10 myths about India on counterfeiting

1. China being number one counterfeit manufacturer in the world, it should be my only concern.         

Wrong, even though china has an colossal 72% contribution in world’s counterfeit goods. Under the other 28%, Hong kong, Ukraine and India are top contributing countries which creates enough gravity to act upon brand protection activities in these countries too.

 

2. I don’t know whether Indian Government has any such individual sector in this aspect.

Well, Indian government does have an separate sector Ministry of Commerce and Industry to tackle counterfeiters and pirates. Which helps brands and other goods manufacturers, Including entertainment sector from getting faked or pirated. Once you elevate the problem to IPI (Intellectual property India) they can help you with their services including cease and desist letter. Before that  you have to get registered under Indian trademark norms to get benefited with these services.

 

3. How do I register my brand under Indian trademark act? On what basis is the case moved forward?

One can start registering their brand under Indian trademark act by filling the application for registration of trademarks. After it is delivered at the head office or branch office of Trade Marks Registry within whose territorial limits the principal place of the business of the applicant is situated. The digitization and formality checking of the application is done at the respective offices. The application is then examined mainly as to whether the relevant mark is capable of distinguishing applicant’s goods or services, whether it is prohibited for registration under any law for the time being in force, whether the registration of the relevant mark is likely to cause confusion or deception because of earlier identical or similar marks existing on records. The Examination of all applications is done centrally in the Head Office of the TRADE MARKS Registry at Mumbai. The Registrar on consideration of the application and any evidence of use or distinctiveness decides whether the application should be accepted for registration or not, and if accepted, publishes the same in the Trade Marks Journal, an official gazette of the Trade Marks Registry, which is hosted weekly on official website.

 

4. How can I stop an online counterfeiter or request for seizure of a shop selling counterfeit products?

Assuming you have registered under Indian trademark act, you can choose for civil enforcement or criminal action. Criminal remedies are provided under the Trademarks Act, Copyright Act and Geographical Indications Act which are punishable by six months’ to three years’ imprisonment and a Rs50,000 to Rs200,000 ($765 to $3,060) fine. The Code of Criminal Procedure 1973 governs the procedure applicable to criminal cases. Pursuant to the extension of the proceeds-of-crime law to IP matters, assets of entities undertaking transactions while falsely using another party’s intellectual property may be seized by the authorities along with arrest. Under these laws, offences are cognisable in nature, which means that the police can take action and conduct search and seizure without a court warrant.

A civil action is initiated by filing a lawsuit before the district court or high court having territorial jurisdiction. Indian courts are well versed in the IP laws and even grant ex-parte injunctions at the admission of lawsuit, especially where counterfeiting is involved. In addition to an ad interim injunction order, rights holders can obtain the following interim reliefs in civil actions:

Anton Piller orders – the rights holder may seek appointment of court commissioners to visit the defendant’s premises in order to find and seize counterfeit goods. The goods are returned to the defendant with an undertaking that the goods will be safely preserved until further orders of the court.

John Doe orders – this is an extraordinary order through which the court can appoint court commissioners and authorise them to enter, search and execute seizures in the premises of any named or unnamed defendants. This kind of action is most effective where it is difficult to identify each and every counterfeiter or where the counterfeiter is operating out of temporary premises.

 

5. It is insanely difficult to stop counterfeit goods from spreading from one point to another once it enters the market.

It might be difficult but the the distribution can be cut at its roots from the point of distribution itself Seaports or border checkposts, utilizing them as leads to find the counterfeit seller in market with the help of Indian Customs and other concerned authorities or you can partner with brand protection service provider (TradeVigil) to do the work for you.

 

6. The only way to seize counterfeit goods produced in other countries is when they enter India.

Not particularly, as every country has its own custom officials who bare an responsibility to check the imports and exports happening in their country to prevent counterfeit goods from exporting/importing and if found seizing them then and there. Though an additional where, who and when information could be of great help to stop the goods from their start point itself. Brands can use Indian Customs as an extended arm and they have to rely on brand investigators in order to uncover counterfeiter operations.

 

7. Will Indian government take action against counterfeit goods outside its borders if my brand has foreign visibility.

Yes, Indian government would help you to fight against counterfeiters outside its border but the level of action might vary from one country to another based upon the other country’s partnership norms and laws on counterfeits. Before that you have to complete registering under Indian trademark rules and accept further conditions in regards to Foreign filing license(FFL).

 

8. Though my brand is registered in India if I choose to manufacture my products in china, manufacturer selling them out the back door is something which is out of my control.

No, every country has its own set of acts and amendments against counterfeiters and supply chain infiltration activities. Generally foreign companies will use NNN agreements in the factory search stage and they will use OEM agreements for the production stage, including the use of product development agreements which helps you to protect your brand from such false activities using china’s local officials.

 

9. Registering my brand under Indian trademark act would avail me to use it universally for brand protection activities.

No, as previously said every country has its own set of rules against counterfeiting activities, though it might be an added advantage but nothing of sole purpose. So, one has to register in every country to be a beneficiary of that country’s rules and acts regarding anti-counterfeiting.

 

10. The benefits I get after registering under Indian trademark act are not enough to protect my brand from counterfeiters.

Indian government provides you with enough tools to fight against counterfeits by providing you with support from customs, border measurements, criminal prosecution and civil enforcement’s (Anton Piller orders and John Doe orders). Effective criminal and civil enforcement in India requires ongoing liaison with the police and a proactive approach both before and after filing the action. It is imperative that once a complaint has been initiated, the rights holder must follow it up through counsel or representatives so that the proceedings are adequately concluded with favourable orders. For which you can either assign an individual for this sole purpose or partner with an anti-counterfeiting service provider (Tradevigil) acting as one stop solution to do all the work for you.

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