India Roundtables: Trademark Enforcement—Challenges and Opportunities

Published: April 15, 2018

INTA, in association with K&S Partners, organized a roundtable on March 16, 2018, in Mumbai, India, to discuss (a) border enforcement and anticounterfeiting measures in India, including challenges; and (b) jurisdictional issues in trademark and copyright matters.

The panel discussion on border enforcement and anticounterfeiting measures was moderated by Ashish Marbaniang (K&S Partners, India). Opening the discussion, INTA’s 2018 President Tish Berard (Hearts On Fire Company, LLC, USA) highlighted the perils of counterfeiting and INTA’s commitment to combating it. Pranaya Wahane, IRS, Joint Director, Risk Management Division, Directorate of Revenue Intelligence, Customs Office, spoke on the new customs recordation system for intellectual property (IP) rights and customs’ role in dealing with counterfeits. MKK Prasanna, Additional Commissioner of Police, Mumbai Crime Branch, emphasized the challenges faced by police, including procedural delays in court trials and storage of confiscated goods. Pramod Bhatt (Sanofi India Ltd., India) stressed the importance of combating counterfeiting in relation to life-saving drugs and the measures Sanofi takes in that regard.

Moderating the panel on jurisdictional issues, Jyoti Sagar (Managing Partner, K&S Partners, India) opened the discussion by stating that the objective of providing an additional forum to a plaintiff to be able to sue in the place where it resides or carries on business (apart from those available under the Civil Procedure Code, which requires a plaintiff to sue at the place where the defendant resides or carries on business) is meant for the plaintiff’s convenience. The Delhi High Court has held that if the cause of action has arisen at a place where the plaintiff has its subordinate office, then the additional forum conferred under the Copyright Act and the Trade Marks Act is restricted only to such subordinate office and that the plaintiff’s principal place of business is not relevant in such a case. Honorable Justice Gautam Patel, Bombay High Court, however, emphasized that the additional forum to sue cannot be interpreted in a manner that would render the plaintiff’s principal place of business irrelevant, even if the cause of action has arisen at the place where the plaintiff has its subordinate office.

Ravi Kadam, Senior Advocate, Bombay High Court, added that the additional forum provided to a plaintiff would not include the plaintiff’s branch office unless some part of the cause of action has arisen there. Rajendra Kumar (K&S Partners, India) emphasized that the issue of jurisdiction has become more convoluted in today’s era of online transactions, where business on an online medium transcends physical boundaries. Sujeet Jain (Viacom18 Media Pvt Ltd, India) pointed out that the additional forum is being misused by several individuals or entities across India, who, by claiming to be the owners of copyright in a movie script, for instance, force the media/production companies to their place of residence or business. Thus, media/production companies are obligated to defend suits in various parts of the country, which at times are just a few days prior to the release of a movie or telecast of a show, causing immense inconvenience to the companies.

The panelists noted that there is a tendency to file IP suits in select High Courts, which are more conversant with IP laws, and unanimously agreed that specialized IP courts are needed in India.

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