1. TRADEMARK INFRINGEMENT & IMITATION OF LABELS- ENFORCING YOUR IP RIGHTS
Jyotsna Balakrishnan Anand & Anand, New Delhi June 2005

2. 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

3. 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

4. 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

5. 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

6. 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

7. 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

8. 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

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

10. 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

11. 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)

12. 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

13. 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

14. 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

15. 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

16. 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

17. 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.

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

19. 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

20. 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

22. 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.

23. 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.

24. 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

25. 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

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