Answer ... Trademark infringement is a violation of the exclusive rights attached to a registered trademark without the authorisation of the trademark owner or any licensees. Infringement may occur when one party, the infringer, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to those which the registration covers. The owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark.
Sections 29 and 30 of the Trade Marks Act, 1999 deal with the infringement action as a remedy against unlawful and unauthorised use of a registered trademark.
The following remedies are available against trademark infringement:
- Civil remedies: Civil remedies can be sought by filing suit for infringement before the competent court. The following forms of civil reliefs are available:
- Interlocutory/temporary/ad interim injunction: Discretionary relief offered to the plaintiff that prohibits an action by a party to a lawsuit until disposal of the suit;
- Mareva injunction: a right to protect the interests of the plaintiff while the suit is pending, which restrains the defendant from disposing of its assets until the trial ends or the judgment is passed;
- Anton Piller order: an order passed to ensure that relevant documents and infringing articles are not removed or destroyed by the defendant, thus allowing the plaintiff to enter the premises of the defendant and take inspection of relevant documents and articles and make copies thereof or remove the same for safe custody;
- John Doe order: an order issued by the court to search and seize against unnamed/ unknown defendants;
- Permanent/perpetual injunction: a final order of a court that a person refrain from activities permanently or take actions in perpetuity;
- Damages or account of profits: damages are granted to the plaintiff to compensate for the losses suffered on account of the defendant’s acts. Account of profits is an equitable remedy which requires the defendant to hand over to the plaintiff the actual profits made due to the infringing activities; and
- Delivery up and destruction: the handing over or destruction of the infringing goods by the defendant.
- Criminal remedies: The Trade Marks Act 1999 enumerates numerous offences in relation to falsifying and falsely applying a trademark, making or possessing instruments for falsifying trademarks, applying false trade descriptions and so on. The punishments for these offences vary, but the maximum punishment can be as severe as imprisonment for up to three (3) years, with or without a fine.
- Administrative remedies: The following administrative remedies are available against trademark infringement:
- opposition against a similar mark;
- rectification of a registered mark; and
- recordal with Customs to prevent the import or export of goods bearing the infringed trademark.
Answer ... As per Section 29(4) of the Trade Marks Act, 1999, trademark infringement in the form of dilution will occur only when a person uses a trademark that:
- is identical or similar to the registered trademark;
- is used in relation to goods or services other than those covered by the registered trademark; and
- takes unfair advantage of a registered trademark that has a reputation in India.
The doctrine of dilution gives further powers to the owner of a well-known trademark. Section 29(4) offers a remedy independent of the infringement action, allowing the owner of a well-known registered trademark to claim for civil, criminal and administrative remedies. The doctrine of dilution works at the discretion of the courts and according to the tests set by the courts. For instance, the court will consider the overall structure and the visual, phonetic and conceptual similarity of the marks, the nature of the community, the class of purchasers, the mode of purchase and other relevant circumstances. If the court finds a risk of dilution, the mark will not be allowed in the market, so as to avoid confusion.
Answer ... Besides infringement and dilution, courts in India also recognise passing off as a remedy under common law. Passing off is a tort actionable under common law and is mainly used to protect the goodwill attached to unregistered trademarks. Section 27 of the Trade Marks Act, 1999 provides that no infringement action will lie in respect of an unregistered trademark but recognises the common law rights of a trademark owner to take action against any person for passing off/misrepresenting its goods or services as those of another person, causing actual loss and damage to the business or goodwill of the trademark owner.
Answer ... Violation of the exclusive rights granted to a registered owner, under the Trade Marks Act, 1999, to use its trademark in relation to the goods or services for which the mark is registered constitutes trademark infringement.
The procedure for trademark infringement follows the same stages as any other civil commercial litigation, which broadly includes the following:
- filing and ex parte orders;
- completion of pleadings (written statement, replication, replies to applications and so on) by both parties;
- arguments on interim applications (including application for injunctions);
- framing of issues to be proven by parties during trial;
- trial; and
- final arguments.
Answer ... The following defences are available to a defendant in trademark litigation:
- honest and good-faith adoption and use;
- prior use or adoption of the mark
- difference in goods and services;
- unrelated target audience who are the customers
- the nature of the product and its pricing;
- the absence of confusion, deception or similarity of the mark;
- delay by the plaintiff in initiating action due to prejudice against the defendant; and
- acquiescence by the plaintiff for not contesting the validity of the mark for a continuous period of five or more years.
Answer ... Any party which is aggrieved by the decision of the court can challenge that decision before a higher appellate court. The determination of the appellate court will depend upon the subject matter and the monetary value of the case. Appeals are heard as follows:
- A judgment/order or decree passed by a district court can be challenged before the high court with jurisdiction over that district court;
- An appeal against an original judgment/order of a single bench of a high court can be challenged before the division bench of that high court as a ‘regular first appeal’ and
- An appeal against a judgment or decree in a regular first appeal can be challenged before the Supreme Court, which is the highest appellate body.