SlideShare une entreprise Scribd logo
1  sur  62
Télécharger pour lire hors ligne
CASE STUDIES IN LEGAL
      PURVIEW
 CUSTOMS AND CROSS-BORDER
        MEASURES
IP Enforcement-Remedies
 Civil
  Infringement
  Passing off
 Criminal
 Administrative
 Technological measures
Civil Litigation- Objective

 To provide compensation to the
  right holder
 To prohibit future infringement
 Appropriate disposal of infringing
  material and all tools/ plates / dyes
  used for manufacturing the same.
Civil Action: Reliefs

 Injunctions against violations
 Raids & Seizures
 Damages OR Accounts of Profits
 Delivery up/ Discovery of infringing material /
  documents
 Preservation of assets
 Copyright owner- Infringing material is deemed
  to be his property.
Interim / Interlocutory Injunction

 Often the real remedy
 Objective: To maintain status quo
 Time is of essence
 Factors considered in granting :
   Prima facie case
   Balance of convenience
   Irreparable injury if injunction not granted
  Gujarat Bottling Company v. Coca Cola 21 IPLR 201
Interlocutory injunction
 Statutory recognition
 Importance is also recognized by the judiciary
   Landmark Supreme Court judgments
Wander Ltd. & anr. vs. Antox India P.
   Ltd.(1990 (2) ARBLR 399 SC, 1990 Supp (1) SCC
   727)


Supreme Court on interlocutory injunctions:
“Usually, the prayer for grant of an interlocutory
 injunction is at a stage when the existence of a
 legal right asserted by the plaintiff & its alleged
 violation are both contested… The object is to
 protect the Plaintiff against injury by violation
 of his rights for which he could NOT
 adequately be compensated in damages
 recoverable in the action if the uncertainty were
 resolved in his favour at the trial.
Wander Ltd. & anr. vs. Antox India P.
   Ltd. 1990 (2) ARBLR 399 SC, 1990 Supp (1) SCC
   727


Supreme Court on Balance of Convenience:
“The need for such protection must be weighed
 against the corresponding need for the
 defendant to be protected against injury
 resulting from his having been prevented from
 exercising his own legal rights for which he
 could not be adequately be compensated. The
 Court must weigh one need against another
 and determine where the balance of
 convenience lies.”
Midas Hygiene Industries P. Ltd. V. Sudhir
   Bhatia & Anr.(2004 (73) DRJ 647, 2004 (28) PTC
   121 SC)


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 if it prima facie appears that the
 adoption of the mark itself was dishonest”.
Lakshmikant V. Patel vs. Chetanbhat
   Shah(December, 2001)

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”.
Enforcement of IPRs -
      Trademarks

 Indian Courts have applied and expanded
 principles of trans-border reputation even if:

  The Plaintiff has no presence in India
  The goods of the defendant are entirely dissimilar
   (dilution principle recognized)
    Provided knowledge of the mark acquired through various
    sources of trans-border reputation
Enforcement- Domain names

 M/s Satyam Infoway Ltd. V. Sifynet Solutions Pvt.
 Ltd. (2004) 6 SCC 145
   SC has held that domain names are subject to the
   legal norms applicable to other intellectual
   properties, such as trademarks.
 Yahoo Inc. v. Akash Arora 1999 PTC 201
   SC applied general trademark law to the internet.
Ex Parte Order

 When the matter is extremely urgent
 At a preliminary hearing of the interim
  application without notice to the answering
  defendant.
 Granted before the motion for interim
  injunction is fully heard but for a limited period
  only.
 After grant of ex parte injunction, the Court
  must proceed with disposal of the interim
  injunction application after the defendant has
Ex Parte Orders

 Injunction;
 Discovery of documents;
 Preserving of infringing goods, document of other
  evidence related to the subject matter of the suit;
 Restraining the defendant from disposing off his
  assets in a manner which may adversely affects
  rights of the IP owner to claim damages, costs or
  other pecuniary remedies.
Anton Pillar Order
 Anton Pillar v. Manufacturing Process (1976) RPC
  719
 Similar to ex parte interlocutory order
 After a hearing, Court authorizes plaintiff to
  inspect premises of defendant and take inventory
  of the offending material
Anton Pillar Orders

 Sensitive in nature
 Pre conditions for grant:
   Extremely strong prima facie case
   Damage (potential or actual) very serious
   Clear evidence that defendants have in their
   possession, incriminating document/ material
   which they may destroy.
John Doe Order
 Court appointed commissioners to enter the
  premises of any suspected party and collect
  evidence of infringement.
 Suspected party may not be named in the suit.
 Indian Courts have conferred expanded powers to
  commissioners- Roving commissioners
 Ardath Tobacco Co. Ltd. vs. Mr. Munna Bhai & Ors.
Mareva Injunction

 Freezing order
 Prevents the infringer / offender from removing /
  disposing of assets in which the gains from
  infringement have been invested.
 Aim- unjust enrichment of the defendant and to
  ensure payment of damages to Plaintiff
Final injunction
 To ascertain rights of the parties
 Remedies for Breach of injunction
   Police assistance
   Assistance of administrative bodies
   Contempt proceedings
Damages / Account of Profits

 These are mutually exclusive alternative
  remedies
 Account of profits- An equitable relief
   Plaintiff adopts defendant’s acts as his own.
 Damages- for the losses suffered by the Plaintiff
 on account of the defendant’s acts
Damages- recent trends

 Time Inc. vs. Lokesh Srivastava

   Punitive damages awarded for the first time – Rs 5
    lakhs
   Distinction between compensatory damages and
    punitive damages was made out.
Time Incorporated vs. Lokesh
Srivastava
Delhi High Court:
“The award of compensatory damages to a
 plaintiff is aimed at compensating him for the
 loss suffered by him whereas, punitive
 damages are founded on the philosophy of
 corrective justice and as such, in appropriate
 cases these must be awarded to give a signal
 to the wrong-doers that law does not take a
 breach merely as a matter between rival
 parties but feels concerned about those also
 who are not party to this but suffer on account
Damages- recent trends
 Microsoft Corporation vs. Yogesh Papat & anr.
 2005 (1) CTMR 424

  Highest costs and Damages ever awarded for IP
   infringement by Indian Courts
  Approximately Rs 20 lakhs
Criminal Remedies- TM
 Falsification of Trademarks / Infringement of
  copyright is a criminal offence
 A complaint may be filed before a Magistrate; OR
 Police can register an FIR and prosecute
  directly; (statutory requirement to obtain the
  Registrar’s approval.
 Registration is not a requirement.
Criminal Remedies- TM/ CR

 Cognizable offence
 Imprisonment- 6 months to 3 years
 Fine- Rs 50,000 to 2 lakhs
 Enhanced penalty on subsequent convictions.
 Seizure, forfeiture and destruction of infringing
 goods/ material for placing before the
 Magistrate.
Civil vs. Criminal

   Less hassle for the plaintiff
   Jurisdictional advantage
   Interlocutory Injunctions
   Damages
   Possibility of settlement

