IP ENFORCEMENT IN INDIA

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2 IP ENFORCEMENT IN INDIA

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5 Changes in the Trade Marks Law Includes service marks; Strong protection to well known and famous trade marks Infringement redefined to include use of a registered trade mark as company name amounts to infringement Reduction in life span of a law suit Parallel imports in trade marks

6 Changes in the Trade Marks New Customs initiative by introduction of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (IPRER) The said Rules, inter alia, provide for (i) the filing of a notice by the right holder; (ii) registration of said notice by the Customs; (iii) Time limit for right holders to join proceedings; (iv) single point for registration of the notice filed by the right holder; (v) adequate protection to the rightful importer; (vi) adequate protection to the Customs for bonafide act; (vii) suo-moto action by the Customs in specified circumstances; (viii) disposal of the confiscated goods. (ix) no action against goods of non commercial nature contained in personal baggage or sent in small consignments intended for personal use of the importer.

7 Changes in the Trade Marks Lacunae in IPRER Registration of complaint subject to the execution of a bond along with surety and security by the right holder undertaking to protect the importer, consignee and the owner of the goods and the competent authorities against all liabilities and to bear the costs towards destruction, demurrage and detention charges incurred till the time of destruction or the disposal of the infringing goods. The surety and security shall be on consignment basis and shall be furnished along with the bond to be furnished consequent upon interdiction of consignment allegedly infringing rights of the right holders. Keeping in view the value of the goods and other incidental expenses, it has been decided that the Bond amount should be equal to 110% of the value of goods. However, the amount of security to be furnished along with the bond may be decided by the respective Commissioners in whose jurisdiction the bond is executed. If, after the registration is granted, the right holder wants any modification on account of any amendment in registration granted to them by the respective registry of the departments enforcing the parent IPR law or on account of any other reason, the right holder shall be required to seek fresh registration in place of the old registration and would be required to undergo all the processes of registration again, like making fresh application, payment of fees, execution of bond etc. For every separate right, the right holder shall be required to submit a separate notice (Application).

8 Changes in the Trade Marks Enforcement streamlined- Specific remedies for civil infringement, notably ex-parte and interlocutory orders- speedy disposal of cases The level of penalties for criminal acts of infringement has been considerably increased i.e. made a cognizable and non bail-able offence. Specific powers have also been given to certain police officers to enter premises, and search and seize relevant materials (without a warrant). The police officer is, however, required to obtain the opinion of the Trade Marks Registrar on infringement of the trade mark-negative aspect i.e. it leads to dilution of the complaint and delay in process thereby alerting the other party

9 Changes in the Trade Marks Creation of Appellate Tribunal An appellate board has been established to hear appeals from the decision of the Trade Marks Registrar. This is expected to facilitate the speedy disposal of appeals which would previously have been required to be heard by the High Court. However, IP owners and practitioners are concerned about the lack of infrastructure for the appellate benches at Calcutta, Mumbai, Delhi and Ahmedabad. Recordal of licence agreement no longer necessary The definition of permitted use under the Act has been expanded to include unregistered licences. Thus, IP owners do not need to record their licence agreements with the Trade Marks Office but can rely upon use by their license to defend any non-use cancellation action. Damage Jurisprudence

10 Enforcement Mechanism- Litigation Route Civil action- Infringement (registered trade mark for similar or different description of goods) Passing off action- based in confusion and deception; Criminal Action- Available irrespective of registration Police Action : Opinion of Registrar required Complainant may seek: - search and seizure of spurious goods - destruction of such goods upon conviction - prison term Customs Route

11 Enforcement Mechanism- Administrative Route Opposition Proceedings Complaint to Controller of Drugs and Cosmetics Remedy under Companies Act Domain name disputes at.in Registry

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13 Whirlpool Case Registered mark injuncted concept of trans-border reputation a prior user of the trademark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof

14 Protection of well-known marks for different description of goods

15 Panda Case- Application of goodwill and Passing off to non profit organizations as well a passing off action was brought by WWF International to stop Mahavir (Defendant) from using the name PANDA and PANDA device in respect of threads. One of the arguments of the Defendant (Mahavir) in this case was that the Plaintiff (WWF) has no commercial business and no reputation in its commercial activities. The organisation (WWF) has a reputation for working in the field of protection of endangered species or for preserving the environment. The court while holding in favour of WWF observed that mere fact that the Plaintiff has never manufactured any products in this country does not prevent it from acquiring the goodwill here in its trade mark. It is no doubt true that an action for passing off relates to the business and it must be established that the Plaintiff has a reputation or goodwill of his business in this country. The foundation for the action of passing off is the protection of goodwill and so, one must prove the existence of goodwill in this country before obtaining the relief of passing off.

