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IPR Enforcement in India

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IPR Enforcement in India

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    1. IPR Enforcement in India By Ruchika Sukh, Advocate K & S Partners

    3. Enforcement of IPRs in India LAWS ARE ONLY AS GOOD AS THEIR ENFORCEMENT

    4. IP Enforcement-Remedies Civil Infringement Passing off Criminal Administrative Technological measures ALL CAN BE PURSUED SIMULTANEOUSLY

    5. Civil Litigation- Objective To provide compensation to the right holder To prohibit future infringement Appropriate disposal of infringing material and all tools/ plates / dyes used for manufacturing the same.

    6. Civil Action: Reliefs Injunctions against future violations Civil raids & Seizures Damages OR Accounts of Profits Delivery up/ Discovery of infringing material / documents Preservation of assets Copyright owner- Infringing material is deemed to be his property.

    7. Interim / Interlocutory Injunction Often the real remedy Objective: To maintain status quo Time is of essence Factors considered in granting : Prima facie case Balance of convenience Irreparable injury if injunction not granted Gujarat Bottling Company v. Coca Cola 21 IPLR 201

    8. Interlocutory injunction Statutory recognition Importance is also recognized by the judiciary Landmark Supreme Court judgments

    9. Wander Ltd. & anr. vs. Antox India P. Ltd. Supreme Court on interlocutory injunctions: “Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of a legal right asserted by the plaintiff & its alleged violation are both contested… The object is to protect the Plaintiff against injury by violation of his rights for which he could NOT adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial.

    10. Wander Ltd. & anr. vs. Antox India P. Ltd. Supreme Court on Balance of Convenience: “The need for such protection must be weighed against the corresponding need for the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately be compensated. The Court must weigh one need against another and determine where the balance of convenience lies.”

    11. Midas Hygiene Industries P. Ltd. V. Sudhir Bhatia & Anr. Supreme Court… “…in cases of infringement either of trademark or of copyright normally an injunction must follow. Mere delay in bringing the action is not sufficient to defeat grant of injunction in such cases…the grant of injunction also becomes necessary if if it prima facie appears that the adoption of the mark itself was dishonest”.

    12. Lakshmikant V. Patel vs. Chetanbhat Shah Supreme Court: “In an action for passing off it is usual, rather essential to seek an injunction, temporary or ad-interim” “proof of actual damage is not essential… likelihood of damage is sufficient” “an absolute injunction can be issued restraining the defendant from using or carrying on business under the Plaintiff’s distinctive trademark”.

    13. Enforcement of IPRs - Trademarks Indian Courts have applied and expanded principles of trans-border reputation even if: The Plaintiff has no presence in India The goods of the defendant are entirely dissimilar (dilution principle recognized) Provided knowledge of the mark acquired through various sources of trans-border reputation

    14. Enforcement- Domain names M/s Satyam Infoway Ltd. V. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145 SC has held that domain names are subject to the legal norms applicable to other intellectual properties, such as trademarks. Yahoo Inc. v. Akash Arora 1999 PTC 201 SC applied general trademark law to the internet.

    15. Ex Parte Order When the matter is extremely urgent At a preliminary hearing of the interim application without notice to the answering defendant. Granted before the motion for interim injunction is fully heard but for a limited period only. After grant of ex parte injunction, the Court must proceed with disposal of the interim injunction application after the defendant has entered appearance.

    16. Ex Parte Orders Injunction; Discovery of documents; Preserving of infringing goods, document of other evidence related to the subject matter of the suit; Restraining the defendant from disposing off his assets in a manner which may adversely affects rights of the IP owner to claim damages, costs or other pecuniary remedies.

    17. Anton Pillar Order Anton Pillar v. Manufacturing Process (1976) RPC 719 Similar to ex parte interlocutory order After a hearing in camera, Court authorizes plaintiff to inspect premises of defendant and take inventory of the offending material

    18. Anton Pillar Orders Sensitive in nature Pre conditions for grant: Extremely strong prima facie case Damage (potential or actual) very serious Clear evidence that defendants have in their possession, incriminating document/ material which they may destroy.

