Indian Intellectual Property Laws - Intellectual Property Enforcement

IP Enforcement

Intellectual Property Enforcement

Introduction

The general laws in relation to Intellectual Property Enforcement in India are mainly the following:-

The Code Of Civil Procedure
The Indian Penal Code
The Civil and Criminal Rules of Practice

While Civil Procedure Code provides for the civil remedies and enforcement through civil courts, the Indian Penal Code provides for penal remedies. The rules of practice of the trial courts, High Courts and the Supreme Court of India set the finalities of the enforcement procedure.

India follows common law tradition and judicial precedents do have binding force. Hence the decisions of the Supreme Court bind the lower judiciary of the country.

The Intellectual Property Laws do provide for statutory enforcement mechanisms. The most important of the Indian Intellectual Property Laws are:-

The Patents Act, 1970
The Trade Marks Act, 1999
The Copyright Act, 1957 &
The Designs Act, 2001

The above legislations are supported by the relevant Rules there under and these rules are:-

The Patents Rules, 1972 as amended by the Patents (Amendment) Act of 1999
The Trade Rules, 2001
The Copyright Rules, 1958 &
The Designs Rules, 2000

The main post WTO Intellectual Property legislations are:-

The Geographical Indications Act, 1999
The Semi Conductors Integrated Circuits Layout – Design Act, 2000

The Geographical Indications Rules provide for the administrative mechanisms for registration and enforcement of Geographical Indications. The Semi Conductor Integrated Circuits Layout Design Act is yet to have its rules to support the administrative mechanism there under.

The Information Technology Act, 2000 also plays an important role in relation to areas of inter-phase between Information Technology and Intellectual Property Rights.

All the above-mentioned legislations provide for in-built enforcement mechanisms and detailed procedures there of.

Introduction

A suit for enforcing a patent has to be filed before a District Court having jurisdiction to try the suit. The right to move the court of law to enforce a patent is vested with any person who holds a valid claim on the subject matter of the patent. The relief that a court may grant in a patent infringement suit, would be either damages or account of profits.

The Act does not define what constitutes an infringement of a Patent. In deciding whether an act amounts to infringement of a patent courts generally take into account various factors, which include: -

The scope of the claim
Whether the act amounts to any of the recognized rights under the scope of the Patent
Whether the alleged act of infringement constitutes an infringement of the monopoly recognized under the patents.

The onus of establishing the infringement is on the plaintiff. Under certain circumstances the onus of proving an infringement of a process claim is shifted to the defendant.

Apart form the actual infringer a person who is indirectly connected with the manufacture or sale of the article may also be construed as an infringer. The following are the acts that would be taken into account for deciding whether an infringement has been committed or not: -

Making
Using
Exercising
Selling
Distributing

the invention.

A suit for infringement of a patent can be instituted only after the sealing of the patent. Damages caused in respect of infringement during the period between the date of advertisement of acceptance and the date of Sealing may be cleared in the suit. In an action for infringement of a patent a defendant may plead any of the following defenses.

Plaintiff is not entitled to sue for infringement
Denial of infringement
License to use the invention express or implied
Estoppel
Claims invalid on account of lack of novelty and non-obviousness
Existence of an unlawful contract
Innocent infringement in cases against a claim for damages or account of profit

It is common and possible for the plaintiff to move an interim application for temporary injunction. The court may on the basis of prima facie evidence grant a temporary injunction restraining the infringer from working the invention. The defendant in such instance is entitled to make an appeal against an interim order of the Court. The procedure concerning infringement actions must confine to the Civil Procedure Code if the suit is filed before a district court and if the matter is before a High Court the rules of practice of that court also shall apply. There is no time frame or cost frame prescribed for these legal remedies in India. The Cost frame in relation to the official fee payable at the court and the fee to be deposited for claiming damages are quantified. One of the main reasons for a possible delay in getting orders in a patent infringement suit is the provision for preferring appeals from interim orders of Trial Courts. This makes the main suit to remain pending without entering the trial stage and final orders.

