Wednesday 5 July 2017

Section 3 of Trademarks Act 1999

Appointment of Registrar and Other Officers

Section-3

(1) The Central Government may, by notification in the Official Gazette, appoint a person to be known as the Controller General of Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for the purposes of this Act.

 (2) The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorise them to discharge. 

Section 1 of the Trademarks Act 1999

1.—(1) This Act may be called the Trade Marks Act, 1999
(2) It extends to the whole of India.
(3) It shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint:
Provided that different dates may be appointed for different provisions of this Act, and any reference in any such provision to the commencement of this Act shall be construed as a reference to the coming into force of that provision.

Monday 3 July 2017

Composite Trademark

“Ek ke daam me do”

Composite Trademarks and their relevancy

Composite trademarks are the marks which contains more than one mark, which may be a combination of color with brand name or logo with Brand Name. A single application is required to be made for the registration of the Brand Name and the Logo together as the composite application.  

Benefits of Composite Mark:

1.      Cost efficient as in one application two or mark can be applied jointly.
2.      Time efficient as the registration of one application contains two different mark.

Disadvantages of Composite Mark:

Composite Mark, if we look at the provisions under Section 17 of the Trademarks Act, 1999, it clearly provides that if a mark includes more than one mark then the Applicant cannot claim the ownership over a particular part of the mark.

The thought of registration of two marks through one Application sounds better but does not impart the ultimate protection to the Owner. A composite mark is registered as whole and the owner cannot claim the proprietorship over the individual substances contained in the mark.

In a judgment delivered in case of Carlsberg India Pvt. Ltd. vs. Radico Khaitan Ltd. by Delhi High Court it was observed that:

“that a registered proprietor of a composite mark cannot seek exclusivity with respect to individual components of the trademark. Therefore, by logical extension, it is not open to Radico, which is the registered proprietor of the composite mark “8 PM” to seek protection for infringement of its trademark by a third party who merely uses the numeral “8”, since no exclusivity can be claimed in a single numeral.”

Hence, the composite application of mark may save the cost but for the point of monopoly and protection over the mark the Composite Mark cannot be termed as the best.






Rights of Police under IP Laws





GENERAL GUIDELINES FOR SEARCH AND SEIZURE TO POLICE OFFICER UNDER IP LAWS


1)      Immediate or expeditious execution of search and seizure action is imperative to effectively address piracy. Given the covert nature of piracy, acting immediately on information on piracy is critical and any delay will likely defeat the purpose;

2)      In all types of arrest, search and seizure, the provisions of the Criminal Procedure Code read with section 115 of Trademark Act, 1999 or any other specific provision as the case may be and the precautions pronounced by the Hon'ble Court must be followed to avoid the procedural lacunae.

3)      Search or seizure at any premises shall be conducted only by an officer of the rank not below the Deputy Superintendent of Police or with relevant authority under him;

4)      The concerned police officer conducting the search and seizure shall exercise all powers available to the police to effectuate the search and seizure including lock breaking powers;

5)      Search/seizure shall be conducted as per prescribed procedure and reasons for doing so by the concerned police officer as informed by the contents of complaint made by complainant;

6)      Search and Seizure actions should be conducted in premises identified by the complainant as well as at any other premises subsequently identified during course of investigation and action;

7)      Police officers shall seek to secure the presence of the owner of the entity/shop/house premises, employees and official  panch witnesses at the time of conducting such search/seizure and also obtain the signatures of the owner of the shop, the landlord of the premises if available, employees if present and the panch witnesses therein;

8)      Linking owner with location of infringement- The concerned police officer shall also obtain copies of the licenses issued by the municipality/corporation to operate the shop/entity. Any rent deed/leave and license agreement shall also be obtained from the premises, if available.

