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Prevention Of Counterfeiting And Piracy Issues Protection Of Public Health Intellectual Property And Traditional Knowledge

The UN is an international organization which aids in international conflicts and resolution between countries. The conflicts are then resolved respectively by the sort of problem, these specific conflicts are solved within committees by experts in the topics. The United Nations (UN) is an organization that was established after WWII on the 26th of June 1945, in order to sustain global peace, neutralizing of threats, dialogue between nations, control of weapons and international cooperation. Joining 193 countries to find solutions for international conflicts the UN tries to maintain international peace and security. The United Nations General Assembly is the main deliberative, policymaking and representative organ of the UN.

The Committee The World Intellectual Property Organization (WIPO) is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 to encourage creative activity, to promote the protection of intellectual property throughout the world. [1]

WIPO currently has 189 member states, [2] administers 26 international treaties, [3] and is headquartered in Geneva, Switzerland. The current Director-General of WIPO is Francis Gurry, who took office on October 1, 2008.[4] 186 of the UN Members as well as the Cook Islands, Holy See and Niue are Members of WIPO. Non-members are the states of Marshall Islands, Federated States of Micronesia, Nauru, Palau, Solomon Islands, South Sudan and East Timor. The Palestinians have observer status.

WIPO was formally created by the Convention Establishing the World Intellectual Property Organization, which entered into force on April 26, 1970. Under Article 3 of this Convention, WIPO seeks to promote the protection of intellectual property throughout the world. WIPO became a specialized agency of the UN in 1974.

Information Network

WIPO has established WIPO net, a global information network. The project seeks to link over 300 intellectual property offices (IP offices) in all WIPO Member States. In addition to providing a means of secure communication among all connected parties, WIPO net is the foundation for WIPO's intellectual property services.

Economics And Statistics Division

The Economics and Statistics Division is responsible for collecting statistics on IP activity worldwide and making these statistics available to the public. In addition, the Division carries out economic analysis on how IP and innovation policy choices affect economic performance.

The Benefits Of World Intellectual Property Organization

International registration has several advantages for the owner of the mark. After registering the mark or filing an application for registration with the Office of origin, he has only to file one application, in one language, and pay once fee instead of filing separately in the trademark Offices of the various Contracting Parties in different languages and paying a separate fee in each Office.

Moreover, the holder does not have to wait for the Office of each Contracting Party in which protection is sought to take a positive decision to register the mark; if no refusal is notified by an Office within the applicable time limit, the mark is protected in the Contracting Party concerned.

In some cases, the holder does not even have to wait the expiry of this time limit in order to know that the mark is protected in a Contracting Party, since he may, before the expiry of the time limit, receive a statement of grant of protection from the Office of that Contracting Party.

A further important advantage is that changes subsequent to registration, such as a change in the name or address of the holder, or a change (total or partial) in ownership or a limitation of the list of goods and services may be recorded with effect for several designated Contracting Parties through a single simple procedural step and the payment of a single fee. Moreover, there is only one expiry date and only one registration to renew.

International registration is also to the advantage of Trademark Offices. They do not need to examine for compliance with formal requirements, or classify the goods or services, or publish the marks.

Moreover, they are compensated for the work that they perform; the individual fees collected by the International Bureau are transferred to the Contracting Parties in respect of which they have been paid, while the complementary and supplementary fees are distributed annually among the Contracting Parties not receiving individual fees, in proportion of the number of designations made of each of them. If the International Registration Service closes its biennial accounts with a profit, the proceeds are divided among the Contracting Parties.

First Issue

Wipo Action Plan For Protection Of Traditional Knowledge And Intellectual Property

The current international system for protecting intellectual property was fashioned during the age of enlightenment and industrialization and developed subsequently in line with the perceived needs of technologically advanced societies. However, in recent years, indigenous peoples, local communities, and governments, mainly in developing Countries have demanded equivalent protection for traditional knowledge. WIPO member states take part in negotiations within the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), in order to develop an international legal instrument (or instruments) that would give traditional knowledge, genetic resources and traditional cultural expressions (folklore) effective protection.

Two Angles To Intellectual Property Protection Exist:

  • Defensive Protection:

    it aims to stop people outside the community from acquiring intellectual property rights over traditional knowledge. India, for example, has compiled a searchable database of traditional medicine that can be used as evidence of prior art by patent examiners when assessing patent applications.

    This database was created following a well-known case in which the US Patent and Trademark Office had granted a patent (later revoked) for the use of turmeric to treat wounds, a property well known to traditional communities in India and documented in ancient Sanskrit texts. Defensive strategies might also be used to protect sacred cultural manifestations, such As sacred symbols or words, from being registered as trademarks by third parties.
     
  • Positive Protection

    it is the granting and exercise of rights that empower communities to promote their traditional knowledge, control its uses and benefit from its commercial exploitation. This can be achieved through the existing Intellectual property system, and a number of countries have also developed specific legislation. However, any specific protection afforded under national law may not hold for other countries, one reason why many are advocating for an international legal instrument.