    19. John Doe Order Court appointed commissioners to enter the premises of any suspected party and collect evidence of infringement. Suspected party may not be named in the suit. Indian Courts have conferred expanded powers to commissioners- Roving commissioners Ardath Tobacco Co. Ltd. vs. Mr. Munna Bhai & Ors.

    20. Mareva Injunction Freezing order Prevents the infringer / offender from removing / disposing of assets in which the gains from infringement have been invested. Aim- unjust enrichment of the defendant and to ensure payment of damages to Plaintiff

    21. Final injunction To ascertain rights of the parties Remedies for Breach of injunction Police assistance Assistance of administrative bodies Contempt proceedings

    22. Damages / Account of Profits These are mutually exclusive alternative remedies Account of profits- An equitable relief Plaintiff adopts defendant’s acts as his own. Damages- for the losses suffered by the Plaintiff on account of the defendant’s acts

    23. Damages- recent trends Time Inc. vs. Lokesh Srivastava Punitive damages awarded for the first time – Rs 5 lakhs Distinction between compensatory damages and punitive damages was made out.

    24. Time Incorporated vs. Lokesh Srivastava Delhi High Court: “The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas, punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong-doers that law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not arty to the lis but suffer on account of the breach”

    25. Damages- recent trends Microsoft Corporation vs. Yogesh Papat & anr. 2005 (1) CTMR 424 Highest costs and Damages ever awarded for IP infringement by Indian Courts Approximately Rs 20 lakhs

    26. Criminal Remedies- TM Falsification of Trademarks / Infringement of copyright is a criminal offence A complaint may be filed before a Magistrate; OR Police can register an FIR and prosecute directly; (statutory requirement to obtain the Registrar’s approval. Registration is not a requirement.

    27. Criminal Remedies- TM/ CR Cognizable offence Imprisonment- 6 months to 3 years Fine- Rs 50,000 to 2 lakhs Enhanced penalty on subsequent convictions. Seizure, forfeiture and destruction of infringing goods/ material for placing before the Magistrate.

    28. Civil vs. Criminal Less hassle for the plaintiff Jurisdictional advantage Interlocutory Injunctions Damages Possibility of settlement However… No deterrence No fear factor- no arrest Expensive & lengthy

    29. Administrative Remedies Indian Customs Act, 1962 Deals with import/ export of goods including protection of patents, trademarks and copyrights. Confiscation of infringing material by Excise Authorities Restrictions against parallel importation of goods

    30. Technological measures Holograms Electronic devices Encryption Anti-copy devices

    31. Mechanisms for effective enforcements Political will to strictly enforce the law Legal power and willingness to conduct secret raids without notice to the infringer Legal power and willingness to seize all infringing products + machinery and business records

    32. Mechanisms for effective enforcements Willingness to follow through with quick prosecution of damage awards. Willingness to impose deterrent fines and jail terms (to act as scare crows against large manufacturers and organized crime syndicates) Legal power and willingness to impose preliminary injunction with severe penalties.

    33. Mechanisms for effective enforcements Criminal proceedings must be fast and fair Legal power to confiscate and destroy infringing products.

    34. Enforcement of IPRs – Case Studies.

    35. Enforcement of IPRs – Case Studies.

    36. Enforcement of IPRs – Case Studies.

    37. Enforcement of IPRs – Case Studies.

    38. Enforcement Blues Judicial/administrative Delays Lack of ‘Damages Culture’ – no deterrence for infringing conduct Lack of effective border enforcement measures Police – political interference, corruption, lack of technical expertise

    39. Impediments to Enforcement Police – Political interference Corruption Lack of technical expertise/training Lack of follow up Delay in case preparation Delay in commencement of prosecution

    40. Impediments to Enforcement Customs/Border Measures No effective mechanism available under customs law IP offences generally seen as private offences Lack of training/technical expertise And of course, corruption and political interference

    41. BUT … All is not lost Courts are by and large fair and pro active Special IP (cells) set up in major cities and suo moto raids being carried out Code of Civil Procedure amended to ensure expedited trial

    42. BUT … All is not lost Industry specific bodies formed to fight piracy NASSCOM-BSA - Software Piracy IMA - Music Piracy IPRS/PPL - Sound Recording/ Performance Piracy With many success stories to their credit!

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