No suit for infringement of a registered trade mark or suit relating to any right in a registered trade mark or for passing off arising out of the use by the defendants of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or not shall be instituted in any court inferior to a district court having jurisdiction to try the suit.
Procedure followed
The procedure followed in the disposal of the suit is as laid down in code of civil procedure, 1908.
Period of limitation
Under the limitation Act, 1963, the period of limitation for filing a suit for infringement of a trade mark is three years from the date of infringement. Where the infringement is a continuing one, a new course of action arises every time is infringement occurs. For instance, in a continued sale of infringing article, sale of each article would give rise to a fresh cause of action.
Who can sue for infringement
The plaintiff in an infringement suit may be either:
(a) The proprietor of the registered trade mark of his legal successor.
(b) A registered user of a trade mark subject to a prior notice to the registered proprietor and consequent failure of the registered proprietor to take any action against the infringer.
(c) An application for registration of a trade mark, he can file an infringement suit to protect his right to continue with the suit which will sustain only if his trade mark is registered before the hearing of the suit.
(d) Legal hairs of the deceased proprietor of a trade mark.
(e) Any one of the joint proprietors of a trade mark.
(f) A foreigner proprietor of a trade mark registered in India when infringement occurs in India.
Who can be sued?
(a) The infringer who directly by his action causes infringement or who uses or who uses or contemplates or threatens to use a trade mark infringing the plaintiff’s right.
(b) The agents of infringers.
(c) Director and promoters of a limited company can not be joined as co-defendants unless they have personally committed or directed infringing acts.
Issues in infringement suits
In a suit for infringement, the issues which are generally to be determined are :
(1) Whether the plaintiff’s is indeed entitled to file the suit and claim relief. It has to be determined whether he is the registered proprietor or whether he is registered user qualified under the provision of the Act.
(2) Whether the use of infringing trade mark or the proposed use of the mark would actually amount to infringement.
(3) Whether the plaintiff’s is entitled to any interlocutory relief.
(4) Whether there have been actual instance of deception and confusion amongst the public.
(5) Relief.
The defenses which may be set up by the defendant
The defendants may set up any of the following defenses in an action for infringement against him depending upon the applicability of the relevant defense to his case:-
(1) That the plaintiff in the suit has no title to sue questioning the proprietorship of the trade mark owner may do this.
(2) That the use of the mark by the defendants is not an infringement or it protected by the provisions of section 30 which list out the acts which do not constitute infringement.
(3) That the defendant’s right to use the contested mark arises by virtue on concurrent registration.
(4) That the defendants has been an honest concurrent user
(5) That the defendants can attack the validity of registration of the plaintiff.
(6) That the plaintiff is debarred from suing or claiming the relief sought by his own conduct, e.g., by his own acquiescence, delay or latches or his having acquired his right on the trade mark fraudulently.
Illustration
In the case of Electrolux v. Electrix , (1953) 70 RPS 127, it was held that the mark of the plaintiff was infringed but the relief was suspended in view of the long concurrent use to enable the defendants to apply for registration.
Defences which can cot be set up
(1) Honest adoption of the mark is not a defense. The defendant can not plead that he had adopted the plaintiffs mark without the knowledge of existence of plaintiffs trade mark.
(2) Innocent infringement cannot be pleaded.
Suit for passing off
Passing off occurs when one trader attempt to pass off his goods by misrepresenting them so as to make the consumers believe that his goods are the same as those of another trader. For example using a mark ‘Colmate’ on a tooth pest with a similar getup to pass it off as ‘Colgate’.
The action against passing off also lies in instituting a suit . the action is often combined into a suit for infringement and passing of to claim the relief recognized by law.
RELIEF IN SUITS FOR INFRINGEMENT OR PASSING OFF
The relief which a court may grant in any suit for infringement and passing off:
(1) The relief which a court may grant in any suit for infringement or for passing off includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff’s either damages or an accounts of profits, together with a without any order for the delivery up of the infringing labels and marks for destruction or erasers.
(2) Notwithstanding anything contained in sub-section (1) , the court shall not grant relief by way of damages or an account or profit in any case-
(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification of trade mark; or
(b) where in a suit for infringement the defendants satisfies the court:
(i) That at the time of commenced to use the trade mark complained of in the suit, he was unaware and has no reasonable ground for believing that the trade mark of the plaintiff was a registered user by way of permitted use ; and
(ii) That when he became aware of the existence and nature of the plaintiff’s right in the trademark, he forthwith ceased to used the trade mark in relation to goods in respect of which it was Registered;
TYPES OF RELEIF
The type of relief to which a plaintiff is entitled are –
(1) An injunction restraining further use of the infringing mark.
(2) Damages or an account of profits.
(3) An order for delivery-up of infringing labels and marks for destruction or erasure.
The plaintiff is entitled to the above relief both in an infringing and passing of action.
Reliefs not exhaustive
The language of the section 105 indicates that the relief’s mentioned in section 105 are not exhaustive. The expression used is, “the relief includes…”
Grant of relief is discretionary
The Grant of relief is discretionary, the use of expression may indicate it is not mandatory for the court of grant to relief, but the discretion has to judicially exercise but not in the sense of a prerogative which can be applied arbitrarily.
