Intellectual Property Rights (IPR) Intellectual Property Rights (IPR)

Border Enforcement Measures in

India

Intellectual Property Rights(IPR)

Intellectual property is the product which is creation of human mindor intellect. intellectual property (IP) is an umbrella term for variouslegal rights which attach to certain names, written and recordedmedia, and inventions etc. Thus Intellectual Property refers tocreation of human mind such as inventions, designs for industrialarticles, literary, artistic work, symbols which are ultimately used inarticles, literary, artistic work, symbols which are ultimately used in

commerce

AMBIT OF IPR LAWS IN INDIA

1. Copyrights

2. Trade Marks

3. Geographical Indications

4. Industrial Designs

5. Patents

6. Plants varieties.

7. Layout Design of Integrated Circuits

[NOTE: Border Enforcement Measures do not extend to Plant

Varieties and Layout Design of Integrated Circuits.]

� Protection of the rights of the producers of Books and other printedmaterials, CDs, Music cassettes etc are provided under the IndianCopyright Act, 1957 as amended by Copyright (Amendment) Act,1999, Protection of rights of Producers of Phonograms is alsoprotected under the Copyrights Act

COPYRIGHTS

protected under the Copyrights Act� The copyright law has been amended periodically to keep pace with

changing requirements. The copyright law was amended in May1995, to bring it in line with the developments in satellitebroadcasting, computer software and digital technology. Theamended law has made provisions for the first time, to protectperformer’s rights as envisaged in the Rome Convention

TRADE MARKS� A trade mark (popularly known as brand name) is a visual symbol which

may be a word signature, name, device, label, numerals or combination ofcolours used by one undertaking on goods or services or other articles ofcommerce to distinguish it from other similar goods or services originatingfrom a different undertaking

� TRIPS Agreement provides for protection of Trademarks.� TRIPS Agreement provides for protection of Trademarks.

� Protection of right is protected under Trademarks Act, 1999

DESIGN

“ Design’ as per Designs Act 2000, means only the features ofshape, configuration, pattern or ornament or composition of lines orcolour or combination thereof applied to any article whether twodimensional or three dimensional or in both forms, by any industrialprocess or means, whether manual, mechanical or chemical,separate or combined, which in the finished article appeal to and are

judged solely by the eye.”

GEOGRAPHICAL INDICATIONS

� Geographical Indications of Goods means indications, which identifya goods as originating in the territory of a member, or a region orlocality in that territory, where a given quality, reputation or othercharacteristic of the good is essentially attributable to its geographicorigin.

� It is an indication� It originates from a definite geographical territory� It originates from a definite geographical territory� It is used to identify agricultural, natural or manufactured goods� The manufactured goods should be produced or processed or

prepared in that territory� It should have a special quality or reputation or other characteristics

� The Geographical Indications of Goods Act provides the rights, to use the geographical indication, to the person/persons of a particular territory wherein the goods are originating, produced, processed, or prepared

EXAMPLE OF POSSIBLE INDIAN GEOGRAPHICAL INDICATIONS

� Basmati Rice� Darjeeling Tea� Kanchipuram silk saree� Alphanso Mango� Nagpur Orange� Kolhapuri Chappal� Kolhapuri Chappal� Agra Petha� Bikaner Bhujia

PATENT

� A patent can be granted for an invention which may be related to any process or product. The word “Invention “ has been defined under the Patents Act 1970 as amended from time to time. “An invention means a new product or process involving an inventive step and capable of industrial application”

� The criteria for an invention to be patentable are,� The criteria for an invention to be patentable are,(1) An invention must be novel(2) has an inventive step and(3) is capable of industrial application

Contd/-

� Novelty : The matter disclosed in the specification is not published inIndia or elsewhere before the date of filing of the patent applicationin India.

� Inventive Step: The invention is not obvious to a person skilled in theart in the light of the prior publication/knowledge/ document.