9)      The shop owner should be examined. The statements of the owner of the premises shall also be recorded under section 161 of Code of Criminal Procedure;

10)   The concerned officer shall take due care to ascertain and obtain all the evidences available at the premises during the time of search and seizure and prepare an inventory thereof for the purpose of record and preserve them for the future references.
10)
11)   All accounts books, financial details, receipt books, payment slips etc. should be seized to preserve evidence of money laundering of proceeds from IP crimes;

12)   In case of disclosures by accused of additional premises/ details of infringing activity, these should be recorded and immediately/ expeditiously followed up by search and seizure on those premises also;
13)   Police officers should call upon two or more independent and respectable inhabitants of the locality in which the place to be searched is situated. The search must be conducted in the presence of such witnesses as per Section 100 (4) of the CrPC;

14)   As per Section 160, 161 and 162 of the CrPC, if the investigating officer considers it necessary, he may order in writing, attendance of witnesses residing within the limits of his own or adjoining police stations and examine such witnesses. Statement of such witness, if reduced in writing, need not be signed by the person making it;

15)   Acknowledgment shall be given to the accused/owner of the premises where search or seizure was conducted of the copy of the panchnama together with all other annexures. The description of place of offence should be mentioned in panchnama;

16)   List of seized articles should be furnished to the accused under Section 165 of the CrPC;

17)   The search and seizure proceedings shall be covered through videography and the statement of the videographer  shall  be reduced to writing and recorded in detail under Section 161 of Code of Criminal Procedure at the cost of the complainant;

18)   In cases of video or audio or book piracy, the investigating officer may, if necessary, inspect the home premises of the owner of the shop/entity;

19)   Photographs of the premises/shop should be taken  while  the accused is carrying on the business;

20)   Photographs of the premises, book shop or  any  other  entity involved in video/audio/book piracy should be taken;

21)   Seizure of all infringing products available in the premises is imperative. A list of items to be seized is provided in the accompanying checklist.

22)   The concerned police officer shall have an account of the number of such confiscated infringing products and apparatus and shall get the signature of the owner of the shop while removing it from the premises of the shop;

23)   Police officers shall secure identification of infringing material from complainant and record such statement accordingly after completion of search and seizure;

24)   All digital / electronic material seized during a search and seizure material should be carefully sealed for validation by State/ Central Forensics Laboratory;

25)   "Mirror copies" of digital/ electronic evidence should be immediately made to preserve evidence and to send to State/ Central Forensics Laboratory;

26)   All the properties or infringing products seized, which shall include the   infringing copies, plates, broadcasting equipment,  other accessories involved in relaying/ exploiting/manufacturing/ producing the infringing copies including laptop or hard disk of machine on which video/audio/ infringing material was found to be residing/installed/ duplicated and all other products seized during the course of search and seizure shall be neatly and safely packed, sealed and shall be produced before the magistrate as earlier as possible without any lapse of time;

27)   Challan should be filed before the competent magistrate as per the provisions of the Section 173 of the Code of Criminal Procedure, 1973 within the specified period, i.e., within 60 or 90 days as the case may be.

OFFENCE UNDER THE IP LAWS 


S. No. Provision under the Trade Marks Act Definition of/ Punishment for the Criminal Offence
1 Section 101 (1) A person shall be deemed to apply a trademark or mark or trade description to goods or services who--

Meaning of applying trademarks and trade descriptions (a)  applies it to the goods themselves or uses it in relation to services; or


(b) applies it to any package in or with which the goods are sold, or exposed for sale, or had in possession for sale or  for  any purpose of trade or manufacture, or


(c)  places, encloses or annexes any goods which are sold, or exposed


for sale, or had in possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a trade mark or mark or trade description has been applied; or


(d) uses a trade mark or mark or trade description in any manner reasonably likely to lead to  the belief that the goods or services in connection with which it is used are designated or described by that trade mark or mark or trade description; or


(e) in relation to the goods or services uses a trademark or trade description in any sign, advertisement, invoice, catalogue, business  letter,  business  paper, price list or other commercial document and goods are delivered or services are rendered to a person in pursuance of a request or order made by reference to  the  trade mark or trade description  as  so used.
2 Section 102 (1) A person shall be deemed to falsify a trade mark who, either,--

Meaning of falsifying and falsely applying trade marks (a) without the assent of the proprietor of the trade mark makes that trade mark or a deceptively similar mark; or


(b) falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.


(2) A person shall be deemed to falsely apply to goods or services a trade mark who, without the assent of the proprietor of the trade mark,--


(a) applies such trade mark or a deceptively similar mark to goods or services or any package containing goods


(b) uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark.