Second Issue

Counterfeiting And Piracy Issues

The fight against counterfeiting and piracy is at the heart of the World Intellectual Property Organization committee on enforcement. “It is very difficult to find what role an international organization can play in this area, because it is a very delicate area and the international community has been very good in the last 50 years at developing rules,

Legal Framework

India has no legislation dealing specifically with counterfeiting and piracy, but the legislators, through various statutes have provided statutory, civil, criminal and administrative remedies. However, Counterfeiting has been majorly dealt by Intellectual Property Law as it directly invokes the Intellectual Property Rights of the aggrieved. For instance, Trademark law necessitates appropriate action against passing off, which refers to the imitation of marks or goods in order to take advantage of the goodwill of the lawful owner as well as causes confusion among the consumers. Similarly, Copyright Law provides remedies against plagiarism, which is the act of appropriating the literary composition of another author.

Some of the remedies provided by the Indian legal system acting against counterfeiting have been briefly discussed below:

The Trademarks Act, 1999:

Trade Mark Act provides civil as well as criminal remedies against infringement of any trademark, whether registered or not. Although, the statute neither defines counterfeiting nor provides penalties against it, the term can be categorised as what has been mentioned in the act as 'falsifying a trade mark' or 'falsely applying a trade mark'. The trade mark law provides administrative remedies, whereby the aggrieved can redress his grievance by seeking intervention from the Trademark Registry, which acts through the Registrar of Trademarks. The act also allows the owner of the trade mark to file a suit against infringement.

Further, the trademarks act empowers the court to grant ex-parte injunctions in appropriate cases in order to restraint the infringers from selling counterfeit goods and for discovery of documents or other related evidence. Further, the statute provides for civil relief including injunctions, rendition of accounts of profits and delivery up of infringing products for its destruction.

The Trade Marks Act, 1999 provides penalty for applying false trademark and/or trade description, etc. with imprisonment up to three years and fine ranging from fifty thousand to two lakh rupees.

The Copyright Act, 1957:

The statute appears to have a very strict outlook towards infringers, considering that the Copyright law does not provide any requirement for registration. Section 55 of the Copyright Act, 2000 provides various civil remedies such as injunctions, damages and account of profits.
The statute gives right to the police officers to go ahead with the investigation by seizing all the infringing copies.

Further, the registrar of copyright has the power to investigate any alleged ship, dock or premise and order to confiscate them.

Section 63 of the Act provides for imprisonment up to three years and fine for indulging in activities of infringement.

The Patents Act, 1970:

Under this statute, the patentee is granted a monopoly right in respect of an invention for a term of 20 years. Any violation necessitates the judiciary to intrude and secure such right. However, the patentee is required to institute a suit for seeking remedies, such as interlocutory/interim injunction, damages or account of profits and permanent injunction[7], all of which are recognized as civil remedies. The Patents Act does not provide criminal remedies. However, criminal liability arises where an article is wrongfully represented to be patented or secrecy requirements under the act are breached.

Design Act, 2000:

Section 22 provides that anyone committing an act of piracy shall be liable to pay to the rights holder up to Rs 50, 000 (approximately $1,000) per registered design. The rights holder may also seek interim relief and an injunction, provided that the right holder must prove that the alleged infringing act involves their design resulting in an economic loss.

Geographical Indications Act, 1999:

The Geographical Indications of Goods (Registration & Protection) Act, 1999 provides for protection to all undertakings located in the area, which may use the geographical indication on specific goods that they produce. The act provides the right to the GI owners to obtain reliefs in cases of infringement[8] and also provides for criminal remedies where the term of imprisonment varies from 6 months to 3 years and fine from Rs 50,000 to Rs 2 lacs.

Since, the fundamental issue of this piece concerns the remedies for counterfeiting; the article briefly discusses the civil as well as criminal remedies for redresal of grievances. .

Indian Penal Code 1860:

The Penal Code sets out punishments for cheating, counterfeiting and possession of instruments for making counterfeits etc. under chapter XII of the Act. The code's provisions can be invoked in criminal actions, in addition to the provisions of specific statutes.

Border Measures:

The first lines of defence against the cross-border movement of counterfeited/ pirated articles are the National Customs and Border protection. The Customs Act regulates the import and export of goods through provisions provided under section 44-51. Further, Sec 11 strengthens the IP enforcement as it empowers the government to enforce prohibition on the import and export of certain goods to protect Patents, Trade Marks and Copyrights[10] and gives power to the custom officials to confiscate goods imported or exported, unlawfully or illegally.

The Government of India had notified the 'Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007' with a view to bolster the Customs Act and provide remedies to protect IPRs at borders. Thus, importing of infringing goods is prohibited under the Customs Act 1962, read with the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007.
The law allows holders of specific IP rights such as trademarks, copyright, patents, designs and geographical indications to record their grievances with Customs officials for prompt seizure of counterfeit goods at the port itself.

