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Analyzing Trademark Infringement And Remedies Associated Thereof In Light Of Recent Judicial Decisions

The World Intellectual Property Organisation defines trademarks as:
"Any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors."[1]

The history of trademarks dates back to 3000 years ago when the craftsmen of India used to engrave their signatures on their work before transporting it to Iran. With the ever-increasing trade in the middle-ages, the use of signs to distinguish goods expanded.

The importance of Trademarks cannot be emphasized much in this era of industrialization. The market-oriented economy allows the competing to offer the world a catena of products under the same category. Therefore, it becomes increasingly important for guiding the consumers to consider alternatives and make a choice between two competing products. Henceforth, trademarks aid their owners in advertising their products under their recognition. Trademarks encourage the owners to establish their identity by maintaining the quality of products manufactured and sold under their tutelage.

In this era of increasing competitiveness of products, trademark holds prime importance in terms of distinguishing products. In order to fulfil this need of distinguishing function for consumers, trademarks should be legally protected. If trademarks are not protected competitors would use identical signs and symbols in order to deceive customers. The person so deceived might not realize that the product being brought is authentic.

However, the person may tend to hold the owner of the trademark responsible for the deception. Even if at some point, the consumer realizes that he has been deceived, he would not be in a position to initiate proceedings against the alleged deceiver. Therefore, it is quintessential that the owners of trademarks have right to prevent their competitors from manufacturing identical or confusingly similar products which have a possibility to deceive customers. This right is called an "exclusive right" of the owner.[2]

The authors, by way of this piece, shall attempt to give a detailed understanding of Trademark Infringement[3] and the remedies associated thereof in light of the recent decisions of the Indian Courts. Further, the factors that require due consideration while deciding the remedies have also been enumerated in this research project.

Research Methodology
Objectives
This Research Project shall aim to:
  • To analyze the rights conferred to individuals after registration of TM.
  • To understand as to what constitutes TM infringement in light of recent judicial decisions.
  • To comprehend the various remedies available against TM infringement.
  • To scrutinize the factors those play an important role while deciding the appropriate remedy against TM infringement.
  • To comparatively contrast the extent of effectiveness of civil and criminal remedies in instances of TM infringement.
  • To evaluate the various challenges faced by Indian Courts in such cases.

Research Questions
The author, by way of this piece, shall aim to answer:
  • How has the Indian Judiciary applied the various tests surrounding TM infringement in its recent decisions?
  • What is the extent of effectiveness of criminal over civil remedies in instances of TM infringement?

Scope And Limitations
This research project is limited to the TM infringement and the various remedies associated to it in the Indian Legal system. The authorities of some other developed jurisdictions have also been taken into consideration to pose a comparative analysis and the same have been duly referenced though the analysis of the provisions is limited to the recent decisions of the Indian Judiciary alone. The present position of the approach adopted by the Courts has been enumerated by the authors in light of various recent and landmark judicial and statutory authorities.

Rights Conferred To Trademark Owners

The recognition to the concept of trademarks in the Indian Jurisdiction has been given under Section ["hereinafter", ''] 2(zb) of the Trademarks Act, 1999["hereinafter", 'The Act']. .2 (zb) of the Act defines trademark as:
"A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colors."[4] The Act was enacted to comply with the provisions of Trade-Related Aspects of Intellectual Property Rights ["hereinafter", 'TRIPS'] provisions.[5]

The registration of a trademark bestows the registered proprietor an exclusive right to use the trademark in relation to the particular set of goods and services. Any kind of violation of the exclusive right may infringe the exclusive right of the proprietor, except in certain circumstances. Registration acts as a whistle-blower to the society, enlightening them that the trademark has been registered or is under-going the process of registration.

It has been provided in the act that deceptively similar or even identical trademarks to the ones already registered in association with the same category of goods cannot be registered again.

The proprietor of a registered trademark has a right to file a civil suit for infringement of his rights and obtain:
  • Injunction
  • Damages
  • Accounts of profit

Passing Off Right
The Act gives an unregistered trademark user to prevent others from using a similar trademark through an action of passing off. The SC has held that "an action of passing off is available to an unregistered user even against a registered proprietor." It iterated this in the celebrated case of N.R Dongre v. Whirpool Corp[6], wherein the trademark registration of Whirlpool Corporation [WPC] had lapsed in 1977. Thereafter, WPC filed for renewal of its trademark in 1988.

In the meantime, an Indian trust filed for registration of the trademark "Whirlpool". Inspite of severe opposition from WPC, the trust got its trademark registered. However, the SC averred that the mark Whirlpool has been associated with WPC for long granted passing off rights.

