Remedies Available to the Proprietor of a Mark in Case of Infringement

Remedies Available to the Proprietor of a Mark in Case of Infringement

Section 135 of the Trademarks Act, 1999 deals with remedies or reliefs which the Court grants in any suit for infringement or for passing off which includes injunction, damages, account of profits along with or without any order for the delivery-up of the infringing labels or for the destruction or erasure of such marks or labels. An injunction may include an ex parte injunction or an interlocutory order for discovery of documents or for preserving infringing goods, documents or evidence pertaining to the subject matter or restraining the defendant from disposing or dealing with the assets which adversely affects the plaintiff’s ability to recover damages, costs or remedies. The nature of relief in passing off action is same as that of in infringement action provided there is similarity in marks.

The object of injunction is to restrain the defendant from infringing the mark or from passing off his goods as that of the plaintiff. If there is a possibility of the defendant destroying or incriminating materials, the Court may make an order for inspection of the premises of the defendant on an ex parte application by the plaintiff without giving the defendant notice of the application. It is better for the plaintiff to ask for an interim injunction to restrain the defendant from committing the complained acts until the orders are passed. It the matter is extremely urgent, the plaintiff can ask for an ex parte interim injunction before the interim injunction is fully heard. The plaintiff at his option will be granted either damages or account of profits, but not both. If the infringement is of a certificate mark, the Court can grant only nominal damages. With damages the defendant is required to give up his ill gotten gains to the aggrieved party and with account of profits the infringer is required to compensate the aggrieved party for the loss he has suffered.

The extent of damage is calculated from the estimates taken from the evidence. Costs in suits of infringement are according to the discretion of the Court subject to the provisions of Section 35 of Code of Civil Procedure. Generally Court does not order for discovery against a party to whom no reasonable cause of action is to be alleged. During delivery up of infringing labels, the goods bearing the deceptive mark in possession of the defendant may not be ordered to be destroyed instead the labels or marks will be erased from them. If the mark is stamped or printed on the goods and if erasure is not possible, then the goods will be ordered to be destroyed. These are the remedies which are available to the proprietor of a mark against infringement.

Ms. Thabitha Marion Varghese