“Intellectual Property Rights” is an extension of Common Law concept of ownership. Ideas, concepts, expression, intellect, creativity, the intangible forms of human capabilities are treated as tangible property capable of being owned by their creators in the same manner as any tangible object is and, therefore, like any other property, need to be protected by law. Lately due to globalization, easy accessibility to information, technology, development of innovative models of business and shrinking of trade barriers by formation of groups and associations of countries like EU, SAARC, NAFTA, G-8 etc. intellectual property has acquired a trans-boundary effect making it increasingly vulnerable to infringement.

 

Intellectual Property (IP) laws are extremely important for the scientific development of a country. Strong Intellectual Property legislation ensures the progress in varied fields and result in the growth of a country’s knowledge bank. It is of utmost importance that the strong IP laws must be ably supported by an equally strong enforcement mechanism. Fair, strong and non- discriminatory Intellectual Property Rights (IPRs) enforcement creates economic incentives that encourage innovation. A strong IPR regime helps attract new investment and allows innovators to develop new technologies. It is, therefore imperative that any law providing for the protection of intellectual property also provides strategic remedies for prevention of it’s infringement through effective enforcement measures.

 

THE TRIPS AGREEMENT:

 

The International community around the early 1990 came to realize the importance of IPRs and their effective enforcement for the growth and prosperity of any country. Fall out of this realization was the Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement which was signed at the Uruguay round of the WTO in 1994 and which came into force on 1^st January 1995.

 

The world view on the need for enforcement and protection of intellectual property rights crystallized in the form of TRIPs Agreement. The objective of the TRIPs Agreement as laid down in Article 7 of the Agreement, states as under:

 

‘the protection and enforcement of IPR should contribute to promotion of technological innovation and to transfer and dissemination of technology, to the mutual advantage of producers and uses of technological knowledge and in a manner conducive to social and economic welfare and to a balance of rights and obligations.’

 

ENFORCEMENT LAWS IN INDIA:

 

The general laws in relation to Intellectual Property Enforcement in India are mainly the following:

Code of Civil Procedure

Indian Penal Code

The Civil and Criminal Rules of Practice.

While Civil Procedure Code provides for the civil remedies and enforcement through civil courts, the Indian Penal Code provides for penal remedies. The rules of practice of the trail courts, High Courts and the Supreme Court of India set the finalities of the enforcement procedure.

India follows common law tradition and judicial precedents do have binding force. Hence the decision of the Supreme Court binds the Lower judiciary of the country.

 

The IP laws do provide for statutory enforcement mechanisms. The most important of the Indian Intellectual Property Laws are:-

 

The Patent Act, 1970

The Trade Mark Act, 1999

The Copyright Act,1957

The Design Act,2000

The above legislations are supported by the relevant Rules there under and these rules are:-

The Patent Rules, 1972 as amended by Patents (Amendment) Act of 1999.

The Trade Mark Rules,2001

The Copyright rules, 1958 and

The Design rules,2001

The main post WTO Intellectual Property Legislations are:-

The Geographical Indication Act,1999

The Semi Conductor Integrated Circuit Lay Out-Design Act,2000

 

The geographical indications rules provide for the administrative mechanism for registration and enforcement of geographical Indications. The Semi Conductor Integrated Circuits Lay out Design Act, 2000 the under the Act were notified in the official gazette on 11^th of December 2001to support the administrative mechanism there under.

 

The Information Technology Act, 2000 also plays an important role in relations to areas of inter phase between information Technology and IPR.

 

ENFORCEMENT MECHCANISM AVAILABLE UNDER THE INDIAN LAW.

 

Patent

A suit for enforcing a patent has to be filed before a District Court having jurisdiction to try the suit .The right to move to the court of law to enforce a patent is vested with any person who holds a valid claims on the subject matter of the patent. The relief that a court may grant in a patent infringement suit, would be either damages or account of profits.

In deciding whether an act amounts to infringement of a patent, courts generally take into account various factors, which includes:-

 

The scope of claim

 

Whether the act amounts to any of the recognized rights under the scope of the patent.

Whether the alleged act of the infringement constitutes an infringement of the monopoly recognized under the patents.

