India’s Exclusive Full Spectrum Business Risk Solutions Enterprise
SUBSTANTIVE CHALLENGES IN INTELLECTUAL PROPERTY
PROTECTION IN INDIA
PAN INDIA OPERATIONS
“Enforcement has been identified as the single greatest hurdle to Intellectual Property
Rights Protection in India.”
ENFORCEMENT CHALLENGES
 The enforcement infrastructure suffers from dual challenges at both the police enforcement and
judicial levels
 Both challenges hinge on resource prioritization
 The central-state division means resource prioritization and adequacy of enforcement varies from
jurisdiction to jurisdiction.
THE ISSUE OF SUPPLY AND
DEMAND OF COUNTERFEIT
PRODUCTS
 Both imports (particularly from China) and domestic production are counterfeiting sources in the
market.
 A thriving and growing grey market in counterfeit goods exists to supply a population eager for
cheap products.
 Lack of public and government awareness
 Government as a buyer of counterfeits
 Research indicates minor amendments to the Trademark law needed to improve other challenges
in the market.
POLICE ENFORCEMENT
AUTHORITIES: CHALLENGES
 Lack of prioritization by police authorities of commercial crimes.
 Quality of enforcement varies greatly from region to region.
 Size of enforcement action
 Lack of simultaneous action
 Multi Jurisdictional
 Interpretation of the law
 Underfunded resources and a lack of dedicated IPR enforcement unit.
 Police authorities rarely conduct raids based in their own investigations
 Section 115(4) of the Trademark Act.
 Lengthy wait time to action, resulting in evidence disappearing and less effective actions.
 Corruption and collusion
 Post Enforcement debriefing of infringers and follow up actions.
THE COURT SYSTEM:
CHALLENGES
 The court system is overburdened. The backlog of existing and new cases results in lengthy delays
between the time a case enters the court and the time it reaches a sentence.
 It takes 2 – 3 years to issue a summons and 6 – 8 years to conclude.
 Tribunal level cases may be pending for 7 – 10 years without resolution. Not only is the process
costly but evidence disappears and criminals go free in interim years.
 Reluctance to apply strong penalties and deterrence level sentencing
IMPORTATION OF COUNTERFEITS
 Customs has not prioritized trademark related seizures and there is some confusion in the
registration process.
 Resources constraints limit the number of seizures to be conducted. Document forgery. Nonmention of brand name and misrepresentation or description of goods and low examination
rates.
 The indemnity bond for Customs actions is bureaucratic and ineffective.
 Seized trademark goods sometimes finds its way back into the supply chain.
 China represents a critical concern.
 Border problems are exacerbated by trade in parallel goods.
 Custom officials are frustrated with industry for “failure to follow-up on seized shipments in a
timely manner and failure to follow-up on legal cases.
DOMESTIC MANUFACTURE OF
COUNTERFEITS
 Authorized packaging materials find their way into counterfeit distribution channels.
 Low cost original products being used for high quality counterfeit products.
 Diversion of OEM Products
 Ease in availability of raw ingredients and counterfeit packaging material.
TRADE ISSUES
 Involvement of Authorized Trade
 Opposition from Trade Associations
BRAND OWNERS ISSUES
 Lack of awareness about scope of the problem
 Clarity in objective
 Seriousness in approach
 Approach and Expectations
AGENCY ISSUES
 Lack of bandwidth
 Absence of big players
 Still disorganized
 Corruption and Collusion
 Non availability of complainants till the end of litigation process.
 Brand Protection treated like a product and not a process
 Deliverables
ROAD AHEAD
“Find means to achieve a state of viable deterrence”
SOME SUGGESTED COMPREHENSIVE
SET OF MEASURES
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Market Survey.
Scoping and Mapping of the extent of the Problem.
Detailed Investigations.
Supply Chain Integrity Audits
Investigations, Surveillance and Coordination with Customs for operations against illegal imports/
exports
Internet Investigations and monitoring of E – Commerce of counterfeit products.
Enforcement Actions
Investigations of Institutional Sales.
PR and Utilization of Media.
Educating the Trader Association in Key Markets.
Issue of Cease and Desist letters /notices
Court Orders
Comprehensive Legal
Establish a Toll Free Number for obtaining information regarding counterfeit products.
THANK YOU
Source(s)
IOCC And BASCAP Study Of India’s Counterfeiting And Trademark Environment, Member Survey And Desk Research