IPR Protection In India

IPR Protection In India PRESENTATION BY IP & IT Division VAISH ASSOCIATES , ADVOCATES VIJAY PAL DALMIA Senior Associate, Head IP & IT Division Flat 5-7, IInd Floor , 10, Hailey Road, New Delhi-110001, India Ph:- 42492525 , 42492532 Mobile :- 9810081079 Email :- [email_address] www.indianlegalguide.com

SUBJECT MATTER OF IPR

1. Trade Marks / Brands (Trade Marks Act, 1999)‏

Property Marks

2. Copyright (Copyright Act, 1957)‏

Artistic Work

Literary Work

Audio, Video and Records

Software

3. Industrial Designs (Designs Act, 2000)‏

4. Patents (The Patent Act, 1970)‏

5. Geographical Indications

The geographical Indications of Goods ( Registration and

Protection )Act, 1999

6. Laws relating to Internet, Web and Information Technology

(Information Technology Act, 2000)‏

7. Domain Names

INFRINGEMENT OF IPR AND LEGAL REMEDIES

INFRINGEMENT WHEN AN IPR IS REGISTERED i.e.Trade Mark , Patent , Industrial Designs , Geographical Indications

Copyright

PASSING OFF

Passing off is a common law tort which can be used to enforce unregistered trademark rights. Passing off essentially occurs where the reputation of party A is misappropriated by party B, such that party B misrepresents this reputation and damages the goodwill of party A.

The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the plaintiff, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.

LEGAL REMEDIES AGAINST INFRINGEMENT AND PASSING OFF

CIVIL REMEDIES

CRIMINAL REMEDIES

Is Registration Of IPR Necessary?

NO

In case of

Trade Mark

Copyright

Yes

For

Patents

Industrial Designs

Geographical Indications

How Copyright comes in to Existence !

COPYRIGHT: -

Registration of Copyright w.r.t any logo / trade mark is not necessary or compulsory under the provisions of the Indian Copyright Act, 1957. Automatic protection is available to an artistic work, form the date when the artistic work / logo was designed.

Copyright Comes in to existence when the concept in mind is put in to some tangible form or crated

Trade Mark ! Who is protected ?

A trade mark is granted protection on the basis of

First Adoption

First User

First Inventor

First Invention / Adoption/ User is superior then the Registration

What are the Rights conferred by the Registration of IPR i.e. Trade Mark , Patent , Industrial Designs , Geographical Indications ?

Monopoly for the Specified period is created in favour of the Registration Holder

In case of Litigation Onus of Proof Shifts on the opposite Party

Prima Facie presumption is raised in favour of the Registration Holder by courts

Can the Registration of IPR cancelled or Revoked ?

Yes

In case the registration has been obtained by

Fraud

Misrepresentation

Wrongly

Against the rights of some other party / opponent

Registered by the Registrar erroneously

Registration prohibited under some law

Registration is against public policy or morals

When Registration can be Prevented or Revoked / cancelled ?

During the Process of Registration – By filing Opposition

After Registration – By filing Rectification Petition

What is the Test of Comparison in case of violation of IPR/ TM/Copyright/ Design / GI ?

There are two ways to compare Similarities between two trade marks :-

PHONETIC Similarity

OCCULAR Similarity

Other tests for comparison are :-

Other Tests of Comparison

Likely hood of confusion and deception

From the angle of a prudent person of ordinary intelligence

No Microscopic Comparison

No Actual confusion or Deception is Required

Actual Loss or Damage not necessary

CIVIL REMEDIES

Injunction/ stay

Damages can be claimed

Accounts and handing over of profits

Appointment of local commissioner by the court for custody/ sealing of infringing material / accounts

Interim Injunction :-

Ex-Parte

After Hearing

Procedure & Process for a Civil Case

Filing of plaint, with supporting evidence at the time of filing of the suit;

Filing of application under order 39 rule 1 & 2 read with sec. 151 of the Code of Civil Procedure, for grant of ex-parte ad-interim;

Filing of application under order 26 of the Code of Civil Procedure for appointment of a local commissioner, to make inventory and / or to take possession of the infringing material form the premises of the defendants, their agents, retailers and distributors etc.;

Hearing of arguments by court on application for grant of ex-parte injunction and appointment of local commissioner;

If the court is satisfied, the court may grant ex-parte and interim injunction and appoint a local commissioner.

