The main concern of global brands in relation to India are the challenges relating to Indian laws. The International Trademark Association (INTA), which is a global body of trademark owners with 6,700 members across 190 countries (including India), is actively engaging with the Centre for the drafting of a voluntary code of best practices in combating counterfeits in electronic commerce. INTA global CEO Etienne Sanz de Acedo was in India recently. Excerpts from an interview:
The Indian government is committed to the ‘Make in India’ program. In the area of protection of intellectual property – such as trademarks, which are some of the steps that the Indian regulatory authorities could take?
Any steps to encourage domestic manufacturers to protect their intellectual property, particularly trademarks, and to promote easier access to the registration system would go a long way in promoting trademark protection in India. At the same time, processing of trademark applications should be handled with greater transparency and efficiency.
INTA has observed and acknowledged several concrete measures that have already been taken by the Department of Industrial Policy and Promotion (DIPP) and the Controller General of Patents Designs and Trademarks (CGPDTM) in this regard, especially with the enhanced staffing of the IP offices, speedier examination of applications and enhanced digitization of records.
In terms of the statutory framework and physical infrastructure, India is making notable improvements to safeguard the rights of trademark owners. What holds back the Indian trademark regime from functioning optimally are gaps in its human resources. The main issues are twofold: one, there is a huge backlog at the IP office and two, there is lack of optimally trained staff to handle the backlog effectively. Some notable steps have been taken to address issues relating to human resources. For example, the Rajiv Gandhi National Institute of Intellectual Property Management has developed several training modules specifically for Registry officials.
It has been encouraging to witness increasingly amiable, frequent interaction and collaboration among the Registry, brand owners and trademark lawyers. Often stakeholders are invited to provide suggestions on how to tackle issues arising in trademark registration and protection.
We understand that counterfeiting is a major concern of many global brands, but certain sections of India’s Trade Marks Act, 1999, impede effective criminal IP enforcement. Your take?
The provisions of the Act seek to arm law enforcement agencies to effectively assist brand owners in combating counterfeiting. However, requirements of some provisions such as Section 115 (4) often hinder ongoing criminal investigations. This provision mandates that a police officer investigating certain offences under the Act must obtain an ‘opinion’ from the Registrar of Trade Marks (TMR) on the facts involved in the case before conducting a search and seizure operation. While the intent behind this requirement is to provide the investigating officer with the correct facts, in reality the provision has led to delayed and unsuccessful actions. As there is no designated officer in the TMR tasked with issuing this opinion, it is not received within the stipulated period of seven days and in some cases, is not received at all. As a result, trademark owners are actually discouraged from enforcing their trademarks. INTA supports the recommendations for the government to correct the statute so that it aligns with global best practices.
Finally, penalties for counterfeiting under the provisions of the Act, which include imprisonment for a term of 6 months to 3 years with a fine of Rs 50,000 or Rs 2 lakh do not serve as an adequate deterrent. There is also reluctance among courts to mete out the prescribed imprisonment even in cases of conviction, partly because IP violations are not taken as seriously as other offences under the Indian Penal Code. Greater awareness and education on counterfeiting’s transnational nature, ever-growing contribution to organized crime, terrorism and socio-economic impact may serve well in the long term to address this issue.
In the context of the problematic issue of counterfeiting, could you highlight a few key initiatives undertaken by INTA’s India chapter?
India is on the verge of becoming a global economic powerhouse. With the National Intellectual Property Rights Policy expected to be released soon and great enthusiasm surrounding the government’s ‘Make in India’ initiative, this is an exciting time for the country and for the global trademark community. INTA is part of a working group announced by India’s customs commissioner in February for the drafting of a voluntary code of best practices in combating counterfeits in electronic commerce.
INTA has also been in discussions with the department of industrial policy and promotion (DIPP) and controller general of patents, designs and trademarks (CGPDTM) in relation to collaborative trademark examiner seminars and children’s education on IP. We are working to develop joint programming and projects with global and Indian IP and industry associations on pertinent issues, such as curbing counterfeiting in India. This year, INTA also plans to launch its global anti-counterfeiting initiative, the Unreal Campaign, in India, aimed at creating awareness especially among students (aged 14-18) about the dangers of counterfeiting and the importance of trademarks. The programme will reach out to teens through online activities and direct school engagement.
Which are some of the best global practices that India could adopt as a move towards a more robust regime for protection of trademarks?
One of the most important areas where the TMR could adopt global best practices is the examination of trademark applications. To illustrate, a more qualitative examination process may result in a speedier decision on the registrability of trademarks and a reduction in costly, resource-intensive hearings. Telephonic hearings and electronic document services could further reduce costs and save time. On the judicial front, INTA is hopeful that the newly established commercial courts will boost the quality and speed of IP adjudication across the country. Andrew Cashner Womens JerseyShare This