JAMIA MILLIA ISLAMIA
REMEDIES FOR IPR INFRINGEMENT SUBMITTED TO DR. S. Z. AMANI
SHAKIR SHABIR 5TH YEAR 0|Page
ACKNOWLEDGEMENT Firstly, I would like to express my profound sense of gratitude towards the Almighty ―ALLAH‖ for providing me with the authentic circumstances which were mandatory for the completion of my research work. I am also thankful to Dr. S. Z. AMANI , for his invaluable support, encouragement, supervision and useful suggestions throughout this research work. His moral support and continuous guidance enabled me to complete my work successfully. His intellectual thrust and blessings motivated me to t o work rigorously on this study. In fact this study could not have seen the light of the day if his contribution had not been available. It would be no exaggeration to say that it is his unflinching faith and unquestioning support that has provided the sustenance necessary to see it through to its present shape.
Shakir Shabir B.A.LL.B (Hons) 9 th Semester 5th Year 1|Page
TABLE OF CONTENTS 1. Introduction to intellectual property
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2. What is intellectual property?
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3. Nature of intellectual property rights
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4. What are intellectual property rights?
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5. Why promote and protect intellectual property?
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6. Introduction
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7. Nature of ipr
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8. Indian ipr scenario perspective
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9. Indian perspective: challenges in ipr
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10. Protection of intellectual property rights
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11. Protection of intellectual property
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12. Remedies against exploitation of intellectual property
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13. Remedies under the trademarks act
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14. Remedies under copyright act
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15. Remedies under patents act 1970
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16. Remedies under the designs act
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17. Civil remedies
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18. Remedies for infringement
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19. Availability of remedies for infringement
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20. Injunctions
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21. Delivery up and destruction
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22. Damages for infringement
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23. Manufacturers
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24. Licensors
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25. Additional damages
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26. Aggravated damages
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27. Exemplary damages
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28. Closing
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29. Important judgments on intellectual property rights covering infringement issues 22 30. Bibliography
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INTRODUCTION TO INTELLECTUAL PROPERTY Over the past two decades, intellectual property rights have grown to a stature from where it plays a major role in the development of global economy. In the 1990s, many countries unilaterally strengthened their laws and regulations in this area, and many others were poised to do likewise. At the multilateral level, the successful conclusion of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in the World Trade
Organization enhanced the protection and enforcement of IPRs to the level of solemn international commitment. The new global IPR system comes with both benefits and costs. The domain of intellectual property is vast. Copyrights, Patents Trademarks and Designs are known to have received recognition for a long time. Newer forms of the protection are also emerging particularly stimulated by the exciting developments in scientific and technological activities. Intellectual property refers to the creations of the human mind like inventions, literary and artistic works, and symbols, names, images and designs used in commerce. Intellectual property is divided into two categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters i n their radio and television programs. Intellectual property rights protect the interests of creators by giving them property rights over their creations. The most noticeable difference between intellectual property and other forms of property, however, is that intellectual property is intangible, that is, it cannot be defined or identified by its own physical parameters. It must be expressed in some discernible way to be protectable. Generally, it encompasses four separate and distinct types of intangible property namely- patents, trademarks, copyrights, and trade secrets, which collectively are referred to as “intellectual property.” However, the scope and definition of intellectual property is constantly evolving with the inclusion of newer forms under the gambit of intellectual property. In recent times, geographical indications, protection of plant varieties, protection for semi-conductors and 3|Page
integrated circuits, and undisclosed information have been brought under the umbrella of intellectual property. Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article,
literary & artistic work, symbols etc. used in commerce. Intellectual property rights as a collective term includes the following independent IP rights which can be collectively used for protecting different aspects of an inventive work for multiple protection:
Patents
Copyrights
Trademarks
Registered (Industrial) design
Protection of IC layout design,
Geographical indications, and
Protection of undisclosed information
Intellectual property is divided into two categories: industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source: and Copyright , which includes literary and artistic works such as novels, poems, plays, films and musical works etc.
WHAT IS INTELLECTUAL PROPERTY? Intellectual property refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce. Industrial Property includes patents for inventions, trademarks, industrial designs and geographical indications. Copyright covers literary works (such as novels, poems and plays ), films, music, artistic works (e.g., drawings, paintings, photographs and sculptures) and architectural design. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and broadcasters in their radio and television programs.
