Police Protection in Copyright, Trademark cases in India ?

TRADEMARK ENFORCEMENT STRATEGIES: In all Metro Cities in India ?

TAKING ACTION AGAINST INFRINGEMENT .

Talking about report made by Mr Sumeet Basu a IP Attorney. 

MARCH 28, 2024

Guide to Trademark Enforcement in India

Trademark enforcement helps protect intellectual property rights in today’s interconnected global marketplace. Within the dynamic landscape of India’s burgeoning economy, safeguarding trademarks assumes heightened significance for businesses striving to preserve brand reputation and market competitiveness.

UNDERSTANDING TRADEMARK INFRINGEMENT

Trademark infringement occurs when unauthorised use of a trademark or a substantially similar mark takes place, leading to a likelihood of confusion/deception among consumers and members of the trade as to the source/origin of the goods/services or leading to the dilution of the original mark’s distinctiveness. 

Prompt identification and addressing of the infringement of a registered trademark are crucial for several reasons. Firstly, infringement undermines the exclusive rights granted to the trademark owner, potentially eroding the brand’s reputation and market position. Secondly, swift action against infringement helps prevent further proliferation of unauthorised usage, thereby mitigating potential financial losses and reputational damage. Additionally, timely intervention demonstrates the trademark owner’s commitment to protecting its intellectual property rights, deterring future infringers and reinforcing the mark’s distinctiveness in the marketplace.

LEGAL FRAMEWORK FOR TRADEMARK ENFORCEMENT IN INDIA

In India, the foundation of trademark enforcement lies in the Trade Marks Act of 1999, which governs the registration, protection, and enforcement of trademarks across the country. This legislation aligns with international standards, particularly the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement, ensuring compliance with global norms for trademark protection.

The Act provides a comprehensive framework for safeguarding trademark rights, offering both civil and criminal remedies to address instances of infringement and passing off. Under this law, trademark owners enjoy broad protection for their marks, including ‘well-known’ marks, and benefit from a widened scope for identifying and combating infringement activities.

Civil Remedies: Trademark owners can initiate civil actions under the Trade Marks Act, 1999, to seek redress for infringement.

Criminal Remedies: In addition to civil remedies, Indian law provides for criminal actions against trademark infringement, treating such offences as cognizable under the Indian Penal Code. 

CIVIL REMEDIES FOR TRADEMARK ENFORCEMENT

The Act empowers trademark owners to pursue civil remedies through the legal system. These remedies include the filing of lawsuits for trademark infringement and/or passing off, depending on the specific circumstances of the case. 

Section 29 of the Trademarks Act, 1999, provides the instances when an infringement can take place, which are as follows-

Usage of the mark which is identical or deceptively similar to the trademark for the goods and/or services in respect of which the trademark has been registered.

Usage of the identical/ similar mark in respect of identical/ similar goods or services which is likely to confuse the public or is likely to have an association with the registered trademark.

Usage or identical/ similar mark for different goods or services which is likely to take unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.

Usage of a registered trademark as part of own trade name or name of business concern or part of the name of business concern dealing in goods or services in respect of which the trademark is registered.

Application of the registered trademark to a material that is intended to be used for labelling or packaging of goods, as a business paper, or for advertising goods or services subject to the fact that such person was not duly authorised by the proprietor or licensee of the trademark.

In cases where a trademark is advertised, such advertising takes advantage of and is contrary to honest practices in industrial and commercial matters, or is detrimental to its distinctive character, or is against the reputation of a trademark.

PASSING OFF

While passing off is not defined under the Indian Trademarks Act 1999, Section 27 recognises the common law rights of a Trademark owner wherein the owner can initiate legal proceedings against any person for passing off goods or services as the goods of another person or as services provided by another person. While Infringement is a statutory remedy, passing off is a common law remedy.

Passing off occurs when illegal use of a trademark or trade name in such a way that the public is misled into believing that the products or services supplied by one party are genuinely those of another. This misrepresentation can harm the goodwill and reputation of the legitimate owner of the trademark.

There are three important criteria that must be established in order to establish a successful passing off claim:-

1. GOODWILL AND REPUTATION

The claimant must show that the trademark in question has acquired distinctiveness and familiarity among consumers, resulting in the formation of a valuable reputation and goodwill in the marketplace.

2. MISREPRESENTATION

At the heart of passing off claims is the element of misrepresentation. It involves the unauthorised use of a trademark that confuses/deceives consumers about the origin of products or services. The claimant must show that the defendant’s actions have or are likely to cause public association with the claimant’s trademark.

3. DAMAGES

The claimant must also establish actual or potential harm. This can be in the form of financial loss, reputational harm, or dilution of the trademark’s distinctiveness and goodwill.

Civil remedies allow trademark holders to seek relief such as injunctions, damages, and the rendition of accounts to determine profits made or damages incurred due to the infringement.

The civil litigation process involves initiating legal action by filing a lawsuit in the appropriate court. Trademark owners can seek interim injunctions to halt infringing activities pending the outcome of the litigation. The court may grant ex parte or inter partes injunctions based on the merits of the case and the balance of convenience. Additionally, trademark owners may apply for the appointment of court receivers or commissioners to search and seize infringing goods. Evidence, including registration certificates and other supporting documents, is presented to substantiate the claim of infringement.

Timely legal action is crucial in trademark enforcement to establish the seriousness of the rights holder’s intent before the court. It’s advisable for trademark owners to initiate legal action promptly to avoid any adverse impact on their case. Delay in taking action may affect the chances of obtaining preliminary injunctions and could undermine the effectiveness of enforcement efforts.

