Indian has robust judicial and administrative system for enforcement of Intellectual Property Rights(IPRs). Indian IPR legislation provides for both civil and criminal remedies for the enforcement of IPRs.
A suit for IPRs infringement shall not be instituted in any court inferior to a District Court having jurisdiction to try the suit.
In appropriate cases based on the pecuniary value of the suit, where a High Court has original jurisdiction to try the suit, the suit shall be instituted in the High Court.
When an action for infringement has been instituted in a District Court and the defendants make a counter claim for revocation/cancellation of the patent/design, the suit is transferred to the High Court.
The relief’s which may be awarded in an action of infringement of IPRs are –
Interlocutory/Temporary/Ad-interim Injunction generally mean prohibiting an action by a party to a lawsuit until the disposal of the suit. It is discretionary relief and granted only if the plaintiff is able to establish that:
Interim Injunctions are of two types: Ex-Parte and Inter-Partes
Ex-Parte Injunctions: Without issuing notice to the opposite party, the court passes an order injuncting the opposite to do or not do certain acts.
Inter-Partes Injunction: Notices are issued to the opposite party and order is passed after hearing both the parties
Further, following ex-parte orders can also be passed in IPR disputes cases:
Anton Pillar orders can be made by the court in a civil action to allow an applicant to enter the respondent’s premises to inspect, search and seize in order to preserve evidence and prevent the destruction of incriminating evidence.
Anton Pillar orders particularly effective in cases of alleged trademark, copyright, design or patent infringement.
Conditions for making Anton Pillar Order: Three Essential Preconditions
Before passing an Anton Pillar order, some safeguards are also to be observed like asking the Plaintiff to give an undertaking in damages in case the Plaintiff is wrong and the defendant suffers damage as a result of the execution of the order.
The Purpose of Anton Pillar order is the preservation of evidence.
Anton Pillar orders are often used together with Mareva injunctions, which are used to restrain defendants from removing assets from the jurisdiction of the court.
Mareva injunction is to protect the interests of the plaintiff during the pendency of the suit. By issuing Mareva injunction, the court may restrain the defendant from disposing of or dealing with his assets in a manner which may adversely affect the plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff. .
John Doe orders are the orders issued by the court to search and seize against unidentifiable defendants. This order provides unrestricted powers in the hands of the plaintiffs, aided by court-appointed local commissioners, to raid any premises where infringement activities may be carried out. John Doe orders avoids the delay and difficulty in seeking relief against unidentifiable offenders.
The legislature has given statutory recognition to Anton Pillar orders and Mareva injunctions under Section 135 of the Trademarks Act 1999.
Further, in patent infringement suits such orders may be issued under Order 26 Rule 9 read with Order 39 and Rule 7 and Section 151 of Civil Procedure Code.
A local Commissioner is appointed to search, seize, make inventory of infringing goods and collect the sample of infringing product.
Permanent / Perpetual Injunction is a final order of a court that a person or entity refrain from certain activities permanently or take certain actions in perpetuity.
Damages or accounts of profits are two mutually exclusive remedies granted to the Plaintiff. Damages are granted to the plaintiff to compensate for the losses suffered by the Plaintiff on account of the defendant acts. Accounts of profits is an equitable remedy and requires the defendant to hand over to the plaintiff the actual amounts of profits made by him due to the infringing activities.
Under this relief the infringing goods are delivered to the plaintiff or destroyed.
If suit of infringement is decided by a district court, appeal from the decision of the district court lies to the High Court.
Further, from the decision of a single bench of High Court in an infringement suit, an appeal may be filed to division bench of the High Court (if a particular High Court has provision for the division bench). From the decision of High Court, an appeal lies to the Supreme Court.
In India, courts have consistently granted interim injunctions and Anton Piller orders for search and seizure in order to stop an infringer from continuing unlawful activities.
Indian IPRs statutes provides for criminal penalty in the form of fine or imprisonment for infringement of Trademark, Copyright, Geographical Indication, Plant Variety and Semiconductor Integrated Circuits Layout Design.
A criminal action may be initiated against the infringers by filing a complaint with police and registration of First Information Report (FIR). If police fails to register a criminal case against infringer, a criminal Complaint may be filed before a competent magistrate under Section 156(3) of Criminal Procedure Code (CrPC) with application for issuance of search and seizure warrants directing the police to raid of the premises of the accused for seizure of the infringing material and arrest of the infringers.
Both civil and criminal remedies, wherever applicable, can be availed simultaneously.
India has notified the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 under India Customs Act, 1962.
The rules empowers the Customs Officers to enforce IPR over the imported products.
As per Rule 2(b) of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, “intellectual property” means a copyright as defined in the Copyright Act, 1957, trade mark as defined in the Trade Marks Act, 1999, design as defined in the Designs Act, 2000 and geographical indications as defined in the Geographical Indications of Goods (Registration and Protection) Act, 1999.
Recently, the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, have been amended to exclude Patent Rights from the scrutiny of Customs border measures.
IP owners can record their rights with Customs authorities, which will then monitor imports for any goods that may infringe right holders IPRs.
After registration of the notice, the import of infringing goods into India shall be deemed as prohibited.
As a result of recording of Intellectual Property Rights of the Right holder, the Customs Authority suspends the clearance of goods which they find or suspect to be infringing the right holder’s Intellectual Property Rights.
Custom measures does not provide unrestricted rights to the right holder. There are several safeguards built in the implementation of custom measures that includes providing Indemnity Bond by the right holder to the Custom Authority against all liabilities and expenses on account of suspension of the release of allegedly infringing goods as well as the release of the seized goods upon an application of the importer of the goods.
For any specific query related to Intellectual Property Enforcement in India, please contact us at ip@avntltech.com