- Trademark protection in India: Border Measures Procedure
The Trade Marks Act 1999 provides that the proprietor or a licensee of a registered trademark may give notice in writing to the Commissioner of Customs to, prohibit the importation of any good if the import of the said good constitutes an infringement under the said Act.
- What are the border measures for trademark protection in India?
The Indian Customs Act 1962 confers power on the Central Government to prohibit importation or exportation of goods that have applied a false trade-mark or a false trade description.
- Trademark Protection in India: Administrative Remedies
Notice of opposition can be filed against trade mark applications published in the Trade Marks Journal. Proceedings can be initiated for rectification/cancellation of registered trademarks before the Registrar of Trade Marks.
- Trademark Protection in India: Criminal Proceedings
Criminal complaints can also be filed against persons who have infringed the mark in addition to a civil action.
- Trademark Protection in India: Civil Action
The competent Courts can be moved for grant of relief of injunction against infringement and/or passing off.
- Remedies against Infringement and Passing off of a Trademark in India
Both Civil and Criminal remedies are available in the Infringement or Passing off action.
Under Section 135 of the Trade Marks Act, 1999, the court grant relief in any suits for infringement or for passing off for injunction; either damages or an account of profits together with or without an order for delivery up of the infringing labels and marks for destruction or erasure. Criminal Prosecution of infringers of trademark is also provided under Trade Marks Act, 1999. Criminal Prosecution of person infringing an un-registered mark is also available under various provisions of Indian Penal Code, 1860. However, it pertinent to note that the Criminal Prosecution of an infringer under Trade Marks Act, 1999 is much easier and effective then Criminal Prosecution of a persons infringing an un registered mark under relevant provisions of Indian Penal Code, 1908.
Remedies available for protection of trademarks in India includes:
- Civil Action
- Criminal Proceedings
- Administrative Remedies
- Jurisdiction while filing suit for Infringement or Passing Off in India
How to decide where to file a suit for infringement or passing should be filed in India?
One of the most important practical benefit given under Section 134 of the Trade Marks Act, 1999 is that a suit for infringement can also be instituted before a District Court / High Court (enjoying Ordinary Original Civil jurisdiction such as High Court of Delhi, Bombay, Calcutta or Madras), within the local limits of whose jurisdiction, at the time of the institution of the suit, the person instituting the suit, actually and voluntarily resides or carries on business or personally work for gain. The person includes the registered proprietor and the registered user.
On the other hand the suit for passing off can only be instituted before a District Court, within the local limits of whose jurisdiction;
- The Defendant is residing, working for gain or carrying on its business; or
- Cause of action has arisen
- DIFFERENCE BETWEEN INFRINGEMENT & PASSING OFF OF TRADEMARKS IN INDIA
The difference between Infringement and Passing Off of a trademark are given below:
Infringement Passing off Statutory remedy Common Law remedy Registration of trademark is required Registration of trademark is not a pre-requisite Plaintiff is only required to establish that infringing mark is deceptively similar to the registered mark in respect of similar goods / services and no further proof is required afterwards as there is presumption of confusion Plaintiff is not only required to establish deceptive similarity of two contesting mark but also require to prove deception or confusion among public and likelihood of injury to the plaintiff’s goodwill Prosecution under Criminal remedies is easier Prosecution under Criminal remedies is relatively harder Benefit of instituting the suit under Section 134 of the Trade Marks Act, 1999 is available wherein the registered proprietor or registered user of the trademark can institute the suit where they actually and voluntarily resides or carries on business or personally work for gain Such benefit is not available and the regular rules of jurisdiction provided under Section 20 of Civil Procedure Code, 1908 apply i.e. Passing off action has to be filed where the Defendant resides or carried on business or cause of actions has arisen.
An action for Infringement for registered trademark or tort of Passing off for both registered as well as unregistered trademark are essentially two ways of achieving the same objective i.e. protection of goodwill attached with a mark. In India a combined action for infringement and passing off is permissible. However, both are technically two different concepts and the difference between the two is highlighted above.
- Factors considered by court to adjudicate passing off in India
The Courts generally consider the following factors in order to determine and adjudicate aforesaid issues;
- The nature of mark i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and labels works.
- The degree of resembleness between the marks, phonetically similar and hence similar in idea.
- The nature of the goods in respect of which they are used as trade marks.
- The similarity in the nature, character and performance of the goods of the rival mark.
- The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a decree of care they are likely to exercise in purchasing and/or using the goods.
- The mode of purchasing the goods or placing orders for the goods.
- Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
- Essential Characteristics of A Passing Off Action
It has been settled in catena of authorities that essential characteristics of a passing off action are as follows:
- Made by a person in the course of trade mark;
- To prospective customers of his or ultimate consumers of goods or services supplied by him;
- Which is calculated to injure the business or goodwill of another trade;
- Which causes actual damage to a business or goodwill of the trade by whom, the action is brought or well probably do so.
In a typical suit for Passing off, the Courts generally frame following issue / questions for consideration and determination:-
- Whether the Plaintiff is prior user of the mark in point of time.
- Whether the goods of the Plaintiff have acquired distinctiveness with any name or mark and are associated in the minds of the general public as those of Plaintiff.
- Whether there is a misrepresentation by the Defendant with regard to his goods and such misrepresentation is likely to lead to confusion in the minds of the people as a result whereof they may treat the goods of the Defendant as those of the Plaintiff.