INTA Asks Members to Provide Evidence of Criminal Enforcement Delays Under Trademark Act

Published: March 15, 2019

Call for Action: Provide Evidence of Criminal Enforcement Delays
INTA is calling on members who have faced hurdles in criminal enforcement actions under India’s Trademark Act to provide evidence that may help brand owners invoke criminal remedies.

The Association has in the past highlighted to the Ministry of Law & Justice and the Ministry of Trade & Commerce the difficulties brand owners face in invoking criminal remedies under the Trademark Act, 1999. Specifically, it has cited Section 115(4), which requires the police to consider the opinion of the registrar, in practice, noting that it is burdensome and defeats the very objective it seeks to achieve. INTA has recommended amending Section 115(4), inter alia, to remove the requirement to obtain an opinion of the registrar.

Pursuant to a request from the government for practical examples, INTA is collating evidence on how Section 115(4) leads to delays. Members who have faced hurdles in criminal enforcement actions under the Trademark Act in India are requested to contribute:

  1. Instances/cases in which the opinion of the registrar was sought but was never issued;
  2. Instances/cases in which the opinion of the registrar was sought and was issued, but the same was unduly delayed;
  3. Instances/cases in which the opinion of the registrar was sought and was issued, but the opinion was not clear and was rather ambiguous;
  4. Instances/cases in which owing to the requirement of prior opinion, the evidence was destroyed, information was leaked, and the very purpose of conducting a raid was frustrated; and
  5. Any other relevant instances/cases which could advance INTA’s argument for the amendment.

Please send your contributions-and encourage your local associates to do so-to Iris Gunther, INTA’s Manager, External Relations – Enforcement, at [email protected] by May 1.

Workshop Discusses Challenges and Solutions to Intellectual Property Enforcement
The Cell for IPR Promotion and Management (CIPAM) in collaboration with Anand and Anand (India) and with the support of INTA, Indian Beauty & Hygiene Association (IBHA), and React – The Anti-Counterfeiting Network, held a workshop on March 9 in New Delhi, Delhi, India, to discuss various challenges faced during intellectual property rights (IPR) enforcement actions in the Delhi-National Capital Region and to identify the viable solutions.

The workshop focused on existing and developing challenges faced by IP owners while enforcing their civil and criminal actions as well as practical issues faced by police and customs in enforcing appropriate legal remedies. The workshop was divided into three panels: (1) enforcement of IPR in the digital landscape-online counterfeiting and liabilities of intermediaries; (2) civil and criminal enforcement of IPR in Delhi; and (3) the need for interdepartmental collaboration and a centralized IPR agency. The panels featured eminent speakers from the government, judiciary, enforcement agencies, and corporates.

The keynote speaker, the Honorable Justice Manmohan of the High Court of Delhi, highlighted that counterfeiting is a growing menace that has gained momentum due to the rapid ascent of e-commerce. This development, coupled with newer technologies and concerns surrounding intermediary liability and privacy, pose constant challenges for enforcement agencies and the judiciary. Justice Manmohan emphasized that the immediate solution, is for the country’s entire IPR machinery, including courts, police, and customs, to work together, interact more closely, and keep sharing knowledge on an ongoing basis.

Panel 1 of the workshop-enforcement of IPR in the digital landscape: online counterfeiting and liabilities of intermediaries-featured the Honorable Justice Prathiba M. Singh of the High Court of Delhi; Rajiv Aggarwal, Joint Secretary, Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry; and Dr. Ajai Kumar Garg, Director, HoD International Cooperation & Bilateral Trade, Innovation and IPR, Ministry of Electronics & Information Technology. The panel was moderated by Pravin Anand, Managing Partner, Anand and Anand.

Justice Singh has created landmark jurisprudence through her judgments, providing clarity on the legal principles of e-commerce platforms’ determination of intermediary liability and applicability of safe harbor provisions. She suggested that the law related to intermediary liability will keep evolving and that the right balance will need to be struck at some point. In conclusion, Justice Singh pondered over new challenges that would arise as and when artificial intelligence seeps completely into the e-Commerce domain. Mr. Aggarwal provided the government’s viewpoint, noting that the topic of intermediary liability is of great importance for the Indian economy, especially considering the astounding number of Internet and smartphone users in India. He said that the Indian government is committed, the judiciary has been emphatic, and the legal fraternity and industry have been active in establishing a healthy IP ecosystem, and that in a few years, this ecosystem will be totally transformed.

