1. IPR
TRADE MARK REMEDIES
SANJEEV KUMAR CHASWAL
ADVOCATE & IPR ATTORNEY
LL.M IPR, ARB.& ADR, MS CYBER LAW
& SECURITY

2. LEGAL REMEDIES AGAINST
INFRINGEMENT AND
PASSING OFF
REMEDIES
CIVIL CRIMINAL
Section Sections 102 to
135 120 with
various section
of IPC

3. CIVIL AND CRIMINAL ENFORCEMENT
• Suit for permanent injunction restraining infringement
of trademark, passing of and / or copyright.
copyright.
• CRIMINAL ENFORCEMENT -
• Cognizable Offence: Criminal complaint directly with the
police for arrest & seizure;
• Criminal complaint before the district court for seizure.
• Non-cognizable offence: Criminal complaint before the
District Court for search and seizure warrant against
infringing parties; Criminal complaint before the District
Court for search and seizure warrant against unknown
persons.

4. STATUES INVOKED
FOR CRIMINAL ACTION
• Sec. 103/104 of the Trade Marks Act, 1999
• Sec. 63 and 64 of the Copyright Act, 1957
• Sec. 39 of the Geographical Indication of
• Goods Act, 1999
• Sec. 420 of the India Penal Code
• Sec. 91/93 of the Code of Criminal Procedure

5. PROCEDURE FOR FILING A
CRIMINAL COMPLAINT
• Criminal Complaint in the Court of competent jurisdiction;
• Pre summoning Evidence, for satisfying the court on the
basis of the evidence placed on record, that the
• allegations by complainant are prima facie maintainable;
• Issue of General / specific Search and Seizure Warrants,
along with directions to police; Raid / Search & Seizure by
Police.
• Investigation and arrest (if necessary) of accused persons;
• Summons / Warrants against accused persons;
• Accused Appear and seek bail;
• Framing of charges, after notice of allegations;
• Trial - Onus of proof is on the complainant

6. Passing off, Trademark
infringement
Passing off
“No body has any right to represent his goods as the
goods of somebody else”
Lord Halsbury- Passing off action allows trader A to prevent
trader B from passing their goods off as if they were A’s.
Passing off is available where there is a prospect of
confusion of identity through the unauthorized use of similar
marks or get up, and such use damages, or is likely to
damage the goodwill and reputation of a business. Passing
off can apply to virtually any name, mark, logo or get-up
which distinguishes a company, business, product or
service from the other. Passing off attracts doctrine of strict
liability: the intention of the person passing itself off as
another trader is irrelevant.

7. Passing off action under the Trade Marks
Act, 1999
• PASSING-OFF
• In respect of unregistered trademark, action for passing off
can be initiated.
• A registered Trademark has the backing of infringement
and passing off remedies under the Trade Marks Act.
• The Act does not provide for infringement action in respect
of unregistered Trademarks.
• Only Passing off remedy is available in case of
unregistered Trademarks. (Section 27 of TMA Act, 1999).

8. Essentials of Passing off
To Succeed in an action for passing off, a
claimant should establish that:
The claimant has a goodwill
Passing off is made in the course of trade.
The defendant made a Misrepresentation
that is likely to deceive the public
public.
The misrepresentation damages or is likely to
damage the goodwill of the claimant.

9. Methods Which Constitutes Passing-off
Passing-
v False representation
v Adoption of Trademark which is the same or
v A colourable imitation of a Trademark.
v Adoption of essential character of a Trademark
v Copying get up or colour scheme.
v Imitating the Design or shape of goods
v Adopting the word or name of rival trader.
v Against interlocutory order appeal lies
v To High Court and thereafter
v To Supreme Court.
v Again final order appeal lies to High Court
And thereafter to Supreme Court.

