This document provides an overview of legal cases and remedies related to intellectual property rights enforcement in India. It discusses several key points:
1) Civil litigation is commonly used to seek compensation/profits and injunctions against infringement. Interim injunctions are important to maintain the status quo.
2) Criminal remedies can also be used for trademark or copyright violations, with penalties including imprisonment and fines.
3) Courts have recognized trans-border reputation in trademark cases and applied laws to new areas like domain names and design rights.
4) Remedies include permanent/interim injunctions, damages, account of profits, and Anton Pillar/John Doe orders in extreme cases. Landmarks set standards for proof
Enforcement of Intellectual Property Rights (IPR) in IndiaVijay Dalmia
Enforcement of Intellectual Property Rights in India - See the presentation to understand the nuances of enforcement of IPR ( Trade Mark, Copyright, Patents, Designs etc.) by civil and criminal remedies in India.
IP law Introduction in India By Vijay Pal Dalmia, Advocate, Delhi High Court, Partner and Head IP & IT Laws Division, Vaish Associates Advocates India
Enforcement of Intellectual Property Rights (IPR) in IndiaVijay Dalmia
Enforcement of Intellectual Property Rights in India - See the presentation to understand the nuances of enforcement of IPR ( Trade Mark, Copyright, Patents, Designs etc.) by civil and criminal remedies in India.
IP law Introduction in India By Vijay Pal Dalmia, Advocate, Delhi High Court, Partner and Head IP & IT Laws Division, Vaish Associates Advocates India
Enforcement of Trademarks, Patents and CopyrightsLawPlus Ltd.
Overview of Intellectual Property Infringement
Enforcement of Trademarks, Patents and Copyrights
Courts and Enforcement Authorities
Police Complaint and Criminal Case
Civil Case
Customs Measures under Customs Act B.E. 2560
Takedown Notice Against Copyright Infringment
Takedown Order Against Any IPR Infringement
TIPS for IP Registration in Thailand
TIPS for IP Enforcement in Thailand
Enforcement Of Intellectual Property Rights Through Customs Vpd FinalVijay Dalmia
Enforcement of Intellectual Property Rights through customs in India - by Vijay Pal Dalmia, Advocate Delhi High Court, Parttner & Head IP & IT Laws Division, Vaish Associates
This pamphlet provides an easy to understand explanation of how federal court patent litigation works, from filing of the complaint all the way to appeals, all in plain English and geared toward the non-expert. Please check it out and let me know what you think!
Compulsory licensing is when a government allows someone else to produce a patented product or process without the consent of the patent owner or plans to use the patent-protected invention itself.
Brand Protection is a growing concern among corporate executives, particularly those who operate in the global marketplace. It has become imperative for business practitioners to understand outlined and stipulated set of s rules and procedures that protect their brands. Thus, protecting their intellectual property, creative innovations from being copied. Besides, they are obliged to understand and observe the rights of consumers as they design and provide goods and services to both local and international markets. The course aims to build an in-depth understanding of brand protection from legal and ethical perspectives.
Enforcement of Trademarks, Patents and CopyrightsLawPlus Ltd.
Overview of Intellectual Property Infringement
Enforcement of Trademarks, Patents and Copyrights
Courts and Enforcement Authorities
Police Complaint and Criminal Case
Civil Case
Customs Measures under Customs Act B.E. 2560
Takedown Notice Against Copyright Infringment
Takedown Order Against Any IPR Infringement
TIPS for IP Registration in Thailand
TIPS for IP Enforcement in Thailand
Enforcement Of Intellectual Property Rights Through Customs Vpd FinalVijay Dalmia
Enforcement of Intellectual Property Rights through customs in India - by Vijay Pal Dalmia, Advocate Delhi High Court, Parttner & Head IP & IT Laws Division, Vaish Associates
This pamphlet provides an easy to understand explanation of how federal court patent litigation works, from filing of the complaint all the way to appeals, all in plain English and geared toward the non-expert. Please check it out and let me know what you think!
Compulsory licensing is when a government allows someone else to produce a patented product or process without the consent of the patent owner or plans to use the patent-protected invention itself.
Brand Protection is a growing concern among corporate executives, particularly those who operate in the global marketplace. It has become imperative for business practitioners to understand outlined and stipulated set of s rules and procedures that protect their brands. Thus, protecting their intellectual property, creative innovations from being copied. Besides, they are obliged to understand and observe the rights of consumers as they design and provide goods and services to both local and international markets. The course aims to build an in-depth understanding of brand protection from legal and ethical perspectives.
This pamphlet provides an easy to understand explanation of how federal court patent litigation works, from filing of the complaint all the way to appeals, all in plain English and geared toward the non-expert. Please check it out and let me know what you think!
Inter Partes Review (IPR) - A Brief UnderstandingsManoj Prajapati
An Inter Partes Review (IPR) is, Mini trial on Patent Validity before a panel of Patent Experts, Patent trial and Appeal Board, for challenging the validity of a United States patent on a ground that could be raised under 35 U.S.C. §§ 102 or 103, and on the basis of prior art consisting of patents or printed publications before the United States Patent and Trademark Office (USPTO). Became effective on 16 September 2012 and emerging as a revolutionary tool in the field of Innovation.
Climate Impact of Software Testing at Nordic Testing DaysKari Kakkonen
My slides at Nordic Testing Days 6.6.2024
Climate impact / sustainability of software testing discussed on the talk. ICT and testing must carry their part of global responsibility to help with the climat warming. We can minimize the carbon footprint but we can also have a carbon handprint, a positive impact on the climate. Quality characteristics can be added with sustainability, and then measured continuously. Test environments can be used less, and in smaller scale and on demand. Test techniques can be used in optimizing or minimizing number of tests. Test automation can be used to speed up testing.
