TRADEMARK INFRINGEMENT

& IMITATION OF LABELS-

ENFORCING YOUR IP RIGHTS
-Dr. P. Sree Sudha
PROTECTION vs. ENFORCEMENT
Protection refers to obtaining of legal rights
through such as through creation, registrations
and use of trademarks & copyright

Enforcement refers to checking third party
infringers by exercising such legal rights &
taking appropriate action against them

WHY ENFORCE YOUR IP RIGHTS?
Helps in building & maintaining your BRAND
VALUE

Maintains the aura of EXCLUSIVITY in the
minds of consumers

Deters infringers and counterfeiters

Essential if your trademark is to be the
source identifier for your business

KINDS OF TRADEMARK VIOLATIONS
Use of identical mark &
label for identical goods,
eg., Timberland for
shirts


Use of identical marks
for dissimilar goods, eg.,
Louis Vuitton for
t-shirts


KINDS OF TRADEMARK VIOLATIONS
Use of mark as a trade
name, eg., Bombay
Connexion as name of
clothes boutique


Use of deceptively
similar mark & label,
eg., NB instead of LV
KINDS OF RIGHTS THAT CAN VEST IN
A LABEL/PACKAGING
Trademark rights
(acquired by use and
registration) over:

Word mark ADIDAS
Composite mark
(word + label)

Copyright over the label
as an artistic work
STAGES OF TAKING
ENFORCEMENT ACTIONS
Identify the nature of counterfeiting in the market:
Manufacturers/Printers/Wholesalers/Retailers
Blatant/Sporadic/Cautious
Kinds of rights that are being infringed- trademark and/or
copyright

Zero in on specific targets

Conduct intensive investigations on these targets to
determine volumes of infringing goods and collect
evidence for taking further action- sample infringing
product, visiting cards, other printed matter

STAGES OF TAKING
ENFORCEMENT ACTIONS
Decide on strategy to adopt for each target
based on:
Kind of entity- wholesaler, retailer,
manufacturer
Volume of infringing goods
Kind of rights being infringed
DIFFERENT STRATEGIES

Issuing cease & desist letters/caution
notices

Negotiation & undertaking

Filing of a civil suit/criminal complaint

CIVIL ENFORCEMENT
SUIT FOR PERMANENT INJUNCTION
RESTRAINING INFRINGEMENT OF TRADEMARK,
PASSING OF AND/OR COPYRIGHT

UNIQUE JURISDICTION PROVISION IN IP CASES-
SUIT CAN BE FILED IN PLACE WHERE
PLAINTIFF CARRIES ON BUSINESS

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 & permanent
Ad interim (pending proceedings in the suit) or final

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)


RELIEFS THAT CAN BE
OBTAINED IN A CIVIL SUIT
Damages: Based on estimated lost
profits/lost sales/loss of goodwill, etc.

Rendition of accounts of profits earned
from sales of infringing goods

Delivery up of infringing goods

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
The Bombay Connection case

Komal Singh v. J.Bakshi

Suit filed against entity using deceptively similar
trademark Bombay Connexion with respect to
clothes. The Defendant has been temporarily restrained
by the Delhi High Court

Examples of successful enforcement of
trademark rights by Indian textile houses
Kala Niketan v. Kala Niketan Defendant
restrained by the Delhi High Court from dealing
in sarees under the trade name Kala Niketan

Virendra Dresses v. Varinder Garments-
Defendants restrained from using Varinder as
part of their trade name
Factors that strengthen your civil
suit
Trademark and/or copyright registration

Reputation and goodwill of the trademark which show
that it has become source identifier for your goods,
eg., sales figures, ads, invoices, length of use, record
of enforcement

Stronger the trademark, wider the protection

Evidence of misuse by the infringer
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.

TRADEMARK CRIMINAL ENFORCEMENT
A cognizable, bailable criminal offence

Punishment extends from 6 months to
3 years

Fine which may extend to Rs. 1000/-


COPYRIGHT ENFORCEMENT
** A cognizable criminal offence

** A non-bailable offence

** Copyright registration not mandatory

** Punishment extends to 3 years maximum

** Fine extends from Rs. 50,000 to Rs. 3 lakhs

Example of a successful
criminal enforcement action
Criminal raids conducted
in 2003 by the Economic
Offences Wing, Delhi
Police upon a complaint

Printers printing
counterfeit stickers &
labels- Levis, Adidas,
Lee, DKNY, Timberland
REMEDIES - CIVIL
CIVIL-ADVANTAGES:
Anton Piller Order,
similar to police.
Matter in control.
Settled/compromised.
Permanent injunction.
The order can be used
for future actions.
Possibility of Damages
etc.




CIVIL -DISADVANTAGES:
Less deterrent
effect.
Less publicity.
High Cost of
litigation.
Consumes more
time to reach logical
conclusion.
REMEDIES-CRIMINAL
CRIMINAL-ADV:
Immediate
deterrent effect.
Lots of publicity.
May lead to Arrest.
May lead to
conviction.
Less expensive.

CRIMINAL-DISADV:
Cant settle.
A state case.
Matter not in control.
As a complainant, to
be present on each
date of hearing.
No permanent
injunction.
No damages etc.
EVOLVING METHODS
To form IPR associations, societies, guilds, etc.
Ex: BSA, NASSCOM, IPRS, IMA, AGI, etc.
To establish links with enforcement agencies
Police, Customs etc.
To prepare & circulate IPR educating materials
Booklets, Pamphlets, Enforcement Guides, etc.
To develop a network of information, advice
etc.
To regularly consult IPR lawyers/experts for
advise

CONCLUSION
To know your intellectual property rights

To effectively secure / register your IPRs

To take reasonable steps for promotion

To have a good network of information


CONCLUSION
To develop a workable enforcement strategy

To regularly allocate funds in anticipation

To enforce your rights vigorously &
strategically