Trade Marks

Under Trade Marks Act, 1999 both civil and criminal remedies are available for taking action against infringement of your client’s trademark.

Civil Remedy

The Act provides that no action can be taken for infringement of an unregistered trademark in India. However, registration of a trademark does not affect any rights acquired under common law by the use of such mark. Therefore, in case of an unregistered trade mark, common law rights have been protected whereby the proprietor of a trade mark, whether registered or unregistered, may sue for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, in the appropriate Court in India. Further it has to be established that the acts, actual or threatened, of the defendant are such that they are likely to result in passing off the goods of the defendant as the goods of the plaintiff.

The issues arising in a passing off action are as follows:

Whether the plaintiff has established a goodwill or reputation in connection with a business, profession, service or any other activity, among the general public or among a particular class of people, prior to the first use of the defendant.
Whether the defendants’ activities or proposed activities amount to a misrepresentation which is likely to injure the business or goodwill of the plaintiff and cause or likely to cause damage to his business or goodwill.
Whether the defendant succeeds in one or more of the defences set up by him.

The Relief the Plaintiff is entitled to:

The relief which can be granted by a court in any suit for passing off includes an injunction subject to such terms, if any, as the court thinks fit and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringement labels and marks for destruction or erasure. The judicial precedents have established the following: -

I. In considering the balance of convenience, factors favourable to the plaintiff are:

the plaintiff should be the first in the field;
should institute proceedings without delay;
plaintiff has built up goodwill by expending large sums in advertising;
injunction will not prevent defendant from marketing his product but it will only prevent him marketing it in such a way as to suggest that it is the same as the plaintiff’s; and
the plaintiff has not merely an arguable but a prima facie case.

II. Regarding reliefs it is established that damages recoverable at law at times may not be adequate remedy to the plaintiff if the defendant is not restrained and the plaintiff ultimately succeeds at the trial in the following situations: -

if there is a risk of loss of goodwill (goodwill lost may be goodwill lost for ever),
if it is difficult to ascertain the loss of sales to the plaintiff, and
if the defendants’ product is inferior.

In the above instances Damages would not be an appropriate remedy because it would be exceedingly difficult to ascertain what proportion of the plaintiffs’ trade would be lost through passing off as compared with lawful competition.

Damages would also not be an appropriate remedy if the plaintiffs have an established business which is or may be under threat and the defendants have only just started to trade in competition, the balance of convenience would favour protection of the relatively long established against the new interloper.

According to the new meaning of passing off even if as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the plaintiff is there then the relief shall be granted.

Transborder Reputation

The Indian judicial precedents have widely recognised and accepted the transborder reputation of the Marks even if they are not registered in India.

Criminal Remedy

The Act also provides for offences relating to a trademark, whether registered or unregistered. The Trade Marks Act enumerates the following offences:-

Falsifying a Trade Mark;
Falsely applying a Trade Mark;
Making or possessing instruments for falsifying Trade Marks;
Applying false trade description;
Applying false indication of country of origin;
Tampering with an indication of origin already applied to goods;
Selling goods or possessing or exposing for sale of goods falsely marked;
Removing piece goods etc.
Falsely representing a trade mark as registered;
Improperly describing a place of business as connected with the Trade Marks Office;
Falsification of entries in the Register.

The complaint for any of the above offences must be filed before the Sessions Judge, Presidency Magistrate or Magistrate within whose territorial jurisdiction the offence is committed. The Complaint may be filed by anybody either directly with the Magistrate or through the concerned Police Station. Subsequent thereto, the provisions of the Criminal Procedure Code apply with respect to the proceedings.

The accused in respect of the offences 1 to 7 above is punishable with imprisonment for a term, which may extend to 2 years, or with fine, or with both. However, if the offence is pertaining to drugs [as defined under Drugs & Cosmetics Act] or food [as defined under Prevention of Food Adulteration Act] the offender shall be punishable with imprisonment for 3 years or fine or both. Offence No. 8 is punishable with a fine. Offence Nos. 9 & 10 are punishable with an imprisonment extending upto 6 months or with fine or both. Offence No. 11 is punishable with imprisonment for a term, which may extend to 2 years, or with fine, or with both.

