Standing up for your rights

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Amritesh Mishra of Lall Lahiri & Salhotra offers advice on the enforcement options available to the victims of IP abuse

While patents and industrial design rights must be applied for if any protection is to be afforded, the registration of trademarks, copyrights and geographical indications is optional. However, registration is advisable for two reasons: First, it provides proof of ownership, and second, it gives the proprietor of a trademark or geographical indication the right to sue for infringement. A copyright owner can, however, sue for infringement even if the trademark is not registered.

Contrary to popular belief, it is not necessary for a trademark to be in use in India in order for it to be registered. Generally it is sufficient to demonstrate that it is known in India through advertisements or other means. The same is the case with geographical indications and copyrights, where a work need not be published in India in order to be protected.

For patents, however, it is necessary to demonstrate that the innovation is being used in India. Non-use may, in some cases, lead to revocation.

Blocking imports of counterfeit goods

In addition to registering intellectual property in India, rights holders are advised to record their copyright, trademark, geographical indication, patent or industrial design with the commissioner of customs at any port through which counterfeit goods are likely to enter the country. Protection is subsequently accorded at all ports specified in the notice.

Amritesh Mishra
Amritesh Mishra

While it may not be difficult for authorities to determine copyright or trademark infringements, in cases of geographical indications, patents and industrial designs, a judicial pronouncement by an Indian Court may be required in order for enforcement action to be taken.

If a deputy or assistant commissioner of customs has reason to believe that a consignment of goods is infringing an intellectual property right, he or she has the right to suspend its clearance. Thereafter, the importer and the right holder join the proceedings. The right holder must immediately initiate a civil or criminal action to demonstrate that the imported goods are infringing an intellectual property right.

After obtaining no objection from the right holder, and providing that no legal proceedings are pending, the infringing goods may either be destroyed or disposed of outside the normal channels of commerce by the customs authority.

Criminal action

A criminal action against an infringer can be initiated by presenting a complaint to the police or a criminal court. A complaint can be filed even against unknown persons. A competent police officer may, on being satisfied that an offence is being committed, or is likely to be committed, enter any premise to make search and seizure without a warrant. However in cases of trademarks or geographical indications, the police officer is required to seek an opinion from the registrar on the facts involved in the offence and abide by such opinion.

Punishments include imprisonment of between six months and three years and/or a fine between ₹50,000 (US$1,130) and ₹200,000 (US$4,500). The court may also order the losing party to pay for the cost of the legal proceedings. However, damages are not awarded by criminal courts.

In the case of trademarks and geographical indications, courts normally rule that the infringing goods must be forfeited to the government. For copyrights, meanwhile, infringing goods are most likely to be returned to the copyright owner.

Criminal action is not available for disputes relating to patents and industrial designs.

Civil action

Time is of the essence when taking civil action in India and the filing of a suit should never be delayed. However, Indian Courts have held that delays in bringing an action will not defeat the granting of an injunction.

The burden of proof normally rests with the plaintiff. However, in certain cases relating to process patents, the onus may shift to the defendant, who may be required to prove that his or her product was not manufactured using the protected process.

The relief available from civil courts includes the awarding of damages and various types of injunction. These include ex parte injunctions, interlocutory injunctions and permanent injunctions. Courts may also grant anton pillar and john doe orders, and in some cases mareva injunctions.

In suits relating to trademarks and geographical designs, civil courts may additionally order the destruction or erasure of infringing materials, where as in patent suits, infringing goods may be seized, forfeited or destroyed.

In cases of the infringement of industrial designs, the best remedy a plaintiff may expect is an injunction order. The maximum damages award in such cases is just ₹50,000 (US$1,125).

In all cases, the court may, at its discretion, order the payment of costs of the legal proceedings.

All suits should be instituted before the district court (or a high court with original side pecuniary jurisdiction) in the jurisdiction where the defendant voluntarily resides or carries on business. However, in copyright and registered trademark disputes, it is also possible to initiate action in a court in the jurisdiction where the plaintiff resides or carries on business.

Benefits of civil action

In most intellectual property disputes, civil action is favoured over criminal action. It provides all of the possible reliefs that criminal action may offer, but with the added benefits of civil raids and seizures and the awarding of damages. Criminal action cannot prevent future misuse by defendants, whereas a civil action has the potential to settle the dispute forever. Any defendant who does not obey an injunction order is dealt with severely by the civil courts. Indeed, in cases where criminal action is taken, it is advisable to follow up with a civil suit.

In criminal cases, there is the possibility that evidence may be tampered with or that the opposing party may collude with the prosecution or the administration. Civil proceedings, by contrast, are normally quick and fair. The civil route also has the advantage that damages may be awarded to the victim of intellectual property abuse.

Statutes governing IP rights in India:

  • The Copyright Act, 1957
  • The Patents Act, 1970
  • The Trade Marks Act, 1999
  • The Geographical Indications of Goods (Registration and Protection) Act, 1999
  • The Designs Act, 2000
  • The Protection of Plant Varieties and Farmers Rights Act, 2001

IP rights may be enforced through:

  • Technological devices including, holograms, bar codes, anti-copy systems
  • Cease and desist letters
  • Administrative action according to The Customs Act, 1962
  • Criminal action governed by The Code of Criminal Procedure, 1973 and The Indian Penal Code, 1890 (not available in patent and design disputes)
  • Civil action governed by The Code of Civil Procedure, 1908
  • Any or all of the legal measures depending upon the facts and circumstances of the case
  • Consumer education on how to differentiate between genuine items and fakes
  • Negotiations with the other side

Amritesh Mishra is an associate at the law office of Lall Lahiri & Salhotra. His practice consists primarily of trademark, copyright and patent litigations.