IPR Protection In India

IPR Protection In IndiaIPR Protection In India PRESENTATION PRESENTATION BY BY

IP & IT Division IP & IT Division VAISH ASSOCIATES , ADVOCATES VAISH ASSOCIATES , ADVOCATES

VIJAY PAL DALMIA VIJAY PAL DALMIA Senior Associate, Head IP & IT DivisionSenior Associate, Head IP & IT Division

Flat 5-7, IInd Floor , 10, Hailey Road, New Delhi-Flat 5-7, IInd Floor , 10, Hailey Road, New Delhi-110001, India 110001, India

Ph:- 42492525 , 42492532Ph:- 42492525 , 42492532Mobile :- 9810081079Mobile :- 9810081079

Email :- Email :- [email protected]@vsnl.comwww.indianlegalguide.comwww.indianlegalguide.com

SUBJECT MATTER OF IPRSUBJECT MATTER OF IPR 1. Trade Marks / Brands (Trade Marks Act, 1999)1. Trade Marks / Brands (Trade Marks Act, 1999) Property Marks Property Marks 2. Copyright (Copyright Act, 1957)2. Copyright (Copyright Act, 1957) Artistic WorkArtistic Work Literary WorkLiterary Work Audio, Video and RecordsAudio, Video and Records SoftwareSoftware 3. Industrial Designs (Designs Act, 2000)3. Industrial Designs (Designs Act, 2000) 4. Patents (The Patent Act, 1970)4. Patents (The Patent Act, 1970) 5. Geographical Indications 5. Geographical Indications The geographical Indications of Goods The geographical Indications of Goods

( Registration and ( Registration and Protection )Act, 1999 Protection )Act, 1999 6. Laws relating to Internet, Web and Information 6. Laws relating to Internet, Web and Information

Technology Technology (Information Technology Act, 2000)(Information Technology Act, 2000) 7. Domain Names7. Domain Names

INFRINGEMENT OF IPR AND INFRINGEMENT OF IPR AND LEGAL REMEDIESLEGAL REMEDIES

INFRINGEMENT WHEN AN INFRINGEMENT WHEN AN IPR IS REGISTERED IPR IS REGISTERED

i.e.Trade Mark , Patent , i.e.Trade Mark , Patent , Industrial Designs , Industrial Designs ,

Geographical Indications Geographical Indications Copyright Copyright

PASSING OFF PASSING OFF Passing offPassing off is a is a common lawcommon law torttort which can be which can be

used to enforce unregistered used to enforce unregistered trademarktrademark rights. rights. Passing off essentially occurs where the Passing off essentially occurs where the reputationreputation of party A is misappropriated by party of party A is misappropriated by party B, such that party B B, such that party B misrepresentsmisrepresents this reputation this reputation and and damagesdamages the the goodwillgoodwill of party A. of party A.

The law of passing off prevents one person from The law of passing off prevents one person from misrepresenting his or her goods or services as misrepresenting his or her goods or services as being the goods and services of the plaintiff, and being the goods and services of the plaintiff, and also prevents one person from holding out his or also prevents one person from holding out his or her goods or services as having some association her goods or services as having some association or connection with the plaintiff when this is not or connection with the plaintiff when this is not true.true.

LEGAL REMEDIES AGAINST LEGAL REMEDIES AGAINST INFRINGEMENT AND PASSING OFFINFRINGEMENT AND PASSING OFF CIVIL REMEDIES CIVIL REMEDIES CRIMINAL REMEDIES CRIMINAL REMEDIES

Is Registration Of IPR Necessary?Is Registration Of IPR Necessary?

NONOIn case of In case of

Trade MarkTrade Mark Copyright Copyright

YesYes For For

Patents Patents Industrial Designs Industrial Designs

Geographical Indications Geographical Indications

How Copyright comes in to How Copyright comes in to Existence !Existence !