10. Precedents on Passing off
In the case of Marks & Spencer Plc and others v. One in
a Million Ltd. and others,
the deputy judge of the English Court held that:"Any
person who deliberately registers a domain name on
account of its similarity to the name, brand name or trade
mark of an unconnected commercial organization must
expect to find himself on the receiving end of an injunction
to restrain the threat of passing off, and the injunction will
be in terms which will make the name commercially
useless to the dealer.“
In the case of Rediff Communication Limited v.
Cyberbooth and Ramesh Nahata of Mumbai (1999), the
Bombay High Court supported an action of passing off
when the Defendants used the term ‘RADIFF’ (similar to
the name ‘REDIFF’ of the Plaintiff) to carry on business on
the Internet.

11. Example of passing off action
Domain name similar to that of known companies are
used by persons in order to promote their products or
services.
A company creates a website to promote his business of
soft drinks and deliberately gives it the domain name
www.cocacola.com , now this domain name is bound to
confuse and mislead the customers as that of the well
known Coca-Cola and encourage them to buy the
product which infact is of another company. This can be
termed as passing off.

12. Decided Case on Passing off
Yahoo! Inc. vs Akash Arora(1999)
FACTS: The defendant installed a website Yahooindia.com
nearly identical to plaintiff’s renowned yahoo.com and
provided services similar to those of the plaintiff.
DECISION: The Delhi High Court granted an injunction
restraining defendant from using yahoo either as a part of
his domain name or as a trade mark .It held that trade
mark law applies with equal force on the internet as it
does in the physical world.

13. Trademark infringement
Section 29 of the Trademark Act states that when a
registered trade mark is used by a person who is not
entitled to use such a trade mark under the law, it
constitutes infringement. A registered trade mark is
infringed ,if:-
1. The mark is identical and is used in respect of similar
goods or services or
2. The mark is similar to the registered trade mark and there
is an identity or similarity of the goods or services covered
by the trade mark
3. And Such use is likely to cause confusion on the part of
the public or is likely to be taken to have association with
the registered trade mark.
For example, if you are not the Nike® company or
authorized by it, it is an infringement to sell sports clothes
called "Nikestuff “

14. FOLLOWING ACTS CONSTITUTE
INFRINGEMENT
Affixes registered trademark to goods, manufacturers
v offers, exposes, sales, stocks, or supplies goods and
services under registered trademark.
v Import and Export, use of registered trademark on
business papers or advertisement.
v DO NOT CAUSE INFRINGEMENT
v not taking unfair advantages of or cause. Detriment to
distinctive character or repute of trademark. Use in relation
to goods or services indicating character, quality or
geographical origin. The object of use is to indicate that the
services have been performed by the proprietor or change
the condition of goods.

15. If registration is confined to certain territories, use of trade
beyond those territories does not constitute infringement,
but amounts to passing-off.
Sale of goods on retail basis after purchasing the same in
bulk, except repacking.
Sale of accessories of goods such as machinery, authorities,
cycles where parts are manufactured by different persons.
Identical mark registered by more than one person.
sale of goods by assignee of a trademark as long as he does
not

16. ACTION FOR INFRINGEMENT &
RELIEFS:-
• a suit can be filed in the district court having jurisdiction.
• A suit can be filed in addition to district judge in high court
of Delhi, Mumbai, Calcutta and Chennai which have
original jurisdiction.
• (1) mandatory injunction restraining defendants from using
trademark-
• (i) damages and costs
• (ii) suits for accounts
• (iii) surrender of infringed goods.
• (iv) surrender of labels, bills, hoardings, letter heads,
transparencies, negatives, positives, pamphlets,
brouchers, etc.,

17. ACTION FOR INFRINGEMENT &
RELIEFS:-
• The Jurisdiction of High Court could be invoked, subject to
the payment of Court fees. The structure of Court fees vary
from state to state.
• (1) mandatory injunction restraining defendants from using
trademark-
• (i) damages and costs
• (ii) suits for accounts
• (iii) surrender of infringed goods.
• (iv) surrender of labels, bills, hoardings, letter heads,
transparencies, negatives, positives, pamphlets,
brouchers, etc.,

18. In which court a Civil Case can be filed
against violation of IPR ?
In India, the jurisdiction for the purposes of filing a civil
suit, will depend upon following facts, and subject to the
following conditions:-
– Where the cause of action has accrued;
– Where the part of the cause of action has
accrued;
– Where the properties / violations are taking place;
– Where the defendants reside or work for gain; In
brief, the jurisdiction for the purposes of filing a case
would depend upon the activities of the defendants /
their place of business.
– Unique provision in IP cases- Civil Suit can be filed
cases-
in place where plaintiff carries on business.
business.

