This article is written by Mohd. Shadab, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from Lawsikho.com.

Introduction

Intellectual property is a bundle of different types of intangible work arising out of the creative human intellect and thus creating an intangible right in such works and to ensure progress in science, arts, literature and other works of creativity needs to be protected and for that different statutes have been formulated such as Patents Act,1970; Copyright Act,1957; Trademark Act,1999; and many more specifically dealing with each of intellectual property such as design, geographical indication, plant varieties and many more. Every statute defines specifically what sort of intellectual property is protected under a particular act and also the procedure and timeline to register such properties so that the right vests with the rightful owner of the property though some statues provide protection from infringement without registration of intellectual property like copyright act.

Protection of IP rights from infringement in recent times has got the attention of all legislative, administrative and judicial bodies as intellectual property in present time is very much important for the fast market growth as all industries whether it is related to technology, media or any other sector creating and implementing novel ideas has become the need of the hour due to vast competition in every sector. To protect IP rights from infringement every owner has to rely on either litigation or alternative dispute resolution mechanisms.

Strategizing Litigation

Litigation concerning IP rights in India is very diverse in the sense that all the relevant statutes have different provisions to decide upon the jurisdiction of courts. Under trademark law, the owner can sue in court having territorial jurisdiction where the owner is but when it comes to protection against passing off the owner has to approach the court where the trademark is used. Further, under patents and design law the owner can choose to file a case in a court having jurisdiction where the defendant resides or where the infringing goods are produced or sold. Whereas, under copyright act, the owner can sue for infringement in a court of his jurisdiction notwithstanding where the infringement has taken place.^[i]

Litigation concerning intellectual property rights is sort of a forum shopping where the litigant has to determine what sort of remedy to see and from where it would be most favourable to initiate litigation, the reason being so many possibilities that one can avail and since there is money involved with all sort of intellectual properties opting for the most favorable forum to file cases becomes very important.

When it comes to remedies available for infringement of intellectual property both criminal as well as civil remedies are available for trademark and copyright infringement whereas for a patent only civil remedies can be invoked and thus requires the litigation to be planned much more strategically. To determine what actions constitute an infringement under Copyright Act section 51 is to be understood similarly section 29 of the Trademark Act specifies actions that constitute infringement.

While invoking civil remedy the main and foremost intention of the litigant is to acquire injunction orders against the infringers and in many cases it includes ex-parte injunction order under patent law and trademark law which in copyright law includes Anton Piller and John Doe/Ashok Kumar orders. Injunction orders are important to mitigate the risk of injustice to the litigant.^[ii]

In order to strategies litigation, the first step is to determine the rightful owner of the intellectual property concerning that the person who has got patent registered becomes the rightful owner of that particular invention also under trademark law the exclusive right as per section 27 of the trademark act to sue is with the person who has got the mark registered. On the contrary, ownership in copyright is not judged by registration but as per section 17 of copyright act the author of the work is the owner of work and in case of commissioned work the person who appointed the author and the work needs to be published as only an idea or theme is not protected.^[iii] Further documents play a vital role in establishing ownership like proof of registration or affidavit by litigant affirming his ownership of intellectual property or the publication of work or contract for service.

Invoking criminal remedies for IP rights is allowed only under the Trademark Act and Copyright Act. Between section 101 to 121 of the trademark act is where the penalties for use of trademark are prescribed along with procedural requirements.^[iv] Further various courses of action are prescribed in IPC for the unregistered trademarks.

Encroachment of copyright is termed as a criminal offence under section 63 of the copyright act and from section 63 to section 70 it prescribes the punishments and procedure as criminal remedies under copyright law^[v].

Whether the offence is cognizable or not and to determine the jurisdiction of criminal courts understanding of the first schedule of Cr.P.C. becomes imperative which categorizes offences other than those already made punishable under IPC into three categories which are:

Category	Punishment	Cognizable	Bailable	Trail by
I	Punishable with death, or imprisonment for life, or imprisonment for more than 7 years.	Yes	No	Court of Session
II	Punishable with imprisonment for 3 years and upwards but not more than 7 years.	Yes	No	Judicial Magistrate first class
III	Punishable with imprisonment for not more than 3 years.	No	Yes	Any magistrate

Litigation is a very time consuming and hectic process to safeguard one’s right and by way of granting a preliminary injunction court tries to protect the interest of the plaintiff to the extent it seems justifiable at the initial stage of the lawsuit. With time courts have shown keenness and great concern for effective protection of intellectual property rights^[vi] and have granted an injunction in preliminary relief relying on the following factors:

• Prima facie case

The concept of prima facie case is not to be confused with prima facie title which at the trial stage has to be established through evidence. Prima facie case is when a substantial and bona fide question is raised which needs further investigation and a decision on merits.^[vii] And the test is to see whether there is a serious question to be tried.^[viii]

To establish prima facie case in a suit for infringement of trademark or of passing off Delhi High Court in Tata Sons Limited v Gina Kilindo^[ix] made it obligatory on the plaintiff to show (i) that plaintiff is using the mark from a very long time and the defendant has entered the market recently^[x], (ii) that the suit is filed at the earliest, (iii) that plaintiff goods have acquired distinctiveness in the minds of the general public, (iv) that nature of the activity and the goods associated with the mark and the market sphere of both the parties is same or similar, (v) that the defendant with use of mark likely to deceive or create confusion, (vi) that the customer of the plaintiff are capable of being confused, misled or deceived.^[xi]