COPYRIGHT: -COPYRIGHT: - Registration of Copyright w.r.t any logo / Registration of Copyright w.r.t any logo /

trade mark is not necessary or compulsory trade mark is not necessary or compulsory under the provisions of the Indian under the provisions of the Indian Copyright Act, 1957. Automatic protection Copyright Act, 1957. Automatic protection is available to an artistic work, form the is available to an artistic work, form the date when the artistic work / logo was date when the artistic work / logo was designed.designed.

Copyright Comes in to existence when the Copyright Comes in to existence when the concept in mind is put in to some tangible concept in mind is put in to some tangible form or crated form or crated

Trade Mark ! Who is protected ?Trade Mark ! Who is protected ?

A trade mark is granted protection on A trade mark is granted protection on the basis of the basis of

First Adoption First Adoption First User First User First Inventor First Inventor First Invention / Adoption/ User is First Invention / Adoption/ User is

superior then the Registration superior then the Registration

What are the Rights conferred by the What are the Rights conferred by the Registration of IPR i.e. Trade Mark , Patent , Registration of IPR i.e. Trade Mark , Patent , Industrial Designs , Geographical Indications Industrial Designs , Geographical Indications

?? Monopoly for the Specified period is Monopoly for the Specified period is

created in favour of the Registration created in favour of the Registration Holder Holder

In case of Litigation Onus of Proof In case of Litigation Onus of Proof Shifts on the opposite Party Shifts on the opposite Party

Prima Facie presumption is raised in Prima Facie presumption is raised in favour of the Registration Holder by favour of the Registration Holder by courts courts

Can the Registration of IPR Can the Registration of IPR cancelled or Revoked ?cancelled or Revoked ?

Yes Yes In case the registration has been obtained In case the registration has been obtained

by by Fraud Fraud Misrepresentation Misrepresentation Wrongly Wrongly Against the rights of some other party / Against the rights of some other party /

opponent opponent Registered by the Registrar erroneously Registered by the Registrar erroneously Registration prohibited under some law Registration prohibited under some law Registration is against public policy or Registration is against public policy or

morals morals

When Registration can be When Registration can be Prevented or Revoked / cancelled ?Prevented or Revoked / cancelled ? During the Process of Registration – During the Process of Registration –

By filing Opposition By filing Opposition After Registration – By filing After Registration – By filing

Rectification Petition Rectification Petition

What is the Test of Comparison in What is the Test of Comparison in case of violation of IPR/ case of violation of IPR/

TM/Copyright/ Design / GI ?TM/Copyright/ Design / GI ? There are two ways to compare There are two ways to compare

Similarities between two trade marks Similarities between two trade marks :-:-

PHONETIC Similarity PHONETIC Similarity OCCULAR Similarity OCCULAR Similarity

Other tests for comparison Other tests for comparison are :-are :-

Other Tests of Comparison Other Tests of Comparison

Likely hood of confusion and Likely hood of confusion and deception deception

From the angle of a prudent person From the angle of a prudent person of ordinary intelligence of ordinary intelligence

No Microscopic Comparison No Microscopic Comparison No Actual confusion or Deception is No Actual confusion or Deception is

Required Required Actual Loss or Damage not necessary Actual Loss or Damage not necessary

CIVIL REMEDIES CIVIL REMEDIES

Injunction/ stay Injunction/ stay Damages can be claimedDamages can be claimed Accounts and handing over of profitsAccounts and handing over of profits Appointment of local commissioner by the Appointment of local commissioner by the

court for custody/ sealing of infringing court for custody/ sealing of infringing material / accountsmaterial / accounts

Interim Injunction :-Interim Injunction :-

Ex-ParteEx-Parte

After Hearing After Hearing

Procedure & Process for a Civil Procedure & Process for a Civil Case Case

Filing of plaint, with supporting evidence at the time Filing of plaint, with supporting evidence at the time of filing of the suit;of filing of the suit;

Filing of application under order 39 rule 1 & 2 read Filing of application under order 39 rule 1 & 2 read with sec. 151 of the Code of Civil Procedure, for grant with sec. 151 of the Code of Civil Procedure, for grant of ex-parte ad-interim;of ex-parte ad-interim;

