Infringement of trademark is a violation of exclusive rights full of regard to trademark. Infringement may arise or occur when any person or a company, ‘the infringer’ uses a trademark which is similar or alike or confusingly similar to a trademark for an ordinary man, which is possessed or owned by another party in connection to services or product which are similar in nature to the services or products which registration covers.
WHAT IS INFRINGEMENT?
It is a violation of the exclusive right granted to the registered owner of the trademark to use the same. Infringement of the trademark arises if another person who is not a registered proprietor or registered user uses the same mark or a deceptively similar mark in connection with the same goods and services for which mark is registered[i]. In the totality of the impression of the trademark or symbol produce should be such as to create confusion or deception in the mind of a prudent man or purchasers.
In Indo-Pharmaceutical works ltd v Citadel Fine Pharmaceutical ltd,[ii] Delhi high court held that the trade marks “Energex” and “Enerjase” are dissimilar even though they dealt with the similar product or services. In the cases of infringement of copyright or Trademark normally an injunction must be there. The order of injunction become necessary if another person dishonestly uses the trademark itself of any other proprietor or owner of trade mark.
ESSENTIALS OF INFRINGEMENT:-
The following elements must be there in order to constitute infringement of a trade mark:-
· Using of a registered trademark by a person other than its registered owner or proprietor or registered user.
· The causing of confusion on the part of public, it creates confusion to the public in relation to goods and services.
· Using of either the whole of the registered trademark or an adapted one by making of few additions and alterations.
· The infringing trademark is identical or similar to the trademark already registered.
These all elements are essential to constitute that trade mark is infringed. The most common form of infringement takes place when an trader makes an attempt to take unfair advantage by using the trademark of another owner or proprietor of trade mark which affect the rights of the original owner or user of a trade mark. Therefore using deceptively similar marks to create confusion is the worst form of infringement of trade mark and for that civil remedies are also available against infringer of rights of the original user or proprietor of trade mark.
PERSON ENTITLED TO SUE FOR INFRINGEMENT:–
The plaintiff file a suit for infringement may be either:-
· The registered trade mark user or owner, or
· The registered owner or possessor of the trade mark or his legal successor, or
· Any one of the joint proprietors of the trade mark, or
· An applicant for registration of a trade mark,
PERSONS LIABLE TO BE SUED:-
If an infringement action is occurs the person who becomes liable to be sued is:-
· The agent of an infringer; or
· The infringer himself; or
· In several case the master responsible for his servant’s act of infringement; or
· The directors and promoters of a limited company, if they have committed or directed the infringing act.
REMEDIES
Under the trade mark Act, 1999, both civil and criminal remedies are available against infringement and passing off. The court has the discretion to grant or refuse the remedy and when the court believes that the remedy by the way of damages is a sufficient relief, injunction will not granted.
CIVIL REMEDIES
The court in the cases of Trademark infringement grant relief in any suit whether it is infringement or passing off (unregistered Trademark), it includes interim injunction and permanent injunction, for either damages or an account of profit as the case may be. No person shall be liable to institute any proceeding to prevent, or to recover damages for the infringement of an unregistered Trademark.[iii] Whenever a registered trade-mark is violated, the aggrieved person can make the remedies available in a civil court to restrain the defendant from using that registered trademark of the plaintiff.[iv] Legal proceedings constituted against the infringer by the owner of the registered Trademark for the unfair business practices. Civil proceedings must be instituted before the district court[v]. In an infringement action, the plaintiff may seek following reliefs’, civil remedies of Trademark are available in following heads:
INJUNCTIONS:-
An injunction restraining further use of the infringing mark; Stopping someone or one person from doing a particular task or activity, it is an action of injunction by a judicial process. It is related to Trademark infringement. Injunction is an action for restraining a person from unofficial or unauthorized use of Trademark. The court may grant protection to the Trademark owner. The injunction may be sought includes the:-
· Anton piller order:- Anton piller injunction order, which is an ex-parte order to inspect the defendant’s premise without notice, where there is probability of the defendant destroying or disposing the damaging material. An order of such nature is for inspection of the premises of the defendant. A commission can also be appointed for local investigation to fulfill the purpose of Anter Piller Order.[vi]
· Mareva injunction:- Mareva injunction is to protect the interest of the plaintiff. In a suit by plaintiff against defendant court grants order to restrain the defendant from disposing of their assets which is under his/her possession until the trial ends or until the court give judgment in an action for infringement of trademark. Mareva injunction can be granted by the court under Order 38 Rule 5 and 6 or under Order 39 Rule 1 of the CPC.
The Supreme Court in Raman Tech. & Process Eng. Co. v. Solanki Traders[vii] laid down the nature and scope of this injunction, stating that, “it is supposed to be used in a restricted manner and with strict compliance to the rule so as to maintain the rights of the Plaintiff and the Defendant. It is not meant to be used by the Plaintiff as a tool to convert his unsecured debt into a secured one or as leverage to coerce the Defendant into a settlement”. Generally, Mareva injunction is granted at the earlier stages of proceedings but even if it is granted after the Final Judgment, it is still interlocutory because there is no final relief, but only in addition to the main or substantive relief.
· Interlocutory injunction:- Interlocutory inunction or temporary injunction means prohibition an action by party to a law suit until the disposal of suit. Temporary injunction is not granted by the court in the case if plaintiff has beer irreparable loss. As regards the temporary injunctions, the procedure is well covered under code of civil procedure, 1908 and also the specific relief Act, 1963.
