Infringement, Remedies

& Defense in Trademark

Biruj Adhikari Kshetri
B.A.LL.B. 6th Semester, Roll 16
 • Trademark law is an essential aspect of intellectual
property (IP) law that protects distinctive signs, such
as logos, names, phrases, symbols, or designs used to
identify and distinguish goods or services in the
marketplace. Trademarks play a vital role in
establishing brand identity and reputation, enabling
Introduction: consumers to recognize and associate products or
Trademark services with a particular source.
• To obtain trademark protection, an individual or
business must register their mark with the relevant
intellectual property office, such as the United States
Patent and Trademark Office (USPTO) in the United
States or the European Union Intellectual Property
Office (EUIPO) in the European Union. 2
 • Infringement : action of breaking the terms of a law,
agreement, etc.; violation.

• Trademark infringement occurs when someone uses a

trademark, such as a brand name, logo, or slogan,
Infringement in
without authorization from the trademark owner. This
Trademark unauthorized use can cause confusion among
consumers or dilute the distinctiveness of the
trademark. Trademark infringement is a violation of
intellectual property rights and is typically addressed
through legal means.

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 To establish a claim of trademark infringement, the trademark owner
must typically demonstrate the following elements:
1. Validity of the trademark: The trademark must be registered with
the relevant trademark office or have acquired sufficient common
law rights through extensive use in commerce.
2. Ownership of the trademark: The claimant must show that they
Infringement in own the trademark or have the exclusive right to use it.
Trademark 3. Likelihood of confusion: The unauthorized use of the trademark
must create a likelihood of confusion among consumers regarding
the source or affiliation of the goods or services.
4. Use in commerce: The infringing use of the trademark must occur
in connection with the sale, advertising, or promotion of goods or
services.

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 If a trademark owner believes their trademark is being infringed upon, they
can take the following steps:
1.Cease and desist letter: The trademark owner can send a cease and desist
letter to the infringing party, requesting them to stop using the trademark
and potentially seek damages or other remedies.
2.Negotiation or settlement: The parties involved may engage in
Infringement in negotiations or settlement discussions to resolve the dispute without
Trademark resorting to litigation.
3.Legal action: If a resolution cannot be reached through negotiation, the
trademark owner can file a lawsuit against the infringing party in a court of
law. The court may issue injunctions to stop the infringement, order the
infringer to pay damages, and require the infringing party to cease using
the trademark.

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Example of
Infringement in
Trademark

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 Generally, the following remedies may be sought by the trademark
owner:
1. Injunction: A court may issue an injunction, which is a court order
that prohibits the infringing party from further use of the trademark.
Remedies 2. Damages: The trademark owner may be entitled to monetary
compensation for the damages they have suffered as a result of the
infringement.
3. Destruction or seizure of infringing goods: In certain situations, the
court may order the infringing party to destroy or hand over the
infringing products or materials that bear the unauthorized trademark.

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 4. Corrective advertising or disclosures: In some cases, the court may
order the infringing party to publish corrective advertisements or
disclose the fact that their products or services are not associated with
the trademark owner.
5. Account of profits: The trademark owner may be entitled to a share
Remedies of the profits that the infringing party has gained through the
unauthorized use of the trademark
6. In some jurisdictions, the trademark owner may also be able to
recover legal costs and attorney fees associated with enforcing their
rights against the infringing party.

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 1. Fair use: The accused party may argue that their use of the trademark
falls under the doctrine of fair use, which allows for the use of a trademark
for descriptive or informational purposes. Fair use typically applies when
the use is non-commercial, uses the trademark in a descriptive manner, or
constitutes commentary, criticism, or parody.
2. Descriptive use: If the accused party can demonstrate that their use of the
trademark is merely descriptive of their goods or services and not likely to
Defense cause confusion, it may be a valid defense. Descriptive use refers to the use
of a term that describes the characteristics, qualities, or attributes of the
goods or services being offered.
3. Prior use: If the accused party can establish that they used the trademark
in question before the alleged trademark owner and can demonstrate
continuous use in commerce, they may have a defense. Prior use may
provide a valid claim to ownership of the trademark or establish the
accused party's rights in a particular geographic area.

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 4. Consent: If the accused party can show that they obtained consent or a
license from the trademark owner to use the trademark, it may serve as a
defense. Consent can be in the form of an explicit agreement, implied
permission, or a valid licensing arrangement.
Defense
5. Non-infringing use: The accused party may argue that their use of the
trademark does not meet the elements required for infringement. They may
demonstrate that there is no likelihood of confusion between their goods or
services and those of the trademark owner.

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 1.Infringement of Trade Mark Section 16 (2):
Infringement of the registered trademark is defined under section 16 ( 2 ) of the
PDT Act. Unauthorized use of registered trademark is infringement. No one is
National allowed to use the registered trademark without transfer or written authorization of
the trademark owner.
Instruments
Patent, Design & 2.Remedies in Trade Mark Infringement: (Section
Trademark Act, 19)
2022 The infringers of unauthorized use of registered trademark under section 16 (2 ),
section 18 (3) and section 18 b will be fined up to Rs. One Lakh including seizure
of trademark related materials. The parties disagreed over the final decision of
the Department can make an appeal to the concerned High Court within 35 days of
the decision under section 27.

