Shielding your marks

Options brand owners can choose to enforce the protection of trademark rights in India

The enforcement of rights in a brand is the cornerstone of a robust protection strategy for any trademark owner. Decisions influencing a viable strategy for multi-jurisdictional brand protection are, naturally, influenced by the enforcement options available in a particular jurisdiction as well as factors such as the effectiveness of law enforcement, efficacy of the court system and the extensiveness of an infringement problem prevalent in a country. In a jurisdiction such as India, which has a growing economy in particular, the effectiveness and efficiency of the national trademark enforcement mechanisms play an important role for brand owners.

This article attempts to provide a brief overview of the current climate surrounding trademark enforcement mechanisms in India.

Civil suits

Filing a civil suit is a traditional, but, significantly effective way to enforce trademark rights in India. However, a civil suit might not be the right choice in all fact patterns.

As a common law country, India recognises the common law tort of passing-off, and the statute uniquely provides the remedy of filing civil suits against the unauthorised use of both registered as well as unregistered trademarks. Securing registration of a trademark is, therefore, not a sine qua non for enforcing trademark rights in the country. However, given that passing-off actions place a heavy burden on owners to prove the reputation and prior use of their marks in India, they should look to register their trademarks in the country even if their brands are not in use here.

Suits for enforcement of registered/unregistered trademark rights can be filed before courts not lower than the level of District Courts (states are divided into cities, which are then split into districts) that are subordinate only to the High Court of the state in which the district is located). In addition, such suits can also be filed at any one of the five High Courts in India which have been conferred with original jurisdiction, including those in India’s large metropolitan cities, namely, Delhi, Mumbai, Chennai and Kolkata. While general civil law requires suits to be filed at the place where the defendant resides or conducts business, or at the place where the cause of action has arisen, the country’s trademark statute provides an additional venue for filing infringement suits, i.e., at a place where the plaintiff actually and voluntarily resides or conducts a business.

While trademark infringement is essentially a civil wrong, Indian trademark law also provides remedies in criminal law, namely, for falsification and falsely applying trademarks (akin to counterfeiting). In such cases, the remedy is imprisonment for a term between six months and three years or a fine of INR50,000 (USD600) to INR200,000, or both, which is subject to the discretion of the court.

Generally, a civil suit is a preferred option if the objective is to ensure a complete cessation of unauthorised use of a trademark in the Indian market. Often times, courts will grant damages and costs against a defendant in civil suits and order the seizure of infringing goods. Another advantage of a civil suit is the available remedy for contempt of court in the event of non-compliance by a defendant.

Criminal enforcement

Brand owners can also avail of enforcement of criminal law remedies. This begins with approaching the local police with a complaint, informing officers of the infringement/counterfeiting activities, and requesting that they conduct a search and seizure operation at the premises of the accused infringer. In case the local police are not willing to offer assistance due to some reason, rights holders can also approach a criminal court seeking a direction to the local police to visit the alleged infringer’s premises and seize the infringing/counterfeit goods. The latter process is, however, more time consuming and can also lead to the possibility of the accused party being tipped-off about the possibility of a raid.

This option is cost-effective and quick. However, the rate of success in criminal raids depends on many variable factors, such as subjective satisfaction of police officials who are frequently not well-versed in the intricacies of trademark law, the availability of sufficient police manpower, the possibility of tip-offs, and so on. Moreover, the process of obtaining police assistance for the purposes of conducting such raids is not streamlined, and it can be difficult to predict specific timelines within which police assistance for a search and seizure operation can be obtained. This option is also not desirable in case the alleged infringer has filed an application or obtained registration for their marks, which is, sometimes, the case.

Border enforcement

In cases where right holders have reason to believe that infringing goods are being introduced into the Indian market through imports, border protection measures are available through the actions of the Indian Customs Office. To avail of this option, rights holders must have their registered trademarks recorded with the Indian Customs Office by filing an application in the prescribed format and payment of the stipulated fees. Such registration will enable customs authorities to interdict infringing/counterfeited goods that are being imported into India. However, mere recordal of the trademark registration with the Indian Customs Office does not, by itself, guarantee interdiction/seizure in all circumstances. In fact, it is common for infringing/counterfeited products to slip through the hands of customs officials despite their recordation. It is also highly recommended that brand owners hold, at their own cost, training sessions at the customs department to educate them on identifying infringing/counterfeited goods from the authentic products.

This option offers limited relief for brand owners of the interception of goods that are being imported through recognised channels. Unscrupulous sellers and habitual/rank counterfeiters often manage to import infringing products through unrecognised channels, in which case, border protection is not available. Furthermore, this option is available only to traditional trademarks.

Online takedowns

In the event an entity is advertising, marketing, or selling, infringing/counterfeit goods through listings on e-commerce websites, such online use may be tackled by filing takedown requests. Most Indian e-commerce websites provide a mechanism to trademark owners to report and take down problematic listings although the turnaround time and efficacy of such takedowns vary. While many websites are prompt in taking action against infringing listings, some websites adopt a rudimentary and straight-jacketed approach and refuse to take down infringing content voluntarily if the marks are not identical and/or if the rights holders are unable to produce registration certificates in support of a complaint. Clearly, this remedy does not address offline uses, which, in our experience, could be widespread, given factors such as the size of the Indian market and, possibly, the low penetration of the internet in some areas of the country.

The rising interest of global players in the Indian market has already led to great strides in the effectiveness and predictability of the enforcement mechanisms available in the country. The current situation is encouraging for all trademark owners who are turning their attention to India’s market.