� Industrially applicable: Invention should possess utility, so that it canbe made or used in an industry

TRIPS Border Enforcement Measures Obligations

Part III of TRIPS deals with Enforcement of Intellectual PropertyRights

� Section-1:- General Obligations

� Section 2:- Civil and Administrative Procedures and remedies

� Section3:- Provisional Measures

� Section4:- Special requirements related to border measures

� Section 5:- Criminal Procedures

Section 4:Special Requirements Related to Border Measures( Border Enforcement

Measures)� Suspension of release� Application� Security� Notice� Duration of Suspension� Indemnification� Inspection/Information� Ex Officio action� Remedies� De Minimis imports

Suspension of release by Customs Authorities (Article 51)

Members shall adopt procedures to enable right holders to apply for suspension of release of goods by customs into free circulation where:� Valid grounds for suspecting that the importation of counterfeit � Valid grounds for suspecting that the importation of counterfeit

trademark or pirated copyright goods may take place, and � Right holder submits written applications with competent

authorities� May provide corresponding procedures for other types of

infringement (patents, trade secrets etc.)� May provide corresponding procedures for exports

Article 52- Application

� Right Holder is required to furnish evidence establishing prima faciecase of infringement to the competent authorities and also requiredto furnish detail description of goods.

� Authority is required to inform the right holder ( applicant) with in areasonable time period about the status of the application ( acceptedor rejected) or period within which action would be taken

Article 53- Security or Equivalent Assurance

- The applicant would be required to provide security or equivalent assurance(bond) to protect:

- to protect the defendant

- to protect competent authorities

- to prevent abuse

Such security or assurance should not unreasonably deter recourse to theseprocedures.

Article 54- Notice of suspension

Importer and the right holders would be promptly notified about thesuspension of release of goods.

Article 55-Duration of suspension

� If customs authorities not informed within 10 working days afterreceipt of notice of suspension of initiation of any proceedingsleading to decision, the goods would be released.

� Time limit is extendable by another 10 working days

� If proceedings have been initiated, right to be heard and right ofreview upon request of defendant shall take place” within areasonable period” and shall decide whether measures to bemodified, revoked or confirmed

� However, if suspension of release is pursuant to provisional judicialmeasures, Art 50 shall govern

Article 56-Indemnification of the importer and of the owner of the goods

Relevant authorities shall have the authority to order the applicant topay the importer, the consignee and owner of the goods appropriatecompensation for any injury caused to them thorough the wrongfuldetention of goods or thorough detention of the goods releasedpursuant to Art 55.

Article 57-Right of Inspection and Information

� Members shall provide the competent authorities the authority togive the right holder an opportunity to have detained goodsinspected to substantiate infringement claims.

� Equivalent opportunity for importer

� Where a positive determination has been made on the merits of� Where a positive determination has been made on the merits ofcase, members may provide the competent authorities the authorityto inform right holder of the name and address of the consignor, theimporter, and the consignee and the quantity of goods in question

Article58- Ex Officio Action

Where Members require competent authorities to act upon their owninitiative and to suspend the release of goods in respect of whichthey have acquired prima facie evidence that an intellectual propertyright is being infringed:

� Authorities may seek information from the right holders to act on� Authorities may seek information from the right holders to act ontheir own initiatives to suspend release

� The importer and the right holder shall be promptly notified

� Members shall only exempt both public authorities and the officialsfrom liability to appropriate remedial measures where actions aretaken or intended in good faith

Article 59-Remedies

Without prejudice to other rights of action open to the right holderand subject to the right of the defendant to seek review by a judicialauthority,

� Destruction or Disposal of infringing goods in accordance with principle set out in article 46.

� For counterfeit trademark goods, no re-exportation in unalteredstate, or by application of different customs procedure, other then inexceptional circumstances

Article 60-De Minimis Imports

Members may exclude from the application of the above provisionssmall quantities of goods of a non-commercial nature contained in

travellers' personal luggage or sent in small consignments

Border Enforcement Mechanisms in India.

