Chapter 12: The Trade Marks Act, 1999

Section 101: Meaning of applying trade marks and trade descriptions.

What it means: This section is a definitions clause. To find someone guilty of “falsely applying” a mark, the law first has to be very clear on what “applying” even means. This section defines it in the broadest possible way, covering every step from manufacturing to advertising.

• Section 101(1):
  • Legal Language: “A person shall be deemed to apply a trade mark or mark or trade description to goods or services who— (a) applies it to the goods themselves or uses it in relation to services; or…”
  • Plain English: (a) Direct Application. This is the most obvious one: you’re guilty of “applying” a mark if you physically put it on the goods or use it for a service.
  • Real-World Example: Stitching a fake “Puma” logo onto a t-shirt (applying to goods) or painting the “FedEx” logo on a delivery van when you aren’t FedEx (using for services).
  • Legal Language: “(b) applies it to any package in or with which the goods are sold…; or”
  • Plain English: (b) Applying to Packaging. “Applying” also counts if you put the mark on the box, bottle, can, or wrapper.
  • Real-World Example: Printing the “Coca-Cola” logo onto blank aluminum cans.
  • Legal Language: “(c) places, encloses or annexes any goods which are sold… in or with any package or other thing to which a trade mark or mark or trade description has been applied; or”
  • Plain English: (c) Using Pre-Marked Packaging. This covers putting unbranded goods into fake (or even real) branded packaging.
  • Real-World Example: A person buys unbranded, cheap light bulbs and packs them into discarded (but real) “Philips” boxes to sell them. They are “applying” the Philips mark.
  • Legal Language: “(d) uses a trade mark… in any manner reasonably likely to lead to the belief that the goods or services… are designated or described by that trade mark…; or”
  • Plain English: (d) Applying by “Get-Up” or Implication. This applies even if you don’t use the exact name. If you copy the entire “look and feel” (get-up) of a product so closely that people are tricked into thinking it’s the real brand, you’ve “applied” the mark.
  • Real-World Example: Selling a chocolate bar in a purple wrapper with a font and style that looks exactly like a “Cadbury” bar, but without using the word “Cadbury.” This is “likely to lead to the belief” it’s the real thing.
  • Legal Language: “(e) in relation to the goods or services uses a trade mark… in any sign, advertisement, invoice, catalogue… and goods are delivered or services are rendered to a person in pursuance of a request or order made by reference to the trade mark… as so used.”
  • Plain English: (e) Applying via Business Documents. You are “applying” the mark if you use it on an invoice, ad, or price list, and then deliver goods based on an order that referenced that ad.
  • Real-World Example: A supplier sends a hospital a price list for “Genuine 3M N95 Masks.” The hospital orders 10,000 masks based on this list. The supplier then delivers fake masks. The supplier has “applied” the 3M mark by using it on the price list and invoice, even if the fake masks themselves were blank.
• Section 101(2):
  • Legal Language: “A trade mark… shall be deemed to be applied to goods whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any package or other thing.”
  • Plain English: This clarifies that “applying” means any method: weaving it (like on a “Levi’s” tab), stamping it (like on a “Tupperware” lid), printing it, or sticking it on as a label.

Section 102: Falsifying and falsely applying trade marks.

What it means: This section defines the two core crimes: “Falsifying” (which is making a fake mark) and “Falsely Applying” (which is using a fake mark).

• Section 102(1) – Falsifying:
  • Legal Language: “A person shall be deemed to falsify a trade mark who, either,— (a) without the assent of the proprietor… makes that trade mark or a deceptively similar mark; or (b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.”
  • Plain English: You are guilty of “Falsifying” if you:
    • (a) Make a Fake from Scratch: You set up a printing press to make perfect copies of the “Louis Vuitton” pattern on leather, without permission.
    • (b) Tamper with a Genuine Mark: You buy a real, low-end “Toyota” car and add a fake “Lexus” logo to it to sell it for more (“addition”). Or, you scratch off the serial number on a real “Rolex” watch (“effacement”).
• Section 102(2) – Falsely Applying:
  • Legal Language: “A person shall be deemed to falsely apply to goods or services a trade mark who, without the assent of the proprietor… (a) applies such trade mark or a deceptively similar mark to goods or services…; or (b) uses any package bearing a mark… for the purpose of packing… any goods other than the genuine goods…”
  • Plain English: You are guilty of “Falsely Applying” if you:
    • (a) Put the Fake on a Product: You take the fake “Louis Vuitton” leather from the previous example and stitch it onto a blank handbag.
    • (b) Re-fill Genuine Packaging: You collect empty, genuine “Johnnie Walker” bottles, fill them with cheap local whisky, and re-seal them. You are “falsely applying” the mark by using the real bottle for fake goods.
• Section 102(3):
  • Legal Language: “Any trade mark falsified… or falsely applied… is in this Act referred to as a false trade mark.”
  • Plain English: This is just a definition. The re-filled “Johnnie Walker” bottle and the fake “Louis Vuitton” bag are both legally called a “false trade mark.”
• Section 102(4):
  • Legal Language: “In any prosecution for falsifying a trade mark or falsely applying a trade mark… the burden of proving the assent of the proprietor shall lie on the accused.”
  • Plain English: This is a crucial rule for court. If you are caught, you are presumed guilty. You cannot just say, “The prosecutor can’t prove I didn’t have permission!” Instead, the burden of proof is on you (the accused) to prove that you did have permission.
  • Real-World Example: The police raid your t-shirt factory. The judge will say, “I see 10,000 ‘Disney’ t-shirts. The prosecution doesn’t have to prove you didn’t have a license. You must produce a valid, signed license agreement from Disney. If you can’t, you’re guilty.”

