Infringement of Trademark in India

Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999.
Simply put, when an unauthorized person uses a trademark that is 'identical' or 'deceptively
similar' to a registered trademark, it is known as infringement.
It is pertinent to mention that recourse to appropriate action, for protection of intellectual
property, should be taken only after analysing and understanding the nature of the remedy
and the subject matter of the trade mark and copyright. Every trade mark involves copyright
but every copyright does not necessarily involve trade mark. According to Section 2(m) of
the Trade Marks Act, 1999 "mark" is defined as to include a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of
colours or any combination thereof. In this regard it is relevant to note that any trade mark
which is represented in an artistic manner or having some colour combination, art work, get
up or layout is also a subject matter of copyright. Therefore, in any trade mark action the
provisions of the Copyright Act, 1957 can also be invoked simultaneously.

1. Cease and Desist Notice

An intellectual property cease and desist letter is the first step in dealing with
intellectual property (IP) theft. It's a notice sent to the individual(s) or group using
your IP right without your consent, requesting them to stop and to refrain from using
it in the future. A carefully written cease and desist letter is a very powerful tool in the
enforcement of intellectual property protection. You will need a cease and desist letter
when you want the recipient to stop the infringement before resorting to legal action.
It is an efficient warning that offers the infringer the option to solve the problem out
of court.

This letter is used when

When a party uses an identical or similar trade mark to your registered trade mark for
identical or similar goods/services which is likely to confuse the public about the source of
the goods and/or services, you can claim trade mark infringement.
When a party uses your unregistered trade mark without your consent and benefits from
your company’s goodwill or reputation, you can claim infringement under the common law
tort of passing off. To successfully claim for passing off you must prove that the mark is
yours, that you have a reputation in the mark, and that this reputation has been damaged by
the other party using the mark.

 you are the owner of intellectual property rights which have been infringed
 you have shared confidential information which has been unlawfully disclosed
 to inform the person in breach of your identity, your rights and intention to enforce
them
Contents of this Letter
The cease and desist letter covers
 the rights owned, with a choice of:
o copyright
o trademark

o patent
o design right

o confidential information

 details of the breach

 order to cease infringing action
 order to deliver up or destroy all infringing materials
 undertaking to stop infringing action in future
 offer of licence (alternative remedy for copyright)
 threat of further legal action
Deadline
Providing the recipient with a deadline for ceasing the infringing action gives more weight to
your letter and compels the recipient to react quickly. The deadline should remain reasonable,
eg. Fifteen working days for a copyright infringement.

Remedies that can be claimed

You can request the party stop making the infringing item or any other products which
breach your IP right. You can also request the party deliver for destruction any or all
infringing items they possess or control. Similarly, you can require they use reasonable
means to recover all of the infringing items from purchasers and deliver these to you. Finally
you can request they provide you with a written undertaking that they’ll refrain from making
the infringing item or any other products which breach your IP rights without your written
consent.
When you’re claiming trade mark infringement for a registered mark you can request the
infringer to withdraw any registration applications for their infringing trade mark. You can
also request they withdraw any domain name registration applications. Finally, you can
request they cancel or assign to you any domain names currently registered to them which
incorporate your trade mark.
Some unregistered trade-marks will be protected under the common law tort of passing off.
Remedies for passing off won’t protect the unregistered trade mark itself but the goodwill and
reputation of the business.
Briefly, the effects of sending a cease and desist legal notice to an infringer, whether prior to
or as an alternative measure to, an infringement lawsuit are as follows:
 Establishes the IP holder's rights in his IP;
 Serves notice to the infringer regarding the prevalent law protecting the IP's holder's
rights;
 Serves notice to the infringer regarding the IP holder's requisitions/demands;
 Serves notice to the infringer that non-compliance with the IP holder's
requisitions/demands will constrain the IP holder to pursue other (stricter) courses of
legal action, which may involve a lawsuit;
 Establishes the IP holder's bona fide attempt to reach an amicable resolution to the
matter by making the infringer aware of the law as well as the IP holder's rights in his
IP and giving the infringer an opportunity to cease all infringing (illegal) activities
without unnecessarily escalating the matter;
 Serves to protect the IP holder's rights in future against the same infringer;
 Sets a precedent of the IP holder enforcing his rights.

