In India, trademark law has grown significantly during the past few years. Trademark litigation is being used to aggressively enforce trademark rights. Due to the filing of cases seeking damages, trademark litigation has increased. It is clear from the trademark that the regime’s platform has been rapidly evolving.
Here’s an article that will help you understand the nitty-gritty of Trademark Litigation in India.
What is Trademark Litigation?
Trademark litigation is approaching the court to adjudicate the dispute over a trademark. Though the trademark rights are territorial in nature but such litigation may be both domestic and international in nature.
What is trademark litigation in India?
In India, the focus of trademark litigation is whether one party has infringed upon the rights of the other party’s trademarks or has misused, misrepresented or represented someone else’s trademark as that of its. Whereas, litigation involving trade dress concerns questions of whether a product line’s distinctive packaging or configuration has been violated.
When a defendant product in India is likely to lead the general public to believe that certain services, products, or businesses are affiliated with one another, unfair competition allegations may occasionally be filed in addition to trademark claims. False advertising is also a part of it.
The India Trademark Litigation takes into account Indian statutes, rules, regulations, and decisional law that are related to or resulting from litigation involving trademarks, trade names, or unfair competition that affects trade identity.
More than only the name of a service or product might be protected by a trademark.
The main laws governing trademarks in India are:
- Trade Marks Act, 1999 (Trade Marks Act): This is the main source of trademark law that is uniformly enforceable across the nation.
There is no state-specific legislation governing trademarks in India. - Trade Marks Rules, 2017 (Trade Marks Rules):
Trademark prosecutions, oppositions, rectifications, and the application/registration process with the Trademarks Registry are governed by these regulations, which the Central Government enacted under the Trade Marks Act.
In the event of a dispute between any rule and a provision or provisions of the Trade Marks Act, the Trade Marks Act prevails. - Delhi High Court Intellectual property Division Rules: The Delhi High Court, in 2022 enacted The IPD Rules to regulate the practice and procedure of the Intellectual Property Division, which was pursuant to the abolition of the IPAB.
Trademark Infringement and Passing-off under Trademark Litigation
=> Trademark Infringement: If the rights of a registered trademark are violated by an unauthorized, unregistered user then it comes under infringement.
The violation can happen due to various reasons such as use by an unauthorized person, using a mark identical or deceptively similar to the registered mark, using a mark that can cause deception or confusion due to the similarity of goods or services used for, using the registered mark as a trading name or a part of it, etc. Section 29 of the Trademark Act of 1999 makes reference to trademark infringement.
=> Passing-Off: The precise definition of passing off isn’t given in the Act, but the courts have derived it from the principles of common law.
Passing off basically means selling your goods or services as if they are of someone else’s.
To establish passing off, the classical trinity test has to be passed which states that there has to be a misrepresentation of the trademark, that the misrepresented trademark has goodwill and reputation attached to it and the aggrieved party has undergone losses and damages because of such misuse and misrepresentation. The right against passing off is available to both the registered as well as unregistered trademark owners.
What are the different types of Trademark Infringement
1. Direct Infringement: Infringement occurs when a registered trademark’s statutory rights are violated by using the registered mark or a mark identical or deceptively similar to it without permission. Section 29 of the Trademark Act, 2019 established the elements of infringement:
○ Registered Trademark – Only a registered trademark could be infringed. The common law principle of passing off will implement to an unregistered trademark.
○ Unauthorized person – The use of the Trademark should be by someone who isn’t the owner or the authorized representative but is still using the mark or a mark that is identical or deceptively similar to it.
○ Identical or deceptively similar mark- the test for assessing whether marks seem to be identical or similar is determined by seeing if there is any possibility of confusion or deception among the people of trade and customers.
○ Goods/Services – In order to demonstrate infringement, the infringer’s goods/services have to be similar or identical to the products which the trademark Registration represents.
2. Indirect infringement: Indirect infringement is derived from the principles of common law, which states that the person or organization might not be infringing the trademark but are:
○ Vicarious liability- In this scenario, not just the principal infringer but the whole body/entity/company would be held liable except the one who is completely without knowledge of the commission of the offense.
Basically, in order to hold other persons liable except the principal infringer, they must have knowledge of the infringement, they must contribute to the same, and they must be deriving financial gains from such infringement.
○ Contributory infringement– In this scenario, all the persons contributing to the infringement and its abetment are liable. As the term suggests, it is a group effort and all are responsible therein.
