Trademark Litigation essentially involves any issue, matter, or dispute relating to trademarks. Trademark Litigations have become very prominent throughout the globe, which is mainly due to rising business competition and easier means of duplicity. The most common form of trademark litigation involves trademark infringement issues, wherein the main motive of filing an infringement lawsuit is to obtain a prompt injunction on further infringement and due compensation for all damages inflicted to the business of the registered trademark owner.
At IPLF, our main focus has been to assist a wide variety of clients in protecting their IP and associated know-how, and police the marketplace against infringements and unfair competitive practices. We take up responsibilities for such Trade Mark, Copyright, Patent, and Commercial Litigation matters, and have handled hundreds of Trade Mark Oppositions and numerous major litigation matters in various jurisdictions. Our trademark attorneys have dealt with numerous cases with national and international repute, and provide rigorous and broad services in connection with trademark litigations all around India and at a global level.
Phases of the Trademark litigation process:
- Registered trademark owner or Plaintiff files a trademark infringement lawsuit against a Defendant who has allegedly infringed its mark, demanding an injunction on infringing activities together with an amount for compensation.
- The defendant is then sent a notice about this infringement suit and is given the necessary time to make a response (file a written statement to the plaint) to the accusation.
- The defendant may or may not agree with the allegations, and in either of the scenarios, the Defendant must present evidence to support its case.
- Plaintiff too has to present evidence in favor of the allegations made against the Defendant.
- Further, after scrupulous examination of all evidence forwarded from both sides, an equitable resolution or judgment is demanded from the judge. The Defendant may choose to opt for summary judgment for brisk resolution.
- If not so, the case enters into the trial phase, and the litigation process commences for obtaining the resolution.
What Services do we provide?
- Undertaking Comprehensive Due-Diligence for Fact/Situation Analysis and Evidence Gathering.
- Complete Trademark Infringement Litigation Support through our litigation team at Khurana and Khurana, Advocates and IP Attorneys
- Representing clients in all sorts of trademark litigation cases/matters across.
- Jurisdictions and Courts, including anti-counterfeiting matters, seizers, conducting raids, and proceeding through any of civil and/or criminal routes.
- Performing all legal formalities and processes and offering rigorous advocacy in support of our clients during court hearings and trials.
- Briefing senior counsels if and when required.
- Conducting Trademark Investigation regarding potential/actual infringement for the purpose of initiating action against the same.
1. Information gathering
The first step in the Trademark Litigation process involves a dialogue with our team where we understand the nature and gravity of the infringement, after which our Trademark Litigation Support Team undertakes comprehensive Due-Diligence for Fact/Situation Analysis and Evidence Gathering.
Our Litigation Team would then analyse the sequence of events, strength of trademark, prosecution history, reputation, user details, among multiple other parameters to assess the strategy with which the litigation is to be proceeded and executed.
Litigation strategy is defined and implemented seamlessly for desired orders and relief.
- There are no specific details as such, and it may be as per the requirement of the case.
1. Against an Infringement Suit, what reliefs maybe granted by the Indian Courts?
- Injunction against the use of the trademark.
- Damages, Accounts, and Handing over of profits.
- Appointment of the local commissioner by the court for custody/ sealing of infringing material/ accounts.
2. What is the period of limitation for filing a Suit for Infringement of a Trademark in India?
Three Years from the date of infringement/misuse. Hence, every time a mark is misused a fresh cause of action arises.
3. What is the penalty prescribed under Criminal Laws for Infringement of a Trademark in India?
The penalty for selling or providing services using a false trademark is a minimum of six months and a maximum of three years and with fine, not less than Rupees fifty thousand but which may extend to Rupees two lakh.
4. What are the sources of Trademark Legislation?
The sources are as follows:
- The national statute i.e., the Trademarks Act,1999 and rules made thereunder
- International multilateral convention.
- National bilateral treaty.
- Regional treaty.
- The decision of the courts.
- Office practice and rulings
- The decision of the Intellectual Property Appellate Board.
- Textbooks are written by academicians and professional experts.
5. Does the Indian Trademark Law bestow protection to Unregistered Trademarks?
Information regarding the action of passing off against the infringement of an unregistered can be studied here.
6. Which courts are empowered to hear trademark disputes?
No court lower than a district court can hear trademark disputes related to passing off and infringement. Therefore, a case relating to a trademark dispute can usually be filed in a district court. However, in India, a suit relating to trademark disputes can be filed in a high court with original jurisdiction (i.e., the High Courts of Delhi, Bombay, Madras, and Calcutta).
7. Who can file a Trademark Infringement Action?
A registered owner of a trademark or a licensee (provided that the license agreement grants such right) which believes that its mark is being infringed may institute infringement proceedings.
8. What customs enforcement measures are available to halt the Import or Export of Infringing Goods?
IP Rights (Imported Goods) Enforcement Rules 2007 empower customs officers to enforce IP rights over imported goods. The rules provide a detailed procedure by which a rights holder can register its IP rights with customs officials. This registration imposes an administrative duty on Customs to protect the rights-holder against violation of its IP rights.
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9. What defenses are available to Infringers?
The following defenses are available to infringers:
- delay and laches;
- honest and good-faith adoption and use;
- differences in goods and services;
- the nature of the product;
- pricing; and
- the absence of confusion or deception.
10. What is the appeal procedure for infringement decisions?
An appeal from an original district court judgment goes to the relevant high court. An appeal from an original judgment or decree of a single bench of the high court (with original jurisdiction) goes to the division bench of the high court as a regular first appeal. A judgment or decree in a regular first appeal can be challenged as a special leave petition before the Supreme Court. Once a special leave petition has been admitted by the Supreme Court, it is converted to an appeal.
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