A Comparative Study Of Judicial Approach Between India And U.S.A.


Trademark protection legislation was enacted to give trademark owners exclusive proprietary rights, a monopoly over their trademarks, and safeguard the public’s goodwill. Trademark protection was designed to prevent the sale of counterfeit goods under a well-known brand name, but when these owners go above and beyond their legal rights to defend their mark, the term “trademark bullying” is used. The USPTO defines trademark bullying as “the conduct of a trademark owner using its trademark rights to harass and intimidate another business beyond what the law would fairly be construed to allow.”

Judicial Approach Between India And USAWhen large corporations aim to eliminate competition from markets, they have been found to follow a similar pattern. They send out a standard cease and desist letter that includes legal threats of trademark infringement and dilution. They also indicate that they have had success litigating other businesses that use identical trademarks, and then they file an opposition or rectification action against the small business. The effect on small businesses that lack financial or legal backing is that they seek a settlement in which they are asked to remove their marks, which is accepted by the small businesses. Because of the litigation, small businesses have to pay a lot of money for rebranding, removing products from the market, and losing their reputation. When the trademark owner becomes aggressive in protecting his trademarks, eventually the lines between actual infringement and absurd allegations blur.

This article will examine the notion of trademark bullying, as well as how huge firms interfere with small businesses’ brand building and IPR registration processes, and whether this leads to oppression and bullying of such small organizations.


The danger of such misappropriation had been anticipated by Indian legislators, who established a suitable response under section 142 of the Trademarks Act, 1999, which specifies the law against false legal threats. The provision reads as follows:

Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trademark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trademark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trademark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trademark.”

An injunction might be given in the aggrieved party’s favor to prevent the other person from making further threats and to recover damages. Only those whose trademarks have been registered are eligible for this action. The Copyright Act of 1957, the Patent Act of 1970, and the Designs Act of 2000 all provide provisions for this.


  1. The recent dispute between BigBasket and DailyBasket is the latest example of India’s trademark bullying problem. BigBasket, India’s largest online grocery retailer, issued a cease-and-desist order against Daily Basket, a small business, citing trademark infringement. They argued that simply mentioning or referring to a name including the term “basket” in word or logo form for any E-commerce firm or related products would lead the relevant class of customers to believe that the company was associated with BigBasket. Since the use of words like ‘Basket,’ ‘Cart,’ and ‘Pantry’ by food stores has become prevalent, this trend has enraged a number of people. Because the essence of such grocery enterprises is to give consumers with an online basket/cart/pantry in which they may add products that will later be delivered to them, the terms are likewise in the nature of a suggestive mark (when used in connection with the quintessential aspect of the mark). However, except for the phrase ‘basket,’ there are no other similarities in the marks used by the two firms in this case. Be it their websites, app interfaces, or the respective sector of clients, there seem to be considerable variances. However, in this particular case, Daily Basket adopted an inventive way of vengeance. They retaliated by launching bbisabully.com, an interactive website where they posted the legal notification. As you open the website, the heading states, “BigBasket is bullying dailybasket.com with Cease & desist letter,” where they strongly refute each of BigBasket’s charges, concluding with a note to spread the information, which, needless to say, has spread like wildfire.

In such circumstances, Indian courts have always made rulings on a case-by-case basis. For example, in the instance of Bata India Limited vs VitaflexMauch GmbH[2015], the plaintiff filed a lawsuit against the defendant to prevent them from making unfounded threats of legal action. The fundamental issue before the court was whether the defendant’s legal notice constituted a legal threat and whether the plaintiff was entitled to an injunction and damages. The defendants were directed to refrain from issuing any further false threats by the Delhi High Court, which held that the legal notice amounted to a threat that was unreasonable.

In this scenario, the likelihood of BigBasket’s asserted confusion between their company and that of the start-up Daily Basket in terms of mark utilization appears to be slim. Apart from the term ‘basket,’ there is no similarity between the two marks, and the color, font, visuals, and overall mix of brand names are vastly different. The confusion should be real and proximate, not far away, to the point where both marks are indistinguishable to the registered owner’s clients. That is to say, secondary distinctiveness is required. The use of a common word like ‘basket’ in a different context, on the other hand, does not imply a secondary distinction.

