Intellectual Property
COUNTERFEITING
The central
Government shall, by notification in the official Gazette, establish an
Appellate Board to be known as the Intellectual Property Appellate Board. The
Board shall exercise the Jurisdiction, powers and authority conferred under the
Act. The Board shall have the powers to regulate its own procedure including
the fixing of places and times of its hearing subject to the provisions of this
Act and the rules made there under.
The Appellate
Board shall not be bound by the procedure laid down in the code of civil
procedure but shall be guided by the principles of natural Justice. Trade Mark
Act 1999 provides the provision for the establishment of Appellate Board
The Appellate
Board shall have the same powers as are vested with a civil court under the
code of civil procedure, while trying a suit in respect of following matters: receiving
evidence; issuing commissions for examination of witnesses; requisitioning any
public record; and other matter which may be prescribed.
The District
Court functions under the superintendence and control of the High Court of the
State. Besides, the District Court, there are Courts of Sub-Judges, Munsiff
Courts and Courts of small causes.
The Judiciary
system in India consists of the Supreme Court, High Court and the District
Court. The Supreme Court of India is at the apex of the Judiciary system and
consists of chief Justice of India and other Judges appointed by the president
of India. It is the highest and the final court of appeal in the Country. The
High Court is the highest court at the State level. It consists of the Chief
Justice and other Judges. It supervises the working of all subordinate courts
and drafts rules and regulations for the transaction of business.
Civil Litigation
The objectives
of civil litigation are:
·
provide compensation for the prejudice
caused by infringements;
·
dispose appropriately of the
infringing copies (destruction or other disposal outside the normal channels of
commerce)
·
dispose appropriately of implements
used for infringing activities; and
·
grant injunctions to prohibit further
infringements.
The remedies
typically available in intellectual property infringement actions are
injunctions, damages and account of profits.
Most actions start with an application for some form of preliminary or
interlocutory relief, and in most cases does not get beyond this preliminary
stage.
The Interlocutory Injunction
The period
from the time of commencement of proceedings to the final determination of a
case can allow significant damage to be done to sales and profits and to
reputation, due to other exploitation of material and/or information. Furthermore, the nature of the infringement
or other unlawful conduct may be such as to lead to damages or an account of profits
as ultimately an inadequate remedy. The
defendant may be impecunious or may disappear.
This may be because of the nature of the intellectual property right in
question and the difficulty of reaching a precise estimate of the loss suffered
as the result of an infringement.
The primary matter with which the court is
concerned in granting an interlocutory injunction is the maintenance of a
position that will most easily enable justice to be done when the final
determination is made. The most useful and widely used preliminary remedy is
the interlocutory or interim injunction, the main purpose of which is usually
described as being to preserve the status quo
until the hearing of the main action.
Thus, a court will sometimes order that an earlier position be restored,
in accordance with the requirements of justice.
This is often
because the evidence needed to sustain an application for both interim and
final relief is not readily available and will not become available through the
usual processes of discovery. In such a
case the plaintiff will be unlikely to obtain an interim injunction because he
will not have the necessary evidence. In an increasing number of cases
interlocutory injunctions are not sufficient to protect intellectual property
rights against the threat of continuing infringement. Sometimes the defendant will remove or destroy
the infringing material. The relief granted is an ex parte order for entry and inspection of premises and
removal of evidence. These orders are known as Anton Piller orders, and may be
a necessary step before an interlocutory injunction can be obtained.
The Anton
Piller order derives its name from a court of Appeal decision in the case Anton
Piller AG vs. Manufacturing Processes (1976) Ch. 55. An Anton Piller order has
the following elements:
·
An injunction restraining the
defendant from dealing in the infringing goods or destroying them;
·
An order that the plaintiff’s Advocate
be permitted to enter the premises of the defendants, search the same and take
goods in their safe custody; and
·
An order that the defendant be
directed to disclose the names and addresses of suppliers and customers and
also to fill an affidavit within a specified time giving this information.
In India,
Anton Piller order has been used for the protection of intellectual property.
Moreover, an Anton Piller order has been fine tuned for effective application
of this order. Now, it includes additional safeguards; i.e., lock breaking
power and the freedom to take police assistance in case of anticipated
violence.
