ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Global nature of I.P.R.Intellectual property which is most valuable asset of humanity. Therefore it is anatural right & falling into the category of international laws. Therefore the scope ofI.P.R. protection is broader in a global sense. The advances of technology andglobalisation is also fuelling off the global characteristics and enforceability of I.P.R.regime. Scope of Protection in India.Being a Common Law country and Government’s new structure of globalisation,making it more open to market players, India adopted the Patent Cooperation Treaty,1970 in the year 1997 & also restructured Legislative Acts & Rules on different I.P.R.Segments.
ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Intellectual Provisions for Provisions in case of Definition Property Registration Infringement• TRADEMARK A visual symbol applied to • Any person claiming to CIVIL REMEDIES: articles of commerce with a be the proprietor of a • A Suit for Damages: In(The Trade Marks Act, view to indicate the trademark can apply in which the applicant can file 1999 individuality of particular writing to the Registrar. an application praying the goods & articles as • Application must be court for monetary (The Trade Marks distinguished from similar made in the office of compensation. Rules, 2002) goods or articles manufactured Trade Marks Registry • Injunction: or dealt by other persons. within whose territorial limits the place of Temporary Injunction: Trademark- business in India of the Which may be granted by the - identifies the product & its applicant is situated. court in favour of the applicant, restricting the origin • Where application is respondent for the time - guarantees its unchanged accepted, the Registrar being in carrying on any quality would cause the deals in connection with the - creates an image for the application to be disputed article. product advertised. • Any opposition to Anton Pillar Order: Where the court will allow the registration must be applicant to enter the made within 3months premises of the respondent from the date of to pursue evidence. advertisement.
ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Intellectual Provisions for Provisions in case of Infringement Property Registration• TRADEMARK • If no opposition is received Mareva Injunction: It is used to restrain the respondent or opposition has been from removing assets from the jurisdiction of the court. decided in favour of the Inter-Locutory Order: The court orders to sell any applicant, the trademark is property or authorise to enter upon any property for taking registered. sample for obtaining full information. The court may also order the surrender of the infringed articles & the profits accruing from any such dealing of those articles, along with the above mentioned remedies. CRIMINAL REMEDIES: No court inferior to that Section 482, IPC: Punishment for using false property mark. of a Metropolitan Section 483, IPC: Punishment for counterfeiting a property mark Magistrate or a District used by another. Section 484, IPC: Punishment for counterfeiting a mark used by a Magistrate shall try any Public Servant. offence under this Act. Section 485, IPC: Punishment for making or possession of any instrument for counterfeiting a property mark. Section 486, IPC: Punishment for selling goods marked with a counterfeit property mark. Section 487, IPC: Punishment for making a false mark upon any receptacle containing goods. Section 488, IPC: Punishment for making use of any such false mark. Section 489, IPC: Punishment for tampering with property mark with intent to cause injury.
ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Intellectual Provisions for Provisions in case of Definition Property Registration Infringement• COPYRIGHT Copyright is the right to copy • The author or other CIVIL REMEDIES: or reproduce the work in person may make an • A Suit for Damages: In (The Copyright Act, which copyright subsists. It is application which the applicant can file 1957) an exclusive right to do or accompanied by the an application praying the authorise to do or others to do prescribed fees to the court for monetary(The Copyright Rules, certain acts in relation to- Registrar of Copyrights. compensation. 1958) • Application must be • Injunction: • Literary, dramatic, musical & made in the office of artistic works. Copyright Registry Anton Pillar Order: Where • Cinematography film. within whose territorial the court will allow the • Sound Recording. limits the place of applicant to enter the business in India of the premises of the respondent Copyright law normally does applicant is situated. to pursue evidence. not protect useful articles, it • Where application is Inter-Locutory Injunction: does protect aesthetic accepted, the Registrar The court orders to sell any elements of an useful article. would cause the property or authorise to application to be enter upon any property for inspected as he may taking sample for obtaining deem fit. full information.
ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Intellectual Provisions for Provisions in case of Infringement Property Registration• COPYRIGHT • The Registrar may amend CRIMINAL REMEDIES: or alter any error which Section 63, Copyright Act: Punishment for infringement of may arise by any slip an copyright or other rights. omission. Section 63A, Copyright Act: Punishment for second and subsequent convictions for infringement of copyright or other • The application must be rights . published by the Registrar Section 63B, Copyright Act: Punishment for infringing copy after due inspection. of computer programme. • Any opposition to Section 64, Copyright Act: Power of police to cease registration must be made infringing copies. within 3months from the Section 65, Copyright Act: Punishment for possession of date of publishing. plates for the purpose of making infringing copies. Section 66, Copyright Act: Punishment for disposal of • If no opposition is received infringing copies or plates for purpose of making infringing or opposition has been copies. decided in favour of the Section 67, Copyright Act: Penalty for making false entries applicant, the trademark is in Register of Copyrights, etc. for producing or tendering false registered. entries. Section 68, Copyright Act: Penalty for making false statements for the purpose of deceiving or influencing any authority or officer. Section 70, Copyright Act: No court inferior to that of a Metropolitan Magistrate or a Judicial Magistrate of 1st Class shall try any offence under this Act.
ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Intellectual Provisions for Provisions in case of Definition Property Registration Infringement• DESIGN Design means the features of- • Application for CIVIL REMEDIES: -shape registration of designs • A Suit for Damages: In (The Designs Act, -configuration must be made in the which the applicant can file 2000) -pattern prescribed Form & with an application praying the -composition of lines or the prescribed fees. court for monetary (The Designs Rules, colours, • Application must be compensation. 2001) whether in two dimensional or made to the Patent • Injunction: three dimensional or in both Office, Calcutta or to any forms by any industrial process branch office through Inter-Locutory Injunction: but does not include a mere post, speed post or The court orders to sell any mechanical device. registered post. property or authorise to •On receipt of an enter upon any property for Note: A design in order to application, it would be taking sample for obtaining be registrable must be NEW or examined by an full information. ORIGINAL & previously NOT examiner as to whether • A Suit for Delivery-up of the published in India or abroad. A the design is registrable infringing articles. design cannot be SCANDALOUS under the Act & Rules or OBSCENE, or it cannot be and submit a report to registered. the Controller.
ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Intellectual Provisions for Provisions in case of Infringement Property Registration• DESIGN • If the application is in order CRIMINAL REMEDIES: & satisfies the requirements Section 63, Copyright Act: Punishment for infringement of of the Act & Rules, the copyright or other rights. Controller will accept the Section 63A, Copyright Act: Punishment for second and application and register it. subsequent convictions for infringement of copyright or other • If the Controller refuses an rights . application, any person Section 63B, Copyright Act: Punishment for infringing copy aggrieved may appeal to the of computer programme. High Court. Section 64, Copyright Act: Power of police to cease infringing copies. • Registration of the design in Section 65, Copyright Act: Punishment for possession of the first instance will be for a plates for the purpose of making infringing copies. period of 10yrs. which can be Section 66, Copyright Act: Punishment for disposal of extended by 5yrs. infringing copies or plates for purpose of making infringing copies. The right conferred by Section 67, Copyright Act: Penalty for making false entries such registration is called a in Register of Copyrights, etc. for producing or tendering false Copyright in Design. Though entries. the nature is different from Section 68, Copyright Act: Penalty for making false Copyright Act, yet in case of statements for the purpose of deceiving or influencing any infringement, provisions of authority or officer. Copyright Act would come in Section 70, Copyright Act: No court inferior to that of a force. Metropolitan Magistrate or a Judicial Magistrate of 1st Class shall try any offence under this Act.
ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Intellectual Provisions for Provisions in case of Definition Property Registration Infringement• PATENT • A Patent is an exclusive right • Application for CIVIL REMEDIES: granted to a person who has registration of designs • A Suit for Damages: In invented a new and useful must be made in the which the applicant can file (The Patents Act, article or an improvement of prescribed Form & with an application praying the 1970) an existing article or a new the prescribed fees. court for monetary process of making an article. It • Application must be compensation. (The Patents Rules, consists of an exclusive right to made to the Patent Office, Or, 2003) Calcutta or to any branch • A Suit for an Account of manufacture an article office through post, speed Profits: In which the according to the invented post or registered post. process for a limited period. applicant can file an • An application for a application praying the court patent will not be open to for the account of profits • The object of granting a public for a period of 18 accrued from such patent is to encourage and months from the date of infringement. develop new technology and filing. Thereafter the industry. application would be • Injunction: published & a request for Inter-Locutory Injunction: examination of The court orders to sell any application should be property or authorise to made by the applicant. enter upon any property for taking sample for obtaining full information. • A Suit for Delivery-up of the infringing articles.
