Trade Mark Litigation

India

Lex Orbis Intellectual Property Practice Manisha Singh Nair and Abhai Pandey

1. Sources of Law

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)

The primary source of law relating to trade marks and trade marks litigation is the Trade Marks Act 1999 (the ‘Act’). The provisions of the Act are carried out by the procedures laid down in the Trade Mark Rules 2002 (the ‘Rules’). However, the provisions of the Code of Civil Procedure 1908 (the ‘CPC’), govern the proceedings of the civil court in trade mark litigation. The Act as well as the Rules are federal laws and extend to the whole of India. There is no separate or concurrent state legislation in relation to trade marks in India. Similarly, the CPC is also federal legislation and extends to the whole of India except the State of Jammu & Kashmir. After India’s accession to the World Trade Organisation and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) in 1995 and 1994 respectively, the trade mark laws in India have undergone comprehensive change. The erstwhile Trade and Merchandise Marks Act 1958 was repealed by the Act with effect from 15 September 2003. The Act provides comprehensive protections to trade mark rights as envisaged in the TRIPS.
Case law, ie, the decisions of the courts in India are the other source of law in trade mark litigation. The decisions of the Supreme Court of India are binding on all courts in India. Similarly, the decisions of every High Court are binding on all courts situated in the territory over which the High Court exercises jurisdiction.
Some of the important international treaties and conventions on trade marks to which India is signatory are:
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS): India signed TRIPS in 1994 and with effect from 15 September 2003 the erstwhile Trade and Merchandise Marks Act 1958 was repealed by the Act of 1999 to incorporate minimum protection to trade mark rights as envisaged in the TRIPS.
Paris Convention on Industrial Property: India ratified the Paris Convention on Industrial Property in 1998 and extended the special provisions for maintaining priority date in India of the application filed for registration of a trade mark in any of the Paris Convention countries, provided the Indian application is filed within six months of the filing of the application in any of the Paris Convention countries.
The Government of India has decided to accede to the Madrid Protocol for International Registration of Trade and Service Marks 1989, but the official accession and corresponding amendments in the Act and the Rules are yet to take place.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?

National statutory law on the subject takes priority over all other sources. Accordingly, in trade mark litigation the provisions of the Act are supreme. As a secondary source the courts rely on the decisions of the superior courts. However, in the absence of a statutory provision or decision of a superior court on any point of law, the courts do rely and sometimes implement the provisions of international treaties and conventions.
Some of the leading principles governing international trade mark law were applied by the courts in India much prior to India’s ratification of TRIPS or incorporation of such principles in the domestic statutory law. For instance, the courts in India recognised and decided cases on internationally recognised principles such as ‘trans-border reputation’, ‘well-known marks’, ‘doctrine of dilution’, etc and granted orders in the nature of ‘Anton Pillar Order’, ‘Mareva Injunction’, ‘John Doe type Roving Orders’. Further, the courts in India extended the protection to service marks when there was no statutory protection afforded under the erstwhile Trade and Merchandise Marks Act 1958.

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in your country? If so, on what grounds? Please briefly describe the opposition/cancellation procedure(s).

Yes, third parties can oppose national applications as well as request cancellation of national registrations. Since India is not yet part of the Madrid Union, the concept of supranational application does not apply in India.

Ground of opposition:
The trade mark applied for:

is devoid of distinctive character;
is descriptive;
consists exclusively of marks or indications which are customary in the current language or in the bona fide and established practices of the trade;
is of such nature as to deceive the public or cause confusion;
contains any matter likely to hurt religious susceptibilities of any class or section of the citizens of India;
is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950;
consists exclusively of the shape of goods which results from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods;
is identical to an earlier trade mark for similar goods or services;
is similar to an earlier trade mark for identical or similar goods or services;
is identical to and similar to an earlier well-known trade mark registered in India in respect of goods which are not similar;
is liable to be prevented by virtue of any law in particular the law of passing off;
is liable to be prevented by virtue of the law of copyright;
is in bad faith.

