Trademark Infringement: Protection under Law

Published on 23 Dec 2017 by Tushar

Registered trademarks can be infringed when certain situations arise whereas unregistered trademarks being used in society cannot be ‘infringed’ per se but can only be ‘passed-off’.

Hence an unregistered trademark being used in society can be only be violated by someone else passing off (claiming to be the same person/ same brand) goods as the goods of the person originally using the mark on their goods or services. Registration of Trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India.  Both civil and criminal remedies are simultaneously available against infringement and passing off. 

Advantages of Registered Trademarks

  1. Under infringement, the aggrieved owner of an infringed trademark is only required to show the infringer is using a mark which is deceptively similar to the original. There is a presumption of confusion in favour of the registered trademark holder.
  2. In passing off, apart from proving deceptive similarity the Plaintiff is also required to prove confusion in public and likelihood of injury to the plaintiff’s goodwill as the presumption would not exist in either of the parties’ favour.

Infringement or Passing off of Trademark

Unauthorised Use

  1. Trademark infringement/Passing off is the unauthorized use of a trademark or service mark on competing or related goods and services.
  2. A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade in any way which causes confusion in general public.

Cause of confusion in the Public’s mind

  1. The success of a lawsuit to stop the infringement depends on whether the defendant’s use causes a likelihood of confusion in the average consumer.
  2. If that mark is being used in a different form of business from that in which a registered Trademark is being used and has some identical or similar feature, still it amounts to infringement/passing off of trademark.

Remedy for infringement and passing off of Trademark

There is two type of remedy is provided in case of infringement/passing off of Trademark. Plaintiff has the option to initiate a proceeding under any one or both of them.

  1. Civil remedies,
  2. Criminal remedies

Civil Remedies

  1. A suit can be filed in the appropriate District Court for the infringement or passing off.
  2. The use by the defendant of any trademark must be identical with or deceptively similar to the plaintiff’s trademark, whether registered or unregistered.
  3. Jurisdiction for the same will be, where the head office of the plaintiff is situated or where the cause of action has arisen.

Reliefs Available

Relief In a suit for Infringement/Passing off if the court agrees (on the request of plaintiff ), can grant either or together:

  1. Damages in the form of compensation which may be over and above the;
  2. account of profits gained from the infringement or passing off of Trademarked goods or services.
  3. Damages and Accounting for the illegal profits made can be passed together with an order for the delivery-up of the infringing labels and marks for destruction or erasure of the goods so infringed or passed off.
  4. Ex Parte Orders and Interim Orders for urgent cases- Under Section Court can give Ex parte or interlocutory injunction order for discovery of documents, preserving of infringing goods, documents or restraining the defendant from disposing of Assets which cause adversely affects the plaintiff.
  5. ‘Injunction’ refers to an Order which restrains the further use of the infringing mark.

Criminal remedies

Any person who uses a particular Trademark in India without permission of the proprietor and makes that trademark deceptively similar shall be deemed to falsify a trademark.

  1. Any person who falsifies any trademark or falsely applies to goods or services any Trademark;
  2. shall be punishable with imprisonment for a term which shall not be less than 6 months but which may extend to 3 years and with fine which shall not be less than Rs50,000 but which may extend to Rs. 2,00,000.

Punishment for Abetment

Any person who helped the accused by selling, providing or hiring services of the such good, possessing such goods for sale or any other possible way will be punished with imprisonment for a term which shall not be less than 6 months but which may extend to 6 years and with fine which shall not be less than Rs 50,000 but which may extend to Rs 2,00,000.

Except in the case where that person can prove that

  1. He had taken all necessary precautions at the time of the alleged offence.
  2. He gave all the information in his power, to the prosecutor with respect to the person from whom he obtained such goods or things or services.
  3. He had acted innocently

Second Time Offenders – The same persons as involved in infringement or abetment of the same can be sentenced to 1 year in prison extending up to 3 years with fine.

Procedure under Criminal law

  1. The standard procedure of cognizable criminal cases follows for Trademark cases.
  2. The first step is to file an FIR with the Police, followed by a complaint to the magistrate directly in cases of lukewarm response by police.
  3. Upon registering the FIR or on the order of magistrate (as the case may be) the investigation will be initiated and conducted by the police officer which include search and seizure of the good with the infringed trademark.

Benefits of criminal remedy in case of infringement

The victim can initiate proceedings even against unknown persons. It may happen that the identity of the manufactures and the distributors of the infringing material is not known to the complainant and the same operates as an obstacle to initiation of criminal action, but under Section 93 and 94 of CrPC under which one can request for initiation of a search and seizure proceedings against known and unknown persons.

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