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MONTHLY OCTOBER IPR NEWS LETTER       MONTHLY DECEMBER IPR NEWS LETTER
January-2007 IPR News Letter

LEGAL OPINION ON INTELLECTUAL PROPERTY RIGHTS, TRADE MARK, COPYRIGHT, INFRINGEMENT AND VIOLATION OF TRADE MARKS , CIVIL AND CRIMINAL REMEDIES

An Introduction By Vijay Pal Dalmia,Advocate, B.Com.(Hons.(LL.B.),WebPro(IIS Infotech Ltd,,Oracle 8i DBA ,Certificate in Advanced Java
And Ms.Neelam Dalmia,Advocate, B.Sc.(Hons.),LL.B. Oracle 8i DBA ,Certificate in Advanced Java

Following Acts and Areas of  Practice are covered  by Intellectual Property Laws in India :-

1.Trade Marks  / Brands  (Trade Marks Act,1999)

• Property Marks

2.Copyright  (Copyright Act,1957)

• Artistic Work
• Literary Work
• Audio, Video and Records
• Software

 3.Designs / Industrial Designs (Designs Act,2000)

 4.Patents (The Patent Act,1970)

 5.Geographical Indications

 6.Internet ,Web and Information Technology  (Information Technology Act,2000)

 7.Domain Names

INTELLECTUAL PROPERTY RIGHTS, TRADE MARK, COPYRIGHT,
INFRINGEMENT AND VIOLATION OF TRADE MARK,

CIVIL AND CRIMINAL REMEDIES

JUDICIAL SYSTEM IN INDIA: - 

Indian judicial system is a creation of the Constitution of India, and absolutely independent from executive / government.

All Central & State Governments and their functionaries are duty bound to obey and implement the orders of the Courts in India, and any non compliance of the orders of the courts are taken very seriously, which may result in the contempt of the court leading to fine and / or imprisonment.  Besides coded laws, India also follows the common law principles.  The judgments of the High Courts and Supreme Court of India, have the force of the law of land. Indian Judicial System is one of the finest legal system in the world having codified laws and established procedures

INTELLECTUAL PROPERTY LAWS OF INDIA: -

India have codified and enacted laws on all subjects relating to the Intellectual Property Laws including laws on Trade Marks, Copyright, Industrial Designs, Patents, Geographical Indications and Information Technology.  All intellectual property laws of India are in parity with international laws, conventions and other countries.  India, in respect of trademarks also extensively follows Common Law Principles and Principles of Natural Justice. In India there are a catena of judgments of various High Courts and the Supreme Court of India, practically dealing with all provisions and aspects of intellectual property laws. India follows Precedent System.

MEANS OF EXECUTION OF THE ORDERS OF COURTS: - 

Government of India and its executive wing are constitutionally duty bound to follow and obey the orders of courts, without any exception.  It may please be noted that entire Government Machinery including police is under an obligation to follow and implement the orders of the court.  There are sufficient laws for the enforcement of the orders of the court, including Contempt of Court, which provide for fine as well as imprisonment, in case of disobedience.  There are also other legal means for execution / compliance of the orders of the court i.e. by way of appointment of Local Commissioner / Receivers.

AUTHORITIES INVOLVED IN THE EXECUTION OF ORDERS OF COURTS: - 

The entire Government machinery is bound to execute and enforce the orders of courts, as such courts are empowered to direct any government authority to do or not to do or prevent / compel any person to comply with the orders of the Court.  This legal proposition can be understood by this example, e.g. Custom Authorities w.r.t. Import and Export of Infringing Goods.  The Courts can grant injunction and direct the custom authorities to withhold the infringing material / its shipment or prevent its disposal in nay other manner, to protect the interest of the owners of intellectual property rights.  This legal proposition can be enforced with / without involving the concerned authorities as a party in the suit.

It may please further be noted that in some States of India, governments have formed Special Intellectual Property Cells, do deal with the offences relating to intellectual properties, including trade mark and copyright.  However, still an action initiated through the court of law, yields better results and are more effective.  Moreover, once the authorities act under the instructions / orders of courts, they act more rationally and in a duty bound manner, resulting in lesser harassment, cost and time.

