2. Intellectual property rights as a collective term
includes the following independent IP
rights which can be collectively used for
protecting different aspects of an inventive
work for multiple protection:-
Trademarks
Patents
Copyrights
Design
Geographical indications
3. IPR are largely territorial rights and are
grants of monopoly intended to give
economic incentives for innovative
activity. IPR exist in the form of
Trademark, Patents, Copyright, Design &
Geographical Indications.
5. Trademark is a distinguished symbol or
sign owned by a person or persons
pertaining to their product or services
and primarily identifies the source. A
trademark can be a word, symbol,
phrase or object which a consumer uses
to identify the product. A trademark
should be registered under the
trademark law in India so that it obtains
maximum legal protection.
6. Stage One
–Classification and Pre-Filing Search Classification and Pre-
Filing Search
Trademark 42 Classes (including 7 Classes for Service
Marks)for Service Marks)
TM 54 (Search application) three copies TM 54
TM 55 (Registrar‟s Preliminary Advice) TM 55
Public Search at Trademark Office
Stage Two
–Involves the registration Process itself
7. Trademark Application
–Issuance of Official Receipt ( TM No will be issued)Issuance of Official
Receipt ( TM No will be issued)
Examination Report
–Within three months from application.
within one months from the date of the Examination report.
Response by filing an Affidavit
Response by hearing
Response by Interview ( In case the agent has 100+pending cases).
Trademark application amendment
– TM 16 TM 16
8. Acceptance before advertisement
Publication
–Wait for Opposition for Three months. Wait for
Opposition for Three months–Opposition
Proceedings Opposition Proceedings
Registration
Initially for 10 years from the date of the
application
Renewal
9. LOCATION AND JURISDICTION
Trade Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post Office,
S.M. Road , Antop Hill, Mumbai 400037
Tel: 022-2410 1144, 24101177, 24148251, 24112211
Fax: 24120808, 24132295
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa
Trade Marks Registry, Delhi
Intellectual Property Bhavan, Plot NO.32, Section 14, Dwarka, Delhi
Tel. 011-28082915/ 16/17 Fax:
Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh,
Union Territory of Delhi and Chandigarh
Trade Marks Registry, Kolkata,
CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake,
Kolkata-700091(Telfax. 033-23677311
Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur,
Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andaman &
Nicobar Island.
10. Trade Marks Registry, Ahmedabad,
15/27 National Chambers, 1st floor,
Ashram road,
Ahmedabad-380 009.
Tel: 079-26580567
Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of
Daman, Diu, Dadra and Nagar Haveli
Trade Marks Registry, Chennai
IP building, GST Road, Guindy
Chennai-600032
Tele: 044-22502041, Fax : 044-22502042
Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka
and Union Territory of Pondicherry and Lakshadweep Island.
11.
12. India enacted its new Trademarks Act
1999 (the TM Act) and the Trademarks
Rules 2002, with effect from 15th
September 2003, to ensure adequate
protection to domestic and international
brand owners, in compliance with the
TRIPs Agreement.
13. Enactment of the Indian Trademarks Act 1999 is a big step
forward from the Trade and
Merchandise Marks Act 1958 . The newly enacted Act has
some
features not present in the 1958 Act and these are:-
Registration of service marks, collective marks and
certification trademarks.
Protection for well-known trademarks provided for
effectively.
Increasing the period of registration and renewal from 7
years to 10 years.
Allowing filing of single application for registration in more
than one class.
14. Enhanced punishment for offences related to trademarks-
sec 135 allows for exparte injunction for purpose of
recovery and sec.135(2) constrains offender from
disposing off assets in order to recover damages
effectively.
Alongside sec.135(2)(b) also paves way for preservation of
infringed goods through local commissioner support
actions.
Sec 29 provides for a remedy wherein the court can
restrain offenders from export-import as punishment for
infringement actions.
Simplified procedure for registration of registered users and
enlarged scope of permitted use.
Constitution of an Appellate Board for speedy disposal of
appeals and rectification of applications which at present
lie before High Court.
