INTRODUCTION
Besides granting exclusive rights to the applicant for using the trademark, trademark laws also prevents any unlawful and unauthorized use of the mark by any third person. Accordingly, the applicant of a trademark following remedies available to enforce his trademark rights against potential infringers:
CIVIL REMEDIES
Civil remedies can be enforced by filing a suit for infringement/ passing off in a competent court.
- ACTION FOR INRINGEMENT
- ACTION FOR PASSING OFF
An action for infringement is a statutory remedy available for enforcing the rights of a registered proprietor. Section 29 and 30 of the Trade Marks Act, 1999 deal with the infringement action as a remedy against unlawful and unauthorized use of a registered trademark. In India, the use of registered trademark or any mark identical, or deceptively similar to the registered trademark, by any person who is not the registered proprietor, or license holder of the mark, with respect to the goods and services for which the mark is registered, constitutes infringement.
Action for Passing off is founded upon the principles of common law. The Trade Marks Act, 1999 does not define Passing off, however, the Act denies the registration of any trademark if the use of the mark is prevented in India by virtue of the law of passing off. Therefore, an action for passing off can be filed by a person who does not have a registered trademark in India. Pre-requisites for filing action for passing off were identified by Lord Diplock in the case of Ervin Warnik B. V. versus J. Townend & Sons (Hull) Ltd., (1979) 2 All ER 927 and same are reproduced hereunder:
1. Misrepresentation,
2. The act must be made by the defendant in course of trade,
3. The prospective or ultimate customers of the plaintiff’s goods and services have been misrepresented,
4. Such an act of misrepresentation is calculated to injure the business or goodwill of the plaintiff, and
5. Such act causes actual damage to the business or goodwill of the plaintiff.
For successful claim of passing off, it is important for the plaintiff to pass the Classical Trinity test laid down in case of Perry versus Truefitt (1842) 6 Beav 66 and Reckitt & Colman Products Ltd. v. Borden Incorporation, (1990) 1 All ER 873. The test requires the plaintiff to prove following three elements:
1. Reputation or goodwill of plaintiff,
2. Misrepresentation ( intentional or unintentional) on part of the defendant, and
3. Damage suffered by the plaintiff or is likely to suffer damage due to such misrepresentation.
JURISDICTION
Being a statutory right, Section 134 of the Trade Marks Act, 1999 provides the jurisdiction for filing an infringement suit. As per the provisions, a suit for infringement can be instituted before a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
RELIEF(S) WHICH CAN BE CLAIMED
- Interlocutory/ Temporary/ Ad-interim Injunction – A discretionary relief that is offered to the Plaintiff, prohibiting an action by a party to a lawsuit until the disposal of the suit;
- Mareva Injunction – A specific kind of interim injunction that is granted to restrain the defendant from disposing off their assets until the trial ends or the judgment is delivered;
- Anton Piller Order – These orders allow the Plaintiff to enter the premises of the Defendant and take inspection of relevant documents and articles and take copies or remove them for safe custody, to ensure that relevant documents and infringing articles are not removed or destroyed by the Defendant;
- John Doe Order – These are orders issued by a Court to search and seize against unnamed/ unknown Defendants;
- Permanent/ Perpetual Injunction – The final order that a person be refrained from specified (infringing) activities permanently or take actions in perpetuity;
- Damages or Accounts of Profits – Damages granted to the Plaintiff to compensate for losses suffered on account of the Defendant's acts. Accounts of profits are an equitable remedy which requires the Defendant to hand over to the Plaintiff the actual amounts of profits made due to the infringing activities; and
- Delivery up and Destruction – The Defendant hands over the infringing goods to the Plaintiff or destroys them altogether.
General Defences Available with the Defendant
Invalid registration
Section 31 of the Trade Marks Act, 1999 states that the registration certificate is only prima facie proof of validity of the mark and the rights conferred under Section 28(1) of the Act subsist on the registration being valid. A defendant may thus plead invalidity of a registration in an infringement suit, coupled with filing a petition for cancellation of the registration before the Intellectual Property Appellate Board (IPAB), an independent statutory tribunal for adjudicating such petitions. If the court finds the plea of invalidity to be prima facie tenable, it will stay the suit to await the outcome of the cancellation petition filed before the IPAB. However, this will not preclude the court from ordering an interim injunction where appropriate. If the IPAB cancels the trademark registration, the suit for infringement will not survive and the defendant will escape liability.
