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Saturday, July 23, 2011

Intellectual Property Enforcement in India

In India there are multiple statues dealing with Intellectual property enforcement and issues. India also follows common law principals in dealing with IP issues. The statutes dealing with Intellectual Property matters in India are:
1. Trademarks Act, 1999 and Rules there under
2. Copyright Act, 1957 and Rules there under
3. Patents Act, 1970 as amended by Patents (Amendments) Act, 2005 and Rules there under
4. Designs Act, 2000 and Rules there under
8. Geographical Indication of Goods (Registration & Protection) Act, 1999 and Rules there under
9. Semiconductor, Integrated Circuit Layout Design Act, 2000 and Rules there under
10. Plants Varieties Protection and Farmers’ Rights Act, 2000 and Rules there under
11. Information Technology Act, 2000 and Rules there under
12. Customs Act, 1962 and Rules there under

Besides the above, India also follows common law for protection of Intellectual property rights.

Patent Infringement:
Patent infringement proceedings can only be initiated after Grant of patent in India but it may include claim retrospectively from the date of publication of Patent in Indian Patent Journal subject to law of limitation. Under the Limitation law does not allow action/suits in respect of matter where cause of action had arisen more than three years from the date of suit.

Acts constituting infringement of Patent Rights: -
• Making
• Using
• Selling
• Distributing
• Importing
• Offering any of the above
All persons or incorporations directly or indirectly involved in any of the above stages may be held liable for infringement.

Appropriate forum:
A suit for infringement has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen. However, as soon as a counter claim for revocation of patent is filed against the suit for infringement of patent, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to High Court for decision.

Burden of proof
The onus of establishing the infringement is on the plaintiff. However, in case of patent involving a process for obtaining a product where the plaintiff first establishes that the products obtained are identical, the court may shift onus on the defendant.

Interim Injunction:
The Court may also allow interim injunction against the infringer.

Defences to Infringement of Patent in India
The following defences are available in India as a defence in Patent Infringement:
1. Any of the grounds under which Patent can be revoked
2. By govt of India or for Govt. of India for its own use
3. Experiment or research
4. Imparting instructions to pupils
5. For Patent in respect of Medicine or drug, for its own use of Govt. of India, for distribution in Govt. Dispensary and hospitals or by gazette notifications to other dispensaries, hospitals and medical institutions.


Enforcement of Trademark Rights

Under Indian Laws statutory protections is available to both registered marks as well as unregistered marks. In respect of trademarks Indian law provides both civil as well as criminal remedies for taking action against any infringement of a trademark.

Appropriate forum:
A suit for infringement of trademark has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen.

Before Trademark Registry- Administrative Remedy
1. Opposition (before the Registrar)- Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3 months time.

2. Cancellation (before the Registrar as well as Appellate Board)- Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and non-use till the cancellation petition.

Before Courts- Civil Remedy
Under common laws, the proprietor of a trade mark, whether registered or unregistered, may sue for passing off in respect of any trade mark used by defendant that is identical with or deceptively similar to his trade mark. The registered proprietor also has the remedy to take infringement action.

1. Injunction- Ex parte/ permanent
2. Damages
3. Anton Pillar Order,
4. Seizure of goods
5. Rendition of accounts

Before Courts- Criminal Remedy
Besides Civil remedies, the proprietor of the trademark as well as licensed users also have the option to initiate criminal prosecution against the infringers etc. Following acts have been recognised as offences, against which a criminal complaint can be registered:-
• Falsifying a Trade Mark;
• Falsely applying a Trade Mark;
• Making or possessing instruments for falsifying a Trade Mark;
• 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;
• 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.
Procedure and punishment
The complaint for any of the above offences can be made/filed before the Magistrate within whose territorial jurisdiction the offence is committed.

Besides confiscation of goods and machinery, the Code of Criminal Procedure, 1973 also provides for imprisonment starting from 6 months to 3 years for the offences or fine or both.

Confiscation of imported goods bearing counterfeit marks

Indian Customs Act, 1962 provides for confiscation of imported goods bearing counterfeit marks if upon a representation made to Chief Customs Officer, he has reasons to believe that the alleged goods bear a false/ counterfeit Trade Mark. The Chief Customs Officer may require the importer of the goods or his agent to produce any documents in their possession relating to said goods along with informations as to the name and address of Consignor as well as importer of said goods and may initiate proper action for non compliance or offence.

