TRADE MARKS COPYRIGHTS IN INDIA PHILIP ABRAHAM INDIA

TRADE MARKS & COPYRIGHTS IN INDIA PHILIP ABRAHAM

INDIA AT A GLANCE • Largest democracy in the world • Second most populated country with over 1 billion people • Seventh largest country in the world • Sixth nation to have gone into outer space and nuclear • A kaleidoscope of cultural heritage of different castes, creed & colour spread over 28 states • 22 constitutionally recognized languages

• A newly industrialized country (NIC). Member of G 8+5 group. • Self-sufficient in agriculture • Thriving middle class by 2025 - will grow from about 5 percent of the population to more than 40 percent and create the world’s 5 th - largest consumer market economy, up from 12 th now [Mc. Kinsey & Co. ] • Each year India adds § 7. 1 million Graduates in Arts/Science/ Commerce § 525, 000 Engineers § 250, 000 Doctors § 250, 000 Law Graduates • Youthful population § 47% under 20 years § 71% under 35 years • Indicates a readiness to try new ideas & products

• Established in 1827 under the name “Remfry & Son”. Intellectual Property remained the mainstay of the Firm until 1973 when it diversified into the field of Corporate Law with emphasis on foreign investment, licensing of technology and allied corporate laws • The firm has the following core practice groups § Patents & Designs; § Trade Marks & Copyright; § Litigation; and § Corporate Law

PATENTS & TRADE MARKS OFFICES Mumbai Ahmedabad Chennai Kolkata New Delhi

Trade Marks The statute which governs Trade Mark law in India is the Trade Marks Act, 1999 which aims to consolidate the law relating to trade marks in India. Since it is a recent law, it has harmonized the Indian law with TRIPS and international practice Salient features 1. Registration of Service marks introduced India currently follows the Seventh Edition of the Nice Classification. We will very soon switch to the Ninth Edition of the Nice classification

2. Definition of ‘trade mark’ now envisages A mark which is capable - • of being represented graphically; and • distinguishes goods/services of one person from those of others ‘Non-traditional marks’ covered under the definition are • Shape marks • Sound marks • Colour combinations • Smell and taste marks

Challenges in registering ‘non-traditional marks’ • No guidelines for filing, examination or search • prescribed • sound marks • No uniform method prescribed for representation of sound or smell Extensive evidence of use is required to be furnished

3. Well-known marks One highlight of the new law is that well known marks are accorded statutory protection. A well known mark neither requires registration nor use in India Said protection since long has been a part of Indian jurisprudence • In 1988, the Bombay High Court restrained use of the trade mark 7 O’clock (famous for blades) for toothbrushes • In 1994, the Delhi High Court restrained use of the trade mark BENZ in relation to undergarments

4. Multi-Class Applications A single application covering multiple classes of goods or services may be filed 5. Term of registration and renewal increased to 10 years 6. Assignment of unregistered trade marks Unregistered trade marks can be assigned without goodwill of business, which was not the case earlier

7. Scope of ‘Permitted Use’ enlarged Recordal of a license is not necessary Sole Benefit of Registration: A registered licensee can institute infringement proceedings in his own name 8. Establishment of an Intellectual Property Appellate Board (‘IPAB’) This is a specialist IP body formed to hear appeals and rectification matters

Registration - Procedure Filing an application Examination (Report issued) Applicant’s response in writing Hearing – in case Registrar wants to satisfy himself further Advertisement in Trade Marks Journal Rejection of the application - Review may be filed before the Registrar and/or appeal before IPAB Contd…

Registration - Procedure Advertisement in Trade Marks Journal Opposition - within 3 months (extendible by 1 month) Counter Statement – within 2 months (not extendible) from receiving the opposition Evidence by parties Registration Renewal required every 10 years Hearing & written arguments by parties Refusal to register – Review may be filed before the Registrar and/or Appeal before the IPAB