Section 103: Penalty for applying false trade marks, trade descriptions, etc.

What it means: This is the primary punishment section for the manufacturer or “first-level” counterfeiter. It lists all the illegal acts and the prison time/fines that go with them.

• Legal Language: “Any person who— (a) falsifies any trade mark; or (b) falsely applies to goods or services any trade mark; or (c) makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying… a trade mark; or (d) applies any false trade description…; or (e) applies to any goods… a false indication of such country, place, name or address; or (f) tampers with, alters or effaces an indication of origin…; or (g) causes any of the things above… to be done, shall, unless he proves that he acted, without intent to defraud, be punishable with…”
• Plain English: You are guilty and will be punished if you do any of the following:
  • (a) Falsify a mark: (As defined in 102(1)).
  • (b) Falsely apply a mark: (As defined in 102(2)).
  • (c) Make or Possess Counterfeiting Tools: Possessing the metal stamp, 3D printer file, or computer program used to make fake logos.
  • (d) Apply a False Description: Labeling a jacket “Genuine Leather” when it’s plastic, or “100% Wool” when it’s polyester.
  • (e) Apply a False Origin: Printing “Made in Italy” on a handbag made in China.
  • (f) Tamper with a Real Origin Label: Buying goods “Made in China,” cutting out the label, and selling them as “origin unknown.”
  • (g) Order Someone Else to Do It: Paying a factory in another country to make the fake goods for you.
• The “Intent” Defense:
  • Plain English: You are not guilty if you can prove you “acted, without intent to defraud.”
  • Real-World Example: A small, local print shop is hired to print 5,000 “Adidas” labels. They get raided. The printer can show the official purchase order from a person who claimed to be a licensed “Adidas” contractor. The printer may be let off because he was just a tool; his intent was not to defraud (though the person who hired him is guilty under 103(g)).
• The Punishment:
  • Legal Language: “…imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees…”
  • Plain English: The minimum punishment is 6 months in jail AND a ₹50,000 fine. The maximum is 3 years in jail AND a ₹2 lakh fine.
• The Proviso (Lesser Sentence):
  • Legal Language: “Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.”
  • Plain English: A judge can give a lighter sentence (less than the minimum) only if they have a very good reason and they must write that specific reason in the official judgment.
  • Real-World Example: A 19-year-old is caught selling 10 fake t-shirts (a very small quantity). The judge, citing the “young age of the accused and the negligible quantity” as “adequate and special reasons,” sentences him to 1 month in jail and a ₹5,000 fine.

Section 104: Penalty for selling goods or providing services to which false trade mark or false trade description is applied.

What it means: Section 103 was for the maker. This section is for the seller—the shopkeeper, the street vendor, the online retailer.

• Legal Language: “Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, goods or things, or provides or hires services, to which any false trade mark or false trade description is applied… shall… be punishable with…”
• Plain English: You are guilty if you sell, rent, or even just possess with an intent to sell (like having fakes on your shop’s display shelf) goods that have a fake mark or fake description.
• The Punishment: The penalty is the same as for the manufacturer: 6 months to 3 years in jail and a ₹50,000 to ₹2 lakh fine.
• The “Innocent Seller” Defenses:
  • Legal Language: “…shall… be punishable… unless he proves,—
    (a) that, having taken all reasonable precautions… he had at the time… no reason to suspect the genuineness…; or
    (b) that, on demand by or on behalf of the prosecutor, he gave all the information in his power with respect to the person from whom he obtained such goods…; or
    (c) that otherwise he had acted innocently,”
  • Plain English: The shopkeeper is presumed guilty unless he can prove one of these three defenses:
    • (a) The “I Had No Idea” Defense: He must prove he took “reasonable precautions.” Example: He shows the judge his invoices and a letter from his supplier swearing the goods are genuine. He paid a fair price and had no reason to think they were fakes.
    • (b) The “I’ll Snitch” Defense: He immediately and fully cooperates with the police and gives them the supplier’s name, address, phone number, and all transaction records. He helps the police go up the chain.
    • (c) The “General Innocence” Defense: A catch-all. Example: He proves the fake goods were in a sealed box in his stockroom, just delivered an hour ago, and he “had not even opened them or exposed them for sale.”
• The Proviso (Lesser Sentence): Same as Section 103. The judge can give a lighter sentence for special reasons.