Brief procedure involved in opposition:

A trade mark application in India can be opposed within three months of its advertisement in the Trade Mark Journal by filing a notice of opposition. The prescribed period of three months is extendable by one month provided the opponent has filed a prior application for extension of time with the Registrar of Trade Marks.
Upon receipt, the Registrar serves a copy of the notice of opposition to the applicant.
The applicant is required to file a counter-statement in support of his application within two months of the receipt of notice of opposition. If the applicant fails to do so he shall be deemed to have abandoned his application.
Within two months of the receipt of the counter-statement, the opponent is required to file evidence by way of affidavit in support of his opposition or write to the Registrar that he does not desire to adduce evidence but intends to rely on the facts stated in the notice of opposition. The aforesaid two month period is extendable by another month provided a prior application for extension of time has been filed. If the opponent fails to do any of the above, he shall be deemed to have abandoned his opposition.
Similarly two months (extendable by one month) is given to the applicant to adduce any further evidence in support of his application, if he so desires. If he does not desire to do so he may send his intention in writing to the Registrar within the aforesaid period.
If the applicant prefers to adduce further evidence, opportunity is given to the opponent to file evidence in reply within one month of the receipt of the evidence from the applicant.
Upon completion of evidence as described above, the Registrar gives notice to the parties of the first date of hearing.
Within 14 days of the receipt of notice of hearing, the parties are required to notify to the Registrar of their intentions to appear in the matter.
Thereafter, regular hearings in the matter take place before the Registrar and the Registrar decides the matter on merits.

The grounds and procedures involved in cancellation of a registered trade mark are similar to the opposition as described above.

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

Trade marks are enforced in a District Court or a High Court having original side jurisdiction. There are no specialised courts in India for trade mark enforcement. However, some of the High Courts in India have developed significant expertise in intellectual property rights enforcement through sheer disposal of a large number of cases.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

All courts in India are bound by the decisions of the Supreme Court of India. Similarly, District Courts are bound by the decisions of the Supreme Court of India as well as that of the High Court which exercises jurisdiction over the said District Court. Opinions or the decisions of the foreign courts are not binding on Indian courts but carry persuasive value. The courts in India invariably consider and even rely upon the opinions and decisions of foreign courts.

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shall they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

No. Invalidity of registration of a trade mark raised in a suit for infringement is determined on a separate application for rectification of the register. Such application for rectification is required to be made to the Intellectual Property Appellate Board (IPAB). IPAB is an appellate forum for hearing the appeals arising out of the decisions and orders of the Registrar of Trade Marks and also enjoy the original jurisdiction in respect of rectification proceedings.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

Advocates enrolled with the state bar councils are authorised to appear before any court of law, IPAB or the Registrar of Trade Marks and to handle trade mark litigation. Trade mark agents registered under the provisions of the Act and Rules are authorised to appear before the Registrar of Trade Marks.

2.6 What is the language of the proceedings? Is there a choice of language?

The language of the proceedings before High Courts and IPAB is English. The proceedings before the district courts can be either in English or in the official regional language. A document in a foreign language to be filed in any proceedings must be accompanied by its certified translation in English.

3. Substantive Law

3.1 To what extent are unregistered trade marks protected under your country’s laws?

Unregistered trade marks are protected in India under the common law remedy of passing off. In order to succeed in an action for passing off, the plaintiff must prove:

its reputation and goodwill in India;
a misrepresentation by the defendant calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of the plaintiff; and
such misrepresentation actually or is likely to, cause damage to the plaintiff’s business, reputation or goodwill.

There is a plethora of case law where protection had been conferred upon the unregistered well-known trade marks against the locally registered trade marks. In other words the law of passing off is well settled in India.

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

Trade mark infringement is assessed in accordance with the provisions of section 29 of the Act, which provides that a trade mark is infringed if a person, without authorisation, uses an identical or deceptively similar mark in relation to goods or services for which the trade mark is registered.
Additionally, a registered trade mark is also infringed by unauthorised use of a mark in the following circumstances:

an identical mark in relation to similar goods or services; or
a similar mark in relation to similar or identical goods or services; or
an identical mark in relation to identical goods or services which is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

A registered trade mark having a reputation in India is also infringed if a person, without authorisation, uses an identical or similar mark in relation to any goods or services provided the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.
A registered trade mark is also infringed if it is used as a trade name or part of a trade name or by way of advertising if such advertising takes unfair advantage of and is contrary to honest practice in industrial or commercial matters, or is detrimental to the distinct character; or is against the reputation of the trade mark.

