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Who has the Secondary Liability in Trademark Infringement? – An Overview

Secondary Liability in Trademark Infringement
| Updated: Jan 21, 2022 | Category: Trademark

In the current world of global trade and market-based economies, Trademark plays an essential role in economic growth. In India, there are various industries that function under the free market concept. For any idea to succeed in the open market, they have to produce brand value and recognition. The modest way via which this has to be completed is Trademark Registration or Brand Name. There are various companies or organisations around the world that work to safeguard intellectual properties, such as Trademarks. In India, Trademark Infringement is a reasonable crime which means that the violator or infringer may also face some criminal charges along with civil charges. Trademarks also make it easier for customers to identify the source of a given product quickly. In this blog, we will discuss what Secondary Liability is and who has Secondary Liability in Trademark Infringement.

What is a Trademark and Trademark Infringement?

Before we discuss who has the Secondary Liability in Trademark Infringement, let’s understand the meaning of a Trademark and Trademark Infringement.

  • Trademark: A Trademark is a logo, phrase, word, or name used to identify a product and distinguish them from the products of others. To fulfil the product’s unique purpose from the customers who want to make their choice between various products of the same kind on the market, Trademarks should be legally safeguarded. Otherwise, opponents could use similar signs for the same or identical products or signs for identical products or signs so similar that the customer would be confused as to the origin of the products. A Trademark can be safeguarded based on wither use of registration. With using, one can know that a specific Trademark belongs to a particular individual or company and with the help of Trademark Registration, one can easily know that the Trademark is already registered.
  • Trademark Infringement: It means using the Trademark or brand name illegally, which creates confusion or mistakes regarding the source of the products or services. This violation may mislead the products’ reputation by using them as copies. For instance, a customer who wants to buy a pair of shoes from Adidas goes to the store & mistakenly buys Abibes, which is a copy of Adidas, then Adidas can file a lawsuit against Abibes as their Trademark is being violated, which makes them get damaged.

Secondary Liability in Trademark Infringement

The concept of Secondary Liability in Trademark Infringement is a common point of the law of torts, which increases when a party significantly gives, encourages, agrees, or is otherwise accountable for directly violating acts passed out by another party. In other words, it refers to the responsibility of Liability on a defendant even though that defendant didn’t directly commit the tort at issue. Secondary Liability is also known as Vicarious Liability, and it is frequently updated on economic productivity grounds.

Secondary Liability is categorised into two different types one is Vicarious Liability, and another is Contributory Liability. Both concepts of Secondary Liability in Trademark Infringement need a fundamental act of Direct Infringement.

For Vicarious Liability under Trademark Law, there should be a valid connection between the defendant and the supposed violator. For creating a Vicarious Liability, a robust connection needs to be proved. The principal-agent partnership that they have the authority to fix one another in contact with 3rd parties. For example, in the case of Gregory vs Piper, the master authorised his or her servant to place waste to block the petitioner from using a specific way. He or she teaches their servant that the rubbish shouldn’t touch the plaintiff’s wall, and the servant did accordingly. However, the waste touched the wall of the plaintiff or petitioner, and the plaintiff sued the defendant for trespass. The defendant was held liable.

Under the Contributory Liability’s  policy, parties other than the direct offender may be held together liable if they acted or performed in performance with or provided help or encouragement to the direct wrongdoer. This means that there should be evidence that the contributory wrongdoer’s actions helped the tortuous act. The contributory wrongdoer should tightly help the performance of an illegal act. For example, X as assistant helps Y to beat Z. Here, X doesn’t come into the conflict but aids. So, X is also responsible for being a Contributive Liability. Hence, the potential wrongdoer must recognise that the direct wrongdoer’s behaviours started a violation of duty.

Courts have known the ease of both common-law theories of Secondary Liability in Trademark Infringement. Ives Laboratories, Inc. vs Inwood Laboratories, in this case, the Court discoursed that although the pharmacists could be held accountable for mislabelling the drugs, there was no evidence or proof that petitioners collaborated with the pharmacists/suggested the pharmacists mislabel the drugs; hence, the conclusion of the appellate Court that petitioners infringed Section 32 of the Trademark Act, 1946[1] was reversed.

The vital case of Secondary Liability in Trademark Infringement, In Harper Brothers vs Kalem Co., the Supreme Court said that the request of Secondary Liability rules to infringement. Until now, despite their common origin and shared language, Trademark & Copyright theories of Secondary Liability increasingly cover different activities.


The concept of Secondary Liability in Trademark Infringement arises from the common law of tort where a load of Liability is on the defendant even though the defendant didn’t directly accept the tort. It is acceptable on moral grounds & economical. In many cases regarding Trademark Infringement, Vicarious Liability is necessary whose understanding comes from the tort law. For Vicarious Trademark Infringement, a principal-agent relationship should be established.

With the help of the common law of the tort, one can be punished for their illegal acts where others suffer physically or financially. As one puts an immense amount of time & effort into creating a brand, it is essential to do everything possible to keep it safe.

Read our Article:What Are The Different Ways To Monetise A Trademark? – Overview

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A legal writing enthusiast, a wanderer, and a zealous reader. After gaining a lot of knowledge about the diverse legal topics and developing research skills, Karan joined the league of legal content writers to deliver quality-rich blogs.

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