15. The new Trade Marks Act, 1999, came into
affect in India on September 15, 2003,
giving recognition to well-known trade
marks.
With the coming of the new Act, the
definition of a mark has been enhanced by
virtue of sec.2(1)(m) , “mark include a
device, brand, heading, label, ticket,
name, signature, word, letter, numeral,
shape of goods, packaging or combination
of colour or any combination thereof.”
16.
17.
18. According to sec.2(2)(zg) “in relation to any
goods or services, means a mark which has
become so to the substantial segment of
the public which uses such goods or
receives such services that the use of such
mark in relation to other goods or services
would be likely to be taken as indicating a
connection in the course of trade or
rendering of services between those goods
or services and a person using the mark in
relation to the first-mentioned goods or
services.”
19. The new Trade Marks Act, 1999, came into affect in India on
September 15, 2003, giving recognition to well-known trade
marks. Just preceding the introduction of the Act came a
landmark decision of the Supreme Court of India. In the case of
Hardie Trading Ltd. v Addison Paint and Chemicals Ltd. reported
in 2003(27) PTC 241 (decided on September 12, 2003) the
Supreme Court of India, while deciding a cancellation action
has categorically stated that the “use” of a trade mark as
understood under Indian law may not necessarily be use upon or
in physical relation to goods. The court has held that to
constitute use there is no requirement for the goods bearing the
mark to be physically present and made available in India. The
court has cited with approval law wherein it has been held that
the presence of the mark in advertisements, in invoices and in
orders also constitutes use of the trade mark. While citing with
approval the English decision in Bon Matin Trade Mark (1989 RPC
536), the court held that even the presence of the mark on price
lists and promotional literature constitutes use.
20. 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.
21. It is pertinent to note that both Civil and
Criminal remedies are simultaneously
available against the infringement and
passing off of a trade mark: -( SUMEET
MACHINE PVT. LTD VS SUMEET RESEARCH &
HOLDINGS PVT LTD-1993 PTC,Pg-75).
“Infringement action can be initiated, when a
trade mark is registered”.
“Passing off action can be initiated when a
trade mark is unregistered”.
22. Trademark provides protection to the owner of the mark by
ensuring the exclusive rights to use in to identify the goods or
services or authorize another to use it in return of payment.
Under section 28 of the Act, the registration of a trade mark shall
give to the registered proprietor of the trademark, the exclusive
right to the use of the mark in relation to the goods in respect of
which the mark is registered and to obtain relief in respect of the
trademark in the manner provided under the Act. The proprietor
of a trade mark has a right to file a suit for infringement of his
right and obtain:
1. Injunction,
2. Damages,
3. Account of profits
Sec 29 provides for a remedy wherein the court can restrain
offenders from use of registered trademark by association,
advertisement or export-import as punishment for infringement
actions.
23. The Indian judicial precedents have widely recognised and
accepted the transborder reputation of the Marks even if they
are not registered in India. The best example for this is the
famous WHIRPOOL CASE.
N.R. Dongre v. Whirlpool Corpn.[(1996) 16 P.T.C. 476 Del (DB)is
the landmark judgment which recognised the doctrine of
„transborder reputation‟ in detail. In this case, one of the
questions before the court was whether the aggrieved party
who was not selling in India could claim the benefit of
transborder reputation in the trade mark „WHIRLPOOL‟ so as to
maintain a Passing Off action in India or should its goodwill and
reputation be confined to territories in which it has proved
actual use of the trade mark in the market? Answering the
question in favour of the aggrieved party an injunction was
granted by the Hon‟ble Delhi High Court which was reaffirmed
by the Hon‟ble Supreme Court.
24. The protection provided to unregistered trade marks
is also extended to foreign marks, which have a
reputation in India on the basis of extensive
advertisements and publicity. The international
reputation of a trade mark could enable the owner
to obtain injunction in the courts of a country in which
he is not even trading. Indian courts have also
granted injunction in cases of transborder reputation.
