IPR & CUSTOMS BY GAURAV GOGIA (Advocate) United Overseas Trademark Company United Overseas Patent Firm
WHAT IS IPR ? Grants monopoly PROVIDES economic incentives PROMOTES innovation WHY PROTECTION OF IPR?PUBLIC INTEREST
COMPONENT- IND. DESIGNS- COPYRIGHT LOGO (TRADE MARK & COPYRIGHT) AESTHETI C SHAPE (DESIGN) LITERARY, MUSICAL & PATENTED ARTISTIC TRADEMARKCOMPONENT (COPYRIGHT)
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
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
INDIAN TRADEMARK OFFICES 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 GoaTrade 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 ChandigarhTrade 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.
CONTD.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 HaveliTrade 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.
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 Mark2) Well Known Trademark3) Period of registration and renewal4) Grounds for refusal of registration of trademarks : absolute and relative5) Multiple registration under single application6) Remedy for enforcement7) Constitution of IPAB8) Enhanced definition of Mark
WHAT IS A MARK?With the coming of the new Act, the definition of a mark hasbeen enhanced by virtue of Sec.2(1)(m). Accordingly itprovides 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 combinationthereof.”
WELL KNOWN TRADEMARKSAccording to sec.2(1)(zg) “in relation to any goods or services,means a mark which has become so to the substantial segmentof the public which uses such goods or receives such servicesthat the use of such mark in relation to other goods or serviceswould be likely to be taken as indicating a connection in thecourse of trade or rendering of services between those goods orservices and a person using the mark in relation to the first-mentioned goods or services.”
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 DressAvailable at http://www.wipo.int/edocs/mdocs/sct/en/sct_19/sct_19_2.pdf
CONTINUEDThese trademarks are exceptional and unique in nature because unlike theirtraditional counterparts, they are sometimes non-ocular eg: sound, smell, feel andtaste; some are not static like moving image marks and digital marks; and others suchas gestures and holograms, which have revolutionized both the fields of trademarklaw and marketing. Some of these have been more widely accepted in recent times asa result of legislative changes and the broad-mindedness of the judiciary, which havecumulatively led to the expansion of the definition of the term trademark. Thedefinition of the term trademark varies from nation to nation. A few countries likeUnited 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 theirtrademark laws to include these marks and are still restricted only to a static, two-dimensional trademark.
REMEDY FOR TM ENFORCEMENT Simultaneous Civil and Criminal Remedies Passing Off – common law remedy Infringement Injunction Damages Rendition of Accounts
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
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.
DESIGNSDesign as per the Indian Act means the featuresof shape, configuration, pattern, ornament orcomposition of lines or colors applied to anyarticle - whether in two dimensional or threedimensional or in both forms - by anyindustrial process or means, whether manual,mechanical or chemical, separate or combined,which in the finished article appeal to and arejudged solely by the eye.
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.
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
WHY CUSTOMS IN IPR? ANSWER:BEST COUNTERFEITING DETERRENT
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.
STATISTICS ON COUNTERFEIT IN INDIAThe counterfeit market in India is a growing menace and the followingstatistics 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%
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.
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
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
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.
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.
SUSPENSION OF COUNTERFEIT GOODSRule 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).
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”.
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.
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.
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.
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).
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.
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.
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