Frequently Asked Questions
on Litigation
Q. A huge concern about litigating in India are prolonged timelines in obtaining preliminary injunctions. If preliminary injunctions cannot be obtained timely, then, why spend money litigating in India?
There has been a large reduction in timelines for grant of preliminary injunctions in many Indian courts, in particular, courts that have been designated as commercial courts. The Delhi High Court, which is India’s premier court for IP litigation, is known to grant ad-interim injunctive relief at the very first hearing if a plaintiff is able to make out a good prima facie case and prove balance of convenience in its favour and likelihood of harm.
Q. What is the timeline for a typical trademark infringement suit?
Typically, a trademark infringement suit, which does not go to trial, i.e., in which parties arrive at a settlement, or the matter is decreed ex-parte, concludes in less than one (1) year.
In cases where there is full-blown trial, which is very rare in IP matters, it may take up to five (5) years to conclusion.
Q. What are the reliefs granted by courts?
Indian courts grant many types of reliefs in IP cases, including, but not limited to injunctions (ex-parte ad-interim injunctions, ad-interim injunctions, interim or preliminary injunctions and permanent injunctions); appointment of local commissioners or court appointed officials who are authorized to seize infringing goods, orders of contempt, etc.
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Q. Must a plaintiff file evidence with the initial complaint? Does the evidence need to be notarized?
Under Indian law, a plaintiff is expected to file documents that it seeks to rely on along with the initial complaint. The more complete the record at filing, the better the chances of strong early relief.
In practice, however, it may be possible to seek an extension to file additional documents that a plaintiff may also wish to rely on.
Notarization is not required for documentary evidence. Simple photocopies may be submitted.Originals may need to be produced at trial.
Q. Is a Power of Attorney required to file a suit? Must it be notarized/legalized?
Yes, a Power of Attorney is required.For plaintiffs based outside India, the Power of Attorney must be apostilled.
Q. Can a court order seizure of infringing goods?
Yes. Indian courts regularly order seizure and/or sealing of infringing goods in IP matters, typically through the appointment of a local commissioner (a court appointed officer). The local commissioner is authorized to visit the defendant’s premises and take custody of, or seal the infringing goods and other material.
Q. Can priority be claimed in an application?
Yes, priority claim is possible, if filed within 6 months of first filed foreign application.
Q. Do courts in India award damages? If so, what is the quantum of such damages?
Yes. Indian courts do award damages in IP cases. In most infringement and counterfeiting cases, courts award nominal damages. In high-value or particularly egregious cases, courts have also awarded damages that have run into tens of millions of US dollars.
The precise quantum of damages depends on the evidence of sales, profits, scale of infringement and conduct of the defendant (e.g., repeat infringer, destruction of evidence, defiance of court orders).
Q. What is the position regarding award of costs in India? Does the losing party pay costs to the winning party?
Indian courts are increasingly willing to award realistic and actual costs to the successful party. In IP suits, courts often direct the losing party to pay the court fees, local commissioner’s fees and expenses, advocates fees and any other litigation expenses. That said, in small-scale or first-time infringer cases, courts sometimes award only nominal costs.
Q. Besides suits, what other IP actions are courts authorized to adjudicate?
Court are authorized to adjudicate cancellation actions, hear appeals against orders of the Trade Marks Registry and the Copyright Office and writ petitions.