ipr enforcement in india (ruchika sukh)
TRANSCRIPT
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IPR Enforcement in India
By Ruchika Sukh, AdvocateK & S Partners
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FORMS OF IP RIGHTS
PROTECTED IN INDIA
TRADEMARKS : Trademarks Act, 1999 (new)
PATENTS : Patents Act, 1970 (as amended)
COPYRIGHT : Copyright Act, 1957 (as amended)
DESIGNS : Designs Act, 2000
GEOGRAPHICALINDICATIONS : GI Act, 1999 & Certification Mark
provisions of the Trademarks Act
TRADE SECRETS : No specific legislation but
protected under principles ofcontract
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Enforcement of IPRs in
India
LAWS ARE ONLY AS GOOD AS
THEIR ENFORCEMENT
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IP Enforcement-Remedies
Civil
Infringement
Passing off
Criminal
Administrative
Technological measures
ALL CAN BE PURSUED SIMULTANEOUSLY
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Civil Litigation- Objective
To provide compensation to theright holder
To prohibit future infringement
Appropriate disposal of infringing
material and all tools/ plates /dyes used for manufacturing thesame.
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Civil Action: Reliefs
Injunctions against future violations
Civil 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.
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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 notgranted
Gujarat Bottling Company v. Coca Cola 21IPLR 201
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Interlocutory injunction
Statutory recognition
Importance is also recognized by
the judiciary
Landmark Supreme Court judgments
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Wander Ltd. & anr. vs.
Antox India P. Ltd.Supreme Court on interlocutory injunctions:
Usually, the prayer for grant of an
interlocutory injunction is at a stage whenthe existence of a legal right asserted by theplaintiff & its alleged violation are bothcontested The object is to protect the
Plaintiff against injury by violation of hisrights for which he could NOT adequately becompensated in damages recoverable in theaction if the uncertainty were resolved in hisfavour at the trial.
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Wander Ltd. & anr. vs.
Antox India P. Ltd.Supreme Court on Balance of Convenience:
The need for such protection must be
weighed against the corresponding need forthe defendant to be protected against injuryresulting from his having been preventedfrom exercising his own legal rights for
which he could not be adequately becompensated. The Court must weigh oneneed against another and determine wherethe balance of convenience lies.
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Midas Hygiene Industries P.
Ltd. V. Sudhir Bhatia & Anr.Supreme Court
in cases of infringement either of
trademark or of copyright normally aninjunction must follow. Mere delay inbringing the action is not sufficient todefeat grant of injunction in such
casesthe grant of injunction also becomesnecessary if if it prima facie appears thatthe adoption of the mark itself wasdishonest.
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Lakshmikant V. Patel vs.
Chetanbhat ShahSupreme Court:
In an action for passing off it is usual, rather
essential to seek an injunction, temporaryor ad-interim
proof of actual damage is not essentiallikelihood of damage is sufficient
an absolute injunction can be issuedrestraining the defendant from using orcarrying on business under the Plaintiffs
distinctive trademark.
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Enforcement of IPRs-Trademarks
Indian Courts have applied andexpanded principles of trans-border
reputation even if:
The Plaintiff has no presence in India
The goods of the defendant are entirelydissimilar (dilution principle recognized)
Provided knowledge of the mark acquiredthrough various sources of trans-border
reputation
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Enforcement- Domain
names M/s Satyam Infoway Ltd. V. Sifynet
Solutions Pvt. Ltd. (2004) 6 SCC 145
SC has held that domain names aresubject to the legal norms applicable toother intellectual properties, such as
trademarks.Yahoo Inc. v. Akash Arora 1999 PTC
201
SC applied general trademark law to theinternet.
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Ex Parte Order
When the matter is extremely urgent
At a preliminary hearing of the interim
application without notice to the answeringdefendant.
Granted before the motion for interiminjunction is fully heard but for a limitedperiod only.
After grant of ex parte injunction, the Courtmust proceed with disposal of the interim
injunction application after the defendant
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Ex Parte Orders
Injunction;
Discovery of documents;
Preserving of infringing goods,document of other evidence related tothe subject matter of the suit;
Restraining the defendant fromdisposing off his assets in a mannerwhich may adversely affects rights ofthe IP owner to claim damages, costs
or other pecuniary remedies.
