2

3

4

5

6

7

Asian Justices Forum on Strengthening Court Capacity on Environmental Adjudication

Manila 4th  to 7"' July, 2007

The word environment is a broad spectrum which brings within its hue hygienic atmosphere and ecological balance. Saving this planet Earth is now of utmost concern to the entire humanity. The world is witnessing a global crisis of environmental degradation. The future of the earth is entirely linked with the sustainable development that may take place in the various countries, both developed and developing. They have to adopt a visionary approach in consonance with the needs of the man and the earth. There is human threat to air, water and land.

India had been under the colonial rule for about two centuries and even prior to that there were minor kingdoms which did not pay attention to any sort of environmental concerns. After the independence the primary concern of the administrators was to eradicate poverty. Millions of people were below the poverty line and the literacy rate was also very poor. The population growth was at alarmingly high rate. All these factors contributed to serious environmental degradation and the persons who were mostly affected by this environmental degradation were the poor and the disadvantaged sections of the society. They were the first victims of the poor sanitation, bad air, contaminated water, scarce food, fuel and fodder. For millions of Indians, their only wealth and common property resources were threatened by environmental degradation.

The post-independence India was concerned with equity and growth and the environmental concern was added only as a third dimension. Thousands of people migrated to cities in search of job and basic living conditions. This resulted in massive increase in population in the cities. The concern for poor and needy people was voiced by the then Prime Minister, Mrs. Indira Gandhi at the United Nations Conference on the Human Environment held at Stockholm on 14* June, 1972. She said :

"On the one hand the rich look askance at our continuing poverty —-- on the other, they warn us against their own methods. We do not wish to impoverish the environment any further and yet we cannot for a moment forget the grim poverty of large numbers of people. Are not poverty and need the greatest polluters? For instance, unless we are in a position to provide employment and purchasing power for the daily necessities of the tribal people and those who live in or around our jungles, we cannot prevent them from combing the forest for food and livelihood; from poaching and from despoiling the vegetation. When they themselves feel deprived, how can we urge preservation of animals? How can we speak to those who live in villages and in slums about keeping the oceans, the rivers and the air clean when their own lives are contaminated at the source? The environment cannot be improved in conditions of poverty. Nor can poverty be eradicated without the use of science and technology."

And she added:

"The ecological crises should not add to the burdens of the weaker nations by introducing new considerations in the political and trade policies of rich nations. It would be ironic if the fight against pollution were to be covered into another business, out of which a few companies, corporations, or nations would make profit at the cost of the many."

The 1972 Stockholm Conference marked a watershed in the history of environment management in India. Prior to 1972 in India, the environmental concerns such as sewerage disposal, sanitation and public health were dealt with by federal ministries and each pursued their own objectives in the absence of a proper coordination system. The twenty- fourth UN General Assembly decided to convene a conference on the human environment in 1972, and requested a report from each member country on the state of the environment. As a result of these reports, greater coordination was achieved regarding the environmental policies and programmes. Thereafter, in the sixth five-year plan an entire chapter on Environmental and Development was included that emphasized sound environmental and ecological principles in land use, agriculture, forestry, marine exploitation, mineral extraction, fisheries, energy production and human settlements. It provided environmental guidelines to be used by administrators and resource managers when formulating and implementing programmes, and lay down an institutional structure for environmental management by the Central and State governments. The Planning Commission was set up as an expert committee to formulate long term sectoral policies. It also noted that many environmental problems were continuing to cause serious concern, for example the loss of topsoil and vegetative cover, the degradation of forests, continuing pollution by toxic substances, careless industrial and agricultural practices, and unplanned urban growth. It acknowledged that environmental degradation was seriously threatening the economic and social progress of the country and

that our future generations may discover that life support systems have been damaged beyond repair. The Role of the Courts in India The shortcomings of the executive in coping with the pressures on the environment brought about by change in the country’s economic policies had thrust the responsibility of environmental protection upon the judiciary. This has meant that in India, the Judiciary in some instances has had to not only exercise its role as an interpreter of the law but has also had to take upon itself the role of constant monitoring and implementation necessitated through a series of public interest litigations that have been initiated in various courts. However, in the defence of the executive, it must be said that India has actively participated in several multilateral treaties and has been active in admitting its commitments to the environment in accordance with the general principles of International Law while incorporating them into its national laws. Much of the difficulty of the executive in implementing these laws can perhaps be attributed to resource constraints as well. In its efforts to protect the environment, the Supreme Court and the Indian Judiciary in general have relied on the public trust doctrine, precautionary principle, polluter pays principle, the doctrine of strict and absolute liability, the exemplary damages principle, the pollution fine principle and inter—generational equity principle apart from the existing law of the land. Another guiding principle has been that of adopting a model of sustainable development. The consistent position adopted by the courts as enunciated in one of its judgmentsl has been that there can neither be development at the cost of the environment or environment at the cost of development. Thus, the Supreme Court recognizes the need for development and proper utilization of our natural resources for the betterment of our society. However, this cannot be done at the expense of the environment itself. l Goa Foundation, Gon v. Diksha Holdings (Pvt.) Ltd. [AIR 2001 sc 184]

The courts in India have, thus, played a dynamic role in preserving the environment and eco—system. In a series of cases, the superior courts of India issued various directions and orders to prevent the environmental degradation. To understand the role of the courts in this regard, the structure of the judicial system and also the constitutional and statutory provisions are to be taken note of. It is true that there were various laws even in the nineteenth century to prevent vandalism of human beings. The Indian Penal Code which came into existence in 1860 imposes fine on a person who voluntarily fouls the water of any public spring or reservoir. The Code penalizes acts with poisonous substances that endanger life or cause injury and proscribes public nuisance. The Indian Easements Act 1882 protected the riparian owners against unreasonable pollution by upstream uses. The Indian Fisheries Act passed in 1897 penalises the killing of fish by poisoning water and by using explosives. Thereafter series of enactments were passed to protect the purity of air and water and degradation of forests. But the provisions contained in these enactments were not seriously being implemented by the authorities. In December, 1984, India witnessed one of the greatest man-made calamities in Bhopal, the capital city of the State of Madhya Pradesh, from a factory owned by Union Carbide India Limited. Methyl Isocyanate, a highly poisonous gas leaked out and it resulted in the death of more than two thousand persons who were mostly the hutment-dwellers in the near vicinity of the factory. The air carried the leaked deadly poisonous gas to the thickly populated areas and about two lakh people suffered various bodily injuries. The Union Carbide India Limited is a company incorporated in India by Americans. The Bhopal Gas Tragedy was an eye opener and the protection of environment was taken as a serious matter. The Indian Parliament passed the Environment Protection Act, 1986. The

Environment Protection Act empowers the Central Government to take measures to protect and improve the environment. Rules were also framed for implementation of the provisions of the Act. The various provisions of this Act give power to the Central Government to take measures to protect and improve the environment and they include : O Power to take all measures necessary for purpose of protecting and improving the quality of environment and preventing, controlling and abating environmental pollution, O Coordination of actions of state governments, officers and other authorities under any law, O Planning and executing of nationwide program for prevention, control and abatement of environmental pollution, O Laying down standards for quality of environment in its various aspects, O Laying down emission standards from various sources, O Restriction of areas in which any industry, operations etc. will not be carried out, O Inspection of plants etc., O Constitution of authorities, O Issue of directions,

o Lay down rules to regulate environmental pollution, o Emissions to meet standards, o Power of entry and inspection, 6 Power to take samples. It may also be noticed that there are certain important constitutional provisions which give the citizens the right to approach the High Courts as well as the Supreme Court of India to protect their fundamental rights. Article 226 of the Constitution gives the right to citizens to approach the High Court to enforce their fundamental rights and the High Courts are given the power to issue various writs. Article 32 of the Indian Constitution could be invoked by the citizens for enforcement of rights conferred by Part III of the Constitution, namely, the Fundamental Rights. It is also to be noted that Article 21 of the Constitution guarantees one of the important fundamental right to the citizens and says that no person shall be deprived of his life and personal liberty, except according to procedure established by law. This "right to life" contained in Article 21 has been given a very wide interpretation by the Supreme Court of India. Article 48-A, which is one of the Directive Principles of State Policy states that the State shall endeavour to protect and improve the environment and to safeguard the forests and wild life of the country. Part IV—A was added to the Constitution by the Constitution (42"'j Amendment) Act, 1976 and Article 51—A(g) thereof specifically says that it shall be the duty of every citizen of India to protect and improve the natural environment including forests, lakes, rivers and wild life, and to have compassion for living creatures. Till 1980, not much contribution was made by the courts in preserving the environment. One of the earliest cases which came to the