Section 105: Enhanced penalty on second or subsequent conviction.

What it means: This is the “repeat offender” rule. If you get caught and convicted twice, the minimum penalties go up.

• Legal Language: “Whoever having already been convicted of an offence under section 103 or section 104 is again convicted of any such offence shall be punishable for the second and for every subsequent offence, with imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees…”
• Plain English:
  • First Offence (Sec 103/104): Minimum 6 months jail / ₹50k fine.
  • Second Offence (Sec 103/104): Minimum 1 year jail / ₹1 lakh fine.
• Real-World Example: A man is convicted in 2020 for selling fake shoes (under Sec 104) and gets a 6-month sentence. He gets out, and in 2023 he is caught making fake bags (under Sec 103). Because this is his second conviction, the judge’s starting point for sentencing is now 1 year in jail and a ₹1 lakh fine.
• Proviso 1 (Lesser Sentence):
  • Plain English: Even for a repeat offender, the judge can still go below the new 1-year / ₹1 lakh minimum if there is an “adequate and special reason.”
  • Real-World Example: The man’s second offense was extremely minor (e.g., selling 5 fake t-shirts). The judge could use this as a “special reason” to give him, for example, 9 months instead of the 1-year minimum.
• Proviso 2 (Old Convictions):
  • Legal Language: “…no cognizance shall be taken of any conviction made before the commencement of this Act.”
  • Plain English: This prevents the law from being applied backwards.
  • Real-World Example: A man was convicted of counterfeiting in 1995 (under the old Trade and Merchandise Marks Act, 1958). He is caught again in 2023. This 2023 conviction is treated as his first offence under the 1999 Act. The 1995 conviction does not count towards the enhanced penalty.

Section 106: Penalty for removing piece goods, etc., contrary to section 81.

What it means: This section is a relic of a now-omitted part of the Act.

• Legal Language: “If any person removes… piece goods or cotton yarn or cotton thread which is not marked as required by that section… [he] shall be punishable with fine…”
• Plain English: This section outlined penalties for not following the rules in Section 81.
• Current Status (Important): Chapter X (which contained Sections 79, 80, 81, and 82) related to special rules for textile goods and was omitted (removed) from the Act in 2010.
• Real-World Example: Since Section 81 no longer exists, this penalty section (106) is also no longer in effect. It is effectively obsolete.

Section 107: Penalty for falsely representing a trade mark as registered.

What it means: This section makes it a crime to lie about having a registered trademark when you don’t. This is about preventing people from using the prestige of registration to mislead the public or scare competitors.

