This country-specific Q&A provides an overview to intellectual property law in India.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist in this jurisdiction to protect?
(a) Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how);
- Patents: In India, inventions can only be protected by Patents, which are governed by the Indian Patent Act, 1970.
- Rights in confidential information and trade secrets (know-how): There is no separate legislation for the protection of confidential information and trade secrets in India, and the same is protected and governed under the contract law.
- Supplementary protection certificates are not available in India
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional specialty guarantees);
- Trade marks
- Cause of action in passing off
- Right to prevent unfair competition (under competition laws)
- Collective marks
- Certification marks
- Geographical indications
- Domain Name
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how).
- Semiconductors and integrated circuits
- Plant varieties
- Database rights
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
The total term of a patent in India is 20 years from the date of filing or from the date of international filing, in case of PCT application.
The term of 20 years is non-extendable, and a renewal fee is required to be paid for each year until expiration of the term of the patent in order to maintain the patent.
Rights in confidential information: Rights in confidential information, as well as know-how, are covered under contractual law, and will be subject to the Limitation Act.
Trade marks; Collective Marks and Certification Marks:
The initial term of a Trade mark, Collective Mark or Certification Mark registration is 10 years from date of application, renewable every 10 years. The renewal request can be filed within 1 year prior to the expiration date.
Hallmarks are governed by the Bureau of Indian Standards. Renewal of recognition of hallmarking centres and jewellers is based on performance every three years.
Domain names can be registered or renewed for a period of 1-10 years such that they do not cross the maximum allowed period from the registration or renewal date.
The registration of a geographical indication is granted for a period of ten years, and is renewable every 10 years.
The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the year following the death of the author. In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organisations, the 60-year period is counted from the date of publication. A copyright cannot be renewed further.
A design registration is valid for a maximum period of fifteen years.
Initially the design registration confirms a right for ten years from the date of registration, which can be extended for another five years on payment of a one-time renewal fee at the end of the ten year term.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
The inventor or its assignee are the first owner(s) of the patent rights.
Unless, there is a formal employment agreement to this effect, all rights arising out of an invention vests with the employee inventor and an employer has to execute an assignment with the employee to acquire rights to an invention.
Trade marks; Collective Marks and Certification Marks:
Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark. As per the Trade Marks law, the Applicant/registered proprietor of a Trade mark; Collective Mark or Certification Mark shall be considered the owner of the Trade mark; Collective Mark or Certification Mark.
The legal owner of a domain name is the person and/or organization listed as the domain’s registrant or owner contact.
The author of a work is the owner of copyright therein.
In case the author is employed by newspaper, magazine etc. under a contract of service, the proprietor will be the first owner in the absence of an agreement to the contrary in the case of a literary, dramatic or artistic work.
Where a photograph is taken, or a painting or portrait drawn for a valuable consideration at the instance of person, such person is the first owner.
Where any address or speech is delivered in public, the person delivering is the first owner and where it is delivered on behalf of another person such other person is the first owner.
In case of Government work, Government shall be the first owner and in case of work made or published by or under any public undertaking, it shall be the first owner.
The Applicant/registered proprietor of a Design shall be considered the owner of the Design.
Which of the intellectual property rights described in questions 1-3 are registered?
In order to seek protection for patents and designs, the proprietor must compulsorily apply for registration as it is not possible to enforce these rights unless the same are granted by the Patent Office .
However, the registration for trademarks, copyright, and geographical indications is not mandatory in order to claim ownership. However, it may be necessary in order to claim remedies in the event of infringement.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
As per Indian patent law, the following persons are entitled to apply for patent:
- Any person claiming to be the true and first inventor of the invention;
- Any person claiming to be the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application
- The legal representative of any deceased person who immediately before his death was entitled to make such an application
The Applicant may file a provisional application followed by a complete specification, filed within a period of one year from the date of filing of the provisional application; or the Applicant may file the application with the complete specification before the Indian Patent Office along with other relevant documents and prescribed fee.
In case of Convention or National phase applications, only complete specification is filed along with other relevant documents and prescribed fee.
An application is automatically published after expiry of 18 months from the filing date.
Examination on an application only commences once a formal request for the same is filed. The Applicant is given a time period of 48 months from the priority date to request for examination which is a non-extendible deadline.