HOW TO OBTAIN INFORMATION w.r.t. THE INFRINGEMENT OF TRADE MARK / COPYRIGHT: - 

Though the best way to find details and extent about the piracy of the trade mark / copyright is companies own marketing net work, another best alternative is engagement of detective agencies on contractual basis, which in alternative have their own network. Information can be obtained about the infringement / piracy of goods by conducting surveys in major metropolitan cities of India and such surveys will lead to and result in the identification of manufacturing unknots, go downs, distribution network and retailing chain.  

EFECTIVENESS OF LEGAL ACTION AGAINST

INFRINGEMENT & PIRACY :-

India being a very large country in geographical terms and densely populated country, it is practically very difficult to completely prevent piracy / infringement / violation of intellectual property rights. However, the civil and criminal legal actions have their own advantages and limitations.  Generally piracy in India takes place in unorganized sector and small scale industries, which are a difficult proposition from enforcement point of view.

In civil suits, which are filed against infringements, a separate suit has to be filed against each and every company / firm / individual, as the infringement by each pirate will amount a new cause of action, separate suits have to be filed against each of them.  Comparatively civil remedies are easier than criminal remedies.

However, the effectiveness of criminal remedies followed with publicity campaign is more, compared to civil remedies, as a raid / criminal action in the court of law or by police acts as a deterrent and carry a psychological effect.  In India any criminal action / prosecution is treated as a social stigma leading to condemnation by the society in General.

The choice of civil or criminal remedies will depend upon the facts and circumstances pertaining to every case, and the same cannot be universalized.

INFRINGEMENT OF TRADE MARK  AND LEGAL REMEDIES AVAILABLE: - 

It is pertinent to note that both  Civil and Criminal remedies are simultaneously  available against the infringement and passing off of a trade mark: - 

“Infringement action can be initiated, when a trade mark is registered”.

“Passing off action can be initiated when a trade mark is unregistered”.

REMEDIES AVAILABLE UNDER INDIAN LAWS: - 

A)    CIVIL REMEDIES: -

·        Injunction/ stay against the use of the trade mark

·        Damages can be claimed

·        Accounts and handing over of profits

·        Appointment of local commissioner by the court for custody/ sealing of infringing material / accounts

·        Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad interim ex-parte injunction 

Procedure for filing a Civil Suit : - 

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

2.      filing of application under order 39 rule 1 & 2 read with sec. 151 of the code of civil procedure, for grant of ex-parte ad-interim;

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

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

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

Else 

The court may give a short notice to the defendants for giving them an opportunity of hearing before granting any temporary injunction or appointing a local commissioner;

6.      service of notice/ summons of the court on the defendants;

7.      filing of written statement / reply by the defendant;

8.      hearing on application for grant of interim injunction;

9.      further proceedings in the suit including filing of replication / rejoinder, admission / denial of documents, framing of issues;

10.  trial

11.  judgment by the court.

Remedies in case of non compliance of interim injunction / final decision of the court : - 

1.      Contempt of court action, leading to punishment in terms of fine and / or imprisonment;

2.      Execution of decree.

Applicable sections: -

Sec. 134 / 135  of the Trade Marks Act, 1999

Copyright act, 1957

Specific Relief Act

Common law principles i.e. Principles of natural justice

Criminal remedies : - 

·        Filing of criminal complaint before the chief judicial magistrate / chief metropolitan magistrate, of the concerned jurisdiction

·        Leading evidence w.r.t. the infringement of the trade mark

·        Filing of application under sec. 93/94 of the Cr.P.C for issue of search and seizure warrants

·        Orders/ directions by the court to police for the search and seizure of infringing material by the police

·        Or in alternative direction by the court to police for investigation, lodging of an fir and search and seizure, under sec. 156 of the criminal procedure code, 1973. 

