Civil and Criminal Remedies Analysis

PROJECT ON
CIVIL AND CRIMINAL REMEDIES: A

COMPARATIVE ANALYSIS
Project Submitted To
Ms.Kuhu Tiwari
Faculty- Intellectual Property Rights
Submitted By- Akif Abidi

VII Semester
B.A.LL.B. (Hons.)
ROLL NO. 14
Submitted On- 09th October 2014
____________________________________________________________________________________________________________________________________________________________________________________________________________________________________
HIDAYATULLAH NATIONAL LAW UNIVERSITY,

RAIPUR, CHHATTISGARH.
ACKNOWLEDGEMENT
| Page
PROTECTION
OF CHARACTERS UNDER THE COPYRIGHT REGIME
This is a sincere expression of gratitude to all those who have helped me complete
this project and who offered every possible help to carry forward the intense
magnitude of research involved.
I am indebted to my faculty advisor Ms. Kuhu
Tiwari for allowing me to work upon this extremely relevant topic.

I am also thankful to all my friends and family members who have given valuable
suggestions pertaining to the topic and have been a constant source of help and
support without which completion of this project to a refined degree would have
been an uphill task.
Thank You.
AKIF ABIDI
Roll no 14
DECLARATION
INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)
2 | Page
PROTECTION
This is to certify that project report titled CIVIL
AND
CRIMINAL REMEDIES : A
COMPARATIVE ANALYSIS which is submitted by me comprises only my original

work and due acknowledgment has been made in the text to all other
materials used.
Akif Abidi
METHODOLOGY
3 | Page
PROTECTION
The method of research for the project is doctrinal and the author has
basically relied on the secondary sources of research like books, internet and
other such resources.
TABLE OF CONTENTS
4 | Page
PROTECTION
TITLE
LIST
OF
PAGE NO.
ABBREVIATIONS & ACRONYMS
INTRODUCTION
ENFORCEMENT OF TRADEMARK RIGHTS
16
CIVIL AND CRIMINAL REMEDIES UNDER COMMON 24

LAW
CRIMINAL
IMPLICATIONS
OF
TRADEMARK 33
INFRINGEMENT
CHANGING SCENARIOS
36
CONCLUSION
39
BIBLIOGRAPHY
41
LIST OF ABBREVIATIONS& ACRONYMS

5 | Page
PROTECTION
&.and
A.C. ...Law Reports, Appeal Cases (Third Series)
AIR...All India Reporter
All. ER....All England Reporter
All.....Allahabad
ALR..American Law Review
App Div...Appellate Division
App.Appellate
Beav....Beavans Rolls Court Report
Bom..Bombay
Bom..Bombay
C.L.RCommon Law Review
CalCalcutta
Cas.....Case
Cf.Cross Reference
Ch D...Chancery Division
Ch..Chapter
Cir....Circular
CLJ........Common Law Journal
Co...Company
Comm........Commentary
6 | Page
PROTECTION
CorpCorporation
Del.Delhi
DeptDepartment
DLT....Delhi Law Times
E.C.R. ..........European Council Review
E.I.P.R..European Intellectual Property Review
F. Supp...Federal Supplement
F.S.R...Fleet Street Reports
H.LHouse of Lords
Hrs. ..Hours
IncInclusive
IST.......Indian Standard Time
JIPR..Journal of Intellectual Property Rights
K.B.......Kings Bench
L Ed...United States Supreme Court Reports, Lawyers Edition
L. R.Law Report
L.Q.R. ......London Quarterly Review
Ltd. ...Limited
N.J....New Jersey Reports
NYS2d...New York Supplement, 2nd Series
Pvt.....private
7 | Page
PROTECTION
Q.B......Queens Bench
Rep........representative
S CtSupreme Court Reporter(United States)
s.....Section
SC....Supreme Court
SCC...Supreme Court Cases
SCR..Supreme Court Reporter
Sept. .......September
Supp.....Supplementary
v.....versus
W.L.R...Wales Law Review
WL..Westlaw Transcripts
www..world wide web
Wyo...Wyoming Reports
INTRODUCTION

8 | Page
PROTECTION
Indias obligations under the TRIPS Agreement for protection of trademarks, inter alia, include
protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of
registration, abolition of compulsory licensing of trademarks, etc.
With the globalization of trade, brand names, trade names, marks, etc. have attained an immense
value that require uniform minimum standards of protection and efficient procedures for
enforcement as were recognised under the TRIPS. In view of the same, extensive review and
consequential amendment of the old Indian Trade and Merchandise Marks Act, 1958 was carried
out and the new Trade Marks Act, 1999 was enacted. The said Act of 1999, with subsequent
amendments, conforms to the TRIPS and is in accordance with the international systems and
practices.
The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass
applications, increasing the term of registration of a trademark to ten years as well as recognition
of the concept of well-known marks, etc. The Indian judiciary has been proactive in the
protection of trademarks, and it has extended the protection under the trademarks law to Domain
Names as demonstrated in landmark cases of Tata Sons Ltd. v. Manu Kosuri & Ors1, and
Yahoo Inc. v. Akash Arora2.
India, being a common law country, follows not only the codified law, but also common law
principles, and as such provides for infringement as well as passing off actions against violation
of trademarks. Section 135 of the Trade Marks Act recognises both infringement as well as
passing off actions.
Well-known Trademark and Trans Border Reputation

1 [90 (2001) DLT 659]
2 [1999 PTC 201]

9 | Page
PROTECTION
India recognises the concept of the Well-known Trademark and the Principle of Trans Border
Reputation. A well-known Trademark in relation to any goods or services means a mark that has
become so to the substantial segment of the public, which uses such goods or receives such
services such that the use of such a mark in relation to other goods and services is likely to be
taken as indicating a connection between the two marks.
Trans Border Reputation concept was recognised and discussed by the Apex Indian Court in the
landmark case of N. R. Dongre v. Whirlpool3. The Trademark WHIRLPOOL was held to
have acquired reputation and goodwill in India. The Mark WHIRLPOOL was also held to have
become associated in the minds of the public with Whirlpool Corporation on account of
circulation of the advertisements in the magazines despite no evidence of actual sale. Hence, the
trademark WHIRLPOOL was held to have acquired trans-border reputation which enjoys
protection in India, irrespective of its actual user or registration in India.
Intellectual property (IP) is the term that describes the ideas, inventions, technologies, artworks,
music and literature, that are intangible when first created, but become valuable in tangible form
as products. Intellectual properties are the creations of the mind: inventions, literary and artistic
works, and the symbols, names, and designs used in commerce. The rationale for the
establishment of a legal framework on IPRs is that it is a signal to society that creative and
inventive ideas will be rewarded.
IP system is being integrated into the knowledge economy, and posing interesting challenges to
industry, government policy-makers, scholars, and researchers in both developed and developing
countries.
The IPRs and India It is a well-known fact that the role of Intellectual Property (IP) protection
has expanded at an unprecedented pace during the last two decades. In the process IP rights have
been modified or new provisions have been created in order to cover new areas of Science &
Technology, such as Information Technology, Biotechnology, and now service sector. It may be
observed that World Trade Organization (WTO) agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPs) has extended minimum standards for IP Protection globally.
There are continuing discussions in World Intellectual Property Organization (WIPO) aimed at
3 (1996) 5SCC 714