Once the request for examination is filed, the application is examined by the Patent Office and thereafter an examination report is issued. The Applicant is required to meet all the objections raised in the report within 6 months from the date of issuance of the report (extendable upto three months). The Patent Office then examines the response and issues a hearing notice if any objections remain outstanding or else grant the patent in favour of the Applicant.
If a hearing is issued, an applicant is required to appear before the Controller on the said date or he can seek an adjournment in the matter 3 days before the date of hearing. Maximum 2 adjournment can be sought in a matter and one adjournment extends the hearing date by one month.
At the hearing various objections raised in the hearing notice are addressed and a time period of 15 days is given to file a reply to hearing notice.
Once a reply is filed to the hearing notice, the application proceeds for grant or is refused as per the discretion of the Controller.
Any person claiming to be the proprietor of the trade mark can apply for registration, on the basis of prior use, or on a proposed to be used basis.
For getting a mark registered with the Trade Marks Registry in India, the first step is to search the Registry database for any identical or similar mark. However, it is not mandatory procedure for filing of the trademark application.
If it appears that no identical or similar mark is present in the Register, one can apply for registration of the trade mark
Within 6-9 months of filing an application for registration of trade mark, an examination report is issued by the Trade Marks Registry pointing out the objections raised to the registration of trade mark.
A reply to these objections need to filed within 1 month from the receipt of the examination report.
After considering the application if the Registrar is satisfied that the trade mark can be registered, he publishes the trade mark in the Journal. Alternatively, a hearing is fixed in the matter and if the mark is allowed at the hearing, it is published in the Journal. Such hearings (oral proceedings) are very common in the IPO practice.
The trade mark proceeds for registration if no opposition is filed within 4 months from the date when journal was made available to public.
An application for registration can be filed by the author, or rights owner or assignee or legal heir. An author as defined by the Indian Copyright Act means:
- in relation to a literary or dramatic work, the author of the work;
- in relation to a musical work, the composer;
- in relation to an artistic work other that a photograph, the artist;
- in relation to a photograph, the person taking the photograph;
- in relation to a cinematograph or sound sound recording, the producer; and,
- in relation to any literary, dramatic, musical or artistic work which is computer generated, the person who causes the work to be created.
- The application with complete details and copies of the work is to be filed.
- The application is examined and objections, if any, are raised, or any extra documents required are requested.
- A response has to be filed within 30 days; if the response is not filed within the stipulated time, the application is deemed to be abandoned.
- Then the application is re-examined by the Registry; where it is either accepted or rejected.
- Thereafter, on acceptance, a certificate is issued by the copyright office after the objections, if any, are removed to the satisfaction of the Copyright Registry.
Any person claiming to be the proprietor of any new or original design may apply for registration. A proprietor may be from India or from a Convention country.
A proprietor may be:
- An author of design
- A person who has acquired the design
- A person for whom the design has been developed by the author
- A person on whom the design has devolved
An Application with different views of an article such as FRONT, BACK, TOP, BOTTOM, LEFT, RIGHT and PERSPECTIVE is filed at the Designs registry along with an appropriate class.
India is not a signatory to the Locarno Agreement though its classification system is modelled on the Locarno Classification system.
Multiple embodiments of a design or multiple designs in a single application are not allowed. Separate applications for each distinct embodiment or design should be filed simultaneously or, in any event, before expiry of the priority deadline. Figures can be submitted in the form of line drawings, computer graphics or photographs, and should contain no descriptive matter, reference numerals/letters or trademarks. Dotted or discrete lines or any shading in the linedrawings is usually not allowed.
The examination process is substantive. Within 1-2 months of filing an application for registration of design, an examination report is issued by the Designs Registry pointing out the objections raised to the registration of Design.
A design application must be placed in order for acceptance within six months of the filing date. Thus, if the applicant is unable to reply to the examination report within this period, it can file a formal request for an extension (of up to three months) at the Designs Office, along with the prescribed official fees.
Registration and publication:
Once the objections are complied with the design will be registered and a copy of the design will be published in the Patent Office Journal.
Geographical indications (GI):
An association of persons or producers or any organization or authority that represent the interest of producers of the concerned goods, and are expected to file an affidavit indicating how the applicant claims to represent their interest.
The application for registration of GI should contain a statement as to how the GI serves to designate the goods as originating from the concerned territory, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality. It should also include the class of goods to which the geographical indication shall apply, the geographical map of the territory in which the goods originate or are being manufactured, the particulars regarding the appearance of the geographical indication (as to whether it is comprised of words or figurative elements or both) and any statement containing particulars of the producers of the concerned goods.