In Cadila v. Cadila[7], the Court held that the passing off depends upon the principle that no one has the right to represent his/her goods as that of other and misrepresent others. A ma is not entitled to sell or pass off products under the pretence that the goods are of others.

Position in the United States:
In the United States, it is believed that the passing off action is essentially a deceptive tactic and no person shall be entitled to claim user or carry on business under the veil of other. In simple terms, no one is entitled to profit or gain out of the goodwill and reputation established by the other. Reiterating this, Lord Oliver in the celebrated case of Reckitt and Coleman v. Borden Inc.[8] laid down three essential elements for passing-off:
  • Goodwill to be owned by the owner of the concerned mark.
  • Misrepresentation caused due to the use of mark by the defendant.
  • Damage to the goodwill and reputation enjoyed by the plaintiff.

What Constitutes Trademark Infringement?

According to the Black's law dictionary, the term infringement denotes an act that interferes with the exclusive right of an owner.[9] As per the terms of the Act, "a registered trademark is infringed if he uses the concerned mark as a part of his trade name or part of his trade name or, name of his business or part of the name, of his business concern dealing in goods or services in respect of which the trademark is registered."[10]

It has been established by Courts that a trademark is infringed when a person encroaches upon the exclusive rights of the registered proprietor by way of producing identical or deceptively similar goods or services.[11]

In a suit for infringement, the plaintiff must prove the following:
  • He holds exclusive rights over the mark and he is the owner of the registered trademark.
  • The defendant in his course of business is using an identical or deceptively similar mark with that of the proprietor.
  • The use of the mark must be related to the goods and services under which the plaintiff has claimed registration.

With regards to the similarity aspect, the SC laid down a test in the case of Amritdhara Pharmacy[12], wherein the Court stated that while determining similarity between two words, the Court must judge the words on the basis of their look (visual) and their sound (phonetic). The kinds of goods and services claimed under the mark must be delved into.

Further, all the surrounding circumstances must be considered if the both the trademarks are used under similar set of goods and services. Henceforth, if the Court comes to the conclusion that the use of such trademark is likely to cause confusion in the minds of the public with respect to the registered mark, the trademark so claimed should not be granted registration.

Understanding The Concept Of Deceptive Similarity
Deceptively similar marks can be understood as "a trademark created, almost similar or a look-alike of an already existing mark." Deceptive similarity has been engrafted under .2 (h) of the Act.[13] This concept has been widely recognized across all developed jurisdictions as a ground for trademark infringement and India has not been left behind.

However, the Indian Trademarks Act, 1999 does not define or frame the ambit of "deceptive similarity" and the discretion has been bestowed on the Courts to decide whether the concerned marks are similar or not. Therefore, it becomes paramount to analyse the stand of the judiciary with regards to the deceptive similarity of marks.

The Indian Trademark jurisprudence has come a long way in ensuring fair treatment and due credit to the owners of trademark. This has been brought forth by a recent case of OM Balajee Automobile[14] wherein the Delhi HC passed an ad-interim injunction in the favour of the multinational company BMW.[15] In the instant case, the defendant used the mark DMW to manufacture and sell automobile, especially e-rickshaws. The Delhi HC averred that the defendant's trademark DMW prima facie appears to be visually and phonetically similar and was a dishonest adoption to encroach upon the goodwill and reputation enjoyed by the plaintiff.

The advent of COVID-19 brought with itself humongous competition in the market. With the rapid expansion of the catastrophe the need for getting trademarks registered in the name of the vaccine/medicine making companies became paramount. In light of this, a single judge bench of Madras HC in Patanjali Ayurved Ltd. case[16] restrained Patanjali to use the mark "Coronil" as it was deceptively similar to that of the defendants mark "Coronil-92B".[17]

The defendants shortly approached a Division Bench of the Madras HC contending that "Coronil" is a generic term which has its roots from coronavirus and there is no likelihood of any confusion. Therefore, the bench set aside the order of the single judge on the grounds that there was no prima facie case of trademark infringement by Patanjali Ayurved Ltd.[18]

The Test Of Likelihood And Confusion
This rule of interpretation was laid by the SC in Cadila. v. Cadila[19] wherein a suit for injunction was filed the trademark holder of "Falcogo" against "Falcitab". The term falciwas derived from the disease Falcipharam Malaria. In the instant case, the Court opined that there exists a likelihood of confusion between both the marks as they are similarly placed and for similar set of goods.

