INFRINGEMENT OF TRADEMARK

BY – URVI SHRIVASTAVA
 Registration enables registered proprietor to sue for
infringement of registered trademark, irrespective of
its use.

 Registration confers monopoly rights

 But the proprietary rights acquired by use are

superior to the rights obtained by registration under
the Act.

 Therefore the rights of prior user should be protected.

 A trademark has no meaning even if it is registered

unless its used in relation to the goods, its non-use
may lead to abandonment.
 Registration itself does not create a trade mark, its
exists independently of registration.

 Registration under the new act does not confer any

new rights, registration merely affords further
protection under the statute.

 Common law rights remain totally unaffected, its is

upon the proprietor to decide whether to register or
not.

 A trader acquires a right of property in a trade mark

merely by using it in connection with his goods or
services, irrespective of the length of such use and
extent of his trade.
 Sec 27 - (1) No person shall be entitled to institute
any proceeding to prevent, or to recover damages for,
the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights

of action against any person for passing off goods or
services as the goods of another person or as services
provided by another person, or the remedies in
respect thereof.
 Rights Conferred by registration (Sec 28) –

 The registration of a trade mark shall, give to the

registered proprietor of the trade mark the exclusive
right to the use of the trade mark in relation to the
goods or services in respect of which the trade mark is
registered and to obtain relief in respect of
infringement of the trade mark in the manner
provided by this Act

 N. R. Dongre and Others v. Whirlpool Corporation and

Another
 Rights conferred under Sec 28(1) for registration of
Trademark is not absolute right but its subservient to
Sec 27(2).
 The exclusive right to use the trade mark shall be
subject to any conditions and limitations to which the
registration is subject.

 B. Kishore Jain v. Navratna Khazana Jewellers

The court held that Registrar of Trade marks himself

was empowered to restrict the use of trade mark with
reference to the geographical limitations, which was
not a part of applicants registration certificate.
 Infringement –

Trademark infringement in India is defined under

Section 29 of the Trademarks Act, 1999.
When an unauthorized person uses a trademark that is
'identical' or 'deceptively similar' to a registered
trademark, it is known as infringement.
 Sec 29(1), (2) and (3)

Sec 2(1)(h) – defines “deceptive similarity”

A mark shall be deemed to be deceptively similar to

another mark if it so nearly resembles that other mark
as to be likely to deceive or cause confusion.

In Lavroma case, Lord Johnston said :

“We are not bound to scan the words as we would in a

question of comparatio literarum. It is not a matter for
microscopic inspection but to be taken from the general
and even casual point of view of a customer walking
into a shop”
  Parle Products (P) Ltd. v. J.P and Co.

 Appellant was manufacturer of biscuits and owner of

registered trade mark being a wrapper. This wrapper
was used in connection with the sale of their biscuits
known as “Parle’s Glucose Biscuits” printed on the
wrapper.

In March 1961,
Appellant came to
know that the
Respondent was
selling biscuits in a
wrapper which was
deceptively similar
to their registered
trade mark.
 “Whether one mark is deceptively similar to another,
the broad and essential features of the two are to be
considered. They should not be placed side by side to
find out if there are any differences in the design.....It
would be enough if the impugned mark bears such an
overall similarity to the registered mark as would be
likely to mislead a person”

 In this case we find that the packets are practically

of the same size, the colour scheme of the two
wrappers is almost the same; the design on both
though not identical bears such a close resemblance
that one can easily be mistaken for the other.
 The essential features of both are that there is a girl
with one arm raised and carrying something in the other
with a cow or cows near her and hens or chickens in the
foreground. In the background there is a farm house
with a fence. The word “Glucose Biscuits” in one and
“Glucose Biscuits” on the other occupy a prominent place
at the top with a good deal of similarity between the two
writings.
 If one was not careful enough to note the peculiar
features of the wrapper on the plaintiffs’ goods, he might
easily mistake the defendants’ wrapper for the
plaintiffs’
 After all, an ordinary purchaser is not gifted with the
powers of observation of a Sherlock Holmes. We have
therefore no doubt that the defendants’ wrapper is
deceptively similar to the plaintiffs’ which was
registered.
 Prem Nath Mayer v. Registrar of Trade marks

Appellant’s mark – “Lion Brand” bearing a picture of lion

for chaffcutter blades and knives
Respondent’s mark – Picture of Lion with a Goddess
seated upon it for agricultural implements including
chaffcutter blade

The court was of opinion that the dominant feature in

both the trademark is the Lion, the court also believed
that consumer of these goods might not necessarily be
literate and hence there is a possibility that the
consumer would go by the picture.
 Both ear and eye is considered while considering
deceptive similarity, in a case “Glucovita” and “Gluvita”
were held to be deceptively similar.