Supreme Court of India was Municipal Council, Ratlam vs. Vardhichand AIR 1980 SC 1622. Ratlam is a city in the State of Madhya Pradesh in India. Some of the residents of the municipality filed a complaint before the Sub—Divisional Magistrate alleging that the municipality is not constructing proper drains and there is stench and stink caused by the excretion by hereby slum—dwellers and that there was nuisance to the petitioners. The Sub—Divisional Magistrate directed the municipality to prepare a plan with six months to remove the nuisance. The order passed by the SDM was approved by the High Court. The Municipality came in appeal before the Supreme Court of India and contended that it did not have sufficient funds to carry out the work directed by the SDM. The Supreme Court of India gave directions to the Municipality to comply with the directions and said that paucity of funds shall not be a defence to carry out the basic duties by the local authorities. Thereafter, series of cases were filed before the Supreme Court and there was a dynamic change in the whole approach of the courts in matters concerning environment. The Supreme Court of India interpreted Article 21 which guarantees the fundamental right to life and personal liberty, to include the right to a wholesome environment and held that a litigant may assert his or her right to a healthy environment against the State by a writ petition to the Supreme Court or a High Court. The powers of a High Court under Article 226 or those of the Supreme Court under Article 32 are not confined to the prerogative writs derived from English law, but extended to directions or orders or writs in the nature of habeas corpus, mandamus, prohibition, quo warranto and certiorari. The term "writs in the nature of" widened the court’s discretionary powers in granting relief by releasing Indian courts from the procedural technicalities that govern procedures and rules in English law. The courts are empowered to give declaratory relief, issue an injunction or quash an action without recourse to specific writs and this enabled the courts

in choosing proper relief and the court can issue a writ, a mandamus to command action by a public authority when an authority is vested with power and wrongfully refuses to exercise, to undo what has been done in contravention of a statute. Writs could be issued against an administrative, judicial or quasi—judicial authority. An applicant seeking a mandamus must show the duty sought to be enforced is a public duty, a duty created under the constitution, a statute or some rule of common law and that duty is mandatory and not discretionary. The broad language used in Article 32 and 226 of the Constitution enables the courts to fashion relief and pass orders consistent with their own assessment of the public interest and principles of equity. By the second half of 1970s, the public interest litigation became a model litigation relaxing the standard of standing. The public interest litigation altered the landscape and the role of the higher judiciary in India. The Supreme Court and the High Courts dealt with series of public grievances or flagrant human right violations by the State. In a public interest case, the subject matter of litigation is typically a grievance against the violation of basic human rights of the poor and helpless and the petitioner seeks to champion a public cause for the benefit of all society. Traditionally, only a person whose rights were injured was entitled to seek remedy. But that traditional view of standing prevented the grievances of poor from being heard by court. They were denied access to justice because of their poverty and the poor and under-privileged suffered economic reprisals from the dominant sections of the community. In 1981, a seven Judge bench of the Supreme Court gave a definite opinion regarding the standing and enlarged the scope of what has been termed as "representative standing". The court held that it may therefore now be taken as a well established that where a legal wrong or legal injury is caused to a person, or to determinate class of persons by reason of violation of any constitutional or legal right or any burden is imposed in contravention of any

constitutional or legal provision or without authority of law or any such legal wrong or legal injury or legal burden is threatened and such person or determinate class of persons is by reason of poverty, helplessness or disability of socially or economically disadvantaged position, unable to approach the court for relief, any member of the public can maintain an application for an appropriate direction, order or writ in the High Court under Article 226 and in case of any fundamental right of such person or determinate class of persons, in the Supreme Court under Article 32 seeking judicial redress for the legal wrong or injury caused to such person or determinate class of persons.. The above decision enlarged the scope of the litigation and a large number of cases came to the Supreme Court of India to protect and preserve the ecology and environment. It is interesting to note some of the decisions of the Supreme Court of India which gave various directions to help protect the environment from further degradation. But for the directions by the Supreme Court in these cases, there would have been large scale deforestation and the air and water would have been polluted to such an extent that life of human beings would have been become miserable. The role played by the Supreme Court of India in protecting the environment can be glanced through some of its decisions. One Mr. M.C. Mehta, a lawyer practicing in the Supreme Court filed series of public interest litigations. One such case concerned shifting of caustic chlorine and sulphuric acid plants located in a thickly populated area in Delhi. From that very plant, oleum gas leaked out and it caused some panic among the neighbourhood residents. The court expanded the scope of Article 32 and said that in appropriate cases the court can award compensation to the affected party. The court also said that where an enterprise is engaged in a hazardous or inherently dangerous activity and harm results to anyone on account of an accident in the operation of such hazardous or inherently dangerous activity, the enterprise is strictly and

absolutely liable to compensate all those who are affected by the accident and such liability is not subject to any of the exceptions which operate vis-a- vis the tortuous principles of strict liability under the Rylands vs. Fletcher. The very same petitioner filed series of other public interest Iitigations concerning vehicular pollution, illegal mining, pollution of Ganga water, pollution of water by tanneries, Taj Mahal. In many of these cases, Expert Committee were constituted and the court acted on these Expert Reports and issued various directions. In the case of Taj Mahal, directions were issued to protect that monument from pollution by air. Vehicular traffic was restricted in that area and directions were issued to clean the structure. To ensure ecological stability, at least thirty per cent of the nation's area should be under adequate forest cover. There was large scale deforestation and the forest cover dwindled to less than eighteen per cent. Originally, the forests were placed on the State List whereby the States alone could make legislation concerning forests. By 1976, the forests were placed under the Concurrent List and the Parliament also could make legislations on that subject. Despite the major steps taken by the Governments, the deforestation continued unabatedly. In 1996, Supreme Court issued sweeping directions to oversee the enforcement of Forest Laws across the nation. In T.N. Godavarman Tirumalpad vs. Union of India, Supreme Court of India issued various directions. The case was initially filed in the Supreme Court to give effect to the provision of National Forest Policy 1988. The Court gave notice to the Union Government and State Governments. Forest must be understood according to its dictionary meaning and the description covers all statutory recognized forest, whether designated as ‘reserved’, ‘protected’ or not, including any area recorded in Government records as forest. Forest Conservation Law has also been significantly been impacted through another case, Centre for Environmental Law (WWF) — India v.

Union of Indiaz concerning national parks and sanctuaries. While hearing this case, the Supreme Court through one of its interim orders on 13—11— 2000 has restrained all State Governments from de—reserving national parks, sanctuaries and forests. The impact of both these judgments has been that : all on—going activities must be stopped — without the prior approval of the Central Government. There would be complete ban on felling of trees. Felling of trees in allforests is to remain suspended except in accordance with the working plans of the State Government, as approved by Central Government. Where permit system is in vogue, the Department of Forests or State Forest Corporation alone can cut trees. There shall be complete ban on movement of cut trees and timber from the North Eastern States to other parts of the country, either by rail, road or waterways. Workers in the wood-based industries should be paid their usual wages. Ecologically-sensitive area is to be found out and totally excluded from exploitation. In effect, all State Governments have been prohibited from using forest lands for non—forest purposes without the prior approval of the Central Government in accordance with the Forest Conservation Act, 1980. Through the same order the Court has also stayed all non-forest activities that were being carried out without the prior approval of the Central Government. Resultantly, the power to denotify/dereserve national parks and wild life sanctuaries that vested with the State Governments was transferred to the National Board for Wild Life through an Amendment that came into effect from 2003. By virtue of the court’s orders even the National Board for Wild l.ife cannot exercise this power without the approval of the Supreme Court. It may also be noted that the National Commission that is set up to review the working of the Constitution of India in its report submitted to the Central Government has recommended the addition of a separate article (30- D) in the Constitution of India which would confer the stature of a

fundamental right within the Indian Constitution to the right to save drinking water, clean environment etc. Thus, even a cursory study of the judgments of the Indian courts especially the Supreme Court would reflect the consistent commitment of the courts towards the protection of the environment. Very often the courts have had to not only lay down the law but also closely monitor its implementation due to the political compulsions of the Government. The executive needs to show stronger commitment towards implementation of environment related laws. However, its needs to be appreciated that the efforts of the courts can only achieve marginal success unless there is social, political and economic change in the Government as well as of people towards adhering to a model of sustainable development. Perhaps the solution towards protecting and utilizing nature’s bounty in a sustainable manner lies in an introspection towards the life styles that modern world is increasingly adopting. Concerned citizens of the world must begin by advocating a reduction of materialistic lifestyles based on the philosophy of the developed world, leading a life in harmony with nature, having a low ecological footprint and adopting solutions towards equitable growth and development in a manner that does not harm the environment. A recent newspaper report3 source to the AFP news agency quotes an article from the Science Journal brings into sharp focus some mind boggling facts. The report states that as of 1995 only 17% of the worlds land area remains truly wild — with no human populations, crops, road access or night- time light detectable by satellite. l-lalf of the world’s surface area is used for crops or grazing; more than half of all forests have been lost to land conversion; the largest land mammals on several continents have been eliminated; shipping lanes crisscross the oceans. Due to extensive damming, nearly six times as much water is held in artificial storage worldwide as is free—flowing. Subtle and not so subtle changes brought about by man upon the environment are evident everywhere. The report states the natural

selection has been supplanted by human selection, meaning that certain species — such as companion pets — thrive, while others — such as river trout - have been altered specifically for human consumption often to their detriment. And, thus, altering ecosystems has left many species vulnerable to disturbances and less resilient. Such shrilling facts ought to serve as a constant reminder to us to maintain our commitment to the protection of our environment. The contribution of the Supreme Court of India in protecting the environment and ecology, forest, wild life, etc. has been phenomenal. Despite the limitations of jurisdiction, the Court played a vital role in this regard. More importantly what is needed from an environmental angle is a vision for the future. Vl/e have got enough laws to protect the environment, but its implementation is in the hands of administrative authorities. Good governance free from corruption is the basic need to protect the environment. The words of Justice Frankfurter are apt, quoting "An onerous obligation ........ we owe to posterity ...... clean air, clean water, greenery and open space. They ought to be elevated to the status of birth right of every citizen."