Moreover, due to the additional threat of medical negligence due to similarity, the Court ruled that the mark is deceptively similar. In the instant case, the Court also laid down the rule of anti-dissection which established that the mark should be judged as a composite whole and should not be dissected for the motive of comparison. The rationale behind this rule of interpretation was that an average consumer would judge the mark in its totality and not in parts.

In the same vein, in a recent case of Sun Pharmav. BDR Pharmaceuticals[20] wherein Sun Pharma was an owner of the mark "Labebet" since 2009, the defendant claimed the mark "Lulibet". In this suit for injunction and passing-off, the HC observed that when considered as a whole the concerned mark is phonetically and deceptively similar to the already registered mark.

A critical analysis of the above-mentioned judicial pronouncements establishes that the Courts have abundantly made it clear that there isn't a straightjacket formula to determine deceptive similarity. The Courts have repeatedly suggested the subjective nature of deceptive similarity and have averred that it should be determined in accordance with the matter in hand. This is primarily because the standard of creativity and originality may largely differ from case to case.

Time Period For Distinctiveness Of Mark
The Act does not provide for any specific time period which would make the mark distinct of others. However, it has been established through various judicial precedents. The Delhi HC in a celebrated case of ITC. v. Britannia[21] held that to acquire distinctiveness it is not necessary for the mark to be marketed for a number of years. "If the idea is fascinating and captivates the customers, it can become a hit overnight".

In Consolidated Foods Corporation case[22], the Court averred that for claiming proprietorship of a mark, the time period of its existence is irrelevant. In other words, it isn't necessary for the proprietor to claim user of the concerned mark for a considerable period of time. Rather, the intent to use the mark eo instanti can confer right upon such proprietor. There should not be a straightjacket hard and fast rule of time period for a mark to acquire distinctiveness.[23]

Translation Cases
In the context of Indian Trademarks regime, the translation cases are being dealt under deceptively similar marks. In a recent case of Allied Blender and Distillers v. Govind Yadav,[24] the Court held that the marks "Officers Choice" and "Fauji" are not deceptively similar. The plaintiff had the mark registered in 1988 and since then was claiming user of the same. The mark Fauji is a mere translation of "military officer" and is in the same business as that of the plaintiff. The Court averred that the expression "officer" refers to a person in power. However, the expression Fauji denotes a simple soldier. Moreover, the words were phonetically and visually distinct from each other. Therefore, liable to be granted registration.

The Delhi HC in Surya Roshni v. ESC [25]observed that mere translations of words would amount to deceptive similarity. In the instant case the bone of contention was between two trademarks "Surya" and "Bhaskar". The Court averred that mere translations of word do not grant exclusivity or distinction to the mark as in this case, both are translation of the word "Sun". Henceforth, the mark is deceptively similar to that of the registered mark and is liable to be rejected.

Similarly, in the case of M/s Bhatia Plastics v. M/s Peacock Industries Ltd.[26], two trademarks namely "Mayur" and "Peacock" were held to be deceptively similar as both of them had their origin from the same bird and were mere translations of the same.

Trade Dress And India's Emerging Jurisprudence
The emergence or trade dress finds its roots from the very own Hindi proverb, "Jo Dikhta Hai Wohi Bikta Hai". This is to say that product packaging and visualization play an enormous role in captivating the consumers and drawing their attention.[27] India lacks any specific provision of trade dress, however, the passing off rights elucidates upon the protection of trade dress.

The overall appearance and combination should be distinct. In Castrol Ltd. v. Iqbal Singh[28], the defendant used the mark "Lumax Active" similar to that of the plaintiff "Castrol Active". Moreover, the packaging, colour combination, design, layout and configuration were similar. The Court ruled that the marks are not deceptively similar if considered in isolation of trade dress. However, the moment it is compared in conjunction of trade dress it appears tobe encroaching upon the rights of the plaintiff by dishonestly using the same trade dress.

Exception To Infringement- The Defence Of Honest And Concurrent Use
The only possible way an identical or similar mark can be registered is by invoking the defense of honest and concurrent use engrafted under .12 of the Act.[29] The law of invoking honest and concurrent use as a defence finds its roots from the case of Kores Ltd. v. Eshwarsa and Sons[30], which laid down five parameters to be considered whilst checking honest and concurrent use:
  • The extent of use of such mark, its quantity, geographical area, duration.
  • The degree of confusion likely to be caused in the minds of public regarding the origin and authentic source of the mark.
  • If there exists certain evidences of such confusion.
  • The amount of inconvenience caused to the parties if the use of trademark is approved.
  • The honesty of using the trademark.