There is
another order known as Norwich Pharmacal orders where the court directs not
only the defendant but also third parties to disclose the information.
In order to
address this problem the courts of common law countries have formulated and
developed the Mareva injunction which operates to prevent defendants from
removing assets from the jurisdiction or from disposing or dealing with them
within the jurisdiction in such a way as to frustrate any judgment that may be
entered against them.
Injunction
In the normal
course, a successful plaintiff in an industrial property action will be
entitled to a final injunction. The grant of injunctions is discretionary and only
used in unusual situations.
Damages or Account of Profits
This approach
has also been used in breach of confidence and copyright infringement
cases. Another approach which is more
difficult to prove is through consideration of sales lost to the plaintiff; in
this case the plaintiff is entitled to the entire lost profit.
Damages for
past infringement are then based upon a payment of a royalty in respect of, for
example, each infringing article. But problems do arise here - particularly
when in reality the plaintiff would never have granted a license.
Criminal Procedures
India has
effectively resorted to the criminal procedures for the protection of IPR.
TRIPS Agreement provides:
·
imprisonment and/or monetary fines,
·
penalties,
·
Seizure, forfeiture and destruction of
infringing goods and of any materials and implements the predominant use of
which has been in the commission of the offence.
Enforcement
of IPR in India
India has a strong
Judiciary system. In order to protect IPR in India, the industry and the
enforcement agencies need to step up their efforts and become more innovative
to combat counterfeiting. It is now critical for the Indian industry to
understand the implications of counterfeiting-both legal and economic, to
protect its own business interests in India and abroad. There is a need to
develop advanced authentication technologies for counterfeit detection. On the
enforcement side, various departments such as the customs and police department
need to be aware of the latest techniques being employed in other countries to
detect and counter counterfeiting. The enforcement of IPR is the ability of the
right holder to protect his assets. An efficient system that provides effective
protection through enforcement is necessary to make the IP rights meaningful.
Create a national
Anti-Piracy Task Force to take criminal and civil actions against piracy. If this is not achievable, provide resources
to the states to equip and train state IP Task forces. The Home Ministry should
take the lead in providing this training and resources, and the Home Minister
should issue a strong and widely publicized condemnation of piracy and the
damage it is doing to India and urge all police forces to take immediate action
to root it out;
Set up specialized
fast track IP courts to get around the massive backlog of civil and criminal
cases pending in the Indian court system. Failing that, chiefs of all the high
courts should appoint special judges to try copyright piracy crimes and civil
cases, imposing deadlines for resolving them finally.;
Suo moto raids
against piracy at all levels. This will require a significant increase in the
resources and manpower in the IPR cells and the local police forces;
Reform the judicial
system to prevent unjustified continuances; adopt case management techniques;
eliminate court backlogs and focus on new cases and their speedy conclusion;
Impose deterrent
penalties on pirates and establish clear standards for damages in civil cases,
including implementing a statutory damage system which results in real
deterrence;
Empower customs to
seize, and in particular, destroy, pirated goods; adopt a modern optical disc
law;
Bring the law fully
into compliance with the WIPO treaties to prepare for the new era of
e-commerce.
Conclusion
The Courts play an
important role in hearing appeals from decisions of the industrial property office
and in adjudicating infringement actions. The appeal procedures involves: pre
hearing conference, evidence – real evidence, expert evidence, market survey
evidence, presentation of evidence and final disposition. Appellate Boards are
granted same powers as are vested in a civil court under the code of civil
procedure, while trying a suit in respect of following matters:
receiving
evidence; issuing commissions for examination of witnesses; requisitioning any
public record; and any other matter which may be prescribed.
The basic objectives
of civil litigation are;
to provide
compensation for the prejudice caused by infringements; to dispose
appropriately of the infringing copies to dispose appropriately of implements
used for infringing activities; and to grant injunctions to prohibit further
infringements.
The
intellectual property infringement actions are injunctions, damages and account
of profits. Most actions start with an
application for some form of preliminary or interlocutory relief, and in most
cases does not get beyond this preliminary stage.
In the normal
course, a successful plaintiff in an industrial property action will be
entitled to a final injunction.
