The Intellectual Property Review: India

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 (IPRs) 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 involving an inventive step and 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 patent subject matter.

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 layouts 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.8

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.9

iv Copyright and related rights

The Copyright Act 1957 provides for the protection of exclusive rights in the reproduction and exploitation of original literary,10 dramatic, musical and artistic works; cinematograph films; and sound recordings.11 The nature of a copyright varies with the nature of the different works 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.12

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.13

The Copyright Act also provides for the protection of broadcast reproduction rights,14 performer's rights,15 author's special rights (i.e., the moral rights of an author)16 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.17 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.18

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.19 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 proceed.20

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 1999.21

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 enterprise22 and others);
  3. a procedure to apply to have a mark declared well-known has been introduced;23
  4. the official fee has increased, with special relief for individual, small enterprise and start-up entities;24 and
  5. a requirement for an MP3 format and graphical representation of the notations of a sound mark was introduced.25

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 goods26 may apply for registration of geographical indication in relation to the goods. A geographical indication is an indication that identifies goods as originating from or being manufactured in a particular geographical region or territory where a given quality, reputation or other characteristic of those goods is attributed to its geographical origin.27

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.28 Registration of authorised users is also renewed in the same manner.29 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.30

The Geographical Indications Registry is located in Chennai and since its establishment, the registry has granted registrations to 417 geographical indications.31

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.32

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.33 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.34

Similarly, the Right to Information Act35 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.36 However, the exception to this rule is that the competent authority may disclose such information if the larger public interest warrants the disclosure.37

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 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. To be granted registration, a plant variety must be novel, distinctive, uniform and stable.38 An application for registration under this legislation can be made to the Plant Varieties Registry.39 The registrar will then advertise the application for oppositions and give both parties a hearing before deciding on the application.40

The aggregate term of protection in the case of a variety of trees or a variety of vines is 18 years,41 15 years from the date of notification of the variety in the case of extant varieties42 and in all other cases it is 15 years from the date of registration of the variety.43

The legislation grants provisional protection to a breeder whereby the registrar shall have power to issue 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.44

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 that variety without authorisation.45 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 such that it causes confusion among the public.46

Recent developments

Decisions

Facebook, Inc v. Mr Noufel Malol

Bolstering the Indian jurisprudence and its recognition of well-known trademarks, an action for trademark infringement and passing off brought by Facebook was successful in restraining an entity 'Facebake', which was engaged in selling confectionaries and articles.47 The Delhi High Court, in an ex parte ad interim injunction, restrained the entity from using the name Facebake and the logo 'F', and further from using its website www.facebake.in. The decision is significant because the restraint applied to an entity engaged in selling goods and services that were distinct from Facebook's, and it highlights how courts in India recognise famous and well-known trademarks.

FMC Corporation & Anr v. Natco Pharma Limited

The High Court of Delhi in the FMC case48 adjudicated upon certain aspects of IPR disputes. It is pertinent to note that IPR disputes have been recognised as commercial disputes by the Commercial Courts Act, which modified Indian procedural law in so far as it applies to these disputes. On this point, the Court held that while the Commercial Courts Act charted a different regime for commercial disputes and that such disputes required a greater degree of circumspection, in the case of amending pleadings (documents such as the complaint) the Commercial Courts Act did not change the earlier practice. The Court held that the legislature in its wisdom saw fit not to adopt a different regime to amend pleadings for commercial disputes, and for that reason the older regime and principles of amendment continue to apply.49

Furthermore, rejecting the defendants' contention, the Court also held that the concept of forum non conveniens was not applicable to civil suits.50 This finding was premised on the concept that the plaintiff in a lawsuit is the dominus litus, implying that it may choose its forum, thus the Court held that despite a proceeding having been instituted by the defendants for declaration of non-infringement prior to the institution of the suit for patent infringement, the suit for patent infringement would continue. The Court also held that 'though a party may urge alternative pleas, conflicting stances, before the court of law, are to be eschewed'.51

Beiersdorf AG v. RSH Global Private Limited

In an action where the trademarks were different (Nivea versus Joy),52 the court, taking the IPR jurisprudence further, granted relief to the plaintiff by granting an ex parte ad interim injunction against the defendant, who was copying the plaintiff's trade dress. The court having first identified the unique characteristics of the plaintiff's trade dress held that as the defendant's product was very similarly packaged, even if not identical in shape and size, the defendant should be subject to a temporary injunction.53 Accordingly, the court restrained the defendant.

