Trademark is one of the components of intellectual property that ensures the protection of mark of the owner. Intellectual property is the development of human intellect in which any unique creation, idea, inventions, or mark is being protected. Intellectual property is legal right that is provided to the inventor of unique product for the protection of their right for a specific period of time. The intellectual property rights help people to declare or claim ownership over their creativity or inventions in various fields. The main objective of the intellectual property rights is to motivate or inspire the invention, ideas, which includes inventions, artwork, or technology for the effective increase in economic growth of the country. Intellectual property rights expand the inducement for an individual to continue to strive to produce such new inventions or creations which can create new opportunities. Trademark is not a mandatory requirement of the law but once it has been accepted, the allotted can advertise in a prescribed manner. In recent years, due to rapid development that takes place in country at various sectors, a productive development in industrial sector can be seen to lead the growth in the extent of intellectual property rights.
Trademark provides an exclusive right to the owner of the mark to use that mark and also to prevent others for using that mark simultaneously for their own purpose. As we know trademark as an element of IPR, registration for trademark is not compulsory for the individual or enterprise but it provides protection against any kind of violation to rights. It is the kind of intellectual property which includes name, number, design, expression, or sign which give recognition to the products or services. Trademark is a sign that differentiates the goods or services of different enterprises. It is different from any other form of components of intellectual property rights such as copyright, patent, geographical indication and others. Trademark usually advertises the products whose symbols, designs are different from others which are already in trade competition. Trademark safeguards the interest of both consumer and trader. Consumer can relate the product and its quality which has been assured by the trader with the other trader. Trader on the other hand, can prevent the unnecessary interference of competitor from using his own mark and take profit. For this trader must ensure about the distinctiveness of his mark. The person applicant has to mention certain necessary information regarding to their mark as type of goods, mark, class of service before the Registrar. Registrar is the final authority to determine in which category the Particular good shall fall.
World Intellectual Property Organization (WIPO) is one of the specialized and important agencies of the United Nations. WIPO came into force on 26 April 1970 which was created under Convention on Establishing World Intellectual Property Organization. WIPO is a successor to BIRPI which administered the Berne Convention for the protection of literary and artistic works and Paris Convention for the protection of Industrial Property. WIPO succeeded the BIRPI because its principles were not adequate to deal with the new problems that have emerged. The main objective behind the formation of WIPO is to promote and protect the intellectual property across the world with the cooperating member countries.
Similarly, Paris Convention which was established for the protection of industrial property signed in Paris on 20 March 1883. It was one of the first intellectual property treaty signed at the international level and it is still in force. It has been established for the purpose of safeguarding the interest of the inventor or the owner of the property in other member countries also. Paris Convention provides common standard to the applicant for the protection of their right. Under this Convention, an applicant can file an application for the protection of their property rights at same country in which he has applied for. The only requisite to file an application is that the applicant must ensure that the country in which he is applying for must be a member country to the Paris convention.
In India earliest, there was Trademark and Merchandise Act, 1958 which was replaced by Trademark Act, 1999 with complies to TRIPS, Trade related aspects of Intellectual Property Rights. The main motive of this act is to safeguard the rights of trademark and provide legal remedies. Trademark constitutes the origin, quality and goodwill which is affixed to the enterprise and with the help of which consumer identifies business, brand.
Under section 2(zb) of Indian trademark Act, 1999 trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging, and combination of colours. A mark can include device, brand, heading, label, ticket, name, signature, work, letter, numeral, shapes of goods, combination, and packaging.
Trademark Law deals with registration, protection, and prevention of fraudulent use of mark. It also provides rights acquired by registered trademark and also the remedies to the owner.
Trademark law provides recognition to the mark of owner and also provides exclusive right so that the owner can use it in an effective manner. But when third party violates the exclusive rights of registered trademark, it is known as infringement to the trademark. Mostly people use deceptive logos and brands to advertise their copied product for gaining profits. Trademark law protects the interest of both registered and non-registered trademark .
Remedy is a measure to redress the wrong which has been done arbitrarily by other just to gain profit by using misappropriate methods and the motive behind such act is to deceit others. Under trademark law, basically there are two types of remedies available for the violation of rights – Civil and Criminal remedies.
