I FORMS OF INTELLECTUAL PROPERTY PROTECTION

Intellectual property protection in India includes patents, industrial design, copyright, trademark, geographical indications, plant varieties, trade secrets and confidential information. Intellectual property law is largely codified, except for trade secrets and confidential information, which are governed by common law principles and the law of contract. As India is a common law country, interpretation of the statutes by the courts is important and reference to judicial precedents is indispensable for a complete understanding of the law.

The key statutes on intellectual property in India are:

  1. the Patents Act 1970;
  2. the Trade Marks Act 1999;
  3. the Copyright Act 1957;
  4. the Designs Act 2000;
  5. the Geographical Indication of Goods (Registration and Protection) Act 1999;
  6. the Semiconductor Integrated Circuits Layout-Design Act 2000; and
  7. the Protection of Plant Varieties and Farmers' Rights Act 2001.

Intellectual property rights in India are broadly classified into the following categories.

i Patents

A patent is an exclusive right granted to the patentee of an 'invention' that is a novel product or process that involves an inventive step and is capable of industrial application.2

The term of a patent is 20 years starting from the date of the patent application.3 After the term of the patent expires, the invention becomes part of the public domain and the patentee ceases to have exclusive rights over the subject matter of the patent.

ii Registered designs

An industrial design4 may be protected in respect of specific classes of articles under the Designs Act 2000 if it is granted registration by the Controller General of Patents, Design and Trade Marks.

A design may be granted registration upon an application from a person claiming to be the proprietor5 of any new or original design that has not been previously published in any country.6 Upon being granted a registration, the registered proprietor of the design has a 'copyright in the design', which subsists for 10 years. The term of the copyright in a design may be extended by five years upon payment of a prescribed fee by the registered proprietor.7

iii Layout-designs of integrated circuits

The Semiconductor and Integrated Circuits Layout-Design Act 2000 provides statutory protection to semiconductor integrated circuits layouts8 for 10 years upon registration under the Act. The Semiconductor and Integrated Circuits Layout-Design Act 2000 was enacted to give effect to Section 6 of Part II of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). A layout-design may be registered if it is original, distinctive and distinguishable from other registered layout-designs. It must also not have been commercially exploited in India or other convention countries.9

The registered proprietor of a layout-design has the exclusive right to use the layout-design for a term of 10 years from the date of the application for registration or from the year of its first commercial exploitation anywhere in the world, whichever is earlier.10

iv Copyright and related rights

The Copyright Act 1957 provides for the protection of exclusive rights in the reproduction and exploitation of original literary,11 dramatic,12 musical13 and artistic works;14 cinematograph films;15 and sound recordings.16, 17 The nature of a copyright varies with the nature of the different works that are protected by it.

A copyright subsists in a work from its very creation. Copyright registration is not a prerequisite to enjoying copyright protection in India, but it serves as prima facie proof of ownership of copyright before a court.18

The copyright in a work typically subsists during the lifetime of its author and for 60 years after the year of the author's death, but there are variations to this rule in different classes of copyrights: for example, the term of a copyright in cinematograph films and sound recordings is 60 years from the year of publication.19

The Copyright Act also provides for the protection of 'broadcast reproduction rights,'20 'performer's rights,'21 'author's special rights' (i.e., 'the moral rights of an author')22 and 'performer's moral rights'.

India is a member of the Berne Convention of 1886 (as modified in Paris in 1971), the Universal Copyright Convention of 1951 and TRIPS. Although India is not a member of the Rome Convention of 1961, the Copyright Act is compliant with its provisions.

v Trademarks

A trademark is defined in the Trade Marks Act 1999 as a visual representation, or mark, that helps the consumer identify the source or provider of any goods or services. It can be represented graphically and is capable of distinguishing the goods and services of one person from those of others and may include the shape of goods, their packaging and combination of colours, among other things.23 A mark may be a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of a good, packaging or combination of colours or any combination thereof.24

Registration of a trademark confers upon the registered proprietor the right to exclusively use the trademark in connection with goods and services in respect of which it is registered, and entitles the registered proprietor to seek relief in respect of infringement.25 No person is entitled to institute any proceeding to prevent, or to recover damages for infringement of unregistered trademarks, but an action against a person for passing off goods or services as the goods or services of another would still lie.26

Registration of a trademark is valid for 10 years and may be renewed thereafter from time to time upon payment of a renewal fee prescribed under the Trade Marks Act 1999.27

The Trademarks Rules 2017 came into effect on 6 March 2017 introducing amendments that impacted trademark filing and prosecution. Notable amendments include:

  1. the number of forms reduced from 74 to eight;
  2. applicants are classified into four categories (i.e., individual, start-up, small enterprise28 and others);
  3. a procedure to apply for having a mark declared as well known has been introduced;29
  4. the official fee has increased, with special relief to individual, small enterprise and start-up entities;30 and
  5. a requirement for an MP3 format and graphical representation of the notations of a sound mark has been introduced.31

vi Geographical indications

Geographical indications are protected under the Geographical Indication of Goods (Registration and Protection) Act 1999. Under this Act, any association of persons or producers or any organisation or authority that represents the interests of producers of certain goods32 may apply for registration of geographical indication in relation to the goods.33 A geographical indication is an indication that identifies goods as originating, or being manufactured, from a particular geographical region or territory where a given quality, reputation or other characteristic of those goods is attributed to its geographical origin.34

The registration of a geographical indication is valid for 10 years and may be renewed from time to time by way of an application by the registered proprietor.35 Registration of authorised users is also renewed in the same manner.36 Only authorised users are entitled to exclusive use of a geographical indication.

A valid geographical indication entitles the registered proprietor and the authorised users to obtain relief in respect of infringement of the geographical indication.37

The Geographical Indications Registry is located in Chennai and since its establishment, the registry has granted registrations to 238 geographical indications.38

vii Confidential information and trade secrets

Indian law on trade secrets and business information has not been codified under statute. Trade secrets are protected in India through contract law and the equitable doctrine of breach of confidence. In cases where confidential information and trade secrets are not protected by a contract, the person seeking to enforce the confidentiality or secrecy of information can do so only if certain conditions are fulfilled:

  1. the information must be confidential;
  2. the information must have been disclosed in circumstances from which an obligation of secrecy arises; and
  3. the confidant should attempt to use or disclose the information.

Indian courts have observed that confidential information must be protected because a confidant is under a duty of confidentiality or fiduciary duty towards a confider, which if dishonoured would lead to the confidant gaining unfair advantage over the confider who offered the information in trust.39

There are no specific statutory provisions that protect trade secrets or confidential information under Indian criminal law. There are provisions under the Indian Penal Code 1860 relating to criminal breach of trust, cheating, burglary, extortion, etc. that might be applied in a case where confidential information is misused.40 For example, it is an offence for a public servant to misuse his or her position with the intent of causing injury to any person. This provision is so broad that if a government officer is given documents containing trade secrets, it is an offence for that officer to misuse his or her position and disclose the secrets, beyond the proper discharge of his or her duty.41

Similarly, the Right to Information Act42 prohibits the disclosure of information including commercial confidences, trade secrets or intellectual property, the disclosure of which would harm the competitive position of a third party.43 However, the exception to this rule is that the competent authority may disclose such information if the larger public interest warrants the disclosure.44

viii Plant varieties and farmers' rights

The Protection of Plant Varieties and Farmers' Rights Act 2001 was enacted to comply with Article 27 of TRIPS. The legislation protects plant varieties by establishing the rights of farmers and breeders over the plant genetic resources that are being used to create new varieties of plants. It aims to provide for the establishment of an effective system for protection of plant varieties.

