This article is written by Meera Patel, from Maharaja Sayajirao University, School of Law, Vadodara. This article includes a detailed discussion on the role of the judiciary in the development of the intellectual property rights of India.
An interesting fact about Thomas Alva Edison who is widely known as the father of the electric bulb is that he wasn’t the first one to invent the electric bulb but he was the first one to claim a patent for the bulb. He had a total of 1,093 patents for his ideas. That is the power of a patent, one of the three categories of the Intellectual Property Rights given to the Indian citizens by the Constitution of India.
IPR is used as a legal defense mechanism for intellectual activities in fields like arts, science, literature, industry, trade and business. These rights provide a blanket of protection to those who seek to control the ownership, generation for selling or buying purpose of their ideas, by-products of the ideas or services, etc. The government grants the patentee several rights which are time-bound so that the patentee has the full monopoly of the use of the product, idea, service, etc.
Characteristics of IPR
Before understanding the role of the judiciary in the development of IPR, it is essential to understand what IPR is.
- The Intellectual Property Rights are impalpable human ideas and creations which are either converted into a physical form or not but these ideas and creations get definite rights for the property. These rights give an exclusive monopoly over the use of their creation.
- These ideas and creations include inventions, literary uniqueness, art pieces, pictures, designs, etc.
- Almost all kinds of businesses possess an IPR to secure their assets as property rights can be shielded under the law.
- The IP laws differ in different jurisdictions because the importance of acquiring property rights has its procedural uniqueness in the territory of interest.
Legal aspect of IPR
- IPR are supposed to be carried out by the Office of the Controller General of Patents, Designs, and TradeMark. This is the lower office of the Government of India which oversees the Indian laws regarding the patents, trademarks, and design.
- Intellectual property rights are enforced by the civil court or via criminal prosecution. Just like the Competition Act of 2002 where the sellers seek individual patronage of the buyers so that they can secure a profitable monopoly over the market, the IP rights could be enforced via civil and criminal proceedings.
- The odds faced by prosecutions when they go for civil litigation is that they cannot recover large damages irrespective of them being liquidated or unliquidated. However, criminal proceedings cannot be applied over patent or design infringement therefore civil suits are the next best option.
- Usually, as a compensation, damages are compensated in cases of copyright issues or the trademark infringement but this does not happen with patent infringement cases.
Stated below are a few types of IPR laws
- The copyrights give a security blanket to the creation of the entitled person’s written or published work like a book, article, research paper, artwork, etc.
- The protection of copyrights is obtainable in India under the Copyright Act, 1957. It has the authority to protect music, art work, dramatics, sound recordings, etc.
- India is a signatory of the Berne Convention. The Berne Convention is an international agreement for copyright issues of art and literary work.
- The patent rights protect the ideas or inventions that have been created for commercial use. For example a new product, services, etc.
- The patents rights are protected under the General Agreements and Tariffs also known as the GATT Agreement and the Patent Act, 1970. This Patent Act was later on pushed to be amended and it is widely known as the Patent Act, 1999.
- According to the Patent Act of 1970, the 2003 Patent Rules and the 2016 Patent Amendment Rules of India, patents are valid for a 20 years time limit and an annual renewal fee is required. The patents in India are registered under the ‘first come, first serve basis.’
- The design rights are created to protect designs such as drawings, blueprints of products, etc.
- The Design Act 2000 and the Design Rules of 2001 dictates the terms of the design laws. The validity of these laws in 10 years and can get a 5-year extension.
- These rights were created to protect things like logos, words, symbols, etc that give the entitled person’s creating a sense of uniqueness from their competition.
- All the laws concerning the IPR for trademarks are available under the Trade and Merchandise Act, 1958.
- The 1999 Trade Marks Act and the Trade Marks Rules of 2002 and 2017 are the laws that govern the rules of trademarks in India.
Changes in IPR laws through judicial pronouncements
- In a democratic country like ours, the role of the judiciary does not only arbitrate disputes but is also used to maintain and deliver justice in society by establishing the laws. Therefore, along with arbitrations, the judiciary also has its hands on various aspects of our democracy, one of which demonstrates the nature of the judiciary in the patent protection rights.
- The judiciary had its role that is displayed in the various surveys taken to register patent laws in India during the post-WTO era. The judiciary changes its laws according to the new challenges it meets over time.
- The judiciary does not just change or amend new laws as per the requirements of the nation, but these laws are changed on the grounds of trying to shape the laws of our country which can complement various international conventions and agreements so that India could achieve a greater good. This not only gives India a part in the international happenings but also allows our domestic economy to open up to the world.