UiPath Test Automation using UiPath Test Suite series, part 5DianaGray10
Welcome to UiPath Test Automation using UiPath Test Suite series part 5. In this session, we will cover CI/CD with devops.
Topics covered:
CI/CD with in UiPath
End-to-end overview of CI/CD pipeline with Azure devops
Speaker:
Lyndsey Byblow, Test Suite Sales Engineer @ UiPath, Inc.
How to Get CNIC Information System with Paksim Ga.pptxdanishmna97
Pakdata Cf is a groundbreaking system designed to streamline and facilitate access to CNIC information. This innovative platform leverages advanced technology to provide users with efficient and secure access to their CNIC details.
In the rapidly evolving landscape of technologies, XML continues to play a vital role in structuring, storing, and transporting data across diverse systems. The recent advancements in artificial intelligence (AI) present new methodologies for enhancing XML development workflows, introducing efficiency, automation, and intelligent capabilities. This presentation will outline the scope and perspective of utilizing AI in XML development. The potential benefits and the possible pitfalls will be highlighted, providing a balanced view of the subject.
We will explore the capabilities of AI in understanding XML markup languages and autonomously creating structured XML content. Additionally, we will examine the capacity of AI to enrich plain text with appropriate XML markup. Practical examples and methodological guidelines will be provided to elucidate how AI can be effectively prompted to interpret and generate accurate XML markup.
Further emphasis will be placed on the role of AI in developing XSLT, or schemas such as XSD and Schematron. We will address the techniques and strategies adopted to create prompts for generating code, explaining code, or refactoring the code, and the results achieved.
The discussion will extend to how AI can be used to transform XML content. In particular, the focus will be on the use of AI XPath extension functions in XSLT, Schematron, Schematron Quick Fixes, or for XML content refactoring.
The presentation aims to deliver a comprehensive overview of AI usage in XML development, providing attendees with the necessary knowledge to make informed decisions. Whether you’re at the early stages of adopting AI or considering integrating it in advanced XML development, this presentation will cover all levels of expertise.
By highlighting the potential advantages and challenges of integrating AI with XML development tools and languages, the presentation seeks to inspire thoughtful conversation around the future of XML development. We’ll not only delve into the technical aspects of AI-powered XML development but also discuss practical implications and possible future directions.
In his public lecture, Christian Timmerer provides insights into the fascinating history of video streaming, starting from its humble beginnings before YouTube to the groundbreaking technologies that now dominate platforms like Netflix and ORF ON. Timmerer also presents provocative contributions of his own that have significantly influenced the industry. He concludes by looking at future challenges and invites the audience to join in a discussion.
GridMate - End to end testing is a critical piece to ensure quality and avoid...ThomasParaiso2
End to end testing is a critical piece to ensure quality and avoid regressions. In this session, we share our journey building an E2E testing pipeline for GridMate components (LWC and Aura) using Cypress, JSForce, FakerJS…
Essentials of Automations: The Art of Triggers and Actions in FMESafe Software
In this second installment of our Essentials of Automations webinar series, we’ll explore the landscape of triggers and actions, guiding you through the nuances of authoring and adapting workspaces for seamless automations. Gain an understanding of the full spectrum of triggers and actions available in FME, empowering you to enhance your workspaces for efficient automation.
We’ll kick things off by showcasing the most commonly used event-based triggers, introducing you to various automation workflows like manual triggers, schedules, directory watchers, and more. Plus, see how these elements play out in real scenarios.
Whether you’re tweaking your current setup or building from the ground up, this session will arm you with the tools and insights needed to transform your FME usage into a powerhouse of productivity. Join us to discover effective strategies that simplify complex processes, enhancing your productivity and transforming your data management practices with FME. Let’s turn complexity into clarity and make your workspaces work wonders!
Securing your Kubernetes cluster_ a step-by-step guide to success !KatiaHIMEUR1
Today, after several years of existence, an extremely active community and an ultra-dynamic ecosystem, Kubernetes has established itself as the de facto standard in container orchestration. Thanks to a wide range of managed services, it has never been so easy to set up a ready-to-use Kubernetes cluster.
However, this ease of use means that the subject of security in Kubernetes is often left for later, or even neglected. This exposes companies to significant risks.
In this talk, I'll show you step-by-step how to secure your Kubernetes cluster for greater peace of mind and reliability.
Unlocking Productivity: Leveraging the Potential of Copilot in Microsoft 365, a presentation by Christoforos Vlachos, Senior Solutions Manager – Modern Workplace, Uni Systems
Alt. GDG Cloud Southlake #33: Boule & Rebala: Effective AppSec in SDLC using ...James Anderson
Effective Application Security in Software Delivery lifecycle using Deployment Firewall and DBOM
The modern software delivery process (or the CI/CD process) includes many tools, distributed teams, open-source code, and cloud platforms. Constant focus on speed to release software to market, along with the traditional slow and manual security checks has caused gaps in continuous security as an important piece in the software supply chain. Today organizations feel more susceptible to external and internal cyber threats due to the vast attack surface in their applications supply chain and the lack of end-to-end governance and risk management.
The software team must secure its software delivery process to avoid vulnerability and security breaches. This needs to be achieved with existing tool chains and without extensive rework of the delivery processes. This talk will present strategies and techniques for providing visibility into the true risk of the existing vulnerabilities, preventing the introduction of security issues in the software, resolving vulnerabilities in production environments quickly, and capturing the deployment bill of materials (DBOM).
