infringement remedy issued, reasonable royalties are also a regular occurrence. An infringement that was willful may qualify. You have entered an incorrect email address! But knowing the same, the plaintiff carried on their activity till one fine day they filed the suit. The following are the most frequently granted forms of financial awards issued by courts. defendant willfulness, proof of economic harm). If you believe the infringer may file a lawsuit upon receipt of a cease and desist letter, then we recommend filing a trademark lawsuit prior to sending such a notice. It is rare that anything other than an injunction is placed on the defendant. Loss of reputability can create harms that last even in the absence of continued infringement. The court may also ask the infringer to deliver all the goods or products which are labelled with the trademark in question before a court of law. However, it is important to note that if intentional dilution takes place, similar remedies to trademark infringement may be required to pay by the plaintiff. Criminal penalties are also available. Since trademark infringement is a continuing offence, there is no limit on the time period for filing a suit. What Is the Common Ground for Trademark Application Refusal? Damages can be claimed by the aggrieved party on grounds that the exclusive right of using the trademark he owns has been ceased and this subsequently has led to him or his enterprise suffering losses. Section 27(2) of the Trademark Act, 1999 does provide for remedies for unregistered trademarks. For a consumer, a trademark reflects the source and quality of the goods or services. Plaintiffs who are awarded compensation based on actual damages typically receive more than reasonable royalties. Thus, together the term means an unsanctioned usage of a trademark that eventually will arise hesitancy and doubt about the origin of the concerned goods or services. The owner of registered trademark in the State of New York has the following remedies in the event that another individual is infringing on a registered mark (Section 360-m, Article 24 of General Business Law): File an injunction against the infringer in order to halt the infringing activities. 2. If such a situation arises, interrogations are carried out by the examiner upon the trademark registration. Legal provisions governing trademarks come with the objective of safeguarding the prominence and benevolence of any entity or an individual owning the trademark thereby protecting the consumers from fraudulent activities related to goods and services of the entity. Requiring that the defendant add a disclaimer whenever they use an infringing mark is another type of possible injunctive relief. A seizure order will be carried out by the U.S. To prove infringement, the owner of the trademark only needs to show that the infringing material is identical or deceptively similar. Trademark infringement is the unauthorized taking away that goodwill to convey and fraudulently claim a trademark. The owner of a trademark has exclusive rights to the marked goods or services, but only in the country where the mark is registered. Trademark infringement is to be regarded as an attack on the goodwill and brand value of the company. Infringement can only be said if a trademark is registered and there cannot be any action against unregistered trademarks infringement generally (common law tort of passing off is an exception). This is the only proof required. Ltd, the Delhi High Court was firm with the fact that if there exists any amount of infringement, then the courts jurisdiction is likely to be present in order to entertain the concerned suit. In the former case, it acts as an action to initiate the proceedings of infringement in a court of law while in the latter case, it helps in passing off the infringement to the hands of common law. Methods of Infringement under the Trade Marks Act 1994 Published Date: March 16, 2022. If the infringed mark was federally registered, attorneys fees would also be available to a successful plaintiff. If the term trademark infringement is broken into two halves with the meaning of trademark already known, what remains is infringement, which signifies violation or contravention. The court of competent jurisdiction can give the following remedies [3] if the infringements are successfully proved: Injunction/stay against the use of trade mark; Appropriate Damages; Handing over of accounts and profits; On this ground the court quashed the suit thereby allowing the defendant to carry on. Do you need legal help with pursuing trademark infringement remedies. While a defendant who loses a trademark infringement case may have to pay the plaintiff's legal expenses, he or she may also turn profits over to the plaintiff or cover any damages the plaintiff experienced as a result of the unauthorized use. In the case of a temporary injunction, a specified time frame comes into the consideration which in this case will be till the court passes its final orders regarding the matter. Unauthorized use of a trademark is basically violating someone's legal rights provided to them under the state's intellectual property framework. The court may direct such local commissions to destroy infringing material wholly. This mark helps customers know that a particular product or service is affiliated with a certain company or person. . The following factors are considered when making this judgment: These are known as the Sleekcraft factors, and courts in California and other western states use them when deciding whether a likelihood of confusion exists. Anyone who states that they have rights in the mark can use the TM (or trademark) or SM (or service mark) symbol to let the public know of their claim. If willfulness is not required, when is seeking actual damages preferable to seeking an award of the infringer's wrongful . document.getElementById( "ak_js_1" ).setAttribute( "value", ( new Date() ).getTime() ); Congratulations! With respect to trademark infringement, it is restraining a person from unauthorised use of the trademark. . Marshals, and it can involve any product, advertising medium or other item that features a misused trademark. Direct infringement of a trademark includes producing, selling (attempting to sell), or importing a product by using an already registered trademark in an unauthorized manner or by the person who does not have the authorization of using it. Further, it was the plaintiff who filed a permanent injunction, thereby claiming losses suffered by the company. Trademark infringement is infringing on rights by using a common law or registered trademark without permission. Copyrights apply to artistic or literary works and grant the authors of that content exclusive rights, such as the right to publicly perform a specific work. Limitation Period 2. Thus, the owner of an unregistered mark can't act against infringement. It's also not mandatory to register a mark in certain countries. This can range from $1,000 to $200,000 for every type of good or service thats been sold, distributed or listed for sale. Costs That Can Be Recovered for Trademark Infringement 4. The remedies discussed below are the ones which are adopted according to the facts and circumstances of the case in hand. This claim is known as the claim of dilution. The two kinds of injunction that can be granted are perpetual and temporary injunction. of the Trade Marks Act, 1999. 