Dynamics of Civil Litigation and Trademark Prosecution

Introduction:

Just as we have laws to protects the personal properties of citizens and to ensure the safety of masses; Intellectual property laws frame rules and regulations to establish safeguards & for enforcing the legal rights of owners of such property. We can`t expect archaic laws to redress the problems of the present era that these archaic-principles of justice shall pass the test of time- that’s why we introduce amendments to laws.

Both laws as well as the justice system has to keep evolving and developing so that it can govern the problems of today; not just on the basis of archaic legal precedence, principles, and trends that are no longer useful for the problems that come before the court. Today modern problems require a modern approach in order to resolve them and in lieu of the same litigators have to keep their approach dynamic towards the court in order to secure their client’s interests. Thus litigation, be it criminal or civil, has to be a dynamic process rather than a static one.

This article shall emphasize on Trademark Prosecution with the ever-evolving civil litigation that encompasses it. To put in simple words, the main emphasis will be paid on the dynamics of civil litigation and its role in trademark prosecution.

History of Intellectual Property (IP) & Intellectual Property Rights (IPR)

Starting with a very simple question, what is the meaning of the word intellectual?  

According to the Cambridge dictionary, it means, ‘relating to your ability to think and understand things, especially complicated ideas’. But this is not quite how this idea is encompassed when we speak of it in the context of the law of Intellectual properties. In the eyes of law, intellectual property is any product of the human intellect that the law protects from unauthorized use by others.

Though it occurs as if IP is a relatively new developing field of law but that is not so, it has rather deep archaic roots. The significance of the intellectual property, such as trademarks, can be traced to the ancient use of stamps on bricks by Roman brick-makers for the purpose of identification. Obviously, a lot has changed since then with the development of science and technology and global business.

Now, what exactly is Intellectual Property? Intellectual property (IP) is that class of property which includes abstract creations of the human intelligence.[1]^&[2] There are various kinds of intellectual property, and few nations recognize more than the others. The most common ones are copyrights, trade secrets, patents & trademark.[3]

The idea of the IP can be followed to obsolete social orders, for example, Ancient Rome, yet the contemporary idea of protected innovation rose in England in the seventeenth and eighteenth hundreds of years. The expression “licensed innovation” started to be utilized in the nineteenth century, however, it was not until the late twentieth century that protected innovation laws went to the cutting edge in the lawful field and before long became an unavoidable aspect of the laws around the world.[4]

Rights over the abstract properties resulting from the intellect of a human being can be referred to as intellectual property rights. These rights generally grant the inventor an exclusive ownership rights over the use of his/her creation for a limited time period. IPR includes patents, trademarks, copyright, plant variety rights, geographical indications,[5]  industrial design rights, and in some jurisdictions trade secrets.

To explain it simply, IPR may be defined as new ideas, inventions, designs, technology, and creative expressions such as music and art based on which there is a public inclining to bestow the status of a property. It is a result of human conscience and the rights on it allow its owner to reap commercial benefits from the fruits of this venture by virtue of being the exclusive owner of that asset.

Trade Mark Act 1999

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.[6]

Trademark Act 1999 revoked the recently implemented Trade and Merchandise Act, 1958, which gave protection to the interests of pioneers. It rearranged the law and maintained the global obligations of India under the Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The trademarking process involves an individual filing for registration of her Trademark with the Indian Trade Marks office which in turn will conduct an examination of the application in order to check whether the trademark can be registered or a similar Trademark already exists in the Registry.

Trademark Prosecution

1. Meaning of Trademark Prosecution:

When people hear Trademark prosecution, they generally construe it as someone who manages or fights disputes related to trademarks in the courtroom. But that is not what it means. Trademark Prosecution is a process by which a trademark is acquired. It is a legal process for examining a trademark application & registering the applied trademark for a service or a product, if eligible.

A trademark prosecutor’s role is to make sure that that the trademark for whose registration the application is filed for is unique to the client and does not show resemblance to other registered trademarks. The process involves a painstaking comparison of the trademark that has been applied for with the bulk of existing trademarks.

2. Madrid Protocol: Global system for Trademark Registration

After the change in the Act (Trademarks Act) in 2010, Chapter IV A was embedded, which contains the extraordinary arrangements identifying with the security of brand names through global enlistment under the umbrella of the Madrid System. India has been an individual from Madrid Protocol with an impact from eighth July 2013.

The Madrid System is a helpful and savvy answer for enlisting and overseeing brand names around the world. Anybody can record a solitary application and pay a lot of charges and can get qualified to apply for insurance of brand name in all the part nations.

