This article aims to explore the details of Section 113 of the Trade Marks Act, 1999. It focuses on the procedures that must be followed when someone is accused of misusing trademarks or trade descriptions, especially when these actions are done repeatedly. Additionally, the article analyzes criminal offenses under trademark law, the plea of invalidity of a registered trademark, the procedures under Section 113, and key cases related to this section.
Introduction
Trademarks are an essential aspect of intellectual property, as outlined in the Trade Marks Act, 1999. This law specifically caters to the unique needs of trademark protection in India. Various types of intellectual property have their special protective laws, known as sui generis legislation, to ensure they are adequately guarded against misuse. In this article, we will look at trademarks and how the law addresses situations where someone claims that a registered trademark is invalid while facing accusations of trademark infringement.
Chapter 12 of the Act addresses offenses and penalties, setting out numerous sections that deal with issues such as replicating trademarks, wrongfully using them on products for sale, confiscating goods, and offenses committed by companies. Among these sections, Section 113 outlines the protocol to be followed when an accused party is charged with specific trademark-related offenses, such as applying false trademarks (Section 103), selling goods with those marks (Section 104), and repeating such offenses (Section 105).
Let’s dive deeper into what Section 113 entails.
Section 113 of the Trade Marks Act, 1999
Section 113 provides guidance on the necessary legal steps an accused person should take when involved in offenses specified in Sections 103, 104, or 105. We will break down this procedure step by step.
Plea of Invalidity of Registered Trademark by the Accused under Section 113
When someone is accused in a trademark suit under Sections 103, 104, or 105 of the Act, they have the option to argue that the trademark in question is invalid. This argument must follow the procedure described in Section 113. If the accused successfully challenges the trademark’s validity, the proceeding may be paused as per the guidelines laid out in Section 124(1)(ii) of the Act. Section 124 states that if a person in trademark litigation claims that the trademark is invalid and there are no ongoing rectification processes, the case may be postponed for up to three months to allow the accused time to apply to the Appellate Board for rectification.
Section 30(2)(e) discusses situations where there are multiple trademarks that are similar or identical. In such cases, the trademark register needs to be corrected. This can stem from past registrations, as currently, similar trademarks are not permitted. For example, a trademark resembling the logo of Facebook would be rejected immediately because it belongs to the renowned company Meta. Sections 9(1)(a) and 9(2)(a) come into play here, addressing the lack of distinctiveness and public confusion.
Procedure Followed Under Section 113 in Case of Invalidity of a Plea
When challenging the validity of a registered trademark, specific procedures outlined in Section 113 must be followed, which unfold in three stages:
- The initial stage involves the court assessing whether the plea is prima facie valid. If it is, the court sets aside the charges and adjourns the proceedings for three months, giving the accused the chance to file a plea for rectification with the Appellate Board. This timeframe allows the correction of any inaccuracies in the trademark register.
- If the accused files for rectification within the specified period, they must present evidence to the court. As long as the application is pending, the legal proceedings remain on hold.
- If after the three-month period, the accused fails to file the rectification application, the court resumes proceedings without further delay.
Given the backlog of cases in Indian courts, it’s crucial for parties involved to comply with court orders and act swiftly. The system allows the accused ample opportunities to defend their claim about the trademark at stake. If these opportunities are not utilized, the court is justified in proceeding with the case without unnecessary delays. The provision exemplifies principles of justice and fairness.
An additional aspect is highlighted in Section 113(2), which is favorable to the accused. It states that if a rectification application is already in process before the tribunal, the court will pause the proceedings until the application’s outcome is determined. This reflects a balanced approach, ensuring that the accused’s situation is thoughtfully considered before leading to any decisive actions.
Orders Made at the Interlocutory Stage of the Case
Typically, decisions regarding the validity of a trademark are reached at the end of proceedings. However, it is possible for courts to make significant rulings at this early stage, depending on the particular details of the case. This was clarified in the case of M/S Pornsricharoenpun Co Ltd & Anr vs M/S L’Oreal India Private Limited & Anr (2022), where the Hon’ble High Court of Delhi established that during an interlocutory application for injunction, courts should assess the validity of the plaintiff’s trademark registration. It confirmed that they possess the authority to deliver a prima facie conclusion regarding this matter as well.
