Lawyer Monthly Magazine - April 2019 Edition

APR 2019 92 Client Choice www. lawyer-monthly .com cases, the same is also particularly useful in bringing the jurisdiction of the case to the place where the plaintiff/ right holder resides or carries on business or works for gain. The same can be employed to bring the case before the highly IP savvy High Courts. (vi) Recordation of IP rights with the Indian Customs and notifying and liaising with the Indian Customs authorities to interdict/suspend suspected shipment carrying infringing goods and conducting proceedings before the Customs authorities for determination of infringement and destruction of infringing goods. Are patent and IP laws taken seriously in India? What are the repercussions of infringement? Yes, patent and IP laws are taken seriously in India. As stated above, the High of the enforcement agencies as to the intellectual property of right holders. Moreover, it is a requirement under the Trade Marks Act, 1999 that a police officer, before making any search or seizure without warrant, shall first have to obtain the opinion of the Registrar of Trade Marks on facts involved in the offence and shall abide by that opinion. This may cause a substantial delay and hindrance in obtaining a speedy remedy in cases of trademark violations. From the above, can you share effective ways companies can assert their IP assets? (i) Issuing cease & desist/ warning notices to the infringers/notice of pull down to the E-commerce websites and intermediaries; (ii) Filing complaints with the local or specialized Police Stations for raid action against the counterfeiters including search, seizure and arrest; (iii) Filing a complaint in the Magistrate’s court seeking directions for the Police to register a criminal case and investigate against the counterfeiters, cause search & seizure of counterfeit goods and arrest of counterfeiters, and assisting the public prosecutors on trial of the offenders; What challenges arise when trying to assert IP assets in India? The Indian IP legal landscape and jurisprudential framework is robust and the courts in India, especially the High Courts of Delhi, Bombay, Calcutta and Madras are highly IP savvy. These High Courts have commercial courts and the judges presiding over IP matters in these courts are specialised in adjudicating IP disputes in an efficient and speedy manner and are sensitive to the IP rights of rights holders. However, most of the lower courts and district courts of other states in India are not as familiar, experienced and sensitive in handling IPR cases and in providing adequate remedies in a timely manner, which is a challenge for rights holders, especially when the jurisdiction of the case in question falls in such a state or territory. When taking criminal action against infringers and counterfeiters through the police system in respect of unregistered trademarks and copyrights, it may be difficult to convince them to take cognizance of the IPR violation in order to move the system without a registration certificate in hand. Obtaining a remedy through criminal action may be difficult due to lack of experience and awareness, and the ignorance (iv) Filing and prosecution of a civil suit before the concerned District Court or High Court to seek preliminary and permanent injunction, delivery-up of infringing goods for destruction and recovery of damages. Also obtaining Anton Pillar type of orders in civil actions for conducting a civil search of the defendants’ business premises and seizure operations by a court appointed Commissioner; (v) The right holders and proprietors must register their IP rights with the relevant authority/office/registry viz. the Patent Office, Designs Office, Copyright Office and/ or the Trademarks Registry. A registration in hand is a prima facie evidence of ownership and it not only helps in convincing the police to register a case and start with the investigation, search and seizure operations but in trademark infringement We speak to Manisha Singh about IP assets. With India being an upcoming country appealing to business people and investors, Manisha speaks about how robust the IP legal landscape is in her jurisdiction, where there is room for improvement and what businesses should do if their IP is being infringed. Intellectual Property Enforcing IP Assets: Th Laws if Yo Are Being Copied