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The Intellectual Property Review-INDIA

I FORMS OF INTELLECTUAL PROPERTY PROTECTION India has substantive legislation covering all major forms of intellectual property (IP), including patents, copyright, designs, trademarks, plantvarieties, geographical indications and semiconductors. As a World Trade Organization member since 1995,2 all this legislation, by and large, complieswith the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). An overview of all the major forms of intellectual properties and the available legal framework for their protection are as follows: i Patents Registration and protection of patents in India are governed by the Patents Act, 1970,3 and the accompanying rules.4 The law conforms to theuniversally applicable triple test for grant of patents, namely, that a new product or process that involves an inventive step and is capable ofindustrial application is entitled to be protected as a patent.5 The patent term is 20 years from the date of filing. A patent registration cannot berenewed.6 ii Trademarks Registration and protection of trademarks in India is governed by the Trade Marks Act 1999 (TMA),7 which defines a trademark as a mark that can be represented graphically and is ‘capable of distinguishing the goods and services of one person from those of others’. 8 A mark, under the TMA,is defined as including a device, brand, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours or anycombination thereof.9 As per the TMA, a registered owner or proprietor is entitled to the exclusive right 1 Sujata Chaudhri is the managing partner and founder of, and Urfee Roomi is a partner and Anubhav Chhabra and Jaskaran Singh are associates at, SujataChaudhri IP Attorneys. 2 3 The Patents Act, 1970 (39 of 1970). 4 The Patent Rule, 2003. 5 Section 2(1)(j), The Patents Act, 1970. 6 Section 53, The Patents Act, 1970. 7 The Trade Marks Act, 1999 (Act 47 of 1999). 8 Section 2 (1) (zb) of the Trade Marks Act, 1999. 9 Section 2 (1) (m) of the Trade Marks Act, 1999.

to use the mark in connection with goods and services in respect of which it is registered.10 Registration of a trademark is valid for 10 years and theregistered proprietor has the option of renewing it indefinitely from time to time upon payment of the requisite fee.11 iii Copyright Registration and protection of copyright in India is governed under the Copyright Act, 1957. Under the Copyright Act, a copyright subsists inoriginal literary, dramatic, musical and artistic works, cinematograph films and sound recordings.12 It confers an exclusive right upon the owner of thecopyright to, inter alia, reproduce a work in any material form and communicate such work to the public.13 The author of the work shall be thefirst owner of the copyright, subject to certain conditions. The Copyright Act also recognises and protects performers’ rights,14 authors’ special rights15 and broadcast reproduction rights.16 The duration of a copyright, in the case of literary, dramatic, musical and artistic works, subsists during the lifetime of its author, and for 60 yearsafter the death of the author;17 and in the case of cinematograph films and sound recordings, the term of a copyright is 60 years from the year of publication of such work.18 Copyright registration is not mandatory in India and a copyright holder can even bring an infringement action without having a registration.However, the advantage of seeking a registration is that it serves as a prima facie evidence of particulars entered in the Register of Copyrights.19 Apart from civil remedies, the Copyright Act also provides for criminal remedies.20 iv Industrial designs Registration and protection of industrial designs in India is governed by the Designs Act, 2000 21 and the accompanying rules. The Designs Act only protects the features of shape, configuration, pattern, ornament, composition of lines or colours, which are applied to any article, whether in 2Dor 3D or both forms, by any industrial process, and which are capable of being judged solely by the eye.22 Additionally, an article that is sought to be protected under the Designs Act must be new or original and should also not be disclosed to the public prior to the date of filing the application.23 10 Section 28 of the Trade Marks Act, 1999. 11 Section 25 (1) and (2) of the Trade Marks Act, 1999. 12 Section 13 of the Copyright Act, 1957. 13 Section 14 of the Copyright Act, 1957. 14 Section 38 of the Copyright Act, 1957. 15 Section 57 of the Copyright Act, 1957. 16 Section 37 of the Copyright Act, 1957. 17 Section 22 of the Copyright Act, 1957. 18 Section 26 of the Copyright Act, 1957. 19 Section 48 of the Copyright Act, 1957. 20 Section 63 of the Copyright Act, 1957. 21 The Designs Act, 2000 (Act 16 of 2000). 22 Section 2(d), the Designs Act, 2000. 23 Section 4, the Designs Act, 2000.