In Jolen Inc. v. Shobanlal Jain[2005 30 P.T.C. 385
(Mad)], transborder reputation was established by
the fact that the plaintiff marketed goods in other
countries. Considering the fact that there was copy
of the plaintiff‟s trade mark, interim injunction was
granted.
25. patent is an exclusive right granted by a
country to the owner of an invention to
make, use, manufacture and market the
invention, provided the invention satisfies
certain conditions stipulated in the law.
Exclusive right implies that no one else
can make, use, manufacture or market
the invention without the consent of the
patent holder.
26. The first Indian patent laws were first
promulgated in 1856. These were modified
from time to time. New patent laws were made
after the independence in the form of the
Indian Patent Act 1970. The Act has now been
radically amended to become fully compliant
with the provisions of TRIPS. The most recent
amendment were made in 2005 which were
preceded by the amendments in 2000 and
2003. While the process of bringing out
amendments was going on, India became a
member of the Paris Convention, Patent
Cooperation Treaty and Budapest Treaty.
27. Copyright is a right, which is available for creating an original
literary or dramatic or musical or artistic work. Cinematographic
films including sound track and video films and recordings on
discs, tapes, perforated roll or other devices are covered by
copyrights. Computer programs and software are covered
under literary works and are protected in India under copyrights.
The Copyright Act, 1957 as amended in 1983, 1984, 1992, 1994
and 1999 governs the copyright protection in India.
The total term of protection for literary work is the author‟s life
plus sixty years. For cinematographic films, records, photographs,
posthumous publications, anonymous publication, works of
government and international agencies the term is 60 years from
the beginning of the calendar year following the year in which
the work was published. For broadcasting, the term is 25 years
from the beginning of the calendar year following the year in
which the broadcast was made.
28. (i) Literary, dramatic and musical work.
Computer programs/software are covered
within the definition of literary work.
(ii) Artistic work-enhanced to include Industrial
& architectural designs.
(iii) Cinematographic films, which include
sound track, musical works and video films.
(iv) Recording on any disc, tape, perforated
roll or other device.
29.
30. Design as per the Indian Act means the
features of shape, configuration, pattern,
ornament or composition of lines or
colors 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;
31. Indications which identify a good as originating in the
territory of a member or a region or a locality in that
territory, where a given quality reputation or other
characteristics of the good is attributable to its
geographical origin. The concept of identifying GI and
protecting them is a new concept in India, perhaps in
most developing countries, and has come to knowledge
in these countries after they signed the TRIPS Agreement.
It may be noted that properly protected GI will give
protection in domestic and international market.
Stipulations of TRIPS would be applicable to all the
member countries. According to TRIPS, GI which is not or
cease to be protected in its country of origin or which has
fallen into disuse in that country cannot be protected.
32. Sentence of imprisonment for a term
between six months to three years and a
fine between fifty thousand rupees and two
lakh rupees is provided in the Act. The court
may reduce the punishment under special
circumstances.
TERM OF GI PROTECTION- The registration of
a GI shall be for a period of ten years but
may be renewed from time to time for an
unlimited period by payment of the
renewal fees.
33. India is a member-state of Word Intellectual Property Organization (WIPO), an
International Organization, responsible for the promotion of the protection of intellectual
property throughout the world. India is a member of the following International
Organizations and Treaties in respect of Patents:
a) World Trade Organization (WTO) with effect from 01-01 -1995.
Berne Convention for protection of Literary & artistic works,1886.(*PARIS TEXT 1971)
b) Convention establishing World Intellectual Property Organization, (WIPO)(1996).
c) Paris Convention for the protection of Industrial Property with effect from Dec.7, 1998.
d) Patent Co-operation Treaty (PCT) with effect from Dec.7, 1998.
e) International Copyright Order, 1991 (As amended in 1999 & 2000)
34. Customs is an authority or agency in a country
responsible for collecting and safeguarding customs
duties and for controlling the flow of goods including
animals, transports, personal effects and hazardous
items in and out of a country. Depending on local
legislation and regulations, the import or export of
some goods may be restricted or forbidden, and the
customs agency enforces these rules.
