Trademark Enforcement Remedies in India

With our economy's increasing globalisation and the adoption of numerous brands and products, the possibility of parties infringing, diluting, or passing off valuable brands grows day by day.

Trademark infringement is the violation of a registered trademark's exclusive rights without the permission of the trademark owner or any licensees.

Sections 29 and 30 of the Trade Marks Act, 1999 ("the Act") address infringement actions as a remedy for unlawful and unauthorised trademark use. In addition to infringement and dilution, courts in India recognise passing off as a common law remedy.

Let's get in-depth and learn everything about trademark enforcement remedies in India.

Trademark violation

Section 29 of the Trademarks Act of 1999 states that a registered proprietor has the right to sue any rival trader who uses an identical or similar mark concerning the same or comparable products or services for which the mark gets registered.

The registration of the mark is required before suing for infringement. Section 29 also specifies the various ways in which someone may infringe on a trademark, which are as follows:

• Using a mark identical or deceptively similar to the trademark concerning goods or services for which the trademark has been registered

• Application of the registered trademark to a material intended to be used for labelling or packaging of goods, as a business paper, or for advertising goods or services even though such a person was not duly authorised by the trademark's proprietor or licensee

• In situations where a trademark is advertised and such advertising benefits from and is contrary to ethical business practices, is harmful to the trademark's distinctiveness, or is detrimental to the trademark's reputation, the trademark may get prohibited from being advertised.

• When the distinguishing elements of a registered mark include words, infringement of trademark may occur through the spoken use of such words and their visual representations.

Passing off

Passing off is an actionable offence in which a person misrepresents his goods as those of another. The following essential features of a passing-off action were elucidated in the case of Erven Warnink B.V. v J. Townend & Sons (Hull) Ltd.:

• Fraudulent Representation

• In the course of business

• Aimed at prospective customers of their ultimate consumers of goods or services provided by them

• A reasonably foreseeable consequence of harming another trader's business or reputation

• Actual damage to the trader's business or goodwill who initiated the action

While the remedy for infringement of trademark is a statutory right, the remedy for passing off is a common-law right based on the principle of equity.

Civil remedies

Whether the trademark is registered, registered, or not registered, a lawsuit can be filed for passing off or infringement. It is good to take legal action against the infringer as soon as possible so that the Court can see how serious the rights holder was about what they were doing. If you wait too long to take action, it could hurt your chances of getting an injunction.

You can get civil remedies by filing a suit for violation in a court that has the right to hear it. You can get the following types of civil relief:

• Interlocutory, temporary, or Ad-Interim Injunction
• Mareva Injunction
• Anton Piller Order
• John Doe Order
• Permanent/ Perpetual Injunction
• Damages or Profit Shares
• Shipping up and destroying

Criminal remedies

Sections 103 and 104 of the Trademarks Act, 1999, provide for filing criminal complaints seeking redress. Such complaints are filed in the Magistrate court to obtain an order directing the police to investigate and conduct raids. The penalty for applying for false trademarks, trade descriptions, etc., is addressed in Section 103 of the Trademarks Act of 1999.

Section 104 addresses the penalty for selling goods or providing services with a false trademark or trade description. Both sections provide imprisonment for six months, which may get extended to three years, and a fine of not less than fifty thousand rupees, which may get increased to two lakh rupees.

Section 105 stipulates that a second or subsequent conviction will result in imprisonment for a term of not less than one year but not more than three years, as well as a fine of not less than one lakh rupees but not exceeding two lakh rupees.

To Conclude:

Before 1940, there was no law about trademarks in India. The Specific Relief Act of 1877's Section 54 was used to resolve several trademark infringement cases, and the Indian Registration Act of 1908 was used to decide registration disputes.

The Indian Trademark Act was passed in 1940 to address these problems. As trade and commerce expanded following the implementation of the trademark law, the demand for trademark protection increased.

There are both civil and criminal remedies available for trademark enforcement rights. In cases of trademark infringement and passing off, civil remedies are provided, while criminal remedies for trademark enforcement are provided in Sections 103 and 104.