The duration of a design registration is 10 years, extendible by a further five years if a request is made before the expiry of the first 10-yearduration term.24 v Geographical indications The Geographical Indication of Goods (Registration and Protection) Act, 1999 (GI Act) governs the registration and protection of geographical indications in India. A geographical indication (GI) registration is initially valid for a period of 10 years, and may be renewed from time to time by way of anapplication to that effect.25 The registration of an authorised user of a GI (a person registered under the GI Act to use the geographical indication inrelation to the goods in respect of which the geographical indication has been registered pursuant to the qualification of strict criteria for suchregistration prescribed under the GI Act) may also be renewed from time to time.26 vi Plant varieties and farmers’ rights Among the various substantive enactments promulgated in the wake of India’s obligations under the TRIPS is the Protection of Plant Varieties andFarmers’ Rights Act, 2001 (PV Act). By virtue of the PV Act, India opted to adopt a sui generis system for protection of plant varieties. The PV Act seeks to protect rights offarmers and plant breeders over any new variety of a plant that has been cultivated by such farmer or breeder, 27 and grants protection to novel varietiesof plants that are distinctive, uniform and stable.28 The total term of protection available is 18 years in the case of a variety of trees and vines and 15 years in the case of extant and othervarieties.29 vii Semiconductor integrated circuit layouts The registration and protection of the layout designs of semiconductor integrated circuits in India is governed by the Semiconductor IntegratedCircuits Layout-Design Act, 2000 (IC Act). The IC Act provides for registration of layout-designs, and defines a layout-design as a layout of transistors and other circuitry elements, including lead wires connecting such elements and expressed in any manner in a semiconductor integratedcircuit.30 The IC Act prohibits registration of layout-designs that are not original, inherently distinctive and inherently capable of beingdistinguished from any other registered layout-design, and that have been commercially exploited in India or in any other convention country.31 The registration of a layout-design is valid only for a period of 10 years from the date of filing of the application or the date of first commercialexploitation anywhere in the country, whichever is earlier.32 Registrations of layout designs cannot be renewed. 24 Section 11, the Designs Act, 2000. 25 Section 18(1), The Geographical Indications of Goods (Registration and Protection) Act, 1999. 26 Section 18(2), The Geographical Indications of Goods (Registration and Protection) Act, 1999. 27 Preamble, PV Act. 28 Section 15(1), PV Act. 29 Section 24(6), PV Act. 30 Section 2(h), IC Act. 31 Section 7, IC Act. 32 Section 1, IC Act.

viii Trade secrets India does not have a codified law for protection of trade secrets. That being so, trade secrets are protected in India through contract law, copyright law,principles of equity and – at times – through common law remedies such as breach of confidence or trust. India’s Information Technology Act, 2000 also provides certain protection, albeit limited only to electronic records.33 Although a person can be contractually bound to not disclose information that is revealed to him or her inconfidence, there are few possible recourses available to trade secret owners in cases where such information is revealed, such as: a an injunction preventing a licensee, employee, vendor or other party from disclosing a trade secret; b the return of all confidential and proprietary information; and c compensation for any losses suffered due to the disclosure of trade secrets. II RECENT DEVELOPMENTS i Levi Strauss and Co v. Imperial Online Services Private Limited34 In a landmark judgment, a pocket stitch design, popularly known as the Arcuate stitching design, owned by the well-known denim jeansmanufacturer Levi Strauss & Co (Levi Strauss), was recognised as a well-known trademark by the Delhi High Court. Levi Strauss filed a civil suit against Imperial Online Services Private Limited (IOSPL) on the ground that IOSPL was, without authorisation, selling denim jeans whose pockets bore a design identical to the Arcuate stitching design mark. IOSPL was selling jeans with the infringing pocket stitch designs through its own website and through various other e-commerce websites. The Delhi High Court issued an injunction against IOSPL.Pertinently, the Court recognised that the Arcuate stitching design mark has become well known owing to long, continuous and extensive use on denim jeans, pants and trousers. This order of the Delhi High Court is seminal because this is the first time the coveted recognition of a well-known trademark was granted to a non-traditional mark, hopefully paving the way for other such marks. ii Sun Pharmaceuticals v. Hetero Healthcare Limited35 The Delhi High Court, in an appeal filed by Sun Pharmaceutical Laboratories Ltd (Sun Pharma) against a first instance court’s order, which hadrejected Sun Pharma’s motion for an interim injunction seeking to restrain Hetero Healthcare Ltd (Hetero) from using the mark ‘LETERO’ in respect of medicinal and pharmaceutical products, held that international non-proprietary names (INNs) cannot be exclusively used as trademarks to theexclusion of others. Sun Pharma, in the instant appeal, had approached the Delhi High Court against the impugned order of the court of original jurisdiction, alleging deceptive similarity between Hetero’s mark LETERO and Sun Pharma’s registered mark LETROZ, used by Sun Pharma onits generic drugs meant for treatment of breast cancer containing an active ingredient, Letrozole. 33 Section 43A and Section 72, the Information Technology Act, 2000. 34 Levi Strauss and Co v. Imperial Online Services Private Limited & Ors, 2022/DHC/001222. 35 Sun Pharmaceutical Laboratories Ltd v. Hetero Healthcare Ltd & Anr, 2022/DHC/003265.

