Intellectual property rights as a collective term includes the following independent IP rights which can be collectively used for protecting different aspects of an inventive work for multiple protection:- Trademarks Patents Copyrights Design Geographical indications
IPR are largely territorial rights and are grants of monopoly intended to give economic incentives for innovative activity. IPR exist in the form of Trademark, Patents, Copyright, Design & Geographical Indications.
COMPONENT- IND. DESIGNS- COPYRIGHT LOGO (TRADE MARK & COPYRIGHT) AESTHETIC SHAPE (DESIGN) LITERARY, MUSICAL & PATENTED ARTISTIC TRADEMARKCOMPONENT (COPYRIGHT)
Trademark is a distinguished symbol or sign owned by a person or persons pertaining to their product or services and primarily identifies the source. A trademark can be a word, symbol, phrase or object which a consumer uses to identify the product. A trademark should be registered under the trademark law in India so that it obtains maximum legal protection.
Stage One –Classification and Pre-Filing Search Classification and Pre- Filing Search Trademark 42 Classes (including 7 Classes for Service Marks)for Service Marks) TM 54 (Search application) three copies TM 54 TM 55 (Registrar‟s Preliminary Advice) TM 55 Public Search at Trademark OfficeStage Two –Involves the registration Process itself
Trademark Application –Issuance of Official Receipt ( TM No will be issued)Issuance of Official Receipt ( TM No will be issued) Examination Report –Within three months from application. within one months from the date of the Examination report. Response by filing an Affidavit Response by hearing Response by Interview ( In case the agent has 100+pending cases). Trademark application amendment – TM 16 TM 16
Acceptance before advertisement Publication –Wait for Opposition for Three months. Wait for Opposition for Three months–Opposition Proceedings Opposition Proceedings Registration Initially for 10 years from the date of the application Renewal
LOCATION AND JURISDICTIONTrade Marks Registry, Mumbai (Head Office)Intellectual Property Bhavan, Near Antop Hill Head Post Office,S.M. Road , Antop Hill, Mumbai 400037 Tel: 022-2410 1144, 24101177, 24148251, 24112211 Fax: 24120808, 24132295Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa Trade Marks Registry, DelhiIntellectual Property Bhavan, Plot NO.32, Section 14, Dwarka, DelhiTel. 011-28082915/ 16/17 Fax:Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh Trade Marks Registry, Kolkata,CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake,Kolkata-700091(Telfax. 033-23677311Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andaman & Nicobar Island.
Trade Marks Registry, Ahmedabad,15/27 National Chambers, 1st floor,Ashram road,Ahmedabad-380 009.Tel: 079-26580567Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Daman, Diu, Dadra and Nagar Haveli Trade Marks Registry, ChennaiIP building, GST Road, GuindyChennai-600032Tele: 044-22502041, Fax : 044-22502042Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island.
India enacted its new Trademarks Act 1999 (the TM Act) and the Trademarks Rules 2002, with effect from 15th September 2003, to ensure adequate protection to domestic and international brand owners, in compliance with the TRIPs Agreement.
Enactment of the Indian Trademarks Act 1999 is a big step forward from the Trade andMerchandise Marks Act 1958 . The newly enacted Act has somefeatures not present in the 1958 Act and these are:- Registration of service marks, collective marks and certification trademarks. Protection for well-known trademarks provided for effectively. Increasing the period of registration and renewal from 7 years to 10 years. Allowing filing of single application for registration in more than one class.
Enhanced punishment for offences related to trademarks- sec 135 allows for exparte injunction for purpose of recovery and sec.135(2) constrains offender from disposing off assets in order to recover damages effectively. Alongside sec.135(2)(b) also paves way for preservation of infringed goods through local commissioner support actions. Sec 29 provides for a remedy wherein the court can restrain offenders from export-import as punishment for infringement actions. Simplified procedure for registration of registered users and enlarged scope of permitted use. Constitution of an Appellate Board for speedy disposal of appeals and rectification of applications which at present lie before High Court.
The new Trade Marks Act, 1999, came into affect in India on September 15, 2003, giving recognition to well-known trade marks. With the coming of the new Act, the definition of a mark has been enhanced by virtue of sec.2(1)(m) , “mark include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colour or any combination thereof.”
