THIS ARTICLE HAS BEEN WRITTEN BY ATUL DHYANI, PARTNER, KANALYSIS INDIA and JEROME BERNARD, TRADEMARKS ASSOCIATE, KANALYSIS INDIA
Trademark opposition has become a prolonged and tedious process in contemporary times. In a recent case, the office of the Controller General of Patents Designs and Trademark has submitted on affidavit to the Delhi High Court that more than 200,000 trademark opposition proceedings are pending. They have further disclosed that 1,13,517 trademark oppositions were filed during the period 24-3-2020 to 28-2-2022. After the initial filing process, many cases are waiting to start the hearing procedure to get a final decision.
Although, the Indian Trademark Registry is working hard to reduce the huge pendency of the opposition/cancellation proceedings filed. However, the persistent pendency in settling the opposition/ratification matters has piled up huge number of cases. The Controller General’s Office has taken the initiative by issuing a public notice that the parties to the opposition/ ratification who have settled their proceedings amicably should inform the Trademark Registry along with the supporting settlement documents so that the Trademark Registry would pass suitable orders in the matters as per law. But still, it is a long way that the pendency numbers of opposition/ratification can come down to a manageable number.
Due to the extended delays, lots of aggrieved parties are now turning to civil actions like injunctions instead of filing opposition with the trade mark registry. The entire process of filing opposition/ratification gets dragged into the darkness of delay of many years, due to the high pendency rates. Also, any favourable outcome of opposition will at the maximum result in rejection/removal of infringers trademark application, whereas a civil action suit can result in recovery of damages and injunctions, which can immediately restrict the infringing activity.
Infringement or violation of trademark rights might not always be done by a party who is willing to register their infringing trademark with the registry. When a brand or company becomes successful or popular amongst the consumers, a large number of copycats emerge with inferior quality replicas in order to make some quick buck. In such times, the proprietor of the registered trademark might not even know who the infringing party is or how many are there in the market, in such situations the traditional method of trademark opposition may fall short or be totally ineffective.
In such scenarios filing for injunctions and/or other civil remedies are the most ideal approach for protecting and enforcing one’s rights. This protects the proprietor of registered trademark as the effect of injunctions are felt more immediate and fruitful in favour of registered trademark owner. If any consumer gets any inferior replica product which he believes to be the product of registered trademark owner due to the infringing trademark, the loss or harm on goodwill and the reputation of the company might far outweigh the compensation that might be liable to be paid by the defendant on final adjudication. Multiple such instances during the pendency of the final adjudication or hearing in case of trademark opposition may completely destroy the reputation of a company or organisation leave aside the loss in business.
Therefore, in certain situations prevention of infringement is expedient, injunctions should be filed. It also prevents destruction of evidences and safeguards vested interests of the registered trademark owner. There are different types of injunctions, which help the proprietor of a trademark to get the most desirable and beneficial outcome. These are:
- Interlocutory/Temporary/Interim Injunction- These are the injunctions filed at the onset of a suit preventing the other party from committing an action until the disposal or adjudication of the suit. This is granted in the discretion of the court when a prima facia case is established and there is a possibility of irreparable harm to the plaintiff and balance of convenience is in favour of plaintiff.
- Mareva Injunction- These are the injunctions filed by the plaintiff to prevent the defendant from disposing of his property against the interests of the plaintiff.
- Anton Piller orders- When the defendant might destroy evidence for defeating the ends of justice the court can direct the defendant to grant the plaintiff or a commissioner appointed by court entry to his premises and preserve the evidence.
- John Doe orders- When the plaintiff has no concrete knowledge of who is infringing their rights, the court can order a commission to inspect any premises where infringement might be carried out.
- Permanent /Perpetual Injunction- It is the final order/adjudication of the court that restricts or restrains a person from committing any acts or actions permanently
The enactment of Commercial Courts Act, 2015 and the subsequent amendment, has broadened the scope of commercial courts as it has grown to include intellectual property rights under its ambit & lowered the threshold for approaching the Commercial court to 3 Lakhs INR. The moving away from the provisions of civil procedure code has also contributed to the speedy disposals in the commercial courts. This enables the creation of a more specialised judicial body with respect to the commercial matters when compared to traditional courts.
The Commercial Courts Act 2015 also provides for summary judgement under order XIII-A. This provision allows for quick resolution of claims, where the defendant have no real means of defending the claim. In the cases of SanDisk LLC v. Memory World (CS(COMM) 659/2018) and Ahuja Radios v. A Karim (CS(OS) 447/2013), the Delhi high court issued permanent injunction in favour of the plaintiff, in summary judgement the court was satisfied that the defendants have no real prospects of defending their claims. In cases, where the time taken for final adjudication will keep compounding losses or harm to the plaintiff, the prevention of such injury will be much better than compensating rightful owners later.
Furthermore, the formation of Intellectual Property Division (IPD) in the Delhi High Court has shown a hope of ray of instant relief to a trademark owner whose trademark is being infringed and looking for instant relief in the form of injunction and recovery of punitive damages. In the recent past, there is an upward trend in cases where the applicant filed a suit with the Commercial Courts set up at High Courts for procuring injunctions & recovering punitive damages. Therefore, trademark owners, instead of, filing an opposition/ratification with the Trademark Office which takes several years to start the hearing procedure are moving to Commercial Courts set up by the Hon’ble High Court.
All these developments are steps in the right directions as this expedites the whole process of enforcement of intellectual property rights. As the maxim states “Justice delayed is justice denied”, delays in enforcement of trademarks not only negatively impacts the proprietor but it also effects the innocent, unsuspecting consumers who is unaware of such trademark infringements. So such infringements should be nipped in the bud. Under such injunctions is the best weapon in the arsenal of a trademark proprietor for timely and effective enforcement of their rights.
