ENFORCEMENT OF IPR

Intellectual Property Rights are key to a company, creator and /or inventor profiting from their knowledge, innovation and/or creativity. International remedies that are both accessible and fruitful are essential protections needed by right holders, especially in the 21st century.Such a solid framework creates an environment that is instrumental to encouraging innovation and sustainable growth. In countries where there is uncertainty regarding such rights incentives are minimal. Globalization has brought about international supply chains and as such inadequate IP protection can dramatically affect business that in turn affects sustainable job creation and consumerism globally.

Many developing nations have made important reforms in respect of Intellectual Property because enforcement methods have not always been as solid as those found in the WTO’s Trade- Related Intellectual Property Rights (TRIPS) agreement. Such enforcement may often be restricted as a result of a seriously system. Below are some instances of a flawed system:

  • Customs authorities lacking ex-officio powers,
  • Courts issuing insufficiently deterrent sanctions,
  • Officials lacking sufficient knowledge and training on IPR.
  • By a lack of political will
  • A lack of sufficient resources devoted to enforcement efforts.

Globalization has allowed digital technology to cater for reproduction in bulk which is both cheap and good quality. In fact International trades in fake and illegally copied goods have been estimated to be valued at approximately $650 Billion.

Intellectual Property imports upon the owner of an innovation the right of ownership. This right allows the owner(s) to exclude another from the use of their innovation and/or use in specific activities unless otherwise authorized. Where these rights are contravened the person(s) with IP rights can seek infringement remedies for example:

  • Stopping unauthorized used,
  • Impeding further infringements
  • Obtaining recovery and
  • Compensation for any damages

However, in India, before taking legal action one is obliged to attempt to resolve any issues amicably. This is generally achieved by sending a cease-and-desist letter to the individual(s) or company that is allegedly contravening one’s IP rights. Should this fail then only can one enforce their IP rights in India, be it civilly or criminally.

A LIST OF DIFFERENT IPLAWS PROTECTED IN INDIAAND THE ACTS THAT PROTECT IP RIGHTS:

  • relating to Trade Marks / Brands (Trade Marks Act, 1999)
  • Laws relating to Copyright (Copyright Act, 1957) Artistic Work, Literary Work, Audio Video Records and Software
  • relating to Patents (The Patent Act, 1970)
  • Laws relating to Industrial Designs (Designs Act, 2000)
  • Laws relating to Geographical Indications. The geographical Indications of (Registration and Protection) Act, 1999
  • Laws relating to Internet, Web and Information Technology (Information Technology Act, 2000)
  • Domain Names

IS IPR REGISTRATION NECESSARY?

IS REGISTRATION OF IPR NECESSARY

NO: - Trade Mark, Copyright

YES: - Patents, Industrial Designs, Geographical Indications

RIGHTS CONFERRED BY THE REGISTRATION OF IPR

India being a signatory to the Paris Convention for the Protection of Industrial Property, 1883 and the Patent Cooperation Treaty (PCT), 1970, a foreign entity can adopt any of the aforesaid routes for filing of application for grant of patent in India.

OTHER IMPORTANT IP ASPECTS TO NOTE

  • Monopoly for the specified period is created in favor of the Registrant
  • In case of litigation onus of proof shifts on the opposite party
  • Prima facie presumption is raised in favor of the Registrant

IP Enforcement-Remedies:

Civil: Infringement, Passing off

Criminal:Administrative

REMEDIES AWARDED UNDER A CIVIL ACTION

  • Injunctions against future violations
  • Civil raids & Seizures
  • Damages OR Accounts of Profits
  • Delivery up/ Discovery of infringing material / documents
  • Preservation of assets

Interlocutory Injunction- “… in cases of infringement either of trademark or of copyrigh normally an injunction must follow. Mere delay in bringing the action is not sufficient to defeat grant of injunction in such cases… the grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark itself was dishonest”.Midas Hygiene Industries P. Ltd. V. Sudhir Bhatia &Anr. (2004) 3 SCC 90 Supreme Court

Lakshmikant V. Patel vs. Chetanbhat Shah (AIR 2002 SC 275) Supreme Court: “In an action for passing off it is usual, rather essential to seek an injunction, temporary or ad-interim proof of actual damage is not essential… likelihood of damage is sufficient an absolute injunction can be issued restraining the defendant from using or carrying on business under the Plaintiff’s distinctive trademark”.