In India, the basic law for levy and collection of
customs duty is Customs Act, 1962. It provides for levy
and collection of duty on imports and exports,
import/export procedures, prohibitions on importation
and exportation of goods, penalties, offences, etc.
35. The unique as well as diverse topography of
India poses a challenge not only for security
reasons but also brings about an enhanced
responsibility on customs authorities to ensure
safeguarding and for controlling the flow of
goods into the country.
While the traditional role of customs is revenue
collection mainly via taxes on imports, they are
now required to act as an IP enforcement
agency and Adjudicating body. Effective IPR
border control mechanisms helps in deterrence
of cross border transit of counterfeit goods and
in balance of interests of right holders.
38. Customs Act, 1962 prohibits import of
goods that infringe intellectual property.
Section 11 of the Act empowers the
Central Government, for the purposes
specified in subsection 11(2), to prohibit
import or export of goods of any
description by issuing a notification.
39. In India border measure are enforced by Customs Department.
Department of Revenue/Central Board of Excise and custom has
issued the notification/Rules/Circular for enforcement of IPR border
measure:-
A. Customs Notification No. 49/2007- custom (NT) dated 8-5-2007.
B. Intellectual Property Right (Imported Goods) Enforcement, 2007 dated
8-5-2007
C. Custom Circular No. 41/2007 dated 29-10-2007.
Legal Provision:
• In section 2 (n) of custom Act, 1962 empowers the Central Government
to prohibit importation and exportation of any goods for the protection
of Patents Trademarks and Copyrights by Issuing of Notification.
• Section 11 (2) (u) of Customs Act, 1962 empowers the Central
Government to prohibit importation and exportation of any goods for
the protection of any other law for the time being force by issuing of
notification.
40. The rules inter alia provide for:-
• Filing of a notice by the right holder.
• Registration of said notice by the Customs.
• Time limit for right holder to join proceedings.
• Single point for registration of the notice filed by the right
holder.
• Fees of Rs. 2000/- for every notice.
• Adequate protection to the rightful importer.
• Adequate protection to the Customs for bonafide act.
• Suo-moto action by the Customs in specific circumstances
• Disposal of the confiscated goods.
• No action against goods of non commercial nature
contained in personal baggage or sent in small
consignments intended for personal use of the importer.
41. • Import of infringing goods are prohibited under
Notification No. 49/2007- Customs (NT) subjects
to following conditions and procedures laid down
in Intellectual Property Rights (Imported Goods)
Enforcement Rules, 2007.
• Department of Revenue notifies the Intellectual
Property Rights (Imported Goods) Enforcement
Rules, 2007 on 8th of May 2007.
• The rules have been framed in the line of TRIPS
and WCO (world Customs Organization) model.
42. The counterfeit market in India is a growing menace and the following
statistics provided by FICCI account for that:
Counterfeit Trade in India
Drugs and Medicine:
15 - 20% (Rs 3000 Cr)
FMCG :
8%- 10%(Rs 7000 Cr)
Auto spares:
37% ( Rs 4500 Cr)
Music Industry:
40% ( Rs 3100 Cr)
IT / Software:
80%
Soft Drinks:
10%
Cosmetics &Toiletries:
10 – 30%
43. The Rule 2 of the rules provides definitions. It is borrowed from
the model legislation by the Geneva based World Customs
Organization, Rule 2(b) and 2(c), defining the term “intellectual
property” and “intellectual property law” respectively, indicate
that the Rules are applicable to those imported goods suspected
to be infringing rights either in a trademark, copyright,
geographical indication or patent.
India is not obligated to introduce border measures with respect
to other categories of intellectual property such as patents or
geographical indications. The extension of border measures to
other categories of intellectual property, especially to patents
becomes significant in view of the institutional incompetence of
the customs authorities to deal with complex matters relating to
patent law.
