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IPR Protection In India

PRESENTATION BY IP & IT Division VAISH ASSOCIATES , ADVOCATES VIJAY PAL DALMIA Senior Associate, Head IP & IT Division

SUBJECT MATTER OF IPR

1. Trade Marks / Brands (Trade Marks Act, 1999) Property Marks 2. Copyright (Copyright Act, 1957) Artistic Work Literary Work Audio, Video and Records Software 3. Industrial Designs (Designs Act, 2000) 4. Patents (The Patent Act, 1970) 5. Geographical Indications The geographical Indications of Goods ( Registration and Protection )Act, 1999 6. Laws relating to Internet, Web and Information Technology (Information Technology Act, 2000) 7. Domain Names

INFRINGEMENT OF IPR AND LEGAL REMEDIES

WHEN AN IPR IS REGISTERED i.e.Trade Mark , Patent , Industrial Designs , Geographical Indications Copyright

INFRINGEMENT

PASSING OFF

Passing off is a common law tort which can be used to enforce unregistered trademark rights. Passing off essentially occurs where the reputation of party A is misappropriated 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 from misrepresenting his or her goods or services as being the goods and services of the plaintiff, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.

LEGAL REMEDIES AGAINST INFRINGEMENT AND PASSING OFF

CIVIL

REMEDIES CRIMINAL REMEDIES

Is Registration Of IPR Necessary?

In case of Trade Mark Copyright

NO

For Patents Industrial Designs Geographical Indications

Yes

How Copyright comes in to Existence !

COPYRIGHT: Registration of Copyright w.r.t any logo / trade mark is not necessary or compulsory under the provisions of the Indian Copyright Act, 1957. Automatic protection is available to an artistic work, form the date when the artistic work / logo was designed. Copyright Comes in to existence when the concept in mind is put in to some tangible form or crated

Trade Mark ! Who is protected ?

A trade mark is granted protection on the basis of First Adoption First User First Inventor First Invention / Adoption/ User is superior then the Registration

What are the Rights conferred by the Registration of IPR i.e. Trade Mark , Patent , Industrial Designs , Geographical Indications ? Monopoly for the Specified period is created in favour of the Registration Holder In case of Litigation Onus of Proof Shifts on the opposite Party Prima Facie presumption is raised in favour of the Registration Holder by courts

Can the Registration of IPR cancelled or Revoked ?

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

When Registration can be Prevented or Revoked / cancelled ?

During the Process of Registration By filing Opposition After Registration By filing Rectification Petition

What is the Test of Comparison in case of violation of IPR/ TM/Copyright/ Design / GI ?

There are two ways to compare Similarities between two trade marks : PHONETIC

Similarity OCCULAR Similarity Other tests for comparison are :-

Other Tests of Comparison

Likely hood of confusion and deception From the angle of a prudent person of ordinary intelligence No Microscopic Comparison No Actual confusion or Deception is Required Actual Loss or Damage not necessary

CIVIL REMEDIES

Injunction/ stay Damages can be claimed Accounts and handing over of profits Appointment of local commissioner by the court for custody/ sealing of infringing material / accounts Interim Injunction :Ex-Parte After Hearing

Procedure & Process for a Civil Case

Filing of plaint, with supporting evidence at the time of filing of the suit; Filing of application under order 39 rule 1 & 2 read with sec. 151 of the Code of Civil Procedure, for grant of exparte ad-interim; Filing of application under order 26 of the Code of Civil Procedure for appointment of a local commissioner, to make inventory and / or to take possession of the infringing material form the premises of the defendants, their agents, retailers and distributors etc.; Hearing of arguments by court on application for grant of ex-parte injunction and appointment of local commissioner; If the court is satisfied, the court may grant ex-parte and interim injunction and appoint a local commissioner.

Else

The court may give a short notice to the defendants for giving them an opportunity of hearing before granting any temporary injunction or appointing a local commissioner; Service of notice/ summons of the court on the defendants; Filing of written statement / reply by the defendant; Hearing on application for grant of interim injunction; Further proceedings in the suit including filing of replication / rejoinder, admission / denial of documents, framing of issues; Trial Judgment by the court.