Lundbeck & Anr v. Hetero Drug Ltd & Anr

Lundbeck filed a suit54 seeking to restrain Hetero Drug Ltd from manufacturing and exporting substantial quantities of a generic version of vortioxetine to Latin America and Canada, alleging that this violated Lundbeck's patent in India55 (notably, the export of a product from India also constitutes infringement under Section 48 of the Patents Act 1970). The defendant claimed to be exporting the generic for research and development purposes and therefore its acts did not constitute an infringement. The court observed that there was no material on record to support that statement and therefore did not accept the defendant's submission. Accordingly, in December 2020, the court granted an ad interim injunction in favour of the plaintiff restraining the defendant.56

Subsequently, the defendant filed an application to export in accordance with Section 107A of the Patents Act 1970, the Bolar exemption in Indian law. Highlighting how the Bolar exemption can be applied in India while still balancing the intellectual property owner's rights, the court disposed of the application on the following terms:

  1. The defendants must not commercially launch any product during the subsistence of the plaintiff's patent.57
  2. The defendants must furnish a statement to the plaintiff every six months during the subsistence of the plaintiff's patent containing the particulars and quantities of vortioxetine hydrobromide supplied to third parties whether in the domestic market or by export for research purposes prescribed under Section 107A of the Patents Act 1970.
  3. The defendants must also furnish supporting documents showing that the active pharmaceutical ingredient (API) is being used for regulatory purposes only.
  4. That at all times during the subsistence of the patent, the defendants must obtain declarations from all third-party customers that the purchase, sale and export of vortioxetine is for the purposes prescribed under Section 107A of the Patents Act 1970.
  5. The defendants must also disclose the quantity of the API required by the law of the country to which the product is being exported, to perform the needed regulatory testing.

Dubai Islamic Bank v. Union of India

In this case, the court provided clarity as to a mark that is indicative of geographical origin, in terms of Section 9 of the Trade Marks Act 1999 on absolute grounds of refusal for a trademark.58 The mark at issue was 'Dubai Islamic Bank – The better way to bank'. The court, in setting aside the order of the Trademark Registry, held that the mark ought not to have been refused simply because it contained an indication of geographical origin (i.e., Dubai).59 Furthermore, the presence of the word Bank did not make the mark descriptive.60 The court held that the mark was a composite mark and that the impugned order did not consider this composite nature along with the other elements, such as the presence of the slogan.61 Additionally, the court interpreted Section 9(1)(b), 9(1)(c), 9(2) and 9(3) as providing subjective standards rather than an objective mathematical standard, indicating the following.

  1. if a mark is descriptive in nature but a secondary meaning is established, it may be granted registration; and
  2. if the mark has a geographical name, it is not automatically disqualified for registration and distinctiveness can be established.

In addition, the court also directed that the applicant be granted a hearing before the Trademark Registry to place on record judicial precedent or material on which it sought to rely.62

Renaissance Holdings Inc v. B Vijaya Sai & Ors

The Supreme Court recently pronounced its judgment in an appeal filed by Renaissance Holdings Inc, one of the world's largest and leading chains of hotels.63 Renaissance had claimed infringement of its trademark 'Renaissance' and had sought a permanent injunction against the defendants' use of the mark 'Sai Renaissance' in any manner, and from operating in the hotels and hospitality services industry with the trademark Renaissance.

The defendants had been using the trademark Renaissance and its stylised representation on signage and business cards and leaflets, as well as on the premises of the two hotels they had been operating. The defendants contested the suit by stating that they had been using the mark since 2001 and that the word renaissance was commonly found in the dictionary. The defendants also contended that they were catering to a totally different class of customers from the plaintiff's.

The Supreme Court held that once it has been proved that a defendant has been improperly using a plaintiff's mark (irrespective of the improbability of deception given substantial differences in prices of goods or in their standard and quality), an injunction shall necessarily follow.64 The Court further explained that in cases of similar goods and services, it is not necessary to go into the question of the reputation and goodwill of the plaintiff's mark. Pursuant to the provisions of Section 29(2), as long as the allegedly infringing mark is identical and deceptively similar and covers similar goods, the question of whether it is likely to cause confusion or not is a moot point and an injunction has to follow.65

FMC Corp v. Best Crop Science LLP

In July 2021, the Delhi High Court clarified a number of patent law issues, including presumptive validity and prior claims.66 The dispute had arisen with regard to patents for the product chlorantraniliprole (CTPR) – both the product patent, IN 201307, and the process patent for its preparation, IN 213332.