Speakers:
Bob Boule
Robert Boule is a technology enthusiast with PASSION for technology and making things work along with a knack for helping others understand how things work. He comes with around 20 years of solution engineering experience in application security, software continuous delivery, and SaaS platforms. He is known for his dynamic presentations in CI/CD and application security integrated in software delivery lifecycle.
Gopinath Rebala
Gopinath Rebala is the CTO of OpsMx, where he has overall responsibility for the machine learning and data processing architectures for Secure Software Delivery. Gopi also has a strong connection with our customers, leading design and architecture for strategic implementations. Gopi is a frequent speaker and well-known leader in continuous delivery and integrating security into software delivery.
Enchancing adoption of Open Source Libraries. A case study on Albumentations.AIVladimir Iglovikov, Ph.D.
Presented by Vladimir Iglovikov:
- https://www.linkedin.com/in/iglovikov/
- https://x.com/viglovikov
- https://www.instagram.com/ternaus/
This presentation delves into the journey of Albumentations.ai, a highly successful open-source library for data augmentation.
Created out of a necessity for superior performance in Kaggle competitions, Albumentations has grown to become a widely used tool among data scientists and machine learning practitioners.
This case study covers various aspects, including:
People: The contributors and community that have supported Albumentations.
Metrics: The success indicators such as downloads, daily active users, GitHub stars, and financial contributions.
Challenges: The hurdles in monetizing open-source projects and measuring user engagement.
Development Practices: Best practices for creating, maintaining, and scaling open-source libraries, including code hygiene, CI/CD, and fast iteration.
Community Building: Strategies for making adoption easy, iterating quickly, and fostering a vibrant, engaged community.
Marketing: Both online and offline marketing tactics, focusing on real, impactful interactions and collaborations.
Mental Health: Maintaining balance and not feeling pressured by user demands.
Key insights include the importance of automation, making the adoption process seamless, and leveraging offline interactions for marketing. The presentation also emphasizes the need for continuous small improvements and building a friendly, inclusive community that contributes to the project's growth.
Vladimir Iglovikov brings his extensive experience as a Kaggle Grandmaster, ex-Staff ML Engineer at Lyft, sharing valuable lessons and practical advice for anyone looking to enhance the adoption of their open-source projects.
Explore more about Albumentations and join the community at:
GitHub: https://github.com/albumentations-team/albumentations
Website: https://albumentations.ai/
LinkedIn: https://www.linkedin.com/company/100504475
Twitter: https://x.com/albumentations
GraphSummit Singapore | The Art of the Possible with Graph - Q2 2024Neo4j
Neha Bajwa, Vice President of Product Marketing, Neo4j
Join us as we explore breakthrough innovations enabled by interconnected data and AI. Discover firsthand how organizations use relationships in data to uncover contextual insights and solve our most pressing challenges – from optimizing supply chains, detecting fraud, and improving customer experiences to accelerating drug discoveries.
Threats to mobile devices are more prevalent and increasing in scope and complexity. Users of mobile devices desire to take full advantage of the features
available on those devices, but many of the features provide convenience and capability but sacrifice security. This best practices guide outlines steps the users can take to better protect personal devices and information.
DevOps and Testing slides at DASA ConnectKari Kakkonen
My and Rik Marselis slides at 30.5.2024 DASA Connect conference. We discuss about what is testing, then what is agile testing and finally what is Testing in DevOps. Finally we had lovely workshop with the participants trying to find out different ways to think about quality and testing in different parts of the DevOps infinity loop.
Removing Uninteresting Bytes in Software FuzzingAftab Hussain
Imagine a world where software fuzzing, the process of mutating bytes in test seeds to uncover hidden and erroneous program behaviors, becomes faster and more effective. A lot depends on the initial seeds, which can significantly dictate the trajectory of a fuzzing campaign, particularly in terms of how long it takes to uncover interesting behaviour in your code. We introduce DIAR, a technique designed to speedup fuzzing campaigns by pinpointing and eliminating those uninteresting bytes in the seeds. Picture this: instead of wasting valuable resources on meaningless mutations in large, bloated seeds, DIAR removes the unnecessary bytes, streamlining the entire process.
In this work, we equipped AFL, a popular fuzzer, with DIAR and examined two critical Linux libraries -- Libxml's xmllint, a tool for parsing xml documents, and Binutil's readelf, an essential debugging and security analysis command-line tool used to display detailed information about ELF (Executable and Linkable Format). Our preliminary results show that AFL+DIAR does not only discover new paths more quickly but also achieves higher coverage overall. This work thus showcases how starting with lean and optimized seeds can lead to faster, more comprehensive fuzzing campaigns -- and DIAR helps you find such seeds.
- These are slides of the talk given at IEEE International Conference on Software Testing Verification and Validation Workshop, ICSTW 2022.
zkStudyClub - Reef: Fast Succinct Non-Interactive Zero-Knowledge Regex ProofsAlex Pruden
This paper presents Reef, a system for generating publicly verifiable succinct non-interactive zero-knowledge proofs that a committed document matches or does not match a regular expression. We describe applications such as proving the strength of passwords, the provenance of email despite redactions, the validity of oblivious DNS queries, and the existence of mutations in DNA. Reef supports the Perl Compatible Regular Expression syntax, including wildcards, alternation, ranges, capture groups, Kleene star, negations, and lookarounds. Reef introduces a new type of automata, Skipping Alternating Finite Automata (SAFA), that skips irrelevant parts of a document when producing proofs without undermining soundness, and instantiates SAFA with a lookup argument. Our experimental evaluation confirms that Reef can generate proofs for documents with 32M characters; the proofs are small and cheap to verify (under a second).
