All questions

Enforcement of rights

i Possible venues for enforcement or revocation

The two venues for enforcement of IP rights in India are the registries and courts of law. Matters pertaining to, inter alia, opposition, cancellation and revocation are handled at the registries established under the aegis of the Controller General of Patents, Designs and Trademarks. Courts, on the other hand, deal with original matters (equitable relief against infringement by a known or unknown third party, or passing off of trademarks) as well as appeals from decisions of the registries. Cancellation actions under the relevant IP laws are also, pursuant to the abolition of the Intellectual Property Appellate Board (IPAB), filed before the high court having jurisdiction over the registry that granted the assailed registration.

After the IPAB was abolished, existing matters filed at the IPAB have been transferred to the country's high courts. Consequently, the high courts have now been recognised as the appellate authority for orders passed by the various examiners and hearing officers at the Registry. High courts also have the jurisdiction to decide revocation and cancellation actions under, inter alia, the TMA, the Patents Act and the GI Act. The Delhi High Court has established a dedicated Intellectual Property Division (IPD), which has its own set of rules for administration of original as well as appellate IP matters.

As regards enforcement actions involving IP, India has specialised legislation for adjudication of such disputes, namely, the Commercial Courts Act, 2015 (CCA). The CCA differentiates between regular civil disputes and civil disputes having commercial underpinnings, such as arbitration disputes, banking and transactional disputes and, pertinently, intellectual property rights disputes. The CCA carves out specific procedures with stricter emphasis on statutory deadlines for ensuring expeditious and effective disposal of such commercial disputes, and courts at both district and high court level have constituted special benches dedicated to hearing commercial disputes governed by the provisions of the CCA.

ii Requirements for jurisdiction and venue

India follows a three-tier judiciary system, starting from the district courts at the bottom, with the high courts at the appellate-intermediate level, and culminating with the Supreme Court at the apex as the final appeals court. The district courts in Delhi are vested with a pecuniary jurisdiction from 2 million rupees to 20 million rupees. The Delhi High Court, which is one of the five high courts India that have original jurisdiction (the others being Bombay, Madras, Calcutta and Himachal Pradesh), has jurisdiction to adjudicate matters that are valued over 20 million rupees.

While general civil law requires suits to be filed at the place where the defendant resides or carries on his or her business or personally works for gain, or at the place where the cause of action in a suit has arisen,66 the TMA and the Copyright Act allow an action for infringement of a registered trademark or a copyright, as the case may be, to be filed where the plaintiff actually and voluntarily resides or carries on business or personally works for gain.67

iii Obtaining relevant evidence of infringement and discovery

Appointment of local commissioners for seizure of infringing goods that are anticipated to be in the possession of the defendant can be obtained by filing a motion for an Anton Pillar order. Such orders are a particularly common feature of trademark and copyright infringement matters where the plaintiff, while filing an application for grant of ex parte ad interim injunctions, also files an application for appointment of a court commissioner, who then visits the defendant's premises, and seizes the stock of infringing products found at the defendant's premises and seals the same, thus forming a conclusive piece of evidence of the defendant's infringing activities.

Parties can also, with the leave of the court, file a motion for discovery by way of interrogatories in writing, calling upon the opposite side to disclose such documents and information as the enquiring party deems fit.68 Parties can also seek production by the other party or person of such documents in the possession of such party relating to any matter in question in such suit, subject to conditions as are prescribed under the law.69

iv Preliminary injunctions

Temporary and preliminary injunctions are a common feature of litigations involving IP in India. Courts are, generally not averse to granting ad interim or ex parte ad interim injunctions on the date of the first hearing itself, provided the plaintiff is able to satisfy the court that it has a prima facie case, that the balance of convenience lies in the plaintiff's favour and that irreparable harm would be caused to the plaintiff if the injunction is not granted. If the court is not satisfied that these requirements are fulfilled, the court may issue notice to the defendant and decide on granting preliminary injunction until the pendency of the suit after hearing rival submissions from both parties.

v Trial decision-maker

The concept of juries is absent from Indian law, and all decisions, both procedural and judicial, are taken by qualified judges who preside over the courts of law. If a suit is pending before the district court and the matter proceeds to trial, the examination and cross-examination of witnesses is carried out by the concerned judge. High courts, however, have judicial officers, namely joint registrars, who conduct and preside over the cross-examination of witnesses. Parties before Indian courts can also ask the court to appoint a court commissioner before whom the parties can appear and record their statements.