In India Border measures are enforced by Customs Department. Departmentof Revenue/Central Board of Excise & Customs has issued followingNotification/Rules/ Circular for enforcement of IPR Border measures:

o Customs Notification No 49/2007-Customs (NT) dated 8-5-2007o Intellectual Property Rights (imported Goods) Enforcement Rules,2007

dated 8-5-2007o Customs Circular No 41/2007 dated 29-102007Legal Provisions:

� Section 11 (2) (n) of Customs Act, 1962 empowers the Central Governmentto prohibit importation and exportation of any goods for the protection ofPatents Trademarks and Copyrights by issuing of Notification.

� Section 11 (2) (u) of Customs Act, 1962 empowers the Central Governmentto prohibit importation and exportation of any goods for the protection of anyother law for the time being in force by issuing of Notification

Contd

Customs Notification to prohibit import of

infringing goods.� Department of Revenue issued Notification No 49/2007-Customs

(N.T) dated 08-5-2007which prohibits import :-� of goods having a false trade mark & false trade description;

� of goods made or produced beyond the limits of India andintended for sale and having a design in which copyright existsintended for sale and having a design in which copyright existsunder the Designs Act;

� of product made or produced beyond the limits of India and intended for sale for which patent is in force under the Patents Act, 1970

Contd/-

� of the product obtained directly by the process beyond the limits ofIndia and intended for sale for which patent is in force under thepatents Act, 1970

� Of goods having a false geographical indications� Of goods having a false geographical indications

� of goods prohibited to be imported by issuance of order issued byRegistrar of Copyrights under section 53 of the Copyright Act,1957

Intellectual Property Rights (Imported Goods) Enforcement Rules,2007

� Import of infringing goods are Prohibited under Notification No49/2007-Customs (NT) subject to following conditions andprocedures laid down in Intellectual Property Rights (importedGoods) Enforcement Rules,2007

� Department of Revenue notifies the Intellectual Property Rights(Imported Goods) Enforcement Rules,2007on 8th of May, 2007.

� The Rules have been framed in the line of TRIPS and WCO (World

Customs Organisation) model.contd

Salient Features of the Rules• The rules inter alia provide for:

� filing of a notice by the right holder;

� registration of said notice by the Customs;

� time limit for right holders to join proceedings;

� single point for registration of the notice filed by the right holder

� fees of Rs 2000/- for every notice.

contd/

� adequate protection to the rightful importer;

� adequate protection to the Customs for bonafide act;

� suo-moto action by the Customs in specified circumstances;

� disposal of the confiscated goods.

� no action against goods of non commercial nature contained in personal baggage or sent in small consignments intended for personal use of the importer

Customs Circular 41/2007

Central Board of Excise & Customs has issued a circular No41/2007 dated 29-10-2007 which apart from explaining variousprovisions of Intellectual Property Rights (imported Goods)Enforcement Rules,2007, puts in place a detailed procedure forelectronic registration of the notice by the Right Holders. Salientfeatures of the Circular 41/2007 :-

• On-line recordation as a trade facilitation measure• 110% of value of goods as Bond amount and 25% of bond value as

BG – uniformity• Recordation valid for 5 years (extendable thereafter on payment of

fees)

Goods in Transit

� Note 13 to Art 51 of TRIPS provides “It is understood that thereshall be no obligation to apply such procedures to imports of goodsput on the market in another country by or with the consent of theright holder, or to goods in transit”

� Under the provision of section 54(2) of the Customs Act, 1962, the� Under the provision of section 54(2) of the Customs Act, 1962, theprovision of section 11 of the Customs Act, i.e. prohibition/restriction imposed on import of goods would apply to goods intransit. Therefore, notification No 49/2007-Customs (NT) wouldextend to goods in transit also.

� There is no enabling provision.

Parallel Import� PARALLEL imports, commonly known as "grey market imports" are

goods brought into a country without the authorisation of the rightholders after those goods were placed legitimately into circulationelsewhere

� These goods are legitimate goods and not counterfeit or piratedgoods . Parallel imports are legitimate products except that they maybe packaged differently and may not carry the originalbe packaged differently and may not carry the originalmanufacturer's warranty

� . As per the present policy of national and international exhaustion ,rights are exhausted on first sale

� Border Measures in India do not apply to Parallel imports.

THANK YOU

Presentation By:-A.K.Sinha