No court lower than a district court can hear trademark disputes related to passing off and infringement. Therefore, a case relating to a trademark dispute can usually be filed in a district court. However, in India, a suit relating to trademark dispute can be filed in a high court with original jurisdiction (i.e., the High Courts of Delhi, Bombay, Madras and Calcutta).
The actions which can be taken to protect trademarks in India, including against passing off and infringement, are as follows.
Civil remedies Civil remedies can be enforced by filing a suit for infringement or passing off in the competent court. The following forms of civil relief are available:
Criminal remedies The Trademarks Act 1999 is the primary statute governing Indian trademarks law. This act enumerates numerous offences in relation to trademarks, such as:
Administrative remedies The following administrative remedies are available:
A registered owner of a trademark or a licensee (provided that the licence agreements grants such right) which believes that its mark is being infringed may institute infringement proceedings.
The Limitation Act 1963 sets out the statute of limitations for filing infringement actions.
The usual time limit to bring an action is three years from the date of the cause of action.
However, in Timken Company v Timken Services Private Ltd (CS (OS) 3/2010 and IA 21/2010) the Delhi High Court held that if a new deceitful act is committed, the deceived party would naturally have a fresh cause of action in its favour. Thus, every time a party passes its goods off as those of another it commits an act of infringement. Similarly, whenever a party breaches another party’s registered trademark, it commits a recurring act of breach or infringement of that mark, giving rise to a fresh cause of action to the aggrieved party.
Section 22 of the Limitation Act also states that in cases of continuing tort, a new limitation period begins to run every time the breach of tort continues.
The following civil remedies are available to the owners of infringed marks:
Punitive damages may be allowed at the discretion of the court. In Time Incorporated v Lokesh Srivastava ( 2005 (3) PTC (3)) the court observed that the award of compensatory damages to the plaintiff is intended to compensate it for the loss suffered, whereas punitive damages are intended to deter the wrongdoer. As such, in appropriate cases these must be awarded to signal to wrongdoers that the law does not consider a breach to be merely a matter between rival parties, but is also concerned about those which suffer on account of the breach.
In Cartier International Ag v Gaurav Bhatia (CS (OS) No 1317/2014) the plaintiff submitted a methodology for computing punitive damages. The Delhi High Court granted damages of Rs10 million after taking into consideration the methodology of computing punitive damages as stated by the plaintiff.
The IP Rights (Imported Goods) Enforcement Rules 2007 empower customs officers to enforce IP rights over imported goods. The rules provide a detailed procedure by which a rights holder can register its IP rights with customs officials. This registration imposes an administrative duty on Customs to protect the rights holder against violation of its IP rights.
The following defences are available to infringers:
An appeal from an original district court judgment goes to the relevant high court. An appeal from an original judgment or decree of a single bench of the high court (with original jurisdiction) goes to the division bench of the high court as a regular first appeal.
A judgment or decree in a regular first appeal can be challenged as a special leave petition before the Supreme Court. Once a special leave petition has been admitted by the Supreme Court, it is converted to an appeal.