The Delhi High Court, noting that the marks of both the parties incorporated the first five letters of the INN, LETROZOLE (present as activeingredient in the products of both the parties), held that Sun Pharma could not be allowed to exclusively use the INN for its products as nomonopoly can be claimed over a part of the name of the salt that formed the principal ingredient of the drug in question. The judgment is an authorityon registrability of marks that have been derived from INNs or other similar pharmaceutical ingredients. iii New Balance Athletics Inc. v. NBStores India36 In the present case, the Delhi High Court granted well-known shoe manufacturer, New Balance, an ex parte ad interim injunction against various unknown persons who were operating websites whose URLs contained New Balance’s ‘NEW BALANCE’ and ‘NB’ marks. These URLs resolved to active sites whose interface was nearly identical to New Balance’s website, and on which New Balance’s marks were being usedwithout authorisation. The Court, on the basis of New Balance’s arguments, and taking into account the fraudulent nature of the websites, granted a dynamic injunction in New Balance’s favour. This is an important decision as it sets a precedent for tackling digital piracy in India and enables IP rights holders to take appropriate action against rogue websites and mirror websites. iv Alpha Vector v. Sach Industries37 The Delhi High Court, in this matter, reaffirmed the settled position in law that numerals can be afforded trademark protection if it can be shownthat such numerals have acquired distinctiveness owing to extensive use. Alpha Vector filed a suit claiming protection in its numeral mark, 91, usedfor bicycles, against use of a deceptively similar mark 99, also for bicycles. The Court, considering Alpha Vector’s use of the 91 mark, held that the91 mark appeared to have acquired goodwill within a short period of time, which, in the Court’s opinion, could be made out from the sales figuresof Alpha Vector, and observed that, prima facie, interim protection ought to be granted to the plaintiff. v Knitpro International v. The State of NCT of Delhi38 The Supreme Court of India, in this case, held that copyright infringement is a cognisable and non-bailable offence, meaning thereby that any person who knowingly infringes or abets copyright infringement can be arrested without a warrant. The present case involved an appeal against an order of the Delhi High Court quashing a first-information report registered against the respondent on the ground of copyright infringement under the Copyright Act,39 as well for cheating and dishonestly inducing delivery of property.40 The Supreme Court, while conjointly reading theprovisions of the Copyright Act as well as the Code of Criminal Procedure (CrPC), held that since the CrPC made offences punishable 36 New Balance Athletics Inc v. NBSTORESININDIA.IN & Ors, CS (Comm) 12/2022, Order dated 7 January 72022. 37 Alpha Vector India Pvt Ltd v. M/s Sach Industries & Ors, CS (Comm) 691/2022. 38 M/s Knit Pro International v. The State of NCT of Delhi & Anr, Criminal Appeal No. 807 of 2022, Order dated 20 May 2022. 39 Section 51, 63 and 64 of the Copyright Act, 1957. 40 Section 420, Indian Penal Code, 1860.