With regard to validity, the Court held that there is a clear-cut difference between a 'guarantee of validity' and a 'presumption of validity'. Hence, at the interim stage, it is sufficient if the defendant is able to make a case for the suit patent's vulnerability to revocation under the Patents Act 1970. However, this vulnerability has to be demonstrated by way of a credible challenge.67

The Court did not accept the defendants' argument as to obviousness, and stated that the defendants had 'clearly cherry-picked' both their substitutions and the radicals for substitution in patent IN 204978 to arrive at CTPR. The Court clarified that for the specie patent to be invalidated on the grounds of obviousness the genus patent must provide sufficient basis to allow a person skilled in the art to arrive at the specie patent 'without unduly straining his imaginative and creative faculties'. The element of 'directness' must be there. The choices thus made by such a person must be apparent from the genus patent and not cherry-picked.68

The High Court of Delhi Rules Governing Patent Suits 2020 (Proposed)

The Delhi High Court has floated draft rules to govern patent litigation lawsuits filed with the Court, which has been at the forefront of patent litigation in India over the past few decades.

To frame these rules, the Delhi High Court will be exercising powers under Section 158 of the Patents Act 1970. Should these rules be adopted, salient features and points that litigants in patent infringement lawsuits will have to comply with include the following:

  1. filing claim construction briefs;
  2. filing invalidity briefs;
  3. filing infringement and non-infringement briefs; and
  4. hot-tubbing.

Under Section 115 of the Patents Act 1970, the Delhi High Court may also engage scientific advisers to aid and assist the Court. In addition, the draft rules stipulate what ought to be contained in pleadings.

The proposed rules may come into force in the near future.

The Delhi High Court Intellectual Property Rights Division Rules 2021 (Proposed)

On 30 June 2021, the central government abolished the Intellectual Property Appellate Board (IPAB). Matters dealt with by the IPAB included the following:

  1. patent revocation proceedings under Section 64 filed with the IPAB;
  2. appeals from orders allowing pre-grant opposition under Section 25(1) of the Patents Act 1970;
  3. appeals from post grant orders under Section 25(2) of the Patents Act 1970; and
  4. original rectifications for a trademark under Section 57 of the Trade Marks Act 1999, and these are also now to be filed with the Delhi High Court.

Note that trademark applications in India can only be filed in five offices: Delhi, Mumbai, Madras, Kolkata and Ahmedabad. Thus, rectifications for trademarks granted by these offices would now be dealt with by the high courts in Delhi, Mumbai, Madras, Kolkata and Gujarat. Matters that were pending before the IPAB prior to its dissolution are now in the process of being transferred to the relevant high courts.

The Delhi High Court has been at the forefront of intellectual property litigation and recently passed the Delhi High Court Intellectual Property Rights Division Rules 2021.

Some of the salient features of the Rules are:

  1. civil suits for trademark and patent infringement, and the revocation and rectification petitions, may come up before the same judge;
  2. all writ petitions dealing with intellectual property disputes will come up before a single judge of the Delhi High Court; and
  3. following the entry into force of the Rules in December 2021, the Delhi High Court has started to take up and exercise jurisdiction in matters previously dealt with by the erstwhile IPAB.

Needless to say, with the transfer of over 2,000 cases to the Delhi High Court and a sizeable number of cases to Mumbai, Madras, Kolkata and Gujarat, the burden on the high courts has increased.

Historically, prior to the advent of the IPAB in 2003–2007 for trademarks and for patents in 2007, all matters of this kind were in fact dealt with by the high courts.

In the past two decades, with the opening of the economy post-liberalisation and the impetus provided to entrepreneurs in the country, intellectual property disputes have increased manifold, which together with the additional burden of matters previously dealt with by the IPAB has created a pressing need for the high courts' capabilities to be augmented.