Criminal Remedy

IP rights are private rights that are mostly enforceable through civil litigation. However, the prevalence of counterfeiting, passing off and piracy along with the economic damage they cause has led to an increased importance of criminal sanctions. It can be observed that, only few statutes like Trademarks Act, the Copyright Act, and the Geographical Indications Act provide criminal remedies. The punishment varies from 6 months to 3 years of imprisonment and fine ranging from INR 50,000 to 200,000/-.
The statutes acknowledge this crime as cognizable wherein the police can take action and carry out search and seizure without court warrant.

Despite having a robust legal framework for anti-counterfeiting in liaison with Police, the mandate of the statute is debilitated by the lax attitude of Police. In addition, Criminal trials become excruciatingly lengthy resulting in heavy backlog of cases for the courts. This has resulted in low conviction rates, thereby reducing the efficacy of criminal remedy sought against the counterfeiters. To counter this, the courts have adopted the practice of plea bargaining, wherein the offender accepts his or her guilt in lieu of remission of imprisonment and in turn imposing on him, heavy cost payable to the aggrieved party thereby disposing the case in a favourable manner.

Civil Remedies

Civil remedies against counterfeiting mostly include injunctions, damages and/or rendition of accounts. The mandate civil remedy is to stop distribution, manufacturing, or retailing of the infringing product or gaining profits from using the pirated product of the rightful owner of the products.

A civil court may even grant ex-parte injunctions while the proceedings are on. Further, the courts have widened their scope in order to deal with a serious issue of counterfeiting and the jurisprudence under this subject is growing as the courts have introduced the following interim relief's under civil remedies through various case laws:
Code of Civil Procedure 1908 governs the procedures adopted in the civil cases. Counterfeiting is a widespread commercial crime rather than a conventional one. The CPC has also established a commercial court in High Court, in 2016, which has the jurisdiction to deal with cases relating to counterfeiting.

The listed few civil remedies are not enough to compensate the loss suffered by the right holders, neither do they prevent future counterfeits and since, more often than not, people take the recourse to civil remedy, the court is putting its best efforts to expand the horizon of civil course in order to make it efficient enough to resolve the issue and provide justice to all the aggrieved. Therefore, the courts also award punitive remedy in addition to damages and payment of the plaintiff's counsel fee, on case to case basis with a view to deter recidivists and compensate victims for an otherwise un compensable loss.

Conclusion
Taking recourse to criminal or civil remedies against counterfeiting depends upon the objective that the Plaintiff seeks to achieve, keeping in view the consequences of the counterfeiter's act. The recourse to civil or criminal remedies provided by appropriate law for an act of counterfeiting should be construed on the basis of the magnitude of the act's consequences.

For instance, if an act of counterfeiting is awfully against public interest including, public health and safety, the prevention of corruption and organized crime, tax and customs income, local and regional industries, foreign investment and investor confidence, international trade relations, etc., it must be criminalized and the right holder must seek criminal remedy to punish and deter counterfeiters, who do not respect law and strategically carry out their criminal activity designed to evade justice and endanger public health and safety. A criminal action can be an effective remedy to safeguard the interest of general public, especially when the issues of infringement and counterfeiting are growing epidemically.

References:
  1. PCT- The International Patent System
  2. Madrid- the International Trademark System
  3. Hague - The International Design System
  4. Lisbon -The International System of Appellations of Origin
  5. Budapest - The International Microorganism Deposit System
  6. The WIPO Intergovernmental approach on Intellectual Propertyand Genetic 7. Resources, Traditional Knowledge and Folklore
  7. Developing a National Strategy on Intellectual Property, Traditional Knowledge and Traditional Cultural Expressions.
  8. Intellectual Property and Arts Festivals.
  9. Intellectual Property and Traditional Handicrafts.
  10. Customary Law and Traditional Knowledge.
  11. Alternative Dispute Resolution for Disputes Related to Intellectual Property and Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources.
  12. Documentation of Traditional Knowledge and Traditional Cultural Expressions
  13. Section 134(2), Trade Mark Act, 1999.
  14. Section 135, Trade Mark Act, 1999
  15. Section 103, Trade Mark Act, 1999
  16. Section 64. Copyright Act, 1957
  17. Section 53. Copyright Act, 1957
  18. Section 104, Patent Act, 2000
  19. Section 20, Geographical Indication of Goods (Registration and Protection) Act, 1999
  20. Chapter VIII, Geographical Indication of Goods (Registration and Protection) Act, 1999
  21. Section 11 (2) (n), The Customs Act, 1962
Web Source:
  1. http://www.wipo.int/hague/en/
  2. http://www.wipo.int/portal/en/index.html
  3. http://www.wipo.int/madrid/en/general/
  4. http://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_nan_10/wipo_ip_nan_10_ref_t8.pdf
  5. http://www.wipo.int/patent-law/en/developments/publichealth.html

Written by: Sayed Qudrat Hashimy, International Law Students
E-mail : sayedqudrathashimy[at]gmail.com, Phone no. +91 9008813333 

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