with imprisonment for three years or upwards cognisable and non-bailable, and since three years was the maximum imprisonment period providedfor the offence under the Copyright Act, the resulting offence would also have to be cognisable and non-bailable. vi Diageo Brands BV & Anr v. Alcobrew Distilleries India Pvt Ltd41 The Delhi High Court refused to grant an interim injunction in a case filed by Diageo alleging piracy of its registered ‘Hipster Flask’ design by the defendant: The Court held that the plaintiff had failed to make out a prima facie case of obvious or fraudulent imitation (test of piracy of registered mark in India). The matter was hotly contested by both the parties, with the plaintiff claiming exclusivity and infringement as well as passing-off of thetrade dress associated with the Hipster design, which, as per the plaintiff, acted as a source identifier of its products. The plaintiff also stated that thetest of infringement in the case of design is a ‘six to eight yards test’ whereby the infringement is tested by holding up the plaintiff’s and thedefendant’s products in each hand and comparing the two to check if it would be possible to differentiate between the two from a distance of six toeight yards. The defendant, on the other hand, disputed the plaintiff’s contention on grounds of prior art and differences in the rival designs, and argued that infringement is tested when viewed from the perspective of an instructed eye. The Court delved into various design infringementprecedents and held that the test of design infringement is to be viewed from the perspective of an instructed eye of an informed person. The Court, on the basis of the above-noted test, held the rival designs to be prima facie different and dismissed the interim injunction motion of the plaintiff. Thepresent case has settled the test of determining infringement in the case of designs. vii Philips Holding BV v. Jaiprakash Agarwal & Anr42 The Delhi High Court, in a design infringement and passing-off suit, declined to grant an interim injunction to the plaintiff owing to the presenceof similar prior registered designs. The plaintiff asserted that the novelty of its designs resided in the T-Shape and Plug and Play format of its electricbulbs. The Court held the design of the plaintiff’s bulbs to be merely a trade-variant of already existing registered designs, and not capable ofregistration. The Court, regarding the plaintiff’s plea of passing off, observed that not only did the plaintiff place nothing on record to substantiate aprima facie claim of infringement, but, as per the Court, it was also to be noted that the plaintiff had admitted that it is also the OEM of variouslighting products, including the designs for several other lighting companies. The Court, thus, held that the design of the bulbs could not attribute aconnection of the product to the plaintiff. viii Avery Dennison v. Controller General of Patents, Designs and Trademark43 The Delhi High Court held that mere simplicity of an invention cannot deter patent protection for the invention. The appeal was filed by AveryDennison against an order of the Patents Office refusing a patent application on the ground that the creation, purpose and effect of the feature that was claimed as an inventive step by the inventor could be construed by a 41 Diageo Brands BV & ANR v. Alcocrew Distilleries India Pvt Ltd, 2022/DHC/005661. 42 Philips Lighting Holding BV v. Jai Prakash Agarwal and Anr, 2022/DHC/002445. 43 Avery Dennison v. Controller General of Patents, Designs and Trademark, 2022/DHC/004697.

mere reading of the prior art document, and that this addition could, at best, only constitute a workshop improvement for a person skilled in the art.The Court discussed different tests to determine the existence of an inventive step and lack of obviousness and held that these tests cannot beapplied in a straitjacketed manner. As per the Court, ‘one of the sure tests in analyzing the existence of an inventive step would also be the time gapbetween the prior art document and the invention under consideration’. If a long time has passed since the prior art was published and a simplechange resulted in unpredictable advantages that no one had thought of for a long time, the court would tilt in favour of holding that the invention is not obvious. ix FMC Corporation v. NATCO Pharma Ltd44 A two-judge bench of the Delhi High Court, in this case, interpreted the applicability of the doctrine of equivalents to a process patent, and held thatthe doctrine of equivalents must be applied to each element of the process to determine patent infringement. The Court found no reason to interferewith the decision of the court of first instance in this matter and affirmed the original-side court’s prima facie finding that on applying the doctrine ofequivalents to the process involved in the defendant’s (NATCO) allegedly infringing process patent on an element-to-element basis, NATCO’sprocess could not be termed as a mere minor or insubstantial variation from the suit patent. The appeals court subscribed to the single judge’sreasoning, who had observed in the impugned order that use of thionyl chloride by NATCO as a reagent as opposed to the use of sulfonyl chloride byFMC was a difference significant enough to take NATCO’s process outside the ambit of being considered as equivalent to FMC’s process. The appeal was, accordingly, dismissed. x Nippon A&L v. Controller of Patents45 The Delhi High Court, in this matter, held that amendments to claims or patent specifications shall not be rejected solely on account of the claims being converted from product by process claims to process only claims or method claims. Nippon A&L, which had filed an application seeking protection for a copolymer latex product obtained by the process of emulsion polymerisation, defining the scope of its claims to be for product by process in order to overcome the Indian Patent Office’s objection that the claims in the original patent application were improperly drafted and the scope of whether protection was sought for a product or process was not clear, ultimately amended its product by process claims to process only claims. This amendment came to be rejected by the Indian Patent Office on the ground of exceeding the scope of the originally filed claims. TheCourt, while allowing the appeal, observed that the purport of the Patent Act makes it clear that amendments to claims are permissible so long asthey only narrow the scope of the originally filed claims, and the invention under the amended claims or specification is restricted to the scope of the disclosures already made in the originally drafted claims or specification. 44 FMC Corporation & Ors v. NATCO Pharma Ltd, 2022/DHC/05311. 45 Nippon A&L v. Controller of Patents [CA(COMM.IPD-PAT) 11/2022).

