Civil Remedies for Trademark Infringement
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Civil Remedies for Trademark Infringement
Whenever a company uses trademark whether registered or unregistered, it prohibits any unauthorized person to use or imitate that trademark for own benefits. If such unauthorized person uses trademark without permission of the owner of trademark, it is known as infringement of trademark when trademark is registered and if the trademark is not registered then this particular act is termed as passing off of trademark. The owner after gaining knowledge of this particular use can sue the person who is infringing or passing off. As per Section 134 of The Trademarks Act, 1999 suit regarding infringement of trademark can only be filed before district court which means that no court lower district court is authorized to entertain any suit of infringement. District court can provide the remedied to the plaintiff as mentioned in the section 135 of The Trademarks Act, 1999 which are as follows:
There are two types of remedies available for plaintiff whose trademark is infringement:
- Permanent remedies
- Non permanent remedies
When a suit is filed it takes time to complete trail as it is a long process, the remedies which are provided after the completion of trail are known as permanent remedies and those remedies which are given during the trail and for the period of trail other then permanent remedies are known as non permanent remedies or interim remedies, both are provided under section 135 of the Act.
- Permanent Remedies: As we know that these remedies are given after deciding the full case and are the final remedies available to plaintiff.
Article 135 provides following types of permanent remedies:
- Injunctions: These are the orders of courts which directs a person either to do something, Mandatory injunctions, or to not to do something Prohibitory injunctions.
After getting injunction of either type the plaintiff is entitled to one more remedy which he has to choose between the following mentioned remedies(2 and 3) as only one is claimable at one time as they overlap each other and this provision is inserted as to prevent the plaintiff from getting double compensation.
- Damages: Plaintiff can ask for damages which he has suffered because of infringement of trademark. 2 types of damages can be provided by the court which are as follows:
- Compensatory damages: These are the damages which are provided to put the plaintiff in the same situation in which he would have been if trademark was not infringed. It makes the plaintiff full again. There are 3 ways in which the damages can be assumed
- When the plaintiff assert the amount of damages or the quantum of damages
- Profits made by the defendants can be assumed as damages suffered
- Damages can also be assumed by reasonable loyalty test which means the amount of loyalty payable on the willful use of trademark as the amount of damages.
- Punitive damages: These damages are provided in addition to the compensatory damages specifically to deter the defendant from doing such activity again. These damages were discussed in the case of Time ltd. v/s Lokesh Shrivastava and anr.
- Account of profit: The amount of profit gained by the defendants by infringing the trademark can be claimed by plaintiff as it were to be gained by plaintiff only if trademark was not infringed or it can be given to the plaintiff on basis that this profit was gained because of his trademark.
- One remedy can be claimed between above mentioned remedies.
- Delivery up: This is the last permanent remedy available for plaintiff. Whosoever infringes any trademark ha some stock or any material on which he was using the trademark to make profit, in this remedy court directs the defendants to handover the stock handover either to the plaintiff or to the court. In most of the cases it is destroyed under court supervision.
- Non permanent remedies: these remedies are provided during the course of trail also called Interim remedies. Following are the interim remedies:
- Interim injunction or other interlocutory orders- as per section 135 interim injunction can be passed for following 3 things;
- Discovery of documents
- Preserving goods or documents or other evidences
- Restraining defendants from disposing assets.
Ex-parte injunctions (as per order 39 rule 4 of civil procedure code) can also be granted in absence of defendants for which 3 points should be satisfied before the court (i) prima facie case (ii) irreparable harm or injury to plaintiff (iii) balance of convenience.
- Anton Piller orders: When court issues this order then commissioner appointed under order 26 of cpc is ordered to go and inspect the premises of defendants and inspect their. After inspect the commissioner bounds the defendants to produce all such things before court as mentioned by the commissioner.
- Mareva injunctions: this is a order issued to freeze the assets of defendants so that it cannot be tampered by the defendants.
- Discovery orders: In IPR special kind of discovery order is issued named NORWICH PHARMACAL order. These are ordered when some documents are in not in reach of plaintiff and are necessary for the case for example custom documents.
