Ipr Enforcement in India (Ruchika Sukh)

8/13/2019 Ipr Enforcement in India (Ruchika Sukh)

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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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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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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

Ipr Enforcement in India (Ruchika Sukh)

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