However, in the Indian trademark regime, there have been dearths of cases which have been approved out of honest and concurrent use. In Anjali Kumar Goenka case,[31]the Court granted the defense of honest and concurrent use on the basis of the following contentions:[32]
  • The geographical location and limitations of the parties were distinct, in the instant case being Rajasthan and Delhi.
  • Both the parties started claiming user more or less at the same period of time.
  • The term "Goenka" formed the part of appellants' trust name.


Remedies Against TM Infringement

With the advancement of industries, confusion with regards to similarly placed trademark is also increasing. Therefore, there arises a need for a robust regime with deals with trademark infringement, so that neither the owner nor the consumers are exploited. Many judicial pronouncements over the years have fairly established the types of infringement and various remedies bestowed thereafter. S.29 of the Act, 1999 deals with infringement of trademarks.[33]

The burden of proof is on the plaintiff to show that he holds exclusive rights over the trademark. The plaintiff must show that he enjoys reasonable reputation concerned with the mark and there would be a likelihood of confusion in the minds of the public if both the trademarks are operative. The most crucial thing which the Court delves in is the degree of similarity between two conflicting marks. Intention of the defendant, advertisement, purchasing skills of goods and services among consumers are some other parameters the Court dives into.

Remedy in common parlance is a consequence of an infringement. It can be claimed both by registered and unregistered marks. In case of a registered mark, it acts as an action for infringement in a Court of Law whereas in case of an unregistered mark, it aids in passing of infringement in hands of common law. The Indian Trademark jurisprudence provides for civil, criminal and administrative remedies for the persons whose trademark has been so infringed.

Civil Remedies:
  • Permanent/Perpetual Injunction:
    As the name suggests, permanent injunction depends on the nature of the suit, when it is to be decreed and is binding in nature to a permanent effect.[34]
     
  • Interlocutory/Temporary/ Ad-interim Injunction:
    Under this a specific time frame comes into consideration within which the Court may pass final orders. A discretionary relief is offered to the plaintiff prohibiting an action by a party to a lawsuit.[35]
     
  • Mareva Injunction: This is a specific type of interim injunction which is granted to restrain the defendant from disposing off his assets until the final order is passed.[36]
     
  • Anton-Pillar Order: This order empowers the plaintiff to search the premises of the defendant and inspect the documents and articles to ensure that it isn't destroyed by the defendant.
     
  • John-Doe Order:[37] These orders give powers to search and seize against anonymous defendants.
     
  • Accounts of profits or Damages: These are the books of accounts of the defendant which is supplied to the plaintiff in order to monitor the amount of profits made by the defendant during the infringing period.
  • Delivery and Destruction: The infringing goods and related materials are submitted to the plaintiff for destruction.[38]

Civil remedies are unarguably the best remedies. While the Courts have been adamant of imposing heavy penalties, the actual impediment lies in recovering the damages so inflicted.

Criminal Remedies
The complaints seeking criminal sanctions are filed under Sections 103 & 104 of the Act.[39] It enlists various offences for falsifying trademarks, marking or possession of instruments for falsifying trademarks etc. The maximum punishment imposed on a person for violating the above-mentioned provisions is that of 3 years.

The offenses are cognizable in nature and a complaint can be filed at the Magistrate's Court to seek an order to direct the police to carry out raids and investigate. The police are not only empowered to investigate and seize infringing goods but also arrest the accused. It is the responsibility of the complainant to prove that the infringing products seized are counterfeit and deceptive in nature.[40]
  • 115(4) of the Act lays down the powers of the police regarding search and seizure of the premises of the alleged infringer.[41] It is to be noted that the police has to obtain a certificate of opinion from the registrar which is then binding on the police. Due to the dearth of marks and devices in the database provided to the Registrar, he is not obliged to give an opinion to the police. A search warrant can directly be obtained from the Magistrate under . 93 of CrPc.[42]

    In Sanyo Electric Co. v. State of Delhi[43] the order of search and seizure by the Magistrate was challenged. It was contended that the order passed tossed aside the provision laid down in Section 115 (4) which lays down the procurement of opinion from the Registrar. However, the Delhi HC turned down the contention and averred that the search warrant obtained under .93 does not oblige the police to follow the proviso stipulated in .115 (4) of the Act.

Administrative Remedies
  • 18(1) of the Act prescribes the requisite procedure and compliances during the registration of a mark.[44] Once the mark is applied before the concerned registry, the objections are invited under different sections of the Act. The proprietor who seeks the mark to be registered is then obliged to submit a response to the examination report. Application of the applied mark is afloat in the gazette for a period of four months beyond which it shall be qualified for registration, provided there is no objection from any other trademark holder.

