Professional Documents
Culture Documents
Comparative Study
Trademarks Enforcement-
Remedies
– Civil
• Infringement
• Passing off
– Criminal
– Administrative
Criminal Offences punishable
under the Act
• Falsifying a trademark: “makes”- Sec 103(a)
• Falsely apply a trademark: “applies” as under Section 101,
TM Act- Sec 103(b)
• Making or possessing instruments for falsifying trade marks
like die, block, machine- Sec 103(c)
• Applying false trade description- Sec 103(d)
• Applying false indication of country of origin- Sec 103(e)
• Tampering with an indication of origin already applied to
goods- Sec 103(f)
• Selling goods falsely marked- Sec 104
• Removing piece goods: The government will
forfeit all such goods and the person will be
punishable with fine.- Sec 106
• Falsely representing a trade mark as registered: The use
of the word 'R' or 'registered' inscribed in a circle shows
that a particular trade mark is registered.- Sec 107
• Falsely describing a place of business as connected with
the trade marks office- Sec 108
• Falsification of entries in the register-Sec 109
Criminal Remedies
• A complaint may be filed before a Magistrate; OR
• Police can register an FIR and prosecute directly;
(statutory requirement to obtain the Registrar’s approval
depending upon whether offence is cognizable or non-
cognizable.
• Registration is not a requirement.
• Imprisonment- 6 months to 3 years
• Fine- Rs 50,000 to 2 lakhs
• Enhanced penalty on subsequent convictions.
(Section 106)
• Seizure, forfeiture and destruction of
infringing goods/ material for placing
before the Magistrate
• Provides for exemption if infringement is
innocent
Procedure for Filing a Criminal
Complaint & Process
• Criminal Complaint in the Court of competent jurisdiction;
• Pre summoning Evidence, for satisfying the court on the basis of the
evidence placed on record, that the allegations by complainant are
prima facie maintainable;
• Issue of General/ specific Search and Seizure Warrants, along with
directions to police; Raid / Search & Seizure by Police
• Investigation and arrest (if necessary) of accused persons;
• Arguments;
• Summons / Warrants against accused persons;
• Accused Appear and seek bail;
• Framing of charges, after notice of allegations;
• Trial
• Onus of proof is on the complainant
Comparison of Criminal
Remedies
• Section 5, Article 61, TRIPS Agreement, 1994-
establishment of criminal procedures and penalties to be
applied at least in cases of wilful trademark counterfeiting or
copyright piracy on a commercial scale- must contain imprisonment and/or
monetary fines-must also include seizure, forfeiture and destruction of the
infringing goods and of materials and instruments used to produce them-
Incorporation is left to the flexibility of the member nations
• U.S.A.- Lanham Act prescribes criminal penalties for “counterfeiting” under §
2320.Penalties for counterfeiting are substantial – fines of as much as
$5,000,000 and as much as 10 years imprisonment for a first violation.
Anton Pillar, John Doe and Mareva Orders can be issued. Search and
Seizure Warrants issued subject to Fourth Amendment's prohibition against
unreasonable searches and seizures
• U.K.- Section 92,Trademarks Act, 1994 provides for punishments up to six
months for counterfeiting. Search warrant and seizure by a constable is
possible through a simple oath to a justice of peace is provided for in the Act
Civil Actions in India
- STATUTORY INFRINGEMENT
- PASSING OFF
– Whirpool Case: Court held that a rights
holder can maintain a passing off action
against an infringer on the basis of the
trans-border reputation of its trademarks
and that the actual presence of the goods or
the actual use of the mark in India is not
mandatory.
– Milmet Oftho Industries & Ors. v. Allergan,
Inc: “the mere fact that the Respondents
have not been using the mark in India is
irrelevant if they were first in the world
market”.
Civil Action: Reliefs in India
Section 135, TM Act, 1999-
• Injunctions against future violations
• Damages OR Accounts of Profits
• Delivery up/ Discovery of infringing
material / documents
Interim / Interlocutory Injunction
• Often the real remedy!!!
• Objective: To maintain status quo
• Time is of essence
• Factors considered in granting :
– Prima facie case
– Balance of convenience
– Irreparable injury if injunction not granted
Gujarat Bottling Company v. Coca Cola 21 IPLR 201
Interlocutory injunction- Landmark
Supreme Court judgments
Midas Hygiene Industries P. Ltd. V. Sudhir Bhatia & Anr.
(2004)3 SCC 90
Supreme Court…
“…in cases of infringement either of trademark or of
copyright normally an injunction must follow.
Mere delay in bringing the action is not sufficient to
defeat grant of injunction in such cases…
the grant of injunction also becomes necessary if it prima
facie appears that the adoption of the mark itself was
dishonest”.
Lakshmikant V. Patel vs. Chetanbhat Shah
(AIR 2002 SC 275)
Supreme Court:
“In an action for passing off it is usual, rather essential to
seek an injunction,
temporary or ad-interim proof of actual damage is not
essential…
likelihood of damage is sufficient
an absolute injunction can be issued restraining the
defendant from using or carrying on business under the
Plaintiff’s distinctive trademark”.
Enforcement- Domain names
• M/s Satyam Infoway Ltd. V. Sifynet
Solutions Pvt. Ltd. (2004) 6 SCC 145
SC has held that domain names
are subject to the legal norms
applicable to other intellectual
properties, such as trademarks.
• Discovery of documents;