Introduction :-In India plant breeding was confined to the public sector.  This was adopted keeping in mind the food security of Indian population. It did yield good results by way of green revolution and increase in development of new crop varieties. There was also no demand for IPR protection since the research activity was confined to public sector. Till recently agriculture was not treated as an industrial activity.  This scenario got changed in late 1980s, when foreign seed corporations were allowed to enter Indian market, and this development gave rise to demands for IPR protection. The protection of plant varieties and Farmer’s Rights Act 2001 is an outcome of the pressure of the foreign players in the India market using WTO as an effective tool. This is evident from the fact that the Act is structured keeping in mind the UPOV, 1991 even though India is not bound to follow the same. It is clear from Article 27(3) (b) of the TRIPS agreement that a country like India has three  options with reference to protecting plant varieties. The first one is to treat new plant varieties as inventions and provide patent protection  under the  patent law following the norms in the  TRIPS.  The second option is to develop an “effective”  sui generic law for the protection of plant varieties. The  TRIPS has not laid down any guidelines for the sui generic law.  Probably UPOV could be accepted as laying down general norms on a possible sui generis law.  But the liberal norms in  the 1978 version of UPOV were revised in 1991 and the norms were tightened in favour of the breeders. It is however argued that the protection based on the norms laid down in UPOV 1991 is similar to that of patent protection the reasons being the new criteria for protection, procedure for registration, nature of the rights of the breeders, substantial watering down of the exemptions given to the researchers and farmers’ etc.  It is relevant to note here that since the word “effective” sui generic is used  in TRIPS it is apprehended that countries like India are bound to follow UPOV, 1991 for  providing plant varieties  protection. The third option is to have a law that is a combination of “patent and sui generis” for which there is no model available in the world.

            OBJECTS OF THE  ACT OF 2001

As discussed above, the idea for the plant varieties protection only came into picture after the foreign players came into market.  So that main motive of passing the act was to comply with the requirements of the trips agreement. The preamble of the  Act also states that this law is introduced primarily to satisfy the obligation under Article 27(3) (b) of the TRIPS  Agreement. Article 27(3) (b) is introduced to exclude certain biotech products and processes from patent  protection.  If any examines the history of this provision, it is clear that this was introduced as a temporary arrangement. This is made clear by the mandatory review of this clause after expiry of 4 years from the date of entry into force of the TRIPS Agreement i.e. 31.12.1999. Since the  review  is mandatory there is bound to be changes in the provision.  It is however not mandatory for a developing country  to introduce the  law before review.  More over, Article 65 of the TRIPS gives transitional period to facilitate the developing countries to make necessary changes in the domestic industrial policy before new laws  are introduced.  In reality there  is no difference between a patent law and the sui generic law introduced in India considering the rights given to the breeders of the new plant varieties. Considering our domestic problems we should have delayed the enactment of the law at least till the review process is over.  The main feature of the Act is the provision to claim IPRs over varieties through a system of registration. The Act allows four types of varieties to be registered reflecting the interests of actors. New Variety, Extant Variety, Essentially Derived Variety and Farmers’s variety.

The unique features of the PPVFR Act are :-

1. The protection for new plant varieties,  especially derived varieties, extant varieties and farmer’s varieties. Farmers varieties and  extant varieties need not fulfill the requirements of newness.
2. Safeguard for genetic use restriction technology such as terminator gene
3. Recognising farmer’s as innovators, conserver, breeder, preserver of plants and plants varieties in addition to cultivators
4. Simplified procedure for protection of farmer’s variety
5. Special arrangement for benefit sharing
6. Creation of gene fund conservation of agro bio-diversity.
7. Special provision for compensation to the farmers in case material supplied is not meeting the expected performance.
8. Waiver of fees to farmers
9. Failure to supply adequate material to farmers at a reasonable price is made a ground for  compulsory license.
10. Establishment of tribunal board.

Registration and creation of the authority
Under section 3 of the Act, the Central Government is empowered to establish an Authority to be known as the Protection of Plant Varieties  and Farmers’ Rights Authority. This Authority  shall be a body corporate, having perpetual succession and  a common seal with power to acquire, hold and dispose of properties, both movable and immovable, and to contract, and shall by the said name sue and be sued.  Thus, the Protection of Plant Varieties and Farmers’ Rights Authority shall be a juristic person. The Authority  shall consist of a Chairperson (to be appointed by the Central Government) and fifteen members. The Chairperson shall be a person of outstanding caliber and eminence with long  practical experience to the satisfaction of the Central Government especially in the field of plant varietal  research or agricultural  development. The Chairperson shall be the Chief Executive of the Authority and shall exercise such powers and perform  such functions as may be prescribed. As regards the functions of the Authority, it shall be the duty of the Authority to promote the encouragement for the development of new varieties of plants  and to protect the rights of the farmers and breeders.

Under Section 12 of the Act, the Central Government is empowered to establish a Registry known as the Plant Varieties Registry. The head office of the Plant Varieties Registry shall be  located in the head office of the Protection of Plant varieties and Farmers of Rights Authority. The Authority has the  power to establish branch offices of the Registry to facilitate the registration of the plant varieties.

A Registrar – General of Plant Varieties shall be appointed by the Authority.  The Authority may appoint such number of Registrars as it thinks necessary for registration of plant varieties under the  superintendence and direction of the Registrar General.  There shall  be a seal of the Plant Varieties Registry.

Registration of Plant Varieties
Protection of a new variety is based on the  criteria of novelty, distinctiveness, uniformity and stability. It is important to note that the conditions stated in  this section are for a new variety.  But as far as extant variety is concerned the condition of novelty is not required as the criteria of distinctiveness, uniformity and stability will be determined as specified under the  regulations  made by the Authority.  There is no mention about the  about the conditions to be followed in case of farmers’ variety. It is clear from the definition of variety that it includes farmers’ variety as well. This presupposes that for the  registration of a farmers’ variety the conditions of novelty, distinctiveness, uniformity and stability must be followed. But it is made clear that the farmer is not expected to give the details of these conditions in his application form.

The criteria of novelty, distinctiveness, uniformity and stability are same as that in UPOV, 1991. The test of novelty is based on the commercial exploitation of the propagating or harvested material before seeking protection.  The permissible period of commercial exploitation before seeking protection differ  with reference to exploitation in India and abroad.  As far as India is concerned such commercial exploitation must be within one year before the date of filing the application for protection. In case of exploitation outside India it is six years for trees or vines and four years in other cases. It is difficult to appreciate why such a distinction is made. This means that varieties introduced in the foreign market four years prior to the commencement of the Act can be protected inIndia. The only condition for this is that the variety should not be comnmercially exploited in India with the consent of the breeder before one  years of the commencement of the Act.  This benefit is denied to an Indian breeder who has introduced a veriety before one year of the commencement of the Act. There is no mandate in TRIPS to give such a benefit to the foreign breeders.

1. NEW VARIETY
Definition : Variety  means a plant grouping except microorganism defined by certain characteristics under the Act.   It is new if it meets specified criteria.
Criteria : Novelty, distinctiveness, uniformity and stability
Rights granted :  Exclusive right for the breeder to produce, sell, market, distribute, import or export the variety.
Duration : Initially 9 years renewable upto  total of 18 years for trees and vines. Initially 6 years renewable up to total of 15 years for other crops.

1. EXTANT VARIETY

Definition : A veriety available  in India  which is notified under Section 5 of the Seeds Act, 1966; or a farmers of variety; or a veriety about which there is  common knowledge; or any other variety which is in the public domain.
Criteria : Distinctiveness, uniformity, stability and as specified under the regulations

Rights granted : Exclusive right to produce, sell, market, distribute, import or export the variety if claimed by the breeder and in cases where not claimed by breeder, the Central Government or State Government shall have the right.

Duration : 15 years from the date of notification of that variety by the Central Government under Section 5 of the Seeds Act, 1966.

FARMERS VARIETY

Definition; A variety which has traditionally cultivated and evolved by the farmers in their fields; or is a wild relative or land race of a variety about which the farmers possess the common knowledge.

Criteria: Unclear if distinctness, uniformity and stability would be the criteria or not Rights granted: Unclear.

Duration: Unclear.

1. ESSENTIALLY DERIVED VARIETY

Definition: A variety predominantly derived from such initial variety, or from a variety that itself is predominantly derived from such initial variety, which retaining the expressions of the essential characteristics that result from such initial variety, and conforms (except for the differences which result from the act of derivation) to such initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of such initial variety. Criteria: General or species specified by the Central Government and tests to determine if it is an Essentially Derived Variety. Rights granted: same rights as a breeder of a new variety provided that the authorization by the breeder of the initial variety to the breeder of essentially derived variety may be subject to terms mutually agreed upon by both the parties.

Duration: Initially 9 years renewable up to total of 18 years for trees and vines. Initially 6 years renewable up to total of 15 for other crops.