However…
 No deterrence
 No fear factor- no arrest
 Expensive & lengthy
Administrative Remedies
 Indian Customs Act, 1962
   Deals with import/ export of goods including
   protection of patents, trademarks and
   copyrights.
 Confiscation of infringing material by Excise
  Authorities
 Restrictions against parallel importation of
  goods
Technological measures
 Holograms
 Electronic devices
 Encryption
 Anti-copy devices
Enforcement of IPRs – TM Case
Studies.
 M/S HITACHI VS AJAY KR. AGGARWAl 1996
  PTC(16) (DB)
HITACHI=HITAISHI.
 AMRUTANJAN LTD. VS AMARCHAND
  SOBACHAND PTC(Suppl.) (1) 230(Mad)-
AMRUTANJAN PAIN BALM= AMAR’S PAIN
  BALM.
 RUSTON & HORNBY LTD. VS ZAMINDARA
  ENGINEERING CO. AIR 1970 SC 1649
RUSTON= RUSTAM INDIA.
CONTD.
 K.R. CHINNA KRISHNA CHETTIAR VS SRI
  AMBAL & CO. AIR 1970 SC 146- SRI ANDAL =
  SRI AMBAL.
 M/S PIDILITE IND. PVT.LTD. VS MITTEES
  CORP. AIR 1989 DELHI 157- FEVICOL=
  TREVICOL.
 COLGATE PALMOLIVE CO. VS SUNDEEP
  ENTERPRISES 1995-PTC-10.
HARRISON= HARICON.
 LAKME LTD. VS SUBHASH TRADING 1996
  PTC(16) 567
LAKME= LIKEME.
IMITATION DOES NOT MEAN
DUPLICATION-DESIGN
JUDGEMENT
 The landmark CASTROL VS TIDEWATER found the
  Indian courts uphold a major design justiciablity that
  mere duplication does not really amount to
  duplication.
 HIGH COURT OF CALCUTTA Suit No. 415 of 1993
  Ordinary Original Civil Jurisdiction Castrol India
  Ltd...............Petitioner Versus Tide Water Oil Co. (I)
  Ltd................Respondents Ruma Pal, J. Decided on :
  August 26, 1994 •
 The sequence of the obligation of the court in
  considering an application for infringement of a design
  is first to consider whether protection is claimed in
  respect of a design or of the mode of manufacture.
  The first is protected by the Design Act 1911 and the
  second by the law of patents.
INFRINGEMENT BY SUBSEQUENT
PATENT??
 In the famous landmark case of HINDUSTAN
  UNILEVER LTD VS LALIT WADHWA 200735
  PTC DEL, its was held by the court that the
  RIGHT OF PATENTEE IS ONLY AN
  EXCLUSIONARY RIGHT.
 The court also held under the ambit of sec.64 of
  Patents Act, that whenever a subsequent
  patentee brings a suit for infringement then every
  ground on which it may be revokes under sec
  64, all of them shall be availaible as grounds for
  defence. This means that when a subsequent
  patentee brings a suit for infringement against an
  earlierpatent holder, then the earlier patent holder
  can claim priority date as a valid defence.
COPYRIGHT- IDEA VS.
EXPRESSION DICHOTOMY
 R.G. ANAND V. DELUX FILMS (1978)
 There can be no copyright in an idea, subject
  matter, themes, plots, or historical or legendary facts
  and violation of copyright in such cases is confined to
  form, manner, and arrangement and expression of
  idea by the author of copyrighted work.
 One of the safest and surest test to determine
  whether or not there has been a violation of copyright
  is to see if the reader, spectator or the viewer after
  having read or seen both works is clearly of the
  unmistakable opinion and gets the impression that
  subsequent work appears to be a copy of original.
 As a violation of copyright amounts to an act of piracy
  it must be proved by clear and cogent evidence after
  applying the tests of equity.
CONTD.
MR. ANIL GUPTA AND ANR. V. MR. KUNAL DASGUPTA AND ORS [97(2002) DLT 257]
   Court held that the concept developed and evolved by the plaintiff was a the result of the work
    done by the plaintiff upon the material which may be available in the public domain.
    However, what made the concept confidential was the fact that the plaintiff had used his brain
    and thus produced a unique result applying the concept. The Court granted an injunction.
KING FEATURES SYNDICATE INC VS SUNIL AGNIHOTRI & ORS ( 1997 PTC (17)
   In this case there was a dispute on use of BETAAL & PHANTOM wherein the court refused
    the injunction on the grounds that there is no copyright in an idea/title- defendant inspired only
    by idea but expression is original.
RAJA POCKET BOOKS VS RADHA POCKET BOOKS( 1997 PTC (17)
   NAGRAJ –NAGESH – DISPUTE ON SIMILARITY OF COMIC CHARACTERS.
HINDUSTAN PENCIL PVT LTD VS UNIVERSAL TRADING COMPANY(1999PTC(19)
This case law establishes the test of copyright infringement wherein it has been established that in
   case there are very minor differences between two works and the get-up and colour
   combination are copied per se then it shall amount to copyright infringement.
REGISTRATION NOT MANDATORY
FOR PROTECTION OF
COPYRIGHT
 GLAXO OPERATIONS UK LTD. VS-
  SAMRAT PHARMACEUTICALS,. AIR
  1984 Delhi 265!
 THIS IS A LANDMARK JUDGEMENT
  WHEREIN IT HAS BEEN ESTABLISHED
  BY WAY OF ADJUDICATION THAT
  REGISTRATION OF COPYRIGHT IS NOT
  MANDATORY FOR SEEEKING REMEDY
  FOR INFRINGEMENT OF COPYRIGHT.
 REMEDY PERTINENT TO COPYRIGHT
  IS AVAILAIBLE EVEN WOTHOUT
  REGISTRATION AMBITS.
NEED FOR CUSTOMS LAWS IN
     THE FIRST PLACE
      Customs is an authority or agency in a country
       responsible for collecting and safeguarding
       customs duties and for controlling the flow of
       goods including animals, transports, personal
       effects and hazardous items in and out of a
       country. Depending on local legislation and
       regulations, the import or export of some goods
       may be restricted or forbidden, and the customs
       agency enforces these rules.
      In India, the basic law for levy and collection of
       customs duty is Customs Act, 1962. It provides
       for levy and collection of duty on imports and
       exports, import/export procedures, prohibitions on
36     importation and exportation of
       goods, penalties, offences, etc.
CUSTOMS PROVISIONS TO
     CONTROL COUNTERFEIT MENACE

      Customs Act, 1962 prohibits import of goods that
      infringe intellectual property. Section 11 of the Act
      empowers the Central Government, for the purposes
      specified in subsection 11(2), to prohibit import or
      export of goods of any description by issuing a
      notification.




37
EFFICACY OF 2007 RULES IN GOOD
     LEGAL MEASURE
     Cases of suspension of goods by Indian Customs

      The Customs department, in July 2008, ordered absolute
     confiscation of counterfeit goods in the matter concerning the
     importer M/s. Womens World Jewels Pvt. Ltd., and M/s. Impac
     Enterprises who imported consignment containing cosmetics,
     gift items etc., bearing registered trademarks „Nivea‟, „Dove‟,
     „Sunsilk‟ and „L‟Oreal‟. Commissioner of Customs noting that
     the act of importing into India and/or market these goods in
     India without having any authorization from the manufacturers,
     amounted to infringement of rights of right holders and thus
     prohibited the importer from importing the goods.

38
Contd.
      Another order was passed in 2008 against M/s P.S.
      Grover and Sons for importing cosmetic and toiletries
      products of registered trademark „L‟Oreal‟ and
      „Garnier‟ for importing without first having obtained
      authorization from registered trademark owners M/s
      L‟Oreal and M/s Laboratoire Garnier & CIE. The
      Customs Department not only ordered confiscation of
      imported goods but also imposed huge penalty of Rs
      25,000/- on importer and also Rs 5,000/- on partner of
      importer.


39
ISSUES RAISED BY
     IMPLEMENTATION OF RULES
     The Ram Kumar Patent Saga

      This litigation involves a patent granted to Mr. Soma Sundaram Ram Kumar on
         a “Mobile telephone with a plurality of SIM cards allocated to different
         communication networks”. Mr. Ram Kumar sought to enforce the patent rights
         against a number of multinational and national importers including Hansum
         India, Samsung and Micromax.

         Mr. Ram Kumar filed an application in the Chennai Patent office on March
         4, 2002 containing 4 claims and 12 drawings and was allotted Patent
         Application No. 161/MAS/2002 which was granted in 2008. Mr. Ram
         Kumar, then filed an application under Rule 3 of the Intellectual Property
         Rights Intellectual Property Rights (Imported Goods) Enforcement
         Rules, 2007. Mr. Ram Kumar filed an application on December 8, 2008 with
         the Officer of Commissioner of Customs under the Customs Notification No.
         47/2000 read with Circular No. 41/2007 Customs Circular dated 29.10.2007
         called the Instructions for Implementation of Intellectual Property (Imported
         Goods) Enforcement Rules, 2007.


40
CONTD.
      The first course of litigation before the Indian Courts was with respect
       to the constitutionality of the Rules. In this petition, Samsung raised the
       issue of lack of expertise of the Customs authorities. However, the
       petition had to be subsequently withdrawn for the lack of territorial
       jurisdiction.

      The second course of litigation was before the Madras High
       Court, wherein Mr. Ram Kumar sought a restraining order against
       manufacturers such as Samsung, Micro Electronics and Spice
       Mobile, restraining them from manufacturing and selling multiple SIM
       holding mobile phones.

      The third course of litigation was before the customs authorities and
       highlights the concerns on behalf of the importers. The claims related to
       dual SIM which allowed simultaneous communication multiple
       headsets


41
CONTD.
      The Chennai customs authority upheld the contentions of Hansum India Ltd.
       Holding that the claim 1 of Mr. Ram Kumar patent had limited scope. The
       claims, therefore, were held not to be infringed by the cell phones
       manufactured by Hansum since these cell phones used a single
       headphone/earphone jack. Similarly, the New Delhi customs authority, in an
       order dated 8th June, 2009, by J.P. Kundu, the Assistant Commissioner of
       Customs, found that claim made by Mr. Ram Kumar was vexatious and the
       impugned goods were covered by the prior art declared by him.

      Against the orders of customs authorities, Mr. Ram Kumar filed writ petition in
       the Madras High Court, dismissing the petition, held that the proper forum for
       the redressal was the Customs Appellate Tribunal, an authority envisaged as the
       appellate authority under the Customs Act, 1962. Therefore, at present, the
       orders of the Customs administration allowing the clearance of the goods from
       the Mumbai, Chennai and Delhi ports stand affirmed and, the stand of the
       importers has been upheld.




42
FAMOUS CISCO ADJUDICATION
      The case involving parallel imports and trademarks in
       India, Cisco Technology Vs Shrikant (2005 PTC 538
       DEL.) the plaintiff‟s employed sec. 29(6) (c) of custom
       act read with sec 140 defense and were successful in
       getting an exparte order directing the customs
       authorities to notify all ports to bar imports of
       defendant goods and also appointing a local
       commissioner to seize all goods bearing the mark in
       issue and inventory the same.



43
PARALLEL IMPORTS- A TRADE
     MENACE
      A parallel import is a non
       counterfeit product imported from another country
       without the permission of the intellectual
       property owner. Parallel imports are often referred
       to as grey product, and are implicated in issues
       of international trade, and intellectual property.
      Parallel importation infringes the right of the right
       holder who has the exclusive right to trade in
       such goods under the trade mark in a particular
       area.


44
OLD SAMSUNG CASE(2006)
      In the Judgement of the Delhi High Court in Samsung
       Electronics Company Ltd. & Anr. vs G.Choudhary & Anr((
       MANU/DE/3161/2006) defendants, who were the parallel
       importers were held liable for infringement of Trademark.
       The registered owner of the Trademark “Samsung” filed a
       suit against the defendants for importing from China and
       selling in cartridges and toners branded “Samsung”
       manufactured by the plaintiff itself in China. The plaintiff
       argued that although the products are genuine, they were
       not meant for Indian markets. The reasons by the plaintiff
       included that the descriptions that accompanied the
       products were in Chinese, there was no warranty offered
       and that the use of these products were likely to constitute a
       breach of warranty of other legally purchased machinery.