Dr. Garg said that we also need to think of technological solutions to deal effectively with online counterfeiting. Section 115 (4) of the Trademark Act, 1999 was brought up too, with Mr. Anand stressing that this provision has caused serious problems in effective IPR enforcement in the country. He noted INTA’s call to the government for its amendment.

Panel 2 of the workshop-civil and criminal enforcement of IPR in Delhi-featured the Honorable Justice J.R. Midha of the High Court of Delhi; Suvashis Choudhary, Additional Commissioner of Police, Economic Offences Wing, Delhi Police; and Arvind Gopal, Attorney, Digital Crime Unit, Microsoft India. The panel was moderated by Saif Khan, Partner, Anand and Anand.

Justice Midha shared various anecdotes as a judge presiding over IP and other matters, underlining the principle that he believes each attorney should present the client’s case in a manner that makes it clear to the court that the represented client is an honest litigant. All panelists agreed that while there is a need to train and reorient investigative agencies, brand owners and their lawyers must also make efforts to understand the challenges faced by the police.

The third panel-the need for interdepartmental collaboration and a centralized IPR agency-featured Komal Kalha, Senior Counsel, Office of South Asia, U.S. Patent and Trademark Office; Dr. S. Eswara Reddy, Drugs Controller General of India; Subodh Singh, Joint Commissioner of Customs; and Abhishek Dhoreliya , CEO, MarkScan. The panel was moderated by M.S. Bharath, Partner, Anand and Anand, and Co-Chair, INTA India Global Advisory Council.

In his introduction to the session, Mr. Bharath discussed INTA’s white paper “Guide to Building an Intellectual Property Rights Coordination Center”; copies were made available to the audience. He clarified that this center would only act as a platform for exchange of information and improved coordination between various agencies that deal with IP, but would not have any powers of enforcement.

Ms. Kalha briefly explained the functioning of the U.S. National Intellectual Property Rights Coordination Center, and highlighted key benefits the U.S. IP ecosystem has witnessed since its inception. Mr. Singh said that if India were to have an IPR center, it would be vital to first identify participating agencies and develop clear protocols and mechanisms. Mr. Dhoreliya echoed this, noting that the government bodies involved in tackling counterfeiting are numerous; in addition, he urged looking at digital solutions to counterfeiting, such as introducing chargeback schemes. Dr. Reddy said that in any such proposed center, information sharing would be imperative and all agencies involved would need to work for a singular purpose. The panelists agreed that active industry participation would be essential for the successful functions of such a center.

CIPAM is a professional body under the aegis of India’s Department for Promotion of Industry and Internal Trade, which ensures focused action on issues related to IPRs. Its initiatives include working in partnership with industry associations, including INTA, to conduct IPR awareness programs in schools, universities, and industries across India.

Government Releases Draft National e-Commerce Policy
India’s Department for Promotion of Industry and Internal Trade (DPIIT) released a draft of the Draft National e-Commerce Policy for public comments on February 23. According to the DPIIT’s website, “the Draft Policy seeks to provide for consideration and discussion, a policy framework that will enable the country to benefit from rapid digitization of the domestic as well as global economy.”

The draft policy seeks to achieve this goal through a multi-pronged approach, including the following: creating a facilitative regulatory environment for the growth of the e-commerce sector; encouraging the Make in India program; safeguarding interests of consumers; leveraging access to data; promoting domestic research and development in digital innovation in order to foster homegrown alternate, cheaper, and efficient service providers suited for the Indian market; and stimulating the participation of micro, small, and medium enterprises, start-ups, and traders in the digital economy.

Among other elements, the draft policy envisages anticounterfeiting and anti-piracy measures e-commerce players would be required to undertake.

“While Digital India is already unfolding, its pace needs to be accelerated, and innovation and enterprise need to be encouraged inclusively by providing a facilitative ecosystem for stimulating the digital economy,” the draft policy notes.

The deadline for comments has been extended, from March 9 to March 29. INTA has submitted interim comments and will be submitting final comments by the extended deadline. If you would like to submit comments on the draft policy to INTA, please contact Tiffany Pho, INTA’s External Relations – Advisor, Anticounterfeiting, at [email protected], no later than March 20.

INTA India Consultant Gauri Kumar supports the Association’s 147 members in India. In collaboration with the staff at INTA’s headquarters in New York City and Representatives Offices around the world, Ms. Kumar works on the Association’s policy, membership, marketing, and communications initiatives throughout India. To learn more about INTA’s activities in India, please contact Gauri Kumar at [email protected]nta.org.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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