Trademark Infringement cases from which businesses can learnFebruary 8, 2022 By Dinesh Parmar
First, it takes money to do the branding of your business and then years of hard work to make your business a successful brand in a market full of competition. Once your brand is successful, people looking for easy profits have already had their eyes on it and are looking for ways to copy your branding. That’s when ‘trademark infringement’ takes place. Trademark violation also happens when a new business does its branding without checking the similarity of its branding with existing brands.
Trademark Infringement is defined as the unauthorized use of a trademark that is created to look identical to a registered trademark. When a copy of a trademark is misleadingly used to confuse it with the original brand or its products, it becomes a case of trademark infringement.
An existing brand can protect itself by keeping its eyes on the market's new players and by learning from the prior experiences of brands who have already gone through the case of trademark infringement.
The Coca-Cola Company v. Bisleri International Pvt. Ltd.
The case of The Coca-Cola Company v. Bisleri International Pvt. Ltd. is known for the notable judgement in the category of Trademark Infringement. The Coca Cola Company purchased and acquired the rights of formulation, IPR and goodwill attached to the trademark of brand Maaza from Bisleri International Pvt. Ltd. The plaintiff, The Coca Company claimed that there was an infringement of trademark within and outside jurisdiction from where the brand conducted business. The defendant company, Bisleri International Pvt. Ltd. applied for trademark registration for the word ‘Maaza’ in Turkey and started exporting the drink under the given name. The judgement was passed against Bisleri International Pvt. Ltd. for using the trademark Maaza in India and placing it for export. The case was said to be the obvious case of Trademark Infringement.
Yahoo Incorporation v. Akash Arora
Yahoo Incorporation is the owner of the trademark ‘Yahoo’ and ‘Yahoo.com’. Yahoo.com offers web-based services and was registered approximately in 69 countries. Yahoo was still unregistered in India with the same domain name at the time. Akash Arora began to offer web-based services identical to the services offered by Yahoo.com in India under the name Yahoo India. Yahoo Incorporation accused Akash Arora of using the trademark Yahoo and also passing off the services offered by him as those offered by Yahoo Incorporation. Akash Arora was held liable for his actions and was restrained from using the Yahoo name further due to the violation of the trademark infringement law.
Academy Awards v. GoDaddy
Academy Awards filed a case against GoDaddy for permitting the customers to buy domains like betacademyawards.com, 2011Oscars.com, academywardbuzz.com, academywards.net, oscarsredcarpet.com and more. GoDaddy was accused of allowing customers to park these pages and collect revenue from their advertising partners on a pay-per-click basis. At the earlier stage of the case, Academy Awards showed that 57 out of 293 issued domains were deceptively similar to their trademarks. The judge ruled in favour of GoDaddy mentioning that there was no bad faith intent to gain profits. In addition, the judge said that GoDaddy relied on its users’ representations, and their domain registrations did not infringe any trademarks. This was a historic case in cybersquatting because the battle between two parties, Academy Awards and GoDaddy, lasted for five years, and the case was a costly affair.
Louis Vuitton v. Louis Vuiton Dak
This case was an iconic case of fashion v. food as a South-Korean Fried Chicken Restaurant copied the branding of world-famous Louis Vuitton, including its name. The logo of Louis Vuiton Dak, the restaurant bore a close resemblance to the logo of Louis Vuitton, the fashion brand. In defence, the restaurant argued that in Korean ‘Tondak’ literally means chicken, so he chose the name Louis Vuiton Dak. He was ordered by the court to pay a significant amount of $440 per day for the damage done to the brand. Later the restaurant changed its name to chaLouisvui tondak. But the fashion brand, Louis Vuitton was not satisfied and appealed again for which the District Court ruled against the restaurant for the second time. The owner of the chaLouisvui tondak was fined for non-compliance for which now he had to pay around $12,750 a day for 29 days because the amended name was displayed for 29 days.
PayPal v. Paytm
PayPal is an American company and one of the largest international online payment processors that facilitates payments between parties by helping them through online transfers. Paytm is an Indian digital payment system and fintech company offering similar kinds of services offered by PayPal. After the announcement of the honourable Prime Minister Narendra Modi for demonetization, Paytm witnessed a sky-rocketing increase in the number of its users in India. Paypal filed an objection against Paytm accusing the brand of Trademark Infringement. Both the brands started with the word ‘pay’, both are used for digital payment transactions and both the companies have an identical colour combination. Paypal in its objection stated that there was a similarity between Paytm’s logo and their logo and Paytm has copied the colour combination of Paypal. This case was filed in 2016 and is still going on.
The above examples show how much time, energy and money goes into fighting for trademark infringement cases. Only a trademark law firm with deep knowledge and broad experience can guide you properly through the whole process of trademark infringement cases as there are many points under the Trademark law which are to be referred, understood and applied for the case. For example - Under Trademark law, colour is inherently indistinct, but a combination of colours, with sufficiently obtained meaning, can gain distinctiveness and is capable of being registered as a trademark. A professional law firm can definitely help you protect yourself and your business against such trademark infringement issues but it is better to stay aware, alert and keep using your trademark wherever possible.