III OBTAINING PROTECTION i Patents The Patents Act follows the globally accepted triple test46 of patentability: novelty,47 inventive step48 and industrial application.49 The Patents Act also enumerates inventions that are, inter alia, frivolous, contrary to public order or morality, which can cause serious prejudice to human, animal orplant life, which are mere discovery of a scientific principle, or mere discovery of new form of known substance, process of treatment, etc., as notpatentable.50 Novelty is said to subsist in an invention if it has not been anticipated by publication in any document or used in the country or elsewhere inthe world before the date of filing of a patent application. The inventive step requirement is fulfilled when either the invention involves technicaladvances from the existing body of knowledge in the field, or has economic significance. Further, the invention must also be capable of being made or usedin an industry. ii Trademarks As described in Section I, as per the TMA, a mark shall be capable of being represented graphically, and capable of distinguishing the goods orservices of one person from those of others, in order to be eligible to claim protection as a trademark. India follows the first to use principle for trademark registration rather than the first to file principle. Registration of a trademark is not necessarybefore use commences. However, registration is essential to bring a claim for infringement. Use trumps registration, and a user of a mark can amass rights in a mark by virtue of substantial and continuous use in the country. The term ‘use’ for the purpose of constructing infringement claims does not necessarily have to be in terms of actual goods or services being madeavailable for consumption in the Indian market. Rather, use of a mark in business papers or in advertising material,51 use by way of print andelectronic media, and widespread visibility of the mark through social media proliferation, have been recognised as use by courts notwithstanding thefact that the actual product or service bearing the mark in question is not available to consumers in India.52 Any unregistered trademark rights can be protected through the common law remedy of passing off.53 The following factors are required fordemonstrating passing off: a reputation attached to goods or services of a party; b misrepresentation by the opposite party to the public in a manner that has deceived or would be likely to deceive the public into thinkingthat the opposite party’s goods are those of the first party, and; c actual damage or likelihood of damage to the first party’s goodwill or reputation. 46 Section 2(1)(j), Patents Act. 47 Section 2(1)(l), Patents Act. 48 Section 2(1)(ja), Patents Act. 49 Section 2(1)(ac), Patents Act. 50 Section 3, Patents Act. 51 Section 29(6)(d), Trade Marks Act, 1999. 52 See NR Dongre v. Whirlpool Corporation [(1996) 5 SCC 714]; Milment Oftho Industries v. Allergan Inc [(2004) 12 SCC 624]; Cadbury UK Ltd & Anr v. Lotte India Corporation Ltd [2014 (57) PTC 422 (Delhi)]; Banyan Tree Holdings v. Mr Jamshyad Sethna & Anr (judgment dated 20 November, 2015 passed by Delhi High Court in CS(OS) 2172/2007). 53 Section 27, Trade Marks Act, 1999.