TERM OF PROTECTION, RIGHTS AND TRANSFER OR RIGHTS –The term of protection fixed by law as per section 24 of the act for a registered variety is different for different items. In case of trees and vines it is 18 years from the date of registration. In case of extant variety, it is 15 years from the date of notification of that variety by the Central Government under section 5 of the Seeds Act 1966. the duration of the protection of farmers, variety is not expressly mentioned. It is stated that in all other cases it is 15 years from the date of registration of the variety. This presupposes that the provision in applicable to farmers’ variety and other extant varieties as well since the definition of variety includes extant variety and farmers’ variety. During the existence of a valid registration for a variety issued under the Act the breeder or his successor, his agent or licensee shall have the exclusive right to produce, sell, market, distribute, import or export the variety. It is expressly stated that in case of extant variety the ownership of the rights granted under this provision will be with the Central Government or the State Government as the case may be if the breeder or his successor failed to establish his right. This implies that these rights and obligations are available to farmers’ variety, variety about which there is common knowledge and other varieties in the public domain that are registered as extant variety. Since the rights granted under this section are not confined to new varieties it presupposes that the farmers varieties registered by the farmers are also entitled for these rights.

PROTECTION OF THE INTEREST OF FARMERS AND LOCAL COMMUNITIES

One of the important objectives of this sui generic law is to protect the interest of traditional farming communities and farmers. To achieve this, a separate chapter entitled Farmers Rights is included in the Act. The provision for registration of new variety developed by farmers, registration of farmers’ variety, recognition of rights of farmers benefit sharing, paying compensation to communities for their contributions, immunity from prosecution in case of a case of innocent infringement, payment of annual fee by the breeders and the creation of a Gene Fund are the special provisions included in the Act. It is expressly provided that the farmer who bred or developed a new variety is entitled for registration and protection in like manner as a breeder of a new variety. To facilitate this the definition of the term breeder expressly included a farmer or group of farmers. The term farmer is also defined to include persons who actually cultivate crops as well as persons cultivating land through other persons. A person who conserves, preserves severally or jointly with any person any wild species or traditional varieties or add value to it through selection and identification of their useful properties are also treated as farmers. One of the intentions of this provision appears to be to reward the value addition by the traditional communities and farmers. But there is no special provision to protect their value addition. The only way to get protection under the law is by registration of the new variety satisfying the criteria of novelty, distinctiveness, stability and uniformity that too by the written description of the new variety. The norms are based on the modern scientific methods of breeding rather than traditional of the new variety. The norms are based on the modern scientific methods of breeding rather than traditional one. The conditions could be satisfied only if one does laboratory based research. This may not be possible for farmers since they are not doing any scientific laboratory research to add value to the wild or traditional varieties. The right of the farmer also include the right to register a farmers’ variety. It is expressly provided that the breeder of an essentially derived variety derived from the farmers’ variety must take the consent form the farmer or group of farmers or community of farmers who have made contribution in the preservation or development of such variety for the purpose of enjoying the breeders right in the essentially derived variety. It implies that the farmers can include terms and conditions while granting consent at least of essentially derived variety from their traditional varieties. But it seems that this interpretation would conflict with the provisions of benefit sharing, compensation etc. The Act also provides the farmer the right to save, use, sow, re-exchange, share or sell his farm produce including seeds of a variety protected under the Act the same manner as he was entitled before the commencement of this Act. The only restriction is that the farmer is not entitled to sell branded seeds of a protected variety. It is further made clear that branded seed means any seed put in a package or any other container and labeled in a manner to indicate that such seed is a protected variety. It is only limited rights on their farm products produced using the protected varieties that are protected under this provision. In many cases the rights are going to be little use when it is looked from the angle of reusing the farm produces as seed. Products of many new varieties may not be capable of being used as seed without further processing. The new techniques in biotechnology are going to make the farmer go back every time to the breeder if he wants the same result from the seeds. There is no need for an express right to dispose the farm produce since it is implied in the purchase of seed for cultivation. This is so even in case of products based on inventions protected under the Patent Law. According to the Act the farmer also has a right to be informed about the performance of the protected variety when it is sold to him and he is entitled to claim compensation from the breeder in case of failure. It is the Authority who is authorized to determine the compensation after hearing the parties. Similarly there is also a provision to protect the farmer from infringement actions in case the infringement by the farmer is an innocent one.

Conclusion

Thus the Indian PPVFR Act 2001 is harmonious with TRIPS, CBD and UPOV. The Indian PPVFR includes features of the UPOV, which sets the minimum standards for PBR protection for contracting parties. Careful reading of the various provisions of the Act reflects the efforts made to provide an geffective sui generic law to protect the interest of the modern breeders. The substantive provisions regarding protection of the modern breeder such as coverage of variety protected, criteria for protection, rights of the breeder, procure for protection etc. are mainly based on the provisions of UPOV, 1991. Thus by incorporating the Features of UPOV, 1991 the difference between Plant Varieties Protection and Patent Protection is becoming blurred. It is demonstrated clearly that it may not be possible to achieve the objectives of protecting the interest of the breeders and custodian of the genetic materials together in a meaningful way in an geffective h sui generic law. The reasons are obviously the conflicting jurisprudential basis private property in one case and collective management and enjoyment in the other for the protection of these interests. The UPOV framework is based on private property jurisprudence and primarily intended to suit the needs of global seed industries. Any attempt to stitch the needs of the custodians of genetic materials in the UPOV framework is not going to yield the desired results. Hence UPOV and PVPFPR cannot co exist as they represent two irreconcilable view points. Accessions to UPOV means pro breeder and pro patent plant variety scheme.

References

1. See N.S Gopalakrishnan, gProtection of Plant Varieties and Faremrs of Rights in India A Critique h, at http;//www.iprlawindia. org
2. The Protection of Plant Varieties and Farmers of Rights Act, 2001
3. UPOV convention 1991
4. TRIPS Agreement 1994 

The Interface between Intellectual Property Rights and Competition Law :-

Intellectual Property is any product of human intellect that is un-obvious and  unique with some value in the market place. This intellectual creation is equated with the status of property because of the commercial value of such a creation. Intellectual property rights such as copyrights, patents, Trademarks and Industrial Designs play a very pivotal role of Economic Growth of a country as well as fostering innovation. On the other hand the absence of an intellectual property would lead to a situation wherein firms in a market would be in position to free ride on the successful results of the research and development of another competitor firm.  Moreover, such firms would have incurred a significant expenditure for the said research and development to attain the desired results.  Thus in the absence of protection given under the Intellectual Property right law, there would  a market situation wherein any firm would be able to exploit  a new invention in a process or product of its rival firm in the market.

Intellectual Property rights and Competition Regulation are closely related with each other as they share a common objective.  To achieve economic efficiency in any market the most important pre-requisite is the optimum utilization of all the resources in the market. However, such effective utilization of the same is possible only when these resources are well-defined and demarcated as property rights.  Intellectual Property rights provide forsuch demarcated and well-defined Property rights, which result in economic efficiency.  Likewise competition law aims to ensure the efficient operation of the market by preventing a dominant owner from manipulating the allocative outcome to his advantage thereby ensuring  economic efficiency in the market. However, Intellectual Property rights give a certain degree of Monoply rights to the property rights holder for its part the competition law aims to curb any attempt to prevent the exploitation of such monopoly power beyond the boundaries provided by Intellectual Property Rights. This lead to an inherent tension between Competition  law and Intellectual Property Rights. Therefore the role played by competition law in keeping the property rights of a right holder within the ambit of Intellectual Property and the legitimate dominant position is a pivotal importance.

It is pertinent to mention that the legal exclusivity granted to a Property right holder by virtue of his right may place the property holder in a dominant position and as a result  of which he can exercise market power.  However the mere fact that Intellectual property rights exclude rival firms from exploiting the Property rights does not necessarily lead to a situation  wherein the property right holder cab abuse his or her dominant position. This is mainly because of the available substitutes, which act as constraints to the ability of the Intellectual property right holders to price their products above competitive prices and thus abuse their dominant positions. The role of  Competition law in relation to the Intellectual property right comes into picture only when there are no alternative technologies or substitutes  available to the said property right.   Further Anti Competitive behaviour related to the exercise of Intellectual property rights between direct  competitors occurs when holders of substitutable technologies enter into cross licensing agreements aimed at setting commonly agreed prices for the competing products. This clearly leads  to an anti competitive behaviour, as competitors in the market fix prices to the disadvantage of the buyers. The third scenario which leads to contravention of  Competition Law is when firms impose  anti competitive and welfare reducing effects in the Intellectual property licensing. This mostly happens in vertical agreements.

The law relating to Intellectual property  rights gives the right to exclude  others from using his monopoly right.  However this right given is not absolute in nature but subject to reasonable restriction as the right needs to be confined within the relevant law. Any plan of conspiracy to control the prices and the  distribution of the property right is not within the protection of  monopoly granted to the property right holder under the Intellectual property right law. And if it is established that the owner  of a monopoly right has acted in concert with others  in the market to restrain trade and fix prices, then the protection is not available. Thus during the exercise of an Intellectual property right, if any competitive trade practice or conduct is visible to the detriment of a consumer interest or public interest, then a remedy to such a problem ought to be availed under competition law of a country.

