Copyright Law Blog

Temporary Breather Against Criminal Prosecution for “lakhani” for False Lodging Complaint Under Copyright as Well as Trademark Act

July 10th, 2009 at 06:35am Under copyright act

Lakhani Rubber Udyog Ltd. Manufactures Hawai Chappel.  They are registered owners of a trademark. Lakhani Rubber Udyog Ltd. filed a complaint with the Senior Superintendent of Police, Jallandhar against M/s. Saraswati Utpadan Pvt. Ltd. alleging that they are marketing inferior goods with the label ‘Lakhani’ illegally and requesting action under Section 63 of the Copyright Act read with Section 78-79 of the Trade and Merchandise Marks Act, 1958. On enquiry the complaint was found to be incorrect as no infringing material was discovered on the said premises belonging to Saraswati Utpadan Pvt. Ltd. as alleged in the complaint.

A complaint was filed by Saraswati Utpadan Pvt. Ltd. against the Lakhani Rubber Udyog and in enquiry report Senior Superintendent of Police, the Superintendent of Police stated that application submitted by the aforesaid Lakhani Rubber Udyog, Faridabad was found to be false after investigation.  Due to which the Saraswati Utpadan Pvt. Ltd. had lost its goodwill. Therefore the SHO, Adampur is being directed to take action against the aforesaid officer of Lakhani Rubber Ltd. U/s 182 IPC.

The Station House Officer of the Police Station, Adampur thereafter filed a complaint petition before the Chief Judicial Magistrate against the Managing Director of Lakhani Rubber Ltd. as well as complaints (i.e. Appellants herein).

The Appellant questioned the legality and/or validity of the said report under Section 195(1) of the Code of Criminal Procedure, 1973 and other provisions before the High Court of Punjab and Haryana by filing an application under Section 482 of the Code.  By reason of the impugned judgment dated 17.8.2005, the High Court dismissed the said application.

As per the provisions of Section 195(1) of the Code of Criminal Procedure, 1973 the complaint petition could have been filed only by the Senior Superintendent of Police, Jalandhar or any authority higher in rank to him.

It was contended by the Respondents that as the complaint petition having been filed pursuant to the directions of the Senior Superintendent of Police itself by SHO, it is valid in law.

Section 182 of the Indian Penal Code, indisputably, provides for an offence falling under Chapter X of the Indian Penal Code.

Section 195 provides for prosecution for contempt of lawful authority of public servant, for offences against public servant and for offences relating to documents given in evidence.  It contains an embargo stating that ‘no court shall take cognizance of an offence punishable, inter alia, under the aforementioned provision except on the complaint in writing by the public servant concerned or by some other public servant to whom he is administratively subordinate’.

Supreme Court in its judgement dated 22/04/2008 held that the High Court, committed a manifest error in so far as it held that the as the complaint was addressed to the SHO, he was the appropriate authority to lodge a complaint in respect of an offence punishable under Section 182 of the Indian Penal Code.  The fact that the search was made pursuant to the directions issued by the Senior Superintendent of Police, Jalandhar is not in dispute.

Section 195 contains a bar on the Magistrate to take cognizance of any offence.  When a complaint is not made by the appropriate public servant, the Court will have no jurisdiction in respect thereof.  Any trial held pursuant thereto would be wholly without jurisdiction.  In a case of this nature, representation, if any, for all intent and purport was made before the Senior Superintendent of Police and not before the Station House Officer.

No complaint, therefore, could be lodged before the learned Magistrate by the Station House Officer. Even assuming that the same was done under the directions of Senior Superintendent of Police, Jallandhar, Section 195, in no uncertain terms, directs filing of an appropriate complaint petition only by the public servant concerned or his superior officer.  It, therefore, cannot be done by an inferior officer.  It does not provide for delegation of the function of the public servant concerned.

In terms of sub-section (3) of Section 340 of the Code, a complaint may be signed by such an officer as the High Court may appoint if the complaint is made by the High Court.  But in all other cases, the same is to be done by the presiding officer of the court or by such officer of the court as it may authorize in writing in this behalf.  Legislature, thus, wherever thought necessary to empower a court or public servant to delegate his power, made provisions therefor.  As the statute does not contemplate delegation of his power by the Senior Superintendent of Police, we cannot assume that there exists such a provision.  A power to delegate, when a complete bar is created, must be express; it being not an incidental power.

The Supreme Court relied on the ratio laid down in Daulat Ram v. State of Punjab [(1962) 2 SCR 812], by Hidayatullah, J. (Single Judge) as well as decision was followed by a Division Bench of this Court in State of U.P. v. Mata Bhikh & Ors. [(1994) 4 SCC 95] and held that said decisions are squarely applicable to the facts of the present case and for the reasons aforementioned, the impugned judgment cannot be sustained and set aside judgement thereby allowing the appeal.

The Supreme Court further held that another complaint petition would be maintainable at the instance of the appropriate authority.