vi InfringementTrademarks

As per Indian law, a trademark is infringed by a person who, not being a registered proprietor, uses in the course of trade a mark that is identical or deceptively similar to the registered mark in the scenarios as set out below:

  1. in relation to identical goods or services covered by the registered mark;70
  2. in relation to similar goods or services covered by the registered mark; 71
  3. in relation to different goods or services, provided the registered mark has a reputation in India;72
  4. in cases where the defendant uses a registered mark as his or her trade name or part of his or trade name;73 or
  5. in cases where the defendant applies such registered mark on packaging or advertising material.74
Copyright

Copyright in a work is infringed when any person does anything, the exclusive right of which is conferred on the owner of copyright (i.e., reproduction of the work, adaption of a literary work), or permits for profit any place to be used for communication of such work.75

Designs

Design piracy occurs when any person applies, or causes to apply, or imports for the purposes of sale, a design that is fraudulent or an obvious imitation of the registered design.76

Patents

While the Patents Act does not expressly state what constitutes infringement of a patent, it provides for various rights conferred on a patent holder,77 and violation of those rights constitutes infringement.

vii DefencesTrademarks

Defences as allowed by the TMA are briefly set out below:

  1. use of a registered mark by another person for the purposes of identifying goods or services as those of the proprietor provided such use is in accordance with honest practices and does not take unfair advantage or is detrimental to the distinctive character or repute of the mark;78
  2. use of a registered mark by another person in a descriptive manner;79
  3. parallel imports from another jurisdiction;80
  4. use of a mark that is identical or nearly identical to the registered mark by another person who is the prior user of that mark;81and
  5. bona fide use by a person of his or her own name or place of business.82
Copyright Act

Certain acts do not constitute infringement, including:

  1. fair dealing;
  2. the reproduction of work for the purpose of judicial proceedings or for the purpose of educational purposes;
  3. the performance of a literary, dramatic or musical work; or
  4. communication to the public of sound recordings in the course of a bona fide religious ceremony.83
Designs Act

4n the case of designs, defences such as invalidity of designs on grounds of prior art or lack of novelty are available. 84

Patents

In a patent infringement suit, defences such as lack of novelty, obviousness or the patent not being capable of industrial application are valid defences. India also specifically bars the patentability of a new form of a known substance.

The courts have usually clamped down on a litigator in cases where he or she has suppressed material facts. Common law defences such as laches and estoppel are also available.

viii Time to first-level decision

With the advent of the CCA, strict deadlines are being imposed. The timeline for getting a first level decision could range from approximately 24 to 36 months.

ix Remedies

In India, IP holders may seek relief under ex parte ad interim inunctions, interim injunctions, permanent injunctions, damages and costs. In addition, courts are also vested with the power to order preservation of infringing goods by ordering seizing of the infringing goods or material.

x Damages and compensation

IP right holders, in cases of trademark, copyright and patent infringement suits, are entitled to seek damages or an account of profits.85 Further, with the advent of the CCA, courts in India are granting full costs of the suit in favour of the entity that is successful in the suit.86

xi Delivery up of infringing material

Infringing goods, particularly those that have been seized under an Anton Piller order, are usually treated as evidence and, depending upon the decision of the suit, are liable to be forfeited or destroyed. Plaintiffs usually ask for delivery of infringing goods and, in matters in which disputes are settled outside court, it is usual for the plaintiff to seek the destruction of the infringing goods as part of the standard settlement terms.

xii Appellate reviewHierarchy of courts

In India, a suit for infringement cannot be filed in a court lower than a district court. The exceptions to this are the high courts in which original jurisdiction is vested. With the advent of the CCA, appeals from orders of the district court or high court are adjudicated by the Division Bench of the high court, which comprises 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.87

Standards for appeal

Appellate courts of first instance can reappraise the evidence. However, an appellate court cannot to seek to reach a different conclusion if the conclusion reached by the lower 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.

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.

xiii Alternatives to litigation

Section 89 of the Code of Civil Procedure, 1908 stipulates that where there exists elements of a settlement between the parties, the court shall formulate and even reformulate the terms of settlement (where necessary) after receiving the observations of the parties and refer the matter to arbitration, conciliation or mediation.

Mediation is the most common form of ADR mechanism resorted to by the courts. The CCA has also now made it mandatory for the plaintiff to first explore mediation before approaching courts by way of a suit, failing which the suit shall not be maintainable.88 This provision, however, is not applicable to suits that contemplate an urgent relief.89