In this competitive business environment, trademarks are essential to brand creation and consumer confidence. Nevertheless, owing to conflicts with conflicting trademarks, they are not entirely free from legal and commercial problems. Anyone registering or operating any kind of business here in India, conflicting trademark lawsuits are inevitable! It is important to navigate the legal framework that allows brands to both resolve or protect such disputes.
This article discusses the principles for resolving conflicting trademarks under Indian trademark laws and some of the pragmatic solutions that may be useful for businesses to create a solid footing against trademark disputes.
Identifying Conflicting Trademarks
A conflicting trademark occurs when two or more companies stake a claim over two similar or identical trademarks for related products or services. Trademark exceptions can be found in the following cases:
- Identical or Confusingly Similar Trademarks – If a new trademark is similar to an already registered trademark with respect to sound, appearance or meaning.
- Identical or alike goods/services – Different than the trademarks themselves, if they are in the same class, this could also cause confusion.
- Prior user rights — A party establishes rights to a mark by virtue of having used that mark before it obtained its registered rights.
- Well-Known Marks – If a new trademark bears similarity to another well-known mark the prior trademark owner may object to its registration.
Rules for Dealing with Conflicting Trademarks in India
In India, matters related to trademarks are governed by the Trademarks Act, 1999. Remedies for Conflicting Trademarks available to Businesses under the Act
Examination — The Trademark Registrar may oppose a new trademark application if it clashes with an existing registered mark.
- Opposition process – Any third party can oppose a trademark application for a period of 4 months from its publication in the Trademark Journal.
- Infringement Action – Only a registered mark will allow an owner to sue for infringement of that mark.
- Passing off claims – Businesses can sue another entity for creating a similar mark under the passing off laws as well even if the trademark is not registered.
What To Do When You Have A Conflicting Trademark
Perform All-Embracing Trademark Search
Do a trademark search — Check the IP India website (https://ipindia.gov.in/) to ensure that nothing similar exists before proceeding with a trademark application. They can conduct complex searches and identify potential conflicts that may arise, which is wise for trademark attorneys.
Alter or Re-Brand Your Mark
- If your mark is similar to an existing mark, alter the spelling, design, or logo by:
- Making it better by adding some special features which set it apart
- Registering under some other category or a class.
- Rebranding is a pre-emptive measure to steer clear of potential lawsuits in future.
Opposing or Rectifying a Trademark
Opposition – If the mark is still under application, you can oppose the new mark (within a period of 4 months from its publication) Seek Rectification – If your mark has been wrongfully registered against a conflicting trademark, seek rectification before the Intellectual Property Appellate Board (IPAB).
Negotiate an Agreement
The business cases are often settled in negotiations. There are options to consider, such as: Coexistence Agreements – where both parties agreed to certain terms to use similar marks in separate markets.
- Assignment or Licensing — Party A may assign or license trademark rights for consideration to Party B.
- Cross Modifications – A company may have to agree to modify their marks just a tad to avoid confusion.
Sued for Trademark Infringement
Using the same or an identical trademark to your trademark can lead to a trademark infringement lawsuit under the Trademarks Act, 1999 against the competitor using the particular trademark. Possible remedies: Court orders to prevent unauthorized usage. Compensation in money for your damages. Forfeiture of fake products that use your mark
Avoiding Trademark Conflicts in the Future
- File Your Trademark Application as Soon as Possible – The earlier you apply for a trademark registration when you commence business, the lower your risk of a dispute.
- Keep an Eye on the Marketplace – Updates Search for existing new filings affecting your mark.
- Select Distinctive Trademarks – Use creative versions of brand names to reduce the potential for disputes.
- Take Help from Legal Professionals — Getting professional legal opinions will make the disputes easier to avoid and process when they show up.
Conclusion
Conflicting trademarks can be a nightmare for a business, resulting in litigation and costs. But with some research, some alteration of your mark, if necessary, some negotiation with third parties and some recourse to law provided in the Trade Marks Act, 1999, trademark disputes can be surmounted.
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