INJUNCTION
An injunction is a judicial process or order restraining a person from continuing with wrongful act. the general rules governing the grants of injunction are contained in section 36 to 42 of the Indian Specific Relief Act, 1963 and Order XXXIX Rules 1 & 2 and section 151 ( Inherent power of the Court) of the code of civil procedure, 1908.
Injunction may be the following types :-
(a) Anton piller order
(b) Mareva injunction
(c) Interlocutory injunction
(d) Perpetual injunction.
These are explained below:
Anton piller order
These are ex parte order to inspect defendant’s premises. A court may grant such an order to the plaintiff where there is a possibility of a defendants destroying or disposing of the incriminating material. Pass such an order if for inspection of the premises of the defendants.
An ex parte order means an order passed on the application of the plaintiff without giving the defendants a notice of the application. Such a notice would enable the defendant to temper with the evidence of his infringement; hence ex parte order.
The three condition requisite for making and order are;
(1) there must be a strong prima facie case in favour of the plaintiff.
(2) Such an order if not granted will cause irreparable damage to the applicant for injunction.
(3) There must be clear evidence that the defendants have in their possession incriminating documents or things and there is real a real possibility that they may destroy such material if any notice of application is served.
Mareva injunction
In such an order the court has power to freeze defendant’s assets where there exists a probability of the assets being dissipated or canceled so as to make a judgment against him worthless and un-enforceable.
Interlocutory injunction
This from of injunction is the commonly sought and most often granted from of injunction. The interlocutory injunction it an order restraining the defendants from continuance of the acts which amount to infringement.
An interlocutory / interim injunction may be granted ex parte that is without notice in cases of urgency. Such ex parte injunction is however granted for a limited period only.
The plaintiff is seeking an ex parte interim injunction has to discharge the duty of making full disclosure to the court of all facts which are material to the exercise of the court’s discretion whether or not to grant the relief.
Grant of interim / interlocutory injunction is discretionary, the plaintiff or the applicant cannot claim it as a matter of right to have an ex parte order granted in his favour.
Perpetual injunction
Perpetual injunction is an order restraining the defendants totally, for all times to comes, from doing any act which infringes the right of the proprietor of the trade mark. Perpetual injunction is generally granted when the suit is finally decided. Perpetual injunction usually follows when the grant of interim injunction against infringement was granted at the beginning of the suit. It can be granted also in cases where no interim injunction was granted.
DAMAGES ACCOUNTS OF PROFITS
The plaintiff if an action for infringement may be granted either damages or an account of profits but not both. In an account of profit the infringer is required to give up ill-gotten gains in favour of the plaintiff whose right he has infringed.
In case of damages the defendants has to compensate the plaintiff. The damages may even be more than monetary profits reaped by the defendants by the misuse of the plaintiff mark.
The quantum of damages awarded is determined by the quantum of loss actually sustained by the plaintiff which was the natural and direct consequence of the unlawful acts of the defendants. Speculative and unproven damages are also not considered and determining the quantum of damages.
In calculating the amount of profits, the damages suffered by the plaintiff is immaterial. The accounts of profit, is made on the basis of actual profit, the defendants has made out of the sale of infringing goods.
Remedy for Trade Mark Infringement India - To learn more about this author, visit Kaviraj Singh's Website.
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Dianne Crampton
Dianne Crampton is an Executive Leadership Coach and Team Building Consultant and creator of the TIGERS team development model. For the past twenty years she has helped leaders and teams achieve goals with high levels of collaboration and teamwork.
Crampton is a published author. Her contribution to Working Together: Diversity As Opportunity was endorsed by Stephen Covey. She has written for trade magazines. Merrill Lynch nominated her business for Inc. Magazine’s regional small business and entrepreneurial awards. Her work with Native Americans was recognized at a United Nations sponsored conference in 1994.
The TIGERS model passed two rigorous validation studies in 1992 and 1994. The TIGERS Survey is able to measure and track team development over time.
Dianne is also the creator and distributor of the TIGERS Team Wheel game. This game helps groups identify behaviors that build collaborative groups and behaviors that cause conflict, morale problems, production failures, and misunderstandings.
For more information, or to subscribe to TigerTracks, a free monthly leadership and team newsletter go to http://www.corevalues.com - Visit Dianne Crampton's Website |
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Kaviraj Singh
(Visit Kaviraj's Website)
Kaviraj SIngh is the founder attorney of
Trustman & Co – A Law Firm at Delhi India
for patent, patent PCT application filing
real estate Intellectual property right,
prior art search, validity search,
corporate law company formation/
incorporation/ registration international
trade trademark real estate debt
collection credit report due diligence
legal risk business law foreign direct
investment approval / permission to set up
business/ company legal outsourcing LPO
Mr. Singh is a member of New York State
Bar Association, Intellectual Property
Right Section of New York State bar
Association, Supreme Court of India Bar
Association and Association of Trial
Lawyers of America, Bar Council of Delhi.
www.trustm
an.org
www.delhila
w.firm.in/patent_intellectualpropertyright
.htm
www.delhilaw.firm
.in/articlenews/patentlawindia.htm
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