• Section 107(1):
  • Legal Language: “No person shall make any representation— (a) with respect to a mark, not being a registered trade mark, to the effect that it is a registered trade mark; or…”
  • Plain English: (a) Lying About Registration. You cannot claim an unregistered mark is registered.
  • Real-World Example: You run “Sharma’s Quick Curry” and your mark is not registered. You cannot put “Sharma’s Quick Curry®” or “Sharma’s Quick Curry (Registered)” on your menu.
  • Legal Language: “(b) with respect to a part of a registered trade mark, not being a part separately registered… to the effect that it is separately registered…; or”
  • Plain English: (b) Lying About Partial Registration. If your whole logo is registered (e.g., “Apex Software Solutions” with a mountain design), you can’t just pull out the word “Apex” and claim it is separately registered (unless you actually registered it separately).
  • Real-World Example: Your registered mark is “Star Bicycles”. You cannot put “Star®” on your products, as that falsely implies the word “Star” by itself is registered.
  • Legal Language: “(c) to the effect that a registered trade mark is registered in respect of any goods or services in respect of which it is not in fact registered; or”
  • Plain English: (c) Lying About Scope. You can’t use your registration for goods or services it doesn’t cover.
  • Real-World Example: You have a registered trademark for “Zephyr” in Class 25 (T-shirts). You then launch a new line of “Zephyr” water bottles (Class 21). You cannot put the ® symbol on the water bottles, as your registration doesn’t cover them.
  • Legal Language: “(d) to the effect that registration… gives an exclusive right to the use thereof in any circumstances in which… having regard to limitation entered on the register, the registration does not in fact give that right.”
  • Plain English: (d) Lying About Limitations. You can’t ignore the limitations of your own registration.
  • Real-World Example: The Registrar grants you a registration for “Pioneer Coaching” but only for “services provided in the city of Mumbai.” You send a legal notice to a “Pioneer Coaching” in Delhi, claiming your “registration gives you exclusive rights in all of India.” This is a false representation under this section.
• Section 107(2):
  • Legal Language: “If any person contravenes any of the provisions of sub-section (1), he shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.”
  • Plain English: The Punishment. The penalty for any of the lies above is serious: up to 3 years in jail, a fine, or both. (Note: This is more severe than the penalty for selling fakes, as this is seen as a direct contempt for the registration system).
• Section 107(3):
  • Legal Language: “For the purposes of this section, the use in India in relation to a trade mark of the word “registered”, or of any other expression, symbol or sign [like ®]… shall be deemed to import a reference to registration in the register, except—”
  • Plain English: Using the word “registered” or the ® symbol is legally considered a claim of registration in India. However, there are three exceptions where it’s okay to use it:
    • (a) Clear Foreign Registration: You can use “Registered in the USA” or “® (Reg. U.S. Pat. Off.)” as long as the text is clear and just as large, so no one thinks it’s an Indian registration.
    • (b) Symbols Implying Foreign Registration: Using a symbol (like “TM-W” for “Worldwide”) that is clearly not just the ® symbol and indicates foreign rights.
    • (c) Use for Export Only: Your mark “Zephyr” is registered in Germany but not India. You make the shirts in India but only to export to Germany. You can put the ® symbol on the labels, because the goods are not for sale in India.

Section 108: Penalty for improperly describing a place of business as connected with the Trade Marks Office.

What it means: This section makes it a crime to pretend you are the government’s Trade Marks Office.

• Legal Language: “If any person uses on his place of business, or on any document issued by him… words which would reasonably lead to the belief that his place of business is, or is officially connected with, the Trade Marks Office, he shall be punishable…”
• Plain English: You cannot use words on your building, website, or letterhead that would trick a reasonable person into thinking you are the official Trade Marks Registry. This is to stop “consultants” or “agents” from appearing to have government authority.
• The Punishment: The penalty is imprisonment for up to 2 years, a fine, or both.
• Real-World Example: An agent sets up a website called www.indian-trademark-registry-office.com and calls his business the “Official Trade Mark Registration Bureau.” He is committing a crime under this section because this would “reasonably lead to the belief” that he is the government.

Section 109: Penalty for falsification of entries in the register.

What it means: This section makes it a crime to physically tamper with or fake the official trademark register itself, or to use faked documents in court.

• Legal Language: “If any person makes, or causes to be made, a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders… in evidence any such writing, knowing the entry or writing to be false, he shall be punishable…”
• Plain English: You are guilty if you do any of these three things:
  1. Make a False Entry: You (e.g., a corrupt official) secretly add a fake trademark into the official government database.
  2. Make a Fake Copy: You use Photoshop to create a fake “Registration Certificate” that looks real.
  3. Use a Fake Copy as Evidence: You take that fake Photoshop certificate and submit it to a judge as “proof” that you own the trademark.
• The Punishment: The penalty is imprisonment for up to 2 years, a fine, or both.
• Real-World Example: In a court case, Company A needs to prove its mark is registered. It was never registered, so the director pays a designer to create a perfect, fake “Certificate of Registration,” complete with a fake government seal. When the lawyer (who doesn’t know it’s fake) submits this to the judge, the director has committed a crime under this section.

Section 110: No offence in certain cases.

What it means: This is a crucial “safety valve” section. It says that you cannot be found guilty of a trademark crime (under Sections 102-105) if your actions were actually permitted under this Act or another law.

• Legal Language: “The provisions of sections 102, 103, 104 and 105 shall… be subject to the rights created or recognised by this Act and no act… shall be deemed to be an offence… if,— (a) the alleged offence relates to a registered trade mark and the act or omission is permitted under this Act; and (b) the alleged offence relates to a registered or an unregistered trade mark and the act or omission is permitted under any other law…”
• Plain English:
  • (a) Permitted by this Act: You can’t be guilty of a crime if you are simply exercising a right the Act gives you.
  • Real-World Example: You open “Gupta’s Bakery” (your own surname). The giant “Gupta’s Global Foods Ltd.” tries to have you arrested for “falsely applying” their mark (Sec 103). Your defense under Sec 110(a) is that Sec 35 of this Act gives you the right to use your own name in good faith. Your act is “permitted,” so it’s not an offense.
• Plain English:
  • (b) Permitted by another Law: You can’t be guilty of a trademark crime if another law allows or requires your actions.
  • Real-World Example: A pharmaceutical company is required by the Drugs and Cosmetics Act to print the “international non-proprietary name” (the generic chemical name, like “Paracetamol”) on its packaging. A company that has a trademark on a similar-sounding word tries to have them arrested. Their defense is that their act was “permitted under any other law” (the Drugs Act), so it’s not a trademark offense.