We therefore can state that Intellectual property rights do not protect any such acts, which lead to violation of the tenets of competition law. This principle could be gathered from the decision of the Supreme Court of the United States Inre USA Vs. Paramount Pictures wherein the apex court held that :-

“The fact that the Defendants owned Copyrights to their films and merely licensed their use by the exhibitors did not entitle  them to conspire with each other to fix uniform prices for admission to be charged by the exhibitors. Nor did it justify the conspiracy between each distributor defendant and its licenses to fix and maintain uniform admission prices, which has the effect of suppressing price competition between exhibitors. It was also illegal to refuse to license one or more copyrights unless another copyright is accepted.”

The principle enunciated in this judgment is that if any Intellectual property right holder plans in a conspiracy to control prices and distribution of his or her Intellectual property right.  Then in such a situation the property right holder can be charged with the violation of competition law as he conspired to restrain or fix the prices of his property right.  Therefore competition law plays an important role in ensuring a bonafide use of Intellectual property rights.

The TRIPS Agrement,  Competition Law and India

The recognition of the contribution of Intellectual property given to a right which leads to fostering of economic growth was one of the main tenets of the agreement on Trade related aspects to Intellectual Property Rights (hereinafter referred to as TRIPS). 

The TRIPS agreement provides for a minimum standard of protection to Intellectual property rights in the international trading system, which should be  followed by all member countries of the WTO who have signed the TRIPS agreement, India is one of the signatory’s to the TRIPS agreement. Among the various arguments which were put forwarded by the developed countries like  India to sign the TRIPS agreement by the developing countries would ensure that more foreign investment and technology transfer took place  in such countries.

The reason for this was because as a result if strengthened Intellectual property protection, developed countries would be sure to find their property rights mostly in process and product patent being protected in such developing countries which were a signatory to the TRIPS agreement. As a consequential result of which there would be better protection and enforcement of Intellectual property rights in there countries. Thus as the TRIPS agreement lead to higher protection of Intellectual property rights worldwide, there were also chances of there Intellectual Property rights being abused in an anti competitive manner. This leads to the need of Competition Law in various Intellectual Property regimes to play the role of preventing the anti-competitive use opf such property rights and to  also  ensure that such property rights promote economic growth manifold. In fact such a role has been clearly stated in  the TRIPS agreement :”Nothing in this Agreement shall prevent members from specifying in their legislation licensing practices or conditions that may in particular case constitute an abuse of Intellectual property rights having adverse effect on Competition in the relevant market” (Article 40.2).  Therefore, the TRIPS agreement also allowed member countries to adopt appropriate measures to prevent and control such anti competitive practices in light of  the relevant laws and regulations of the member countries. 

In this regard, the Competition Act of India seems to be best-suited enactment, as the Competition Commission of India is best placed to decide whether there is an adverse effect on competition by the use of Intellectual property rights in India. However,  unfortunately in the Indian Context, the present Competition Act does not provide for clear provisions, which prohibit anti competitive practices of Intellectual property rights. Section 4(2) (B2) of the Competition Act of India states that for the purpose of determining whether an enterprise enjoys a dominant position, the concerned authority would take into account inter-alia technical or scientific development relating to goods or services to the prejudice of the consumers.  The wordings of this section     may include patents, copyrights and know-how. This will help in having clear provisions on Intellectual property rights and Competition Law in the Competition Act of India. Even though the exercise of Intellectual property rights is regulated by other legislation’s such as the Indian Patent Act of 1970, competition law of India can provide an extra tier of regulation.  This will help to step the tide of anti competitive arrangements vis-à-vis Intellectual property rights and ensure that the exclusivity granted by Intellectual property law is not misused to proliferate anti competitive behaviour.

Compulsory Licensing and Anti Competitive use of Intellectual Property Rights :-

Article 31 of the TRIPS agreement deals with the issue of an anti competitive use of Intellectual property rights and provides for the condition of granting of compulsory licenses. Article 30 of the TRIPS agreement refers to five specific grounds for granting Compulsory licenses namely Refusal to deal, emergency, Anti-competitive practices, Non commercial use and  dependent patents.

Moreover it is pertinent to mention that Article 1 of the TRIPS  categorically states that the members states that have signed the TRIPS agreement shall give effect to all the  Provisions of the agreement. In regard to the granting of Compulsory licenses to deal with anti competitive practices in the United States of America, it has been seen that the use of compulsory licensing has been used in more than 100 antitrust cases.  In these particular cases the Federal trade commission felt that there has been an anti competitive use of Intellectual property right by the right holder as a result of which, compulsory licensing was granted over those Intellectual property rights.

In the Indian context however no changes have been undertaken in relation to the grant of compulsory licensing of Intellectual property rights when such rights are made use of anti competitively. This has happened notwithstanding that India was obliged to do so under Article 1 of the TRIPS agreement. Section 84 of the Indian Patents Act of 1970, which deals with compulsory licensing still, provides only for two main grounds on which compulsory licensing can be granted namely public purpose and reasonable price.  The existence of anti-competitive practice is considered as a ground for granting compulsory licenses in the patent laws of Chile and Argentina.

There is a need to provide more specific grounds such as refusal to deal and anti competitive practices under the Indian Patent Act of 1970 which will help to prevent any further anti competitive, misuse of Intellectual Property rights in India. Moreover the control of such abuses under specific provisions incorporated under Intellectual  Property Right laws would be  preferable in countries where the enforcement mechanism of competition law needs to be further strengthened. Therefore such a legislative framework is suitable in the Indian Context in the backdrop of their being weak enforcement of Competition Law  in India and also because of it being a newly enacted legislation. Furthermore the Competition Commission of India should be vested with recommendatory powers so that it can recommend to the government that an anti competitive situation has arisen. In pursuance of which there shall be a grant of compulsory license under the Indian Patent Act of 1970 that shall rectify such a situation wherein Intellectual Property rights are being used anti competitively.

The TRIPS Agreement provides for provisions, which categorically prohibit the misuse of Intellectual Property rights and stronger protection of Intellectual Property rights worldwide calls for complimentary legislation’s that promote competition in the global market. The need of the hour is to prepare a Bill, which provides for suitable amendments in the Competition Act of 2002 and the Patents Act of 1970 by virtue of which the anti competitive effect of Intellectual property  rights can be prevented in the Indian market. The introduction of such a bill is of importance because stronger protection of Intellectual property rights in India could restrain competition in the Indian market as Intellectual property rights could abuse the monopoly rights, which they enjoy over their intangible property.  Thus stronger Competition law and related legislation’s are required, as they will prevent the abuse of such Intellectual Property Rights in India.

India presents an enormous opportunity, as well as a substantial challenge, to Intellectual Property (IP) owners.  The past few years have seen major economic and legislative changes following accession to the WTO. The opening of the economy, and, in particular, the major role India is playing in the knowledge economy, has brought IP issues to the forefront. This article analyses some recent judicial and legislative changes that demonstrate India’s commitment to establishing an effective IP framework. It also briefly outlines preventive measures that IP owners can take to address the growing counterfeit menace in India.

Recent IP reforms

India has amended its IP laws significantly during the last few years in order to comply with WTO regulations. Some of the changes that have direct implications for IP owners are outlined below :-
(A) New Trade Mark Law (effective from September 15, 2003)
The new legislation is in compliance with the TRIPS agreement and contains important provisions which have been widely welcomed by IP owners and practitioners.

Service marks introduced and protected by the Act
Before the new Act was passed, there was no provisions for the registration of  service marks. Service providers had no option but to rely on registrations in the relevant good class. This did not provide adequate protection and in case of misuse, brand owners turned  to passing off actions.  Registration in relation to services is now possible in classes 35-42.

Well known marks defined and broader protection given :
The new Act has laid down criteria for well known marks and provided broad protection in respect of them. It has also recognized the theory of dilution in respect of well known marks. Well known marks are given statutory protection, even when the allegedly infringing mark is being used on goods that the dissimilar to those for which the mark is registered.

Infringement redefined
The scope of infringement has been widened. One of the important changes has been to make it clear that use of a registered trade mark as part of a company name/business name will constitute trade mark infringement. This is quite useful for  IP owners since, with the growth of the service industry in the last 10 years, there has been a growing tendency for infringers to adopt well known marks as part of their trade name/trading style.
Further use of marks, or deceptively similar marks on similar goods (or even, in some circumstances, on dissimilar goods) may now amount to infringement.

(B) Enforcement streamlined
-- Specific remedies for civil  infringement, notably ex-parte and interlocutory orders, have been introduced. Although the High Courts, particularly the Delhi High Court, have  in the past been granting ex parte interlocutory orders to foreign brand owners, there has been   a lack of consistency. The new  Act will provide much grater certainty.

--The level of penalties for criminal acts of infringement has been considerably increased. Specific powers have also been given to certain police officers  to enter premises, and search and seize relevant materials (without a warrant).

--Misuse of a trade mark has been made a cognizable and non-able offence. Powers have been given to police officers to search and seize premises incase of trade mark infringement. The police officer is, however, required to obtain the opinion of the Trade Marks Registrar on infringement of the trade mark.

(D)Creation of Appellate Tribunal
An appellate board has been established to hear appeals from the decisions of the Trade Marks Registrar. This is expected to facilitate the speedy disposal of appeals which would previously have been required to be heard by the High Court. However, IP owners and practitioners are concerned about the lack of infrastructure for the appellate benches at Calcutta, Mumbai, Delhi and Ahmedabad.

