What is Contributory Trademark Infringement?

An infringement action is based on invasion of the statutory right of the proprietor of a registered trademark. Section 29 of the Trademark Act, 1999 lays down the provisions for infringement.

The elements that constitute infringement are:

  1. Use of a registered trademark by an unauthorised person.
  2. Use of a trademark which is “identical or “deceptively similar” to the registered trademark.
  3. Registration of trademark.
  4. The use should be in relation o goods and services.

Under section 29, the infringement that occurs is direct infringement. However, there is another aspect to trademark infringement in India, i.e. indirect infringement.

Indirect infringement can be of two types:

  1. Induced Infringement
  2. Contributory Infringement

Indirect infringement is a common law principle that holds accountable not only the direct infringers but also the people who induce the direct infringers to commit the infringement. Contributory Infringement refers to the actions of one person who either allows or causes another person to infringe the right of a protected owner.

A person is liable for contributory infringement if a person knows of the infringement or of a person materially contributes or induces the direct infringer to commit the infringement.

Hence, where the infringer knows or has reason to know about alleged infringement, he can be held liable for Contributory Infringement for helping in resultant infringement.

In the case of service providers, it is often observed through various case laws that lack of specific knowledge and an established claim of fair use prevent liability.

Though the law is clear on the liability of a direct infringer, in case of a contributory infringer, the extent of liability has to be determined to hold the infringer liable.

Under Trademark Law, the doctrine of contributory infringement is similar to those under to those under patent law and copyright law but it is not very well developed.

However in the recent case of Consim Info Pvt. Ltd vs Google India Pvt. Ltd, the Madras High Court dealt with an issue relating to contributory Trademark infringement. In this case, the plaintiff sued Google for trademark infringement because of its ‘Keywords Suggestion Tool’, which was suggesting the use of the Plaintiff’s registered trademark for Google’s ‘Ad-words’ program. 

The court held that contributory infringement required intention and that in the present case since the trademarks were basically descriptive it could not be proved that Google had intentionally suggested these marks with a view to infringe the Plaintiff’s trademarks.

The Court, however, held that if the keyword suggestion tool were to suggest an arbitrary, fanciful trademark then, in that case, it would possibly be held for contributory infringement.

Very interestingly the Court also seem to take issue with Google’s differing trademark policy for different jurisdictions i.e. while it would investigate trademark complaints about both the Adwords text and the keyword suggestion tool in countries like France where it has been successfully sued, in countries like India, U.S.A. and U.K. it limits the trademark complaints to only the AdWords text.  

On the whole, indirect infringement occurs when a person, though not infringing directly, causes another person to infringe on a trademark. With the growth in the e-commerce industry, liability for indirect infringement is extremely important as it holds every involved person accountable.

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