CRIMINAL REMEDIES FOR TRADEMARK ENFORCEMENT

Criminal remedies play a vital role in combating trademark infringement, offering a more punitive approach to deter unlawful activities. In India, criminal remedies for trademark infringement are governed by the Indian Penal Code (IPC) and the Trademarks Act of 1999. These laws define various offences related to trademark infringement, including applying false trademarks, offering goods/services under false trademarks, and falsely representing a trademark as registered. Offences under the Trademarks Act are categorised as cognizable, which are more serious offences, and non-cognizable, which are less serious offences.

Criminal complaints seeking remedy are filed under Sections 103 and 104 of the Trademarks Act, 1999. Such complaints are filed at the Magistrate court to seek an order directing the police to investigate and carry out raids.

Section 103 of the Trademarks Act 1999 deals with the penalty for applying for false trademarks, trade descriptions, etc., while Section 104 deals with the penalty for selling goods or providing services to which a false trademark or false trade description is applied.

The penalties under both sections provide for imprisonment of a term of six months which may extend to three years, along with a fine that shall not be less than fifty thousand rupees but may extend to two lakh rupees. Section 105 provides for enhanced penalty in case of a second or subsequent conviction, which shall be imprisonment for a term not less than one year but not more than three years, and a fine which shall not be less than one lakh rupees but may extend to two lakh rupees.

Cognizable offences under the Trademarks Act entail harsh punishments and penalties, including imprisonment and fines. Police have the authority to seize infringing goods and arrest the accused without a warrant. Non-cognizable offences carry lesser penalties, and no immediate arrest is made during raids. Complaints are typically filed at the Magistrate Court, requesting the police to conduct search and seizure operations. Upon receiving a complaint, the Magistrate may direct the police to investigate and seize infringing goods. Raids are often conducted to create a general impact and deter counterfeiters. However, the process requires close monitoring and follow-up with law enforcement agencies to ensure effective enforcement.

TRANSBORDER REPUTATION AND CUSTOMS LAWS

In Indian trademark laws, the concept of transborder reputation acknowledges the widespread recognition and goodwill of a trademark beyond national borders. Even if a trademark is not registered in India, it can be protected by initiating a civil suit of passing off if the international reputation and goodwill of the mark has percolated down to India.

The Customs Act, along with the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, empowers customs authorities to prevent the importation of infringing goods into India. Rights holders can record their trademarks with customs authorities, allowing them to seize goods suspected of infringing marks at the border. Customs officers have the authority to suspend the clearance of such goods and take necessary action, including destruction, if infringement is confirmed.

TRADEMARK ENFORCEMENT STRATEGIES

Developing a comprehensive enforcement strategy is crucial to safeguarding your intellectual property rights against infringement. This strategy often involves a combination of civil and criminal actions to ensure maximum effectiveness.

Choosing between civil and criminal remedies depends on various factors, including the nature and scale of the infringement. Civil actions are suitable for resolving individual cases of infringement and/or passing off and seeking monetary compensation. They offer a more controlled and predictable legal process, allowing trademark owners to assert their rights through litigation.

In contrast, criminal actions are more appropriate for tackling widespread or organised infringement schemes like counterfeit goods that pose significant threats to brand integrity and consumer safety. They involve collaboration with law enforcement agencies and may result in criminal penalties for infringers, including fines and imprisonment.

Ultimately, trademark enforcement strategies should be tailored to the specific circumstances of each case, considering factors such as the severity of the infringement, available evidence, and desired outcomes. By adopting a proactive and multi-faceted approach to enforcement, trademark owners can effectively protect their brands and preserve their market reputation.

FREQUENTLY ASKED QUESTIONS (FAQS)

What are the primary types of activities that constitute trademark infringement under Indian law?

Trademark infringement in India encompasses activities such as unauthorised use of identical or similar marks, selling counterfeit goods, and passing off goods or services as those of another.

How does the Trademarks Act, 1999, provide protection against trademark infringement in India?

The Trademarks Act, 1999, offers legal recourse to trademark owners through civil remedies like injunctions and, damages, and criminal remedies involving raids and prosecution to combat infringement.

What are the key differences between civil and criminal remedies available for enforcing trademark rights in India?

Civil remedies provide avenues for seeking injunctions, damages, and accounts of profit while Criminal remedies involve punitive measures like fines and imprisonment to deter large-scale infringement.

How can trademark holders leverage customs regulations to prevent the importation of infringing goods into India?

Trademark holders can record their trademarks with customs authorities, enabling them to seize infringing goods at the border without court orders and request suspension of clearance for suspected goods.

What are some common challenges faced by trademark holders when enforcing their rights in India, and how can they overcome these challenges effectively?

Challenges include delays in legal proceedings, lack of police expertise, and corruption. Effective strategies involve proactive monitoring, collaboration with authorities, and leveraging both civil and criminal actions for enforcement.

In conclusion, enforcing trademark rights in India necessitates a proactive approach due to challenges like corruption, legal process delays, and a lack of expertise in IP law. It’s crucial to understand the available remedies under the Trademarks Act, and to strategically leverage both civil and criminal actions for maximum effectiveness. Despite the hurdles, trademark holders can overcome enforcement challenges by collaborating with authorities, adopting comprehensive enforcement strategies, and staying vigilant against infringement.

Sumeet Basu

Trademark Attorney.

Forward by #Alihyder Shaikh.