THIS ARTICLE HAS BEEN WRITTEN BY MR. VIKAS KUMAR, A THIRD-YEAR STUDENT OF NATIONAL LAW INSTITUTE UNIVERSITY, BHOPAL. 

INTRODUCTION: 

Laws are framed and enacted to protect the rights of individuals. Every citizen in India is empowered to protect its own property and the property here also includes Intellectual Property.  As per world trade organization (WTO), Intellectual property rights are the rights that people are given over their original works of art. They often provide the creator an exclusive, time-limited right to use their invention. A trademark is any recognized phrase, word, emblem, or sign that identifies a certain product and legally separates it from all other products of its kind. A trademark identifies a firm as the only owner of the brand and establishes a product’s ownership. Trademarks in India are protected by the Trademarks Act, 1999. The Act establishes the guidelines for trademark registration, protection, and infringement penalties. All around the world, trademarks are considered to constitute intellectual property.  True owners of intellectual properties have certain remedies in case their rights are violated. For the infringement of trademark civil, criminal and administrative remedies are available to individuals. In this article we will review in detail the criminal remedies available to trademark holders. 

WHAT IS TRADEMARK INFRINGMENT? 

The violation of a trademark is defined in Section 29 of the Trade Marks Act of 1999. In essence, it is claimed that a trademark has been violated when the owner of a registered trademark has their exclusive rights violated. The applicant receives exclusive rights to the brand name upon trademark registration. The trademark registration certificate grants the owner the sole right to use the brand name for any business activity falling under the registered class. If a third party uses the brand name during business without the possessor’s consent, it is an infringement of the owner’s rights and is referred to as trademark infringement.

In the land mark judgement of Cadila Health Care v. Cadila Pharmaceutical Ltd The Supreme Court ruled that it makes no difference whether the plaintiff and defendant are involved in the same industry or sell identical or related goods. In this important case the court established a set of standards to determine whether an unregistered trademark was being used in commerce. Only after the trademark is registered and the aggrieved party initiates legal action against the infringers may a claim of trademark infringement arise. If the item is not registered, a claim may be made under common law for misrepresentation or under any other statute that addresses exclusively unfair trade practices. In doing so, he must satisfy the judge that his trademark, which is superior to the defendant’s mark because it has acquired social standing and public recognition, is his property. 

The plaintiff must also prove that the defendant’s mark is likely confusing customers of those products or services. Every trademark granted by the Principal Register of the relevant court comes with an unrestricted right for the owner to use it.  When legal disputes over trademark infringement arise, this very defense is frequently denied. The degree of similarity between the two contested marks is the obvious factor that the court considers. The next set of considerations include marketing expertise, advertising strategies, the defendant’s goal in adopting the mark, consumer purchasing abilities for products and services, and so on. These frequently facilitate the courts to reach a conclusion

REMEDIES AVAILABLE FOR TRADEMARK INFRINGEMENT 

When the trademark of a person is infringed, he has remedies available under the trademark act of 1999. It includes both Civil, Criminal and Administrative Remedies. 

CIVIL REMEDIES

1. Injunction:

An injunction is defined as a legal order that prohibits one person from engaging in a specific activity or action. In terms of trademark infringement, it means prohibiting someone from using the trademark without authorization. The Court permits protection for the trademark owner through a temporary or permanent stay.

2. Damages:

Damages refer to the recoupment of losses incurred by the trademark owner as a result of the infringement. Under this remedy, the monetary value of any financial loss or brand damage is recovered. The damages would be determined by the court after taking into account the owner’s actual and anticipated losses as a result of the infringement.

3. Possession of the prohibited materials:

This form of remedy states that Court could order the person who has infringed the trademark to deliver all the products or all the other products that fall under the category of that name brand. In such circumstances, the Court may order the authorities to seize the materials accounts and destroy all related products. If a service mark has been violated and the trademark relates to services, an order may be made to stop the violator from providing the services right away.