 

The Onus of the establishing the infringement is on the plaintiff. Under certain circumstances the Onus of proving an infringement of a process claim is shifted to the defendant.

 

A suit for the infringement of a patent can be instituted only after the sealing of the patent. Damages caused in respect of infringement during the period between the date of advertisement of acceptance and the date of the sealing may be cleared in the suit. In an action for infringement of a patent a defendant may plead any of the following defenses:-

 

·     Denial of infringement.

·     Plaintiff is not entitled sue for infringement.

·     License to use the invention express or implied.

·     Estoppel

·     Existence of an unlawful contract.

·     Claims invalid on account of lack of novelty and non- obviousness.

·     Innocent infringement in cases against a claim for damages or account of profit.

 

It is common and possible for the plaintiff to move an interim application for temporary injunction. The court may on the basis of prima facie evidence grant a temporary injunction restraining the infringer from working the invention. The procedure concerning infringement action must confine to the Civil Procedure Code, if the suit is filed before a District Court and if the matter is before the High Court the rule of practice of the court also shall apply. The main reason for a possible delay in getting orders in a patent infringement suit is the provision for preferring appeals from interim order of trial courts. This makes the main suit to remain pending without entering the trial stage and final order.

 

TRADE MARK

 

Whenever, a registered trademark is infringed, in order to protect it, the following remedies can be restored to:-

 

Civil remedies;

Criminal remedies;

Administrative remedies

 

Civil remedies: - Whenever a registered trademark is violated or infringed, to the detriment of its proprietor or user, the aggrieved person can make use of the remedies available in a civil court. The most common remedy for infringement of a registered trademark is to file a suit in a civil court, to restrain the defendant from using the registered trade mark of the plaintiffs.

For the purpose of infringement of unregistered trademark, the common law remedy of passing off action can be invoked. The issues arising in a passing off action are as follows:-

 

·     Whether the plaintiff has established a goodwill or reputation in connection with a business, profession, service or any other activity, among the general public or among a particular class of people prior to the first use of the defendant.

 

·     Whether the defendant’s activities or proposed activities amount to a misrepresentation which is likely to injure the business or goodwill of the plaintiff and cause damage or likely to cause damage to his business or goodwill.

 

·     Whether the defendant succeeds in one or more of the defenses set up by him.

 

In an infringement action, the plaint may seek any of the following relief:-

 

an injunction restraining further use of the infringing mark;

damages on the account of profit;

An order for delivery up of infringing labels and marks for destruction or erasure.

The injunction that may be sought includes the:-

Anton Piller Order;

Mareva Injunction;

Interlocutory Injunction;

Perpetual Injunction.

 

Anton Piller injunction order, which is an ex-parte order to inspect the defendant’s premises without notice, where there is a possibility of the defendant destroying or disposing of the incriminating material.

 

Mareva Injunction, the court has power to freeze defendant’s assets, where there exists a probability of the assets being dissipated or cancelled so as to make a judgement against him worthless and un-enforceable. This remedy appears to be similar to the interlocutory order to attach property before judgement under the Code of Civil Procedure, 1908.

 

As regard to the temporary injunctions, the procedure is well covered under the Code of Civil Procedure, 1908 and also the Specific Relief Act, 1963.

 

Criminal Remedies:-

 

The Trade Marks Act, 1999 provides for a comprehensive scheme whereby those persons who un-authorisedly deal with the trade marks can be punished for various offences. The offences includes:-

 

Falsifying and falsely applying trade marks.

 

Selling goods or providing services to which false trademark or false trade description is applied.

Removing piece goods etc. contrary to Sec81 which deals with stamping of piece goods, cotton yarn and threads.

 

Falsely representing a trade mark as registered.

Falsification of entries in the register; and

Abetment in India, of acts done outside India etc.

 

The punishment of these offences includes a minimum imprisonment of 6 months and minimum of Rs.50, 000 which may extent to a maximum of 3 years and Rs.20, 000 respectively. Section 105 of the Act provides for enhance penalty on second or subsequent conviction.

