Introduction
Trademarks themselves are highly valuable assets that allow businesses to protect their brands from use by rivals and imitators, but the process of enforcing those trademarks incurs substantial risks both legal and otherwise – that in many cases end up costing businesses a great deal of money even when they are successful, and that may further lead to significant harm to the brand in question. This article reviews the most frequent mistakes that result to trademark infringement and discuss how such missteps endanger a brand. It also outlines on the reasons why doing searches in trademarks are important for introduction of new products or services; this will provide some of the important resource and tools that may be used in search of trademarks that are similar with that of the new products or services. Furthermore, this article will discuss how to effectively protect a trademark and maintain its non-violation, so that there is no infringement on the brand.
It is through the appreciation of the peculiarities of trademark law and the need to keep a close look on the brand that business people can effectively protect the intellectual property. We will also go through how a business entity is able to create and implement a strong trademark plan which involves the steps involved in trademarking, the importance of trademark distinctiveness especially in the market and also how a business is able to conduct trademark checkups from time to time. Finally, precautionary measures as ways to prevent legal issues are discussed, with focus on how trademarks are best to be used in advertising. As this comprehensive guide will demonstrate, today’s business needs to have adequate understanding of the legal ideas governing trademarks and how to safeguard vital brand assets.
Trademarks have assumed very important identity for organizations to help distinguish between their offering and that of rivals in present day business. This is because through the entitlement of the commercial title, a trademark ensures recognition of a brand, client loyalty, and minimization of risk of reputational losses. But understanding the trademark law and its various provisions is not always easy and this is why businesses make these mistakes that bring about trademark infringement. Trademark infringement occurs where a business uses an extremely close imitation of the trademark that has been registered giving rise to litigation challenges, fines, and weakening the brand value. Analyzing such trends it becomes important to ask a question of how trademark infringement can be avoided. This article point outs on identifying the common mistakes that businesses make that cause the trademark infringement and also highlights practical ways on its avoidance. Any startup and any company as well, especially if it is not a brand new one, should know such challenges to ensure the brand’s safety, and to act accordingly to different laws.
Trademark Infringement
Trademark infringement is a state where one firm puts to usage a mark, tag, logo or zeal that is similar to another. This kind of utilization may at times result to a linking between the two brands hence creating confusion to the consumer that may make the owner of the trademark lose on the brands. Trademark under the law is the property of the trademark owner and the owner has the right to use the trademark in business as well as prevent other people from using the same like trademark or a similar trademark likely to prejudice the consumers.
Requirements of Trademark Infringement
As per Section 29 of the Trade Marks Act, 1999, trademark infringement in India can be accounted in the following scenarios:
- Identical Mark: It means that where an unregistered mark taken in the marketplace is similar in sound or duplicated with the registered mark belonging to the same class of goods and services, infringement occurs.
- Confusion to consumers: As established if the mark is unregistered but resembles the infringed mark and is likely to confuse the consumers then it causes infringement.
- Similarity of Mark: Infringement is assumed when the unregistered mark resembles a registered trademark with a recognized reputation among buyers.
- Labeling or Packaging: Where the registered trademark appears on labelling or packaging of unregistered trademark without adequate permission, it is unlawful.
- Advertisement: If the unregistered trademark is used in advertising for the purpose of achieving an advantage which is prejudicial to or against the interest of the registered trademark.
Common Mistakes Leading to Trademark Infringement
Businesses easily fall prey to trademark infringement mainly because of these common pitfalls. Some of these mistakes and how to avoid them are as follows:
1. Lack of Proper Search on Trademark-
A surprising and expensive mistake companies commit is that they do not seek legal advice on the use of trademark searches when selecting a new business name or brand logo or slogan to adopt. Although, it is possible to do a simple search to determine whether the desired name is not taken then once, but this is not enough. A lot of people do not hire a trademark attorney or don’t even search on specialized databases. Trademark clearance does not just involve the matching of name, but it involves a search for marks that appears similar to another mark by sound or meaning. Inability to perform a thorough search may lead to using a brand name that is in conflict with a trademark hence attracting legal claims.
How to Avoid It
• Conducting an advanced search for trademarks in trademark professional databases.
• To enlist the services of a trademark attorney in carrying out the search and for the assessment of the conflicting possibilities.
• By avoiding names or logos that could be confused with other marks in a trade or business.
2. Assumption of acquiring an ownership of domain name grants the Trademark Rights-
Many firms attribute trademark protection the moment they register a domain name. Significantly, having a domain name does not mean having trademark rights. Trademark protection is gained by a registration in a particular trademark office for a certain class of goods or services. Concerning domain names and trademarks, they are different legal problems, and getting a domain similar to a trademark can also be a violation.
How to Avoid It:
• By maintaining separate protection of the domain names and trademarks, thus ensuring both an optimal level of protection.
