ipr protection ok

8/12/2019 IPR Protection Ok

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IPR PROTECTION IN INDIA

VIJAY PAL DALMIA

HEAD IP & IT LAWS DIVISIONVAISH ASSOCIATES ADVOCATES


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Comprises of the following Laws:-

Laws relating to Trade Marks / Brands (Trade Marks

Act, 1999), Property Marks

Laws relating to Copyright (Copyright Act, 1957)Artistic Work, Literary Work, Audio Video Records andSoftware

Laws relating to Industrial Designs (Designs Act, 2000)

INTELLECTUAL PROPERTY LAW

INTRODUCTION


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Laws relating to Patents (The Patent Act, 1970)

Laws relating to Geographical Indications. The

geographical Indications of (Registration and Protection)Act, 1999

Laws relating to Internet, Web and InformationTechnology (Information Technology Act, 2000)

Domain Names


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INFRINGEMENT WHEN AN IPR IS

REGISTERED i.e.Trade Mark , Patent IndustrialDesigns , Geographical

Indications

Copyright

INFRINGEMENT OF IPR AND

LEGAL REMEDIES


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Passing off is a common law tort which can be used toenforce unregistered trademark rights. Passing offessentially occurs where the reputation of party A ismisappropriated 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 frommisrepresenting his or her goods or services as being thegoods and services of the plaintiff, and also prevents one

person from holding out his or her goods or services ashaving some association or connection with the plaintiffwhen this is not true.

PASSING OFF


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REMEDIES

LEGAL REMEDIES AGAINST

INFRINGEMENT AND

PASSING OFF

CIVIL CRIMINAL


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NO In case of

Trade Mark

Copyright

Yes For

Patents

Industrial Designs

Geographical Indications

IS REGISTRATION OF IPR NECESSARY?


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COPYRIGHT: -

Registration of Copyright w.r.t any logo / trademark is not necessary or compulsory under the

provisions of the Indian Copyright Act, 1957.Automatic protection is available to an artisticwork, form the date when the artistic work / logowas designed.

Copyright Comes in to existence when theconcept in mind is put in to some tangible formor crated

HOW COPYRIGHT COMES IN TO

EXISTENCE !


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A trade mark is granted protection on the basis of

First Adoption

First User

First Inventor

First Invention / Adoption/ User is superior thenthe Registration

TRADE MARK ! WHO IS PROTECTED ?


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Monopoly for the specified period is created infavour of the Registrant

In case of litigation onus of proof shifts on theopposite party

Prima facie presumption is raised in favour of theRegistrant

WHAT ARE THE RIGHTS CONFERRED

BY THE

REGISTRATION OF IPR ?


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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

CAN THE REGISTRATION OF IPR BE

CANCELLED OR REVOKED ?


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During the Process of RegistrationByfiling Opposition

After RegistrationBy filing RectificationPetition

WHEN REGISTRATION CAN BE OPPOSED

OR REVOKED/CANCELLED ?


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There are two ways to compare similaritiesbetween two trade marks :-

PHONETIC Similarity

OCULAR Similarity

Other tests for comparison are :-

WHAT IS THE TEST OF COMPARISON IN

CASE OF VIOLATION OF IPR ?


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Likely hood of confusion and deception

From the angle of a prudent person of ordinaryintelligence

No microscopic comparison

No actual confusion or deception is required

Actual loss or damage not necessary

OTHER TESTS OF COMPARISON


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Injunction/stay

Damages

Accounts and handing over of profits Appointment of local commissioner by the

court for custody/sealing of infringingmaterial/accounts

Interim Injunction:Ex-Parte

After Hearing

CIVIL REMEDIES


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Filing of plaint with supporting evidence at the time of filingof 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 CivilProcedure for appointment of a local commissioner, to makeinventory and/or to take possession of the infringing materialform the premises of the defendants, their agents, retailers anddistributors etc.

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

The court may, if satisfied, grant ex-parte and interiminjunction and appoint a local commissioner.

PROCEDURE & PROCESS FOR

A CIVIL CASE


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Judgment by the court.

The court may give a short notice to the defendants forgiving them an opportunity of hearing before granting any

temporary injunction or appointing a local commissioners Service of notice/summons of the court on the defendant

Filing of written statement / reply by the defendant;

Hearing on application for grant of interim injunction;

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

Trial

ELSE


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Trade Marks Act, 1999

Copyright Act, 1957

Designs Act, 2000

Patents Act, 1970

Geographical Indications of Goods( Registration andProtection) Act, 1999

Code of Civil Procedure, 1908

Specific Relief Act, 1963

STATUTORY PROVISIONS


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Filing of criminal complaint before the chief judicialmagistrate/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 CriminalProcedure for issue of search and seizure warrants

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

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 ofCriminal Procedure, 1973.

OR IN ALTERNATIVE

Filing a Complaint / FIR with Police

CRIMINAL REMEDIES


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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

STATUES INVOKED

FOR CRIMINAL ACTION


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In India, the jurisdiction for the purposes of filing a civil suit,will depend upon following facts, and subject to thefollowing 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 casewould depend upon the place of business of thedefendants.

IN WHICH COURT A CIVIL CASE CAN

BE FILED AGAINST VIOLATION OF IPR ?


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In India a suit may be instituted in any Court of originaljurisdiction, subject to its pecuniary & territorialjurisdiction. The designation of the lowest court isDistrict & Sessions Judge. Such cases can also bedirectly filed in the High Court, if such High Court isvested with original jurisdiction, e.g. Delhi High Court.

The Jurisdiction of High Court could be invoked, subjectto the payment of Court fees. The structure of Court feesvary from state to state.

COMPETENT COURT FOR CIVIL ACTION


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Yes, if the artwork, get up, design, color combination ofa 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 MarksAct, 1959, and this course of action is always preferable,as under the provisions of the Copyright Act, 1957, theoffence becomes COGINIZABLE, and police can, on itsown directly initiate Criminal proceedings afterregistration of an FIR.

CAN LEGAL ACTION UNDER THE TRADE

MARKS ACT, 1999 AND THE COPYRIGHT

ACT, 1957 , BE COMBINED ?


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Criminal Complaint in the Court of competentjurisdiction;

Pre summoning Evidence, for satisfying the court on thebasis 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;

PROCEDURE FOR FILING A

CRIMINAL COMPLAINT


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Raid / Search & Seizure by Police

Investigation and arrest (if necessary) of accusedpersons;

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


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Contact Us

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Gurgaon, Haryana803, Tower A, Signature Towers, South City-1, NH-

8,Gurgaon-122001, Haryana, India

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Phone- +91-124-4541000 Fax:: +91-124-4541010

IP & IT Laws Division

Vaish Associates Advocates

Flat No. 903, Indra Prakash, 21, Barakhamba Road,

New Delhi-110001, India

email: [email protected]

Phone:- +91-11-42492532 (Direct) Mobile: +91-9810081079

Fax :- +91-11-23320484
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