16 Blenders Pride Case-Prior Adoption Blenders Pride whisky manufactured by the Plaintiffs has a worldwide reputation, being available for sale in a large number of countries since 1973 onwards. The product was not unknown in India. The predecessor in interest of the plaintiffs had an intention of directly exploiting the Indian market. They had applied for permission from the Government of India to manufacture Blenders Pride whisky which was granted and they had been manufacturing Blenders Pride whisky in India since They however manufactured Blenders Pride whisky for a couple of months in and stopped manufacturing till sometime in 2005 that is for a period of almost 11 months. The Court held: the Plaintiffs having come out with Blenders Pride whisky first in the international market were first past the post; even though the Defendants were the first to do so in India. The fact that the product of the plaintiffs was not manufactured or sold in India from 1973(when it first entered the market) till 1995 when it became freely available in India, is of no consequence.

17 Trade Mark, Copyright and Design- An Overlap Smithkline sued several parties in India, raising multiple proprietary claims regarding the zigzag neck feature of the toothbrush. Smithkline claimed trade mark rights relating to this feature as well as design rights (it was a registered design). It then claimed copyright regarding the moulds and drawings used to make the toothbrushes once the design registrations were invalidated. The courts emphasized the need for balance to be maintained between statutory rights conferred by the Designs Act and the Copyright Act and the larger interest of the public to exploit a work once it falls into the public domain. Courts held that Smithkline could not claim a proprietary right in the flexible neck feature of the toothbrush because the feature was "utilitarian" and once the work's design registrations become invalid, the design enters the public domain for free exploitation. Smithkline's own commercial advertisements and packaging highlighted the functional utility of flexible neck feature of the toothbrush.the court also rejected Smithkline's copyright claim regarding the mould on the ground that, no copyright survived in the toothbrush design on account of invalidation of its design registration and hence, Smithkline cannot claim copyright in the same toothbrush in the garb of copyright in its mould. Though the courts gave these decisions at interlocutory stage, they laid down significant principles of law.

18 Damage Jurisprudence- Time Incorporated Vs. LokeshShrivastava and Anr. Ratio of the Case: The Red Border Design is distinctive and directly associated to the magazine of the Plaintiff; Defendant s magazine is a slavish imitation of the Plaintiff s Trade mark/trade name; Distinction drawn between Compensatory and Punitive damages & the purpose of awarding the same; Time ripe for award of punitive damages, with a view to discourage the law breakers; Quantum of Damages depends upon flagrancy of infringement; Awarded-Punitive Damages of Rs. 5 Lakhs Damages of Rs. 5 Lakhs and 6 lakh interest and Compensatory

19 HARI PUTTAR Case Concept of delay and Acquiesce The court held that despite knowledge of the defendant's proposed movie title "Hari Puttar" in 2005, the judge finds that Warner Brothers sat on their rights and chose to approach the court only in In the court's words: "It is settled law that if the plaintiffs stood by knowingly and let the defendants build up their business or venture, then the plaintiffs would be estopped by their acquiescence from claiming equitable relief"

20 SCOTT Vs SCOTCH SWA initiated legal proceedings against Khoday inter alia for passing off of the mark, Peter Scot. One of their contentions was that some customers were deceived into thinking that Peter Scot brand whisky is also a Scotch whisky. The Supreme Court held that where the class of buyers is educated and rich, the test to be applied is different where the product would be purchased by the villagers, the illiterate and the poor. The Court concluded that it was concerned with the class of buyers who are supposed to know the value of money, the quality and content of Scotch whisky and the difference in the process of manufacture, the place of manufacture and their origin

21 RELIEFS Injunction Damages or rendition of accounts Seizure through Local Commissioner Costs

22 Thank you for your attention!