1. IPRTRADE MARK REMEDIES SANJEEV KUMAR CHASWAL ADVOCATE & IPR ATTORNEY LL.M IPR, ARB.& ADR, MS CYBER LAW & SECURITY
2. LEGAL REMEDIES AGAINST INFRINGEMENT AND PASSING OFF REMEDIES CIVIL CRIMINAL Section Sections 102 to 135 120 with various section of IPC
3. CIVIL AND CRIMINAL ENFORCEMENT• Suit for permanent injunction restraining infringement of trademark, passing of and / or copyright. copyright.• CRIMINAL ENFORCEMENT -• Cognizable Offence: Criminal complaint directly with the police for arrest & seizure;• Criminal complaint before the district court for seizure.• Non-cognizable offence: Criminal complaint before the District Court for search and seizure warrant against infringing parties; Criminal complaint before the District Court for search and seizure warrant against unknown persons.
4. STATUES INVOKED FOR CRIMINAL ACTION• Sec. 103/104 of the Trade Marks Act, 1999• Sec. 63 and 64 of the Copyright Act, 1957• Sec. 39 of the Geographical Indication of• Goods Act, 1999• Sec. 420 of the India Penal Code• Sec. 91/93 of the Code of Criminal Procedure
5. PROCEDURE FOR FILING A CRIMINAL COMPLAINT• Criminal Complaint in the Court of competent jurisdiction;• Pre summoning Evidence, for satisfying the court on the basis of the evidence placed on record, that the• allegations by complainant are prima facie maintainable;• Issue of General / specific Search and Seizure Warrants, along with directions to police; Raid / Search & Seizure by Police.• Investigation and arrest (if necessary) of accused persons;• Summons / Warrants against accused persons;• Accused Appear and seek bail;• Framing of charges, after notice of allegations;• Trial - Onus of proof is on the complainant
6. Passing off, Trademarkinfringement Passing off “No body has any right to represent his goods as the goods of somebody else”Lord Halsbury- Passing off action allows trader A to prevent trader B from passing their goods off as if they were A’s. Passing off is available where there is a prospect of confusion of identity through the unauthorized use of similar marks or get up, and such use damages, or is likely to damage the goodwill and reputation of a business. Passing off can apply to virtually any name, mark, logo or get-up which distinguishes a company, business, product or service from the other. Passing off attracts doctrine of strict liability: the intention of the person passing itself off as another trader is irrelevant.
7. Passing off action under the Trade Marks Act, 1999• PASSING-OFF• In respect of unregistered trademark, action for passing off can be initiated.• A registered Trademark has the backing of infringement and passing off remedies under the Trade Marks Act.• The Act does not provide for infringement action in respect of unregistered Trademarks.• Only Passing off remedy is available in case of unregistered Trademarks. (Section 27 of TMA Act, 1999).
8. Essentials of Passing offTo Succeed in an action for passing off, a claimant should establish that: The claimant has a goodwill Passing off is made in the course of trade. The defendant made a Misrepresentation that is likely to deceive the public public. The misrepresentation damages or is likely to damage the goodwill of the claimant.
9. Methods Which Constitutes Passing-off Passing-v False representationv Adoption of Trademark which is the same orv A colourable imitation of a Trademark.v Adoption of essential character of a Trademarkv Copying get up or colour scheme.v Imitating the Design or shape of goodsv Adopting the word or name of rival trader.v Against interlocutory order appeal liesv To High Court and thereafterv To Supreme Court.v Again final order appeal lies to High Court And thereafter to Supreme Court.
10. Precedents on Passing offIn the case of Marks & Spencer Plc and others v. One in a Million Ltd. and others, the deputy judge of the English Court held that:"Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organization must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially useless to the dealer.“ In the case of Rediff Communication Limited v. Cyberbooth and Ramesh Nahata of Mumbai (1999), the Bombay High Court supported an action of passing off when the Defendants used the term ‘RADIFF’ (similar to the name ‘REDIFF’ of the Plaintiff) to carry on business on the Internet.
11. Example of passing off actionDomain name similar to that of known companies areused by persons in order to promote their products orservices.A company creates a website to promote his business ofsoft drinks and deliberately gives it the domain namewww.cocacola.com , now this domain name is bound toconfuse and mislead the customers as that of the wellknown Coca-Cola and encourage them to buy theproduct which infact is of another company. This can betermed as passing off.
12. Decided Case on Passing off Yahoo! Inc. vs Akash Arora(1999)FACTS: The defendant installed a website Yahooindia.com nearly identical to plaintiff’s renowned yahoo.com and provided services similar to those of the plaintiff.DECISION: The Delhi High Court granted an injunction restraining defendant from using yahoo either as a part of his domain name or as a trade mark .It held that trade mark law applies with equal force on the internet as it does in the physical world.
