ROLE OF INDIAN JUDICIARY WITH SPECIAL REFERENCE TO THE GLOBAL IP REGIME

ABSTRACT:
“Intellectual Property Rights” (IPR) is an extension of the Common Law concept of ownership. Ideas, Concepts, Expression, Intellect, Creativity, the intangible forms of human capabilities are treated as tangible property capable of being owned by their creators in the same manner as any tangible object is and, therefore, like any other property needs to be protected by law. India as a signatory to the GATT (General Agreement on Tariffs and Trade) is under an obligation to accord protection to Intellectual Property Rights. At present, we have various laws in India governing IPR such as The Patents Act, 1970, The Copyrights Act, 1957, etc. in addition to global laws such as The Trade Related Aspects of Intellectual Property Rights (TRIPS) which provide for the protection of Intellectual Property as well as prescribing punishments for their infringement. The Indian Judiciary has played a proactive and activist role in preserving and upholding Intellectual Property Rights as has been evidenced by its decisions in cases such as N.R. Dongre & Others v.Whirlpool Corporation & Another (1996) 5 SCC 714, Apple Computer Inc. v. Apple Leasing & Industries (1993) 18 IPLR 63 [in IA No.7678 of 1989 in Suit No.2751 of 1989], etc.

Through this essay, the authors have tried to explain the concept of Intellectual Property Rights, the global regime governing IPR vis-à-vis the Indian Law and the stance taken by the Indian Courts for the enforcement and protection of IPR and promoting India as a global destination for Foreign Investment by safeguarding Intellectual Property Rights.

INTRODUCTION:
“Intellectual Property Rights” (IPR) is an extension of the Common Law concept of ownership. Ideas, Concepts, Expression, Intellect, Creativity, the intangible forms of human capabilities are treated as tangible property capable of being owned by their creators in the same manner as any tangible object is and, therefore, like any other property needs to be protected by law. Lately due to globalization, easy accessibility to information, technology, development of innovative models of business and shrinking of trade barriers by formation of groups and associations of countries like EU, SAARC, NAFTA, G-8 etc. Intellectual Property has acquired a trans-boundary effect making it increasingly vulnerable to infringement.  Intellectual Property (IP) Laws are extremely important for the scientific development of a country. Strong Intellectual Property legislation ensures progress in varied fields and result in the growth of a country’s knowledge bank. It is of utmost importance that strong IP laws must be ably supported by an equally strong enforcement mechanism. A strong IPR regime helps attract new investment and allows innovators to develop new technologies. It is, therefore imperative that any law providing for the protection of Intellectual Property also provides strategic remedies for prevention of its infringement through effective enforcement measures.

INTERNATIONAL AGREEMENTS RELATING TO INTELLECTUAL PROPERTY:

• World Intellectual Property Organization (WIPO): WIPO is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international Intellectual Property(IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. WIPO is responsible for promoting creative intellectual activity and for facilitating the transfer of technology related to industrial property to the developing countries in order to accelerate economic, social and cultural development, subject to the competence and responsibilities of the United Nations and its organs.
• Trade Related Aspects of Intellectual Property Rights(TRIPS): The Preamble of TRIPS lays down that the agreement desires to reduce distortions and impediments to international trade by taking into account the need to promote effective and adequate protection of Intellectual Property Rights. Part III of TRIPS provides for the enforcement of IP rights. Members shall ensure that enforcement procedures are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. This Part provides for remedies in the form of Injunctions and Damages.

[1] IPR- Enforcement Law in India- Ranjan Kumar Misra.
[2] http://www.wipo.int/about-wipo/en/what_is_wipo.html
[3] http://en.wikipedia.org/wiki/World_Intellectual_Property_Organization

PROTECTION OF IPR IN INDIA:
India is a signatory to GATT (General Agreement on Tariffs and Trade) and TRIPS (Trade Related Aspects on Intellectual Property Rights). This means that it has to follow the rules set by WTO (World Trade Organization) and recourse can be sought in international forums for not implementing the agreement. In India there are various Laws which provide protection against infringement of IP. The Laws are as follows:

The Patents Act, 1970: The reliefs which a court may grant in any suit for infringement includes an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits. The Court may also order that the goods which are found to be infringing and materials and implement, the predominant use of which is in the creation of infringing goods shall be seized, forfeited or destroyed without payment of any compensation.

The Trademarks Act, 1999: Any person who falsifies any Trademark; falsely applies to goods or services any Trademark; makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying, a trade mark; or applies any false trade description to goods or services; or applies to any goods to which an indication of the country or place in which they were made or produced or the name and address of the manufacturer or person for whom the goods are manufactured is required to be applied, a false indication of such country, place, name or address; or tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required shall, unless he proves that he acted, without intent to defraud, be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees.

[4] http://www.wto.org/english/tratop_e/trips_e/t_agm1_e.htm
[5] Article 41, TRIPS.
[6] Article 44, TRIPS.
[7] Article 45, TRIPS.
[8] Section 108, The Patents Act, 1970.