Protection under the Act does not include microorganisms.45 To be granted registration, a plant variety must be novel, distinctive, uniform and stable.46 An application for registration under this legislation can be made to the Plant Varieties Registry.47 The registrar will then advertise the application for oppositions and give both parties a hearing before deciding on the application.48

The aggregate term of protection in the case of a variety of trees or a variety of vines is 18 years,49 15 years from the date of notification of the variety in the case of extant varieties50 and in all other cases it is 15 years from the date of registration of the variety.51

The legislation grants provisional protection to a breeder whereby the registrar shall have power to issue such directions to protect the interests of a breeder against any abusive act committed by any third party during the period between the filing of an application for registration and the decision taken by the authority on that application.52

A right granted under the legislation is infringed when a non-breeder or a person who is not an agent or licensee of a registered variety, sells, exports, imports or produces such variety without authorisation.53 Infringement also occurs when any person uses, sells, exports, imports or produces another variety under a name identical or deceptively similar to a registered name so as to cause confusion among the public.54

ii RECENT DEVELOPMENTS

i Decisions

Whatman International Limited v. P Mehta and others55

In Whatman, the plaintiff brought a suit before the Delhi High Court for trademark infringement, trade-dress, passing off, etc. against the defendants, which had manufactured and sold filter paper under the trademark 'WHATMAN' (registered in favour of the plaintiff) since 1992. Despite giving undertakings in separate criminal proceedings, the defendants continued to sell the infringing goods, which led to the plaintiff filing the suit. The defendants also violated a court order made in the civil proceedings and consequently the plaintiff initiated contempt proceedings against them. The court directed the first, second and third defendants to appear in person and recorded their statements.

The Delhi High Court found that the defendants had made false statements and their disobedience amounted to contempt of court. The defendants were also held liable for passing off and trademark infringement. The court awarded both exemplary and punitive damages in a total sum of 3.6 million rupeees to the plaintiff in view of that conduct and the fact that the defendants had committed deliberate infringement of the plaintiff's mark for a period of 25 years. Costs were also awarded to the plaintiff in the sum of 1.4 million rupees.

This judgment highlights the facts that courts are clamping down heavily on false statements and wilful infringement. To ascertain the truth, courts are resorting to calling parties to court to determine the nature of their involvement and accordingly decide their punishment, which may include but is not limited to hefty damages as it was in the above case.

Louis Vuitton Malletier v. OMI and another56

In a suit for trademark infringement and passing off, infringing goods were found at the defendants' premises, following the appointment of a local commissioner. The individual defendants in their written pleadings sought to blame each other; each claiming that the other was the owner of the seized goods. Therefore, to ascertain the truth, the court called and examined both the defendants in court. The second defendant stated in court that he had not sold any branded products. However, after the appointment of another local commissioner, more than 500 counterfeit products of 34 different brands were found at the second defendant's premises. This led to the filing of a contempt petition, in which the second defendant admitted that he had lied under oath. The court held that the second defendant's conduct amounted to contempt in the face of the court and imposed a sentence of one month's imprisoment. The court rejected the second defendant's argument that a local commissioner's report had not previously been mentioned in any reported judgment on contempt in the face of the court, holding that a court-appointed local commissioner was a 'ground level representative of the judiciary'; an 'extended arm and agent of the Court'; and the 'eyes and ears of the Court'.

M/s AZ Tech (India) and another v. M/s Intex Technologies (India) Ltd and another57

The Supreme Court directed the Delhi High Court to work out procedures for the effective disposal of IP matters so that a model for the disposal of civil suits could be chalked out, which could form the basis of a uniform action plan for the rest of the country. Consequently, the Delhi High Court promulgated the Delhi High Court (Original Side) Rules, 2018. These rules came into effect from 1 March 2018 and changed the procedural framework of the suits to be filed on the original side of the Delhi High Court, including IP law suits. The salient features of the rules are:

  1. Manner of service. The rules permit service to the defendant by services such as WhatsApp and through email. For that purpose, the email address listed on the defendant's website or public domain is deemed to be the correct address. This is especially useful for intellectual property matters where infringers avoid service.
  2. Filing the affidavit of admission and denial along with pleadings. Previously, the stage of admission and denial started pursuant to a specific court direction that was given after the pleadings in a law suit were completed. This process took a few months. The new rules have altered this practice and now parties are expected to file their affidavit of admission and denial along with their pleadings. The defendant has to file its affidavit of admission and denial of the plaintiff's documents along with its written statement. Similarly, the plaintiff has to file its affidavit of admission and denial of the defendant's documents along with its replication.
  3. Evidence. The most significant changes are at the stage of evidence. Evidence in IP matters is generally recorded before a court commissioner and the rules introduced timelines for this, such as the recordal of evidence on a day-to-day basis, and empowered the court commissioner to monitor those timelines. If the evidence did not conclude within the timeline set by the court, the commissioner has to furnish a report to the court stating the reasons for delay and direct parties to seek appropriate orders from the court.

The rules also formalised and set out guidelines on how to record evidence by video conference, which is especially useful for foreign witnesses who cannot travel to India for their evidence. Additionally, the provision to record evidence outside the court premises was introduced. Further, if the documents are voluminous, there exists a provision to carry out exhibit marking in the absence of the witness.

Cipla Limited v. Novartis AG and another58

This appeal was against an order restraining the defendant from selling a generic version of the plaintiff's patent of the respiratory drug containing indacaterol or indacaterol maleate, marketed under the name Onbrez. The court ruled in the plaintiff's favour. Section 83 of the Patents Act sets out general considerations that need to be taken into account with respect to the working of patented inventions and the court held that Section 83 does not curtail the right of the patentee to stop a party from infringing its rights under Section 48 of the Patents Act. It also held that manufacturing alone in India does not necessarily show the 'working' of the patent (i.e., the use of the invention covered by the patent in India) and even imports may suffice to meet the working requirement under Indian law. However, whether the patent is sufficiently worked will depend on the quantum of import or local manufacture.

Christian Louboutin SAS v. Nakul Bajaj and others

Christian Louboutin, a manufacturer of luxury shoes, filed a suit against the defendants who operated a website (darveys.com), selling various products bearing the luxury brand names of the plaintiff. The defendants' website contained the complete 'Christian Louboutin' product catalogue and claimed that its products were 100 per cent authentic. The website also used the image of the plaintiff's founder and used the words 'Christian' and 'Louboutin' as metadata. The court determined that the only issue that required determination was whether the defendants were exempt as intermediaries from liability under Section 79 of the Information Technology Act, 2009 (IT Act).

Section 79 of the IT Act, 2009 is the safe harbour provision in India for intermediaries and provides an exemption from IP infringement. The court after undertaking a detailed legal analysis of Indian and foreign jurisprudence observed that the 'violation of trademark rights by e-commerce platforms and the extent of protection/exemption that is to be awarded to them and the conditions under which the same are to be awarded' would need to be determined.

The court therefore investigated the nature of e-commerce websites to determine what kind of service would entitle them to safe harbour protection. To answer this question, the court listed out an illustrative list of 26 services that e-commerce websites perform to determine whether performing each of these services entitled the e-commerce website to still qualify as an intermediary. These services included:

  1. identifying the seller and providing details of it;
  2. providing transport for the seller to send its product to the platform's warehouse;
  3. providing quality assurance after reviewing the product;
  4. enrolling members upon payment of membership fees;
  5. promoting the product among its dedicated database of customers;
  6. advertising the products on the platform;
  7. packaging the product with its own packing, instead of the original packing of the trademark owner, or changing the packaging in which the original owner's product is sold;
  8. using trademarks through metadata or in the source code of the website to attract traffic; and
  9. deep linking to the trademark owner's website.

The court also examined whether any of the e-commerce platforms took adequate measures to ensure that no unlawful acts were committed by the sellers. This included measures such as 'the terms of agreement entered into between the sellers and the platform, the manner in which the terms were enforced and the consequences of the violation of the terms along with whether adequate measures are in place to ensure that trademark rights are protected.'

