How to Protect your Brand from Trademark Bullies - Survival Guide for Brand Bullying Victims
Do you love burgers? What brand strikes you first when you think about burgers? You would definitely vouch on McDonalds. That’s the first name that would strike you right?
Talking about it, recently this fast food company was accused of being a trademark bully by the CEO of SUPERMAC FAST FOOD Chain. McDonalds is accused of trademarking every word containing Mc or Mac and that has led to a lot of complaints being filed in both EU Intellectual Property Office and US Intellectual Property Office.
Not only with the names, brands have been committing trademark bully even with the visual appearance of the products and one such brand is Adidas. Adidas is famously recognised by their three stripes printed on all their footwear and sports apparels. Yes, agreed that three strips is their thing but that does not give them the rights to restrict others from using three strips when there is huge difference is the usage.
You would be puzzled of what we are trying to tell you here, so let us make it easy for you to understand-
Adidas recently sued Forever 21 for using the three stripes in their clothing. The stand taken by Forever 21 was that the stripes used were for aesthetic appearance and not to represent any brand to confuse the public of their association with Adidas.
There are clear examples of trademark bullying or in simple terms trademark ruling of one brand over the other brand. Yes, it is illegal and in this article we would focus on how we can use legal means to put an end to this illegal act.
TRADEMARK BULLY- IS THAT EVEN A THING?
Trademarks are considered to be a major source of brand recognition and selling point for much business. Brands get their names, logos, packaging and what not to make sure that no one copies their mark or uses them to confuse the public. But, we fail to understand that there is thin line of difference between trademark protection and trademark bullying.
Yes, you need to protect what is yours from people imitating it but that does not mean that you can harass and intimidate other brands beyond what is reasonably allowed. One has to understand a difference between trademark protection and trademark bullying.
Section 142 of the Indian Trademark Act, 1999 states that When a registered owner of the brand threatens or harasses another trademark owner with an action or proceeding for infringement of trademark in a way that the threats are unjustifiable it will amount to trademark bullying. Trademark bullying has taken a toll in India and many industry giants like Bata, ITC, Adidas, McDonalds, and Facebook have been repeatedly doing the same. This has resulted in many baseless trademark infringements suits being filed ending with unjustified bullying.
Constituents of Trademark Bully:
Trademark bully happen when One trademark owner sends an infringement notice to another trademark owner;
Where the owners are of dissimilar marks for non-competitive goods
Notice contains over-reaching claims which threaten or harass the another trademark owner
With unreasonable demand letters
Failing to settle or compromise
The mark claiming infringement desires to claim monopoly in the market.
How does trademark bully operate?
Modus operandi of the companies engaging in such acts is very simple and straight forward. They try to eradicate the competitors from the market whether in same line of business or not by sending out a common notice (also known as Cease and Desist Notice) which will contain threats in a very professional legal language.
The notice will allege the brands to have committed trademark dilution and infringement and will threaten them to stop using the mark. Failure of the brands to reply to these notices or take appropriate actions as demanded by them will lead to either filing for opposition, rectification or sometimes beyond these.
The sender of the notice can alternatively seek for license payments, settlements or enforcement of co-existing agreements from the alleged infringer. The threats of litigation and harassment by unreasonable letters are sufficient to constitute a trademark bully.
What happens when someone does it?
When a registered owner of the brand threatens or harasses another trademark owner with an action or proceeding for infringement of trademark in a way that the threats are unjustifiable it will amount to trademark bullying. This reminds us of a recent case of the Battle of Baskets where Big Basket slapped the Daily Basket (A start-up) with a cease and desist notice for using the term Basket.
Don’t you think that action was quite unreasonable on part of the Big Basket? Terms like Basket, Pantry, Groceries, etc are very commonly used and if you want to claim monopoly over it then defiantly you are going overboard in protecting your mark. No prudent man would associate daily basket with big basket when there is no similarity between the words, logo, combination or pronunciation of these two marks.
Another example worth mentioning here is –
Bharat Matrimony Mark where the company claims exclusive monopoly over the term “Matrimony” and has sued many brands like “thodu needa matrimony.” Common term “Matrimony” has resulted in filing of cases and this is very classic example of trademark bullying.
The effect of trademark bullying is mostly seen on start-ups and small businesses. At a growing stage, when they are clutched with these issues there are high chances of them incurring financial cost of rebranding, removal of products from the markets, and loss of reputation because of such suits.
How can you protect yourself from trademark bullying?
Trademark Bullying has become a major issue in protection and usage of the brand. Indian Trademark law confers exclusive usage rights to these brands. But, at times in the verge of protecting the brands, they go over the line to become a part of trademark bullying. In order to protect your brand from trademark bully, following preventive measures can be taken:
Trademark Search: It is always suggested for a comprehensive trademark search before going for application to ensure that no future oppositions are filed.
Trademark Knowledge: Ignorance of law is no excuse and hence we suggest that you should know the basic trademark laws to understand the difference between a legitimate claim and an unreasonable claim and ways to proceed further.
Defend your mark: No matter what, never give up on your brand. Your brand is your identity. Voluntary move can make you lose your brand forever. Understand the claims and try to defend it.
Amicable Settlements: As far as possible, try finding middle grounds by opting for Alternative Dispute Resolution such as arbitration or mediation. These are quicker and will definitely save you loads of time and cost.
Publicize Bullying: Do not hesitate to voice your opinion. If you are a victim of trademark bullying, don’t hide it. Make sure you bring the brand and their illegal activities of bullying into the limelight just like how daily baskets did. They basically designed a new website with domain name bbisabully.com and made the legal notice publicly and defended the claims of Big basket vigorously.
Declaration Suit: In case of unreasonable threat for legal action for an unjustified reason, the aggrieved party may move for the suit to obtain a declaration to the extent that such threat is unjustified.
How courts view the trademark bullying read our blog on famous cases of trademark bullying.