(3) Any trade mark falsified as mentioned in sub-section (1) or falsely applied as mentioned in sub-section (2), is in this Act referred to as a false trade mark.


(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods or services, the burden of proving the assent of the proprietor shall lie on the accused.
3 Section 103 Any person who-

Penalty for applying false trademarks, trade descriptions, etc. (a) falsifies any trade mark; or


(b) falsely applies to goods or services any trade mark; or


(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other  instrument for the purpose of falsifying or of being used for falsifying, a trade mark; or


(d) applies any false trade description to goods or services; or


(e) applies to any goods to which an indication of the country or place in which they were made or produced or the name and address of the manufacturer or person for whom the goods are manufactured is required to be  applied under section 139, a false indication of such country, place, name or address; or


(f)  tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied under section 139; or


(g) causes any  of the things above- mentioned in this section to be done, shall be punishable with:


Imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees:


Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.
4 Section 104 Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, goods or things, or provides or hires services, to which any false trade mark or false trade description is applied or which, being required under section 139 to have applied to them an indication of the country or place in which they were made or produced or the name and address of the manufacturer, or person for whom the goods are manufactured or services provided, as the case may be, are without the indications so required, shall, unless he proves,--

Penalty for selling goods or providing services to which false trade mark or false trade description is applied (a) that, having taken all reasonable precautions against committing an offence against this section, he had at the time of commission of the alleged offence no  reason to suspect the genuineness of the trade mark or trade description or that any offence had been committed in respect of the goods or services; or


(b) that, on demand by or on behalf of the prosecutor, he gave all the information in his power with respect to the person from whom he obtained such goods or things or services; or


(c) that otherwise he had acted innocently, shall be punishable with Imprisonment for a term which shall not be  less  than  one  year  but  which  may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees.
5 Section 105 Imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees

Enhanced Penalty on second or subsequent conviction Provided that the court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than one year or a fine of less than one lakh rupees:


Provided further that for the purposes of this section, no cognizance shall be taken of any conviction made before the commencement of this Act.
6 Section 114 1) If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly:

Offences by Companies Provided that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.


(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a company  and  it  is  proved  that  the


offence has been committed with the consent or connivance of, or that the commission of the offence is attributable to any neglect on the part of, any director, manager, secretary or other officer of the company, such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.


Explanation.--For  the  purposes  of  this section--


(a)  "company" means any body corporate and includes a firm  or other association of individuals; and


(b) "director", in relation to a firm, means a partner in the firm.

5. Criminal Offenses under the Copyright Act, 1957
1 Section 63

Intentional infringement or abetment of the infringement of the copyright in a work. Imprisonment for a term which shall not be less than six months and may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees.
2 Section 63A

Second and subsequent convictions Imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees
3 Section 63B

Knowing use of infringing copy of computer program Imprisonment for a term which shall not be less than seven days but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees.
4 Section 65

Possession of plates for purpose of making infringing copies Imprisonment which may extend to two years and shall also be liable to fine.
5 Section 65A

Protection of technological measures Imprisonment which may extend to two years and shall also be liable to fine.
6 Section 65B

Protection of Rights Management Information Imprisonment which may extend to two years and shall also be liable to fine.
7 Section 67

Penalty for making false entries in register for producing or tendering false entries Imprisonment which may extend to one year or with fine or both.
8 Section 68

Penalty for making false statements for the purpose of deceiving or influencing any authority or officer Imprisonment which may extend to one year or with fine or both.
9 Section 68A

Penalty for contravention of Section 52A (particulars to be included in Sound Recordings and Video films) Imprisonment which may extend to three years and shall also be liable to fine.
10 Section 69

Offences by Companies In case an offence under the Copyright Act is committed by a company or a partnership firm, all directors, partners, managers, secretaries etc. who are responsible for the conduct of the business of the said company/partnership firm shall be guilty of such offence along with the company/partnership firm as the case may be. However, such persons shall not be liable if they prove that they exercised all due diligence to prevent the commission of such offence or it was committed without their knowledge.

Extension of Trademark Hearing

Public Notice- Adjournment of hearings related to trademark scheduled between 17/03/2020 to 15/04/2020 In view of advisory issued by M...