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Litigation in IPR Disputes

Litigation in the field of intellectual property rights is a complex process. Since there are so many courts in India, each with its own set of rules, the country is highly diverse. Such a wide range of actions necessitates the development of various strategies. It is critical to obtain "ex- parte" orders in IPR proceedings where the infringement is of such a kind that prior notice to the defendant will destroy the action's effectiveness.

"Ex-parte" injunctions are granted by some Indian courts as a matter of habit due to internal policies, and some courts do so. As a result, the litigants resort to forum shopping, which is quite legal. "Forum shopping", on the other hand, has several drawbacks. Distinct aspects of IPR have diverse provisions, which necessitate different litigation techniques on the issue of jurisdiction.

When it comes to trademarks, the possessor can claim in the court of his territorial jurisdiction if his trademark is registered, but he cannot do so if his trademark is utilized but not registered in the event of passing off. In the case of patents and designs, the holder must choose a jurisdiction where the defendant is located or where the infringing items are manufactured or marketed.

In the event of Copyright infringement, on the other hand, the owner can sue in his jurisdiction, regardless of where the infringement happened. From time to time, changes in the law have resulted in tighter interpretations of sections, obstructing the selection of relevant Courts to which the right holder has access following the law.

For example, if a right holder has offices in five cities in India, it has the right to sue in any of the five cities' courts for trademark infringement, but courts have ruled that the defendant's choice of forum in such matters must be limited to the courts where the defendant's office is located. This is to ensure that the plaintiff does not take advantage of its presence in several locations to cause the defendant inconvenience.

As public awareness grows, the number of lawsuits filed increases, giving courts more and more opportunities to deal with IPR cases and gain more experience and expertise. As a result, the enforcement regulations are becoming more simplified and standardized in their application. Furthermore, given the size of the country and the fact that India has over 600 courts, uniformity of approach is impossible.

In India, most states have a single High Court and some extra benches located in different cities within the same state. On average, India has 24 High Courts, each of which has appellate authority over around 30 District Courts. While the aforementioned is true in civil instances, criminal laws also play a significant role in trademark and copyright counterfeiting cases.

In India, criminal law does not apply to patents and designs. Investigation plays a significant role in litigation because litigation tactics can only be effectively created with information on the defendants/counterfeiters, and some successful litigations have been achieved as a result of prior knowledge of the infringement and the infringers.

The false and infringing goods are being investigated. Injunction orders are acquired through litigation in the courts. Damages should be recovered from the infringing companies. To report the importance of infringing items, you must register with the Customs Department.

Trademark Litigation
We observe two types of trademark remedies in the sphere of trademark infringement. These are civil and criminal remedies, and a person whose trademark rights are violated his constitutional protections and, in some cases, "common law" rights that are not recognized and approved under common law solutions because they violate society's basic nature, which resembles "moral and ethical" right and wrong.

As a result, let us focus on both views while defining the nature of trademark litigation.

Civil remedies
Registered trademark
"Infringement of a trademark is defined by Section 29 of the Trade Marks Act". In other terms, an infringement of a trademark occurs when the owner of a registered trademark's exclusive rights are breached. The possessor obtains exclusive rights to the brand name through trademark registration. The owner of a trademark registration certificate has exclusive rights to use the brand name for any business activity that falls within the class in which it is registered. When a third party uses a brand name in the course of business without the owner's consent, it is a breach of the owner's rights and is referred to as trademark infringement.
  1. Injunction- The action of an injunction is referred to as stopping one person from doing a particular activity or task through the judicial process, to prohibit a person from using the trademark without any certain approval from the owner.
  2. Damages- Damages in this context means to compensate the monetary value for the loss incurred by the trademark owner as a result of trademark infringement. The court will determine the value of damages after examining the owner's actual and prospective losses as a result of the infringement. Damages have become increasingly important in trademark law as a form of relief, with the primary goal of monetary compensation.
  3. Custody of infringing materials- This remedy implies that the Court may order the infringer to furnish all goods or products bearing the trademark. The Court may order the authorities to seize the linked materials assets and destroy all such goods in this case.

