Trademark Law: Criminal and Civil Remedies

Trademark Law: Criminal and Civil Remedies

Abstract

Trademarks even existed in the ancient world. Times when people prepared themselves there were already creative entrepreneurs who marketed their goods beyond their localities and sometimes over considerable distances. Breaking down the term and elaborating trademark, it means any sign that is capable in order to distinguish among goods or services of one enterprise or venture from the others. The underlining notion of Trademark is backed by the concept of Intellectual Property Rights. Trademarks started to play an important as it is the key factor in the modern world of international trade and market-oriented economies.

Trademark law is a statute that protects trademarks as the Act made, like as the Trademark Act of 1999 made in India which by far protects the trademarks in India. The fundamental mechanism of the Act is to protect and prevent any frauds towards the Trademarks. This paper makes an effort to highlight the theory of trademark, the requirement of legal protection and the mannerism of the protection.

The theory of Trademark and the need for legal protection

Trademark is a kind of intellectual property consisting of a recognizable sign, design or expression which identifies products or services of a particular source from those of others. The main purpose that trademark serves being an intellectual property right is to distinguish the goods or services by one from the others. One can also state that trademark is a sign that makes the capable distinguish of goods and services.

Talking of Trademark, it is mandated to highlight the nature and basics of Intellectual Property Rights as trademarks fall under IPR. Therefore, Intellectual Property[1] is a term referring to the creation of the intellect which is basically the term used in studies of the human mind. It is assigned to designated owners of intellect by law. Some common types of intellectual property rights (IPR), in some foreign countries intellectual property rights, is referred to as industrial property; which includes inventions (patents), trademarks, industrial designs, and geographic indications of source, copyright, patent and trademarks, trade secrets all these

cover music, literature and other artistic works, discoveries and inventions and words, phrases, symbols and designs. Intellectual Property Rights are a form of property that are intangible in nature.

Trademark[2] means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours. A mark can include the device, brand, heading, label, ticket, name, signature, work, letter, numeral, shapes of goods, combination and packaging.

Even though Intellectual property rights expand the inducement for an individual to continue strives to produce such new inventions or creations which can create new opportunities .

Trademark is not a mandatory requirement of the law but once it has accepted, the allotted can advertise in a prescribes manner.

In recent years, due to rapid development that takes place in the country in various sectors, a productive development in the industrial sector can be seen lead to the growth in the extent of intellectual property rights. Trademark provides an exclusive right to the owner of the mark to use that mark and also to prevent others from using that mark simultaneously for their own purpose.

Trademarks are generally protected from their date of first public use. Registration of a mark is not required in order to secure protection for a mark, although it offers several advantages, such as allowing the registrant to seek remedy for the infringement of the mark. Applications for registration of trademarks are made with the Patent & Trademark Office. Registration is a fairly lengthy process, generally taking anywhere from twelve to twenty-four months or even longer. Trademark registration is valid for 10 years and may be renewed for additional ten year periods thereafter as long as the mark is in used in interstate commerce. A properly selected, registered and protected mark can be of great value to a company or individual desiring to establish and expand market share and a better way to maintain a strong position in the marketplace.

Now, the Paris Convention which was established for the protection of industrial property signed in Paris on 20 March 1883. It was one of the first intellectual property treaty signed at the international level and it is still in force. It has been established for the purpose to safeguard the interest of the inventor or owner of the property at other member countries also. Paris Convention provides a common standard to the applicant for the protection of their right.

Under the particular convention, an applicant may file an application for the protection of their property rights at the same country in which he has applied for. The only requisite to file an application is that the applicant must ensure that the country in which he is applying for must be a member country to the Paris convention.

Similarly, in order to promote and protect the intellectual property across the world with the cooperating member countries, there comes in the role of WIPO. It literally stands for the World Intellectual Property Organization and is considered to be one of the specialized and important agencies of the United Nations. It had come into force on 26 April 1970 which was created under Convention on Establishing the World Intellectual Property Organization. It is the successor to BIRPI which administered the Berne Convention for the protection of literary and artistic works and Paris Convention for the protection of Industrial Property.

