Report On – Trademark Infringement

Submitted To – Dr. Soumya Prakash Patra

Submitted By
Animesh Raj – MBA/1305/07
Introduction

Unauthorized use of a trademark or service mark on or in connection with products and/or

services in such a way as to cause confusion, deceit, or misunderstanding regarding the source of
the goods and/or services is known as trademark infringement.
With the rising tide of awareness about intellectual property, the number of trademarks registered
in India is steadily expanding. Infringing on a registered trademark can result in a wide range of
legal ramifications and punishment. As a result, it is critical for entrepreneurs to be informed of
India's intellectual property laws in order to prevent infringing on the trademarks of others and to
protect their own.

"Trademark infringement" is defined in Section 29 of the Trade Marks Act as:

1. A person who, not being a registered proprietor (owner of trademark can also be a legal entit
y like LLP or Company or Trust, etc.,) or a person using by way of permitted use, uses in the
course of trade a mark that is identical to, or deceptively similar to, the trademark in relation t
o goods or services in respect of which the trademark is registered and in such a manner that
renders the use of the mark likely to be taken as being infringing, infringes the trademark.
2. A person who, without being a registered proprietor or a person employing by means of
allowed usage, uses a mark in the course of business infringes on a registered trademark
because of:
a) Its likeness to the products or services covered by the registered brand and its
identification with the registered trademark; or
b) Its resemblance to a registered trademark, as well as the identity or likeness of the
products or services protected by such brand; or
c) Its resemblance to the registered brand, as well as the identity or likeness of the products
or services covered by the registered trademark; or
d) Its link with the registered trademark, as well as the identity of the products or services
covered by the registered trademark, is likely to cause public misunderstanding, or it is
likely to be associated with the registered brand.
2. The Court shall infer that any matter falling under clause (c) of sub-section 2 (the above-
mentioned provision) is likely to generate public misunderstanding.
4. A person who is not a registered proprietor or a person utilising by means of allowed usage
infringes on a registered trademark by using it in the course of business, a mark which:
a) resembles or is identical to the registered brand; and
b) Is used to products or services that are not identical to those for which the trademark has
been registered; and
c) The registered trademark has a reputation in India, and its use without justification takes
unfair advantage of or harms the registered brand's unique character or repute.
5. A person infringes on a registered trademark if he uses it as his trade name or a portion of his
trade name, or as the name of his business concern or a part of the name of his business
concern dealing in the products or services for which the trademark is registered.
6. A person uses a registered mark for the purposes of this section if, among other things, he:
a) attaches it to commodities or their packaging;
b) using the registered trademark, sells or exposes items for sale, puts them on the market,
or stocks them for those purposes, or provides or supplies services under the registered
name;
c) imports or exports products without permission;
d) or advertises using the registered brand on business papers.
7. A person who applies a registered trademark to a material intended to be used for labelling or
packaging goods, as business paper, or for advertising goods or services infringes the mark if
the person knew or had reason to believe that the application of the mark was not duly
authorised by the proprietor or a licensee at the time he applied the mark.
8. Any advertising of a registered brand infringes on that trademark if that advertising;
a) in industrial or commercial concerns, takes undue advantage of and is counter to honest
procedures; or
b) is harmful to its unique personality; or
c) is in violation of the trademark's repute.
9. When the distinctive characteristics of a registered trademark consist of or incorporate words,
the trademark may be infringed by both spoken and visual representations of those words,
and references to the use of a mark in this section should be interpreted accordingly.

What will happen if someone files a trademark infringement lawsuit against anyone?

Depending on the circumstances, a trademark owner who feels his or her mark is being infringed
upon may bring a civil action (i.e., lawsuit) in either state or federal court for trademark
infringement. In most situations, however, trademark owners prefer to suit in federal court for
infringement. Even if a plaintiff opts for state court, the defendant may be able to have the case
"removed" to federal court.
If the trademark owner can show infringement, the remedies may be offered.

1. Injunction (subject to the terms, if any, as the Court sees fit) and, at the plaintiff's option,
damages or an account of profits, with or without an order for the delivery-up of the
infringing labels and marks for destruction or erasure, are among the remedies that a Court
may grant in any suit for infringement or passing off referred to in Section 134.
2. Any of the following things may be the subject of an ex parte injunction or any interlocutory
order issued under subsection (1):
a) for document discovery;
b) safeguarding infringing items, records, or other evidence connected to the lawsuit's
subject-matter;
c) preventing the defendant from disposing of or dealing with his assets in a way that might
jeopardise the plaintiff's capacity to recover damages, costs, or any monetary remedies
that may be awarded to the plaintiff in the future.
3. In any circumstance, notwithstanding everything in subsection (1), the Court shall not give
relief in the form of damages (other than nominal damages) or profits:
a) if the infringement in question is a certification trademark or a collective mark; or if the
infringement in question is a certification trademark or a collective mark.
b) If the defendant satisfied the Court in an infringement suit:
i. that he was unaware and had no reasonable grounds to believe that the plaintiff's
trademark was on the register or that the plaintiff was a registered user using by
way of allowed use when he began to use the trademark complained of in the
litigation; and
ii. that he immediately stopped to use the trademark in relation to the goods or services
for which it was registered after becoming aware of the existence and nature of the
plaintiff's trademark right; or
c) where the defendant satisfied the Court in a complaint for passing off:
i. that he was unaware and had no reasonable grounds to believe that the plaintiff's
trademark was in use at the time he began using the trademark complained of in the
litigation; and
ii. that as soon as he learned of the plaintiff's trademark's existence and nature, he
immediately stopped using the trademark in question.

