Transcript TRADEMARK INFRINGEMENT & IMITATION OF LABELSENFORCING YOUR IP RIGHTS Jyotsna Balakrishnan Anand & Anand, New Delhi June 2005 [email protected].

TRADEMARK INFRINGEMENT
& IMITATION OF LABELSENFORCING YOUR IP RIGHTS
Jyotsna Balakrishnan
Anand & Anand, New Delhi
June 2005
[email protected]
PROTECTION vs. ENFORCEMENT
Protection refers to obtaining of legal rights
through
such
as
through
creation,
registrations and use of trademarks &
copyright
Enforcement refers to checking third party
infringers by exercising such legal rights &
taking appropriate action against them
WHY ENFORCE YOUR IP RIGHTS?
• Helps in building & maintaining your BRAND
VALUE
• Maintains the aura of EXCLUSIVITY in the
minds of consumers
• Deters infringers and counterfeiters
• Essential if your trademark is to be the
source identifier for your business
KINDS OF TRADEMARK VIOLATIONS
Use of identical mark &
label
for
identical
goods, eg., Timberland
for shirts
Use of identical marks
for dissimilar goods,
eg., Louis Vuitton for
t-shirts
KINDS OF TRADEMARK VIOLATIONS
Use of mark as a trade
name, eg., “Bombay
Connexion” as name
of clothes boutique
Use of deceptively
similar mark & label,
eg., NB instead of LV
KINDS OF RIGHTS THAT CAN VEST
IN A LABEL/PACKAGING
Trademark
rights
(acquired by use and
registration) over:
Word mark ADIDAS
Composite mark
(word + label)
Copyright over the
label as an artistic
work
STAGES OF TAKING
ENFORCEMENT ACTIONS
Identify the nature of counterfeiting in the market:
Manufacturers/Printers/Wholesalers/Retailers
Blatant/Sporadic/Cautious
Kinds of rights that are being infringed- trademark and/or
copyright
Zero in on specific targets
Conduct intensive investigations on these targets to
determine volumes of infringing goods and collect
evidence for taking further action- sample infringing
product, visiting cards, other printed matter
STAGES OF TAKING
ENFORCEMENT ACTIONS
Decide on strategy to adopt for each target
based on:
Kind of entity- wholesaler, retailer,
manufacturer
Volume of infringing goods
Kind of rights being infringed
DIFFERENT STRATEGIES
Issuing cease & desist letters/caution
notices
Negotiation & undertaking
Filing of a civil suit/criminal complaint
CIVIL ENFORCEMENT
SUIT FOR PERMANENT
INJUNCTION
RESTRAINING
INFRINGEMENT
OF
TRADEMARK,
PASSING
OF
AND/OR
COPYRIGHT
UNIQUE JURISDICTION PROVISION IN IP
CASES- SUIT CAN BE FILED IN PLACE WHERE
PLAINTIFF CARRIES ON BUSINESS
REMEDIES THAT CAN BE
OBTAINED IN A CIVIL SUIT
Injunction (an order issued by the court restraining
the defendant from dealing in infringing goods)temporary & permanent
Ad interim (pending proceedings in the suit) or
final
• Anton piller order: Court order appointing a local
commissioner to visit the premises of the defendant
& seize the infringing goods – the order is usually
issued without notice to the defendant (ex parte)
RELIEFS THAT CAN BE
OBTAINED IN A CIVIL SUIT
Damages: Based on estimated lost
profits/lost sales/loss of goodwill, etc.
Rendition of accounts of profits
earned from sales of infringing goods
Delivery up of infringing goods
Example of a successful civil
enforcement action
3 suits filed by Adidas
Saloman AG in the Delhi
High
Court
against
counterfeiters
At
the
initial
stage,
infringing goods were seized
by the Local Commissioner
Cases were decreed recently
& damages of Rs. 15 lakhs
was awarded to Adidas
Saloman
The “Bombay Connection” case
Komal Singh v. J.Bakshi
Suit filed against entity using deceptively similar
trademark “Bombay Connexion” with respect to
clothes. The Defendant has been temporarily
restrained by the Delhi High Court
Examples of successful enforcement of
trademark rights by Indian textile houses
Kala Niketan v. Kala Niketan – Defendant
restrained by the Delhi High Court from
dealing in sarees under the trade name Kala
Niketan
Virendra Dresses v. Varinder GarmentsDefendants restrained from using “Varinder”
as part of their trade name
Factors that
civil suit
strengthen
your
Trademark and/or copyright registration
Reputation and goodwill of the trademark which
show that it has become source identifier for your
goods, eg., sales figures, ads, invoices, length of
use, record of enforcement
Stronger the trademark, wider the protection
Evidence of misuse by the infringer
CRIMINAL ENFORCEMENT
 COGNIZABLE OFFENCE:
 Criminal complaint directly with the police for arrest
&
seizure;
 Criminal complaint before the district court for
seizure.
 NON-COGNIZABLE OFFENCE:
 Criminal complaint before the District Court for
search and seizure warrant against infringing parties;
 Criminal complaint before the District Court for
search and seizure warrant against unknown persons.
TRADEMARK CRIMINAL ENFORCEMENT
• A cognizable, bailable criminal offence
• Punishment extends from 6 months to
3 years
• Fine which may extend to Rs. 1000/-
COPYRIGHT ENFORCEMENT
** A cognizable criminal offence
** A non-bailable offence
** Copyright registration not mandatory
** Punishment extends to 3 years maximum
** Fine extends from Rs. 50,000 to Rs. 3 lakhs
Example of a successful
criminal enforcement action
Criminal
raids
conducted in 2003 by
the Economic Offences
Wing,
Delhi
Police
upon a complaint
Printers
printing
counterfeit stickers &
labels- Levi’s, Adidas,
Lee, DKNY, Timberland
REMEDIES - CIVIL
 CIVIL-ADVANTAGES:
Anton Piller Order,
similar to police.
Matter in control.
Settled/compromised.
Permanent injunction.
The order can be used for
future actions.
Possibility of Damages
etc.
 CIVIL -DISADVANTAGES:
Less deterrent effect.
Less publicity.
High Cost of
litigation.
Consumes more time
to reach logical
conclusion.
REMEDIES-CRIMINAL
CRIMINAL-ADV:
Immediate deterrent
effect.
Lots of publicity.
May lead to Arrest.
May lead to
conviction.
Less expensive.
 CRIMINAL-DISADV:
Can’t settle.
A state case.
Matter not in control.
As a complainant, to be
present on each date of
hearing.
No permanent
injunction.
No damages etc.
EVOLVING METHODS
 To form IPR associations, societies, guilds, etc.
 Ex: BSA, NASSCOM, IPRS, IMA, AGI, etc.
 To establish links with enforcement agencies
 Police, Customs etc.
 To prepare & circulate IPR educating materials
 Booklets, Pamphlets, Enforcement Guides, etc.
 To develop a network of information, advice etc.
 To regularly consult IPR lawyers/experts for advise
CONCLUSION
 To know your intellectual property rights
 To effectively secure / register your IPRs
 To take reasonable steps for promotion
 To have a good network of information
CONCLUSION
 To develop
strategy
a
workable
enforcement
 To regularly allocate funds in anticipation
 To enforce
strategically
your
rights
vigorously
&