CHECKLIST OF ISSUES ON ENFORCEMENT[1]
Response from Sri Lanka
Civil and Administrative Procedures and
Remedies
(a) Civil
judicial procedures and remedies
1. Specify the courts which
have jurisdiction over IPR infringement cases
Commercial
High Court established for the Western province under the High Court of the
Provinces (Special Provisions) Act No. 10 of 1996 is vested with the sole and
exclusive civil jurisdiction in respect of litigation involving IP rights.
Any
person aggrieved by a decision of the commercial High Court may prefer an
appeal to the Supreme Court against such order with the leave of the Supreme
Court first had and obtained.
2. (a) Which Persons have standing to assert IPRs?
Any
person to whom any recognized IP rights
are granted under the Intellectual Property Act of Sri Lanka (Act No. 36 of
2003) have standing to assert IPRs where any person or a body of persons is threatening to infringe or has infringed
his rights or is performing acts which make it likely to infringe a right under
the Act.
In the
case of Unfair competition -
Any
person or enterprise or association of producers or traders aggrieved by any
act or practice constituting an unfair competition may institute proceedings in
court to prohibit the continuance of such act or practice and obtain damages
for losses suffered as a result of such act or practice.
In the
case of Geographical indications –
Any act
or practice carried out or engaged in, in the course of industrial or
commercial activities that is contrary to honest practices in relation to
geographical indications as provided in section 160 of the Act may
constitute an act of unfair competition and a civil action can be instituted
seeking an injunction and any other relief deemed appropriate to prevent any use
of such geographical indications.
In the
case of Undisclosed information -
Any act
or practice carried out or engaged in, in the course of industrial or
commercial activities that is contrary to honest practices in relation to
undisclosed information as provided in the Act (se 160 (6) may constitute
an act of unfair competition. Civil
proceedings can be instituted for prohibiting the continuance of prohibited
acts of undisclosed information and obtain damages for losses suffered.
Criminal remedies- Unlawful disclosure of such information is a criminal
offence and on conviction is liable to a fine not exceeding five hundred
thousand rupees or to imprisonment of either description for a term not
exceeding 6 months or to both such fine and imprisonment.
It is
important to note however, that in case of license contract relating to an
industrial design, patent or mark or any other matter provided by the Act and
in the absence of any provision to the contrary in such contract, the licensee
is required to request the registered owner to apply for an injunction, in case
of an infringement or threatened infringement of his rights or acts being
performed in relation to such infringement. If the registered owner fails to
apply for an injunction within 3 months from the receipt of the said request,
the licensee may apply for an injunction in his own name, with notice to the
registered owner who may join in the proceedings. However, the court may, on
application of the licensee, prior to the said period grant an injunction if he
proves that immediate action is necessary to avoid substantial damage. (sec.
171)
(b) How
they may be represented?
In a
Civil Court, they may be represented by his recognized agent or registered
attorney duly appointed by such right holder or such recognized agent to act on
behalf of such party.
(c) Are there any requirements for mandatory personal appearances
before the Courts by the right holder?
Personal
appearance is not mandatory in civil litigation. An appearance in a court of
law can be made by a right holder in person or his recognized agent or
registered attorney duly appointed by such right holder or such agent to act on
behalf of such party.
3. What authority do the
judicial authorities have or order, at the request of an opposing party, a
party to proceedings to produce evidence which lies within its control?
The
Court has the power to order the opposing party to tender any evidence that is
relevant to the substantiation of the claim and is in his control. This order
may be made where such a party has presented reasonably available evidence in
support of the claim and has specified that evidence relevant to the
substantiation of such claim lies in the control of the opposing party.
However, the order for the tendering of such evidence will be made subject to
the protection of confidential information (se. 179 (3) (iii).
4. What means exist to identify
and protect confidential information brought forward as evidence?
The
order for tendering of such evidence will be made subject to the protection and
identification of confidential information.
Thus, the order may be made where such a party (i) has presented
reasonably available evidence in support of the claim and (ii) has specified
that evidence relevant to the substantiation of such claim lies in the control
of the opposing party.
5. Describe the remedies that
may be ordered by the judicial authorities and criteria, legislative or
jurisprudential, for their use:
(a) Injunctions –
Where a
person to whom a recognized rights granted under the Act, proves to the
satisfaction of the court that any person is threatening to infringe or has
infringed his rights or is performing acts which makes it likely to infringe a
right under the Act, the court may grant an injunction restraining any such
person from commencing or continuing such infringement or performing such acts.