3.3 Are there other causes of action for trade marks (eg dilution)?

The causes of action for infringement of a registered trade mark are elaborated above which include dilution of a registered trade mark. For an unregistered trade mark, cause of action lies in passing off which requires reputation and goodwill of the trade mark complained of, misrepresentation by the defendant that is likely to or causes damage to the plaintiff’s reputation and goodwill.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

Yes, a trade mark can be enforced against a domain name, a trade name, a pseudonym or other distinctive signs, provided such misuse is likely to cause confusion on the part of the public or which is likely to have an association with the trade mark.

3.5 On what grounds can a trade mark be invalidated?

The grounds of opposition as described in 2 above are also available for invalidation of a trade mark.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

Yes, a registered trade mark can be taken off the register upon application by any person aggrieved on the ground of either:

that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services, by any proprietor thereof for the time being up to a date three months before the date of the application; or
that five years have elapsed from the date of registration and there was no bona fide use of the registered trade mark in relation to the goods and services for which it is registered.

The application in India of trade marks to goods sold or exported from India and any other act done in relation to goods so sold or exported amounts to use of the trade mark in India. The same principle applies for services.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

In addition to the grounds available for invalidation of a trade mark, the following defences can be used by an infringer:

the plaintiff has no title to sue;
the use of the mark by the defendants is not an infringement under s 29;
the defendant has a statutory right to use the mark by virtue of concurrent registration;
the defendant’s use is prior;
the use complained of is bona fide use by the defendant of his name or that of his place of business, or the name, or of the name of place of business of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of goods or services;
that there is a well-known and established use of the word or words which the trade mark contains as the name or description of the article or substance or service by a person or persons carrying on trade therein or that the article or substance was formerly manufactured under a patent that a period of two or more years has elapsed after the cessation of the patent and that the said word is the only practicable name or description of the article or substance; or
the plaintiff is debarred from suing or claiming the reliefs sought by his own conduct, for example, the plaintiff’s trade is fraudulent or his trade mark is deceptive, or he is guilty of estoppel, acquiescence, licence or delay, or abandonment, etc.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

The Trade Marks Act 1999 does not provide for any express provision to bring a counterclaim on the basis of inflicting harm on the competition. And it is not usual to bring separate antitrust violation proceedings in or during trade mark cases.

3.9 Can a court only partially invalidate a trade mark?

During the pendency of a lawsuit, the invalidation of a registration by cancellation or varying the registration of a trade mark is determined by an application to the IPAB. As per section 57 of the Act, IPAB is empowered to partially invalidate the registration of a trade mark.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

Yes it is possible to amend a registered trade mark during a lawsuit.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

The Court can also deny the injunctive relief thereby imposing the unenforceability of a trade mark when it finds that there is suppression or misrepresentation of material facts. Expiry of time limit for restoration of a trade mark may also render a trade mark unenforceable.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

Yes, a trade mark holder can bring a lawsuit claiming both trade mark infringement and unfair competition. For unregistered trade marks it is possible to bring unfair competition proceedings.

4. Parties to Litigation

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

A suit for trade mark infringement can be instituted by the registered proprietor or by a registered user. A registered user can be an exclusive or non-exclusive licensee whose name appears on the register of trade marks and who has been permitted by the registered proprietor to use the trade mark by way of a licence. In a suit instituted by a registered user (exclusive or non-exclusive licensee), the registered proprietor must be joined in the suit either as the plaintiff or defendant.
An unregistered licensee or permitted user has no locus standi to institute a suit for infringement of the trade mark in respect of which such licence is issued.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

The Act does not provide for a declaratory judgment on non-infringement. However, any person who has been threatened by another person who is or is not the registered proprietor or the registered user of the trade mark, may institute a suit to obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuation of the threats and may recover damages.

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

Any person who is directly responsible for the conduct of the infringing business can be sued for trade mark infringement, which may include the proprietor of the proprietorship firm, partners of the partnership firm and a director or the managing director of a company. The Act does not provide for contributory liability for inducement of trade mark infringement. According to the provisions of the Act, the person liable for trade mark infringement is the person who:

affixes a registered trade mark to its goods or packaging;
offers or exposes goods for sale, puts them on the market, or stocks them for those purposes, or offers or supplies services under the registered trade mark;
imports or exports goods under the mark; or
uses the registered trade mark on business papers or in advertisements.

4.4 Is it possible to add or subtract parties during litigation?

Yes, the court may, either with or without the application of either party, order that the name of any party improperly joined be struck out or the name of a necessary party be added.