Paper: https://eprint.iacr.org/2023/1886
3. Civil Litigation- Objective
To provide compensation to the
right holder
To prohibit future infringement
Appropriate disposal of infringing
material and all tools/ plates / dyes
used for manufacturing the same.
4. Civil Action: Reliefs
Injunctions against violations
Raids & Seizures
Damages OR Accounts of Profits
Delivery up/ Discovery of infringing material /
documents
Preservation of assets
Copyright owner- Infringing material is deemed
to be his property.
5. Interim / Interlocutory Injunction
Often the real remedy
Objective: To maintain status quo
Time is of essence
Factors considered in granting :
Prima facie case
Balance of convenience
Irreparable injury if injunction not granted
Gujarat Bottling Company v. Coca Cola 21 IPLR 201
7. Wander Ltd. & anr. vs. Antox India P.
Ltd.(1990 (2) ARBLR 399 SC, 1990 Supp (1) SCC
727)
Supreme Court on interlocutory injunctions:
“Usually, the prayer for grant of an interlocutory
injunction is at a stage when the existence of a
legal right asserted by the plaintiff & its alleged
violation are both contested… The object is to
protect the Plaintiff against injury by violation
of his rights for which he could NOT
adequately be compensated in damages
recoverable in the action if the uncertainty were
resolved in his favour at the trial.
8. Wander Ltd. & anr. vs. Antox India P.
Ltd. 1990 (2) ARBLR 399 SC, 1990 Supp (1) SCC
727
Supreme Court on Balance of Convenience:
“The need for such protection must be weighed
against the corresponding need for the
defendant to be protected against injury
resulting from his having been prevented from
exercising his own legal rights for which he
could not be adequately be compensated. The
Court must weigh one need against another
and determine where the balance of
convenience lies.”
9. Midas Hygiene Industries P. Ltd. V. Sudhir
Bhatia & Anr.(2004 (73) DRJ 647, 2004 (28) PTC
121 SC)
Supreme Court…
“…in cases of infringement either of trademark
or of copyright normally an injunction must
follow. Mere delay in bringing the action is not
sufficient to defeat grant of injunction in such
cases…the grant of injunction also becomes
necessary if if it prima facie appears that the
adoption of the mark itself was dishonest”.
10. Lakshmikant V. Patel vs. Chetanbhat
Shah(December, 2001)
Supreme Court:
“In an action for passing off it is usual, rather
essential to seek an injunction, temporary or
ad-interim”
“proof of actual damage is not essential…
likelihood of damage is sufficient”
“an absolute injunction can be issued
restraining the defendant from using or
carrying on business under the Plaintiff’s
distinctive trademark”.
11. Enforcement of IPRs -
Trademarks
Indian Courts have applied and expanded
principles of trans-border reputation even if:
The Plaintiff has no presence in India
The goods of the defendant are entirely dissimilar
(dilution principle recognized)
Provided knowledge of the mark acquired through various
sources of trans-border reputation
12. Enforcement- Domain names
M/s Satyam Infoway Ltd. V. Sifynet Solutions Pvt.
Ltd. (2004) 6 SCC 145
SC has held that domain names are subject to the
legal norms applicable to other intellectual
properties, such as trademarks.
Yahoo Inc. v. Akash Arora 1999 PTC 201
SC applied general trademark law to the internet.
13. Ex Parte Order
When the matter is extremely urgent
At a preliminary hearing of the interim
application without notice to the answering
defendant.
Granted before the motion for interim
injunction is fully heard but for a limited period
only.
After grant of ex parte injunction, the Court
must proceed with disposal of the interim
injunction application after the defendant has
14. Ex Parte Orders
Injunction;
Discovery of documents;
Preserving of infringing goods, document of other
evidence related to the subject matter of the suit;
Restraining the defendant from disposing off his
assets in a manner which may adversely affects
rights of the IP owner to claim damages, costs or
other pecuniary remedies.
15. Anton Pillar Order
Anton Pillar v. Manufacturing Process (1976) RPC
719
Similar to ex parte interlocutory order
After a hearing, Court authorizes plaintiff to
inspect premises of defendant and take inventory
of the offending material
16. Anton Pillar Orders
Sensitive in nature
Pre conditions for grant:
Extremely strong prima facie case
Damage (potential or actual) very serious
Clear evidence that defendants have in their
possession, incriminating document/ material
which they may destroy.
17. John Doe Order
Court appointed commissioners to enter the
premises of any suspected party and collect
evidence of infringement.
Suspected party may not be named in the suit.
Indian Courts have conferred expanded powers to
commissioners- Roving commissioners
Ardath Tobacco Co. Ltd. vs. Mr. Munna Bhai & Ors.
18. Mareva Injunction
Freezing order
Prevents the infringer / offender from removing /
disposing of assets in which the gains from
infringement have been invested.
Aim- unjust enrichment of the defendant and to
ensure payment of damages to Plaintiff
19. Final injunction
To ascertain rights of the parties
Remedies for Breach of injunction
Police assistance
Assistance of administrative bodies
Contempt proceedings
20. Damages / Account of Profits
These are mutually exclusive alternative
remedies
Account of profits- An equitable relief
Plaintiff adopts defendant’s acts as his own.