· Perpetual/permanent injunction:- Permanent or perpetual injunction is a final order of a court that a person or entity abstain or withhold from certain Activities permanently.
Section 135 of the Trademarks Act, 1999 grants the relief of injunction. While granting an injunction, the Court should always rely on the fact that whether the balance of convenience lies with the plaintiff and whether an irreparable damage or injury would occur to the plaintiff, if injunction is not provided for against the defendant.
DAMAGES ON ACCOUNT OF PROFIT OR DAMAGE:-
Amount of damages is granted by the court after considering that what the actual loss of owner of Trademark was arises due to infringement of Trademark. Any profit is earned by the infringer by the Trademark of another registered owner, all the profit or certain amount of monetarily compensation is provided to the owner of Trademark. The damages in Trademark as a relief plays a very important role and the main Aim of damages is monetary compensation to the owner of Trademark whose rights is infringed by another person that is infringer.
In the case of Microsoft corporation v. Mr. Kiran and Anr[viii], the court in this case observed that the legal position in India related to granting damages in cases of infringement of copyright and Trademark is initially growing or progressive. The court in the cases of infringement of copyright & Trademark play a very effective role and now started granting the relief of damages with the view that defendant cannot escape as a consequence of its disappearing from legal proceedings. The claimant has a right to damages if defendant infringed the right of claimant or cause of action is infringement of a registered Trademark or passing off.
CUSTODY OF MATERIAL INFRINGED:-
This remedy states that an order for delivery-up of infringing labels and marks for destruct or wipe out or erasure, this sentence means that the court may ask or give order to the infringer to deliver all the goods which are labeled with the brand name that is well known trade mark or registered trade mark or court may direct the authorities to destruct all the goods in which Trademark is used by the infringer.
And where the Trademark is related to services means when the service mark is infringed the order is given by the court to stop the services instantly by the infringer.
In Lakme ltd. v. Subhash Trading and others[ix], the Delhi High Court found that the defendant was using the Trade mark “like-me” which was similar to “lakme”, the registered trade mark of plaintiffs. Both the Trade marks were apart from dealing with the same range of cosmetic products. The court held that there was every possibility of deception and confusion being caused in the minds of prospective buyers of the plaintiffs products, therefore it confirmed the injunction against the defendant.
In Cox Distillery and anr v. Mc Dowell and co. ltd.[x], the High Court dealt with the infringement of Trade Mark “DIPLOMAT” related to whiskey, by using a similar Trade Mark viz “COX DIPLOMAT PREMIUM WHISKEY” by the defendant. The court found that there was misleading similarity between the label used by the plaintiff as his trade mark and the one used by the Defendant. This similarity in labels amounts to infringement of the plaintiff’s trade mark under the meaning of section 29(1) of the trade mark Act, 1999.
CRIMINAL REMEDIES-
- Section 103 and 104 of Trademarks Act,1999: Under this section the punishment for selling of copied goods to which the identical trademark has been applied is given. The punishment under this section can be imprisonment of 6 month to 3 years or fine of Rs. 50 Thousand which can be extended to fine of Rs. 2 Lakhs.
- Section 115 (4) of the Trademarks Act, 1999: This section gives power to the police to search and seizure of products which is infringing the trademark. For such process of takeover, the police officer has to get a certificate of opinion form the registrar, before making any such raids and takeover. Although this provision is a time taking process which delays the process of conducting a raid and in the meanwhile infringer or maker of the copied product may continue to sell such copied products and gain profits from such selling and might also run away after selling the product.
- Section 156 of Code of Criminal Procedure,1973: Under this section, owner of the original trademark can file a criminal complaint to take fast forward action against the infringer. Sub-Section (3) provides that if the police refuses to initiate criminal action of to lodge FIR, the aggrieved party can file a complaint before the Magistrate.
- Section 93 of Code of Criminal Procedure, 1973: This section gives the procedure to obtain search warrant by directly approaching the magistrate court.
In the case of Sanyo electric co. v. State of Delhi[xi], an order passed by magistrate regarding issue of search warrant related to Trademark Infringement was challenged. It was alleged that the order passed by the magistrate violates the requirement under Section 115(4) of the Trademark Act. The Delhi High court held that requirement under proviso of Sec. 115(4) of the Trademarks Act is not necessary for issuing the search warrant under Sec. 93 of CrPC. It is the discretion of court to seek the opinion of registrar depending upon the factual circumstances of the particular case.
CONCLUSION
Thus, the protection of Trademark is important for the protection of consumers from fraud and imposition. However, it is beneficial if combined action for infringement through criminal and civil remedies. As stated in the preamble of the Trademarks Act, 1999, the law provides for a better protection of trademarks, the fact that the trademark law provides protection to trademarks has come out to be a reality. The present Act expressly recognizes the common law remedy and thus saves both the registered and unregistered trademarks from being misused.
[i] Section 29, Trade Mark Act,1999.
[ii] AIR 1998 Del. 347.
[iii] Section 27, Trademarks Act, 1999.
[iv] Section 28(1), Trademarks Act,1999.
[v] Section 135, Trademarks Act,1999.
[vi] Order 26 Rule 9, Code of Civil Procedure, 1908.
[vii] (2008) 2 SCC 302.
[viii] 2007 (35) PTC 748 Del.
[ix] 1996 PTC 16 567.
[x] AIR 1999 MP 118.
[xi] 2011 45 PTC 55 del.
BY- SAMPADA SHARMA
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