ENFORCEMENT- DOMAIN NAMES

Due to the increased usage of domain names there is a growth in disputes with IP rights. The WIPO Arbitration and Mediation Center is the first organization to deal with dispute resolutionin terms of Uniform Domain Name Dispute Resolution Policy (UDRP) as at December 1999 and Adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), as per the suggestions stipulated in the Report of the First WIPO Internet Domain Name Process. The UDRP offers those with a trademark license an administrative path for systematic and structured resolutions where there are disputes as a result of: registration, use in bad faith or otherwise in regards to domain names which relate to those trademark rights.

  • In M/s Satyam Infoway Ltd. V. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145 SCit is held that domain names are subject to the legal norms applicable to other intellectual properties, such as trademarks.
  • Inc. v. AkashArora 1999 PTC 201 SCis an example of when and how general trademark may be applied to the Internet.

AN EX PARTE ORDER

An ex parte order is a judgment usually passed as against a defendant in absentia. The following are instances wherein this may occur:

  • When the matter is extremely urgent
  • At a preliminary hearing of the interim application without notice to the answering defendant.
  • Granted before the motion for interim injunction is fully heard but for a limited period only.
  • After grant of ex parte injunction, the Court must proceed with disposal of the interim injunction application after the defendant has entered appearance.

ANTON PILLAR ORDER

The Anton Pillar Order allows for immediate search and seize of evidence (i.e.: that is without warning). This order is handed down where:

  • There is a fear of destruction of incriminating evidence.
  • Sensitive information
  • The case is prima facie strong
  • The possibility of or actual damage
  • It is undoubtedly clear that the defendants have such information in their possession.

Anton Pillar v. Manufacturing Process (1976) RPC 719

JOHN DOE ORDER/ASHOK KUMARORDER

An Ashok Kumar Order (also known as a John Doe Order) is an order that is handed down against unidentified defendants in order to prohibit them from possibly infringing any rights of the plaintiff.

The Indian Judiciary recognized the need to award victims of infringement with relief very early, as such the India Courts, in regards to trademark, copyright infringement, personal privacy and confidential information initially handed down orders under the umbrella of Order 39 Rules 1 & 2 of the Code of Civil Procedure, 1908 (“CPC”).The Trademarks Act 1999 and the geographical Indication of Goods Act 1999 are relied upon under this umbrella. However this only worked to estop infringements but did very little in so far as instances where the damage has already been done. It is in instances like this when the Ashok Kumar Order comes into play.

The first such order was delivered in 2002 in Tej Television Limited vs. RajanMandal wherein many leading cable operators had transmitted Channel Ten Sports without proper authorization. In this instance the plaintiff (broadcaster of the Soccer World Cup 2002) had suffered immense strain to working relationships and losses.

The following are noteworthy features of the Ashok Kumar/ John Doe Order:

  • Court appointed commissioners to enter the premises of any suspected party and collect evidence of infringement.
  • Suspected party may not be named in the suit.
  • Indian Courts have conferred expanded powers to commissioners- Roving commissioners

DAMAGES- RECENT TRENDS

  • Punitive Damages: an amount of Rs 5 Lakhs was awarded for the first time in the case of Time Inc. vs. LokeshSrivastava 2005(30) PTC3 (Del). This case highlighted the difference between compensatory and punitive damages by stating “The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas, punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong-doers that law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the list but suffer on account of the breach”.
  • On the other hand, the highest ever damages (and costs) awarded for IP infringement by Indian Courts was an amount of Rs 20 Lakhs in the matter of Microsoft Corporation vs. YogeshPapat&anr. 2005(30) PTC245 (Del)