According to sec.2(2)(zg) “in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”
The new Trade Marks Act, 1999, came into affect in India on September 15, 2003, giving recognition to well-known trade marks. Just preceding the introduction of the Act came a landmark decision of the Supreme Court of India. In the case of Hardie Trading Ltd. v Addison Paint and Chemicals Ltd. reported in 2003(27) PTC 241 (decided on September 12, 2003) the Supreme Court of India, while deciding a cancellation action has categorically stated that the “use” of a trade mark as understood under Indian law may not necessarily be use upon or in physical relation to goods. The court has held that to constitute use there is no requirement for the goods bearing the mark to be physically present and made available in India. The court has cited with approval law wherein it has been held that the presence of the mark in advertisements, in invoices and in orders also constitutes use of the trade mark. While citing with approval the English decision in Bon Matin Trade Mark (1989 RPC 536), the court held that even the presence of the mark on price lists and promotional literature constitutes use.
The general laws in relation to Intellectual Property Enforcement in India are mainly the following:- The Code Of Civil Procedure The Indian Penal Code The Civil and Criminal Rules of PracticeWhile Civil Procedure Code provides for the civil remedies and enforcement through civil courts, the Indian Penal Code provides for penal remedies. The rules of practice of the trial courts, High Courts and the Supreme Court of India set the finalities of the enforcement procedure. India follows common law tradition and judicial precedents do have binding force. Hence the decisions of the Supreme Court bind the lower judiciary of the country.
It is pertinent to note that both Civil and Criminal remedies are simultaneously available against the infringement and passing off of a trade mark: -( SUMEET MACHINE PVT. LTD VS SUMEET RESEARCH & HOLDINGS PVT LTD-1993 PTC,Pg-75).“Infringement action can be initiated, when a trade mark is registered”. “Passing off action can be initiated when a trade mark is unregistered”.
Trademark provides protection to the owner of the mark by ensuring the exclusive rights to use in to identify the goods or services or authorize another to use it in return of payment. Under section 28 of the Act, the registration of a trade mark shall give to the registered proprietor of the trademark, the exclusive right to the use of the mark in relation to the goods in respect of which the mark is registered and to obtain relief in respect of the trademark in the manner provided under the Act. The proprietor of a trade mark has a right to file a suit for infringement of his right and obtain: 1. Injunction, 2. Damages, 3. Account of profits Sec 29 provides for a remedy wherein the court can restrain offenders from use of registered trademark by association, advertisement or export-import as punishment for infringement actions.
The Indian judicial precedents have widely recognised and accepted the transborder reputation of the Marks even if they are not registered in India. The best example for this is the famous WHIRPOOL CASE. N.R. Dongre v. Whirlpool Corpn.[(1996) 16 P.T.C. 476 Del (DB)is the landmark judgment which recognised the doctrine of „transborder reputation‟ in detail. In this case, one of the questions before the court was whether the aggrieved party who was not selling in India could claim the benefit of transborder reputation in the trade mark „WHIRLPOOL‟ so as to maintain a Passing Off action in India or should its goodwill and reputation be confined to territories in which it has proved actual use of the trade mark in the market? Answering the question in favour of the aggrieved party an injunction was granted by the Hon‟ble Delhi High Court which was reaffirmed by the Hon‟ble Supreme Court.
The protection provided to unregistered trade marks is also extended to foreign marks, which have a reputation in India on the basis of extensive advertisements and publicity. The international reputation of a trade mark could enable the owner to obtain injunction in the courts of a country in which he is not even trading. Indian courts have also granted injunction in cases of transborder reputation. In Jolen Inc. v. Shobanlal Jain[2005 30 P.T.C. 385 (Mad)], transborder reputation was established by the fact that the plaintiff marketed goods in other countries. Considering the fact that there was copy of the plaintiff‟s trade mark, interim injunction was granted.
patent is an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention, provided the invention satisfies certain conditions stipulated in the law. Exclusive right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder.
The first Indian patent laws were first promulgated in 1856. These were modified from time to time. New patent laws were made after the independence in the form of the Indian Patent Act 1970. The Act has now been radically amended to become fully compliant with the provisions of TRIPS. The most recent amendment were made in 2005 which were preceded by the amendments in 2000 and 2003. While the process of bringing out amendments was going on, India became a member of the Paris Convention, Patent Cooperation Treaty and Budapest Treaty.
Copyright is a right, which is available for creating an original literary or dramatic or musical or artistic work. Cinematographic films including sound track and video films and recordings on discs, tapes, perforated roll or other devices are covered by copyrights. Computer programs and software are covered under literary works and are protected in India under copyrights. The Copyright Act, 1957 as amended in 1983, 1984, 1992, 1994 and 1999 governs the copyright protection in India. The total term of protection for literary work is the author‟s life plus sixty years. For cinematographic films, records, photographs, posthumous publications, anonymous publication, works of government and international agencies the term is 60 years from the beginning of the calendar year following the year in which the work was published. For broadcasting, the term is 25 years from the beginning of the calendar year following the year in which the broadcast was made.
