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How to File a Complaint against Trademark Infringement in India?

Ashish M. Shaji

| Updated: Jan 14, 2021 | Category: Trademark Infringement

How to File a Complaint against Trademark Infringement in India?

Trademark has become one of the easiest ways for consumers to identify the source and to make a decision. Trademark has helped in the recognition of brand and brand value. Therefore it becomes all the more critical for trademark owners to protect it from misuse or infringement by others. In this article, we shall look at Trademark infringement in India.

Trademark Infringement in India: Meaning

The Trademarks Act of 1999 is the legislation that governs and regulates trademarks in India. This Act provides for rules that deal with the registration, protection, and penalties against Trademark infringement. Trademark is an important intellectual property across the globe. There are numerous organizations that seek to protect such intellectual properties.

The Indian Patent Office administered by the Controller General of Patent, design, and trademark deals with trademark protection in India.

Trademark infringement is a term used when there is any unauthorized use of a mark that is similar or deceptively similar to a registered trademark. Here the term deceptively similar means that when a common man looks at the mark, it confuses such person of the origin of the goods or services.

Infringement of a Trademark is a punishable offence in India. Registration of a Trademark allows the proprietor to sue for such an infringement. It is so because a trademark confers a monopoly right over the use of a mark.

Trademark Infringement in India: Different Types

When we study about Trademark infringement in India, then there are two types of infringement that we must be aware of-

Type of Trademark Infringement
  • Direct Infringement;
  • Indirect infringement.

In case of direct infringement, a mark is used by a person who is not authorized by the holder of a registered trademark. Such use should be identical to that of registered trademark or deceptively similar to it for constituting direct infringement. The unauthorized use of the mark has to be for the propagation of goods or services that fall within the same class of registered trademark.

Unlike direct infringement, there is no provision in the Act that deals with indirect infringement. However, it doesn’t mean that there is no liability for indirect infringement. Indirect infringement is further divided into two types-Vicarious liability and contributory infringement.

Trademark Infringement in India: When to file an infringement complaint?

In the following cases, you may take action:

  • When a business uses the mark of yours in a similar or deceptively similar manner.
  • When infringement of your trademark may cause confusion in the minds of consumers.
  • When your registered trademark is infringed by a person with an intention to take undue advantage of the repute of your registered trademark.
  • When the registered trademark is used on labelling or packaging without due authorization.
  • When the registered trademark is used in advertising, detrimental or is against the reputation of the trademark.

What is not a Trademark Infringement?

If the resemblance in words, images, etc., of the alleged infringement doesn’t cause any confusion to the ordinary purchasers of the goods, there is no infringement of the trademark. A trademark used by honest practices of the industry, not looking to take any unfair advantage, also doesn’t amount to trademark infringement in India.

What to do in case of Trademark Infringement?

If your registered trademark has been infringed upon, then the owner of such trademark may commence legal proceedings against the infringer. It may be noted that an unregistered trademark cannot be infringed, and the trademark owner can’t bring infringement proceedings.

The trademark owner can begin an officially permitted proceeding against the infringer. A criminal complaint can also be filed, and it may also be noted that under the Trade Marks Act, 1999[1], the offences are cognizable, which means that police can register FIR and prosecute offenders directly. 

Where to file trademark infringement cases in India?

The jurisdiction to commence the proceedings is also decided in line with the provisions prescribed. Such a case can be filed in a district court where the owner of the trademark resides or carries his or her business. Section 134 of the Trademarks Act specifies the jurisdiction for filing suit.

Remedies for Trademark Infringement in India

The owner of the trademark can bring legal proceedings against the infringer. There are two forms of remedies that are available- Civil and criminal remedies.

Civil proceedings are initiated by the owner of the trademark before the district court where the owner lives. Civil remedies can be in the form of an injunction where one person is stopped from doing a particular activity or task. It means refraining a person from unauthorized use of the mark. Civil proceedings can also be in the form of damages where the loss due to infringement is recovered. The amount of damages shall be granted by the court once it considers the actual and the anticipated loss of the owner.

In Criminal remedy, a complaint can be filed against the infringer. It may be noted that both civil as well as criminal proceedings can be initiated simultaneously. A criminal prosecution can be obtained by-

  • Complaint before a magistrate– To initiate prosecution under the penal provisions of the Act, the owner of the trademark can file a complaint before the magistrate and seek an order for investigation under CrPc section 156(3). He may also move an application under CrPc section 93/94.
  • Complaint before the police– The provision and the procedure for filing a complaint before the police is provided in section 115(4) of the Trademarks Act. The concerned official then seeks the opinion of the registrar of trademark and initiates an action.

Another critical thing to take note before filing a complaint is that the plaintiff should prove that the registered trademark has been infringed.  Therefore the onus to prove the infringement lies on the plaintiff.

Trademark Infringement in India: Sending letter before action to the alleged infringer

It is advisable to send a letter (cease and desist notice) before commencing infringement proceedings to the alleged infringer. It is a beneficial option and can address the infringement issue without resorting to litigation proceedings of Trademark infringement in India.

Such a decision completely depends upon the individual situation. Below we have specified reasons why a cease and desist letter may be sent.

  • It makes the infringer aware of the fact that the right holder’s has come to know of the infringer’s activities.
  • Such a letter can cause the infringer to give up on their infringing activities and abide by the demands of the right holder.
  • Refusing a cease and desist letter presents an effective ground for an injunction.
  • This way of sending the letter shows the willingness on the part of the right’s holder to resolve the dispute in less conflicting way.

However, it may be noted that one of the drawbacks of sending such notice or letter is that it provides ample time to the infringer to destroy evidence.

Penalties under Trademark Infringement in India

In case of civil charges, the court can order for-

  • Temporary or permanent injunction;
  • Damages;
  • Accounts of profits, which means damages in the amount of the profits made from such infringement;
  • Destruction of goods;
  • Cost of legal proceedings.

In case of criminal proceedings, the court can order for-

  • Imprisonment for a period which is not less than 6 months and it can extend to a period of 3 years;
  • A fine which is not less than 50000 rupees and can extend to 2 lakh rupees.

Conclusion

A comprehensive framework has been made to protect trademarks in India. After all, trademarks are one of the most useful intellectual properties across the globe. Therefore provisions have been made to protect it and file a complaint in case of infringement. Both civil and criminal remedies allow the owner of the registered trademark to not just get compensated but also imprison the person on trademark infringement in India.

Read our article: How can I Avoid Trademark Infringement?

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Ashish M. Shaji

Ashish M. Shaji has done his graduation in law (BA. LLB) from CCS University. He has keen interests in doing extensive research and writing on legal subjects especially on criminal and corporate law. He is a creative thinker and has a great interest in exploring legal subjects.

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