CRIMINAL REMEDIES:

  • Falsification of Trademarks / Infringement of copyright is a cognizable offence
  • A complaint may be filed before a Magistrate; OR
  • Police can register an FIR and prosecute directly.
  • Registration is not a requirement.
  • Imprisonment- 6 months to 3 years
  • Fine- Rs 50,000 to 2 lakhs
  • Enhanced penalty on subsequent convictions.
  • Seizure, forfeiture and destruction of infringing goods/ material for placing before the Magistrate

STATUTES INVOKED FOR CRIMINAL ACTION

  • Sec. 103 / 104 – Trade Marks Act, 1999
  • Sec. 63 and 64 – Copyright Act, 1957
  • Sec. 39 – Geographical Indication of Goods Act, 1999
  • Sec. 420 – India Penal Code
  • Sec. 91/93 – Code of Criminal Procedure

PROCEDURE FOR FILING A CRIMINAL COMPLAINT & PROCESS

  • Criminal Complaint in the Court of competent jurisdiction;
  • Pre summoning Evidence, for satisfying the court on the basis of the evidence placed on record, that the allegations by complainant are prima facie maintainable;
  • Issue of General/ specific Search and Seizure Warrants, along with directions to police; Raid / Search & Seizure by Police
  • Investigation and arrest (if necessary) of accused persons;
  • Arguments;
  • Summons / Warrants against accused persons;
  • Accused Appear and seek bail;
  • Framing of charges, after notice of allegations;
  • Trial

Onus of proof is on the complainant

ADMINISTRATIVE REMEDIES

  • Indian Customs Act, 1962 – Deals with import/ export of goods including protection of patents, trademarks and copyrights.
  • Confiscation of infringing material by Custom Authorities
  • Restrictions against parallel importation of goods

OPPOSITION: IPR rights can be revoked or rectifited in the following instances: -

  • Fraud
  • Misrepresentation
  • The IP has been registered by the Registrar erroneously
  • Registration prohibited under some law
  • Registration is against public policy or morals

During the Process of Registration – By filing Opposition

After Registration – By filing Rectification Petition

PROTECTING TRADE SECRETS IN INDIA

As a member nation of the World Trade Organization (WTO) and a party to the Agreement on Trade Related Aspects of Intellectual-Property Rights (TRIPS) India is duty bound (Article 39 para 2) to provide a framework whereby secret/confidential information is protected. Despite numerous attempts by Indian Courts to place trade secrets under the scope of various existing legislation there has been no implementation of a single solid framework that properly neither defines nor protects trade secrets.

CONCLUSION

It is evident that there is a significant need for Industries and Government to unite in an effort to create a robust Intellectual Property Ecosystem, which will in turn encourage National Growth. The institutions of CIPAM(The Cell for IPR Promotion and Management), DIPP (the Department of Industrial Policy & Promotion), Ministry of Commerce & Industry and government of India not only aim to build a consensus but also share concerns regarding representations towards proactive resolution of intellectual property issues. It is important that agencies responsible for enforcement such as Police, Customs and the Prosecution recognize the importance of their position because effective IPR’s depend on effective enforcement.

In addition, the importance of IPR awareness has never been as high as it is today. When the above-mentioned agencies are knowledgeable about what it is they are protecting then only will their enforcement regime be stronger and systemized (especially their daily activities). A platform for experience sharing and efficient inter-agency coordination with respect to enforcement of IPRs will be achieved. When the lay man, businessman and/or professional knows abut IPR’s they will protect their innovation, which means that Indian Innovation will be globally recognized and respected. An efficient system of protection of IPR’s will encourage IP registration, which will then grow the national economy.

Conclusively, Intellectual Property and its Enforcement is key to every facet of a strong nation. India is growing in global recognition and in order to stay at the forefront of the economic fight that all nations are in it is important that India recognizes and respects IP so much so that enforcement is heightened.