After the application has been filed, the examiner reviews the application and the accompanying statement of case. Thereafter, the Registrar issues an examination report. Depending on the merits of the application and of any evidence of use, the Registrar may accept or reject the application either absolutely or subject to certain modifications. The Applicant is required to respond to the rejection or objections within two months of the receipt of the examination report failing which the application will be dismissed. After the acceptance of the application by the Registrar, either absolutely or subject to certain conditions and with or without a hearing being conducted, the application will be published.
Any person may, within three months of the publication of the application to register a geographical indication, file an opposition.
The Registrar of Geographical Indications may register the geographical indication after the application has been accepted and not opposed or if opposed the opposition has been decided in favor of the Applicant. Thereafter the Registrar will issue the Registration Certificate in the prescribed format.
How long does the registration procedure usually take?
The time for the registration process may be different for different intellectual property rights. For example, for patents the entire registration process may range from 3-4 years from the date of filing the request for examination, while for trademarks, the registration process may take up to 2-3 years.
Do third parties have the right to take part in or comment on the registration process?
For various forms of intellectual property, there are statutory provisions for opposing the registration of the intellectual property.
Trade marks and patents once published are open to opposition procedures by third parties.
- Patents: For patents, there are two kinds of oppositions. Pre-grant opposition can be filed by any person after the publication but before the grant of the application, and post-grant opposition, which can be filed within twelve months from the date of publication of the grant of the opposition.
- Trademarks: A trademark application is open to opposition by third parties for four months after the mark is published in the Trade Marks Journal.
- Geographical indication: A Geographical indication is open to opposition proceedings by third parties for three months after the same is published in the Geographical Indications Journal.
- Designs: There are no explicit provisions for a third party to comment on the registration of a design. Once the design is registered and published, any person interested may file a cancellation petition against it.
What (if any) steps can the applicant take if registration is refused?
- Trademarks: If the application is refused, the Applicant has the option of filing an appeal with the Intellectual Property Appellate Board (IPAB) within 3 months of the communication of the order or file a review petition with the Controller to review his/her own decision.
- Patents: The applicant has the option of filing appeal against the refusal order of the Controller with the Intellectual Property Appellate Board (IPAB) within 3 months of the communication of the order. The Applicant also has the option of filing a review petition before the Patent Office to review the Controller’s decision. Such a petition can be filed within a month from the date of the order.
- Geographical indication: Applicant can appeal to the Intellectual Property Appellate Board (IPAB) within 3 months of the communication of the order.
- Designs: If the design registration is refused by the Controller, then the applicant has the option of filing an appeal with the High Court.
What are the current application and renewal fees for each of these intellectual property rights?
Trademarks: For electronic applications, the current fee is INR 4500 (USD 70 approx.) per mark per class for individuals, start-ups and small enterprises; and INR 9000 for all others. For renewals, the fee is INR 9000 (USD 140 approx.) per mark per class.
Geographical indication: INR 5000 (USD 78 approx.) for application of registration and INR 3000 for renewal.
Copyright: For registration of copyright in literary, dramatic, musical, or artistic works, INR 500 (USD 8 approx.) per work. For a literary or artistic work which is used or capable of being used in relation to any goods, INR 2000 (USD 31 approx.) per work. For application for registration of copyright in a cinematograph film, INR 5000 (USD 78 approx.) per work and for an application for registration of copyright in a Sound Recording is INR 2000 (USD 31 approx.) per work.
Official Fee (in INR) Description Natural Person and/or Startup Small Entity Alone or with Natural Person and/or Startup Others Alone or with Other than Natural Person and/or Startup and/or Small Entity Application for Patent 1,600 4,000 8,000 For each sheet of specification in addition to 30 excluding sequence listing 160 400 800 For each claim in addition to 10 320 800 1,600 For each page of sequence listing 160 subject to a maximum of 24,000 400 subject to a maximum of 60,000 800 subject to a maximum of 1,20,000 For each additional priority 1,600 4,000 8,000 Renewal fee for each year from 3rd to 6th year 800 2,000 4,000 Renewal fee for each year from 7th to 10th year 2,400 6,000 12,000 Renewal fee for each year from 11th to 15th year 4,800 12,000 24,000 Renewal fee for each year from 16th to 20th year 8,000 20,000 40,000
Description Natural Person (in INR) Small Entity (in INR) Others except Small entity (in INR) Application for design 1,000 2,000 4,000 Renewal 2,000 4,000 8,000
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
The non-payment of renewal fee within the prescribed time or within the extended period as prescribed for payment of renewal fee can lead to cessation of a patent.