(E) Recordal of license agreement no longer necessary
The definition of  ‘permitted use’ under the Act has been expanded to include  unregistered licenses. Thus IP owners do not need to record their license agreements with the Trade Marks Office but  can  rely upon use by their license  to defend any non-use cancellation action.
Changes for the good

The new Act  gives brand owners increased protection and makes it easier for them  to enforce their rights in India. In addition, it helps streamline the registration procedure. The Trade Marks Offie has also made procedural changes to address  delays in the registration process, and clear the backlog of applications. The examination process has been  decentralized and the Trade Marks Registry is issuing supplementary trade mark journals to expedite publication of marks.  With the procedural and statutory changes in place, new applications  are expected to be disposed off within 1-2 years  (where no opposition has been filed), as opposed to 5-6 years previously.

While India is in the process of amending its IP laws to make them TRIPS compliant, the  Indian Courts have,  over a period of time, embraced, international developments and handed  down  a number of landmark judgments that have changed the face of IP litigation. They have, for example, repeatedly confirmed that it is not necessary to have actual physical sale of goods in India. The doctrine of ‘trans border’ and ‘spill over’  reputation in famous marks cases has  recently been upheld by Chennai High Court in Jolen Inc. Vs. Shobha  Lal Jain, OSA No.259 to 261 of 2000). Further the Supreme Court  in Milmet oftho Industries & Co. versus Allergan Inc. Appeal 5791 of 1998 held that “medicines are  international in  character”. Thus, use of a mark on medicines in countries outside India may be just as relevant as use of the mark in India.

Is delay fatal ?
Further, the Courts have given special ruling in IP cases, holding that delay cannot be a ground for refusing interim relief in situations where there has been dishonesty in the Defendant’s adoption of the mark. In  Midas Hygience Industries Pvt. Ltd. And another vs. Sudhir Bhatia and Others, Civil Appeal 107/20002 the Court held that delay simpliciter cannot be equated with acquiescence.

Non-use of a mark in India :
The Courts have further held that proof of non-use of a mark is not sufficient in a cancellation action, to succeed in such action “intent not to resume use of the mark must be proved” (In Hardie Trading Ltd. Vs. Addition Paint & Chemical Ltd., Civil Appeal 5307-11 of 1993). Thus IP owners who have, due to special circumstances, not been able to use their marks in India so  far can save their marks from being  removed from the Register by proving their intention to use the mark in India.

Patent Law amended
Amendments to the Patents Act have been the subject of intense debate, particularly those relating to the grant of pharmaceutical product patents. At present, the Patents Act does not make provisions for the grant of pharmaceutical product patents.  Pharmaceutical products can only be protected by means of  process patents. The Patents Act 1970 has been amended twice in the recent past in 1999 (the amendments took retrospective effect from January 1, 1995) and in May 2003. The Government is preparing for another amendment to the Act, as the deadline of January 1,  2005, to meet India’s obligations as a WTO member, is fast approaching.

Meanwhile, the amendment made in 1999 to provide for exclusive marketing rights (EMR’s) as an interim measure before the introduction of product patents, has bagged down  in litigation and controversy. Following the 1999 amendments to the Act, the Patent Office has granted EMRs in respect of three “products”. Two of these EMRs have been contested by the domestic pharmaceutical industry.

There has been  strong lobbying from the domestic pharma companies against the grant of both product patents  and EMRs. There are many issues involved,  including the hike in drug prices that may result from sweeping the markets of generic drugs. From the current scenario, it appears that the current and proposed amendments to the Patents Act, particularly those relating to the introduction to product patents, will lead to an increase in litigation in this area of IP. The EMR granted to Novartis, on the other hand, seeking restraint orders against generic manufacturers. Warfre is yet to come.
           
Copyright Act 1957 (amended in 1995) attacks piracy
The copyright law in India is largely TRIPS compliant. Major changes were made to the Indian Copyright Act in June 1994, coming  into effect in May 1995.  the amendments to the Act were a landmark in the copyright industry.  The much required protection was given to computer software, clarifying the rights of the user to make back up copies and imposing heavy punishment and fines on infringers of software copyright.

Software piracy in India continues, however, to be a growing problem. Although the 1995 amendments provide increased statutory protection, there is a need for continuous education and enforcement efforts from the government and various industry alliances. A large number of PC users remain unaware of the law governing software piracy and believe it is  legal to copy software.

Piracy in the media and entertainment industries continues to be rampant.  Illegal screening of films by cable operators, sale of counterfeit cassettes and CDs, downloading of music onto MP3s, and unauthorized broadcasting continues to decimate legitimate business.

Similarly, book piracy continues to damage the publishing industry. The business of book piracy is a lucrative one in India. Whereas a legitimate copy of a book may sell for $8-9, a pirated version can be produced for 50-60 cents and sold $3. Thus, profit margins are high.  The publishers are lobbying the Government to improve enforcement and awareness amongst the trade and public.

Battling resilient counterfeiters
Unlike in China, where IP owners generally find large factories producing counterfeit or infringing products, in India, you are likely to find a huge number of small and medium-sized industries which collectively have  a big impact. Eat times, IP owners are reluctant  to take action , against small scale manufacturers thinking that their production volumes do not have sufficient impact on their sales. Our experience has shown that an early strike not only helps in restraining small players becoming organized, but can also deter new players from  entering the trade.
          
The problem of counterfeiting in India varies from sophisticated operations where the target audience  is an overseas market to a small re-filling operation.  Typically, the operation would have a chain where a “rag picker” would being the original used bottles, printing would be outsourced and in an overnight operation the filling would be done and products supplied on cash basis.   Rising consumerism and an increasing appetite for branded goods among the middle class has given a boost to the counterfeit  industry.  More often than not there are markets, or pockets, which are infamous for a counterfeit  activity.  However, the operators have  strong market associations which collectively oppose any raid action, often organizing a mob to create confusion so that, in the mayhem, counterfeit goods can slip away. They also seem to have their own network of informers and are often tipped off about possible search and seizure.

As a result, the role of investigators in helping companies address and control this problem is becoming very important. Companies are increasingly investing in finding out the various links in the chain so that the problem can be addressed more effectively. The information obtained can also form the basis of an effective IP strategy, addressing issues such as  enforcement options(civil or criminal); choice of forum; and defenses that may be raised by the counterfeiter.

Choosing a strategy
Finally, the debate as to which is the most effective way of combating counterfeiting in India goes on. There are obviously advantages and disadvantages in both Civil action (through the Courts) and Criminal action (through the police).

The choice of remedy should, perhaps, be dictated by the objective sought to be achieved. If for example, it is a market level problem and you want to carry out multiple raids at various locations, criminal action will be a better option. On the other hand, if you have an identified target to go after, which is either a manufacturing unit or a big wholesaler/importer, civil action would be the preferred route.  It may be pertinent to mention that it is common for civil courts to appoint “court commissioners” with powers to search premises, seize goods, inspect books of account and in some cases destroy infringing goods. In many cases, the court order provides for police assistance during raids. Thus the impact of raids in a civil action is as of action through police.

To sum up, as in any other developing country, working with law enforcement authorities and courts in India can be quite challenging.  However, so long as IP holders are clear about their objectives and have an appropriate strategy in place, it should be possible to achieve the desired result.

Meaning of “pharmaceutical substance”
(ia) “pharmaceutical substance” means any new entity involving one or more inventive steps :
“STATE OF THE ART (OR) PRIOR ART”
This is a very vague and ambiguous definition. The definition has no  connection with the word being sought to be defined. This is to be contrasted and compared with the Explanation in Clause 92A which is a new provision, being added through the Bill. There is something  major which is missing in this definition “any new entity” cannot be a pharmaceutical substance by any stretch of imagination.  When there is so much debate in the field of pharmaceutical, to define pharmaceutical  substances in the most ambiguous manner will lead to enormous difficulties and will have irreversible effect on the industry this requires to be urgently looked into.

Meaning of “inventive step”
(ja)“inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge  or having economic significance or both and that makes the  invention not obvious to a person skilled in that art.

From this definition an inventive step should have a feature which involves technical advancement or economic significance or both. Such technical advancement should not be obvious to a person skilled in the art. There is a slight problem in this definition in as much as a patent cannot be granted for a mere technical advancement which does not have an economic significance. A patent cannot also be granted for a technical advancement which merely has a economic significance.  The  definition should therefore be amended to.

(ja)“inventive step”  means a feature of an invention that involves technical advance as  compared to the existing knowledge and having economic significance and that makes the invention not obvious  to a person skilled in that art ;
It this change is not made it will mean that any feature of invention having mere economic significance will become patentable. In reality there may be a number of inventions which have an economic significance.  Both the factors are necessary for “inventive step”. Hence the change is required.

SALIENT FEATURES OF THE PATENT AMENDMENTS
The issue of patent amendments and the introduction  of product patents has become an emotional issue that most of us tend to ignore the positive features of the  amendments. One such positive feature  is the addition of sub section 7 in the Section 11A.  This provision provides an issue of practical importance to patent holders. This is a new provision which did not exist under the old Act.