In India, there was Trademark and Merchandise Act,1958 which was then replaced by The Trademark Act of 1999 with satisfies the need of the TRIPS i.e. trade-related aspects of intellectual property rights. The main motive of the Trademark Act of 1999 is to safeguard the rights of trademark and provide legal remedies as it constitutes the origin, quality and goodwill which is affixed to the enterprise and with the help of which consumer identifies business, brand.

Trademark Law deals with registration, protection and prevention of fraudulent use of mark . It also provide rights acquired by registered trademark and also the remedies to the owner.

Trademark law provides recognition to the mark of the owner and also provides exclusive right so that the owner can use it in an effective manner. But when a third party violates the exclusive rights of a registered trademark, it is known as an infringement to the trademark. Most people use deceptive logos and brands to advertise their copied product for gaining profits.

Trademark law protects the interest of both registered and non-registered trademark.

Remedies

Law is always backed by sets of remedies that are meant to achieve justice in matters where legal rights are involved. The remedy is basically a manner by which a right is enforced upon, by an authority so that the society can correctly recognise a wrongful act. With the growing age of “Make in India” the recent announcement of the Hon’ble Prime Minister of India Mr Narender Modi, the need of providing remedies in the Intellectual Property has risen as well.

Trademark is one of the most important elements under Intellectual Property due to the alluring and maturing Industrial Sector of India gets into a huge demand for registration and the need for protection against any kind of infringement. All the legal provisions governing trademarks come with the objective of safeguarding the prominence and goodwill of any entity or an individual owning the trademark thereby protecting the consumers from fraudulent activities related to goods and services of the entity. Thus, a trademark protects both the producer as well as the consumer.

Several cases in these years have come out with judgements that have indeed acted as a reference for dealing with infringements. A trademark infringement claim can only if the trademark is registered and the concerned owner brings in proceedings related to contraventions of the breach. It is not registered, then a claim can be made on the basis of common law on grounds of misrepresentation or any other legislation governing the unfair procedure of carrying out trade only. There are also certain provisions[3] that talks about the infringement of trademarks.

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Criminal Remedy

Protection of intellectual property avails the criminal remedy as an effective means for the protection of rights. A criminal complaint can be filed against the infringer in the court of law. A person can directly give complaint to the magistrate under section 156(3) of the Criminal Procedural Code or can Lodge a complaint to the police.

Some provisions has been invoked as remedy under trademark act, 1999:-

Trademark Act provides the provisions for a penalty to the infringer. If any person deceitfully applies their identical logo to registers trademark, he shall be liable for the imprisonment for a term of not less than 6 months which can be extended to 3 years with the fine of Rs 50000 which is subject to extension of Rs 2,00,000[4].

If in any case, any person found indulged in assisting the accused to hire, sell or have possession of such identical goods or in the service to those goods for sale or, he shall be liable for the imprisonment[5] for not less than 6 months and may be extended to 6 years with fine of Rs 50000 which may be extended to Rs 200000.

One also falls under the rule of penalty[6] describes if any person committing the offence under section 103 and 104[7], shall be punishable for every subsequent offence with imprisonment for a minimum term of one year which may be extended to years with the fine of Rs 100000 which can extend to Rs 2,00,000.

The time limit for filing the suit of infringement of a trademark in the court of law is three years from the date of infringement. Apart from both the civil and criminal remedies, provisions for administrative remedies under trademark law is also available. Opposition application may be filed by the third party to oppose the similar copy of the trademark. Another way of remedy is the rectification of registers trademark to avoid the confusion between the original and copied trademark. To prevent the violation, the administrative authority can keep a check over the trade of goods if the products are registered.

