India has a well-established statutory, administrative and judicial framework to safeguard Intellectual Property Rights (IPRs), however, it is still plagued with the problem of enforcement of IPR. Though concern has been always been expressed about slow judicial system in India involving tedious procedure of trial and conviction, the recent years have witnessed the versatility of Indian Courts for protection of Intellectual Property Rights. It is advised that by adopting right policies and strategies, IP can be effectively protected with the help of law enforcement authorities. Strategies and contracts are the most significant instruments for protection of IPR in India. The strategy for the protection and enforcement of IPR shall definitely include “when to start and end a litigation?”.
For any IPR enforcement strategy or any case in Indian Courts, one must understand the Indian Judicial system and psychology of the Indian judiciary. While Indian Courts are active in granting equitable reliefs like injunctions, etc., it has been generally observed that they are reluctant in awarding punitive damages. It is important to note that Indian High Courts particularly Delhi High Court and Bombay High Court are proactive in the protection and enforcement of Intellectual Property Rights in India. It is reiterated that Indian Courts are free of any bias, as such foreigners can freely enforce their rights under Indian laws.
In a typical case for enforcement of Intellectual Property Rights pertaining to infringement of Trademark and passing off, infringement of Copyright, Patent, Design, Geographical Indication and Plant Variety, following reliefs can be claimed in a civil suit:Permanent Injunction;
Accounts and handing over of profits;
Anton Pillar Order (Appointment of Local Commissioner by the Court for custody/ sealing of infringing material/accounts);
Delivery up of goods/packing material/dyes/plates for destruction.
In case of infringement of Trademark and passing off, infringement of Copyright, Geographical Indication, Plant Variety and Semiconductor Integrated Circuits Layout Design following Criminal action can be initiated:Registration of First Information Report (FIR); or
Filing of a Criminal Complaint before a Competent Magisterial Court;
Filing of application before the Court for issue of search and seizure warrants;
Raid of the Premises of the accused by Police on registration of FIR or on the orders of the Court and seizure of the infringing material;
Arrest and prosecution of the counterfeiters, in case involving cognizable offence.
In India, wherever provisions have been made for criminal prosecution for violation of Intellectual Property Rights, a criminal case can be filed against known as well as unknown persons.
It is also important to note that both civil and criminal remedies, wherever applicable, can be availed simultaneously and both the remedies are coexistent.
Infringement of Trademark
The Indian law recognizes both statutory rights of infringement as well as common law action of passing off of Trademarks. A trademark owner in India can bring a:Statutory action of infringement where the trademark is registered; and
Common law action of passing off where the trademark is not registered.
In order to establish infringement with regard to a registered trademark, it is required to establish that the infringing mark is identical or deceptively similar to the registered mark.
In the case of a passing off action, besides proving that the marks are identical or deceptively similar, it is also necessary to establish that the use of the mark is likely to deceive or cause confusion resulting in damage to the goodwill and reputation. However, proof of actual deception or confusion is not necessary. In India, both the passing off action and infringement action can be combined together. The registration cannot upstage a prior consistent user of trademark in India, for the rule followed is ‘priority in adoption of trademark prevails over priority in registration of trademark’.
The concept of “Well-known” trademarks is recognised in India and a well-known trade mark is protected in India even if it is not registered in India. Trans-border or spill-over reputation can be relied upon even if a trademark has not been used in India.
Remedies for Trademark Infringement and Passing off
In the case of misuse of a trademark, the law provides for both civil and criminal remedies. In a Civil action all of the above mentioned relief can be claimed.
The (Indian) Trade Marks Act, 1999, also provides for criminal action against offences relating to a trademark, whether registered or unregistered. The offences under the (Indian) Trade Marks Act, 1999, are punishable with imprisonment up to 3 years and fine up to INR 2,00,000/- (approx. US$ 4300). The minimum term of imprisonment shall not be less than 6 months.
The selection of a civil or criminal remedy by an aggrieved party is dependent upon various circumstances and factors pertaining to each case. Generally, civil remedies should be preferred.
Quasi-Judicial RemediesOpposition (Before the Registrar) – Opposition to the registration of a trademark can only be filed after publication of the trademark within a total period of 4 months from the date of publication in the Trademark Journal. During the course of the process of registration, public is given an opportunity to oppose the registration of a trademark by filing an opposition petition on various grounds such as the registration is likely to create confusion or deception in the market, identical to the trademark of the opponent or violates any other right of the opponent etc.
Cancellation (Before the Registrar as well as Intellectual Property Appellate Board) - In case a Trademark has been wrongly registered, the registration of the same can be cancelled on various grounds which may be similar to the grounds on which an opposition can be filed including the grounds of wrong and fraudulent registration and non-user etc.
Infringement of Patent
Patent infringement proceedings can only be initiated after grant of patent in India but may include claim retrospectively from the date of publication of the application for grant of the patent. Infringement of a patent consists of the unauthorized making, importing, using, offering for sale or selling any patented invention within the India.
Remedies for infringement of Patent
Under the (Indian) Patents Act, 1970 only civil action can be initiated in a Court of Law and no penal action can be initiated. Further, a suit for infringement can be defended on various grounds including the grounds on which a patent cannot be granted in India. and based on such defence revocation of Patent can also be claimed.