13. Trademark infringementSection 29 of the Trademark Act states that when a registered trade mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. A registered trade mark is infringed ,if:-1. The mark is identical and is used in respect of similar goods or services or2. The mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark3. And Such use is likely to cause confusion on the part of the public or is likely to be taken to have association with the registered trade mark. For example, if you are not the Nike® company or authorized by it, it is an infringement to sell sports clothes called "Nikestuff “
14. FOLLOWING ACTS CONSTITUTEINFRINGEMENTAffixes registered trademark to goods, manufacturersv offers, exposes, sales, stocks, or supplies goods and services under registered trademark.v Import and Export, use of registered trademark on business papers or advertisement.v DO NOT CAUSE INFRINGEMENTv not taking unfair advantages of or cause. Detriment to distinctive character or repute of trademark. Use in relation to goods or services indicating character, quality or geographical origin. The object of use is to indicate that the services have been performed by the proprietor or change the condition of goods.
15. If registration is confined to certain territories, use of tradebeyond those territories does not constitute infringement,but amounts to passing-off.Sale of goods on retail basis after purchasing the same inbulk, except repacking.Sale of accessories of goods such as machinery, authorities,cycles where parts are manufactured by different persons.Identical mark registered by more than one person.sale of goods by assignee of a trademark as long as he doesnot
16. ACTION FOR INFRINGEMENT &RELIEFS:-• a suit can be filed in the district court having jurisdiction.• A suit can be filed in addition to district judge in high court of Delhi, Mumbai, Calcutta and Chennai which have original jurisdiction.• (1) mandatory injunction restraining defendants from using trademark-• (i) damages and costs• (ii) suits for accounts• (iii) surrender of infringed goods.• (iv) surrender of labels, bills, hoardings, letter heads, transparencies, negatives, positives, pamphlets, brouchers, etc.,
17. ACTION FOR INFRINGEMENT &RELIEFS:-• The Jurisdiction of High Court could be invoked, subject to the payment of Court fees. The structure of Court fees vary from state to state.• (1) mandatory injunction restraining defendants from using trademark-• (i) damages and costs• (ii) suits for accounts• (iii) surrender of infringed goods.• (iv) surrender of labels, bills, hoardings, letter heads, transparencies, negatives, positives, pamphlets, brouchers, etc.,
18. In which court a Civil Case can be filedagainst violation of IPR ? In India, the jurisdiction for the purposes of filing a civil suit, will depend upon following facts, and subject to the following conditions:- – Where the cause of action has accrued; – Where the part of the cause of action has accrued; – Where the properties / violations are taking place; – Where the defendants reside or work for gain; In brief, the jurisdiction for the purposes of filing a case would depend upon the activities of the defendants / their place of business. – Unique provision in IP cases- Civil Suit can be filed cases- in place where plaintiff carries on business. business.
19. REMEDIES THAT CAN BE OBTAINED IN A CIVIL SUIT• Injunction (an order issued by the court restraining the defendant from dealing in infringing goods)- – Temporary / ad interim (pending proceedings in the suit)• Anton piller order: Court order appointing a local commissioner to visit the premises of the defendant & seize the infringing goods – the order is usually issued without notice to the defendant (ex parte).• Mareva Injunction – Court uses power seize the assets of the defendant to make order enforceable, where there is probability of assets being disposed off.• Interlocutory Injunction - An interlocutory application can also be filed for interim injunction.• Perpetual Injunction- It is final an order restraining defendant totally for all times to come/.
20. Interim / Interlocutory Injunction • Often the real remedy • Objective: • To maintain status quo • Time is of essence • Factors considered in granting : – Prima facie case – Balance of convenience – Irreparable injury if injunction not granted Gujarat Bottling Company v. Coca Cola 21 IPLR 201
21. Ex Parte Order• When the matter is extremely urgent• Injunction;• Discovery of documents;• Preserving of infringing goods, document of other evidence related to the subject matter of the suit;• Restraining the defendant from disposing off his assets in a manner which may adversely affects rights of the IP owner to claim damages, costs or other pecuniary remedies.• At a preliminary hearing of the interim application without notice to the answering defendant.• Granted before the motion for interim injunction is fully heard but for a limited period only.• After grant of ex parte injunction, the Court must proceed with disposal of the interim injunction application after the defendant has entered appearance
22. Anton Pillar Orders & John Doe Order • Sensitive in nature • Pre conditions for grant: • Extremely strong prima facie case, • Damage (potential or actual) very serious, • Clear evidence that defendants have in their possession, incriminating document/ material which they may destroy. • John Doe Order • Court appointed commissioners to enter the premises of any suspected party and collect evidence of infringement. • Suspected party may not be named in the suit. • Indian Courts have conferred expanded powers to commissioners- Roving commissioners • Ardath Tobacco Co. Ltd. vs. Mr. Munna Bhai & Ors.