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NATURE OF INTELLECTUAL PROPERTY RIGHTS IPR are largely territorial rights except copyright, which is global in nature in the sense that it is immediately available in all the members of the Berne Convention. These rights are awarded by the State and are monopoly rights implying that no one can use these rights without the consent of the right holder. It is important to know that these rights have to be renewed from time to time for keeping them in force except in case of copyright and trade secrets. IPR have fixed term except trademark and geographical indications, which can have indefinite life provided these are renewed after a stipulated time specified in the law by paying official fees. Trade secrets also have an infinite life but they don‘t have to be renewed. IPR can be assigned, gifted, sold and licensed like any other property. Unlike other moveable and immoveable properties, these rights can be simultaneously held in many countries at the same time. IPR can be held only by legal entities i.e., who have the right to sell and purchase property. These rights especially, patents, copyrights, industrial designs, IC layout design and trade secrets are associated with something new or original and therefore, what is known in public domain cannot be protected through the rights mentioned above. Improvements and modifications made over known things can be protected. It would however, be possible to utilize geographical indications for protecting some agriculture and traditional products.
WHAT ARE INTELLECTUAL PROPERTY RIGHTS? Intellectual property rights are like any other property right. They allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation. These rights are outlined in Article 27 of the Universal Declaration of Human Rights, which provides for the right to benefit from the protection of moral and material
interests resulting from authorship of scientific, literary or artistic productions. The importance of intellectual property was first recognized in the Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886) . Both treaties are administered by the World Intellectual Property Organization (WIPO).
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WHY PROMOTE AND PROTECT INTELLECTUAL PROPERTY? There are several compelling reasons. First, the progress and well-being of humanity rest on its capacity to create and invent new works in the areas of technology and culture. Second, the legal protection of new creations encourages the commitment of additional resources for further innovation. Third, the promotion and protection of intellectual property spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life. An efficient and equitable intellectual property system can help all countries to realize intellectual property‘s potential as a catalyst for economic development and social and cultural well-being. The intellectual property system helps strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.
LITERATURE REVIEW In addition, technological developments in the 20th century have transformed the majority of wealth creating work from physically – based to ―knowledge-based ‖. Technology and knowledge are now the key factors of production. With increased mobility of information and global work force, knowledge and expertise can be transported instantly around the world, and any advantage gained by one company can be eliminated by competitive improvements overnight. The only comparative advantage a company will enjoy will be the process of innovation-combining market and technology know-how with the creative talents of knowledge workers to solve a constant stream of competitive problems. — and its ability to derive value from information. The Major challenge before the organization in the coming years would be to create a culture for IPR regime, so that creative work and innovations get duly protected. More and more organizations may have to provide at their cost the services of IP management consulting firm for drafting / prosecution of intellectual property. IPR, very broadly, are rights granted to creators and owners of works that are results of human intellectual creativity. These works can be in the industrial, scientific, literary and artistic domains, which can be in the form of an invention, a manuscript, a suite of software, or a business name. The importance of Intellectual Property in India is well established at all levels – statutory, administrative and judicial. India ratified the agreement establishing the World Trade Organization (WTO). This agreement, inter-alia, contains an agreement on 6|Page
Trade Related Aspects of IPRs (TRIPS), which came into force from 1st January 1995. It
lays down minimum standards for the protection and enforcement of IPRs in member countries, which are required to promote effective and adequate protection of intellectual property rights with a view to reducing distortions of and impediments to international trade. The obligations under the TRIPS agreement relate to provision of minimum standard of protection within the member countries legal systems and practices. The agreement provides for norms and standards in respect of following ar eas of intellectual property.
Patents
Copyrights
Trademarks
Registered (industrial) design
Protection of IC layout design,
Geographical indications, and
Protection of undisclosed information
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INTRODUCTION In today's intellectual era, India has shown a considerable growth in its research and development. The presence of well-established state of the art labs of Indian as well as multinational companies in the country has clearly proved the Indian IP status in the world. The rise in Indian economy is a clear impact of Intellectual Property (IP) influence in the country. By setting up new technology, incubation centres in various parts of the country and providing financial aids to the technologist, the Research & Development (R&D)status of the country has been boosted up. India being a developing nation, has taken giant leaps in competing towards Trade Related Intellectual Property Rights (TRIPS) agreement and in compliance of US and European Intellectual Property Right (IPR) structure. The 21st century can be referred to as the century of technology, knowledge and in fact the regime of intellect. The country's ability to translate knowledge into innovation to gain wealth will determine its future. Thus, the innovation is supposed to be the key to create knowledge into wealth. Therefore, issues of generation, evaluation, protection and exploitation of IP would become critically important all over the world1. Through this article, emphasis has been given on the IPRs impact in creating a strong backbone of the country.
NATURE OF IPR IPRs are the territorial rights which have a fixed term and can be renewed after a stipulated time as specified in the law by way of making payment toward official fees. Exceptionally, trade secrets have an infinite life but they don't have to be renewed. Apart from this, trade secrets have another nature of being assigned, gifted, sold and licensed like any other tangible property. Unlike other moveable and immoveable properties, these rights can be separately held in many countries at the same time. IPR can be held only by legal entities i.e., who have the right to sell and purchase property. In the other way, any nonautonomous institution doesn't have rights to own intellectual property. These rights are protected by their respective sections and rules.