Infringement of Copyright
Both civil as well as criminal remedies are available under the (Indian) Copyright Act, 1957, against the infringement of a copyright, and the remedies are similar to the remedies relating to the infringement of the Trademark.
It is also important to note that a suit or criminal complaint can be filed by joining actions under the (Indian) Trade Marks Act, 1999 and the (Indian) Copyright Act, 1957 in appropriate cases where the trademark involves an artistic work.
Offences relating to the infringement of Copyright under the (Indian) Copyright Act, 1957 are punishable with minimum sentence of imprisonment of 6 months which my extend up to 3 years and minimum fine of INR 50,000 (approx. US$ 1075) which may extent up to INR 2,00,000 (approx. US$ 4300).
In order to curtail piracy and protection of computer programs, special provisions have been made under the (Indian) Copyright Act, 1957. Any person who knowingly uses a pirated copy of a computer programs is also liable to be imprisoned for a term which shall not be less than seven days but which may extend to three years and with fine which shall not be less than INR 50,000 (approx. US$ 1075) but which may extend to INR 2,00,000 (approx. US$ 4300).
Copyright infringement is a cognizable offence, which means that police on the complaint of a complainant can directly initiate criminal prosecution by lodging a First Information Report (FIR), investigate, search and seize the infringing goods from known and unknown offenders and arrest the offenders.
Quasi-Judicial Remedies are also available, wherein an application, by the owner of copyright or by his duly authorized agent, can be made to the Registrar of Copyrights for banning the import of infringing copies into India and delivery of the confiscated copies.
Infringement of Design
An action for infringement of design can only be initiated after the registration of the design under the (Indian) Designs Act, 2000, which only provides for civil remedies as already mentioned above. In case a civil action has been initiated on the basis of a design which has been wrongly registered for any reason as provided under the (Indian) Designs Act, 2000, revocation or cancellation of the registered design may be set up as a defence.
Infringement of Semiconductor Integrated Circuits Layout Design
A registered Layout-Design is infringed by a person who, not being the registered proprietor of the Layout-Design or a registered user thereof does any act of reproducing, importing, selling or otherwise distributing for commercial purposes a registered layout-design in its entirety or any part thereof.
The Act does not provide for any civil remedy, however, we are of the opinion that preventive reliefs can be claimed by way of permanent injunction coupled with an interim injunction, which is an order passed by the Court during the pendency of litigation in the court of law, delivery up/destruction of infringing goods and damages. Under the (Indian) Semiconductor Integrated Circuits Layout Design Act, 2000, any person found to be infringing a registered layout design can be punished by way of imprisonment for a maximum of three years and/or a fine [minimum INR 50,000 (approx. US$ 1075) and maximum INR 10,00,000 (approx. US$ 21500 )].
Infringement of Plant Varieties and Farmers’ Rights
Any person, who produces, sells imports or exports any variety without the permission of the owner, infringes the rights of owner. Use of a denomination which is similar to a registered denomination and likely to confuse the general public also amounts to infringement.
Infringement of any right under the Plant Varieties and Farmers’ Rights attracts both Civil and Criminal action. A criminal action under the Act entails punishment up to two years and fine of INR 50,000 (approx. US$ 1075).
Infringement of Geographical Indications
The remedies relating to the infringement of Geographical Indications are similar to the remedies relating to the infringement of Trademark. Similarly, under the (Indian) Geographical Indications of Goods (Registration and Protection) Act, 1999, falsification of a Geographical Indication will carry a penalty with imprisonment for a term which may not be less than six months but may extend to three years and with fine which may not be less than INR 50,000 (approx. US$ 1075) but may extend to INR 2,00,000 (approx. US$ 4300).
Administrative Remedies against IPR Violations
Border Control Measures
Enforcement under the (Indian) Customs Act, 1962
The Government of India under Section 11 of the (Indian) Customs Act, 1962, is empowered to prohibit importation and exportation of goods of specified description, if it deems necessary to do so. The provision, inter alia, empowers the government to prohibit the import or export of goods for ‘the protection of patents, trademarks and copyrights. The goods imported in contravention of the provisions of the Customs Act or any other laws for the time being in force are liable to be confiscated. In this regard, a customs officer is empowered to inspect any premises, conveyance, x-ray any person and effect search and seize in case where they have reasons to believe that the goods are of contraband nature. They can also investigate or interrogate any person and arrest him.
Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007
India has notified the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. The rules comply with border measures as required by the TRIPS Agreement empowering the Customs Officers to enforce IPR over the imported products. Actions under Customs Act are independent to the remedies provided under various statues on Intellectual Property. As per Rule 2(b) of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, Intellectual Property includes patents, designs, and geographical indications together with trademarks and copyrights. Under the above Rules, a notice by way of an application has to be filed along with supporting documents, including:Proof of ownership of the Intellectual Property;
Grounds for the suspension of release of the goods allegedly infringing IPR;
Details of consignment and prima facie evidence of infringement;
Description of goods with sample, model or photograph of the genuine product; and
Name of customs airport/ customs port/land customs port/ land customs satiation.
Upon receipt of the Application, in the prescribed format, the Custom Authorities may register the Complaint and enforce Border Control measure for the protection of the Intellectual Property Rights. It is important to note that this right is not unfettered. Certain provisions have been also made and an elaborate procedure has been laid down for the release of the seized goods upon an application of the importer of the goods.