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INDIAN IP


where the target audience is the overseas market to small, local outfits. Typically, the operation would have a chain where a ‘rag picker’ would bring the original product, printing would be outsourced and products supplied on a cash basis. Rising consumerism and an increasing appetite for branded goods among the middle class have given a boost to the counterfeit industry. More often than not there are markets, or retail pockets, which are notorious for counterfeits of particular goods such as software or mobile phones. Traders in these markets have strong associations which collectively oppose any raid action, often organising a mob to create confusion so that, in the mayhem, counterfeit goods can be spirited away. They also seem to have their own network of informers and are often tipped off about possible search and seizure.


As a result, the role of investigators in helping companies address and control this problem is becoming very important. Companies are increasingly investing in identifying the various links in the chain so that the problem can be addressed more effectively. Te information obtained can also form the basis of an effective IP strategy, addressing issues such as target selection; enforcement options (civil or criminal); choice of forum; and the defences that may be raised by the counterfeiter.


Made in China, sold in India


In the last five years, a large volume of Chinese- made goods have entered India. In many cases goods are imported due to the difference in price and quality of counterfeit products that Chinese manufacturers are able to provide. However, at the same time, genuine branded goods meant for sale in Chinese and other Asian markets also enter India (parallel imports). IP owners need to have a strategy laid out to address this growing problem.


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“TRADERS IN THESE MARKETS HAVE STRONG ASSOCIATIONS WHICH COLLECTIVELY OPPOSE ANY RAID ACTION, OFTEN ORGANISING A MOB TO CREATE CONFUSION SO THAT, IN THE MAYHEM, COUNTERFEIT GOODS CAN BE SPIRITED AWAY.”


Customs recordation under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 is one such tool that IP owners can use to address this problem, in particular to gather intelligence on large quantities being brought into India. Te recordation is not limited to trademarks but also covers patents, copyright, designs and geographical indications. A single recordation covers 36 ports and the procedure for filing is simple and efficient.


Legal framework for dealing with counterfeit and infringing products


Although India does not have legislation dealing specifically with counterfeiting and piracy, statutory remedies (civil, criminal and administrative) exist in various legislative acts, including: Trade Marks Act, 1999; Copyright Act, 1957; Patents Act, 1970; Designs Act, 2000; Geographical Indications Act, 1999; Drugs and Cosmetics Act, 1940; Prevention of Food Adulteration Act, 1954; Consumers Protection Act, 1986; Indian Penal Code; Information Technology Act, 2000; and Customs Act, 1962.


Trade Marks Act, 1999


To ensure Trade–Related Aspects of IP Rights (TRIPS) compliance, a new Trade Marks Act was introduced in 2003. It provides remedies for infringement and passing off in relation to both registered and unregistered rights, and widens the scope of infringement and makes counterfeiting and piracy cognisable offences.


World Intellectual Property Review January/February 2012


Civil remedy: Section 29 defines infringement as “unauthorised use that is likely to cause confusion on the part of the public”. Section 135 provides for civil relief including injunction, damages, rendition of accounts and delivery up of infringing labels and marks for destruction or erasure.


Criminal remedy: Section 102 defines falsifying a mark and applying a false mark; Section 103 sets out penalties, including imprisonment for up to three years and fines of up to Rs200,000 ($4000).


Copyright Act, 1957


Te Copyright Act, 1957, makes provision for strict punishment for copyright infringement.


Civil remedy: A copyright owner can bring an infringement action where he has sufficient evidence to prove he has been aggrieved. Section 55 provides for various remedies including injunction, damages and account of profits.


Criminal remedy: Section 64 empowers police officers, not below the rank of a sub-inspector, to seize all copies of infringing works and plates used in their creation. Section 53 authorises the Registrar of Copyrights to prevent the importation of infringing copies, and to enter any ship, dock or premise where such infringing copies are alleged to be found and to order their confiscation. Section 63 provides for punishment of up to three years’ imprisonment and fines of up to Rs200,000 ($4000).


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