Who can sue for infringement of trademarks?
Anyone who is aggrieved by the misuse or misrepresentation of their registered trademark can file a suit for trademark infringement.
Whereas any unregistered trademark owner can sue for passing off. It is important to know that for a suit of passing off, an actual act should have occurred. In cases when a registered trademark owner has to sue another registered trademark owner, a suit of infringement cannot be made as per law and only passing off is maintainable.
Remedies against Trademark Infringement or Passing Off
Civil remedies: Section 135 of the Act provides civil remedies such as injunctions, delivery up, and profit of accounts.
■ Temporary/Ad-interim Injunction: If the aggrieved is able to establish that there is a prima facie case of infringement or passing off, the balance of convenience lies in their favor, and if the injunction is not granted he will bear the irreparable loss, then the court can grant an interim injunction till the disposal of the suit.
■ John Doe Orders: These orders issued by the court against the defendants that are not known or cannot be tracked.
■ Permanent Injunction: It is the final order of the court to refrain the infringing party from conducting activities permanently.
■ Appointing Local Commissioner: On the request of the aggrieved, the court can direct the appointment of a local commissioner for conducting a raid at the known/ unknown premise of the infringing parties to seize the infringing goods, accounts, any promotional material, stationary, etc. and make a report of everything that is found.
■ Damages or Accounts of Profits: The aggrieved can ask for the Damages for the loss incurred due to the misuse or misrepresentation of the mark, whereas the accounts of profits require the infringer to provide the actual profit that they have made because of the infringing act.
■ Delivery-up and Destruction: The infringing goods are provided to the Plaintiff who has the right to destruct them.
Criminal remedies: Section 102 and 103 of the Act specifies the criminal liability and its penalty.
The penalty for falsifying or applying a false trademark is 6 months to 3 years of imprisonment with a fine of 50,000 to 2,00,000 rupees. Though if the court is of a reason it can also impose imprisonment for less than 6 months and a fine lesser than 50,000/-.
Enforcement of Registered Trademark Rights by Courts/Government Bodies
Trademark Registry
This is the main body in India responsible for regulating initial protection and registration of a trademark. It is in charge of regulating the application, prosecution, registration, opposition, and other processes.
Courts
Only District Courts and other higher courts in India are the places where lawsuits for infringement and passing off, among other allegations, can be filed.
There are no courts that specifically deal with matters pertaining to trademark law. However, the Commercial Courts, Commercial Divisions, and Commercial Appellate Division of High Courts Act 2015 has established specialized commercial courts.
According to the new statute, these issues are not only heard quickly but also by exclusively specialized benches. Furthermore, there is a high level of expertise, particularly in High Courts and the Supreme Court, thanks to a long history of trademark jurisprudence and a robust common law heritage.
Intellectual Property Appellate Board (IPAB)
This quasi-judicial body was specifically established to deal with IP law matters. Under Section 91 of the Trade Marks Act, appeals against decisions made by the Registrar of Trade Marks and other officials are handled in this appellate body.
Appeals in Trademark Litigation
Any litigant has the option of filing an appeal against a final decision, as well as against interim orders. Here is how it goes…
Appeals From Final Judgments
Any party has the option to appeal the final decision to the Appellate Court.
Section 96 of the Code of Civil Procedure,1908 (CPC) refers to this as the First Appeal. Let’s say the first appellate court upholds the original final judgment.
In that situation, the party has the right to submit a regular second appeal before a higher appellate court, but only if a significant legal issue is at stake (section 100 of the Civil Procedure Code).
The time it takes to get a ruling in a final appeal is not predetermined and can range from two to five years.
Appeals From Interim Orders
Parties may also appeal interim orders if the Civil Procedure Code (order XLIII, rule 1) permits it (given that it is permissible). When the final judgment in the case is being appealed, further orders may also be appealed. Typically between one and six months, appeals from interim orders are completed far more quickly than those from final judgments.
Stay Of Proceedings
Only in cases where an appeal has been lodged against an interim order are litigants eligible for this relief.
The mere fact that an appeal has been filed does not automatically stay the underlying lawsuit (or order that is being appealed). The party who feels wronged must persuade the court that the underlying processes ought to be stopped.
Over the years Trademark Litigation has become the backbone of Trademark related disputes, and the savior of aggrieved parties. It has positively escalated the process of providing protection to Trademark rights and has also broadened the horizon for keeping up with a constantly ever-evolving world.
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
Last modify 27-05-2023