Impounding of Goods Bearing Counterfeit Marks

Goods bearing false Trade Marks or false descriptions are prohibited from being imported into Indian under the Customs Act, 1962 and when imported are liable to detention or confiscation. In respect of any goods imported into India, if the Chief Customs Officer, upon representation made to him, has reasons to believe that the goods bear a false Trade Mark, he may require the importer of goods or his agent to produce any documents in his possession relating to the goods and also to furnish information as to the name and address of the person by whom the goods are consigned to India and the name and address of the person to whom the goods were sent in India. Non-compliance of this requirement is punishable with fine. Though the statute refers only to registered trademark, the Customs Office is not prohibited from taking action against counterfeit of unregistered Trade Marks.

In case the client’s logo and / or slogan has artistic features and if some skill and labour has gone into the creation of the work whereby the label or wrapper containing the trade mark is first used in relation to goods in India, copyright protection can also be claimed for artistic features in the trade mark. Hence labels or wrappers or stylized marks used as trade marks would be covered under the category of original artistic works.

Since India is a member of the Berne Convention and TRIPS, the proprietor of the trademark from another member country will get copyright protection in India. To get copyright protection, what is essential is that there is reproduction of substantial part of the original copyright label.

Infringement of copyright in respect of an artistic work consists in doing or authorizing the doing of any of the following acts without the consent or licence of the copyright owner:

to reproduce the work in any material form including the depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work;
to communicate the work to the public;
to issue copies of the work to the public not being copies already in circulation;
to include the work in any cinematographic film;
to make an adaptation of the work ;
to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-cls. (1) to (4).

There have been judicial precedents wherein the Court has granted injunction for trademark as well as the copyright and also held that registration of copyright was not compulsory. Civil, criminal and administrative remedies are available against infringement of artistic copyright in trademark label etc. Civil Remedies Civil remedies for enforcement of copyright including injunction, damages, account of profits, delivery of infringing marks and damages for conversion can be invoked by owner of copyright or in certain cases, publisher of the trade mark label. Injunction is of four types: interlocutory, perpetual, mandatory or Mareva.

Temporary or interlocutory injunction is the immediate remedy against infringement available to an aggrieved party and is granted after the suit for infringement is filed, and during the pendency of the suit. For a temporary injunction the plaintiff has to make out (i) a prima facie case for the relief sought, (ii) show that the balance of convenience is in his favour and (iii) that if the temporary injunction is not granted it will cause irreparable injury to the plaintiff. If the court is satisfied that all the conditions are fulfilled, it may issue a temporary injunction to restrain the defendant from committing infringement.
The relief of perpetual or permanent injunction is granted to the plaintiff only at the conclusion of the trial to prevent the infringement of an artistic copyright in a trademark label in future.
The relief of mandatory injunction is granted at the discretion of court only at the conclusion of the trial to compel the performance of certain acts, to prevent infringement and also to compel the performance of requisite acts.
The purpose of a Mareva injunction is to protect the interests of the plaintiff during the pendency of the suit and is granted to restrain the defendant from disposing of their assets within the jurisdiction until the trial ends or judgement in the action for infringement is passed.

In case of account of profits, the infringer is required to hand over his ill-gotten gains to the party whose rights he has infringed and in the case of damages, he is required to compensate the party wronged for the losses that the party suffered. It is possible to claim any or all of the above remedies in a single infringement suit and the court can grant any or all of the above remedies against an infringer, except an innocent infringer. It is possible to file a combined suit for infringement of artistic copyright in trademark label and trade mark passing off in the District Court having jurisdiction over the place of the owner of artistic copyright in label trade mark. Criminal Remedies Under the Copyright Act, the offence of infringement of copyright is punishable with imprisonment, which may extend from a mandatory punishment of 6 months to maximum of 3 years and with a fine not less than fifty thousand rupees and extending upto two lakh rupees. For the second and subsequent conviction the minimum term of imprisonment is increased to one year and minimum fine is one lakh rupees. Copyright Infringement is a cognizable offence and an officer not below the rank of sub-inspector has the power to seize, without warrant, all copies of trade mark labels search all the places used for making infringing copies of the mark. All infringing copies of a trade mark label or plates which are used for the purpose of making such copies, can be ordered by the court to be delivered to the owner of the copyright in the mark. Administrative Remedies An application can be made by the owner of copyright in any work or by his duly authorized agent, to the Registrar of Copyrights to ban the import of infringing copies into India and the delivery of infringing copies of trade mark label which were earlier confiscated from infringer to the owner of the copyright.

