Sunday, August 24, 2014

Distinction between Falsification and Falsely Applying a Trademark

Section 102 of the Trademarks Act 1999 defines as to what constitutes falsification of a trade mark and falsely applying a trade mark. Section 103 prescribes penalties for falsification and falsely applying a trademark. Both provisions are part of Chapter XII of the Act which deals with Offences and Penalties. Reproduced below is Section 102:

102. Falsifying and falsely applying trade marks.—
(1) A person shall be deemed to falsify a trade mark who, either,—
(a) without the assent of the proprietor of the trade mark makes that trade mark 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 trade mark who, without the assent of the proprietor of the trade mark,—
(a) applies such trade mark 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 trade mark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark.
(3) Any trade mark 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 trade mark.
(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods or services, the burden of proving the assent of the proprietor shall lie on the accused.

Based on a clear reading of sub-section 1 of Section 102, it is evident that the said sub-section deals with “making” of a mark which is either identical or deceptively similar to an existing trade mark (registered or unregistered, as stated in the definition of a trademark in Section 2(1)(zb)(i) for the purposes of Chapter XII). It must be noted that the reference here is to the making of the mark itself and not to its application to goods or in relation to services (“application” of the trade mark for the purposes of this Chapter is enumerated in Section 101). Therefore, the act of manufacture of the mark without the consent of the proprietor of the trade mark is deemed as falsification of the trade mark. Further, the said sub-section also includes within the scope of falsification any unauthorized alteration, addition or effacement of a genuine trade mark.

In contrast, sub-section (2) of Section 102 deals with falsely applying/using an existing trade mark or its deceptively similar variant without the assent of its proprietor. Sub-section (3) of Section 102 classifies both a falsified trade mark and a falsely applied trade mark under the category of “false trade marks”.  It must be noted that the prohibition under Section 102 does not appear to be restricted to the class of goods or services in connection with which the proprietor of the genuine trade mark uses the trade mark. In other words, a person who applies/uses a false trade mark in any class of goods or services could attract the prohibition of Section 102. To this extent, the scope of the bar under Section 102 appears to be wider than Section 29.  

Further, sub-section (4) of Section 102 takes the position that when an accused is confronted with the use of a false trade mark, the lack of the proprietor’s consent shall be presumed and the burden is on the accused to rebut the said presumption. That said, sub- section (1) of Section 102 makes a reference to a “deceptively similar” mark and not merely a similar mark. Does the use of the word deceptively require the proprietor of the mark to establish malafide intent on the part of the accused to deceive the public to make a case under Section 102? Considering that the use of a deceptively similar mark also constitutes infringement within the meaning of Section 29 (if the mark is registered), it would be interesting to understand the practical evidentiary import of the words deceptively similar. I will discuss this in the next post.    

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