1. IPR & CUSTOMS
BY
GAURAV GOGIA (Advocate)
United Overseas Trademark Company
United Overseas Patent Firm
2. WHAT IS IPR ?
Grants monopoly
PROVIDES economic incentives
PROMOTES innovation
WHY PROTECTION OF IPR?
PUBLIC INTEREST
3. COMPONENT- IND.
DESIGNS- COPYRIGHT
LOGO (TRADE MARK
& COPYRIGHT)
AESTHETI
C
SHAPE
(DESIGN)
LITERARY,
MUSICAL &
PATENTED ARTISTIC TRADEMARK
COMPONENT (COPYRIGHT)
4. TRADEMARKS
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 Trademarks Act, 1999 in
order to obtain maximum legal protection.
Why Trade Mark?
Most prominent
Maximum infringement
Requires maximum regulation and protection
5. REGISTRATION OF A TRADEMARK
For the purpose of Registration, Trade Mark is divided into 45
international classes. (by Nice)
The first 34 classes pertains to goods and the remaining 11 classes
relate to services.
Similar classification for Patents, designs and figurative elements of
Marks.
Available at http://www.wipo.int/classifications
7. INDIAN TRADEMARK OFFICES
LOCATION AND JURISDICTION
Trade 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, 24132295
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa
Trade Marks Registry, Delhi
Intellectual Property Bhavan, Plot NO.32, Section 14, Dwarka, Delhi
Tel. 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. 033-23677311
Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram,
Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andaman & Nicobar Island.
8. CONTD.
Trade Marks Registry, Ahmedabad,
15/27 National Chambers, 1st floor,
Ashram road,
Ahmedabad-380 009.
Tel: 079-26580567
Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Daman, Diu, Dadra and
Nagar Haveli
Trade Marks Registry, Chennai
IP building, GST Road, Guindy
Chennai-600032
Tele: 044-22502041, Fax : 044-22502042
Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of
Pondicherry and Lakshadweep Island.
9. TRADEMARKS ACT 1999: A REFORM
The Trademarks Act 1999 and the Trademarks Rules 2002, came into
force on 15th September 2003, with a view to ensure adequate protection
to domestic and international brand owners, in compliance with the
TRIPs Agreement. Following reforms over the earlier act:
1) Service Marks, Collective Marks and Certification Mark
2) Well Known Trademark
3) Period of registration and renewal
4) Grounds for refusal of registration of trademarks : absolute and relative
5) Multiple registration under single application
6) Remedy for enforcement
7) Constitution of IPAB
8) Enhanced definition of Mark
10. WHAT IS A MARK?
With the coming of the new Act, the definition of a mark has
been enhanced by virtue of Sec.2(1)(m). Accordingly it
provides that a “mark includes a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colour or any combination
thereof.”
13. WELL KNOWN TRADEMARKS
According to sec.2(1)(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.”
14. NON TRADITIONAL TRADE MARKS
1. Colour marks
2. Sound marks
3. Smell/Scent/Olfactory marks
4. Shape marks
5. Moving Image marks
6. Holograms
7. Gesture marks
8. Taste marks/Gustatory marks
9. Feel marks/tactile marks
10. Celebrity marks
11. Digital marks
12. Trade Dress
Available at http://www.wipo.int/edocs/mdocs/sct/en/sct_19/sct_19_2.pdf
15. CONTINUED
These trademarks are exceptional and unique in nature because unlike their
traditional counterparts, they are sometimes non-ocular eg: sound, smell, feel and
taste; some are not static like moving image marks and digital marks; and others such
as gestures and holograms, which have revolutionized both the fields of trademark
law and marketing. Some of these have been more widely accepted in recent times as
a result of legislative changes and the broad-mindedness of the judiciary, which have
cumulatively led to the expansion of the definition of the term 'trademark'. The
definition of the term trademark varies from nation to nation. A few countries like
United States of America, most countries forming the European Union like Germany,
the Benelux countries, United Kingdom, etc. have given recognition to non-
traditional mark thereby including colours, sounds, smells, etc. in their definitions.