Filing of application under order 26 of the Code of Filing of application under order 26 of the Code of Civil Procedure for appointment of a local Civil Procedure for appointment of a local commissioner, to make inventory and / or to take commissioner, to make inventory and / or to take possession of the infringing material form the possession of the infringing material form the premises of the defendants, their agents, retailers and premises of the defendants, their agents, retailers and distributors etc.;distributors etc.;

Hearing of arguments by court on application for Hearing of arguments by court on application for grant of ex-parte injunction and appointment of local grant of ex-parte injunction and appointment of local commissioner;commissioner;

If the court is satisfied, the court may grant ex-parte If the court is satisfied, the court may grant ex-parte and interim injunction and appoint a local and interim injunction and appoint a local commissioner.commissioner.

ElseElse The court may give a short notice to the The court may give a short notice to the

defendants for giving them an opportunity of defendants for giving them an opportunity of hearing before granting any temporary injunction hearing before granting any temporary injunction or appointing a local commissioner;or appointing a local commissioner;

Service of notice/ summons of the court on the Service of notice/ summons of the court on the defendants;defendants;

Filing of written statement / reply by the defendant;Filing of written statement / reply by the defendant; Hearing on application for grant of interim Hearing on application for grant of interim

injunction;injunction; Further proceedings in the suit including filing of Further proceedings in the suit including filing of

replication / rejoinder, admission / denial of replication / rejoinder, admission / denial of documents, framing of issues;documents, framing of issues;

TrialTrial Judgment by the court.Judgment by the court.

Statutory Provisions Statutory Provisions

Trade Marks Act, 1999Trade Marks Act, 1999 Copyright Act, 1957Copyright Act, 1957 Designs Act, 2000Designs Act, 2000 Patents Act , 1970Patents Act , 1970 Geographical Indications of Geographical Indications of

Goods( Registration and Protection) Goods( Registration and Protection) Act , 1999Act , 1999

Code of Civil Procedure, 1908Code of Civil Procedure, 1908 Specific Relief Act, 1963Specific Relief Act, 1963

Criminal Remedies Criminal Remedies Against Infringement of Trade Mark , Geographical Against Infringement of Trade Mark , Geographical

Indications & Copyright , & Passing offIndications & Copyright , & Passing off Filing of criminal complaint before the chief judicial Filing of criminal complaint before the chief judicial

magistrate / chief metropolitan magistrate, of the magistrate / chief metropolitan magistrate, of the concerned jurisdictionconcerned jurisdiction

Leading evidence w.r.t. the infringement of the trade Leading evidence w.r.t. the infringement of the trade markmark

Filing of application under sec. 91/93 of the Code of Filing of application under sec. 91/93 of the Code of Criminal Procedure for issue of search and seizure Criminal Procedure for issue of search and seizure warrantswarrants

Orders/ directions by the Court to police for the search Orders/ directions by the Court to police for the search and seizure of infringing material.and seizure of infringing material.

OR IN ALTERNATIVEOR IN ALTERNATIVE Or in alternative direction by the court to police for Or in alternative direction by the court to police for

investigation, lodging of an FIR and search and investigation, lodging of an FIR and search and seizure, under sec. 156 of the Code of Criminal seizure, under sec. 156 of the Code of Criminal Procedure, 1973.Procedure, 1973.

OR IN ALTERNATIVEOR IN ALTERNATIVE Filing a Complaint / FIR with PoliceFiling a Complaint / FIR with Police

Statues Invoked Statues Invoked For Criminal Action For Criminal Action

Sec. 103 / 104 of the Trade Marks Sec. 103 / 104 of the Trade Marks Act, 1999Act, 1999

Sec. 63 and 64 of the Copyright Act, Sec. 63 and 64 of the Copyright Act, 19571957

Sec. 39 of the Geographical Sec. 39 of the Geographical Indication of Goods Act, 1999Indication of Goods Act, 1999

Sec. 420 of the India Penal CodeSec. 420 of the India Penal Code Sec. 91/93 of the Code of Criminal Sec. 91/93 of the Code of Criminal

Procedure Procedure

In which court a Civil Case can be In which court a Civil Case can be filed against violation of IPR ?filed against violation of IPR ?