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INDIAN IPR SCENARIO PERSPECTIVE Earlier when IPR was in its preliminary stage, lot of problems arose relating to its implementation, policies, Act/ Rules, financial and governmental support. Earlier, companies and inventors were also not aware of IPR, therefore risk of infringement was at an alarming level without a healthy system, and companies were not interested to go for R&D process in India. This resulted in the death of inventions, high risk of infringement, economic loss and decline of an intellectual era in the country. Keeping in view all the above problems, India has taken strong steps in strengthening IPR in the country. For example, the first Indian Patent Law came in 1856. Further, the same was modified from time to time by Indian patent system. New patent law was made after independence in the form of the Indian Patent Act 1970. Later, it was amended in compliance with the TRIPS provision. Recently, in2005, amendments were made in IPR. While the process of bringing out amendments was going on, India became a member of the Paris Convention, Patent Cooperation Treaty, Budapest Treaty and finally signed the TRIPS agreement to comply with the International and Indian standards. Recently, India signed the "Madrid Protocol" which further enhances the applicability of Trademarks in 89 countries. Further, interest of Small and Medium Enterprises (SMEs), Indian industries, technologist, scientist and inventors are gaining in this field. More number of research oriented persons is filing their inventions on a large scale. More number of foreign companies is now establishing their in-house R&D centres in India, which is a clear sign of IPR influence in the country. Apart, from this, the country's first Compulsory License (CL) against the Bayer cancer drug "NEXAVAR " highlights the Indian IPR regime on the international window. This CL gives a ray of hope to Indian Pharma INC which is not capable of producing lifesaving drugs and now can manufacture such drugs at a very low cost. Such nature of CL boosts up the health industry of the country. Due to this, high end drugs can be manufactured and supplied to the patients at a very nominal rate which is a sign of a disease free society. According to a recent survey, it was estimated that the number of Trademark and Patent filings have increased 20 times as that of previous years.
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Keeping in view the above achievements, our IPR system is still in enact stage. The continuous efforts of Indian Government gives pace to the intellectual regime but more efforts are to be taken in overcoming challenges which restrict IPR to reach the international standards.
INDIAN PERSPECTIVE: CHALLENGES IN IPR Today, IPR plays an important role in every sector and has become an important aspect of research for Pharma and research oriented industries. The continuous efforts of the government in policy establishment, IT protection, infrastructure, IPR search portals and manpower made this Industry a step ahead. In consideration of all the achievements, our industry is still facing troublesome challenges not only at domestic level but also at international level. Firstly, in India IPR lacks its roots in remote areas, such areas are considered to be the hot bed of inventions. Many people are still unaware about IPR and their advantages in taking rights for their intellectual property. In such cases, the government should promote the awareness of IPR in such remote areas. Large number of awareness camps and educational hubs has to be organized for the skilled impart of knowledge among the inventors. Secondly, a legal issue plays an important role in IPR situation in the country. Today various trademark and patent infringement matters are gaining their significance in the legal story of the country. In such increase of IPR matter, a skilled team of law persons (Judges, advocates) and IPR professionals are required. Apart from the above issues, TRIPS flexibility is yet another object to be discussed he re. Earlier, when Indian Patent system was not in compliance with TRIPS, there was a risk of a healthy Patent protection provision in India. But today the condition has totally changed. India is now a member of TRIPS agreement and our patent system is fully compliant with the TRIPS. Even though Indian Patent Act contains all the TRIPS flexibilities, the relevant provisions require fine tuning, especially of those related to the patent protect ion, compulsory license and government use.