An
injunction may take the form of interim or permanent and may be available in
the infringing proceedings. Where it appears to court that the object of
granting an injunction would be defeated by delay, it may until the hearing and
decision of the application for an injunction, enjoin the defendant for a
period not exceeding 14 days in the first instance. The court may, for good and
sufficient reasons, which shall be recorded, extend such periods not exceeding
14 days at a time. Any disobedience of such injunction or enjoining order so
granted may be enforced, by punishment of the offender as for contempt of
court.
(b) Damages,
including recovery of profits and expenses, including attorney's fees
-
In the same infringing action the court has the power to order damages
(170 (1). The court has the power to order the infringer to pay the right
holder such actual damages as adequate to compensate him for the loss suffered
by him, by reason of such infringement, in addition to the recovery of profits
that may have been made (170 (3).
The
right owner has, however, an option to elect at any time before judgment to
recover, instead of proved actual damages, an award of statutory damages
for any infringement involved in the action of a sum not less than Sri Lanka
rupees 50,000/- and not more than Sri Lankan rupees 1 million as the court
may consider appropriate and just (170 10). (See also section 22 (2) (b) as
regards copyright and related rights.)
(c) Destruction or other disposal of infringing goods and
materials/implements for their production -
The
court has the power to order the infringing goods to be disposed of outside the
channels of commerce or to be destroyed without the payment of any compensation
(170 (3) (ii). (See also se 22 (2) (c) as regards copyright and related
rights).
(d) Any other remedies
-
(a)
The court has the power to order other relief as the court may deem just and
equitable, which may include:
(i) Keeping
accounts of profits;
(ii) The
Act empowers the court to make the following orders in respect of copyright
infringement:
(a) to
order the impounding of copies of works or sound recordings suspected of being
made, sold, rented or imported without the authorization of the owner where the
making, selling, renting or importation of copies is subject to authorization
and their implements could be used in the creation of copies of such infringing
goods (22 (2) (ii);
(b) to
order destruction or other reasonable manner of disposing of copies made in
infringement of any right protected under the Act, is available and their packaging outside the
channels of commerce in such a manner as would avoid harm to the owner of the rights, unless he requests otherwise;
(22) (2) (c);
(c) to
order, where there is a danger that implements may be used to commit or
continue to commit acts of infringement,
destruction or other reasonable manner of disposing of such implements
outside the channels of commerce so as to minimize the risks of further
infringements, including the surrender to the owner of the rights (22 (2) (d).
(d) where
there is a danger that acts of infringement
may be continued, the court shall make such orders as may be necessary
prevent such acts being committed. 22 (2) (e);
(e) Payment
of expenses caused by the infringement including legal fees.
(b) Unfair competition - is defined in the
Intellectual Property Act of 2003 as follows: "Any act or practice carried
out or engaged in, in the course of industrial or commercial activities that
are contrary to honest practices shall constitute an act of unfair competition."
160 (1).The Act recognises the following acts in particular constituting
unfair competition.
1. Causing confusion with respect to
another's enterprise or its activities.
2. Damaging another's goodwill or reputation.
3. Misleading the public (any act or
practice which misleads or likely to mislead the public in respect of another's
enterprise or its activities)
4. Discrediting another's enterprise or his activities. (any false or unjustifiable allegation in the course of industrial
or commercial activity which discredits or is likely to discredit another's
enterprise.)
5. Disclosure, acquisition or use by others of secret information. (any act of practice in the course of industrial or
commercial activities that results in the disclosure, acquisition or use by
others of undisclosed information without the consent of the person lawfully
control of that of that information.) The protection against acts of unfair
competition can be enforced by means of civil remedies as provided in
section 160 (7) and the reliefs include injunctions and damages.
(c) Common law remedy of Passing off - The law of passing off, which is a form of tort known to the English common law means that "nobody has any
right to represent his goods as the goods
of somebody else" (Reddaway v Banham (1896) AC 199 at 224). The five elements of passing
off as recognised in Reckitt & Coleman Products Ltd v Borden Inc., as (1)
Reputation or goodwill attached to the goods or services (2) Deception
(Misrepresentation of that goodwill) (3) actual damage or reasonable likelihood
of damage. (1990) 1 All E.R. 873)
The
case law developed under the former Trademarks Ordinance in Sri Lanka
demonstrates that the tort of passing off is recognised in Sri Lanka. In the
case of Kapadiya vs. Mohamed 20 NLR 314 at 317 Shaw J. stated that although the
passing off action is not specifically reserved in the statutory law (Trade
Marks Ordinance), such an action can be successfully maintained under our
law. The provisions relating to unfair
competition do not interfere with the common law tort of passing off and the
passing off continues to exist in Sri
Lanka along with the action of unfair competition. The tort of passing off
comes under unfair competition and its elements are incorporated in the Sri
Lankan Act itself. However, unfair competition is much wider than passing off
and it is only one remedy of unfair competition. The tort of passing off it has
now developed into a new independent cause of action and both actions can be
successfully maintained in Sri Lanka.
