Recommendations To Combat Counterfeiting / Piracy

o The Special Enforcement Cells should be established. The officers should qualified and experts in their respective skills. They must be properly trained to collect evidence, to detect crime and about the psychology of the criminals. They should have the authority independent to that of the Administrative Organ of the State so that there should not be any political pressure in execution of their duties.

o The industry and the enforcement agencies need to step up their efforts and must develop more innovative methods to combat counterfeiting. There is a need to develop advanced authentication technologies for counterfeit detection. There must be coordination amongst various enforcement agencies at the State level, National level and International Level.

o The officers of Special Enforcement Cells should be updated with the latest techniques being employed in other countries to detect counter counterfeiting; various departments such as the customs and police department should co-ordinate with these agencies so as to strengthen them in enforcement.

o The IPR training institutes should be set up to impart training to the Special Enforcement Authorities, Administrative Authorities and other Judicial Authorities.

o The legal framework for tackling counterfeiting are in place in India. India has a number of laws dealing with counterfeiting which are, inter alia, such as The Trademarks Act, 1999 Copyright Act, 1957, Indian Patents Act, 1970 Designs Act, The Drugs and Cosmetics Act, 1940, The Prevention of Food Adulteration Act, 1954, Consumer Protection Act, 1986 and recourse can also be taken to the Indian Penal Code. All have penal provisions and have made counterfeit a cognizable offence, however the same does not provide for a strong deterrent to the counterfeiters so more deterrence punishment should be imposed. There must be necessary amendment to the Trademarks Act 1999 to simply the procedure.

o The industry should understand the implications of counterfeiting-both legal and economic, to protect its own business interests in India and abroad.

o I recommend that the Industrial restrictions be imposed by government and by the trade organisations on the person found guilty of Counterfeiting. This would be better deterrence than that of the fine and imprisonment. The counterfeit manufacturer/persons should be black listed. No government or trade organisations should deal with such person. No banks and financial organisations should provide him funds for his business activity. The Organisation and such persons should be banned by the Trade Organisations and should be expunged from their membership.

o The industries should hire high quality professional services to enforce their IP rights (by bringing about raids, criminal prosecutions, etc). This perhaps will be the most effective way to tackle the problem of counterfeiting.

o By sharing information and intelligence it will become more difficult for counterfeiters and pirates to operate. This will spell in better protection of consumers; disruption of organized crime and the industry will stop losing staggering amount of revenue every year.

o The right holders should seek injunctive relief and pursue civil action against violators such as street vendors and retail outlets and actual infringer for recovery of damages to create deterrence over them.

o The enforcement of IPR is the ability of the right holder to protect his assets. An efficient system that provides effective protection through other enforcement mechanizations is necessary to make the IP rights meaningful.

 In India mostly disputes arising out of the IPR are tackled by Civil and Criminal Courts. There is need for establishment of the Fast Track Specialised Court handling each species of IPR separately. Recently Supreme Court of India has directly all courts to resolve IPR matters within 6 months. We all heartily welcome this initiative of Supreme Court.

There is also need to resort to other remedies before approaching the judicial authorities for enforcement of rights like Alternate Dispute Resolution systems.

The key element necessary for a successful approach to enforcement is to have a good dialogue and cooperation between right holders (industry) and enforcement authorities. In addition, the strategy must remain flexible and it must be continuously reviewed.

o Agreement: The counterfeit may also rise due to weak clauses in the agreements like the agreement may be silent on IPR issues or their may be no clauses to restrain the use of the trademarks, copyrights or other rights with express provisions. A sound agreement between the local distributors, manufacturers, joint venture partners and the IP holders minimises the risk of counterfeiting.

o Licensing Trademarks: To meet the demand of the market forces and to combat against the counterfeiters the IP holders/ original manufacturers should license their IP/trade marks to the other manufacturers in the territory to satisfy the market demand and to be competitive. Following precautions should be taken for licensing the trademarks rights:

-The terms of the license must be properly set to cover the Trademarks Rights of the owner. -The license should clearly define the exact rights which are being licensed. The license should establish the exact scope of the licensed products. -The license must contain sufficient quality control and approval mechanisms to ensure that the standards of the manufacture and sale of the licensed products are acceptable to the licensor. -Failure to include such provisions in licenses may result in loss of trademark rights and the trademarks may become vulnerable. -License agreements should also assign to either the licensee or the licensor the financial and legal responsibility for taking action against infringers and counterfeiters.- It is necessary to record a trademark license with local authorities to take action against products that infringe the licensed goods and may even lead to loss of trademark rights.

 

o Fast Track Court: The fast track special courts should be established to dispose of the matters of counterfeiting expeditiously. The special fast track courts should have their own experts to detect and analyse the offence and to lay out the evidence.

o Timely Measure: The right holder should take proper action against the Counterfeiter on immediately becoming aware of the infringement of the rights by the manufacturer. Failure to take appropriate action at the proper time may provide opportunity to the Counterfeiter to get organised and financial strengthens his base to defend the original manufacturer.

o Planning Proper Strategies For Enforcement Of Rights: As much as possible information must be collected about this problem. There must be pre and post assessment of enforcement. This is dependant on an effective investigation. Some of the key issues for consideration are:

• How widespread is the problem of counterfeiting in that market /country /elsewhere?

• Where is the manufacturing taking place?

• Is the product for export / import or produced only for the local market?

• How easy / difficult is it to manufacture the goods?

• What is objectionable –labelling? Embroidered marks?

• Where/how are the objectionable aspects applied to the goods? How do you differentiate the genuine from the counterfeit?

• What is the cost value of the product?

• How much of a genuine market is under threat (a vital criterion in order to assess the proportionality of any enforcement effort in terms of cost and management time)?

The consistence investigation must be carried out from the market sources. The investigation must be done internally by marketing personnel’s or externally by hiring detective agencies. Constant watch must be kept on the persons having business relationship or with whom the relations are terminated.

Conclusion:

In India the law is the best in the world but there is no proper enforcement and implementation. The framers of the Trademarks Act 1999 would have enacted the provision of Section 115 with the object that there should be no misuse of the law by the subordinate officers and so the person of higher rank than that of Dy.SP is authorised for conducting the search and seizure. They also made provision for obtaining of the Opinion from the designated officers of the Trademarks Registry before conducting the raid with regards to the holder of rights. The objective behind this may be that the complex problems involving the rights of the trademark owner to be decided by the expert Registrar before commencement of the criminal proceedings. It displeases me to state that the provisions of the law are misused to delay the process and thereby objective for which they are enacted are frustrated.

No industry sector is immune from attack by counterfeiters and no country is exempt from this type of criminal activity. – We should find ways to successfully combat it. Counterfeiting is an international challenge and demands the active participation from companies, organisation and trade associations, Local, National and international Law enforcement agencies and the governments around the world.

Disclaimer: The author assumes no responsibility for errors or omissions in this article. The opinions or views expressed in this article are the personal opinion of the author and are for information purpose only for the readers. No one is allowed to alter copy, store or redistribute this article without express notice to the author and consent of the author. The readers are request not to rely on the opinion so express by the author and should obtain legal advice from the qualified legal practitioners with regards to the subject matter. The author shall not be responsible for any act done by anyone relying upon the opinion expressed in this article.