TRADE MARKS & ADMINISTRATIVE ACTIONS IN INDIA:

Prior to 2006, some procedure followed for administrative action were slight different. In case of imported goods, customs were empowered to take cognizance of infringed products by order of Courts or authorities such as Trade mark/Copyright Board & Registrar. Even the infringed Consignment were not withhold consignment without courts order. In case of Drugs & Pharma products Customs use to seek approvals of Drug Controllers (Asst. Drug Controllers - ADC at designated ports), or local state FDA's. This procedure was challenged by one Pharma company by invoking Writ jurisdiction of High Court of Bombay contending that the export consignment was withhold by ADC without authority on the ground of bis-branding and conflicting to similar registered trade mark of some other company.

The High Court sought an explanation from these administrative authority ADC/Drug Controller and Customs about their empowerment under statute to object export of goods when they are not substandard and are manufactured under license issued by the respective FDA. The authorities were unable to provide explanation and any evidence/notification or procedure which validates such approval or objection prior to export. Since then cross-departmental notifications were issued by these authorities empowering them to take cognizance.  Presently administrative action is taken by following agencies:-

 

a. Drug Controllers - Central Body:  At various Port locations, there are ADC’s (Asst Drug Controllers), at Regional Level - Deputy Drug Controller, Country level – Central Drug Controller. These authorities function under the office of Controller General of Drugs. Please see link http://cdsco.nic.in/ for more details.

b. FDA - State Body:   Every state has its local Food & Drug Administration department - example refer link for FDA- Mumbai, Maharashtra State at http://www.fda-mah.com/introduction.aspx

c. Customs:  Customs issued notification for taking cognizance of IPR matter. Refer link http://www.cbec.gov.in/ipr-notfns.htm . For Customs main page refer link http://www.cbec.gov.in/cae1-english.htm .  Registration of Intellectual Property Rights: Now Customs have also provided online registration of Intellectual Property by the respective right holders and the details of infringed products so that they can take cognizance if counterfeit products are identified by them while clearing the imported/exported consignments.  Please refer link http://ipr.icegate.gov.in/IPR/index.jsp and register your IP and the details of counterfeit products. For foreign trade DGFT involvement refer http://dgft.gov.in/.

The aforesaid administrative actions are in addition to other Civil & Criminal remedies availabe to Intellectual Rights Holders.

Trademarks / Copyright ----- Advertising Punch lines and its unfair use

Q ---- Can the Punch lines used by proprietor of trademark in advertisement be considered as trademarks or as part of the trademark?
Q----Can infringement action (trademark / Copyright) would lie against any misuse of the advertising punch line?

Example:

COMPANY PUNCHLINE
ICICI BANK (“i” logo)---- "Hum hai na"
LIC (Close hands) --------------"Jeevan ke sath aur jeevan ke baad bhi"
BOOST ----------"Boost is the secrete of my Energy"
Parle -G ---------"G ma ne Genious”

Case Study:

Can any X person use punch lines (which forms essential part of others Y’s trademarks) as part of his advertisement in relation to the goods, without the consent of registered proprietor X of trade marks which is not registered in relation to the good for which it is proposed to be used by X.?

Can Y claim infringement of his trademark by X?
Can Y claim infringement of his copyright by X?
Can X claim right to use any words/ phrase as punch line?

 

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Can the Punch lines used by proprietor of trademark in advertisement be considered as trademarks or as part of the trademark?

ANS-- As Trade mark ----- It should fulfill the defination of a trade mark. Trade Mark means mark which can distinguish the goods of one person from that of others, capable of graphical representation and used on goods or in relation to the services rendered. If the Punch Line are used then the Punchlines should be registered for the respective goods and services by the propritor of trade mark and used in advertisement in relation to the goods and services to acquired distinctiveness then it can be considered as a trade mark. Punch should not be generic or of descriptive nature to convey descriptiveness of trade mark.

 

Can infringement action (trademark / Copyright) would lie against any misuse of the advertising punch line?

ANS -- If the punch line is a trade mark and the same is registered and used in respect of the goods then infringment action can be initiated for its misuse and infringement.

 

Word per se there is no copyright for there is no copyright in advertising punchlines unless there is any artistic element which has seperate copyright as artistic work, therefore there cannot be claim for infringment of copyrights.

 

Enforcement of trade marks / Copyrights in China

Intellectual Property Rights (IPR) - Enforcement in China -- How can one enforce trade marks / Copyrights in China?

It is believed that the manufacturers in China have dominant potential to produce cost effective and quality product as compared to any other competitive manufacturer of the world. All economies are devising anti-dumping strategies and to combat counterfeiting and infringement.

How would any manufacturer (or Indian manufacturer) enforce his rights in China against a Chinese manufacturer / exporter selling counterfeit goods to third world countries or any other countries of the world?

IP in China:

·         China does not recognize rights of proprietor of the trade marks if the mark is not registered in China. There would be no enforcement of trademarks through Courts or through Administrative Authorities i.e. Customs.

·    Registration of trademarks is on the basis of (FIRST COME FIRST) the i.e. on Priority of the application filed.

·    It is mandatory for every manufacturer to file trademark application before commencing production of the goods or he has bear penalty for such failure. The registrar may also force the manufacturer to register the mark. So even if a person wants to manufacture counterfeit product he has to register the mark in China. What if the counterfeiter applies for the marks (international brands) which may not be identical but may be similar in nature to that of the original ones? The proprietor of the original mark (international Brand) may be objected by the Registrar due to prior registered / pending mark on record on the ground of distinctiveness. It will also be difficult for the honest user of the mark to prove his usage and well-known use of the mark in China for registration as he may not be selling his goods in China. If the mark (International brand) is pending for registration there will be no enforcement of his rights against any Chinese manufacturer. The mark has to be applied in Chinese language. 

·     There is no common law remedy of passing off of trademarks / Copyrights in China. If at all any action is to be initiated well-known usage of the mark in China has to be proved by evidence. It would be difficult for any proprietor of the mark to launch its goods in china with Chinese language.

·     Enforcement of Copyrights also requires registration of the Copyrights in China.

The statute of PRC - trademarks and its implementation rules are framed in such a manner that no action can be initiated without registering the trade mark in China.  Also no criminal actions can be initiated till the time trademark applications are pending for registrations. The customs also does not entertain any complaints of unregistered trademarks.

If our Indian trademark law is compared with that of China the difference is clearly visible. In India Passing Off action as well as criminal enforcement protects rights of the proprietor of trademarks till the time trademarks application is pending for registration.

Though China is party to BERNE and TRIPS convention it has statutorily provided for registration of the Copyrights prior to its enforcements. Recently the administrative authorities claims to have initiated actions, however recognisation of rights without registration is farstreached from imagination.

In short ......in my view a shell is created to boost its economy....

Is there any other remedy by which one can enforce its rights against counterfeiters....? Please let me know.....

© 2007 Santosh Mane, Mumbai ,
published on 18th June 2007

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