The various administrative remedies bestowed under the Act are discussed below:
  • Opposition against a Similar/ Deceptively Similar Mark:
    Once the application is filed before the registry for registration of the mark under .18(1) of the Act, the mark is uploaded to the official gazette for objections by third party. Any person who believes that the mark encroaches upon his exclusive right of the mark is entitled to file an objection within four months. Thereafter, evidences are submitted by both the parties based on which the registry takes the decision of refusal or registration of the mark.

    The test for deceptive similarity has been broadly dealt upon by the SC in James Chadwick case.[45] The Court held that in order to ascertain deceptive similarity between two marks they needn't be placed side by side, rather by asking itself the question whether the defendants mark would be remembered by persons of average intellect and memory with its usual imperfections. The defendants mark may either resemble the plaintiffs mark visibly or phonetically.[46]
     
  • Rectification of a Registered Mark: [47]
    The party so aggrieved may file for rectification, removal or cancellation of a mark, if the person believes that the mark is inappropriate and encroaches upon his exclusive right of the mark. The mark may under such scenario be either inoperative, wrongly registered, expired or is registered without prior comparisons with the pre-existing marks of similar nature. In such a case, the Act provides for the procedure to rectify an omission or an error.

    The Intellectual Property Appellate Board ['hereinafter', IPAB], in Elango Himachalapathy v. Rank Xerox,[48] rejected four out of a total number of seven rectification application filed by Elango against the registration of the mark 'XEROX'. Elango submitted that the term 'XEROX' is used in common parlance is therefore ineligible for registration and should be struck off from the register. However, the IPAB observed that the mark 'XEROX' has been registered since 2003 and is renewed and used with regular effect.

    Moreover, it has been aggressively protecting its mark by advertisements such as, "If you use XEROX the way you use Zipper, our trademark would be left wide open" and "If you use XEROX the way you use Aspirin, we get a headache". Therefore, the IPAB held that, although the term XEROX is used in common parlance, however, the corporation was the owner of the mark based on its regular use and renewals.[49] Henceforth, the application for rectification was turned down by the IPAB.
     
  • Import or Export of Goods bearing Infringed Trademarks:
    .11 of the Customs Act gives power to the Central Government to impose restrictions and prohibit the export and import of goods of infringing nature.[50] The goods which are of infringing nature are liable to be confiscated and the customs officer has the power to raid any premise, conduct an x-ray of any person and search and seize any goods which if he has a reason to believe is contraband. The power or arrest has also been given to custom officers when counterfeit is found.

Examining The Effectiveness Of Civil Remedies In Tm Infringement In Light Of Challenges Faced By The Indian Judiciary

The scope and extent of civil remedies, granted by the TM act, has been discussed at length by the authors in the former parts of the paper. The TM holder may seek injunction, damages, and account of profits, custody of goods, etc. after choosing the path of civil remedies.[51]

It is true that the civil remedies are most chosen by the TM holders in cases of infringement.[52] While they do offer certain advantages over criminal remedies, they are not free from defects and disadvantages.[53] Such defects occur both at the execution/implementation as well as the final level of attaining the desired goal.

The objective of remedies is to provide a fair deal to the holder so that his earlier position is restored. Damages are generally paid by the infringer to the TM holder in order to compensate him/her the loss that he had suffered due to the said infringements. Damages thus constitute an effective civil remedy when the losses suffered are in the nature of economic losses. However, in cases where the loss is not of purely economic nature and constitutes other factors, damages may not seem as a fruitful remedy to restore the earlier position of the holder as if the infringement never happened. Serious harm to reputation or goodwill, inconvenience, and mental agony are few such instances.

Another important aspect of civil remedies include grant of injunction by the courts in cases of TM infringement. It is at the Court's discretion to allow or refuse to grant an injunction keeping in mind the circumstances of the case. When a holder can be sufficiently compensated by way of damages, injunctions may be refused by the Court.[54] Injunctions are an effective remedy to restrict the sale of infringed goods etc.

While the suit is still pending. It thus prevents any further loss to the TM holder. However, it does no good to improve the financial loss incurred by the holder due to acts already carried out by the alleged infringer.

In view of the author, the effectiveness or rather ineffectiveness of the remedies is also linked to the challenges faced by the Indian Judiciary in enforcement of remedies. The absence of any positive definition of "goodwill and reputation" in the TM Act stands as yet another roadblock to the effective implementation of civil remedies in instances of TM infringement. The Act also does not mention any "Damage for costs" for infringing trademarks.

