• PGCL Moot Court Society

INTELLECTUAL PROPERTY RIGHTS: INFRINGEMNET AND ENFORCEMENT

- Sarthak Utangale



The history of intellectual property dates back to almost as far as 500 BC. In Sybaris, a Greek State, citizens could obtain a patent for any refinement in the domain of luxury goods.

As far as India is concerned, the laws relating to Intellectual properties (hereinafter referred to as “IP”) are still in its budding/developing stage. Although a major portion of the intellectual property laws are derived from the statutes of England. The Copyright, 1957 is the first codified statute in the domain of Intellectual property (hereinafter referred to as “IP”).

This article envisages postulating the aspect of the IP law that deals with infringement and subsequent legal remedies available pursuant to the infringement and enforcement of one’s Intellectual property rights. However, it may be noted that the extent of law relating to the above is too comprehensive to be boiled down to a single article, so this article is just a scratch to the surface of the procedural laws of IP. Some basic IP knowledge is assumed.

Patents:

The patent grants its owner the right to prevent third parties from making, using, selling or even importing that product without the consent of the patent holder. Any violation of the rights of the patentee will constitute infringement.

The question that arises now is what exactly amounts to infringement?

The courts in India in a number of cases have held that patent infringement means:

1. Colourable imitation of an invention

2. Immaterial variations in the invention

3. Mechanical equivalent of the invention

4. Taking essential features of the invention.


Remedies:

As soon as it is established that a patent has been infringed, it gives the owner a right to redress. Section 104 of the Patents Act, 1970 provides that a suit for infringement shall not be instituted in any court inferior to a District Court having jurisdiction to try the suit. The patentee/owner, licensee of the patent or an assignee can institute a suit in a competent court having the jurisdiction. However, it may be noted that when the defendant makes a counter claim for revocation of patent, the suit will be transferred to the High Court because under section only the High Court has the jurisdiction to revoke a patent.

Generally, the burden of proof will be on the plaintiff to prove that the infringement has indeed taken place. There is a period of limitation for a suit for infringement of a patent. The suit can be filed within three years from the date of the infringement.

According to section 108, if the plaintiff is able to prove the infringement, the court may grant the following reliefs:

  • Injunction

  • Damages or account of profits

  • Delivery of infringed goods

  • Certificate of validity

Copyrights:

The owner of a copyright has the monopoly right to exploit his work for commercial gains in multifarious ways. The nature of rights depends on the nature of work.

In copyright, infringement prima facie means unauthorised and illegal reproduction of work of others. The Copyright Act, 1957 is the governing statute so far as copyrights are concerned. Under section 57 of the said Act, work shall be deemed to be infringed when any person without the license from the owner, does any act the right of which is exclusive vested in the owner. Infringement would also occur when a person sells, trades, displays distributes or imports work or any part thereof without the owners’ permission.

Remedies:

The Copyright Act has not only conferred the copyright but has also laid down an effective system for protecting copyright. The owner may resort to civil remedies; criminal remedies and administrative remedies. In Tata Oil Co. Ltd. V. Hansa Chemical[1], the Delhi High Court held that remedies available to the holder of copyright are not mutually exclusive, so a party may sue for all the reliefs individually.

So far as civil remedies are concerned, the plaintiff can seek the following remedies:

  • Anton Pillar order (Search and seizure order)

  • Injunction

  • Damages or account of profits

The rest of the aspects relating to the jurisdiction of courts and the burden of proof is identical to that of the patents.


In addition to this, the person found guilty of infringement can also be penalised. Section 63 to 65 of the said Act deals with the conviction of the person who infringed the copyright with a minimum punishment of 6 months which can go up to as much as 3 years along with a fine. The criminal proceedings may be initiated in the court of Magistrate first class.

Subsequently, administrative reliefs including the ban on importation of infringing copies which is dealt under section 53 can also be sought.


Trademarks:

Unauthorised use of a registered trademark amounts to infringement. Section 29 of the Trade Marks Act, 1999 deals with the infringement of a trade mark. In order to determine whether there has been an infringement of a trademark or not, the likely impact on infringing of the trademark on the potential purchaser, is taken into consideration. If the totality of impression of trademark is likely to cause deception or confusion for the potential purchasers then it amounts to infringement. In Astra IDL Ltd. Vs TTK Pharma Ltd[2], the Bombay High Court has held that the likelihood of confusion is sufficient and there is no need to prove that actual confusion has been caused. To sum it up, intention of fraud, confusion or deception is a requirement to determine infringement.

The aforementioned are the requirements of infringement of a registered trademark, but when it comes to infringement of an unregistered trademark the only remedy that the owner of the trademark has is to file a suit for “passing off”. Sec 27 of the Act provides that every owner has the right of action against any person who passes off the owner’s goods or services claiming to be his.


Legal remedies:

Upon infringement the owner may resort to civil remedies as well as criminal remedies. Moreover, if the trademark is unregistered, then the owner may file a suit for passing off. According to section 134 and 135, the registered proprietor or the registered user or the applicant and their legal heirs may sue the person who has infringed the trademark or the agent of the infringer; or the directors of the company as the case may be. The competent district court having the original jurisdiction will have the jurisdiction to try the suit. As per the Limitation Act, 1963, the limitation period of filing of the suit shall be three years from the date of infringement. Criminal proceedings would also follow as contemplated under sections 102 to 120.



Recent leading case laws:

1. Marico Limited vs Abhijeet Bhansali.

The defendant in this case was a ‘You Tuber’ having his own You Tube channel. The cause of action arose when the defendant posted a video on his channel reviewing ‘Parachute Coconut Oil’ which was the plaintiff’s product. In that video, the defendant had made some denigrating comments about the product. Consequently, the plaintiffs filed a suit for infringement of their trade mark registered by the name of “Parachute” claiming that the defendant had infringed their trademark by using it in his videos thereby prayed for a perpetual injunction restraining the defendant to post any such videos in future and also sought removal of the video forthwith.

Held: The Bombay High Court in a clear interpretation of section 29 of the Trademarks Act, 1999 held the defendant guilty of infringing the trademark without prior authorisation from the plaintiff.


2. Sameer Wadekar & Anr. Vs Netflix Entertainment Services Pvt. Ltd.

The plaintiff was a storywriter. He had filed the suit against the defendant for infringement of his copyright. He claimed that the OTT platform ‘Netflix’ in one of its new series had infringed his copyright as the trailer of the web series was similar to that of the plaintiff’s work. An interim application came to be filed by the plaintiff seeking temporary injunction on the release of the till the matter is pending before the court.

Held: The Bombay High Court speaking through Hon’ble Mr. Justice Sriram, held that the similarities were not sufficient to declare the web series as a copy of the plaintiff’s work. The infringement that arose was merely of the concept for which no copyright can be claimed. Furthermore, there was delay in filing of the suit. The court thereby reached the conclusion that no prima facie case had been established by the plaintiffs; the balance of convenience was also not in his favour. For these reasons the Bombay High Court dismissed the interim application filed by the plaintiff’s.


Conclusion

So far as the law relating to the infringement and enforcement of intellectual property is concerned, it has now been settled and is not contentious at all, thanks to the courts of India who have interpreted the provisions of law in letter as well as in its spirit. [1] PTC(Sppl) Del.

[2] AIR 1992 Bom 35.



Sarthak Utangale is a fourth year student at Pravin Gandhi College of Law, Mumbai.


(utangale.sarthak@gmail.com)


[1] Insolvency and Bankruptcy Code, 2016. [2] Insolvency and Bankruptcy Code, 2016.

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