Unregistered Trademark
Not only registered but even unregistered trademarks have rights and protection in the form of remedies under the Trademarks Act, of 1999. Also, while section 28 of the Act provides a statutory remedy for unauthorized use of a registered trademark, section 27(2) of the Act provides a remedy for improper use of an unregistered trademark. Passing off is a common law tort that is frequently utilized to protect the goodwill associated with unregistered trademarks. Passing off is when someone misrepresents his or her goods or services as those of another.

Both registered and unregistered trademarks can file a passing-off action, but only registered trademarks can file an infringement claim. Even though both suits have the same goal in mind, they are different concepts. Permanent injunctions, temporary injunctions, damages or accounts of profits, delivery of infringing items for destruction, and legal fees are among the types of relief possible in both instances.

In a case of infringement, the burden of proof is lower than in a case of passing off. While proving deceptive similarity in an infringement suit is sufficient to hold the infringer liable, in a passing-off action, the plaintiff must show not only deceptive similarity but also how the defendant's mark is likely to deceive the public and has a risk of causing injury to the plaintiff's goodwill.

The plaintiff must show that his mark has become distinctive to his goods and those consumers identify the mark with his goods. The plaintiff must first show that he or she was a prior user of the mark to prove passing off as mentioned in Consolidated Foods Corporation v. Brandon & Co. PVT Ltd (1)

Misrepresentation is another crucial component of passing-off action. The word misrepresentation does not mean that the plaintiff must prove any malafide intention on the part of the defendant. What must be established is the likelihood of confusion in the minds of the public, the word public being understood to mean actual or potential customers or users that the goods or services offered by the defendant are the goods or the services of the plaintiff. (2)

Misrepresentation can be intentional or unintentional, the question is whether the defendant is marketing his goods in such a way that a layman would confuse them with the plaintiffs, as stated in Telemart Shopping Network Pvt Ltd vs Tvc Life Sciences Ltd& Anr. (3)

Criminal Remedies
In sections 101 to 121 of the Trade Marks Act 1999, criminal offenses relating to the use of fake trademarks, fraudulent trade descriptions, and other types of false marking on goods, as well as the sale of goods with such false markings, are addressed. Except for the increased punishment, these rules are nearly identical to those in the Trade and Merchandise Marks Act 1958.

One of the goals of the new Act, as stated in the preamble, is to prevent the use of false marks. The nature of the offenses and the penalties thereof are contained in Chapter XII (ss. 101 to 121).

For this Chapter, (except s. 107) trademark is defined in s. 2(1) (ZB)(i). The expression trade description and false trade description which are used in connection with the offenses are defined in ss.2(1) (a) and 2(1)(i) respectively. For the definition of deceptively similar.

The package is defined in 2(1)(q). Sections 81 and 82 deal with the stamping of textile goods and the determination of the character of such goods by sampling. For offenses under Chapter XII of the Act, a trademark includes a registered as well as an unregistered trademark. (4)

The police have the authority to investigate cognizable cases under Section 156 of the Code of Criminal Procedure, 1973. Sub-section 3 Section 156 states that if the police refuse to file an FIR or commence criminal action, the aggrieved person may make a complaint with the Magistrate, following the procedures outlined in Section 190 of the Code of Criminal Procedure, 1973.

The offenses under the Trade Marks Act, of 1999, are classified as cognizable offenses under the First Schedule Table II of the Code of Criminal Procedure, 1973, although the same is not provided for in the said Acts.

Patent Litigation
In the case of patents, only civil remedies are available; Section 104 of the Act states that an infringement complaint cannot be filed in any court lower than a District Court with jurisdiction to hear the case unless it is the High Court in a suitable situation.

When in the high court and district court, an action for infringement is filed, and the defendant's counterclaim for patent revocation, the matter is referred to the High Court for determination because the High Court has jurisdiction over revocation cases. In addition, section 104(A) establishes the burden of proof in infringement suits.

A civil lawsuit seeking "temporary injunction, permanent injunction, damages or account of profits, delivery up or destruction of infringing items, or legal expenses" is the most effective way to enforce patent rights.