19. REMEDIES THAT CAN BE OBTAINED IN A CIVIL SUIT
• Injunction (an order issued by the court restraining the
defendant from dealing in infringing goods)-
– Temporary / ad interim (pending proceedings in the
suit)
• Anton piller order: Court order appointing a local
commissioner to visit the premises of the defendant &
seize the infringing goods – the order is usually issued
without notice to the defendant (ex parte).
• Mareva Injunction – Court uses power seize the assets of
the defendant to make order enforceable, where there is
probability of assets being disposed off.
• Interlocutory Injunction - An interlocutory application can
also be filed for interim injunction.
• Perpetual Injunction- It is final an order restraining
defendant totally for all times to come/.

20. Interim / Interlocutory Injunction
• Often the real remedy
• Objective:
• To maintain status quo
• Time is of essence
• Factors considered in granting :
– Prima facie case
– Balance of convenience
– Irreparable injury if injunction not granted
Gujarat Bottling Company v. Coca Cola 21
IPLR 201

21. Ex Parte Order
• When the matter is extremely urgent
• Injunction;
• Discovery of documents;
• Preserving of infringing goods, document of other evidence
related to the subject matter of the suit;
• Restraining the defendant from disposing off his assets in a
manner which may adversely affects rights of the IP owner to
claim damages, costs or other pecuniary remedies.
• At a preliminary hearing of the interim application without notice
to the answering defendant.
• Granted before the motion for interim injunction is fully heard but
for a limited period only.
• After grant of ex parte injunction, the Court must proceed with
disposal of the interim injunction application after the defendant
has entered appearance

22. Anton Pillar Orders & John Doe Order
• Sensitive in nature
• Pre conditions for grant:
• Extremely strong prima facie case,
• Damage (potential or actual) very serious,
• Clear evidence that defendants have in their possession,
incriminating document/ material which they may destroy.
• John Doe Order
• Court appointed commissioners to enter the premises of any
suspected party and collect evidence of infringement.
• Suspected party may not be named in the suit.
• Indian Courts have conferred expanded powers to
commissioners- Roving commissioners
• Ardath Tobacco Co. Ltd. vs. Mr. Munna Bhai & Ors.

23. Mareva Injunction
• Freezing order
• Prevents the infringer / offender from removing / disposing
of assets in which the gains from infringement have been
invested.
• Aim- unjust enrichment of the defendant and to ensure
payment of damages to Plaintiff.
• Final injunction
• To ascertain rights of the parties
• Remedies for Breach of injunction
– Police assistance
– Assistance of administrative bodies
– Contempt proceedings

24. Damages / Account of Profits
• These are mutually exclusive alternative remedies
• Account of profits- An equitable relief
– Plaintiff adopts defendant’s acts as his own.
• Damages- for the losses suffered by the Plaintiff on account
of the defendant’s acts.
• Damages- Recent trends
• Time Inc. vs. Lokesh Srivastava
– Punitive damages awarded for the first time – Rs 5
lakhs
– Distinction between compensatory damages and
punitive damages was made out.

25. Time Incorporated vs. Lokesh Srivastava
Delhi High Court:
“ The award of compensatory damages to a plaintiff
is aimed at compensating him for the loss suffered
by him whereas, punitive damages are founded
on the philosophy of corrective justice and as
such, in appropriate cases these must be
awarded to give a signal to the wrong-doers that
law does not take a breach merely as a matter
between rival parties but feels concerned about
those also who are not arty to the lis but suffer on
account of the breach”

26. Wander Ltd. & Anr. vs. Antox India P. Ltd.
Supreme Court on interlocutory injunctions:
“Usually, the prayer for grant of an interlocutory injunction is at a stage
when the existence of a legal right asserted by the plaintiff & its alleged
violation are both contested… The object is to protect the Plaintiff
against injury by violation of his rights for which he could NOT
adequately be compensated in damages recoverable in the action if
the uncertainty were resolved in his favour at the trial.
Supreme Court on Balance of Convenience:
“The need for such protection must be weighed against the
corresponding need for the defendant to be protected against injury
resulting from his having been prevented from exercising his own legal
rights for which he could not be adequately be compensated. The
Court must weigh one need against another and determine where the
balance of convenience lies.”

