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Counterfeiting and scams are commonplace in certain Indian industries. For this reason, the United States has put India on its Priority Watch List of countries having “serious intellectual property rights deficiencies”. Fortunately, the Indian Government is now concentrating on creating a more reliable IP environment.
The biggest drivers of India’s economy now are manufacturing, innovation and services, particularly in and around IT and pharmaceuticals, and growth in these areas has contributed to a rise in the number of IP registrations. Large corporations in India are very respectful of IP rights, with India ranked 46 out of 97 countries in the International Property Rights Index 2015. The Government is currently focused on upgrading infrastructure using state-of-the-art technology to ensure that IP offices are functioning at an optimum level.
India’s has a commitment to fulfill its obligations under international IP treaties to which it is a party should improve overall enforcement of the relevant legislation in India. Still, Australian businesses should aim to have in place formal legal protection of IP rights well before entering the Indian market, including a well-researched and executed strategy to protect their IP. Foreigners trying to file an application for IP protection in India must include their registered place of business on the application. However, the need to register your IP as early as possible, often before you have established a physical presence in India, necessitates the use of an Indian attorney or agent to make these applications on your behalf.
India’s international IP obligations
- The Paris Convention: An individual from a country that is a signatory to the convention can apply for a patent or trademark in any other signatory state. The same enforcement of rights and status will apply to the foreigner as it would to a national in the country where the registration is being sought.
- The Berne Convention: Each signatory state recognises the copyright of authors from other signatories. Foreign authors’ copyrights are enforced and respected in the same way as those of authors who are citizens of the state.
- The Patent Cooperation Treaty: A centralised system where a combination of patent applications across a number of different national jurisdictions can be obtained through a single application.
- The Madrid Protocol: Multiple national trademark registrations across different jurisdictions to be made through a single application process. The Madrid Protocol was ratified in India in mid-2013 and is currently in operation.
- The Rome Convention: Copyright protections can be extended to performing artists and broadcasting organisations.
Be aware that the process of registering IP rights in India can be slower than in Australia. For example, patents are usually published 18 months after application. India has a first-to-use system, which defines the first person to register a mark in India as the person with superior rights over the trademark. It can be difficult, time-consuming and expensive to recover your trademark if it has been used by a different party in India, so the incentive to register early is strong. This should not in itself distract potential investors from the potential of the Indian market. Risks such as IP theft are becoming less of a concern since police authorities now have the power to search private property and seize goods without a warrant if there are suspected counterfeiting activities taking place. It is worth noting that the cost of protecting your intellectual property in India is relatively low compared to Australia.
In India, the office of the Controller General of Patents, Designs and Trademarks oversees administration of IP services, registrations for which are made through the Indian Patent Office. Applications for patents and trademark protection can be made online, while design patent applications must be made in hard copy. It is also worth registering internet domain names for your business in India as early as possible, in part to avoid being targeted by speculators who try to make money by buying up domain names and then charging high prices for their release to those who want to use them. The National Internet Exchange of India monitors domain name registrations.
The Australian Government’s IP Australia website outlines the following information for Australian businesses pursuing IP protection in India:
- Trademark applications must be filed with the Indian Patent Office (IPO).
- A first-to-use rule applies to trademark rights, giving the first person to use the trademark in India superior rights to any other person or organisation that may make an application for trademark.
- It is essential to conduct a trademark search prior to registration. This can be done online through the Government’s trademark search tool.
- Applications for trademark cost about $70 (INR 3,500) each and can be performed online.
- Other related rights, such as domain names and company names, should also be secured through registration.
- It is advisable to file trademark applications in India as soon as possible due to the ‘first-to-use’ rule.
- Three-dimensional shapes and colour combinations can be protected as trademarks in India. Other non-traditional marks, such as sounds and smells, are not yet able to be registered, although extending protection to these marks is currently being considered.
- Enforcement of a trademark without registration is possible, although the process tends to be more expensive and less predictable as it is reliant on the court system.
- Customs regulations provide cross-border protection of some IP rights.
- Trademark registrations may be removed from the register if they are not used for three or more consecutive years after registration.
- Only one type of patent is available in India.
- Check ahead of application whether your specific design can be patented in India. Helpful guidelines are available at the Indian Patent Office.
- Patent examiners may raise clarity objections when assessing patent applications. You may need to make several modifications to make patent specifications compliant with Indian requirements.
In India, design protection is available for 10 years and can be renewed for a further five years. The application and examination process takes six to nine months.
Unlike in Australia, where copyright is automatically protected when an idea or concept is documented, it is possible and necessary to register copyright in India. The Government of India’s Copyright Office is responsible for administration of copyright. No registration is required but registering copyright with the authorities is advisable.
Can be registered for 10-year terms and renewed for a further 10 years at a time. The individual or organisation must hold an authority established by law, which represents the interests of producers in that geographical location.
Plant varieties are protected in India for up to 18 years.
Violation of your IP
Australian businesses should be prepared to act quickly and decisively to enforce their IP rights should they be infringed.
There are several enforcement options for dealing with violation of IP:
- Administrative enforcement
- Civil litigation
- Criminal law enforcement
- Cease and desist (C&D) letters
The main way to deal with infringements is to file a complaint with the Indian Patent Office or Copyright Office that managed the enforcement of IP rights.
The Central Board of Excise and Customs also has powers to deal with counterfeit goods. Customs measures can be enforced on the imports of goods that infringe on others’ copyrights and trademarks. Such ‘infringing goods’ are defined as goods manufactured, reproduced or traded in breach of IP laws within India or elsewhere, without the express permission of the person or organisation who owns the copyright or trademark. While their powers vary with different types of counterfeit products, customs authorities can usually fine offenders, seize goods or equipment and issue penalties. However, they do not have powers of arrest and cannot award compensation.
While the administrative enforcement is usually very quick and low cost – it does not require any court procedure – it can be a limited deterrent and fines may be small. For complex IP cases, businesses may need to use the courts and, for very large cases, may want to pursue a criminal prosecution.
In any civil action for enforcement of intellectual property rights, the following reliefs may be claimed:
- Permanent injunction
- Interim injunction
- Accounts and handing over of profits
- Anton Piller order (appointment of local commissioner by the court for custody/sealing of infringing material/accounts)
- Delivery up of goods/packing material/dies/plates for destruction
Note that in India, wherever provisions have been made for criminal prosecution for violation of any intellectual property rights, a criminal case can be filed against known as well as unknown persons. Both civil and criminal remedies, wherever applicable, can be availed simultaneously.
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Asialink Business last updated this information on June 2016.
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