The
remedies under passing off are injunctions and/or damages or as an alternative
an account of profits. Additionally, an order may be granted for the delivery
or destruction of articles to which the name or mark has been applied or an
order for the obliteration of such marks or names.
6. In what circumstances, if
any, do judicial authorities have the authority to order the infringer to
inform the right holder of the identity of third persons involved in the
production and distribution of the goods or services found to be infringing and
of their channels of distribution?
The
court has the power to order the infringer to inform the right holder of the
identity of the persons involved in the production and distribution of the
infringing goods or services and of channels of distribution used by them. The
court may, however, make this order other than in an instance where it would
not be in proportion to the seriousness of the infringement (170 (4)
7. Describe provisions
relating to the indemnification of defendants wrongfully enjoined. To what
extent are public authorities and/or officials liable in such a situation and
what "remedial measures" are applicable to them?
Where
the interim measures taken under section 170 (6) are modified or revoked or it
is subsequently found that there has been no infringement of a protected right,
the court has the power to order the plaintiff, upon the request of the
defendant who has been wrongfully enjoyed to pay appropriate compensation for
any injury caused (170 (8).
Further,
public officials are protected from any suit or prosecution under the section
170 (11) of the Act where they have acted in good faith and in pursuance of any
provisions of the Act. The said section reads as follows:
"No
suit or prosecution shall lie against any officials for any act which is done
in good faith and in pursuance of any provisions of this Act."
8. Describe provisions
governing the length and cost of proceedings. Provide any available data on the
actual duration of proceedings and their cost.
The length of the judicial proceedings depends on the nature of the IPR
dispute. In many infringing litigation, the proceedings are terminated after
the interim injunction is either allowed or refused since the parties either
withdraw the case or settled. The length of such proceedings may take 6 months
to 1 year. If the parties insist on litigating on substantive matters, the
length of the proceedings depends on the nature of issues involved in the
litigation and the number of witnesses to be called and the court calendar and
the appeal procedure in case of an appeal (if any) to the Supreme Court with leave
of the Supreme Court first had and obtained.
The data
however, is not available on cost of proceedings since costs depend on the
nature of the IPR dispute and the attorney's fees. However, after the
litigation is over, bill of costs is filed and it may be enforced as if were an
order of the Court.
(b) Administrative
proceedings and remedies
9. Reply to the above question
in relation to any administrative procedures on the merits and remedies that
may result from these procedures
The Act
provides an alternative remedies for redress for aggrieved parties in IP
violation cases by filing administrative complaints before the Director-General
of Intellectual property. The Director-General has the original quasi-judicial
functions in the administration of IP. The commencement of an administrative
action before the Director-General is independent and without prejudice to the
filing of an action with the regular courts.
(a) The
Director-General has the power, on an application being made in the prescribed
form and manner by a person aggrieved by any of his copyrights or related
rights being infringed or in any manner
affected, and after due inquiry, to determine any question that may be
necessary or expedient to determine in connection with such application. The
decision of the Director-General shall be binding on the parties subject,
however, to the right of a party aggrieved by such decision to make an appeal
to the Commercial High Court (22 (3).
The
words "...on an application being made …. by a person aggrieved by any of
his rights under this Part being infringed or in any manner affected…"
imply that the scope of the subject matter covers not only infringement of
rights but also rights affected by any other manner such as ownership of
rights, contractual relationships, payment and quantum of royalties,
restraining a defendant from committing or continuing the acts of infringement.
The person aggrieved by the decision of the Director-General may make an appeal
to the Commercial High Court and unless such Court issues an interim order
staying the operation of the decision of the Director-General, such decision
shall continue to be in force until the matter is decided by the Court.
Remedies:
The Director-General, after due inquiry, may impose the following
administrative remedies in respect of such application:
(i) decide
that the rights of any party have been infringed and restraining a defendant
from committing or continuing the acts of infringement;
(ii) decide
that any other right of a right holder has been affected such as ownership of
rights, contractual relationships, payment and quantum of royalties etc. and
make necessary orders accordingly.
(iii) decide
that rights of the owners have not been infringed;
(iv) decide
any other rights of the right holders have not been affected.
