Trademark Disputes

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

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:

• an interlocutory, temporary or ad interim injunction;
• a Mareva injunction;
• an Anton Piller order;
• a John Doe order;
• a permanent or perpetual injunction;
• damages or accounts of profits; and
• delivery up and destruction

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:

• falsifying and falsely applying a trademark;
• making or possessing instruments for falsifying trademarks;
• applying a false trade description; and
• applying a false indication of country of origin.

Administrative remedies The following administrative remedies are available:

• opposition against a similar mark;
• rectification of a registered mark; and
• recordal with Customs to prevent the import or export of goods bearing the infringed trademark.

Who can file a trademark infringement action?

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.

What is the statute of limitations for filing infringement actions?

The Limitation Act 1963 sets out the statute of limitations for filing infringement actions.

What is the usual timeframe for 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.

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

• The property in dispute is in danger of being wasted, damaged or alienated by any party to the suit, or wrongfully sold in execution of a decree.
• The defendants threatens or intends to remove or dispose of the property with a view to defrauding creditors.
• The defendant threatens to cause injury to the plaintiff in relation to any property in dispute in the suit.
• The defendant is about to commit a breach of contract or other kind of injury.
• The court is of the opinion that the interests of justice require a temporary injunction.

As in any lawsuit, the defendant may raise any available defenses to these types of remedies.

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The following civil remedies are available to the owners of infringed marks:

• a permanent injunction;
• damages or rendition of accounts;
• destruction of the infringed goods;
• an interim order; or
• an Anton Piller order.

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.

What customs enforcement measures are available to halt the import or export of infringing goods?

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.

What defences are available to infringers?

The following defences are available to infringers:

• delay and laches;
• acquiescence;
• honest and good-faith adoption and use;
• differences in goods and services;
• the nature of the product;
• pricing

What is the appeal procedure for infringement decisions?

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.