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 3.Defense in Trade Mark Infringement:
Though the Patent Design and Trademark Act 1965 of Nepal does not
explicitly mention about trademark infringement defense , the trademark
infringement is not punishable in following conditions:
1. Descriptive Fair Use : Under the descriptive fair use doctrine
another’s trademark is permitted to describe the user’s products or
National service rather than as a trademark source, for example a trademark
Instruments “inhibitor” ( preventing ) can be used as long term corrosion ( natural
process to be converted into a more chemically stable form ) inhibitor
product.
2. Nominative Fair Use: It is a legal doctrine established by the ninth
Circuit under which a person may use another’s trademark as a
reference to describe or compare the other product i.e. Trademark
expression “ the professional New York Basketball team” can be
referred as “New York Bulls”

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 3.Laches: If the owner of trademark complaints about trademark
infringement very late or unreasonably delay, the infringer may not be
punished.
4. Unclean hands and Misuse of trademark: In case of the misuse of
trademark by registered owner, the unauthorized use of trademark may be
claimed as defense. Under U.S. Patent law the patentee who uses
National monopoly power beyond the claims of the Patent is denied legal relief.
5.Fraud in Obtaining the Registered Trademark (section 18 (3) 18c)
Instruments Under section 18 (3) and section 18c of the PDT Act , the Department of
Industries is allowed to repeal the fraudulently obtained registered
trademark. The defense may be claimed before repealing the illegally
obtained trademark by the department.
6. Application of Freedom of Speech: in the U.S.A. If any infringement of
trademark is allowed under freedom speech it is not punishable.

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 Sulekha Kanodiya v.Bikash Kediya (Nepal Kanoon Patrika 2076 No.
3 Full Bench Decision No. 10209 P.439)
In this case the owner of the company had sold to the company to
Cases defendant . The issue was whether a Company, which sold only company
without mentioning the “ trademark sale” could have sold the trademark
also. The supreme Court held that since the company was already sold
the trademark of the company which was inalienable part of the company
was also sold, though it was not explicitly mentioned in the sale deed.

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 2.Nurpratap Rana v. Department of Industries and others ( Nepal
kanoon Patrika 2062 ,Decision No.7536, P.539)
In this case the applicant, the owner of a active Shree Kiran Shoes
Manufactures Company had already registered the “trademark” bearing
“Gold Star Super Star Seven Star” for the Sport Shoes produced by his
Company. The Defendant the owner of Basnet Foot Wear Company
registered almost similar trademark bearing “Good Star, Gold Super,
Eleven Star”. The issue was whether defendant’s different words bearing
Cases trademark infringed the Plaintiff Petitioner ‘s protected trademark rights.
The Supreme Court held that since the words “ Good Star Gold
Super, Eleven Star” confused the customers to the words “ Gold Star,
Super Star Seven Star “ the defendant infringed the plaintiff Petitioner’s
rights. The Supreme Court which quashed the Appellate court’s decision
which had ordered to register the defendant claimed trademark by
voiding the order of Industry department which had denied the
defendant’s trademark on the ground of similar trademark to the plaintiff’s
already registered trademark. The defendant company had made appeal to
the Appellate Court over the decision of the Department of industries.
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 Paris Convention for the Protection of Industrial
Property,1883
International Main features:
Instruments 1.National Treatment
2. A person applying for a trademark in home country can apply for the
same trademark in Member Countries within six months of home
country filing and get the priority equal to earlier home country filing

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 Madrid Agreement Concerning the International Registration of
Marks (1891 and the Protocol Relating to that Agreement
(1989)Madrid Agreement which protects trademark was
concluded in 1891. It was revised many times i.e. at Brussels
(1900) , Washington (1911), The Hague(1925), London (1934),
International Nice (1957) and Stockholm (1967) and amended in 1979.
Instruments Main Features of Madrid Agreement:
1. An applicant must be a member of a national member country
(having domicile or Commercial interest)
2.A mark must be registered in the country of origin before
registration in a member state.

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 3. The country of first registration called “ basic registration” can only
transmit international filing request to the International Bureau of the
WIPO along with the list of the countries where the protection is sought.
4. Applicant is required to pay uniform fee in each designated countries.
International 5. The International Bureau notifies about the international registration.

Instruments 6. The designated country is required to provide refusal notice within one
year in case of refusal.
7. In case of cancellation in the country of origin during the first five
years the international registration is automatically cancelled(it is called “
central attack”)

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 Protocol to the Madrid Agreement 1989
Distinguishable features from the Madrid Agreement
1. International application is based on application of origin country.
2. Designated member country may claim different fee
International
3. The designated member country may communicate refusal to the
Instruments International Bureau within 18 months.
4. In case of cancellation during first five years by country of origin
(central attack) an applicant can transform international registration into
national or regional application in the designated Contracting Parties
( member countries)

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 TRIPS Agreement 1994 :
Features:
The TRIPS, which was concluded by the World trade organization
(WTO ) including Section 2 of the Agreement provide s for the
subject matter, scope and term of protection of trademark. Nepal as
International a member of WTO is obliged to comply with TRIPS.
Instruments Besides, Nice Agreement Concerning the International
classification of Goods, and services for the Purpose of
Registration of Marks, 1957 concluded by WIPO, Vienna
Agreement Establishing an International Classification of
Figurative Elements of the Marks 1973, Trademark Law Treaty
1994, concluded by WIPO, Singapore Law Treaty 2006
concluded by WIPO etc. are the international Trademark
instruments.
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Thank You!

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