Mahendra and Mahendra Paper Mills Ltd. v. Mahindra

and Mahindra
SC observed that the corporate name Mahindra and
Mahindra has acquired distinctiveness and a secondary
meaning in the trade circles and hence any attempt by
another person to use the name in business and trade
will create an impression of some connection to the
plaintiff’s companies.

 A stricter approach is to be adopted for pharmaceutical

products
 BDH Industries v. Croydon Chemical Works Pvt. Ltd.

Bombay HC held that the trade mark of petitioner “PV-

Dine” in respect of medicinal preparations was
deceptively similar to respondents trade mark
“PIODIN” for similar medicines.

Similarity of goods

In British Sugar Plc v. James Robertson & Sons Ltd.

the court applied following tests and factors to
determine similarity of goods -
 Respective use and users of the goods/services
 Physical nature of goods/services
 Trade channels through which goods/services reach the
market
 Whether likely to be found in supermarkets
 Whether goods/services traded/provided by the same
business

Sec 29 (4)
A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which—
(a) is identical with or similar to the registered trade mark;
and
(b) is used in relation to goods or services which are not similar
to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the
use of the mark without due cause takes unfair advantage of
or is detrimental to, the distinctive character or repute of the
registered trade mark.
 Health & Glow Retailing Pvt. Ltd. v. Dhiren Krishna
Paul, 2007

The defendants were attempting to take unfair

advantage of the reputation of the registered
trademark of the plaintiff. Since they could not explain
how they arrived at the combination of these two words
and the device, they had done it without a due cause.
Thus conditions of Sec 29(4) were satisfied and
gateway of dissimilar goods did not work.
 In TATA Sons Limited v. Atul Tiwari,

The Court held that the trade mark “TATA” was a well-
known mark and the use of it by defendants on their
batteries constituted infringement within the meaning
of Sec 29(4).

Dilution of Trademark –

 The doctrine of dilution of trademarks refers to a

principle in trademark law that protects a trademark
from any form of disintegration
 As per the doctrine, in order to establish the dilution of
a trademark, the onus is on the plaintiff to prove that

(1) the infringer has used the junior mark which is

significantly similar to the well-known mark in order
to insinuate or establish a relationship between the
well-known brand and the infringer's brand and

(2) has caused economic harm to the well-known mark's

value by diminishing its value.

 Trademark dilution occurs when an unauthorized

party uses a trademark in a manner that would
tarnish or diminish the image of a well-known
trademark
 Dilution is widely categorized into two types: Blurring
and tarnishment.
 Dilution by blurring occurs when the
distinctiveness of a popular trademark is impaired due
to a trademark which is created by an unauthorized
party.

 For instance, if a business uses the 'FACEBOOK'

mark on a toothpaste, consumers may begin to
associate the well-known FACEBOOK mark with the
toothpaste brand. This may negatively impact
Facebook's brand image.

 On the other hand, dilution by tarnishment occurs

when a person or a business unauthorizedly uses a
mark in an offensive, inappropriate or absurd context.
 For instance, the unauthorized use of the "WHOLE
FOODS" mark to associate it with food items that use
hydrogenated fats, artificial colors, and flavors can be
considered dilution by tarnishment.

 European Union has recognized a type of dilution

termed as 'free-riding

When an unauthorized party attempts to monetize or

profit out of a well-known mark's goodwill and image.
For instance, the use of the 'GOOGLE' mark on
restaurants may amount to dilution by free-riding
since the unauthorized party may capitalize out of
Google's goodwill and brand image.
Sec 29(5) –
A registered trade mark is infringed by a person if he
uses such registered trade mark, as his trade name or
part of his trade name, or name of his business concern
or part of the name, of his business concern dealing in
goods or services in respect of which the trade mark is
registered.

