WHAT CAN BE THE

22 Jun 2022

legaltax

What Happens if Someone Else Is Using Your Trademark? 

Trademark is one of the essential element of the overall intellectual property rights of a business. A trademark is what the consumers use to identify goods or services with a certain quality, origin, and utility of a brand. In this article, we are highlighting what you should do if you find someone else using your trademark, logo or any part of it.

You worked hard to brainstorm and design a name and logo to establish your branding, so how can you prevent other companies from using it?

Well it can be a bit tricky. Trademark law can confuse even the savviest business owners. The United States Patent and Trademark Office (USPTO) has provided a number of tutorials, FAQs and guides to help deal with trademark infringement but it can still be difficult to maneuver.

Trademark is a brand, logo or symbol of a product or service. The customers/clients identify a product or service of an individual/company through its trademarks. Trademarks are essential for any establishment as it helps to create goodwill and retain customers. The law regulating Trademarks in India is the Trademarks Act, 1999 (“Act”). The trademark of a product or service can be registered under the Trademarks Act, 1999.

The registration of trademarks is not compulsory, and it is voluntary under the Act. The registration of trademarks grants many benefits to the owner of the trademark. One such benefit is protection against infringement of the trademark. Infringement of trademark occurs when any person uses the trademark in an unauthorized manner.

When someone uses the trademark of an individual or company without their permission, the individual/company can file a suit for trademark infringement to prevent the unauthorized usage of their trademarks.

WHAT IS TRADEMARK?

A trademark is the whole gamut of identity that the business assumes in a competitive market. A trademark can include many aspects. Any logo (The M for McDonald’s), brand-name (Coca-Cola), a meaningless word (Sony), label (Arrow), numerals (Forever 21) or even a combination of colours used (The yellow and red colour scheme of McDonald’s or Maggi) qualify to be a trademark.

Since a business works hard to use all of these in its dealings, it casts an impression of a certain standard of quality in the goods. Thus, the law prohibits anyone else from employing the same combination and gives the impression that the goods belong to someone else.

 

Here are a few steps to try and make the process a little bit less painful. (While I do provide tips on dealing with trademark infringement, I recommend talking to a trademark attorney when this issue arises).

STEP1: Determine if there is actually trademark infringement.

STEP2: Take Action

STEP3: File trademark on first step (most important step)

  1. Determine if there is actually trademark infringement: Before diving into a lawsuit, you need to determine if a problem truly exits. To do so, let’s review a few trademark facts and these are many of the points a trademark attorney will discuss.

First trademark infringement occurs only when consumers will be confused by the dual use of the trademark and whether the mark is being used on competing goods and services. That’s why Delta Airlines and Delta faucets are both in use when you are redesigning your bathroom you aren’t likely to purchase an airline ticket by mistake. If another company is using your trademark, ask yourself if a customer is likely to confuse that business with your own.

The next factor to consider is location. If you operate a flower shop in Charleston, S.C. and someone opens a similarly named flower shop in Missoula, Mont., this likely isn’t considered infringement because customers in South Carolina probably won’t mix up their local store with one in Montana.

Granted, if your business becomes famous across the country, you may have a greater chance of claiming infringement regardless of location. Likewise, ecommerce is shrinking geographic barriers and courts may consider how someone’s online presence can impact another’s business (more on domain names later).

Another often-confused aspect of trademark law is that names can infringe on one another even if they aren’t identical. Courts often consider “sight, sound and meaning” when determining if two marks are similar. So adding an “s” to make a name plural isn’t enough to distinguish it. Or try to name your fast food restaurant “McDowell’s and you’ll quickly see that marks don’t need to be identical to cause infringement.

 

  1. Take Action : If you believe that the other name is
  • being used on competing goods and services
  • Customers would likely be confused by the two names.
  • The other name is being used in you same geographic region, then you should take action.

The first step is to contact an attorney specializing in trademark law. He or she will help you through the next steps:

  • Trademark issues typically begin by sending a cease-and-desist letter to the infringing business and demanding that they stop using your mark. Here’s a sample letter you should have an experienced attorney review your letter and case before sending.
  • If the alleged infringer continues to use your trademark after receiving your letter, the next course of  action is filing a lawsuit in federal court if the use spans more than one state or in your state court if it’s purely local matter. Possible remedies include preventing further use of the mark in addition to money damages. You can ask the court to have the infringer pay you any money they made as a result of the infringement as well as any damages that your business may have suffered as a result of the infringement.
  • If you are a trademark holder and you want to challenge someone’s domain name (i.e. someone else registered a domain name that is very similar to your trademarked name), you can file a trademark infringement lawsuit. For eg cases of cyber squatting, you can opt to file an expedited complaint with one of ICANN’s approved dispute resolution providers. If you’re not familiar with them, ICANN international organization in charge of domain name registrations.