Provisional Measures
(a) Judicial
measures
10. Describe the types of
provisional measures that judicial authorities may order, and the legal basis
for such authority
(a) Interim Injunctions-where
any person is threatening to infringe or has infringed his rights or is
performing acts which makes it likely to infringe a recognized right of a right
holder (170 (1), the court has the power to make an appropriate interim order
under section 170 (6). Interim injunctions may also include orders directing
the opposing party to tender evidence to the substantiation of a claim
including materials or implements or documents in the possession of the
opposing party and used in the creation of infringing goods or production and/or
distribution of these goods and the documents relating thereto in the
possession of the defendant. (170 3) (b).
Legal
Basis of issuing Injunctions- Its object is to keep matters in status quo until
the question at issue between the parties can be determined. legal principles
governing the question of issuing or refusing to issue an injunction were laid
down in Sri Lanka in the case of Felix Dias Bandaranaike v. State Film
Corporation (1981) 2 SLR 218. It was held in this case that in deciding whether
or not to grant an interim injunction the following sequential tests should be
applied:
1. Has
the plaintiff made out a strong prime facie
case of infringement or imminent infringement of a legal right to which he has
title, that is, that there is a serious question to be tried in relation to his
legal rights and that the probabilities are that he will win;
2. In
whose favour is the balance of convenience- the main factor being the
uncompensatable disadvantage or irreparable damage to either party? In Yakkaduwe Sri Pragnarama Thero
v. Minister of Education 71 NLR 506, 511 H.N.G.Fernando, C.J adopted the
explanation of what is meant by the expression ‘balance of convenience' as set
out in Halsbury (3rd. Ed. Vol. 51, p. 366):
"Where any doubt exists as to the
plaintiff's right or if his right is not disputed, but its violation is denied,
the Court in determining whether an interlocutory injunction should be granted
, takes into consideration the balance of convenience to the parties and the
nature of the injury which the defendant, on the other hand, would suffer if
the injunction was granted and he should ultimately turn out to be right and
which the plaintiff, on the other hand, might sustain if the injunction was
refused and he should ultimately turn out to be right…..The burden of proof
that the inconvenience which the plaintiff will suffer by the refusal of the
injunction is greater than that which the defendant will suffer, if it is
granted, lies on the plaintiff".
The test for the proof of greater harm is
that irrespective of the availability of damages, if the claimant would suffer
irreparable loss or damages and unless injunction is issued, the defendant is
unlikely to satisfy the final judgment. Irreparable loss/injury- means that the
injury is one which cannot be adequately compensated by damages. It means any
wrong or damage done to another either to his person, rights, reputation or
damage done to another either to his person, reputation, rights or property. If
damages cannot be capable of being accurately measured, it may constitute
irreparable damages.
3. As
the injunction is an equitable relief granted in the discretion of the Court,
it has to be considered whether the conduct and dealings of the parties justify
the grant of the injunction (ex- delay and suppression of material facts will
be taken into consideration).
(b) Interim orders- 170 (6). The purpose of
interim orders is to preserve for the trail evidence pending the disposition of
the plaintiff's claim. Such orders can include:
(i) order
for tendering of any evidence relevant to the substantiation of a claim of the
right holder subject to confidential information. Such orders may also include:
(a) the detailed description with or without the taking of samples of
the infringing goods; (b) detailed description of the materials and implements
used in the creation of infringing goods
or production and/or distribution of these goods and the documents relating
thereto; (c) orders for the preservation of assets preventing the removal
of assets pending the disposition of the
plaintiff's claim for damages where the defendant threatens or is about to
remove or dispose of his property with intent to defraud the plaintiff (See se.
54 (c) of Judicature Act which support this position).
(c) The
Court has the power to order interim measures relating to protection, ex parte, where appropriate, in particular
(i) where any delay is likely to cause irreparable harm to the right holder or
(ii) where there is a demonstrable risk of evidence being destroyed (section
170 (6).
Legal
Basis of making Interim Orders- The object of interim measures is to preserve
for the trail evidence in the possession of the defendant or prospective
defendant, pending the determination of the action where any delay in
preserving evidence is likely to cause irreparable harm to the right holder or
where there is a demonstrable risk of evidence being destroyed.
The
applicant should satisfy court that (i) he has an extremely strong prima facie
case that his claim will succeed on the merits; (ii) the damage, actual or
potential, by such destruction of evidence to the applicant is very serious and
delay in making an order is likely to cause irreparable harm to the right
holder; (iii) the defendant is in the possession of incriminating
evidence-documents or material and that
there is a real possibility or demonstrable risk that, if he is forewarned, he
may destroyed such evidence before any application inter parte can be made.