45
THE NEW SAMSUNG
     CASE(2012)
      In FEB 2012, the Delhi High Court, in the famous
       SAMSUNG ELECTRONICS VS KAPIL WADHWA
       AND ORS CASE, ruled that selling genuine imported
       products in India without the rights holder‟s consent
       constitutes infringement. If the Division Bench of the
       Court upholds that decision – in favour of Samsung –
       brand owners should find it easier to stop grey goods
       reaching the Indian market. IP owners and lawyers
       have welcomed this ingenuous ruling.
                 The 1st plaintiff in the case, was Samsung
       Electronics Company Limited, Korea and the 2nd
       plaintiff was its Indian subsidiary and exclusive
       licensee in India. The 1st plaintiff produced records to
       show 7 registrations for the mark “SAMSUNG” across
46     classes 7, 9 and 11.
CASE HIGHLIGHTS & KEY LAW
     FACTS
      The questions primarily arising were:


      1. Does sale of imported, genuine products
      without consent of the right holder in
      India, constitute infringement under section 29(1)
      read with 29(6)?

      2. Does section 30(3) recognise national
      exhaustion or international exhaustion?

      3. Does meta tagging and deep hyperlinking of a
      registered trademark constitute infringement?
47
Law facts
      In answering the first question, the Court held that
      any importer who is not a registered proprietor or
      permissive right holder, even if importing genuine
      products, is culpable of infringement. There is
      also an interesting observation that had the
      legislative intent been to facilitate free movement
      of goods, section 29(6) would have not existed at
      all. These fetters on the right of importation of
      genuine goods, is justified on the basis of section
      29(1), which does not provide any distinction
      between genuine and non-genuine goods. In the
      absence of any legislative provision or exception
      for genuine imported goods, such importation is
48
      deemed to be an act of infringement.
Exhaustion theory
      In answering the second question, the Court held that section 30(3)
       recognizes only national exhaustion in India. The section is interpreted
       to mean that once goods are acquired by a person from the registered
       proprietor within the same market, the registered proprietor cannot turn
       around and state that there in an infringement of his trademark on the
       count that there is change of ownership by way of an assignment
       between the registered proprietor and some other person and seek
       prohibition on the dealings of the goods. This cannot subsume in favour
       of a person acquiring goods from a foreign market. The implication and
       effect of section 30(3) is stated to be limited to acquisitions within the
       domestic market. Section 30(3) permits an exception only on those
       goods which bear registered trademarks, and are acquired lawfully, and
       the word “lawfully” is to include the trademark law in force. The only
       “market” for the purpose of section 30(3) is deemed to be the Indian
       market. The Court unequivocally held that section 30(3) does not
       recognize any concept of international exhaustion, and the section
       operates only within the market where the registration of the mark
       extends. There is also considerable discussion on the UK, EU and
       American concepts of exhaustion. The Xerox case is distinguished on
       the basis that it dealt with second hand imported goods and is on a
       different set of facts and circumstances.
49
HYPERLINKING AND META-
     TAGGING
      On the issue of meta tagging and deep hyper
      linking of registered trademarks, the Court held
      that the promotion on the basis of the same in
      order to take advantage of the plaintiff‟s
      registered trademark cannot in any manner be
      categorized as fair use, and would tantamount to
      an act of infringement.




50
WARNER CASE
 In another landmark case, the Delhi High
 Court, in the Time
Warner Inc. vs Lokesh Srivastava & Another(2005
 (30) PTC 3 (Del.).), awarded punitive and
 exemplary damages, in addition to compensatory
 damages for flagrant infringement of trademarks
 and copyrights. This stringent action was taken by
 the court to highlight the fact that the breach of
 IPRs was a wrong done not only to the plaintiff
 but also to the society at large and the consumers
 who suffer on account of that deception.
DELL CASE- CONJURING
CONTROVERSY
 Recently, it has been reported that the
  Commissioner of Customs has not only allowed
  the parallel imports of Dell computers into the
  country but also ordered Dell to pay demurrage &
  warehousing charges to the importers whose
  goods had been seized for over two months due
  to a complaint made by Dell.
 The DELL order has whipped up controversy
  wherein the Customs Commissioner has allowed
  the parallel import of Dell computers into India on
  the grounds that the Trade Mark Act, 1999 did not
  forbid such imports.
DELL CASE FACTS
 The basic facts of the case are simple. Three
 Indian importers, by the names of Venktron
 Digital Systems Pvt. Ltd., M/s Sapphire Micro
 System & Momentum Technologies Inc. Pvt. Ltd.
 were in the process of importing approximately
 450-500 Dell laptop computers into India. During
 the process of clearing the consignment at
 Customs, an alert was registered under the IPR
 Import Rules for possible trademark
 infringement, due to a prior registration, under the
 IPR Import Rules, 2007 for the mark „Dell‟, by Dell
 India Pvt. Ltd.
CONTD.
 After the clearance of the consignment was suspended
  under the IPR (Imported Goods) Enforcement
  Rules, 2007, a representative of Dell India was allowed to
  inspect the consignment to confirm possible infringement
  after which a formal hearing was held where both, the
  importers and Dell India were afforded an opportunity to be
  heard.

 During the course of the hearing before the Customs
  Commissioner, the Delhi High Court pronounced its order
  in the Samsung case prohibiting parallel imports under the
  Trade Marks Act, 1999. Apart from the Samsung order, the
  „rights holder‟, Dell, also brought to the attention of the
  Court several other judgements from Indian and foreign
  courts on the subject of parallel imports being barred under
  Indian law. The Defendants for their part discussed several
  case law- including the new Samsung case, supporting
  their defence that Section 30(3) of the Trade Marks
  Act, 1999 allowed for parallel imports.
ISSUE OF CONCERN
 The major issue however with the Delhi High
 Court‟s Samsung order was that it had been
 appealed and the Division Bench hearing the
 appeal had passed a series of orders during the
 course of the appeal, which by the way is still
 pending final arguments. While the importers tried
 to argue that the Samsung order had been stayed
 by the Division Bench, the „rights-holder‟ tried to
 argue that the Division Bench had not yet stayed
 the operative part of the Samsung order.
DELL ORDER
INTERNATIONAL FOCUS ON
CUSTOM IMPORT RULES
 Various countries in the world have of late been
  focusing on formulation and implementation of
  stringent rules in order to control counterfeit
  trade.
 International organisations like the World
  Intellectual
Property Organisation (WIPO), the WCO and the
International Criminal Police Organisation
  (INTERPOL),
along with the business community, are toiling hard
 multilaterally to determine new strategies to fight
  against
Principle Socio-economic Effects of
Counterfeiting
INNOVATION & GROWTH   Reduction in incentives to
                      innovative
                      - Possible negative effects
                      on medium
                      and long term growth rates
CRIMINAL ACTIVITY     Increase in flow of financial
                      resources
                      to criminal networks, thereby
                      increasing their influence in
                      economies
ENVIRONMENT           Sub-standard infringing
                      products can
                      have negative environmental
                      effects
EMPLOYMENT            Shift of employment from
                      rights
                      holders to infringing firms.
                      Child labour
CHINA MILK CONTROVERSY-
HEALTH HAZARD OF
COUNTERFEITANCE
 The 2008 Chinese milk scandal was a food
  safety incident in the People's Republic of
  China, involving milk and infant formula, and
  other food materials and components, adulterated
  with melamine.
 By November 2008, China reported an estimated
  300,000 victims, with six infants dying from kidney
  stones and other kidney damage, and a further
  860 babies hospitalised.The chemical appeared
  to have been added to milk to cause it to appear
  to have a higher protein content. This is clearly an
  incident of poor quality additives to ,milk causing
  huge health damages.
IMPACT OF
COUNTERFEITANCE
 The major effects of counterfeiting and piracy on
  governments are foregone tax revenues in the form of
  Sales Tax, Excise Tax, Income Tax and Customs Duty
  and so on.
 Tax revenue losses are particularly high in certain
  sectors like tobacco and alcoholic beverages where
  excise taxes are high. The ASSOCHAM found that
  counterfeiting and piracy has robbed the Indian
  government of US$31.25bn in lost tax revenue.
 Also, supplementary expenses are linked with fighting
  counterfeiting wherein huge amount of costs are
  spent with customs and related law enforcement
  agencies and related judicial proceedings.
  Besides, significant costs are incurred while handling
  seized goods.
WTO ON COUNTERFEITING
 The World Trade Organisation (WTO) Trade Related
  Aspects of Intellectual Property Rights (TRIPs)
  Agreement incorporates provisions intended to
  address the problem of counterfeit goods in
  international trade. The preamble of the TRIPs
  Agreement indicates that members recognise the
  need for a multilateral framework of principles, rules
  and disciplines dealing with international trade in
  counterfeit goods.
 In fact, Article 51, footnote 14 of TRIPs, defines the
  term counterfeit trademark goods as any
  goods, including packaging, bearing without
  authorisation a trademark which is identical to the
  trademark validly registered in respect of such goods
  or which cannot be distinguished in its essential
  aspects from such a trademark and which thereby
  infringes the rights of the owner of the trademark in
  question under the law of the country of importation.
AIM BEHING ANTI-COUNTERFEIT
DRIVE
 To raise awareness on the problems associated
 with counterfeiting and piracy;

 Promote better legislation and enforcement;


 Enhance cooperation and co-ordination; build
 capacity; and

 Promote solutions, particularly in the key focus
 area of health and safety risks related to
 counterfeit products.

Contenu connexe

Tendances

Enforcement of Trademarks, Patents and Copyrights
Enforcement of Trademarks, Patents and CopyrightsEnforcement of Trademarks, Patents and Copyrights
Enforcement of Trademarks, Patents and CopyrightsLawPlus Ltd.
 