Damages- for the losses suffered by the Plaintiff
on account of the defendant’s acts
21. Damages- recent trends
Time Inc. vs. Lokesh Srivastava
Punitive damages awarded for the first time – Rs 5
lakhs
Distinction between compensatory damages and
punitive damages was made out.
22. Time Incorporated vs. Lokesh
Srivastava
Delhi High Court:
“The award of compensatory damages to a
plaintiff is aimed at compensating him for the
loss suffered by him whereas, punitive
damages are founded on the philosophy of
corrective justice and as such, in appropriate
cases these must be awarded to give a signal
to the wrong-doers that law does not take a
breach merely as a matter between rival
parties but feels concerned about those also
who are not party to this but suffer on account
23. Damages- recent trends
Microsoft Corporation vs. Yogesh Papat & anr.
2005 (1) CTMR 424
Highest costs and Damages ever awarded for IP
infringement by Indian Courts
Approximately Rs 20 lakhs
24. Criminal Remedies- TM
Falsification of Trademarks / Infringement of
copyright is a criminal offence
A complaint may be filed before a Magistrate; OR
Police can register an FIR and prosecute
directly; (statutory requirement to obtain the
Registrar’s approval.
Registration is not a requirement.
25. Criminal Remedies- TM/ CR
Cognizable offence
Imprisonment- 6 months to 3 years
Fine- Rs 50,000 to 2 lakhs
Enhanced penalty on subsequent convictions.
Seizure, forfeiture and destruction of infringing
goods/ material for placing before the
Magistrate.
26. Civil vs. Criminal
Less hassle for the plaintiff
Jurisdictional advantage
Interlocutory Injunctions
Damages
Possibility of settlement
However…
No deterrence
No fear factor- no arrest
Expensive & lengthy
27. Administrative Remedies
Indian Customs Act, 1962
Deals with import/ export of goods including
protection of patents, trademarks and
copyrights.
Confiscation of infringing material by Excise
Authorities
Restrictions against parallel importation of
goods
29. Enforcement of IPRs – TM Case
Studies.
M/S HITACHI VS AJAY KR. AGGARWAl 1996
PTC(16) (DB)
HITACHI=HITAISHI.
AMRUTANJAN LTD. VS AMARCHAND
SOBACHAND PTC(Suppl.) (1) 230(Mad)-
AMRUTANJAN PAIN BALM= AMAR’S PAIN
BALM.
RUSTON & HORNBY LTD. VS ZAMINDARA
ENGINEERING CO. AIR 1970 SC 1649
RUSTON= RUSTAM INDIA.
30. CONTD.
K.R. CHINNA KRISHNA CHETTIAR VS SRI
AMBAL & CO. AIR 1970 SC 146- SRI ANDAL =
SRI AMBAL.
M/S PIDILITE IND. PVT.LTD. VS MITTEES
CORP. AIR 1989 DELHI 157- FEVICOL=
TREVICOL.
COLGATE PALMOLIVE CO. VS SUNDEEP
ENTERPRISES 1995-PTC-10.
HARRISON= HARICON.
LAKME LTD. VS SUBHASH TRADING 1996
PTC(16) 567
LAKME= LIKEME.
31. IMITATION DOES NOT MEAN
DUPLICATION-DESIGN
JUDGEMENT
The landmark CASTROL VS TIDEWATER found the
Indian courts uphold a major design justiciablity that
mere duplication does not really amount to
duplication.
HIGH COURT OF CALCUTTA Suit No. 415 of 1993
Ordinary Original Civil Jurisdiction Castrol India
Ltd...............Petitioner Versus Tide Water Oil Co. (I)
Ltd................Respondents Ruma Pal, J. Decided on :
August 26, 1994 •
The sequence of the obligation of the court in
considering an application for infringement of a design
is first to consider whether protection is claimed in
respect of a design or of the mode of manufacture.
The first is protected by the Design Act 1911 and the
second by the law of patents.
32. INFRINGEMENT BY SUBSEQUENT
PATENT??
In the famous landmark case of HINDUSTAN
UNILEVER LTD VS LALIT WADHWA 200735
PTC DEL, its was held by the court that the
RIGHT OF PATENTEE IS ONLY AN
EXCLUSIONARY RIGHT.
The court also held under the ambit of sec.64 of
Patents Act, that whenever a subsequent
patentee brings a suit for infringement then every
ground on which it may be revokes under sec
64, all of them shall be availaible as grounds for
defence. This means that when a subsequent
patentee brings a suit for infringement against an
earlierpatent holder, then the earlier patent holder
can claim priority date as a valid defence.
33. COPYRIGHT- IDEA VS.
EXPRESSION DICHOTOMY
R.G. ANAND V. DELUX FILMS (1978)
There can be no copyright in an idea, subject
matter, themes, plots, or historical or legendary facts
and violation of copyright in such cases is confined to
form, manner, and arrangement and expression of
idea by the author of copyrighted work.
One of the safest and surest test to determine
whether or not there has been a violation of copyright
is to see if the reader, spectator or the viewer after
having read or seen both works is clearly of the
unmistakable opinion and gets the impression that
subsequent work appears to be a copy of original.
As a violation of copyright amounts to an act of piracy
it must be proved by clear and cogent evidence after
applying the tests of equity.
34. CONTD.
MR. ANIL GUPTA AND ANR. V. MR. KUNAL DASGUPTA AND ORS [97(2002) DLT 257]
Court held that the concept developed and evolved by the plaintiff was a the result of the work
done by the plaintiff upon the material which may be available in the public domain.