10 | P a g e
PROTECTION
further harmonisation of the Patent system. Moreover, agreements between Developed and
Developing countries also include mutual commitments to implement IP regimes that go beyond
TRIPS minimum standards. Hence,
India is under pressure to increase the levels of IP protection in our own regime, based on
standards in developed countries. In one dimension it is observed that IPRs help stimulate
economic growth and reduce poverty in developed countries, but the same concept may not do
the same in developing countries. However, IP rights can do little to stimulate inventions in
countries like India. The ownership of Intellectual property is a crucial issue that impacts market
position and profitability of industries. India is realizing this fact and this is evident from Indias
number 3 position in Patent Cooperation Treaty (PCT) filings and its highest growth rate of 50%
in the segment of developing countries. The changes in the IPR regime have necessitated
technological self-reliance, as borrowing of technology from developed countries will no longer
be economically viable. Our country is rich in genetic resources and traditional knowledge,
which are of great value to us and to the world at large but we lack desired efforts to protect and
exploit them. Historically, developed countries used IP protection as a flexible instrument to help
promote their industrialisation. Strong evidence suggests that certain types of companies in
developed countries, particularly in the field of pharmaceutical industry consider IPR as essential
in promoting essential.
Intellectual property (IP) is the term that describes the ideas, inventions, technologies, artworks,
music and literature, that are intangible when first created, but become valuable in tangible form
as products. Intellectual properties are the creations of the mind: inventions, literary and artistic
works, and the symbols, names, and designs used in commerce. The rationale for the
establishment of a legal framework on IPRs is that it is a signal to society that creative and
inventive ideas will be rewarded.
IP system is being integrated into the knowledge economy, and posing interesting challenges to
industry, government policy-makers, scholars, and researchers in both developed and developing
countries
IP as a general term refers to the subject matter of the laws that give rise to proprietary interests
in creations of the mind. That is, it refers to intangibles that arise and derive their intrinsic value
out of innovative or creative activities. The various tools of IPR that are used to protect
11 | P a g e
PROTECTION
innovations are Copyrights, Industrial Designs, Data Protection, Geographical Indications, Patent
and Trademark.
Copyright
It is concerned with Protection of creative works that are musical, literary, artistic, lectures,
plays, art reproductions, models, photographs, computer software, etc. It is valid for the lifetime
of the author and minimum 50 years after the death of the author. Copyright Issues are handled
by Department of Book Promotion & Copyrights, Ministry of Human Resource Development. It
is an important area of IP because it is one of the means of promoting, enriching and
disseminating the national cultural heritage. India has a very strong and comprehensive copyright
law. The 1999 amendments have made the Copyright Act fully compatible with Trade-Related
Aspects of Intellectual Property Rights (TRIPS) Agreement. With these amendments the Indian
Copyright Law has become one of the most modern copyright laws in the world. Moreover, India
is signatory to both the International copyright conventions i.e. the Berne Convention of 1886
and Universal Copyright Convention of 1952. India is also an active member of World
Intellectual Property Organization (WIPO) and United Nations Educational, Scientific and
Cultural Organization (UNESCO). Countries like India offer an abundance of cultural heritage to
the world. These can be protected, within the framework of copyright legislation. Such
protection is called the protection of neighbouring rights.
Patent
It pertains to pragmatic innovations and aims to protect inventions that are novel, non obvious
and useful. Patents are given only for inventions. Inventions are solutions to specific problems in
the field of technology. An invention may relate to a product or a process. Patents have a term of
20 years from the date of filing a complete specification. In order to get a patent for an invention,
the invention has to be patentable. India is most concerned for product patents, which bring food,
drugs, and medicinal inventions into the purview of palatability.
Trademark
12 | P a g e
PROTECTION
It is related to commercial symbols and concern to Protect distinctive marks such as words/signs
including personal names, letters, numerals, figurative elements (logos); devices; visually
perceptible two or three dimensional signs/shapes or their combinations; audible signs (sound
marks) e.g. the cry of an animal or laughing sound of a baby; olfactory marks (smell marks), use
of certain fragrance.
Some countries have also registered sounds and distinctive smells as trademarks. It can be
perpetually renewed from time to time. Trademarks started to play an important role with the
onset of industrialisation, and they have since become a key factor in the modern world of
international trade and market-oriented economies.
The latest amendments also include the concept of service marks. Service marks are trademarks
used in the services sector like hotels, laundry, education, airlines, and IT enabled services.
Interestingly, India has one of the most well advanced trademarks laws. India has taken steps
towards fulfilling its international obligations. Consequently, the Indian trademark law has now
become fully compatible with the International standards laid down in the TRIPs Agreement.
The New Act primarily consolidates and amends the old Trade & Merchandise Marks Act, 1958
and provides for better protection of goods and services. Industrial Designs: It protects novel
non-functional features of shape, configuration, pattern, ornamentation or composition of lines or
colours, applied to any article either two or three dimensional or in both forms by any industrial
process or means whether manual, mechanical or chemical, separate or combined which in the
finished article appeal to and is judged solely by the eye. This registration has a specific term
(initially 10 years and renewable for another term of 10 years).5
Geographical Indications (GI)
Geographical Indications of Goods are defined as that aspect of industrial property, which refers
to the country or to a place of origin of that product. Typically, such a name conveys an
4 JayashreeWatal, Intellectaul Property in Indian Agriculture, sourced from
www.icrier.org/pdf/jayashree
5 Kamil Idris, Intellectual Property : A Power Tool for Economic Growth , The Process of Economic
Growth, sourced from www.wipo.int/about-wipo/en/dgo/wipo_pub_888/pdf/wipo_pub_888_chapter

13 | P a g e
PROTECTION
assurance of quality and distinctiveness of the product, which is essentially attributable to the
fact of its origin in that, defined geographical locality, region or country. The term is initially for
a period of 10 years and can be renewed perpetually.
Before the TRIPs, GI was not protected in India. Since then, the enactment of a separate law the
Geographical Indication of Goods (Registration & Protection) Act, 1999 addressing GI has
given the necessary impetus to the effort of Indian exporters to protect GI attached to the goods.
GI could also be used, in certain instances, for products that incorporated traditional knowledge
such as Indian NEEM, Tulsi, Haldi, Jamun, Kesar and so on. Such issues of GI are handled by
Department of Industrial Policy & Promotion, Ministry of Commerce & Industry. GI can become
a very powerful competitive tool for the communities to collectively get involved in the
manufacturing and marketing of agricultural goods, foodstuff, handicrafts, traditional arts, etc. In
India this area of IPR is not fully developed and exploited.6
Data Protection
Concerning pharmaceutical and agricultural test data, it is related to Protection of undisclosed

information such as Strategies and Trade secrets. Discussion on various components/Tools of
IPR that are used to Protect innovations wont be complete without a discussion on the way the
ideas have converted into intellectual property and the way they can be efficiently managed the
process flow of Mind to Market.7
Relief in the form of damages is one of the remedies available in claims of tortious liability.
Damages are the sum of money, which a person wronged, is entitled to receive from the
wrongdoer as compensation for the wrong. The general rule in fixing the sum to be given as
damages is that, it should as close as possible to that amount which will put the injured party in
6 www.questia.com/PM.qst?a=o&se=gglsc&d=5001976550
7 The Patents Act, 1970 as amended by Patents (Amendment) Act 2005, Commercial LawPublisher (India) Private
Ltd., 2005

14 | P a g e
PROTECTION
the same position as he would have been in, if he had not sustained the wrong for which he is
getting compensation.8
Usually, damages are remedial rather than preventive or punitive. However, in a few instances,
punitive damages in addition to compensatory damages may be awarded. Accordingly, there are
three main categories of damages recognized under law:
1. Compensatory damages
2. Nominal damages, and
3. Punitive damages.
Compensatory Damages
Compensatory damages are awarded with an intention of putting the party who has suffered
injury in the same position as he would have been had the tortious act not been committed. In
case of compensatory damages, the defendant will be liable to the plaintiff for all the natural and
direct consequences of the defendants wrongful act but not for remote consequences. This is in
conformity with the earliest rationale behind damages, as conceived under the law of torts.
Nominal Damages
Nominal damages are awarded to the aggrieved party who is able to establish that he or she has
suffered an injury caused by the wrongful conduct of a wrongdoer, but cannot offer proof of a
loss that can be compensated. The amount awarded is generally a small, symbolic sum.
Punitive Damages
Punitive damages are awarded to the aggrieved party in addition to compensatory damages when
the defendants conduct is willful, malicious and oppressive. The award of punitive damages is at
the discretion of the courts. In most jurisdictions, punitive damages are awarded, (i) to punish
one guilty of a willful wrong; (ii) to deter the defendant and potential offenders from further
misconduct; and (iii) as an approximate award to plaintiff of his expenses of litigation.9
8 Pillai Atchuthen P S, Law of Tort, 8th edn (Eastern Book Company, Lucknow), 1987, p. 301, 435
9 http : //legaldictionary.thefreedictionary.com / damages (15 June 2010).