In addition to trademarks simpliciter, the TMA also has special provisions governing the registration process and possible actions for infringement of collective marks and certification marks.54 iii Designs As discussed in Section I, only the aesthetic features of an article are protectable under the Designs Act, provided that the features are original andhave not been previously disclosed to the public anywhere in India or any other country by publication.55 ‘Article’ has been defined under the Designs Act to mean any article of manufacture and any substance, artificial or partly artificial or partly natural, and includes any part of an article capableof being made and sold separately.56 A mere mechanical device or a functional design are not protectable. The Designs Act also categorically excludes trademarks that qualify for protection under the TMA from being protected as industrialdesigns.57 iv Copyright Copyright provides protection to authors in their original expression of the work but not in the underlying idea. As described earlier in Section I,obtaining copyright registration is not a prerequisite for an infringement action as copyright is, inherently, an incorporeal property. The Copyright Actalso provides that no copyright under the provisions of the Copyright Act shall vest in any design that is registered under the Designs Act. However, ifthe owner of a product in which the owner claims copyright is actually an article that is otherwise registrable as a design under the Designs Act, theCopyright Act carves out a special exception for such cases by providing that although copyright in such designs would be available, it shall cease assoon as the article to which the design has been applied and in which copyright is claimed gets reproduced more than 50 times by an industrialprocess.58 v Plant varieties The PV Act provides for registration of new and extant varieties that conform to distinctiveness, uniformity and stability criteria, as shall be specifiedunder the regulations under the PV Act. The PV Act provides specific criteria that must be met by a new variety such asnovelty,59 distinctiveness,60 uniformity61 and stability.62 Broadly speaking, a new variety shall be considered novel if, at the date of filing of the applicationfor registration, the variety has not been in the public domain in India for more than one year, or outside India, in the case of trees or vines, earlier than sixyears, or in any other case, earlier than four years. The definition of variety under the PV Act specifically excludes micro-organisms.63 54 Chapter VIII and IX, Trade Marks Act, 1999. 55 Section 2(d), Designs Act, 2000. 56 Section 2(1)(a), Designs Act, 2000. 57 Section 2(d), Designs Act, 2000. 58 Section 15, Copyright Act, 1957. 59 Section 15(3)(a), PV Act. 60 Section 15(3)(b), PV Act. 61 Section 15(3)(c), PV Act. 62 Section 15(3)(d), PV Act. 63 Section 2(1)(za), PV Act.

vi Geographical indications The GI Act marked the first legislation in India that extended statutory protection to GIs by providing a mechanism for registration and protection of GIs. 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. The GI Act classes agricultural goods, natural goods and manufactured goods as protectable. Further, only such indications that identify the goods as originating from, or being manufactured in, the territory of the 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, are protectable.64 The GI Act also mandates that in the case of manufactured goods, one of the activities of the production or processing or preparation of the goods concerned takes place insuch territory, region or locality, as the case may be.65 IV 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 andrevocation are handled at the registries established under the aegis of the Controller General of Patents, Designs and Trademarks. Courts, on theother hand, deal with original matters (equitable relief against infringement by a known or unknown third party, or passing off of trademarks) aswell as appeals from decisions of the registries. Cancellation actions under the relevant IP laws are also, pursuant to the abolition of the IntellectualProperty 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 courtshave now been recognised as the appellate authority for orders passed by the various examiners and hearing officers at the Registry. High courtsalso 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 specificprocedures with stricter emphasis on statutory deadlines for ensuring expeditious and effective disposal of such commercial disputes, and courts atboth district and high court level have constituted special benches dedicated to hearing commercial disputes governed by the provisions of theCCA. 64 Section 2(1)(e), the Geographical Indications of Goods (Registration and Protection) Act, 1999. 65 ibid.

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 forgain, 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 registeredtrademark or a copyright, as the case may be, to be filed where the plaintiff actually and voluntarily resides or carries on business or personallyworks 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 matterswhere the plaintiff, while filing an application for grant of ex parte ad interim injunctions, also files an application for appointment of a courtcommissioner, who then visits the defendant’s premises, and seizes the stock of infringing products found at the defendant’s premises and seals thesame, 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 suchdocuments 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 adinterim 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 faciecase, 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 grantingpreliminary injunction until the pendency of the suit after hearing rival submissions from both parties. 66 Section 20, CPC. 67 Section 134, Trade Marks Act, 1999; Section 62, Copyright Act, 1957. 68 Order XI Rule 2(11), CPC. 69 Order XI Rule 5, CPC

