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Remedy for Trade Mark Infringement India

No suit for infringement of a registered trade mark or suit relating to any right in a registered trade mark or for passing off arising out of the use by the defendants of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or not shall be instituted in any court inferior to a district court having jurisdiction to try the suit. Procedure followed The procedure followed in the disposal of the suit is as laid down in code of civil procedure, 1908. Period of limitation Under the limitation Act, 1963, the period of limitation for filing a suit for infringement of a trade mark is three years from the date of infringement. Where the infringement is a continuing one, a new course of action arises every time is infringement occurs. For instance, in a continued sale of infringing article, sale of each article would give rise to a fresh cause of action. Who can sue for infringement The plaintiff in an infringement suit may be either: (a) The proprietor of the registered trade mark of his legal successor. (b) A registered user of a trade mark subject to a prior notice to the registered proprietor and consequent failure of the registered proprietor to take any action against the infringer. (c) An application for registration of a trade mark, he can file an infringement suit to protect his right to continue with the suit which will sustain only if his trade mark is registered before the hearing of the suit. (d) Legal hairs of the deceased proprietor of a trade mark. (e) Any one of the joint proprietors of a trade mark. (f) A foreigner proprietor of a trade mark registered in India when infringement occurs in India. Who can be sued? (a) The infringer who directly by his action causes infringement or who uses or who uses or contemplates or threatens to use a trade mark infringing the plaintiffs right. (b) The agents of infringers. (c) Director and promoters of a limited company can not be joined as co-defendants unless they have personally committed or directed infringing acts. Issues in infringement suits In a suit for infringement, the issues which are generally to be determined are :

(1) Whether the plaintiffs is indeed entitled to file the suit and claim relief. It has to be determined whether he is the registered proprietor or whether he is registered user qualified under the provision of the Act. (2) Whether the use of infringing trade mark or the proposed use of the mark would actually amount to infringement. (3) Whether the plaintiffs is entitled to any interlocutory relief. (4) Whether there have been actual instance of deception and confusion amongst the public. (5) Relief. The defenses which may be set up by the defendant The defendants may set up any of the following defenses in an action for infringement against him depending upon the applicability of the relevant defense to his case:(1) That the plaintiff in the suit has no title to sue questioning the proprietorship of the trade mark owner may do this. (2) That the use of the mark by the defendants is not an infringement or it protected by the provisions of section 30 which list out the acts which do not constitute infringement. (3) That the defendants right to use the contested mark arises by virtue on concurrent registration. (4) That the defendants has been an honest concurrent user (5) That the defendants can attack the validity of registration of the plaintiff. (6) That the plaintiff is debarred from suing or claiming the relief sought by his own conduct, e.g., by his own acquiescence, delay or latches or his having acquired his right on the trade mark fraudulently. Illustration In the case of Electrolux v. Electrix , (1953) 70 RPS 127, it was held that the mark of the plaintiff was infringed but the relief was suspended in view of the long concurrent use to enable the defendants to apply for registration. Defences which can cot be set up (1) Honest adoption of the mark is not a defense. The defendant can not plead that he had adopted the plaintiffs mark without the knowledge of existence of plaintiffs trade mark. (2) Innocent infringement cannot be pleaded. Suit for passing off Passing off occurs when one trader attempt to pass off his goods by misrepresenting them so as to make the consumers believe that his goods are the same as those of another trader. For example using a mark Colmate on a tooth pest with a similar getup to pass it off as Colgate. The action against passing off also lies in instituting a suit . the action is often combined into a suit for infringement and passing of to claim the relief recognized by law.

RELIEF IN SUITS FOR INFRINGEMENT OR PASSING OFF The relief which a court may grant in any suit for infringement and passing off: (1) The relief which a court may grant in any suit for infringement or for passing off includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiffs either damages or an accounts of profits, together with a without any order for the delivery up of the infringing labels and marks for destruction or erasers. (2) Notwithstanding anything contained in sub-section (1) , the court shall not grant relief by way of damages or an account or profit in any case(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification of trade mark; or (b) where in a suit for infringement the defendants satisfies the court: (i) That at the time of commenced to use the trade mark complained of in the suit, he was unaware and has no reasonable ground for believing that the trade mark of the plaintiff was a registered user by way of permitted use ; and (ii) That when he became aware of the existence and nature of the plaintiffs right in the trademark, he forthwith ceased to used the trade mark in relation to goods in respect of which it was Registered; TYPES OF RELEIF The type of relief to which a plaintiff is entitled are (1) An injunction restraining further use of the infringing mark. (2) Damages or an account of profits. (3) An order for delivery-up of infringing labels and marks for destruction or erasure. The plaintiff is entitled to the above relief both in an infringing and passing of action. Reliefs not exhaustive The language of the section 105 indicates that the reliefs mentioned in section 105 are not exhaustive. The expression used is, the relief includes Grant of relief is discretionary The Grant of relief is discretionary, the use of expression may indicate it is not mandatory for the court of grant to relief, but the discretion has to judicially exercise but not in the sense of a prerogative which can be applied arbitrarily. INJUNCTION An injunction is a judicial process or order restraining a person from continuing with wrongful act. the general rules governing the grants of injunction are contained in section 36 to 42 of the