Guide for de-mystifying law of trade mark enfocrement and litigation in india
Guide  for  de-mystifying law of trade mark enfocrement and litigation in indiaGuide  for  de-mystifying law of trade mark enfocrement and litigation in india
Guide for de-mystifying law of trade mark enfocrement and litigation in indiaVijay Dalmia
 
Enforcement Of Intellectual Property Rights Through Customs Vpd Final
Enforcement Of Intellectual Property Rights Through Customs Vpd FinalEnforcement Of Intellectual Property Rights Through Customs Vpd Final
Enforcement Of Intellectual Property Rights Through Customs Vpd FinalVijay Dalmia
 
A guide-to-patent-litigation-in-fed-court-2016
A guide-to-patent-litigation-in-fed-court-2016A guide-to-patent-litigation-in-fed-court-2016
A guide-to-patent-litigation-in-fed-court-2016Larry Kolodney
 
Intellectual Property Rights
Intellectual Property Rights Intellectual Property Rights
Intellectual Property Rights KhyatiTongia
 
Doctrine of equivalants
Doctrine of equivalantsDoctrine of equivalants
Doctrine of equivalantsAltacit Global
 
Intellectual property appellate board
Intellectual property appellate boardIntellectual property appellate board
Intellectual property appellate boardUrmila Aswar
 
Conjoint survey paper
Conjoint survey paperConjoint survey paper
Conjoint survey paperJaeWon Lee
 
2019 q4-guide-to-patent-litigation-in-federal-court final
2019 q4-guide-to-patent-litigation-in-federal-court final2019 q4-guide-to-patent-litigation-in-federal-court final
2019 q4-guide-to-patent-litigation-in-federal-court finalLarry Kolodney
 
Guide for de mystifying law of trade mark litigation in India
Guide for de mystifying law of trade mark litigation in IndiaGuide for de mystifying law of trade mark litigation in India
Guide for de mystifying law of trade mark litigation in IndiaVijay Dalmia
 
Enforcement of intellectual property rights for sme
Enforcement of intellectual property rights for smeEnforcement of intellectual property rights for sme
Enforcement of intellectual property rights for smeJane Lambert
 
Compulsory liscencing
Compulsory liscencingCompulsory liscencing
Compulsory liscencingvishnugm
 
CTR-vs-Sergi (Bombay High Court Order by Justice Gautam Patel)
CTR-vs-Sergi (Bombay High Court Order by Justice Gautam Patel)CTR-vs-Sergi (Bombay High Court Order by Justice Gautam Patel)
CTR-vs-Sergi (Bombay High Court Order by Justice Gautam Patel)Gaurav Phadnis
 
Patent,copyright,trademark
Patent,copyright,trademarkPatent,copyright,trademark
Patent,copyright,trademarkPeer IqBal
 

Tendances (19)

Enforcement of Trademarks, Patents and Copyrights
Enforcement of Trademarks, Patents and CopyrightsEnforcement of Trademarks, Patents and Copyrights
Enforcement of Trademarks, Patents and Copyrights
 
Guide for de-mystifying law of trade mark enfocrement and litigation in india
Guide  for  de-mystifying law of trade mark enfocrement and litigation in indiaGuide  for  de-mystifying law of trade mark enfocrement and litigation in india
Guide for de-mystifying law of trade mark enfocrement and litigation in india
 
Enforcement Of Intellectual Property Rights Through Customs Vpd Final
Enforcement Of Intellectual Property Rights Through Customs Vpd FinalEnforcement Of Intellectual Property Rights Through Customs Vpd Final
Enforcement Of Intellectual Property Rights Through Customs Vpd Final
 
A guide-to-patent-litigation-in-fed-court-2016
A guide-to-patent-litigation-in-fed-court-2016A guide-to-patent-litigation-in-fed-court-2016
A guide-to-patent-litigation-in-fed-court-2016
 
Injunction
InjunctionInjunction
Injunction
 
Intellectual Property Rights
Intellectual Property Rights Intellectual Property Rights
Intellectual Property Rights
 
Test for determining infringement of patents
Test for determining infringement of patentsTest for determining infringement of patents
Test for determining infringement of patents
 
Patent
PatentPatent
Patent
 
Doctrine of equivalants
Doctrine of equivalantsDoctrine of equivalants
Doctrine of equivalants
 
Ipr and patent
Ipr and patent Ipr and patent
Ipr and patent
 
Intellectual property appellate board
Intellectual property appellate boardIntellectual property appellate board
Intellectual property appellate board
 
Patent licensing
Patent licensingPatent licensing
Patent licensing
 
Conjoint survey paper
Conjoint survey paperConjoint survey paper
Conjoint survey paper
 
2019 q4-guide-to-patent-litigation-in-federal-court final
2019 q4-guide-to-patent-litigation-in-federal-court final2019 q4-guide-to-patent-litigation-in-federal-court final
2019 q4-guide-to-patent-litigation-in-federal-court final
 
Guide for de mystifying law of trade mark litigation in India
Guide for de mystifying law of trade mark litigation in IndiaGuide for de mystifying law of trade mark litigation in India
Guide for de mystifying law of trade mark litigation in India
 
Enforcement of intellectual property rights for sme
Enforcement of intellectual property rights for smeEnforcement of intellectual property rights for sme
Enforcement of intellectual property rights for sme
 
Compulsory liscencing
Compulsory liscencingCompulsory liscencing
Compulsory liscencing
 
CTR-vs-Sergi (Bombay High Court Order by Justice Gautam Patel)
CTR-vs-Sergi (Bombay High Court Order by Justice Gautam Patel)CTR-vs-Sergi (Bombay High Court Order by Justice Gautam Patel)
CTR-vs-Sergi (Bombay High Court Order by Justice Gautam Patel)
 
Patent,copyright,trademark
Patent,copyright,trademarkPatent,copyright,trademark
Patent,copyright,trademark
 

Similaire à Customs and Cross-border measures

Legal Aspects PowerPointPresentation F&V.pptx
Legal Aspects PowerPointPresentation F&V.pptxLegal Aspects PowerPointPresentation F&V.pptx
Legal Aspects PowerPointPresentation F&V.pptxFortunate24
 
Passing off in Torts.pptx
Passing off in Torts.pptxPassing off in Torts.pptx
Passing off in Torts.pptxRahiSamuelAlhat
 
IAM Yearbook 2016_Vringo
IAM Yearbook 2016_VringoIAM Yearbook 2016_Vringo
IAM Yearbook 2016_VringoDavid Cohen
 
Guide for de mystifying law of trade mark litigation in India-2014
Guide for de mystifying law of trade mark litigation in India-2014Guide for de mystifying law of trade mark litigation in India-2014
Guide for de mystifying law of trade mark litigation in India-2014Vijay Dalmia
 
Laches and acquiescence
Laches and acquiescenceLaches and acquiescence
Laches and acquiescenceAltacit Global
 
Bus law arbitration
Bus law  arbitrationBus law  arbitration
Bus law arbitrationAirtel India
 
Phil Pharmahealth, Inc. vs. Pfizer, Inc. et. Al, G.R. No. 167715, Nov. ‘10.pdf
Phil Pharmahealth, Inc. vs. Pfizer, Inc. et. Al, G.R. No. 167715, Nov. ‘10.pdfPhil Pharmahealth, Inc. vs. Pfizer, Inc. et. Al, G.R. No. 167715, Nov. ‘10.pdf
Phil Pharmahealth, Inc. vs. Pfizer, Inc. et. Al, G.R. No. 167715, Nov. ‘10.pdfElleAlamo
 
2019 q4-guide-to-patent-litigation-in-federal-court final
2019 q4-guide-to-patent-litigation-in-federal-court final2019 q4-guide-to-patent-litigation-in-federal-court final
2019 q4-guide-to-patent-litigation-in-federal-court finalLarry Kolodney
 
Inter Partes Review (IPR) - A Brief Understandings
Inter Partes Review (IPR) - A Brief UnderstandingsInter Partes Review (IPR) - A Brief Understandings
Inter Partes Review (IPR) - A Brief UnderstandingsManoj Prajapati
 
USPTO & IIPI Conference on Harnessing IP to promote Traditional Arts and ...
USPTO & IIPI Conference on Harnessing IP to promote Traditional Arts and ...USPTO & IIPI Conference on Harnessing IP to promote Traditional Arts and ...
USPTO & IIPI Conference on Harnessing IP to promote Traditional Arts and ...Apar Gupta
 
Microsoft power point intellectual property law trademarks remedies unit-v ...
Microsoft power point   intellectual property law trademarks remedies unit-v ...Microsoft power point   intellectual property law trademarks remedies unit-v ...
Microsoft power point intellectual property law trademarks remedies unit-v ...sanjeev kumar chaswal
 
Patent challenge presentation
Patent challenge presentationPatent challenge presentation
Patent challenge presentationAltacit Global
 
IP Litigation Overview Presentation
IP Litigation Overview PresentationIP Litigation Overview Presentation
IP Litigation Overview Presentationkieranpmoore
 

Similaire à Customs and Cross-border measures (20)

Patent damages
Patent damagesPatent damages
Patent damages
 
Ip remedies
Ip remediesIp remedies
Ip remedies
 
Legal Aspects PowerPointPresentation F&V.pptx
Legal Aspects PowerPointPresentation F&V.pptxLegal Aspects PowerPointPresentation F&V.pptx
Legal Aspects PowerPointPresentation F&V.pptx
 
Passing off in Torts.pptx
Passing off in Torts.pptxPassing off in Torts.pptx
Passing off in Torts.pptx
 
Injunctions
InjunctionsInjunctions
Injunctions
 
IAM Yearbook 2016_Vringo
IAM Yearbook 2016_VringoIAM Yearbook 2016_Vringo
IAM Yearbook 2016_Vringo
 
Exparte injunction
Exparte injunctionExparte injunction
Exparte injunction
 
February-March2015Christensen
February-March2015ChristensenFebruary-March2015Christensen
February-March2015Christensen
 