44. The Rules provide an elaborate procedure for the enforcement of
intellectual property rights of the right holders by customs
authorities. The Rules envisage the provision of notice by the
right holder to the Commissioner of Customs (or any officer
authorized on his behalf) requesting for the suspension of
clearance of goods suspected to be infringing intellectual
property.
On the registration of the notice, the Commissioner is required
to communicate to the right holder the validity period of the
registration during which the assistance by the customs authority
shall be rendered, with the minimum period being one year. Rule
4(3) of the Rules provides that all customs offices shall render
assistance to the right holder.
45. Rules 6 and 7: Enabling Provisions-
Rules 6 and 7 are the enabling provisions which empower the
customs administration to suspend the clearance of goods
infringing intellectual property rights. Rule 6 provides that after
the grant of the registration of the notice the import of allegedly
infringing goods into India shall be deemed as prohibited within
the meaning of Section 11 of the Customs Act, 1962.
Rule 7(1)(a) of the Rules empowers the customs authority to
suspend the clearance of goods on the basis of the notice given
by the right holder to suspend the clearance of goods if he has
reason to believe that the imported goods are suspected to be
goods infringing intellectual property rights. The rules further
provide for communication of the order of suspension of
clearance to both the importer and the right holder, stating the
reasons for such suspension.
46. From the date of such communication, the right
holder is required to join the proceedings before the
customs administration within a period of ten
working days (extendable to twenty working days)
failing which the goods shall be released provided
that all other conditions of import of such goods
have been complied with.
Rule 7(1) (b) empowers the customs authority to
suspend the clearance of goods suo motu if it has
prima facie evidence or has reasonable grounds to
believe that the imported goods are goods infringing
intellectual property.
47. Rule 7 of the Rules is the enabling provision empowering the Customs
administration to suspend the clearance of goods. The order for
suspension of clearance of goods under Rule 7(1) is made on the basis
of the notice given by the right holder, and this forms the basis for the
suspension of clearance. Therefore, the right holder is entitled to make
a prima facie case for infringement by virtue of the notice. However,
the importer is not provided an opportunity to be heard and he is
entitled to seek the clearance of the goods only after he receives the
communication from the customs authority under Rule 7(2).
The very nature of the order is such that the rule of audi alteram
partem must be excluded. That being said, it is imperative that the
post-decisional hearing shall take place “as soon as” the order for
suspension of clearance is made. The requirement under the Rules is
that the order of suspension must be communicated to the right holder
“immediately”.
48. The format of notice provided in the Annexure indicates that the right
holder is not required to provide evidence to establish that the goods
are infringing in cases where he does not seek to prevent the import of
a specific consignment. The right holder is required to give prima facie
proof of infringement only where the infringement by goods in a
specific consignment is alleged at the time when the notice for
registration is given. A situation where at the time when the right
holder gives the notice of registration there is no specific consignment
which infringes the rights of the applicant. The right holder in such
circumstances shall be granted the registration of the notice without
submitting any proof concerning infringement regarding a specific
consignment.
On the basis of this notice, the customs administration is required to
determine the scope of his intellectual property rights and detain goods
which they suspect to be infringing.
49. Rules 8, 9 and 10 contain provisions for examination of goods by the right
holder, supply of information to the right holder and supply of information to
the importer, respectively. Rule 8 empowers the Commissioner to allow the
right holder/importer to examine the goods, the clearance of which has been
suspended, and to provide representative samples for examination, testing and
analysis to assist in determining whether the goods are pirated, counterfeit or
otherwise infringe an intellectual property right. Rule 9 enables the right
holder to seek information such as the name and address of the importer and
such additional relevant information regarding the consignment which has
been suspended. Similarly, Rule 10 enables the importer to seek information
relating to the right holder. However, these provisions are to be applied
without prejudice to the protection of confidential information, thereby
ensuring that sensitive information regarding the importer or the right
holder is not disclosed.
