India is currently drawn towards the wave of entrepreneurship along with the rest of the world. The number of trademark registration in India is on rise and has hit its zenith. This increase is also leading to a lot of Trademark infringement, especially in the form of look-alike trademark. It is important for the entrepreneurs to have some knowledge of the consequences as well as of the remedies available in cases of trademark infringement. Indian Trademark Law provides civil, criminal, as well as administrative remedies for taking action against infringement, dilution and/ or passing off of a trademark. This note discusses a typical case of Trademark infringement.
Facts of the Case[1]:
In the following case plaintiffs’ position is that they are fully owned subsidiaries of American Eagle Outfitters, Inc., a common parent organisation. The plaintiff is the owner of several trademarks, including AMERICAN EAGLE OUTFITTERS, AMERICAN EAGLE, AE, and the “Flying Eagle Device Mark,” throughout India as well as in other countries. The trademarks are used in relation to ready-made clothing and related fashion accessories. According to the plaintiffs, “The Independent,” which is the top online news outlet in the United Kingdom, listed it as one of the “76 Best Online Clothing Stores in the United States” in 2019. In 2021, the plaintiffs’ revenue was more over USD 5 billion. Additionally, the plaintiff owns a registered domain name, AE.COM, which resolves to an operational e-commerce site at http://www.ae.com where it advertises and sells its ready-to-wear garments and associated fashion accessories. This domain name registration dates back to 1999.The plaintiff is also copyright owner of “Flying Eagle Device Mark”. The plaintiff is resentful of the defendants’ use of the trademarks AMERICAN EAGLE OUTFITTERS, AMERICAN EAGLE, AE, and several “Flying Eagle Device Marks.” The Facebook page of the defendants discloses that they are openly claiming to be selling the “first copy shirt brand” of other well-known companies while also adopting markings that are confusingly similar to those of the plaintiffs.
Opinion of the Court:
The plaintiffs, in the eyes of the court, have shown a strong prima facie case in support of the granting of an ad-interim injunction. The trademarks of the defendants seem to be misleadingly similar to those of the plaintiffs and are used to trick naïve consumers into thinking they are associated with the plaintiffs or are capitalizing on their reputation. If the plaintiffs’ request for an ad-interim injunction is not granted, they will also suffer severe irreparable harm.
In light of this, the defendants are temporarily prohibited from manufacturing, marketing, offering for sale, and selling any goods, including, in particular, ready-made clothing, whether directly or indirectly, over the internet or otherwise, as well as any other individuals, officers, managers, employees, agents, dealers, licensees, companies, or any persons or entities that are related to or affiliated with the defendants. Also the local commissioner so appointed will be provided police assistance and was tasked to visit the defendant’s premises and to confiscate any or all goods which bear the markings of plaintiff’s trademark.
Conclusion:
If the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertaking, there is a likelihood of confusion. Therefore, it constitutes an infringement. The registered trademark owner or his legal successor has the right to file a lawsuit if there has been an infringement. Legal heirs of the injured party who has passed away may bring a claim against the infringer. It is important to emphasize that the third party lacks locus standi to petition the appropriate court for an infraction.
[1] Retail Royalty Company & Anr. v. MD Sohaib Ansari Trading As LF Fashiom & Anr.
DUCTUS EDGE 