“Innocent Infringement” under the Trademarks Act, 1999

Last week I was asked if “innocent infringement” is a defense that is recognized under our Trademarks Act, 1999. This was a question I had never had the occasion to deal with, so I looked up the Act. Section 135(3) of the Act does provide for innocent infringement as a limited defense to the extent that it stipulates that a Court shall not grant relief by way of damages (other than nominal damages) or an account of profits in the following situations:

1.       Where the mark asserted is a certification trademark or collective mark;

2.       Where the defendant in a suit is able to prove his ignorance of the trademark registration or the Plaintiff’s status as a registered user;

3.       Where the defendant ceased to use the mark without any delay as soon as he was apprised of the registration.

Defenses 2 and 3 are available even in passing off actions, which the provision expressly provides for. Clearly the provision does not (and logically cannot) preclude grant of injunctive relief. However, while punitive damages cannot be awarded to the plaintiff owing to this provision, what does “nominal damages” translate to? Since the term used is “nominal damages”, it is not in the nature of costs.

Are there any tests laid down to determine what would amount to a slap on the wrist, instead of a rap on the knuckles? I welcome the opinion of our readers on the issue.