Worldwide, a silent predator — brand piracy — is ravaging companies. Composed of a rag-tag bunch of counterfeiters, imitators, cybersquatters, et al, these brand pirates piggyback on the popularity of a brand, causing loss of sales, and worse, loss of image to the real owner o the brand.
Protecting the trust and goodwill the Tata brand has earned over the past 140 years, is of paramount importance to Tata Sons and the Tata Group. F. N. Subedar, senior vice president, finance, Tata Sons talks to Shubha Madhukar, about the battles he and his team have fought to protect the Tata brand .
Brand piracy has become a major crime worldwide. What steps is the Tata Group taking to protect the brand?
This protection calls for even more vigilance in product and service segments where the Tatas are not present. Infringements in these areas have a negative effect on the reputed and trusted Tata brand because they mislead people into thinking the Tatas have forayed into a new business area.
What is the surveillance system for spotting an infringement? How do you track such violations?
On getting information about a counterfeit case, the key is to handle it with speed and confidentiality as the offender withdraws his goods or services from the market or changes the address the moment he gets a hint that he has been caught. Also, in India, it is much easier for a person to resume the counterfeiting activity under a new identity than in developed jurisdictions, as we do not have social security numbers or other methods of tracking an individual.
What is the next step after you become aware of a violation ?
Nabbing such salesmen is not the end-objective but it helps us to reach the real culprits — the manufacturer and distributor of the counterfeit goods. In most such cases, the culprits don't have huge factories or large establishments; they usually work out of small, makeshift workshops. Hence an injunction cannot be issued against them. When their illegal activities are discovered, they just move to a new place and continue producing counterfeit goods.
Sometime back there was news about the Tatas winning the Tatara Tea case in Pakistan. Tell us about the case.
It wasn't that 'Tata' was being registered; there was an addition of a syllable 'ra'. But since it was similar to "Tata" we thought it would be a good case to oppose. Our opposition was accepted and the Pakistan Trade Marks Registry Office passed an order in 2004 rejecting the registrant's application. Less than a year later, the Pakistan high court passed an order in our favour too.
On the basis of trademark certificates, we have been consistently succeeding at WIPO against cybersquatters. This year, in the first week of October, we received an international order for TataSky — the Tata-Star Group joint venture bringing DTH to India. In this case, the arbitrator passed an order confirming we had valid rights in the TataSky mark and transferred the ownership of the domain name to us. We did not have to buy it.
Are there online infringement cases in India?
With reference to both online and offline violations, are Indian laws adequate?
We are moving towards it though. In February 2005, the Delhi high court passed a landmark order awarding penal damages — one of the first in the country in trademark and IPR issues — in our case against Fashion ID Ltd, a Chinese company. This company had registered the domain name tatainfotecheducation.com: a misuse of three trademarks — Tata, Tata Infotech and Tata Infotech Education. Though the order has not yet been enforced due to cross-territorial rights, I think we will be able to use this as a precedent in future orders within the country to award punitive damages.
Where is Tata Sons moving in terms of brand protection?
There are lessons we have learnt too: from the TataSky case we learnt the necessity to protect our IPR before taking steps to go international. Once we have taken care of our offline and online trademarks in foreign geographies, we are also creating awareness in the countries through visibility in their legal circle.
What about protecting other Tata brand names?
That is not to say that Tata Sons would not address an issue where a genuine Tata product has been counterfeited. However, in such cases, the specific company, whose product has been counterfeited, takes steps to protect its brand and we provide the necessary assistance and support.