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
WIPO currently has 189 member states,  administers 26 international treaties,
 and is headquartered in Geneva, Switzerland. The current Director-General of
WIPO is Francis Gurry, who took office on October 1, 2008. 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
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
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
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
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.
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.
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,
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, 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 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.
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 and gives power
to the custom officials to confiscate goods imported or exported, unlawfully or
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.
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 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.
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.
- PCT- The International Patent System
- Madrid- the International Trademark System
- Hague - The International Design System
- Lisbon -The International System of Appellations of Origin
- Budapest - The International Microorganism Deposit System
- The WIPO Intergovernmental approach on Intellectual Propertyand Genetic
7. Resources, Traditional Knowledge and Folklore
- Developing a National Strategy on Intellectual Property, Traditional
Knowledge and Traditional Cultural Expressions.
- Intellectual Property and Arts Festivals.
- Intellectual Property and Traditional Handicrafts.
- Customary Law and Traditional Knowledge.
- Alternative Dispute Resolution for Disputes Related to Intellectual
Property and Traditional Knowledge, Traditional Cultural Expressions and
- Documentation of Traditional Knowledge and Traditional Cultural
- Section 134(2), Trade Mark Act, 1999.
- Section 135, Trade Mark Act, 1999
- Section 103, Trade Mark Act, 1999
- Section 64. Copyright Act, 1957
- Section 53. Copyright Act, 1957
- Section 104, Patent Act, 2000
- Section 20, Geographical Indication of Goods (Registration and
Protection) Act, 1999
- Chapter VIII, Geographical Indication of Goods (Registration and
Protection) Act, 1999
- Section 11 (2) (n), The Customs Act, 1962
Written by: Sayed Qudrat Hashimy,
International Law Students
E-mail : sayedqudrathashimy[at]gmail.com, Phone no. +91 9008813333