How to protect a trade mark in India?
Action which can be taken protection of Trade marks in India including an action against infringement and passing off are as follows:
- Cease and Desist notices
- Civil Action
- Criminal Proceedings
- Border Measures
Cease and Desist Notice
Misrepresentation and misuse of Trade marks without lawful authorization from the IP owner is common in the trade and, in our day-to-day lives we come across several counterfeit and fake products in the market. In view of this rising menace and its timely prevention, Trade mark owners resort to the means of sending Cease & Desist Letter (hereinafter referred to as C&D letter) to the potential infringers, prior to approaching the court of law. Sending a Cease & Desist Letter is regarded as an ancillary enforcement strategy to settle a dispute without resorting to Litigation.
Most of the times, sending of Cease & Desist Letter is the foremost remedies sought by Trade mark owners to prevent Trade mark infringement. Trade mark owners generally rely on Cease & Desist Letter as a cost-effective mean to enforce their rights against the infringer and before initiating legal action, with the intent to amicably resolve the matter.
Typically a C&D letter will outline the following:
- The business and trade mark portfolio of the IP holder;
- Information about the national and international repute the IP holder enjoys in its Trade marks;
- The details of the impugned trade mark;
- The extent of mis-use of the impugned trade mark by the infringer;
- Requisitions as required to be complied with by the infringer.
Prior to sending of a Cease & Desist Letter, it is recommended that the IP holder, becomes fully aware of the extent of misuse of its trade mark by the infringer, and the details of such misuse keeping in mind the very important factor or the number of years of use by the IP holder.
It is also advisable that the IP holder prior to initiating an action against the infringer by sending a Cease & Desist Letter, carefully looks over its own IP portfolio, to cover for any sort of vulnerability to its rights.
Though sending of Cease & Desist Letter, is viewed as one of the most cost-effective method of addressing an infringement, there are certain risks associated with the same, such as:
- Suit For Groundless Threats: On receipt of a Cease & Desist Letter, the defendant may not be willing to admit to the misuse being carried out by him, and rather might initiate a suit for groundless threats against the IP holder/sender of the Cease & Desist Letter, in a competent court.
- Ex-Parte Injunction: Sending a Cease & Desist Letter, not only marks the first date of knowledge of misuse being carried out by the infringer, but also simultaneously alarms the infringer that the IP holder is aware of his conduct, which unless corrected holds the threat of legal proceedings being initiated. Therefore, in such circumstances, the infringer also remains prepared and might take appropriate steps such as filing a Caveat in the appropriate court, which completely diminishes the chances of an IP holder to obtain an ex-parte injunction.
Fabrication of Accounts: It may be noted here that in India, prior use of the trade mark holds more weightage than prior registration of the same. As a Cease & Desist Letter carries relevant details of the IP holder such as date of first use of the trade mark in India and Internationally and also the date of first registrations, such information when received by the infringer, can be misutilised by the infringer to alter his/her own accounts/records to show prior-use in the said mark.
Civil remedies can be enforced by a filing a suit for infringement and/or passing off in the competent court. Further the following reliefs of civil nature are available -
i. Interlocutory/Temporary/Ad-interim Injunction
Interlocutory/Temporary/Ad-interim Injunction generally mean prohibiting an action by a party to a lawsuit until the disposal of the suit. It is discretionary relief and granted only if the plaintiff is able to establish that there is prima facie case in his favour, the balance of convenience lies in his favour and if the temporary injunction is not granted he will bear irreparable loss.
ii. Mareva Injunction
Mareva injunction is to protect the interests of the plaintiff during the pendency of the suit and is granted to restrain the defendant from disposing of their assets within the jurisdiction until the trial ends or judgment in the action for infringement is passed.
iii. Anton Pillar Orders
In appropriate cases, the court has inherent jurisdiction on an application by the plaintiff made ex parte and in camera to require the defendant to permit the plaintiff to enter his premises and take inspection of relevant documents and articles and take copies thereof or remove them for safe custody. These are known as Anton Piller orders. The necessity for such an order arises when there is grave danger of relevant documents and infringing articles being removed or destroyed, so that the ends of justice will be defeated.
iv. John Doe Orders
John Doe orders are the orders issued by the court to search and seize against unnamed/ unknown defendants; which virtually translates into untrammeled powers in the hands of the plaintiffs, aided by court-appointed local commissioners, to raid any premises where infringement activities may be carried out.
v. Permanent/Perpetual Injunction
Permanent / Perpetual Injunction is a final order of a court that a person or entity refrain from certain activities permanently or take certain actions in perpetuity.
vi. Damages or Accounts of Profits
Damages or accounts of profits are two mutually exclusive remedies granted to the Plaintiff. Damages are granted to the plaintiff to compensate for the losses suffered by the Plaintiff on account of the defendant’s acts. Accounts of profits is an equitable remedy and requires the defendant to hand over to the plaintiff the actual amounts of profits made by him due to the infringing activities.
vii. Delivery-up and Destruction
Under this relief the infringing goods are delivered to the plaintiff or destroyed.
The Trade Marks Act, 1999 is the primary statute for the governing the law relating to the trade marks in India. The said act enumerates numerous offences in relation to the trade marks like falsifying and falsely applying a trade mark, making or possessing instruments for falsifying Trade Marks, applying false trade description, applying false indication of country of origin etc. The falsification and falsely applying a trade mark related to food and drugs is a cognizable offence. The punishment for the aforesaid offences varies from offence to offence but the maximum punishment can go as high as imprisonment up to 3 years with or without fine.
The IPR (Imported Goods) Enforcement Rules, notified in 2007 empower Custom Officers to enforce Intellectual Property Rights over the imported goods. The said rules provide a detailed procedure by which a right holder can register his Intellectual Property Rights with the customs officials. The registration imposes an administrative duty on the Customs Department to protect the right-holder against violation of his Intellectual Property Rights.
It is important to note that the Customs Officials can suspend the clearance of goods if it has prima facie evidence or reasonable grounds to believe that the goods are counterfeit. This suspicion or belief can arise either when a notice has been filed by the Right holder with the customs or even in the absence of such notice a suo moto action can be taken.
Registration with CBEC, empowers the Customs Authority to intercept, seize, and confiscate goods found to be or suspected to be infringing Intellectual Property Rights registered and in-force in India by any person other than the Intellectual Property Rights holder or without permission/authorization of the Intellectual Property Rights. Further by making one application the applicant can cover all the Customs Air Cargo Complexes, Seaports and Land Customs Stations through which importation or exportation of pirated article is suspected in India. The registration is usually obtained within a month and is valid for five years. Once registered the Customs Authority store the IPR in their electronic database which is flashed across all entry points in India.”