Requirement of Trademark Registration for the Purpose of Section 113
Only trademarks that are registered under the Act fall under the procedures outlined in Section 113. While offenses under Sections 103, 104, and 105 can involve both registered and unregistered marks, Section 113 exclusively relates to registered trademarks. Therefore, a glance at the registration process is essential.
Registering a trademark is an action taken by the rightful owner of the trademark. It involves following legal protocols under the Act, resulting in specific rights, primarily protection against infringement. However, well-known trademarks, such as Adidas or McDonald’s, might also find protection under common law through passing off actions.
When is a Mark Considered Registered?
According to Section 18 of the Act, anyone wishing to claim ownership of a trademark must register it with the Registrar. This entire process is detailed in Chapter 3 of the Act. A trademark achieves registered status once it is officially recorded by the Registrar, granting it all the legal rights associated with registered marks outlined in Section 28 of the Act.
Registration Process of Trademarks in India
The trademark registration process in India starts with a trademark search. If it is clear that no similar or identical mark exists, an application is filed under Section 18. This procedure specifies that a single application can cover multiple classes of goods or services, although separate fees must be paid for each one. Applications are submitted to the Trademark Registry located where the applicant’s principal place of business is situated. If there is no business in India, the application will typically reference an Indian address for service. During this application stage, the Registrar can either approve or reject the application.
Registered and Unregistered Trademarks
It’s crucial to understand that the protections provided by the Act, including those under Section 113, apply specifically to registered trademarks. Registered trademarks enjoy comprehensive legal protections, while unregistered trademarks are safeguarded through common law under Sections 34 and 35. These sections recognize the rights of prior users, stating that those using a trademark before it was officially registered may retain rights over the mark, even against a recently registered user.
Unregistered trademarks can pursue passing off actions to guard their rights, relying on common law rather than the Act itself. Though this protection does not match the safeguards provided to registered marks, it nonetheless allows businesses to operate without excessive concerns about infringement.
Offenses for Which Procedure is Laid Down Under Section 113
When a registered trademark is infringed—like when someone mimics a trademark or trade description associated with a product—the legitimate trademark owner can pursue legal action under Section 52 of the Act. This section empowers registered users of a trademark to instigate legal proceedings in cases of infringement. Under Section 113, the relevant offenses from Sections 103, 104, and 105 will be addressed according to the established procedures when the trademark is challenged as invalid by the accused.
Section 103 addresses penalties for applying false trademarks, Section 104 covers selling goods with false trademarks or descriptions, and Section 105 penalizes repeat offenses, resulting in increased penalties for the accused. These offenses are summarized under Section 113, which prescribes the procedures for handling cases involving registered trademarks.
Section 103 of the Act
Section 103 delineates penalties for applying false trademarks and descriptions. It lists actions to avoid in order to remain free of these penalties. Key actions include:
- Altering a registered trademark.
- Using a registered trademark on goods or services without proper authority.
- Possessing devices that enable the falsification of a registered trademark.
- Using false descriptions or labels affixed to goods or services.
- Affixing incorrect country or place information regarding the origin of goods as outlined in Section 139.
- Tampering with origin indicators required under Section 139.
- Assisting others in performing any of these prohibited actions.
If someone can demonstrate that they acted without malicious intent or fraudulent purpose, they may escape penalty. Otherwise, violations could result in imprisonment between six months and three years, and fines ranging from Rs. 50,000 to Rs. 200,000. Judges may choose to reduce the penalties based on specific circumstances presented during the trial.
Section 104 of the Act
Section 104 addresses offenses involving the sale or provision of goods or services bearing false trademarks or descriptions. Individuals selling or offering such goods are subject to penalties unless they can prove one of the following:
- The trademark or description did not appear false at the time of the act.
- They provided all necessary information about where the goods originated.
- They acted without bad intent or knowledge of wrongdoing.
Penalties here mirror those in Section 103, imposing imprisonment from six months to three years, along with fines between Rs. 50,000 and Rs. 200,000, subject to potential reductions dictated by the court.