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PROTECTION OF INTELLECTUAL PROPERTY RIGHTS Ubi Jus Ibi Remedium, this latin phrase expedites upon the fundamental of theory of every judicial system, which means where there is a right, there is a remedy. The existence of judiciary as a watchdog for every democratic set up can hardly be argued, as it the existence of judiciary and the punishment implicating laws that deter any wrong in society. The foremost function of judiciary is to provide for legal remedies for trespasses against personal and property rights of person. The grant of any right‘s effectiveness totally depends upon how expeditiously the remedy for such right‘s infringement is availed to a person. Intellectual Property Rights is no exception to this fact, as statute in this regard provides only a modicum of direction as regards the nature of remedies and the procedure for safeguarding them, leaving a large extent of role within the province of judges. Intellectual property is inchoate property when manifested in a legally recognizable way. Property right was, till the deletion of Article 19(1) (f) of the Constitution of India, a fundamental right for citizens, but now under Article 300-A it is separately notified as a Constitutional right ensuring that no person can be deprived of his property save by the authority of law.1 The most intimidating feature of an intellectual property is that it differs from the other forms of property because of uncertainties regarding its value and manner of use. It is not something that can be kept safe in lockers or be hidden from others. Having the right of intellectual property registered is no guarantee of its safety from being stolen. The registration is nothing more, in effect, that the recognition of the right of ownership. This property, which is a product of the intellect is, therefore, very difficult to protect. Commercial piracy is a big business and there is hardly any country in the world where pirated articles are not being sold.2
1
Justice R. K. Abichandani, Role of Judiciary in the Effective Protection of Intellectual Property Right, available at http://gujarathighcourt.nic.in/Articles/roleofjudicary.htm (last viewed on 30th May 2013). 2 Justice (Dr.) A.S. Anand, Intellectual Property- Indian Experience (1997) 6 SCC J. 1
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PROTECTION OF INTELLECTUAL PROPERTY The phenomenal growth in various fields of technology, industry, commerce and trade during the last two decades is due mainly to the encouraged extensive research and development output resulting from the creative of scientists, technologists and artists all over the world. With dynamics of business set ups, advertisement techniques, business development techniques and grit of human efforts have led from making use of superfast data processing techniques assisted by advanced computer generated creative works. The continuous efforts of human to advance with advancing age in every field like science, technology, commerce, communication and what not; is resulting into intellectual property which is sole creation of human intrigue. Thus, when so much of research and intellect for over years is invested in invention of an intellectual property, it deserves to be protected. It is so highly prized by all civilized nations that it is thought worthy of protection by national laws and international conventions. 3
REMEDIES AGAINST EXPLOITATION OF INTELLECTUAL PROPERTY The intellectual property is protected by the sanctions of law and a right to secur e one‘s intellectual property is a statutory right.4 It is well known principle of law that where there is a right there is a remedy which is derived from the maxim ubi jus ibi remedium. India has four statutes protecting the infringement of intellectual property of a person, namely, 1. The Trade Marks Act, 1999, 2. The Copyright Act, 1957, 3. The Patents Act, 1970 and 4. The Designs Act 2000. Not limited to remedies available in those statutes, an aggrieved person may have recourse to the provisions in Section 479 to 489 Indian Penal Code, 1860 and Section 38 of the Specific Relief Act, 1963. Generally, it is the civil remedy which is sought in most of the cases. An aggrieved person can file a suit in competent court seeking relief of injunction, damages, accounts and delivery
3 4
Gramophone Company v. Birender Bahadur Pandey, AIR 1984 SC 667 Vikas Vashishth, Law & Practice of Intellectual Property in India, Bharat law house, New Delhi, (3rd ed.), 23.
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of infringing goods or article. The relief of injunction is the most asked for as of its very nature to prima facie stop further breach and loss to the aggrieved. The right to seek injunction is a very effective right and courts have discretionary power in matters pertaining to it, of course subject to certain conditions.
REMEDIES UNDER THE TRADEMARKS ACT When dispute arises or any breach is done in respect to, the infringement of a registered trade mark; or any right registered under trade mark; or for passing off arising out of the use by the defendant of any trade mark (registered/unregistered), shall not be instituted in any court inferior to a district court having jurisdiction to try such case.5 It is well settled, that a court shall not readily presume the existence of jurisdiction of a court which was not conferred by the statute.6 The Court has discretion to grant injunction and at the option of plaintiff court may also award damages, together without or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.7 The purpose of grant of injunction is not to penalize the defendant but to protect the interest of the plaintiff to the extent it is justified.8 In the case of passing-off it is usual, rather essential, to seek an injunction, temporary or ad interim. The plaintiff must prove, a prime facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. 9 The court under section 54 of Specific Relief Act has discretion to grant perpetual injunction.
REMEDIES UNDER COPYRIGHT ACT The Act extends protection to the work by conferring certain exclusive rights on the author. The act provides for civil remedies10 by the way of seeking injunction/damages or otherwise as may be conferred, on infringement of a right under the Act in respect of any work. This remedy is given to an ‗owner11‘ and not to a ‗prospective owner’. Injunction is an equitable
5
Trade Marks act 1999, s 134 (1). Dhoda House and Patel Field Marshal Industries v S. K. Maingi and PM Diesel Ltd. 2006 (32) PTC 1 (SC). 7 Trade Marks act 1999, s 135 8 N. R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714 9 Laxmikant V. Patel v. Chetan bhai Shah (2002) 3 SCC 65 10 Copyright Act 1957, s. 55 11 Copyright Act 1957, s. 17 6
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remedy, by way of judicial discretion, depending upon case to case. 12 If the plaintiff succeeds at the trial in establishing infringement of copyright, he will normally be entitled to a permanent injunction to restrain future infringements.13 The Act also provides for compensatory civil remedies against infringement of copyright, by awarding damages. The purpose of award of damage is restoration to plaintiff as if no damage had been done or as his position was before infringement. The court has observed that in cases of blatant infringement, an award of damage may be passed under following 14
three heads:
a. Compensatory or Actual Damages; b. Damages to Reputation; c. Punitive Damages.
REMEDIES UNDER PATENTS ACT 1970 Where any person threatens any other person by any means, with proceedings for infringement of a patent,15 any person aggrieved thereby may bring a suit against him praying for following reliefs: i. ii. iii.
