Tuesday, July 19, 2011

Enforcement of Trademark Rights

Under Indian Laws statutory protections is available to both registered marks as well as unregistered marks. In respect of trademarks Indian law provides both civil as well as criminal remedies for taking action against any infringement of a trademark.

Appropriate forum for infringement of Trade Mark:
A suit for infringement of trademark has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen.

Before Trademark Registry- Administrative Remedy
1. Opposition (before the Registrar)- Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3 months time.

2. Cancellation (before the Registrar as well as Appellate Board)- Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and non-use till the cancellation petition.

Before Courts- Civil Remedy
Under common laws, the proprietor of a trade mark, whether registered or unregistered, may sue for passing off in respect of any trade mark used by defendant that is identical with or deceptively similar to his trade mark. The registered proprietor also has the remedy to take infringement action.

1. Injunction- Ex parte/ permanent
2. Damages
3. Anton Pillar Order,
4. Seizure of goods
5. Rendition of accounts

Before Courts- Criminal Remedy
Besides Civil remedies, the proprietors of the trademark as well as licensed users also have the option to initiate criminal prosecution against the infringers etc. Following acts have been recognised as offences, against which a criminal complaint can be registered:-
• Falsifying a Trade Mark;
• Falsely applying a Trade Mark;
• Making or possessing instruments for falsifying a Trade Mark;
• Applying false trade description;
• Applying false indication of country of origin;
• Tampering with an indication of origin already applied to goods;
• Selling goods or possessing or exposing for sale of goods falsely marked;
• Falsely representing a trade mark as registered;
• Improperly describing a place of business as connected with the Trade Marks Office;
• Falsification of entries in the Register.
Procedure and punishment
The complaint for any of the above offences can be made/filed before the Magistrate within whose territorial jurisdiction the offence is committed.

Besides confiscation of goods and machinery, the Code of Criminal Procedure, 1973 also provides for imprisonment starting from 6 months to 3 years for the offences or fine or both.

Confiscation of imported goods bearing counterfeit marks

Indian Customs Act, 1962 provides for confiscation of imported goods bearing counterfeit marks if upon a representation made to Chief Customs Officer, he has reasons to believe that the alleged goods bear a false/ counterfeit Trade Mark. The Chief Customs Officer may require the importer of the goods or his agent to produce any documents in their possession relating to said goods along with informations as to the name and address of Consignor as well as importer of said goods and may initiate proper action for non compliance or offence

No comments:

Post a Comment