15 | P a g e
PROTECTION
ENFORCEMENT OF TRADEMARK RIGHTS
Under the Trade Marks Act, both civil and criminal remedies are simultaneously available
against infringement and passing off.
Infringement of trademark is violation of the exclusive rights granted to the registered proprietor
of the trademark to use the same. A trademark is said to be infringed by a person, who, not being
a permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark
without the authorization of the registered proprietor of the trademark. However, it is pertinent to
note that the Indian trademark law protects the vested rights of a prior user against a registered
proprietor which is based on common law principles.
Passing off is a common law tort used to enforce unregistered trademark rights. Passing off
essentially occurs where the reputation in the trademark of party A is misappropriated by party
B, such that party B misrepresents as being the owner of the trademark or having some
affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of
passing off, registration of a trademark is irrelevant.
Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action
against violation of trademarks in India. In India, a combined civil action for infringement of
trademark and passing off can be initiated.
Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can
be initiated against the infringers. Such enforcement mechanisms are expected to boost the
protection of marks in India and reduce infringement and contravention of trademarks.
Relief granted by Courts in Suits for Infringement and Passing off
16 | P a g e
PROTECTION
The relief which a court may usually grant in a suit for infringement or passing off includes
permanent and interim injunction, damages or account of profits, delivery of the infringing goods
for destruction and cost of the legal proceedings.
The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the
suit may also include order for:
a) Appointment of a local commissioner, which is akin to an Anton Pillar Order, for
search, seizure and preservation of infringing goods, account books and preparation of
inventory, etc.
b) Restraining the infringer from disposing of or dealing with the assets in a manner which
may adversely affect plaintiffs ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.
Offences and Penalties

In case of a criminal action for infringement or passing off, the offence is punishable with
imprisonment for a term which shall not be less than six months but which may extend to three
years and fine which shall not be less than INR 50,000 but may extend to INR 200,000.
In India, trademark rights may be acquired through:
use in relation to goods or services;
registration; or
assignment/transmission.
The meaning of the term use in relation to trademarks has been developed through case law.

17 | P a g e
PROTECTION
In Hardie Trading Ltd v Addisons Paint & Chemicals Ltd10 the Supreme Court held that
use of a trademark is not limited to use on goods sold. It also extends to advertisements.
Further, in Dongre v Whirlpool Corporation11 the court held that
the actual presence of the goods or the actual use of the mark in India is not mandatory and it
would suffice if reputation and goodwill in respect of the mark have accrued in India through
advertising or other means.
Enforcement of trademark rights
The Trademarks Act 1999 provides rights holders with both civil and criminal remedies against
infringement or unauthorized use of a mark. Other remedies are available to rights holders under
the Customs Act 1962, which deals with import/export of goods and confiscation of infringing
materials by the relevant authorities.
Civil remedies
Depending upon whether a trademark is registered, pending registration or unregistered, civil
proceedings can be initiated either under the tort of passing off or for statutory infringement
under the Trademarks Act.
Civil proceedings in India are governed by the Code of Civil Procedure 1908. The general rule is
that a suit can be filed in a court:
where either the defendant or one of the defendants resides or carries on business or
personally works for gain; or
where the cause of action arises, wholly or in part.
Under the old Trademarks & Merchandise Marks Act 1958, the appropriate court for a suit was
determined by the location of the defendant. However, Section 134(2) of the 1999 act allows a
10 2003 (27) PTC 241 (SC)

11 1996 (16) PTC 583

18 | P a g e
PROTECTION
rights holder to file a suit for trademark infringement in the court where the registered proprietor
resides or carries on business or personally works for gain.
A court can grant the following relief under a civil suit:
injunctions;
damages or accounts for profits; and
delivery up of the infringing labels and marks.
Indian courts regularly grant Anton Piller, John Doe and, occasionally, Mareva injunctions, and
may appoint court commissioners to inspect a defendants premises, as well as seize and seal
infringing goods.
When considering applications for ex parte, interim orders, Indian courts are guided by:
the balance of convenience;
whether the plaintiff will suffer irreparable harm should the order not be issued; and
whether there exists a prima facie case.
In Wander Ltd v Antox India P Ltd12, the Supreme Court observed that:
The object is to protect the plaintiff against injury by violation of his rights for which it could
not adequately be compensated in damages recoverable in the action if the uncertainty were
resolved in its favour at the trial.
In the same case the court further observed that:
The need for such protection must be weighed against the corresponding need for the defendant
to be protected against injury resulting from its having been prevented from exercising its own
legal rights for which it could not be adequately compensated. The court must weigh one need
against another and determine where the balance of convenience lies.
12 1990 Supp (1) SCC 727

19 | P a g e
PROTECTION
In Patel v Shah13 the Supreme Court made the following observations with regard to actions for
passing off:
it is usual, rather than essential, to seek a temporary injunction;
proof of actual damage is not essential, likelihood of damage is sufficient; and
an absolute injunction can be issued restraining the defendant from using or carrying on
business under the plaintiffs distinctive trademark.
Limitation/delay
Since passing off or trademark infringement usually involves a series of acts, each infringing act
provides a fresh cause of action. Thus, the general rule of limitation, which provides that a
complaint must be filed within three years of the date upon which the cause of action first arose,
does not apply in such cases. However, prompt action by rights holders will help to establish the
seriousness of a claim in the eyes of the court.
In Midas Hygiene Industries P Ltd v Bhatia14, the Supreme Court held that:
in cases of infringement either of trademark or of copyright normally an injunction must
follow. Mere delay in bringing the action is not sufficient to defeat grant of injunction in such
cases The grant of injunction also becomes necessary if it prima facie appears that the
adoption of the mark itself was dishonest.
Criminal remedies
The Trademarks Act provides for criminal remedies against the falsification or false application
of a trademark and the use of false trade descriptions. Criminal sanctions include imprisonment
for a term ranging between six months and three years, and/or fines of between Rs50,000 and
Rs200,000.
13 (2002) 3 SCC 65
14 (2004) 3 SCC 90

20 | P a g e
PROTECTION
Any police officer above the rank of deputy superintendent, if he or she is satisfied that a
trademark offence has been, is being, or is likely to be, committed, has the power to search and
seize infringing articles without warrant. Such an officer is empowered to seize not only the
offending goods, but also dies, blocks, machines, plates and other instruments or equipment
involved in committing the offence.
However, before making the search and seizure, the officer is required to obtain the opinion of
the registrar of trademarks on the facts involved in the offence. Such requirement has been
criticized for causing unwarranted delays and can be bypassed by filing a complaint with the
magistrate to obtain directions to investigate and conduct search and seizure operations against
the infringer(s) (whether known or unknown).
Border control measures
Rights owners can now record their registered trademarks with the customs authorities under the
Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 notified under the
Customs Act 1962.
These guidelines authorize customs officials to seize infringing goods at the border without the
need for a court order. Under these rules, the rights holder may give notice in writing of
suspected infringing goods to the commissioner of customs or any other customs officer
authorized by the commissioner at the port of import requesting the suspension of clearance of
the goods.
Provided the registration remains valid, the customs authorities will prevent the importation of
goods infringing that mark. Customs authorities have the power to suspend the clearance of
prohibited goods either on information received by the rights holder or on their own initiative,
provided they have prima facie evidence or reasonable grounds to believe that the imported
goods infringe the recorded mark.
These rules also allow for destruction of goods or disposal outside the normal channels of
commerce after a determination that the goods infringe the recorded trademark and when no
legal proceeding is pending in relation to such determination. They also prohibit the re-

21 | P a g e
PROTECTION
exportation of the infringing goods in an unaltered state. Choosing the correct enforcement
strategy
Enforcement measures should be based on the results of an efficient investigation, as this is
critical to ascertain the existence of a prima facie case, likely defences and important details such
as:
the extent of the infringers right to the use of a potentially infringing trademark and
whether such use is in good faith;
the extent and duration of the infringing activity;
the position of the suspected infringer within the distribution network (ie, manufacturer,
packer, wholesaler, importer or retailer);
the identity of any connected parties; and
the financial standing and assets of the infringer.
The choice of civil and/or criminal remedies also depends upon the location and nature of the
infringing activities. If, for instance, piracy is found to be institutionalized in a market complex,
civil proceedings may be ineffective in terms of cost as well as results, given the organized
nature of the infringers.
It is worth noting that not all courts in India may be inclined to grant ex parte injunction or
seizure orders. Thus, careful selection of venue and the nature of the action, including
considerations as to the rights holders ability to control or exit the litigation, will play an
important role in determining the success of a campaign.
While at first flush criminal action may appear attractive given the tough remedies available,
such as seizure, arrest, detention of goods and participation of the defendant in hearings by force
of law, various factors weigh against this type of action. These include the following:
lack of IP awareness at prosecution and law enforcement level, making it exceptionally