Civil remedies includes;
- Injunction, Temporary and Perpetual
- Removal of product
- The first and foremost remedy provided under this act is that the aggrieved person can file a suit for injunction in court of law to restrict the person for claiming their mark as original and earn profits. Two kinds of injunction can be granted by court either temporary or perpetual by taking into consideration the nature of the suit. When the concerned suit is about to get a decree and is of permanent in nature, such suit is perpetual injunction. Perpetual injunction is granted on the merits of the case. Temporary injunction is granted for a specific time period before the passing of the final decree by the court. This is a necessary remedy which can be initiated after getting the knowledge about violation to the right.
- Damages is another form of remedy and is claimed by the person who has an exclusive right to the mark by producing the certificate of registration to the concerned authority and restrict the person who intentionally uses his mark with the purpose to deceit other people. The original owner can claim damages by computing the loss he has suffered in the market. Owner can recover compensation by proving damage to his reputation.
- Another civil remedy which an owner can claim is that he can remove the product from the market which has been infringed. He will have to suffer some losses but it can prevent the intervention of third party from using his mark as it was his own skill, labour behind that unique mark.
Protection of intellectual property is available for both criminal and civil law. But criminal remedy is an effective means for protection of rights as compared to civil remedy. A criminal complaint can be filed against the infringer in the court of law. A person can directly give complaint to a magistrate under section 156(3) of CrPC or can lodge a complaint with the police.
Some provisions have been invoked as remedy under Trademark Act, 1999:
- Section 103 of Trademark Act provides the provisions for penalty to the infringer. If any person deceitfully applies their identical logo to registers trademark, he shall be liable for imprisonment for a term of not less than 6 months which can be extended upto 3 years with the fine of Rs. 50,000 which is subject to extension of Rs. 2,00,000.
- Under section 104 of the Act, if any person found indulged in assisting the accused to hire, sell or have possession of such identical goods or in the service to those goods for sale or, he shall be liable for imprisonment for a term not less than 6 months and may be extended to 6 years with fine of Rs. 50,000 which may be extended to Rs. 2,00,000.
- Penalty under section 105 which describes if any person committing the offence under section 103 and 104, shall be punishable for every subsequent offence with imprisonment for a term of less than one year or a fine of less than one lakh rupees.
The time limit for filing the suit of infringement of trademark in the court of law is three years from the date of infringement.
- Apart from both the civil and criminal remedies, provisions for administrative remedies under trademark law is also available. Opposition application may be filed by the third party to oppose the similar copy of trademark. Another way of remedy is the rectification of registers trademark to avoid the confusion between original and copied trademark. To prevent violation, the administrative authority can keep check over the trade of goods if the products are registered.
Trademark is a unique symbol used by the individual or business organization which has an absolute right to use or sell it. The right may be enjoyed by the person to whom the owner of the right has permitted to use it. The right of trademark is protected under trademark law where several provisions prevent the intervention of third party into the right of original mark’s owner. Intellectual property is intangible in nature and cannot be kept in a locker, it is available to the general public. The right of trademark can be lost by abandoning the use of the mark or improper license. With the view to protect the trademark rights, one of the necessary components is that the mark must be unique which has no identical form or character to existing product. Under trademark law, provision for the remedy is also available to aggrieved person in the form of civil, criminal as well as administrative assistance. Violation of rights provide negative impact on the creativity of person and reduces the value of the product. It is very much important to ensure the safety of intellectual property rights. With the passage of time, new inventions and creations are on the way, it is a positive sign for the development of the society. Registration of trademark is increasing day by day, but still people are not much aware about their rights and liabilities towards intellectual property. To register the intellectual property or to avail the benefits from the same, it is necessary for the individual to convert that intellectual property into tangible form so that it can be recognized and get registered.
Yogesh Sharma, Trademark Law: Civil and Criminal Remedies, Ex Gratia Law Journal, (March 27, 2021), https://exgratialawjournal.in/blawg/ipr/trademark-law-civil-and-criminal-remedies-by-yogesh-sharma/.