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 timely injunction on further infringement and appropriate compensation to be provided to registered trademark owners who have suffered damages to their business in lieu of such infringement.
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 Defendant.
- Further, after a 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, seizures, conducting raids, and proceeding through any 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?
Under Indian Laws, the penalty for infringement of a trademark is imprisonment for a period of six months that could extend until three years as well as fine of minimum 50,000 and maximum of 2 lacs.
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?
With respect to trademark and passing off related disputes, any court with a rank of District court or higher has the authority to entertain such dispute. A suit related to the infringement of trademark could also be filed in a High Court that has original jurisdiction.
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?
To halt import and export of infringing goods, there are IP Rights (Imported Goods) Enforcement Rules 2007 that authorize customs officers to implement IP rights over imported goods. By virtue of the rules, a rights holder can register its IP rights with customs officials through a detailed registration procedure. This registration helps in protecting the trademark owners against violation of their IP rights by imposing an administrative duty on Customs.
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?
Any appeal that lies from an order of a district court goes to the appropriate high court. Furthermore, any appeal from an original order or decree of a single bench of the high court that has original jurisdiction lies on the division bench of the high court as a regular first appeal. A judgment or decree in a regular first appeal can be challenged before the Supreme Court only as a special leave petition.