Offences, Penalties and

Procedure

Dr. Ruchir Singh

Assistant Professor
Bennett School of Law
Introduction
Sections 101 to 121 deal with the matters relating to offences, penalties and procedure.
Some of the important provisions are discussed below.

1. Section 103 deals with the penalty for applying false trade mark, trade description, etc.
and imposes punishment 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.

2. Section 105 prescribes enhanced penalty on second and subsequent conviction for
offences committed under sections 103 and 104 and imposes punishment with
imprisonment 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.
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3. Section 106 provides penalty for removing piece goods, etc., in violation of the
provisions of Section 81 dealing with stamping of piece goods, cotton yarn and
thread. This section provides for forfeiture of goods to the government and fine upto
Rs. 1000.

4. Section 107 makes it an offence if a person falsely represents a trade mark as

registered. It has been clarified that use of symbols like “R” in circle in relation to
unregistered trade mark would constitute an offence. The punishment for such
offences is imprisonment for a term which may extend to three years or with fine or
with both. It is also clarified that where the mark in question is registered under the
law of the country outside India, the use of the word or other expression to denote
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5. According to Section 108, the use of any words which would lead to
the belief that a person’s place of business is officially connected with
the Trade Mark Office shall be treated as offence and be punishable with
imprisonment for a term which may extend to two years or with fine or
with both.

6. Section 109 contains provisions for penalty for falsification of entries

in the register. This offence is punishable with imprisonment not
exceeding two years or with fine or with both.
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Section 114 deals with offences by companies and provides that where a person
committing offence is a company, every person in charge of and responsible to the
company for the conduct of its business at the time of commission of an offence will be
liable. Where a person accused proves that the offence was committed without his
knowledge or he has exercised all due diligence to prevent the commission of such
offence, he will not be liable. However, where it is proved that an offence has been
committed with the consent or connivance or is attributable to any neglect of any
Director, Manager, Secretary or any other officer of the company; he shall be deemed to
be guilty of the offence. Explanation to this section defines a company as to mean body
corporate and includes a firm or other association of individuals. The explanation also
defines director in relation to a firm, as to mean a partner in the firm.
Relief in Suits for Infringement/Passing Off

• Civil Litigation: A suit can be initiated either under the law of passing
off or for infringement under the Trade Marks Act, 1999 depending on
whether the trade mark is unregistered, pending registration or registered
respectively.

Jurisdiction and Venue: The suit for passing off and/or infringement can
be initiated either in the District Court or in the High Court depending on
the valuation of the suit. The suit can be at the place where the rights
holder or one of the rights holders actually and voluntarily reside or work
for gain or carries on business.
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Elements of the Complaint: In the complaint, the rights holder is required to demonstrate
that (a) the alleged infringing act involves a mark that is identical or similar to a trade
mark of the rights holder; (b) the infringing representation of a trade mark is being used
in connection with goods or services and might lead to confusion in public regarding the
origin of the infringing goods/services; (c) the unlawful act interfered with the trade
mark holder’s rights of exclusive use or caused the rights holder economic loss.

Section 135 expressly stipulates that the relief which a Court may grant in any suit for
infringement or for passing off referred to in Section 134 includes injunction (subject to
such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages
or an account of profits, together with or without any order for the delivery up of the
infringing labels and marks for destruction or erasure.
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• Ex-parte Interim Injunction: Most Indian Courts will grant ex-parte
interim injunctions. Ex-parte interim injunction is a temporary
injunction granted without any notice to the infringer restraining him
from using the infringing mark during the pendency of the trial. This
injunction is normally granted at the early stages of the trial and many
a times on the first date of hearing itself, provided that the rights
holder is able to establish its rights before the Court and prove the
gravity of the offence, merits immediate consideration.
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• Criminal Litigation: The Trade Marks Act, 1999 provides for remedies for infringement
under the criminal laws too. The police have the power to suo-motu conduct raids and
seizure operations. However, the use of such powers by the police is minimal. Under the
criminal law, should the rights holder not be aware of the details (name, address, dates of
infringement, etc.) of the infringers, it is advisable to procure a general search and seizure
warrant from the local magistrate and thereafter organize search and seizure operations in
that area. In the alternative, should the rights holder be aware of the details of the infringer a
complaint can be lodged with the police authorities and raids organized accordingly. In a
criminal proceeding, the litigation is between the State and the infringer and therefore the
rights holder has a limited role to play. The maximum imprisonment that an infringer can get
under the Trade Marks Act, 1999 is up to three years with a fine of up to Rs. 2,00,000.
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• Provisions under the Customs Laws: Besides the civil and the criminal
remedies mentioned herein above, there are also certain provisions under
the trade mark law and the customs law which prohibit the importation of
infringing goods in India. The Customs authorities have promulgated
guidelines known as the Intellectual Property Rights (Imported Goods)
Enforcement Rules, 2007, under which the rights holder can record their
registered trade marks with the Customs authorities. These guidelines
authorize the Custom officials to seize goods infringing the trade marks of
the rights holder at the border without obtaining any orders from the
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These rules also empower the Custom officers to destroy the suspended
goods under official supervision or dispose them outside the normal
channels of commerce after it has been determined that the goods
detained have infringed the trade marks of the rights holder and that no
legal proceeding is pending in relation to such determination. These
rules also prohibit the re-exportation of the goods infringing trade marks
in an unaltered state.
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The distinction between a suit based on infringement and that based on passing
off was explained by the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v.
Navaratna Pharmaceutical Laboratories, AIR 1965. It was explained that “while an
action for passing off is a common law remedy being in substance an action for
deceit, that is, a passing off by a person of his own goods as those of another, that is
not the gist of an action for infringement. The action for infringement is a statutory
remedy conferred on the registered proprietor of a registered trade mark for the
vindication of the ‘exclusive right to the use of the trade mark in relation to those
goods’. The use by the defendant of the trade mark of the plaintiff is not essential in
an action for passing off, but is the sine qua non in the case of an action for
infringement.”
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In a passing off action the plaintiff’s right is “against the conduct of the
defendant which leads to or is intended to lead to deception. Passing off is said
to be a species of unfair trade competition or of actionable unfair trading by
which one person, through deception, attempts to obtain an economic benefit of
the reputation that the other has established for himself in a particular trade or
business. The action is regarded as an action for deceit”.

Passing off action depends upon the principle that nobody has a right to
represent his goods as the goods of some body else. That is, a man shall not sell
his goods or services under the pretense that they were those of another person.
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The modern tort of passing off has five elements—

(1) a misrepresentation;

(2) made by a trader in the course of his trade;

(3) to prospective customers of his or ultimate consumers of goods or

services supplied to them;

(4) which is calculated to injure business or goodwill of another trader (in the
sense that this is a reasonably foreseeable consequence); and

(5) which causes actual damage to a business or goods of the trader by whom