difficult to prove IP infringement, often resulting in acquittals;
corruption;
22 | P a g e
PROTECTION
in the case of a criminal prosecution, the rights holder must ensure the availability of the
complainant in whose name the action was filed, along with investigators/witnesses, for
the duration of the proceedings, which may take anything between three and six years;
and
the complicated exit mechanisms for complainants (the first information report the
complaint filed by the IP owner cannot be withdrawn during magisterial court
proceedings; instead, it must be quashed by the local High Court).
Although specialized IP enforcement units have been set up in many states to deal with cases of
IP infringement, such units have not proved very effective and have made no real headway. An
enforcement strategy ultimately cannot ignore the importance of internal checks and balances to
prevent overspills from licensed manufacturing units in India.
Moreover, rights holders must apply authentication devices, such as holograms, and innovative
packaging methods on original products to thwart infringement.
The best strategy is to take a layered approach to enforcement. Large-scale civil and criminal
actions against the main sources of infringement should be complemented by the use of cease
and desist letters and public notices to propagate a zero-tolerance stance. The deterrent effect of
such policy can be bolstered by border control measures and coordination with law enforcement
officials to encourage them to investigate leads provided by the IP rights owner. Lastly, seeking
public apologies from infringers helps to pressurize them into looking at alternative business
models.
While improvements to the enforcement regime are needed, a carefully planned enforcement
strategy can achieve results in India.
Judges in civil cases have the right to order injunctions on those that commit trademark
infringement. The defendant must follow through with this remedy. The defendants must sign,
under oath, the plan of action they will take to remove the infringed trademark from wherever
they were using it. The report detailing the plan to remove the infringed trademark must be
completed and returned to the court within thirty days, or any other length of time set by the
23 | P a g e
PROTECTION
judge. Those who violate the injunction will be charged with contempt of court. The court also
has the right to seize any property relating to the trademark infringement case.
Remedies for Violation of Rights
Remedies for trademark infringement may include lost profits, damages and attorney fees. When
a violation of registered trademarks takes place and it is believed to have been an intentional
infringement, a judge may award a plaintiff money from the defendant regarding any lost profits
resulting from the infringement. If the infringement damaged the public perception of a company
because of the actions of the infringing party, monetary damages can be awarded for that action
as well.
The cost of court action may be awarded when factoring in the losses of the plaintiff and gains
made by the defendant. The monetary value awarded to the plaintiff is typically more than the
amount gained by the defendant but cannot exceed three times the sum of all illegally obtained
profits. In some cases, the plaintiff is asked to pay some of their own court fees despite winning
the suit against the defendant. If a defendant tries to pose as the plaintiff using a counterfeit
marking, the sum of all profits shall be multiplied by three and awarded to the plaintiff.
Remedies for Dilution
Anyone that uses a registered trademark in anyway that misleads consumers as to who owns the
trademark or who or what it represents can be acted on in a civil trial. The person who has been
damaged by the person diluting the trademark will be the plaintiff in a civil trial.
Any products that are imported into the United States are not free from civil action if they dilute
a trademark. Injunctions are the most common remedy for dilution or a famous trademark.
Monetary damages are usually not awarded unless there was intentional harm brought on by a
defendant.
CIVIL AND CRIMINAL REMEDIES UNDER COMMON LAW

24 | P a g e
PROTECTION
The legal nature of IPRs determines what English law remedies are available for their
infringement. With the exception of rights in confidential information, IPRs are a form of
personal moveable property. They are often described as being incorporeal as they cannot be
seen or touched.
This legal classification is set out for patents in the Patents Act 1977, s 30(1) (PA 1977, s 30(1)),
for trade marks in the Trade Marks Act 1994, ss 22, 24(1) (TMA 1994, ss 22, 24(1)), for
registered designs in the Registered Designs Act 1949, ss 15A, 15(B) (1) (RDA 1949, ss 15A,
15(B)(1)), for copyright in the Copyright, Designs and Patents Act 1988, ss 1(1), 90(1) (CDPA
1988, ss 1(1), 90(1)) and for UK unregistered design right in sections CDPA 1988, ss 213(1),
222(1)15.
Community IPRs (such as community trade marks and community designs) owned either by an
entity domiciled in the UK or by an entity not domiciled in any EU Member but with an
establishment in the UK are also personal moveable property16.
In Oxford v Moss17 it was held that Information is not property under English law and thus it
can not be stolen. However, the confidentiality of information can be protected by an action for
breach of confidence, which is based on the enforcement of an equitable obligation of good faith
rather than a property right in the information.
Remedies in private civil actions
The remedies available to a successful claimant in a private civil infringement action include:
an injunction
an award of costs
15 PA 1977, s 30(1), TMA 1994, ss 22, 24(1), RDA 1949, ss 15A, 15(B)(1), CDPA 1988, ss 1(1), 90(1),
213(1), 222(1)
16 Council Regulation (EC) 6/2002, art 27(1), Council Regulation (EC) 207/2009, art 16(1)
17 (1978) 68 Cr App Rep 183, [1979] Crim LR 119.

25 | P a g e
PROTECTION
damages or an account of profits
delivery up/destruction of infringing items and items used to make them
tracing orders
The injunction
IPRs are essentially negative in character: they all confer on their owners the right to stop others
doing certain things, without the rights owners consent.
The practical manifestation of this ability to stop infringers is the prohibitory injunction. A
prohibitory injunction is an order, made by a court, requiring a named individual or individuals
to refrain from doing certain defined acts, which are the exclusive preserve of the IPR owner. In
most IPR infringement cases the prohibitory injunction is by far and away the most important
remedy in practice.
The High Courts power to grant injunctions is conferred by the Supreme Court Act 1981, s 37
(SCA 1981, s 37). Since the County Courts Act 1984, s 38 (CCA 1984, s 38) was amended by the
Courts and Legal Services Act 1990, county courts have had the same power as the High Court
to grant injunctions and for this reason the jurisdiction of the Patents County Court to grant
injunctions in IP cases is co-extensive with that of the High Court. The rules as to which judges
can grant injunctions are set out in the relevant practice direction.18
There is no automatic entitlement to an injunction: CCA 1984, s 38(1) and SCA 1981, s 37(1)
state that such injunctions should be granted if it is just and convenient to do so.19
The Human Rights Act 1998 (HRA 1998) imposes an obligation on courts in the UK to give
effect to legislation in a manner which is compatible with human rights.
18 CPR PD 2B, para 2.1, 8.1, SCA 1981, s 37, CCA 1984, s 38
19 CCA 1984, s 38(1), SCA 1981, s 37(1)

26 | P a g e
PROTECTION
Following the decision of the Supreme Court in South Bucks District Council v Porter20 as to
the applicability of the European Convention on Human Rights in the context of the granting of
injunctions, it is now clearly also necessary for a Court to consider whether the grant of a
prohibitory injunction is proportionate.21
If, notwithstanding the grant of an injunction, the restrained party carries out a prohibited act,
that would amount to a contempt of court, which could lead to fines or imprisonment.
The interim injunction
An IP owner does not have to wait until it wins on liability at trial to secure an injunction: it can,
in certain circumstances, obtain such an injunction on an interim emergency basis, usually
pending a full trial of the matter. The principles on which such an injunction are granted are set
out in the Supreme Court decision of American Cyanamid Co v Ethicon Ltd22. Laddie Js
decision in Series 5 Software Ltd v Clarke and others23 provides some more modern guidance
as to how the American Cyanamid principles are to be applied in practice.
Territorial effect
The territorial effect of an injunction made by an English court is limited to England and Wales,
but such orders can also be registered in the courts of Scotland and Northern Ireland to give
effect to them there. Unlike courts in the Netherlands and Germany, English courts have been
reluctant to hear claims in respect of the infringement of a bundle of national patents flowing
from the same European patent application Coin Controls Ltd v Suzo International (UK) Ltd
and others24.
20 [2004] 4 All ER 775
21 HRA 1998, ss 3(1), 6(1), 6(2)
22 [1975] 1 All ER 504
23 [1996] 1 All ER 853
24 [1997] 3 All ER 45