Trans-border Reputation
Trans-border reputation of trademarks is well recognised and accepted in India even if said mark is not registered in India.
Enforcement of Copyright
India is a member of the Berne Convention and TRIPS, therefore owner of copyright from another member country will get same copyright protection in India. However, the duration of copyright shall not exceed the original duration in the member country.

Infringement of copyright
Copyright in a work is deemed to be infringed when any person, without a license granted by the owner of the copyright does anything, the exclusive right to do which is by the Act conferred upon the owner of the copyright.

Acts Constituting Infringement of copyright
The following acts if done or authorised to be done by someone else, without consent or permission of the copyright owner, are considered as infringement of copyright:
i) Reproducing the work in any material form;
ii) Issuing copies of the work to the public not being copies already in circulation;
iii) Including the work in any cinematographic film;
iv) Making an adaptation of the work ;
v) Doing any of the acts specified at (i) to (iii) above in relation to adaptation of work
vi) Communicating the work to the public, if aware that such act shall amount to infringement of copyright
vii) Making, selling, letting on hire, distributing, importing or holding trade exhibits in public of infringed work.
Appropriate forum:
A suit for infringement of copyright has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen.

Test to determine infringement
One of the surest test to determine whether or not there has been a violation of copyright is to see if the trader, spectator, or the viewer after having read or seen both the works would be clearly of the opinion and get an unmistakable impression that the subsequent work appears to be a copy of the first.

Before Copyright Registry- Administrative Remedy
Registrar of Copyright has the power to ban import of infringing copies into India and delivery of infringing copies of copyright work confiscated earlier from infringer to the owner of the copyright on an application made by the owner of copyright or his duly authorized agent.

Before Courts- Civil Remedy
The owner of the copyright has the following remedies against infringement:

1. Injunction- Ex parte/ permanent
2. Damages
3. Anton Pillar Order
4. Seizure of goods
5. Rendition of accounts

Before Courts- Criminal Remedy
Copyright Infringement is a cognizable offence (non-bailable offence) the offence of infringement of copyright is punishable with imprisonment, which may extend from a minimum 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 minimum one year and minimum fine is one lakh rupees.


Enforcement of copyright in Designs

Appropriate forum:
A suit for piracy of design has to be filed in a District court within whose territorial jurisdiction the cause of action has arisen. However, as soon as any ground as to cancellation of design is taken in said suit or any other proceedings, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to High Court for decision.

Piracy of Design
Following acts without consent or license from the registered proprietor amount to piracy of registered design:
1. Apply or cause of apply to any article in any class in which design is registered, the design or fraudulent or obvious intimation thereof for sale;
2. Import any article in any class in which design is registered, the design or fraudulent or obvious intimation thereof;
3. Knowingly publish or expose or cause of publish or expose for sale an article in any class in which design is registered where design or fraudulent or obvious intimation thereof has been applied.

Damages towards piracy of design
For any piracy of registered design the defendant has to pay sum up to Rs. 25,000 towards the contravention. However maximum damages allowed are Rs. 50,000 in respect of a single design.

Injunction for design right violation
Besides awarding the damages the proprietor may also seek injunction against repetition of contravention.

Defences to piracy of design in India
The defences available for defence in piracy of design is are any of the grounds under which design can be cancelled.

Industrial Design law and Practice India

As per Indian Designs Act, 2000, “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in 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; but does not include any mode or principal of construction or anything which is in substance a mere mechanical device and does not include any trademark, property mark and copyright as defined under the Indian laws.

What Designs are Registrable
Only those designs that are new or original are subject matter of registration in India. Designs which have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration. Further no copyright in the design shall vest in Applicant if more than 50 copies of the design has been manufactured commercially. A design is not registrable if it is not significantly distinguishable from known designs or combination of designs or if it comprises scandalous or obscene matter.

Design Applications in India
Design application in India can be classified under two categories depending upon their priority claim.
1. Ordinary design application without any priority
2. Conventional design application- has to be filed within 6 months from date of filing of conventional application

In case of conventional design application, certified copy of the priority document has to be filed within 3 months from the date of filing of application in India.

Design offices in India
There are four design office in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before the design office within whose territorial jurisdiction the agent/ attorney for applicant is located.

Design filing requirements in India

Following are the basic requirements for filing an ordinary design application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class & Subclass according to Locarno classification
3. Title of the design
4. 4 sets of Photographs/ drawings/ tracing with various views (top, bottom, front, back, side/s and perspective views) of size atleast 13 by 10 cms
5. Statement as to novelty
6. Representations illustrating the views of the article wherein the originality resides

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.
Conventional Design filing in India
Following are the basic requirements for filing a conventional design application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class & Subclass according to Locarno classification
3. Title of the design
4. 4 sets of Photographs/ drawings/ tracing with various views (top, bottom, front, back, side/s and perspective views) of size atleast 13 by 10 cms
5. Statement as to novelty
6. Representations illustrating the views of the article wherein the originality resides
7. Details of priority, if any, including application number, date of filing and country of filing

Power of authority has to be stamped as per Indian Stamps Act and can be filed later (before or along responding to official letter). Notarisation is not mandatory.

