CRIMINAL COMPLAINT FOR TRADEMARK INFRINGMENT :
Direct Complaint Before the Police:
To commence criminal actions against the infringer, the owner must file a criminal complaint under Sec. 156 of the Code of Criminal Procedure, 1973. In the circumstance that the police refuse to file an FIR, the owner may file a complaint with the magistrate under section 190 of the code. No court below the level of Metropolitan Magistrate or Judicial Magistrate First Class shall try violations of this Act.
Setting the criminal matters:
One of the primary reasons why entrepreneurs do not opt for criminal prosecution is the absence of available exits. However, the condition of the courts has altered drastically, and the courts are now becoming more vigilant in resolving criminal problems, as explained below.
(a) By the Plea Bargaining :
The Code of Criminal Procedure (1973), Chapter XXIA addresses Plea Bargaining. The accused may file a plea-bargaining application pursuant to section 265-B following the filing of the police’s charge sheet. A notice is issued to the complainant or the public prosecutor upon such a request. In accordance with section 265-C of the Code of Criminal Procedure, an MSD (Mutually Satisfactory Disposition) deed is executed and signed if the complainant accepts a settlement. Upon execution of the same, the accused is typically found guilty but without a sentence. Nonetheless, if no such decision has been made pursuant to section 265-D, the court shall continue in accordance with the provisions of the Code from the time the application under paragraph (1) of section 265-B was filed.
(b) By Writ Petition or Quashing :
As violations of the Trademark and Copyright Act are of a significant and serious nature, they cannot be resolved by filing an application under section 320 of the Code of Criminal Procedure. However, under section 482 of the Code of Criminal Procedure, the FIR might be dismissed if the parties to the case have settled.
Provision under Trademark act 1999 of India:
Under Chapter XII, which addresses offenses and punishments, the Trade Marks Act of 1999 also includes criminal remedies for infringement and passing off.
Sections 103 and 104 provide for imprisonment of not less than six months and up to three years and a fine of not less than fifty thousand rupees that may be increased to two lakh rupees in the event of a fraudulent trademark application and the sale of goods bearing a false trademark.
According to Section 105, any person who has committed an offense specified in Sections 103 or 104 shall be punished for the second and every subsequent offense with imprisonment of not less than one year but not more than three years and a fine of not less than fifty thousand rupees but which may extend to two lakh rupees. The legal process for instituting a case for trademark infringement is three years from the date of the infringement.
Section 115 (4) of the Act describes the police’s search and seizure authority and procedure. The police can search and seize any product that warrants legal action for trademark infringement.
In the case of a default by a company, the organization and every person in management responsible for the company’s business behaviour at the time of the violation shall be subject to prosecution and punishment.
Section 102 to 107 of Trademark act 1999 related to criminal action in case of Trademark Infringement:
102. Falsifying and falsely applying trade marks.—
(1) A person shall be deemed to falsify a trade mark who, either,—
(a) without the assent of the proprietor of the trade mark makes that trade mark or a deceptively similar mark; or
(b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.
(2) A person shall be deemed to falsely apply to goods or services a trade mark who, without the assent of the proprietor of the trade mark,—
(a) applies such trade mark or a deceptively similar mark to goods or services or any package containing goods;
(b) uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark.
(3) Any trade mark falsified as mentioned in sub-section (1) or falsely applied as mentioned in sub-section (2), is in this Act referred to as a false trade mark.
(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods or services, the burden of proving the assent of the proprietor shall lie on the accused.
The Trade Marks ACT, 1999
103. Penalty for applying false trade marks, trade descriptions, etc.—Any person who—
(a) falsifies any trade mark; or
(b) falsely applies to goods or services any trade mark; or
(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying, a trade mark; or
(d) applies any false trade description to goods or services; or
(e) applies to any goods to which an indication of the country or place in which they were made or produced or the name and address of the manufacturer or person for whom the goods are manufactured is required to be applied under section 139, a false indication of such country, place, name or address; or
(f) tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied under section 139; or
(g) causes any of the things above-mentioned in this section to be done, shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees: Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.
The Trade Marks ACT, 1999
104. Penalty for selling goods or providing services to which false trade mark or false trade description is applied.—Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, goods or things, or provides or hires services, to which any false trade mark or false trade description is applied or which, being required under section 139 to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer, or person for whom the goods are manufactured or services provided, as the case may be, are without the indications so required, shall, unless he proves,—
(a) that, having taken all reasonable precautions against committing an offence against this section, he had at the time of commission of the alleged offence no reason to suspect the genuineness of the trade mark or trade description or that any offence had been committed in respect of the goods or services; or
(b) that, on demand by or on behalf of the prosecutor, he gave all the information in his power with respect to the person from whom he obtained such goods or things or services; or
(c) that otherwise he had acted innocently, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees: Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.
The Trade Marks ACT, 1999
105. Enhanced penalty on second or subsequent conviction.—Whoever having already been convicted of an offence under section 103 or section 104 is again convicted of any such offence shall be punishable for the second and for every subsequent offence, with imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees: Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than one year or a fine of less than one lakh rupees: Provided further that for the purposes of this section, no cognizance shall be taken of any conviction made before the commencement of this Act.
The Trade Marks ACT, 1999
106. Penalty for removing piece goods, etc., contrary to section 81.—If any person removes or attempts to remove or causes or attempts to cause to be removed for sale from any premises referred to in section 81 or sells or exposes for sale or has in his possession for sale or for any purpose of trade or manufacture piece goods or cotton yarn or cotton thread which is not marked as required by that section, every such piece and every such bundle of yarn and all such thread and everything used for the packing thereof shall be forfeited to Government and such person shall be punishable with fine which may extend to one thousand rupees.
The Trade Marks ACT, 1999
107. Penalty for falsely representing a trade mark as registered.—
(1) No person shall make any representation—
(a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered trade mark; or
(b) with respect to a part of a registered trade mark, not being a part separately registered as a trade mark, to the effect that it is separately registered as a trade mark; or
(c) to the effect that a registered trade mark is registered in respect of any goods or services in respect of which it is not in fact registered; or
(d) to the effect that registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitation entered on the register, the registration does not in fact give that right.
(2) If any person contravenes any of the provisions of sub-section (1), he shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.
(3) For the purposes of this section, the use in India in relation to a trade mark of the word “registered”, or of any other expression, symbol or sign referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except—
(a) where that word or other expression, symbol or sign is used in direct association with other words delineated in characters at least as large as those in which that word or other expression, symbol or sign is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside India being a country under the law of which the registration referred to is in fact in force; or
(b) where that other expression, symbol or sign is of itself such as to indicate that the reference is to such registration as is mentioned in clause (a); or
(c) where that word is used in relation to a mark registered as a trade mark under the law of a country outside India and in relation solely to goods to be exported to that country or in relation to services for use in that country.