5. Enforcement Options

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

For a civil remedy, a registered proprietor can institute a suit for trade mark infringement and an unregistered owner can bring an action for passing off. In addition, a trade mark holder can also initiate rectification proceedings before the Registrar of Trade Marks or the IPAB to strike off a trade mark from the register where any other person has obtained such registration wrongly or fraudulently. Criminal remedies are also available against a person who falsifies a trade mark or who falsely applies a trade mark or a trade description. Criminal remedies are also available against the person who sells goods or supplies services to which a false trade mark or trade description is applied. In other words out-and-out counterfeiting attracts criminal proceedings.

5.2 Are criminal proceedings available? If so, what are the sanctions?

Yes, as described above a criminal remedy is available against a person who either falsifies a trade mark or applies a false trade mark or description to any goods or services or against a person who sells goods or supplies services to which the false trade mark or trade description is applied.
The above offences are punishable by imprisonment for a term of not less than six months which may extend to three years and with a minimum fine of Rs 50,000, extendable up to Rs 200,000.

5.3 Are border measures available?

Yes, a proprietor or a licensee of a registered trade mark may give notice in writing to the Collector of Customs to prohibit the importation of any goods if the imports of the said goods constitute infringement under the provisions of the Act. Further, the Commissioner of Customs, upon representation made to him that the trade mark complained of is used as a false trade mark, may require the importer of the goods, or his agents, to produce any documents in his possession relating to the goods and to furnish information as to the name and address of the person from whom the goods were consigned to India and the name and address of the person to whom the goods were sent in India.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions?

The courts do grant cross-border or extra-territorial injunctions on occasions. In recent times, courts have granted extra-territorial injunctions in domain name dispute cases and applied the principles of trade mark law in such disputes. In such cases injunctions have been issued against foreign defendants, namely, the bodies responsible for registration of the domain names.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

The courts in India do not recognise the blocking effect of ‘torpedo’ actions abroad.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute an arbitral award declaring a trade mark invalid?

Arbitration and mediation are available and are popular mechanisms for resolving disputes arising out of agreements between the trade mark holder and the licensee, assignee or franchisee. However, an arbitral award declaring a trade mark invalid is not enforceable before the Trade Mark Office and for invalidity, separate proceedings are required to be initiated as described above.

6. Procedure in Civil Courts

6.1 What is the format of trade mark infringement proceedings?

Trade mark infringement proceedings are instituted in the form of a civil suit for permanent injunction, a rendition of account or damages and delivery up.

6.2 Are disputed issues decided by a judge or a jury?

Disputed issues are decided by a judge. We have no jury system.

6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?

Documents, affidavits and expert witnesses form important part in trade mark infringement actions. Parties can bring the experts as witnesses. And cross-examination of witnesses forms part of civil proceedings.

6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What is its relevance in proceedings (eg party allegation, evidence)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from the losing party?

Survey evidence is used in civil actions to establish reputation and goodwill and to support acquired distinctiveness, etc and its relevance depends on the facts of the case. The party who is relying on such evidence decides which consumers are questioned in the survey and to check the veracity of the survey as evidence, the courts look at the scope, extent and mode adopted for the survey. The cost of the survey varies according to its size and extent and the reputation and expertise of the surveying agency. Recovery or award of such cost to the winning party is a matter for the court’s discretion.

6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings, and vice versa?

Yes.

6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?

Discovery is permitted by delivery of interrogatories or by way of an application to the court seeking direction to the opposite party to disclose all information, documents, etc in his possession, which are relevant in the matter.

6.7 What level of proof is required for establishing infringement or invalidity?

The evidence for establishing infringement must prove the highest probability.

6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

Typically trade mark infringement proceedings last for three to four years. One way to expedite the process is to seek the court’s direction for appointment of a court commissioner to record the evidence.

6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?

The option of raising the question of the invalidity of the registration of a trade mark and filing separate invalidity proceedings before the IPAB is the most commonly used delaying tactic adopted by defendants. According to s 124, where in a suit for infringement of a trade mark the defendant pleads the registration of the plaintiff’s trade mark is invalid, the court trying the suit shall stay the suit pending the final disposal of the rectification/invalidation proceedings.

