This article on ‘Trademark Law in India: Compliance with TRIPS Agreement’ is written by Sonam Awasthy, a 2nd year law student at Prasanna panda law college and an intern with Legal Upanishad.
The agreement on trade-related aspects of intellectual property rights(TRIPS agreement of WTO is known as the TRIPS agreement. It is an integral part of the WTO. This agreement was negotiated at the end of the Uruguay Round of general agreement on tariffs and trades (GATT) between 1989 to 1990. It recital as ANNEXURE 1C of the Marrakesh Agreement.
This TRIPS agreement deals with all the main categories of intellectual property rights likes; copyrights, trademarks, patents, geographical indications, industrial designs, layout designs, undisclosed information including trade secrets and test data. It is established for the application of
- Rule on administration
- Enforcement of intellectual property rights
- WTO disputes settlement.
To provide the correct standards and enforcement related to intellectual property rights, which will contribute to promoting technological innovation and the transfer of dissemination of technologies. Technological knowledge provides mutual benefits to producers and consumers, further which will lead to social and economic welfare.
Natures and scopes of obligation of the Trademark Law in India:
- The member of WTO is free to determine the appropriate method of implementing the provisions of this agreement within their legal system and practices.
- For an agreement, the term intellectual property refers to section 1 through 7 of part-II.
- Treatment of members will be according to the agreement.
- For protection, the member should meet the criteria provided under the Paris convention (1967), the Berne convention (1971), the Rome Convention, and the treaty of an integrated circuit of intellectual property.
Enforcement of Trademark Law in India:
Section 1: General obligation
- Under Section 41, the member can enforce an effective procedure against any kind of infringement related to an intellectual property right.
- The procedure of enforcement should be fair and equitable, there should not be any kind of unnecessary complexities.
- The merit cases should be based only on the evidence in respect of parties who got an opportunity to be heard.
- The parties of the proceeding have the right to review the legal aspects regarding the final administrative decision, but the acquittals in criminal cases don’t get the opportunity to review.
- There should not be any kind of difference between general law and enforcement of intellectual property rights.
Section 2: Civil and administrative procedures and remedies
Fair and equitable procedures:
Section 42 of the Act, attracts fair and equitable procedure and concealments of all civil procedures enforcement related to any intellectual property rights.
- The defendants have the right to get the written notice which contains all the sufficient details including the basic claims.
- Parties should be allowed to get embodied by an independent legal counsel.
- The procedure shouldn’t impose any overburdened requirements.
- All the relevant evidence required to authenticate the claims should be presented by all the parties.
- This procedure should safeguard confidential information.
Under Section 43, the parties have been given the right to present the evidence in support of their claims. Protection should be given to keep the information confidential related to the case. In case, regarding enforcement action a party voluntarily denies to provide information within sufficient time then the judicial authorities can take any initial and concluding determination, affirmative or negative based on information provided to them.
Under Section 44, the judicial authorities shall have the authority to stop and protect a party from infringement. But if a party eloquently enters into the matter which further leads to infringement of intellectual property rights then that member will not be allowed to get sheltered in the respective subject matter. But in other cases the remedies under this part are inconsistent.
Damages are covered under Section 45 of the Act, the remedies of damages are divided into two types
- If the infringement is done knowingly then, then the judicial authorities have the right to order the infringer to compensate the damages along with the attorney’s fees.
- If a person engages in infringe activities unknowingly, then judicial authorities can order to retrieve the profit or re-payment of pre-establishment damages.
If the good is found to be infringing or material is used to create infringement then the judicial authorities can order to settle without compensation and dispose outside the channel for the avoidance of any harm to the right holder and as well to minimize the risk of further infringement. Mostly, the third party is taken into account and order to remove unlawful affixes but in exceptional cases, the goods are permitted to release.
The extend of civil remedy results in administrative procedures. Under Section 49 of the Act, the judicial authorities order to prevent
- The occurrence of infringement.
- The entry in the channel of commerce.
- The evidence regards the alleged infringement.
All Provisional measures are taken to safeguard the right holder from any kind of harm. But if the measured are revoked, lapses, or omitted because of the absence of infringement then it should be informed to the affecting parties and compensation will be paid for the damages.
Section 5: Criminal procedures
Under Section 61, any wilful trademark counterfeiting or copyright piracy is done on a commercial scale, then the member should be provided with criminal procedures.
Remedies of criminal procedures are divided into two types
- If goods are found infringe or the goods found for pre-dominant use to create infringe then seizure, forfeiture, and destruction of goods are taken place.
- In other cases imprisonment and monetary fines are charged.
This agreement provides correct standards and enforcements of trade-related intellectual property. It plays a special role in facilitating knowledge in trade, creativity and settling trade disputes over intellectual property. It also provides different types of protection to the members from inappropriate and inadequate danger like counterfeit, anticompetitive practices, infringement, piracy etc. in business activities. But if inappropriate and inadequate business activities took place then the proper judicial authority takes preventive measures to compensate the damage.
- More transparency should be introduced in trade and commerce to reduce infringement.
- The unregistered person should also get protection for the infringements they face.
- Aishwarya antawala( May 11, 2017) top changes of agreement on trips brought. Retrieve: https://blog.ipleaders.in/trips-changes
- General provision and basic principle of TRIPS agreement (N.D) Retrieve: https://www.wto.org/english/docs_e/legal_e/27-trips_03_e.htm
- Standard concerning the availability, scope and use of intellectual property rights. (N.D) Retrieve: https://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm
Enforcement of intellectual property rights (N.D) Retrieve: https://www.wto.org/english/docs_e/legal_e/27-trips_05_e.htm#
- Overview of TRIP agreement. (N.D) Retrieve: https://www.wto.org/english/tratop_e/trips_e/ta_docs_e/modules1_e.pdf
- Trip agreement(N.D) Retrieve: https://en.wikipedia.org/wiki/TRIPS_Agreement