In conclusion, based on an analysis of the nature and extent of any case of IP infringement,
issuing a cease and desist legal notice can be a simple, cost-effective and expeditious option
to combat infringement, and in any case, certainly serves as a useful pre-cursor to potential IP
litigation.

Protection under Copyright Act, 1957

Logos and designs, which are used as brand identities for representing businesses, are
protected as trademarks. If they are original artworks that have an element of creativity, they
are also entitled to be protected as copyrights as well.
 In case there is any infringement of the said mark, the proprietor can take action
Under Section 63 of Copyright Act, 1957 which contains the provision of punishment
of Six months imprisonment which can be extended up to 3 years and also fine can be
imposed of fifty thousand rupees which can be extended to 3 lacs.
 The main advantage of taking action under Copyright law is that Under Section 64
(1), a Police officer not below the rank of Sub-inspector has the power to seize
without warrant, infringing copies of a work. The infringement of Copyright was
decided as a Cognizable offense in the case of State Govt. of NCT of Delhi vs.
Naresh Kumar Garg 52011(46)PTC114(Del). The court, in this case, cited a
Judgment of the Gauhati High Court in Jitendra Prasad Singh v. State of Assam
2003 (26) PTC 486 (Gau) where the offense under Section 63 of the Act was held to
be cognizable and non-bailable. The court was of the view that it would be fruitful to
 refer to the provision of Section 64 of the Act, which empowers a police officer not
below the rank of Sub-Inspector to seize the infringing copies of any work.
 In case of cognizable offenses, the investigating officer has the power to make an
arrest and start the investigation without a court order in accordance with (Section 156
(1) of Code of Criminal Procedure, 1973. The proprietor, whose mark is said to be
infringed, should file a criminal complaint citing charges mentioned under Section
420 of IPC along with Section 63 of the copyright act. The provision of Section 420
of IPC preciously talks about cheating by the way of false representation of property
to some other person.
By filing for copyright against Logos and Designs, similar charges under the Copyright Act
could be framed against the offenders instead of bringing an action for a trademark
infringement. Still, if there is involvement of only trademark infringement, then the
proprietor should press for carrying out a raid at the right time for such counterfeit products
before taking an opinion from the Registry which is required only at the evidence stage or
before filing the charge sheet.
One should also register Fir under Section 420 and simultaneously the evidence is collected
and then the additional charges under the Trademark and Copyright Act could be added
before the trial. In such a way, Proprietor can initiate a possible swift action against the
offenders and also include the IP infringement charges against them.

Civil Remedies in case of Violation of Trademark

There is a lacuna in filing a criminal case against the seller of the counterfeit product, Till the
time of conviction for the offense the offender is free to deal and trade in the counterfeit
products. He may abscond. Police Investigations and Charge sheet filed by Police hardly ever
finds/uncovers the whole supply chain of infringing Goods. The possible step proprietor can
take is to file a civil suit simultaneously along with the criminal complaint in a particular case
where infringement of trademark has been done. The advantage of doing this is that the by
initiating a criminal complaint, seizure of counterfeit product can be done while civil suit
helps to restrict the sale of the same while the matter is pending before the court.
Order of Injunction from Court
For the purpose of stopping the manufacturer of counterfeit product from its Sale, A civil
remedy can be obtained by the proprietor where a court can issue Order of Injunction in
which a person is required to perform or restrained from performing, particular Act. This
helps the proprietor to restrain the manufacturer from selling counterfeit products till the
matter is disposed of by the competent court. The general rules governing the grant of an
injunction are contained in Sections 36 to 42 of the Indian Specific Relief Act, 1963 and
Order XXXIX Rules 1 & 2 and Section 151 of the Code of Civil Procedure, 1908.
Damage cost
Any proprietor whose trademark has been infringed by the sale of Counterfeit products, the
said person can claim compensation from the opposite against the profit made out from the
sale of the counterfeit product through unauthorized use of trademark belonging to the
proprietor.
Protection against IPR infringement under Customs Act, 1962
The provisions of this Act talks about the prohibition of Import and Export of such goods
which are in the context of Infringement of patents, trademarks, copyrights, designs, and
geographical indications in accordance with Section 11. Section 113 gives authority to the
competent officer for the purpose of confiscation of infringed goods to be used for export and
also in accordance with Section 112/114, penal action can be taken against any such importer
or exporter of infringed goods.
Preservation of Brand from Counterfeit in India
Most of the people involved in making and selling of counterfeit products in India are not
well aware of the fact that this activity creates liability for criminal and civil action. The
common perception amongst such traders is that it is a mere art form of advertising and
selling goods.
Jurisdiction in Civil Suit
In all these cases, the territorial jurisdiction is determined in accordance with Section 20 of
the Code of Civil Procedure, 1908. Under the general law, territorial jurisdiction is
determined on the basis of the following:
• The place where the defendant resides;
• The place where the defendant carries out business; or works for gain; or
• The place where atleast a portion of the cause of action arises.