- Such time to time changes usually require our legislature to provide the necessary conformity to the international treaties and agreements. It is mandatory for a member of the WTO (World Trade Organisation), to provide their citizens with a minimum amount of IP rights which is mentioned in the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPs).
- The credit for the past few changes made in the IPR laws goes to the TRIPs Agreement as the Copyright Act, 1957 of India was amended and a new amendment was added which stated the new inclusion of ‘computer programs’ under the category of literary work.
- Similarly, an example from a much recent case displays how India has been complying with WTO’s TRIPs Agreement as we have observed that the ‘Trade and Merchandise Marks Act, 1958’ has been alternated by the ‘Trade Marks Act, 1999’. The new version of the Act provides an immunity blanket to the collective marks, certification marks, or some well-known marks.
- To know more about IPR please visit
Some major changes done by the judiciary are
- Copyright Act, 1957
- Trade Marks Act, 1999
- Geographical Indications of Goods Act, 1999
- Designs Act, 2000
Listed below are a few landmark cases of the Intellectual Property Rights laws
Bajaj Auto Ltd vs. TVS Motor Company Ltd 2008
This patent case revolves around the fact that a dispute had sparked up between two countries in regards to a twin spark plug engine technology. When this case came under the limelight, a bigger problem which was the long-awaited pendent IPR cases were adding themselves to the list by the minute without clearing the upper cases first.
The Supreme Court of India also established a rule where the high courts needed to set hearing dates for such cases within 4 months from the date of registration.
The coca-cola company vs. Bisleri International Pvt.Ltd
In this case, the Hon’ble High Court of Delhi stated that the court will take the jurisdiction if a threat of infringement is made. The second thing mentioned along with the above point was that sale of products overseas would amount to sales within the country from where the exportation of the goods takes place.
In this particular case, Bisleri. Ltd had sold off Mazza’s IPR, goodwill, formulation rights, etc for India via a master agreement. Along with this, they applied for the registration for trademarking Mazza so that it could be sold in Turkey under the same name. The court decided that the intention of using the trademarks whether it is direct or indirect can give the high court the authority or the power dynamics of the case for the current issue.
Yahoo! Inc vs. Akash Arora, 1999
In this case, the plaintiff possessed the trademark of Yahoo!, and also on the domain name yahoo.com whereas, on the other hand, the defendant used the domain name ‘YahooIndia’ to provide similar services.
The hon’ble High Court of Delhi passed a judgment that no person should carry out a belief that the person is running a business of another man or has any connection with the business of any other man. With this, the court also mentioned that the plaintiff whose product had earned quite a reputation should not be misused to mislead or trick the audience to believe that that plaintiff’s business was the defendant’s business.
Comparison with other countries
Few comparative approaches to the IPR laws of different countries
- In the recent Intellectual Property Index, conducted by the US Chambers of Commerce’s Global Innovation Policy Centre (CGIP), the USA has topped the IP Index of 2020. After the USA, the UK, Germany, and Japan are the next runner ups.
- China has been concluded as a country with the highest number of IP theft against companies in the USA and apparently from the agencies affiliated to the government too, thus dragging China down to the 27th position on the index list.
- Even though China’s basic IP rights and patent reforms are in good condition, the history of infringement is still piling up day after day. This is one of the major challenges faced by China at the moment.
- Venezuela hits the bottom of the list.
- Pakistan, India, and Algeria have a very poor rank on the list as well because India, in particular, is dupping at a very low position seeing the size of her economy, the potential of growth, and its generous contribution in the tech sector on an international level.
- Although India is in the 43rd position, India has made quite good progress as it just experienced incremental gains and sheltered new improvised IP policies. There is a lot of work needed but it’s an eventual process.
- Various developed countries have comparatively poor IPR laws. Examples of such developed countries with a poor IP policy systems are Canada, Australia, etc. the CGIP suggests that Canada’s judiciary has very frequently ruled out the biopharmaceutical patents where these patents are said to be invalid due to the lack of utilization even though ironically, Canada is known for its cheap pharmaceutical products.
Top and last 5 countries ranging on the IP Index of 2020
Top 5 countries of the IPR INDEX 2020
- The USA
- The UK
Last 5 countries of the IPR INDEX 2020
Role of international organisations
The international organization which was established to particularly handle the international IPR laws is known as the World Intellectual Property Organisation (WIPO). WIPO signed the WIPO Convention in Stockholm in 1967 and eventually was bought to force in 1970. It was amended in 1979.
Other than that, the World Trade Organisation (WTO) also catered as the bridge between various countries as an international organisation by overseeing the agreement regarding the trade related aspects of the IPR agreement. This agreement is known as the Agreement on Trade-Related Aspects of the IPR (TRIPS) Agreement. The Agreement on Trade-Related Aspects of Intellectual Property Rights is an international legal agreement between all the member nations of the World Trade Organization.