Ipr laws
Ipr lawsIpr laws
Ipr laws
 
Guide for de mystifying law of trade mark litigation in India-2014
Guide for de mystifying law of trade mark litigation in India-2014Guide for de mystifying law of trade mark litigation in India-2014
Guide for de mystifying law of trade mark litigation in India-2014
 
Laches and acquiescence
Laches and acquiescenceLaches and acquiescence
Laches and acquiescence
 
Bus law arbitration
Bus law  arbitrationBus law  arbitration
Bus law arbitration
 
Phil Pharmahealth, Inc. vs. Pfizer, Inc. et. Al, G.R. No. 167715, Nov. ‘10.pdf
Phil Pharmahealth, Inc. vs. Pfizer, Inc. et. Al, G.R. No. 167715, Nov. ‘10.pdfPhil Pharmahealth, Inc. vs. Pfizer, Inc. et. Al, G.R. No. 167715, Nov. ‘10.pdf
Phil Pharmahealth, Inc. vs. Pfizer, Inc. et. Al, G.R. No. 167715, Nov. ‘10.pdf
 
2019 q4-guide-to-patent-litigation-in-federal-court final
2019 q4-guide-to-patent-litigation-in-federal-court final2019 q4-guide-to-patent-litigation-in-federal-court final
2019 q4-guide-to-patent-litigation-in-federal-court final
 
Inter Partes Review (IPR) - A Brief Understandings
Inter Partes Review (IPR) - A Brief UnderstandingsInter Partes Review (IPR) - A Brief Understandings
Inter Partes Review (IPR) - A Brief Understandings
 
USPTO & IIPI Conference on Harnessing IP to promote Traditional Arts and ...
USPTO & IIPI Conference on Harnessing IP to promote Traditional Arts and ...USPTO & IIPI Conference on Harnessing IP to promote Traditional Arts and ...
USPTO & IIPI Conference on Harnessing IP to promote Traditional Arts and ...
 
Microsoft power point intellectual property law trademarks remedies unit-v ...
Microsoft power point   intellectual property law trademarks remedies unit-v ...Microsoft power point   intellectual property law trademarks remedies unit-v ...
Microsoft power point intellectual property law trademarks remedies unit-v ...
 
Patent challenge presentation
Patent challenge presentationPatent challenge presentation
Patent challenge presentation
 
IP Litigation Overview Presentation
IP Litigation Overview PresentationIP Litigation Overview Presentation
IP Litigation Overview Presentation
 
unit1c.ppt
unit1c.pptunit1c.ppt
unit1c.ppt
 

Plus de patent_unitedipr

Protection of Traditional Knowledge
Protection of Traditional KnowledgeProtection of Traditional Knowledge
Protection of Traditional Knowledgepatent_unitedipr
 
CUSTOMS & IPR – COUNTERFEIT IDENTIFICATION TIPS PART-II
CUSTOMS & IPR – COUNTERFEIT IDENTIFICATION TIPS PART-IICUSTOMS & IPR – COUNTERFEIT IDENTIFICATION TIPS PART-II
CUSTOMS & IPR – COUNTERFEIT IDENTIFICATION TIPS PART-IIpatent_unitedipr
 
CUSTOMS+IPR: AN ENIGMATIC COMBINATION FOR ALL?
CUSTOMS+IPR: AN ENIGMATIC COMBINATION FOR ALL?CUSTOMS+IPR: AN ENIGMATIC COMBINATION FOR ALL?
CUSTOMS+IPR: AN ENIGMATIC COMBINATION FOR ALL?patent_unitedipr
 
Presentation on Counterfeit Identification
Presentation on Counterfeit Identification Presentation on Counterfeit Identification
Presentation on Counterfeit Identification patent_unitedipr
 

Plus de patent_unitedipr (6)

Protection of Traditional Knowledge
Protection of Traditional KnowledgeProtection of Traditional Knowledge
Protection of Traditional Knowledge
 
Indo Brazil-EU Dispute
Indo Brazil-EU DisputeIndo Brazil-EU Dispute
Indo Brazil-EU Dispute
 
IPR and Customs
IPR and CustomsIPR and Customs
IPR and Customs
 
CUSTOMS & IPR – COUNTERFEIT IDENTIFICATION TIPS PART-II
CUSTOMS & IPR – COUNTERFEIT IDENTIFICATION TIPS PART-IICUSTOMS & IPR – COUNTERFEIT IDENTIFICATION TIPS PART-II
CUSTOMS & IPR – COUNTERFEIT IDENTIFICATION TIPS PART-II
 
CUSTOMS+IPR: AN ENIGMATIC COMBINATION FOR ALL?
CUSTOMS+IPR: AN ENIGMATIC COMBINATION FOR ALL?CUSTOMS+IPR: AN ENIGMATIC COMBINATION FOR ALL?
CUSTOMS+IPR: AN ENIGMATIC COMBINATION FOR ALL?
 
Presentation on Counterfeit Identification
Presentation on Counterfeit Identification Presentation on Counterfeit Identification
Presentation on Counterfeit Identification
 

Dernier

Building AI-Driven Apps Using Semantic Kernel.pptx
Building AI-Driven Apps Using Semantic Kernel.pptxBuilding AI-Driven Apps Using Semantic Kernel.pptx
Building AI-Driven Apps Using Semantic Kernel.pptxUdaiappa Ramachandran
 
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...Will Schroeder
 
Computer 10: Lesson 10 - Online Crimes and Hazards
Computer 10: Lesson 10 - Online Crimes and HazardsComputer 10: Lesson 10 - Online Crimes and Hazards
Computer 10: Lesson 10 - Online Crimes and HazardsSeth Reyes
 
UiPath Studio Web workshop series - Day 6
UiPath Studio Web workshop series - Day 6UiPath Studio Web workshop series - Day 6
UiPath Studio Web workshop series - Day 6DianaGray10
 
AI You Can Trust - Ensuring Success with Data Integrity Webinar
AI You Can Trust - Ensuring Success with Data Integrity WebinarAI You Can Trust - Ensuring Success with Data Integrity Webinar
AI You Can Trust - Ensuring Success with Data Integrity WebinarPrecisely
 
Using IESVE for Loads, Sizing and Heat Pump Modeling to Achieve Decarbonization
Using IESVE for Loads, Sizing and Heat Pump Modeling to Achieve DecarbonizationUsing IESVE for Loads, Sizing and Heat Pump Modeling to Achieve Decarbonization
Using IESVE for Loads, Sizing and Heat Pump Modeling to Achieve DecarbonizationIES VE
 
Crea il tuo assistente AI con lo Stregatto (open source python framework)
Crea il tuo assistente AI con lo Stregatto (open source python framework)Crea il tuo assistente AI con lo Stregatto (open source python framework)
Crea il tuo assistente AI con lo Stregatto (open source python framework)Commit University
 
20230202 - Introduction to tis-py
20230202 - Introduction to tis-py20230202 - Introduction to tis-py
20230202 - Introduction to tis-pyJamie (Taka) Wang
 
Meet the new FSP 3000 M-Flex800™
Meet the new FSP 3000 M-Flex800™Meet the new FSP 3000 M-Flex800™
Meet the new FSP 3000 M-Flex800™Adtran
 
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...Aggregage
 
Cybersecurity Workshop #1.pptx
Cybersecurity Workshop #1.pptxCybersecurity Workshop #1.pptx
Cybersecurity Workshop #1.pptxGDSC PJATK
 
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdfIaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdfDaniel Santiago Silva Capera
 
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdfUiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdfDianaGray10
 
Basic Building Blocks of Internet of Things.
Basic Building Blocks of Internet of Things.Basic Building Blocks of Internet of Things.
Basic Building Blocks of Internet of Things.YounusS2
 
ADOPTING WEB 3 FOR YOUR BUSINESS: A STEP-BY-STEP GUIDE
ADOPTING WEB 3 FOR YOUR BUSINESS: A STEP-BY-STEP GUIDEADOPTING WEB 3 FOR YOUR BUSINESS: A STEP-BY-STEP GUIDE
ADOPTING WEB 3 FOR YOUR BUSINESS: A STEP-BY-STEP GUIDELiveplex
 
Igniting Next Level Productivity with AI-Infused Data Integration Workflows
Igniting Next Level Productivity with AI-Infused Data Integration WorkflowsIgniting Next Level Productivity with AI-Infused Data Integration Workflows
Igniting Next Level Productivity with AI-Infused Data Integration WorkflowsSafe Software
 
UiPath Studio Web workshop series - Day 7
UiPath Studio Web workshop series - Day 7UiPath Studio Web workshop series - Day 7
UiPath Studio Web workshop series - Day 7DianaGray10
 
Nanopower In Semiconductor Industry.pdf
Nanopower  In Semiconductor Industry.pdfNanopower  In Semiconductor Industry.pdf
Nanopower In Semiconductor Industry.pdfPedro Manuel
 
Designing A Time bound resource download URL
Designing A Time bound resource download URLDesigning A Time bound resource download URL
Designing A Time bound resource download URLRuncy Oommen
 

Dernier (20)

Building AI-Driven Apps Using Semantic Kernel.pptx
Building AI-Driven Apps Using Semantic Kernel.pptxBuilding AI-Driven Apps Using Semantic Kernel.pptx
Building AI-Driven Apps Using Semantic Kernel.pptx
 
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
Apres-Cyber - The Data Dilemma: Bridging Offensive Operations and Machine Lea...
 
