This Article has been Authored by Mr. Atul Dhyani
INTRODUCTION
Section 29 and 30 of the Trade Marks Act, 1999 deals with the infringement actions as a remedy against unlawful and unauthorized use of a trademark. Also, the Indian courts recognize 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 associated with unregistered trademarks.
Indian Trademark Law provides civil, criminal, as well as administrative remedies for taking action against infringement, dilution and/ or passing off of a trademark.
A) CIVIL REMEDIES
The Trade Marks Act, 1999 lays down certain civil remedies to the owner of the trademark whose trademark has been infringed.
1. Injunction – Injunction or authoritative direction by the court of law is a civil remedy that can be seek through court. Court can grant two types of injunctions that are perpetual and temporary. Perpetual injunction is granted depending on the suit concerned and when the same is supposed to be decreed and therefore is of permanent nature.
2. 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 remit to the Plaintiff the actual amounts of profits made due to the infringing activities; and
3. Hand over and Destruction – The Defendant hands over the infringing goods to the Plaintiff or destroys them altogether.
Section 135 of the Trade Marks Act, 1999 prevents the defendant from taking off assets from the court’s jurisdiction. The concerned court appoints a local commissioner to raid and seal the goods or materials that are infringing in nature in execution of a civil remedy. Civil actions are the most effective form of remedy available in trademark infringement suits.
B) CRIMINAL REMEDIES
The Act listed numerous offences under the Act which are cognizable. The various Sections of the Act empowers the police to arrest the accused at the time of raids. Complaints seeking criminal remedy are filed under Sections 103 and 104 of the Act.
- Sections 103 of the Act has provision of six months of imprisonment which can be extended till a time frame of three years for infringing trademark rights.
- Section 104 of the Act has provision of penalties against an infringement. A fine of fifty thousand rupees which can be increased till an extent of two lakhs in case someone is found to transgress the trademark rights.
- Section 105 has provision of inflating version of punishment.
Although, court directs Police to investigate but the complainant can help the police to locate the infringers. The complainant has to follow up with the Police after the raids to prove that the products seized are counterfeit.
C) ADMINISTRATIVE REMEDIES
Following administrative remedies are available against the trademark infringement. These remedies can be initiated at the Indian Trademark Office:
Opposition against a similar mark
After publication of the mark and during opposition period any right holder or third party can oppose the mark for registration. Opposition proceedings can be initiated by filing a petition with the Trademark Office. Evidence is submitted by both parties to support their claims, and a decision is taken if the trademark ought to remain on the register.
Rectification of a registered mark
If the mark is registered, any aggrieved party can file request for the rectification, or cancellation of registration, or removal, of a registered trademark, if that person believes that the mark is wrongly remaining on the trademarks register.
Recordal with Customs to prevent the import or export of goods bearing the infringed trademark.
It is carried out by keeping a check in the trade activity of the goods which are imported and exported and bear an infringed trademark. Thus, import as well as export of goods that are labelled with a trademark that is fraudulent are restricted by the custom authorities.
