How to avoid trademark infringement in India?

As an entrepreneur or a start-up owner, your company’s initial years are spent building goodwill and a market reputation for the brand name and creating a space in the market. One has to work hard on creating unique designs for a company logo to create an appealing brand identity. This brand identity is protected through trademark registration in India. However, what to do when someone copies your trademark? How to avoid trademark infringement in India? If any existing logo, phrase, packaging of a product or any other feature that helps a consumer in the identification of a product causes confusion among the users in relation to the source of the goods is called trademark infringement. These instances may also be referred to as brand infringement. This blog discusses the various trademark infringement cases in India and derives how to avoid trademark infringement. 

Every brand having a reputation and long-standing goodwill faces trademark infringement at some stage of business. Getting to the point of how to avoid trademark infringement in India, we will further understand the most necessary precautions. 

How to avoid trademark infringement  in India?

1. Get trademark registration

Trademark Registration is the way forward on avoiding brand infringement. What is the importance of trademark registration? In case of infringement or trademark violation, you may not need to prove your ownership of the trademark if you have the certificate of ownership. The probability of winning an infringement case or a prior use claim is higher if you have certificate of trademark. Therefore, proving trademark ownership is one less battle to fight! You can institutte a suit for trademark infringement if you have registration.

Also Read: How to register brand name in India?

Things to remember while filing a trademark application

• Ensure that you have a unique brand name – It is always advisable to use unique elements in your trademark or a creative combination of letters or words to avoid any disputes pre and post trademark registration. This is the most essential characteristic of a trademark. 
• Conduct a comprehensive trademark search – One should always pursue a comprehensive trademark search before finalizing a brand name for trademark registration. This will ensure that you have a seamless registration process without any glitches like rectification or opposition. The intention behind performing a trademark registration is to ensure that one does not face any trademark objections during the trademark registration process. Performing a trademark search process is important to ensure that the chosen brand doesn’t exist on the records of the trademark registry. 

Also Read: Documents Required for Trademark Registration

2. Check likelihood of confusion

If you already have certification, make sure that there is an actual infringement that has occurred. Confusion with regard to the originality of a brand arises when two brands which look closely similar to each other are used in relation to competing goods. This deceptive similarity is one of the relative grounds for refusal of trademark registration. If the products by two brands are similar, it is a brand infringement of the original trademark having an early use. 

Also Read: Trademark Objection Section 9

3. Trademark monitoring

The story ensures trademark protection does not stop at trademark registration. How to avoid trademark infringement in India through trademark monitoring? A registered owner should keep track of the use or misuse of the trademark. Trademark monitoring is basically keeping a watch if someone else uses the registered trademark. You can do so by keeping taps on marketing campaigns run by competitors through various modes of advertising. 

It is also possible that one trademark might infringe on the other even if they are not similar. Identical labelling and packaging and similar sounding trademarks can cause confusion among consumers. Courts often consider “sight/ appearance of a trademark, sound and meaning” when determining if two marks are similar. Adding a prefix or suffix in the registered trademark will not help much. Before you move forward with filing a trademark application it is imperative to ensure that you do not have similarities to an existing trademark.

Legal actions to stop brand infringement

To stop trademark infringement in India, there are a lot of remedies to the owner of prior usage mark. Here are the steps you can take as remedies for infringement of your brand in India: 

• Primarily, you should contact an attorney/ a professional specializing in trademark law. The legal professional would give you appropriate guidance regarding how you may go about claiming your right and stop the infringement from damaging your brand’s goodwill and reputation.
• Then, you can send a cease-and-desist letter to the infringing business and ask them to stop passing their goods under your goodwill and reputation.
• If the violator continues using your trademark even after sending a cease and desist order you can file a suit for infringement. Through a legal suit, you can claim damages, and compensation for the losses and request an order against the trademark violator and restrain them from using the related trademarks for good. As one puts a huge amount of time and effort into creating a brand, it’s very essential to do everything possible to keep it secure. Following some basic rules and strong backing from a legal professional can put an end to all your legal miseries.

Read more to know about what is trademark infringement and its remedies

Trademark infringement cases in india

Trademark infringement is bad for your brand. The negative consequences are financial and reputational loss to the original owners. These losses are not minor in these competitive times. Let’s check out a few examples of trademark infringement cases in India. 

Karim’ v/s Kareem’s

In the case of Karim’ v/s Kareem’s, where the popular Karim/ Karim’s/ Kareem restaurant from Jama Masjid is generally confused with another chain restaurant ‘Kareem’s’ owned by Kareem Dhanani. Kareem Dhanani (a Mumbai-based restaurant owner) has been using the trade name ‘Kareem’s’ since 2003 whereas the Delhi-based restaurant owner has been using the brand ‘Karim’s’ since 1913. 

In the recent order of May 2022, the Judge stated that all the promotional material of Mumbai-based restaurant owners shall carry the disclaimer of “No connection with Karim’s Jama Masjid/ Delhi”. Considering the facts of the matter as well as to ensure no prejudice to either of the parties, the Judge didn’t order to stop using the mark but to market themselves with a disclaimer and a direction to stop opening any more restaurants with the same brand identity.  

StarBucks Vs. SardarBuksh

Another matter of infringement of the coffee giant in India. This case of trademark infringement has gained a lot of popularity over the recent years. You can check out its key takeaways in this blog on StarBucks vs. SardarBuksh.

Expert tips to prevent trademark infringement in India

Below listed are some additional tips from LegalWiz.in expert’s to help you safeguard your rights to the fullest:

Use trademark symbols

Post trademark registration, the offices in India allow the usage of Registered trademark symbols. It helps in showing the protection and hence, acts as a deterrent from infringement of brand in India. 

Enforce your rights

To claim the protection, you will have to enforce the rights you’ve been entitled to. You can do so by sending out cease and desist notices to infringing third parties. 

Also Read: Different Types of Trademarks in India

Education and awareness

As a brand, you can eliminate the risk of potential infringement at the foundational level by allowing your internal team to be aware of the importance of trademark rights. 

Review Agreements

After owning an IP right, you can benefit from assigning all or parts of that right to others. Collaborations happen with trademark licensing. One way to ensure no one gets unauthorized access to your trademark is by reviewing your IP Licensing and assignment agreements timely. You can check out the various documents required for trademark assignment here. 

Conclusion

To conclude, the issue of brand infringement is a rising concern in the nation. As a result, all owners of trademarks should now start focusing on the different ways how the trademark infringement cases in India can be avoided. Feel free to reach out to legalwiz.in experts in any issues with protecting your intellectual property rights.