Section 105 of the Act
Section 105 discusses penalties for repeat offenses under Sections 103 and 104. A second or subsequent conviction can result in imprisonment from one to three years, with fines between Rs. 100,000 and Rs. 200,000. This section emphasizes deterrent measures by increasing both the minimum penalties for repeat offenses.
Landmark Judgements Under Section 113
Vinod Kumar, Proprietor of Kunal Trading Corporation vs. State (NCT of Delhi) and Others (2020)
In the Vinod Kumar, Proprietor of Kunal Trading Corporation vs. State (NCT of Delhi) and Others (2020) case, the Hon’ble High Court of Delhi decided that the FIR lodged under Sections 103 and 104 could not be dismissed. The court affirmed that the petitioner could argue that a rectification application had previously been filed regarding the trademark’s assessment, in line with Section 113(2).
Notably, the court acknowledged that FIRs can only be quashed under limited circumstances, such as fraud allegations where no crime is evident. Additionally, it emphasized that since the Intellectual Property Promotion Board had halted the trademark registration for the plaintiff, they could not claim to be the registered trademark’s proprietor, rendering the lawsuit non-viable.
Bennet, Coleman And Company Limited vs. Vnow Technologies Private Limited & Anr. (2023)
In Bennet, Coleman And Company Limited vs. Vnow Technologies Private Limited & Anr. (2023), the plaintiff asserted that the ‘NOW’ mark was crucial to its brand identity, belonging to its popular channel, Times Now. The petitioner contended that the respondent’s use of ‘NOW’ caused potential confusion among viewers due to the similarity of services provided.
The Hon’ble High Court of Delhi ruled favorably in favor of the petitioner, determining that their prior registered trademark took precedence over the respondent’s usage. The court ordered restrictions on the respondent’s use of the mark to prevent confusion, ensuring clarity in service origin.
Rachna Sagar Pvt. Ltd. vs. State of NCT of Delhi & Anr. (2023)
In the case of Rachna Sagar Pvt. Ltd. vs. State of NCT of Delhi & Anr. (2023), the Hon’ble High Court of Delhi halted proceedings related to the FIR under Sections 103 and 104. It emphasized that since a rectification application was already in progress, Section 113 mandates the stay of proceedings. The court indicated that the final decisions would depend on the rectification application’s outcome as it relates to trademark registration.
Conclusion
Trademark protection is a longstanding concept, as old as the need for fairness in business practices. The procedures for challenging the validity of a trademark’s registration are laid out in the Trade Marks Act, 1999, ensuring a system that can deliver justice to deserving parties. Section 113 not only outlines procedural steps but also dictates how courts should function in such cases and what is expected from the accused.
The legal structure allows the accused adequate time to apply for rectification of the trademark register. The courts possess the authority to extend timelines for filing applications wherever warranted. By providing these options, Section 113 assures that proceedings occur only when the accused fails to rectify their standing in the trademark register during allowed periods. Each case brings its unique blend of legal interpretations, and provisions like Section 113 ensure flexibility while safeguarding the rights of the accused, allowing them a fair opportunity to showcase their case and defend their interests.
Frequently Asked Questions (FAQs)
What is the purpose of a trademark?
Trademarks serve to protect a unique identity associated with a product, business, or service. They help consumers trace the origin of goods and services, maintaining quality and reputation.
What are registered and unregistered trademarks?
The Indian Trademark Act, 1999 allows for trademark registration, providing comprehensive rights to registered trademarks. In contrast, unregistered trademarks lack similar protections and are instead defended through common law principles; however, prior users of unregistered trademarks have certain rights under the Act.
What are ‘indications of source’?
On international platforms, ‘indications of origin’ refer to specific geographical identifiers. In the context of trademarks, these indications denote the origin of goods or services, ensuring consumers understand where products come from.
Is there any provision for an infringement suit for unregistered trademarks under the Trademarks Act, 1999?
No, the Act does not allow for infringement suits for unregistered trademarks. However, prior users can assert rights over subsequently registered marks under Section 34, and Section 35 protects certain common law rights from infringement by registered trademark owners.
