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Intellectual Property Rights in India: Overview and Enforcement Risks Sheila N. Swaroop July 29, 2010 3rd Annual India Trade Conference IP Rights Available in India Patent Trademark Geographical Indicator Copyright Industrial Design Trade Secret Combination of statutory and common law rights 2 © 2010 Knobbe Martens Olson & Bear LLP Patent Enforcement Governed by the Patents Act Available remedies Injunction, including temporary relief Monetary damages (lost profits or accounting) Seizure and destruction Co-owner of a patent may not license or assign without the other owner(s)’ consent (§ 50) 3 © 2010 Knobbe Martens Olson & Bear LLP Trademark Enforcement Includes both civil and criminal components Can recover damages, injunction, destruction of infringing labels and marks in a civil action Can bring action even without registering a trademark Criminal penalties include imprisonment, fine, and forfeiture 4 © 2010 Knobbe Martens Olson & Bear LLP Geographical Indicator "Geographical indications are…indications, which identify a good as originating in the territory…or a region or locality in a territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin." TRIPS, Article 22 Most commonly indicates the place of origin of the goods Example: “Darjeeling” for tea Enforcement similar to trademarks 5 © 2010 Knobbe Martens Olson & Bear LLP Copyright Enforcement Copyright owner can seek an injunction, damages, accounting, and can block the importation of infringing works made outside of India (§§ 53, 55 of Copyright Act) Copyright owner can obtain infringing copies and plates for producing infringing copies (§ 58 of Copyright Act) Criminal penalties include imprisonment and fines and permit seizure of infringing goods 6 © 2010 Knobbe Martens Olson & Bear LLP Industrial Designs Protects ornamental or aesthetic aspect of an article Does not protect technical features Precludes any trademark or artistic works Applied to products such as handicrafts, medical instruments, watches, jewelry, house wares, electrical appliances, vehicles and architectural structures Enacted to comply with TRIPS, Articles 25-26 Enforcement is similar to copyright actions 7 © 2010 Knobbe Martens Olson & Bear LLP Trade Secret Protection No comprehensive act to protect trade secrets. The closest is § 27 of the Contract Act that bars a person from disclosing any information (or “goodwill”) as result of a contract. India is required to provide trade secret protection per TRIPS Article 39 Common law trade secret protection depends on agreement between the parties as well as the measures taken to protect the secret information Remedies may include injunction as well as compensation for any losses due to disclosure 8 © 2010 Knobbe Martens Olson & Bear LLP Recent Patent Case Bayer Corp. v. Cipla Ltd. (2009) Dispute over a generic company’s ability to obtain a marketing license for a drug subject to patent coverage Cipla applied for and received a license from Drug Controller of India (DCI) to manufacture, sell, and distribute a generic form of Bayer’s cancer drug 'Nexavar' Bayer argued that no marketing license should be granted prior to expiration of Bayer’s patent The High Court of Delhi sided with Cipla and declined to find “patent linkage” between marketing license granted by DCI and any patents 9 © 2010 Knobbe Martens Olson & Bear LLP Recent Patent Developments High Court of Delhi recently held that the tests for patentability are the same worldwide and deferred to German court’s decision to reject corresponding German patent India’s Supreme Court has acknowledged current delay in pendency of IP lawsuits. Directed that such suits must be continued day-to-day and can only be adjourned for exceptional reasons. Indian government has made database of traditional knowledge available to Patent Examiners in the U.S. for prior art searching 10 © 2010 Knobbe Martens Olson & Bear LLP Recent Copyright Case Warner Brothers Entertainment Inc. v. Santosh V G (2009) Plaintiff owned a copyright in a cinematograph film Defendant imported film into India and rented it Defendant asserted “copyright exhaustion” defense: once copy of the film was placed into the market, the copyright owner no longer had control over it The High Court of Delhi determined that certain copyrighted work (including computer programs, artistic works, cinematograph films) were not subject to copyright exhaustion. Owners can continue to exercise rights in a particular copy of the work regardless of whether it has been sold previously. 11 © 2010 Knobbe Martens Olson & Bear LLP Recent Industrial Design Case Mattel Inc v. Jayant Agarwala (2009) Defendant provided an online version of Mattel’s game Scrabble called “Scrabulous” Mattel alleged trademark and copyright infringement Mattel prevailed on trademark claim, but not on copyright The Delhi High Court held that Mattel lost its copyright in the board game because of § 15(2) of the Copyright Act If a copyright in any design could have been registered under the Designs Act, but has not been so registered, it ceases to exist once the copyright design has been applied to an industrial process more than 50 times Adverse copyright holding against Mattel appealed 12 © 2010 Knobbe Martens Olson & Bear LLP Summary of IP Risks Be aware of India-specific intellectual property rights Before acquiring IP rights, make sure all co-owners have consented to the transfer of rights Prior to launching product, conduct clearance searches for pre-existing trademarks, geographic indicators Prepare for the possibility of lengthy litigation 13 © 2010 Knobbe Martens Olson & Bear LLP Sheila N. Swaroop 2040 Main St., 14th floor Irvine, CA 92614 (949) 721-7646 (direct) (949) 760-9502 (fax) [email protected] kmob.com