INDIAN IP


Brand owner woes Different fields of activity/business


Designs Act, 2000


To ensure TRIPS/WTO compliance, a new Designs Act was introduced in 2000. Te act confers exclusive rights on the creator of a design and provides for relief in respect of infringement. Te following acts, if unauthorised, are considered to be piracy:


• Applying, for the purposes of sale, the design, or a fraudulent or obvious imitation, to an article;


• Importing any such article for sale; or


• Publishing or exposing for sale any article, knowing that the design has been applied without the owner’s consent.


Civil remedy: A complaint must demonstrate that the alleged infringing act involves a design that is identical, or similar, to the registered design, and that it has interfered with the registered proprietor’s rights and/or caused economic loss. Section 22 provides that any person committing such an act of piracy shall be liable to pay to the registered proprietor a sum not exceeding Rs50,000 ($1000) per registered design. Te registered proprietor may also seek interim relief and an injunction.


Customs Act, 1962


Although the Customs Act, 1962, contained provisions prohibiting the import and export of infringing goods, and empowering customs to seize any such goods, it was subsequently felt necessary to strengthen these provisions, and the


government issued a notification (Intellectual Property Rights [Imported Goods] Enforcement Rules, 2007).


Under the rules, a rights holder may give notice in writing to customs, requesting suspension of any consignment that infringes its rights. Customs is bound to notify the rights holder within 30 days whether the notice has been registered or rejected. If registered, it will remain valid for five years, or the duration of the right, whichever is shorter. During that period, customs will suspend any consignment it suspects contains infringing goods, acting either on information received from the rights holder or suo moto.


Within 10 days (which may be extended by a further 10 days) of the suspension, customs will inform the rights holder, requiring it to execute a bond. If the rights holder fails to comply within the stipulated time (ie, five days, or three days in the case of perishable goods) customs will release the goods.


Once goods have been suspended, customs must, on request of either party, provide details of the other party, and other relevant information. Te rights holder is entitled to examine the goods and obtain samples for the purposes of examination.


Once infringement has been established, customs may, provided the rights holder does not object, destroy the goods under official supervision or dispose of them outside the normal channels of commerce.


One of the common problems faced by global brand owners in the Indian market is that due to the popularity of their brands they are indiscriminately copied by Indian companies and small traders for completely different or unrelated goods. Te incidence of well- known brands being used as part of corporate/ trade name is also quite common. It is quite a challenge to stop such use, particularly where the brand names is adopted for completely different or unrelated goods. Te obvious argument of the traders in such cases is that because there is no commonality of trade channels, or end users of products or services, no confusion will be caused.


What adds to the complexity of trade name disputes is that the registrar of companies and the regional directors responsible for approving company names do not appreciate the concept of dilution of well-known marks. Tus they allow companies to be incorporated in a different field of activity even if they are using a well-known mark in their trade name. Tere is no central register for partnerships or private enterprises and such firms are not required to carry out any search or obtain approval from tax authorities to adopt a name. Tus it becomes a daunting task for the IP owner to stop misuse of its trademarks as trade names.


Important court decisions


Te Indian Courts have, over a period of time, embraced international developments and handed down a number of landmark judgments that have changed the face of IP litigation. Tey have, for example, repeatedly confirmed that it is not necessary to have actual physical sale of goods in India. Te doctrine of ‘trans border’ and ‘spill over’ reputation in famous marks has been recognised by the courts. Te Supreme Court, in


World Intellectual Property Review January/February 2012 4


Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6