The Trade Mark Act specifically provides that an infringement action, whatever may be the
value claimed, must be filed only in a District Court. Therefore, the pecuniary jurisdiction of
the Court, is not taken into consideration in a trademark matter. Another, special privilege
given to the proprietor of a registered trademark is that in the case of infringement of his/ her
trademark, Section 134 (2) of the Act, gives the registered proprietor, the right to file an
infringement case, within the territorial limits of the Court, in which the trademark proprietor
resides or works for gain. In the case of a company, this generally means the location of its
registered office or its principal place of business. Of course, the normal territorial
jurisdiction laid down under Section 20 of CPC, is also available.
In a recent case at the Delhi High Court , Hindustan Times (“HT”), a leading national news
broadcasting agency, found an entity in New York infringing upon its trademark rights by
using the domain name www.hindustan.com which HT had already registered as a trademark
in India. The Court exercised extra-territorial jurisdiction over the defendant based in New
York and granted injunction against its use of the domain name www.hindustan.com. The
defendant had filed a declaration suit in New York. However, the Delhi High Court stated
that since the trademarks were registered in India, the New York District Court did not have
jurisdiction over the matter, and also granted an anti-suit injunction against the defendant
from pursuing the suit in New York.
In another case1 , HT sued a domain registrant at the Delhi High Court for violating its
copyright by using its content on the infringing website without giving due credit to HT. It
was difficult to identify or track the registrant of this infringing website as it was located
outside India. However, the Delhi High Court passed an order of injunction directing the
servers hosting the website to block its access. These cases clearly show us that intellectual
property protection cannot be restricted to a particular area or geographical limit. Moreover,
violation can take place at multiple locations at the same time. Thus, the burden is upon the
rightful proprietors of trademarks to sue them at different locations all over the world.
The Supreme Court of India in  Indian Performing Rights Society Limited v Sanjay
Dalia,2and the Delhi High Court in Burger King Corporation v Techchand Shewakramani 3 ,
explained that the provisions of Section 134 of the Trade Marks Act are in addition to Section
20 of the Civil Procedure Code.

In a suit for infringement of copyright the plaintiff has to establish the following:
(1) he is the owner of the copyright within the meaning of Section 54, i.e. he is the actual
owner of the copyright, or he is one who is entitled to the remedies provided for infringement
in Section 55.

(2) copyright subsists in the work infringed at the time the defendant committed the
infringement

(3) particulars of the infringement complained of,

(4) the nature of the damage if any suffered by him or likely to suffer,

(5) what the defendant has done or is proposing to do (in a quia timet action) constitutes
infringement of copyright.

Whats is the Tests for claim to copyright-

(1) What are the work or works in which the plaintiffs claim copyright?
(2) Is each such work original?
(3) Was there copying from that work?
(4) If there was copying, has a substantial part of that work been copied?

What the plaint should contain:

1
HT Media Limited & Anr. v. WWW.THEWORLDNEWS.NET & ORS. CS (COMM) 321/2019
2
CIVIL APPEAL NOS.10643-10644 OF 2010
3
CS (COMM) 919/2016 & CC(COMM) 122/2017
The plaint should contain such statements and documents which will go to establish the
plaintiffs' case. Thus
it should contain the following particulars:
(1) the work which is alleged to be infringed is a work within the definition of Section 2(y);
that is it is a literary, dramatic, musical or artistic work, or a cinematograph film or a sound
recording,

(2) the plaintiff is the copyright owner of the work or an exclusive licensee
or any other person entitled to the remedies available under Section 55,

(3) copyright subsisted in the work at the time of the alleged infringement, or subsists at the
time of filing the suit if it is a quia timet action,

(4) particulars of the defendants and particulars of the infringements complained of. If the
alleged infringements consists of reproduction of the work a copy of the original work and an
infringing copy should be annexed to the plaint,

(5) where parts of the work have been copied references to those parts and references to the
corresponding parts of the infringing copy. Extracts of the respective parts should be annexed
to the plaint,

(6)) the nature of the damage, if any, suffered by him or likely to suffer,

(7) particulars of conversion, if any.