(i) Literary, dramatic and musical work. Computer programs/software are covered within the definition of literary work.(ii) Artistic work-enhanced to include Industrial & architectural designs.(iii) Cinematographic films, which include sound track, musical works and video films.(iv) Recording on any disc, tape, perforated roll or other device.
Design as per the Indian Act means the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article - whether in two dimensional or three dimensional or in both forms - by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye;
Indications which identify a good as originating in the territory of a member or a region or a locality in that territory, where a given quality reputation or other characteristics of the good is attributable to its geographical origin. The concept of identifying GI and protecting them is a new concept in India, perhaps in most developing countries, and has come to knowledge in these countries after they signed the TRIPS Agreement. It may be noted that properly protected GI will give protection in domestic and international market. Stipulations of TRIPS would be applicable to all the member countries. According to TRIPS, GI which is not or cease to be protected in its country of origin or which has fallen into disuse in that country cannot be protected.
Sentence of imprisonment for a term between six months to three years and a fine between fifty thousand rupees and two lakh rupees is provided in the Act. The court may reduce the punishment under special circumstances. TERM OF GI PROTECTION- The registration of a GI shall be for a period of ten years but may be renewed from time to time for an unlimited period by payment of the renewal fees.
India is a member-state of Word Intellectual Property Organization (WIPO), an International Organization, responsible for the promotion of the protection of intellectual property throughout the world. India is a member of the following International Organizations and Treaties in respect of Patents: a) World Trade Organization (WTO) with effect from 01-01 -1995. Berne Convention for protection of Literary & artistic works,1886.(*PARIS TEXT 1971) b) Convention establishing World Intellectual Property Organization, (WIPO)(1996). c) Paris Convention for the protection of Industrial Property with effect from Dec.7, 1998. d) Patent Co-operation Treaty (PCT) with effect from Dec.7, 1998. e) International Copyright Order, 1991 (As amended in 1999 & 2000)
Customs is an authority or agency in a country responsible for collecting and safeguarding customs duties and for controlling the flow of goods including animals, transports, personal effects and hazardous items in and out of a country. Depending on local legislation and regulations, the import or export of some goods may be restricted or forbidden, and the customs agency enforces these rules. In India, the basic law for levy and collection of customs duty is Customs Act, 1962. It provides for levy and collection of duty on imports and exports, import/export procedures, prohibitions on importation and exportation of goods, penalties, offences, etc.
The unique as well as diverse topography of India poses a challenge not only for security reasons but also brings about an enhanced responsibility on customs authorities to ensure safeguarding and for controlling the flow of goods into the country. While the traditional role of customs is revenue collection mainly via taxes on imports, they are now required to act as an IP enforcement agency and Adjudicating body. Effective IPR border control mechanisms helps in deterrence of cross border transit of counterfeit goods and in balance of interests of right holders.
Customs Act, 1962 prohibits import of goods that infringe intellectual property. Section 11 of the Act empowers the Central Government, for the purposes specified in subsection 11(2), to prohibit import or export of goods of any description by issuing a notification.
In India border measure are enforced by Customs Department. Department of Revenue/Central Board of Excise and custom has issued the notification/Rules/Circular for enforcement of IPR border measure:-A. Customs Notification No. 49/2007- custom (NT) dated 8-5-2007.B. Intellectual Property Right (Imported Goods) Enforcement, 2007 dated 8-5-2007C. Custom Circular No. 41/2007 dated 29-10-2007.Legal Provision:• In section 2 (n) of custom Act, 1962 empowers the Central Government to prohibit importation and exportation of any goods for the protection of Patents Trademarks and Copyrights by Issuing of Notification.• Section 11 (2) (u) of Customs Act, 1962 empowers the Central Government to prohibit importation and exportation of any goods for the protection of any other law for the time being force by issuing of notification.
The rules inter alia provide for:-• Filing of a notice by the right holder.• Registration of said notice by the Customs.• Time limit for right holder to join proceedings.• Single point for registration of the notice filed by the right holder.• Fees of Rs. 2000/- for every notice.• Adequate protection to the rightful importer.• Adequate protection to the Customs for bonafide act.• Suo-moto action by the Customs in specific circumstances• Disposal of the confiscated goods.• No action against goods of non commercial nature contained in personal baggage or sent in small consignments intended for personal use of the importer.