Indian Specific Relief Act, 1963 and Order XXXIX Rules 1 & 2 and section 151 ( Inherent power of the Court) of the code of civil procedure, 1908. Injunction may be the following types :(a) Anton piller order (b) Mareva injunction (c) Interlocutory injunction (d) Perpetual injunction. These are explained below: Anton piller order These are ex parte order to inspect defendants premises. A court may grant such an order to the plaintiff where there is a possibility of a defendants destroying or disposing of the incriminating material. Pass such an order if for inspection of the premises of the defendants. An ex parte order means an order passed on the application of the plaintiff without giving the defendants a notice of the application. Such a notice would enable the defendant to temper with the evidence of his infringement; hence ex parte order. The three condition requisite for making and order are; (1) there must be a strong prima facie case in favour of the plaintiff. (2) Such an order if not granted will cause irreparable damage to the applicant for injunction. (3) There must be clear evidence that the defendants have in their possession incriminating documents or things and there is real a real possibility that they may destroy such material if any notice of application is served. Mareva injunction In such an order the court has power to freeze defendants assets where there exists a probability of the assets being dissipated or canceled so as to make a judgment against him worthless and un-enforceable. Interlocutory injunction This from of injunction is the commonly sought and most often granted from of injunction. The interlocutory injunction it an order restraining the defendants from continuance of the acts which amount to infringement. An interlocutory / interim injunction may be granted ex parte that is without notice in cases of urgency. Such ex parte injunction is however granted for a limited period only.

The plaintiff is seeking an ex parte interim injunction has to discharge the duty of making full disclosure to the court of all facts which are material to the exercise of the courts discretion whether or not to grant the relief. Grant of interim / interlocutory injunction is discretionary, the plaintiff or the applicant cannot claim it as a matter of right to have an ex parte order granted in his favour. Perpetual injunction Perpetual injunction is an order restraining the defendants totally, for all times to comes, from doing any act which infringes the right of the proprietor of the trade mark. Perpetual injunction is generally granted when the suit is finally decided. Perpetual injunction usually follows when the grant of interim injunction against infringement was granted at the beginning of the suit. It can be granted also in cases where no interim injunction was granted. DAMAGES ACCOUNTS OF PROFITS The plaintiff if an action for infringement may be granted either damages or an account of profits but not both. In an account of profit the infringer is required to give up ill-gotten gains in favour of the plaintiff whose right he has infringed. In case of damages the defendants has to compensate the plaintiff. The damages may even be more than monetary profits reaped by the defendants by the misuse of the plaintiff mark. The quantum of damages awarded is determined by the quantum of loss actually sustained by the plaintiff which was the natural and direct consequence of the unlawful acts of the defendants. Speculative and unproven damages are also not considered and determining the quantum of damages. In calculating the amount of profits, the damages suffered by the plaintiff is immaterial. The accounts of profit, is made on the basis of actual profit, the defendants has made out of the sale of infringing goods

http://www.authorstream.com/Presentation/rhtsarda-1162406-intellectual-property-rights/

1. Firewalls

The first line of defense against cyber criminals is a good firewall. The best remedy when it comes to firewalls is combining both an appliance side (router with a built-in SPI firewall) and a software firewall solution. When you combine both types of firewall, you will eliminate 95 percent of cyber criminals who ping your system to see if it is secure. The other 5 percent might stop by to see if they can get in without getting detected to see what you are protecting.

2. Antivirus

The right antivirus solution is your second line of defense against cyber criminals. However, the myth among most individual consumers is they can use a free or low-end antivirus solution and that will be enough. The reality is, you need an active, best of the best, hourly update antivirus solution. You will need one that provides hourly definition updates. You also want a solution that has 24/7 research and analysis by first responders and automated algorithms.
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3. Anti-Spyware

A powerful anti-spyware solution is necessary. Again, you do not want to use a free or low-end solution as your main protection. Look for an advanced antispyware solution, which provides active malware protection at the kernel level of your computer and runs a scan at startup or at a pre-scheduled time. You also want a solution, which upon startup, will detect and kill rootkits, which may be hiding on your system.