Recommendations to expedite registration • Conduct pre-filing search • Applying for an expedited examination of the application • Collate, compile and docket documentary evidence of use which will be of help at the pre-advertisement stage as well as in opposition proceedings

Consequences of Non-use - Revocation Not automatic but only on application made by an “aggrieved person” • Jurisdiction: IPAB or the appropriate branch of Trade Marks Office • Essentials: Non-use for a continuous period of 5 years or more from the date the mark actually entered on the Register 5 years to be calculated until 3 months before the date of filing application for rectification • Defences: § § § Special circumstances in the trade including trade restrictions Use in restricted markets Use by a registered or unregistered licensed user No intention to abandon or not to use the mark Use of variations

Statistics Applications Filed, Examined and Registered

Difficulties in the process • Inadequate personnel at the Registry • Lack of training and guidelines Government is conscious of its responsibilities and is actively working towards resolving these issues

Initiatives • Restructuring and modernization of IP administration and infrastructure • Setting up of ‘Intellectual Property Training Institute’ • Increasing interaction with WIPO as well as other Patent and Trademark Offices the world over • Efforts to liquidate backlog • Continued emphasis on IT Solutions – computerization of records, e-filing, online status check and improved search facilities

The Road Ahead • Trade Marks Manual being finalized • Shift the prosecution process online to ensure transparency and speedier disposal • Entry into Madrid Protocol

Copyright India is a member of the Berne Convention and the Universal Copyright Convention. The Copyright law governed by the Copyright Act, 1957 Works first published in any of the convention countries enjoys protection in India Works in which Copyright subsists Literary, Dramatic, Musical, Artistic, Cinematograph films, Sound Recordings Registration of Copyright • Registration of copyright optional

Rights conferred on copyright owner Exclusive rights conferred may include • reproduction of the work in a material form • storing the work in any medium • publication of work, communication of the work to the public • • performance of the work in public making of adaptations Term of Copyright • • Literary, dramatic, musical or artistic work - lifetime of the author + sixty years Anonymous, posthumous, photograph/cinematograph film, sound recording etc. - sixty years from the beginning of the calendar year following the year in which the work is published

Enforcement Hierarchy Of The Courts

Enforcement Remedies Civil Criminal Administrative • Trade Mark & Copyright Laws • Border Control Measures

Civil Remedies • All suits filed before a District Court or higher court Territorial Jurisdiction – Under the Code of Civil Procedure, 1908 Suits to be instituted Where the Defendant resides or carries on business Where the cause of action, wholly or in part, arises • Under the Trade Marks Act 1999 and also under the Copyright Act, 1957, an infringement suit can be instituted at the place where the plaintiff resides or carries on business

Civil Remedies Infringement Passing Off Statutory remedy Common law action • Trade mark registered • Registration of copyright not essential • Trade mark need not be registered • No Common law copyright.

Infringement Ingredients of Trade Mark infringement • • Plaintiff’s mark is registered Defendant’s mark identical/similar to Plaintiff’s mark Defendant’s use of the mark in respect of goods/services covered by the registered trade mark Where registered mark has reputation in India infringement action may be initiated for goods/services which are not similar to the goods covered by the registration § In a recent case, the Madras High Court restrained use of trade mark CARREFOUR by the defendant in relation to furniture Ingredients of Copyright infringement • • • Plaintiff has ownership of a valid copyright Defendant does anything that hampers the exclusive right of the plaintiff Defendant makes for sale or hire, displays, distributes or imports into India infringing copies of work

Passing Off A Common Law Action “No man may pass off his goods as those of another” Ingredients • Established goodwill or reputation in relation to goods/services in India and/or trans-border reputation • Deception/misrepresentation as regards source of goods/services • Plaintiff likely to suffer damages/harm There is no such thing recognized as a Common law Copyright

Relief - Civil Action • Interim Injunction In case of a strong prima facie case Courts have granted injunction within two days of filing without hearing the other side • Anton Piller order Court may appoint a Local Commissioner to seize infringing goods/materials • John Doe order Enables seizure of infringing goods wherever they may be located and operate against any potential defendant • Direction for Maintenance of Accounts • Permanent injunction On disposal of the law suit which may take approximately 5 – 7 years