The court held as follows:

  1. Each and every product on darveys.com was claimed to be checked by it and shipped to the customer only after that checking. Darveys.com did not disclose the details of the foreign sellers or where they purchased the products from and it charged membership fees for its customers. Darveys.com also had a policy that if its product turned out to be counterfeit, it would return twice the money. The court thus held that Darveys.com exercised complete control over its products. It was identifying sellers and enabling them to actively promote and sell the products in India. Therefore, the role of Darveys.com was more than an intermediary.
  2. With respect to the safe harbour provision under the IT Act, the court held that the intent of the safe harbour provision was not to let e-commerce platforms that 'actively conspire, abet or aid, or induce commission of unlawful acts on their website' go scot-free. Consequently, calling an e-commerce website an 'intermediary' would not automatically mean that it qualifies as an intermediary that is entitled to protection under the safe harbour provision.59
  3. Further, the exemption provided under Section 79 of the IT Act to intermediaries is not absolute. The exemption shall not apply if the platform 'is an active participant or is contributing in the commission of the unlawful act'. 'Any active contribution by that platform or online market place completely removes the ring of protection or exemption which exists for intermediaries under Section 79'.60
  4. Section 81 of the IT Act does not grant any immunity to intermediaries that are in violation of the Trademarks Act. The court clarified that any 'online market place or e-commerce website which allows for storing of counterfeit goods would be falsifying the mark and displaying advertisements of the mark on the website so as to promote the counterfeit goods would constitute falsification'. All of these acts would take the e-commerce website outside the scope of the exemption provided under Section 79 of the IT Act.61

Given the increasing use of e-commerce platforms, this judgment is extremely significant as it lays down the legal principles applicable in situations where a website sets up a defence as an intermediary.

Koninklijke Philips Electronics NV v. Rajesh Bansal

In the first post-trial decision in India relating to standard-essential patents,62 Philips was granted a permanent injunction along with punitive damages. The court held that Philips' Indian patent was an 'essential patent' for DVD technology since the patentee had proved that the corresponding US and EP patents had been declared as essential for DVD technology.63 The court stated that the following could be considered for ascertaining royalty:

  1. the parties' informal negotiations with respect to the end product;
  2. fair, reasonable and non-discriminatory terms; and
  3. the incremental benefit derived from the invention.64

Further, the court's assessment of damages was based on the wrong doing of the defendants.65 The court also awarded costs in favour of the plaintiff.

Monsanto Technology LLC v. Nuziveedu Seeds Ltd66

The Supreme Court in Monsanto set aside a Delhi High Court Division Bench judgment after holding that 'summary adjudication of technically complex suits' such as patent infringement suits, which necessarily require expert evidence to be led, is 'neither desirable or permissible under the law'.

The Division Bench of the Delhi High Court held that Monsanto's patent for an artificial gene construct was ineligible subject matter under Section 3(j) of the Patents Act. The Division Bench interpreted the patent claims relating to an artificial gene construct (inserted into a plant to eventually develop a plant with insect resistance) as a 'plant, seed, part of a plant and an essentially biological process', each of which qualified as ineligible subject matter for a patent under Section 3(j) of the Patent Act.

Setting aside the order, the Supreme Court restored the patent and held that the 'suit involved mixed questions of law and facts' that could only be examined on the basis of evidence and thus sent back the suit to the lower court for trial, keeping all questions of fact and law open. Further, the Supreme Court restored the interim order of the trial court till the determination of the suit. The interim order of the trial court had found the patent prima facie valid and, with respect to the contractual disputes between the parties, had set up an interim arrangement between the parties to the dispute.

Wockhardt Limited v. Torrent Pharmaceuticals Ltd and another67

Torrent Pharmaceuticals filed a suit for trademark infringement and passing off. At the stage of interim injunction, arguments only took place on passing off. The single judge of the Bombay High Court held that the ingredients of passing off were not made out and refused an interim injunction. On appeal, the Division Bench of the Bombay High Court, set aside the single judge's order and granted an injunction in favour of Torrent Pharmaceuticals.

The Supreme Court, on examining both decisions, defined the issue as the question of whether the plaintiff had acquiesced to the defendants' use. The Supreme Court, agreeing with the Division Bench of the Bombay High Court, held that there was no material to support that the plaintiff had acquiesced to the defendant's use. The Supreme Court clarified that acquiescence is not mere delay in bringing an action against a party, but requires a positive act on the part of the claimant. Mere silence does not amount to acquiescence.

The decision is noteworthy for another point. The Supreme Court affirmed that Wander v. Antox,68 had been correctly applied by the Division Bench of the Bombay High Court. Wander dealt with the degree of interference of an appellate court in a matter and held that:

[T]he appellate Court will not interfere with the exercise of discretion of the Court of the first instance and substitute its own discretion, except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely, or where the Court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions … the appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the Court below.

Consequently, parties tend to argue that the appellate court should not reassess the material to reach a conclusion opposite to that of the lower court. This at times leads to appellate courts not reassessing factual findings that are necessary to be adjudicated upon as they are inextricably linked to the legal findings of a court and highlight legal errors. By affirming that Wander v. Antox was correctly applied, the Supreme Court affirmed the principle that an examination of errors of law, by an appellate court, can involve a re-examination of key facts.

Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd69

A five-judge bench of the Delhi High Court held that an action for passing off and design infringement can be clubbed together in one suit, to avoid multiplicity of proceedings. The nature of these suits and the evidence to be led by the claimant to prove its case with respect to each of these actions would necessarily lead to common issues of fact and law arising.

III OBTAINING PROTECTION

i Patents

An invention may be granted a patent under the Patents Act, 1970 when the three necessary conditions are fulfilled: it should be novel, involve an inventive step, and be capable of industrial application.70 The determination of whether these tests are satisfied is determined by the Controller of Patents who examines each patent application.

Sections 3 and 4 of the Patents Act provides an exhaustive list of inventions that do not qualify as eligible subject matter for patent protection in India. If an invention falls within the ambit of these sections, no patent shall be granted, even if these inventions were to satisfy the criteria of novelty, inventive step and industrial application. The Delhi High Court has held that for subject matter falling within the scope of Section 3, an analysis applying those three criteria under Section 2(1)(j) need not be employed.71 For instance, inventions relating to atomic energy;72 plants and animals in whole or part including seeds, varieties and species and essentially biological processes for the production or propagation of plants;73 computer programs74 per se or algorithms; and mathematical or business methods are not patentable in India.75 Processes and products relating to the medical treatment of humans and animals are also not patentable in India.76 However, patenting new forms of already known substances is subject to the patent applicant proving an enhancement in the known efficacy of the new form of the existing substance when compared to the efficacy of the known substances.77 Hence, Swiss-style claims are not permissible under the Patents Act. In Novartis v. Union of India (2013), the Supreme Court held that the test of efficacy in the case of pharmaceutical substances can only be therapeutic efficacy.

The Patents Act permits both pre-grant and post-grant oppositions that are filed before the Patent Office. A pre-grant opposition can be filed by 'any person' before a patent is granted.78 The scope of a post-grant opposition is narrower since a post-grant opposition can only be filed within one year of the grant of the patent and only by 'any person interested'.79, 80 The procedure governing the opposition proceedings is laid out in Chapter VI of the Patents Rules 2003. The Act vests the Controller of the Patent Office with certain powers of a civil court. A party filing a pre-grant or a post-grant opposition has the right to be heard by the Patent Office before it renders its decision. The decision of the Patent Office in post-grant opposition proceedings can be appealed before the Intellectual Property Appellate Board (IPAB). Additionally, any 'person interested' can directly challenge the validity of a patent through a revocation petition before the IPAB under Section 64 of the Patents Act, 1970. The orders of the Patent Office and the IPAB in various opposition proceedings can be accessed on the website of the Patent Office.

ii Trademarks

In trademark law, any mark, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination of these that is used or proposed to be used in relation to any goods may be granted registration if the goods of the proprietor of the said mark are capable of being distinguished in the course of trade from those of another. The term 'mark' is broad enough to include the shape of goods, packaging or combination of colours, or any combination of the same. Additionally, the Act also allows service marks to be registered as well. The Trade Marks Act, 1999 also provides for multi-class applications. The Trademark Registry has also started registering sound marks since 2008.

