A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. A trademark is different from a copyright or a patent or geographical indication.The main purpose of a trademark is to help people recognize the source of a particular good or service. The source, in turn, helps people determine the quality. Quality is what consumers usually base their purchase decisions on. This is why a trademark is of extreme importance in the economy. For the consumer, a trademark reflects the source and quality of the goods or services.
This is also why it is very important to ensure that your trademark is not being infringed upon. A trademark represents the brand value of the trademark owner. Infringement of trademark usually, causes a loss of finances and goodwill to the owner of the infringed mark. It is always better to be vigilant and prevent potential infringers from riding on the goodwill and reputation that you established.
What does Infringement of Trademark mean?
Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999. Simply put, when an unauthorized person uses a trademark that is ‘identical’ or ‘deceptively similar’ to a registered trademark, it is known as infringement.
Now, let us take a look at the constituent 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.
Any unauthorized use of the exclusive statutory rights of a registered trademark constitutes infringement.
The infringement explained above is direct infringement. There is another aspect to trademark infringement in India, i.e. indirect infringement.
What is Indirect Infringement of a Trademark?
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.
Remedy for Trademark Infringement
A Court may grant relief for trademark infringement or for passing off (eg: counterfeit goods). Trademark infringement relief can be provided through an injunction, damages or an account of profits, together with or without any order for the deliver-up of the infringing labels and marks for destruction or erasure.
Section 135 of the Trade Marks Act mentions the following relief for trademark infringement:
- The relief which a Court may grant in any suit for infringement or for passing off referred to in Section 134 includes injunction (subject to the terms, if any, as the Court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up to the infringing labels and marks for destruction or erasure.
- The order of injunction under sub-section (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:
- for discovery of documents;
- preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;
- restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
- Notwithstanding anything contained in sub-section(1), the Court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case:
- where in suit for infringement of a trademark, the infringement complained of is in relation to a certification trademark or collective mark; or
- where in suit for infringement the defendant satisfied the Court:
- that at the time he commenced to use the trademark complained of in the suit, he was unaware and had no reasonable ground for believing that the trademark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and
- that when he became aware of the existence and nature of the plaintiff’s right in the trademark, he forthwith ceased to use the trademark in relation to the goods or services in respect of which it was registered; or
- where in suit for passing off, the defendant satisfied the Court:
- that at the time he commenced to use the trademark complained of in the suit he was unaware and had no reasonable ground for believing that the trademark of the plaintiff was in use; and
- that when he became aware of the existence and nature of the plaintiff’s trademark he forthwith ceased to use the trademark complained of.
When you file an application for Trademark Registration, then there are two possibilities. Either your request for the proposed Trademark will be accepted, or it will get rejected. There are several reasons for trademark objection in India.
According to Section 9 of the Trade Marks Act, 1999, the trademark officer can either accept the application or raise an objection against it on one or several grounds.
Therefore, before you apply for trademark registration, you must ensure that your application is complete and that you have filed your application appropriately.
Hence, to save you from trademark objection, we have listed top reasons due to which the trademark application stands objected by the trademark officer.
What is Trademark Objection?
Trademark Objection is the preliminary stage in the trademark (TM) registration process where the trademark examiner raises an objection against the trademark application due to a number of reasons.
The applicant gets an opportunity to prove how his/her Trademark fits the criteria for availing the valid registration. It is called the trademark objection reply.
Mainly, there are two crucial reasons on which the trademark examiner objects to the application. They are- a) either the applicant is incomplete or contains wrong information, or b) similar Trademark exists.
However, there are multiple other grounds on which an objection is raised. We have described all of them later in this blog.
Various Reasons for Trademark Objection in India
If the applicant violates any of the Trade Marks Rules, then the examiner holds the complete authority to object to the filed application through an examination report.
A trademark objection could take place due to the various reasons as follows:
1. Incorrect Name of the Trademark Applicant
The trademark applicant must mention his name correctly in the TM application. In case he hasn’t done so, the trademark examiner will raise an objection to his application.
One can reply to the objection or overcome it by filing a trademark form TM-16.
2. Incorrect Address on the Trademark Application
If the applicant mentions the incorrect address of the principal place of business, or if he doesn’t mention the address, then the examiner will raise the objection against it.
The applicant can correct this objection by filing a request in the TM-16 form.
3. Failure in filing Trademark Form TM-48
If the Trademark Attorney or Trademark Agent file the trademark application on behalf of the applicant, then the applicant must attach the TM-48 form. In the case, the trademark registry doesn’t find form TM-48 attached, or if it is incorrectly executed, then the examiner could raise the objection.
Hence, if the applicant wants to rectify the objection, he/she needs to file form TM-16.
4. Filing of Incorrect Trademark Form
If you have not made the trademark application on the appropriate form, then the TM examiner holds the authority to object to the filed application. Moreover, the objection will read as follows:
“The application is made on TM-1 form, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16.”
Hence, the applicant needs to overcome this objection by filing a correct trademark form by making a request on form TM-16.
5. Trademark filing under the Wrong Trademark Class
One of the most important things to consider while filing a trademark application is to choose the right trademark class. However, if you have chosen the wrong trademark class, then your application will get rejected. Further, the status of your trademark class will stand as ‘Objected.’
Therefore, you must verify that the trademark class you have chosen is correct. If you are applying for a Trademark for your services, then you must choose the service class, i.e., from 35 to 45. However, if you want a trademark class for goods, then you must choose from trademark class 1 to 34.
6. The proposed Trademark already exists
If the proposed Trademark already exists, then the TM officer will not approve it and raise the objection.
In such cases, the applicant needs to submit a reply to the trademark examination report. In the response, he must state that the cited Trademark as a conflicting mark in the examination report is entirely different from the applicant’s Trademark.
Furthermore, the applicant must provide supporting evidence to the same.
7. Trademark lacks distinctive character
The proposed Trademark must distinguish the products or services of one person from those of others. In case it contradicts with another person’s, then his application will stand objected. Hence, your Trademark lacks distinctive character.
In order to rectify this objection under absolute grounds for refusal, the applicant has to submit evidence regarding the mark that it consists of a distinctive character by virtue of its proper use.
8. Vague specifications of Goods and Services
At the time of the trademark application filing, one needs to be very specific. However, in the case you have specified the goods and services casually, which contains a huge variety of the same, then the TM examiner will raise the objection against the same.
To overcome this objection, the applicant must file TM-16 and request for a change in the original form.
9. Deceptive Trademark
The trademark examiner can raise an objection against the Trademark if the latter founds that the proposed Trademark is deceiving the public by any means such as through its nature, use, quality or geographical origin of the products or services.
One can overcome the objection of the deceptive Trademark by filing TM-16 Form.
10. User affidavit not attached
A User Affidavit is a crucial document that a trademark applicant needs to submit to the Trademark Registry. The affidavit helps applicants to claim any prior date of the usage to their Trademark.
If the applicant is using the Trademark prior to filing an application, then he/she must furnish it.
However, if the applicant doesn’t submit it, then the registry will create an Objection on the Trademark as it is an obligatory document for claiming the date of prior use.