4. Encrypted USB Flash Drives

This type of cyber crime security solution is portable and if you buy one with FIPS (Federal Information Processing Standard) 140-2 Level 3, then your system is

vertically hacker proof. This type of security mechanism is the same type used by the Department of Defense. Because it is based on a USB flash drive, it is difficult to hack since it is pulled from the system when not online.

5. Private/Anonymous Proxy Servers

Proxy servers are also a great addition to fighting cyber crime as long as you are contracting with a reputable company. Proxy servers allow you to hide your IP address from the prying eyes of anyone who is looking for an opening on your system. If you add this to the above cyber crime solutions, you will be just about as invisible as a computer being used staff members inside the White House. 1. Protection from Harassment Act 1997 2. Communications Act 2003 3. Offensive Behaviour at Football and Threatening Communications Act 2012 4. Malicious Communications Act 1988 England only 5. Defamation 6. The Electronic Commerce (EC Directive) Regulations 2002 7. Confidential Information 8. Criminal Licensing and Justice (Scotland) Act 2010

Provision for cyber regulation ppelte tribunal


Establishment of Cyber Appellate Tribunal (1) The Central Government shall, by notification, establish one or more appellate tribunals to be known as the Cyber Regulations Appellate Tribunal. (2) The Central Government shall also specify, in the notification referred to in sub-section (1), the matters and places in relation to which the Cyber Appellate Tribunal may exercise jurisdiction. Composition of Cyber Appellate Tribunal

2.

A Cyber Appellate Tribunal shall consist of one person only (hereinafter referred to as the Presiding Officer of the Cyber Appellate Tribunal) to be appointed, by notification, by the Central Government. 3. Qualifications for appointment as Presiding Officer of the Cyber Appellate Tribunal

A person shall not be qualified for appointment as the Presiding Officer of a Cyber Appellate Tribunal unless he(a) is, or has been, or is qualified to be, a Judge of a High Court; or (b) is or has been a member of the Indian Legal Service and is holding or has held a post in Grade I of that Service for at least three years.

4.

Term

of

officer

The Presiding Officer of a Cyber Appellate shall hold office for a term of five years from the date on which he enters upon his office or until he attains the age of sixtyfive years, whichever is earlier. 5. Salary, allowances and other terms and conditions of service of Presiding Officer

The salary and allowances payable to, and the other terms and conditions of service including pension, gratuity and other retirement benefits of, the Presiding Officer or a Cyber Appellate Tribunal shall be such as may be prescribed: Provided that neither the salary and allowances nor the other terms and conditions of service of the Presiding Officer shall be varied to his disadvantage after appointment. 6. Filling up of vacancies

If, for reason other than temporary absence, any vacancy occurs in the office of the Presiding Officer of a Cyber Appellate Tribunal, then the Central Government shall appointment another person in accordance with the provisions of this Act to fill the vacancy and the proceedings may be continued before the Cyber Appellate Tribunal from the stage at which the vacancy is filled. 7. Resignation and removal (1) The Presiding Officer of a Cyber Appellate Tribunal may, be notice in writing under his hand addressed to the Central Government, resign his office : Provided that the said Presiding Officer shall, unless he is permitted by the Central Government to relinquish his officer sooner, continue to hod office until expiry of three months from the date of receipt of such notice or until a person duly appointed as his successor enters upon his office or until the expiry of his terms of office, whichever is the earliest. (2) The Presiding Officer of a Cyber Appellate Tribunal shall not be removed from his officer except by an order by the Central Government on the ground of proved misbehaviour or incapacity after an inquiry made by a Judge of the Supreme Court in which the Presiding Officer concerned has been informed of the charges against him and given a reasonable opportunity of being heard in respect of these charges. (3) The Central Government may, be rules, regulate the procedure for the investigation of misbehaviour or incapacity of the aforesaid presiding Officer. 8. Orders constituting Appellate Tribunal to be final and not to invalidate its proceedings No order of the Central Government appointing any person as the Presiding Officer of a Cyber Appellate Tribunal shall be called in question in any manner and no act or proceeding before a Cyber Appellate Tribunal shall be called in question in any manner on the ground merely of any defect in the constitution of a Cyber Appellate Tribunal. 9. Staff of the Cyber Appellate Tribunal (1) The Central Government shall provide the Cyber Appellate Tribunal with such officer and employees as that Government may think fit. (2) The officers and employees of the Cyber Appellate Tribunal shall discharge their functions under general superintendence of the Presiding Officer. (3) The salaries, allowances and other conditions of service of the officers and employees of the Cyber Appellate Tribunal shall be such as may be prescribed by the Central Government. 10. Appeal to Cyber Appellate Tribunal (1) Save as provided in sub-section (2), any person aggrieved by an order made by Controller or an adjudicating officer under this Act may prefer an appeal to a Cyber Appellate Tribunal jurisdiction in the matter. (2) No appeal shall lie to the Cyber Appellate Tribunal from an order made by an adjudicating officer with

the

consent

of

the

parties.