How can I tell if I'm infringing?

A plaintiff must show that it owns a valid mark, that it has priority (its rights in the mark(s) are
"senior" to the defendant's), and that the defendant's mark is likely to cause consumer confusion
about the source or sponsorship of the goods or services offered under the parties' marks to
support a trademark infringement claim in court. There is a legal presumption of the mark's
validity and ownership, as well as the exclusive right to use the mark nationally on or in
connection with the products or services indicated in the registration, when a plaintiff has a
federal trademark registration on the Principal Register. These presumptions can be refuted in
court.
In general, the court will evaluate information addressing a variety of criteria in order to establish
if there is a risk of consumer misunderstanding. The degree of resemblance between the marks at
issue, as well as whether the parties' products and/or services are sufficiently linked that
customers are likely to believe (mistakenly) that they derive from a common source, are the main
considerations evaluated in most situations. Other factors that courts typically consider are how
and where the parties' goods or services are advertised, marketed, and sold; the purchasing
conditions; the range of potential purchasers of the goods or services; whether there is any
evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in
adopting its mark; and the plaintiff's mark's strength.
The criteria examined in determining the likelihood of misunderstanding, as well as the
weighting of those elements, differ from case to case. And the amount and quality of evidence
used in an infringement case can have a big influence on the outcome.
A trademark owner may also claim trademark "dilution," claiming that it owns a well-known
mark and that the use of your mark weakens or tarnishes the trademark owner's mark by
"blurring" the mark's distinctiveness or "tarnishing" its image by associating it with something
distasteful or objectionable—even if there is no likelihood of confusion.
A competent trademark attorney should be able to give you with an opinion on the legality and
strength of a trademark owner's claims, taking into account the specific circumstances of your
case.

Deceptively Similar Trademarks – Starbucks Vs SardarBuksh Case

Issue:
Whether the Sardarbuksh and Starbucks trademarks are deceptively similar phonetically
or aesthetically.
Starbucks filed a lawsuit accusing Sardarbuksh of duplicating their company name and logo,
which is too similar to their renowned 2-tailed mermaid, as well as illegally promoting their
product.
Sardarbuksh has five coffee shops in Delhi that serve a variety of coffee, shakes, and snacks.
They were accused of stealing a similar name and emblem from the multinational Starbucks
coffee brand in the United States.

Background:

Starbucks filed their trademark in India in 2001, which included a word mark (STARBUCKS)
and a logo featuring a "crowned maiden with long hair." The defendants named their company
"Sardarbuksh Coffee & Co" in 2015, where "Sardar" is a Hindi term that means "Commander"
and "Buksh" is a Hindi word that means "Pardon." The defendants founded a private limited
company called "Sardar Buksh Private Limited" in May 2018 and have been doing business
under that name ever since. Both the plaintiff and the defendant provide the same goods and
services. The defendants employed a logo that included a circular black band with the words
'SARDARBUKSH COFFEE & CO.' and a turban Commander with wavy lines extending from
the borders, as well as a turban Commander.
Starbucks sent a letter of demand to the defendants in 2017 requesting that they modify their
emblem. It was also changed to a black and yellow colour scheme, and business activities began
with the new logo.
Starbucks eventually launched a lawsuit against Sardarbuksh in the Hon'ble Delhi High Court
(hence "the Court"). The deceptively similar analogy, which is taken from Section 2(1)(h) read in
Section 11 of The Trademarks Act, 1999, stipulates that when two marks are placed near to each
other and cause confusion or mislead the viewers, they are deceptively similar and cannot be
registered.

Observations:
Various standards have been established by courts to prove the deceptively similar similarity,
such as the test of probability and confusion, goodwill, and so on, according to past judgements.
It was held in the case of National Sewing Thread Co. Ltd. vs. James Chadwick and Bros AIR
1953 SC 357 that "the question of deceptively similar can only be settled by stepping into the
shoes of the customer, who is regarded to be a man of average ability." If a buyer's identification
of two brands leads them to be confused, it's fair to state they're deceptively similar."
Furthermore, the fact that both parties engage in the same type of business and provide the same
services to their clients plays a significant influence. It was held in the case of M/s Nandhini
Delux v. M/s Karnataka Co-operative Milk Producers Federation Ltd. CIVIL APPEAL NO.
2943-2944 OF 2018 that the trademarks 'NANDINI and NANDHINI' will be considered non-
infringing due to differences in the variety of products traded and differences in the visuals of
both companies.
Aside from the legal implications of this issue, the plaintiff's economic situation would be
complicated by the marks' misleading similarity. Starbucks is a well-known global brand that has
built up a strong reputation through time. In this case, it may be claimed that the defendant was
aware of Starbucks' global reputation and desired to capitalise on it in order to get market
attention quickly.

Result:

The Court ruled in favour of Starbucks on August 1, 2018, and also ordered the defendants to
change their store name from "Sardarbuksh Coffee & Co." to "Sardarji-Bakhsh Coffee & Co."
The 20 shops that are yet to open were handed the modification order. The court also granted
permission to use the name "Sardarbuksh Coffee & Co." for the two outlets that were previously
open.
On September 27, 2018, the defendant additionally agreed to alter the name of all of its locations
to "Sardarji-Bakhsh Coffee & Co." Furthermore, it was clarified and ruled that if a third party
uses the term "Bakhsh," the defendant has the right to file a lawsuit against that person. On such
terms, the case was resolved.