The Delhi HC, in its judgment in the case of Hero Honda Motors Ltd. v. Shree Ashuramji Scooters[55], laid down the differentiation between Compensatory and punitive damages in TM infringement. The former aims at compensating the plaintiff for the losses suffered by him while the latter are aimed at deterring the infringers from indulging into such acts in the future. Damages to goodwill and reputation were also stressed upon by the HC. This decision led to the awarding of appropriate set of damages by the Indian Courts in various cases.

Another challenge faced by the Indian Judiciary is due to the advent of e-commerce in this new era of technology.[56]The most common issue is with regards to the misuse of domain names by the online marketing websites. Instances of selling of fake products and copying of renowned brands etc. thereby infringing trademarks are increasing day by day. The present legislation however seems archaic to solve these new set of problems.

The infringers cannot be reached many times due to various reasons including but not limited to providing fake addresses and details thus making it difficult for the Courts to send them notices. In cases where the infringer cannot be reached, no punitive damages can be imposed on him/her even if the website operations are restricted with immediate effect. This again adds as an additional burden to the TM holders.

It can thus be seen that though civil remedies are the most chosen ones in cases of TM infringement, they are not free from challenges and issues. It is important the Indian Courts ensure effective implementation of the remedies to fairly compensate the TM holders. Additionally, solving the above-mentioned challenges faced by the Judiciary is the need of the hour. This ever-increasing era of technological advancements certainly requires new set of effective solutions to the novel problems that it has brought along.

Choosing The Road To Criminal Remedies Analysing The Relevant Factors

The growth of Intellectual property in India has also brought with it serious issues and challenges. While in cases of infringement, criminal remedies might seem rather alluring and attractive; the process that they involve is equally cumbersome and tedious

 Furthermore, the lack of knowledge of IP laws by the Police, lack of effective implementation, and the slow prosecution processes act as a cherry on the top. It is true that the enforcement of IP laws in India is tilted towards the civil remedies however, it is equally important for IP owners to consider various factors while deciding on the most effective remedy.[57]

The situation at hand and the availability of resources must be considered by the IP owners while selecting the remedies. It has been seen that criminal remedies turn out to be more useful and effective when the TM owner wishes to conduct a market search thereby raiding all infringing set of goods.[58]However, it is important to note that the criminal route is not only cumbersome and time-consuming but also requires huge financial resources to secure better results.[59]

In view of the author, one must consider a few factors before walking down the road of criminal remedies in cases of TM infringement.

Firstly, the Police may not always be aware of the intricacies of IP Law thus posing serious threats to the process or raids involved in criminal remedies. There might even be chances of information leak in cases of raids thereby making the infringer aware of the raid and other details. This might create hardships in the process as the infringers may even destroy relevant evidence or stop all operations for the time-being.

Second, the criminal process puts a financial burden on the TM holder and requires hefty sums of money to attain the desired goal. It is important that the financial factor is seriously deliberated upon before choosing the criminal remedies.

Third, various delays and adjournments may lead to destruction/loss of relevant pieces of evidence thus causing serious impediments the entire process. This might turn into a waste of entire resources and may cause more harm than good to the TM holder. The raids are sometimes also refused by the Police officers due to the failure in recognising minute dissimilarities in the works.

Fourth, choosing the appropriate Court is yet another integral factor that needs to be considered. Lower courts, like district courts, do not possess the required knowledge at times which causes further delay and adjournments. Additionally, while there is no denying that the process has smoothened over years and has become more effective, the huge backlog of cases cannot be ignored. This not only causes more delay but also acts as an impediment to justice.

Lastly, it is not unknown that the damages are awarded proportionally to the seriousness of the infringement. Thus, a TM holder with statutory rights must proceed with civil actions rather than criminal ones. This will make it easier for the holder to recover damages and compensation for the alleged infringements.

In addition to this, there also exists a lacuna in the criminal law while dealing with TM cases.[60] According to the same, the infringer is free to deal with the goods till conviction is pronounced by the appropriate Court. There are thus fair chances of abscondence of the infringer.

Furthermore, there may be instances of failure of the Police to find the infringers and unleash the entire chain of supply of counterfeited products. The authors firmly believe that an effective solution to this could be filing of simultaneous criminal as well as civil complaints with the appropriate authorities.

While civil remedies will ensure restrain on supply of counterfeiting goods through injunctions and other remedies) in the market while the suit is still pending, the criminal remedies will help seize the infringed goods thus protecting the rights of the TM holder. Both these actions can be invoked simultaneously as they do not cause any prejudice to the parties by virtue of them being co-extensive and different in nature as well as in content and consequence.[61]

It is also essential to note that in practicality, criminal remedies might actually turn out to be more effective in certain cases of TM infringement as they strike at general deterrence and have a social stigma attached to them.[62] Furthermore, it not only shall deter the accused from indulging into such acts but will also restrain the supply of infringed goods across the entire sales network.