An application for registration of a trademark is filed at an office of the Trademark Registry, which has its main office in Mumbai with branch offices in Delhi, Kolkata, Chennai and Ahmedabad. Every application is scrutinised by the Examiner of Trademarks under the provisions of the Trade Marks Act, to ensure that Section 9 and 11 of the Trade Marks Act are not applicable.81 Thereafter, every application is advertised by the Trademark Registry before it is registered. Any person wishing to oppose the mark may do so within three months of the date of registration or within a further period not exceeding one month. The Registrar shall then grant both parties a hearing before deciding on the application.

iii Designs

An application for design is made, under the Designs Act, 2000, to the Controller of Designs specifying the class in which it is sought to be registered. A design will not be registered under the Designs Act if:

  1. it is not new or original;
  2. it has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration;
  3. it is not significantly distinguishable from known designs or combination of known designs; or
  4. it comprises or contains scandalous or obscene matter.82

iv Copyright

A copyright subsists in a work from its very creation. Copyright registration under the Copyright Act, 1957 is not a prerequisite to enjoying copyright protection in India. However, registration of a copyright serves as prima facie proof of ownership of copyright in a Court.

v Plant varieties

A new plant variety shall be registered under the Protection of Plant Varieties and Farmers' Rights Act if it conforms to the criteria of novelty, distinctiveness, uniformity and stability.83 An extant variety shall be registered under this Act within a specified period if it conforms to such criteria of distinctiveness, uniformity and stability as shall be specified under the regulations.84 Every application for registration shall:

  1. be with respect to a variety;
  2. state the denomination assigned to such variety by the applicant;
  3. be accompanied by an affidavit sworn by the applicant that such variety does not contain any gene or gene sequence involving terminator technology;
  4. be in such form as may be specified by regulations;
  5. contain a complete passport data of the parental lines from which the variety has been derived along with the geographical location in India from where the genetic material has been taken and all such information relating to the contribution, if any, of any farmer, village community, institution or organisation in breeding, evolving or developing the variety;
  6. be accompanied by a statement containing a brief description of the variety bringing out its characteristics of novelty, distinctiveness, uniformity and stability as required for registration;
  7. be accompanied by such fees as may be prescribed;
  8. contain a declaration that the genetic material or parental material acquired for breeding, evolving or developing the variety has been lawfully acquired; and
  9. be accompanied by such other particulars as may be prescribed.85

vi Geographical indications

Any association of persons or producers or any organisation or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering a geographical indication in relation to such goods, can apply for registration of a geographical indication with the following:

  1. a statement as to how the geographical indication serves to designate the goods as originating from the concerned territory of the country or region or locality in the country, as the case may be, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical, environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality, as the case may be;
  2. the class of goods to which the geographical indication shall apply;
  3. the geographical map of the territory of the country or region or locality in the country in which the goods originate or are being manufactured;
  4. the particulars regarding the appearance of the geographical indication as to whether it is comprised of the words or figurative elements or both;
  5. a statement containing such particulars of the producers of the concerned goods, if any, proposed to be initially registered with the registration of the geographical indication as may be prescribed; and
  6. such other particulars as may be prescribed.86

IV ENFORCEMENT OF RIGHTS

i Possible venues for enforcement

The Indian judiciary is essentially a three-tier system with approximately 600 district courts hearing cases in the first instance, 24 high courts, and the Supreme Court87 at the apex. The Supreme Court is the court of final appeal and sits in Delhi.88 High courts are the highest judicial bodies in a state and have superintendence over all courts and tribunals within their territorial jurisdiction.89

District courts generally have an unlimited pecuniary jurisdiction on the civil side. However, the Delhi, Bombay, Calcutta, Madras, Shimla, and Jammu and Kashmir. High Courts also have a first instance jurisdiction where IP disputes above a certain pecuniary level can be entertained directly by the High Court. For instance, the Delhi High Court can currently entertain fresh IP suits, as the court of first instance, if the suit value is more than US$150,000.

High courts also exercise writ jurisdiction, invoked for the violation of fundamental rights and other legal rights of citizens and non-citizens alike. Writs are issued by courts against public bodies and writ jurisdiction can be directly invoked against decisions of various IP registries such as the Patent Office, Trademarks Registry etc., when there is a violation of principles of natural justice or other principles enshrined in the Constitution. Moreover, appeals may lie before the writ court against the final decision of the IPAB, which is the first appellate authority against the orders of the IP registries (except in copyright matters, where the first appellate body is the Copyright Board).

ii Requirements for jurisdiction and venue

Jurisdiction may depend upon the relevant territory of the court, and the pecuniary value and subject matter of the dispute. Each of these determinants are independently considered for a court to assume jurisdiction.

Under the Code of Civil Procedure, an Indian court would have jurisdiction over a matter if the alleged infringement took place or the cause of action arose within its territorial jurisdiction, or if the defendant or any of the defendants actually and voluntarily resides, carries on business, or personally works for gain, within its territorial jurisdiction.90 The location of the plaintiff is not a consideration. In Sholay Media Entertainment Ltd v. Yogesh Patel,91 the Division Bench of the Delhi High Court held that even an infinitesimal fraction of a cause of action will confer jurisdiction.

However, in an action for infringement of a registered trademark or for infringement of copyright, the civil court within whose jurisdiction the claimant actually and voluntarily resides, or carries on business or personally works for gain, also has jurisdiction.92

In Bristol-Myers Squibb Company and another v. VC Bhutada and others,93 the Delhi High Court held that to determine that a defendant 'carries on business', the plaintiff has to prima facie show through facts enumerated in the plaint that there is an apprehension of 'offer for sale', which gives rise to a cause of action. The veracity of the apprehension cannot be challenged at the preliminary stage and would have to be determined at trial.

In cases where the validity of the registration of an intellectual property right is disputed, Indian courts will have jurisdiction only if the registration is granted in India. It would therefore not be possible to question the validity of a registration of an intellectual property right granted in a foreign jurisdiction before an Indian court.

However, it would be possible for a foreign entity to challenge the validity or registration of an intellectual property right granted in India. Further, even if rectification proceedings instituted by a defendant in a foreign court are pending, these will not preclude an Indian court from granting interlocutory relief in favour of the claimant in trademark matters.

Moreover, to increase the efficiency and speed of trial in IP disputes, the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 categorised IP disputes as commercial disputes and modified procedural law to expedite and manage their timeline. The Act directed the creation of commercial divisions within high courts and currently, the Delhi and Bombay High Courts have set up commercial divisions to manage IP suits.

Additionally, to avoid multiplicity of proceedings, the Supreme Court has held that a party who has already sought revocation of a patent before the IPAB is precluded from filing a counterclaim challenging the validity of the same patent in a suit for infringement of the patent.94

Additionally, Section 104 of the Patents Act, 1970 and Section 22(4) of the Designs Act provide that if the defendant has challenged the validity of the patent through a counterclaim and challenged the validity of a design by way of a defence95 in a patent and design infringement suit respectively, then such suits are liable be transferred to the High Court for adjudication.

iii Obtaining relevant evidence of infringement and discovery

Anton Piller orders

A party in a civil suit may move the court for an Anton Piller order if it seeks detention, preservation or inspection of any property that is the subject matter of the suit. When allowing an application of this nature, the court may authorise any person to enter the property and take samples that may be necessary for the purpose of obtaining full information or evidence.96 Thus, in a civil action for infringement, the court commissioner can be appointed ex parte to visit the defendant's premises, search and seize the infringing goods. These goods may either be taken into custody or left on trust with the defendants after they are sealed.

