Border Enforcement Measures in India

Transcription

1 Intellectual Property Rights (IPR) Border Enforcement Measures in India

2 Intellectual Property Rights(IPR) Intellectual property is the product which is creation of human mind or intellect. intellectual property (IP) is an umbrella term for various legal rights which attach to certain names, written and recorded media, and inventions etc. Thus Intellectual Property refers to creation of human mind such as inventions, designs for industrial articles, literary, artistic work, symbols which are ultimately used in commerce

3 AMBIT OF IPR LAWS IN INDIA 1. Copyrights 2. Trade Marks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Plants varieties. 7. Layout Design of Integrated Circuits [NOTE: Border Enforcement Measures do not extend to Plant Varieties and Layout Design of Integrated Circuits.]

4 COPYRIGHTS Protection of the rights of the producers of Books and other printed materials, CDs, Music cassettes etc are provided under the Indian Copyright Act, 1957 as amended by Copyright (Amendment) Act, 1999, Protection of rights of Producers of Phonograms is also protected under the Copyrights Act The copyright law has been amended periodically to keep pace with changing requirements. The copyright law was amended in May 1995, to bring it in line with the developments in satellite broadcasting, computer software and digital technology. The amended law has made provisions for the first time, to protect performer s rights as envisaged in the Rome Convention

5 TRADE MARKS A trade mark (popularly known as brand name) is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking TRIPS Agreement provides for protection of Trademarks. Protection of right is protected under Trademarks Act, 1999

6 DESIGN Design as per Designs Act 2000, means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.

7 GEOGRAPHICAL INDICATIONS Geographical Indications of Goods means indications, which identify a goods as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin. It is an indication It originates from a definite geographical territory It is used to identify agricultural, natural or manufactured goods The manufactured goods should be produced or processed or prepared in that territory It should have a special quality or reputation or other characteristics The Geographical Indications of Goods Act provides the rights, to use the geographical indication, to the person/persons of a particular territory wherein the goods are originating, produced, processed, or prepared

8 EXAMPLE OF POSSIBLE INDIAN GEOGRAPHICAL INDICATIONS Basmati Rice Darjeeling Tea Kanchipuram silk saree Alphanso Mango Nagpur Orange Kolhapuri Chappal Agra Petha Bikaner Bhujia

9 PATENT A patent can be granted for an invention which may be related to any process or product. The word Invention has been defined under the Patents Act 1970 as amended from time to time. An invention means a new product or process involving an inventive step and capable of industrial application The criteria for an invention to be patentable are, (1) An invention must be novel (2) has an inventive step and (3) is capable of industrial application Contd/-

10 Novelty : The matter disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India. Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document. Industrially applicable: Invention should possess utility, so that it can be made or used in an industry

11 TRIPS Border Enforcement Measures Obligations Part III of TRIPS deals with Enforcement of Intellectual Property Rights Section-1:- General Obligations Section 2:- Civil and Administrative Procedures and remedies Section3:- Provisional Measures Section4:- Special requirements related to border measures Section 5:- Criminal Procedures

12 Section 4:Special Requirements Related to Border Measures( Border Enforcement Measures) Suspension of release Application Security Notice Duration of Suspension Indemnification Inspection/Information Ex Officio action Remedies De Minimis imports

13 Suspension of release by Customs Authorities (Article 51) Members shall adopt procedures to enable right holders to apply for suspension of release of goods by customs into free circulation where: Valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods may take place, and Right holder submits written applications with competent authorities May provide corresponding procedures for other types of infringement (patents, trade secrets etc.) May provide corresponding procedures for exports

14 Article 52- Application Right Holder is required to furnish evidence establishing prima facie case of infringement to the competent authorities and also required to furnish detail description of goods. Authority is required to inform the right holder ( applicant) with in a reasonable time period about the status of the application ( accepted or rejected) or period within which action would be taken

15 Article 53- Security or Equivalent Assurance - The applicant would be required to provide security or equivalent assurance( bond) to protect: - to protect the defendant - to protect competent authorities - to prevent abuse Such security or assurance procedures. should not unreasonably deter recourse to these

16 Article 54- Notice of suspension Importer and the right holders would be promptly notified about the suspension of release of goods.

17 Article 55-Duration of suspension If customs authorities not informed within 10 working days after receipt of notice of suspension of initiation of any proceedings leading to decision, the goods would be released. Time limit is extendable by another 10 working days If proceedings have been initiated, right to be heard and right of review upon request of defendant shall take place within a reasonable period and shall decide whether measures to be modified, revoked or confirmed However, if suspension of release is pursuant to provisional judicial measures, Art 50 shall govern

18 Article 56-Indemnification of the importer and of the owner of the goods Relevant authorities shall have the authority to order the applicant to pay the importer, the consignee and owner of the goods appropriate compensation for any injury caused to them thorough the wrongful detention of goods or thorough detention of the goods released pursuant to Art 55.