However, the patentee, or his legal representative can make an application for Restoration of the patent along with a statement setting out the circumstances which led to the failure to pay the renewal fee, within eighteen months from the date on which the patent has ceased to have effect. The restoration of such design is discretionary to the Controller.
After the expiry of the registration, a grace period of 6 months (from the expiration date) is also provided to the Applicant to apply for renewal of the said registration. Further, The Trade Marks Law provides for restoration of removed Trade Mark after six months and within one year from the expiration of the last registration. The discretion is vested with the Registrar as he may allow restoration either generally or subject to such conditions or limitation as he thinks fit to impose.
A Geographical indication can be removed from the register on non-payment of renewal fee within the stipulated time. Where a geographical indication has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the geographical indication on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the geographical and renew registration of the geographical indication either generally or subject to such condition or limitation as he thinks fit to impose, for a period of ten years from indication to the register the expiration of the last registration.
Design registration can be renewed for a period of five years from the original term of ten years. The non-payment of renewal fee may lead to cessation of the design.
However, an application for restoration can be filed by the applicant within one year from the date on which the design ceased to have effect along with a statement setting out the circumstances which led to the failure to pay the renewal fee. The restoration of such design is discretionary to the Controller.
Once a domain expires, it enters "Renewal Grace Period (RGP)" which varies from 30 days to 45 days based on domain extension and registrar. During the grace period the domain owner can renew their domain names at any time at their regular price without penalty (if not auctioned). However, one can not transfer the domain name to other registrar, unless it is renewed first. At the end of Renewal Grace Period, domain name is deleted by registrar and it enters the "Redemption Period" of 30 days. During the redemption period, the domain owner can redeem their domain name by paying redemption fee in addition to the cost of one year domain renewal. Redemption fee varies for each domain extension. 60 days after expiration (assuming RGP of 30 days), the redemption period ends. The domain name will be placed in a "Pending Delete" status at the registry for upto 5 days. During this time, it is not possible to redeem, recover or renew the domain name. The only way to get the domain back is to wait until, domain name is dropped by the registry and made available for registration. After the 5 day pending delete period, the domain name will be deleted from registry. At this point, the domain will be available to general public for registration on first come first serve basis.
What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?
The rights of a patentee can be assigned through an assignment deed to the assignee. The deed is to be in writing and signed, duly notarised, and registered as per the national laws. Further, it is essential to get the assignment recorded with the Indian Patent Office.
Confidential information/know-how: would depend on the contractual relationship between the parties.
Trade mark/collective mark/certification mark:
Assignment of trademark can be made by making a request on the requisite Form, along with the deed of assignment and an affidavit each from the Assignor and the Assignee.
An assignment application has to contain full particulars of the instrument, if any, under which the applicant claims to be entitled to the trade mark and such instrument or a duly certified copy thereof has to be produced at the Trade Marks Registry for inspection at the time of application. The Registrar may require and retain an attested copy of any instrument produced for inspection in proof of title.
An unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned.
- The Agreement should be in writing and must be signed by the Assignor as well as the Assignee;
- The rights assigned along with duration and territorial extent must be clearly established;
- The amount of royalty or any other consideration payable must be clearly specified;
- The Assignee must exercise the rights assigned to him within one year of the date of assignment, otherwise such assignment shall be deemed to have lapsed unless there is some provision to the contrary in the agreement;
- If the period of assignment is not mentioned, then it shall be for 5 years;
- Similarly, if the territorial extent is not mentioned, it shall be presumed to extend within India.
The rights vested by design registration can be assigned through assignment, agreement, transmission, with terms and conditions in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and conditions of the contract/agreement etc.
The deed is to be in writing and signed, duly notarised, and registered as per the national laws and is to be filed with the Controller within a period of one year from the date of execution of the instrument.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Patents: The Indian Patent Act requires that the assignment of the patent rights must be recorded in the prescribed format. To avoid any dispute regarding the ownership of the application, it is mandatory to register assignments in the Patent Office. Non-filing of assignment may lead to difficulties in enforcement of the patent right.
