Intellectual property (IP) is a kind of property that includes hypothetical and
intangible creations of a human intellect. There are many types of intellectual
property laws and some of the many countries in the world recognize the laws
more than that of other countries. The commonly known types of Intellectual
Property are copyright laws, patent laws, trademark laws and trade secret laws.
The main motive of intellectual property law is to encourage the creation and
production of a wide variety of intellectual goods.
To achieve this motive, the
law gives people and businesses property rights to the information and
intellectual goods they create, usually for a limited period of time. This gives
economic incentive for the creation because it allows people to profit from the
information and intellectual goods they create or produce. These economic
incentives are expected to encourage innovation and contribute to the
technological progress of countries, which ultimately depends on the extent of
protection granted to the innovators.
India has laws and protection of the same covering various area of
intellectual property which is enumerated below:
Infringement of IP laws
- Trade Marks deals with the Trade Marks Act 1999
- Patents deals with the Patents Act, 1970 (as amended in 2005)
- Copyrights and Related Rights deals with the Copyright Act, 1957
- Industrial Designs deals with the Designs Act, 2000
- Geographical Indications deals with the Geographical Indications of Goods
(Registration and Protection) Act, 1999
- Plant Varieties deals with The Protection of Plant Varieties and Farmers' Right
- Data Protection deals with the Information Technology Act, 2000
An Intellectual property Infringement is the violation or breach of
an intellectual property right. IP rights are infringed when a document
protected by IP laws is used, copied or otherwise exploited without having the
proper permission from a person who owns the original rights. Examples of an
Intellectual Property infringement are counterfeiting
Counterfeiting is the practice of imitating or emulating genuine goods often to
inferior quality, with the intent to take advantage of the superior value of the
imitated product in the market. Piracy is an unauthorized copying, use,
reproduction and/or distribution of materials which are protected by
intellectual property rights. There are different types of intellectual property
rights, such as copyrights, patents, trademarks, industrial designs, and trade
Therefore, an intellectual property infringement for instance be the
Defences against infringement of Intellectual Property laws
- Copyright infringement
- Patent infringement
- Trademark infringement
- Design infringement
In the civil proceedings and the criminal prosecutions under common
law a defendant may put up a defense (or defence) in an attempt to avoid
criminal or civil liability. Other than contesting the accuracy of
any allegation made against them in a criminal or civil proceeding, a defendant
may also make allegations against the prosecutor or plaintiff or raise a
defense, arguing that even if the allegations put up against the defendant are
true. The defendant is nevertheless not liable for the same. Likewise, there are
few defences in the intellectual property law.
Relevant cases of defense used in infringement of Intellectual Property laws:
- Copyright Infringement Defence
- Invalidity – The defendant may show and prove that the owner's copyright
- License – The defendant may demonstrate that they have a valid license.
- Public Domain – The defendant may opportunely argue that the work done
is in the public domain.
- Statute of Limitations – The defendant may argue that the statute of
limitations for enforcement of an infringement action has run.
- Accident – The defendant may claim unknowing or unaware or innocent
infringement. This is not generally an available defense for commercial use
of a copyrighted wok.
- Fair Use Doctrine – The fair use doctrine claims that there is must be a
valid and legal use of the copyrighted work that does not infringe upon the
holder's rights. Instances of fair use may include the following uses:
- review of the material (such as critique or criticism)
- academic use (such as teaching the material or research)
- satire or other parody of the work
- news or public commentary.
- Patent Infringement Defence
- The defendant may prove that they are compliant, by data that shows they
are not infringing, or argue that the asserted patent is invalid, if that be
- The defendant may stop selling or making the infringed product.
- The defendant may negotiate licensing fees from the patent owner by
cross asserting your patent portfolio (if the plaintiff is not an NPE).
- The defendant may start with non-infringement defence to avoid the
infringement claim. Cost of hiring an expert for non-infringement defence is
considered to be the best amongst all the available options.
