Introduction
Trademark registration is a prominent procedure followed by the recognized proprietor of a trademark. It is a process that is carried out in accordance with the law and relevant legislation, and there is a procedure that must be followed accordingly. The person registering the trademark acquires certain rights after the registration is done. When a person is charged as an accused for an offense under Sections 103, 104, or 105 of the Act, they may argue that the registration of the trademark in question is invalid.
Section 113 only applies to trademarks that are registered under the
Act. This means that the offenses under Sections 103, 104, and 105 can be
committed in relation to any mark, whether registered or not, but only those
offenses are covered by Section 113, which relates to registered trademarks
under the Act.
Procedure to be followed as per Section 113
of the Trademark Act, 1999
When the accused is charged for an offense made under Sections 103, 104, and 105 and pleads that the registration of the trademark in question is invalid, the below-mentioned is a procedure that needs to be followed by the accused: -
1. When such a plea is presented by the accused, the court determines whether it is prima facie maintainable or not. If the plea is maintainable, the court shall not proceed with the charge made against the accused and adjourns the proceedings for three months to allow the accused to file a plea for rectification of the register before the Appellate Board. The period of three months starts from the date when the accused presents the plea before the court, allowing time to file the rectification application.
2. If the accused is able to prove before the court that the application for rectification of the register has been filed within the prescribed time limit, i.e., three months, or the time period allowed by the court as per the facts or circumstances, the court will impose a stay on the proceedings related to prosecution till the dismissal of the application for which the rectification has been filed.
3.If the accused fails to file the application of rectification before the Appellate Board within the three months or the time period provided by the court after considering the circumstances of the case, the court will consider the registration of the trademark in question as valid for further proceedings of the case.
In Rachna Sagar Pvt Ltd vs State Of Nct Of Delhi & Anr (CRL.
M.C. 3303/2023), the Delhi High Court observed that before the
respondent filed the complaint on December 28, 2022, against the petitioner for
the offense under sections 103 and 104 of the Act, the petitioner had filed the
application for rectification of the register against the registered trademark of
the respondent on March 10, 2022. The Court directed that the proceedings for
the prosecution shall remain stayed till the next date of hearing because the
case of the petitioner falls within the provision of Section 113(2) of the
Trademark Act, 1999.
Conclusion
The Trade Marks Act, 1999, provides the procedure for challenging the validity of a registration of the trademark, with the goal of ensuring that a system exists to provide justice to those who appreciate it. Section 113 not only defines the process but also defines how the court should function in such case scenarios and also how the accused must follow the procedure.
Taking into account the criminal offenses provided under the Act and the judgments addressed by the Court in cases involving Section 113, it is clear that legislators have provided flexibility, allowing the accused to argue and present their case. It also provides that the courts have the authority to extend the time for the application of rectification of the register according to the situation and the courts deem it appropriate.
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