IP in India

Photograph of India taken from a US Satellite

Source Wikimedia Commons

 

Jane Lambert

The Department for International Trade has recently carried out a consultation on the top priorities for businesses and members of the public for a future trade deal with India and where they think the biggest gains from such a deal may lie. Any trade deal with India is likely to contain provisions on intellectual property and the topic was suggested as an option in several of the consultation document's multiple-choice questions.

According to An information note for the consultation relating to a Free Trade Agreement between the United Kingdom and India, "intellectual property" is the UK's second-largest export to India amounting to £833 million.  The note does not explain how that figure is computed or of what it consists. It is, therefore, assumed to be royalties and other payments for licences, assignments and other intellectual property transactions.

For those thinking of investing in, or exporting to, India, the Intellectual Property Office has published a short booklet entitled  Intellectual property rights in India.  It lists the intellectual assets that are protected in India, the treaties and conventions to which India is party and the need to register patents, trade marks and designs with the Indian Intellectual Property Office.  Even though India has acceded to the Berne Convention, the booklet recommends the registration of copyright works with the Indian Copyright Office.  There is a section on IP enforcement that discusses civil litigation, criminal proceedings and other methods of dispute resolution.

A particularly helpful paragraph in the booklet suggests the following self-help considerations:

• "Think about the design of your product, and how easy it would be for somebody to reproduce it without seeing your original designs; 
• When you hire staff, have effective IP-related clauses in employment contracts. Also make sure you educate your employees on IP rights and protection; 
• Have sound physical protection and destruction methods for documents, drawings, tooling, samples, machinery etc.; 
• Make sure there are no ‘leakages’ of packaging that might be used by counterfeiters to pass off fake product; 
• Check production over-runs to make sure that genuine product is not being sold under a different name." 

The booklet lists a number of typical problems faced by British businesses in India and suggests the following precautions:

• "take advice from Indian IP rights experts at an early stage on how to protect your IP – prevention is better than cure; 
• consult publications and websites on Indian IP rights and protection in general; 
• carry out risk assessment and due diligence checks on any organisations and individuals you deal with; 
• take professional advice from other experts – for example lawyers, local diplomatic posts, Chambers of Commerce and the UK India Business Council; 
• talk to other businesses already doing similar business in India; 
• consult agents, distributors and suppliers on how best to safeguard your rights; 
• check with trade mark or patent attorneys to see whether there have been previous registrations of your own marks, or other IP, in India; 
• stick to familiar business methods – don’t be tempted to do things differently because you’re trading in a different country."

The booklet offers some useful guidance on getting professional help in India.  

Since the publication of that booklet, the British government has appointed Ms Pragya Chaturvedi as our IP attaché in India.  Her job includes advising British businesses on IP issues in India, working with various government entities to raise IP awareness and engaging and assisting consular officials in different regions of Indian.  Ms Chaturvedi can be contacted at the British High Commission at Shantipath, Chanakyapuri, New Delhi 110021 on +91 (11) 2419 2100 or by email at Pragya.Chaturvedi@fco.gov.uk.

The European Commission operates an India IP SME Helpdesk which describes itself as a

"A first-line IP assistance service for European/COSME SMEs that operate or intend to access the Indian market and look to improve their global competitiveness."

It keeps a directory of 214 IP Institutions resources, publishes a regular newsletter on Indian IP law and holds frequent and regular in-person and online conferences and seminars and promotes many more that are held by other organizations.  The infographic 10 Tips to survive in India is particularly helpful: 

1. "Identify your IP assets
2. Plan in advance when it comes to IP!
3. Adapt your IP strategy to the Indian market
4. Carry out preliminary searches
5. Protect your IP Rights
6. Maintain your IP Right
7. Monitor the market for infringements
8. Be ready to enforce your IP Rights
9. Work with Indian Customs
10. Last but not least… Seek advice from IP Experts,"

The Commission collaborates with Business Support for the EU-India Policy Dialogues, the EU-India Innocenter and the Global Cosmetic Cluster Europe.

The WIPO's India page links to the Copyright Office and the Indian Intellectual Property Office, the treaties to which India is party, India's primary and secondary IP legislation, statistics and a collection of other resources called IP in Action.

The Indian IP Office website holds comprehensive information on Indian patents, trade marks, design and geographical indications.  It publishes updated statutes and secondary legislation, a Manual of Patent Office Practice and Procedure a Manual of Design Practice and Procedure and a Draft manual of Trademarks Practice and Procedure and other guidance.

