Falsify impression as Registered Trade Mark

October 2017  month, the Assistant Registrar of trademarks, Chennai filed certain complaints before the JMFC, in Telangana, against four different proprietors over two common trademarks. We received information on the same through one of our readers, who also filed the RTI application in order to obtain a copy of the complaints. The complaints are notable because they indicate a rare instance of recourse to criminal remedies provided under the Trademarks Act. Recourse taken, not by private parties – but instead, by the office of the Registrar of trademarks.

The complaints have been filed under section 115(1) of the Trademarks Act, for offences committed under section 107(1)(a) of the Act. Section 107 lays out penalties imposed under the Act, for “falsely representing a trademark as registered.” Sub-section (1)(a) penalizes the false representation of a mark as a registered trademark, when the mark is in fact, not a registered trademark. Such a false representation is punishable with imprisonment up to three years, or fine, or both. Accordingly, section 115(1) provides that a court (not below the rank of a JMFC or a metropolitan magistrate) shall only take cognizance of an offence committed under section 107, when a complaint is made in writing, either by the Registrar or any other officer authorized by him.

 

The complaints have been brought against four proprietors – ‘Quality Sweets & Namkeens’, ‘Kids Fun Foods India Pvt. Ltd.’, ‘Gunal Foods Pvt. Ltd.’ and ‘SRK Food Products.’ The complaints involved the common false representation of the “Kidsfun” and “Tofo” trademarks as registered via the use of the ® symbol on their packaging. The primary issue in all of the cases, was one of the following – (a) the marks that were registered were different from the marks that were falsely represented as registered via use of the ® symbol, or (b) the accused proprietors had not registered the “Kidsfun” and/or “Tofo” words per se; most had applied for the registration of the words per se, but, these were still pending registration.

 

This information was originally brought to the registrar’s office by a party known as ‘Rajini Food’ (hereinafter, ‘original complainant’) around August, 2016, alleging this false representation by the accused proprietors. The registrar’s office took prompt action and sent out show cause notices within a week. Soon after, final hearing(s) of the matter was scheduled. In all of the cases, neither the show cause notice nor the notice for final hearing yielded any positive results: the parties were either absent for the final hearing, or provided defenses that did not win the confidence of the registrar. This prompted the registrar to bring these complaints, especially after the original complainant graced the final hearing(s) by producing fresh evidence that the false representation was still being conducted.

To briefly go over the timeline of the events, at the cost of some repetition: The original complainant brought this information before the registrar on 11^th August, 2016. The Registrar sent out show cause notices by 18^th August, 2016. After allowing the parties opportunities to show cause and table their defense, the registrar’s office finally set the date for final hearing for 2^nd March, 2017. None of the accused proprietors appeared for this final hearing. Finally, to “maintain the purity of the register, and to uphold legal sanctity,” the assistant registrar filed the present complaints, on the 5^th of October, 2017.

 

This is undoubtedly a rare and significant development, notwithstanding the clear, unaccounted delay of almost six months in filing the complaint(s) before the JMFC. Despite my best efforts, I have not been able to locate orders discussing instances where the registrar has brought similar complaints u/s 115(1) r/w 107(1)(a) of the Act. Should our readers have any information on such orders/cases, I urge them to direct me accordingly.  Regarding this particular case – there aren’t any orders accessible on the website at present, but we’ll keep our eyes and ears peeled for further information on the same.