INDIA Law and Practice Contributed by: Mohit Goel, Sidhant Goel, Aditya Goel and Mehr Bajaj, Sim and San, Attorneys at Law
2.6 Trade Mark Enforcement and Remedies Trade mark infringement in India is governed prin- cipally by Section 29 of the Trade Marks Act, 1999. Infringement occurs where a registered trade mark, or a deceptively similar mark, is used without authorisa- tion in relation to identical or similar goods or services, resulting in a likelihood of confusion, association or deception amongst consumers. Dilution is recognised under Section 29 (4) and pro- tects reputed marks against use that takes unfair advantage of, or is detrimental to, their distinctive character or reputation, even in relation to dissimilar goods or services. Passing off protects unregistered marks and requires proof of goodwill, misrepresentation and damage. The distinction between infringement and passing off was established by the Supreme Court in Kaviraj Pan- dit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories (1965), while Cadila Health Care Ltd . v Cadila Pharmaceuticals Ltd . (2001) remains the lead- ing authority on consumer confusion. Trade mark disputes are heard by Commercial Courts, District Courts and High Courts exercising commer- cial jurisdiction, with specialised IPDs established in certain High Courts. India has evolved into a robust enforcement jurisdic- tion. Civil remedies include: • interim and permanent injunctions; • Anton Piller orders; • Local Commissioner-led search and seizure opera- tions; • delivery-up and destruction of infringing goods; • damages or account of profits; and • dynamic injunctions against evolving online infringement and rogue websites. Criminal remedies are available for counterfeiting and falsification of trade marks under Sections 103–105 of the Act. Courts have also shown an increasing willing- ness to award substantial damages, exemplified by the Delhi High Court’s award of approximately INR340 crore (USD39 million) in Lifestyle Equities CV v Ama-
Costs (Indicative) Official fees are prescribed under the Trade Marks Rules, 2017 and are generally modest by international standards. Concessional fees are available for indi- viduals, start-ups and small enterprises, while higher fees apply to other applicants. 2.4 Term, Use and Maintenance A registration is valid for ten years from the date of application and is renewable indefinitely for succes- sive ten-year periods. A six-month grace period per- mits late renewal upon the payment of a surcharge. A removed mark may be restored within one year. Under Section 47 of the Patents Act, 1970, a mark may be removed on grounds of non-use for a continu- ous period of five years and three months. Genuine use is interpreted qualitatively; even limited use may suffice if it reflects a real commercial intention. Mere registration does not maintain indefinite rights absent active commercial exploitation. 2.5 Trade Mark Rights and Limitations Registration under Section 28 (1) of the Trade Marks Act, 1999 confers the exclusive right to use the mark in relation to registered goods or services, and to obtain relief under Section 29. Key defences include: • descriptive fair use (Section 30 (2)(a)) – indica- tions regarding the kind, quality, quantity, intended purpose or geographical origin in accordance with honest commercial practices; • referential use (Section 30 (2)(d)) – use to identify the registered proprietor’s goods or services; • exhaustion (Sections 30 (3) and 30 (4)) – further dealings in genuine lawfully acquired goods do not constitute infringement unless goods are materially altered, as confirmed in Kapil Wadhwa v Samsung Electronics (2012); • own name defence (Section 35) – honest use of one’s own name; • prior user rights (Section 34) – a continuous prior user cannot be restrained, as affirmed in S . Syed Mohideen v P . Sulochana Ba (2016); and • acquiescence (Section 33) – enforcement may be limited where the proprietor has knowingly acqui- esced for five years.
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