 

Administrative Remedies:-

 

The Act also vests certain powers in the various administrative authorities to relief and remedies to the aggrieved persons. It is the Registrar who mostly exercises these powers under the guidance of the Central Government.

 

COPYRIGHT:

 

Since India is a member to the Berne Convention and TRIPs, the proprietor of the trademark from another member country will get copyright protection in India.

 

In order to get copyright protection it is essential that there is a reproduction of substantial part of the original copyright label.

 

Infringement of copyright in respect of an artistic work consists in doing or authorizing the doing of any of the following acts without the consent or licence of the copyright owner:-

 

·     To make an adaptation of the work;

·     To include the work in any cinematographic film;

·     To reproduce the work in any material form including the depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work;

·     To communicate the work to the public;

·     To do in relation to an adaptation of the work any of the acts specified in relation to the work in sub clause (1) to (4);

·     To issue copies of the work to the public.

 

Civil remedies:-

 

Civil remedies for enforcement of the copyright including injunction, damages, account of profits, delivery of infringing marks and damages for conversion can be invoked by owner of copyright or in certain cases, publisher of the trademark label.

 

Suit for injunction: Restraining the impeding infringement or continuing infringement. The relief claimed may be in the form of perpetual injunction i.e. permanently restraining the defendant from infringing the copyright or may be in the form of mandatory injunction, directing the defendant to withdraw, hand-over or destroy the infringing works and articles.

Suit for damages: Damages can be claimed – (1) as an amount of loss sustained by the holder of copyright by reason of infringement.(2) as an amount representing the profits made by the infringer and (3) as an amount representing the value of infringing copies.

The first two reliefs are alternative to one another i.e. one of the two but not both can be claimed, the third however, is in addition to one or the other of the first two.

Law presumes that all the infringing copies and plates are the property of the copyright holder and hence they are liable to be surrendered to the copyright holder

In case of account of profits, the infringer is required to hand over his ill- gotten grains to the party whose rights he has infringed and in the case of damages, he is required to compensate the party wronged for the losses that the party suffered.

 

Criminal remedies:-

 

The owner of the copyright and also any person can initiate criminal proceedings, by filing a complaint before the competent First Class Magistrate within whose jurisdiction, the plaintiff resides or the infringement takes place or deemed to have taken place. The procedure prescribed under Criminal Procedure Code applies to the proceedings before the criminal court. Court has the power to direct seizure of the infringing works as well as all other tools, accessories and containers etc., which are for the purpose of the Act treated as the property of the copyright holder and can, direct them to be handed over to him. On conviction, the Criminal Court can sentence the accused to an imprisonment upto 3 years and a fine extending upto Rs.2 lakhs. Recent amendment have made the imposition of punishment to a minimum term of 6 months and a fine of Rs.50,000 mandatory unless for special reasons to be recorded if the magistrate awards lesser punishment than the minimum.

 

Administrative remedies:-

 

An application can be made by the owner of the copyright in any work or by his duly authorized agent, to the Registrar of Copyright to ban the import of infringing copies of trade mark label which were earlier confiscated from infringer to the owner of the copyright.

 

DESIGN:

 

The rights conferred by registration on the creator of lay out designs are the exclusive right to use a lay out design by him and obtained relief in respect of infringement of his right by any other person.

 

The infringement consists of any act of reproducing whether by incorporation in a semi-conductor the registered integrated circuit or otherwise the registered integrated circuit or otherwise the registered lay-out design in it’s entirely or any part thereof in a semi-conductor.

 

Conclusion:-

 

As a laws concerning intellectual property are already in place, the need of the hour is a specialized and tactful judiciary, which can deal with intellectual property rights issues with aptness keeping the national interest in mind and ensure effectiveness of enforcement system. Rights holder should be encouraged to participate in enforcement actions. The quantum of damages awarded by the court should be such that they not only compensate the right holder for the losses suffered, but should also act as a deterrent for infringers form engaging in illegal activities. Infringers can also be directed to take corrective advertising to indemnify the loss caused to the good will of the right holder.

 

REFERENCE: .

1.http://www.iprventure.com
2.http://www.iprindia.org
3.http://vic-ikp.info
4.http://dipp.nic.in
5. http://www.indianembassy.org