• By conducting a trademark search before registering the domain name to avoid potential conflicts.
3. Lack of trademark supervision and protection-
The first common error that businesses commit is failure to purposefully watch out marketplaces for perceived trademark. Trademark law does not offer an auto renewal provision and after registering a trademark, it becomes the duty of the owner to take legal proceeding against any infringements. An obvious consequence of permitting other undertakings to use similar trademarks may cause the mark to be less effective and thus ineffective or even diluted.
How to Avoid It:
• Creating trademark watch services that notifies the trademark owner(s), when new trademarks that impend on their rights are filed.
• Periodically monitoring of the internet and market places for any violation of the trademark.
• In order to pursue legal steps in case of an infringement with or without legal actions like sending letters of demand or filing a law suit.
4. Lack of knowledge of importance to the use of trademark classes-
Taking trademark registration, it is necessary to point the classes of goods or services which would be associated with the trademark. It is common to find companies making a mistake of either underestimating or overestimating the number of products or services they should offer. The problem with using a very narrow description is that there are often loopholes that the trademark violators can easily exploit when engaging in infringement of the trademark in other classes. On the other hand, registering an organization too broadly can be time consuming as well as costly.
How to Avoid It:
• Seeking the assistance of the trademark attorney on the classification that will best suit the business.
• To list out all current offered goods and services and the ones planned to extend in future in the registration.
• To always check current and active trademark to make sure they match the new business model.
5. Using the Elements from Competitor’s Brand-
Having pressed by many competitors to gain a brand name, some of the companies develop a habit of copying designs, logos or taglines from other companies assuming that small changes are enough to branch out which causes serious mistake. It means that even a small change in a registered trademark can produce confusion which is a key consideration in most trademark infringement cases.
How to Avoid It:
• Development of a completely new brand image that will be significantly different from that of rivals.
• Non-creation of images or hues that depict the look of well-known brands.
• Working with a designer or consultation with branding agency to create unique and non-infringing trademark.
Consequences and Remedies of Trademark Infringement-
The consequence of trademark infringement is extremely severe and can cost a company a great deal of money, not to mention lawyers fees and a tarnished reputation. Some of the legal repercussions and remedies include:
- Civil Remedies:
- Cease-and-Desist Orders: The infringing party may be solely required to refrain from the use of the mark and this will force the side which loses the case to alter its brand.
- Monetary Damages: Courts may also award to grant an amount to the owner of the trademark for the actual losses which the owner has suffered due to the infringement.
- Destruction of goods: It is normal for the courts to order to destroy the infringing mark and the goods having the mark.
- Injunctions: The court may also award a temporary or permanent injunction that will restrain the infringing party from using the mark in the future.
- Criminal Remedies:
- Imprisonment: The infringer faces a jail term of not less than six months; the maximum term is three years.
- Fine: If the infringer fails to comply with the law, can be fined for a minimum of rupees fifty thousand to a maximum rupees of two lakhs.
- Administrative remedies:
- opposition for similar to mark;
- Persons involved in: registration of a mark; registration of a collective mark; registration of a certification mark; rectification of the register; and.
- surrender with Customs in order to avoid the admission of goods embodying the infringed trademark for importation or exportation.
Exceptions to the Infringement of Trademark-
The law established under Section 30 of the Trademarks Act, 1999, provides conditions that cannot be considered as the infringement of a trademark. Such conditions can be utilized by the infringer for defences in suits for infringement of trademark and thus to escape from any liability. These conditions include:
1. Where any person uses a trademark in good faith and in the bona fide course of trade in industrial or commercial activities.
2. When such use is not to take unfair advantage of the trademark or appears to be misuse of the mark threatening the qualities that makes a trademark a specialty mark or threatens its good reputation.
3. Where any trademark is used with the object of referring to the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or rendering of service or any other characteristics of the goods or services.
4. In some cases the alleged infringement falls under certain categories where certain conditions and limitations are imposed, then it cannot be considered to be a case of infringement of trademarks.
5. If the infringed use of a trademark is in continuance of the use for which protection was originally granted to the proprietor who had not removed or obliterated it, by use of the trademark, then the use cannot be termed as an infringement.
6. The use of the trademark in relation to parts and accessories does not amount to infringement of trademark.
7. Application by different parties of marks which are either identical or at least similar.
Conclusion
Trademark infringement is one of the biggest legal concerns that are both expensive and time-consuming to the business. Thorough trademark search, hiring a trademark attorney and asserting the rights are the effective ways to protect the identity of the brand.
- References-
1. https://cleartax.in/s/trademark-infringement-india
2. https://www.uspto.gov/page/about-trademark-infringement
4. https://blog.ipleaders.in/what-is-infringement-of-trademark/