CRIMINAL REMEDIES

As per the Indian trademarks act, applying fake trademarks, trade descriptions, etc. is punishable under Section 103, and selling products or rendering services while using a fraudulent trade mark or false trade description is punishable under Section 104. In the event of the false application of a trademark or the sale of products bearing a false trademark, they provide for a period of imprisonment of at minimum six months and a fine of not less than fifty thousand rupees and a maximum of two lakh rupees, respectively. Section 105 of the Trade Marks Act of 1999 contains the provision for increased penalties. Section 115(4) of the act discusses the police’s authority to search for and seize any such goods in order to take legal action against trademark infringement. The catch with this clause is that the police officer must first obtain a certificate of opinion on the facts of the case from the registrar and must abide by that opinion in order to conduct any such raids or takeovers.

The Registrar of Trade Marks is not required to provide any such opinion, and the database provided to him or her is insufficient because it does not recognize device marks, symbols, or labels. As a result, the Registrar is prevented from providing a complete opinion because the entire database, which includes both word marks and device marks, symbols, or labels, is not available. This clause frequently causes a delay in the process of performing a raid, allowing the manufacturer of the fake product to keep making money off it and even flee after it has been sold. The owner should initiate criminal action in order to act quickly against any infringement. According to Section 156 of the Code of Criminal Procedure 1973, the owner should submit a criminal complaint. In accordance with subsection 3 of Section 156, if the police refuse to file a FIR or begin criminal proceedings, the aggrieved party may file a complaint with the Magistrate in accordance with the procedure outlined in section 190 of the Code of Criminal Procedure, 1973. The process for requesting a search warrant has been outlined in Section 93 of the Code of Criminal Procedure, 1973, and can be done by going straight to the magistrate court. The fact that the complainant sometimes without knowledge of the manufacturers and distributors of the infringing material is an obstacle to the filing of a criminal complaint. The Code of Criminal Procedure, 1973 under its Sections 93 and 94, which permit the initiation of search and seizure actions against both known and unidentified parties, resolve the issue.

In the case of Sanyo Electric Co v. State of Delhi (CRL. REV. PETITION NO. 154/2010), it was contended that a magistrate’s order regarding the issuance of a search warrant related to trademark infringement was violating the provisions of Section 115(4) under the Trademark Act, which states that a search warrant cannot be executed until the investigating officer has obtained the registrar’s opinion. The Delhi High Court ruled that the proviso to Section 115(4) of the Trademark Act is not necessary for the execution of a search warrant obtained by the court under Section 93 of the Code. Depending on the facts of a given case, the court may or may not request the registrar’s opinion.

In another well-known case, Makemytrip (India) Private Limited v. Orbit Corporate Leisure Travels, the Delhi High Court issued a ruling based on the concept of acquiescence, allowing the defendant to continue using its trademark. The plaintiff has filed a lawsuit against the defendant, alleging that the defendant cannot continue to use the mark GETMYTRIP because it is confusingly like their own. However, despite being aware of this, the plaintiff continued their work until they finally filed a lawsuit. The court dismissed the case on this basis, allowing the defendant to proceed. This case was significant because it demonstrated the need of awareness and understanding prior to filing a lawsuit. Therefore, when it comes to trademark infringement, ignorance is not welcome.

CONCLUSION

The owner’s business’s market share and brand value are both impacted by trademark infringement. In addition to obvious trademark infringement, there may be indirect infringement as well. There are no rules addressing indirect infringement, however there are obligations that adhere to the international law principle. Therefore, it is crucial that people are aware of how to avoid any form of trademark infringement on their products and quickly remedy the issue with legal assistance and guidance. 

In India, the demand for trademark registration is steadily increasing, which shows how aware individuals are becoming of the need to protect their own products. Nowadays, trademark infringement is a widespread occurrence. Even if there are various solutions to deal with the issue, not all of them are used properly. Every method used to stop infringement ultimately makes the law more difficult to enforce.

REFERRENCES

1. https://blog.ipleaders.in/remedies-available-for-trademark-infringement/ 
2. https://www.mondaq.com/india/trademark/749724/criminal–civil-prosecution-for-copyrighttrademark-violation 
3. Bharat Intellectual Property Law By Aditya Soni Edition April 2019
4. www.estartindia.com 
5. https://www.khuranaandkhurana.com/2022/05/26/criminal-prosecution-for-copyright-and-trademark-violation/ 

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