INDIAN IP


a trademark dispute involving medicines, held that “medicines are international in character”. So use of a mark on medicines in countries outside India may be just as relevant as use of the mark in India.


Te Supreme Court in Rameshwari Devi v Nirmala held that courts should be cautious and extremely careful while granting ex parte interim relief. While the observation was made in a case not related to IP, if this were strictly applied to IP cases it would change the face of IP litigation, as ex parte orders are oſten granted by courts in order to preserve the infringing goods, documents and other evidence and stop an obvious imitation.


Concept of costs and damages


Until recently, the concept of awarding costs and damages in IP disputes by the courts in India was not fully developed. Tere was little or no financial deterrence for counterfeiters and infringers. Generally, infringers are not likely to maintain proper records of the transactions made and so damages are difficult to quantify. Also, because the process of determining damages on the basis of actual or potential loss suffered by the rights holder is cumbersome, it oſten leads the IP holders to give up their claim. Increasingly, Indian courts are recognising a need to impose financial penalties in the form of awarding damages to discourage law breakers from violating the IP of right holders. Te courts are awarding not just compensatory damages, but also punitive damages.


In an action brought by the publisher of Time Magazine, the court awarded approximately $11,000 as punitive damages, and in an action by Microsoſt, the court awarded approximately $43,800 as compensatory damages. However, a word of caution: most of these were undefended cases and it is yet to be seen if the court will grant


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damages in cases where a party resists the claim and the basis of damage calculation. In view of the backlog of cases and the time it takes for a matter to reach trial, most IP cases settle soon aſter the preliminary injunction is granted by obtaining suitable undertakings to bind the parties.


Counterfeit goods online


E-commerce is in its infancy in India, but predictions of a boom range from pessimistic to extremely optimistic. IP holders are closely watching portals that offer goods at a discount. Brand owners realise the appeal and reach of this medium and that the counterfeiters will be the first to make money from the boom.


Te signs are already visible in the pharmaceutical trade, where counterfeiters have been taking advantage of India’s cheap generic manufacturing industry to source and/ or ship counterfeit drugs from India. Several online pharmacies targeting consumers in western countries have been found to have Indian connections. Recently, US immigration and customs, the Food & Drug Administration and the Internal Revenue Service exposed an online pharmacy racket under the names World Express Rx and My Rx for less.com, the supply chain of which went back all the way to India. In a similar operation nicknamed ‘cyber chase’, raids were carried out simultaneously in India and the US against an online pharmacy network which was headed by a father (based in India) and son (based in Philadelphia). Te modus was simple: the generic drugs were shipped from


World Intellectual Property Review January/February 2012


India to Philadelphia. Tey were repacked and sold to various e-traffickers. Hundreds of rogue websites were being serviced by this network.


Passing off services on the web


Consumers in India may not be buying goods online. However, as the number of Internet connections and users is rising, more and more people are visiting the Internet to source information. As a result, the number of cases where parties are using well-known marks to provide similar services or copying web content is also rising. Examples of cases include:


• A passing off and copyright infringement action brought by Celador against a website offering a game show identical to Who wants to be a Millionaire in Hindi, and seeking to attract advertisers to its website. Te Delhi High Court passed a permanent injunction restraining the party from running the website.


• Intel Corporation brought a contempt petition against a party trading as Pentium Computers on the basis of an email that the defendant had sent out offering computers for sale using the mark Pentium. Tis was held to be violation of an injunction order passed by the Bombay High Court.


• Himalaya Drug Co brought a passing off action against an individual who copied the database of the herbal drugs developed by Himalaya, including the pictures and format. Te court granted punitive damages and a restraining order.


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