Usually, the court appoints a commissioner, who may be a lawyer or a member or employee of the court, to carry out the directions of the court in an Anton Piller order. Commissioners may also be appointed for a scientific investigation or for making local investigations that the court may find necessary.97

A court commissioner is given wide powers while conducting an investigation, is 'an extended arm and agent of the Court' and is 'effectively the eyes and ears of the Court'.98

John Doe orders

Great care is taken when actions are instituted against parties that run small concerns in markets where numerous parties are engaged in selling counterfeit goods or other specimens of trademark, copyright or design infringement. This is because often such parties work in tandem and in close proximity with one another and if trying to obtain the precise details and identities of one such party leads to suspicion in a market, the entire market of infringers would disappear before the action is even instituted.

Hence, Indian courts also issue orders against unidentified parties or 'John Does'. This has proved extremely useful in anti-counterfeiting actions and actions against copyright and broadcast piracy. Once the defendants have been identified, the court allows the plaintiff to formally include them into the suit.

Norwich Pharmacal orders

A Norwich Pharmacal order may be sought from Indian courts after proceedings have commenced, seeking information or documentation from a third party that may be in a position to assist the court in the IP suit.

In Souza Cruz SA v. N K Jain,99 the Delhi High Court directed the Commissioner of Customs and Excise at Hyderabad to disclose the complete details of infringing cigarettes being exported to Ukraine. This order has been followed in Shaw Wallace v. Gemini Traders,100 where the customs and excise authorities were directed to disclose details of infringing whisky moving from one state to another in violation of a court order.

In Bridgestone Corporation v. Tolins Tyres Pvt Ltd,101 the court directed the Public Information Officer at Land Customs Port, Bihar to produce records pertaining to the export of tires by the defendants.

Discovery

Discovery is possible only after legal proceedings have commenced. Under the provisions of Order XI Rules 1 and 2 of the Code of Civil Procedure 1908, discovery can be by interrogatories, delivered with the leave of the court, for the examination of the opposite parties. So long as interrogatories are relevant, they can be allowed.

iv Trial decision-maker

The trial decision-maker varies depending on the forum where the proceedings are pending. In the district courts, the evidence led by the parties is recorded by the presiding judge. In the High Court, however, the evidence is recorded either before a joint registrar (who is basically a junior or subordinate judge), or the parties may opt to request the court to appoint court commissioners to record evidence to expedite the process. In the latter, the High Court appoints judicial officers (local commissioners), typically retired judges, to record depositions of the witnesses of the parties. The local commissioner can then fix consecutive dates for the cross-examination of witnesses and this ensures that foreign witnesses do not have to repeatedly travel to India for depositions, and evidence can be recorded in a short span of time. Court commissioners are 'an extended arm and agent of the Court' and 'effectively the eyes and ears of the Court'.102

Section 115 of the Patents Act 1970 also provides that in any suit for infringement or other proceedings under the Act, the court may appoint an independent scientific adviser to assist the court or to inquire and report upon any such question of fact or opinion that does not involve a question of interpretation of law, as it may formulate for the purpose.

v Structure of the trial

The presentation of evidence at the trial is governed by the provisions of the Indian Evidence Act 1872. Traditionally, evidence at a trial is given orally in the form of statements of witnesses or on the basis of documents in cases where the witness producing the documents is not authorised or required to give oral evidence. Third parties such as consumers or dealers, who are desirable witnesses, are rarely willing to give evidence in a court.

Evidence is given on the issues framed by the court with the help of both parties, after the admission and denial of documents. When the issues are framed, it is indicated whether the onus of proof of a particular issue lies with the plaintiff or the defendant and preparation for the trial commences accordingly.

Expert evidence is allowed in patent and copyright infringement cases or others that involve a complex aspect of intellectual property; for example, to explain the ambit of satellite broadcasting rights.

A trial may often take years if there are numerous witnesses. Therefore, cases in which there are only two or three witnesses on either side have a better chance of early disposal.

The statements of a witness given in a judicial proceeding or before any person authorised by law to take the same, can be used in a subsequent judicial proceeding between the same parties or their representatives or at a later stage of the same proceeding in certain circumstances.

vi Infringement

The Patents Act 1970 is silent on what qualifies as an infringement of a patent. Section 48, however, vests certain exclusive rights upon the patentee or his or her agent. Violation of the rights conferred on the patentee under the Act would therefore constitute infringement. In a patent infringement suit, the court assesses both the liability of the defendant as well as the quantum of damages. In most patent infringement cases, the defendant institutes a counterclaim challenging the validity of the suit patent, which must also be determined by the court in the same trial. In other words, Indian courts are empowered to decide issues of invalidity in infringement actions.103 In an infringement suit, the defendant may raise the issue of validity of a patent in two ways:

  1. as its defence to the plaintiff's claim of infringement;104 or
  2. by instituting a counterclaim challenging the validity of the patent.105

Literal infringement

The first step in patent infringement assessment requires determination of the rights conferred by the patent. For this, the court engages in claim construction, namely an exercise that involves understanding the 'scope and meaning of the [patent] claims including its terms'.106 To construe a patent claim, the court first reads it as 'ordinary English sentences without incorporating into them extracts from the body of the specification or changing their meaning by reference to the language used in the body of the specification'.107 The Delhi High Court in the Roche108 case relied upon Edward H Philips v. AWH Corporation109 and observed that to read patent claims differently from their ordinary and general meaning would be 'unjust to the public, as well as would be an evasion of the law'.110 The court further held that only when there is a doubt as to meaning a patent claim, could reference be made to the patent specification as the patent specification may then 'aid in solving or ascertaining the true intent and meaning of the language employed in the claims'.111 Elaborating further, the court held that if claim terms still remain ambiguous, reference could also be made to the prosecution history of the patent, inventor testimony, dictionaries and treaties.112 It clarified that extrinsic evidence such as inventor testimony, dictionaries and treaties would have lesser weight as compared to intrinsic evidence such as prosecution history.113

The infringement analysis then proceeds with a comparison of the elements of the claim and the elements of the alleged infringer's product or process. If the alleged infringer's product or process is covered by the claims as construed, infringement is established.

To understand whether an infringement is present in a particular case the guidelines that the court follows are:

  1. read the claims first and if there is an ambiguity, then read the description and complete specification;
  2. if there is still an ambiguity, then reference could be made to both intrinsic and extrinsic evidence;
  3. find out what constitutes prior art;
  4. find out what improvement is present in the patent claimed to be infringed, over the prior art;
  5. list the broad features of the improvement (pith and marrow of the claims);
  6. compare those broad features with the defendant's process or apparatus; and
  7. if the defendant's process or apparatus is either identical or comes within the scope of the plaintiff's process or apparatus, there is infringement.114

Contributory infringement

The concept of contributory infringement has not been incorporated in the statute and therefore each person or entity taking part in an act of infringement is individually liable. However, a court, if it deems fit in a particular case, may import the common law principles of vicarious liability, abetment and contributory infringement into a patent infringement dispute to impute liability to indirect or contributing infringers.

Doctrine of equivalents

Indian courts recognise the doctrine of equivalents. In an infringement suit before the Bombay High Court,115 the doctrine of equivalents was discussed to settle the dispute that related to infringement of a patent for tamper-proof locks. This doctrine was also recognised by the Madras High Court in Mariappan v. A R Safiullah and others,116 in which it was held that a person is guilty of infringement if he or she makes what is, in substance, the equivalent of the patented article. The Delhi High Court, in Raj Parkash v. Mangat Ram and others117 held that:

[U]nessential features in an infringing article or process are of no account. If the infringing goods are made with the same object in view which is attained by the patented article, then a minor variation does not mean that there is no piracy. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article. Some trifling or unessential variation has to be ignored.118

vii Defences

The defendant in a patent infringement suit can argue that the patent is invalid since it lacks novelty, is obvious or is not capable of industrial application. India also specifically bars the patentability of a new form of a known substance.

The alleged infringer can also argue that the patentee failed to disclose corresponding applications filed in foreign jurisdictions for the same and substantially the same invention. In Maj (Retd) Sukesh Behl and another v. Koninklijke Philips Electronics,119 the Delhi High Court has clarified that such non-disclosure must be material and intentional. The Roche decision has further stated that if the patentee has substantially complied with the requirement of disclosure of foreign applications, then this defence would fail.120 However, the courts have usually taken a strong view against suppression of material facts. Thus, it is better to reveal too much detail than too little.

