Concept Of Trademark Bullying: Forceful Enforcement Of Trademark Rights In The Name Of Protection

Introduction

Trademarks are an important division of Intellectual Property Rights (IPR) as it considerably contributes in identification and promotion of a product. A well- known trademark helps the consumers in spotting the difference between similar products by educating them about the product which results in informed choices.  The trademark owners enjoy monopoly and exclusive proprietary rights of their trademarks through the law of trademark protection.  However, when a registered trademark owner without justified reasons goes beyond their legal capacity to protect their mark and threatens or intimidates small enterprises it results into bullying. When a proprietor aggressively tries to protect his trademark the line between actual infringing of trademark and absurd allegations become obscured.

Off late these instances of trademark bullying has been a concern and persistent problem in many countries with large entities targeting the small enterprises just for the sake of business gains.

What Is Trademark Bullying

According to The United States Patent and Trademark Office (USPTO) in its (report to the Congress on Trademark Litigation Tactics”) Trademark Bullying is defined as “an act where the trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow “ [1]

When a big entity engages in certain tactics for forcefully enforcing their trademark rights even when there exists no pertinent grounds to oppose the use of a trademark by small businesses they are known as trademark bully. This is generally done by giant corporations and brand names to survive the competition and swallow the small businesses for gains.

The modus operandi of bullying and legal threats which are baseless by large entities gets initiated by serving a cease and desist notice which contains threats of instituting a trademark infringement suit. It also demands from the opponent to refrain from using the trademark which as per the trademark bully is similar to their trademark. Post serving such notice the small entity is forced for settlement because getting into a legal battle would be a disadvantageous step financially.

Legal Position In India

In India a viable resolution against baseless legal threats is encapsulated in Section 142 [2]of the Trademark Act, 1999. According to the provision when a person through advertisements, circulars or by any other means threatens or intimidates another person with an action or proceeding for infringement of a trademark of a registered or alleged to be registered trademark, the person aggrieved may bring a suit against such person and also obtain a declaration to the effect that the threats imposed are unjustifiable.

[Image Sources: Shutterstock]

Injunctions are available as a legal remedy that the court may issue in favour of the aggrieved party which will restrain the other party from imposing such threats and can also recover any damage. In a case before the Delhi High Court the plaintiff had instituted a case against the defendant to restrain the from making groundless legal threats of initiating legal proceedings. The enigma before the court was to deal with the issue whether the legal notice by the defendants amounted to threat and could the plaintiff be granted injunction and monetary compensation on that basis. The Court held that the legal notice served amounted to threat and was unjustifiable. Further the defendants were also restrained from issuing any other baseless threats.[3]

Recent Spat Between Big Basket & Daily Basket

There have been many instances in India proving the prevalence of Trademark Bullying .One such very  recent instance is when  India’s largest online grocery store “Big Basket” served a ‘ cease and desist ” notice to an online grocery delivery start up “ Daily Basket” alleging that it had infringed its trademark and violated its brand name by using the term “basket “. This budge by the largest grocery store has increase rage of various sections of the society as the term basket is a term common to trade and any proprietor is free to use it .Daily basket in its response started an interactive website,bbisabully. comcountering all the claims by bigbasket. In its process to debunk the claims Daily basket through its website also mentioned

• That except the word basket there existed no similarities or trademark violations in the brand logo and the name,colour and font itself was different.[4]
• That Daily Basket had an entirely different user interface and the get-up was also way different.

However post this Big Basket offered to solve the issue in an amicable manner. Even though the Trademark Law provides a provision that prohibits such activities which are common in cases of bullying the act does not provides a clear stance on what amounts to such baseless threats. However The Indian Judiciary has always stepped up and slammed these powerful sharks indulging in trademark bullying when local business have been affected illegally after being served cease and desist notice .

Conclusion

In the world of trademark owners Trademark bullying is a persistent issue. Big entities engage in this tactics targeting small businesses that have almost little or no recourse.  However every cease and desist notice served does not constitute trademark bullying and this depends on the fact and circumstance of each case. Small business can evade such issues by conducting rigorous trademark research before registration, creating a database that is public of these notices by trademark owners which would attract public support and attention, creating awareness and amassing the right information about bullying .Apart from this alternate dispute resolution would also help in curbing the issue and small entities will not lose out on what they are legally entitled to.

Author: Kajal Chandra,  A Student at School of Law, University of Petroleum and Energy Studies, Dehradun, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing

[1]https://www.uspto.gov/sites/default/files/trademarks/notices/TrademarkLitigationStudy.pdf  ( May 06 ,2021 ,1: 59 am )

[2] The Trademarks Act,1999 ,§142, No.47 ,Acts of Parliament ,1999 (India )

[3] 2015 SCC Online Del 11505

[4] 2021 SCC Online Blog Exp 18