Enforcing IP Assets: The Laws if You Are Being Copied

With India being an upcoming country appealing to business people and investors, Manisha speaks about how robust the IP legal landscape is in her jurisdiction, where there is room for improvement and what businesses should do if their IP is being infringed.

What challenges arise when trying to assert IP assets in India?

The Indian IP legal landscape and jurisprudential framework is robust and the courts in India, especially the High Courts of Delhi, Bombay, Calcutta and Madras are highly IP savvy. These High Courts have commercial courts and the judges presiding over IP matters in these courts are specialised in adjudicating IP disputes in an efficient and speedy manner and are sensitive to the IP rights of rights holders. However, most of the lower courts and district courts of other states in India are not as familiar, experienced and sensitive in handling IPR cases and in providing adequate remedies in a timely manner, which is a challenge for rights holders, especially when the jurisdiction of the case in question falls in such a state or territory.

When taking criminal action against infringers and counterfeiters through the police system in respect of unregistered trademarks and copyrights, it may be difficult to convince them to take cognizance of the IPR violation in order to move the system without a registration certificate in hand. Obtaining a remedy through criminal action may be difficult due to lack of experience and awareness, and the ignorance of the enforcement agencies as to the intellectual property of right holders.

Moreover, it is a requirement under the Trade Marks Act, 1999 that a police officer, before making any search or seizure without warrant, shall first have to obtain the opinion of the Registrar of Trade Marks on facts involved in the offence and shall abide by that opinion. This may cause a substantial delay and hindrance in obtaining a speedy remedy in cases of trademark violations.

 Patent and IP laws are taken seriously in India

From the above, can you share effective ways companies can assert their IP assets?

(i)            Issuing cease & desist/warning notices to the infringers/notice of pull down to the E-commerce websites and intermediaries;

(ii)           Filing complaints with the local or specialized Police Stations for raid action against the counterfeiters including search, seizure and arrest;

(iii)          Filing a complaint in the Magistrate’s court seeking directions for the Police to register a criminal case and investigate against the counterfeiters, cause search & seizure of counterfeit goods and arrest of counterfeiters, and assisting the public prosecutors on trial of the offenders;

(iv)         Filing and prosecution of a civil suit before the concerned District Court or High Court to seek preliminary and permanent injunction, delivery-up of infringing goods for destruction and recovery of damages. Also obtaining Anton Pillar type of orders in civil actions for conducting a civil search of the defendants’ business premises and seizure operations by a court appointed Commissioner;

(v)          The right holders and proprietors must register their IP rights with the relevant authority/office/registry viz. the Patent Office, Designs Office, Copyright Office and/or the Trademarks Registry. A registration in hand is a prima facie evidence of ownership and it not only helps in convincing the police to register a case and start with the investigation, search and seizure operations but in trademark infringement cases, the same is also particularly useful in bringing the jurisdiction of the case to the place where the plaintiff/right holder resides or carries on business or works for gain. The same can be employed to bring the case before the highly IP savvy High Courts.

(vi)         Recordation of IP rights with the Indian Customs and notifying and liaising with the Indian Customs authorities to interdict/suspend suspected shipment carrying infringing goods and conducting proceedings before the Customs authorities for determination of infringement and destruction of infringing goods.

There are also provisions for the arrest and imprisonment of persons involved in the infringement and especially, an enhanced term of imprisonment for habitual or repeat offenders along with fine.

Are patent and IP laws taken seriously in India? What are the repercussions of infringement?

Yes, patent and IP laws are taken seriously in India. As stated above, the High Courts of India (especially Delhi, Bombay, Calcutta and Madras) render speedy dispensation of justice to right holders in IPR matters. Generally, the repercussions of infringement are permanent injunction or restraint to continue with the infringing use of the IP in question together with recovery of damages or an account of profits, and delivery-up of infringing goods for destruction.

The courts in India have judiciously, yet befittingly, time and again awarded both compensatory as well as punitive damages, to right holders depending on the facts and circumstances of the case. Also, the costs of proceedings are awarded in favour of the right holder and against the infringer on a case to case basis. Where there has been absolute flagrancy of infringement over a sustained period of time and/or the defendant has been proved to be a habitual infringer, the Courts have not shied away in awarding adequate quantum of punitive or exemplary damages to the right holders. Recently, the Delhi High Court has awarded punitive damages totalling up to a sum of INR 3.85 Crores (USD 541,983) collectively against a group of infringers who had been willfully and incorrigibly infringing the reputed trademark of the plaintiff for more than 25 years. In patent infringement cases as well, the courts have awarded heavy punitive damages in favour of right holders depending on the intention and flagrancy of the defendants’ conduct.

There are also provisions for the arrest and imprisonment of persons involved in the infringement and especially, an enhanced term of imprisonment for habitual or repeat offenders along with fine.

 A strong and continuous market vigil, which includes market surveys and investigations both offline and online, is imperative to tackle the menace of counterfeiting in India

What should be a company’s first course of action when they believe their IP asset is being infringed?

Depending on the size and past behaviour of the infringing party and other factors, right holders may resort to either directly filing cases in the court or first approaching the other party to refrain from continuing with the wrongful acts by sending a cease and desist notice. In most civil cases, it is imperative for the right holder to seek an order of temporary ad-interim injunction from the court so that until the trial is concluded, the defendant is restrained from pursuing its alleged infringing activities till a decision is reached or final order of permanent injunction is passed.

What do you think can be done to tackle counterfeit goods in this field?

A strong and continuous market vigil, which includes market surveys and investigations both offline and online, is imperative to tackle the menace of counterfeiting in India and once the counterfeiters are identified, strong and deterrent actions both under civil and criminal justice systems need to be taken wherever necessary, as stated above.

Manisha Singh

+91 9811161518

MANISHA@LEXORBIS.COM

WWW.LEXORBIS.COM

I am one of the co-founders and the Managing Partner at LexOrbis. LexOrbis is a premier and amongst the fastest growing IP firms in India having offices at 3 strategic locations i.e. Delhi, Mumbai and Bengaluru. With a team of over 75 highly reputed lawyers, engineers and scientists the Firm acts as a one stop shop and provide practical solutions and services on all Intellectual Property and legal issues faced by technology companies, research institutions, universities, broadcasters, content developers and brand owners. Its services include Indian and global IP (patents/designs/trademark/copyright/GI/plant varieties) portfolio development and management, advisory and documentation services on IP transactions/technology-content transfers and IP enforcement and dispute resolutions at all forums across India. The Firm has a Global reach with trusted partners and associate firms.

I overview and supervise all practice groups at the Firm. Starting my career at the time when Indian IP laws and practices were undergoing substantial changes pursuant to India’s obligations to comply with the TRIPS agreement, I have been involved regularly in advising and apprising Indian policy and law makers on global standards associated with IP administrative and enforcement systems. I am a prolific writer and speaker and have authored over 500 articles and papers on contemporary IP and Legal issues in India. I work closely with IP administrative authorities and have been deeply involved in bringing transparency, speed and efficiency in the Indian IP administration.