Section 111: Forfeiture of goods.

What it means: This section answers the question: “What happens to all the fake goods the police just seized?” “Forfeiture” means the goods are taken by the government permanently.

• Section 111(1):
  • Legal Language: “…the court convicting or acquitting him may direct the forfeiture to Government of all goods and things by means of, or in relation to, which the offence has been committed…”
  • Plain English: The court can order all the fake goods, plus the machines used to make them (dies, printers, etc.), to be forfeited to the government.
  • The “Even if Acquitted” Clause: This is the most important part. The court can still order forfeiture even if the accused is found not guilty (acquitted), especially if the acquittal was based on a specific defense like “I didn’t intend to defraud” (Sec 103) or “I’m an innocent seller” (Sec 104). The court essentially says, “Okay, we believe you weren’t criminal, but these goods are still fakes and cannot be allowed back into the market.”
  • Real-World Example: A shopkeeper is charged under Sec 104. He proves he’s an “innocent seller” (under Sec 104(a)) and is acquitted. The judge will acquit him but will also order the 5,000 fake “Nike” shoes in his warehouse to be forfeited to the government for destruction.
• Section 111(2):
  • Legal Language: “When a forfeiture is directed on a conviction and an appeal lies against the conviction, an appeal shall lie against the forfeiture also.”
  • Plain English: If you are found guilty and you appeal your jail sentence, you can also appeal the order that took your goods.
  • Real-World Example: You are convicted and your printing press is forfeited. You appeal the conviction. You can add a ground in your appeal saying, “And if I win, the court should also reverse the forfeiture of my printing press.”
• Section 111(3):
  • Legal Language: “When a forfeiture is directed on acquittal… an appeal against the forfeiture may be preferred…”
  • Plain English: This covers the “innocent seller” scenario. If you are found not guilty but the court still forfeits your goods, you have a separate right to appeal that forfeiture. (This applies if the goods are worth more than a nominal amount of 50 rupees).
  • Real-World Example: You are acquitted, but the court orders your printing press (which you claim is used for legitimate business) to be forfeited. You can file an appeal only against the forfeiture, arguing the press is a legitimate tool and not just for counterfeiting.
• Section 111(4):
  • Legal Language: “When a forfeiture is directed… the court… may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.”
  • Plain English: This gives the judge the final say. The most common order is for the goods to be destroyed (incinerated, shredded) to ensure they never enter the market.
  • Real-World Example: The judge directs the forfeiture of 10,000 fake “Gucci” bags. The order will specify that “the said goods are to be destroyed in the presence of an officer of the court and the brand’s representative.”

Section 112: Exemption of certain persons employed in ordinary course of business.

What it means: This is a special defense for “innocent middlemen” — people like printers, packagers, or label makers who are not the masterminds but are just “employed” to do a job.

• Legal Language: “Where a person accused of an offence under section 103 proves— (a) that in the ordinary course of his business he is employed on behalf of other persons to apply trade marks…; and (b) that in the case… he was so employed, and was not interested in the goods… by way of profit or commission…; and (c) that, having taken all reasonable precautions… he had, at the time… no reason to suspect the genuineness…; and (d) that, on demand… he gave all the information in his power with respect to the persons on whose behalf the… description was applied, he shall be acquitted.”
• Plain English: A person (like a printer) accused of making fake marks (Sec 103) will be found not guilty if they can prove ALL FOUR of these things:
  1. (a) It’s My Job: “My business is a commercial printing shop. I get print jobs from hundreds of clients.”
  2. (b) I’m Not a Partner: “I was paid my standard ₹20,000 printing fee. I was not getting a ‘cut of the profits’ from the sale of the fake goods.”
  3. (c) I Took Precautions: “I had no reason to be suspicious. The client gave me a purchase order on a formal letterhead, paid by cheque, and provided what looked like a valid design file. I took reasonable precautions.”
  4. (d) I’ll Snitch: “When the police asked, I immediately gave them the client’s name, phone number, address, and all email correspondence.”
• Real-World Example: The police raid a small t-shirt printing shop for making 500 “Hard Rock Cafe” shirts. The shop owner is arrested. In court, he proves all four points. The judge acquits the printer under Section 112… and then issues an arrest warrant for the client (the real counterfeiter) identified in point (d).

Section 113: Procedure where invalidity of registration is pleaded by the accused.

