Introduction to falsify a trademark
A person deemed to falsify a trademark who without the authority of the proprietor makes the trademark or deceptively similar mark or falsifies nay genuine trademark in any manner. Sub-clause (2) provides that a person is deemed to falsely apply to goods such trademark without the assent of the proprietor on goods or services or any package containing goods, etc. It is also made clear that the burden of proving assent of the proprietor will be on the accused. This provision corresponds to section 77 of the existing Act. What constitutes “falsifying “a trademark or “falsely applying a trademark” is set out in section 102? The law in this respect corresponds to section 77 of the 1958 Act.
Falsifying a trademark
A person deemed in law to falsify a trademark, when he makes that trademark or a deceptively similar mark, without the assent of the proprietor of the trademark; or falsify any kind of genuine trademark, whether by changes or alteration, addition of some other marks, effacement or otherwise. A case of falsifying a trademark will arise, when there is a genuine trademark, and when some person without the assent of the proprietor, makes that trademark or a deceptively similar mark. Alternatively, a person falsifies a genuine trademark by alteration, addition, effacement or otherwise.
Falsely applying trademark
A person deemed in law to falsely apply to goods or services a trademark, when he applies such trademark or a deceptively similar mark to goods or services or any package containing goods, without the assent of the trademark; uses any package bearing a mark identical with or deceptively similar to the trademark of the proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trademark.
The essential ingredients of the case are:
- The existence of a genuine make
- Without assent of the proprietor, some person applies such trademark or a deceptively similar mark to goods or services or any package containing goods
- Uses any package bearing a mark which is identical with or deceptively similar to the trademark of the proprietor
- For the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trademark.
“Package” is defined in section 2(1)(q) ti include any case, box, container, covering, folder, receptacle etc. If the accused uses any package bearing the impugned mark for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor, it will attract section 102(2)(b).
Without assent of the proprietor
To constitute the offence of falsifying a trademark, it must be without the assent of the proprietor and the making of the mark should be for the purpose of using it in relation to particular goods in respect of which the proprietor has used or registered the mark. The phrase “marks that trademark” conveys to the mind more than a delineation of the word or device which comprises the mark. By using the words “the trademark” there is in my judgment imported into the Act, an association of the word or device with a course of trade in particular goods so as to truly to constitute that which is done an Act which is one relating in the course of trade to such or like goods.
Unless, therefore, the making of the mark is for the purpose use in spurious trade there is no falsification of the trademark. Thus, the labels complained of might be printed for a legitimate purpose, namely, to replace genuine labels on genuine goods which had become obliterated. It would seem, therefore, that evidence might be admissible to prove the purpose for which the mark complained of was made. A common example of making a mark is that of a printer printing labels for traders. The provisions of Section 102 are subject to the provisions of section 110. And also section 112 which exempts persons employed in ordinary course of business to apply trademarks or to make dies or instruments for making trademarks.
The expression “deceptively similar” is defined in section 2(1)(h) as: A mark shall be deemed to be deceptively similar to another one trademark if it so nearly or somewhat same or looks alike to that other mark as to be likely to deceive or cause confusion. On the question whether the impugned mark is “deceptively similar” in the context of criminal liability arising out of section 101, the same general rules of comparison of marks which are applied in other proceedings under the Act, are applicable.
Though there is no general protection for the get up becomes important to determine whether the mark used by the accused is deceptive.
Trademark of the proprietor
The question whether the mark is registered or unregistered is irrelevant. While in the case of a registered trademark, registration is evidence of ownership and validity (when supported by a certified copy of entry in the register), in the case of an unregistered trademark, it is a matter of evidence to establish prior user of a distinctive work. The term “proprietor” includes an assignee. The function of a trademark is to give an indication to the purchaser of the trade source from which the goods come or the trade hands through which they pass on their way to the market trademark after all is simply intimation upon the goods that they are the goods of the owner of the mark. That is in one compendious phrase the entire law of trademarks. A trader acquires a right of property in a distinctive mark merely by using it upon in connection with the goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting such mark, it is ‘to use a familiar language, entirely a question of who gets there first’.
What is falsified or false trademark? Sub-section (3) of section 102 enacts that any trademark falsify under sub-section(1) or falsely applied under sub-section (2), is referred to as a “false trademark” in this Act. The falsification of the genuine mark may be by alteration, addition, effacement or otherwise. Effacement may be partial. Convictions have been obtained where the deception of the public has been made by effacement of trademark registration. Since the Act of “falsify or falsifying” a trademark to goods or services is an offence under the Act, sub-section (4) enacts that in any prosecution for such offence, as a defense the burden of proof is on the accused to show that he acted with the assent of the proprietor.
Defenses with respect to falsify trademark
In respect of an alleged offence under section 102, it is a complete defense if he proves assent of the proprietor. Alternatively, he has to establish that the alleged offence is covered by the protection available under section 110.
Penalty for falsify or applying false trademark
This section provides the penalty for applying false trademark, trade description, etc. This clause corresponds to section 78 of the existing Act but removes the distinction between offenses in relation to “drugs” or “foods” on the one hand and other categories of goods on the other hand and seeks to enhance punishment uniformly irrespective of the nature of goods. As in many cases, a trademark label is registered separately as a trademark under the Trade and Merchandise Marks Act, 1958 and as copyright under the Copyright Act, 1957, the penal provisions are sought to be harmonized between the two laws. Accordingly in clause 103, it is proposed that penalty for applying the false trademark or false trade description, etc., as enumerated in clause 103 is to be punishable with imprisonment for a term which shall bot less than six months but which may extend to three years and with fine amount which shall not be less than fifty thousand rupees but which may extends to two lakh rupees. However, a provision has been made empowering the court, for adequate and special reasons to be mentioned in the judgment, to impose a sentence lower than the normal punishment specified in this clause.
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