Our company manufactures stationery goods using a trademark since 2000. The trademark is pending registration. We recently served a notice on a firm that manufactures stationery goods under a trademark closely resembling ours, asking it to desist from misusing our trademark. The firm has disputed our rights and has asserted its exclusive rights on the trademark claiming prior adoption and use since 1999. We intend to sue the firm for trademark misuse. Can we simultaneously initiate both civil and criminal proceedings against the firm for misusing our trademark? If not, which option is more expedient and effective? In another case of misuse of our trademark, we have been unable to trace the infringer. Can we file proceedings against an unknown party?

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Your company can initiate both, civil proceedings to restrain the firm from misusing your trademark as well as criminal proceedings to punish representatives of the firm for misuse of your trademark. However, the appropriate forum for adjudication of a bona fide dispute between parties over their right to use a trademark is the Civil Court and not a Criminal Court. Accordingly, if in criminal proceedings the Magistrate finds a bona fide dispute between the parties over their right to use a trademark, the Magistrate may not continue to hear the matter and may ask the complainant to first establish its rights over the trademark in the Civil Court. In case the Civil Court determines that the accused is counterfeiting the trademark, the criminal case may be revived or instituted and the accused punished.

If, based on the averments of the firm in the criminal proceedings, the Magistrate forms an opinion that a bona fide dispute concerning the right to use the trademark exists and stays the criminal proceedings, you will need to fall back on the civil proceedings to establish your right on such trademark. Therefore, it is essential to initiate civil proceedings against the firm in addition to the criminal proceedings.

As regards your second query, a criminal complaint is maintainable against unknown infringers and you can seek directions from the Magistrate for the police to investigate the case, including ascertaining the particulars of the infringers. However, a civil suit will not be maintainable against unknown parties.

We intend to wind up our joint venture company as a management deadlock has arisen resulting in losses. As per the joint venture agreement, disputes with our 50 per cent partner in the venture are subject to resolution by arbitration. Our partner is unwilling to wind up the joint venture company. Can we initiate arbitration and request the arbitrator to wind up the joint venture company?

Winding up is a statutory remedy and the power to wind up a company is conferred only on the court. An arbitrator is not competent or empowered to decide on issues that are the subject matter of decision by the court and therefore will not be competent to order winding up of the joint venture company.

You will therefore need to petition the court for winding up of the joint venture company. You may seek winding up on the ground that due to the deadlock, the joint venture company has lost its substratum and it will be just and equitable to wind it up. However, your partner may argue that the deadlock can be resolved through arbitration in terms of your joint venture agreement and the joint venture company can thus continue operations. In that event, you will need to satisfy the court on the impossibility to continue the joint venture company's business even if the deadlock is resolved on reasons such as loss of the joint venture company's substratum, irreparable breakdown of relationship and loss of confidence between the joint venture partners. The court may otherwise refuse an order to wind up the joint venture company and direct you to resolve the deadlock through arbitration and attempt to revive the joint venture company.

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