 Sec 29(8) A registered trade mark is infringed by any

advertising of that trade mark if such advertising—
(a) takes unfair advantage of and is contrary to honest
practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
 Compaq v. Dell

“Dell” Computers published an advertisement claiming

that their home computers functioned similarly to
“Compaq” computers but were cheaper. Their claims
about functions were untrue in various important
details.
The court found it to be infringement and granted relief.

Disparagement –

 Disparagement of goods is a statement about a

competitor’s goods which is untrue or misleading and is
made to influence or tends to influence the public not
to buy.
 Disparagement maybe direct, clear and brazen, it may also
be subtle, clever or covert.

 The duty of court is to analyze and decide how the

statement made by a rival trader belittles, discredits or
defames the reputation of another’s property or business.

 In the case of Reckitt & Colman f India Ltd. vs. M.P.

Ramchandram & Anr,
This case involved manufacturers of two clothing detergents
'Robin Blue', the plaintiff and 'Ujala' the defendant. It was
contended by the plaintiff that the defendant in his
advertisement, had on purpose used a bottle similar to that
of plaintiff's product. The defendant also mentioned in his
advertisement that the plaintiff's product was inefficient
and was uneconomical. The Court held that a producer can
declare his goods to be the best, or even better than his
competitors even if the statement is untrue. But, while
making such comparison he cannot state that his
competitor's goods are bad, even if that is true. He cannot
make any statement which might lead to disparagement of
his competitor's goods.
 Pepsi Co. vs. Hindustan Coca Cola Ltd. Pepsi Co. A
Alleged infringement of trademark as Coca Cola, vide its
advertisement has disparaged the products of Pepsi Co
by calling Pepsi "Bacchon Wala Drink". Further Coca
Cola also used a bottle with same colour combination
as that of Pepsi with the name "Pepsi" written on it.
The court while analyzing the meaning of
disparagement held that, an advertisement is
considered to be defaming if it is undervaluing,
bringing discredit or dishonour upon the competitor's
product.
 What does not constitute infringement? (Sec 30)

 The doctrine of ‘fair use’ is encapsulated under Section

30 of the Trade Marks Act, 1999, which is an
affirmative defense available against a claim of
infringement by proprietor of a registered trademark.

 ‘Fair use’ of a trademark by any party, other than the

proprietor, may be broadly categorized into –

a) Descriptive fair use

b) Nominative fair use
 Descriptive fair use –

 It relates to use of a registered trademark in a

descriptive manner i.e. used in relation to goods or
services indicating the kind, quality, quantity,
intended purpose, value, geographical origin, the time
of production of goods or of rendering of services or
other characteristics of goods or services.

Ex – Rich’s Whip Topping (registered mark)

Bells Whip Topping (alleged infringing mark)

Unless the word “Whip Topping” has acquired a

secondary meaning.
 Nominative fair use -

 It relates to use of a registered trademark by a person

in relation to goods adapted to form part of or to be
accessories, provided it is ‘reasonably necessary’ in
order to indicate that the goods so adapted are
compatible with the goods sold under the trademark

