IPR PROTECTION IN INDIA

VIJAY PAL DALMIA HEAD IP & IT LAWS DIVISION VAISH ASSOCIATES ADVOCATES

INTELLECTUAL PROPERTY LAW INTRODUCTION

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 and Software

Laws relating to Industrial Designs (Designs Act, 2000)

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 Information Technology (Information Technology Act, 2000) Domain Names

INFRINGEMENT OF IPR AND LEGAL REMEDIES

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

Industrial

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

REMEDIES

CIVIL

CRIMINAL

IS REGISTRATION OF IPR NECESSARY?

NO In case of

Trade Mark Copyright

Yes For

Patents Industrial Designs Geographical Indications

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 ?

Monopoly for the specified period is created in favour of the Registrant In case of litigation onus of proof shifts on the opposite party Prima facie presumption is raised in favour of the Registrant

CAN THE REGISTRATION OF IPR BE 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 OPPOSED 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 ? There are two ways to compare similarities between two trade marks :

PHONETIC Similarity OCULAR 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 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 ex-parte adinterim; 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 exparte injunction and appointment of local commissioner; The court may, if satisfied, grant ex-parte and interim injunction and appoint a local commissioner.

ELSE

Judgment by the court. 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 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 of replication/rejoinder, admission/denial of documents, framing of issues; Trial

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

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.
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 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 place of business of the defendants.

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. Such cases can also be directly filed in the High Court, if such High Court is vested with original jurisdiction, e.g. Delhi High Court. The Jurisdiction of High Court could be invoked, subject to the payment of Court fees. 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 ?

Yes, 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

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;

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