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.69 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 1970 provide 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.70 For instance, inventions relating to atomic energy;71 plants and animals in whole or part including seeds, varieties and species and essentially biological processes for the production or propagation of plants;72 computer programs73 per se or algorithms; and mathematical or business methods are not patentable in India.74 Processes and products relating to the medical treatment of humans and animals are also not patentable in India.75 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 with the efficacy of the known substances.76 Hence, Swiss-style claims are not permissible under the Patents Act 1970. 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 1970 permits both pre-grant and post-grant oppositions, to be filed with the Patent Office. A pre-grant opposition can be filed by 'any person' before a patent is granted.77 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'.78 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 may now be appealed to the relevant high court. Illustratively, if the post-grant opposition has been decided by the Chennai Patent Office, the appeal may lie before the Madras High Court. Additionally, any person interested can directly challenge the validity of a patent through a revocation petition to the relevant high court under Section 64 of the Patents Act 1970. The orders of the Patent Office in various opposition proceedings can be accessed on the Patent Office website.

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 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. As from 2008, the Trademark Registry also registers sound marks.

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, to ensure there are no absolute or relative grounds for refusal of a trademark under the provisions of the Trade Marks Act 1999.79 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.80

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.81 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.82

vi Geographical indications

Any association of persons or producers or any organisation or authority established by or under any law in force at that time representing the interest of the producers of the goods concerned who wish to register a geographical indication for those goods can apply for such a registration.83

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 Court84 at the apex. The Supreme Court is the court of final appeal and sits in Delhi.85 High courts are the highest judicial bodies in a state and have superintendence over all courts and tribunals within their territorial jurisdiction.86

District courts generally have an unlimited pecuniary jurisdiction on the civil side. However, the Delhi, Bombay, Calcutta, Madras and Shimla. High courts also have a first instance jurisdiction where intellectual property disputes above a certain pecuniary level can be entertained directly by the high court. For instance, the Delhi High Court can currently entertain fresh intellectual property suits, as the court of first instance, if the suit value is more than US$269,000.

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 intellectual property 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.

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.87 The location of the plaintiff is not a consideration. In Sholay Media Entertainment Ltd v. Yogesh Patel,88 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.89

In Bristol-Myers Squibb Company and another v. VC Bhutada and others,90 the Delhi High Court held that to determine that a defendant 'carries on business', the plaintiff has to show prima facie 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 IPR is disputed, Indian courts will have jurisdiction only if the registration is granted in India. It would therefore not be possible to question before an Indian court the validity of a registration of an IPR granted in a foreign jurisdiction.

However, it would be possible for a foreign entity to challenge the validity or registration of an IPR 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 intellectual property disputes, the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act 2015 categorised intellectual property disputes as commercial disputes and modified procedural law to expedite and manage their timeline. The Act directed the creation of commercial divisions within the high courts and currently, the Delhi High Court and the Bombay High Court have set up commercial divisions to manage intellectual property suits. Moreover, the Delhi High Court has also enacted the Delhi High Court Rules 2018, which have further streamlined and expedited its procedure for lawsuits.

Furthermore, to avoid multiplicity of proceedings, the Supreme Court has held that a party that 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.91

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 defence92 in a patent and design infringement suit respectively, then those suits are liable be transferred to the applicable 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.93 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.94

A court commissioner is given wide powers while conducting an investigation and is 'an extended arm and agent of the Court' and 'effectively the eyes and ears of the Court'.95

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 in 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 intellectual property suit. For example, in Bridgestone Corporation v. Tolins Tyres Pvt Ltd,96 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. Interrogatories can be allowed provided that they are relevant.

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 either recorded 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. As noted above, court commissioners are 'an extended arm and agent of the Court' and 'effectively the eyes and ears of the Court'.97

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 question of fact or opinion that does not involve a question of interpretation of law, such 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 and 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.98 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;99 or
  2. by instituting a counterclaim challenging the validity of the patent.100

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'.101 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'.102 The Delhi High Court in the Roche103 case relied upon Edward H Philips v. AWH Corporation104 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'.105 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'.106 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.107 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.108

The infringement analysis then proceeds with a comparison of the elements of the claim and the elements of the defendant's product or process. If the defendant'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.109

Contributory infringement

The concept of contributory infringement has not been incorporated by statute and therefore each person or entity taking part in an act of infringement is individually liable. However, if a court sees fit in a particular case, it 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,110 the doctrine of equivalents was discussed to settle a dispute regarding infringement of a patent for tamper-proof locks. This doctrine was also recognised by the Madras High Court in Mariappan v. AR Safiullah and others,111 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.