The defendant's acts are for the purposes of developing and submitting information to a regulatory body for acquiring marketing approval.

Common law defences such as laches and estoppel are also available.

While the Indian statute provides a detailed mechanism for the grant of a compulsory licence, the ability of an infringer to obtain a compulsory licence is not a defence for infringement.

viii Time to first-level decision

The time span for obtaining a decree in suit for infringement of a patent is approximately 24 to 36 months.

ix Remedies

Reliefs in a suit for infringement of patent

Section 108 of the Patents Act 1970 provides that the reliefs a court may grant in any suit for infringement include an injunction subject to such terms as the court sees fit, as well as either damages or an account of profits. In addition to this, the court may also order that goods that are found to be infringing and implements used in creating the infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of any compensation.

Damages and compensation

In suits for trademark infringement and patent infringement, a plaintiff is entitled to seek damages or an account of profits.121

In a suit for copyright infringement, the claimant may be entitled to damages, accounts and even conversion damages (unless the defendant establishes that they were not aware and had no reasonable grounds to believe that copyright was being violated).122

A trend of awarding damages has been particularly observed in cases pertaining to software piracy. In the case of Microsoft Corporation v. Amritbir Singh and another.123 the plaintiff was awarded damages of 3 million rupees against the defendants for infringement of the copyright subsisting in the software programs of the plaintiff.

In Bridgestone Corporation v. Tolins Tyres Pvt Ltd124 the court directed the defendants who were manufacturing and exporting infringing Bridestone tyres abroad to pay the plaintiff 3 million rupees and also to pay 500,000 rupees to legal aid. In Sugen v. KV Prakash125 while disposing of a contempt application, the court directed the defendants to pay 2 million rupees to a cancer research organisation in Madras.

In Super Cassettes Industries Private Limited v. HRCN Cable Network, CS (Comm) 48 of 2015, the Delhi High Court granted damages worth approximately 1,620,000 rupees along with attorney and court fees against a broadcaster for unauthorised broadcasting of copyrighted films.

Interim injunctions

Interim injunctions or temporary injunctions are sought in every suit for a permanent injunction in an intellectual property case, because of the length of time a case takes to get to trial. While ex parte interim injunctions are granted by courts in the normal course in some jurisdictions in India, there are courts that tend to be wary of granting this relief. The greatest number of ex parte interim injunctions are known to have been granted by the Delhi High Court.

Courts have the power to grant Mareva injunctions, but they are rarely given in intellectual property cases. The application for a Mareva injunction is naturally heard ex parte, as is an Anton Piller application.

Ad interim injunctions are granted in cases where there is prima facie proof of infringement and the balance of convenience is found to be in favour of the plaintiff owing to irreparable injury that is likely to follow if an ad interim injunction is not granted. The courts are increasingly influenced by the English decision in American Cyanamid v. Ethicon and are paying less attention to the strength of the plaintiff's case and more attention to the balance of convenience.

When an interim injunction is ordered against a party, settlement negotiations become extremely determinant of how the dispute may be finally settled. Anti-counterfeiting actions have proved to be very successful in cases where ad interim injunctions have been issued against defendant infringers as the likelihood of a settlement as provided for by the Code of Civil Procedure 1906,126 increases tremendously. This reduces the lifespan of an anti-counterfeiting action by more than half as infringing defendants are reluctant to take the matter to trial.

Delivery up of infringing material

Infringing goods, and particularly those that have been seized under an Anton Piller order, are considered case property during the suit and if the suit goes to trial, they are liable to be forfeited or destroyed. Claimants usually ask for delivery of infringing goods and in matters in which disputes are settled outside court it is usual for the claimant to seek the destruction of the infringing goods as a part of the standard settlement terms. Alternatively, infringing materials such as labels and packaging may also be destroyed, and goods may be returned or donated to charitable organisations.

Certificate of contested validity and other reliefs

A successful claimant in a patent, design or trademark proceeding is entitled to a certificate of validity, which may assist substantially in subsequent proceedings not only to establish validity, but also to obtain increased costs.

The court has the power to direct a defendant to change their corporate name or to publish an apology. The court can also order the defendant to disclose the name of their suppliers and customers.

When an appeal is preferred, the court has the power to grant a stay, depending upon the circumstances of each case.

x Appellate review

Hierarchy of courts

In India, a suit for infringement of trademark, copyright or patents can be filed in a court not lower than a district court. The exceptions to this are the High Courts of Delhi, Calcutta, Madras, Bombay, Shimla, and Jammu and Kashmir, which are courts having original side jurisdiction. Appeals from orders of the district court are heard by the corresponding High court having appropriate territorial jurisdiction. Similarly, an appeal against an order passed by a single judge of a high court having original side jurisdiction will therefore lie with a division bench of the same high court comprising two judges. The decisions in such appeals can be challenged up to the Supreme Court of India subject to grant of special leave by the apex court.

It is pertinent to note that appeals to the Supreme Court do not have to be based on a final determination of the law suit by a lower Court. The Supreme Court is empowered under Article 136 of the Constitution of India to entertain appeals arising from any stage of a lower court proceeding.

Standards for appeal

The Supreme Court has held in an appeal against the exercise of discretion by the single judge that the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, capriciously or perversely, or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. The appellate court will not reassess the material facts and seek to reach a different conclusion different if the one reached by the court was reasonable on the material facts. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a different conclusion.127

Introduction of new evidence

The Code of Civil Procedure 1908 permits a party to file additional evidence at an appellate stage in certain circumstances and subject to obtaining leave from the appellate court.128

xi Alternatives to litigation

Section 89 of the Code of Civil Procedure, 1908 provides mechanisms for alternative dispute resolution (ADR) and stipulates that where it appears to the court that there exist elements of a settlement that may be acceptable to the parties, the court shall formulate the terms of settlement and give them to the parties for their observations, and after receiving the observation of the parties, the court may reformulate the terms of a possible settlement and refer the same for:

  1. arbitration;
  2. conciliation;
  3. judicial settlement including settlement through Lok Adalat; or
  4. mediation.

In India, the most common form of ADR is mediation, which has been used to great effect, especially in trademark and copyright disputes before the Delhi High Court.

Apart from the above modes of settlement of a dispute, the Delhi High Court has also introduced 'pre-suit mediation', which enables prospective litigants to have matters referred to mediation before the suit is instituted. This mechanism has been extremely successful in resolving disputes.

V TRENDS AND OUTLOOK

The evaluation of the recent legal developments, outlined above, and the enactment of Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 along with the Delhi High Court (Original Side) Rules, 2018, clearly reveal the following trends:

  1. To ascertain the truth in IP disputes, courts are exercising their power under the Code of Civil Procedure and resorting to direct examination of defendants by calling them to court and recording their statements on oath. This has the impact of narrowing the controversy between the parties, which helps in effective adjudication.
  2. The concept of summary judgment, as introduced by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, to the Code of Civil Procedure, 1908, is being invoked by courts to resolve disputes when the court forms an opinion that the 'plaintiff or defendant has no real prospect of succeeding or defending the suit'. At the same time, the Supreme Court has also introduced a necessary check to this practice, by expressly stating that 'summary adjudication of technically complex suits' such as patent infringement suits, which necessarily require expert evidence to be led, is 'neither desirable or permissible under the law'.
  3. The damages jurisprudence with respect to IP suits is developing at a rapid pace, with significant damages being awarded in favour of the plaintiffs, at times along with legal costs. Courts are awarding compensatory, punitive and exemplary damages, depending upon the facts and circumstances of each case. The defendant's conduct in general coupled with the fact as to whether the defendant has chosen to stay away from court proceedings has played a role in determining the quantum of damages to be awarded.
  4. Contempt of court was always a serious offence but courts have now in IP disputes, started exercising their power more affirmatively and are taking strict action against any form of contempt. The punishment can vary from imposition of heavy costs to imprisonment.
  5. The option of resolving a law suit through pre-suit mediation is also gaining popularity and if an IP owner finds that a pre-suit mediation could be a far more effective way of achieving its ultimate goals (that would have otherwise been achieved by filing a law suit), then this option can be explored.
  6. In accordance with the changes brought about by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 along with the Delhi High Court (Original Side) Rules, 2018, it has now become difficult for a defendant to obstruct the court's processes. If the defendant fails to file its written pleading within the mandated period of 120 days, as per the Supreme Court ruling, the pleading is liable to be struck off the record. Further, as already implemented by the Delhi High Court, the removal of the written pleading from the record can lead the court to exercise its power under the Code of Civil Procedure, 1908 and decree the suit in favour of the plaintiff.
  7. Service to defendants have become easier as now service can be done through WhatsApp or email. For this purpose, the email available in public domain has been deemed to be the correct one by the relevant rules.
  8. The concept of the case management hearing introduced by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 to regulate the timeline for the disposal of a suit, has been extended to the stage of final arguments. Courts have set fixed timelines for final arguments, a practice which if continued, would only help cases at final stages be heard and disposed off faster.