 The more problematic and hence controversial of the

two is the doctrine of ‘nominative fair use’ where
someone else’s trademark is used to refer to the mark
owner’s goods or services, without the mark owner’s
consent. The Courts in India have therefore subjected
‘nominative fair use’ defense to an enhanced scrutiny.
 Hawkins Cookers Ltd. vs Murugan Enterprises
 Use of the registered trademark ‘HAWKINS’ on gaskets by
the defendant,
 the Court held that use of the trademark by the defendant in
relation to refills, spare parts and accessories adapted for
use in or with the goods of the proprietor may not amount to
infringement, if the defendant establishes,
(1) that the use of the mark is reasonably necessary for
describing that the article is adapted for use with the
plaintiff’s goods;
(2) that the use was bona fide, and
(3) that the effect of the use complained of is not likely to
deceive the public as to the trade origin.
In appeal, the Division Bench of the Delhi Court held that the
original defendant while writing – ‘Suitable for Hawkins
Pressure Cookers’, had given undue importance to the word
“HAWKINS”, by printing it in a distinct red color, and hence
disallowed defense of nominative fair use under Section
30(2)(d).
 Prius Auto Industries Ltd. vs. Toyota Jidosha Kabushiki
Kaisha
 Delhi HC dealt with the nominative fair use defense, against
unauthorized use of the plaintiff’s trademarks ‘TOYOTA’,
TOYOTA Device and INNOVA in connection with the
defendant’s car accessories and spare parts.
 While the Single Judge of Delhi High Court passed order
retraining the defendants from using the plaintiff’s
registered trademarks,
 the Division Bench, which balancing equities, imposed an
interim arrangement between parties with their consent,
wherein the defendants –
(1)were restrained from using plaintiff’s registered marks,
except for the purposes of identifying that the defendant’s
products can be used in the cars;
(2) were to ensure that the words ‘TOYOTA’ and ‘INNOVA’
were not written in the same font as written by Toyota;
(3) were to use the words “Genuine Accessories” only in
conjunction with the defendant’s name.
 Other exceptions to Infringement –

Use outside the scope of registration

When a trademark is registered subject to certain
conditions and limitations and the trademark is used
by others in a manner which is outside the scope of
registration.

Ex- “ABC Garden Market” can be a registered

trademark, subject to the condition that they will not
have exclusive right over the words “Garden” or
“Market”
Territorial limitations.
 Prior Use –
Prior user of the mark has more rights than the subsequent
user even if he is the registered one.
It can be taken up as a defence by the defendant when he is
using it for a long duration of time and has gained
reputation too in his business as compared to the registered
user.
This defence can be taken up in a situation when defendant
has not renewed his previously registered trademark but
his business is continued under the same mark.

 Delay and Acquiescence -

In situations when there has been a delay in bringing action
of the infringement by the plaintiff, it is stated that the
plaintiff’s right have been waived off as the trademark
owner and implicitly permitted use of its mark by the
subsequent user.
 Parody
It is being stated by the Delhi High Court in the case of
Tata Sons Ltd v. Greenpeace International that
reasonable parody, comment of a registered trademark
can be made if the intention of the person is to draw
attention to some activity of the owner of the trademark.
Where the use is not completely for a commercial purpose,
the court may allow parody. This emerged because the
courts gave more importance to the freedom of speech
and expression as against trademark law
 Exhaustion of Rights –

The trademark proprietor is prevented from prohibiting

the marketing of goods in any geographical area, once
the goods under the registered trade mark are lawfully
acquired by a person, however opposition can be taken
by the proprietor in case such dealings affect or impair
the conditions of the goods.

Kapil Wadhwa v. Samsung Electronics Co. Ltd.

The Appellants were importing Samsung printers from

abroad and selling them in India. The court applied the
rule of exhaustion and said that the principle took
away the right of respondents to control further sale or
distribution of goods.
 However, the respondents argued that the appellants
were not providing after sales services to the consumer,
which could possibly damage the reputation of the
company. The court found some merits to the
argument.

 The court then stated that, this could be prevented by

requiring the appellants to prominently display in their
shop that after sales services and warranties are not
guaranteed as they import the products and thus it will
obviate any customer dissatisfaction.
 Passing Off –

 Passing off is an actionable wrong, in which a person passes

off his goods as the goods of another.

 The law relating to this tort – “passing off”- was explained by

the Supreme Court in the case of Laxmikant V. Patel vs.
Chetanbhat Shah and Another –