Civil Remedy

Civil remedies majorly include injunction, temporary and perpetual damages and the removal of product. The first and the most important remedy provided is that aggrieved person can file a suit for an injunction in a court of law to restrict the person for claiming their mark as original and earn profits. It is stated that there can be two kinds of injunction can be granted by the court either temporary or perpetual by taking into consideration the nature of the suit. When the concerned suit is about to decree and is of permanent in nature, such suit is a perpetual injunction. Perpetual injunction is granted on the merits of the case. A temporary injunction is granted when the specific time period is there for passing out the final decree by the court. This is a necessary remedy which can be initiated after getting the knowledge about the violation to the right.

Damages are also a form of civil remedy that is claimed by the person who has an exclusive right of the mark by producing the certificate of registration to the concerned authority and restrict the person who intentionally uses his mark with the purpose to deceit people. The original owner can claim damages by computing the loss he has suffered into the market. The owner can recover compensation by proving damage to his reputation.

Another civil remedy which an owner can claim is the removal of the duplicate product from the market which has been infringed. One has to suffer some loss but it can prevent the intervention of the third party from using his mark as it was his own skill, the labour behind that particular unique mark.

Conclusion

A trademark is a word, name, symbol, or device used to indicate the source, quality and ownership of a product or service. A trademark is used in the marketing is recognizable sign, design or expression which identifies products or service of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher or on the product itself. For the sake of corporate identity, trademarks are also being.

There have been several judgements passed by the courts that stand responsible for changing the destiny of remedies available for trademark infringement. One of such cases is DM entertainment vs. Baby Gift House and ors[8]; in this case, a question arose relating to publicity rights and character retailing. The Court in the above case held the defendants to be liable for the violation of the right of publicity, false endorsement and passing off. A permanent injunction was granted against the defendants along with token damages. The decision was given ex-parte as the defendants did not contest the case of the plaintiff as there exists no provision specifying the description of passing off, the court relying on precedents declared a compensatory sum of Rs. 1 Lakh to the plaintiff by the defendant. Further in the famous case of The Coca-Cola Company vs. Bisleri International Pvt. Ltd[9] ; the Delhi High Court decided the fact that if there exists any amount of infringement, then the court’s jurisdiction is likely to be present in order to entertain the concerned suit. The case saw the confusion of a brand- name MAAZA being passed off from the plaintiffs’ company to that of the defendant’s, brought in the solution to the case. The defendant used the trademark both in domestic as well as foreign countries. Further, it was the plaintiff who filed a permanent injunction, thereby claiming losses suffered by the company. The court inferred that the defendant is liable for infringement due to usage of trademark beyond the permissible extent and as a result, it issued an interim injunction against the defendant.

We can also state by looking at the above case laws that remedies act as a measure for infringement of both the registered as well as unregistered trademarks. It makes sure to act as an action to initiate the proceedings of infringement in a court of law while in the latter case, it helps in passing off the infringement to the hands of the common law. The remedies[10] discussed above are the ones which are adopted according to the facts and circumstances of the case in hand.

Also Read: Infringement of Copyright under Copyright Act, 1957


[1] Described as per Lecturing notes of G. PULLAIAH COLLEGE OF ENGINEERING AND TECHNOLOGY

[2] As per section 2(zb) of the Trade Marks Act, 1999 : https://indiankanoon.org/doc/1017213/

[3] As per Section 29 of the Trade Marks Act, 1999 : https://indiankanoon.org/doc/1017213/

[4] As per Section 103 of the Trade Marks Act, 1999 : https://indiankanoon.org/doc/1017213/

[5] As per Section 104 of the Trade Marks Act, 1999 : https://indiankanoon.org/doc/1017213/

[6] As per Section 105 of the Trade Marks Act, 1999 : https://indiankanoon.org/doc/1017213/

[7] of the Trade Marks Act, 1999 : https://indiankanoon.org/doc/1017213/

[8] https://www.bananaip.com/ip-news-center/dm-entertainment-pvt-ltd-v-baby-gift/

[9] https://brandsandfakes.com/case-analysis-coca-cola-co-vs-bisleri-international-pvt-ltd/135/

[10] As per Section 29 and Section 30 of the Trade Marks Act, 1999: https://indiankanoon.org/doc/1017213/

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