3. 3/902, Shaktikunj apartments, Sector 62-B, NOIDA, What is the difference between Passing off and Infringement. Both Civil and Criminal remedies are available for trademark infringement/ misuse or trademark passing off action in India. Using a trademark for packaging or labelling of products is a prima facie act of unauthorized use. For questions related to trademark infringement remedies, please contact us today. LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. The original owner of the trademark that has been harmed by its misuse will be the plaintiff. is the provision that talks about infringement of trademarks. Section 2 (z) (b) of The Trade Marks Act, 1999 defines a trademark as under: Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours 1. The court may also order that the infringing party make reparations for any damage made to the owner's business reputation. Remedies for Trademark Infringement The following are common trademark infringement remedies: Injunctive Relief; Destruction or Forfeiture; Monetary Damages; Reasonable Royalties; Actual Damages; Corrective Advertising; Defendant's Profits; Statutory Damages; Treble Damages; and Attorneys Fees and Court Costs. Remedies Available for Trademark Infringement. 3. Compensation does not always have to mean an award of money . One of the most important, though, is the establishment of an evidentiary trail. 3. Fourth, the court will decide if there is a public interest in granting an injunction. In the matter of trademark infringement, it is a restriction on a person from unauthorized use of the trademark. Owner of Trademark Two kinds of owner: registered owner and unregistered owner. Criminal remedies include minimum imprisonment for six months and maximum of three years and fines ranging between 50,000 to two lakh rupees for falsifying and falsely applying for a trademark When to send a legal notice for trademark infringement? Exclusive Right The owner of the trademark has exclusive right to use that trademark. If a trademark has been violated and the same pertains to services, an order may be made to stop the violation from providing the services right away. The most obvious thing the court takes into notice is the degree of similarity between the two marks in conflict. Under the Lanham Act, there are several statutory remedies for trademark infringement, including: Accounting for profits and damages Injunctive relief Treble damages in certain circumstances Attorney's fees and costs Courts do not always consider the last three factors. At times when civil remedies do not succeed in fulfilling the loss of the plaintiff, the court resorts to civil remedies. 2. https://www.britannica.com/topic/damages-law, Ritik Kumar hails from Aligarh Muslim University and spends most of his leisure time watching documentaries and playing tennis. Unlike patent, registration of trademark is not necessary. A civil remedy that is often claimed is handling of the profit accounts along with a command for delivery or removal of the products that have been infringed. Trademark Infringement Shantanu 4th Yr. NLU, Odisha. The two kinds of injunction that can be granted are perpetual and temporary injunction. This makes it important to understand every trademark infringement remedy at your disposal. The point behind this remedy is to help plaintiffs dispel any confusion and correct damage caused by the infringement. Not all trademark owners will be entitled to every type of damage, and the eventual award can vary significantly based on a multitude of factors (e.g. There are a variety of trademark infringement remedies that qualify as monetary compensation. The civil remedies for Trademark infringement in India are as follows- Injunction Injunction can be referred as prohibition of one person from doing specific activity or task through the judicial proceedings. This includes prior licensing agreements, expert opinions, special value to the infringer and more. No need to spend hours finding a lawyer, post a job and get custom quotes from experienced lawyers instantly. Hire the top business lawyers and save up to 60% on legal fees. When a trademark is used by the person who is not authorized to use it and such use in any manner gives him some profit (either monetary or favour in the market), it will amount to trademark infringement. In this post, we describe remedies for trademark infringement and . A patent protects an invention, and a geographical indication specifies that a good or service came from a certain territory. This is the most common form of monetary damages awarded. However, there are some exceptions as to what counts as infringement: One of the most common types of trademark infringement is when a person uses a symbol or a design that it is too similar to protected material. If you win a trademark infringement lawsuit, the following remedies may be available: Prevention of the defendant from using the trademark Recovery of the defendant's profits that resulted from the infringement Mark, logo, slogan etc., used shall be identical to the original trademark to constitute trademark infringement. Courts will calculate a value thats seen as reasonable for a trademark license. When a famous trademark is diluted, the most common remedy is injunction. Weekly Competition Week 1 December 2019, Weekly Competition Week 2 December 2019, Weekly Competition Week 3 December 2019, Weekly Competition Week 4 December 2019, Weekly Competition Week 1 November 2019, Weekly Competition Week 2 November 2019, Weekly Competition Week 3 November 2019, Weekly Competition Week 4 November 2019, Weekly Competition Week 2 October 2019, Weekly Competition Week 3 October 2019, Weekly Competition Week 4 October 2019, Weekly Competition Week 3 September 2019, Weekly Competition Week 4 September 2019, Protection of Kids from Cybercrimes: Role of Technology Contracts, Trade Unions Act, 1926 : a comprehensive analysis. 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