"India rises in Intellectual Property rankings" proclaimed
the headlines when the Global Intellectual Property (IP) Index
was released by the US Chamber of Commerce in February 2018.
Compared to past years, India made improvements in both
absolute and relative terms and represented the largest
percentage improvement of any country measured for the sixth
edition of these rankings. While the assessment of India's
intellectual property law climate by these rankings should not
be taken as the gospel truth, the acknowledgement of
improvement highlights that intellectual property law
protection for right owners is on the rise. In this context,
this article focuses on recent judicial developments to
highlight the positive direction IP enforcement is taking in
Summary judgments under the Commercial Courts, Commercial
Division and Commercial Appellate Division of High Courts Act,
2015 (the Commercial Courts Act) are becoming the norm,
reducing litigation time and saving costs.
The Commercial Courts Act, 2015, an act that categorised IP
disputes as "commercial matters" to streamline and expedite IP
litigation, introduced the provision of summary judgment for
civil disputes. The provision entitles a court to decide a
dispute without evidence, if it forms the view that the
plaintiff or defendant has "no real prospect of successfully
defending a claim". This provision is now being adopted by
courts regularly to grant relief to IPR owners. The Delhi High
Court, the first Court to have adopted the Commercial Courts
Act has led the way in summary judgment jurisprudence.
Summary judgments under the Commercial Courts,
Commercial Division and Commercial Appellate Division
of High Courts Act, 2015 (the Commercial Courts Act)
are becoming the norm, reducing litigation time and
For example, in Merck Sharpe and Dohme and Anr. v Munish
Thakur, the Court suo motu invoked the provision of summary
judgment. The suit was therefore decreed in favour of the
patentee along with actual costs without recording of oral
evidence as the Court was of the opinion that the defendant had
no real prospect of defending its claim.
Similarly, in Helamin Technology Holding SA & Anr. v
Haribansh Rai & Ors, summary judgment was granted in a
trade mark dispute in favour of the plaintiff. Additionally, in
Bharti Bhawan v M/s Shree Jee Prakashan, the Court granted a
decree for copyright infringement in favour of the plaintiff,
by passing a summary judgment.
The above examples clearly show that the grant of this
relief has not been limited to any particular type of
intellectual property. Furthermore, it is not even necessary
for parties to request a summary judgment as courts are
invoking the new provision of their own accord. This has
significantly reduced the time period for litigation and saved
costs for IP owners as the evidence stage is removed. The
continuation of this important trend will enable IP owners to
file more lawsuits to effectively enforce their rights,
especially in run-of-the-mill counterfeit cases.
Contempt of court is not a joke
Taking strict action against lying, courts have interpreted
it as "obstruction of justice" that amounts to contempt (Louis
Vuitton v Omi). In Louis Vuitton v Omi, the defendant made a
false statement on oath which the court held to be contempt.
The court sentenced the defendant to jail for one month.
Similarly, in Bridgestone Corporation v Tolin Tyres, the
Delhi High Court, utilising the mechanism under the Right to
Information Act, directed the government official of the Land
Customs Port, Bihar, to produce information regarding the
export of tyres by the defendant under the trade mark
Bridgestone. This led to the defendant finally admitting to and
apologising for the infringing products that had been exported.
Displeased with the defendant's conduct, the Court directed the
defendant's director to be sent to judicial custody for a day
and to pay INR 30 lakh (approximately $42,000) to the plaintiff
These rulings have altered the jurisprudence around
contempt. The threat of imprisonment is bound to act as a
serious deterrent for infringers and these rulings should
caution them with respect to their conduct before the
Local commissioners become the "eyes and ears of the
Upholding and strengthening the position of a local
commissioner (LC), the Delhi High Court in Louis Vuitton v Omi
held that a local commissioner is the "eyes and ears of the
Court" and an "extended arm and agent of the Court".
This is a significant ruling as local commissioners are
essential in IP matters, especially for the search and seizure
of infringing products. The ruling implies that any
non-compliance with the local commissioner would be contempt of
court. This ruling enables taking appropriate action against
infringers, who at times act in an unruly manner and do not
cooperate during the search and seizure process.
