INDIAN IP


“THERE 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.”


develop robust mechanisms for reporting the availability of counterfeit products.


Conclusions


• Trademark infringement and passing-off action brought by Pfizer against a company trading as Pifer Pharmaceutical Pvt Ltd and also running a website using the domain PiferPharma.com. Te court granted an injunction restraining the party from using the trade name and domain.


Trademark office goes digital


Te digital environment also had an impact on the Trade Mark (TM) office. Te TM office is now printing trademark journals in electronic format. Te journals are made available online on the TM registry website. Tis allows users to search for marks quickly using computer technology and also reduces the backlog at the TM office, as more marks can be published in one journal. Te TM registry database has been made available for online searching, without the need for prior registration or payment of search fees. Previously, in order to carry out an online search it was necessary to register and pay a fee of approximately $10.


Improvements have also been made to the registered trademark and application status information available on the website. In particular, the TM registry is now scanning and uploading all documents online including examination reports, Trademark Journal publications and registration certificates. Te TM registry is also taking steps to become a paperless operation.


Piracy issues


In the ‘electronic age’, computer technologies have made the job of right owners in the


music and film industry quite challenging, in particular the issue of file sharing through peer to peer (P2P) networks. Te debate as to whether harmonisation of law, technological development, or consumer awareness and education are the solution continues unabated. In reality it is through a combination of all these that the IP holders stand some chance of finding commercially viable solutions.


Developing a strategy


Te problem of counterfeiting and piracy is multi-faceted and complex. Finding solutions will ultimately require both cooperation and innovation on the part of government, industry and IP holders. In the meantime, it is important that IP owners have a clear strategy.


Secure your rights


Although well-known marks have statutory protection in India, it is always advisable to register your mark, taking into account both present and future business plans.


Invest in investigations


Reliable and timely information is key to effective enforcement. A trained investigator can play a vital role by identifying production and storage sites, enabling a successful ‘raid’ and the gathering of crucial evidence.


Educate stakeholders


Spread awareness within the company about counterfeit and/or lookalike products and


Ranjan Narula founded Ranjan Narula Associates (RNA) in 2004, and is now its managing partner. He has 20 years’ post qualification IP experience, both contentious and non-contentious, working in-house in the legal department of Burmah Castrol (now BP) for more than three years, and as a partner of leading international IP consultancy, Rouse, for 10 years.


World Intellectual Property Review January/February 2012 6


Although action against small scale manufacturers may not seem worthwhile, taking steps to curtail counterfeiting at an early stage can prevent the activity developing and deter other potential counterfeiters.


As in any other developing country, working with law enforcement authorities and courts in India can be quite challenging. However, as long as IP holders are clear about their objectives and have an appropriate strategy in place, it should be possible to achieve the desired result. n


Ranjan Narula is the founder of the specialist IP law firm, Ranjan Narula Associates. He can be contacted at: rnarula@indiaiprights.com


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