Brand owners from the electrical equipment, car and e-commerce industries in India say that centralised enforcement is a priority to target counterfeits, as local police forces and courts are overburdened and IP issues overlooked.
Sukanya Sarkar, assistant manager of legal at electrical equipment company Havells in New Delhi, says that one of the biggest challenges faced by brands while combatting counterfeiting is the lack of a central point of coordination for all IP infringement and counterfeiting-related issues.
“The need for a national-level multi-agency task force for strengthening enforcement has been long advocated,” she says. “Further, economic offences are often not prioritised by the police forces owing to the wide array of crimes they have to deal with every day and sparse resources and budget available at their disposal.”
She adds that district courts and high courts are overburdened and that, more often than not, litigation actions take years to conclude. Specialised IP courts that can dispose of cases speedily is a top priority.
Arindom Hazarika, a senior brand protection manager at an Indian e-commerce platform but who is expressing his personal views, agrees that law enforcement authorities need to prioritise counterfeiting issues. He suggests that the appointment of a dedicated enforcement authority, such as a special branch under the police, could help.
According to the brand protection manager of a US car company, counterfeiting is also an offence that the police cannot arrest for without a warrant. Even if the police decide to do a raid, they do not give any dates and times to the brand owner. What he hopes to see are heavier fines and penalties for infringers to prevent them from repeat offending.
“Raid actions are difficult to coordinate and they take so long to do that by the time the police decide to do a raid, the counterfeiters have already left,” he says.
Educating within
A lack of awareness of IP rights in the country also contributes to widespread and rampant infringement as violators are often not aware of the wrongdoings on their part or the repercussions.
The brand protection manager of the US car company says that knowledge of brand protection is low in India and companies do not view IP protection as a priority.
“When I first joined this car company, it came as a shock to me that internally, many staff are not aware of the importance of IP and brand protection,” he says.
For his company, counterfeiting of spare parts is a rampant problem. He says that capacity building is key and that company staff and customers have to be educated about the impact counterfeits have on the brand, health and safety of customers, and society in general.
The brand protection manager says that his priority is to educate customers so they do not buy counterfeit products in the first place.
“Companies need to prioritise brand protection from the very top so that management understands the contribution it makes to the company and proper budgets can be allocated to IP protection teams,” he says.
He adds that, more often than not, brand protection team budgets are cut and efforts to track down infringers through raids and working with the police are stopped.
E-commerce clampdown
With consumers flocking to e-commerce platforms for online shopping, Sarkar says that virtual marketplaces are witnessing the listing of an increasingly large number of counterfeit products. Sarkar says that it is important that e-commerce platforms adopt new-age tech tools to swiftly identify and take down spurious listings on their own, not just after complaints by stakeholders.
Brand owners can use technology-based authentication solutions such as taggants, which are forensic markers, to enable users to verify the authenticity of a product. Tamper-proof/tamper-evident packaging and labelling to curb re-use are also some of the solutions that need to be implemented on a large scale.
Use of technology such as blockchain to track movement of products across supply chains, to ensure security and transparency, has already begun and is likely to become more commonplace.
Hazarika says that changing the shape of products and packaging materials may also be an option as this can help brands understand the extent of counterfeits in the market and the amount of time it takes for fakes to appear. However, there has to be a cost-effective way for businesses to want to implement this.
Another online problem Hazarika has observed is the registration of infringing domain names, websites and social media pages that resemble authentic brands.
“These platforms include information from original websites about the brands’ manufacturing and distribution channels to sound authentic and some have even gone to the extent of creating customer care numbers to provide validation about products,” says Hazarika.
He adds that mitigating replicas through online enforcement is relatively easy. However, for brand extensions and lookalikes which do not directly infringe trademarks, brand owners have to work much harder to track these down and have the relevant court decide on authenticity.
Sarkar says that the e-commerce law that came into place in 2019 has successfully addressed a lot of the concerns of rights holders and is a much-needed step towards curbing the menace of counterfeiting on online platforms.
However, she says that it remains to be seen how it would affect the business of e-commerce websites, as much of it is likely to be generated from small players in the market.
“Further, the feasibility of certain provisions such as the requirement of e-commerce platforms to obtain prior consent from trademark owners for listings is questionable, might be unnecessarily cumbersome, and lead to delays and backlogs,” she says. “An area of improvement could be introducing strong deterrent measures towards entities engaging in counterfeiting activities on more than one count.”
While the e-commerce law and other improvements could help brand owners in India tackle infringement, what is really needed is a better coordinated approach and centralised enforcement agency at the top.