(3) Every appeal under sub-section (1) shall be filed within a period of forty-five days from the date on which a copy of the order made by the Controller or the adjudicating officer is received by the person aggrieved and it shall be in such form and be accompanied by such fee as may be prescribed : Provided that the Cyber Appellate Tribunal may entertain an appeal after the expiry of the said period of forty-five days if it is satisfied that there was sufficient cause for not filing it within that period. (4) On receipt of an appeal under sub-section (1), the Cyber Appellate Tribunal may, after giving the parties to the appeal, an opportunity of being heard, pass such orders thereon as it thinks fit, confirming, modifying or setting aside the order appealed against. (5) The Cyber Appellate Tribunal shall send a copy or every order made by it to the parties to the appeal and to the concerned Controller or adjudicating officer. (6) The appeal filed before the Cyber Appellate Tribunal under sub-section (1) shall be dealt with by it as expeditiously as possible and endeavour shall be made by it to dispose of the appeal finally within six months from the date of receipt of the appeal. 11. Procedure and powers of the Cyber Appellate Tribunal (1) The Cyber Appellate Tribunal shall not be bound by the procedure laid down by the Code of Civil Procedure, 1908 but shall be guided by the principles of natural justice and, subject to the other provisions of this Act and of any rules, the Cyber Appellate Tribunal shall have powers to regulate its own procedure including the place at which it shall have its sitting. (2) The Cyber Appellate Tribunal shall have, for the purposes of discharging its functions under this Act, the same powers as are vested in a civil court under the Code of Civil Procedure, 1908, while trying a suit, in respect of the following matters, namely : (a) summoning and enforcing the attendance of any person and examining him on oath; (b) requiring the discovery and production of documents or other electronic records; (c) (d) (e) (f) dismissing an issuing receiving commissions for the evidence examination of its for default or deciding it ex on witnesses of affidavits; documents; decisions; parte;

reviewing application

(g) any other matter which may be prescribed. (3) Every proceeding before the Cyber Appellate Tribunal shall be deemed to be a judicial proceeding within the meaning of sections 193 and 228, and for the purpose of section 196 of the Indian Penal Code and the Cyber Appellate Tribunal shall be deemed to be a civil court for the purposes of section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973. Right to legal representation

12.

The appellant may either appear in person or authorise one or more legal practitioners or any of its officers to present his or its case before the Cyber Appellate Tribunal. 13. Limitation

The provisions of the Limitation Act, 1963, shall, as far as may be, apply to an appeal made to the Cyber Appellate Tribunal. 14. Civil court not to have jurisdiction

No court shall have jurisdictions to entertain any suit or proceeding in respect of any matter which an adjudicating officer appointed under this Act or the Cyber Appellate Tribunal constituted under this Act is empowered by or under this Act to determine and no injunction shall be granted by any court or other authority in respect of any action taken or to be taken in pursuance of any power conferred by or under this Act. 15. Appeal to High Court

Any person aggrieved by any decision or order of the Cyber Appellate Tribunal may file an appeal to the High Court within sixty days from the date of communication of the decision or order of the Cyber Appellate Tribunal to him on any question of fact or law arising out of such order : Provided that the High Court may, if it is satisfied that the appellant was prevented by sufficient cause from filing the appeal within the said period, allow it to be filed within a further period not exceeding sixty days. 16. Compounding of contraventions (1) Any contravention under this Chapter may, either before or after the institution of adjudication proceedings, be compounded by the Controller or such other officer as may be specially authorised by him in this behalf or by the adjudicating officer, as the case may be, subject to such conditions as the Controller or such other officer or the adjudicating officer may specify : Provided that such sum shall not, in any case, exceed the maximum amount of the penalty which may be imposed under this Act for the contravention so compounded. (2) Nothing in sub-section (1) shall apply to a person who commits the same or similar contravention within a period of three years from the date on which the first contravention, committed by him, was compounded. Explanation- For the purpose of this sub-section, any second or subsequent contravention committed after the expiry of a period of three years from the date on which the contravention was previously compounded shall be deemed to be a first contravention. (3) Where any contravention has been compounded under sub-section (1), no proceeding of further proceeding, as the case may be, shall be taken against the person guilty of such contravention in respect of the contravention so compounded. 17. Recovery of penalty A penalty imposed under this Act, if it is pad, shall be recovered as an arrear or land revenue and the licence or the Digital Signature Certificate, as the case may be, shall be suspended till the penalty is paid.