Another important benefit of registering a criminal action is that the same can even be initiated against unknown persons.[63] This also differentiates the criminal action with a civil one. It may happen that the holder in unaware of the identity of alleged infringer, manufactures or distributors thereby causing serious impediments to initiate proceedings. In such cases, recourse may be taken to 93 and 94 of the CrPC[64] that allows search and seizure against unknown persons.

Concluding Remarks
This research assignment is a one-stop destination to understand the nuances of trademark, its infringement and the remedies associated thereof. The authors have tried to comprehensively cover the detailed aspects of rights conferred to trademark owners in India with the help of recent judicial pronouncements. Further, the research assignment discusses the activities which constitute trademark infringement. The tests laid down by the legislature and its interpretation and implementation done by the judiciary in bestowing and protecting the rights of the trademark holder have been discussed at length.

There has been differing stance of the Indian judiciary with regards to the concept of deceptive similarity. The same has been discussed with the help of an amalgamation of old and recent judicial pronouncements which would aid the reader to analyse the scenario back then and how it has emerged and shaped the trademark jurisprudence of the country.

It is intelligible that everything comes with exceptions, so is the case with the rights conferred to trademark holders. Consequently, the trademark regime bestows a person with the defence of honest and concurrent use. The defence to be claimed should satisfy some parameters which have been laid down by the judiciary.

Conclusively, the assignment also brings forth the various remedies which a rightful proprietor of a mark can claim. The remedies have been discussed in light of the existing scenario and the lacunas consisting thereof have been addressed. The authors have also proposed certain measures which would cater in developing a robust and effective trademark regime which would provide a balancing approach between the rights conferred to the proprietor and the public at large.