A declaration that the threats are unjustifiable; An injunction against continuance of threats; and Such damages, if any.
However, a mere notification of existing of a patent does not constitute a threat of proceeding.16 Injunctions,17 at the plaintiff‘s behest may also be granted against defendant on the discretion of the court. Court may also order seizing, destroying or forfeiting such material proved to be infringing. 18
12
R. M. Subbiah v. N. Sankaran Nair, AIR 1979 Mad 56 .K. P. M. Sundhram v. M/S RP Mandir, AIR 1983 Del 461; Hawkins Cookers Ltd v. Magicook Appliances Co., 2002 (25) PTC 713 (Del); Himalaya Drug Co. v. Sumit, 2006 (32) PTC 112 (Del); Diamond Comic Pvt. Ltd. v Raja Pocket Books, 2005 (31) PTC 378 (Del). 14 Microsoft Corporation v. K. Mayuri, 2007 (35) PTC 415 15 Patents Act 1970, s. 106 16 Upendra Nath Dass and Sons v. T. C. Martin, AIR 1962 Cal 69 17 Patents Act, s. 111. 18 Patents Act, s. 108. 13
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REMEDIES UNDER THE DESIGNS ACT The Designs Act provide for two remedies, alternate to each other, 19 which are as follows:a. If any person acts in contravention of Section 22, he shall be liable to pay the registered proprietor of the design a sum not exceeding Rs. 25,000 for every contravention recoverable as a contract debt, provided that total sum recoverable in respect of any one design shall not exceed Rs. 50,000. b. The proprietor may bring a suit for recovery for damages for any such contravention, and for an injunction against a repetition thereof, and shall be entitled to recover such damages as awarded by the court on succeeding.
CIVIL REMEDIES A broad array of remedies are available for infringement of intellectual property rights, which include damages, injunctions, orders for delivery up and destruction of items which infringe. When an IP rights owner‘s rights have been infringed, various remedies are available to address the infringement to suit the type of intellectual property infringed and the extent to which the infringer has wrongfully used the rights.
REMEDIES FOR INFRINGEMENT The rights of an intellectual property owner are different in respect of each type of intellectual property right – copyright, designs, trademarks, patents and confidential information protect different types of assets. These individual areas of protection may also overlap. There are certain types of Court order which are general to all types of intellectual property. Thus if a right has been infringed or breached, the Courts will generally: 1. grant an injunction to restrain any future infringement or breach of that right by the defendant - if the defendant does continue to infringe the right in breach of an injunction then he is in contempt of Court and is liable to be sent to prison and/or fined, and if the contemnor is a company, it is liable to be fined, to have its assets taken out of its control and/or to be managed by Court appointed managers); and 19
Designs Act, s. 22(2).
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2. grant injunctions supportive of this primary injunctive relief to give it better effect to recognise and enforce the rights of the rights owner, such as injunctions requiring the infringer to deliver-up materials which infringe the intellectual property rights and/or destruction of infringing materials; and 3. award sums of money to compensate the owner of the right for any losses suffered by past infringements. The claimant usually has to decide whether he wants his compensation calculated by (1) the damage suffered by the claimant ("an inquiry as to damages" which is usually the loss of profit suffered by the claimant, and often calculated by reference to a royalty which the defendant would have paid if a licence had been granted), or (2) the profits made by the defendant in exploiting the right ("an account of profits"); and 4. award interest on the sums found due upon such enquiry or account from the date upon which the respective loss was suffered or the respective profit was made; and 5. award costs to the claimant for the expense incurred by the claimant in suing the defendant - but intellectual property litigation is no different to other litigation in this respect since the sums recovered by way of costs very rarely reflect the full expenditure by the successful litigant in proving his case.
AVAILABILITY OF REMEDIES FOR INFRINGEMENT This collection of remedies available to intellectual property rights owners is an impressive suite of potential orders to address and correct unlawful conduct flowing from infringement. Other than damages or an account of profits, these remedies are aimed to restore the IP owner‘s exclusivity of use of the intellectual pro perty rights in question. Courts have also been known to order that the defendant published newspaper and journal advertisements notifying the relevant public of the infringement and the correcting the position. The remedies are designed to prevent further distribution of infringing goods, to discover where infringing materials originate and to whom they have been sent. These remedies fall under the categories of: a. remedies for infringement; b. statutory remedies for delivery up and seizure of i nfringing goods, and c. Interim relief.
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INJUNCTIONS Injunctions may be ordered where a defendant has been found liable for infringement, to give the claimant effective relief from future infringement to restrain the defendant from committing or continuing to infringe the intellectual property of the owner. Importantly, injunctions may be obtained at the outset of legal proceedings by obtaining interim relief where unlawful acts are threatened, whether or not infringing acts have previously taken place. In some cases, a court will only grant an injunction in respect to those rights that have been infringed (say in respect to a book). In others it may be inclined to grant the injunction in respect to the entire work, without reference to the parts infringed and the parts not infringed. The effect of the latter case is that the defendant will be restricted from reproducing or using the parts of the work which do not infringe the relevant intellectual property.