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 defendant 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,112 the Delhi High Court has clarified that the 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.113 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 Indian statute provides a detailed mechanism for the grant of a compulsory licence, the ability of a defendant 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 found to be infringing, and implements used in creating the infringing goods, shall be seized, forfeited or destroyed, as the court deems fit in the circumstances, 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.114

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).115

A trend of awarding damages has been observed particularly in cases pertaining to software piracy.

In Sugen v. KV Prakash,116 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,117 the Delhi High Court granted damages of 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 granted 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 1906,118 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 cannot be filed in a court lower than a district court. The exceptions to this are the high courts of Delhi, Calcutta, Madras, Bombay and Shimla, which have 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 subject to grant of special leave by the apex court.

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.119

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.120

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 observations of the parties, the court may reformulate the terms of a possible settlement and refer these 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.

Trends and outlook

The evaluation of the recent legal developments, outlined above, clearly reveals the following trends.

First, the judicial decisions rendered by different fora despite the existence of the covid-19 pandemic highlight that the regime of the enforcement of IPRs is robust. The majority of the decisions and recent legal developments covered in this chapter were passed through virtual courts, by way of hearings that took place via videoconferencing. The diverse issues that the decisions touch upon highlight that intellectual property owners' rights were protected holistically during the pandemic.

Courts in India continued to protect the rights of intellectual property owners, by granting reliefs in various matters on the first day of the suit. Furthermore, the courts have passed orders that also balance public interest. In the Facebook decision, the court granted an ex parte ad interim injunction and protected Facebook's trademark against violation from an entity engaged in activities regarding confectionaries and articles. This highlights that courts protects trademarks that have immense goodwill and reputation, and they seek to stop defendants who may be engaged in activities related to different goods. Further, in the Biersdorf case, the court granted an ex parte ad interim injunction seeking to protect the plaintiff's trade dress, when the trademarks were different. In Lundbeck, the court did not accept the defendant's defence that it was exporting the patented product as there was no material on record, and proceeded to grant an ad interim injunction in favour of the plaintiff. Moreover, balancing and recognising the defendant's rights under the Bolar exemption provision of Indian law, the court thereafter passed an order permitting the defendant to export pursuant to the Bolar provision but protected the patentee's rights. In Dubai Islamic Bank, the court also provided clarity regarding registrability of marks, especially marks indicating geographical origin.

To address, and check, a trend whereby defendants, anticipating a lawsuit, would file a lawsuit for non-declaration of infringement in one forum and then use that prior-instituted suit to challenge the maintainability of the suit for infringement bought by a patentee, the courts interpreted the procedural provisions, and clarified the scope, of Indian law applicable in these scenarios. Simply put, the courts stated that a patentee is the dominus litus and has the choice of forum in which to institute the infringement suit, and the suit previously instituted by the defendant does not impact the maintainability of the infringement suit. Albeit interpreting Indian procedural laws, this decision, is in itself noteworthy as it sets an important marker regarding the protection of patent owners' rights.

In the Renaissance case, the Supreme Court clarified Section 29(4) of the Trade Marks Act 1999, stating that the plaintiff need not demonstrate the existence of goodwill and reputation in cases where a registration exists for a trademark and the infringing trademark is being used for identical or similar goods.

As regards obviousness in patents, the Delhi High Court held in FMC v. Best Crop that the claims of the genus patent must allow a person skilled in the art to arrive at the specie patent without straining the creative faculties, and the choices made must be clearly apparent for a specie patent to be invalidated on the grounds of obviousness.

These rapidly evolving changes ensure that intellectual property owners' rights are duly acknowledged and are being effectively enforced by courts as well as by tribunals and have remained unaffected by the pandemic. These trends indicate that the outlook is favourable for intellectual property owners in the times to come.

Footnotes

1 Pravin Anand is the managing partner, Shrawan Chopra is a partner and Vibhav Mithal is a managing 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 the Agreement on 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 Section 2(d) of the Designs Act 2000.

5 Section 2(j) of the Designs Act 2000.

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

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

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

11 Section 14 of the Copyright Act 1957 outlines the various exclusive rights conferred upon works covered by the Act.

12 Section 48 of the Copyright Act 1957.

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

14 Section 37 of the Copyright Act 1957.

15 Section 38 of the Copyright Act 1957.

16 Section 57 of the Copyright Act 1957.

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

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

19 Section 28 of the Trade Marks Act 1999.

20 Section 27 of the Trade Marks Act 1999.

21 Section 25 of the Trade Marks Act 1999.

22 The definitions for 'small enterprise' and 'start-up' and criteria for identifying an entity as such have been given under Rules 2(1)(v) and 2(1)(x).

