Trademark Enforcement: A

Comparative Study
Trademarks Enforcement-
Remedies
– Civil
• Infringement
• Passing off
– Criminal
– Administrative
 Criminal Offences punishable
under the Act
• Falsifying a trademark: “makes”- Sec 103(a)
• Falsely apply a trademark: “applies” as under Section 101,
TM Act- Sec 103(b)
• Making or possessing instruments for falsifying trade marks
like die, block, machine- Sec 103(c)
• Applying false trade description- Sec 103(d)
• Applying false indication of country of origin- Sec 103(e)
• Tampering with an indication of origin already applied to
goods- Sec 103(f)
• Selling goods falsely marked- Sec 104
• Removing piece goods: The government will
forfeit all such goods and the person will be
punishable with fine.- Sec 106
• Falsely representing a trade mark as registered: The use
of the word 'R' or 'registered' inscribed in a circle shows
that a particular trade mark is registered.- Sec 107
• Falsely describing a place of business as connected with
the trade marks office- Sec 108
• Falsification of entries in the register-Sec 109
 Criminal Remedies
• A complaint may be filed before a Magistrate; OR
• Police can register an FIR and prosecute directly;
(statutory requirement to obtain the Registrar’s approval
depending upon whether offence is cognizable or non-
cognizable.
• Registration is not a requirement.
• Imprisonment- 6 months to 3 years
• Fine- Rs 50,000 to 2 lakhs
• Enhanced penalty on subsequent convictions.
(Section 106)
• Seizure, forfeiture and destruction of
infringing goods/ material for placing
before the Magistrate
• Provides for exemption if infringement is
innocent
 Procedure for Filing a Criminal
Complaint & Process
• 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;
• Arguments;
• 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
 Comparison of Criminal
Remedies
• Section 5, Article 61, TRIPS Agreement, 1994-
establishment of criminal procedures and penalties to be
applied at least in cases of wilful trademark counterfeiting or
copyright piracy on a commercial scale- must contain imprisonment and/or
monetary fines-must also include seizure, forfeiture and destruction of the
infringing goods and of materials and instruments used to produce them-
Incorporation is left to the flexibility of the member nations
• U.S.A.- Lanham Act prescribes criminal penalties for “counterfeiting” under §
2320.Penalties for counterfeiting are substantial – fines of as much as
$5,000,000 and as much as 10 years imprisonment for a first violation.
Anton Pillar, John Doe and Mareva Orders can be issued. Search and
Seizure Warrants issued subject to Fourth Amendment's prohibition against
unreasonable searches and seizures
• U.K.- Section 92,Trademarks Act, 1994 provides for punishments up to six
months for counterfeiting. Search warrant and seizure by a constable is
possible through a simple oath to a justice of peace is provided for in the Act
 Civil Actions in India
- STATUTORY INFRINGEMENT
- PASSING OFF
– Whirpool Case: Court held that a rights
holder can maintain a passing off action
against an infringer on the basis of the
trans-border reputation of its trademarks
and that the actual presence of the goods or
the actual use of the mark in India is not
mandatory.
– Milmet Oftho Industries & Ors. v. Allergan,
Inc: “the mere fact that the Respondents
have not been using the mark in India is
irrelevant if they were first in the world
market”.
 Civil Action: Reliefs in India
Section 135, TM Act, 1999-
• Injunctions against future violations
• Damages OR Accounts of Profits
• Delivery up/ Discovery of infringing
material / documents
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
 Interlocutory injunction- Landmark
Supreme Court judgments
Midas Hygiene Industries P. Ltd. V. Sudhir Bhatia & Anr.
(2004)3 SCC 90

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 it prima
facie appears that the adoption of the mark itself was
dishonest”.
 Lakshmikant V. Patel vs. Chetanbhat Shah
(AIR 2002 SC 275)

Supreme 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”.
 Enforcement- Domain names
• M/s Satyam Infoway Ltd. V. Sifynet
Solutions Pvt. Ltd. (2004) 6 SCC 145
SC has held that domain names
are subject to the legal norms
applicable to other intellectual
properties, such as trademarks.

• Yahoo Inc. v. Akash Arora

1999 PTC 201
SC applied general trademark
law to the internet.
Ex Parte Order
• When the matter is extremely urgent

• 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.
Ex Parte Orders
• 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.
 Anton Pillar Order
• Anton Pillar v. Manufacturing Process (1976) RPC 719

– Similar to ex parte interlocutory order

– A court order which provides for the right to search premises and
seize evidence without prior warning.
– used in order to prevent the destruction of incriminating
evidence, particularly in cases of alleged trademark, copyright or
patent infringements.
– 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.
– As held in Bucyrus Europe ltd vs. Vulcan Industries Engineering
Co Pvt Ltd
 Permanent injunction

• To ascertain rights of the parties

• Remedies for Breach of injunction

– Police assistance
– Assistance of administrative bodies
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.
2009(39)PTC208(Del)
• Mareva orders having the effect of freezing up of assets
may also be granted.
Damages / Account
of Profits
• These are mutually exclusive
alternative remedies

• Account of profits- An equitable relief

• Damages- for the cumulative losses suffered by the

Plaintiff on account of the defendant’s acts

• Sec 135(3): When damages may not be awarded.

