Remedies available for Trademark Infringement

Remedies available for Trademark Infringement

Introduction

At this current scenario, rapid developments are taking place for businesses which in turn is leading to the development in the field of licensed innovation rights or IP. With industries developing every day, confusions related to the use of copied brand names are additionally expanding at the same pace. Consequently, this arises the circumstance of brand name encroachment.

What is Trademark Infringement?

Section 29 of the Trade Marks Act defines the infringement of a brand name. When the exclusive rights of the proprietor of the registered Trademark are violated, it is supposed to be an infringement of Trademark. The brand name registration gives exclusive rights to the brand name to the owner. The certificate of trademark registration gives exclusive rights to the owner to utilize the brand name for their business purposes falling under the class in which it is registered. In case, a third party uses the brand name in course of trade without the consent of the proprietor, it is an infringement of the proprietor's right and is called as the encroachment of Trademark. For providing trademark infringement, the intention of creating confusion or business use is ground for support. A trademark that isn't registered can't be infringed as such, and the brand name proprietor can't bring infringement proceedings.

Remedies against Trademark Infringement

Remedies are a measure for infringement of both the registered & unregistered brand names. The proprietor of the Registered Trademark can initiate legitimate proceedings against the infringer expressing unfair business practices. These remedies are an action for passing off on account of an unregistered brand name and an action for encroachment in the event of a registered brand name. Section 29 and Section 30 of the Trade Marks Act, 1999 sets down remedies for the encroachment of brand names. There are three types of remedies that are available to the owner of a brand name for unapproved utilization of its imitation by a third party.

A Civil Remedies;

B Criminal Remedies;

C Administrative Remedies;

Civil Remedies- Certain remedies be given to the ones whose trademark has been encroached. They are:

1. An injunction or authoritative direction by the court of law is a common civil remedy that can be given. The two sorts of orders that can be granted are perpetual and temporary injunctions. Perpetual injunction is allowed depending upon the suit concerned and when the same should be declared and consequently is of permanent nature. On account of a temporary injunction, a predefined time period comes into consideration which for this case will be till the court passes its final orders with respect to the issue. The same can be asked for under Order 39 Rule 1 and 2 of the Code of Civil Procedure. The same invalidates the purpose of filing the suit and along these lines allows the defendant to proceed with the use of the mark similar to that of the plaintiff.

2. Damages can be asserted by the aggrieved party on grounds that the exclusive right of using the trademark he owns has been ceased and this subsequently has prompted him or his undertaking suffering losses.

3. A civil remedy that is often claimed is handling of the profit accounts alongside an order for delivery or removal of the items that have been infringed.

Section 135 of the Trade Marks Act, 1999 provides statutory identification towards the Anton Piller Order which prevents the defendant from taking off assets from the court's jurisdiction.

• Criminal Remedies- The provisions include-

1. Section 103 of the Act sets down criminal remedy for the contravention of the brand name of any individual or entity which sets out a period of six months of imprisonment which can be extended till a time period of three years for infringing trademark rights.

2. Section 104 of the Act discusses punishments that should be given as a sanction against an encroachment. The section specifies a fine of 50,000 rupees which can be expanded till an extent of two lakhs in case somebody is found to violate the brand name rights.

3. An inflating version of punishment is laid down under Section 105 of a similar Act.

4. A seizure of powers of the person liable for infringing can be carried as a criminal remedy for an efficient adaptation to the above provisions. This method completed by police is exposed to reasonable grounds of proving the infringement only.

• Administrative Remedies- It includes-

1. By opposing a mark i.e. like the original mark, which can be done under Sections 9(1) or 11 of the Trade Marks Act, 1999. If such circumstance emerges, cross-examinations are done by the examiner upon the brand name registration. A trademark opposition is always filed by a third party, thereby restricting the current trademark in the trademark journal after the completion of its registration procedure.

2. By correcting the trademark which is already registered, so that to eliminate confusion.

3. Since the remedy is administrative in nature, it is completed by keeping a check in the trade activity of the goods that bear an infringed brand name.

In the case of The Coca-Cola Company Vs. Bisleri International Pvt. Ltd,¹ the Delhi High Court was firm with the way that on the off chance that there exists any measure of encroachment, then the court's jurisdiction which is probably going to be present so as to entertain the concerned suit. With the confusion of a brand-name MAAZA being given from the plaintiff's organization to that of the defendant's. The defendant utilized the brand name both in domestic & foreign countries. Further, it was the plaintiff who filed a permanent injunction, thereby claiming losses suffered by the company. The court gathered that the defendant is liable for infringement for use of trademark beyond a reasonable extent and accordingly it issued an interim injunction against the defendant.

BY-

Ankita Mishra