Trademarks are considered intellectual property all throughout the world. Many organisations, both worldwide and national, work to preserve intellectual property such as trademarks. In layman’s terms, trademark infringement is the unlicensed use of a mark that is identical or deceptively similar to a registered trademark. The word “deceptively similar” refers to the fact that when an ordinary consumer looks at the mark, he or she is likely to be confused about the origin of the goods or services. Trademark rights are enforced by providing both civil and criminal remedies. A legal claim can be filed for infringement and passing off, or the Plaintiff can submit a criminal complaint with the Magistrate’s court.
What is Trademark Infringement?
Section 29 of the Trademarks Act, 1999, (Act) states that a registered proprietor has the right to sue any rival trader who uses an identical or similar mark in relation to identical or similar products or services for which the mark is registered. The registration of the mark is essential before initiating legal action for infringement. Section 29 also specifies the many ways in which someone may infringe on a trademark, which are as follows:-
- Usage of a mark that is identical or deceptively similar to a registered trademark in relation to goods or services.
- The use of the identical or similar mark in relation to identical or similar products or services is likely to confuse the public or to be associated with the registered trademark.
- The use of an identical or similar mark on various goods or services is likely to be unfair or harmful to the registered trademark’s distinctive character or repute.
- Use of a registered trademark as part of one’s own trade name, business name, or part of the name of another business dealing in similar goods or services.
- Application of the registered trademark to a material intended to be used for labelling or packaging of goods, as a business paper, or for promoting goods or services despite the fact that such person was not officially permitted by the holder or licensee of the brand.
- In circumstances where a trademark is advertised and such advertising takes advantage of and is opposed to honest procedures in industrial and commercial concerns, or is damaging to its distinctive character, or is detrimental to a brand’s repute.
- When the distinguishing components of a registered trademark include words, infringement may arise through the spoken use of such words and their graphic representations.
What is Passing Off?
Passing off is an actionable offence in which a person misrepresents his own goods as those of another. The three main components of passing off are Reputation, Misrepresentation, and Goodwill Damage. The trademark provides protection for registered goods and services, whereas the passing off action protects unregistered goods and services. The most significant element is that the remedy is the same in both circumstances; nevertheless, the trademark is only available to registered products and services, whereas passing off is open to unregistered goods and services.
What Civil Remedies are available?
The following civil remedies can be availed in cases involving trademark infringement or passing off: –
- Injunction/stay against trademark infringement.
- A temporary/ ad interim ex-parte injunction can be obtained by moving an application under Order 39 Rule 1 and 2 of the Civil Procedure Code.
- A claim for compensation can be made.
- Profit distribution and accounting.
- The Court can local commissioner for custody or sealing of infringing materials/accounts.
What Criminal remedies can be sought?
Sections 103 and 104 of the Act provide for the filing of criminal complaints seeking redress. Such complaints are filed in Magistrate court in order to get an order instructing the police to conduct investigations and searches.
Moreover, the punishment for applying for misleading trademarks, trade descriptors, and so on is addressed under Section 103 of the Act. Section 104 addresses the penalties for selling products or delivering services while using a misleading trademark or trade description.
Notably, both provisions provide for imprisonment for a period of six months, which may be extended to three years, as well as a fine of not less than fifty thousand rupees, which may be increased to two lacs rupees. Section 105 specifies that a second or subsequent conviction will result in imprisonment for a term of not less than one year but not more than three years, as well as a fine of not less than one lac rupees but up to two lacs rupees.
To conclude, In India, trademark infringement is a punishable offence, which means that the offender may face criminal prosecution in addition to civil proceedings. Trademark rights can be enforced through both civil and criminal means. In cases of trademark infringement and passing off, civil remedies are available, while Sections 103 and 104 of the Act provide criminal remedies for enforcing trademark rights.