INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
• an interlocutory, temporary or ad interim injunction; • a permanent or perpetual injunction; • a Mareva injunction (freezing injunction); • an Anton Piller order; • a John Doe order; • damages or accounts of profits; and • delivery up and destruction. Criminal and administrative reliefs are also avail- able under the Trade Marks Act 1999. Section 29 of the Trade Marks Act 1999 provides an exhaustive list of situations in which a regis - tered mark can be infringed. Similarly, unregis - tered trade marks are protected as part of India’s common law regime. An action for passing off can always be instituted against the misuse of an unregistered trade mark. Section 27 of the Trade Marks Act 1999 specifi - cally reinforces this common law remedy by stat - ing that the right to invoke a claim for passing off remains undisturbed by the statute. 7.3 Factors in Determining Infringement Section 29 of the Trade Marks Act 1999 gives a comprehensive list of scenarios in which a trade mark can be violated. One of the essential requirements for infringement is that the infring - ing mark is used in the course of business by a third party. Further tests for infringement include the follow - ing: • use of an identical or deceptively similar mark on goods or services that are the same as those covered by the scope of the former trade mark’s registration; • use of an identical or similar mark on goods and services that are identical or similar to
the goods or services associated with the registered trade mark, in a way that is likely to confuse the public into thinking that the origi - nal mark and the offending mark are associ - ated with one another; • use of a mark, even in relation to goods or services which are not covered in the scope of the registration, provided that the regis - tered trade mark has a reputation in India – the reputation also must be such that misuse by the third party denigrates the distinctive - ness of the mark; and • use of mark, or a part of the mark, as part of the corporate name or trading name of an entity. 7.4 Prerequisites and Restrictions to Filing a Lawsuit While there are no mandatory requirements before initiating a lawsuit, issuing a demand letter/cease-and-desist notice to a suspected infringer might assist in stopping the infringe - ment without resorting to litigation, thus accel - erating the process. Before taking action, it is also a good idea to perform necessary investigations. Section 142 of the Trade Marks Act 1999, on the other hand, protects a person from threats of infringement lawsuits by allowing courts to declare that the claims of infringement and breach of rights are unjustified and groundless. 7.5 Lawsuit Procedure In India, lawsuits for infringement and passing off, among other claims, can be filed before Dis - trict Courts and cannot be heard in any court lower than a District Court. Further, a suit relating to trade mark dispute can also be brought before a High Court having
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