This convention permits the part nations to secure their residents brand name rights in all the part countries. As a result of the Madrid Protocol, the Claimant can document only a solitary application and can gain restraining infrastructure over the brand name in all part nations

3. Laws to safeguard Trademarks in India

Trademark rights violation occurs when the exclusive rights which are linked to a trademark are breached without the authorization of the person/organization that owns that particular trademark. When a party uses/copies a symbol or logo which is alike or confusingly similar to the one that is owned & used by another party. Then in this case an owner of a trademark may commence civil legal proceedings against a party that infringes its registered trademark. The Trademark Act, 1999 provides for remedies and action against the Infringement of Intellectual Property Rights.

Though both civil and legal remedies are available to aggrieved parties; there exists a big loophole if and when criminal proceedings are initiated! Till the time of the conviction for the offense, the offender is free to continue to deal and trade in counterfeit products. The criminal procedure is arduous and time taking and an offender may even abscond. Whereas on the other hand, in case of civil proceedings the relief which a law court may give in a suit for infringement/violation or passing off includes a permanent and an interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings.

4. Judicial Remedies(Civil)

Earlier the trend followed by the judiciary was that of first come first serve. Supreme court and High courts of India solely emphasized the fact of the first use of this mark or the first one to file for a registration application. Remedies were also few. But this is no longer the case today. There are various remedies which can seek redressal like; a few civil remedies are mentioned below:

1. Injunction: this can either be interlocutory, transitory, or lasting. An injunction order by the official courtroom is a typical common cure that can be given. The two sorts of orders that can be conceded are perpetual and temporary injunctions. Perpetual injunction is conceded relying upon the suit concerned and when the equivalent should be declared and accordingly is of perpetual nature. On account of a temporary injunction, a predetermined time span comes into the thought which for this situation will be till the court passes its last requests with respect to the issue. The equivalent can be requested under Order 39 Rule 1 and 2 of the Code of Civil Procedure. This fairly invalidates the reason for documenting the suit and consequently permits the respondent to proceed with the use of the imprint comparative as that of the offended party.
2. Mareva Injunction: this can be conceded to shield the interests of the proprietor of the rights by limiting the other party from discarding proof until the removal of the suit.
3. Anton Piller Orders: Section 135 of the Trade Marks Act, 1999 gives legal ID towards the Anton Piller Order which thus keeps the respondent from taking off resources from the court’s jurisdiction. The concerned court regularly chooses a nearby magistrate so as to seal the products or materials that are encroaching in nature as an execution of a common cure. So, if there should be an occurrence of common cure, the court either accommodates the establishing of the respondent’s products or administrations that are liable for creating turmoil in the psyches of the customers or makes him pay the harms caused to the offended party.
   In proper cases, the court has intrinsic locale on an application by the offended party made ex parte and in camera to require the respondent to allow the offended party to enter his premises and take a review of significant records and articles and take duplicates thereof or eliminate them for safe care. These are known as Anton Piller orders.
   The need for such a request emerges when there is a grave risk of important reports and encroaching articles being eliminated or demolished, with the goal that the finishes of equity will be crushed.
   This request is given to the petitioner without the respondent permitting him:
   1. access the respondent’s office and examine encroaching proof, account books, and so on.
   2. to eliminate such things from safe authority if there is a risk of removal of encroaching material.
4. John Doe Orders: John Doe orders are the orders issued by the court to search and seize against unnamed/ unknown defendants; which virtually translates into untrammeled powers in the hands of the plaintiffs, aided by court-appointed local commissioners, to raid any premises where infringement activities may be carried out. These are given against mysterious respondents and are very valuable when the encroachment is found by rights holders.
5. Quia timet actions: These can be documented by the inquirer who gets some answers concerning the encroachment and unlawful utilization of its brand name rights. The proprietor of rights can acquire an order to dodge any further wounds.
6. Destruction and delivery up: The court can coordinate infringer to convey the encroaching resources for the petitioner or that such resources be pulverized within the sight of a neighborhood official or by the inquirer himself.
7. Damages and Accounts of Profits: These are two fundamentally unrelated cures allowed to the Plaintiff. Harms are conceded to the offended party to make up for the misfortunes endured by the Plaintiff because of the litigant’s demonstrations. Accounts of profits are an impartial cure and require the respondent to hand over to the offended party the real measures of benefits made by him because of the encroaching exercises.