27 | P a g e
PROTECTION
A patentee with a bundle of national European patents currently has no real option other than to
enforce them on a country by country basis. See the Europe-an Court of Justice decisions in
GAT v Luk25 and Roche v Primus26.
Duration of prohibition
Many injunctions do not specify the duration of the prohibition. Where they do specify the
duration it is common to refer to the duration of the infringed IPR. Where licences of right are
available (as for example for UK unregistered design right under CDPA 1988, s 237), provision
needs to be made for such licences of right in the form of the order. Injunctions can be granted
for a springboard period beyond the expiry of the term of underlying right, where to do so is
just in all the circumstances to deprive an infringer of an advantage he illegitimately built up
during a period when the IPR was in force. The position was laid clear in the case of Dyson
Appliances Ltd v Hoover Ltd (No 2).27
Costs
In the UK the general rule is that the losing party pays a proportion (typically two thirds to three
quarters) of the successful partys costs on the claims on which it has lost. This was reiterated in
the case of Monsanto Technology LLC v Cargill International SA and another.28
In IPR cases, there are often two issues in dispute: infringement of the claimants IPRs and their
validity. In patent actions, English courts retain the freedom to apportion the costs between these
two issues so that where the patent in issue was held to be invalid but infringed or alternatively
valid but not infringed, the winner of each issue can have his entitlement to the costs of such
issue offset against his liability to pay his opponents costs on the issues on which he himself lost
(and for which he himself therefore cannot recover).
25 (Case C-4/30)
26 (Case C-539/03) [2006] All ER (D) 186 (Jul)
27 [2001] All ER (D) 37 (Jan) CDPA 1988, s 237
28 [2007] All ER (D) 118 (Oct)

28 | P a g e
PROTECTION
The enforcement of IPRs in the UK is notoriously expensive: for example, the average patent
infringement action in the High Court costs each side approximately 700,000, (source: Lord
Justice Jacksons Review of Civil Litigation Costs: Final Report, paragraph 8.2, page 24). It is
hardly surprising, therefore, that the possibility of being able to recover a proportion of ones
costs from the loser in
English legal proceedings is a very important remedy in practice. Indeed, in many UK IP
disputes which reach trial, the amount of costs awarded dwarfs what is recoverable by way of
damages or an account of profits.
To prevent patentees repeatedly losing out on their irrecoverable costs of defending the validity
of their patents, PA 1977, s 65 provides that a court can, at the end of a trial in which validity has
been unsuccessfully challenged, make an order certifying that validity was unsuccessfully
contested. The effect of the making of such an order of contested validity is that in subsequent
proceedings in which validity is again put in issue the successful patentee can recover his costs
of the validity part of an action on the indemnity basis, which is generally much closer to his
actual costs of such action.
Damages or an account of profits
English law has since at least the time of the Middle Ages provided a restitutionary remedy for
the invasion of private property rights: the rights owner is entitled to deprive the infringer of the
unjust enrichment that has accrued to him as a result of his unlawful activities. In the context of
IPRs this leads to the remedy of an account of profits being available: these are the defendants
(and not the claimants) profits made as a result of his infringement. It is generally considered
that an account of profits is not available for breach of confidence, this was held in the case of
Attorney General v Blake (Jonathan Cape Ltd, third party)29 and Vercoe and others v
Rutland Fund Management Ltd and others.30
29 [2000] All ER (D) 1074

30 [2010] All ER (D) 79 (Jun)

29 | P a g e
PROTECTION
As an alternative to restitution, the IPR owner can seek the compensatory remedy of an award of
damages. The aim of an award of damages is to compensate the IPR owner for the invasion of
his rights: the award of a monetary sum is intended to put him back, as far as practicable, in the
position he would have been in if there had been no infringement. The usual tortious rules as to
remoteness and causation apply to limit the amount that can be recovered. This position was laid
down in General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd31 and Gerber
Garment Technology Inc v Lectra Systems Ltd and another32
An IPR owner can not claim both an account of profits and damages: he must choose one or the
other. In practice after the trial on liability has concluded, the successful IP owner is given a short
period within which to make his election. Often this is done after there has been some disclosure
by the unsuccessful infringer of basic financial information relating to the infringement, which is
intended to enable the IP owner to make a more informed decision. Additional statutory damages
can be awarded for copyright infringement which is flagrant.33
In theory the process of determining what sum should be paid to a successful IPR owner after it
has won an infringement action is determined by a separate litigation process called an enquiry
as to damages, which involves a process similar, in many respects, to trial on liability, with
disclosure, witness statements, expert reports, skeleton arguments and a trial on quantum. In
practice, however, enquiries as to damages are rare, as in the vast majority of cases the parties
successfully reach agreement on the sum to be paid. Few defendants who have lost painfully at a
first trial on liability are prepared to go through a second fully contested bout of litigation on
quantum.
Basis of award
Successful IPR owners are frequently advised to seek damages rather than an account of profits
as it is considered that an infringer will be able to manipulate his profit figure so as to artificially
31 [1975] 2 All ER 173
32 (1994) IP & T Digest 15
33 CDPA 1988, s 97(2) Procedure

30 | P a g e
PROTECTION
reduce the profits available. Where a process patent has been infringed the current state of the
law will frequently militate strongly against electing for an account as it mandates that the
amount of profits available to the IPR owner is that proportion of the infringers manufacturing
costs represented by the implementation of the infringing process. In a multi-staged
manufacturing process the costs of the patented part of the process may be a tiny fraction of the
overall costs and this would materially impact on the amount of profits available to the patentee,
as happened in Celanese International Corp and another v BP Chemicals and another34
In relation to the calculation of damages a distinction is to be drawn between an IPR owner who
himself exploits the IPR and one who does not. An IPR owner who does not exploit his IPR
himself will only be able to claim, as damages, a licence fee: the fee that would have been paid
by the infringer if it had sought a licence instead of infringing. Where the IPR owner does
himself exploit the IPR, he will be entitled to damages calculated by reference to the profits he
has lost on unmade sales, lost to the infringing competitor and lost because of price depression.
The losses claimed can extend to other items or services that would have been sold in addition to
the item embodying the infringed IP: for example damages can be claimed for consumables,
service and maintenance contracts and other items that would have been sold with the item
embodying the IPR). In relation to damages, it does not matter if the invention is but a small part
of a much larger item.
A successful IPR owner does not have to prove each lost sale on the balance of probabilities to
recover his loss: if he claims to have lost x sales then if the court concludes that he had only a
20% chance of making a each sale, the IPR owner will still be able to recover for the profits lost
on the sale of two such items as the percentage lost chance of making the sales is multiplied by
the total number of sales. Such situations were dealt in the case of Allied Maples Group Ltd v
Simmons & Simmons (a firm).35
See the Sullivan case for a recent case on damages for copyright infringement. The substantive
issue involved a copyright infringement claim by a musician, in respect of a video which had
34 [1998] All ER (D) 493
35 [1995] 4 All ER 907

31 | P a g e
PROTECTION
been posted on YouTube for five days and which, it was calculated, would have been seen by the
defendant film companys staff plus a maximum of 50 people. Sullivan sought damages of
800,000 for breach of statutory duty, infringement of copyright and...loss of a chance. The
claim was transferred to the Chancery Division, where its value was assessed at just 50.
The defendant applied successfully to have the claim struck out on the basis that a claim for such
a small sum was a disproportionate use of the courts time and resources. This has been followed
from Sullivan v Bristol Film Studios Ltd.36
Delivery up or destruction
There is no automatic entitlement to delivery up or destruction but once infringement is shown,
orders requiring either or both these things will usually be made. UK courts are now required to
take into account the need for proportionality between the seriousness of the infringement and
the remedy ordered and the interests of third parties, under Council Directive (EC) 2004/48 (IP
Enforcement Directive). Where the infringing item is a small part of a larger item, the effect of
the IP Enforcement Directive may be that no order for delivery up will be made.37
In relation to imported items, it is possible for the IPR owner to request that HM Revenue &
Customs (HMRC) detains imports at the UKs borders goods, which are suspected of infringing
IPR. Providing civil litigation is started within ten days of the detention of such goods, HMRC
will continue to detain them. HMRC makes a daily charge for the storage of such detained goods
which is recoverable as a head of damages against an infringer. For further reading see practice
note: Anti-counterfeiting and customs.38
Tracing remedies
An infringer can be ordered to provide details of where he got his supplies of infringing goods.
Failure to provide the information sought in the face of such an order can amount to a contempt
36 [2012] All ER (D) 69 (May)
37 Council Directive (EC) 2004/48, art 10(3)
38 Council Regulation (EC) 1383/2003 Goods Infringing Intellectual Property Rights (Customs)
Regulations 2004, SI 2004/1473