• The Copyright Act, 1957: Any person who knowingly infringes or abets the infringement of the Copyright in a work, or any other right conferred shall be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees. Whoever having already been convicted of an offence is again convicted of any such offence shall be punishable for the second and for every subsequent offence, with imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees. Any person who knowingly makes use on a computer of an infringing copy of a computer programme shall be punishable with imprisonment for a term which shall not be less than seven days but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees. Any police officer, not below the rank of a Sub-inspector, may, if he is satisfied that an offence in respect of the infringement of Copyright in any work has been, is being, or is likely to be, committed, seize without warrant, all copies of the work, and all plates used for the purpose of making infringing copies of the work, wherever found, and all copies and plates so seized shall, as soon as practicable, be produced before a Magistrate. Any person who knowingly makes, or has in his possession, any plate for the purpose of making infringing copies of any work in which copyright subsists shall be punishable with imprisonment which may extend to two years and shall also be liable to fine. The Court while trying any offence under this Act may order that all copies of the work or all plates in the possession of the alleged offender, which appear to it to be infringing copies, or plates for the purpose of making infringing copies, be delivered up to the owner of the Copyright.

[9] Section 103, The Trademarks Act, 1999.
[10] Section 63, The Copyrights Act, 1957.
[11] Section 63 A, The Copyrights Act, 1957.
[12] Section 63 B, The Copyrights Act, 1957.
[13] Section 64 (1), The Copyrights Act, 1957.
[14] Section 65, The Copyrights Act, 1957.
[15] Section 66, The Copyrights Act, 1957.

• Geographical Indications of Goods (Registration and Protection) Act, 1999: Any person who falsifies any Geographical Indication; or falsely applies to goods any Geographical Indication; or makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying, a Geographical Indication; or applies to any goods to which an indication of the country or place in which they were made or produced or the name and the address of the manufacturer or person for whom the goods are manufactured is required to be applied, a false indication of such country, place, name or address; or tampers with, alters or effaces an indication of origin shall be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall  not be less than fifty thousand rupees but which may extend to  two lakhs rupees. The same punishment is prescribed for any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, goods or things to which any false Geographical Indication is applied. On any subsequent offence the punishment shall be imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than one lakh rupees but which may extend to two lakh rupees.

• Semiconductor Integrated Circuits Layout Design Act, 2000: Any person who infringes a layout design shall be punishable with imprisonment for a term which may extend to three years or with fine which shall not be less than fifty thousand rupees but which may extend to ten lakh rupees. If any person falsely represents that any layout design is registered when in fact it is not so, he shall be punishable with imprisonment for a term which may extend to six months or with fine which may extend to fifty thousand rupees. In case of infringing layout designs the Court has the power to order seizure of the same.[16] Section 39, The Geographical Indications of Goods (Registration and Protection) Act, 1999.[17] Section 40, The Geographical Indications of Goods (Registration and Protection) Act, 1999.[18] Section 41, The Geographical Indications of Goods (Registration and Protection) Act, 1999.[19] Section 56, The Semiconductor Integrated Circuits Layout Design Act, 2000.[20] Section 57, The Semiconductor Integrated Circuits Layout Design Act, 2000.[21] Section 60, The Semiconductor Integrated Circuits Layout Design Act, 2000.

ROLE OF THE INDIAN JUDICIARY IN PROTECTION OF IPR IN THE GLOBAL IP REGIME:
The Courts in India have always strived for the protection of IPR and the various decisions of the Supreme Court and the High Courts in this regard bear testimony to this fact.
In England, in Budweiser’s case the English Courts declined to protect trans-border reputation by striking a distinction between reputation and goodwill and holding that for a passing off action it was necessary to have a protectable goodwill; which meant doing of business in the open market in England. In the said case, Budweiser being an American company was unable to restrain a Czeckoslovakian company from using the mark Budweiser because its products were not sold in the open market in England.
The Indian Courts disagreed with the Budweiser decision of English Court. In Apple Computer Inc. v. Apple Leasing & Industries, the Delhi High Court held as under:-
“I am quite unable to treat these sporadic and occasional sales as constituting in any real sense the carrying on by the plaintiffs of a business in this country”. Speaking for myself, I have difficulty in asserting that sale of 5 million cans of beer is “sporadic sale”. I would say that sale of that magnitude every year would be sufficient to establish a reputation.”
The Indian Supreme Court in N.R. Dongre & Others v.Whirlpool Corporation & Another confirmed the concept of trans border reputation which is now very much a part of the Indian law. The result is that if there is a foreign company whose Trademark is known in India through a spill over advertising, tourists travel etc, then it can protect its mark even though it is neither commercially used in India nor registered here.
In another case Diamler Benz v. Hybo Hindustan, the Delhi High Court has accorded protection to Trademarks of completely dissimilar goods which extended beyond the proprietors’ goods because of trans-border reputation and partly because of passionate reaction to dishonest trading. In this case, protection was extended to totally dissimilar goods when the sale of under wears under the BENZ trademark (known for automobile) was restrained.

[22]  (1993) 18 IPLR 63 [in IA No.7678 of 1989 in Suit No.2751 of 1989].
[23] (1996) 5 SCC 714.
[24] AIR 1994 Delhi 239. 