However, what made the concept confidential was the fact that the plaintiff had used his brain
and thus produced a unique result applying the concept. The Court granted an injunction.
KING FEATURES SYNDICATE INC VS SUNIL AGNIHOTRI & ORS ( 1997 PTC (17)
In this case there was a dispute on use of BETAAL & PHANTOM wherein the court refused
the injunction on the grounds that there is no copyright in an idea/title- defendant inspired only
by idea but expression is original.
RAJA POCKET BOOKS VS RADHA POCKET BOOKS( 1997 PTC (17)
NAGRAJ –NAGESH – DISPUTE ON SIMILARITY OF COMIC CHARACTERS.
HINDUSTAN PENCIL PVT LTD VS UNIVERSAL TRADING COMPANY(1999PTC(19)
This case law establishes the test of copyright infringement wherein it has been established that in
case there are very minor differences between two works and the get-up and colour
combination are copied per se then it shall amount to copyright infringement.
35. REGISTRATION NOT MANDATORY
FOR PROTECTION OF
COPYRIGHT
GLAXO OPERATIONS UK LTD. VS-
SAMRAT PHARMACEUTICALS,. AIR
1984 Delhi 265!
THIS IS A LANDMARK JUDGEMENT
WHEREIN IT HAS BEEN ESTABLISHED
BY WAY OF ADJUDICATION THAT
REGISTRATION OF COPYRIGHT IS NOT
MANDATORY FOR SEEEKING REMEDY
FOR INFRINGEMENT OF COPYRIGHT.
REMEDY PERTINENT TO COPYRIGHT
IS AVAILAIBLE EVEN WOTHOUT
REGISTRATION AMBITS.
36. NEED FOR CUSTOMS LAWS IN
THE FIRST PLACE
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
36 importation and exportation of
goods, penalties, offences, etc.
37. CUSTOMS PROVISIONS TO
CONTROL COUNTERFEIT MENACE
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.
37
38. EFFICACY OF 2007 RULES IN GOOD
LEGAL MEASURE
Cases of suspension of goods by Indian Customs
The Customs department, in July 2008, ordered absolute
confiscation of counterfeit goods in the matter concerning the
importer M/s. Womens World Jewels Pvt. Ltd., and M/s. Impac
Enterprises who imported consignment containing cosmetics,
gift items etc., bearing registered trademarks „Nivea‟, „Dove‟,
„Sunsilk‟ and „L‟Oreal‟. Commissioner of Customs noting that
the act of importing into India and/or market these goods in
India without having any authorization from the manufacturers,
amounted to infringement of rights of right holders and thus
prohibited the importer from importing the goods.
38
39. Contd.
Another order was passed in 2008 against M/s P.S.
Grover and Sons for importing cosmetic and toiletries
products of registered trademark „L‟Oreal‟ and
„Garnier‟ for importing without first having obtained
authorization from registered trademark owners M/s
L‟Oreal and M/s Laboratoire Garnier & CIE. The
Customs Department not only ordered confiscation of
imported goods but also imposed huge penalty of Rs
25,000/- on importer and also Rs 5,000/- on partner of
importer.
39
40. ISSUES RAISED BY
IMPLEMENTATION OF RULES
The Ram Kumar Patent Saga
This litigation involves a patent granted to Mr. Soma Sundaram Ram Kumar on
a “Mobile telephone with a plurality of SIM cards allocated to different
communication networks”. Mr. Ram Kumar sought to enforce the patent rights
against a number of multinational and national importers including Hansum
India, Samsung and Micromax.
Mr. Ram Kumar filed an application in the Chennai Patent office on March
4, 2002 containing 4 claims and 12 drawings and was allotted Patent
Application No. 161/MAS/2002 which was granted in 2008. Mr. Ram
Kumar, then filed an application under Rule 3 of the Intellectual Property
Rights Intellectual Property Rights (Imported Goods) Enforcement
Rules, 2007. Mr. Ram Kumar filed an application on December 8, 2008 with
the Officer of Commissioner of Customs under the Customs Notification No.
47/2000 read with Circular No. 41/2007 Customs Circular dated 29.10.2007
called the Instructions for Implementation of Intellectual Property (Imported
Goods) Enforcement Rules, 2007.
40
41. CONTD.
The first course of litigation before the Indian Courts was with respect
to the constitutionality of the Rules. In this petition, Samsung raised the
issue of lack of expertise of the Customs authorities. However, the
petition had to be subsequently withdrawn for the lack of territorial
jurisdiction.
The second course of litigation was before the Madras High
Court, wherein Mr. Ram Kumar sought a restraining order against
manufacturers such as Samsung, Micro Electronics and Spice
Mobile, restraining them from manufacturing and selling multiple SIM
holding mobile phones.
The third course of litigation was before the customs authorities and
highlights the concerns on behalf of the importers. The claims related to
dual SIM which allowed simultaneous communication multiple
headsets
41
42. CONTD.
The Chennai customs authority upheld the contentions of Hansum India Ltd.
Holding that the claim 1 of Mr. Ram Kumar patent had limited scope. The
claims, therefore, were held not to be infringed by the cell phones
manufactured by Hansum since these cell phones used a single
headphone/earphone jack. Similarly, the New Delhi customs authority, in an
order dated 8th June, 2009, by J.P. Kundu, the Assistant Commissioner of
Customs, found that claim made by Mr. Ram Kumar was vexatious and the
impugned goods were covered by the prior art declared by him.