32 | P a g e
PROTECTION
of court. Criminal remedies for IP infringement TMA 1994, s 92 and CDPA 1988, s 107 make it
a criminal offence to make and deal with items that infringe UK and community registered trade
marks and UK copyright. The more serious copyright and trade mark offences carry a maximum
ten year prison term on indictment and/or an unlimited fine.39
Confiscation orders
In criminal cases there is no right to damages as such. However, under the Proceeds of Crime Act
2002 (POCA 2002) it is possible to seek a confiscation order. The effect of the making of a
confiscation order by a Crown Court is that the defendants assets, which were acquired with the
proceeds of crime, are confiscated. If a confiscation order is made the onus is on the convicted
defendant to prove that all his assets, acquired in the six years leading up to conviction, were
acquired lawfully. If he cannot, such assets become liable to confiscation. Under POCA 2002, s
13(5), those who have been financially disadvantaged by a criminal enterprise (such as a brand
owner in a counterfeiting case) can apply to court for compensation out of confiscated assets.
The police and the courts also have rights to such funds.
The costs advantages of private prosecutions
For a claimant to recover his costs of a civil case, he must be awarded his costs by the court and
the defendant must have the money to meet his obligations under the court order and his must
actually pay the money over. In stark contrast, the claimants costs (win or lose) of bringing a
private prosecution in respect of an indictable offence are recoverable from Central Funds,
pursuant to the Prosecution of Offences Act 1985, s 17 (POA 1985, s 17). The test for recovery
of the prosecutions costs is not whether the claimant has won or lost on the majority of the
issues in dispute but the much lower standard of whether the prosecution was properly brought
or not. In practice a private prosecutor should recover its costs, incurred in relation to a private
prosecution, unless the court forms the view that the case was brought/proceeded without good
cause, ie was malicious.
CRIMINAL IMPLICATIONS OF TRADEMARK INFRINGEMENT

39 TMA 1994, s 92 CDPA 1988, s 107

33 | P a g e
PROTECTION
Trademark owners have long been able to enforce their rights through a federal cause of action
against unauthorized uses of their marks40. Private enforcement, however, is now only part of the
story. The federal government also acts on behalf of mark owners, both seizing infringing and
counterfeit goods at the border and prosecuting counterfeiters under federal criminal law41. The
idea of criminal penalties for certain trademark violations is not new indeed, Congress enacted
criminal penalties as early as 1876, just a few years after it passed the very first federal
trademark statute. But mark owners had to be content with civil remedies for most of the history
of American trademark law Congress would not again enact criminal trademark penalties for
more than 100 years after the Supreme Court struck down the 1876 Act in the Trademark
Cases.42 Thus, for all practical purposes, criminal enforcement is a modern development, and one
that has received little scholarly attention.
Intellectual Property Rights are the legal rights that are granted to a person for any creative and
artistic work, for any invention or discovery, or for any literary work or words, phrases and
symbols or designs for a stipulated period of time. The owners of Intellectual Property are
granted certain exclusive rights through which they use their property without any disturbance
and can prevent the misuse of their property. Intellectual property is any innovation, commercial
or artistic, or any unique name, symbol, logo or design used commercially. In India, Intellectual
Property is governed under the Patents Act, 1970; Trademarks Act, 1999; Copyright Act, 1957;
Designs Act, 2001, etc. The various kinds of intellectual properties are Patents, Trademarks,
Copyrights, Trade Secrets, Industrial Designs, Lay out Designs of Integrated Circuits and
Geographical Indications. The core area dealt with in this article lies at Patents, Trademarks and
Copyright. Patents protect the inventions, Trademarks prevent the infringement of the marks or
the logos under which the business is carried on or the goods are manufactured or sold and
40 The first federal trademark statute was passed in 1870. Act of July 8, 1870, ch. 230, 16 Stat. 198. That
Act, like each of the others passed before the Lanham Act in 1946, provided for a private cause of action
only for infringement of registered trademarks.
41See Trademark Counterfeiting Act of 1984, 18 U.S.C. 2320.
42The Trade-Mark Cases, 100 U.S. 82 (1879) (finding both the 1870 and 1876 Acts unconstitutional).

34 | P a g e
PROTECTION
Copyright grants protection to the authors of original work which can be artistic, literary,
dramatic or musical.
A trade mark is a sign which can distinguish the goods and services of the trademark holder from
those of the competitors. It can be for example words, logos or a combination of both.
Registering a Trademark is not compulsory.43 It may be registered or unregistered. Registered
Trademark: Registering a trade mark gives Trademark holder the exclusive right to use his mark
for the goods and/or services. If the trademark is registered then the symbol is placed next to
the trademark so as to warn others against using it. However, using this symbol for a trade mark
that is not registered is an offence. A Registered Trade Mark may put people off using the trade
mark without the permission of the holders, allows them to take legal action against anyone who
uses their trade mark without their permission, allows Police to bring criminal charges against
counterfeiters if they use their trade mark. A registered Trademark is their property, which means
they can sell it, or let other people have a license that allows them to use it.
Unregistered Trademark: For the protection of unregistered trademark, if it is not registered, still
the holder of an unregistered trademark will be able to take an action against anyone who uses it
without his permission through the common law action of passing off. To be successful in a
passing off action, one has to prove that the mark belongs to him, he must have built up a
reputation in the mark and he has been harmed in some way by the other person's use of the
mark. It can be very difficult and expensive to prove a passing off action. In case of a passing off
action, the burden of proof, which is heavier as compared to proving infringement of an
unregistered trademark, lies on the plaintiff. If a trade mark is registered, it is easier to take legal
action against infringement of the mark, rather than having to rely on passing off.44
Trade mark infringement
It is a violation of exclusive rights attaching to a trademark without the authorization of the
trademark owner or licensees (provided that such sanction was within the scope of the license).
Infringement may occur when one party, the infringer, uses a trademark which is identical or
43Section 2 (1)(zb) of the Trademarks Act,1999.
44 http://www.ipo.gov.uk/types/tm/t-about.htm

35 | P a g e
PROTECTION
confusingly similar to a trademark owned by other party, in relation to products or services

which are identical or similar to the products or services which the registration covers.
The test for determining whether there is infringement/ passing off trademark has been laid down
in Amritdhara Pharmacy VS. Satyadeo Gupta45 which states that
Any unwary purchaser of average intelligence and imperfect recollection would not, as the
High Court supposed, split the name into its component parts and consider the etymological
meaning thereof or even consider the meaning of the component words as current of nectar
(Amritdhara) or current of Lakshman (Lakshmandhara). He would go more by the overall
structure and phonetic similarity and the nature of medicine he has previously purchased or has
been told about, or about which has otherwise learnt and which he wants to purchase.46
Applying this principle of average intelligence and imperfect recollection it is possible to find
whether there is a similarity between two trademarks and whether there is a likelihood of causing
any confusion between the two trademarks.
An owner of a Trademark may commence legal proceedings against a party which infringes its
registration. In case of Trademark, statutory protection is available to both registered as well as
unregistered trademarks. They are given both civil as well as criminal remedies for infringement
or passing off. A Suit for Infringement has to be filed before the District Court or the High Court
(depending on the pecuniary jurisdiction) within whose territorial jurisdiction the cause of action
has arisen.
The proprietors of the trademark as well as licensed users have the option to initiate criminal
prosecution against the infringers. The acts recognized as offences against which criminal
complaints can be filed are falsifying and falsely applying a trademark, making or processing
instruments for falsifying a trademark, applying false description, applying false indication of the
country of origin, tampering with an indication of origin already applied to goods, selling goods
or possessing or exposing for sale of goods falsely marked, falsely representing a Trademark as
45AIR 1963 SC 449
46 http://www.ipab.tn.nic.in/Orders/132-2007.htm

36 | P a g e
PROTECTION
registered, improperly describing a place of business as connected with the trademark office and
falsification of entries in the register47. The Criminal Remedies available are that a suit for the
above offences can be filed before the magistrate within whose territorial jurisdiction the offence
is committed or Police can register an FIR and prosecute directly; (statutory requirement to
obtain the Registrars approval). Besides confiscation of goods and machinery, the Code of
Criminal Procedure, 1973, also provides for the imprisonment starting from six months which
can be extended to three years or fine of Rs. Fifty thousand which can be extended to two lakhs
or both.
CHANGING SCENARIOS
Prior to the current legislation in force, the Trade and Merchandise Marks Act of 1958 governed
the law on trademarks in India. However, it was felt that a comprehensive review of existing law
should be made in view of the developments in trading and commercial practices, increasing
globalization of trade and industry, etc. To achieve these purposes, the Trade Marks Act, 1999
was passed. Although the 1999 Act is in force at present, the 1958 Act comes to play in
litigations involving marks that were registered under it. Both, the 1958 Act and the 1999 Act,
recognize the offences of infringement and passing off and provide for remedies.
The most significant changes brought about by the 1999 Act were as follows:
a) Providing for registration of trademark for Services.
b) Providing for registration of Collective Marks, owned by Associations.
c) Providing an Appellate Board for speedy disposal of appeals.
Under the Trademarks Act 1999, the Indian courts may grant the following reliefs for
infringement and passing off:
Permanent and temporary injunctions; compensatory and punitive damages; rendition of
accounts; or delivery of the infringing goods, labels, marks for destruction/erasure.
47 Section 102 of the Trademarks Act,1999