11. In what circumstances may
such measures be ordered inaudita altera
parte?
The
court has the power to adopt provisional measures ex parte where appropriate, in particular where any delay is
likely to cause irreparable harm to the right holder or where there is a
demonstrable risk of evidence being destroyed. The order is made on an ex-parte application that is without the
defendant's being given notice and without his being heard. The defendant will
become aware of the order when it is served on him. Thus, when an interim order
is made ex-parte, the parties
affected shall be given notice and shall on receipt of such notice be entitled
to be heard as to whether the interim order should be modified or revoked (170
(7).
12. Describe the main procedures
for the initiation, ordering and maintenance in force of provisional measures,
in particular relevant time-limits and safeguards to protect the legitimate
interests of the defendant
(a) Interim Injunctions –A party seeking an
interim injunction is required to present petition and affidavit except where
the injunction is prayed for in the plaint itself and in such case, the
contents of the plaint shall be supported by an affidavit. No injunction in Sri
Lanka will be issued without notice. However, where it appears to court that
the object of granting an injunction would be defeated by delay, it may until
the hearing and decision of the application for an injunction, the court may
enjoin the defendant by making an enjoining order for a period not exceeding 14
days in the first instance and the court may for good and sufficient reason,
extend for periods not exceeding 14 days at a time.
The
enjoining order and/or notice of injunction will be served on the parties
affected and the grating or refusing to grant an interim injunction may be made
upon a due inquiry after hearing the parties affected by such enjoining order
or interim injunction sought. The order is based on affidavits, documents and
written submissions and no direct appeal will lie but only a leave to appeal
with special leave having being obtained from the Supreme Court.
The
operation of the enjoining order so made may be vacated or suspended by the
same court if it is satisfied that such order was obtained by suppression or
misrepresentation of material facts. There is provision to award compensation
where a party obtains an injunction or enjoining order on insufficient grounds.
The violation of an enjoining order has the same effect of an interim
injunction and such violation of is a punishable with contempt of court.
(b) Interim orders - A party
seeking an interim order is required to present reasonably available evidence
to support his/her claims by petition and affidavit with supporting documents
that (i) his/her IP right has been infringed or is about to be infringed
and tendering of for the substantiation
of the claim and is in the control of the opposing party is relevant including
any materials and implements used in the creation of infringing goods or
production and/or distribution of these goods and the documents relating thereto
in the possession of the defendant (ii) ) his/her IP right has been infringed
or is about to be infringed and the
defendant threatens or is about to remove or dispose of his assets accumulated
or to be accumulated out of the infringing goods with intent to defraud the
plaintiff (See se. 54 (c) of Judicature Act which supports this position).
Such
orders may be made upon an application of the claimant supported by an
affidavit with supporting documents ex-parte
and the parties affected by such order will be entitled to notice and shall on
receipt of such notice be entitled to be heard as to whether the interim order
should be modified or revoked.(170 (7).
In order
to protect the legitimate interests of the defendant, the following provisions
are included in the Act: (i) the court may direct the claimant to provide
security or other equivalent assurance and also to prevent abuse of any interim
orders so made (170 (9); (ii) where the interim measures taken are modified or
revoked or it is subsequently found that there has been no infringement of a
protected right, the court has the power to order the plaintiff, upon the
request of the defendant who has been wrongfully enjoyed to pay appropriate
compensation for any injury caused to the defendant (170 (8).
13. Describe provisions
governing the length and cost of proceedings. Provide any available data on the
actual duration of proceedings and their cost.
The
length and the cost of proceedings of IPR disputes are not regulated by
specific provisions. The length and the cost depend on the nature of the
dispute.
(b) Administrative
measures
14. Reply to the above questions
in relation to any administrative measures
There
are no specific administrative measures.
Special Requirements Related to Border
measures
15. Indicate for which goods it
is possible to apply for the suspension by customs authorities of the release
into free circulation, in particular whether these procedures are available
also in respect of goods which involve infringements of intellectual property
rights other than counterfeit trademark or pirated copyright goods as defined
in the TRIPS Agreement (footnote to Article 51). Specify together with relevant
criteria, any imports excluded from the application of such procedures (such as
goods from another member of a customs union, goods in transit or de minimus imports). Do the procedures
apply to imports of goods put on the market in another country by or with the
consent of the right holder and to goods destined for exportation?