A number of times clients who have applied for patents enquire as to what is the status of their invention during the time when the patent application is pending registration. Practitioners like us always are faced with the blank wall.  This is because typical patent applications take at least 3 years before they can be processed, examined and granted.  Under the new Act, this time period is expected to be much lower. Even otherwise a technology which is applied for say, in the field of Information Technology tends to become obsolete quickly.  The application  of a new IT invention is  immediate and within a period of 2-3 years the technology become redundant. We do not have any answers to these questions of clients and have to merely say that if there is an infringement  during the time when the patent is pending, then it is difficult to enforce any of the remedies. The insertion of Section 11A(7) states that after the application is published and until the grant of the patent the privilege and rights of a patent shall date back to the dating of publication.  However, any suit for infringement of a patent cannot still be filed till the grant of a  patent.  This only provide for a slight reprieve.

The proviso to 11A(7) is a very important proviso especially for the pharmaceutical industry.  This proviso states that if a product patent is granted pursuant to this law and there were parties who had made substantial investments and are producing the same work prior to 1.1.2005 he will only be entitled to royalty.   No infringement proceedings therefore will lie against a prior manufacturer of the same product even after the product patent is granted. The validity  of such a provision is my view is in doubt. Time will tell whether such a provision will withstand judicial scrutiny. This is because grant of a patent becomes redundant especially in relation to product patent applications which are lying in  the mail box. However, in my opinion this provision is a big concession being made in favour of the Indian pharmaceutical industry.

The insertion of this provision when viewed in the light of the grant of EMR for a cancer curing drug in favour of Novartis, makes the legislative intent manifest. In the Novartis case, there were various manufacturers of the drug who were already manufacturing and marketing the drug prior to grant of EMR to Novartis. Various legal proceedings were fought   across the  various High Courts in the country. One court took a view that the EMR of Novartis deserves to be protected and exclusive rights were recognized. Another court took a view that public health is more important and that since the manufacturing of the same  very product the grant of EMR to Novartis and substantial investments had been made, no injunction was granted.  Various  challenges were filed to the grant of EMR to Novartis. In fact, the constitutional  validity of the  EMR  provisions under the Patents Act which  did not provide for a pre-decisional hearing to any of the indigenous manufacturers, was  also challenged before the Delhi Higher Court. This case is pending before the Supreme Court.  Now, the  new Act makes it clear that “Prior user rights” have been specifically safeguard which is akin to trademark  jurisprudence.  However, it remains to be seen as to whether this kind of a concession to prior users could be granted at all under  the law of patents.

The Bill also provides for Pre & Post-Grant Oppositions. While Pre-Grant oppositions are to be  only in writing, post-grant oppositions are on broader grounds.

Appeals from the Patent Office lie before the Intellectual property Appellate Board which is the same Board constituted under the Trade Marks Act 1999. However the qualifications for the “Technical Member” are excluding a Patent Lawyer and compulsorily require a person possessing a degree in engineering, science etc. It has to be seen how the qualifications of  a Technical Member under the Trade Marks Act, 1999 and the present Act are going to be reconciled.

A petition for Revocation of a Patent can be filed either before the Appellate Board or  as a Counter Claim in an infringement action before the High Court.

COMPULSORY LICENSING :
This is dealt with under Sec. 84 of the Act itself. The grounds on which such a lincence can be granted are :

1. Requirements of the public are not satisfied.
2. That the patented invention is not available at a reasonable  price;
3. That the invention has not been worked in India.

These provisions for compulsory Licensing are quite broad.
Special Provision for Compulsory Licenses w.r.t. Pharmaceutical Products:
Permission to export patented drugs to countries on the following conditions :

1. Such country/s has insufficient manufacturing capacity
2. For addressing public health problems
3. The said country has granted compulsory licence or has
4. Allowed importation of the patented pharmaceutical products from India.

The new law will, over the next 10-20 years, witness major battles being fought over pharmaceutical patents, technology patents, biotechnology, software and applications thereof etc. Not only do we need adequate laws but also adequate Court systems like setting up of Designated IPR Courts, special procedures, inculcation of the culture of Damages etc. If the Systems are not improved in accordance with the laws, then the entire intention behind the law will be frustrated.  We have a very  IPR-conscious judiciary in our country and  Judges should be  provided with adequate infrastructure to tackle the kind of cases that are going to reach courts. The far-reaching effects of patent litigation should not be faced with unpreparedness.  By the time the first product patents roll out, may be over the next 3 years.  Courts should be adequately equipped and ready to face the challenge.

IOn September 15, 2003, the Indian Government issued a notification giving immediate effect to a new Trade Marks Act, which has been introduced as long ago as 1999. The new Act, which is intended to comply with India’s international as a WTO member, came into effect without any publicity and when local practitioners were least expecting it, Notwithstanding the secrecy maintained by the Government in notifying the new law, it has generally been welcomed by brand owners and practitioners.

Main provisions of the new Act

Introduction of service marks

Until now, it has not been possible to register trade marks in respect of services. Service providers have been obliged to seek protection by registering their marks in relation to products. Not only is this expensive, it does not always provide adequate protection. In the absence of appropriate trade mark registration, brand owners turned to passing off actions, which can be both uncertain and expensive. Introduction of service mark registration will be welcomed by brand owners providing services in India and elsewhere, as well as those intending to set up business in India.

Broadening definition of trade mark’

The new Act permits registration of a wider range of marks including, in some cases, the shape of goods, elements of packaging and combination of colours. It was expected that ‘sound’ and ‘smell’ marks will also be included within the definition of trade mark. Perhaps the infrastructure and expertise required for examination of such marks led the Government not to include it at this time.

Licensing of marks

It is no longer necessary to ‘record licence agreements with the Trade Marks Office for use of the mark to accure to the benefit of the licensor. The definition of ‘permitted use’ has been expanded to include unregistered licences. This is a step in the right direction and in line with judicial pronouncements. The provision will be particularly useful for rights holders seeking to defend non use cancellation action. Under the old act, more often than not, the trade Marks Office take a technical stand and disregard the use make by licensee if the agreement had been recorded.

Protection for ‘well-known marks

The Act introduces statutory protection for well-known trade marks.

The new Act attempts to define well known trade marks and to provide broad protection in respect of them. The Act has recognized the theory of dilution in respect of  ‘well known’ marks. However, no provisions have been laid down for brand owners to register a mark as  a well known mark.

Under the old Trade Marks Act there was no specific provision for the protection of well known marks. The old Act simply  prohibited registration of a mark, the use of which would be likely to deceive or cause confusion. However, under the new Act the Registrar is obliged to refuse registration  of a mark, if it is identical with, or deceptively similar to, someone else’s well known trade mark, and use of the mark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of that mark.

The Act contains detailed criteria for determining whether or not a particular mark will qualify for protection as a ‘well known mark’.  The checklist detailed below is intended to be a useful and practical guide not only for brand owners looking to enforce their rights in India, but also practitioners, courts and enforcement officials.  It is also in line with resolution adopted by WIPO and Paris union members in1999 for the protection of well known marks, and follows the criteria laid down under Article 6 of the TRIPS agreement.

1.the knowledge or recognition of the trade mark in the relevant section of public including knowledge  in India obtained as a result of promotion  of the trade mark in or outside India;
2.the duration and extent of any use of the trade mark;
3.the duration and extent of any promotion  of the trade mark, including advertising or publicity and presentation at fairs or exhibition of the goods or services to which the trade mark applies;
4.the duration  and geographical scope of any registration of the trade mark, to the extent they reflect the use or recognition of the trade mark;
5.the record of successful enforcement of the rights in the trade mark; in particular, the extent  to which the trade mark has been recognized as a well known trade mark by any Court or Registrar
The Act further lays down that the Registrar shall, while

Determining  whether a trade mark is known or recognized in a relevant section of the public, take into account the following:-
A.the number of actual or potential consumers of the goods or services;
B.the number of persons involved in the ‘channels of distribution of the goods or services; and
C.the business circles dealing with the goods or services.

Thus, the new law makes it clear that, for the mark to qualify for protection as a well-known mark, it is not necessary for it to be is known to the public at large. What matters is knowledge and recognition amongst the relevant section of the public.

In laying down ‘do’s and don‘ts’ for determining a ‘well’ known mark’ the new legislation has sought to make it clear that the Registrar of Trade Marks will not demand:

1. that the trade mark has been used in India;
2. that the trade mark has been registered;
3. that application for registration of the trade mark has been filed in India;
4. that the trade mark is well known or has been registered in any jurisdiction other that India; or.
5. That the trade mark is well known to the public at large in India

The above clarification, it seems, has been made on the basis of recent court decisions where the courts have Egranted restraint orders on the basis of international use and reputation of the mark and spillover of reputation into India without insisting on actual use of the mark in India. This approach will now be taken by the trade mark registry as well. The new law has also, it seems, taken account of the fact that use of internet and satellite television broadcasts has made the world a small place. Thus, the knowledge of internationally well known brand names is likely to come to the attention of the trade and public quickly even though the goods may not have been sold in India. Also, liberal foreign exchange laws mean that the trade and public (in India) are now able to purchase foreign goods online.

To sum up, the new provision on well known marks will enable IP holders to specifically plead in opposition proceedings and in trade mark  infringement and passing off actions that their marks are well known trade marks, supporting the pleading with the documents outlined above. It is expected that the new provisions will encourage courts and the trade mark registry to find marks are well known. Armed with that finding, it will be simpler for IP holders to take action against any misuse of their brands.

Infringement redefined

Under the new Act, identity of goods is no longer necessary to invoke the statutory remedy of trade mark infringement. Thus, for example, if a mark is registered for ‘shoes’, the use of an identical or similar mark for ‘shoe polish’ will constitute trade mark infringement.