“A person may sell his goods or deliver his services such as in

case of a profession under a trading name or style. With the
lapse of time such business or services associated with a
person acquire a reputation or goodwill which becomes a
property which is protected by courts. A competitor initiating
sale of goods or services in the same name or by imitating that
name results in injury to the business of one who has the
property in that name. The law does not permit any one to
carry on his business in such a way as would persuade the
customers or clients in[to] believing that the goods or services
belonging to someone else are his or are associated therewith.”
 The House of Lords’ decision in Reckitt & Coleman Products
Limited v Borden Inc., known as the "Jiff Lemon Case".
 This case concerned Reckitt's well know lemon shaped
container for lemon juice and the dispute related to Borden's
decision to begin selling lemon juice in a similarly shaped
container.
 In finding that Borden's similar container infringed Reckitt's
rights in passing off, Lord Oliver held that whilst the law of
passing off could be summarised as that no man may pass
off his goods as those of another, there are three elements
which needs to established in order to succeed with an
action. There are called the "classical trinity". These
elements can briefly be summarised as:
1. establishing a goodwill or reputation in the goods or
services
2. demonstrating a misrepresentation which is likely to lead
the public to believe the goods offered are those of the
claimants’ and
3. establishing that damage has or will be caused.
 The Trinity test was reiterated by the Supreme Court in the
case of Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd.

 Registration is no defense to passing off action

The Trademark Act affords no bar to a passing off action and

hence registration cannot act as a defence to passing off
action (Sec 27 (2))

N R Dongre v. Whirlpool Corporation

 Whirlpool Corporation obtained the registration of the

trademark ‘Whirlpool’ in India in 1956 for cloth dryers, dish
washers, washing machines among other appliances.
However, initially the corporation used to sell products only
to the U.S embassy in India bearing the name ‘Whirlpool’.
 In 1986 Mr. N.R Dongre filed for registration of
trademark ‘Whirlpool’. After the publication, Whirlpool
Ltd opposed the said registration. But it was dismissed
on the grounds of non-use and non-reputation of
trademark ‘Whirlpool’ in India and on the ground that
no confusion is likely to arise if Mr. N.R Dongre and his
company is allowed to sell out products bearing the
name’ Whirlpool’.
 The Whirlpool Ltd filed for an appeal against the order
of the Assistant Registrar before the Delhi High Court.
The Single Judge Bench held in favour of Whirlpool Ltd
that they had been selling their products to the U.S
embassy in India before Dongre even came into the
market. Also they have given advertisements in various
international magazines being circulated in India about
the products under the trademark and name
‘Whirlpool’.
 And hence, a temporary injunction was granted stating that
there were no reliable and conclusive evidence of Mr. N.R
Dongre and Co. having carried out marketing of their
washing machines bearing the trademark 'Whirlpool' for any
considerable time prior to the date of grant of injunction.
 Then in a Special Leave Petition was filed before the
Supreme Court, the court upheld the decision of the Learned
Single Judge as well as that of the Division Bench.

 The Court herein on the grounds of passing off injuncted the

proprietor from using the same mark.

 Also, the concept of 'Trans-Border Reputation' was

recognized by the Supreme Court. And held the trademark
'Whirlpool' was deemed to have acquired cross-border
reputation which enjoys due protection of law in India as
well, irrespective of its market base or registration in India.
 Cross-border reputation – It exists when a
trademark and the product associated with the
trademark surpasses the physical borders of the
region and gain reputation across the border or beyond
the territorial limitation of the geographical region due
to its promotions, commercial publicity,
advertisements and its presence in the market at large

 Distribution of information of a trademark associated

with a product through advertisements and publicity
in media amounts to use of the trademark even if the
advertisement is not combined with the actual
presence or use of the product in the market
 Difference between passing off and infringement

 A crucial difference between an infringement and a

passing off action is that in an infringement action, the
Plaintiff need not establish any goodwill or reputation
in the trademark. So as long as the Defendant
commenced use of the mark subsequent to the
Plaintiff’s registration of the mark, the Plaintiff may
restrain the Defendant from using the mark
irrespective of whether the trademark has been used
by the Plaintiff or whether the Plaintiff has garnered
reputation or goodwill under the mark.
 Remedies for Infringement

 The Trade Marks Act, 1999 recognizes both civil and

criminal remedies.

