A registered trademark is said to be infringed in the following circumstances

  • If a mark which is identical with, or deceptively similar to, the registered trademark is used in relation to the same or similar goods or services.

  • If the use of the identical/similar mark for identical/similar goods or services is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark.

  • If the use of the identical/similar mark for different goods or services is likely to take unfair advantage of or be detrimental to the reputation of the registered trademark in India, cause confusion on the part of the public or which is likely to have an association with the registered trademark.

  • If a third party uses the registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern for goods or services in respect of which the trademark is registered.

  • If the registered trademark is applied to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person was not duly authorized by the proprietor of the trademark to do so.

  • If a trademark is advertised and if (a) it takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trademark.

  • If the distinctive element of a registered trademark consist of or includes words, and another mark creates consumer confusion when spoken or visually represented.

  • Being a signatory to the Paris Convention and TRIPS, the India recognizes the concept of a well-known mark. A mark, which has been designated as a well-known mark, is accorded stronger protection because of this status. Under the provisions of The Trade Marks Act, 1999, the factors that go into determining whether a trademark is a well-known mark are as follows:

  • The knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trademark;

  • The duration, extent and geographical area of any use of that trademark;

  • The duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;

  • The duration and geographical area of any registration of or any publication for registration of that trademark under this Act to the extent they reflect the use or recognition of the trademark;

  • The record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognized as a well-known trademark by any court or Registrar under that record.

  • Though under the provisions of the Trade Marks Act, 1999 the Registrar of Trade Marks is required to maintain a register of the marks that have been designated, as well-known trademark, the Registrar of Trade Marks has not yet commenced this. It is expected that this register will be extremely helpful to rights holder.

  • The Trade Marks Act, 1999 provides for both civil and criminal remedies. With the coming in force of the Act, a new appellate body known as the Intellectual Property Appellate Board has been created. Appeals from the Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications now go to the Appellate Board instead of the High Courts. This has been done with the purpose to reducing the backlog of cases and for increasing IP expertise at the Appellate level.

Civil Litigation Procedures

  • A suit can be initiated either under the laws of passing off or for infringement under The Trade Marks Act, 1999 depending on whether the trademark is unregistered, pending registration or registered respectively.

Jurisdiction and Venue

The suit for passing off and/or infringement can be initiated either in the District Court or in the High Court depending on the valuation of the suit. The suit can be at the place where the rights holder or one of the rights holders actually and voluntarily reside or work for gain or carries on business.

Elements of the Complaint

In the Complaint the rights holder is required to demonstrate that (a) the alleged infringing act involves a mark that is identical or similar to a trademark of the rights holder; (b) the infringing representation of a the trademark is being used in connection with goods or services and might lead to confusion in public regarding the origin of the infringing goods/services; (c) the unlawful act interfered with the trademark holder's rights of exclusive use or caused the rights holder economic loss

Statute of Limitation

As a general policy in India, as is prescribed in the Limitation Act, the rights holder has a period of three years from the cause of action for filing the suit. However, as trademark infringement is a continuing offence and the infringer violates the exclusive proprietary right of the rights holder every time he commits a discreet infringing act, the infringing period will run anew with each new act. Nevertheless, it is advisable that the legal action be initiated against the infringer as promptly as possible in order to establish the seriousness of the rights holder's intent before the Court.

Ex-parte Interim Injunction

Most Indian courts will grant ex-parte interim injunctions. Ex-parte interim injunction is a temporary injunction granted without any notice to the infringer restraining him from using the infringing mark during the pendency of the trial. This injunction is normally granted at the early stages of the trial and many a times on the first date of hearing itself, provided that the rights holder is able to establish its rights before the Court and prove the gravity of the offence merits immediate consideration.

Appointment of the Local Commissioner

Depending on the facts of the case it is also advisable to ask the Court to appoint a local commissioner on the first date of the hearing who will raid the premises of the infringer where the infringing good are stored in order to seize the goods.

Criminal Litigation Procedures

Enforcement Action

The Trade Marks Act, 1999 provides for remedies for infringement under the criminal laws too.

Under the trademark laws, the police have the power to suomoto conduct raids and seizure operations. However, the use of such powers by the police is minimal. Under the criminal laws, should the rights holder not be aware of the details (name, address, dates of infringement, etc.) of the infringers, it is advisable to procure a general search and seizure warrant from the local magistrate and thereafter organize search and seizure operations in that area. In the alternative, should the rights holder be aware of the details of the infringer a complaint can be lodged with the police authorities and raids organized accordingly. In a criminal proceeding the litigation is between the State and the infringer and therefore the rights holder has a limited role to play. The maximum imprisonment that an infringer can get under The Trade Marks Act, 1999 is up to three years with a fine of up to INR three lakhs (approximately US $ 7140).

Customs

Provisions under the Customs Laws

Besides the civil and the criminal remedies mentioned herein above, there are also certain provisions under the trademark law and the customs law which prohibit the importation of infringing goods in India. The Customs Authorities have recently promulgated guidelines known as the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, under which the rights holder can record their registered trademarks with the Customs authorities. These guidelines authorize the Custom officials to seize goods infringing the trademarks of the rights holder at the border without obtaining any orders from the court[4]. Under these rules, the Custom authorities have initiated a recordation system using which the rights holder may give a notice in writing to the Commissioner of Customs or any other Customs officer authorized by the Commissioner at the port of import of infringing goods requesting the suspension of clearance of goods suspected to be infringing the trademarks of the rights holder. Subsequent to the filing of such notice, the Commissioner is bound to notify the rights holder within the prescribed time regarding the acceptance or rejection of this notice. In case of acceptance of the notice, the normal period of validity of such registration is one year during which assistance will be rendered by the Customs authorities to the rights holder to prohibit the importation of infringing goods at the border. After the grant of this registration the importation of goods that infringe the rights holder trademarks are deemed to be prohibited, as has been defined under The Customs Act, 1962. The Customs officers have the authority to suspend the clearance of such prohibited goods either at the information received by the rights holder or by initiating suo moto action, provided they have prima facie evidence or reasonable grounds to believe that the imported goods are goods infringing the trademarks of the rights holder. After the clearance of the suspected goods is suspended the Customs authorities have to inform the rights holder of the same and should the rights holder not execute the requisite bond and join the proceedings against the importer within the prescribed period the Customs authorities will release the suspended goods. These rules also empower the Custom officers to destroy the suspended goods under official supervision or dispose them outside the normal channels of commerce after it has been determined that the goods detained have infringed the trademarks of the rights holder and that no legal proceeding is pending in relation to such determination. These rules also prohibit the re-exportation of the goods infringing trademarks in an unaltered state.

Damages

There has been a change in the Indian judicial system in recent times with some of the courts granting damages to the rights holders. However, such cases are still few and far between and the amount of damages not substantial.

 

Contact us for more information (legal@ablemindconsulting.com)