Trademark protection is given to protect and safeguard the marks which are exclusively used by a particular entity to sell its goods or services under its name. These marks help the entities in differentiating their goods and services from that of others. But unfortunately, some powerful entities have gone beyond their legal rights of defending their marks and bullying the weaker entities.
We say that trademark bullying has happened when a bigger entity that is generally registered under the Trademarks Act, 1999 threatens or tries to threaten the other entities which may be smaller in comparison, and generally unregistered by sending them to cease and desist notice on unreasonable grounds. The bigger entities in such a case try to threaten the smaller entities by creating a fear of suing the smaller entities in claims of infringement of the trademarks of the bigger entities.
Most of the time the companies which are involved in trademark bullying are large companies that have well-known marks registered and are not bothered about huge money getting spent on litigations. These large companies are aware of the fact that the smaller companies neither have sufficient resources nor are economically well off, which restrains them from pursuing against the bigger companies. The smaller entities even though may have a legitimate case in most of the cases tries to avoid the legal hassles as they are overpowered by large entities in terms of resources and money.
TRADEMARK BULLYING IN INDIA
In India trademarks are protected by the Trademark Act, 1999, and we are lucky enough to have provisions under this act to help the smaller entities from getting bullied by the bigger entities.
Section 142 of the Trademark Mark Act, 1999 protects the smaller entities from the larger entities when these bigger entities initiate a baseless infringement proceeding just to overpower the smaller entities.
Section 142 of the trademark act, 1999 states that:
“1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trademark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark.”
We have provisions for bullying not only in the Trademark Act but also in the following acts:
- Patent Act of 1970,
- Copyright Act of 1957, and
- Designs Act of 2000.
The aggrieved party can file a suit against the other party who threatens or bullies for a trademark under the provisions of section 142 of the Trademark Act, 1999, and can seek an injunction and monetary compensation. The trademarks which are eligible for this are only registered trademarks.
HOW IS IT DEALT JUDICIALLY?
Whether bullying has taken place in trademark would depend from case to case and would be decided by the courts by keeping all the situations and circumstances in mind.
In the case of Bata India Limited vs VitaflexMauch GmbH, a lawsuit was filed by the plaintiff against the defendant in which the plaintiff wanted to restrain the defendant from issuing threats of legal proceedings on baseless grounds. Here the main questions were whether the notice which was issued by the defendant to the plaintiff contained any baseless legal threat and should the plaintiff be entitled to any damages or injunction for this. The Delhi High court held that the threats were made by the defendant to the plaintiff and were unreasonable. Therefore, the court issued an order against the defendant by restraining the defendant from issuing any further false threats.
Although India has a framework for protecting smaller entities from groundless, unreasonable, or baseless threats, there is no statute that would precisely define as to what would constitute a groundless, unreasonable, or baseless threat. However, some parameters such as the first user over the first one to file, deceptively similar which can cause confusion… etc. are used by courts to determine whether or not trademark bullying has occurred.
Thus, with this, we can conclude that there is a lack of clarity in the law with regard to what exactly constitutes trademark bullying as trademark bullying happens when an entity threatens the other entity with legal proceedings on unreasonable, baseless grounds. The smaller entities have to depend upon the fewer precedents to justify their contentions.
To make the law more efficient the term trademark bullying can be defined under the Trademarks Act, 1999, or the Trademark Rules, like the USPTO report. Also, under section 142 the terms baseless and groundless can be given more clarity so that courts can take decisions more efficiently.
2ND YEAR LLB,
ILS LAW COLLEGE, PUNE