 Civil remedies
In a suit for trademark infringement and/ or passing off,
the right holder looks at both, permanent relief granted
at the end of the suit, and relief to protect interest
while the suit lasts, i.e. interim relief
 Section 135 of the Trade Marks Act, 1999 provides a
non-exhaustive list of reliefs for trade mark
infringement and passing off which include:
a. An injunction
b. Damages or
c. Account of profits
d. Delivery-up
e. Ex parte injunction or any interlocutory order for:
i) for discovery of documents;
ii) preserving of infringing goods, documents or other
evidence which are related to the subject-matter of
the suit
iii) restraining the defendant from disposing of or dealing
with his 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.
 Permanent relief

 Permanent relief is granted by a court at the disposal

of the suit -

1) Injunction –

An injunction is an order directing a party to do an act or

to refrain from doing an act.
An injunction order that directs a party to refrain from
doing something is known as a prohibitory injunction
while an order directing a party to do something is
known as a mandatory injunction.
2. Damages – Classified into 2 categories :

 Compensatory damages: Compensatory damages are

awarded to make the plaintiff whole

The Delhi High Court in Time v. Lokesh Srivastava &

Anr. held that, the award of compensatory damages to
a plaintiff is aimed at compensating him for the loss
suffered by him. In this case, the Defendant was
wrongfully using Time magazine’s trademarks Time,
Time Asia and the ‘Red border’.
 Punitive damages - In the aforementioned case, the Delhi
High Court further held as follows:
“Coming to the claim of Rs. 5 lacs as punitive and exemplary
damages for the flagrant infringement of the plaintiff's trade
mark, this Court is of the considered view that a distinction
has to be drawn between compensatory damages and
punitive damages. The award of compensatory damages to a
plaintiff is aimed at compensating him for the loss suffered
by him whereas punitive damages are aimed at deterring a
wrong doer and the like minded from indulging in such
unlawful activities.”
In this case, it is not only the plaintiff, who has suffered on
account of the infringement of its trade mark and Magazine
design but a large number of readers of the defendants'
Magazine 'TIME ASIA SANSKARAN' also have suffered by
purchasing the defendants' Magazines under an impression
that the same are from the reputed publishing house of the
plaintiff company.
 This Court feels that this approach is necessitated further for
the reason that it is very difficult for a plaintiff to give proof
of actual damages suffered by him as the defendants who
indulge in such activities never maintain proper accounts of
their transactions since they know that the same are
objectionable and unlawful

 Presumption against Defendants that evade

proceeding
Microsoft Corporation vs. Rajendra Pawar & Anr it was held
that:
“Perhaps it has now become a trend of sorts, especially in
matters pertaining to passing off, for the defending party to
evade court proceedings.... ... Judicial process has its own way
of bringing to tasks such erring parties whilst at the same
time ensuring that the aggrieved party who has knocked the
doors of the court in anticipation of justice is afforded with
adequate relief, both in law and in equity. It is here that the
concept of awarding punitive damages comes into
perspective.”
 Exceptions to award of damages Section 135 (3)

a. where in a suit for infringement of a trade mark, the

infringement complained of is in relation to a certification
trade mark or collective mark; or

b. where in a suit for infringement the defendant satisfies the

court—
i) that at the time he commenced to use the trade mark
complained of in the suit, he was unaware and had no
reasonable ground for believing that the trade mark of the
plaintiff was on the register or that the plaintiff was a
registered user using by way of permitted use; and
ii) that when he became aware of the existence and nature of
the plaintiff’s right in the trade mark, he forthwith ceased
to use the trade mark in relation to goods or services in
respect of which it was registered
 Clause c same as clause b for passing-off

3. Accounts of Profit
The Trade Marks Act also provides for rendition of
accounts, i.e. compensation to the Plaintiff which is
equivalent to the defendant’s profits from the infringing
act and/or passing off.

Election between accounts of profit and damages

 There may be a complete overlap between the plaintiff’s

loss and the defendant’s profits from the infringing acts.
For this reason, the Trade Marks Act in Section 135
makes the right holder elect between the relief of
damages and rendition of accounts.
 However, it is possible that in some cases, the loss to the
plaintiff, such as loss to its reputation, may not reflect in the
defendant’s accounts as its profits

 Further, where the plaintiff is incapable of increasing its

production to cater to the defendant’s clientele in case the
defendant is injuncted by a court is another example where
the plaintiff’s loss is not equal to the defendant’s gain from
the infringing act. Punitive damages may come to the aid of
the plaintiff in such cases.