Computer 10: Lesson 10 - Online Crimes and Hazards
Computer 10: Lesson 10 - Online Crimes and HazardsComputer 10: Lesson 10 - Online Crimes and Hazards
Computer 10: Lesson 10 - Online Crimes and Hazards
 
UiPath Studio Web workshop series - Day 6
UiPath Studio Web workshop series - Day 6UiPath Studio Web workshop series - Day 6
UiPath Studio Web workshop series - Day 6
 
AI You Can Trust - Ensuring Success with Data Integrity Webinar
AI You Can Trust - Ensuring Success with Data Integrity WebinarAI You Can Trust - Ensuring Success with Data Integrity Webinar
AI You Can Trust - Ensuring Success with Data Integrity Webinar
 
Using IESVE for Loads, Sizing and Heat Pump Modeling to Achieve Decarbonization
Using IESVE for Loads, Sizing and Heat Pump Modeling to Achieve DecarbonizationUsing IESVE for Loads, Sizing and Heat Pump Modeling to Achieve Decarbonization
Using IESVE for Loads, Sizing and Heat Pump Modeling to Achieve Decarbonization
 
Crea il tuo assistente AI con lo Stregatto (open source python framework)
Crea il tuo assistente AI con lo Stregatto (open source python framework)Crea il tuo assistente AI con lo Stregatto (open source python framework)
Crea il tuo assistente AI con lo Stregatto (open source python framework)
 
20230202 - Introduction to tis-py
20230202 - Introduction to tis-py20230202 - Introduction to tis-py
20230202 - Introduction to tis-py
 
Meet the new FSP 3000 M-Flex800™
Meet the new FSP 3000 M-Flex800™Meet the new FSP 3000 M-Flex800™
Meet the new FSP 3000 M-Flex800™
 
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
The Data Metaverse: Unpacking the Roles, Use Cases, and Tech Trends in Data a...
 
Cybersecurity Workshop #1.pptx
Cybersecurity Workshop #1.pptxCybersecurity Workshop #1.pptx
Cybersecurity Workshop #1.pptx
 
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdfIaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
IaC & GitOps in a Nutshell - a FridayInANuthshell Episode.pdf
 
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdfUiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
UiPath Solutions Management Preview - Northern CA Chapter - March 22.pdf
 
Basic Building Blocks of Internet of Things.
Basic Building Blocks of Internet of Things.Basic Building Blocks of Internet of Things.
Basic Building Blocks of Internet of Things.
 
ADOPTING WEB 3 FOR YOUR BUSINESS: A STEP-BY-STEP GUIDE
ADOPTING WEB 3 FOR YOUR BUSINESS: A STEP-BY-STEP GUIDEADOPTING WEB 3 FOR YOUR BUSINESS: A STEP-BY-STEP GUIDE
ADOPTING WEB 3 FOR YOUR BUSINESS: A STEP-BY-STEP GUIDE
 
Igniting Next Level Productivity with AI-Infused Data Integration Workflows
Igniting Next Level Productivity with AI-Infused Data Integration WorkflowsIgniting Next Level Productivity with AI-Infused Data Integration Workflows
Igniting Next Level Productivity with AI-Infused Data Integration Workflows
 
UiPath Studio Web workshop series - Day 7
UiPath Studio Web workshop series - Day 7UiPath Studio Web workshop series - Day 7
UiPath Studio Web workshop series - Day 7
 
Nanopower In Semiconductor Industry.pdf
Nanopower  In Semiconductor Industry.pdfNanopower  In Semiconductor Industry.pdf
Nanopower In Semiconductor Industry.pdf
 
Designing A Time bound resource download URL
Designing A Time bound resource download URLDesigning A Time bound resource download URL
Designing A Time bound resource download URL
 