What it means: This is a very important defense in a criminal trial. The accused person says, “I can’t be guilty of faking this trademark, because the trademark itself is invalid and should be cancelled.” This section tells the criminal court what to do.

• Section 113(1):
  • Legal Language: “(a) If the court is satisfied that such defence is prima facie tenable, it shall not proceed with the charge but shall adjourn the proceeding for three months… to enable the accused to file an application before the Appellate Board… for the rectification…”
  • Plain English: (a) Pause the Trial. If the criminal court judge thinks the defense is plausible (e.g., “You’re right, this trademark ‘Super’ does look very generic…”), the judge must pause the criminal trial for 3 months. This gives the accused (the defendant) time to go to the High Court (which replaced the Appellate Board) and file a civil case to cancel the trademark.
  • Legal Language: “(b) If the accused proves to the court that he has made such application… the further proceedings in the prosecution shall stand stayed till the disposal of such application for rectification.”
  • Plain English: (b) Stay the Trial. If the accused comes back within 3 months and shows the judge the High Court filing receipt, the criminal trial is put on hold indefinitely (it is “stayed”). The criminal trial will not resume until the civil case (at the High Court) is completely finished, which could take years.
  • Legal Language: “(c) If… the accused fails to apply… the court shall proceed with the case as if the registration were valid.”
  • Plain English: (c) Time’s Up. If the accused doesn’t file the cancellation case within 3 months, the judge will not grant any more time. The defense is considered abandoned, and the criminal trial resumes as if the trademark is perfectly valid.
• Section 113(2):
  • Legal Language: “Where before the institution of a complaint… any application for the rectification… is already… pending… the court shall stay the further proceedings in the prosecution pending the disposal of the application…”
  • Plain English: This covers cases where the cancellation was already filed. If the High Court is already hearing a case about the trademark’s validity before the criminal charges were filed, the criminal court must stay its own trial until the High Court gives its final judgment.
  • Overall Real-World Example: Police raid “Sun Coffee” for imitating “Starbucks.” “Sun Coffee” is charged with counterfeiting (Sec 103). In the criminal trial, the owner of “Sun Coffee” argues that the “Starbucks” word mark is invalid. The judge finds this “prima facie tenable” [113(1)(a)]. The criminal trial is paused for 3 months. The owner files a cancellation case at the High Court. The criminal trial is now stayed [113(1)(b)]. Years later, the High Court rules on the civil case. The criminal court then adopts that finding and finishes its trial.

Section 114: Offences by companies.

What it means: This section identifies who, specifically, goes to jail when a company is the one doing the counterfeiting.

• Section 114(1):
  • Legal Language: “If the person committing an offence… is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business… shall be deemed to be guilty…”
  • Plain English: The “Day-to-Day” Rule. When a company is guilty, the law also blames every person who was in charge of its day-to-day business. This typically means the Managing Director, CEO, and other executive officers. They are all deemed guilty by default.
  • Proviso (The “I Didn’t Know” Defense): A director or manager can escape punishment if they can prove one of two things:
    • The offense was committed without their knowledge; OR
    • They “exercised all due diligence” to prevent it (e.g., they can show company emails and policies they issued forbidding counterfeiting).
• Section 114(2):
  • Legal Language: “…where an offence… has been committed with the consent or connivance of, or… is attributable to any neglect on the part of, any director, manager, secretary or other officer… such director… shall also be deemed to be guilty…”
  • Plain English:The “Connivance or Neglect” Rule. This is for higher-level (non-day-to-day) directors. Even if a director wasn’t “in charge,” they are still guilty if the prosecutor can prove:
    • Consent/Connivance: They knew about the counterfeiting and let it happen (they “connived”).
    • Neglect: The counterfeiting happened because they were negligent in their duties (e.g., a director’s job was to check supplier compliance, and they never did).
  • Real-World Example: “XYZ Pvt. Ltd.” is caught making fake car parts.
    • Under 114(1), the company is fined, and the CEO is charged.
    • Under 114(2), the police also find emails showing a non-executive Director knew about it. That Director is also charged.
    • The CEO (under the 114(1) proviso) tries to defend himself by showing he was on medical leave for 6 months and had no knowledge. He might escape, but the Director who knew will be found guilty.
• Explanation: This just clarifies that “company” also means a partnership firm, and “director” also means a partner in that firm.

Section 115: Cognizance of certain offences and the powers of police officer for search and seizure.

What it means: This is a very important section that gives the police their power to act. It defines which crimes are serious and how police must behave.