Case Analysis

1. Castrol Limited vs P.K. Sharma[7]

Facts of the case: “Offended party is the enrolled proprietor of the brand names Castrol, Castrol Gtx And Castrol Gtx 2. In December 1994, offended parties discovered that the respondent was carrying on a business of selling multigrade motor oil and oils under the brand name ‘Castrol GTX and Castrol CRB’ incomparable bundling as utilized by the offended parties. Offended party documented a suit for lasting directive.”

Held: “Hon’ble Delhi High Court while passing an ex parte order held that the utilization of the said brand names by the respondents, who have no privilege at all to utilize the equivalent is plainly exploitative and is an endeavour of encroachment. The petition of the offended party is acknowledged and they are controlled by an announcement of order from selling, publicizing straightforwardly or by implication in multigrade motor oil with the previously mentioned brand names in holders which are like the compartments being utilized by the offended parties.”

2. Ranbaxy Laboratories Ltd. vs Dua Pharmaceuticals Ltd.[8]

Facts of the Case:The offended party organization created drugs under the business trademark “Calmpose”. The respondent organization hitherto dispatched its comparative item under also the brand name “Calmprose”.

Held: “The Hon’ble Delhi High Court held that the two brand names having shown up phonetically and outwardly comparative and the element of the two strips being basically the equivalent including the kind of pressing, the shading plan and way of composing, it is an away from of encroachment of brand name and the temporary order allowed for the offended party.”

3. Hearst Corporation vs Dalal Street Communication Ltd.[9]

“The Court held that a brand name is encroached when an individual throughout exchange utilizes an imprint which is indistinguishable with or misleadingly like the brand name corresponding to the merchandise in regard of which the brand name is enlisted. Utilization of the imprint by such an individual must be in a way which is probably going to be taken as being utilized as a brand name”.

4. Laxmikant V. Patel vs Chentanbhai Shah[10]

In this case, the apex court explained the purpose of Trademark law as “the law doesn’t allow anybody to carry on his business in such a manner as would convince the clients or customers in accepting that the products having a place with another person are his. The reasons are two, right off the bat, trustworthiness and reasonable play are, and should be the fundamental standards in the realm of business. Also, when an individual receives a name regarding his business which as of now has a place with another person, it brings about disarray and has the likelihood of redirecting the clients and customers of another person to himself and accordingly bringing about injury”.

Conclusion

IP laws embolden the fashion of a spectrum of such goods. To accomplish this, the law grants property rights to the intangible assets they have created, for a specified time period. Thus, enabling the innovator to sell rights for his IP and allows other people to gain off of the goods they have created. These economic stimuli are expected to kindle innovation and give way to the technological advancement of countries, which rely on the extent of protection granted to innovators. The exclusive rights of the owners of these intangible assets are protected by these laws.

India is getting recognised as a pro-innovator jurisdiction with courts having a substantial understanding of IPR laws. Moreover, with a proper legal framework in place and no discrimination on the nationality of the entities trying to secure their IP rights, India has seen a great increase in the proclamation of IP rights by the intellectuals.

Indian judiciary, especially in matters concerning IP, has recognized the need of curbing the infringement of exclusive IP rights and have shown a welcoming attitude in granting punitive damages to the innovators.

Subsequently, from the above short conversations, Civil prosecution improvements in India presents adjusted technique by the law courts in issues of IP. On one hand, courts are not hesitant with regards to giving ex parte orders against miscreants, and the other hand ex parte orders (expanded) are likewise disliked. Yet, with these new laws set up, the timeframe taken for a court preliminary to develop into definite decision has been fundamentally abridged.

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References:

[1] “Understanding Industrial Property”. World Intellectual Property Organization. Retrieved 2018-12-06.

[2] Intellectual, industrial and commercial property | Fact Sheets on the European Union”. European Parliament. Retrieved 2018-12-06.

[3] Intellectual property”, Black’s Law Dictionary, 10th ed. (2014).

[4] “Property as a common descriptor of the field probably traces to the foundation of the World Intellectual Property Organization (WIPO) by the United Nations.” in Mark A. Lemley, Property, Intellectual Property, and Free Riding Archived 2009-02-26 at the Wayback Machine, Texas Law Review, 2005, Vol. 83:1031, page 1033, footnote 4.

[5]  Article 1(2) of the Paris Convention: “The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.”

[6]https://www.wipo.int/trademarks

[7] 2000 (56) DRJ 704

[8] AIR 1989 Delhi 44

[9] 1996 PTR 1 (Cal)

[10]  AIR 2002 SC 275: (2002) 3 SCC 65: (2002) 24 PTC 1 SC