Design prosecution in India
Design prosecution in India involves following stages:
1. Filing of application & issuance of receipt of fee along with application number
2. Issuance of official acknowledgement
3. Issuance of Examination report with objections, if any ordinarily within 2-4 months of filing of application
4. Responding to Examination report within 6 months from date of filing of application in India which can be extended further by 3 months on payment of additional fees and request before expiry of 6 months from date of filing
5. Hearing, if any
6. Acceptance of application
7. Issuance of Registration certificate

Term of Design Registration
The term of registration of copyright in Design is for 15 years in total. The registration is valid initially for a term of 10 years and can be renewed for a further period of another 5 years.

Renewal of designs
A registration of design can be renewed for a further period of 5 years after expiry of initial registration of 10 years

Copyright Law and Practice in India

Copyright is a combination of various rights that allows owner of copyright the exclusive right to print, distribute, and copy the work and to prohibit others from doing the same without his consent. It is an original expression of an idea that is subject matter of copyright. Copyright is provided automatically to the author of any original work covered by the law as soon as the work is created. The author does not have to formally register the work and extends to unpublished as well as published works.

Copyright extends to original literary (including computer programmes), dramatic, musical, artistic, cinematographic films and sound recording.

License or assignment
Copyright is a moveable property can be transferred or can be assigned or licensed for a consideration.

Copyright office in India
The only Copyright office in India is located at New Delhi. All Indian and foreign applications have to be filed in New Delhi office for copyright Registration.

Copyright filing requirements in India

Following are the basic requirements for filing of a Copyright application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. Class and description of work
3. Statement of further particulars
4. Nature of applicant’s interest in copyrighting the work
5. Title of work
6. Language of the work
7. Details of publication of work, if published, including name, address, nationality of publishers
8. Details as to owners of various rights in the work comprising the copyright, including extent of their right and particulars of assignment and license, if any
9. Name, address, nationality of other persons, if any authorised to assign or license the work comprising the copyright.
10. Location of work including name, address, nationality of person in possession of work, in case of an artistic work and completion of year in case of architectural work
11. Certificate from Registrar of trademarks if the artistic work is used or capable of being used in relation to any business
12. 5 copies of the specification (physical form or electronic form)

Term of Copyright
1. In published literary, dramatic, musical and artistic works (other than a photograph) published during lifetime of author- 60 years from first day of following year in which the author dies.
2. In literary, dramatic, musical and artistic works (other than a photograph) published anonymously or pseudonymously- 60 years from first day of following year in which the work is first published. Duration as explained in serial number 1 above, if identity of author disclosed before expiry of term of copyright.
3. In literary, dramatic, musical and artistic works (other than a photograph) published posthumous- 60 years from first day of following year in which the work is first published.
4. In photograph - 60 years from first day of following year in which photograph is first published.
5. In Cinematographic films- 60 years from first day of following year in which film is first published.
6. In Sound recording - 60 years from first day of following year in which sound recording is first published.
7. In works where Government, public undertaking or international organisation is first application - 60 years from first day of following year in which work is first published.
8. In Broadcasting - 25 years from first day of following year in which broadcast is first made.
9. In Performance - 50 years from first day of following year in which performance is first made.

In case of foreign works, the term shall not exceed the term for which the work is originally protected in the country of first publication.

Exception to infringement of copyright
A fair dealing with literary, dramatic, musical and artistic works (not being a computer programme) for private use including research including criticism or review of the work, for purpose of reporting in a newspaper, magazine or similar periodical or by broadcast, sound recording or by photographs or for purpose of a judicial proceeding or for purpose of reporting for judicial proceedings or for instruction for purpose of education or examination.

Licensing and Assignment
Owner of the Copyright can license as well as assign his work. The assignment has to be in writing and must clearly identify the work, duration and territorial extent of such assignment. In case of work under employment, the employer shall be the owner of the work in absence of any agreement to contrary.

Compulsory Licensing
Compulsory Licensing can be invoked under certain circumstances for both published as well as unpublished works. Compulsory licenses can also be sought for the purposes of production and publication of the translation of works.

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