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 courtsof 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 outby the concerned judge. High courts, however, have judicial officers, namely joint registrars, who conduct and preside over the cross-examination ofwitnesses. Parties before Indian courts can also ask the court to appoint a court commissioner before whom the parties can appear and record theirstatements. vi Infringement Trademarks 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 ordeceptively similar to the registered mark in the scenarios as set out below: a in relation to identical goods or services covered by the registered mark;70 b in relation to similar goods or services covered by the registered mark; 71 c in relation to different goods or services, provided the registered mark has a reputation in India;72 d in cases where the defendant uses a registered mark as his or her trade name or part of his or trade name;73 or e 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., reproductionof 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 imitationof 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. 70 Section 29(1) of the Trade Marks Act, 1999. 71 Section 29(2) of the Trade Marks Act, 1999. 72 Section 29(4) of the Trade Marks Act, 1999. 73 Section 29(5) of the Trade Marks Act, 1999. 74 Section 29(7) of the Trade Marks Act, 1999. 75 Section 51 of the Copyright Act, 1957. 76 Section 22 of the Designs Act, 2000. 77 Section 48 of the Patents Act, 1970.

vii Defences Trademarks Defences as allowed by the TMA are briefly set out below: a 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 themark;78 b use of a registered mark by another person in a descriptive manner;79 c parallel imports from another jurisdiction;80 d 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;81 and e 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: a fair dealing; b the reproduction of work for the purpose of judicial proceedings or for the purpose of educational purposes; c the performance of a literary, dramatic or musical work; or d communication to the public of sound recordings in the course of a bona fide religious ceremony.83 Designs Act In 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 validdefences. 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 aslaches 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 to36 months. 78 Section 30(1) of the Trade Marks Act, 1999. 79 Section 30(2) of the Trade Marks Act, 1999. 80 Section 30(3) of the Trade Marks Act, 1999. 81 Section 34, Trade Marks Act, 1999. 82 Section 35, Trade Marks Act, 1999 83 Section 52 of the Copyright Act, 1957. 84 Section 22(3) of the Designs Act, 2000.

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 aresettled 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 review Hierarchy 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 originaljurisdiction is vested. With the advent of the CCA, appeals from orders of the district court or high court are adjudicated by the Division Bench ofthe high court, which comprises two judges. The decisions in such appeals can be challenged up to the Supreme Court of India subject to grant ofspecial 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 theconclusion 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 differentconclusion. 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 obtainingleave from the appellate court. 85 Section 135 of the Trade Marks Act, 1999, Section 55 of the Copyright Act, 1957 and Section 108 of the Patents Act, 1970. 86 Section 35 A of the Commercial Courts Act, 2015. 87 Section 136 of the Constitution of India.

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 shallformulate 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 plaintiffto first explore mediation before approaching courts by way of a suit, failing which the suit shall not be maintainable.88 This provision, however, isnot applicable to suits that contemplate an urgent relief.89


While the delay in establishing IP divisions at the various high courts following the abolition of the IPAB remain unresolved, the efficient functioningof the IP Division at the Delhi High Court and the resulting expeditious and voluminous disposal of IPAB matters as well as IP suits is a clear sign thattimes are looking bright for IP enforcement in India, and the situation is slated to become even better once IPDs in other states become functional.

Further, with the advent of the CCA and the strict timelines prescribed from the stage of pleadings to trial and final arguments, matters mostlyare decreed within a 24 to 36-month time frame, which is a measure enacted by the central government to enhance confidence in commercialtransactions and to improve the ease of doing business in India. Courts, in view of the strict statutory timelines under the CCA, also come downheavily on parties that fail to comply with the prescribed timelines, and impose heavy costs on the defaulting party.

All in all, the courts in India have adapted to technological changes and have stood up to the tests of the times. However, with the challenges posed by AI chatbots like Chat GPT, metaverse iterations, non-fungible tokens and cryptocurrency, it will be interesting to see howcourts in India will continue to adapt to new technology and challenges to the IP paradigm posed by such evolution.

88 Section 12A, Commercial Courts Act, 2015.

89 See Chandra Kishore Chaurasia v. RA Perfumery Works Pvt. Ltd [2022 SCC OnLine Del 3529],

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