The importation
and exportation of counterfeit trade mark goods or pirated copyright goods
or any other goods in contravention of the provisions of the IP Act of Sri
Lanka is prohibited in terms of amended section 101 of the Customs Ordinance
(section 206 of IP Act).
Section 125A (1) of the Customs Ordinance provides
that the importation of counterfeit trade mark goods or pirated copyright goods
or any other goods in contravention of the provisions of the IP Act shall be
prohibited and such goods shall be included among the goods the importation of
which are prohibited under section 43 of the Customs Ordinance and included in
schedule B of the Ordinance as prohibited goods.
Section 125A (2) of the Customs Ordinance provides
that the exportation of the goods referred to in subsection (1) shall be
prohibited and such goods shall be included among the goods the exportation of
which are prohibited under section 44 of the Customs Ordinance and included in
schedule B of the Ordinance as prohibited goods.
The words
"counterfeit trade mark goods or pirated copyright goods or any other
goods in contravention of the provisions of the IP Act" indicate that
the prohibition applies not only to "counterfeit trade mark goods or
pirated copyright goods" but to any other goods which involve
infringements of intellectual property rights as defined in the TRIPS
Agreement.
Exception to importation
(i) The provisions of sections 125A and 125B shall not apply to small
quantities of goods of a non-commercial nature contained in a traveller's
personal luggage or forwarded in small consignments (de minimus imports)-125B (10).
"Personal
Baggage" means the permissible quantities of articles and goods
in-passenger baggage as the Director General of Customs, may from time to time
determine. "Goods in small consignments" means any goods that arrive
as bone fide gift or commercial or trade samples received by an individual or
registered company as determined by the Director General of Customs.
16. Provide a description of the
main elements of the procedures relating to the suspension of the release of
goods by customs authorities, in particular the competent authorities (Article
51), the requirements for an application (Article 52) and various requirements
related to the duration of suspension (Article 55). How have Article 53
(security or equivalent assurance), 56 (indemnification of the importer and of
the owner of the goods) and 57 (right of inspection and information) been
implemented?
Suspension
of goods by Customs Authorities-
Section
125B of the Customs Ordinance contains provisions with regard to the suspension
by the Customs ordinance of the goods imported in violation of intellectual
property rights. Those provisions are as follows:
(1) A
right holder, who has valid grounds to believe that the importation of
counterfeit trade mark or pirated copyright goods or of any other goods in
contravention of the right holder's rights under the Act is taking place, may
make an application in writing to the Director-General, of customs requiring
him to suspend of the release of such goods into free circulation.
(2) A
right holder who makes an application under subsection (1) shall provide
adequate evidence to satisfy the Director-General of Customs that there is a,
prima facie, case of infringement of the right holder's rights under the Act
and supply a sufficiently detailed description of the goods to make them
readily recognisable by any officer of the Customs. (See Article 52).
(3) (a)
The Director-General of customs shall have the power to require an applicant to
provide a security or equivalent assurance sufficient to protect the defendant
and to prevent any abuse. (See Article 53)
(b)
Where pursuant to an application made under subsection (1), the
Director-General of customs suspends the release of any goods into free
circulation, he shall forthwith cause the importer and the applicant to be promptly
notified the suspension.
(4) If
the Director-General of customs fails to receive any notice regarding the
institution of proceedings in respect of the of release of any goods suspended
under subsection (3), within a period not exceeding ten working days after the
applicant has been informed of the suspension as provided for in subsection
(3), he shall cause the goods to be released, provided all other conditions for
importation or exportation have been complied with. (see- Article 55)
(5)
Where pursuant to an application made under subsection (1), the
Director-General of customs has suspended the release of any goods into free
circulation and the period referred to in subsection (4) has expired without
the granting of any provisional relief by a Court, and provided that all other
conditions for importation have been complied with, the owner, importer or
consignee of such goods shall be entitled to have such goods released.
(6) Notwithstanding anything contained in the preceding provisions of
this section, where the suspension of the release of any goods is carried out
or continued in accordance with an order of court, the provisions of subsection
4 of section 170 of Intellectual Property Act, No. 36 of 2003, shall apply.
