Enforcing the Trademark Rights through the Police action
(Sections 103, 104, 105 & 115 of the Trademark Act 1999.)
Though the Police have powers to take action against the trademark infringement, not all infringement cases can be handled through the Police Department. for the limitations defined in Sections 103, 104, 105 & 115
Section 115 captioned as follows.
Cognizance of Certain Offences and the Powers of Police Officer for Search and Seizure
It is important to read subsection 3 and 5 of Section 115 of the Trademark Act 1999. Section 115(3) defines that the offences only under section 103 or section 104 or section 105 shall be cognizable.
Further reading of Section 115(4) that Any police officer not below the rank of deputy superintendent of police or equivalent, may, if he is satisfied that any of the offences referred to in sub-section (3) has been, is being, or is likely to be, committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence, wherever found, and all the articles so seized shall, as soon as practicable, be produced before a Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be:
Provided that the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved in the offence relating to trademark and shall abide by the opinion so obtained.
A bare retrieval of scope from this subsection relating to search and seizure by the police points to the following facts
- The police officer must be Deputy Superintendent of Police or equivalent
- The police officer can act only under Section defined under 115(3) i.e. Section 103, 104 & 105.
- Only search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence.
- Seized articles are to be produced before a Judicial Magistrate of the first class or Metropolitan Magistrate,
- Essentially, he shall obtain the opinion of the Registrar on facts involved in the offence relating to trademark and shall abide by the opinion so obtained.
Therefore, reading from down up, essentially the DSP shall obtain the opinion of the Registrar about the facts relating to the complaint, trademarks involved, and infringing trademark if any
As such Section 103 is related to essentially for
- falsifying mark.
- any die, block, machine, plate or other instrument for the purpose of falsifying or
- of being used for falsifying a trademark;
- false trade description to goods or services;
- an indication of the country or place, name or address;
- tampers with, alters or effaces an indication of origin and etc.
Hence, any proprietor who intends to make a complaint to the police, be prepared to assist the police department with a detailed query statement that should well assist the police department to seek proper clarifications about the technical elements of the marks in dispute, materials of both parties, and to find whether if there is a similarity or a deceptive similarity or replica.
Your Queries could include
- Registration status of the marks in dispute
- Phonetical simialrity
- Visual similarity
- Goods similarity
- Disntinctiveneess and uniquness of the marks
- Prior user
- Any rectification proceedings pending
- Any Court cases pending.
For any help, take the assistance of your Attorney/Advocate.
Regards
DG
Provisions Extract
Penalty for Applying False Trade Marks, Trade Descriptions etc.
103. 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 section139, 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 judgement,
impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
Penalty for Selling Goods or Providing Services to Which False Trade Mark or False Trade Description is Applied
104. 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 judgement,
impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty
thousand rupees.
Enhanced Penalty on Second or Subsequent Conviction
105. 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 reason to be mentioned in the judgement,
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.
Cognizance of Certain Offences and the Powers of Police Officer for Search and Seizure
115.-(1) No court shall take cognizance of an offence under section 107 or section 108 or section
109 except on complaint in writing made by the Registrar or any officer authorised by him in writing:
Provided that in relation to clause (c) of sub-section (1) of section 107, a court shall take
cognizance of an offence on the basis of a certificate issued by the Registrar to the effect that a
registered trade mark has been represented as registered in respect of any goods or services in respect
of which it is not in fact registered.
(2) No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class
shall try an offence under this Act.
(3) The offences under section 103 or section 104 or section 105 shall be cognizable.(4) Any police officer not below the rank of deputy superintendent of police or equivalent, may,
if he is satisfied that any of the offences referred to in sub-section (3) has been, is being, or is likely to
be, committed, search and seize without warrant the goods, die, block, machine, plate, other
instruments or things involved in committing the offence, wherever found, and all the articles so seized
shall, as soon as practicable, be produced before a Judicial Magistrate of the first class or Metropolitan
Magistrate, as the case may be:
Provided that the police officer, before making any search and seizure, shall obtain the opinion of
the Registrar on facts involved in the offence relating to trade mark and shall abide by the opinion so
obtained.
(5) Any person having an interest in any article seized under sub-section (4), may, within fifteen
days of such seizure, make an application to the Judicial Magistrate of the first class or Metropolitan
Magistrate, as the case may be, for such article being restored to him and the Magistrate, after hearing
the applicant and the prosecution, shall make such order on the application as he may deem fit.