Injunctions may nevertheless be refused if the defendant has given undertakings not to infringe in the future, or the claimant has conducted itself in a fashion which would disentitle itself to the relief available from the Court. An injunction will almost certainly be ordered where the evidence before the court shows pattern of conduct of the defendant suggests the infringement is likely to reoccur. Where licences as of right are available to the infringer and the licensor undertakes to take licence, the court is not likely to an injunction. Because injunctions are discretionary remedies, they may be refused by the court on the basis of by acquiescence, laches, delay on the part of the claimant or where the balance of convenience does not favour making the injunction. Even then, the court retains its jurisdiction to make an award of damages or an account of profits in favour of the claimant for the infringing acts of the defendant.
DELIVERY UP AND DESTRUCTION Delivery up is another form of ancillary relief which exists to ensure that the relief granted to the claimant for infringement is effective. English courts have an inherent jurisdiction and statutory jurisdiction to make order for the delivery of articles which infringe the intellectual property rights of the owner. 17 | P a g e
This relief enables the rights owner to obtain possession of infringing articles for the purposes of destroying of the infringing works or obliterating the infringing parts of the works. This jurisdiction of the court may also be applied for the purposes of obtaining articles or devices used to manufacture infringing articles. In cases of trade mark infringement, the defendant may be ordered take some equivalent step to delivering up infringing articles, such as erasing trade marks from goods and verifying that the same has been done under oath.
DAMAGES FOR INFRINGEMENT This is the most common remedy sought by IP rights owners whose intellectual property has been infringed. A successful claimant is entitled to damages for any harm caused which flows directly and naturally from the infringement. To be recoverable, the loss claimed must have been caused by the infringement. To put it another way, the infringement must be the effective cause of the loss suffered by the intellectual property rights owner. The claimant must prove the loss suffered at the hands of the infringer; however the court will usually assume that the acts of the infringer have caused harm. Where the loss suffered in monetary terms is not amenable to quantification by mathematical calculation, the court will do conduct its investigation to arrive at a fair figure to award by way of damages. An infringer, who examines a work and judiciously selects the parts of the work and thereby infringes only part of the work, may be found liable for infringing the entire work. There are several categories of case in respect to the approach the court is likely to take to calculate damages. These broad categories are a. manufacturers, b. licensors and c. others.
MANUFACTURERS Where the rights owner reproduces and sells articles, the claimant will be entitled to the loss of profit it would have made on the articles sold by the defendant which infringe the rights of the owner. Where the court draws the view that only some of the sales of the defendant would
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have been lost by the claimant, the court may award a notional license fee for the balance of the articles. In some cases, a claimant is able to establish that goods or services were often sold with the infringing goods, and those sales have been lost as well. In these circumstances, the court may be inclined to grant damages in relation to the loss of sales of those related goods as well. Where the defendant is in direct competition with the claimant and the loss suffered extends beyond the mere sales of the goods, such as goodwill and reputation, the court has jurisdiction to award a sum to compensate the claimant for that loss as well. Recoverable loss may also take the form of loss suffered as a result of: a. reducing the prices that the claimant is able to levy for use, and/or b. withdrawing products from sale as a result of the infringing conduct. In these cases, the reduced profits are recoverable as well as the losses suffered on the claimant‘s own stock. Damages suffered by a parent company for the infringement the rights licensed by a subsidiary are also recoverable, whether as a capital loss or income.
LICENSORS Businesses which grant licences for the use of the intellectual property rights are in a different position to those which manufacture and sell articles embodying infringed intellectual property rights. A court is likely to look to the usual licence fee charged by the owner of the intellectual property rights and treat the defendant as a notional licensee of the intellectual property rights to arrive at a sum per infringement payable by the defendant for its infringement. . In some cases, a court may take the view that the notional licence fee does not properly reflect the damage suffered by the IP rights owner, and inflate the licence fee to a sum which it thinks is more appropriate. Furthermore, in cases where the extent of the infringement is not ascertainable (such as distribution of copies of films as a result of peer-to-peer file sharing), the court recognises that the claimant may not be in a position to produce evidence of all the sales lost as a result of the infringement. In such cases, the court may be inclined to attribute the loss of sales of the film to the infringer, provided that evidence of the forecasts of the sales of the film and comparable films establish the loss of sales. 19 | P a g e
OTHER CASES The facts of the case in question may show that the intellectual property rights owner does not manufacture goods or license the intellectual property rights as part of its business. The underlying principles of awards of damages apply to cases both within and outside the established categories of cases discussed above. Thus the damages suffered by a claimant which does not license its rights or manufacture articles is in the same position other claimants. The court should be provided with relevant evidence in order to properly assess the damages suffered by the particular claimant based on the idiosyncrasies of the cases at hand. The calculation of an award of damages may be a notional license fee or the cost of obtaining the same goods or services elsewhere. It may be the case that the claimant has been forced to engage enquiry agents and forensic experts to detect an infringement and the extent of the rights of the infringement. Furthermore, the claimant may have had to incur legal costs making applications to the Court to obtain the identity of infringers, which is frequently the case in respect to infringement of copyright works published on the internet. These costs are also usually recoverable in the form of damages.
