Worldwide, a silent predator - brand piracy - is ravaging companies. Composed of a rag-tag bunch of counterfeiters, imitators, cybersquatters, these brand pirates piggyback on the popularity of a brand, causing loss of sales, and worse, loss of image to the real owner of 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?
The Tatas have been doing business for more than 140 years and the Tata brand is trusted by all stakeholders. The Tata mark, which appears on a whole range of products and services, stands for quality and ethical values. It is essential for us to protect this valuable legacy.
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?
We are a small team at Tata Sons in Mumbai working on brand protection. However, for surveillance, we leverage the entire Tata Group: its over two lakh employees, the distributors, dealers and business associates. People on the move spot most infringements. They convey it to their offices, which in turn inform us.
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 ?
We appoint an expert for initial investigations and based on his report prepare our action plan. For instance in the counterfeit Tata cutlery case, we had been hearing about salesmen selling Tata cutlery in some housing colonies, but it was only recently that we nabbed a salesman after receiving a phone call from one of our retired employees who lived in the colony. In another case, when we carried out a raid in the premises of a pressure cooker manufacturer, we discovered dies of not just the Tata mark but also those of many other business groups.
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.
The Tata Group acquired a new corporate logo towards the turn of the century and fresh trademark applications were made for different classes of products in India and abroad. About two years ago, a Pakistani firm, Bharucha and Company, informed us of a trademark application for the Tatara Tea mark and asked us if we would like to oppose it.
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.
Has brand infringement occurred in other countries also?
Globally, there were several online infringements and we have appealed to the World Intellectual Property Organisation (WIPO) in Geneva on them. WIPO has an online dispute resolution mechanism to protect trademark owners from the use of their domain names by unauthorised users.
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?
Yes. For our case against tatayellowpages.com, we went to the Delhi high court and it passed an order for name to be transferred to us. However, since the order was from an Indian jurisdiction, MSN, the registering authority, did not accept it. They did however respect the foreign jurisdiction order to the extent of keeping the domain name on hold and not allowing the registrant to transfer or sell it.
With reference to both online and offline violations, are Indian laws adequate?
The laws are adequate; it's the delay in our systems which is of concern. In addition, we do not have a sufficiently advanced concept of damages, such as those in overseas jurisdictions.
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?
We have reached a stage where chasing a counterfeit cutlery case does not give us sufficient challenge. We now create precedents, look at new legislations and test it in international forums. Some time back, when the anti-cybersquatting law was introduced in America, we filed a suit under it against a person who had registered the domain names tatasons.net, tatasons.org, tatasons.biz, tatasons.info, tatachemicals.biz and tisco.biz.
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?
The Tata brand is owned by Tata Sons and the individual companies derive their rights to use the Tata brand from Tata Sons. Protection and promotion of the Tata mark is, therefore, the responsibility of Tata Sons and that of other brands rests with the respective Group companies.
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.