Trade Mark Litigation/Enforcement

Is someone trying to generate profit from your brand equity?

Today, threat of Intellectual Property infringement is increasing with each passing day as infringers find it easier and faster to take advantage of IP owner’s hard work in creating Intellectual Property sought to be protected. IPLF focuses on assisting 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 services include:

  • Undertaking Comprehensive Due-Diligence for Fact/Situation Analysis and Evidence Gathering
  • Complete Trade Mark Infringement Litigation Support
  • Representing Clients across Jurisdictions and Courts
  • Briefing Senior Counsels for Desired Orders
  • Conducting Trademark Investigation regarding potential/actual infringement for the purpose of initiating action against the same.

Process

  • Information GatheringTrade Mark Litigation Support Team undertakes comprehensive Due-Diligence for Fact/Situation Analysis and Evidence Gathering.
  • AnalysisLitigation Team analyses the sequence of events, strength of Trade Mark, Prosecution History, Reputation, Use Details, among multiple other parameters to assess the strategy with which the litigation is to be executed.
  • SolutionLitigation strategy is defined and implemented seamlessly for desired orders and relief.

Timelines

Time varies from case to case.

Frequently Asked Questions

  • Injunction against the use of the Trade Mark
  • Damages Accounts and handing over of profits
  • Appointment of local commissioner by the court for custody/ sealing of infringing material/ accounts

3 Years from the date of infringement/misuse. Hence, every time a mark is misused a fresh cause of action arises.

The penalty for selling or providing services using a false trademark is a minimum of six months and maximum of three years and with fine not less than Rupees fifty thousand but which may extend to Rupees two lakh.

(1) The national statute i.e., the Trade Marks Act,1999 and rules made there under .

(2) International multilateral convention.

(3) National bilateral treaty.

(4) Regional treaty.

(5) Decision of the courts.

(6) Office practice and rulings

(7) Decision of Intellectual Property Appellate Board.

(8) Text books written by academician and professional experts.

An action for passing off lies for infringement of an unregistered trademark.

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No court lower than a district court can hear trademark disputes related to passing off and infringement. Therefore, a case relating to a trademark dispute can usually be filed in a district court. However, in India, a suit relating to trademark dispute can be filed in a high court with original jurisdiction (i.e., the High Courts of Delhi, Bombay, Madras and Calcutta).

A registered owner of a trademark or a licensee (provided that the licence agreements grants such right) which believes that its mark is being infringed may institute infringement proceedings.

The IP Rights (Imported Goods) Enforcement Rules 2007 empower customs officers to enforce IP rights over imported goods. The rules provide a detailed procedure by which a rights holder can register its IP rights with customs officials. This registration imposes an administrative duty on Customs to protect the rights holder against violation of its IP rights.

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The following defences are available to infringers:

  • delay and laches;
  • acquiescence;
  • 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.

An appeal from an original district court judgment goes to the relevant high court. An appeal from an original judgment or decree of a single bench of the high court (with original jurisdiction) goes to the division bench of the high court as a regular first appeal.

A judgment or decree in a regular first appeal can be challenged as a special leave petition before the Supreme Court. Once a special leave petition has been admitted by the Supreme Court, it is converted to an appeal.

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