In India, the jurisdiction for the purposes of filing a civil suit, In India, the jurisdiction for the purposes of filing a civil suit, will depend upon following facts, and subject to the following will depend upon following facts, and subject to the following conditions:-conditions:- Where the cause of action has accrued;Where the cause of action has accrued; Where the part of the cause of action has Where the part of the cause of action has

accrued;accrued; Where the properties / violations are taking Where the properties / violations are taking

place;place; Where the defendants reside or work for Where the defendants reside or work for

gain;gain;In brief, the jurisdiction for the purposes of filing a case would In brief, the jurisdiction for the purposes of filing a case would depend upon the activities of the defendants / their place of depend upon the activities of the defendants / their place of business.business.

Competent Court for Civil Action Competent Court for Civil Action In India a suit may be instituted in any Court In India a suit may be instituted in any Court

of original jurisdiction, subject to its pecuniary of original jurisdiction, subject to its pecuniary & territorial jurisdiction. The Designation of & territorial jurisdiction. The Designation of the lowest court is “District & Sessions the lowest court is “District & Sessions Judge”. These cases can also be filed in the Judge”. These cases can also be filed in the High Court, directly, if such High Court is High Court, directly, if such High Court is having original jurisdiction, e.g. Delhi High having original jurisdiction, e.g. Delhi High Court, which has the original jurisdiction.Court, which has the original jurisdiction.

The Jurisdiction of High Court could be The Jurisdiction of High Court could be invoked, subject to the payment of Court invoked, subject to the payment of Court fees, which is diminishing in nature. The fees, which is diminishing in nature. The structure of Court fees vary from state to structure of Court fees vary from state to state.state.

Can Legal Action Under The Trade Marks Act, Can Legal Action Under The Trade Marks Act,

1999 and the Copyright Act, 1957 , be combined ?1999 and the Copyright Act, 1957 , be combined ?

if the artwork, get up, design, color if the artwork, get up, design, color combination of a trade mark/ label/ combination of a trade mark/ label/ packing material is similar and / or packing material is similar and / or deceptively similar, the provisions of the deceptively similar, the provisions of the Copyright Act, 1957, can also be invoked Copyright Act, 1957, can also be invoked along with the Trade Marks Act, 1959, and along with the Trade Marks Act, 1959, and this course of action is always preferable, this course of action is always preferable, as under the provisions of the Copyright as under the provisions of the Copyright Act, 1957, the offence becomes Act, 1957, the offence becomes COGINIZABLE, and police can, on its own COGINIZABLE, and police can, on its own directly initiate Criminal proceedings after directly initiate Criminal proceedings after registration of an FIR.registration of an FIR.

Procedure for Filing a Criminal Procedure for Filing a Criminal Complaint Complaint

PROCEDURE FOR FILING OF CRIMINAL PROCEDURE FOR FILING OF CRIMINAL COMPLAINT: -COMPLAINT: -

Criminal Complaint in the Court of Criminal Complaint in the Court of competent jurisdiction;competent jurisdiction;

Pre summoning Evidence, for satisfying the Pre summoning Evidence, for satisfying the court on the basis of the evidence placed on court on the basis of the evidence placed on record, that the allegations by complainant record, that the allegations by complainant are prima facie maintainable;are prima facie maintainable;

Issue of General/ specific Search and Seizure Issue of General/ specific Search and Seizure Warrants, along with directions to police;Warrants, along with directions to police;

Next……Next……

Continued……Continued……

Raid / Search & Seizure by PoliceRaid / Search & Seizure by Police Investigation and arrest (if necessary) of Investigation and arrest (if necessary) of

accused persons;accused persons; Arguments;Arguments; Summons / Warrants against accused Summons / Warrants against accused

persons;persons; Accused Appear and seek bail;Accused Appear and seek bail; Framing of charges, after notice of Framing of charges, after notice of

allegations;allegations; TrialTrial Onus of proof is on the complainantOnus of proof is on the complainant

