Unauthorised use of trade mark – How would you remedy it in India?
In Utopia, I believe competition among similar businesses would be healthy and fair. However, in the real world, the Darwinian principle of survival of the fittest applies. We find that some wonderful businesses, with unique and sometimes well-established brands, end up in shambles because their owners did not take the right steps at the right time to protect those brands. So, the proverbial cheats prospered, right? Not really. Everything boils down to what someone rightly said “If you don’t know your rights, you have no rights.”
How would an ever-busy businessman keep track of the impostors? Well, he has to. After all it is the brand that identifies him and his business. For instance, when you come across the term, iPhone®, you think of Steve Jobs and Apple Inc. And with the brand comes the consumer’s faith in the products of that business. All in all, the brand is central to the business and thus, must be protected. Even so, it is easier said than done to protect a brand from impostors and the ultimate truth is that every brand has its fair share of impostors. So does the law contemplate such situations? Absolutely.
In this article, we elaborate on some of the remedies that could be used to put a stop to the unauthorised use of your brand.
Few tricks that should always be up one’s sleeve
Let him know that you are aware of his existence: Most impostors are not big-timers, at least not initially. They start out small and slowly gain the confidence to expand their *business* using your brand. In such a case, give him a call or drop him an email or better yet, send him a cease and desist letter (commonly called C&D notice), essentially letting him know that you are aware of him and his unauthorised use of your mark and asking him to stop using it immediately unless he wants to be sued.
This approach takes care of the newbie impostors but not the ones who have been in the game for a while. However, it is best to use this as the first approach since it becomes much easier to prove in the court of law that you were willing to be nice at first. Also, this approach needs to be kept stern, short and sweet otherwise he would only be taking you for granted.
Negotiate with him: This is your brand and you own it. So why negotiate with the impostor? Because maybe the impostor did not *mean* to harm your brand (Come on, who are we kidding? We know he is using your brand because he could use the reputation that comes with it. But this is why-jump-the-gun approach.) This approach typically follows the earlier approach but sometimes this is the first approach. The decision as to which approach you need to take would depend on facts surrounding the case.
There have been cases where the original owner of the brand failed to obtain a certificate of ownership for his brand from the relevant Government authority (In India, we obtain this certificate in the form of registration from the Trade Marks Registry) and the impostors beat him to it. If this is your case, you may, by negotiating with the impostor, tell him that you want him to legally assign you the ownership of the brand. There are some smart impostors who try to get some squeeze in this bargain but being the real owner of the mark, you could tell him that his incentive is that he will not be sued for wrongful use and registration of your brand.
Go in for the kill: The impostor refuses to pay heed to your earlier kindness especially when you need not have been good to him at all? Then it is time to tell him that you were serious with your intention to sue him.
In India, as an “aggrieved person” whose brand has been used without consent, you can a) request the Trade Marks Registry to declare that the registration of the impostor is invalid or b) contest the use of the impostor’s brand.
As always with law, there is a caveat. The law expects you to be aware of your rights and act accordingly (yes, the law helps those who help themselves.) The caveat is that having been aware of the impostor for a reasonable period of time, you chose not to take any action to prevent him from using your brand. You cannot therefore blame him later. In fact, the law presumes that you consented to his use of your brand. However, if you could prove that the impostor obtained registration of the brand in bad faith, the caveat may not apply and you could have a case.
The remedies mentioned above are certainly not exhaustive but this is definitely a starting point. At the end of the day, we all make mistakes, get lost in everyday activities and ignore the obvious. But now that we know what we are up against, is not prevention better than cure?