19 Article 57-Right of Inspection and Information Members shall provide the competent authorities the authority to give the right holder an opportunity to have detained goods inspected to substantiate infringement claims. Equivalent opportunity for importer Where a positive determination has been made on the merits of Where a positive determination has been made on the merits of case, members may provide the competent authorities the authority to inform right holder of the name and address of the consignor, the importer, and the consignee and the quantity of goods in question

20 Article58- Ex Officio Action Where Members require competent authorities to act upon their own initiative and to suspend the release of goods in respect of which they have acquired prima facie evidence that an intellectual property right is being infringed: Authorities may seek information from the right holders to act on their own initiatives to suspend release The importer and the right holder shall be promptly notified Members shall only exempt both public authorities and the officials from liability to appropriate remedial measures where actions are taken or intended in good faith

21 Article 59-Remedies Without prejudice to other rights of action open to the right holder and subject to the right of the defendant to seek review by a judicial authority, Destruction or Disposal of infringing goods in accordance with principle set out in article 46. For counterfeit trademark goods, no re-exportation in unaltered state, or by application of different customs procedure, other then in exceptional circumstances

22 Article 60-De Minimis Imports Members may exclude from the application of the above provisions small quantities of goods of a non-commercial nature contained in travellers' personal luggage or sent in small consignments

23 Border Enforcement Mechanisms in India. In India Border measures are enforced by Customs Department. Department of Revenue/Central Board of Excise & Customs has issued following Notification/Rules/ Circular for enforcement of IPR Border measures: o Customs Notification No 49/2007-Customs (NT) dated o Intellectual Property Rights (imported Goods) Enforcement Rules,2007 dated o Customs Circular No 41/2007 dated Legal Provisions: Section 11 (2) (n) of Customs Act, 1962 empowers the Central Government to prohibit importation and exportation of any goods for the protection of Patents Trademarks and Copyrights by issuing of Notification. Section 11 (2) (u) of Customs Act, 1962 empowers the Central Government to prohibit importation and exportation of any goods for the protection of any other law for the time being in force by issuing of Notification Contd

24 Customs Notification to prohibit import of infringing goods. Department of Revenue issued Notification No 49/2007-Customs (N.T) dated which prohibits import :- of goods having a false trade mark & false trade description; of goods made or produced beyond the limits of India and intended for sale and having a design in which copyright exists under the Designs Act; of product made or produced beyond the limits of India and intended for sale for which patent is in force under the Patents Act, 1970 Contd/-

25 of the product obtained directly by the process beyond the limits of India and intended for sale for which patent is in force under the patents Act, 1970 Of goods having a false geographical indications of goods prohibited to be imported by issuance of order issued by Registrar of Copyrights under section 53 of the Copyright Act,1957

26 Intellectual Property Rights (Imported Goods) Enforcement Rules,2007 Import of infringing goods are Prohibited under Notification No 49/2007-Customs (NT) subject to following conditions and procedures laid down in Intellectual Property Rights (imported Goods) Enforcement Rules,2007 Department of Revenue notifies the Intellectual Property Rights (Imported Goods) Enforcement Rules,2007on 8 th of May, The Rules have been framed in the line of TRIPS and WCO (World Customs Organisation) model. contd

27 Salient Features of the Rules The rules inter alia provide for: filing of a notice by the right holder; registration of said notice by the Customs; time limit for right holders to join proceedings; single point for registration of the notice filed by the right holder fees of Rs 2000/- for every notice. contd/

28 adequate protection to the rightful importer; adequate protection to the Customs for bonafide act; suo-moto action by the Customs in specified circumstances; disposal of the confiscated goods. no action against goods of non commercial nature contained in personal baggage or sent in small consignments intended for personal use of the importer

29 Customs Circular 41/2007 Central Board of Excise & Customs has issued a circular No 41/2007 dated which apart from explaining various provisions of Intellectual Property Rights (imported Goods) Enforcement Rules,2007, puts in place a detailed procedure for electronic registration of the notice by the Right Holders. Salient features of the Circular 41/2007 :- On-line recordation as a trade facilitation measure 110% of value of goods as Bond amount and 25% of bond value as BG uniformity Recordation valid for 5 years (extendable thereafter on payment of fees)

30 Goods in Transit Note 13 to Art 51 of TRIPS provides It is understood that there shall be no obligation to apply such procedures to imports of goods put on the market in another country by or with the consent of the right holder, or to goods in transit Under the provision of section 54(2) of the Customs Act, 1962, the provision of section 11 of the Customs Act, i.e. prohibition/ restriction imposed on import of goods would apply to goods in transit. Therefore, notification No 49/2007-Customs (NT) would extend to goods in transit also. There is no enabling provision.

31 Parallel Import PARALLEL imports, commonly known as "grey market imports" are goods brought into a country without the authorisation of the right holders after those goods were placed legitimately into circulation elsewhere These goods are legitimate goods and not counterfeit or pirated goods. Parallel imports are legitimate products except that they may be packaged differently and may not carry the original manufacturer's warranty. As per the present policy of national and international exhaustion, rights are exhausted on first sale Border Measures in India do not apply to Parallel imports.

32 THANK YOU Presentation By:- A.K.Sinha