Samsung India Prohibited From Using the Trademark “Concierge”
Adv. Sakshi Shairwal
Tejal Tepaswani Nagauri
A Bengaluru City Court has inhibited
the South Korean electronics giant-
the South Korean electronics giant-holder Samsung India from making use of the registered trademark ‘Concierge’. The court issued an interim order in this regard. The court stated that, at the same time as there is a prima facie matter against the defendants, the respondents must be heard prior to an ex-parte injunction order being issued. The next hearing for the matter has been scheduled for August 5, 2021.
“Issue ex-parte ad-interim injunction in opposition to Samsung India inhibiting them, their servants, agents or any individuals asserting through or under them in any form whatsoever, whether directly or indirectly, from unlawfully using the mark ‘CONCIERGE’ affiliating to Lesconcierges, till next date of hearing,” stated the ex-parte order.
Dipali Sikand, one of the first people to initiate concierge services in India, founder of Lesconcierges Services Pvt. Ltd and Club Concierge Services (India) Pvt Ltd., challenging in the court that Samsung India and Story Experiences Private Ltd mishandled the aforementioned trademark in several brochures, advertisements, and public material in a President’s club, which is a loyalty curriculum for distributors and dealers of Samsung. The trademark ‘Concierge’ is registered and possessed by her. She also claimed that the company was mishandling the reputation and goodwill of their self-recognized variety in the market. The defendants were also blamed for degrading and diluting the concierge services image in the industry.
In India, the organization that manages the protection of trademarks is the Indian Patent Office controlled by the Controller General of Patents, Trademarks, and Designs. In addition, to safeguard the rights of a business company or enterprise and prevent the usage of deceitful marks, the provisions of the Trade Marks Act,1999 and rules endow rights for the absolute use, prevention from unofficial use, and facilitate the company or the business in mounting its goodwill. A trademark violation is the uncertified use of a mark or service that is similar or identical to a registered service or trademark. It is important to protect trademarks from infringement and exploitation by others. The Act aims to evade confusion with regards to various trade/service marks of different enterprises in the minds of the consumers. In Stimuliv v. Stimulate, the High Court of Bombay had passed an injunction order towards the defendant for violation of trademark while highlighting the aspect of the trademark being deceivingly identical to a degree that it creates huge confusion in the decision making ideology of the customers and also in the aspect of the defendant’s demeanor with regards to the passing of. In another recent matter of Decathlon Sports v. Pentathlon Sports, the petitioner has filed the case against the defendant with the idea of relief on the basis of the unlawful and mala fide acts of violation of a registered trademark by selling substandard products and passing off by utilizing a mark identical to such a degree that only the tagline has been vaguely changed with the discernible appearance being very similar. The Act facilitates abridging a consumer’s decision and encourage a healthy competitive environment in the market.
The growing accessibility of media and the internet makes it significant for companies or enterprises to get their trademark or service mark registered, in order to stop any kind of fraudulent or unofficial use thereof. A service or a trademark helps consumers in making decisions via the classification of various goods and services connected with various trademarks. These registered marks are the reflection of the company’s relationship with the customer, which is why it is significant to protect Intellectual property rights from any kind of violation or exploitation.
In India, the encroachment of a trademark is a cognizable offense which explains that the individual fraudulently using the trade or service mark may also face criminal charges along with civil charges. It is also not essential under Indian law for the trademark to be procedurally registered for the establishment of criminal or civil proceedings. The court provides the following restorative methods in infringement cases-
i.) Temporary injunction
iii.) Permanent injunction
iv.) Account of profits
v.) Cost of legal proceedings
When it comes to criminal charges, the court orders the following punishment:
i.) Imprisonment ( not less than 6 months that may increase to 3 years
ii.) A fine not less than Rs 50,000 that may increase to Rs 2 lakh
As mentioned above Passing off is common ratification of tort which has frequent usage with regards to trademark violations. The rule of passing off protects a person from misrepresenting other services or products as the case may be. The three essential components of passing off are Reputation, Damage to goodwill, and Misrepresentation. These three elements are also called ‘Classical Trinity’ as restated by the House of Lords in the landmark case of Reckitt & Colman Ltd v. Borden Inc. It was mentioned in the case that for a suit to come under passing off the plaintiff must first establish reputation or goodwill connected to his goods or services. Subsequent to that he should prove misrepresentation by the defendant to the public which is making the public believe that the particular good or service provided is of the plaintiff’s. Lastly, he should reveal that he/she has suffered a loss because the defendant’s product or service was vaguely similar to that of his product or service.
In Britannia Industries Ltd. v. ITC Ltd. the Delhi HC intricates upon infringement or exploitation of trademark which is misleadingly similar and can create confusion in the minds of the consumers by way of passing off. The court stated “Passing off has to be looked upon from the point of view of the customer who wants to buy the product. Is he, having earlier bought the product of the plaintiff, likely, on later coming across the product of the defendant, likely to confound it as having been made by the plaintiff? Are the products and packaging so alike that the customer, of average aptitude and imperfect memory, may, on later coming across the defendants' pack, correlating it with the plaintiff?”
Intellectual Property is not an uncommon concept, it is a concept that is prevailing on a daily basis in life whether a book, food item, software or electronic gadget or equipment, etc. It has become a familiar concept due to the increase in internet usage and upgrading the presence of media. With the extensive ease of doing business in India, there has been a huge increase in the number of start-up businesses officially entering their trademarks in the country which is apparent from the growth in the number of applications for registration.
The article first published on Lexology.com and the same can be accessed here.