(8) the source from which he got an infringing copy,

(9) facts necessary to show that the court has jurisdiction to try the suit.

The plaint should also contain prayers for any one or more of the following:
(1) a declaration as to plaintiffs' right,
(2) permanent injunction and the nature of the injunction sought,
(3) damages including conversion damages and accounts of profits,
(4) delivery of infringing copies and plates used or intended to be used
for the production of infringing copies,
(5) costs of the suit.

The plaint should contain prayers for any one or more of the following:
(1) a declaration as to plaintiffs' right,
(2) permanent injunction and the nature of the injunction sought,
(3) damages including conversion damages and accounts of profits,
(4) costs of the suit.
Criminal Prosecution
the Trade Marks Act, 1999 also provides for criminal remedies against infringement and
passing off of the trade mark under Chapter XII which deals with offences, penalties and
procedures. Section 103 and 104 provide for imprisonment for a term not less than six
months which may extend up to three years and fine not less than fifty thousand rupees which
may extend up to two lakh rupees. The provision for enhanced punishment is laid down
under Section 105 of the Trade Marks Act, 1999. For the effective implementation of the
provisions relating to infringement and/or passing off of the trade mark and/or copyright,
both, the Trade Marks Act, 1999 and the Copyright Act, 1957 provide for search and seizure
powers of the police under sections 115 and 64 respectively. However, the catch lies in the
fact that for invoking the powers of police, with respect to search and seizure, under the
Trade Marks Act, 1999 the prerequisite of obtaining the opinion of the Registrar of Trade
Marks under Sec.115 (4) Proviso of the Trade Marks Act, 1999, with respect to the similarity
between the infringing mark and the mark of the complainant has to be complied with before
the police carries out the search and seizure.
Procedure under criminal law
Under Section 156 of the Code of Criminal Procedure, 1973 the police has the power to
investigate cognizable cases. Sub section 3 Section 156 provides that in case of refusal by the
police to lodge an FIR or initiate criminal action, the aggrieved can file a complaint before
the Magistrate, procedure w.r.t. which are laid down in section 190 of the Code of Criminal
Procedure, 1973. The offences under the Trade Marks Act, 1999 and the Copyright Act,
1957, by virtue of the First Schedule table II of the Code of Criminal Procedure, 1973, are
classified as cognizable offences though the same is not provided for in the said Acts. The
First Schedule table II-Classification of offences against-other laws- provides that "Any
offence which is punishable with imprisonment for 3 years ... is a cognizable, non-bailable
offence and triable by the Magistrate of First Class". Thus, an offence under the Trade Marks
Act, 1999 and the Copyright Act, 1957 can be investigated and inquired by the police by
mere registration of an FIR without the adjudication by the Magistrate upon the issue.
However, the police is mostly reluctant in registering an FIR in respect of intellectual
property matters though the same is a right of the complainant. In respect of a criminal action
with regard to trade marks, as mentioned before, an opinion form the registrar of Trade
Marks is compulsory under Section 115(4) of the Trade Marks Act, 1999. The said section
brings with it a number of practical and legal implications which are that, firstly the Registrar
of Trade Marks is not obliged to give any such opinion under the Act. Secondly, the database
made available to the Registrar of Trade Marks is perfect, as it fails to recognize the device
marks or symbols or labels, which constrains the Registrar from giving a full proof opinion
owing to the non-availability of the entire database comprising word marks as well as device
marks or symbols or labels. Owing to the same, complaint before the Magistrate for issuance
of summons and trial of the infringers, is a convenient option , as the prerequisite of obtaining
an opinion from the Registrar of Trade Marks is not called for in case of filing of a complaint
before the Magistrate. Yet another benefit of taking recourse to criminal action is that the
same can be initiated against unknown persons as well and revealing the identity of the
infringers is not mandatory therein. Plenty of times it happens that the identity of the
manufactures and the distributors of the infringing material is not known to the complainant
and the same operates as an obstacle in initiation of criminal action. The said issue is
addressed under Section 93 and 94 of the Code of Criminal Procedure, 1973 under which one
can request for initiation of a search and seizure proceedings against known and unknown
persons which is the underlying difference between a civil and criminal action. The said
proposition has been upheld in numerous judgments, that is, 1983 PTC 230, 1986 PTC
352, 1982 PTC 411 and 1990 PTC 175 etc.
Border Measures
The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, were issued to
strengthen border measures for IP protection, and were drafted in consonance with TRIPS
and World Customs Organisation Model. These Rules offer Rights Holder an option to
register rights with Customs Authorities, known as Customs Recordal. Once rights are
recorded, Customs Authorities can seize and detain goods suspected to be goods infringing
IP.
Rule 2 of the Rules defines certain critical terms as follows:
 “goods infringing intellectual property rights” means any goods which are made,
reproduced, put into circulation or otherwise used in breach of IP laws in India or
abroad and without the consent of the right holder or an authorised person;
 “right holder” means a natural person or a legal entity, who is the owner of protected
IPR, its successors in title, or its duly authorized exclusive licensee as well as an
individual, a corporation or an association authorized by any of the aforesaid persons
to protect its rights.

