Professional Documents
Culture Documents
TRADEMARKS
PATENTS
COPYRIGHT
DESIGNS GEOGRAPHICAL INDICATIONS TRADE SECRETS
: GI Act, 1999 & Certification Mark provisions of the Trademarks Act : No specific legislation but protected under principles of contract
IP Enforcement-Remedies
Civil
Infringement Passing
off
Criminal
Administrative
Technological measures
ALL CAN BE PURSUED SIMULTANEOUSLY
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.
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
Interlocutory injunction
Provided knowledge of the mark acquired through various sources of trans-border reputation
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.
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
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.
(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
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
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
Final injunction
These are mutually exclusive alternative remedies Account of profits- An equitable relief
Plaintiff adopts defendants acts as his own.
Damages- for the losses suffered by the Plaintiff on account of the defendants acts
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
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 Registrars approval.
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.
Less hassle for the plaintiff Jurisdictional advantage Interlocutory Injunctions Damages Possibility of settlement
Administrative Remedies
Confiscation of infringing material by Excise Authorities Restrictions against parallel importation of goods
Technological measures
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
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.
Criminal proceedings must be fast and fair Legal power to confiscate and destroy infringing products.
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
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
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
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