With the advent of India as an essential emerging market for global players, protection of trademarks, patents and designs for their goods and services has grow to be a very important problem. Increasingly, IPR stake holders are finding it needed to enforce their rights in the Indian Courts through litigation. For years India was a neglected marketplace, some of these IPRs, particularly trade marks, were becoming employed by nearby entities even legitimately, in the absence of the foreign IPR holder in the Indian market. In other circumstances, there has been an actual deliberate copying of the global trade mark taking advantage of what is termed as ‘trans border reputation’. In still other people there was prolific counterfeiting of the trade mark or design. In all these instances, if the global IPR holder now desires to establish its IPR in India it should deal with these violations to protect its marketplace in India. Defendants who have been accustomed to an unregulated market and virtually no attack from the IPR holder on their activities, are suddenly feeling the pressure of these enforcement actions. The defendants are making use of conventional time tested defence strategies to protect their respective companies. At the exact same time they and the legal fraternity, involved in defending these litigations, are continuously evolving newer and innovative counter techniques for defeating and/or delaying and thereby frustrating these enforcement litigations. In this dissertation, I propose to identify these conventional and non conventional counter techniques deployed by defendants and their legal advisors, suggest mechanisms to anticipate these techniques and frame alternative mechanisms to effectively deal with them. Global holders of IPRs do not take into account two fundamental differences in litigation principles in India. Firstly, litigation is really affordable for Indian defendants and secondly, the Indian Courts are choked with circumstances, therefore it takes an inordinately lengthy time for Courts to determine matters and consequently the Judges are rather liberal in granting adjournments. If the daily Board of any Judge in any court is studied, it would be humanly not feasible for a Judge to even cursorily take up all the matters throughout the day and it is therefore preordained that several of the matters will be adjourned. Defendants take benefit of these procedural delays as a matter of technique to defeat enforcement actions. Yet another typical tactic adopted by defendants in India is to take the most aggressive stand doable from the start of the proceedings. As a result, unlike other countries where defendants generally reply to notices requiring them to cease and desist infringement of an IPR and even make counter delivers of settlement, the typical practice in India is to attack the IPR stake holder and/or its IPR. This attack can take different forms: The commonest of them all is to challenge the validity of the IPR . In respect of trade marks and patents, the validity of the rights are challenged at the Intellectual Property Appellate Tribunal, based in Chennai. In the case of a patent, if the Patent has been lately granted, a post grant opposition may possibly also be filed inside one year of the publication of the date of grant at the Patent Office itself in accordance with section 25(2) of the Patents Act. In the case of a registered Design, revocation proceedings are commenced at the Controller of Designs at Kolkata. In 2008, the Designs Rules had been modified to make revocation of a style simpler. An additional widespread remedy when served with a notice is to file an action for groundless threat of legal proceedings [under section 142 of the Trade Marks Act 1999 for instance] and sue for damages. A further kind of action is a declaratory suit seeking to declare that the action of the defendant does not quantity to infringement. [under section 105 of the Patents Act, for instance] A not so widespread technique is that the defendant itself files a suit for passing off against the stake holder asserting, that in truth it is the defendant who is the rightful owner and the IPR holder who has sent the cease and desist notice in the initial location, has violated the rights of the defendant. All these defences are fairly robust and therefore, currently I do not advocate the issuance of a cease and desist notice to a potential infringer in the Indian context. If the IPR holder has in reality decided to go after an infringer, an action for infringement ought to be filed as soon as possible soon after the investigation stage is over. This will successfully thwart the actions for groundless threats which is not available when a litigation is truly filed [see for instance section 142(2) of the trade marks Act]. When it comes to litigation in the Indian environment, the conventional legal advise has been to file an action and seek an interim or even an ex parte injunction against the defendant. To a certain extent this makes sense due to the fact of the inordinate delays customary in the Indian Courts. Even so, the prospective defendants have come to comprehend this anxiety of the IPR stake holders and their legal advisers. Consequently their initial strategy is to delay and thwart the taking up of the matter for interim injunction in the first place. This strategy takes the form of filing a sheaf of interlocutory applications difficult each feasible aspect of the suit. It starts with difficult the jurisdiction of the Court to entertain the Suit. It is often seen that several of the legal retainers of Global IPR holders are located in the metro cities of Delhi, Mumbai, Kolkata and Chennai. Typically the infringer may possibly not have any activity in these cities, but the action for infringement is filed in 1 of these cities for the convenience of the stakeholders’ lawyers. Such a suit is as a result ideal for the infringer to challenge the jurisdiction of the Court. To prevent this kind of counter strategy, it is advisable to file the suit within the jurisdiction of the Court where the defendant resides or carries on organization. In my expertise Judges outside the Metro Cities in India are really keen to deal with IPR problems and some times pronounce quite erudite and favourable