Documents/Information Required:
An e-portal facilitates easy recordal of IP rights with the Customs Authorities (See ). The
Right Holders are required to submit the following information/documents:
 Name and contact details of the Right Holder;
 The serial number and details of the demand draft in favor of the Commissioner of
Customs;
 Details regarding the scope of the IP right which the Right Holder is intending to
register;
 Details regarding the differentiating features of genuine and infringing goods;
 The IEC code of the Right Holder and other authorized importers;
 In case of geographical indications – description of the GI, the area of production;
 Grounds for the notice of suspension of the release of the goods allegedly infringing
intellectual property rights;
 A detailed description of the goods with Customs Tariff Heading in respect of which
an intellectual property right applies, together with a sample, model or photograph of
a genuine product; and
  Product code of the goods been imported/exported

Procedure for registration:

An IP Right Holder must notify Customs Authorities in writing, requesting for suspension of
clearance of goods alleged to be infringing IPR, accompanied by fees of INR 2000. If the
paperwork is in order, Customs Authorities will register the notice of the Right Holder and
issue a Unique Permanent Registration Number (UPRN). This process takes up to 30 days.
The minimum validity period is one year unless the Right Holder requests for a shorter period
of customs assistance.
The grant of registration under Rule 4 is subject to the following conditions:
a. the right holder or his authorised representative must execute a bond with the
Commissioner of Customs for an amount deemed appropriate by the Commissioner,
undertaking to protect the importer, consignee and the owner of the goods and the
competent authorities against all liabilities, and to bear the costs towards destruction,
demurrage and detention charges incurred till the time of destruction or disposal, as
the case may be;
b. the right holder shall execute an indemnity bond with the Commissioner of Customs
indemnifying the Customs authorities against all liabilities and expenses on account
of suspension of the release of allegedly infringing goods.
After the grant of the registration of the notice, the import of allegedly infringing goods into
India is deemed as prohibited within the meaning of Section 11 of the Customs Act, 1962.
Detaining of goods by the Custom Authorities and Remedies to the Right Holders:
Based on the notice given by the Right Holder, if Custom Authorities suspect that the
imported goods infringe IPR, they shall suspend the clearance of the goods. Thereafter, the
Custom Authorities must inform the importer and the Right Holder of the suspension of
clearance of the goods, giving reasons for the suspension. If the Right Holder does not join
the proceedings within 10 working days (extendable by another 10 days) from the date of
suspension of clearance, the suspended goods can be released.
If the clearance of goods was suspended on the initiative of the Customs Department itself,
then such suspected goods may be released within five working days from the date of
suspension of clearance, if the Right Holder fails to attend proceedings. In case of perishable
goods, the period of suspension of release is three working days, extendable by another four
days.
Disposal of infringing goods:
Once Custom Authorities determine that the goods detained or seized have infringed IPR, and
have been confiscated under section 111 (d) of the Customs Act, 1962 and no legal
proceedings are pending in relation to such determination, Customs Authorities must destroy
the goods under official supervision or dispose them outside the normal channels of
commerce after obtaining “no objection” or concurrence of the Right Holder. The costs
toward destruction, demurrage and detention charges incurred till the time of destruction or
disposal are borne by the Right Holder.
Goods of a non-commercial nature contained in personal baggage or sent in small
consignments intended for personal use of the importer are not subject to the above Rules.