'Uniform implementation of IP laws a must'

Q&A/ PRAVIN ANAND

The law governing Intellectual Property Rights (IPRs) provides enough civil and criminal remedy to deter violators. However, the non-uniformity with which the law is implemented all over the country has been a major problem.

According to senior advocate Pravin Anand, proprietors will be encouraged to file cases in courts other than the 8-10 which handle such cases continually only if they see a healthy attitude towards the law. Also, only then can India be an IP superpower.

The law on trademark was conventionally for allied and cognate goods. Now it has developed to become a law of dilution. Don't you think some parameters should be defined, instead of letting the judge use his or her creativity to decide upon a trademark issue?

A primary concern of the trademark law is to prevent confusion and deception. That the goods are "allied and cognate" enhances confusion, but where the trademark is a strong one and other factors like "dishonesty" outweigh, there may be confusion even for different goods.

Thus, if the trademark Volvo is used for mineral water (even though there is a difference between buses and mineral water), consumers are likely to get confused. There are a large number of parameters objectively listed by various decisions of courts which guide judges on whether confusion will take place.

Moreover, once judges have done trademark cases over and over again, they develop intuitive skills to know whether confusion is likely or not. In clear cases, they are able to decide quickly, while in borderline cases, the evidence before the court on issues such as similarity of goods, dishonesty, sophistication of the buyer, etc. helps form a view.

The trademark law also recognises service marks. However, there has been no amendment to the company law. Do we need an amendment so that there can be checks and balances to prevent a spurt in litigation. Do you think some measures can be taken at the pre-litigation stage?

I do not believe that an amendment to the company law is necessary. The system works well. Section 29(5) of the Trade Marks Act now broadens the scope of infringement to include the use of a trademark in relation to a company name.

Proprietors, however, are irked by the vast number of dummy companies that have been incorporated using well known trademarks.

The procedure for the removal of these names from the company register should be simplified, although the same can be done through practice guidelines and a creative interpretation of the existing law.

The advent of computer technology is leading to a spurt in software copyright cases. Does this in any way affect innovation and if so, how?

There are clear aspects of innovation. First is the "reward" for creating new copyright products like computer software. A copyright is the incentive offered to the creator and, therefore, the existence of the copyright law provides a spurt to innovation.

The second is the ability of third parties to access new areas of technology and information in order to innovate, and while it may appear that copyright law suppresses this access, on balance, it actually enhances it as well.

The reason being that most industries develop in a layered fashion, be it through the concept of derivative works in copyright or improved products in the patent law.

Most creators borrow one portion and build up their own layer in which they have their own independent rights. This is how the overall level of innovation keeps going upwards due to intellectual property laws.

Enforcement of law is a huge problem today. Civil action is quite different from penal action. Does the law provide sufficient deterrence?

Deterrence is provided by: Imprisonment in the case of piracy and counterfeiting; attachment and sale of properties as in an execution; confiscation of goods; injunctions and hence stoppage of business; publicity and the ruination of a person's reputation in the social or commercial world; the surprise or shock of being caught red-handed when the police or commissioners raid; and above all, damages "" both compensatory and punitive "" granted by courts.

Punitive damages are meant to punish, so as to create fear in the mind of a potential violator.

If the existing remedies, civil and criminal, are properly enforced, they have the potential of providing huge deterrence. However, there are two main problems : The low conviction rates and the complexity of prosecution in criminal courts.

This puts the right owner through hell; and the non-uniformity with which IP laws are enforced throughout the length and breadth of India. Delhi courts are outstanding and courts in other large cities are also very knowledgeable and experienced, but there would be 8 to 10 courts in the whole country which handle IP cases on a continual basis.

Proprietors will be encouraged to file cases in other courts only if they see a healthy attitude towards intellectual property, and it is only when IP enforcement all over the country attains a certain level that we can truly acquire the status which we are rapidly moving towards "" that of being an IP superpower.