50. Rule 11 provides for the disposal of infringing goods. This rule
is applicable where upon determination by the Deputy
Commissioner of Customs/Assistant Commissioner of Customs,
it is found that the goods detained or seized have infringed
intellectual property rights, and have been confiscated under
Section 111(d) of the Customs Act, 1962 and no legal
proceedings are pending in relation to such determination. The
said authority in such cases can destroy the goods under official
supervision or dispose them outside the normal channels of
commerce after obtaining „no objection‟ or concurrence of the
right holder. Rule 11 raises major concerns for the importer
since the disposal of goods by the Customs authority amounts to
a final determination of the rights, and the only remedy is to
seek monetary compensation from the right holder.
51. Central Board of Excise and Customs has issued a circular
No. 41/2007 dated 29-10-2007 which apart from
explaining various provisions of Intellectual Property
Rights (Imported Goods) Enforcement Rules, 2007, in
border security measure, place detailed procedure for
electronic registration of the notice by the Right Holders.
Salient features of the Circular 41/2007:-
• On- line recordation as a trade facilitation measure.
• 110% of value of goods Bond amount and 25% of bond
value as BG- uniformity.
• Recordation valid for 5 years (extendable thereafter on
payment of fees).
52. The menace of counterfeiting has assumed
great proportions.
The introduction of Intellectual Property
Rights (Imported Goods) Enforcement Rules,
2007 by the Central Government in exercise
of the powers conferred by sub-section (1)
of section 156 of the Customs Act, 1962
read with clauses (n) and (u) of sub-section
(2) of section 11 of the said Act, to be
applied to imported goods is certainly a
step in the right direction.
52
53. India has sought to strengthen the protection of
intellectual property through border measures, both
by legislative as well as executive mechanisms.
India has seen export diversions and
restrictions lately and also faces deficits in trade
volume due to suffering exports and export item
counterfeiting. The Indian customs laws and
regulations have protective measures for the imports
but are silent as far as exports are concerned.
However the menace of IP
Infringements and counterfeit goods is still eating into
the Indian trade scenario and export-import
structures. In order to do away with this menace a
better implementation of the custom rules in tandem
with special IPR initiatives needs to be adopted.
54. HIGH ALERTS AND EFFECTIVE PHYSICAL CHECKS AT
CONSIGNMENTS AT HIGH RISK PORTS
EXTRA VIGILANCE ON LOW RISK PORTS LIKE DIMAPUR, CALCUTTA,
ETC.
EXTENDED USE OF TECHNOLOGY BY CUSTOMS DEPARTMENT FOR
FASTER ACTION
NECESSARY FRISKING OF CONSIGNMENTS OF TOYS, BATTERIES,
APPAREL, SHOES ETC AS THEY ARE LIABLE TO HAVE HIDDEN
COUNTERFEIT GOODS
REPEAT OFFENCES SHOULD INVITE STRINGENT /RIGOUROUS
MEASURES LIKE BLACKLISTING, ENHANCED PUNISHMENT AND
SUSPENSION OF IEC ETC.
55. DATABANKS OF CUSTOM AUTHORITIES REGARDING INFORMATION OF
RECORDED BRANDS SHOULD BE WELL-SYNCED WITH ALL PORTS AS WELL
AS DRI‟S.
FREEZING OF COUNTERFEITER‟S PROPERTY SHOULD BE ALLOWED
NECESSARY INVOICING TO BE FOLLOWED BY CUSTOMS DEPT.
IMPUGNED GOODS AFTER SIEZURE SHOULD BE SAMPLED APPROPRIATELY
AND REST DESTROYED IN ORDER TO DO AWAY WITH ANY CHANCES OF
LEAKING INTO LOCAL MARKETS.
IN CASES WHEREIN IMPORTER DOES NOT JOIN THE PROCEEDINGS THE
CUSTOMS DEPARTMENT SHOULD DESTROY THE GOODS AFTER
FORMALITIES BY MAIN BRANDSHIP ARE COMPLETE.
FORMULATION OF EQUAL RULES FOR IMPORTERS AS WELL AS EXPORTERS.
56. ALL VIEWS IN THIS PRESENTATION ARE CANDIDLY PERSONAL! 56