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Trademark Law India

July 8th, 2009 at 12:43pm Under trademark law

Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at par International Trademark Law.Recently India has signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India like many countries around the globe e.gChina. Though unlike China and many other countries Multi class filing is allowed in India.

Statue: The various statues dealing with Intellectual property laws in India are as follows:

1. Trademarks Act, 1999

2. Copyright Act, 1957

3. Patents Act, 1970 as amended by Patents (Amendments) Act, 2005

4. Designs Act, 2005

5. Code of Civil Procedures, 1908

6. Indian Penal Code, 1860

7. Geographical Indication of Goods (Registration & Protection) Act, 1999

8. Semiconductor, Integrated Circuit Layout Design Act, 2000

9. Plants Varieties Protection and Farmers’ Rights Act, 2001

10. Information Technology Act, 2000

Requirement:A ‘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.

A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colors and any combination thereof.

The two main requirements of a trademark are that it must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and not deceptive. Therefore while selecting a trademark, words that are directly descriptive of the goods, common surnames or geographical names should be avoided as these confer weaker protection to the proprietor even if registered.

Now the concept of “well known mark” has been introduced after the last amendment and Section 2 (zg) defines a well known mark as:

“Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives suchservices that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”

While determining whether the mark is well-known mark, the registrar will take in to consideration while determining that the mark is a well known mark.

(a) the knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark.

(b) the duration, extent and geographical area of any use for that trademark.

(c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or servicesin which the trademark appears.

(d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of thattrademark.

(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.

Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademarkas a well known trademark for registration under this Act.

“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of distribution of or business circles dealing with the type of goods or services towhich the mark is applied.

The Registrar is not required to consider the following facts while determining a well known trademark.

a) The Trademark has been used in Indiab) The Trademark has been registeredc) The application for registration of the Trademark has been filed in India.d) The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India ore) The trademark is well known to the public at large in India.

Priority:For claiming a priority from an application filed in United States a corresponding application should be filed in India within 6 months of date of filing of original application.

Various Grounds for refusal:

Absolute grounds:

Section 9 of the Trademarks Act, 1999 sets out the absolute grounds for refusal of trademarks, which can be grouped under following heads:

a) Trademark is devoid of distinctive character;b) Trademarks that are descriptive;c) Trademarks likely to deceive of cause confusion;d) Trademarks or signs that are customary in current language and in the bonafide and established and customary practice of the trade;e) Trademarks comprising scandalous or obscene matter or likely to hurt religious susceptibilities in India;f) Trademarks consisting of shape which are purely functional or are necessary to obtain a technical result or give substantial value to the goods; org) Trademarks whose use is prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.

Prohibition:

Section 13 of the Trademarks Act, 1999 prohibits registration of any word as trademark which is:

a) Commonly used and accepted name of any chemical element or any chemical compound (as distinguished from mixtures) in respect of a chemical substance or preparation; orb) Declared by the World Health Organization and notified as such by the Registrar, as an International non-proprietary names.

Relative grounds of refusal:

Section 11 of the Trademarks Act, 1999 sets out the relative grounds for refusal of trademarks, which can be grouped under following heads:

a) identical or similar to a previous mark with and/or without similar or identical goods;b) Prohibition of use of the trademark under passing off or law of copyright;

Statutory defense available under the Act:

For registration:

a) Honest concurrent use;b) Acquiescence; orc) Prior user

Against Injunction suit or criminal matters

a) Use in accordance with honest practices in Industrial or commercial matters;b) Parallel Imports;c) Fair use in description of the goods or services; ord) Generic ness.

Special Considerations in case of well known mark:

As per Section 11 of the Trademarks Act, while considering an application for registration of a trademark and opposition filed in respect thereof the Registrar shall

a) protect a well known trademark against the identical or similar trademark.b) take into consideration the bad faith involved either of the applicant or the opponent affecting the rights relating to the trade mark.

However this provision shall not effect the trademark if it trademark has been registered in good faith disclosing the material information to the Registrar or where right to atrademark has been acquired through use in good faith before the commencement of this Act.

Enforcement of Trademarks Rights:

Opposition (before the Registrar) and Cancellation (before the Registrar as well as Appellate Board)

Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3months time.

Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and nonuse till the cancellation petition.

Before the Courts: Ex-parte Injunction, Permanent Injunction, Anton Pillar Order, and /or Arrest and Seizure of goods (irrespective of registration).

Assignment/ license:

Trademarks are now recognized as a “movable property” under the Indian law and can be therefore assigned/ licensed. A trademark can be assigned with or without the goodwillattached to it.

Renewal:

The trademarks can be renewed perpetually, are renewable for a period of 10 years on payment of prescribed fees.

Express processing:

Under Indian trademark law now it is possible to expedite the various proceeding e.g. search, examination etc. by filing a request with prescribed fees. Indian Trademarks law are at par with the International laws and has stringent procedures for safeguarding and protecting interest of the proprietor of mark.