End-Notes:
  1. Mr.Gerd Kunze, 'Introduction to Trademark Law and Practice, Basic Concepts, A WIPO training manual' (1993) WIPO Publication No 653 E accessed 22 March 2021
  2. The Trade Marks Act 1999, s 17 (The Act)
  3. The Act 1999, s 29
  4. The Act 1999, s 2(zb)
  5. World Trade Organisation, General Agreement on Trade-Related Aspects of Intellectual Property (1869 UNTS 299)
  6. N.R Dongre and Ors.v Whirlpool Corporation and Anr. (1996) 5 SCC 714
  7. Cadila Healthcare Ltd. v Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73
  8. Reckitt and Coleman Products Ltd. v Borden Inc. & Ors.(1990) UKHL 12
  9. The Act 1999, s 29
  10. Henry Campbell and Bryan A, Black's Law Dictionary (9thedn, St. Paul, 2009)
  11. The Hearst Corporation v Dalal Street Communication Ltd. (1995) SCC OnLine Cal 231
  12. Amritdhara Pharmacy v SatyaDeo Gupta (1963) 2 SCR 484
  13. The Act 1999, s 2(h)
  14. Bayerische Motoren Werke AG (BMW) v OM Balajee Automobile (2020) CS Comm 292/2017
  15. Tulip De and IshaTiwari, "BMW v. DMW- Delhi HC grants interim protection in favour of BMW" (Mondaq, 01 July 2020) <https://www.mondaq.com/india/trademark/958940/bmw-v-dmw-delhi-hc-grants-interim-protection-in-favour-of-bmw> accessed 23 March 2021
  16. Arudra Engineers Pvt. Ltd.v Pathanjali Ayurved Ltd & Anr. (2020) SCC OnLine Mad 1503
  17. Devika Sharma, "Madras HC Patanjali restrained from using Trademark Coronil till 30th July" (The SCC OnLine Blog, 21 July 2020) accessed 23 March 2021
  18. MeeraEmmauel, "CORONIL CASE Registration of Trademark does not confer monopoly over part of it- Madras HC lifts injunction on PatanjaluAyurved" (Bar and Bench, 05 Feb 2021) accessed 25 March 2021
  19. Cadila v Cadila (n 7)
  20. Sun Pharma Laboratories Ltd. v BDR Pharmaceuticals (2020) SCC OnLine Del 623
  21. ITC Ltd. v Britannia Industries Ltd. (2016) SCC OnLine Del 5004
  22. Consolidated Foods Corporation v Brandon and Company Pvt. Ltd., (1965) AIR 1965 Bombay 35
  23. East End Hosiery Mills Pvt Ltd. v Agarwal Textile Mills (1970) SCC OnLine Cal 57
  24. M/s Allied Blender and Distillers Pvt. Ltd. v GovindYadav and Anr. (2019) CS(COMM) 819/2018
  25. Surya Roshni Ltd. v Electronic Sound Component Co. (1994) SCC OnLine Del 88
  26. M/s Bhatia Plastics v M/s Peacock Industries Ltd. (994) SCC OnLine Del 387
  27. ITC v Britannia (n 21)
  28. M/S Castrol Ltd.&Anr. v Iqbal Singh Chawla & Anr. (2018) SCC OnLine Del 6396
  29. The Act 1999, s 12
  30. Kores (India) Ltd. v M/S Khoday Eshwarsa and Sons and Anr.(1984) SCC OnLine Bom 65
  31. Goenka Institute of Education and Research v Anjali Kumar Goenka and Anr (2009) 39 PTC 720 (Del)
  32. LexOrbis, "Trademark Disputes in Education The Goenka Dispute" (Mondaq, 20 May 2009) accessed 27 March 2021
  33. The Act 1999, s 29
  34. Radhika Shukla, "Trademark Infringement and Remedies" (Legal Services India, 26 June 2018) accessed 27 March 2021
  35. VK Ahuja, Law relating to Intellecutal Property Rights (3rd edn, Paperback 2017)
  36. ibid.
  37. ibid.
  38. SS Rana and Co., "Trademark Enforcement in India" (Lexology, 01 March 2018) accessed 27 March 2021
  39. The Act 1999, s 103 and s 104
  40. Kaviraj Pandit Durga Dutt Sharma v Navratna Pharmaceuticals Company(1965) SCR 1 737
  41. The Act 1999, s 115(4)
  42. The Code of Criminal Procedure 1973, s 93
  43. Sanyo Electric Co. v State (2011) 45 PTC 55 (Del)
  44. The Act 1999, s 18(1)
  45. James Chadwick Bros Ltd. v The National Sewing Thread Co.Ltd. (1951) AIR 1951 Bom 147
  46. M/S Atlas Cycle Industries Ltd. v Hind Cycles Ltd. (1972) SCC OnLine Del 141
  47. The Act 1999, s 57
  48. B.V Elango Himachalapathy v Rank Xerox Ltd. and Ors.(2009) SCC OnLine IPAB 268
  49. Editor, 'Trademark Rectification' (IP and Corporate Law Research, 25 March 2019) accessed 27 March 2021
  50. The Customs Act 1962, s 11
  51. Editor, 'Trademark Infringement' (Selvam&Selvam, 27 April (2018) accessed 28 March 2021
  52. ibid.
  53. Amit Ranjhan, "Civil and Criminal Prosecution in Trademark Violation" (Mondaq, 30 Oct 2018)<https://www.mondaq.com/india/trademark/749724/criminal-civil-prosecution-for-copyrighttrademark-violation> accessed 28 March 2021
  54. Dr. R.K Bangia, The Law of Torts (24th edn, Paperback 2019)
  55. Hero Honda Motors Ltd. v Shree Ashuramji Scooters (2006) 32 PTC 117 (Del)
  56. Rishu Shrivastava, "Internet, Electronic Commerce and Intellectual Property" (Mondaq, 16 Jan 2016) accessed 28 March 2021
  57. Oishika Banerjee, "Remedies available for Trademark Infringement" (IPleaders Blog, 29 May 2020) accessed 29 March 2021
  58. Vijay Pal Dalmia, "IPR & Criminal Remedies in India : Civil v. Criminal Remedy in IPR"(Mondaq, 19 Nov 2015) < https://www.mondaq.com/india/trademark/444510/ipr-criminal-remedies-in-india-civil-vs-criminal-remedy-in-ipr-search-seizure-raids-by-police> accessed 29 March 2021
  59. Essenese Obhan and Tarika Pillai, "Selecting the best remedy for Trademark Enforcement in India" (Mondaq, 15 July 2020) accessed 28 March 2021
  60. Amit Ranjan, "Criminal and Civil Prosecution for trademark violation (Khurana&Khurana IP Attorneys, 23 Oct 2018) accessed 28 March 2021
  61. Power Control & Appliances v Sumeet Machines Pvt. Ltd.& Ors. (1993) AIR 1993 Mad 120
  62. Vijay Pal Dalmia, 'IP and IT Laws News Bulletin' (2007) 1(3) accessed 29 March 2021
  63. Flower Tobacco Company v State and Anr. (1986) 6 PTC 352
  64. The Code of Criminal Procedure 1973, s 93 and s 94

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