ADDITIONAL DAMAGES Damages awards are compensatory and not designed to allow the claimant to profit from the infringement of intellectual property rights. There are cases where the defendant obtains some additional benefit by the infringement of relevant intell ectual property rights. In cases of copyright infringement, the court has j urisdiction to make awards of damages over and above a compensatory basis where the infringement has been committed in circumstances importing flagrant disregard for the rights of the claimant and the defendant has acquired some benefit as a result of the infringement. For instance, a successful company which trades using entirely using unlicensed, pirated software is not only liable for the infringement of the software by way of an ordinary damages award, but also acquires a benefit of running a business without having paid the usual licence fee for the software. The court may hear submissions on deceit or scandalous
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conduct which include deliberate and calculated infringement of the copyright of the claimant in its assessment of damages suffered.
AGGRAVATED DAMAGES Awards of aggravated damages are reserved for defendants infringing intellectual property rights in a high-handed, malicious, insulting or oppressive manner. Awards are assessed separately to compensatory damages. Such awards are rare, and not available in for all types of infringement.
EXEMPLARY DAMAGES Exemplary damages are awarded in addition to compensatory damages in circumstances where the infringement has been committed with a conscious and contumelious disregard for the rights of the owner for the purposes of obtaining advantages which surpass the usual compensatory award of damages. Like aggravated damages, exemplary damages do not form part of the ordinary compensatory damages award, but form a separate award. The jurisdiction of the court to award damages under this head is limited to cases where a precedent exists. Furthermore, the court will have regard for the means of the defendant during the process of assessing an appropriate award.
CLOSING Relief for infringement of intellectual property rights are long established remedies, which are adapted to suit the circumstances of each case. Courts will be cautious not allow a defendant to profit from unlawful conduct, but at the same time, avoid making orders which would allow a successful claimant from recovering the same loss twice. The remedies available in any particular case will depend on the circumstances of the case.
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IMPORTANT JUDGMENTS ON INTELLECTUAL PROPERTY RIGHTS COVERING INFRINGEMENT ISSUES
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Bajaj Auto L imi ted Vs. TVS M otor Company Limi ted
IPR Law- Dispute over Patent for the Use of Twin-Spark Plug Engine Technology – Speedy disposal of Intellectual property rights cases- The Supreme Court of India by this landmark judgment has directed all the courts in India for speedy trial and disposal of intellectual property related cases in the courts in India. In two-year-old dispute involving two companies, which have been locked in a patent dispute over the use of a twin-spark plug engine technology, the Supreme Court observed that suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction. The Supreme Court directed that hearing in the intellectual property matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit. The Supreme Court further directed to all the courts and tribunals in the country to punctually and faithfully carry out the aforesaid orders.
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Bayer Corporati on Vs. Uni on of I ndia
IPR Law – Bayer Corporation, instead of filing a suit for infringement, filed an inventive writ petition in the Delhi High Court desiring that since the applications of Cipla ―SORANIB‖ allegedly infringed its patent, its (Cipla‘s) marketing approval application under the Drugs Act should not even be processed or entertained. It is for the first time that an attempt is made to link drug approval to patent infringement in India. However, the Delhi High Court, denying the injunction, imposed a substantial cost of Rs. 6.75 Lakh to deter any such future attempts. Bayer relied on the argument that a combined reading of Section 2 of the Drugs and Cosmetic Act along with Section 48 of the (Indian) Patent Act, 1970 establishes a Patent Linkage Mechanism under which no market approval for a drug can be granted if there a patent
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JT 2009 (12) SC 103 162(2009) DLT 371
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subsisting over that drug. It also claimed that CIPLA‘s ―SORANIB‖ is a ―Spurious Drug‖ as defined under the Drugs Act, for which market approval cannot be granted. The Hon‘ble High Court of Delhi held that there is no Drug - Patent Linkage mechanism in India as both the Acts have different objectives and the authority to determine patent standards, is within the exclusive domain of the Controller of Patents. Moreover, the patent linkage will have undesirable effect on the India‘s Policy of Public Health. It further held that the market approval of a drug does not amount to infringement of patent. Therefore, the patent infringement cannot be presumed, it has to be established in a court of law. Such adjudication is beyond the jurisdiction of Drug Authorities. On the issue of ―SORANIB‖ being a spurious drug, the court held that CIPLA‘s ―SORANIB‖ cannot come under the category of spurious goods as there is no element of passing off like deception or imitation present in CIPLA‘s drug‖.