• Delivery up of goods • Damages or Account of profits Damages - compensate the party wronged for the loss suffered Account of profits - infringer to give up ill-gotten gains Time Incorporated Vs. Lokesh Shrivastava & Anr. , 2005 § Apart from compensatory damages, awarded EUR 8700 (approx. ) as punitive damages Microsoft Corporation Vs. Yogesh Popat, 2005 § The highest award of damages in IP matter EUR 34700 (approx. ) • Costs Actual costs are rarely awarded Austin Nichols and Co. and Anr. Vs. Arvind Behl and Anr. , 2006 § Award of legal costs EUR 33300 (approx. ), with agreement of both parties

Criminal Remedies Offences • • • Falsification Falsely applying a trade mark False trade description Penalties • • Imprisonment for 6 months to 3 years Fine from EUR 900 to EUR 3500 Procedure • • Complaint before the Court (Judicial Magistrate) Complaint before the Police

Analysis A civil action offers benefit of injunction/damages A criminal action normally preferred where a deterrent needs to be developed Though theoretically a criminal action may be pursued even if clients do not hold a registration, practically, registration is advisable A criminal action may be followed by a civil suit

Considerations • Litigation is expensive and time consuming • Delay in quick redressal on account of limited infrastructure and over burdened Courts • Absence of dedicated Courts for IP matters

However…. . • Indian judiciary has exhibited a pro-active stance in protecting IP rights of litigants • Courts do not suffer from ‘foreign bias’ • Various government initiatives have been taken to raise IPR awareness amongst the general public, the judiciary and the administrative personnel – the police, the bureaucrats as well as customs officials

Administrative Remedies • Customs Import of goods that infringe intellectual property prohibited under Customs Laws. In 2007, Government notified The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 Registration of notice of IP right with the Customs imposes administrative duty on Custom Department to protect Right Holder by blocking import which violate IP rights Condition for registration The Right Holder to execute a General Bond an Indemnity Bond Registration of Notice is either registered or rejected within 30 days Validity - maximum 5 years

Parallel Imports • India recognizes the principle of international exhaustion • Entry of goods bearing a trade mark affixed by the proprietor in another country cannot be blocked Exceptions • Misrepresentation of origin or warranty • Condition of the goods impaired/altered or the goods defaced, degrading the product appearance or the goods have been ‘materially’ reconditioned • Reputation of the trade mark is damaged by impairment of goods • Existence of physical/material differences in the goods authorized for sale in India and those being imported • Imported goods do not comply with local legal/regulatory requirements

gh Samsung Electronic Company Limited & Anr. Vs. G. Choudhary & Anr. , 2006 • Imported products did not conform to local packaging and labeling law • Products did not carry any after sales services and warranty benefits • plaintiff’s own goods from China Old Navy (ITM) Inc. & Ors. , GAP (ITM) Inc. & Ors. , & Banana Republic (ITM) Inc. & Ors. Vs. Deepa Surekha & Ors. • registered trade marks “GAP”, “OLD NAVY” and “BANANA REPUBLIC” manufactured by them • Goods sold in ‘original condition’ without any tampering • authorizing latter to resell • Delhi High Court refused interim relief to restrain defendant

Recommended IP Strategy • Strategic review ought to be conducted to identify the intellectual assets which should be protected • Active steps to seek statutory protection for trade marks even if use is not contemplated in the near future • Token use of marks by way of a small shipment, participation in trade fairs and exhibitions as well as publication of caution notices would be handy in warding off any cancellation action • When misuse is noticed or apprehended, legal action should be initiated at the earliest to avoid prolonged proceedings • Further, in case court proceedings are to be instituted, it is important to choose an appropriate forum as some courts are relatively better versed in IP matters • Differences in practice amongst jurisdictions mandate devising appropriate IP protection and enforcement strategy

Sahil