judgements, when they are explained the legal provisions clearly. Another expedient measure adopted by Plaintiffs is the use of a neighborhood authorised signatory to execute the documents, particularly the Plaint. It is not uncommon that a junior lawyer from the neighborhood litigating lawyer’s office is given the authority to make all statements on behalf of the Global IPR holder. Except for local technical or legal matters which could demand that a neighborhood or legal individual could be so authorized, where facts and evidence is to be laid prior to the Court, the practice of using an external authorized signatory to the principal pleadings, must be avoided, simply because this gives the defendant a chance to challenge the signatory. If the suit had been to ever go on to trial it could pose all sorts of difficulties for the plaintiff, especially if the plaintiff decides to alter its litigation lawyer. This counter technique can be prevented if the constituted attorney of the Plaintiff or a senior officer of the Plaintiff executes the pleading papers in the 1st location. I need to at this stage tension on an important maxim that is not appreciated. The grant of an interim injunction is a purely discretionary relief whereas the grant of the permanent injunction is to be decided purely on the merits of the case. Simply because of the really nature of the interim relief, for countering the interim injunction, the defendant adopts two parallel techniques : In the 1st place the defendant challenges the validity of the IPR. Under the Indian Trade Marks once the validity has been challenged under the provisions of section 142 of the Act, the trial judge should stay the proceedings. Secondly the defendant pleads balance of convenience in its favour. The balance of convenience counter strategy at the interim stage has often worked in favour of the defendant. These pleas include attempting to show the apparent mala fide actions of the Plaintiff which includes that of excessively overcharging for the merchandise protected by the IPR , delay in filing the Suit, acquiescence and latches, lamenting how the defendant and its company is most likely to suffer irreparable loss, how the Indian customers are most likely to be deprived of the low cost defendants goods and the same buyers will be oppressed by the plaintiff, how the employees of the defendants and its associates will be deprived of employment. The list goes on and on. At the interim stage the Courts in India have been successfully persuaded by these pleas. see for example the recent case of Roche vs Cipla in the Delhi High Court, where Roche was portrayed as a villain and even fined a substantial amount for ‘daring’ to take on the ‘altruistic’ defendant There are two powerful ways to tackle these counter methods. By correct investigation of the defendant’s activities, the suit should consist of all that is wrong with the defendant’s items. Instances where the defendant’s products, even products that are not the subject matter of the suit, have been needed to be recalled may possibly be led in evidence. In fact test can be performed to establish that the defendants goods under the infringing IPR are subs standard and are definitely not up to the standards of good quality of the Plaintiff’s merchandise. Any evidence to show that the defendant is unreliable and capable of placing unsatisfactory, substandard product in the market, or are themselves violating will support tipping the scales in favour of the Plaintiff in matters of discretion. Alternatively, in my opinion, the Plaintiff really should trade off the interim injunction application with an order for expediting the invalidity proceedings and even the trial for permanent injunction. On rare occasions, Judges themselves have favoured a quick track completion of the trial, as happened in the Scotch Whiskey Association’s case at the Mumbai High Court. Lately, a Judge of the Delhi High Court commented on the paucity of final judgements in IPR matters while dealing with a patent interim injunction case. As soon as the validity challenge has been shaken off, the infringement action boils down to whether or not the act of the defendant amounts to infringement or not. The action is now free from any distractive and disruptive proceedings. In the rare occasion where the proceedings have proceeded to trial, the defendant commences its dilatory activities in trying to needle the plaintiff. Especially if a witness is needed to travel from abroad, it is not uncommon for the defendant going to any length to seek an adjournment. I must here also stress the importance of continuous investigation on the activities of the defendant. Rarely will the defendant file an action for malicious prosecution in case the plaintiff is able to obtain a decree against the defendant. Nicely just before even a decree is obtained or damages awarded against it, the defendant is quite most likely to have changed its address, location, constitution and even name thus thwarting the plaintiff’s efforts. Most decrees in India go unexecuted. The main trigger for this is the lack of ongoing investigation efforts by the local team. With continuous monitoring all these activities can be taken into account throughout the proceedings. In dealing with the defendants’ counter techniques, IPR stake holders really should bear in mind never to underestimate their opponents’ tenacity to pursue their trigger, particularly when the dice is sometimes heavily loaded against the stake holders in the 1st location .
Unfortunately, stake holders in IPRs in India, particularly the global players, have not however accepted this fundamental maxim. IPRs, being by their really nature a form of a negative monopoly,- giving the IPR holder a appropriate to stop others from producing, selling or importing items which infringe the IPR, -are usually looked upon in India as instruments of oppression. In fact in a recent judgement delivered by the Intellectual Property Appellate Tribunal, [the Glivec case] the Tribunal even whet on to state, whilst refusing the grant of a patent, that the grant of a patent would be against the interest of the frequent public and therefore contrary to ‘public order’, therefore questioning the existence of the really IPR program in the very first place.