Diligent trademark policing necessarily requires proper consideration of the actual harm, as opposed to an emotional reaction when a brand owner sees an arguably fair, but unauthorized, use of its trademarks. Trademark owners must take into consideration risks that legitimate enforcement actions may be regarded as bullying. Prior to initiating any action for violation of rights in a trademark, a brand owner should carefully take into consideration the likely reaction it may cause. Brand bullying may be distinguished from an action taken by an owner of a well-known brand who seeks to prevent its dilution. In the case of the former, there may be no nexus whatsoever between the goods or services of the brand bully and the perceived violator.
Further illustrations:
A recent attempt by a logistics solutions company providing cargo management and delivery services to prevent the use of its registered trademark/trade name “GATI” by a non-profitable trust whose objectives were to support, facilitate and promote emerging artists in the field of dance, failed. Due weightage was given to the facts that the parties were engaged in and provided altogether different activities and there were no chances of any confusion or deception arising. Additionally the term “GATI” is a common Hindi and Sanskrit word meaning “movement” and has a direct reference to the business activity of dance. It was held by the Delhi High Court that no prejudice, harm or injury would be caused to the logistics/cargo service provider if an identical mark were used to operate a dance forum.
In another case decided on the same day by the same Court, the Defendant, a coaching institute which tutored engineering aspirants for entrance exams to premier educational institutes, was restrained from using the Plaintiff’s registered trademark “BRAHMOS” (used by the Plaintiff for supersonic missiles), for dissimilar services (viz. educational services) on account of it being well-known and qualified for protection albeit the dissimilarity.
In arriving at its decision the Court took into consideration that:
1) The Defendant was not in a position to validly justify how it came to adopt BRAHMOS (
2) The Defendant had used BRAHMOS with a dishonest and mala fide intention and motive viz. to cash in on the goodwill and reputation of the Plaintiffs
3) BRAHMOS was coined, honestly adopted and used prior in point of time by the Plaintiff
4) BRAHMOS was a dominant and prominent part of the corporate name and trading style of the Plaintiffs.
5) Additionally the Plaintiff also imparted educational programs relating to the aerospace industry.
Upon being served with a cease and desist notice or even being sued, the bullied entity needs to consider whether its acts are infringing and whether it can stop using the mark with little or no harm to itself. In such cases, it is reasonable and less expensive to cease the infringing act. Where the target is of an opinion that its use is legitimate and ceasing the use will cause significant damage or loss, it may explain that to the purported bully and seek a resolution perhaps through a coexistence or consent agreement. Yet another option is agreeing to rebrand, but requesting for a reasonable period to do so and being reimbursed with rebranding costs.
Where an amicable solution cannot be arrived at and specifically in cases involving actual bullying, the bullied entity may seek a declaratory judgment from a court or carry out an extensive public relations campaign in the media. Facepets.com has done exactly this. It has filed a suit claiming clarification from the District Court of Tennessee at Nashville that it does not infringe or dilute Facebook’s trademarks and also that Facebook has engaged in the practice of trademark bullying.
The bullied entity may protect itself from trademark bullying by taking care when selecting brands by engaging the services of a competent trademark attorney who would conduct thorough trademark availability searches, and only pursuant to which approve the adoption of a suitable hassle-free brand and filing of a trademark application seeking its registration.