(7) The
court shall have the power to order the applicant to pay the importer, the
consignee and the owner of the goods, appropriate compensation for any harm
caused to them through the wrongful detention of goods or through the detention
of goods released pursuant to the preceding provisions of this section. (See-
Article 56);
(8)
Without prejudice to the protection of confidential information, the Court
shall have power to give the right holder sufficient opportunity to have any
goods detained by the customs authorities inspected in order to substantiate
the right holder's claims. The Court shall in addition have power to give the
importer an equivalent opportunity to have any such goods inspected. (See
Article 57)
9)
Without prejudice to other rights of action open to the right holder and the
defendant, the Court shall have the power to order the destruction or disposal
of any infringing goods in accordance with the principals set out in section
170 of Intellectual Property Act, No. 36 of 2003. In regard to counterfeit
trade mark goods, the Court shall not other than in exceptional circumstances
allow the re exportation of the infringing goods in an unrelated state or subject
them to a different customs procedure.
17. Describe provisions
governing the length and cost of proceedings. Provide any available data on the
actual duration of proceedings and their cost. How long is the validity of
decisions by the competent authorities for the suspension of the release of
goods into free circulation?
Steps
are being taken to collect data since exact data is presently not available.
18. Are competent authorities
required to act upon their own initiative and, if so, in what circumstances?
Are there any special provisions applicable to ex officio action?
Yes.
Acts on Customs on its own initiatives (Ex. Officio Action) is available. The
Customs shall on its own initiative suspend the clearance of importation or
exportation of goods in respect of which it has acquired prima facie evidence
that an intellectual property right has been, or may be infringed. The
Officers, of Customs shall be exempted from liability only where such action is
taken in good faith (Article 9 of Gazette Extraordinary dated 1523 dated
15.11.2007)
Where
the clearance or exportation of the goods has been suspended by the Customs on
its own initiative, the Customs shall immediately inform the right holder of
the place and date of the suspension of Customs Clearance. The Customs may seek
any assistance or any information including technical expertise and facilities
from the right holder, without any payment, for the purpose of determining
whether the suspended goods are counterfeit, pirated or otherwise infringe an
intellectual property right. (Vide- the same Gazette-Article 10)
19. Describe the remedies that
the competent authorities have the authority to order and any criteria
regulating their use
Disposal
of prohibited goods by the Director-General of Customs
Both
section 43 and 44 declares that the prohibited goods shall be forfeited and
shall be destroyed and disposed of as the Director-General of Customs may
direct. Subject to the right of the defendant to seek remedy by a judicial
authority, the Director-General has the authority to order the destruction or
dispose of infringing goods in accordance with section 125 (3) of the Customs
Ordinance.
Section
125 (3) provides that notwithstanding anything to the contrary in any other
law, such prohibited goods in contravention of IP Act shall be disposed of
outside the channels of commerce or if such disposal damages the interests of
the owner of any right protected under the Act, be destroyed.
Criminal Procedures
20. Specify the courts which
have jurisdiction over criminal acts of infringement of IPRs.
The
Magistrate's Court has jurisdiction.
21. In respect of which
infringements of which intellectual property rights are criminal procedures and
penalties available?
The
following are only infringing offences:
Offence
|
Penalty
|
Other sanctions
|
Infringement of copyright
178
(1) Any person who willfully infringes any of the rights protected
under the provisions relating to copyright and related rights shall be liable
on conviction
|
For a fine not exceeding Rs. 500000/- or imprisonment for a term not
exceeding 6 months or to both. In the case of second or subsequent
conviction, such fine or term of imprisonment or both may be doubled.
|
The Magistrate may, whether the alleged offender is convicted or not,
order that all copies of the work and all implements used for the
infringement, or all plates in the possession of the alleged offender, which
appear to him to be infringing copies, or plates or implements used for the
purpose of making infringing copies, shall be destroyed or delivered up to
the owner of the right, or otherwise dealt with in such manner as the
Magistrate may think fit.
|
2) Any person knowing or having reason to believe that copies have
been made in infringement of the rights protected under Part II of the Act,
sells, displays for sale, or has in his possession for sale or rental or for
any other purpose of trade any such copies, shall be guilty of an offence and
shall be liable on conviction
|
for a fine not exceeding rupees five hundred thousand or to
imprisonment for a term not exceeding six months or to both such fine and
such imprisonment, and in the case of a second or subsequent conviction, to
double the amount of a such fine or term of imprisonment or both.
|
(3) Any person knowingly or having reasons to believe that he is in
possession or has access to a computer program infringing the rights of
another person, and willfully makes use of such program for commercial gain,
shall be guilty of an offence and shall be liable on conviction by a
Magistrate
|
for a fine not exceeding rupees five hundred thousand or to
imprisonment for a period of six months or to both such fine and
imprisonment.
|
Attempted infringement of copyright and related rights
22 (2) (g)
Any person who infringes or attempts to infringe any of the rights
protected under copyright or related rights shall be guilty of an offence and
on conviction be liable
|
to any penalty as provided above
|
|
Infringement of Industrial Design
179.