23 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 accompanied by a statement of case and all evidence and documents relied on by the claimant.

24 This relief has been given only at the stage of filing an application. These entities would pay a government fee of 50 per cent less than the fee applicable prior to the amendment.

25 Rule 26(5).

26 Under Section 2(f) of the Geographical Indication of Goods (Registration and Protection) Act 1999, 'goods' includes foodstuffs.

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

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

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

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

32 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.

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

34 Section 166 of the Indian Penal Code 1860.

35 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.

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

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

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

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

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

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

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

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

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

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

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

47 Facebook, Inc. v. Mr. Noufel Malol, CS(COMM) 499 of 2020, decision dated 12 November 2020 of the Delhi High Court.

48 CS(COMM) 611 of 2019, decision dated 15 July 2020 of the Delhi High Court.

49 id. at Paragraphs 18 and 19.

50 id. at Paragraph 43.

51 id. at paragraph 59.

52 Beiersdorf AG v. RSH Global Private Limited CS(COMM) 48 of 2021, decision dated 28 January 2021 of the Delhi High Court.

53 id. at paragraph 8.

54 H. Lundbeck A/S & Anr. v. Hetero Drug Ltd. & Anr., CS(COMM) 565 of 2020, decisions dated 23 December 2020 and 26 March 2021 of the Delhi High Court.

55 id. at paragraph 7 (decision dated 23 December 2020).

56 id. at paragraphs 8 and 9 (decision dated 23 December 2020).

57 id. at paragraph 2 (decision dated 26 March 2021).

58 W.P. (C) 12749 of 2019, decision dated 4 December 2019.

59 id. at paragraph 10 and 11.

60 id. at paragraph 10 and 11.

61 id. at paragraph 10.

62 id. at paragraph 13.

63 Civil Appeal No. 404 of 2022.

64 id. at paragraph 47.

65 id. at paragraph 52.

66 CS(COMM) No. 69 of 2021.

67 id. at paragraph 13.

68 id. at paragraph 43.

69 Section 2(1)(j) of the Patents Act 1970 defines 'invention' whereas, Section 2(1)(l), Section 2(1)(ja) and Section 2(1)(ac) define 'novelty', 'inventive step' and 'industrial application' respectively.

70 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.

71 Section 4 of the Patents Act 1970.

72 Section 3(j) of the Patents Act 1970.

73 Computer programs can be protected under the Copyright Act 1957 irrespective of the forms in which they occur. Computer databases are also protected.

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

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

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

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

78 Section 2(t) and Section 25(2) of the Patents Act 1970.

79 Section 9 and 11 of the Trade Marks Act 1999.

80 Section 4 of the Designs Act 2000.

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

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

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

84 Article 124(1) of the Constitution of India 1950.

85 Article 131 of the Constitution of India 1950.

86 Article 227 of the Constitution of India 1950.

87 Section 20 of the Code of Civil Procedure 1908.

88 FAO (OS) No. 222 of 2010, order of the Delhi High Court dated 13 March 2014.

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

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

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

92 Validity of a design is challenged if the defendant pleads any of the grounds enumerated in Section 19 of the Designs Act.

93 Order 39 Rule 7 of the Code of Civil Procedure 1908.

94 Order 26 of the Code of Civil Procedure 1908.

95 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.

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

97 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.

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

99 Sections 107 of the Patents Act 1970.

100 Sections 64 and 104 of the Patents Act 1970.

101 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).

102 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.

103 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.

104 415 F.3d 1303.

105 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.

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 66.

107 id.

108 id.

109 Farbwerke Hoeschst Aktiengesellschaft v. Unichem Laboratories, AIR 1969, Bom 255, and Biswanath Prasad Radhey Shyam v. Hindustan Metal Indus, AIR 1982 SC 1444.

110 Ravi Kamal Bali v. Kala Tech and Kala Tech and Ors, 38 PTC 435 (Bom).

111 38 PTC 341 (Mad 2008).

112 (2015) 61 PTC 183 (Del).

113 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.

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

115 Section 56 of the Copyright Act 1957.

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

117 Super Cassettes Industries Private Limited v. HRCN Cable Network, CS (Comm) 48 of 2015.

118 Order 23 Rule 3.

119 1990 Supp (1) SCC 727.

120 Order 41 Rule 27, CPC.

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