Statutes invoked: - 

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

Sec. 63 and 64 of the copyright act, 1957

Sec. 420 of the IPC

Sec. 91/93 of the Cr. P.C

And other relevant provisions of law

COPYRIGHT: - 

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

NECESSARY DECLARATION OF NOTICE: - 

It is advised to put the following notice / warning on all printed material, catalogues, brochures, labels, packing material etc., for the protection of  legal rights, as per international conventions: -

a)  ALWAYS mention “R in a circle” or any other appropriate words, over your trade mark “XXXXXXXXXX”, if  trade mark is registered.

b)      MUST mention the letter “c” in a circle, on all printed material, catalogues, brochures, labels, packing material etc.

c)    MUST mention / print the following warning on all printed material, catalogues, brochures, labels, packing material etc. : -

C, Year, India, c & Tm of …..company name, complete address…………………., India, All Rights reserved.  Infringement in any form prohibited & actionable. 

FORUM / JURISDICTION FOR FILING CIVIL / CRIMINAL LITIGATION : - 

Civil Cases : - 

In India, the jurisdiction for the purposes of filing a civil suit, will depend upon following facts, and subject to the fulfillment of following conditions:-

(a)    Where the cause of action has accrued;

(b)   Where the part of the cause of action has accrued;

(c)    Where the properties / violations are taking place;

(d)   Where the defendants reside or work for gain;

    ####However , the Trade Marks Act,1999 , provides for an exception , with respect to a registered trade mark. A Registered Trade Mark owner can file a case with in the jurisdiction of a court , from where Registered Trade Mark Holder is carrying on its business or have its office. This provision is an exception to the general rule .

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

It may further be noted that mere sale of a product in a particular area / location / city is sufficient to invoke jurisdiction of court of that District / City.

In India, it is also very much possible to file a suit in the court of law, if prima facie it can be shown that the goods are available and sold with in the jurisdiction of the court.

Once jurisdiction of a court is invoked, the orders of such court are binding

On the defendant against whom the case has been instituted, wherever the defendant is situated in India, and it is not necessary to file suits in the courts of different jurisdiction, separately.

COMPETENT COURT: - 

In India a suit may be instituted in any court of original jurisdiction, subject to their pecuniary & territorial jurisdiction.  The Designation of the lowest court is “District & Sessions Judge”.  These cases can also be filed in the High Court, Directly, if such High Court is having original jurisdiction, e.g. Delhi High Court, which has the original jurisdiction.

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

CRIMINAL COMPLAINT / FIR / CASES: - 

In case of infringement / passing off of trade mark, a criminal complaint can also be filed.  It may please be noted that under the Provisions of the Trade Marks Act,1999 , the offences under the Act are cognizable, meaning there by police can  register an FIR (First Information Report) and prosecute the offenders directly.  In all such cases, the alternative is to file a criminal complaint has to be filed in the court of Chief Judicial / Chief Metropolitan Magistrate of competent jurisdiction, on which the court after satisfying itself, would issue a General Search and Seizure Warrant, for conducting raid, search and seizure of the infringing material from any premises where infringing material is manufacture, packed, stocked, infringing labels are printed.  In alternative the concerned court can also issue a direction to Police to conduct inquiry, investigate and prosecute the offenders.

However, if the artwork, get up, design, color combination of a trade mark/ label/ packing material is similar and / or deceptively similar, the provisions of the Copyright Act, 1957, can also be invoked along with the Trade Marks Act, 1999, and this course of action is always preferable, as under the provisions of the Copyright Act, 1957, the offences becomes COGNIZABLE, and police can on its own directly initiate Criminal proceedings after registration of an FIR.

Under the Trade  Marks Act, 1999, the offences are punishable with 3 years of imprisonment or fine, where as under the provisions of the Copyright Act, the offences are punishable with three years of imprisonment and / or fine up to 2 Lakh Rupees.