37 | P a g e
PROTECTION
While injunction is a remedy arising out of the Civil Procedure Code 1908, in India, awarding
damages as a remedy emerged as a result of tortuous liability. Although, granting injunctions was
the usual remedy, Indian courts, especially the High Courts have recently started awarding both
compensatory and punitive damages for trademark infringement.
The trend of awarding punitive damages in the realm of trademarks started with Time
Incorporated v Lokesh Srivastava48, where the Court awarded both compensatory damages
and punitive damages for infringement of the trademark TIME. The Court awarded the plaintiff
Rs 5 lakhs, for loss of reputation, plus Rs 5 lakhs in punitive damages, including interest; the
total damages awarded being Rs 16 lakhs.49 The Court drew a distinction between compensatory
and punitive damages and observed that punitive damages need to be awarded in this case
because not only did the plaintiff suffer due to infringement, but readers of the defendants
magazine also suffered. They were deceived because they purchased a magazine believing it to
be published by the plaintiff. The Court observed that the time was ripe to award punitive
damages with a view to discourage lawbreakers. The Court also observed that punitive damages
should be penal in nature with the quantum being dependant on the flagrancy of infringement.50
In Microsoft Corporation v Mr Kiran and Anr,51 the Court observed:
The legal position in India with respect to granting damages in cases of infringement of
trademarks and copyrights, has been progressive. The courts have now started granting the
relief of damages with the view that a defendant cannot escape damages as a consequence of its
disappearing from the legal proceedings. The claimant has a right to damages regardless of the
defendant's state of mind, and that is so regardless of whether the cause of action is infringement
of a registered mark, or passing off.
48 2005 (30) PTC 3 (Del).
49 http://www.worldtrademarkreview.com/issues/Article.ashx?g =40077c18-6ebb-4453-b9d6-eaf2cb095c3e (14
June 2010)
50 http://www.managingip.com / Article.aspx? ArticleID=1321449 (15 June 2010).

51 Manupatra Intellectual Property Report, 2007 (3) 214, 2007 (35) PTC 748 Del.

38 | P a g e
PROTECTION
In Microsoft Corporation v Mr Rajendra Pawar52, the Delhi High Court referred to the case
of Mathias v Accor Economy Lodging Inc53. The Court, while elucidating the factors
underlying the grant of punitive damages, observed that one of the functions of punitive damages
is to relieve the pressure on an overloaded criminal justice system by providing a civil alternative
to criminal prosecution of minor crimes. It was further observed that
the award of punitive damages serves the additional purpose of limiting the defendant's ability
to profit from his fraud by escaping detection and prosecution.
In Microsoft Corporation v Deepak Raval54, the Delhi High Court held that the justification for
award of compensatory damages was to make up for the loss suffered by the plaintiff and the
rationale behind granting punitive damages is to deter a wrong doer and the like-minded from
indulging in such unlawful activities.
This is more so when an action has criminal propensity. Thus, while awarding punitive damages,
courts have taken into consideration the conduct of the defendants who have willfully calculated
to exploit the advantage of an established mark (as used in US courts), or flagrancy of the
defendant's conduct (test adopted by Australian courts). The English courts have used the test of
dishonest trader, i.e., one who deals in products knowing that they are counterfeit or is
recklessly indifferent as to whether or not they are counterfeit.
In Hero Honda Motors Limited v Shree Assuramji Scooters55, the Court observed:
This Court has no hesitation in saying that the time has come when the courts dealing with
actions for infringement of trademarks, copyrights, patents, etc. should not only grant
compensatory damages but award punitive damages also with a view to discourage and
dishearten law breakers who indulge in violations with impunity out of lust for money so that
52 CS (OS) No 530 of 2003.
53 347 F.3d 672 (7th Cir 2003).
54 CS(OS) No 529/2003.
55 125 (2005) DLT 504, 2006 (32) PTC 117 Del

39 | P a g e
PROTECTION
they realize that in case they are caught, they would be liable not only to reimburse the
aggrieved party but would be liable to pay punitive damages also, which may spell financial
disaster for them.
Looking at the present trend of the Indian Judiciary in cases pertaining to trademark
infringement, it appears that the Judiciary has become more receptive to the idea of granting
punitive damages along with compensatory damages. In ambiguous questions of law, the Indian
Judiciary has relied upon the decisions and doctrines of the English, American and Australian
courts. It is pertinent to note that were no reported judgments related to granting damages for
trademark infringement until the year 2005, in the Time Incorporated v Lokesh Srivastava56
case. This could be attributed to the fact that the commercial significance of intellectual property
assets was not realized until recent times. After the Time Incorporated case, courts have granted
punitive damages when well-known brands, having market reputation and goodwill, have
suffered huge monetary losses due to trademark infringement and/or passing off. This welcome
change in the judicial trend may be attributed to the fact that globalization and opening up of the
Indian economy which occurred in early 1990s, led to a greater recognition of the concept of
protecting brands, labels and identity.
As IP valuation will undertake a structured scheme in the days to come, it is expected that the
principle relating to damages will also evolve and become more concrete to meet the needs of the
time. Nevertheless, it is encouraging to witness courts acknowledge the commercial value that
intellectual assets have attained.
CONCLUSION
There is a distinct set of issues that arises in Management, Maintenance and Protection of IPR.
Here, it is a challenge to design and operate institutional innovation processes that would
preserve intellectual excellence and at the same time amicably fit into a disciplined formal IPR
management system. Indian industries and R&D institutes have not really excelled in the area of
innovation due to various factors. But new IP-Regime sounds really encouraging. Hence, there is
a need for institutional innovation to be encouraged and motivated continuously. From the
56 2005 (30) PTC 3 (Del).

40 | P a g e
PROTECTION
intuitional point of view, the major challenge is to develop and train techno legal manpower to
manage critical issues in management of IPR.
There is a need for awareness creation and awareness promotion, which can support
entrepreneurs, inventors, and creators in not only creating the innovation but also protecting what
they create and in making appropriate wealth out of what they create.
Government must think of setting-up required number of advisory body/council in order to
render services regarding IPR information, protection, and further development. Developing
countries, particularly India, require more sophisticated technologies to be competitive in todays
global economy. For which we need to give serious consideration to our policies for encouraging
technology transfer. In addition to this, effective competitive policies must be established.
With growing pharmaceutical, software and entertainment industries, India has much to gain
from implementing a more robust IPR regime. Increased intellectual property protection would
boost bilateral trade and investment with the United States. Hi-tech trade and collaborative
research and development are growing, but there is a need to do it faster.
With each passing day the arena of Intellectual Property is gaining greater importance. People
have even started celebrating World Intellectual Property Day on 26th April. The Code of
Criminal Procedure, the Indian Penal Code as well as the Patent Act, 1970, grant exclusive rights
to the holder of the intellectual property as well as provide for the punishment for the violation of
Intellectual Property. Besides the amendments made in these acts, Special Intellectual Property
cells are set up in major cities and suo moto raids are also being carried out, The Code of Civil
Procedure is amended to ensure expedited trial. Also industry specific bodies like
NASSCOM( National Association of Software And Service Company) BSA (Business Service
Alliance) for Software Piracy, IPRS (Indian Performing Rights Society) /PPL (Phonographic
Performance Limited) for Sound Recording/ Performance Piracy have been set up to fight
various forms of piracy as mentioned above. In Tamil Nadu, the Tamil Nadu Prevention of
Dangerous Activities of Bootleggers, Drug-offenders, Forest-offenders, Goondas, Immoral
Traffic Offenders and Slum-grabbers Act, 1982, commonly referred to as the Goondas Act has
been brought into force to curb the crimes committed by Bootleggers, Drug-offenders, Forestoffenders, Goondas, Immoral Traffic Offenders (which now includes Video Piracy as well) and
41 | P a g e
PROTECTION
Slum-grabbers . Goondas Act, as listed in the Indian Penal Code's chapters, includes offences
against the human body, offences against property and criminal intimidation, insult and
annoyance.
Under the provisions of the Goondas Act, a person held liable for any of the above mentioned
offences will not be able to come out on bail for a year. The Film Federation of India (FFI), an
apex body of the film industry in India, has urged Chief Ministers of all the States to tackle video
piracy under the Goondas Act.57 The same is implemented in Tamil Nadu and Karnataka. It is
observed that the existing criminal laws are inadequate to thwart the menace of video piracy.
Hence Goondas Act is implemented to curb video piracy. Intellectual Property (IP) reflects the
idea that its subject matter is the product of the mind or the intellect. Excess efforts are put in for
the same. Thus it is the Intellectual Property holders sole right to protect his property against
those who attempt to misuse the property.
BIBLIOGRAPHY
Case Laws:
S.No.
Case Name
Citation
1.
Yahoo Inc. v. Akash Arora
1999 PTC 201
2.
Tata Sons Ltd. v. Manu Kosuri & Ors
2001 DLT 659
3.
N.R. Dongre v. Whirlpool
(1996) 5SCC 714
4.
Hardie Trading Ltd v. Addisons Paint & Chemicals Ltd
(2003) 27 PTC 241 SC
5.
Wander Ltd v. Antox India P Ltd.
1990 Supp (1) SCC 727
6.
Patel v. Shah
(2002) 3 SCC 65
57 http://www.hinduonnet.com/2005/02/15/stories/2005021507870500.htm