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Anton Pillar Order
Anton Pillar v. Manufacturing Process(1976) RPC 719
Similar to ex parte interlocutory orderAfter a hearing in camera, Court
authorizes plaintiff to inspect premises
of defendant and take inventory of theoffending material
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Anton Pillar Orders
Sensitive in nature
Pre conditions for grant:
Extremely strong prima facie case
Damage (potential or actual) veryserious
Clear evidence that defendants have intheir possession, incriminatingdocument/ material which they maydestroy.
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John Doe Order
Court appointed commissioners to enterthe premises of any suspected party
and collect evidence of infringement. Suspected party may not be named in
the suit.
Indian Courts have conferred expandedpowers to commissioners- Rovingcommissioners
Ardath Tobacco Co. Ltd. vs. Mr. Munna
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Mareva Injunction
Freezing order
Prevents the infringer / offender
from removing / disposing of assetsin which the gains from infringementhave been invested.
Aim- unjust enrichment of thedefendant and to ensure payment ofdamages to Plaintiff
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Final injunction
To ascertain rights of the parties
Remedies for Breach of injunction
Police assistance
Assistance of administrative bodies
Contempt proceedings
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Damages / Account of
Profits These are mutually exclusive
alternative remedies
Account of profits- An equitablerelief
Plaintiff adopts defendants acts as his
own. Damages- for the losses suffered by
the Plaintiff on account of the
defendants acts
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Damages- recent trends
Time Inc. vs. Lokesh Srivastava
Punitive damages awarded for the firsttimeRs 5 lakhs
Distinction between compensatory
damages and punitive damages wasmade out.
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Time Incorporated vs. LokeshSrivastava
Delhi High Court:
The award of compensatory damages to aplaintiff is aimed at compensating him for
the loss suffered by him whereas, punitivedamages are founded on the philosophy ofcorrective justice and as such, in
appropriate cases these must be awarded togive a signal to the wrong-doers that lawdoes not take a breach merely as a matterbetween rival parties but feels concerned
about those also who are not arty to the lis
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Damages- recent trends
Microsoft Corporation vs. YogeshPapat & anr. 2005 (1) CTMR 424
Highest costs and Damages everawarded for IP infringement by
Indian CourtsApproximately Rs 20 lakhs
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Criminal Remedies- TM
Falsification of Trademarks /Infringement of copyright is a
criminal offenceA complaint may be filed before a
Magistrate; OR
Police can register an FIR andprosecute directly; (statutoryrequirement to obtain the Registrarsapproval.
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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 ofinfringing goods/ material forplacing before the Magistrate.
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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
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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
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Technological measures
Holograms
Electronic devices
Encryption
Anti-copy devices
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Mechanisms for effective
enforcements Political will to strictly enforce the
law
Legal power and willingness toconduct secret raids withoutnotice to the infringer
Legal power and willingness toseize all infringing products +machinery and business records
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Mechanisms for effective
enforcements Willingness to follow through with
quick prosecution of damage
awards. Willingness to impose deterrent
fines and jail terms (to act as scarecrows against large manufacturers
and organized crime syndicates) Legal power and willingness to
impose preliminary injunction with
severe penalties.
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Mechanisms for effective
enforcements Criminal proceedings must be fast
and fair
Legal power to confiscate anddestroy infringing products.
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Enforcement of IPRs
Case Studies.
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Enforcement of IPRs
Case Studies.
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Enforcement of IPRs
Case Studies.
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Enforcement of IPRs
Case Studies.
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Enforcement Blues
Judicial/administrative Delays
Lack of Damages Culture no
deterrence for infringing conduct
Lack of effective borderenforcement measures
Policepolitical interference,corruption, lack of technicalexpertise
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Impediments to
Enforcement Police
Political interference
Corruption
Lack of technical expertise/training
Lack of follow up
Delay in case preparation
Delay in commencement ofprosecution
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Impediments to
Enforcement Customs/Border Measures
No effective mechanism available
under customs law IP offences generally seen as private
offences
Lack of training/technical expertiseAnd of course, corruption and
political interference
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BUT All is not lost
Courts are by and large fair andpro active
Special IP (cells) set up in majorcities and suo moto raids beingcarried out
Code of Civil Procedure amendedto ensure expedited trial
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BUT All is not lost
Industry specific bodies formed tofight piracy
NASSCOM-BSA - Software Piracy
IMA - Music Piracy
IPRS/PPL - Sound
Recording/PerformancePiracy
With many success stories to their