Trademarks: The Trade Marks Act mandates that assignment is to be recorded in the Register. To avoid any dispute regarding the ownership of the trade mark, it is mandatory to register assignments in the Trade Marks Office. Non-filing of assignment may lead to difficulties in enforcement of the trade mark right.
Copyright: in cases of registered copyright, assignee is to make an application for registration of changes in the particulars of copyright entered in the Register of Copyrights.
Designs: The Indian Design Act mandates that assignment is to be recorded in the Register if there is change in ownership., Such a request is to be filed with the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarised copy of the instrument to be registered is required to be enclosed with the application. To avoid any dispute regarding the ownership of the application, it is mandatory to register assignments in the Patent Office. Non-filing of assignment may lead to difficulties in enforcement of the IP right.
What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?
Patents: A patentee may license his rights through a license agreement, exclusive or otherwise in favour of any person. The agreement must be in writing and duly executed as per national laws.
Trademark: Regarding proceeding with the license recordal in India, please note the following documentary and procedural requirements:
- A Joint Application is to be filed with the Registrar of Trade Marks in writing within 6 months from the date of the agreement along with the agreement or duly authenticated copy (notarized) of it with respect to the permitted use of the trade mark.
- An Affidavit made by the registered proprietor or on his behalf giving particulars of the license arrangement.
- A Power of Attorney signed in favor of the agent. The same need not be notarized or legalized.
An unregistered mark cannot be licensed.
Copyright: The owner of the Copyright in any existing or future work may grant any interest in the work by way of license. A copyright license may be exclusive or nonexclusive. As regards the future works the license shall take effect only when the works comes into existence. For a license to be valid it must be in writing and signed by either the owner or his duly authorized agent. And where a person to whom a license relating to copyright in any future work dies before the work comes into existence, his legal representative shall be entitled to the benefit of the license. A license may be voluntary or compulsory.
Designs: The registered proprietor of a design may license his rights through a license agreement.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Trade mark: While it is not mandatory to register a license of trade mark, it is advisable to do so.
Patent: An change in the title or interest in a patent must be recorded in the prescribed format before the Controller of Patents
Design: The procedure for recordal of the licence agreement is the same as that for the assignment agreement.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Patent: The Indian patent law provides similar rights to the exclusive license holder such as those of the patentee and such an exclusive licensee has the right to initiate an infringement suit against an infringer if an act of infringement is committed after the date of the license.
Trade mark: in terms of the exclusive and non-exclusive licensees, there is no difference in terms of enforcement
Copyright: No difference in terms of the enforcement rights granted.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Yes, there are criminal sanction for infringement in India in connection with trade mark, copyright and patent in India for acts amounting to falsification/infringement. Further, an infringer may also be liable for search and seizure of the infringing goods.
Further, the offences under the Trade Marks Act, 1999 and the Copyright Act, 1957, by virtue of the First Schedule table II of the Code of Criminal Procedure, 1973, are cognizable offense and the registration of the trade mark is not compulsory for initiation of criminal action.
An infringer hence may be liable for criminal actions under Sections 482(Punishment for using false property mark), Section 483 (Punishment for counterfeiting a property mark used by another), Section 486 (Punishment for selling goods marked with a counterfeit property mark) and Section 488 (Punishment for making use of any such false mark) of the Indian Penal Code, amongst others.
The Criminal remedies are invoked by filing a complaint before the Court of competent jurisdiction.
What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
There are broadly 3 types of Enforcements/Remedies for IP in India:
Upon IP infringement civil remedies can be enforced by filing a suit for infringement and/or passing off (in case of unregistered trademarks) in the competent court. Following reliefs of civil nature can be granted:
- Injunction: Injunction is prohibition of an action by a party to a law suit. If the plaintiff establishes that the prima facie case is in his favor, injunction is granted.
- Anton Pillar orders/ Ex-parte orders: Anton Pillar orders, permits the plaintiff’s counsel to enter the infringer’s premises and seize evidence of infringement. This order is passed when there is a serious danger of removal/destruction of the infringing articles. Such an order is granted on an ex-parte application. Infringing goods are delivered to the plaintiff or destroyed if the orders of delivery-up and destruction are passed.
- Orders to deliver up/surrender or seize and destroy.
