The trademark law in India has provided trademark owners with a slew of rights, including the ability to file a legal action against anyone who attempts to encroach on the owner's trademark, but only if the infringement is genuine and legitimate. A provision under Section 142 of the Trademark Act, 1999 exists to shield less important businesses in India against frolicsome breach procedures brought by larger businesses and to defend their rights. The Patent Act of 1970, the Copyright Act of 1957, and the Designs Act of 2000 all have provisions pertaining to this.
What is a trademark
A trademark is a one-of-a-kind symbol or word(s) that is used to recognize a company or its products. Once registered, that sign or series of words cannot be used by any other organisation indefinitely, as long as it is in use and all needed credentials and costs have been paid. It's how clients recognise you and tell you apart from your competitiveness in the marketplace. For commodities, a trademark is utilised, whereas, for services, a service mark is used. Both trademarks and service marks are referred to as "trademarks”. Not only trademark classifies where your goods or services came from but also certifies that your brand is legally protected and aids in the inhibition of forgery and counterfeiting. When a person starts utilising your trademark in conjunction with your goods or services, he becomes a trademark owner. By utilising his trademark, he establishes rights in it, but those rights are limited and only apply to the geographical area where he provides his goods or services. He'll need to apply to register for a trademark if he wants stronger, nationwide protection. It is not mandatory for a trademark to be registered. A registered trademark, on the other hand, has more rights and protections than an unregistered trademark.
What is Trademark Bullying
‘Trademark bullying’ is defined as "the conduct of a trademark owner using its trademark rights to harass and intimidate another firm in excess of what the law may fairly allow." It's a troublesome activity by a trademark holder, usually a larger organisation or corporation, to bring a lawsuit against another trademark user, ostensibly a smaller company, in order to intimidate or harass him under the scope of its trademark rights. Trademark Bullying makes it difficult for small enterprises to break into the market. As a result, many small businesses are hesitant to launch new goods, expand into new markets, or use a certain brand for fear of legal repercussions from larger corporations.
The danger of such misappropriation had been anticipated by Indian legislators, who established a suitable response under Section 142 of the Trademarks Act, 1999, which specifies the law against bogus legal threats. The provision states that if a person threatens another person with an action or proceeding for infringement of a registered or alleged to be registered trademark through circulars, advertisements, or other means, the aggrieved person may file a lawsuit against that person and obtain a statement to the extent that such threats are unjustified. An injunction can be issued in the distressed party's favour to prevent the other person from making more terrorizations and to recover reparations. Only those whose trademarks have been registered are qualified for this remedy.
Cases related to Trademark Bullying: Some significant cases in India where the Intellectual Property Appellate Board (IPAB) and the Courts have treated Trademark Bullying as an important matter are discussed below:
1. M/S ITC LIMITED VS. NESTLE INDIA LIMITED
In the year 2010 ITC Ltd launched its noodles named ‘Sunfeast Yipeee’ and named one of its variant ‘Magic Masala’. Nestle India Ltd used the phrase ‘Magical Masala’ for its instant noodles. The plaintiff company stated that ‘Magic Masala’ is an important feature of their trademark ‘Sunfeast Yipeee Noodles Magic Masala’ and the respondent company had purportedly copied their trademark by slightly altering the brand as ‘Magical Masala’. Nestle India resisted that they used this term as a flavour descriptor, not as a trademark. It is to be noted that ITC has not registered the word ‘Magic Masala’ as a trademark. Nestlé’s claim was taken into account by the Madras High Court, which ruled that "Both the words 'Magic' and its derivative 'Magical' are common to the trade." As a result, neither the plaintiff nor the defendant can claim exclusivity over the terms 'Magic' or 'Masala,' as both are widely used in Indian cuisine and the food sector."
2. BATA INDIA LIMITED VS VITA FLEX MAUCH GMBH
In this case, the plaintiff filed a lawsuit against the defendant corporation to enjoin the defendant from threatening the plaintiff with legal action over a trademark that was complete without merit. The plaintiff also sought damages from the defendant for making threats that were unfounded. The Delhi High Court ruled in favour of the plaintiff corporation, finding that the defendant's threats were unfounded, unreasonable, and unlawful. As a result, the defendant was instructed to refrain from making any further unfounded threats.
Other prominent cases related to trademark bullying are Crystal Knitters v. Swarovski, Jones Investment Co INC v. Vishnupriya Hosiery Mills, Cadbury v. ITC Ltd.
The primary goal of the trademark act provision was to ensure that small entities and local enterprises did not lose access to what they were legally entitled to. However, there are ways to further reduce the problem, such as providing resources to small entities such as legal aid camps, raising awareness, and law firms taking the initiative and handling more pro bono cases, among other things. Small businesses have recently sought solace in social media, where their plight is understood by a community of like-minded people who support them in the face of backlash from larger corporations, which harms their reputation and goodwill built over time. It is also imperative that the individual bringing the legal action to make sure that it is within the extent of his rights and claims. Companies that have been harassed and harmed can always turn to the courts for help.