Home       Top Rated       Submit Article     Advanced Search     FAQ       Contact Us       Lawyers in India       Law Forum     RSS Feeds     

Register your Copyright Online

We offer copyright registration right from your desktop click here for details.

Latest Articles | Articles 2014 | Articles 2013 | Articles 2012 | Articles 2011 | Articles 2010 | Articles 2009 | Articles 2008 | Articles 2007 | Articles 2006 | Articles 2000-05

Search On:Laws in IndiaLawyers Search

Mutual Consent Divorce in Delhi
We provide fast, cost effective and Hassle free solution.
Contact us at Ph no: 9650499965 (Divorce Law Firm Delhi)
File Caveat in Supreme Court
Contact Ph no: +9650499965

Main Categories
 Accident Law
 Animal Laws
 Arbitration
 Aviation Law
 Bangladesh Law
 Banking and Finance laws
 Case Laws
 Civil Laws
 Company Law
 Constitutional Law
 Consumer laws
 Contracts laws
 Criminal law
 Drug laws
 Dubai laws
 Educational laws
 Employment / Labour laws
 Environmental Law
 family law
 Gay laws and Third Gender
 Human Rights laws
 Immigration laws
 Insurance / Accident Claim
 Intellectual Property
 International Law
 Juvenile Laws
 Law - lawyers & legal Profession
 Legal Aid and Lok Adalat
 Legal outsourcing
 Media laws
 Medico legal
 Miscellaneous
 Real estate laws
 Right To Information
 Tax Laws
 Torts Law
 Woman Issues
 Workplace Equality & Non-Discrimination
 Yet Another Category

More Options
 Most read articles
 Most rated articles

Subscription
Subscribe now and receive free articles and updates instantly.

Name
Email




Published : November 25, 2014 | Author : Radhika Shukla
Category : Intellectual Property | Total Views : 29288 | Rating :

  
Radhika Shukla
Bangalore Institute of Legal Studies
 

Trademark Infringement and Remedies

A trademark is a symbol in the form of a word. It is a device or a label which is applied to articles of commerce with a view to stipulate the customers that the particular article is a good manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt by other persons. A trademark identifies the product of its origin and guarantees of its unchanged quality. A trademark advertises the product and distinguishes it from others. A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. A trademark is different from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory.

Almost all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services. (The WIPO recently revised the Nice Classification, adding three service classes (43, 44, and 45) and restructuring Class 42, retaining certain services. This provision has not yet been implemented in India).For example, printed matter, newspaper and periodicals are classified in Class 16 while services in the field of publication comes under Class 41.The registration of a trademark confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. While registration of a trademark is not compulsory it offers better legal protection for action for infringement. Any person can apply for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one. An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or has his principle place of business. The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued. If it is found be acceptable then it is advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or if the opposition is decided in favor of the applicant then the mark is registered and a certificate of registration is issued. If the applicant's response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal. A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well. The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.

Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (R), may only be used when the mark is registered.

India’s obligations under the TRIPS Agreement for protection of trademarks, inter alia, include protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of compulsory licensing of trademarks, etc. India, being a common law country, follows not only the codified law, but also common law principles, and as such provides for infringement as well as passing off actions against violation of trademarks. Section 135 of the Trade Marks Act recognizes both infringement as well as passing off actions.

Trademark Infringement And Remedies

Trademark infringement is a violation of the exclusive rights attaching to a registered trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when the infringer (i.e. the person doing the infringing act), uses a trademark which is identical or confusingly similar to a registered trademark owned by another person, in relation to products or services which are identical or similar to the products or services which the registration covers. The owner of such registered trademark may commence legal proceedings against the infringer.

A trademark which is not registered cannot be infringed as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner can commence proceedings under the common law for passing off or misrepresentation, or under legislation which prohibits unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable. To establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required.

Trademark infringement is an infringement of exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensee. Trademark infringement typically occurs when a person uses a trademark which may be either a symbol or a design, with resembles to the products owned by the other party. The trademark owner may begin an officially permitted proceeding against a party, which infringes its registration. There are two types of remedies are available to the owner of a trademark for unauthorized use of its imitation by a third party. These remedies are an action for passing off in the case of an unregistered trademark and an action for infringement in case of a registered trademark. An infringement action and an action for passing off are quite different from each other, an infringement action is a statutory remedy and an action for passing off is a common law remedy

In case of infringement / passing off trademark, a criminal complaint can also be filed. It may be noted that under the Provisions of the Trade Marks Act, 1999, the offences under the Act are Cognizable, meaning there by that police can register an FIR (First Information Report) and prosecute the offenders directly.