- An award of costs and damages: An award of cost and damages are two mutually exclusive remedies. Damages are granted to compensate the losses incurred by the plaintiff on account of defendant’s infringing act, whereas actual amounts of profits are handed over to the plaintiff as the second measure.
- Tracing orders: Under tracing remedies, an infringer can be ordered to provide details like from where he got his supplies of infringing goods. Failure to provide such information is taken as contempt of court.
- Rendition of Accounts or Account of Profit.
Criminal remedies in India are provided for Trademarks, Copyrights and Patent as elucidated in point 16 above.
- Opposition against a similar trademark or against registration of a Geographical Indication;
- Pre-Grant Opposition;
- Rectification of a registered trademark/ design;
- Patent Invalidation; and
- Recordal with Customs to prevent the import of infringing goods.
What is the length and cost of such procedures?
The estimate time frame of such procedures vary from 3-5 years.
The official cost would be in the region of USD 250-200 (approximately) depending on the quantum of damages sought and court approached.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
The court in question will be first determined on the basis of the location of the alleged infringement, or, alternatively, the location of the Defendant’s place of business. In a case involving trade mark and copyright infringement, a suit may be filed depending on the Plaintiff’s place of business or residence as well.
Further, on the basis of the sum of the relief claimed, the district court or the relevant High Court will have jurisdiction of the matter. These rules are determined by the various states in India and therefore there is no uniformity in terms of pecuniary jurisdiction between the various states.
A suit needs to be filed along with Interlocutory Application for temporary injunction etc., on the basis of the procedure as laid out by the court in question. Once the case has been heard on preliminary issues, the matter is admitted and then heard in detail on merits. Both parties are given time to submit both oral and written submissions, and admission and denial of documents and examination of witnesses is undertaken.
The time to formal judgment is typically between two and five years.
Relief sought (such as injunction, delivery up of infringing materials, rendition of accounts etc.) are granted along with damages. However, the quantum of damages would depend on the merits of the case.
Yes, provision of appeal is available to any party who is aggrieved by any order or judgement of the court.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
In India, district court and High Court benches are not divided on the basis of expertise. Parties may produce their own subject matter experts. Further, courts may call for subject matter witnesses on their own motion.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Anton Pillar orders (allowing for search and seizure by plaintiff at the defendant’s premises), are widely used in intellectual property infringement matters. Evidence seized can also be sealed and returned on good faith to the defendant to be produced when the court so demands. Witnesses can also be summoned.
Yes, disclosure and discovery are available.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Information and evidence is produced before the court and taken on record in the form of documents, exhibits, and witness testimony. Admission and denial of documents is an important part of the process. Cross examination of witness is a necessary part of the trial stage and frequently practiced.
What customs procedures are available to stop the import and/or export of infringing goods?
An application for recordal of a valid intellectual property right can be submitted electronically and a single application covers all ports in India. However, in case the client has any information which may assist authorities about any specific ports, it is advisable to provide them such information.
Documents to be submitted online:
- A scanned copy of the registration certificate or proof of title/ ownership of the intellectual property right.
- The serial number and details of the demand draft in favour of the Commissioner of Customs at the opted location.
- A copy of Power of Attorney in favour of counsel / advocate / agent who is filing the Application, if applicable.
- A statement of exclusivity outlining the scope of the IP right sought to be recorded.
- Digital images of genuine goods (for trademarks, product patents and designs).
- Digital images of infringing goods (if applicable/ available).
- A statement on the differentiating features of genuine and infringing goods (not mandatory but advisable for trademarks, patents and designs).
- The IEC code of the right holder and/or other authorized importers (not mandatory but advisable).
- A Statement of Grounds for Suspension of Release of suspect infringing goods.
Hard copies of the complete set of documents uploaded online have to be submitted at the Customs Office of the opted location along with a demand draft of INR 2000/- in favour of the Commissioner of Customs of the opted location an Indemnity Bond and The General Bond or Centralised Bond.
The indemnity bond protects the Customs authorities against all liabilities and expenses they may incur as a result of having detained the goods. In other words, the person importing the goods will not be able to claim damages from the Customs authorities on account of the clearance of the goods having been suspended. Any such liability will be borne by the rights holder.
At the time of registration, the right holder may opt to submit a General Bond in the nature of an undertaking that s/he will submit specific consignment-wise bond backed by a security at the time of interdiction of infringing goods.