These rapidly evolving changes ensures that the IP owners' rights are duly acknowledged and are being effectively enforced by courts. An area that has yet not been resorted to by courts but may develop in the future is the use of the discovery provisions provided in the Indian procedural laws. These trends indicate that the outlook is favourable for IP owners in the times to come.


Footnotes

1 Pravin Anand is the managing partner, Shrawan Chopra is a partner and Vibhav Mithal is a senior associate at Anand and Anand.

2 Section 2(1)(j) of the Patents Act, 1970. The definition of 'invention', as stated in Section 2(1)(j) is in accordance with Article 27(1) of Agreement of Trade Related Aspects of Intellectual Property Rights (TRIPS).

3 Section 53 of the Patents Act, 1970. The term of the patent is in accordance with Article 33 of TRIPS.

4 Under Section 2(d) of the Designs Act, 2000, 'design' means 'only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two-dimensional or three-dimensional forms or in both, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything that is in substance a mere mechanical device, and does not include any trademark as defined in clause (v) of subsection (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in Section 479 of the Indian Penal Code, 1860 or any artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957'.

5 Section 2(j) of the Designs Act, 2000, defines 'proprietor of a new or original design' as '(i) where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed; (ii) where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and (iii) in any other case, means the author of the design; and where the property in or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.'

6 Section 5 of the Designs Act, 2000. The requirement of 'new' or original for a design is in accordance with Article 25(1) of TRIPS.

7 Section 11 of the Designs Act, 2000.

8 Section 2(d) of the Semiconductor Integrated Circuits Layout-Design Act, 2000 defines 'Semiconductor integrated circuit' as a 'product having transistors and other circuitry elements which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function'. Further, Section 2(h) defines 'layout-design' as a 'layout of transistors, and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit'.

9 Section 7 of the Semiconductor Integrated Circuits Layout-Design Act, 2000.

10 Section 15 of the Semiconductor Integrated Circuits Layout-Design Act, 2000.

11 Under Section 2(o) of the Copyright Act, 1957, 'literary work' 'includes computer programmes, tables and compilations including computer [databases]'.

12 Under Section 2(h) of the Copyright Act, 1957, 'dramatic work', 'includes any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting, form of which is fixed in writing or otherwise but does not include a cinematographic film'.

13 Under Section 2(p) of the Copyright Act, 1957, 'musical work' means 'a work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music'.

14 Under Section 2(c) of the Copyright Act 1957, 'artistic work' 'means (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) a work of architecture; and any other work of artistic craftsmanship'.

15 Under Section 2(f) of the Copyright Act, 1957, 'cinematograph film' means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording and 'cinematograph' shall be construed as including any work produced by any process analogous to cinematography including video films.

16 Under Section 2(xx) of the Copyright Act, 1957, 'sound recording' means a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced.

17 Section 14 of the Copyright Act, 1957 outlines the various exclusive rights that are conferred upon works that are covered by the Copyright Act, 1957.

18 Section 48 of the Copyright Act, 1957.

19 Chapter V of the Copyright Act, 1957, i.e. Sections 22 to 29 provides for the term of copyright for different types of work.

20 Section 37 of the Copyright Act, 1957.

21 Section 38 of the Copyright Act, 1957.

22 Section 57 of the Copyright Act, 1957.

23 Section 2(1)(zb) of the Trade Marks Act, 1999.

24 Section 2(1)(m) of the Trade Marks Act, 1999.

25 Section 28 of the Trade Marks Act, 1999.

26 Section 27 of the Trade Marks Act, 1999.

27 Section 25 of the Trade Marks Act, 1999.

28 The definition for 'small enterprise' and 'start-up' has been given under the Rules 2(1)(v) and 2(1)(x). For identifying an entity as a 'small enterprise' and 'start-up', certain criterions have been given:

Rule 2(1)(v) 'Small enterprise means: (i) in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); and (ii) In case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for a medium enterprise under clause (b) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006. Rule 2(1)(x) 'Start-up means: (i) an entity in India recognized as a startup by the competent authority under Startup India initiative, (ii) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation/registration as per Startup India Initiative and submitting declaration to that effect.'

29 Rule 124 of the Trade Marks Rules, 2017 states that any person may file a request for determination of a trademark as a well-known mark along with an official fee and must be accompanied by a statement of case as well as all evidence and documents replied on by the applicant in his claim.

30 Such relief has been given only at the stage of filing an application. These entities would pay 50 per cent less government fee compared to the fee that was applicable prior to the amendment.

31 Rule 26 (5) reads 'Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding 30 seconds' length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.'

32 Under Section 2(f) of the Geographical Indication of Goods (Registration and Protection) Act, 1999, 'goods' means any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes food stuff.

33 Section 11 of the Geographical Indication of Goods (Registration and Protection) Act, 1999.

34 Under Section 2(e) of the Geographical Indication of Goods (Registration and Protection) Act, 1999, 'geographical indication', in relation to goods, means an indication that identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in cases where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

35 Section 18 of the Geographical Indication of Goods (Registration and Protection) Act, 1999.

36 Section 18 of the Geographical Indication of Goods (Registration and Protection) Act, 1999.

37 Section 22 of the Geographical Indication of Goods (Registration and Protection) Act, 1999.

39 John Richard Brady v. Chemical Process Equip Pvt Ltd AIR 1987 Delhi 372; Konrad Wiedemann GmbH v. Standard Castings Pvt Ltd [1985] (10) IPLR 243.

40 Melvin F Jager, Trade Secrets throughout the World (2010), Chapter 19.6.

41 Section 166 of the Indian Penal Code, 1860.

42 The Right to Information Act, 2005 provides every Indian citizen with the right to secure access to information under the control of public authorities, to promote transparency and accountability in the working of every public authority.

43 Section 8(1) of the Right to Information Act, 2005.

44 Section 8(2) of the Right to Information Act, 2005.

45 Section 2(za) defines 'variety' as 'a plant grouping except microorganism within a single botanical taxon of the lowest known rank, which can be (i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping; (ii) distinguished from any other plant grouping by expression of at least one of the said characteristics; and (iii) considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation, and includes propagating material of such variety, extant variety, transgenic variety, farmers' variety and essentially derived variety'.

46 Section 15 of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

47 Sections 12, 14 and 16 of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

48 Section 21 of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

49 Section 24(6)(i) of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

50 Section 24(6)(ii) of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

51 Section 24(6)(iii) of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

52 Section 24(5), Protection of Plant Varieties and Farmers' Rights Act, 2001.

53 Section 64(a) of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

54 Section 64 (b) of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

55 CS(COMM) No. 351 of 2016. Decision dated 1 February 2019 before the Delhi High Court.

56 CCP(O) 10 of 2018 in CS(COMM) 291 of 2018. Decision dated 7 August 2018, before the Delhi High Court.

57 SLP No. 18892/2017 before the Supreme Court.

58 FAO(OS) 21 of 2015 before the Delhi High Court.

59 Paragraphs 62 and 64 of Christian Louboutin SAS v. Nakul Bajaj and others, CS(COMM) 344 of 2018. Decision dated 2 November 2018, before the Delhi High Court.