WIPO can be considered as a government-affiliated organization that was converted into a specialized agency of the UN system of organizations. This organization was established during the Paris Convention which was organized for the Protection of the Industrial Property and Berne Convention of 1966 which was held for the sole purpose of Protection of Artistic Work. Due to these conventions, the International Bureau was created and WIPO was established.
2 main objectives of WIPO
- Promotion of Intellectual Property worldwide.
- To make sure a smooth flow of administrative cooperation between the IP unisons that were established by these treaties that were signed under the oversight of WIPO.
Impact of international law
The international laws have started to become more prominent and relevant while facing the challenges faced by the Intellectual Property and the wide-spreading globalization of commercial deals.
The effect of international laws has started to impact the attention of academic and/ or judicial positions because it is a confusing situation for the judiciary so the planning can be done accordingly for the adjudication of cross border disputes on Intellectual Property related cases.
Overseeing the need for definite laws that support the judiciaries around the globe, the need for international interference seemed like the best option.
Important remedies for IPR infringement
In the case of trademark infringement, the civil court procedures always tend to be on a lookout for injunctive orders which would be filed against the infringement, the person who damaged the goods, demands restitution for all the untouched products or demands the completion of measures as a form of compensation.
On the other hand, when this case goes under the criminal case files the alleged person shall be granted a punishment as a part of the Criminal Procedure Code. Usually, the registered trademark and copyright infringement cases are considered valid to be presented under Criminal Procedure Code.
Few court remedies for IPR infringement
Under the Section 36 of the Trade Marks Act, 1999, injunctive relief is granted to the cases against Trademark Infringement:
- The court can demand the infringer to stop the infringement.
- The person who acts in a way that his actions can turn out to become an infringement is warned to take the necessary measures.
- The court can also rule in favor of the prosecution by demanding the defendant to destroy the product that is resulting in the formation of an infringement.
- The court can demand the alleged infringer to take any necessary measures to stop infringement.
The court can demand damages from the person whose products counterfeits with infringement of the prosecution’s trademark.
The person who has been infringed needs to show probable evidence to the court to demand damages as stated under Section 38 of the Trade Marks Act, 1999.
Listed below are the provisions by which the court can demand damages from the infringer:
- As the trademark owners use their own issued trademark sign but in cases where the infringer counterfeits that issued trademark, the damage can be liquified in terms of the number of times that trademark has been counterfeit by the amount of profit the infringer has made per piece.
- Another remedy can be calculated by taking the sum of the profits earned by the infringer can be considered as the damages suffered by the trademark owner, therefore the court can demand the infringer to pay the damages of the trademark owner.
- The trademark owner has the right to demand an amount that matches the license fees that were paid to by the trademark rights.
Restoration of bias enrichment
The restitution for unjust enrichment can be recovered under this remedy. Unjust enrichment can be defined as a benefit one obtains from another person which is not obtained as a gift or is legal.
The punishment for trademark infringement sums up to 5 years of jail time or a fine could be demanded.
Need for a strong judicial backing
- The need of the hour revolves around the strong requirement for judicial backing to create effective IPR laws in India as they play a very crucial role in the formation of the industrial, trade and financial policies to form a firm establishment of scientific and technological advanced systems in our country.
- The strengthened IP laws not only make sure that constructive progress is taking place in the country. To keep this growth in place, the need for strong IP laws is equally important.
- The need for these laws must be backed up by the strong enforcement system as without the backup from the enforcement, the progress of our country would come to a screeching halt.
There is an enormous need for a broad and sensitive judiciary that is strong enough to handle the weight of the property rights issues while keeping the nation’s needs in mind which will also help the effective establishment of a powerful enforcement system. India’s rank on the IP Index is depreciating and the need for the upliftment of our country from that position is more than ever. The role of our judiciary in regards to the global IP regime is complicated as it has counterbalanced rights of individual IP owners or a corporation so it can benefit the society as a whole.
- https://www.cbic.gov.in/htdocs-cbec/customs/cs-act/formatted-htmls/ipr-enforcement r ules
- http://docs.manupatra.in/newsline/articles/Upload/41C26FED-7AFE-40EA-8736-4E6 C5 16917AE.pdf
- http://www.theglobalipcenter.com/wp-content/uploads/2017/0 2/GIPC_IP_Index_20 17 _Report.pdf
- https://www.squirepattonboggs.com/-/media/files/insights/publications/2013/11/civil-and-criminal-remedies-for-intellectual-pro__/files/civilandcriminalremedies /f ileat t a c h ment/civilandcriminalremedies.pdf
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