The right holder may file a Centralised Bond (which will be a running bond) for a value that is sufficient in their judgment, to correspond to the value of allegedly infringing goods, all over India. The particulars of the Centralised Bond will be uploaded online and applicable to all the ports in India with an online facility of debit and credit. This security amount would then be used against future interdictions of goods that infringe the Applicant’s IP. The right holder would have the ability to “top up” the Centralised Bond at any time without the worry of needing to produce a Consignment- specific Bond in a short time period when infringing goods are interdicted.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
There are no mandatory non-court enforcement or dispute resolution mechanisms mandatory in respect of intellectual property disputes, unless the contractual relationship between the parties mandates any specific form of non-court dispute mechanism.
What options are available to settle intellectual property disputes in your jurisdiction?
Mediation and arbitration are the methods that may be used for settling intellectual property disputes in India. Moreover, out of court negotiations and settlement are also common in India which included co-existence agreement etc.
What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?
Patent: In case of infringement of product patent, it is essential for the plaintiff to establish that the product used by the defendant is identical or similar to the product patented by the plaintiff. However, in case of process patent, the onus of proof to establish that the process used by her is to obtain a product identical to the product of the patented process. In view of the same, any form of documentary evidence may be produced before the court to establish that there is infringement or non-infringement. Both the parties may also provide expert evidence in the form of affidavits.
Trademark: infringement requires that the impugned mark be identical or similar to the senior mark, and typically used in relation to the same goods and services. Infringement actions can only be taken in relation to registered Trade marks. Further, plaintiff may be required to prove goodwill and reputation, deception, and damage or likelihood of damage to the plaintiff.
Copyright: any unauthorised publication of the copyrighted work will constitute infringement.
Geographical indication: No infringement proceedings
Confidential information and know-how: will depend on the contractual relationship between the parties.
Designs: For design infringement, it must be established that there has been a piracy of design, and in that context, any form of documentary evidence, or infringing articles may be produced before the court as evidence.
What defences to infringement are available?
Trademark: honest concurrent use, acquiescence, no confusion due to difference in goods and services/counter of sale/class of purchasers/nature of product/pricing
Copyright: fair dealing, such as for educational purposes, judicial proceedings, and legislative proceedings. Further, for a lawful possessor of a computer programme, the making of copies of the programme in certain circumstances does not constitute infringement.
Patents: As per the Indian Patents Act, the defendant can challenge the validity of the patent on grounds as provided in the Act. Further, in any suit for infringement of a patent by the making, using, or importation of any machine, apparatus or other article, or by the using of any process or by the importation, use, or distribution of any medicine or drug, it shall be a ground for defence that such making, using, importation, or distribution is in accordance with any one or more of the conditions specified in Section 47
Designs: All grounds available to a person seeking cancellation may be adopted as a defence in infringement proceedings.
Who can challenge each of the intellectual property rights described in questions 1-3?
Patents: Any person interested can challenge a patented invention by filing a post grant opposition. Any person interested or the Central Government or the alleged infringer (defendant) in an infringement suit can also file a revocation petition to challenge the validity of a patent. A patent application can be opposed by any person before its grant.
Designs: Any person interested may file a petition for cancellation for the registered design before the Indian Patent Office.
Copyright: There is no provision to challenge the registration of copyright before the grant. A person can however file an infringement suit or action for passing off in case there is a violation of his copyright by the registration or use of any such copyright.
Trade mark: Any person can oppose a trademark application. Further, any aggrieved person may make an application in the prescribed manner to the Intellectual Property Board (IPAB) or to the Registrar to cancel or vary the registration of a trade mark on the specific ground.
Geographical indications: Any person may, on application made to the Registrar in such manner and on payment of such fee as may be prescribed, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration of the GI. Any aggrieved person may make an application to the Appellate Board praying for cancelling or varying the registration of a Geographical Indication or authorised user on specified grounds.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
Patent: Any person can file a pre-grant opposition to the grant of a patent after the publication of the application and before the grant of the patent. A post grant opposition can be filed by any person interested anytime before the expiry of one year from the date of publication of the grant of the patent. A revocation can be filed at any time after the grant of the patent.
Designs: A cancellation petition can be filed at any time after the registration of the designs
Geographical indications: Within three months from the date of advertisement or readvertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar allows. In case a Geographical indication is registered then a cancellation action can be filed against the same.