20150722 - AGV
20150722 - AGV20150722 - AGV
20150722 - AGV
 

Customs and Cross-border measures

  • 1. CASE STUDIES IN LEGAL PURVIEW CUSTOMS AND CROSS-BORDER MEASURES
  • 2. IP Enforcement-Remedies  Civil  Infringement  Passing off  Criminal  Administrative  Technological measures
  • 3. Civil Litigation- Objective  To provide compensation to the right holder  To prohibit future infringement  Appropriate disposal of infringing material and all tools/ plates / dyes used for manufacturing the same.
  • 4. Civil Action: Reliefs  Injunctions against violations  Raids & Seizures  Damages OR Accounts of Profits  Delivery up/ Discovery of infringing material / documents  Preservation of assets  Copyright owner- Infringing material is deemed to be his property.
  • 5. Interim / Interlocutory Injunction  Often the real remedy  Objective: To maintain status quo  Time is of essence  Factors considered in granting :  Prima facie case  Balance of convenience  Irreparable injury if injunction not granted Gujarat Bottling Company v. Coca Cola 21 IPLR 201
  • 6. Interlocutory injunction  Statutory recognition  Importance is also recognized by the judiciary  Landmark Supreme Court judgments
  • 7. Wander Ltd. & anr. vs. Antox India P. Ltd.(1990 (2) ARBLR 399 SC, 1990 Supp (1) SCC 727) Supreme Court on interlocutory injunctions: “Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of a legal right asserted by the plaintiff & its alleged violation are both contested… The object is to protect the Plaintiff against injury by violation of his rights for which he could NOT adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial.
  • 8. Wander Ltd. & anr. vs. Antox India P. Ltd. 1990 (2) ARBLR 399 SC, 1990 Supp (1) SCC 727 Supreme Court on Balance of Convenience: “The need for such protection must be weighed against the corresponding need for the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately be compensated. The Court must weigh one need against another and determine where the balance of convenience lies.”
  • 9. Midas Hygiene Industries P. Ltd. V. Sudhir Bhatia & Anr.(2004 (73) DRJ 647, 2004 (28) PTC 121 SC) 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 if it prima facie appears that the adoption of the mark itself was dishonest”.
  • 10. Lakshmikant V. Patel vs. Chetanbhat Shah(December, 2001) 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”.
  • 11. Enforcement of IPRs - Trademarks  Indian Courts have applied and expanded principles of trans-border reputation even if:  The Plaintiff has no presence in India  The goods of the defendant are entirely dissimilar (dilution principle recognized)  Provided knowledge of the mark acquired through various sources of trans-border reputation
  • 12. Enforcement- Domain names  M/s Satyam Infoway Ltd. V. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145  SC has held that domain names are subject to the legal norms applicable to other intellectual properties, such as trademarks.  Yahoo Inc. v. Akash Arora 1999 PTC 201  SC applied general trademark law to the internet.
  • 13. Ex Parte Order  When the matter is extremely urgent  At a preliminary hearing of the interim application without notice to the answering defendant.  Granted before the motion for interim injunction is fully heard but for a limited period only.  After grant of ex parte injunction, the Court must proceed with disposal of the interim injunction application after the defendant has
  • 14. Ex Parte Orders  Injunction;  Discovery of documents;  Preserving of infringing goods, document of other evidence related to the subject matter of the suit;  Restraining the defendant from disposing off his assets in a manner which may adversely affects rights of the IP owner to claim damages, costs or other pecuniary remedies.
  • 15. Anton Pillar Order  Anton Pillar v. Manufacturing Process (1976) RPC 719  Similar to ex parte interlocutory order  After a hearing, Court authorizes plaintiff to inspect premises of defendant and take inventory of the offending material
  • 16. Anton Pillar Orders  Sensitive in nature  Pre conditions for grant:  Extremely strong prima facie case  Damage (potential or actual) very serious  Clear evidence that defendants have in their possession, incriminating document/ material which they may destroy.
  • 17. John Doe Order  Court appointed commissioners to enter the premises of any suspected party and collect evidence of infringement.  Suspected party may not be named in the suit.  Indian Courts have conferred expanded powers to commissioners- Roving commissioners  Ardath Tobacco Co. Ltd. vs. Mr. Munna Bhai & Ors.
  • 18. Mareva Injunction  Freezing order  Prevents the infringer / offender from removing / disposing of assets in which the gains from infringement have been invested.  Aim- unjust enrichment of the defendant and to ensure payment of damages to Plaintiff
  • 19. Final injunction  To ascertain rights of the parties  Remedies for Breach of injunction  Police assistance  Assistance of administrative bodies  Contempt proceedings
  • 20. Damages / Account of Profits  These are mutually exclusive alternative remedies  Account of profits- An equitable relief  Plaintiff adopts defendant’s acts as his own.  Damages- for the losses suffered by the Plaintiff on account of the defendant’s acts
  • 21. Damages- recent trends  Time Inc. vs. Lokesh Srivastava  Punitive damages awarded for the first time – Rs 5 lakhs  Distinction between compensatory damages and punitive damages was made out.
  • 22. Time Incorporated vs. Lokesh Srivastava Delhi High Court: “The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas, punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong-doers that law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to this but suffer on account
  • 23. Damages- recent trends  Microsoft Corporation vs. Yogesh Papat & anr. 2005 (1) CTMR 424  Highest costs and Damages ever awarded for IP infringement by Indian Courts  Approximately Rs 20 lakhs
  • 24. Criminal Remedies- TM  Falsification of Trademarks / Infringement of copyright is a criminal offence  A complaint may be filed before a Magistrate; OR  Police can register an FIR and prosecute directly; (statutory requirement to obtain the Registrar’s approval.  Registration is not a requirement.
  • 25. Criminal Remedies- TM/ CR  Cognizable offence  Imprisonment- 6 months to 3 years  Fine- Rs 50,000 to 2 lakhs  Enhanced penalty on subsequent convictions.  Seizure, forfeiture and destruction of infringing goods/ material for placing before the Magistrate.
  • 26. Civil vs. Criminal  Less hassle for the plaintiff  Jurisdictional advantage  Interlocutory Injunctions  Damages  Possibility of settlement However…  No deterrence  No fear factor- no arrest  Expensive & lengthy
  • 27. Administrative Remedies  Indian Customs Act, 1962  Deals with import/ export of goods including protection of patents, trademarks and copyrights.  Confiscation of infringing material by Excise Authorities  Restrictions against parallel importation of goods
  • 28. Technological measures  Holograms  Electronic devices  Encryption  Anti-copy devices
  • 29. Enforcement of IPRs – TM Case Studies.  M/S HITACHI VS AJAY KR. AGGARWAl 1996 PTC(16) (DB) HITACHI=HITAISHI.  AMRUTANJAN LTD. VS AMARCHAND SOBACHAND PTC(Suppl.) (1) 230(Mad)- AMRUTANJAN PAIN BALM= AMAR’S PAIN BALM.  RUSTON & HORNBY LTD. VS ZAMINDARA ENGINEERING CO. AIR 1970 SC 1649 RUSTON= RUSTAM INDIA.
  • 30. CONTD.  K.R. CHINNA KRISHNA CHETTIAR VS SRI AMBAL & CO. AIR 1970 SC 146- SRI ANDAL = SRI AMBAL.  M/S PIDILITE IND. PVT.LTD. VS MITTEES CORP. AIR 1989 DELHI 157- FEVICOL= TREVICOL.  COLGATE PALMOLIVE CO. VS SUNDEEP ENTERPRISES 1995-PTC-10. HARRISON= HARICON.  LAKME LTD. VS SUBHASH TRADING 1996 PTC(16) 567 LAKME= LIKEME.
  • 31. IMITATION DOES NOT MEAN DUPLICATION-DESIGN JUDGEMENT  The landmark CASTROL VS TIDEWATER found the Indian courts uphold a major design justiciablity that mere duplication does not really amount to duplication.  HIGH COURT OF CALCUTTA Suit No. 415 of 1993 Ordinary Original Civil Jurisdiction Castrol India Ltd...............Petitioner Versus Tide Water Oil Co. (I) Ltd................Respondents Ruma Pal, J. Decided on : August 26, 1994 •  The sequence of the obligation of the court in considering an application for infringement of a design is first to consider whether protection is claimed in respect of a design or of the mode of manufacture. The first is protected by the Design Act 1911 and the second by the law of patents.
  • 32. INFRINGEMENT BY SUBSEQUENT PATENT??  In the famous landmark case of HINDUSTAN UNILEVER LTD VS LALIT WADHWA 200735 PTC DEL, its was held by the court that the RIGHT OF PATENTEE IS ONLY AN EXCLUSIONARY RIGHT.  The court also held under the ambit of sec.64 of Patents Act, that whenever a subsequent patentee brings a suit for infringement then every ground on which it may be revokes under sec 64, all of them shall be availaible as grounds for defence. This means that when a subsequent patentee brings a suit for infringement against an earlierpatent holder, then the earlier patent holder can claim priority date as a valid defence.
  • 33. COPYRIGHT- IDEA VS. EXPRESSION DICHOTOMY  R.G. ANAND V. DELUX FILMS (1978)  There can be no copyright in an idea, subject matter, themes, plots, or historical or legendary facts and violation of copyright in such cases is confined to form, manner, and arrangement and expression of idea by the author of copyrighted work.  One of the safest and surest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both works is clearly of the unmistakable opinion and gets the impression that subsequent work appears to be a copy of original.  As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying the tests of equity.
  • 34. CONTD. MR. ANIL GUPTA AND ANR. V. MR. KUNAL DASGUPTA AND ORS [97(2002) DLT 257]  Court held that the concept developed and evolved by the plaintiff was a the result of the work done by the plaintiff upon the material which may be available in the public domain. However, what made the concept confidential was the fact that the plaintiff had used his brain and thus produced a unique result applying the concept. The Court granted an injunction. KING FEATURES SYNDICATE INC VS SUNIL AGNIHOTRI & ORS ( 1997 PTC (17)  In this case there was a dispute on use of BETAAL & PHANTOM wherein the court refused the injunction on the grounds that there is no copyright in an idea/title- defendant inspired only by idea but expression is original. RAJA POCKET BOOKS VS RADHA POCKET BOOKS( 1997 PTC (17)  NAGRAJ –NAGESH – DISPUTE ON SIMILARITY OF COMIC CHARACTERS. HINDUSTAN PENCIL PVT LTD VS UNIVERSAL TRADING COMPANY(1999PTC(19) This case law establishes the test of copyright infringement wherein it has been established that in case there are very minor differences between two works and the get-up and colour combination are copied per se then it shall amount to copyright infringement.
  • 35. REGISTRATION NOT MANDATORY FOR PROTECTION OF COPYRIGHT  GLAXO OPERATIONS UK LTD. VS- SAMRAT PHARMACEUTICALS,. AIR 1984 Delhi 265!  THIS IS A LANDMARK JUDGEMENT WHEREIN IT HAS BEEN ESTABLISHED BY WAY OF ADJUDICATION THAT REGISTRATION OF COPYRIGHT IS NOT MANDATORY FOR SEEEKING REMEDY FOR INFRINGEMENT OF COPYRIGHT.  REMEDY PERTINENT TO COPYRIGHT IS AVAILAIBLE EVEN WOTHOUT REGISTRATION AMBITS.
  • 36. NEED FOR CUSTOMS LAWS IN THE FIRST PLACE  Customs is an authority or agency in a country responsible for collecting and safeguarding customs duties and for controlling the flow of goods including animals, transports, personal effects and hazardous items in and out of a country. Depending on local legislation and regulations, the import or export of some goods may be restricted or forbidden, and the customs agency enforces these rules.  In India, the basic law for levy and collection of customs duty is Customs Act, 1962. It provides for levy and collection of duty on imports and exports, import/export procedures, prohibitions on 36 importation and exportation of goods, penalties, offences, etc.
  • 37. CUSTOMS PROVISIONS TO CONTROL COUNTERFEIT MENACE  Customs Act, 1962 prohibits import of goods that infringe intellectual property. Section 11 of the Act empowers the Central Government, for the purposes specified in subsection 11(2), to prohibit import or export of goods of any description by issuing a notification. 37
  • 38. EFFICACY OF 2007 RULES IN GOOD LEGAL MEASURE Cases of suspension of goods by Indian Customs  The Customs department, in July 2008, ordered absolute confiscation of counterfeit goods in the matter concerning the importer M/s. Womens World Jewels Pvt. Ltd., and M/s. Impac Enterprises who imported consignment containing cosmetics, gift items etc., bearing registered trademarks „Nivea‟, „Dove‟, „Sunsilk‟ and „L‟Oreal‟. Commissioner of Customs noting that the act of importing into India and/or market these goods in India without having any authorization from the manufacturers, amounted to infringement of rights of right holders and thus prohibited the importer from importing the goods. 38
  • 39. Contd.  Another order was passed in 2008 against M/s P.S. Grover and Sons for importing cosmetic and toiletries products of registered trademark „L‟Oreal‟ and „Garnier‟ for importing without first having obtained authorization from registered trademark owners M/s L‟Oreal and M/s Laboratoire Garnier & CIE. The Customs Department not only ordered confiscation of imported goods but also imposed huge penalty of Rs 25,000/- on importer and also Rs 5,000/- on partner of importer. 39
  • 40. ISSUES RAISED BY IMPLEMENTATION OF RULES The Ram Kumar Patent Saga  This litigation involves a patent granted to Mr. Soma Sundaram Ram Kumar on a “Mobile telephone with a plurality of SIM cards allocated to different communication networks”. Mr. Ram Kumar sought to enforce the patent rights against a number of multinational and national importers including Hansum India, Samsung and Micromax.  Mr. Ram Kumar filed an application in the Chennai Patent office on March 4, 2002 containing 4 claims and 12 drawings and was allotted Patent Application No. 161/MAS/2002 which was granted in 2008. Mr. Ram Kumar, then filed an application under Rule 3 of the Intellectual Property Rights Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. Mr. Ram Kumar filed an application on December 8, 2008 with the Officer of Commissioner of Customs under the Customs Notification No. 47/2000 read with Circular No. 41/2007 Customs Circular dated 29.10.2007 called the Instructions for Implementation of Intellectual Property (Imported Goods) Enforcement Rules, 2007. 40
