Trademark Violation

Subject : Science and Technology

Section: Intellectual Property Rights

Concept :

The Delhi High Court ruled last week, and dismissed a case of trademark infringement brought by the global fast food chain against Suberb, a Delhi-based restaurant.
The Delhi High Court has ruled that Subway cannot claim “exclusivity” or “monopoly” over “sub”, the first part of its trademark “Subway”, when used in the context of eateries which serve sandwiches and similar items.

Trademark

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.
Trademarks are protected by Intellectual Property Rights (IPR).
In India, trademarks are governed by the Trade Marks Act 1999, which was amended in 2010.
It legally differentiates a product or service from all others of its kind and recognizes the source company’s ownership of the brand.
The Act guarantees protection for a trademark that is registered with the Controller General of Patents, Designs, and Trademarks, also known as the trademark registry.
A trademark is valid for 10 years, and can be renewed by the owner indefinitely every 10 years.
It serves as a badge of origin exclusively identifying a particular business as a source of goods or services.

What Constitutes a Trademark Violation?

Using a registered trademark without authorisation of the entity that owns the trademark is a violation or infringement of the trademark.
Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999.
There are several ways in which a trademark can be infringed such as Deceptive similarity, passing off (Say, a brand logo is misspelt in a way that’s not easy for the consumer to discern).
In such cases, courts have to determine whether this can cause confusion for consumers between the two.
In such cases, the infringing products need not be identical, but similarity in the nature, character and performance of the goods of the rival traders has to be established.
For example, Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited.

There are two types of infringement – direct and indirect infringement.

Direct Infringement
Unauthorized person – this means a person who is not the owner or the licensee of the registered trademark.
‘Identical’ or ‘Deceptively similar ‘– the test for determining whether marks are identical or not is by determining whether there is a chance for a likelihood of confusion among the public. If the consumers are likely to get confused between the two marks, then there is an infringement.
Registered Trademark – You can only infringe a registered trademark. For an unregistered Trademark, the common law concept of passing off will apply.
Goods/ Services – In order to establish infringement even the goods/ services of the infringer must be identical with or similar to the goods that the registered Trademark represents.

Indirect infringement

Indirect infringement is a common law principle that holds accountable not only the direct infringers but also the people who induce the direct infringers to commit the infringement.
Indirect infringement is also known as secondary liability has two categories: contributory infringement and vicarious liability.
A person will be liable for contributory infringement in two circumstances:
- When a person knows of the infringement
- When a person materially contributes or induces the direct infringer to commit the infringement.
A person will be vicariously liable under the following circumstances:
- When the person has the ability to control the actions of the direct infringer.
- When a person derives a financial benefit from the infringement.
- When a person has knowledge of the infringement and contributes to it.

Delhi HC’s Ruling in the Case

The HC did not look into the issue of passing off, because the Subway would have to demonstrate that a “person of average intelligence” would be confused between the goods and services of Subway and Suberb.
Passing Off is a common law tort which protects the goodwill and reputation of trade mark holder against damage caused by misrepresentation by defendant.
“Sub” is used as an abbreviation for “submarine”, which represents a well-known variety of long-bodied sandwiches.
Therefore, Subway cannot claim “exclusivity” or “monopoly” over “sub”, the first part of its trademark “Subway”.
There was no similarity between the two other parts of the marks – “way” and “erb”. Hence, there was no likelihood of confusion to the public.
As the defendants had agreed to change the lettering, font and colour scheme, no case for deceptive similarity was made out.