 

  1. File trademark on first step (most important step)

In state and federal courts, you can try arguing based on your “common law” rights to a name, but you will be far more successful if you are actively using the mark in commerce and have filed for federal trademark protection with the USPTO. In fact, domain name registries will require you to have a federal trademark to protest someone else’s domain name.

This is why the most important step in trademark protection is applying for your trademark as soon as possible. Too often, small-business owners don’t think about trademarks until it is too late, and they see someone else using their company or product name. At that point, it becomes a fight over who owns the name and who was using it first. Therefore, put yourself in the best possible position by applying for your trademark early on.

TRADEMARK INFRINGMENT

When a person uses your trademark without your authorization or permission, it amounts to infringement of your registered trademark as per Section 29 of the Act. However, for trademark infringement, your trademark needs to be registered. When someone uses a trademark needs to be registered. When someone uses a trademark that is deceptively similar or identical to your trademark, then he/she is liable for trademark infringement under the Act.

A trademark is deceptively similar or identical to another trademark if the consumers believe that the trademarked brand/products are same as your brands/products. The trademark used by another person for their products should confuse the customers and lead them to believe that his/her products are your products.

CIRCUMSTANCES NOT AMOUNTING TO TRADEMARK INFRINGEMENT

Section 30 of the Act specifies the circumstances that don not amount to trademark infringement even when the other person uses your trademark. When someone uses a trademark as per the honest practices in industrial or commercial matters, it does not amount to trademark infringement, However, the trademark used honestly should not take unfair advantage or harm your registered trademark’s reputation or distinctive character.

The trademark is not infringed when using the trademark concerning the goods/services indicate the kind, quantity, quality or other characteristics of the goods/services. Trademark infringement does not occur when it is used by someone for the products or services that fall under the different class or service of your registered trademark.

Before filing a trademark infringement suit against someone who is using your trademark, the following points need to be checked:

  • Is your trademark registered?
  • Is your trademark used for the same products/services as your products/services?
  • Is the area of business or industry of the person using your trademark the same as your business?
  • Is the geographical area of the trademarked products/services circulated in the same geographical area as your products/services?
  • Whether a reasonable buyer who looks at the trademarked products/services is likely to feel they are similar or confused with your products/services?

If the answer to all the above questions is yes, then you can proceed to file a case for trademark infringement against the person who is using your trademark for his/her products or services.

 

ACTION TAKEN AGAINST TRADEMARK INFRINGEMENT:

When trademark infringement takes place, you can send a warning to the person using the same trademark to refrain from using it. You can directly send a notice to the person using your trademark of initiating legal action against him/her if he/she does not stop using it. If the person stops using your trademark after you issue notice, then the matter is closed.

However, notice can be sent to the person using your trademark claiming the damages caused to your business due to unauthorized trademark usage or the profits obtained by him from the use of your trademark. I f the person denies your claim, you can suit for infringement against him.

You can file both civil and criminal suit for trademark infringement under the Act. The registered owner of the trademark can file a civil suit for trademark infringement before the District Court of the appropriate jurisdiction, i.e. the place where the registered trademark owner resides or carries on business. The registered trademark owner can file a criminal suit against the other person for falsely applying the registered trademark to his/her goods or services.

 

RELIEF FOR TRADEMARK INFRINGEMENT:

Section 135 of the Act provides relief in the civil suit of trademark infringement. The court can grant a permanent injunction preventing/ restraining the person from using the registered trademark. The court can also award for paying the damages caused by the unauthorized usage of trademarks. The court can grant relief of account of profits i.e. for paying the amount of profits gained for the unauthorized usage of trademarks.

When a criminal suit for infringement is instituted under Section 103 of the Act, the court can award punishment to the person using another person’s trademark. The punishment may be the imprisonment for a term of six months which can be extended up to three years and with a fine of Rs. 50,000, which can be extended up to Rs. 2 Lakhs.

What Should You Do if Someone Uses Your Registered Trademark?

In case you find someone with the same registered trademark, here are few pointers that should guide your course of action:

You should ideally ask yourself the following questions:

  • Find out their area of business, does it fall in the same industry as yours? 
  • Do they deal in a product or service similar to your business? 
  • How long have they been in their business and how long has the infringing trademark been used? 
  • Perform a quick public search to ascertain whether their trademark is registered or not 
  • Whether a reasonable buyer looking at the goods or services is likely to confuse the two or feel they are similar? 

