INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
are granted in trade mark litigation in one of three ways, as detailed below: • Actual/compensatory damages are based on the actual loss suffered/actual profits gained as a result of the infringement and must be proven by the claimant. • Punitive damages, as defined under the Act, are issued in the form of fines. Where the court decides that the amount of compensa - tory damages awarded is not appropriate to the magnitude of the defendant’s actions, punitive damages are issued. In such cases, the court awards such damages in addition to compensatory damages that have previously been calculated. • Token/minor damages are awarded in the event that a dispute is resolved quickly. 10.3 Attorneys’ Fees and Costs Court expenses, length of arguments, duration of trial, use of senior lawyers, and other factors all affect costs. After a first-instance decision, litigation costs, including 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/impose costs of the proceedings. Courts sometimes require parties to give an esti - mate of costs they intend to incur throughout trial and subsequent phases of the case, since costs play such an important role in defining the parties’ strategy to litigation. This also makes determining the amount of fees to be paid easier for the court. 10.4 Ex Parte Relief Even if a defendant has not been given prior notice of the suit or the claimant’s grievance,
a temporary ex parte injunction can be granted (Section 135(2), Trade Marks Act 1999). Claimants obtain ex parte injunctions only in exceptional situations and not as a matter of right. The court must be convinced that the claimant’s interests will be severely harmed if the request is denied. The behaviour of a claimant, on the other hand, is a key aspect in assess - ing whether or not an injunction can be granted. Temporary injunctions are likely to be denied if the claimant takes too long to allege a violation of its rights. 10.5 Customs Seizures of Counterfeits or Parallel Imports In accordance with the TRIPS Agreement, India has established the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007, which authorise customs officers to enforce IP rights over imported goods. Customs officers can enforce IP rights over imported goods under these Rules. The Rules provide a step-by-step process for rights-holders to register their IP with customs officials. This registration imposes an administrative duty on customs to protect the rights-holders against violation of their IP rights. Rights-holders can also seek remedies aimed at preventing unlawful product imports and exports. The Customs Act 1962 recognises the government’s authority to prohibit the import and/or export of products in order to preserve rights protected by the Trade Marks Act 1999.
11. Appeal 11.1 Appellate Procedure Filing an Appeal
An appeal can be filed by any person aggrieved by the decision or order of the Registrar of Trade
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