Raid / Search & Seizure by PoliceRaid / Search & Seizure by Police Investigation and arrest (if necessary)of Investigation and arrest (if necessary)of

accused persons;accused persons; Arguments;Arguments; Summons / Warrants against accused Summons / Warrants against accused

persons;persons; Accused Appear and seek bail;Accused Appear and seek bail; Framing of charges, after notice of Framing of charges, after notice of

allegations;allegations; TrialTrial Onus of proof is on the complainantOnus of proof is on the complainant

Information and Requirements for Information and Requirements for filing an IPR Civil / Criminal Casefiling an IPR Civil / Criminal Case

Detailed profile & history of the company. Detailed profile & history of the company. Significance of the trade mark “xxxxxxxxx”.Significance of the trade mark “xxxxxxxxx”. Product range / product profile / trade mark Product range / product profile / trade mark

profile.profile. Complete catalogue / brochures / price list. Complete catalogue / brochures / price list. Year of adoption and user of the trade mark.Year of adoption and user of the trade mark. Year wise sale figure of the products under the Year wise sale figure of the products under the

trade mark “xxxxxxxxx”, since the year of the trade mark “xxxxxxxxx”, since the year of the adoption of the trade mark. adoption of the trade mark.

Next ….Next ….

Next …..Next ….. Year wise advertisement figure of the Year wise advertisement figure of the

products under the trade mark “xxxxxxxxx”, products under the trade mark “xxxxxxxxx”, since the year of the adoption of the trade since the year of the adoption of the trade mark.mark.

Copy of 2-3 bills every year / in which the Copy of 2-3 bills every year / in which the trade mark xxxxxxxxx is mentioned, since trade mark xxxxxxxxx is mentioned, since the year of the adoption of the trade mark.the year of the adoption of the trade mark.

Copy of 2-3 advertisement brochures, Copy of 2-3 advertisement brochures, catalogues etc of every year / in which the catalogues etc of every year / in which the trade mark xxxxxxxxx is mentioned, since trade mark xxxxxxxxx is mentioned, since the year of the adoption of the trade mark.the year of the adoption of the trade mark.

Next ………Next ………

Next…….Next……. Copy of some correspondence by your Copy of some correspondence by your

customers / clients.customers / clients. Some information / details about your Some information / details about your

clientele.clientele. Some information about your tie ups / Some information about your tie ups /

arrangements / technology details, to arrangements / technology details, to convince the court about the bonafied convince the court about the bonafied and goodwill of your claims.and goodwill of your claims.

Countries of export / import and where Countries of export / import and where your business activities are carried out.your business activities are carried out.

Next………Next………

Next…..Next….. List of persons, their proprietor / partners/ List of persons, their proprietor / partners/

owners / or any other known information owners / or any other known information with address, who are infringing trade with address, who are infringing trade mark / copyright, along withmark / copyright, along with

Their product details / rangeTheir product details / range Business activities Business activities Area of businessArea of business Brochures / pamphlets / labels / photographs Brochures / pamphlets / labels / photographs

and other business infoand other business info Whether any such infringer is related with your Whether any such infringer is related with your

company in any manner, whatsoever, at any company in any manner, whatsoever, at any point of time during your business activities, point of time during your business activities, their status in your company, nature of their status in your company, nature of information available to them, and when they information available to them, and when they disassociated themselves from your company.disassociated themselves from your company.

Estimated / expected loss by themEstimated / expected loss by them

THANK YOU .THANK YOU . PRESENTATION PRESENTATION BY BY

IP & IT Division IP & IT Division

VAISH ASSOCIATES , ADVOCATES VAISH ASSOCIATES , ADVOCATES VIJAY PAL DALMIA VIJAY PAL DALMIA

Senior Associate, Head IP & IT DivisionSenior Associate, Head IP & IT Division

Flat 5-7, IInd Floor , 10, Hailey Road, New Delhi-Flat 5-7, IInd Floor , 10, Hailey Road, New Delhi-110001, India 110001, India

Ph:- 42492525 , 42492532Ph:- 42492525 , 42492532Mobile :- 9810081079Mobile :- 9810081079

Email :- Email :- [email protected]@vsnl.comwww.indianlegalguide.comwww.indianlegalguide.com