The fog clears with respect to determining royalty for
standard essential patents
In July 2018, in the first post-trial decision in India
relating to standard essential patents (Koninklijke Philips
Electronics N.V. v Rajesh Bansal (CS(COMM) 24/2016) and
Koninklijke Philips Electronics N.V. v Bhagirathi Electronics
and Ors. (CS(COMM) 436/2017), by a joint order dated July 12
2018), Philips was granted a permanent injunction along with
punitive damages. The court held that Philips' Indian patent
was an "essential patent" for DVD technology since the patentee
had proved that the corresponding US and EP patents had been
declared as essential for DVD Technology i.e. "DVD-Rom, Video
Disk and DVD play backs". The court stated that the following
could be considered for ascertaining royalty:
the parties' informal negotiations with respect to the end
FRAND terms; and
the incremental benefit derived from the invention.
Furthermore, the court's assessment of damages was based on
the "wrong doing" of the defendants. The court also awarded
actual costs i.e. legal fees, court fees and local
commissioner's fees to the plaintiff. The principles of law
laid down in this judgment will act as a precedent for all
standard essential patent cases in the future.
Taj Mahal Palace Hotel, Mumbai obtains trade mark
protection and joins an elite club consisting of the Empire
State Building and the Eiffel Tower
In a first, the famous Taj Mahal Palace Hotel in Mumbai was
granted protection by the registrar of trade marks as an image
mark. Established in 1903, the hotel is one of the most
well-recognised buildings in India and registration for its
architectural design has placed it in the league of iconic
buildings around the world that have been given trade mark
protection such as the Empire State Building in New York and
the Eiffel Tower in Paris.
Wherever the defendant's phone network goes, the court's
Modifying the manner of service of the court in accordance
with the growth of technology, in a first, the court directed a
defendant to be served through Whatsapp. This is extremely
useful in IPR cases, where sometimes infringers avoid
IP owners' communication with investigators is
Acknowledging the importance of carrying out investigations
for IPR suits, the Delhi High Court held that communication
between the plaintiff and its investigator qualifies as
privileged communication under Sections 126 and 129 of the
Indian Evidence Act.
The above judicial developments clearly show that Indian IP
jurisprudence is rapidly growing to aid IP owners, and the
Delhi High Court is at the forefront of this growth. If the
defendant has "no real prospect of defending a claim", the
court may, of its own accord, decide the suit by passing a
summary judgment, saving judicial time and litigation costs.
Local commissioners have been empowered to become the "eyes and
ears and agents of the Court". If infringers refuse to
cooperate with them, they would be liable for contempt and
could even be imprisoned. This is bound to act as a deterrent
and ensure compliance. There is clarity on how to determine
royalty for standard essential patents. IP owners can
strategise with their investigators without the threat of
disclosure before courts. Last but not least, an infringer
evading service can be served by court – as long as it
has a smartphone with connectivity.
||Shrawan has over 12
years of experience as an intellectual property litigator
at Anand and Anand, and represents clients before the
Intellectual Property Appellate Board, the High Court and
the Supreme Court.
Shrawan’s expertise in IP litigation sees
him advise and represent pharmaceutical, food and
beverage and major industrial players on numerous issues.
His litigation experience spans patent, copyright, trade
mark and domain name disputes.
||Vibhav Mithal is a
senior associate at Anand and Anand and practises as an
intellectual property litigator in various areas of IP.
He is a graduate of the National University of Juridical
Sciences (NUJS), Kolkata. Vibhav has also pursued an LLM
in intellectual property law as an LLM scholar, from
Boston University School of Law. Besides providing
critical input in various matters, he has also been
involved in many high stake litigations. For instance,
the Aloys Wobben dispute before the Supreme
Court which held that the same party cannot challenge the
same patent in multiple forums and the Roche v Cipla
dispute, a landmark decision in favour of the patentee
that laid down extensive principles regarding patent law
jurisprudence in India.