7. Final remedies

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

The final remedies include:

permanent injunction;
damages or an account of profit; and
delivery up of the infringing labels and marks for destruction or erasure.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

It is possible to obtain a final injunction against future infringement provided the defendant has done something which is most likely to result in the infringement of the trade mark. A prominent recent case where a permanent injunction was granted against future infringement was Mars Incorporated v Kumar Krishna Mukherjee [2003] (26) PTC 60 (Del)) wherein the defendant had incorporated a company under the plaintiff’s well-known trade mark ‘Mars’ to carry out similar business to that of the plaintiff.
Injunctions are also effective against suppliers and customers.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

Both compensatory as well as punitive damages are available as monetary remedies. Compensatory damages can be calculated on the basis of reasonable royalty (Indian Performing Right Society Ltd v Debasis Patnaik & Ors [2007](34) PTC 201 (Del), or the lost profits or an account of profit and in the absence of any the court may adopt any other reasonable way to arrive at the compensatory damages. Punitive damages are awarded where there is a flagrant violation of the plaintiff’s right and usually in cases where the defendants opt not to appear in the matter and the matter proceeds ex parte.

8. Preliminary Relief

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

Preliminary injunctions, both ex parte and otherwise are available and are granted under the following conditions:

plaintiff has a prima facie case;
the balance of convenience lies in favour of the plaintiff; and
the plaintiff would suffer irreparable loss or injury, which may not be compensated by way of monetary relief.

8.2 Is ex parte relief available where defendant is given no notice at all? If so, under what conditions?

Ex parte preliminary injunctions are available under the above conditions with an additional condition that the delay caused due to notice to the defendant would defeat the purpose of the injunction.

8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

Plaintiffs are entitled to apply under Order XXIII of the Code of Civil Procedure 1908 seeking direction from the court for appointment of a Court Commissioner to search the defendant’s premises and to seize the infringing goods or evidence of infringement and preserve the same for trial.

8.4 Can the defendant put the validity of a trade mark at issue in preliminary injunction proceedings?

The defendant can raise the defence of invalidity of the trade mark at any stage of the proceedings and can apply to the IPAB for rectification of the trade mark register during the court proceedings. Upon filing such application to the IPAB, the defendant can apply to the court for a stay of the infringement proceedings until the disposal of the rectification application by the IPAB.

8.5 What is the format of preliminary injunction proceedings?

Preliminary injunction can be sought by way of an interim application under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure 1908 in the suit.

8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

The courts rely on the documents, affidavits of experts and survey evidence during the preliminary injunction proceedings.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

The level of proof must establish a prima facie case in favour of the plaintiff, which means that the plaintiff in all probability is likely to win the case after completion of the trial.

8.8 How long do preliminary injunction proceedings typically last?

Usually an ex parte preliminary injunction is confirmed or otherwise a preliminary injunction is granted within three months to one year from the date of institution of the suit.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

Yes.

9. Appeal Procedure

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

An appeal from the order of a District Court can be referred to the single bench of the High Court and an appeal arising out of the order of the single bench of the High Court may be referred to the larger bench of the High Court on the grounds of incorrect appreciation of facts or law or violation of principles of natural justice.

9.2 How long do appeal proceedings typically last?

Appeal proceedings usually last for two to four years.

10. Litigation Costs

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

The cost of litigation mostly depends on the expertise of the lawyers on record and on the engagement of the senior counsels. Typically, trade mark infringement litigation costs between US$5,000-US$15,000.

10.2 Are costs recoverable from the losing party?

Yes, costs are recoverable from the losing party. In a recent Seagram case (Austin Nichols & Co & Anr V Arvind Behl & Anr [2006] (32) PTC 133 (Del)) the Delhi High Court awarded a cost of US$50,000 approx in favour of the plaintiff.

11. Forthcoming legislation

11.1 What are the important developing and emerging trends in your country’s trade mark law?

The Government of India has recently decided to accede to the Madrid Protocol and to adopt the system of International Registration of Trade Marks and Service Marks. Accordingly, the current Trade Marks Act 1999 and the Trade Mark Rules 2002 are likely to be amended to incorporate the provisions required to adopt the system of the Madrid Protocol.

11.2 To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

In relation to trade mark enforcement no major trade mark legislation is in the pipeline.

12. Useful references

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

www.tmrindia.gov.in
P. Narayanan: Trade Mark Laws, Eastern Law Book House, 2005
Case law published in journal entitled Patents, Trade Marks and Copyright Cases