Despite the fact that India currently has a framework in place for such threats, the statute does not precisely describe what constitutes a groundless or baseless threat. However, Indian courts are clear on a few elements, such as whether the marks are actually similar and cause confusion, whether international companies have an intention to bring their product into the country, first to use over first to file, and so on, which have been taken into account when determining whether the same is to be considered bullying or infringement. The Indian judiciary did not hesitate to penalize MNCs and other major enterprises when it became clear that the infructuous cease and desist notices being issued to local firms were harming them erroneously and illegally.


While trademark bullying occurs less frequently in India, it occurs significantly more frequently in the United States. The Trademark Act’s text does not explicitly prohibit such a mercenary focus. It specifies that if a registered mark is violated, the plaintiff is entitled to recover the following:

  1. the defendant’s profits;
  2. any damages suffered by the plaintiff; and
  3. the action expenses.

The following are some recent examples in which US courts have taken a new look at the concept of trademark bullying:

  1. In Apple v. Prepear [2020]: Apple, as a major producer and distributor of electronic goods, tried to force a small company, Prepear, a recipe-sharing app, to release their trademark. Prepear’s and Apple’s logos are easily distinct, with Prepear’s showing a half-eaten apple with the leaf pointing upward and Apple’s featuring a sketch of a pear outlined in green against a white backdrop with the leaf pointing downward. In addition, the goods and services offered were dissimilar. Prepear utilized social media to fight back against the bullying, pointing out how Apple had done the same with other companies who had made fruit logos. Prepear also claimed that they had to fire a number of employees because they couldn’t afford to pay their wages while defending the costly litigation.

In a similar lawsuit of Monster v. Vermonster [2009], Hansen Beverage Co., the maker of the well-known energy drink “MONSTER,” sent a cease-and-desist notice to Rock Art Brewery for using “Vermonster” to sell its produced beer. Rock Act Brewery was a small business that only sold beer in a few states across the United States. According to Hansen, the terms Vermonster for beer and Monster for an energy drink are likely to be confused.

Rock Art was ordered to comply with the notice despite the fact that the marks were wholly dissimilar and unique in their own way; however, the owners of Rock Art stood up to the bullying and released a public statement, as well as begin selling and marketing their goods. They also took to social media which persuaded Hansen to back down and come to a settlement.

Although the dispute between Apple and Prepear has yet to be resolved, it is clear that both logos are distinct, as are the goods and services offered, so any man of average intelligence should have no trouble telling them apart. However, the factors to consider when deciding whether or not there has been a credible infringement or bullying are self-evident.


With a lack of clarity under the law, fewer precedents for defining trademark bullying, and fewer resources available to smaller businesses, public opinion and social media support have become a typical way out for these businesses, as evidenced in the examples above. Unlike the USPTO report, which defined “trademark bullying” and what constituted aggressive behavior, Indian trademark rules have yet to do so. Furthermore, the terms “baseless and groundless” threats under section 142 are less defined, making the distinction between a bona fide act and a bullying act murky. Furthermore, despite the fact that Section 142 authorizes the injured party to seek an injunction and damages, the awful legal proceedings continue to obstruct the process. It’s also pertinent to remember that social media shaming could lead to a larger defamation action in some situations. As a result, in addition to the need for legal clarity, the merits of the case must be taken into account while evaluating such cases. In order to achieve a fair conclusion, the cliché of a “big business giant abusing its position” should be abandoned. As a result, the merits of the case, registration and prior use, history of infringement suits filed by a company against its competitors, similarity in disputed marks, and areas of business in which the parties engage must all be taken into account in order to reach a balanced conclusion that ensures the enforcement and exceedance of the right separate. The trademark act provision’s principal purpose is to ensure that small businesses and local businesses did not lose access to what they were legally entitled to. However, there are steps that may be taken to help alleviate the problem, such as donating funds to smaller organizations like legal aid camps, raising awareness, and law firms taking the initiative and processing more pro bono cases, among other things.

Author: Anuja Saraswat – a student of  B.A.LL.B (Hons.) from NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or contact us at Khurana & Khurana, Advocates and IP Attorney.

Leave a Reply



  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010