Use in accordance with honest practice
Section 30(1) of the Trade Marks Act, 1999 protects a defendant’s use of the plaintiff’s trademark where such use is for the purposes of identifying the proprietor of the mark. Such use must not be such as to take unfair advantage of, or be detrimental to, the distinctive character or repute of the plaintiff’s trademark.
Use to indicate kind or quality of goods
Section 30(2)(a) of the Trade Marks Act, 1999 allows use of a mark in relation to goods or services to indicate the kind, quality, purpose, value and geographical origin of the goods or services, among other things.
Exhaustion of rights
Section 30(3) of the Trade Marks Act, 1999 provides that a registered proprietor’s rights are exhausted once the proprietor puts the goods on the market. India follows the principle of international exhaustion, which implies that the sale of goods anywhere in the world exhausts the rights of the trademark owner.
Prior user
Section 34 of the Trade Marks Act, 1999 protects a prior user’s right against the registration of an identical or deceptively similar trademark by a subsequent user.
Use of name in good faith
Section 35 of the Trade Marks Act, 1999 precludes a registered proprietor from preventing others from doing business in their own name in good faith.
APPEALS
An appeal from an order or judgment of a district court goes before the relevant state’s high court. An appeal from an order of a single judge of a high court exercising ordinary original civil jurisdiction goes before the division bench of the high court. Under the Article 136 of the Constitution of India, the Supreme Court has authority and discretion to grant leave to hear an appeal from any judgment, decree, determination, sentence or order in any cause or matter passed or made by any court or tribunal in India.
CRIMINAL REMEDIES
The Act lists numerous offences for falsifying and falsely applying a trademark, making or possessing instruments for falsifying trademarks, applying false trade descriptions, etc. Punishment for the various offences vary, but the maximum punishment can be as high as imprisonment up to 3 years, with or without fine.
Offences under the Act are cognisable. Thus, the police at the time of raids are empowered not only to seize infringing goods, but also arrest the accused. Complaints seeking criminal remedy are filed under Sections 103 and 104 of the Trade Marks Act, 1999. A complaint can be filed at the Magistrate Court seeking an order to direct the police to investigate and carry out raids. Once a complaint is filed, the Magistrate records the evidence of the complainant and issues an order with appropriate directions to the Police.
While the order is a direction to the Police to investigate, the complainant is obligated to locate the infringers and direct the Police to them. A single complaint against "unknown persons" can be used to carry out raids against different and unconnected parties. It is the sole responsibility of the complainant to follow up with the Police after the raids have been carried out and prove that the products seized are counterfeit.
FAQS
The registered proprietor or the registered user of the trademark can institute a suit for infringement.
Action against passing off can be taken by the owner of a registered mark or an unregistered mark.
The three prerequisites to a suit against passing off action, based on the classic trinity test, are:
- there must goodwill and reputation attached to the infringed goods or services used in respect of the trademark,
- misrepresentation made by the defendant to pass off their goods or services as that of the plaintiff’s., and
- actual loss suffered by the plaintiff due to the misrepresentation. .
Yes, a composite suit may be filed for infringement and passing off as the cause of action for both arises from the same act.
Yes, an infringement suit can be filed against the registered proprietor of the trademark.
The limitation period for filing a suit for infringement or passing off is three years from the date of the cause of action. If the infringement is recurring, a fresh cause of action arises each time the trademark is infringed.
A trademark infringement suit can be filed in any court not inferior to a District Court. However, every civil suit must be instituted in a Court of the lowest grade which is competent to try it.
Moreover, the suit can be filed in a jurisdiction where the infringed party resides or carries on its business or works for personal gain.
In a trademark infringement suit, one may claim either for damages or account of profits from the defendant. ‘Damages’ refer to the loss suffered by the plaintiff due to the infringement on the part of the defendant. Whereas, ‘account of profits’ refers to profit earned by the defendant out of the unauthorised use of the plaintiff’s trademark.
The highest authority to decide a trademark infringement appeal is the Supreme Court of India.