• Balance of convenience

The balance of convenience would eventually follow once the prima facie case is established. It is an exercise of judicial discretion to determine the mischief or injury likely to be caused in a case when the injunction is granted compared to the scenario in which the injunction is not granted and when a court considers that during the pendency of suit status quo shall be maintained then the injunction is granted.^[xii] In the instance where the defendant has not been able to justify the use of the plaintiff’s trademark court has found a balance of convenience in favour of the plaintiff.^[xiii]

Further, Delhi High Court in F. Hoffmann-la Roche Ltd. v Cipla Limited^[xiv] laid down factors which are to be considered while determining the issue of balance of convenience are:

1. The disadvantages and incapacity of each party to be compensated in event of it succeeds in trial;
2. Nature and use of the product;
3. Time the action has been taken; and
4. In case the balance is equal, the court then will consider the strength of each party based on undisputed evidence to decide the issue.

• Irreparable injury

An irreparable injury does not mean that there is no possibility of repairing the injury but must be a material one and cannot be compensated through damages.^[xv] Thus, the most crucial question to determine while addressing the issue of irreparable injury is whether a refusal to grant the injunction would cause such irreparable injury to the plaintiff that cannot be compensated in mandatory terms.^[xvi]

Strategizing Alternative Disputes Resolution

In recent time to capitalise the market shareowners of intellectual property rights are opting for out of courts settlement to resolve disputes arising from any sort of infringement of intellectual property be it patent infringement or trademark infringement or copyright infringement and since no one is bound to seek protection through litigation only many are opting for alternative disputes resolution as they are fast, cost-effective and also promises to safeguard the privacy.

Media and entertainment industries have seen lots of out of court settlements even after initiating litigation at first place and the foremost reason being the speedy resolution of disputes. Fearing costly suits, shutting down of projects, or for that matter, even a stay order on the release of the film many producers opt for out of court settlement and in the process comply with the copyright laws by buying actual rights from the owner or coming to an agreement for payment of royalty.

With measures other than litigation starting to take the center stage many foreign producers have started to raise their voices against copyright infringement by the Indian industry as happened in the case of “Banda ye Bindas hai ” where Century Fox initially filed Rs. 70 million case against B.R. Films but later settled out of court so that the movie can be released on time. Such a mechanism to resolve disputes gives added assurance of protection of rights along with the following advantages:

• Privacy- Since hearing is not done in open court and also transcripts are not made part of the public record, privacy and confidentiality in the procedure becomes a major advantage.
• Cost-effective- The certainty about cost and time in alternative dispute resolution brings in an added advantage to the procedure.
• Flexibility in procedure- Parties decide on the procedure by which they want to settle the disputes like arbitration, mediation, or negotiation.
• Mutual relationship remains intact as the final decision is based on the mutual agreement of both the parties.

Conclusion

From passing off to copying artistic work any infringement of intellectual property rights brings in loss and also impacts negatively on the goodwill of the rightful owner of the intellectual property and to protect those rights one has to depend on statues available and forums available. With different nature of infringement different strategies are to opt for if parties believe that dispute must be resolved quickly then they must go for alternate dispute mechanisms and if parties think that no mutual agreement can be reached then litigation is the best way to reach out to a fair conclusion.

References

^[i] S. Majumdar & Co., IPR Litigation (April 15, 2020,  7:00 PM) https://www.majumdarip.com/faq/ipr-litigation/

^[ii] Gujarat Pottling Company Ltd. vs. Coca Cola Company, 1996 PTC 89 (SC).

^[iii] R.G. Anand vs. Deluxe Films, AIR 1978 SC 1613.

^[iv] V.K. Ahuja, Law relating to Intellectual Property Rights (3rd ed. 2019)

^[v] Ibid.

^[vi] Vijay Pal Dalmia & Pavit Singh Katoch, Enforcement Of Intellectual Property Laws In India, (May 1, 2020, 3:00 PM) https://www.mondaq.com/india/trademark/406950/enforcement-of-intellectual-property-laws-in-india

^[vii] Dalpat Kumar vs. Prahlad Singh, (1992) 1 SCC 719.

^[viii] Cyanamid Co. vs. Ethicom Limied, (1975) AC 396 (HL).

^[ix] Tata Sons Limited vs. Gina Kilindo, 2014 (57) PTC 415 (Del).

^[x] KRBL Ltd. vs. Lal Mahal Ltd., 2015 (62) PTC 82 (Del).

^[xi] Stiefel Laboratories Inc. vs. Ajanta Pharma Ltd., 2014 (59) PTC 24 (Del).

^[xii] Lahari Recording Company Limited vs. Music master Audio Video Manufacturing Co. Ltd., 2008 (37) PTC 121 (Mad).

^[xiii] Mind Gym Ltd. vs. Mindgym Kids Library Pvt. Ltd., 2014 (58) PTC 270 (Del).

^[xiv] F. Hoffmann-la Roche Ltd vs. Cipla Limited, 2008 (37) PTC 71 (Del).

^[xv] Supra 12.

^[xvi] Supra 14.

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