60 id. at paragraphs 66 and 68.

61 id. at paragraphs 76 and 77.

62 Koninklijke Philips Electronics NV v., Rajesh Bansal, CS(COMM) 24/2016 and in Koninklijke Philips Electronics NV v. Bhagirathi Electronics and Ors., CS(COMM) No. 436/2017. A joint order dated 12 July 2018.

63 id. at paragraph 9.9, 9.10, 9.12.

64 id. at paragraph 13.10. The Court relied upon Commonwealth Scientific and Industrial Research Organization v. CISCO Systems, Inc., Fed. Cir. Dec.3 2015 in coming to this conclusion.

65 The Court relied upon the categories of damages laid out in Rookes v. Bernard, [1964] 1 All ER 367 and the principles of law in Cassel & Co. Ltd. v. Broome, [1972] AC 1027 to come to this conclusion.

66 Civil Appeal Nos. 4616 and 4617 of 2018, decision dated 8 January 2019, before the Supreme Court of India.

67 Civil Appeal No. 9844 of 2018 (arising out of SLP(C) 9878 of 2018). Decision dated 12 September 2018, before the Supreme Court of India.

68 (1999 Supp SCC 727).

69 CS(COMM) 690 of 2018. Decision dated 14 December 2018, before the Delhi High Court.

70 Section 2(1)(j) of the Patents Act defines 'invention' whereas, Section 2(1)(l), Section 2(1)(ja) and Section 2(1)(ac) define 'novelty', 'inventive step' and 'industrial application' respectively.

71 F Hoffmann-La Roche Ltd v. Cipla Ltd, 2015, RFA(OS) 92 of 2012 and RFA(OS) 103 of 2012. Decision dated 27 November 2015.

72 Section 4 of the Patents Act.

73 Section 3(j) of the Patents Act.

74 Computer programs can be protected under the Copyright Act 1957. Computer programs are protected in India irrespective of the forms in which they occur. Thus, irrespective of whether they are in object code version, source code version or hardware, they are protected. Computer databases are also protected on the basis that even 'sweat of the brow' is worth protection.

75 Section 3 (k) of the Patents Act 1970.

76 Section 3(i) of the Patents Act, 1970

77 Section 3(d) of the Patents Act 1970.

78 Section 25(1) of the Patents Act 1970.

79 Section 2(t) of the Patents Act defines a 'person interested' as 'a person engaged in, or in promoting, research in the same field as that to which the invention relates'.

80 Section 25(2) of the Patents Act 1970.

81 Section 9 and 11 of the Trade Marks Act, 1999 relate to absolute and relative grounds for refusal of a trademark respectively. Under these provisions, a trademark could be refused registration, for instance, if it is 'devoid of distinctive character'; if it 'consists of an indication that may designate the kind, quality of a geographical origin' or consists of marks 'that have become customary in the current language or in the bona-fide and established practises of the trade.

82 Section 4 of the Design Act, 2000.

83 Section 15(1) of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

84 Section 15(2) of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

85 Section 18(1) of the Protection of Plant Varieties and Farmers' Rights Act, 2001.

86 Section 11 of the Geographical Indications of Goods (Registration and Protection) Act, 1999.

87 Article 124(1), The Constitution of India, 1950.

88 Article 131, The Constitution of India, 1950.

89 Article 227 of the Constitution of India, 1950.

90 Section 20 of the Code of Civil Procedure 1908.

91 FAO (OS) No. 222 of 2010, order of the Delhi High Court dated 13 March 2014. In this case, the Court held that the respondent was actively promoting business in New Delhi through CDs distributed along with the December issue of IT magazine, which was extensively circulated in Delhi and that the CD when loaded displayed the website 'www.sholay.com' with prominence such that any user would click on the link to the respondent's website and in turn could then avail themselves of various services such as e-greetings or e-chat and goods such as DVDs sold by the respondent. Further, the respondent's website is a virtual store with the 'essential interactive features' that permits a visitor to order goods or services and communicate with the respondents via email.

92 Section 134(2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957.

93 Suit No. CS (OS) 2801 of 2012. Order of the Delhi High Court dated 11 October 2013.

94 Alloys Wobben v. Yogesh Mehra and others SLP No. 6456 of 2012 before the Supreme Court of India.

95 Validity of a design is challenged if the defendant pleads any of the grounds enumerated in Section 19 of the Designs Act to pleading invalidation of the design.

96 Order 39 Rule 7 of the Code of Civil Procedure, 1908.

97 Order 26 of the Code of Civil Procedure, 1908.

98 Louis Vuitton Malletier v. Omi and another, CCP(O) 10 of 2018 in CS(COMM) No. 291 of 2018. Order of the Delhi High Court dated 7 August, 2018.

99 (1995) 3 IPA 28.

100 (1993) 8 IPA 31.

101 CS (COMM) No. 375 of 2016. Order of the Delhi High Court dated 16 March 2017.

102 Louis Vuitton Malletier v. Mr. Omi & Anr., CCP(O) 10 of 2018 in CS(COMM) No. 291 of 2018. Order of the Delhi High Court dated 7 August 2018.

103 Sections 64, 104, and 107 of the Patents Act 1970.

104 Sections 107 of the Patents Act 1970.

105 Sections 64 and 104 of the Patents Act 1970.

106 F Hoffmann-La Roche Ltd v. Cipla Ltd, 2015, RFA(OS) 92 of 2012 and RFA(OS) 103 of 2012. Decision dated 27 November 2015 at paragraph 67(xiv).

107 F Hoffmann-La Roche Ltd v. Cipla Ltd, 2015, RFA(OS) 92 of 2012 and RFA(OS) 103 of 2012. Decision dated 27 November 2015 at paragraph 66.

108 F Hoffmann-La Roche Ltd v. Cipla Ltd., 2015, RFA(OS) 92 of 2012 and RFA(OS) 103 of 2012. Decision dated 27 November 2015.

109 415 F.3d 1303.

110 F Hoffmann-La Roche Ltd v. Cipla Ltd, 2015, RFA(OS) 92 of 2012 and RFA(OS) 103 of 2012. Decision dated 27 November 2015 at paragraph 66.

111 F Hoffmann-La Roche Ltd v. Cipla Ltd, 2015, RFA(OS) 92 of 2012 and RFA(OS) 103 of 2012. Decision dated 27 November 2015 at paragraph 66.

112 id.

113 id.

114 Farbwerke Hoeschst Aktiengesellschaft v. Unichem Laboratories, A.I.R. 1969, Bom. 255, and Biswanath Prasad Radhey Shyam v. Hindustan Metal Indus. A.I.R. 1982 S.C. 1444.

115 Ravi Kamal Bali v. Kala Tech and Kala Tech and Ors 38 P.T.C. 435 (Bom.).

116 38 P.T.C. 341 (Mad. 2008).

117 AIR 1978 Del 1.

118 id. at paragraph 25.

119 (2015) 61 PTC 183 (Del.).

120 F Hoffmann-La Roche Ltd v. Cipla Ltd, 2015, RFA(OS) 92 of 2012 and RFA(OS) 103 of 2012. Decision dated 27 November 2015 at paragraphs 124 to 128.

121 Section 135 of the Trade Marks Act 1999 and Section 108 of the Patents Act 1970.

122 Section 56 of the Copyright Act 1957.

123 CS(OS) No. 732 of 2010.

124 CS(OS) No. 375 of 2016 before the Delhi High Court.

125 CS (COMM.) No. 871 of 2016 before Delhi High Court.

126 Order 23 Rule 3.

127 1990 Supp (1) SCC 727.

128 Order 41 Rule 27, CPC.