Anyone wishing to discuss this article or any of its contents can call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Has the Volte-Face on the Unified Patent Court Agreement been worth it?

Author Cédric Pusney Licence CC BY 2.0 Source Wikimedia Commons

 

Jane Lambert

Tomorrow is World Intellectual Property Day,  It is an international festival of creativity and innovation to celebrate the anniversary of the coming into force of the Convention Establishing the World Intellectual Property Organization on 26 April 1970,  Because it is a very significant anniversary, governments like to make momentous announcements about intellectual property on that day

One such announcement on World Intellectual Property Day was British ratification of the Unified Patent Court Agreement ("UPCA") made exactly 3 years ago by the then Foreign Secretary the Rt Hon Boris Johnson MP.   As British ratification was as welcome as it had been unexpected, I hailed it t as "Possibly the best thing to happen on World Intellectual Property Day", Any euphoria occasioned by that news was very short-lived.   A volte-face came less than 2 years later.  Part of the reason for that reversal. according to a parliamentary written statement by Amanda Solway MP, Parliamentary Under-Secretary of State, Minister for Science, Research and Innovation, was:

"Participating in a court that applies EU law and is bound by the CJEU would be inconsistent with the Government’s aims of becoming an independent self-governing nation." (see UK Withdrawal from the UPCA 20 July 2020 Unified Patent Court website).

In other words, the UPCA was thought to be incompatible with "taking back control" and the notion of sovereignty. 

Any intervention by the CJEU would have been minimal compared to matters in which Her Majesty's government has agreed to the continued involvement of that Court. First, the agreement by which the UK withdrew from the EU and Euratom provides for disputes over the Northern Ireland Protocol to be resolved by the CJEU as the House of Lords noted in paras 256 to 258 of their  Report on the Protocol.  

Secondly, s.6 (2) of the European Union (Withdrawal) Act 2018 permits courts and tribunals in the UK to have regard to judgments of the CJEU delivered after 23:00 on 31 Dec 2020 in so far as they may be relevant to any matter before them.  In Warner Music UK Ltd and another v TuneIn Inc. [2021] EWCA Civ 441 (26 March 2021) the Court of Appeal decided to follow the CJEU's judgment in  C-392/19 VG Bild-Kunst v Stiftung Preußischer Kulturbesitz  [2021] EUECJ C-392/19, [2021] WLR(D) 157, EU:C:2021:181, ECLI:EU:C:2021:181 which was delivered months after the expiry of the implementation period provided by art 126 of the withdrawal agreement. 

Thirdly, although the case law of the CJEU delivered before 31 Dec 2020 continues to bind British courts and tribunals, the Court of Appeal does have power to depart from that case law on the same basis that the Supreme Court has power to depart from one of its own precedents or of one of the House of Lords in accordance with the Practice Statement (Judicial Precedent) [1966] 1 WLR 1234: In TuneIn, the appellant's primary contention was that the Court of Appeal should depart from the entire body of case law of the CJEU on communication to the public, or alternatively, that the Court should depart from Case C-160/15 GS Media BV v Sanoma Media Netherlands BV [2016] WLR(D) 477, [2016] EUECJ C-160/15, [2016] Bus LR 1231, ECLI:EU:C:2016:644, EU:C:2016:644.

The Court of Appeal struck down that argument like a whack-a-mole. Lord Justice Arnold gave no less than 8 reasons why departing from the CJEU's case law would be a bad idea between paras [77[ to [88] of his judgment.  The Master of the Rolls offered two, namely that the CJEU's case law was based on international agreements and there was no immediate .need to change anything.  Lady Justice Rose agreed that this was absolutely not a case in which this court should exercise its power to depart from the EU jurisprudence.  For those who are interested in the TuneIn appeal, I wrote a case note on the Court of Appeal's judgment in The Appeal: Warner Music UK Ltd and others v Tuneii Inc in NIPC Law on 24 April 2021.  

The UPC and the unitary patent would have benefited British industry great which is why they were recommended by both Gowers and Hargreaves.  Because of the adversarial system of civil litigation and the rule that costs of litigation are paid by the losing party the United Kingdom (and in particular) England is the most expensive and riskiest jurisdiction in the world in which to enforce an intellectual property right.  It is no coincidence that the country of Newton and Berners-Lee which initiated the industrial revolution and which still has some of the strongest research universities in the world trails consistently not just Germany and France in the number of European patent applications but also the Netherlands with a third of its population and Switzerland with one eighth.   A heavy price indeed for the chimaera of sovereignty.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.