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Cli ni que L aborator ies L L C and Anr . Vs. Gufi c Li mited and Anr
IPR Law- Suit for infringement by a registered trade mark owner against a registered trade mark holder: Conditions-The present dispute was between the registered trade mark of the plaintiff as well as defendant. It is interesting to note that before filing the suit the plaintiff i.e. Clinique had filed a cancellation petition before the Registrar of Trade Marks, India, against the defendant for cancellation of the defendant‘s trade mark CLINIQ. As per the Section 124(1) (ii), of the Indian Trade Marks Act, 1999 a suit is liable to be stayed till the cancellation petition is finally decided by the competent authority.
However, under Section 124(5) of the Act, the court has the power to pass interlocutory order including orders granting interim injunction, keeping of account, appointment of receiver or attachment of any property. In this case, the court held that a suit for infringement of registered trade mark is maintainable against another registered proprietor of identical or similar trade mark. It was further held that in such suit, while staying the suit proceedings pending decision on rectification/cancellation petition, the court can pass interim injunction restraining the use of
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MANU/DE/0797/2009
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the registered trade mark by the defendant, subject to the condition that the court is prima facie convinced of invalidity of registration of the defendant‘s trade mark. In this case the court granted an interim injunction in favour of the plaintiff till the disposal of the cancellation petition by the competent authority.
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Th e Coca-Cola Company Vs. Bi sl er i I nternati onal Pvt. L td
IPR Law- Infringement: Export: Threats: Jurisdiction – The Delhi High Court held that if the threat of infringement exists, then this court would certainly have jurisdiction to entertain the suit. It was also held that the exporting of goods from a country is to be considered as sale within the country from where the goods are exported and the same amounts to infringement of trade mark. In the present matter, the defendant, by a master agreement, had sold and assigned the trade mark MAAZA including formulation rights, know-how, intellectual property rights, goodwill etc for India only with respect to a mango fruit drink known as MAAZA. In 2008, the defendant filed an application for registration of the trade mark MAAZA in Turkey started exporting fruit drink under the trade mark MAAZA. The defendant sent a legal notice repudiating the agreement between the plaintiff and the defendant, leading to the present case. The plaintiff, the Coca Cola Company also claimed permanent injunction and damages for infringement of trade mark and passing off. It was held by the court that the intention to use the trade mark besides direct or indirect use of the trade mark was sufficient to give jurisdiction to the court to decide on the issue. The court finally granted an interim injunction against the defendant (Bisleri) from using the trade mark MAAZA in India as well as for export market, which was held to be infringement of trade mark
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Novar tis v. Uni on of I ndia
IPR Law- Rejection of a patent for a Drug which was not ‗inventive‘ or had an superior ‗efficacy‘- Novartis filled an application to patent one of its drugs called ‗Gleevec‘ by covering it under the word invention mentioned in Section 3 of the Patents Act, 1970. The Supreme Court rejected their application after a 7 year long battle by giving the following reasons: Firstly there was no invention of a new drug, as a mere discovery of an existing drug would not amount to invention. Secondly Supreme Court upheld the view that under Indian
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Manu/DE/2698/2009 [CIVIL APPEAL Nos. 2706-2716 OF 2013 (ARISING OUT OF SLP(C) Nos. 20539-20549 OF 2009]
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Patent Act for grant of pharmaceutical patents apart from proving the traditional tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing drugs which also Novartis‘s drug did not qualify. This became a landmark judgment because the court looked beyond the technicalities and into the fact that the attempt of such companies to ‗evergreen‘ their patents and making them inaccessible at nominal rates.
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BIBLOGRAPHY
BOOKS REFERRED
Kailasam and Vedaraman Law of Trademarks and Patent Geographical-indications
Act-Intellectual Property Rights (Pocket Size Edn.)
Intellectual Property Rights in India by VK Ahuja
Venkateswaran on Law of Trademark law and Passing off by Kapil Wadhwa, Dr. Abhishek Manu Singhvi
Law Relating to Intellectual Property Rights by Dr. M.K Bhandari
JOURNALS REFERRED
India Law Journal
Indian Society of International Law
Journal of Law and Economics
WEBSITES VISITED
www.wikipedia.org
www.cll.com
www.tm-india.com
http://www.academia.edu/7795675/TRADEMARK_LAW_IN_INDIA_A_Critical_and_Comparative_Study
www.thomsonreuters.com
www.indlii.org
https://www.gov.uk/.../intellectual-property-crime-and-infringement
www.legalservicesindia.com/.../trademark-infringement-and-remedies-
www.drukker.co.uk/.../l/infringement-intellectual-property-rights/
www.ssrana.in/Intellectual%20Property/IP...And.../Civil-Remedies.aspx
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