Some countries on the contrary have chosen to not make amendments to their
trademark laws to include these marks and are still restricted only to a static, two-
dimensional trademark.
16. REMEDY FOR TM ENFORCEMENT
Simultaneous Civil and Criminal Remedies
Passing Off – common law remedy
Infringement
Injunction
Damages
Rendition of Accounts
17. PATENTS
An exclusive right granted to the owner of an invention to make,
use, manufacture and market the invention, provided the invention
satisfies certain conditions stipulated under the law.
Exclusive right implies that no one else can make, use, manufacture
or market the invention without the consent of the patent holder.
Patent Laws first introduced in India in 1858, but codified in 1970
with Indian Patents Act coming into force.
Presently India is fully TRIPS compliant w.r.t. Patents Law
India is a member of Paris Convention, Patent Cooperation Treaty
and Budapest Treaty
18. PROTECTION OFFERED BY COPYRIGHTS
(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.
20. DESIGNS
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.
21. GEOGRAPHICAL INDICATIONS
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 product are
essentially attributable to its geographical origin. The concept of
identifying GI and protecting them is a relatively new concept in
India, perhaps in most developing countries, and has come to
knowledge in these countries after they signed the TRIPS Agreement.
GI offers protection in Indian as well as International market.
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.
Around 65 GI‟s of Indian origin have already been registered with the
GI registry, which include Darjeeling (tea), Chanderi (sarees),
Kashmiri Pashmina (shawls), Kondapoli (toys), Mysore (agarbatis), etc.
22. CUSTOMS IN IPR
For the purpose of Customs Rules, Intellectual
Property Rights includes the following independent
rights which can be collectively used for protecting
different aspects of an inventive work for multiple
protection:-
Trademarks
Patents
Copyrights
Design
Geographical indications
23. WHY CUSTOMS IN IPR?
ANSWER:
BEST COUNTERFEITING DETERRENT
24. COUNTERFEIT REALITY BYTES
Counterfeiting = Fake Goods = Infringement = Omnipresent
Counterfeiting per se means dealing in fake goods, and in practice the term is
allowed to encompass any making of a product which so closely imitates the
appearance of the product of another as to mislead a consumer that it is the
product of another.
Since it amounts to infringement under the IPR laws, it is in line with the
German term “Produktpiraterie” and the French term “contrefaçon”, which
both cover a broader range of intellectual property right infringement (Clark,
1997).
“Counterfeitance” has been deliberately not given any statutory definition by
legislature in the various statutes governing IPRs. Legislature intends – Not to
restrict counterfeiting into said parameters – As counterfeiting is an evolving
concept, a reality and always one step ahead of law.
25. STATISTICS ON COUNTERFEIT IN INDIA
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%
26. TIPS TO IDENTIFY COUNTERFEIT GOODS
Categorization of Consignments for Physical Checks
Database of High Priority Products which are related to Human
Contact / Consumption
Identification of High End Products and Brand Awareness
Database of List of Importers /Sole Selling & Distributing Agents
Check the quality of Printing / Packaging / Labeling
Vigilance on Apparent Low-Profile or Low-Risk Ports
Counterfeit products may include the products with following
specifications:
insufficient or erroneous quantities of active ingredients, or expired
active ingredients;
incorrect ingredients with possibly toxic elements and impurities;
cheap ingredients;
unhygienic manufacturing process;
false or misleading packaging.
27. UNIQUE INDIAN TOPOGRAPHY
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
30. EMPOWERING PROVISIONS OF CUSTOMS ACT 1962
Section 11 (1) confers power on the Central Government to issue
notification for any of the purposes specified in Sec.11(2), to
prohibit either absolutely or impose conditions on the import /
export of goods of any description. Accordingly, the Central Govt.
may issue notification for the following purposes:
Section 11 (2) (n) – the protection of Patents Trademarks and
Copyrights by Issuing of Notification.