• Section 115(1):
  • Legal Language: “No court shall take cognizance of an offence under section 107 or section 108 or section 109 except on complaint in writing made by the Registrar…”
  • Plain English: For the “lesser” offenses (like falsely claiming ® or pretending to be the Registry), a court cannot even start a case unless the complaint comes directly from the Trade Mark Registrar. A private company cannot start a criminal case for these specific offenses.
• Section 115(2):
  • Legal Language: “No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall try an offence under this Act.”
  • Plain English: Only a senior judge (First Class Magistrate) can hear these criminal cases, not a lower court.
• Section 115(3):
  • Legal Language: “The offences under section 103 or section 104 or section 105 shall be cognizable.”
  • Plain English: This is the most critical part. The main counterfeiting crimes (making, selling, and repeat offenses) are “cognizable.” This means the police DO NOT NEED A WARRANT to make an arrest.
• Section 115(4):
  • Legal Language: “Any police officer not below the rank of deputy superintendent of police… may… search and seize without warrant the goods, die, block, machine… wherever found…”
  • Plain English: A senior police officer (DSP rank or higher) can search and seize fake goods and the tools to make them, all without a search warrant, if they are satisfied a crime is being committed.
  • Proviso (The “Registrar’s Opinion”):
  • Legal Language: “…the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved… and shall abide by the opinion so obtained.”
  • Plain English: This is a major safeguard. Before the police can raid a factory, they must first go to the Trade Mark Registrar and ask for a legal “opinion” on the case. If the Registrar gives an opinion that this is not a case of infringement, the police must follow that opinion and cannot conduct the raid. This prevents the police from being misused for simple business rivalries.
  • Real-World Example: A company wants to raid a competitor. The police, following this rule, send the two logos to the Registrar. The Registrar replies, “In my opinion, these two marks are not confusingly similar.” Based on this, the police must “abide by the opinion” and must refuse to conduct the raid.
• Section 115(5):
  • Legal Language: “Any person having an interest in any article seized… may… make an application to the… Magistrate… for such article being restored to him…”
  • Plain English: If the police seize your goods, you have 15 days to apply to the judge to get them back.
  • Real-World Example: The police raid a factory and seize a large, expensive printing press. The factory owner (who may be innocent) can immediately apply to the Magistrate to have the press “restored” to him while the case is ongoing, arguing that it’s his legitimate property and is needed for his other, non-criminal, business.

Section 116: Evidence of origin of goods imported by sea.

What it means: This section creates a simple rule of evidence for Customs and criminal courts to determine the origin of imported fake goods.

• Legal Language: “In the case of goods brought into India by sea, evidence of the port of shipment shall, in a prosecution for an offence under this Act… be prima facie evidence of the place or country in which the goods were made or produced.”
• Plain English: In a criminal case, the judge needs to know where the fake goods came from. This rule says that for goods arriving by ship, the court can accept the “port of shipment” (the port they were loaded at) as the initial proof (“prima facie evidence”) of their country of origin.
• How it works: This rule shifts the burden of proof. The prosecutor shows the shipping documents (Bill of Lading) that say “Port of Shipment: Shanghai.” The judge will then assume the goods were “Made in China.” It is now up to the accused (the importer) to prove otherwise (e.g., “I can prove the goods were actually from Vietnam and just passed through Shanghai”).
• Real-World Example: A container of fake “Apple” chargers is seized in Mumbai. The shipping documents show they were loaded in Shanghai. In court, the prosecutor submits this as proof the goods are from China. The judge accepts this as fact unless the importer can provide evidence to the contrary.

Section 117: Costs of defence or prosecution.

What it means: This section gives the judge the power to make the losing side pay the winning side’s legal fees in a criminal trademark case.

• Legal Language: “In any prosecution under this Act, the court may order such costs to be paid by the accused to the complainant, or by the complainant to the accused, as the court deems reasonable… and the costs so awarded shall be recoverable as if they were a fine.”
• Plain English: The judge can decide who pays for the trial, based on who was right and how they behaved.
  • Case 1 (Accused Pays): The accused is found guilty. The judge can order him to pay his own fine and pay back the brand (the complainant) for all the money they spent on lawyers and investigation.
  • Case 2 (Complainant Pays): The accused is found innocent. If the judge believes the brand (the complainant) filed the case maliciously or without good reason, they can order the brand to pay the accused’s legal fees.
• “Recoverable as if they were a fine”: This is an enforcement tool. If the losing party refuses to pay the ordered costs, the court can use the same powers it uses to collect government fines, such as seizing property.
• Real-World Example: A big company files a criminal complaint against a small startup, claiming their logo is counterfeit. The judge finds the startup innocent and sees that the big company’s case had no merit and was just meant to bully them. The judge acquits the startup and orders the big company (the complainant) to pay the startup ₹2,00,000 to cover their legal defense costs.

Section 118: Limitation of prosecution.