In India, a patent owner also has the following possibilities for enforcing his or her rights:
In "Anton Piller order", on the plaintiff's request or otherwise, the court can appoint a local commissioner to retain or "seal infringing materials or accounts on the defendant premises";

The court can issue a "Mareva injunction", which prevents the "defendant from disposing of its assets within India until the trial" is completed or the patent infringement case is decided; alternatively, the court can order a search and seizure of any place where infringing actions are alleged to be carried out in the name of an unknown defendant, with the help of the local commissioner and police, if necessary, in "John Doe order".

Copyright Litigation:
When copyright in a work is infringed on, the owner of the copyright is entitled to all remedies available, including injunctions, damages, and accounts, according to Section 55 of The Copyright Act, 1957. The grant of an interlocutory injunction is the most important civil remedy because most actions begin with an application for interlocutory relief and, in most situations, the matter never progresses beyond the interlocutory stage.

Other civil remedies include real and conversion damages, rendition of profits accounts, and delivery up. It includes Interlocutory Injunctions, Pecuniary Remedies, Anton Piller Orders, Mareva Injunction, and Norwich Pharmacal Orders.

Criminal Remedies:
The copyright holder can commence criminal actions against the infringer under Section 63 of The Copyright Act, 1957, which provides for at least six months of imprisonment, which can be extended to three years, and a fine of Rs. 50,000, which can be increased to Rs. 2 lakhs. It also includes Punishment through imprisonment which, under Indian law, may not be less than six months but may extend to three years.

And Fines which, under Indian law, shall not be less than Rs.50.000. and which may extend to Rs.200,000, Search and seizure of the infringing goods including plates which are defined as including blocks, molds, transfers, negatives, duplicating equipment, or any other device used or intended to be used for printing or reproducing copies of the work, Delivery up of infringing copies or plates to the owner of the copyright. (5)

Design Litigation
It is preferable to study Sections 22 and 11 of the Designs Act together to comprehend design piracy. Section 11 grants a registered proprietor copyright in a design, while Section 22 protects that right. A person who "applies, imports, or publishes the design, or any false or evident" imitation thereof, without the authorization of the design's proprietor infringes on the design. The act can be called the piracy of a design if it is done in the registered copyright design, it is done without any consent of the creator of the copyright design, and it is done for sale.

Section 22 (2) of the Act lists the liabilities of the infringer of a design, which are impliedly the remedies available to the registered proprietor. The registered proprietor has to elect one of the alternative remedies provided in this section. (6)

Section 22 (2) (a) enforces the infringer to pay a sum not exceeding Rs.25, 000 for every contravention recoverable as a contract debt to the registered proprietor. The total sum of such amount recoverable for one design should not exceed Rs.50, 000. (7)

The goal of this ratio is to hold the infringer accountable for the registered proprietor's loss while still ensuring a reasonable return on the proprietor's investment. To be eligible for damages, the registered proprietor must label his articles in some way that indicates that the design is registered, and he must take all reasonable means to guarantee that the article is marked.

  1. AIR 1965 Bom 35, (1964) 66 BOMLR 612.
  2. Javvad shaikh, Litigation in Intellectual Property (IP) Laws, LEGAL SERVICE INDIA, July 21, 2021, 12:37 PM
  3. CS(COMM) 115/2016.
  4. Javvad shaikh, Litigation in Intellectual Property (IP) Laws, LEGAL SERVICE INDIA, July 21, 2021, 12:37 PM
  5. Javvad shaikh, Litigation in Intellectual Property (IP) Laws, LEGAL SERVICE INDIA, July 21, 2021, 12:37 PM
  6. Javvad shaikh, Litigation in Intellectual Property (IP) Laws, LEGAL SERVICE INDIA, July 21, 2021, 12:37 PM
  7. Javvad shaikh, Litigation in Intellectual Property (IP) Laws, LEGAL SERVICE INDIA, July 21, 2021, 12:37 PM

Award Winning Article Is Written By: Mr.Swagat Kumar Tosh
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