Against the orders of customs authorities, Mr. Ram Kumar filed writ petition in
the Madras High Court, dismissing the petition, held that the proper forum for
the redressal was the Customs Appellate Tribunal, an authority envisaged as the
appellate authority under the Customs Act, 1962. Therefore, at present, the
orders of the Customs administration allowing the clearance of the goods from
the Mumbai, Chennai and Delhi ports stand affirmed and, the stand of the
importers has been upheld.
42
43. FAMOUS CISCO ADJUDICATION
The case involving parallel imports and trademarks in
India, Cisco Technology Vs Shrikant (2005 PTC 538
DEL.) the plaintiff‟s employed sec. 29(6) (c) of custom
act read with sec 140 defense and were successful in
getting an exparte order directing the customs
authorities to notify all ports to bar imports of
defendant goods and also appointing a local
commissioner to seize all goods bearing the mark in
issue and inventory the same.
43
44. PARALLEL IMPORTS- A TRADE
MENACE
A parallel import is a non
counterfeit product imported from another country
without the permission of the intellectual
property owner. Parallel imports are often referred
to as grey product, and are implicated in issues
of international trade, and intellectual property.
Parallel importation infringes the right of the right
holder who has the exclusive right to trade in
such goods under the trade mark in a particular
area.
44
45. OLD SAMSUNG CASE(2006)
In the Judgement of the Delhi High Court in Samsung
Electronics Company Ltd. & Anr. vs G.Choudhary & Anr((
MANU/DE/3161/2006) defendants, who were the parallel
importers were held liable for infringement of Trademark.
The registered owner of the Trademark “Samsung” filed a
suit against the defendants for importing from China and
selling in cartridges and toners branded “Samsung”
manufactured by the plaintiff itself in China. The plaintiff
argued that although the products are genuine, they were
not meant for Indian markets. The reasons by the plaintiff
included that the descriptions that accompanied the
products were in Chinese, there was no warranty offered
and that the use of these products were likely to constitute a
breach of warranty of other legally purchased machinery.
45
46. THE NEW SAMSUNG
CASE(2012)
In FEB 2012, the Delhi High Court, in the famous
SAMSUNG ELECTRONICS VS KAPIL WADHWA
AND ORS CASE, ruled that selling genuine imported
products in India without the rights holder‟s consent
constitutes infringement. If the Division Bench of the
Court upholds that decision – in favour of Samsung –
brand owners should find it easier to stop grey goods
reaching the Indian market. IP owners and lawyers
have welcomed this ingenuous ruling.
The 1st plaintiff in the case, was Samsung
Electronics Company Limited, Korea and the 2nd
plaintiff was its Indian subsidiary and exclusive
licensee in India. The 1st plaintiff produced records to
show 7 registrations for the mark “SAMSUNG” across
46 classes 7, 9 and 11.
47. CASE HIGHLIGHTS & KEY LAW
FACTS
The questions primarily arising were:
1. Does sale of imported, genuine products
without consent of the right holder in
India, constitute infringement under section 29(1)
read with 29(6)?
2. Does section 30(3) recognise national
exhaustion or international exhaustion?
3. Does meta tagging and deep hyperlinking of a
registered trademark constitute infringement?
47
48. Law facts
In answering the first question, the Court held that
any importer who is not a registered proprietor or
permissive right holder, even if importing genuine
products, is culpable of infringement. There is
also an interesting observation that had the
legislative intent been to facilitate free movement
of goods, section 29(6) would have not existed at
all. These fetters on the right of importation of
genuine goods, is justified on the basis of section
29(1), which does not provide any distinction
between genuine and non-genuine goods. In the
absence of any legislative provision or exception
for genuine imported goods, such importation is
48
deemed to be an act of infringement.
49. Exhaustion theory
In answering the second question, the Court held that section 30(3)
recognizes only national exhaustion in India. The section is interpreted
to mean that once goods are acquired by a person from the registered
proprietor within the same market, the registered proprietor cannot turn
around and state that there in an infringement of his trademark on the
count that there is change of ownership by way of an assignment
between the registered proprietor and some other person and seek
prohibition on the dealings of the goods. This cannot subsume in favour
of a person acquiring goods from a foreign market. The implication and
effect of section 30(3) is stated to be limited to acquisitions within the
domestic market. Section 30(3) permits an exception only on those
goods which bear registered trademarks, and are acquired lawfully, and
the word “lawfully” is to include the trademark law in force. The only
“market” for the purpose of section 30(3) is deemed to be the Indian
market. The Court unequivocally held that section 30(3) does not
recognize any concept of international exhaustion, and the section
operates only within the market where the registration of the mark
extends. There is also considerable discussion on the UK, EU and
American concepts of exhaustion. The Xerox case is distinguished on
the basis that it dealt with second hand imported goods and is on a
different set of facts and circumstances.
49
50. HYPERLINKING AND META-
TAGGING
On the issue of meta tagging and deep hyper
linking of registered trademarks, the Court held
that the promotion on the basis of the same in
order to take advantage of the plaintiff‟s
registered trademark cannot in any manner be
categorized as fair use, and would tantamount to
an act of infringement.
50
51. WARNER CASE
In another landmark case, the Delhi High
Court, in the Time
Warner Inc. vs Lokesh Srivastava & Another(2005
(30) PTC 3 (Del.).), awarded punitive and
exemplary damages, in addition to compensatory
damages for flagrant infringement of trademarks
and copyrights. This stringent action was taken by
the court to highlight the fact that the breach of
IPRs was a wrong done not only to the plaintiff
but also to the society at large and the consumers
who suffer on account of that deception.
