All questions

Civil litigation

i Forums

The district court is considered the court of first instance for trademark disputes. An appeal therefrom lies to the High Courts, and finally, an appeal by way of special leave petition lies with the Supreme Court. There are 29 states in India, divided into 731 districts, with each district having a district judge (DJ) who is the administrative head of the district, and there are additional district judges who have the same judicial powers as the DJ. Additionally, there are 24 High Courts in India, all of which have appellate jurisdiction over the district courts and some quasi-judicial bodies or tribunals. Six High Courts (of Delhi, Bombay, Madras, Calcutta, Jammu and Kashmir, and Himachal Pradesh) have original jurisdiction and can entertain trademark suits. These suits are filed before a single judge, and a bench of two judges has appellate jurisdiction over the single judge.

The territorial jurisdiction of a court is decided by the residence or place of business of the defendant (the infringer) or the place where the infringement (cause of action) takes place. It is also possible to claim jurisdiction on the basis of a threat in the jurisdiction. Under the Trade Marks Act, it is also possible to confer jurisdiction on courts where the trademark owner resides or carries on business or has its principal place of business. The Supreme Court of India has recently ruled on these issues in the case of IPRS v. Sanjay Dalia. Other relevant rulings of the Supreme Court include Dhodha House v. S K Maingi and Patel Roadways Ltd v. Prasad Trading Company.

There have also been rulings of the Delhi High Court (Division Bench) conferring jurisdiction on courts on the basis of interactive websites, which include Banyan Trade Holding v. A Murali Krishan Reddy and WWE v. Reshma Collection.

As far as pecuniary jurisdiction is concerned, claims must be for at least 20 million rupees for a case to be eligible for filing in the Delhi High Court. For the Bombay High Court, it is half this amount. The court fee payable is 1 per cent of the amount claimed.

ii Pre-action conduct

It is advisable to conduct appropriate investigations before commencing actions. This should include, among other things, online and on ground investigations, and searches on the Trade Marks Register and Registrar of Companies. Based on the results, litigation strategies should be devised, which could include obtaining and executing ex parte search and seizure orders, serving the opposite party with cease-and-desist notices, and initiating pre-litigation mediation proceedings under the Commercial Courts Act.

iii Causes of action

Cause of action for a trademark case may be triggered by (1) actual infringing use of the mark, including use on business paper or packaging material; (2) likelihood of passing off; (3) threat of use or passing off; (4) advertising, including online advertising through an interactive website; (5) import or export of infringing goods; (6) infringing use by use in a company or firm name; or (7) adoption of infringing domain name, key words, meta tags, etc.

iv Conduct of proceedings

The recently enacted Commercial Courts Act mandates each state government to constitute commercial courts at district levels. High Courts have original civil jurisdiction and are mandated with having commercial divisions within them. Over 250 commercial courts have already been constituted. The Delhi High Court itself has six commercial divisions. Trademark suits relating to registered or unregistered trademarks are considered commercial disputes.

The Commercial Courts Act provides for strict timelines to conclude trademark suits. Some significant enactments are:

  1. A written statement is required to be filed within 30 days (up to a maximum of 120 days) of the date of service of summons. This period is not extendable. The written statement is required to be accompanied by an affidavit of admission and denial of the plaintiff’s documents.
  2. All documents in support of the plaint and the written statement are required to be submitted along with the respective documents.
  3. Inspection of documents of both parties are liable to be concluded within 30 days of filing of the written statement.
  4. Within 15 days of inspection, the first case management hearing is liable to be held.

The Commercial Courts Act mandates for trial and arguments to be concluded within six months of conducting the first case management hearing. The judge is required to pronounce a decision within 90 days thereafter.

One important strategy for a speedy trial is to seek appointment of trial including examination and cross-examination of witnesses to be conducted before a court-appointed commissioner. Using this strategy, there are already examples of trials, including complicated patent trials, being concluded in less than six months.

Under the Commercial Courts Act, costs are liable to be imposed on the defaulting party that does not adhere to the timelines. Actual costs are also liable to be granted for fees and expenses of witnesses incurred, legal fees and expenses incurred and any other expenses incurred in connection with the proceedings. There are several precedents of courts awarding actual costs with the unsuccessful party ordered to pay the costs of the successful party. In Merck Sharp and Dohme v. Abhayakumar Deepak, the court ordered costs of 8 million rupees. In Koninklijke Philips Electronics NV v. Rajesh Bansal, a case of patent infringement, the court ordered an order of injunction and actual costs to the tune of 31.571 million rupees. In Glenmark Pharmaceuticals Ltd v. Curetech Skincare, the Bombay High Court granted costs to the tune of 15 million rupees, payable to a relief fund in charity.

v Remedies

In civil proceedings, courts have powers to pass the following orders:

  1. injunctions against future violations (also ex parte);
  2. civil search and seizure orders (also ex parte);
  3. damages or accounts for profits;
  4. discovery of documents;
  5. preservation of infringement goods or documents or other evidence; and
  6. preservation of assets of the defendant (also ex parte).

Other enforcement proceedings

i Criminal enforcement

Trademark violations under the Trade Marks Act 1999 also invite penal consequences that may include imprisonment of up to three years and fines of up to 200,000 rupees.

Under the Act, a police officer of or above the rank of deputy superintendent of police or its equivalent can conduct search and seizure operations against a prospective infringer after obtaining an opinion on the same from the Registrar of Trade Marks. It is also possible to obtain open-ended search and seizure orders from magistrates’ courts against known or unknown parties.

The National Intellectual Property Rights (IPR) Policy recognises the need to build the capacity of the enforcement agencies at various levels, including strengthening of IPR cells in state police forces. Since the adoption of the National IPR Policy in 2016, IPR cells have been established in various states’ police departments. Some states, such as Telangana and Maharashtra, have also established intellectual property (IP) crime units. IPR enforcement training and capacity-building of police officials is regularly conducted, which includes working from the IPR Enforcement Toolkit for Police, which is a handbook that serves as a ready reckoner for police officials in dealing with IP crimes; in particular, trademark counterfeiting.

ii Customs

Notification 47/2007-Customs (NT), dated 8 May 2007, and Circular No.41/2007-Customs, dated 29 October 2007, empower customs authorities to interject goods suspected to be counterfeit or pirated at the border. The said rules are applicable on import of goods that infringe IP registered in India. Apart from registration with the appropriate authority for obtaining IP rights, registration with the Customs Department is also necessary for obtaining protection at the border.

Once IP is registered with the customs authorities, seizure of suspected counterfeit goods is carried out suo moto (on its own initiative) by Customs. The IP right holder is also required to furnish the details of the country or person suspected of exporting counterfeit goods to India in order to keep a check on the activities of those persons or consignments from those countries. Even where the IP is not registered with Customs, the clearance of imported goods can be suspended if Customs has prima facie evidence or reasonable grounds to believe that they infringe IP rights. The right holder may then be asked to comply with the filing of notice, etc., within five days of the date of suspension of clearance of goods.