Also, the definition of infringement has been expanded to cover use of a trade mark as a trade name, or part of a trade name, if the party is dealing in goods or services for which the trade mark is registered. This will be quite a useful provision for brand owners given that in the last 5 yrs there have been a number of cases in relation to the use of well known marks as trade names.

It has been specifically provided that use of a registered mark in advertisements, business papers, on packaging materials or labeling will constitute trade mark infringement. Also, disparaging advertising will constitute infringement.

Enforcement of rights

Specific provisions have been included empowering the Courts to pass ex -parte injunction orders or other interlocutory order for:-

1. discovery of documents;
2. preserving the infringing goods, documents or other evidence; and
3. restraining the offender from disposing of or dealing with his assets in a manner which may adversely affect the brand owner’s ability to recover damages, costs or other pecuniary remedies.

It is not that such relief was previously not granted by the courts in India. However, not all courts would use the discretionary power vested in them to grant, for example, ex parte injunction orders in actions involving counterfeit goods. In such cases, failure to grant an exparte injunction order is likely to lead to the counterfeiter destroying the evidence or removing the goods.

Misuse of a trade mark has been made a congnizable  and non bailable offence. Powers have been given to police officers not below the rank of Deputy Superintendent to enter premises, search for and seize ( without warrant) goods, dies, blocks, machines, plates or other instruments or things involved in committing the offence. The police officer is, however, required to obtain the opinion of the Registrar of Trade Marks on the facts involved in the offence relating to trade marks.

The punishment and fine for trade mark offences has also been enhanced. The minimum punishment of 6 months and fine of Rs 50,000 (approx USD 1,112) and maximum of 3 yrs and fine of Rs 200,000 (approx USD 4,450) has been provided.
Other important changes

1. The period of registration has been extended from seven years to 10 years.
2. To simplify and streamline and streamline the registration procedure, multiple class applications have been permitted.
3. An appellate board has been established to hear appeals from the decision of the Trade Marks Registrar. This is expected to facilitate speedy disposal of appeals which have until now been heard by the High Court. However, practitioners are concerned about the lack of infrastructure for appellate benches at Calcutta, Mumbai, Delhi and Ahmedabad. Also, the new Act provides that all appeals pending before any High Court shall be transferred to the appellate board. In the absence of proper infrastructure for appellate board at the Delhi, Bombay, Calcutta and Ahmedabad, the transfer provision is only adding to the delay in progress of appeals. The High Courts are not hearing the appeals and have put them aside to be transferred to the appellate boards, which in the cities mentioned above have yet to be constituted.
4. The division between Part A & Part B of the Registar has been removed. The relatively easier test for Part B registration (capable of distinguishing) has become the criteria for registrability of mark.
5. Suit for trade mark infringement or passing off can be filed at the court where the person suing actually resides or carries on business for gain. This will help brand owners to bring infringement or passing off actions in the court where they have their registered or branch office, thus giving them the choice to litigate at the forum of their choice.
6. A new concept of collective marks has been introduced. Thus, an ‘association of persons’ or a club can register its mark/logo for exclusive use by its members.

Conclusion

The new Act contains important provisions which give brand owners increased protection and make it easier for them to enforce their rights in India. In addition, it will streamline the registration procedure. Thus, the new law will hopefully help to meet the government’s stated objective of encouraging investment and transfer of technology into India.

The Asian Environmental Compliance and Enforcement Network (AECEN) conference started on 13th of December, 2007 at Hotel Shangri-la, Beijing. This related to recognizing the need for improving compliance with environmental laws and regulations. In this regard Asian countries have established AECEN. The said network being dedicated sharing the improved policies on compliance and enforcement in Asia. The objectives are to promote developmental and implementation of improved laws, regulations and institutions. Strengthen practitioner capacity through specialized training facilitates original sharing of best practices and enforcement. The members of session includes national and sub-national, environmental agencies from people of India, Indonesia, Japan, Nepal, Phillipines, Sri Lanka, Vietnamand Thailand. The hosting country i.e. Peoples Republic of China is also member and the State Environmental Protection Administration (SEPA) is in partnership with AECEN.

The objectives of the three day event held at Beijing were:
· Share progress by SEPA and other stakeholders on environmental compliance and enforcement –

Present progress on AECEN pilot projects, country assessments and training activities, and new member-to-member "twinning" initiative and AECEN award –

Conduct three parallel best practices workshops on citizen involvement, compliance assistance and public disclosure ·
Share best practices and experiences on environmental compliance and enforcement ·

Share final version of AECEN Regional Principles

In this event, the participants included from all over were 120 senior environmental officials, policymakers, judges, lawyers, academics, and other environmental experts from related government agencies and international organizations from a range of countries, including Cambodia, People's Republic of China, India, Indonesia, Japan, Lao PDR, Nepal, Pakistan, Philippines, Singapore, Sri Lanka, Thailand, and Vietnam. The Organizers of this Forum were State Environmental Protection 3333 Administration of the PeopIe's Republic of China; Asian Environmental Compliance and Enforcement Network; United States Agency for International Development; Asian Development Bank; United States Environmental Protection Agency.

The Forum started on 13th of December, 2007 at Hotel Shangri-la, Beijing in the evening with the welcome remarks by his Excellency Vice Minister Mr. Zhang Lijun of SEPA. Thereafter, there were opening remarks about the Forum by Mr. Granta Y. Nakayama, Additional Administrator for Enforcement and Compliance, United States Environmental Protection Agency followed by introductory remarks by Dr. Supat Wangwongwatana, Executive Chairman of AECEN. Then there was a keynote address of advancing a cleaner Asia through Citizen Participation by Professor Wang Canfa, China University of Political Science and Law, and Director of the Center for Legal Assistance to Pollution Victims.

On the next day, i.e. on 14th of December, 2007 morning session began with regard to the Asian Pilot Projects: Demonstrating and Sharing Best Practices. The objectives of this session were sharing experience on best practices in three countries on enforcement, response, monitoring and inspection and economic instruments. The panelists for this session who were speakers included Hon'bIe Justice Portia Alino- Hormachuelos, Court of Appeals, who spoke for strengthening 444 Kolitha Himal Muthukuda Arachchi, Sri Lanka Central Environmental Authority, who spoke for Developing a Wastewater Discharge Fee Program in Sri Lanka, Mr. Le Quoc Trung, Chief Inspector, Vietnam Ministry of Natural Resources & Environment who spoke for Environmental Inspection Training in Vietnam.

In the afternoon session, the session pertained to challenges and successing Compliance and Enforcement Program in Asia. The objective of this session was to report on status compliance and enforcement program in People's Republic of China and Japan and report findings of AECEN rapid environmental compliance and enforcement program assessment in Indonesia. The Panelists for this session included Director Lu Xinyuan, State Environmental Protection Administration, People's Republic of China, Ms. Vivien Rosa, Ministry of Environment, Indonesia, Prof. Hidefumi Imrua, Nagoya University, Japan. Then in the evening session Madam Jane Nishida from World Bank was the moderator for the AECEN which was for sharing best practices and experiences on assessed information environmental compliance and enforcement. The Panelists included Ms. Feng Yan, State Environmental Protection Administration, People's Republic of China spoke about the SEPA regulations on Access to Information, Mr. Ang Kok Kiap, Pollution Control Department, National Environment Agency, Singapore spoke about the best practices in Self-monitoring, Reporting and Record-keeping and Prof. Mr. Robert V. Percival, University of Maryland School of Law, United States spoke about the role of the Media in Environmental 555 Compliance and Enforcement. Thereafter Dr. Supat Wangwongwatana, Chair, AECEN Executive Committee spoke about the AECEN Annual Awards for Excellence Program.

In the end of the session that was sharing for practices and experiences on stakeholders' participants Environmental Compliance and Enforcement included panelist Mr. Sun Yaocan, Taizhou Environmental Protection Bureau, People's Republic of China, spoke about the Public participation in Environmental Decision-making.

On the last day i.e. 15* of December, 2007 there were three workshops for best practices:

Workshop A: Designing and Implementing a Public Disclosure Program
Facilitators: Ms. Bebet Gozun, AECEN Secretariat Dr. Benoit Laplante, AECEN Secretariat Dr. Wang Hua, The World Bank

Workshop B: Developing Compliance Promotion Capabilities

Facilitators: Ms. Catherine McCabe, U.S. Environmental Protection Agency

Dr. Wijam Simachaya Thailand Pollution Control Department Ms. Dolora Nepomuceno, Laguna Lake Development Authority, Philippines

Workshop C: Public Involvement in Environmental Dispute Resolution in China

Facilitators: Mr. Steve Wolfson, U.S. Environmental Protection Agency Dr. Bie Tao, Deputy Director General, SEPA, People's Republic of China Ms. Hyeon-Ju Rho, American Bar Association Mr. Alex Wang, Natural Resources Defense Council.

In the afternoon session, there was sharing best practices on the role of civil society in Environmental Compliance and Enforcement. The Panelists who spoke were Hon'ble Mr. Justice Vijender Jain, the Chief Justice of Punjab & Haryana High Court and also the president of Asia Pacific Jurist Association (APJA) spoke on Public Interest Litigation (PIL) and the role of the C