• Import of infringing goods are prohibited under Notification No. 49/2007- Customs (NT) subjects to following conditions and procedures laid down in Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.• Department of Revenue notifies the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 on 8th of May 2007.• The rules have been framed in the line of TRIPS and WCO (world Customs Organization) model.
The counterfeit market in India is a growing menace and the following statistics provided by FICCI account for that:Counterfeit Trade in India Drugs and Medicine:15 - 20% (Rs 3000 Cr) FMCG :8%- 10%(Rs 7000 Cr) Auto spares:37% ( Rs 4500 Cr) Music Industry:40% ( Rs 3100 Cr) IT / Software:80% Soft Drinks:10% Cosmetics &Toiletries:10 – 30%
The Rule 2 of the rules provides definitions. It is borrowed from the model legislation by the Geneva based World Customs Organization, Rule 2(b) and 2(c), defining the term “intellectual property” and “intellectual property law” respectively, indicate that the Rules are applicable to those imported goods suspected to be infringing rights either in a trademark, copyright, geographical indication or patent. India is not obligated to introduce border measures with respect to other categories of intellectual property such as patents or geographical indications. The extension of border measures to other categories of intellectual property, especially to patents becomes significant in view of the institutional incompetence of the customs authorities to deal with complex matters relating to patent law.
The Rules provide an elaborate procedure for the enforcement of intellectual property rights of the right holders by customs authorities. The Rules envisage the provision of notice by the right holder to the Commissioner of Customs (or any officer authorized on his behalf) requesting for the suspension of clearance of goods suspected to be infringing intellectual property. On the registration of the notice, the Commissioner is required to communicate to the right holder the validity period of the registration during which the assistance by the customs authority shall be rendered, with the minimum period being one year. Rule 4(3) of the Rules provides that all customs offices shall render assistance to the right holder.
Rules 6 and 7: Enabling Provisions- Rules 6 and 7 are the enabling provisions which empower the customs administration to suspend the clearance of goods infringing intellectual property rights. Rule 6 provides that after the grant of the registration of the notice the import of allegedly infringing goods into India shall be deemed as prohibited within the meaning of Section 11 of the Customs Act, 1962. Rule 7(1)(a) of the Rules empowers the customs authority to suspend the clearance of goods on the basis of the notice given by the right holder to suspend the clearance of goods if he has reason to believe that the imported goods are suspected to be goods infringing intellectual property rights. The rules further provide for communication of the order of suspension of clearance to both the importer and the right holder, stating the reasons for such suspension.
From the date of such communication, the right holder is required to join the proceedings before the customs administration within a period of ten working days (extendable to twenty working days) failing which the goods shall be released provided that all other conditions of import of such goods have been complied with. Rule 7(1) (b) empowers the customs authority to suspend the clearance of goods suo motu if it has prima facie evidence or has reasonable grounds to believe that the imported goods are goods infringing intellectual property.
Rule 7 of the Rules is the enabling provision empowering the Customs administration to suspend the clearance of goods. The order for suspension of clearance of goods under Rule 7(1) is made on the basis of the notice given by the right holder, and this forms the basis for the suspension of clearance. Therefore, the right holder is entitled to make a prima facie case for infringement by virtue of the notice. However, the importer is not provided an opportunity to be heard and he is entitled to seek the clearance of the goods only after he receives the communication from the customs authority under Rule 7(2). The very nature of the order is such that the rule of audi alteram partem must be excluded. That being said, it is imperative that the post-decisional hearing shall take place “as soon as” the order for suspension of clearance is made. The requirement under the Rules is that the order of suspension must be communicated to the right holder “immediately”.
The format of notice provided in the Annexure indicates that the right holder is not required to provide evidence to establish that the goods are infringing in cases where he does not seek to prevent the import of a specific consignment. The right holder is required to give prima facie proof of infringement only where the infringement by goods in a specific consignment is alleged at the time when the notice for registration is given. A situation where at the time when the right holder gives the notice of registration there is no specific consignment which infringes the rights of the applicant. The right holder in such circumstances shall be granted the registration of the notice without submitting any proof concerning infringement regarding a specific consignment. On the basis of this notice, the customs administration is required to determine the scope of his intellectual property rights and detain goods which they suspect to be infringing.
