Meaning of Trademark

According to the Trademark Act 1999, Section 2 (1) (zb) ” 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 and may include the shape of goods their packaging and combination of colours.”[1]

Trademark is nothing but a logo, symbol, design, phrase, picture or something else which distinguishes one product from another similar kind of product.

Falsifying and false applying of trademark

According to Section 102 of the Trademark Act 1999

 (1) A person shall be deemed to falsify a trade mark who, either—

(a) without the assent of the proprietor [2] of the trademark makes that trademark 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 trademark who, without the assent of the proprietor of the trademark–

(a) applies such trademark 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 trademark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trademark.

(3) Any trademark 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 trademark

(4) In any prosecution for falsifying a trademark or falsely applying a trademark to goods or services, the burden of proving the assent of the proprietor shall lie on the accused.[3]

In layman’s terms, a person is said to be falsifying a trademark when he/she makes a similar trademark or makes deceptively similar mark without taking the permission or assent of the real owner of the Trademark.

Also when an individual makes any alteration, addition or do something to genuine (real) trademark it is also considered as falsifying trademark.

False applying of a trademark.

Falsely applying of a trademark is said 

• when a person deceptively applies the falsified trademark to goods or services or any packet which contains goods.
• when a person uses that package which has a false trademark or deceptively similar trademark of the proprietor for the purpose of packaging, filling or wrapping any goods other than the real goods of the owner of the Trademark.

Section 102 also contains sub section 3 & 4 which are stated below

Section 102 subsection 3 states that any trademark mentioned in subsection 1 or 2 of Section 102 is referred to as a false trademark 

Subsection 4 states that in this type of cases the burden of proving the assent of the proprietor lies on the accused.

Cases relating to false application and trademarks

• Kasim Ali v/s State of Madhya Pradesh on 13 June 2016[4]
• Shameem Ahmed v/s Mohan Lal on 31 March 1966[5]

In the case of Kasim Ali v/s State of Madhya Pradesh, a complaint was filed against the applicant saying that applicants are using the brand name ‘SENTINELS’  for selling their electric product whereas the trademark has already been registered by M/S Vertex Manufacturing CO. Pvt.Ltd.  Thus the applicants are misusing the trademark and also cheating and confusing the public by using the same registered trademark. The court held that looking at the facts of FIR it seems that applicants have committed the offence of false applying under Section 102 of the Trademark Act 1999. The case went beyond this as there were also aspects related to the case.

In the case of Shameem Ahmed v/s Mohan Lal, a complaint was filed against Mohammad Ishaq Mohammad Ghulam by Shameem Ahmed alleging that they are using the same trademark ‘Biri 303’ which they have been using since time. In which court made them punished as they were falsely applying for someone else’s trademark.

Penalty for false applying and Falsifying trademark.

Penalty for false applying and Falsifying trademark has been defined under Section 103 of the Trademark Act 1999

In this particular clause, there are 7 conditions when a person is liable for the penalty of False applying and Falsifying of a trademark. The 7 conditions are as follow:

• Any person who falsifies any trademark
• If any person falsely applies trademark to any goods or services
• Any person having such an instrument or machine which is being used for falsifying trademark
• If any person applies a false trade description to any goods or services
• lies 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

• Tampers or alters the origin of goods
• Causes any of the things mentioned in the section

The person shall be punishable with imprisonment of not less than 6 months but may extend to 3 years and with fine which shall not be less than 50,000 rupees but may extend till  2,00,000 rupees.[6]

For special reasons the court may 

give imprisonment for less than six months and also can fine an individual for less than 50,000 rupees.

For penalty there are also other sections like Section 104, 105 and 107 which are stated below:

Section 104 states that any person, who sells or exposes or hires the goods for sales which have false trademark is liable for the punishment. Not only goods but services are also considered under this section. An individual is liable for the punishment unless he/she proves that

• After taking all the reasonable precautions at the time of committing an offence he/she has no reason to suspect the genuineness of the Trademark
• By demand or on behalf of the prosecutor the person gives the information of the person from whom he had obtained the false applied trademark goods.
• Or otherwise, he would have acted innocently.

The person under this section shall be punishable with imprisonment of not less than 6 months but may extend to 3 years and with fine which shall not be less than 50,000 rupees but may extend till  2,00,000 rupees. For special and adequate reasons the court may give imprisonment for less than six months and also can fine an individual for less than 50,000 rupees.

Section 105 of The Trademark Act 1999 states that if any person who has been already convicted under section 103 & 104 of the Trademark Act 1999 and again commits the same offence shall be punished for second and subsequent offences committed by him/her with the imprisonment of not less than 1 year and it may extend to 3 years and with fine which shall not be less than 1,00,000 rupees and may extend up to 2,00,000 rupees.

For special and adequate reasons the court may impose a sentence of less than 1 year or fine of fewer than 1,00,000 rupees.

It is further provided in this section that no cognizance shall be taken

of any conviction made before the commencement of this Act.

Section 107 states the penalty for falsely representing a trademark as registered.

It states that no person shall make any representation

• Of the unregistered trademark is a registered trademark
• If a part of the Trademark is also not registered then it will be considered as an unregistered trademark.
• The registration of a trademark does not give all the exclusive rights.

If any person does not adhere to subsection 1 he shall be punishable with imprisonment which may extend to three years or with fine or with both that is fine and imprisonment.

Conclusion

The falsifying and falsely applying of trademarks causes harm to the reputation of an individual and to his/her business. To protect this law has been made under The trademark Act 1999 which helps individuals to protect his/her Goodwill. The false application of trademark has been well defined in the Section 102 subsection 2 of the Trademark Act 1999. Not only this, the penalty for false applying and Falsifying has also been clearly defined in the particular Act under different sections starting from Section 103 to Section 107.

Sources:

• Indian kanoon

https://indiankanoon.org/doc/64308991/

https://indiankanoon.org/doc/1419378/

• www.ipindia.nic.in
• http://thedemandingmistress.blogspot.com/2014/08/distinction-between-falsification-of.html?m=1
• Manupatra
• https://www.thefreedictionary.com/penalty

Endnotes:

1.  Trademark Act 1999
2. The real owner of the Trademark
3. Trademark Act 1999, No 47 of 1999, 30 December 1999
4. Criminal case no 1362 of 2015, High court of Jabalpur, Madhya Pradesh, bench Indore
5. AIR 1967 All 346, 1967 CriLJ 840 Bench: M Chandra, G Prasad
6. Trademark Act 1999, No 47 of 1999, 30 December 1999.