Else

The court may give a short notice to the defendants for giving them an opportunity of hearing before granting any temporary injunction or appointing a local commissioner;

Service of notice/ summons of the court on the defendants;

Filing of written statement / reply by the defendant;

Hearing on application for grant of interim injunction;

Further proceedings in the suit including filing of replication / rejoinder, admission / denial of documents, framing of issues;

Trial

Judgment by the court.

Statutory Provisions

Trade Marks Act, 1999

Copyright Act, 1957

Designs Act, 2000

Patents Act , 1970

Geographical Indications of Goods( Registration and Protection) Act , 1999

Code of Civil Procedure, 1908

Specific Relief Act, 1963

Criminal Remedies Against Infringement of Trade Mark , Geographical Indications & Copyright , & Passing off

Filing of criminal complaint before the chief judicial magistrate / chief metropolitan magistrate, of the concerned jurisdiction

Leading evidence w.r.t. the infringement of the trade mark

Filing of application under sec. 91/93 of the Code of Criminal Procedure for issue of search and seizure warrants

Orders/ directions by the Court to police for the search and seizure of infringing material.

OR IN ALTERNATIVE

Or in alternative direction by the court to police for investigation, lodging of an FIR and search and seizure, under sec. 156 of the Code of Criminal Procedure, 1973.

OR IN ALTERNATIVE

Filing a Complaint / FIR with Police

Statues Invoked For Criminal Action

Sec. 103 / 104 of the Trade Marks Act, 1999

Sec. 63 and 64 of the Copyright Act, 1957

Sec. 39 of the Geographical Indication of Goods Act, 1999

Sec. 420 of the India Penal Code

Sec. 91/93 of the Code of Criminal Procedure

In which court a Civil Case can be filed against violation of IPR ?

In India, the jurisdiction for the purposes of filing a civil suit, will depend upon following facts, and subject to the following conditions:-

Where the cause of action has accrued;

Where the part of the cause of action has accrued;

Where the properties / violations are taking place;

Where the defendants reside or work for gain;

In brief, the jurisdiction for the purposes of filing a case would

depend upon the activities of the defendants / their place of

business.

Competent Court for Civil Action

In India a suit may be instituted in any Court of original jurisdiction, subject to its pecuniary & territorial jurisdiction. The Designation of the lowest court is “District & Sessions Judge”. These cases can also be filed in the High Court, directly, if such High Court is having original jurisdiction, e.g. Delhi High Court, which has the original jurisdiction.

The Jurisdiction of High Court could be invoked, subject to the payment of Court fees, which is diminishing in nature. The structure of Court fees vary from state to state.

Can Legal Action Under The Trade Marks Act, 1999 and the Copyright Act, 1957 , be combined ?

if the artwork, get up, design, color combination of a trade mark/ label/ packing material is similar and / or deceptively similar, the provisions of the Copyright Act, 1957, can also be invoked along with the Trade Marks Act, 1959, and this course of action is always preferable, as under the provisions of the Copyright Act, 1957, the offence becomes COGINIZABLE, and police can, on its own directly initiate Criminal proceedings after registration of an FIR.

Procedure for Filing a Criminal Complaint

PROCEDURE FOR FILING OF CRIMINAL COMPLAINT: -

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;

Next……

Continued……

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

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

Information and Requirements for filing an IPR Civil / Criminal Case

Detailed profile & history of the company.

Significance of the trade mark “xxxxxxxxx”.

Product range / product profile / trade mark profile.

Complete catalogue / brochures / price list.

Year of adoption and user of the trade mark.

Year wise sale figure of the products under the trade mark “xxxxxxxxx”, since the year of the adoption of the trade mark.

Next ….

Next …..

Year wise advertisement figure of the products under the trade mark “xxxxxxxxx”, since the year of the adoption of the trade mark.

Copy of 2-3 bills every year / in which the trade mark xxxxxxxxx is mentioned, since the year of the adoption of the trade mark.

Copy of 2-3 advertisement brochures, catalogues etc of every year / in which the trade mark xxxxxxxxx is mentioned, since the year of the adoption of the trade mark.

Next ………

Next…….

Copy of some correspondence by your customers / clients.

Some information / details about your clientele.

Some information about your tie ups / arrangements / technology details, to convince the court about the bonafied and goodwill of your claims.

Countries of export / import and where your business activities are carried out.

Next………

Next…..

List of persons, their proprietor / partners/ owners / or any other known information with address, who are infringing trade mark / copyright, along with

Their product details / range

Business activities

Area of business

Brochures / pamphlets / labels / photographs and other business info

Whether any such infringer is related with your company in any manner, whatsoever, at any point of time during your business activities, their status in your company, nature of information available to them, and when they disassociated themselves from your company.