ENFORCEMENT OF I.P.R. ON INDIAN PROSPECTIVE Intellectual Provisions for Provisions in case of Infringement Property Registration• PATENT • The application is examined CRIMINAL REMEDIES: by examiners of patent to see whether it complies with the Section 118, Patents Act: Punishment for contravention requirements of the Act & of secrecy provisions relating to certain inventions. Rules, whether there is any Section 119, Patents Act: Punishment for falsification of lawful ground of objection, registry in Register. etc. Section 120, Patents Act: Punishment for unauthorised • After examination the Patent claim of Patent rights. Office will communicate with Section 121, Patents Act: Punishment for wrongful use of the applicant who would be words “patent office”. asked to remove all official Section 122, Patents Act: Punishment for refusal or objections, if any. failure to supply information. • Thereafter the application Section 123, Patents Act: Punishment for practice by would be published in the non-registered patent agents. Official Gazette. Section 118, Patents Act: Punishment for offences by • Any person interested may Companies. give notice of opposition within three months from the No court inferior to that of a Metropolitan Magistrate or date of such publication. a District Magistrate shall try any offence under this Act & • After hearing of such in case of Counter-claim of patent, the suit would be opposition the Patent would immediately transferred to the High Court having territorial be accordingly granted by the jurisdiction. Patent Office.
Case references on Intellectual Property. Infringement of Trade Mark. ‘A’ was a prior user of a registered trademark ‘Z Z Z’ products. Marketing of similar kind of products by ‘B’ under the trade name ‘Z z Z’ is prima facie deceptive in nature which is likely to effect the goodwill earned by ‘A’ by creating confusion among customers. Thus interim injunction was granted in favour of ‘A’. Infringement of Copyright. ‘A’ is the holder of the copyright of his musical composition. ‘A’ alleges that ‘B’ has infringed the copyright by using a portion of the musical composition 4-5 times in ‘Bs’ work. Accordingly “expert” was appointed by the court to examine if the alleged infringement is valid or not. Expert’s opinion was that the musical work of ‘B’ was a copy of the musical work by ‘A’. Thus, it gives rise to cause of action in damages and relief of injunction. Hence, ‘A’ is entitled to injunction restraining ‘B’ from infringing his copyright in musical composition.
Case references on Intellectual Property. Infringement of Design. ‘ABC’, a Pharmaceutical Company was manufacturing ‘D’ shaped tablets. ‘XYZ’, another Pharmaceutical Company started manufacturing the ‘D’ shaped tablets without any prior permission from ‘ABC’ company. On filing a suit by ‘ABC’ it was examined & reported that ‘ABC’ had got design of the ‘D’ shaped tablets registered and the registration had not been cancelled. Thus, injunction was issued by the court restraining ‘XYZ’ company from manufacturing, marketing and using design registered in aspect of ‘D’ shaped tablet and/or any other tablet which was having similar shape, colour and configuration or material reproduction of ‘ABC’ company’s registered design. Infringement of Patent. ‘ABC’, a Pvt. Ltd. Company has registered patent for specific systems. The company alleges another company ‘XYZ’ of infringing their patent after it was sealed. ‘XYZ’ does not counter claim from revocation of the patent but raises the defence that the patented systems were in use since more than 2-3 decades. But ‘XYZ’ does not produce any independent pleadings or documents in support of its defence. Hence, it was held that the defence set up was perfunctory & casual. Thus ’ABC’ company was entitled to injunction against
Case references on Intellectual Property. Invention subjecting to Patent. ‘XYZ’, an institute makes a new machinery which would reduce the labour of farmers as well as the cost of farming to a huge extent which would in turn raise the productivity of crops. Yet the process of working of the machinery is similar to that of the existing system. As per the provisions of the Patents Act, 1970, an “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both & that makes the invention not obvious to a person skilled in that art. Perusal of the above definition clearly show that involvement of technical advance as compared to the existing knowledge or having economic significance is an inventive step and consequently, even assuming that new and useful improvement was made in the system. The same would be invention. Infringement of Copyright not valid. ‘ABC’ a Picture Distribution Company alleges ‘XYZ’, a Production House of infringing the copyright of stories, screenplay, and dialogues in Hindi remake of a Tamil Film. ‘ABC’ in his statement mentions that ‘XYZ’ by receiving consideration of Rs. 9lacs assigned to him copyright in story, screenplay & dialogues of the said film. ‘ABC’ produced the agreement between the parties but it was seen that the signature of the defendant on the alleged agreement of assignment was materially different from his admitted signature. Moreover, no book of accounts was produced to prove alleged payment of Rs.9lacs in cash to ‘XYZ’ by ‘ABC’. ‘ABC’ even failed to produce the prima facie execution of agreement. The suit was an attempt to extract some money from ‘XYZ’ by trying to secure an order of injunction. It was held that the plaintiff ‘ABC’ was not entitled to Injunction.
Conclusion The scope of IPR Enforcement is becoming much more wider & relevant with global context of international IPR regime, as set by the rules of international treaties & conventions & guidelines provided by mechanism body of WTO & WIPO. It is also observable that the implementation, as far IPR Rules & other colonial Acts of India, is needed to be much more sharpened in case of any kind of infringement and counterfeiting. Therefore need of competent IPR Attorneys is growing day by day.