Trademarks: An opposition can be filed within 4 months of publication of a trademark application in the journal. In case a mark is registered then a cancellation action can be filed against the same.
Further, a civil or criminal action can be taken at any time (before or after registration) under the writ jurisdiction of the High Court, subject to the rules of writ jurisprudence.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Patents: For oppositions, both pre grant and also post grant, the Indian Patent Office has jurisdiction. For a revocation petition, before the district court or the High Court in case of counterclaim in an infringement suit.
Trade marks: An Opposition can be filed in front of the Trademarks Registry on the grounds that the trademark applied for is:
- Devoid of distinctive character
- Descriptive in nature
- Are customary in the current language and or in the established practices of trade
- Likely to deceive public or cause confusion
- Contains matters that are likely to hurt religious feelings of any class or section of the citizens of India
- Prohibited under the Emblem and names (Prevention of Improper Use) Act, 1950
- Exclusively of the shape of the goods
- Identical with/similar to an earlier trademark
- Malafide/bad faith
- Prevented by virtue of the law of passing off
- Contrary to any law for the time being in force
- Prevented by way of Copyright Act, 1957
A Cancellation/Rectification action can be filed in front of the Trademarks Registry and/or the Intellectual Property Appellate Board for similar grounds as mentioned above as well as on the grounds that:
- Up to a date three months before the application for rectification, a continuous period of more than five years has already elapsed during which the trade mark was entered into the Register and during which there has been no bona fide use thereof in relation to those goods by the proprietor for the time being.
- Registration of the trade mark has been obtained by the Registered Proprietor with no bona fide intention of using it as a trade mark in relation to goods in respect of which the impugned mark is registered and that there has been no bona fide use of the trade mark in relation to the abovementioned goods upto a date three months prior to the date of the Application.
A Civil Suit can be filed in any court in India of appropriate jurisdiction on the grounds:
Designs: Applications can be made before the Indian Patent Office.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?
Trademarks: Trade marks can be registered on a conditional basis, such as with the inclusion of a disclaimer.
Copyright: the exceptions to copyright, enumerated above, serve to limit the operation of copyright.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?
In case of infringement of patents, the following interim and final remedies are available in India:
- Temporary or interim injunction
- Damages and account of profits
- Reasonable royalty
- Permanent injunctions
- Ex parte injunctions
- Other remedies include seizure of infringing goods etc
A registered proprietor can institute a suit for infringement in a district court or a high court, depending on the pecuniary jurisdiction, for temporary or permanent injunction and/or recovery of damages against any person engaged in the piracy of design.
The remedy of passing off is also available under the laws of designs. However, the remedy of passing off cannot be combined with the remedy of infringement.
Copyright and trademarks:
In case of copyright infringement, the following civil and criminal remedies are available:
Interlocutory injunctions, pecuniary remedies in the form of damages and account of profits, Anton Pillar orders, Mareva injunctions.
Criminal Remedies for Copyright:
Any person who knowingly infringes or abets the infringement of copyright in any work commits criminal offence under S. 63 of the Copyright Act. The minimum punishment for infringement of copyright is imprisonment for six months with the minimum fine of INR 50,000 (USD 780 approx), In the case of a second and subsequent conviction the minimum punishment is imprisonment for one year and fine of INR 1 lac (USD 1580 approx.).
Criminal remedies for trademarks: the Trade Marks Act provides sanctions for falsifying and falsely applying trade marks, which is punishable with imprisonment for a term between six months and three years, and file between INR 50,000 (USD 780 approx.), and INR 3 lacs (USD 4670 approx.).
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The entire cost of enforcement proceedings will include the official costs, as well as the professional fees for representation. While costs are often granted by the adjudicating court, these are symbolic and minimal. The punitive damages in intellectual property matters are usually not commensurate with the actual damages suffered by the Plaintiffs. Courts may require the deposit of monies with them, as security, however, this practice is typically used for money decrees, and not for costs as are granted in successful intellectual property actions.
In India, the realm of intellectual property law is developing quickly. Laws are TRIPS compliant, and evolving fairly swiftly. The balance the rights of creators and consumers is an important concern, which needs to be constantly kept in mind.
The smooth and consistent functioning of the Intellectual Property Offices is a vital step in the right direction. Further steps to take include the mandatory recording of security interests in any intellectual property, as well as a more cohesive online system.