TRADEMARK INFRINGEMENT & IMITATION OF LABELS- ENFORCING YOUR IP RIGHTS Jyotsna Balakrishnan Anand & Anand, New Delhi June 2005 e-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 ACTIONS Identify the nature of counterfeiting in the market: Manufacturers/Printers/Wholesalers/Retailers Blatant/Sporadic/Cautious Kinds of rights that are being infringed- trademark and/or copyright Zero in on specific targets Conduct intensive investigations on these targets to determine volumes of infringing goods and collect evidence for taking further action- sample infringing product, visiting cards, other printed matter

STAGES OF TAKING ENFORCEMENT ACTIONS Decide on strategy to adopt for each target based on: Kind of entity- wholesaler, retailer, manufacturer Volume of infringing goods Kind of rights being infringed

DIFFERENT STRATEGIES Issuing cease & desist letters/caution notices Negotiation & undertaking Filing of a civil suit/criminal complaint

CIVIL ENFORCEMENT SUIT FOR PERMANENT INJUNCTION RESTRAINING INFRINGEMENT OF TRADEMARK, PASSING OF AND/OR COPYRIGHT UNIQUE JURISDICTION PROVISION IN IP CASES- SUIT CAN BE FILED IN PLACE WHERE PLAINTIFF CARRIES ON BUSINESS

REMEDIES THAT CAN BE OBTAINED IN A CIVIL SUIT Injunction (an order issued by the court restraining the defendant from dealing in infringing goods)- temporary & permanent Ad interim (pending proceedings in the suit) or final Anton piller order: Court order appointing a local commissioner to visit the premises of the defendant & seize the infringing goods – the order is usually issued without notice to the defendant (ex parte)

RELIEFS THAT CAN BE OBTAINED IN A CIVIL SUIT Damages: Based on estimated lost profits/lost sales/loss of goodwill, etc. Rendition of accounts of profits earned from sales of infringing goods Delivery up of infringing goods

Example of a successful civil enforcement action 3 suits filed by Adidas Saloman AG in the Delhi High Court against counterfeiters At the initial stage, infringing goods were seized by the Local Commissioner Cases were decreed recently & damages of Rs. 15 lakhs was awarded to Adidas Saloman

The “Bombay Connection” case Komal Singh v. J.Bakshi Suit filed against entity using deceptively similar trademark “Bombay Connexion” with respect to clothes. The Defendant has been temporarily restrained by the Delhi High Court

Examples of successful enforcement of trademark rights by Indian textile houses Kala Niketan v. Kala Niketan – Defendant restrained by the Delhi High Court from dealing in sarees under the trade name Kala Niketan Virendra Dresses v. Varinder 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 ENFORCEMENT COGNIZABLE OFFENCE: NON-COGNIZABLE OFFENCE: Criminal complaint directly with the police for arrest & seizure; Criminal complaint before the district court for seizure. NON-COGNIZABLE OFFENCE: Criminal complaint before the District Court for search and seizure warrant against infringing parties; Criminal complaint before the District Court for search and seizure warrant against unknown persons.

TRADEMARK CRIMINAL ENFORCEMENT A cognizable, bailable criminal offence Punishment extends from 6 months to 3 years Fine which may extend to Rs. 1000/-

COPYRIGHT ENFORCEMENT ** A cognizable criminal offence ** A non-bailable offence ** Copyright registration not mandatory ** Punishment extends to 3 years maximum ** Fine extends from Rs. 50,000 to Rs. 3 lakhs

Example of a successful criminal enforcement action Criminal raids conducted in 2003 by the Economic Offences Wing, Delhi Police upon a complaint Printers printing counterfeit stickers & labels- Levi’s, Adidas, Lee, DKNY, Timberland

REMEDIES - CIVIL Less deterrent effect. Less publicity. 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 Immediate deterrent effect. Lots of publicity. CRIMINAL-ADV: Immediate deterrent effect. Lots of publicity. May lead to Arrest. May lead to conviction. Less expensive. CRIMINAL-DISADV: Can’t settle. A state case. Matter not in control. As a complainant, to be present on each date of hearing. No permanent injunction. No damages etc.

EVOLVING METHODS To form IPR associations, societies, guilds, etc. Ex: BSA, NASSCOM, IPRS, IMA, AGI, etc. To establish links with enforcement agencies Police, Customs etc. To prepare & circulate IPR educating materials Booklets, Pamphlets, Enforcement Guides, etc. To develop a network of information, advice etc. To regularly consult IPR lawyers/experts for advise

CONCLUSION To know your intellectual property rights To effectively secure / register your IPRs To take reasonable steps for promotion To have a good network of information

CONCLUSION To develop a workable enforcement strategy To regularly allocate funds in anticipation To enforce your rights vigorously & strategically