Statutory Provisions

Trade Marks Act, 1999 Copyright Act, 1957 Designs Act, 2000 Patents Act , 1970 Geographical Indications of Goods( Registration and Protection) Act , 1999 Code of Civil Procedure, 1908 Specific Relief Act, 1963

Criminal Remedies
Against Infringement of Trade Mark , Geographical

Filing of criminal complaint before the chief judicial magistrate / 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 Criminal Procedure for issue of search and seizure warrants Orders/ directions by the Court to police for the search and seizure of infringing material.

Indications & Copyright , & Passing off

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 of Criminal Procedure, 1973.

OR IN ALTERNATIVE

OR IN ALTERNATIVE Filing a Complaint / FIR with Police

Statues Invoked For Criminal Action

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

In which court a Civil Case can be filed against violation of IPR ?

In India, the jurisdiction for the purposes of filing a civil suit, will depend upon following facts, and subject to the following 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 case would depend upon the activities of the defendants / their place of business.

Competent Court for Civil Action

In India a suit may be instituted in any Court of original jurisdiction, subject to its pecuniary & territorial jurisdiction. The Designation of the lowest court is District & Sessions Judge. These cases can also be filed in the High Court, directly, if such High Court is having original jurisdiction, e.g. Delhi High Court, which has the original jurisdiction. The Jurisdiction of High Court could be invoked, subject to the payment of Court fees, which is diminishing in nature. The structure of Court fees vary from state to state.

Can Legal Action Under The Trade Marks Act, 1999 and the Copyright Act, 1957 , be combined ?

if the artwork, get up, design, color combination of a 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 Marks Act, 1959, and this course of action is always preferable, as under the provisions of the Copyright Act, 1957, the offence becomes COGINIZABLE, and police can, on its own directly initiate Criminal proceedings after registration of an FIR.

Procedure for Filing a Criminal Complaint

PROCEDURE FOR FILING OF CRIMINAL COMPLAINT: Criminal Complaint in the Court of competent jurisdiction; Pre summoning Evidence, for satisfying the court on the basis 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; Next

Continued

Raid / Search & Seizure by Police Investigation and arrest (if necessary) of accused persons; 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

Raid / Search & Seizure by Police Investigation and arrest (if necessary)of accused persons; 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

Information and Requirements for filing an IPR Civil / Criminal Case

Detailed profile & history of the company. Significance of the trade mark xxxxxxxxx. Product range / product profile / trade mark profile. Complete catalogue / brochures / price list. Year of adoption and user of the trade mark. Year wise sale figure of the products under the trade mark xxxxxxxxx, since the year of the adoption of the trade mark. Next .

Next ..

Year wise advertisement figure of the products under the trade mark xxxxxxxxx, since the year of the adoption of the trade mark. Copy of 2-3 bills every year / in which the trade mark xxxxxxxxx is mentioned, since the year of the adoption of the trade mark. Copy of 2-3 advertisement brochures, catalogues etc of every year / in which the trade mark xxxxxxxxx is mentioned, since the year of the adoption of the trade mark. Next

Next.

Copy of some correspondence by your customers / clients. Some information / details about your clientele. Some information about your tie ups / arrangements / technology details, to convince the court about the bonafied and goodwill of your claims. Countries of export / import and where your business activities are carried out. Next

Next..

List of persons, their proprietor / partners/ owners / or any other known information with address, who are infringing trade mark / copyright, along with

Their product details / range Business activities Area of business Brochures / pamphlets / labels / photographs and other business info Whether any such infringer is related with your company in any manner, whatsoever, at any point of time during your business activities, their status in your company, nature of information available to them, and when they disassociated themselves from your company. Estimated / expected loss by them

THANK YOU .
PRESENTATION BY IP & IT Division

VAISH ASSOCIATES , ADVOCATES

VIJAY PAL DALMIA Senior Associate, Head IP & IT Division
Flat 5-7, IInd Floor , 10, Hailey Road, New Delhi-110001, India Ph:- 42492525 , 42492532 Mobile :- 9810081079 Email :- vaishlaw@vsnl.com www.indianlegalguide.com