Rules 8, 9 and 10 contain provisions for examination of goods by the right holder, supply of information to the right holder and supply of information to the importer, respectively. Rule 8 empowers the Commissioner to allow the right holder/importer to examine the goods, the clearance of which has been suspended, and to provide representative samples for examination, testing and analysis to assist in determining whether the goods are pirated, counterfeit or otherwise infringe an intellectual property right. Rule 9 enables the right holder to seek information such as the name and address of the importer and such additional relevant information regarding the consignment which has been suspended. Similarly, Rule 10 enables the importer to seek information relating to the right holder. However, these provisions are to be applied without prejudice to the protection of confidential information, thereby ensuring that sensitive information regarding the importer or the right holder is not disclosed.
Rule 11 provides for the disposal of infringing goods. This rule is applicable where upon determination by the Deputy Commissioner of Customs/Assistant Commissioner of Customs, it is found that the goods detained or seized have infringed intellectual property rights, and have been confiscated under Section 111(d) of the Customs Act, 1962 and no legal proceedings are pending in relation to such determination. The said authority in such cases can destroy the goods under official supervision or dispose them outside the normal channels of commerce after obtaining „no objection‟ or concurrence of the right holder. Rule 11 raises major concerns for the importer since the disposal of goods by the Customs authority amounts to a final determination of the rights, and the only remedy is to seek monetary compensation from the right holder.
Central Board of Excise and Customs has issued a circular No. 41/2007 dated 29-10-2007 which apart from explaining various provisions of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, in border security measure, place detailed procedure for electronic registration of the notice by the Right Holders. Salient features of the Circular 41/2007:-• On- line recordation as a trade facilitation measure.• 110% of value of goods Bond amount and 25% of bond value as BG- uniformity.• Recordation valid for 5 years (extendable thereafter on payment of fees).
The menace of counterfeiting has assumed great proportions. The introduction of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 by the Central Government in exercise of the powers conferred by sub-section (1) of section 156 of the Customs Act, 1962 read with clauses (n) and (u) of sub-section (2) of section 11 of the said Act, to be applied to imported goods is certainly a step in the right direction. 52
India has sought to strengthen the protection of intellectual property through border measures, both by legislative as well as executive mechanisms. India has seen export diversions and restrictions lately and also faces deficits in trade volume due to suffering exports and export item counterfeiting. The Indian customs laws and regulations have protective measures for the imports but are silent as far as exports are concerned. However the menace of IP Infringements and counterfeit goods is still eating into the Indian trade scenario and export-import structures. In order to do away with this menace a better implementation of the custom rules in tandem with special IPR initiatives needs to be adopted.
HIGH ALERTS AND EFFECTIVE PHYSICAL CHECKS AT CONSIGNMENTS AT HIGH RISK PORTS EXTRA VIGILANCE ON LOW RISK PORTS LIKE DIMAPUR, CALCUTTA, ETC. EXTENDED USE OF TECHNOLOGY BY CUSTOMS DEPARTMENT FOR FASTER ACTION NECESSARY FRISKING OF CONSIGNMENTS OF TOYS, BATTERIES, APPAREL, SHOES ETC AS THEY ARE LIABLE TO HAVE HIDDEN COUNTERFEIT GOODS REPEAT OFFENCES SHOULD INVITE STRINGENT /RIGOUROUS MEASURES LIKE BLACKLISTING, ENHANCED PUNISHMENT AND SUSPENSION OF IEC ETC.
DATABANKS OF CUSTOM AUTHORITIES REGARDING INFORMATION OF RECORDED BRANDS SHOULD BE WELL-SYNCED WITH ALL PORTS AS WELL AS DRI‟S. FREEZING OF COUNTERFEITER‟S PROPERTY SHOULD BE ALLOWED NECESSARY INVOICING TO BE FOLLOWED BY CUSTOMS DEPT. IMPUGNED GOODS AFTER SIEZURE SHOULD BE SAMPLED APPROPRIATELY AND REST DESTROYED IN ORDER TO DO AWAY WITH ANY CHANCES OF LEAKING INTO LOCAL MARKETS. IN CASES WHEREIN IMPORTER DOES NOT JOIN THE PROCEEDINGS THE CUSTOMS DEPARTMENT SHOULD DESTROY THE GOODS AFTER FORMALITIES BY MAIN BRANDSHIP ARE COMPLETE. FORMULATION OF EQUAL RULES FOR IMPORTERS AS WELL AS EXPORTERS.
ALL VIEWS IN THIS PRESENTATION ARE CANDIDLY PERSONAL! 56