4. Delivery up – Means the defendant will deliver all

infringing goods, including advertising and packaging
material to the plaintiff, such goods are usually destroyed
under court’s supervision. In an interesting case, where
Luxottica had sued a party for violating its trade mark ‘Ray
Ban’, the Defendant donated 500 pieces of unbranded
glasses to the visually disabled
 Interim Relief
In addition to permanent reliefs, a plaintiff may explore
the following types of interim reliefs –

1) Ex parte interim injunction - An ex parte interim

injunction is granted under Order XXXIX Rule 3,
Code of Civil Procedure, 1908. It is required for the
Judge to record reasons for granting an ex parte
injunction.
2) Interim Injunction - The following three factors
need to be considered while granting an interim
injunction:
a) Prima facie case
b) Irreparable harm and injury to the plaintiff if not
granted like reputational harm
c) Balance of convenience (absence will harm
plaintiff more than the presence to the defendant)
3) Anton Piller Order –
The court may appoint a Local Commissioner to execute
a search and seizure order at the Defendant’s
premises. Such orders trace their origin to the English
case Anton Piller KG v Manufacturing Processes
Limited.
Such search and seizure orders aid in preserving
evidence that may be destroyed by the Defendant in
the absence of an order of this nature

4) Mareva Injunction –
A Mareva injunction is an order that freezes the assets
of the Defendant or restrains the defendant from
disposing off their assets during the pendency of suit.
5. Discovery of documents –
A discovery of documents may be sought. It is a process of
making the parties to the case aware of the documents
relevant to the proceedings, both currently or formerly
in possession of the parties. It also involves making
these documents available for inspection where
appropriate.
 Criminal Remedies

 Section 102 provides that a person shall be deemed to

falsify a trade mark who, either
1)
(a) without the assent of the proprietor of the trade mark
makes that trade mark or a deceptively similar mark;
or
(b) falsifies any genuine trade mark, whether by
alteration, addition, effacement or otherwise.

2) A person shall be deemed to falsely apply to goods or

services a trade mark, without the assent of the
proprietor of the trade mark
(a) applies such trade mark or a deceptively similar
mark to goods or services or any package containing
goods;
b) uses any package bearing a mark which is identical
with or deceptively similar to the trade mark of such
proprietor, for the purpose of packing, filling or
wrapping therein any goods other than the genuine
goods of the proprietor of the trade mark.

(3) Any trade mark falsified as mentioned in sub-section

(1) or falsely applied as mentioned in sub-section (2), is
in this Act referred to as a false trade mark.

(4) In any prosecution for falsifying a trade mark or

falsely applying a trade mark to goods or services, the
burden of proving the assent of the proprietor
shall lie on the accused
 Sections 103 and 104 penalize both direct and indirect
infringement.

 Section 103 makes the following acts punishable:

(a) falsification of any trade mark; or
(b) falsely applying to goods or services any trade mark; or
(c) making, disposing of, or having in possession, any
dye, block, machine, plate or other instrument for the
purpose of falsifying or of being used for falsifying, a trade
mark; or
(d) applying any false trade description to goods or
services; or
(e) applying to any goods to which an indication of the country
or place in which they were made or produced or the name
and address of the manufacturer or person for whom the
goods are manufactured is required to be applied under
section 139, a false indication of such country, place,
name or address; or
f) tampering with, altering or effaceing an
indication of origin which has been applied to any
goods to which it is required to be applied under
section 139; or
(g) causeing any of the things above-mentioned to be
done,

shall, unless he proves that he acted, without intent to

defraud, be punishable with imprisonment for a term
which shall not be less than six months but which
may extend to three years and with fine which
shall not be less than fifty thousand rupees but
which may extend to two lakh rupees,
Provided that the court may, for adequate and special
reasons to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than six
months or a fine of less than fifty thousand rupees.
 Sec – 104

Any person who sells, lets for hire or exposes for sale, or
hires or has in his possession for sale, goods or things,
to which any false trade mark or false trade description
is applied, shall unless he proves that-

a) he took all reasonable precautions against

committing an offence
b) He gave all the information to the prosecutor
c) He has acted innocently

be punishable with imprisonment for a term which shall

not be less than six months but which may extend
to three years and with fine which shall not be less
than fifty thousand rupees but which may
extend to two lakh rupees