In case the entity that has infringed your trademark falls within the same industry, a similarity in mark on the goods or services is likely to deceive consumers. Hence, it becomes actionable. 

Unregistered Trademarks

  • Even if one of the trademarks is unregistered – either yours or the infringing trademark, courts look at prior use
  • If both the trademarks are unregistered, there is a greater chance that the business that started using the mark first gets proprietary rights
  • Even if your trademark has registration, legal outcomes may vary if the other business on an unregistered trademark can establish prior use with certain complementary factors. Having a steady customer base and reputation in a certain market would work in their favor
  • If you own a registered trademark, your lawyer would help you establish rights accruing from the grant of trademark registration. The court can impose limitations such as barring the use of trademarks of the unregistered entity outside of their geographical market, or region.

Trademark Complain About Unauthorized Domain Name Use

  • Domain names are virtual trademarks as they confer identity and address to the brand name
  • The expansion of online shopping has made domain name protection even more necessary
  • Rules similar to infringement apply to domain name infringement as well
  • In a leading case, Maruti Udyog and Suzuki Moto Corp v. World Information Pages – it holds that the use of domain name “marutisuzuki.com” was deceptively similar to the “Maruti Suzuki”. This was held to be an infringement.

Using Your Name as a Trademark

The trademark law recognizes the right of every person to use their name in a Bona fight manner for their own business. However, this must be honest, without causing confusion or deception. If there exists a person with the same name in the same market having goodwill and reputation. Then, another person with the same name may not entitle to do his business under that name.

 

 

FREQUENTLY ASKED QUESTIONS (FAQs)

Q1. Can I trademark a name if someone else is using it?

Yes. If a business obtains an over a specific name – such as “Avon”, it doesn’t necessarily preclude other businesses from using it. However, the most important criteria to consider here is the industry and the nature of goods and services. A bicycle brand “Avon” is not likely to have confusion with a cosmetics brand “Avon”. Hence, the two trademarks may coexist without any likelihood of prejudice to either brand.

 

Q2. What should you do if someone else your registered trademark?

In case you find someone with the same registered trademark, here are few pointers that should guide your course of action:

You should ideally ask yourself the following questions:

  • Find out their area of business, does it fall in the same industry as yours? 
  • Do they deal in a product or service similar to your business? 
  • How long have they been in their business and how long has the infringing trademark been used? 
  • Perform a quick public search to ascertain whether their trademark is registered or not 
  • Whether a reasonable buyer looking at the goods or services is likely to confuse the two or feel they are similar? 

In case the entity that has infringed your trademark falls within the same industry, a similarity in mark on the goods or services is likely to deceive consumers. Hence, it becomes actionable. 

Unregistered Trademarks

  • Even if one of the trademarks is unregistered – either yours or the infringing trademark, courts look at prior use
  • If both the trademarks are unregistered, there is a greater chance that the business that started using the mark first gets proprietary rights
  • Even if your trademark has registration, legal outcomes may vary if the other business on an unregistered trademark can establish prior use with certain complementary factors. Having a steady customer base and reputation in a certain market would work in their favor
  • If you own a registered trademark, your lawyer would help you establish rights accruing from the grant of trademark registration. The court can impose limitations such as barring the use of trademarks of the unregistered entity outside of their geographical market, or region.

 

Q3. What are the action taken against Trademark infringement?

When trademark infringement takes place, you can send a warning to the person using the same trademark to refrain from using it. You can directly send a notice to the person using your trademark of initiating legal action against him/her if he/she does not stop using it. If the person stops using your trademark after you issue notice, then the matter is closed.

However, notice can be sent to the person using your trademark claiming the damages caused to your business due to unauthorized trademark usage or the profits obtained by him from the use of your trademark. I f the person denies your claim, you can suit for infringement against him.

You can file both civil and criminal suit for trademark infringement under the Act. The registered owner of the trademark can file a civil suit for trademark infringement before the District Court of the appropriate jurisdiction, i.e. the place where the registered trademark owner resides or carries on business. The registered trademark owner can file a criminal suit against the other person for falsely applying the registered trademark to his/her goods or services.

Q4. Can someone steal your trademark?

Absolutely. Steal, not in the physical sense of the term (even if they run away with your certificates) but in the applied aspects of it. Tata, Reliance and Birla have become such well-known trademarks. Anyone using these in their business is likely to dishonestly induce an assumption of association with these mega-companies.

 

Q5.  Can I sue someone for using my business name?

