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Tuesday, June 23, 2015

NOTICE FOR SUSPENSION OF CLEARANCE OF INFRINGING GOODS

The Intellectual Property Rights (Imported Goods) Enforcements Rules 2007 allows registration of notice for suspension of clearance of infringing goods by Indian custom authorities, but rarely this notice is registered by Registered Proprietor/ Owners of Intellectual property rights (Right Holder).

Registration of notice allows the IP owner protection against import of infringed goods especially in case of Copyrights, Trademarks and Designs. Though Patents are also covered but they involve more technicality and expertise as compared to other IP rights. The period of protection is minimum one year unless any shorter period is demanded by the right holder.

The notice is to be filed along with certified copy of the IP right, Annexure containing details of Right Holder's rights as well as grounds for registration of notice and prescribed fee of INR 2000. An indemnity bond along with surety bond is to be supplied along with the request. Where such request is filed through an Attorney, POA should be supplied. 

Wherever required, the custom office may demand photographs or sample of the product/article/work (IP right). Where information is not provided in requisite format the Custom office may demand same from the Right holder.

Within 30 days of filing of such notice or providing of requisite information/details as demanded by custom authorities, the custom authorities have to either register such request or reject it. Once registered, the custom office shall inform the validity period of the notice, which is minimum of one year unless any shorter period is sought by right holder. Once notice is registered, the custom office notifies all custom offices covered under said notices.


Once any import of goods is suspended, the Custom office informs the right holder as well  as importer about such suspension with reasons for such suspension.


Where within 10 working days from the date of suspension of imported goods, the Right holder does not join the proceeding, the custom office may decide the matter on merit. The time limit may be extended by 10 working days by custom offices in appropriate cases.


The right holder and importer are allowed to examine the goods, even representative samples for examination, testing and analysis where felt necessary. 


Where the right holder joins the proceedings and the goods are found to be infringing the IP rights the custom officials can seize such goods. Under intimation to right holder, the seized goods would be destroyed under official supervision or disposed outside normal trading channel by custom authorities  and after obtaining NOC or concurrence from the right holder. The right holder may oppose to manner/mode of disposal by custom authorities within 20 day of information. The cost towards detention and destruction shall be borne by the right holder.


Goods of non-commercial nature contained in personal baggage or sent in small consignments for person use does not come under the purview of these regulations. 


However, in case of perishable goods such time limit is only 3 working days, further extendible to 4 working days where custom officials are satisfied and same does not affect the condition of goods.

Monday, June 22, 2015

Notice of Provisional Refusal by Indian Trade marks Registry

Since last few months Indian Trade marks Registry has commenced examination of Madrid Registration designating India. Where the Registry has any objection to the Trademark a  provisional refusal report is issued by IRDI Section and forwarded to WIPO and then WIPO notifies the Right Holder. The registry normally issues the notice of provisional refusal to WIPO within a week of issuance of same and within 15 days of receipt WIPO dispatches the notice to right holder vide registered mail.

The deadline to respond to provisional refusal is one month from the date of receipt of notice of provisional refusal by the Holder or his legal representative. The response to provisional refusal is required to be filed through an Agent (either a Trademark Agent or an Advocate) or through a representative, having address within territory of India.

A response to provisional refusal or request for reconsideration of provisional refusal, evidence in support of prior use of Trademark in India by way of Owner's Affidavit, or limiting the scope of protection or a request for hearing can be sought the Agent/ Attorney/ Representative.

Unlike the typical examination reports issued to Applicants in India, the notice of provisional refusal by Trademark Registry also provides in detail the essential provision under the Indian Trademarks Act as well as information relating to subsequent procedure.

Overall Madrid system is advantageous as Indian Trade Marks registry is not levying extra fee per additional character where description exceeds 500 characters (excluding space), though those who file Application with Indian Trade Marks registry have to pay such fee. Further, it is unclear if similarly any objection as to requirement of association would be raised by the Trade Marks registry, where right holder is also applicant/ registered proprietor of an earlier mark.

Above practices of subjecting the Indian Applicant to extra fee, clearly amounts to discrimination by Trade Marks Registry and accordingly the Sub Rule 16 of Rule 25 of the Trademark Rules, 2002 is liable to be struck down.


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