23. Mareva Injunction• Freezing order• Prevents the infringer / offender from removing / disposing of assets in which the gains from infringement have been invested.• Aim- unjust enrichment of the defendant and to ensure payment of damages to Plaintiff.• Final injunction• To ascertain rights of the parties• Remedies for Breach of injunction – Police assistance – Assistance of administrative bodies – Contempt proceedings
24. Damages / Account of Profits• These are mutually exclusive alternative remedies• Account of profits- An equitable relief – Plaintiff adopts defendant’s acts as his own.• Damages- for the losses suffered by the Plaintiff on account of the defendant’s acts.• Damages- Recent trends• Time Inc. vs. Lokesh Srivastava – Punitive damages awarded for the first time – Rs 5 lakhs – Distinction between compensatory damages and punitive damages was made out.
25. Time Incorporated vs. Lokesh SrivastavaDelhi High Court:“ The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas, punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong-doers that law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not arty to the lis but suffer on account of the breach”
26. Wander Ltd. & Anr. vs. Antox India P. Ltd.Supreme Court on interlocutory injunctions: “Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of a legal right asserted by the plaintiff & its alleged violation are both contested… The object is to protect the Plaintiff against injury by violation of his rights for which he could NOT adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. Supreme Court on Balance of Convenience: “The need for such protection must be weighed against the corresponding need for the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately be compensated. The Court must weigh one need against another and determine where the balance of convenience lies.”
27. Midas Hygiene Industries P. Ltd. V. SudhirBhatia & Anr.Supreme Court…“…in cases of infringement either of trademark or of copyright normally an injunction must follow. Mere delay in bringing the action is not sufficient to defeat grant of injunction in such cases…the grant of injunction also becomes necessary if if it prima facie appears that the adoption of the mark itself was dishonest”.
28. Lakshmikant V. Patel vs. Chetanbhat ShahSupreme Court: “ In an action for passing off it is usual, rather essential to seek an injunction, temporary or ad- interim”“ proof of actual damage is not essential… likelihood of damage is sufficient”“ an absolute injunction can be issued restraining the defendant from using or carrying on business under the Plaintiff’s distinctive trademark”.
29. Plaintiff and Defendant evidence /Proofv Certified Copy of Registered Trademark Certificate, Bills, Invoices, stationery and It assessment orders, Advertisements, Audited Balance Sheets, Packages, Boxes Etc., Photographs• Defendants Documents / Proof• Photographs, bills and invoices, product, packages, Pamphlets, advertisements, Affidavit of Persons who have knowledge about infringement.
30. Civil vs. Criminal• Less hassle for the plaintiff• Jurisdictional advantage• Interlocutory Injunctions• Damages• Possibility of settlementHowever…• No deterrence• No fear factor- no arrest• Expensive & lengthy
31. REMEDIES - CIVIL• CIVIL-ADVANTAGES: • CIVIL -DISADVANTAGES: – Anton Piller Order, similar – Less deterrent effect. to police. – Less publicity. – Matter in control. – High Cost of litigation. – Settled/compromised. – Consumes more time to – Permanent injunction. reach logical conclusion. – The order can be used for future actions. – Possibility of Damages etc.
32. REMEDIES-CRIMINAL• CRIMINAL-ADVANTAGES: • CRIMINAL- DISADVATAGES: – Immediate deterrent – Can’t settle. effect. – A state case. – Lots of publicity. – Matter not in control. – May lead to Arrest. – As a complainant, to be present on each – May lead to conviction. date of hearing. – Less expensive. – No permanent injunction. – No damages etc.
33. Example of a successful civilenforcement action• 3 suits filed by Adidas Saloman AG in the Delhi High Court against counterfeiters• At the initial stage, infringing goods were seized by the Local Commissioner• Cases were decreed recently & damages of Rs. 15 lakhs was awarded to Adidas Saloman
34. Example of a successful criminal enforcement action• Criminal raids conducted in 2003 by the Economic Offences Wing, Delhi Police upon a complaint of a complainant.• Printers printing counterfeit stickers & labels- Levi’s, Adidas, Lee, DKNY, Timberland
35. Damages- recent trends• Microsoft Corporation vs. Yogesh Papat & anr. 2005 (1) CTMR 424 – Highest costs and Damages ever awarded for IP infringement by Indian Courts – Approximately Rs 20 lakhs – Criminal Remedies- TM/ CR• Cognizable offence• Imprisonment- 6 months to 3 years• Fine- Rs 50,000 to 2 lakhs• Enhanced penalty on subsequent convictions.• Seizure, forfeiture and destruction of infringing goods/ material for placing before the Magistrate.