INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
original jurisdiction (ie, the High Courts of Delhi, Mumbai, Chennai and Kolkata). Legal practitioners (registered under the Central Advocates Act 1961) or registered trade mark agents can represent parties. Parties can also present their cases in person (Section 145, Trade Marks Act 1999). Costs of Litigating Infringement Actions Investigation fees, attorneys’ fees and expens - es, notarisation fees, translation fees and court fees are all examples of usual costs. After a first-instance decision, litigation costs, includ - ing attorneys’ fees, are recoverable. However, there is no guarantee that a party against whom an injunction is obtained will have to bear the expenses of litigation. The court has complete discretion over whether or not to award expens - es. Foreign trade mark and copyright owners can bring infringement claims in India. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants Section 142 of the Trade Marks Act 1999 pro - tects a person from threats of infringement lawsuits by enabling courts to declare that the claims of infringement and breach of rights are unjustified and groundless. 7.7 Small Claims No response is available for this jurisdiction. 7.8 Effect of Trade Mark and Copyright Office Decisions The development of trade mark law in India is heavily inspired by judicial pronouncements. High Court decisions (with appellate and writ jurisdiction) bind lower courts in their respec -
tive jurisdictions and are an important source of trade mark law. Decisions of the TMO also have a major role to play. 7.9 Counterfeiting and Bootlegging As with other trade mark policies, the enforce - ment of trade mark counterfeiting laws serves to safeguard potential consumers. The Customs Act 1962, read with the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007, makes it illegal to import goods that infringe on IP rights. Because counterfeit goods are intrinsically prohibited under the Customs Act, they have the authority to halt the clear - ance of goods on their own initiative, as well as where there are prima facie, evident or reason - able grounds to believe that the import of spe - cific goods may infringe on IP rights. Trade mark counterfeiting is not defined or addressed in the Trade Marks Act 1999. How - ever, Section 102 of the Act, which deals with “falsifying and falsely applying trade marks”, covers such counterfeiting. In addition to trade mark infringement and pass - ing off activities, a trade mark owner may seek criminal action against trade mark counterfeiting (civil actions). Sections 103 and 104 of the Trade Marks Act 1999 make it illegal to use and sell goods and services under false trade marks. The sentence might range from six months to three years in prison, with a fine. Further, even a quia timet action can be taken against counterfeits to restrain them in case of an anticipated risk.
192 CHAMBERS.COM
Powered by FlippingBook