Section 11 (2) (o) – the prevention of deceptive practices
Section 11 (2) (u) – the protection of any other law for the time
being force by issuing of Notification.
Definition of illegal import given in Section 11A (a)
Seizure in Section 110
Power of Confiscation under section 111 (d)
Appeal under Section 129A
31. SALIENT FEATURES OF 2007 IPR RULES
Framed on the lines of TRIPS and WCO model.
Custom Recordial on http://ipr.icegate.gov.in
ICEGATE (Indian Customs and Central Excise Electronic Commerce / Electronic
Data Interchange Gateway) was formed under the said rules – dispenses with
tedious documentation and facilitates efiling
Adjudication and enforcement powers given to Customs
Adequate protection to the rightful importer. (bond)
Adequate protection to the Customs for bonafide act.
Suo-moto suspension by the Customs of suspected counterfeit goods.
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.
32. RECORDIAL PROCEDURE
The right holder decides the Customs Port
Makes online payment of Rs.2,000/-
Provides the Copy of its Registered IPR, PoA, and Title Deeds in
pdf format.
Provides the category of IPR, IEC, origin of manufacture of goods,
suspected counterfeit countries, statement of use, etc.
Executes General Bond and Indemnity Bond (circular No.
10/2011)
Centralized Bond – valid for all Indian Ports and General Bond
followed by a specific bond –mentioning port of interdiction.
25% of bond value security in case of Centralized Bond.
33. SUSPENSION OF COUNTERFEIT GOODS
Rule 5: Seizure subject to bond and surety by right-holder, at a value as
deemed appropriate by the Commissioner.
Rule 7: Customs to suspend the suspected counterfeit goods on the notice given
by the right holder or sou-motu, and immediately inform the right-holder.
Where right-holder fails to join proceedings within 10 days (can be
extended by further 10 days – commissioner‟s discretion), goods may be
released.
Where right-holder fails to give notice or fails to furnish bond + surety, the
goods may be released within 5 days from the suspension (3 days in case of
perishable goods).
34. RULE 7 & AUDI ALTERAM PARTEM
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 or clearance is made. The requirement under the Rules is
that the order of suspension must be communicated to the right
holder “immediately”.
35. NO NEED FOR PRIMA FACIE EVIDENCE
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.
36. EXAMINATION & SUPPLY OF INFORMATION
Rule 8 allows 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.
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.
37. DISPOSAL OF INFRINGING GOODS
Rule 11 provides for disposal of goods once it is established that IP
Rights are infringed, goods are confiscated under sec 111(d), 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.
38. OTHER FEATURES OF 2007 RULES
• On- line recordation as a trade facilitation measure.
• 110% of value of goods Bond amount and 25% of bond
value as Surety - uniformity.
• Recordation valid for 5 years (extendable thereafter on
payment of fees).
39. SUGGESTIONS FOR BETTER CUSTOMS-IPR REGIME
HIGH ALERTS AND EFFECTIVE PHYSICAL CHECKS FOR
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
REPEATED OFFENCES SHOULD INVITE STRINGENT /RIGOUROUS
MEASURES LIKE BLACKLISTING, ENHANCED PUNISHMENT AND
SUSPENSION OF IEC, ETC.
40. CONTD.
DATABANKS OF CUSTOM AUTHORITIES REGARDING INFORMATION
OF RECORDED BRANDS SHOULD BE WELL-SYNCED WITH ALL
PORTS AS WELL AS DRI‟S.
FREEZING/ATTACHMENT OF COUNTERFEITER‟S PROPERTY SHOULD
BE ALLOWED IN CASE OF RECURRING OFFENDER.
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.
41. CONTD.
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.
UNIFORMITY IN PORTS – DISCRETION OF THE COMMISSIONER OF
CUSTOMS ON VALUE OF GOODS