CIVIL AND CRIMINAL REMEDIES WITH RESPECT TO THE IFRINGEMENT AND PASSING OFF OF THE TRADE MARK AND COPYRIGHT IN INDIA

A trade mark; generally have two different attributes i.e. ocular/visual aspect and the phonetic aspect. In case of ocular aspect the entire getup, art work, design, style, placement and color combination of the label/logo/monogram/ trade mark is not only protected under the provisions of the Trade Marks Act, 1999, but also under the provisions of the Copyright Act, 1957.The definition of the art work under the Copyright Act include the artistic style, layout, design, getup etc., of a logo/label / trademark/container/packing material/boxes etc. As such the Civil and Criminal rights under the provisions of the Copyright Act, 1957, and the Trade Marks Act, 1999 are available against any kind of infringement/passing off, if the trademark is represented in a stylish form.

That in case of phonetic similarity, no person, in similar and /or deceptively similar manner, can use the trade mark, having phonetic resemblance, which means the change of letter, addition or deletion or placement of suffixes and prefixes do not in any manner change the character of a trade mark.

It may please be noted that both the Trade Marks Act, 1999and the Copyright Act, 1957 are applicable. Under Section 63, 64 and 65 of the Copyright Act, criminal remedies are available and any infringement or violation of any Copyright, and any such offence is punishable with imprisonment which may extend up to 3 years and fine which may extend up to
Rs.2, 00000/-. However, the minimum imprisonment is six months and minimum fine is Rs.50, 000/-. It may further be noted that the Trade Marks Act, 1999, the offence is punishable with imprisonment, which may extend up to Three years and fine may also be imposed.

Kindly, note that the violation of a Copyright and trade mark  is a cognizable offence and the police can directly initiate the action after registration of an FIR. In case the police do not register the FIR, the alternative is to file a Criminal Complaint in a Competent Court of Law, which in Delhi is the Court of Chief Metropolitan Magistrate. In both the cases i.e. registration of FIR by police or on the orders of the Court, the premises of the accused person can be raided and the goods may be searched and ceased. Another option open to the court is to refer the complaint to the police for investigation and registration of an FIR under Section 156 (3) of the Cr.P.C. 

It may please also be noted that normally the action of search, seizure and raid is carried on by the police on the orders are passed by the court under Section 93 of the Criminal Procedure Code, 1973. Such raids may be conducted even against unknown persons.

There are a large number of authorities on the above legal points empowering the courts to pass appropriate orders for search and seizure and prosecute offenders for violation of the trade mark as well as copyright of the complainant. You are also requested to note that under the provisions of the Copyright Act and under the Trade Marks Act, 1999, the registration of Copyright or the trademark are not necessary at all.

Under Section 55 of the Copyright Act, 1957 and Section 134 /135 of the Trade Marks Act, 1999, Civil remedies in the form of injunctions, damages, accounts, destruction of infringing material are provided.  The court has the power to not only to pass interim injunctions but also the power to order for the delivery of the infringing material bearing the trademark of the plaintiff. Besides this the court may also issue directions to give true and faithful account of the illegal profit so earned and the damages suffered by the owner of the trademark.

For practical purpose and taking in to account, the psychology of the court, it is my considered opinion that in case the owner of the trade mark prefers to go for both Civil and Criminal remedies, in such case, the criminal remedies should be availed first and immediately thereafter Civil suit should be filed.

 Kindly contact the undersigned for further information and details.

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