What it means: This section sets the “statute of limitations” — the deadline for filing a criminal case. If you miss this deadline, you lose your right to prosecute.

• Legal Language: “No prosecution for an offence under this Act… shall be commenced after expiration of three years next after the commission of the offence charged, or two years after the discovery thereof by the prosecutor, whichever expiration first-happens.”
• Plain English: This is a “whichever expires first” rule. You must file the criminal case before the earlier of these two deadlines:
  • 3 years from the crime: The absolute maximum time limit, starting from the day the crime (e.g., making or selling the fake) was committed.
  • 2 years from discovery: The time limit from the day the brand (the prosecutor) discovered the crime.
• This is best explained with examples:
  • Scenario 1 (Fast Discovery):
    • Offense Committed: Jan 2023
    • Brand Discovers: Feb 2023
    • Deadline 1 (3 yrs from offense): Jan 2026
    • Deadline 2 (2 yrs from discovery): Feb 2025
    • Which expires first? Deadline 2. The brand must file the case by February 2025.
  • Scenario 2 (Slow Discovery):
    • Offense Committed: Jan 2023
    • Brand Discovers: June 2024
    • Deadline 1 (3 yrs from offense): Jan 2026
    • Deadline 2 (2 yrs from discovery): June 2026
    • Which expires first? Deadline 1. The brand must file the case by January 2026, even though they only found out about it in 2024.
  • Scenario 3 (Very Slow Discovery):
    • Offense Committed: Jan 2023
    • Brand Discovers: Feb 2026
    • Deadline 1 (3 yrs from offense): Jan 2026
    • Deadline 2 (2 yrs from discovery): Feb 2028
    • Which expires first? Deadline 1. The deadline has already passed. The brand has lost its right to file a criminal case.

Section 119: Information as to commission of offence.

What it means: This section protects the identity of government informants.

• Legal Language: “An officer of the Government whose duty it is to take part in the enforcement of the provisions of this Chapter shall not be compelled in any court to say whence he got any information as to the commission of any offence…”
• Plain English: A government officer (like a police officer or customs agent) cannot be forced by a judge or a lawyer to reveal the source of their information (i.e., their informant).
• Why it exists: This is known as “informant privilege.” It exists to protect people who give tips to the police. If informants thought their names would be revealed in court, no one would ever give tips, and it would be much harder to find counterfeiters.
• Real-World Example: A police raid on a factory is successful because an employee called the police with a tip. In court, the factory owner’s lawyer asks the police officer, “Who told you my client was making fake goods?” The officer, protected by this section, will simply state, “I am not required to answer that question.”

Section 120: Punishment of abetment in India of acts done out of India.

What it means: This section lets India prosecute people in India who plan or order a counterfeiting crime, even if the crime itself (like making the fakes) happens in another country.

• Legal Language: “If any person, being within India, abets the commission, without India, of any act which, if committed in India, would… be an offence, he may be tried for such abetment in any place in India…”
• Plain English: “Abetment” means helping, instigating, or conspiring to commit a crime.
• This rule says: If you are physically in India when you “abet” (plan, pay for, or order) a counterfeiting act, you can be arrested and tried in India, even if the act itself happens outside India.
• Real-World Example: A man sits in his office in Mumbai and wires money to a factory in China, ordering them to manufacture 100,000 fake “Adidas” shoes and ship them directly to the USA.
  • The act of making the shoes happened in China.
  • The sale of the shoes happened in the USA.
  • But the abetment (the planning, ordering, and payment) happened in India.
  • Under this section, the man can be arrested in Mumbai and put on trial in an Indian court for his role in the crime.

Section 121: Instructions of Central Government as to permissible variation to be observed by criminal courts.

The Legal Text:

“The Central Government may, by notification in the Official Gazette, issue instructions for the limits of variation, as regards number, quantity, measure, gauge or weight which are to be recognised by criminal courts as permissible in the case of any goods.”

In Simple English:

The Central Government has the power to create and publish official rules that tell criminal courts what counts as an “acceptable mistake” or minor, unavoidable variation in the stated number, quantity, size, or weight of a product.

This section prevents businesses from being found guilty of a crime for tiny, practical manufacturing variations that don’t actually mislead or harm the public.

Real-World Example:

• A company sells bags of chips labeled “100g”.
• Due to the high-speed, automated packaging process, some bags might contain 99g and others 101g.
• A competitor could try to sue the company criminally for “falsely applying a trade description” (under Section 104) by claiming the “100g” label is a lie.
• To prevent this, the Government (under Section 121) might issue a rule stating that for packaged snacks, a weight variation of +/- 2% is “permissible.”
• The criminal court would then see this rule and dismiss the case, as the 99g bag falls within the acceptable limit.