There have been judicial precedents wherein the Court has granted injunction for trademark as well as the copyright and also held that registration of copyright was not compulsory.

Civil, criminal and administrative remedies are available against infringement of artistic copyright in trademark label etc.

Civil Remedies

Civil remedies for enforcement of copyright including injunction, damages, account of profits, delivery of infringing marks and damages for conversion can be invoked by owner of copyright or in certain cases, publisher of the trade mark label.

Injunction is of four types: interlocutory, perpetual, mandatory or Mareva.

Temporary or interlocutory injunction is the immediate remedy against infringement available to an aggrieved party and is granted after the suit for infringement is filed, and during the pendency of the suit. For a temporary injunction the plaintiff has to make out (i) a prima facie case for the relief sought, (ii) show that the balance of convenience is in his favour and (iii) that if the temporary injunction is not granted it will cause irreparable injury to the plaintiff. If the court is satisfied that all the conditions are fulfilled, it may issue a temporary injunction to restrain the defendant from committing infringement.
The relief of perpetual or permanent injunction is granted to the plaintiff only at the conclusion of the trial to prevent the infringement of an artistic copyright in a trademark label in future.
The relief of mandatory injunction is granted at the discretion of court only at the conclusion of the trial to compel the performance of certain acts, to prevent infringement and also to compel the performance of requisite acts.
The purpose of a Mareva injunction is to protect the interests of the plaintiff during the pendency of the suit and is granted to restrain the defendant from disposing of their assets within the jurisdiction until the trial ends or judgement in the action for infringement is passed.

In case of account of profits, the infringer is required to hand over his ill-gotten gains to the party whose rights he has infringed and in the case of damages, he is required to compensate the party wronged for the losses that the party suffered.

It is possible to claim any or all of the above remedies in a single infringement suit and the court can grant any or all of the above remedies against an infringer, except an innocent infringer. It is possible to file a combined suit for infringement of artistic copyright in trademark label and trade mark passing off in the District Court having jurisdiction over the place of the owner of artistic copyright in label trade mark.

Criminal Remedies

Under the Copyright Act, the offence of infringement of copyright is punishable with imprisonment, which may extend from a mandatory punishment of 6 months to maximum of 3 years and with a fine not less than fifty thousand rupees and extending upto two lakh rupees. For the second and subsequent conviction the minimum term of imprisonment is increased to one year and minimum fine is one lakh rupees.

Copyright Infringement is a cognizable offence and an officer not below the rank of sub-inspector has the power to seize, without warrant, all copies of trade mark labels search all the places used for making infringing copies of the mark. All infringing copies of a trade mark label or plates which are used for the purpose of making such copies, can be ordered by the court to be delivered to the owner of the copyright in the mark.

Administrative Remedies

An application can be made by the owner of copyright in any work or by his duly authorized agent, to the Registrar of Copyrights to ban the import of infringing copies into India and the delivery of infringing copies of trade mark label which were earlier confiscated from infringer to the owner of the copyright.

Designs

The Designs Law was recently amended. The Designs Act, 1911 was substituted with the Designs Act, 2000 as an outcome of TRIPS/WTO compliance. The law provides for an enforcement mechanism whereby unauthorized application of a registered design is made illegal. Also the importation for sale of any article the design of which is registered in India is made illegal. To expose or publish for the purposes of sale of any article on which a design is applied is also an illegal act as per the law in force.

The law provides for payment of damages by the infringer. The suit thereof must be instituted before a District Court. It is possible for the plaintiff to seek an interim relief and an injunction.
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