- The defendant may prove that the patent has been wrongfully obtained by
the plaintiff. That the subject of that claim is not an invention within the
meaning of this Act, or is not patentable under the Act of Patents Act 1970.
- Insufficient disclosure of the invention or the method by which it is to
- In the case of a patent granted on convention application if in case the
application for patent was not made within twelve months from the date of
the first application filed for protection for the invention made in a
convention country or in India.
- Trademark Infringement Defence
- Doctrine of Laches: Stating that the plaintiff neglected to assert a
right or claim which can be taken together with lapse of time and other
circumstances causing prejudice to defendant which operates as bar in court of
- Estoppel: The doctrine of estoppel has three important elements:
- Position of authority assumed by the defendant.
- Submission to and dependence upon that assumption by the plaintiff
- Injury suffered by the plaintiff as an immediate consequence of such
submission and dependence."
Invoked by a court only when a plaintiff otherwise entitled to relief has
acted so improperly with respect to the argument that the public interest in
punishing the plaintiff counterbalances the need to prevent defendant's
- Fair Use/ Collateral Use:
Fair use allows fair comment that incidentally involves use of the mark for
a purpose other than that normally made of a trademark. Most often happens
in advertising cases (so long as there are no untrue claims) and parody
cases (but it is not fair use when a claimed parody is used to promote
competitive goods or services). Collateral use allows the use of goods that
bear a pre-existing mark.
Essentially, when a party uses a trademarked item as a component of a more
complex product, the doctrine of collateral allows the party to identify the
component by its trademarked name without any fear of being liable for
infringement. This is only true to the extent the party does not deceive the
public into thinking that the product being sold is actually marketed by the
- Design Infringement defense
- Repair Defense
The repair defence is a complete defence to the claim of design infringement, if
the purpose of using the design is to repair a product. It only applies to
complex products, which should contain two or more replaceable component parts.
The use of the part must restore its overall appearance in whole or part. Repair
in this situation means the restoring of damaged parts or replacing damaged
parts, replacing incidental items when restoring the component part, or carrying
out maintenance on the complex product. After the scope of repair defense, it
has been defined the spare part dealers can have the confidence of getting to
know how far the repair defence applies in relation to the sale of spare parts.
Importers and sellers of spare parts in the automotive aftermarket should still
be wary, particularly when staff are interacting and making sales with
customers. For Original Equipment Manufacturers, noting what the 'repair
defence' entails, you can adjust your design protection strategy accordingly.
- Design Infringement Defense:
Repair defence was tested successfully
in GM Technology Operations LLC v SSS Auto parts Pty Ltd (2019) 139 IPR 199. In
this case, GM Global Technology Operations (Holden) sought an injunction against
SSS Auto Parts (SSS) for the sale of spare Holden parts to second hand owners to
be used to repair Holden Commodores. The claim was made on the basis that SSS
was importing these parts for a purpose other than repair. The Court found that
even if there was a dual purpose to a spare part (i.e. for repair and
enhancement of a vehicle), this would not exclude the repair defence.
- Patent Infringement Defense:
Hindusthan Lever Ltd v Godrej Soaps Ltd
 AIR Cal 367; Raviraj Gupta v Acme Glass Mosaic Industries (1994) 56 DLT
673, the Delhi High Court rejected the application for the grant of ad-interim
injunction made by the plaintiff.
- F. Hoffmann-LA Roche Ltd. & Anr. v CIPLA Ltd., RFA (OS) 92/2012) counter
claim filed by Cipla seeking revocation of IN ‗577 in favour of Roche was
dismissed, Delhi High court set aside the impugned decision dismissing suit for
injunction filed by Roche.
Defenses are generally recognized as exemptions from liability that the law
would otherwise impose. By successfully affirming a defense, a person avoids the
normal consequences of the applicable liability rule. According to this rule,
whether a defense is available or not what matters only is, to the person who
raised it and to the plaintiff or the prosecutor who initiated legal proceedings
against that person.