TRADEMARK INFRINGEMENT &

IMITATION OF LABELS- ENFORCING YOUR IP

RIGHTS

Jyotsna BalakrishnanJyotsna BalakrishnanAnand & Anand, New DelhiAnand & Anand, New Delhi

June 2005June 2005e-mail@anandandanand.come-mail@anandandanand.com

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 ACTIONSIdentify the nature of counterfeiting in the market:

Manufacturers/Printers/Wholesalers/RetailersBlatant/Sporadic/CautiousKinds 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 STRATEGIESDIFFERENT STRATEGIES

Issuing cease & desist letters/caution notices

Negotiation & undertaking

Filing of a civil suit/criminal complaint

CIVIL ENFORCEMENT

SUIT FOR PERMANENT INJUNCTION SUIT FOR PERMANENT INJUNCTION RESTRAINING INFRINGEMENT OF RESTRAINING INFRINGEMENT OF TRADEMARK, PASSING OF AND/OR TRADEMARK, PASSING OF AND/OR COPYRIGHTCOPYRIGHT

UNIQUE JURISDICTION PROVISION UNIQUE JURISDICTION PROVISION IN IP CASES- SUIT CAN BE FILED IN IN IP CASES- SUIT CAN BE FILED IN PLACE WHERE PLAINTIFF CARRIES PLACE WHERE PLAINTIFF CARRIES ON BUSINESSON BUSINESS

REMEDIES THAT CAN BE REMEDIES THAT CAN BE OBTAINED IN A CIVIL OBTAINED IN A CIVIL SUITSUIT

Injunction (an order issued by the court restraining the defendant from dealing in infringing goods)-

temporary & permanentAd 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 RELIEFS THAT CAN BE OBTAINED IN A CIVIL OBTAINED IN A CIVIL SUITSUIT

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 Example of a successful civil enforcement civil enforcement actionaction

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” The “Bombay Connection” casecase

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 Examples of successful enforcement of trademark rights by Indian textile of trademark rights by Indian textile houseshouses

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 Garments- Defendants restrained from using “Varinder” as part of their trade name

Factors that strengthen your civil suit

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 CRIMINAL ENFORCEMENTENFORCEMENT

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 TRADEMARK CRIMINAL ENFORCEMENTENFORCEMENT

•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 Example of a successful criminal enforcement criminal enforcement

actionactionCriminal 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

CONCLUSIONCONCLUSION 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

CONCLUSIONCONCLUSION To develop a workable enforcement

strategy

To regularly allocate funds in anticipation

To enforce your rights vigorously & strategically