of select entities/manufacturers/producers with the assistance of trained investigators/s become necessary. It is often the case that investigators form part of the search and seizure operations carried out under the supervision of a court officer or police authorities as they offer valuable insight into the modus operandi of the target. Investigations are not only relevant for any anti-counterfeiting operation but also useful for ‘in-use’ enquiries for prosecution matters and cancellation actions.

In addition to the above, watch services to monitor markets for availability of counterfeit products, internet including public registers for misuse of IP rights, publications such as dailies, sector specific journals/magazines etc. and organizing trap purchases for collating evidence prove useful in any brand protection strategy.

Border Controls

Customs

The Central Government vide its Notification No. 47/2007-Customs (N.T.) dated 8.5.2007 laid down the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (the Rules) under power conferred by the Customs Act, 1962. The Rules have been amended vide Notification No. 56/2018-Customs (N.T.) dated 22.06.2018. The Rules provide a mechanism to the IP right holders or their representative/s to file a notice (in writing) with the concerned Customs Authority/ies for suspension of clearance of the goods infringing/violating their IP rights. The Rules envisage registration of each IP right under a separate notice. The notice, if registered/recorded with the Customs, will be valid for a period of minimum one year unless specifically requested by the right holder for a shorter period. The notice is required to be filed in a particular format supported by certain documents such as Indemnity Bond, General Bond etc. Notwithstanding the mechanism of recordal, the concerned Customs Official may, on his own, suspend clearance of the goods in respect of which he has prima-facie evidence or reasonable grounds to believe that the imported goods infringe IP rights.

Infringing goods under the Rules are goods which are made, reproduced, put into circulation or otherwise used in breach of the intellectual property laws in India or outside India and without the consent of the right holder or a person duly authorized. For the purpose of the Rules, IP means a copyright as defined in the Copyright Act, 1957, trade mark as defined in the Trade Marks Act, 1999, design as defined in the Designs Act, 2000 and geographical indications as defined in the Geographical Indications of Goods (Registration and Protection) Act, 1999.

Parallel Imports

Trade Marks: Parallel imports are allowed under the Indian Trade Marks law, subject to certain exceptions. It is widely believed that the law recognizes the principle of international ‘exhaustion of rights’. To elaborate, once goods under a particular trade mark are put on the market (anywhere in the world) by the proprietor thereof or with his consent, his exclusive rights in the mark vis-à-vis those goods are ‘exhausted’. Consequently, further dealing in such goods by a subsequent purchaser/owner thereof does not attract any infringement action. Therefore, a subsequent purchaser is well within its rights to import into India goods bearing the trade mark of another entity, provided it has procured the same legally.

The registered proprietor may block parallel imports for legitimate reasons, such as:

misrepresentation of origin or warranty, etc.;

impairment/alteration of condition of the goods;

damage to the reputation of the trade mark;

physical/material differences in the goods authorized for sale in India and those being imported;

non-compliance with the local legal/regulatory requirements, certification, etc.

The Apex Court is seized of the issue of exhaustion of rights in the trade marks arena and the decision is expected to iron out the creases.

Copyright: The Indian Copyright law does not recognize the principle of ‘exhaustion of rights’. The Copyright Act, 1957 provides that copyright in a work shall, inter alia, deemed to be infringed by a person who without a licence granted by the owner of the copyright or in contravention to the conditions of a licence so granted does anything, the exclusive right to do which is conferred upon the owner of the copyright (eg. to issue copies of the work). The law further provides that importation of a copy into India without the license or authorization of the copyright owner is an infringement of copyright. An exception is importation of a single copy for private and domestic use of the importer.

Designs: The Designs Act, 2000 also does not recognize the principle of ‘exhaustion of rights’. As per the Act, it is unlawful for any person/entity, without the consent of the registered proprietor of the design,to import articles comprising the registered design in respect of the class in which the design is registered.

Patents: Under the Patents Act, 1970 import of patented article if sourced from the person duly authorized under the law to produce and sell or distribute the same does not constitute infringement.