52. DELL CASE- CONJURING
CONTROVERSY
Recently, it has been reported that the
Commissioner of Customs has not only allowed
the parallel imports of Dell computers into the
country but also ordered Dell to pay demurrage &
warehousing charges to the importers whose
goods had been seized for over two months due
to a complaint made by Dell.
The DELL order has whipped up controversy
wherein the Customs Commissioner has allowed
the parallel import of Dell computers into India on
the grounds that the Trade Mark Act, 1999 did not
forbid such imports.
53. DELL CASE FACTS
The basic facts of the case are simple. Three
Indian importers, by the names of Venktron
Digital Systems Pvt. Ltd., M/s Sapphire Micro
System & Momentum Technologies Inc. Pvt. Ltd.
were in the process of importing approximately
450-500 Dell laptop computers into India. During
the process of clearing the consignment at
Customs, an alert was registered under the IPR
Import Rules for possible trademark
infringement, due to a prior registration, under the
IPR Import Rules, 2007 for the mark „Dell‟, by Dell
India Pvt. Ltd.
54. CONTD.
After the clearance of the consignment was suspended
under the IPR (Imported Goods) Enforcement
Rules, 2007, a representative of Dell India was allowed to
inspect the consignment to confirm possible infringement
after which a formal hearing was held where both, the
importers and Dell India were afforded an opportunity to be
heard.
During the course of the hearing before the Customs
Commissioner, the Delhi High Court pronounced its order
in the Samsung case prohibiting parallel imports under the
Trade Marks Act, 1999. Apart from the Samsung order, the
„rights holder‟, Dell, also brought to the attention of the
Court several other judgements from Indian and foreign
courts on the subject of parallel imports being barred under
Indian law. The Defendants for their part discussed several
case law- including the new Samsung case, supporting
their defence that Section 30(3) of the Trade Marks
Act, 1999 allowed for parallel imports.
55. ISSUE OF CONCERN
The major issue however with the Delhi High
Court‟s Samsung order was that it had been
appealed and the Division Bench hearing the
appeal had passed a series of orders during the
course of the appeal, which by the way is still
pending final arguments. While the importers tried
to argue that the Samsung order had been stayed
by the Division Bench, the „rights-holder‟ tried to
argue that the Division Bench had not yet stayed
the operative part of the Samsung order.
57. INTERNATIONAL FOCUS ON
CUSTOM IMPORT RULES
Various countries in the world have of late been
focusing on formulation and implementation of
stringent rules in order to control counterfeit
trade.
International organisations like the World
Intellectual
Property Organisation (WIPO), the WCO and the
International Criminal Police Organisation
(INTERPOL),
along with the business community, are toiling hard
multilaterally to determine new strategies to fight
against
58. Principle Socio-economic Effects of
Counterfeiting
INNOVATION & GROWTH Reduction in incentives to
innovative
- Possible negative effects
on medium
and long term growth rates
CRIMINAL ACTIVITY Increase in flow of financial
resources
to criminal networks, thereby
increasing their influence in
economies
ENVIRONMENT Sub-standard infringing
products can
have negative environmental
effects
EMPLOYMENT Shift of employment from
rights
holders to infringing firms.
Child labour
59. CHINA MILK CONTROVERSY-
HEALTH HAZARD OF
COUNTERFEITANCE
The 2008 Chinese milk scandal was a food
safety incident in the People's Republic of
China, involving milk and infant formula, and
other food materials and components, adulterated
with melamine.
By November 2008, China reported an estimated
300,000 victims, with six infants dying from kidney
stones and other kidney damage, and a further
860 babies hospitalised.The chemical appeared
to have been added to milk to cause it to appear
to have a higher protein content. This is clearly an
incident of poor quality additives to ,milk causing
huge health damages.
60. IMPACT OF
COUNTERFEITANCE
The major effects of counterfeiting and piracy on
governments are foregone tax revenues in the form of
Sales Tax, Excise Tax, Income Tax and Customs Duty
and so on.
Tax revenue losses are particularly high in certain
sectors like tobacco and alcoholic beverages where
excise taxes are high. The ASSOCHAM found that
counterfeiting and piracy has robbed the Indian
government of US$31.25bn in lost tax revenue.
Also, supplementary expenses are linked with fighting
counterfeiting wherein huge amount of costs are
spent with customs and related law enforcement
agencies and related judicial proceedings.
Besides, significant costs are incurred while handling
seized goods.
61. WTO ON COUNTERFEITING
The World Trade Organisation (WTO) Trade Related
Aspects of Intellectual Property Rights (TRIPs)
Agreement incorporates provisions intended to
address the problem of counterfeit goods in
international trade. The preamble of the TRIPs
Agreement indicates that members recognise the
need for a multilateral framework of principles, rules
and disciplines dealing with international trade in
counterfeit goods.
In fact, Article 51, footnote 14 of TRIPs, defines the
term counterfeit trademark goods as any
goods, including packaging, bearing without
authorisation a trademark which is identical to the
trademark validly registered in respect of such goods
or which cannot be distinguished in its essential
aspects from such a trademark and which thereby
infringes the rights of the owner of the trademark in
question under the law of the country of importation.
62. AIM BEHING ANTI-COUNTERFEIT
DRIVE
To raise awareness on the problems associated
with counterfeiting and piracy;
Promote better legislation and enforcement;
Enhance cooperation and co-ordination; build
capacity; and
Promote solutions, particularly in the key focus
area of health and safety risks related to
counterfeit products.