IPR are one of the principal assets through which companies, creators and inventors generate Returns on their investment in knowledge, innovation and creativity.
The ability to protect and access to effective remedies internationally is important for right holders to protect their rights – incentives to invest are reduced in jurisdictions where these are uncertain – hence the need for solid and predictable IPR frameworks that create environments conducive to innovation and sustainable growth and offer effective enforcement.
In a globalized economy of international supply chains, lack of proper IP protection in some jurisdictions can dramatically affect business and therefore sustainable job creation as well as consumers practically anywhere in the world.
There have been significant IP regulatory reforms in many third countries, not least as a result of the WTO’s Trade- Related Intellectual Property Rights (TRIPS) agreement, but their enforcement efforts have not always matched these. Often the possibilities for effective enforcement of IPRs are limited due to serious deficiencies in the IPR framework, e.g. customs authorities lacking ex-officio powers, courts issuing insufficiently deterrent sanctions, officials lacking sufficient knowledge and training on IPR. Enforcement efforts may also be hindered by a lack of political will which is often evidenced by a lack of sufficient resources devoted to enforcement efforts.
IPR infringements have indeed reached unprecedented levels, facilitated in particular by digital technology that allows low-cost, high quality reproduction in bulk. International trade in counterfeit and pirated goods has been estimated to be worth as much as USD 650 billion.
Intellectual property (IP) concedes owners the right to exclude others from using their protected assets for certain activities without their consent. When IP rights are infringed, rights holders have the ability to take action against infringing conducts and enforce their rights, for example, by stopping unauthorized use, impeding further infringements, and obtaining recovery and compensation for damages resulting from the infringing act.
Before taking any legal action for infringement of IP rights in India, you should try resolving the issues amicably. Often, the first step should be to send a cease-and-desist letter to the alleged infringer, asking for the infringement activity to stop. If the letter fails to prevent infringement, you can enforce IP rights in India through the civil courts or criminal prosecution.
NO: - In case of • Trade Mark • Copyright
YES: - In case of • Patents • Industrial Designs • Geographical Indications
IP Enforcement-Remedies Civil • Infringement • Passing off • Criminal • Administrative
Interlocutory Injunction- In the Landmark Supreme Court judgment Midas Hygiene Industries P. Ltd. V. Sudhir Bhatia &Anr. (2004)3 SCC 90 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 it prima facie appears that the adoption of the mark itself was dishonest”.
Lakshmikant V. Patel vs. Chetanbhat Shah (AIR 2002 SC 275) 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”.
As a result of their growing popularity and of their commercial application, Internet domain names have increasingly come into conflict with trademarks and other IP rights. The WIPO Arbitration and Mediation Center became the first provider of dispute resolution services under the Uniform Domain Name Dispute Resolution Policy (UDRP) in December 1999, Adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), on the basis of recommendations made by WIPO in the Report of the First WIPO Internet Domain Name Process, the UDRP provides holders of trademark rights with an administrative mechanism for the efficient resolution of disputes arising out of the registration and use in bad faith by third parties of domain names corresponding to those trademark rights.
The Indian Courts have not been far behind in passing such orders and initiatives have been taken in cases involving trademark, copyright infringement, personal privacy and confidential information. The Indian judiciary has taken positive steps towards development of this trend and recognizing the need for such orders to provide relief to victims/parties. The Indian Courts have since long granted interim order under Order 39 Rules 1 & 2 of the Code of Civil Procedure, 1908 (“CPC”), to protect the rights of the plaintiff and prevent possible injury. The statutes including Trademarks Act, 1999 and Geographical Indication of Goods Act, 1999 also provide for such interim orders. But under certain situations, often by the time interim orders are granted enough damage has already been caused, to address such specific situations, the common law concept of „John Doe/Jane Doe‟ orders, recognized as „Ashok Kumar‟ orders in India, may come to the rescue.
In India very first John Doe order in the year 2002, In Tej Television Limited vs. RajanMandal. 55 The matter dealt with unauthorized transmission of channel (“Ten Sports”) by unlicensed cable operators without entering into agreements with marketing partners of the plaintiff. Around 1377 cable operators had taken licenses but several prominent cable operators had not signed up and broadcasted the same without any approvals. The plaintiff was the owner of the registered broadcasting rights56 of the channel for the Soccer World Cup, 2002. The unauthorized broadcasting caused losses to the plaintiff and also strained their relationship with the other licensees.
In John Doe order :
Microsoft Corporation vs. YogeshPapat&anr. 2005(30)PTC245(Del) – Highest costs and Damages ever awarded for IP infringement by Indian Courts – Approximately Rs 20 lakhs
Oppositions , Cancellation and Rectifications of IPR In case the registration has been obtained by – Fraud – Misrepresentation – Wrongly – Against the rights of some other party / opponent – Registered by the Registrar erroneously – Registration prohibited under some law – Registration is against public policy or morals
When Registration can be Prevented or Revoked / cancelled • During the Process of Registration – By filing Opposition • After Registration – By filing Rectification Petition
As a member of the World Trade Organization (WTO) and a party to the Agreement on Trade Related Aspects of Intellectual-Property Rights (TRIPS), the India is obligated to provide trade secret protection. Article 39 paragraph 2 requires member nations to provide a means for protecting information that is secret, but in India No enactment or policy framework for the protection of trade secrets in India. • Indian courts have tried putting the trade secrets of various businesses under the purview of various other legislations in order to protect them and also they have tried to define what a trade secret is in various cases
In the end, it is time that Industry and Government together make concerted efforts towards building a robust Intellectual Property Ecosystem for inclusive National growth. Time also demands that a platform to facilitate consensus building amongst different stakeholders is created. The Cell for IPR Promotion and Management (CIPAM), a professional body under the aegis of the Department of Industrial Policy & Promotion (DIPP), Ministry of Commerce & Industry, Government of India, which besides aiming at consensus building, is also voicing industry concerns and making concerted representations towards proactive resolution of intellectual property issues.
Enforcement agencies like police, Customs, as also the prosecution wing, have a major role to play in effective enforcement of IPRs in the country. Creating awareness about IPRs amongst officials of these agencies, while strengthening the enforcement regime, will also assist them in handling cases relating to IPRs in their day to day activities.
Creating awareness about IPRs will help enforcement agencies across the country understand and appreciate the importance of their role in IPR enforcement. It will also act as a platform for the officials to share their experiences, exchange best practices and better inter-agency coordination with respect to enforcement of IPRs.
