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JAMIA MILLIA ISLAMIA

REMEDIES FOR IPR INFRINGEMENT SUBMITTED TO DR. S. Z. AMANI

SHAKIR SHABIR

5TH YEAR

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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 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) 9th

Semester

5th

Year

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TABLE OF CONTENTS

1. Introduction to intellectual property 3

2. What is intellectual property? 4

3. Nature of intellectual property rights 5

4. What are intellectual property rights? 5

5. Why promote and protect intellectual property? 6

6. Introduction 8

7. Nature of ipr 8

8. Indian ipr scenario perspective 9

9. Indian perspective: challenges in ipr 10

10. Protection of intellectual property rights 11

11. Protection of intellectual property 12

12. Remedies against exploitation of intellectual property 12

13. Remedies under the trademarks act 13

14. Remedies under copyright act 13

15. Remedies under patents act 1970 14

16. Remedies under the designs act 15

17. Civil remedies 15

18. Remedies for infringement 15

19. Availability of remedies for infringement 16

20. Injunctions 17

21. Delivery up and destruction 17

22. Damages for infringement 18

23. Manufacturers 18

24. Licensors 19

25. Additional damages 20

26. Aggravated damages 21

27. Exemplary damages 21

28. Closing 21

29. Important judgments on intellectual property rights covering infringement issues 22

30. Bibliography 26

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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 in 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

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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

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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 areas 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 non-

autonomous 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 here.

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 protection, 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 secure 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 Gramophone Company v. Birender Bahadur Pandey, AIR 1984 SC 667

4 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).

6 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

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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

three heads:14

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. A declaration that the threats are unjustifiable;

ii. An injunction against continuance of threats; and

iii. 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 13

.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.

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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 property 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 infringing 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.

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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.

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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 intellectual property rights.

In cases of copyright infringement, the court has jurisdiction 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

Bajaj Auto Limited Vs. TVS Motor Company Limited20

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.

Bayer Corporation Vs. Union of India21

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

20

JT 2009 (12) SC 103 21

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‖.

Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr22

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

22

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.

The Coca-Cola Company Vs. Bisleri International Pvt. Ltd23

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

Novartis v. Union of India24

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

23

Manu/DE/2698/2009 24

[CIVIL APPEAL Nos. 2706-2716 OF 2013 (ARISING OUT OF SLP(C) Nos. 20539-20549 OF 2009]

25 | P a g e

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