The practical considerations for suing someone for using your business name would depend on whether they operate in the same industry. Deal in the same goods or services. If they do, the court would look at whether the business name used by the other party is deceptively similar to your business name. In doing so, the essential factor is whether a reasonable buyer intending to buy the goods would have confusion. Additionally, they believe the goods with the infringing to be the original. A classic example is a case against the brand “Parle-J”, which manufactured biscuits and wrapped them in almost identical wrapping as “Parle-G”.

 

Q6. What is Trademark Infringement?

When a person uses your trademark without your authorization or permission, it amounts to infringement of your registered trademark as per Section 29 of the Act. However, for trademark infringement, your trademark needs to be registered. When someone uses a trademark needs to be registered. When someone uses a trademark that is deceptively similar or identical to your trademark, then he/she is liable for trademark infringement under the Act.

A trademark is deceptively similar or identical to another trademark if the consumers believe that the trademarked brand/products are same as your brands/products. The trademark used by another person for their products should confuse the customers and lead them to believe that his/her products are your products.

Q7. What is the relief for Trademark infringement?

Section 135 of the Act provides relief in the civil suit of trademark infringement. The court can grant a permanent injunction preventing/ restraining the person from using the registered trademark. The court can also award for paying the damages caused by the unauthorized usage of trademarks. The court can grant relief of account of profits i.e. for paying the amount of profits gained for the unauthorized usage of trademarks.

When a criminal suit for infringement is instituted under Section 103 of the Act, the court can award punishment to the person using another person’s trademark. The punishment may be the imprisonment for a term of six months which can be extended up to three years and with a fine of Rs. 50,000, which can be extended up to Rs. 2 Lakhs.

Q8. What are the steps to prevent Trademark infringement?

  1. Determine if there is actually trademark infringement: Before diving into a lawsuit, you need to determine if a problem truly exits. To do so, let’s review a few trademark facts and these are many of the points a trademark attorney will discuss.

First trademark infringement occurs only when consumers will be confused by the dual use of the trademark and whether the mark is being used on competing goods and services. That’s why Delta Airlines and Delta faucets are both in use when you are redesigning your bathroom you aren’t likely to purchase an airline ticket by mistake. If another company is using your trademark, ask yourself if a customer is likely to confuse that business with your own.

The next factor to consider is location. If you operate a flower shop in Charleston, S.C. and someone opens a similarly named flower shop in Missoula, Mont., this likely isn’t considered infringement because customers in South Carolina probably won’t mix up their local store with one in Montana.

Granted, if your business becomes famous across the country, you may have a greater chance of claiming infringement regardless of location. Likewise, ecommerce is shrinking geographic barriers and courts may consider how someone’s online presence can impact another’s business (more on domain names later).

Another often-confused aspect of trademark law is that names can infringe on one another even if they aren’t identical. Courts often consider “sight, sound and meaning” when determining if two marks are similar. So adding an “s” to make a name plural isn’t enough to distinguish it. Or try to name your fast food restaurant “McDowell’s and you’ll quickly see that marks don’t need to be identical to cause infringement.

 

  1. Take Action : If you believe that the other name is
  • being used on competing goods and services
  • Customers would likely be confused by the two names.
  • The other name is being used in you same geographic region, then you should take action.

The first step is to contact an attorney specializing in trademark law. He or she will help you through the next steps:

  • Trademark issues typically begin by sending a cease-and-desist letter to the infringing business and demanding that they stop using your mark. Here’s a sample letter you should have an experienced attorney review your letter and case before sending.
  • If the alleged infringer continues to use your trademark after receiving your letter, the next course of  action is filing a lawsuit in federal court if the use spans more than one state or in your state court if it’s purely local matter. Possible remedies include preventing further use of the mark in addition to money damages. You can ask the court to have the infringer pay you any money they made as a result of the infringement as well as any damages that your business may have suffered as a result of the infringement.
  • If you are a trademark holder and you want to challenge someone’s domain name (i.e. someone else registered a domain name that is very similar to your trademarked name), you can file a trademark infringement lawsuit. For eg cases of cyber squatting, you can opt to file an expedited complaint with one of ICANN’s approved dispute resolution providers. If you’re not familiar with them, ICANN international organization in charge of domain name registrations.

 

  1. File trademark on first step (most important step)

In state and federal courts, you can try arguing based on your “common law” rights to a name, but you will be far more successful if you are actively using the mark in commerce and have filed for federal trademark protection with the USPTO. In fact, domain name registries will require you to have a federal trademark to protest someone else’s domain name.

This is why the most important step in trademark protection is applying for your trademark as soon as possible. Too often, small-business owners don’t think about trademarks until it is too late, and they see someone else using their company or product name. At that point, it becomes a fight over who owns the name and who was using it first. Therefore, put yourself in the best possible position by applying for your trademark early on.

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