42 | P a g e
PROTECTION
7.
Midas Hygiene Industries P Ltd v Bhatia
2004 (3) SCC 90
8.
Oxford v. Moss
(1978) 68 Cr App Rep 183,
9.
South Bucks District Council v. Porter
[1979] Crim LR 119.

[2004] 4 All ER 775
10.
American Cynamide Co. v. Ethicon Ltd.
[1975] 1 All ER 504
11.
Service 5 Software Ltd. V. Clarke & Ors.
[1996] 1 All ER 853
12.
Coin Control Ltd. V. Suzo International Ltd. (U.K) [1997] 3 All ER 45

& Ors
13.
Roche v. Primus
(Case C-539/03) [2006] All
14.
GAT v. Luk
ER (D) 186 (Jul)

(Case C-4/30)
15.
Dyson Appliances v. Hoover Ltd.
[2001] All ER (D) 37 (Jan)
16.
CDPA 1988, s 237

Monsanto Technology LLC v. Cargill International [2007] All ER (D) 118 (Oct)
SA and Anr.
17.
Attorney General v Blake (Jonathan Cape Ltd, third [2000] All ER (D) 1074
party)
18.
Vercoe and others v Rutland Fund Management Ltd [2010] All ER (D) 79 (Jun)
and others.
19.
General Tire and Rubber Co v Firestone Tyre and [1975] 2 All ER 173
Rubber Co Ltd
20.
Gerber Garment Technology Inc v Lectra Systems Ltd
(1994) IP & T Digest 15
and another

43 | P a g e
PROTECTION
21.
Celanese International Corp and another v BP [1998] All ER (D) 493

Chemicals and another
22.
Allied Maples Group Ltd v Simmons & Simmons (a [1995] 4 All ER 907
firm)
23.
Sullivan v Bristol Film Studios Ltd.
[2012] All ER (D) 69 (May)
24.
Amritdhara Pharmacy v. Satyadeo Gupta
AIR 1963 SC 449
25.
Time Incorporated v Lokesh Srivastava
26.
Microsoft Corporation v Mr Kiran and Anr,
2007 (35) PTC 748 Del
27.
Microsoft Corporation v Mr Rajendra Pawar
CS (OS) No 530 of 2003.
28.
Mathias v Accor Economy Lodging Inc
347 F.3d 672 (7th Cir 2003).
29.
Microsoft Corporation v. Deepak Raval
CS(OS) No 529/2003.
30.
Hero Honda Motors Limited v Shree Assuramji 2006 (32) PTC 117 Del
2005 (30) PTC 3 (Del).
Scooters
Articles:
Jayashree Watal, Intellectaul Property in Indian Agriculture
Kamil Idris, Intellectual Property : A Power Tool for Economic Growth , The
Process of Economic Growth

44 | P a g e
PROTECTION
Books:
Pillai Atchuthen P S, Law of Tort, 8th edn (Eastern Book Company, Lucknow), 1987
Dr. B.L. Wadhera, Law Relating to Intellectual Property, 4 thedn, Universal Law
Publishing Co.,2007.
Reports:
Council Regulation (EC) 1383/2003 Goods Infringing Intellectual Property Rights

(Customs) Regulations 2004, SI 2004/1473
Manupatra Intellectual Property Report, 2007 (3) 214, 2007 (35) PTC 748 Del.
Websites:
www.icrier.org/pdf/jayashree
www.wipo.int/about-wipo/en/dgo/wipo_pub_888/pdf/wipo_pub_888_chapter
www.questia.com/PM.qst?a=o&se=gglsc&d=5001976550
http : //legaldictionary.thefreedictionary.com / damages (15 June 2010).
http://www.ipab.tn.nic.in/Orders/132-2007.htm
http://www.worldtrademarkreview.com/issues/Article.ashx?g =40077c18-6ebb-4453b9d6-eaf2cb095c3e (14 June 2010)
http://www.managingip.com / Article.aspx? ArticleID=1321449 (15 June 2010).
http://www.hinduonnet.com/2005/02/15/stories/2005021507870500.htm

45 | P a g e

Civil and Criminal Remedies Analysis

Hochgeladen von

Dokumentinformationen

Copyright

Verfügbare Formate

Dieses Dokument teilen

Dokument teilen oder einbetten

Freigabeoptionen

Stufen Sie dieses Dokument als nützlich ein?

Sind diese Inhalte unangemessen?

Copyright:

Verfügbare Formate

Civil and Criminal Remedies Analysis

Hochgeladen von

Copyright:

Verfügbare Formate

PROJECT ON

CIVIL AND CRIMINAL REMEDIES: A

Faculty- Intellectual Property Rights

Submitted By- Akif Abidi

HIDAYATULLAH NATIONAL LAW UNIVERSITY,

OF CHARACTERS UNDER THE COPYRIGHT REGIME

I am indebted to my faculty advisor Ms. Kuhu

Tiwari for allowing me to work upon this extremely relevant topic.

OF CHARACTERS UNDER THE COPYRIGHT REGIME

This is to certify that project report titled CIVIL

COMPARATIVE ANALYSIS which is submitted by me comprises only my original

OF CHARACTERS UNDER THE COPYRIGHT REGIME

OF CHARACTERS UNDER THE COPYRIGHT REGIME

ENFORCEMENT OF TRADEMARK RIGHTS

CIVIL AND CRIMINAL REMEDIES UNDER COMMON 24

LIST OF ABBREVIATIONS& ACRONYMS

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

OF CHARACTERS UNDER THE COPYRIGHT REGIME

OF CHARACTERS UNDER THE COPYRIGHT REGIME

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

Well-known Trademark and Trans Border Reputation

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

OF CHARACTERS UNDER THE COPYRIGHT REGIME

OF CHARACTERS UNDER THE COPYRIGHT REGIME

Geographical Indications (GI)

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

Concerning pharmaceutical and agricultural test data, it is related to Protection of undisclosed

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

ENFORCEMENT OF TRADEMARK RIGHTS

OF CHARACTERS UNDER THE COPYRIGHT REGIME

Offences and Penalties

use in relation to goods or services;

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

where the cause of action arises, wholly or in part.

10 2003 (27) PTC 241 (SC)

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

damages or accounts for profits; and

delivery up of the infringing labels and marks.

the balance of convenience;

whether there exists a prima facie case.

12 1990 Supp (1) SCC 727

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

it is usual, rather than essential, to seek a temporary injunction;

proof of actual damage is not essential, likelihood of damage is sufficient; and

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

INTELLECTUAL PROPERTY RIGHTS (COPYRIGHT)

OF CHARACTERS UNDER THE COPYRIGHT REGIME

the extent and duration of the infringing activity;

the identity of any connected parties; and

the financial standing and assets of the infringer.

lack of IP awareness at prosecution and law enforcement level, making it exceptionally