27. Midas Hygiene Industries P. Ltd. V. Sudhir
Bhatia & Anr.
Supreme Court…
“…in cases of infringement either of trademark or of
copyright normally an injunction must follow. Mere
delay in bringing the action is not sufficient to
defeat grant of injunction in such cases…the grant
of injunction also becomes necessary if if it prima
facie appears that the adoption of the mark itself
was dishonest”.

28. Lakshmikant V. Patel vs. Chetanbhat Shah
Supreme Court:
“ In an action for passing off it is usual, rather
essential to seek an injunction, temporary or ad-
interim”
“ proof of actual damage is not essential… likelihood
of damage is sufficient”
“ an absolute injunction can be issued restraining
the defendant from using or carrying on business
under the Plaintiff’s distinctive trademark”.

29. Plaintiff and Defendant evidence /
Proof
v Certified Copy of Registered Trademark Certificate,
Bills, Invoices, stationery and It assessment orders,
Advertisements, Audited Balance Sheets, Packages,
Boxes Etc., Photographs
• Defendants Documents / Proof
• Photographs, bills and invoices, product, packages,
Pamphlets, advertisements, Affidavit of Persons who
have knowledge about infringement.

30. Civil vs. Criminal
• Less hassle for the plaintiff
• Jurisdictional advantage
• Interlocutory Injunctions
• Damages
• Possibility of settlement
However…
• No deterrence
• No fear factor- no arrest
• Expensive & lengthy

31. REMEDIES - CIVIL
• CIVIL-ADVANTAGES: • CIVIL -DISADVANTAGES:
– Anton Piller Order, similar – Less deterrent effect.
to police.
– Less publicity.
– Matter in control.
– High Cost of litigation.
– Settled/compromised.
– Consumes more time to
– Permanent injunction. reach logical conclusion.
– The order can be used for
future actions.
– Possibility of Damages
etc.

32. REMEDIES-CRIMINAL
• CRIMINAL-ADVANTAGES: • CRIMINAL-
DISADVATAGES:
– Immediate deterrent
– Can’t settle.
effect.
– A state case.
– Lots of publicity. – Matter not in control.
– May lead to Arrest. – As a complainant, to
be present on each
– May lead to conviction. date of hearing.
– Less expensive. – No permanent
injunction.
– No damages etc.

33. Example of a successful civil
enforcement action
• 3 suits filed by Adidas
Saloman AG in the Delhi
High Court against
counterfeiters
• At the initial stage,
infringing goods were seized
by the Local Commissioner
• Cases were decreed recently
& damages of Rs. 15 lakhs
was awarded to Adidas
Saloman

34. Example of a successful criminal
enforcement action
• Criminal raids conducted in
2003 by the Economic
Offences Wing, Delhi Police
upon a complaint of a
complainant.
• Printers printing counterfeit
stickers & labels- Levi’s,
Adidas, Lee, DKNY,
Timberland

35. Damages- recent trends
• Microsoft Corporation vs. Yogesh Papat & anr. 2005 (1)
CTMR 424
– Highest costs and Damages ever awarded for IP
infringement by Indian Courts
– Approximately Rs 20 lakhs
– Criminal Remedies- TM/ CR
• Cognizable offence
• Imprisonment- 6 months to 3 years
• Fine- Rs 50,000 to 2 lakhs
• Enhanced penalty on subsequent convictions.
• Seizure, forfeiture and destruction of infringing goods/
material for placing before the Magistrate.