Civil remedies in Trademark:

# Injunction/ stay against the use of the trademark
# Damages can be claimed
# Accounts and handing over of profits
# Appointment of local commissioner by the court for custody/ sealing of infringing material / accounts
# Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad interim ex-parte injunction

The Courts can grant injunction and direct the custom authorities to withhold the infringing material / its shipment or prevent its disposal in any other manner, to protect the interest of the owners of intellectual property rights. This legal proposition can be enforced with / without involving the concerned authorities as a party in the suit.

The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings.

The order of interim injunction may be passed ex parte or after notice. The Interim relief's in the suit may also include order for:

(a) Appointment of a local commissioner, which is akin to an “Anton Pillar Order”, for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc.

(b) Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.




1 2 3 4 5
Rate this article!     Poor
Excellent    

Most viewed articles in Intellectual Property category
• Advertising
• Bajaj Auto Limited
• Trademark Infringement and Remedies
• Copyright Societies
• Passing off under trademark
• Plagiarism
• Infringement of trademark and what constitutes honest practice in relation to trade and bussiness
• Trade Mark Law in India & Its Violation
• Originality Under Copyright Law-Is There Any Definite Standard?
• Patenting of Micro-Organisms in India: An Overview
• Competition Law and Intellectual Property Rights: Confronting Paradigms
• Product Patent & Exclusive Marketing Rights
• Section 25 of The Trade Marks Act, 1999
• Indian Copyright Software
• Author's moral Right
• Competition Law vis-a-vis IPR rights
Most recent articles in Intellectual Property category
• John Locke’s Labour Theory: A Justification of IPRs
• Infringement of Patents
• Novelty under the Designs Act,2000
• Major changes brought about by the Trademark Rules,2017
• Semiconductor Integrated Circuit-Prevent Chip Pirates
• Semi conductor integrated circuit lay out design protection
• Patent for technological companies
• International Commercial Arbitration
• Trademark infringement and passing off Indian pharmaceutical industry
• Protecting Tradition And Culture In India Development of A Sui Generis System
• De Jure Mobile Applications under the IP Law
• Sports and IPR
• Protecting Tradition and Culture in India: Development of A Sui Generis System
• The Effectiveness of the Remedies for Copyright Infringement
• National IPR Policy 2016
• Trademark Law in Music and Film Industry

Article Comments

there are no comments...


Welcome!
Please login or register a new free account.

Random Pick
Family article on husband and wife rights under Shariah Law. There are specific rights designated to Husband and Wife under Shariah Law. Overall, the rights cover the following categories: a) Exchange of rights between husband and wife; b) Husband’s rights on wife; and c) Wife right’s on husband.

Statistics
» Total Articles
1626
» Total Authors
4879
» Total Views
22789863
» Total categories
42

Law Forum


Legal Articles

Lawyers in India- Click on a link below for legal Services

lawyers in Chennai
lawyers in Bangalore
lawyers in Hyderabad
lawyers in Cochin
lawyers in Pondicherry
lawyers in Guwahati
lawyers in Nashik

lawyers in Jaipur
lawyers in New Delhi
lawyers in Dimapur
lawyers in Agra
Noida lawyers
lawyers in Siliguri

For Mutual consent Divorce in Delhi

Ph no: 9650499965
For online Copyright Registration

Ph no: 9891244487
Law Articles

lawyers in Delhi
lawyers in Chandigarh
lawyers in Allahabad
lawyers in Lucknow
lawyers in Jodhpur
Faridabad lawyers

lawyers in Mumbai
lawyers in Pune
lawyers in Nagpur
lawyers in Ahmedabad
lawyers in Surat
Ghaziabad lawyers

lawyers in Kolkata
lawyers in Janjgir
lawyers in Rajkot
lawyers in Indore
lawyers in Ludhiana
Gurgaon lawyers

TOP

India's Most Trusted Online law library
Legal Services India is Copyrighted under the Registrar of Copyright Act ( Govt of India) © 2000-2017
 ISBN No: 978-81-928510-1-3