Any person who willfully infringes the rights of any registered
owner, assignee or licensee of an Industrial Design shall be guilty of an
offence and shall be liable on conviction after trial before a Magistrate
|
to a fine not exceeding five hundred thousand rupees or to
imprisonment for a term not exceeding six months or to both such fine and
such imprisonment, and in the case of a second or subsequent conviction to
double the amount of such fine or term of imprisonment or both.
|
|
Infringement of Patents-
181
Any person who willfully infringes the rights of any registered
owner, assignee or licensee of a patent shall be guilty of an offence, and
shall be liable on conviction after trial before a Magistrate to a fine not
exceeding five hundred thousand rupees or to imprisonment for a term not exceeding
six months or to both such fine and such imprisonment, and in the case of a
second or subsequent conviction to double the amount of such fine or term of
imprisonment or both.
|
to a fine not exceeding five hundred thousand rupees or to imprisonment
for a term not exceeding six months or to both such fine and such
imprisonment, and in the case of a second or subsequent conviction to double
the amount of such fine or term of imprisonment or both.
|
|
Infringement of Marks.
184. Any person who willfully infringes the rights of any registered
owner, assignee or licensee of a Mark, shall be guilty of an offence and
shall on conviction after trial before a Magistrate be liable
|
to a fine not exceeding five hundred thousand rupees or to
imprisonment for a term not exceeding six months or to both such fine and
such imprisonment and in the case of a second or subsequent conviction to
double the amount of such fine or term of imprisonment or both such fine and
imprisonment.
|
|
Offences by bodies of corporate
187. Where an offence under this Act has been committed by a body
corporate, every person who at the time of the commission of the offence was
a Director- General, Manager, Secretary or other similar officer of that body
shall be deemed to be guilty of such offence, unless he proves that the
offence was committed without his consent or connivance and that he exercised
all due diligence to prevent the commission of the offence.
|
to a fine not exceeding five hundred thousand rupees.
|
|
Lay-out designs of integrated circuits-
157-Any person who knowingly or intentionally contravenes the
provisions of Sec 148 that recognizes the exclusive rights attached to a
layout shall be guilty of an offence.
|
to a fine not exceeding five hundred thousand rupees or to imprisonment of either description for a
term not exceeding 6 months or to both
such fine and imprisonment and second or subsequent conviction to double the
amount of such fine or term of imprisonment or both such fine and
imprisonment.
|
Seizure, forfeiture, destruction of such articles or any material or
implement, which have been used for the commission of offence.
|
22. Which public authorities are
responsible for initiating criminal proceedings? Are they required to do this
on their own initiative and /or in response to complaints?
(i) Prosecution by Police Officers- (Police
Plaints) Sec. 136 (1) (b) of the Criminal Procedure Code empowers a Police
Office to institute criminal prosecution in a Magistrate's Court.
(ii) Prosecution by a private individual- (Private
Plaints) - Every right holder by way of a private plaint (se. 136 (1) (a)
Criminal procedure code empowers every person to make a complaint of an offence
to a Magistrate's Court.
(iii) Even any member of the public may make a
complaint to the Police and the Police may initiate prosecution based on such
complaint.
23. Do private persons have
standing to initiate criminal proceedings and, if so, who?
Yes, a
complaint in criminal proceedings can be made by the owner of the rights or a
duly appointed agent of the owner as the complainant (ex. power of attorney
holder).
24. Specify by category of IPR
and type of infringement where necessary, the penalties and other remedies that
may be imposed:
(a) Copyright-infringement
(b) Patent
-infringement
(c) Industrial
Designs-infringement
(d) Trademarks-infringement
(e) Lay-out
designs of integrated circuits-Infringement
- imprisonment: See above
- monetary fines: See above
- seizure, forfeiture and destruction of
infringing goods and materials and implements for their production:
(i) a
Magistrate may make issue
(a) summons;
197 (1) (a)
(b) search
warrants to search counterfeit goods 197 (1) (b)
(ii) Seizure- a Police officer upon such warrant may search and seize
such goods and bring them before the Magistrate 197 (2) (c)
(iii) Forfeiture-
of goods used in the offence- 197 (2)
(iv) disposal of forfeited goods and awarding proceeds of such sale to
innocent party for any loss he may have sustained in dealing with such property 197 (3).
25. Describe provisions governing
the length and any cost of proceedings. Provide any available data on the
actual duration of proceedings and their cost, if any.
Steps are being taken to collect data from Magistrate's Courts.
__________