• brillopedia

REMEDIES IN TRADEMARK LAW – ORDERS AND INJUNCTIONS

Author: ASHISH GUPTA, LL.M(IPR) from GUJARAT NATIONAL LAW UNIVERSITY, GANDHINAGAR.


Introduction

Litigation in India is a form of dispute resolution mechanism that is popular. For a litigation proceeding to end, the institutions approached i.e., Court of law shall either dispose off the matter or pronounce a judgement on it, if the dispute is not withdrawn by the parties themselves. Similarly, in Trademark litigation proceedings, when the Court of law pronounces a judgement, it is given via different and various forms.


Remedies

The following are some of the actions that can be done to protect trade marks in India, including actions against infringement and passing off:

  1. Cease and Desist notice, or

  2. Civil Action, or

  3. Criminal Proceedings, or

  4. Border Measure.

This study shall analyze the means to sought a Trademark dispute. The courts in India, have adopted a certain practice which includes different set of actions. Emphasis on the different orders and injunctions is provided as part of Civil Action, where major Trademark proceedings head to.


Civil Action

Civil remedies can be pursued by bringing a complaint in a competent court for either infringement or passing off or both of these. In addition, the following civil reliefs are made available to a victim:


Interlocutory/Temporary/Ad-interim Injunction

This injunction prevents a party to a lawsuit from taking any action until the case is resolved. It is a discretionary remedy that is only granted if the plaintiff can show a prima facie case that the comparative inconvenience to the parties is in their favor, and that if a temporary redressal or in this case an injunction is not granted, they will suffer irrevocable harm.


Mareva Injunction

Their assets are frozen as a result of the Mareva injunction. Neither is granted lightly, and it is critical to have all of the necessary supporting documents in order before approaching the court.


It's a legal term for injunctions that prevent the Defendant from transferring any asset or property from the jurisdiction or dealing with or disposing of them in such a way that makes the Plaintiff's decree granted a simple brutum fulmen (valueless).


In India, a Mareva injunction can be obtained under the CPC's Order 38 Rule 5 and 6 or Order 39 Rule 1. The criteria that a Plaintiff must prove in order to obtain a Mareva order are similar to those required for an interim injunction - a prima facie case, balance of convenience, and irrevocable harm.


Elements

  1. There must be a valid cause of action, and the Plaintiff must make a good arguable case when the order is to be granted.

  2. Defendant shall have assets located within the Court's territorial jurisdiction.

  3. Balance of convenience should slightly favour granting the injunction to the Plaintiff.

  4. The Plaintiff should be able to show that the Defendant is dishonest in addition to the substantial risk of wealth dissipation existing.

  5. No time has passed since the injunction was requested.


Anton Pillar Orders

The Anton Piller order, which is a type of discovery preservation given on an ex parte application, is a very powerful weapon in the plaintiff's arsenal. It can include an injunction to permission for plaintiff's authorized official to enter the premises or the establishment of the defendant for the purpose of inspecting documents and collect originals, permission to remove the alleged wrongful goods and even destruction of the said wrongful goods, if need be, to destroy defendant's establishment and image earned and gained through illegal means, and an injunction prohibiting defendants from revealing the content of the injunction to third parties


It is similar to a search warrant, but this order permits the search of the asset or property without the consent of the defendant.


John Doe Orders

The plaintiffs, with the help of court-appointed local commissioners, have virtually unrestricted powers to raid any property where infringement may take place under John Doe orders, which translates to virtually absolute powers available to the plaintiffs, with the help of local commissioners or officers who are permitted to raid any property where activities like any sort of infringement takes place.


Permanent/Perpetual Injunction

This injunction is a court order requiring a party, person (living) or entity to abstain from doing specific things indefinitely or execute particular measures indefinitely.


Damages or Accounts of Profits

Damages or accounting of profits are the Plaintiff's two mutually exclusive remedies. The rightful owner is awarded damages to compensate for the losses he or she has suffered as a result of the infringer's actions. This remedy is proving to be an equitable remedy that demands the infringer to simply return the real amounts of earnings he made as a result of the infringing acts to the rightful owner of the IP.


Delivery-up and Destruction

The infringing subject is delivered to the rightful owner under this remedy or it is destroyed.

Cease And Desist Notice

  • If a person or a company infringes on a trademark, copyrighted work, patent, or industrial design, the owner can issue a cease-and-desist notice to the infringing party, informing them of the intellectual property and related rights.

  • This warning is delivered before a lawsuit against the infringing party is filed. In a C&D, the trademark owner requests that the infringer voluntarily stop from or cease infringing on the trademark owner's rights within the specified time period. If the infringer continues to infringe on the IP, the trademark owner may pursue legal action to enforce their rights.

  • During legal procedures against the infringing party, a well-drafted notification serves as prima facie evidence.

  • It aids the trademark owner in determining the infringing party's malicious intent in incorrectly applying the known trademark or any other IP to their goods and services.

  • The advantages are as follows:

a. It establishes the owner's rights in their IP;

b. It establishes the owner's attempt to reach an amicable resolution in the matter by informing the infringing party of the offensive activity; and

c. It allows the influencing party to end their influencing operations in connection to the IP within the time frame specified.

d. Rather than initiating an infringement litigation, it is a much more cost-effective and efficient way to deal with IP infringement.


Criminal Proceedings

The Trade Marks Act of 1999 is the sole statute in India that governs the law of trademarks. Infringing any registered trademark, producing falsified trademarks, applying false trade descriptions, applying false indications of origin country, and so on are all covered by the aforementioned statute. Infringement of trademark in the food and medicine industries is stated as a punishable offence. Punishments for criminal proceedings include a maximum penalty of three years in prison with or without a fine which shall vary from offence to offence, but the term mentioned is the maximum time period.


Border Measures

Custom Officers are empowered to enforce the Intellectual Property Rights over imported goods under the IPR (Imported Goods) Enforcement Rules in the year 2007. The rules outline a step-by-step process for a right holder to register their Intellectual Property Right. The Indian Customs Act, 1962 also gives the Central Government the authority to prohibit the importation or exportation of goods that have been labelled with a fake trademark or trade description.