 Damages- recent trends

• Time Inc. vs. Lokesh Srivastava

2005(30)PTC3(Del)
– Punitive damages awarded for the first time – Rs 5 lakhs
– Distinction between compensatory damages and punitive
damages was made out.
– Delhi 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”
 Damages- recent trends

• Microsoft Corporation vs. Yogesh Papat & anr.

2005(30)PTC245(Del)

– Highest costs and Damages ever

awarded for IP infringement by Indian Courts
– Approximately Rs 20 lakhs
 Comparative Analysis
• TRIPS Obligations- Section 2 ( Articles 42- 48) deals with establishment of
fair and equitable procedures with regard to representation, rules of fair
evidence in civil and administrative cases, right to information in certain
cases and prescribes that injunctions, payment of damages and expenses
by infringer, disposal or destruction of infringing goods so as to take them
out of the channels of commerce and demanding assistance in finding out
source of infringing goods are good measures for creating an effective
deterrent to infringement . Further it contains that fair evidence must be
admitted. However, it also provides for safeguards against false or
exaggerated claims by the rightful owner of the trademark in the form of
indemnification of the defendant. Article 50 provides for interim injunction.
• U.S.A.-for intentional acts of counterfeiting, three times such profits or
damages, whichever amount is greater, together with a reasonable
attorney‘s fee-Statutory damages of ―not less than $1,000 or more than
$200,000 per counterfeit mark per type of goods or services sold, offered for
sale, or distributed, an amount that can be increased to $2,000,000 per
counterfeit mark per type of goods or services where the violation was wilful.
 Administrative Remedies

• Indian Customs Act, 1962-Sec 11(2)(n)

of Customs Act deals with restriction
on import/export of goods including protection
of patents, trademarks and copyrights.
• Confiscation of infringing material by Custom Authorities
• Intellectual Property Rights (Imported Goods)
Enforcement Rules, 2007, under this the rights holder
can record their registered trademarks with the Customs
authorities.
 Comparative Analysis
• TRIPS Obligations: Section 4 (Articles 51- 59)
• U.S.A : India has borrowed the system of recording of
registered trademark from Section 42 of the Lanham Act.
-aggressive import enforcement with respect to
intellectual property rights recorded with the agency- In
1990, the Customs Service in U.S. established an
Intellectual Property Rights (IPR) Task Force (now
known as the Intellectual Property Rights Branch)-
provisions made to protect goods involving a close
question of law and “gray market” goods- Special 301
and FTA agreements
• U.K.: CMTR (Community Trademark Regulations)
provide for regional enforcement of their TMs in the EU
areas.- Standard of enforcement is the same.
 Criticisms regarding
Enforcement Mechanisms
• Varying standards of protection
• Varying degrees of “relevant” evidence- Whereas US and Indian
courts demand that petitioners must first produce enough evidence
to support their claim and then demand evidence in possession of
the other party, countries like Japan, Korea order the production of
documents only.
• Trial and Judgement Delays
• Difficulty in obtaining Preliminary Injunctions- Indian Courts, still,
very rarely grant these orders. ICC (1997) reported that in at least
four European countries that is Denmark, Austria, Finland and
Sweden the preliminary civil remedies have been found as
inadequate.
• Inadequate Damage Awards and Criminal Sanctions
• Inability to prevent trade of infringing goods- TRIPs obligation only
for identical marks on identical goods- no specification regarding
goods in transit.
 Suggestions
• The enforcement rules in India should be interpreted in accordance to
the conditions and needs of the country, consistent and should not
cause, in particular, a threat to local competitors nor deter local
innovative initiatives;
• Scope of likelihood of confusion should be widened to prevent cross-
border trade of counterfeit good.
• An attempt should be made to enforce TRIPS standards in the
negotiation of FTAs
• Provisional measures should be applied with caution and only in cases
where an irreparable harm is shown;
• Efforts should be made at improving coordination between different
areas of government
• For better cross-border protection regional treaties assuring community-
wide protection can be entered into.
• The WTO Dispute Resolution Mechanism as well as the IPAB should
seek at providing expeditious judgements in cases of international
disputes.
• Co-operation among governments
needs to be pursued to ensure
counterfeiting and piracy activities
are effectively addressed at
Borders.
• Data collection must be improved
significantly to strengthen analysis
and support policy making in India.
THE END