It may please further be noted that though under law, the police is under an obligation to register an FIR, Investigate and prosecute the offenders, but generally they are apprehensive about initiating action themselves, due to peculiar nature of the Trade Marks Act, 1999, The Copyright Act, 1957, and lack of knowledge of law and its applicability, it is advisable to file a criminal complaint in the court, which after satisfying itself as per law, may issue General Search and Seizure warrants, and investigate itself or through police.

PROCEDURE FOR FILING OF CRIMINAL COMPLAINT: -

      1.      Criminal Complaint in the Court of competent jurisdiction;

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

3.      Issue of General/ specific search and Seizure Warrants, along with directions to police;

4.      Raid / Search & Seizure by Police

5.      Investigation and / or arrest of accused persons;

6.      Arguments;

7.      Summons / Warrants against accused persons;

8.      Accused Appear and seek bail;

9.      Framing of charges, after notice of allegations;

10.  Trial

11.  Onus of proof is on the complainant

TIME FACTOR IN LITIGATION IN INDIA: - 

In India judicial process is little bit time consuming process due to pendency of litigations in courts.  District Courts are faster in deciding disposing off case finally, the High Courts are faster in granting interim relief.  However, on the basis of our experience, we can quantify the time consumed in civil and criminal action  at initial stages i.e. at the stage of Interim Injunction / orders of search and seizure.

Please note that if Ex-parte interim injunction is granted by the court, the same takes only one day to obtain the order, however if the court prefers to give a notice to the defendant before granting any interim order, it may take anything between one week to one month.

It may be noted that in case of a criminal complaint, the court may hear the case and pass the orders for search & seizure on the same day of the filing of the criminal complaint or adjourn the case for 2-3 days for preliminary evidence, arguments and consideration.  Normally the criminal process takes one week to initiate.

INFORMATION AND REQUIREMENTS FOR FILING OF A CIVIL SUIT/ CRIMINAL COMPLAINT: - 

It may be noted that  following information / details / documents for initiation of appropriate legal proceedings ,may be necessary : -

1. Detailed profile & history of your company.
2. Significance of the trade mark “xxxxxxxxx”.
3. Product range / product profile / trade mark profile.
4. Complete catalogue / brochures / price list.
5. Year of adoption and user of the trade mark.
6. Year wise sale figure of the products under the trade mark “xxxxxxxxx”, since the year of the adoption of the trade mark.
7. Year wise advertisement figure of the products under the trade mark “xxxxxxxxx”, since the year of the adoption of the trade mark.
8. Copy of 2-3 bills every year / in which the trade mark xxxxxxxxx is mentioned, since the year of the adoption of the trade mark.
9. Copy of 2-3 advertisement of every year / in which the trade mark xxxxxxxxx is mentioned, since the year of the adoption of the trade mark.
10. Copy of some correspondence by your customers / clients.
11. Some information / details about your clientele.
12. Some information about your tie ups / arrangements / technology details, to convince the court about the bonafied and goodwill of your claims.
13. Countries of export / import and where your business activities exist.
14. List of persons, their proprietor / partners/ owners / or any other known information with address, who are infringing  trade mark / copyright, along with
    • Their product details / range
    • Business activities
    • Area of business
    • Brochures / pamphlets / labels / photographs and other business info
    • Whether any such infringer is related with your company in any manner, whatsoever, at any point of time during your business activities, their status in your company, nature of information available to them, and when they disassociated themselves from your company.
    • Estimated / expected loss by them

15. List / detail / information / documents / pleadings about all litigations, cases, complaints filed by plaintiff/ petitioner  company or notices sent (preferably with copies), w.r.t. any matter related with infringement of trade mark / copyright, so that the courts may not take any adverse view against your company, relating to concealment of any relevant fact / information / delay / latches, with
    • Name / designation of the court
    • Case / fir / suit no.
    • Next date of hearing
    • Fate of the case, if decided, with copy of the order
    • Copy of pleadings

16. Any other information / detail, which may be proper and deemed fit .

CENTRAL INFORMATION COMMISSION (CIC) - RIGHT TO INFORMATION ACT
Decisions of Central Information Commission - Courtesy (CIC)

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