  • 41. CONTD.  The first course of litigation before the Indian Courts was with respect to the constitutionality of the Rules. In this petition, Samsung raised the issue of lack of expertise of the Customs authorities. However, the petition had to be subsequently withdrawn for the lack of territorial jurisdiction.  The second course of litigation was before the Madras High Court, wherein Mr. Ram Kumar sought a restraining order against manufacturers such as Samsung, Micro Electronics and Spice Mobile, restraining them from manufacturing and selling multiple SIM holding mobile phones.  The third course of litigation was before the customs authorities and highlights the concerns on behalf of the importers. The claims related to dual SIM which allowed simultaneous communication multiple headsets 41
  • 42. CONTD.  The Chennai customs authority upheld the contentions of Hansum India Ltd. Holding that the claim 1 of Mr. Ram Kumar patent had limited scope. The claims, therefore, were held not to be infringed by the cell phones manufactured by Hansum since these cell phones used a single headphone/earphone jack. Similarly, the New Delhi customs authority, in an order dated 8th June, 2009, by J.P. Kundu, the Assistant Commissioner of Customs, found that claim made by Mr. Ram Kumar was vexatious and the impugned goods were covered by the prior art declared by him.  Against the orders of customs authorities, Mr. Ram Kumar filed writ petition in the Madras High Court, dismissing the petition, held that the proper forum for the redressal was the Customs Appellate Tribunal, an authority envisaged as the appellate authority under the Customs Act, 1962. Therefore, at present, the orders of the Customs administration allowing the clearance of the goods from the Mumbai, Chennai and Delhi ports stand affirmed and, the stand of the importers has been upheld. 42
  • 43. FAMOUS CISCO ADJUDICATION  The case involving parallel imports and trademarks in India, Cisco Technology Vs Shrikant (2005 PTC 538 DEL.) the plaintiff‟s employed sec. 29(6) (c) of custom act read with sec 140 defense and were successful in getting an exparte order directing the customs authorities to notify all ports to bar imports of defendant goods and also appointing a local commissioner to seize all goods bearing the mark in issue and inventory the same. 43
  • 44. PARALLEL IMPORTS- A TRADE MENACE  A parallel import is a non counterfeit product imported from another country without the permission of the intellectual property owner. Parallel imports are often referred to as grey product, and are implicated in issues of international trade, and intellectual property.  Parallel importation infringes the right of the right holder who has the exclusive right to trade in such goods under the trade mark in a particular area. 44
  • 45. OLD SAMSUNG CASE(2006)  In the Judgement of the Delhi High Court in Samsung Electronics Company Ltd. & Anr. vs G.Choudhary & Anr(( MANU/DE/3161/2006) defendants, who were the parallel importers were held liable for infringement of Trademark. The registered owner of the Trademark “Samsung” filed a suit against the defendants for importing from China and selling in cartridges and toners branded “Samsung” manufactured by the plaintiff itself in China. The plaintiff argued that although the products are genuine, they were not meant for Indian markets. The reasons by the plaintiff included that the descriptions that accompanied the products were in Chinese, there was no warranty offered and that the use of these products were likely to constitute a breach of warranty of other legally purchased machinery. 45
  • 46. THE NEW SAMSUNG CASE(2012)  In FEB 2012, the Delhi High Court, in the famous SAMSUNG ELECTRONICS VS KAPIL WADHWA AND ORS CASE, ruled that selling genuine imported products in India without the rights holder‟s consent constitutes infringement. If the Division Bench of the Court upholds that decision – in favour of Samsung – brand owners should find it easier to stop grey goods reaching the Indian market. IP owners and lawyers have welcomed this ingenuous ruling.  The 1st plaintiff in the case, was Samsung Electronics Company Limited, Korea and the 2nd plaintiff was its Indian subsidiary and exclusive licensee in India. The 1st plaintiff produced records to show 7 registrations for the mark “SAMSUNG” across 46 classes 7, 9 and 11.
  • 47. CASE HIGHLIGHTS & KEY LAW FACTS  The questions primarily arising were:  1. Does sale of imported, genuine products without consent of the right holder in India, constitute infringement under section 29(1) read with 29(6)?  2. Does section 30(3) recognise national exhaustion or international exhaustion?  3. Does meta tagging and deep hyperlinking of a registered trademark constitute infringement? 47
  • 48. Law facts  In answering the first question, the Court held that any importer who is not a registered proprietor or permissive right holder, even if importing genuine products, is culpable of infringement. There is also an interesting observation that had the legislative intent been to facilitate free movement of goods, section 29(6) would have not existed at all. These fetters on the right of importation of genuine goods, is justified on the basis of section 29(1), which does not provide any distinction between genuine and non-genuine goods. In the absence of any legislative provision or exception for genuine imported goods, such importation is 48 deemed to be an act of infringement.
  • 49. Exhaustion theory  In answering the second question, the Court held that section 30(3) recognizes only national exhaustion in India. The section is interpreted to mean that once goods are acquired by a person from the registered proprietor within the same market, the registered proprietor cannot turn around and state that there in an infringement of his trademark on the count that there is change of ownership by way of an assignment between the registered proprietor and some other person and seek prohibition on the dealings of the goods. This cannot subsume in favour of a person acquiring goods from a foreign market. The implication and effect of section 30(3) is stated to be limited to acquisitions within the domestic market. Section 30(3) permits an exception only on those goods which bear registered trademarks, and are acquired lawfully, and the word “lawfully” is to include the trademark law in force. The only “market” for the purpose of section 30(3) is deemed to be the Indian market. The Court unequivocally held that section 30(3) does not recognize any concept of international exhaustion, and the section operates only within the market where the registration of the mark extends. There is also considerable discussion on the UK, EU and American concepts of exhaustion. The Xerox case is distinguished on the basis that it dealt with second hand imported goods and is on a different set of facts and circumstances. 49
  • 50. HYPERLINKING AND META- TAGGING  On the issue of meta tagging and deep hyper linking of registered trademarks, the Court held that the promotion on the basis of the same in order to take advantage of the plaintiff‟s registered trademark cannot in any manner be categorized as fair use, and would tantamount to an act of infringement. 50
  • 51. WARNER CASE  In another landmark case, the Delhi High Court, in the Time Warner Inc. vs Lokesh Srivastava & Another(2005 (30) PTC 3 (Del.).), awarded punitive and exemplary damages, in addition to compensatory damages for flagrant infringement of trademarks and copyrights. This stringent action was taken by the court to highlight the fact that the breach of IPRs was a wrong done not only to the plaintiff but also to the society at large and the consumers who suffer on account of that deception.
  • 52. DELL CASE- CONJURING CONTROVERSY  Recently, it has been reported that the Commissioner of Customs has not only allowed the parallel imports of Dell computers into the country but also ordered Dell to pay demurrage & warehousing charges to the importers whose goods had been seized for over two months due to a complaint made by Dell.  The DELL order has whipped up controversy wherein the Customs Commissioner has allowed the parallel import of Dell computers into India on the grounds that the Trade Mark Act, 1999 did not forbid such imports.
  • 53. DELL CASE FACTS  The basic facts of the case are simple. Three Indian importers, by the names of Venktron Digital Systems Pvt. Ltd., M/s Sapphire Micro System & Momentum Technologies Inc. Pvt. Ltd. were in the process of importing approximately 450-500 Dell laptop computers into India. During the process of clearing the consignment at Customs, an alert was registered under the IPR Import Rules for possible trademark infringement, due to a prior registration, under the IPR Import Rules, 2007 for the mark „Dell‟, by Dell India Pvt. Ltd.
  • 54. CONTD.  After the clearance of the consignment was suspended under the IPR (Imported Goods) Enforcement Rules, 2007, a representative of Dell India was allowed to inspect the consignment to confirm possible infringement after which a formal hearing was held where both, the importers and Dell India were afforded an opportunity to be heard.  During the course of the hearing before the Customs Commissioner, the Delhi High Court pronounced its order in the Samsung case prohibiting parallel imports under the Trade Marks Act, 1999. Apart from the Samsung order, the „rights holder‟, Dell, also brought to the attention of the Court several other judgements from Indian and foreign courts on the subject of parallel imports being barred under Indian law. The Defendants for their part discussed several case law- including the new Samsung case, supporting their defence that Section 30(3) of the Trade Marks Act, 1999 allowed for parallel imports.
  • 55. ISSUE OF CONCERN  The major issue however with the Delhi High Court‟s Samsung order was that it had been appealed and the Division Bench hearing the appeal had passed a series of orders during the course of the appeal, which by the way is still pending final arguments. While the importers tried to argue that the Samsung order had been stayed by the Division Bench, the „rights-holder‟ tried to argue that the Division Bench had not yet stayed the operative part of the Samsung order.
  • 57. INTERNATIONAL FOCUS ON CUSTOM IMPORT RULES  Various countries in the world have of late been focusing on formulation and implementation of stringent rules in order to control counterfeit trade.  International organisations like the World Intellectual Property Organisation (WIPO), the WCO and the International Criminal Police Organisation (INTERPOL), along with the business community, are toiling hard multilaterally to determine new strategies to fight against
  • 58. Principle Socio-economic Effects of Counterfeiting INNOVATION & GROWTH Reduction in incentives to innovative - Possible negative effects on medium and long term growth rates CRIMINAL ACTIVITY Increase in flow of financial resources to criminal networks, thereby increasing their influence in economies ENVIRONMENT Sub-standard infringing products can have negative environmental effects EMPLOYMENT Shift of employment from rights holders to infringing firms. Child labour
  • 59. CHINA MILK CONTROVERSY- HEALTH HAZARD OF COUNTERFEITANCE  The 2008 Chinese milk scandal was a food safety incident in the People's Republic of China, involving milk and infant formula, and other food materials and components, adulterated with melamine.  By November 2008, China reported an estimated 300,000 victims, with six infants dying from kidney stones and other kidney damage, and a further 860 babies hospitalised.The chemical appeared to have been added to milk to cause it to appear to have a higher protein content. This is clearly an incident of poor quality additives to ,milk causing huge health damages.
  • 60. IMPACT OF COUNTERFEITANCE  The major effects of counterfeiting and piracy on governments are foregone tax revenues in the form of Sales Tax, Excise Tax, Income Tax and Customs Duty and so on.  Tax revenue losses are particularly high in certain sectors like tobacco and alcoholic beverages where excise taxes are high. The ASSOCHAM found that counterfeiting and piracy has robbed the Indian government of US$31.25bn in lost tax revenue.  Also, supplementary expenses are linked with fighting counterfeiting wherein huge amount of costs are spent with customs and related law enforcement agencies and related judicial proceedings. Besides, significant costs are incurred while handling seized goods.
  • 61. WTO ON COUNTERFEITING  The World Trade Organisation (WTO) Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement incorporates provisions intended to address the problem of counterfeit goods in international trade. The preamble of the TRIPs Agreement indicates that members recognise the need for a multilateral framework of principles, rules and disciplines dealing with international trade in counterfeit goods.  In fact, Article 51, footnote 14 of TRIPs, defines the term counterfeit trademark goods as any goods, including packaging, bearing without authorisation a trademark which is identical to the trademark validly registered in respect of such goods or which cannot be distinguished in its essential aspects from such a trademark and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation.
  • 62. AIM BEHING ANTI-COUNTERFEIT DRIVE  To raise awareness on the problems associated with counterfeiting and piracy;  Promote better legislation and enforcement;  Enhance cooperation and co-ordination; build capacity; and  Promote solutions, particularly in the key focus area of health and safety risks related to counterfeit products.

Notes de l'éditeur

  1. At there