Yahoo! Inc. v. Akash Arora was India’s first domain name case where the Indian Courts granted protection to domain names or Trademarks on the internet despite the lack of specific legislation in this regard on the principles of infringing marks and passing off. Thereafter, the Courts recognized the torts of meta tagging, hyper linking, framing, spamming and phishing in a large number of cases forming a mosaic of decisions to protect trademarks on the internet.
In Gramophone Co. of India v. Birendra Bahadur Pande & Others  wherein the conflict between the national and international laws was discussed the Apex Court came to the conclusion that India’s bilateral treaty should prevail in the form of Municipal Law. The said judgment discussed in detail the provisions of Customs Act as well as the provisions of the international convention pertaining to the Copyright. The Court came to the conclusion that the word ‘import’ in Sections 51 and 53 of the Copyright Act means ‘bringing’ into India from outside India and that it is not limited to importation for commerce only, but includes importation for transit across the country. Therefore, the Supreme Court of India in the present case also enforced Intellectual Property Rights on trans-national basis by widening the definition of import by not merely confining it from import of commerce but also import of transit.
The Courts in India from granting simple ex parte injunction have moved to more complex remedies like grant of Mareva Injunctions (a Court order which freezes assets so that a defendant to an action cannot dissipate their assets from beyond the jurisdiction of a Court so as to frustrate a judgment), Anti-Suit Injunctions (issued by a Court that prevents an opposing party from commencing or continuing a proceeding in another jurisdiction or forum), Anton Piller Orders (a Court order that provides the right to search premises and seize evidence without prior warning which prevents destruction of relevant evidence, particularly in cases of alleged Trademark, Copyright or Patent infringements) and John Doe Orders (used as a placeholder name in a legal action, case or discussion for a male party, whose true identity is unknown or must be withheld for legal reasons).

[25] (1999) FSR 931 (Delhi).
[26] (1984) 2 SCC 534.

In Taj Television v. Rajan Mandal where the Intellectual Property was the broadcast reproduction rights of the Soccer World Cup, 2002. The Delhi High Court granted a John Doe Order as a result of which the Local Commissioner appointed by the Court went, searched and seized equipments at various known and unknown cable operators’ control rooms and during the course of that month, some 3500 licenses were signed up. The action was an immediate success in curbing what might have been a total destruction of the plaintiff’s Intellectual Property Rights.
In Modi Entertainment Network & Another  v. W.S.G. Cricket Pvt. Ltd., The Supreme Court granted an Anti-Suit Injunction. The Court observed that “The Courts in India like the Courts in England are Courts of both law and equity. The principles governing grant of Injunction – an equitable relief – by a Court will also govern grant of Anti-Suit Injunction which is but a species of Injunction. It is a common ground that the Courts in India have power to issue anti-suit injunction to a party over whom it has personal jurisdiction in an appropriate case. This is because Courts of equity exercise jurisdiction in personam. However, having regard to the rule of comity, this power will be exercised sparingly because such an injunction though directed against a person, in effect causes interference in the exercise of jurisdiction by another Court.”
The Indian Courts are also granting punitive and exemplary damages apart from compensatory damages in order to shift the focus from an overburdened Criminal Justice Delivery System to a Civil System. The Indian Courts have granted punitive and exemplary damages in a large number of cases.
The Delhi High Court in Amar Nath Sehgal v. Union of India  granted huge damages against the Government of India for IP Rights violations.
The Courts have realized that not all defendants can afford to pay damages and have adopted a softer and innovative approach for some of the defendants. Thus, the Courts have granted a variety of unusual orders such as the spittoon order granted in Baba Zarda’s case where the defendant, a Chewing Tobacco Manufacturer, had to install 150 spittoons in Osmania Hospital in Hyderabad. In the case of infringement of Microsoft Softwares the defendants had to work with the plaintiffs in anti counterfeiting campaigns including participation in seminars a view to advocating the correct and legal use of software.  In the case of Ralph Lauren (Polo), the Defendant had to undergo a community service of 30 days in an old age home and his partner in an orphanage and thereafter provide a report of their having performed the service.

[27] 2003 FSR (22) 407.
[28] AIR 2003 SC 1177.
[29] 2005(30) PTC 258 (Del).

In Hilton International Company v. Mr. K.V. Kumar, not only did the Hon’ble Court permanently restrain the defendants from using the Trademark HILTEN in respect of their Hotel business but also granted damages worth US $ 58,975 (Rs. 23.59 Lakh) to the plaintiffs.

In Cartier v. Cartier Enterprises, recognizing the well established rights of the Trademark owner, the Court imposed US $ 44,500 (INR 17.80 Lakh) plus 12 percent interest as damages on the defendants for infringing the trademark rights of the rights holder.

CONCLUSION:
In order to reinforce and reiterate the commitment of India towards the global regime for protection of Intellectual Property Rights, the Courts in India have taken a proactive stance which is highlighted in the Judgments rendered by them. These decisions showcase India in positive light as also India’s resolve to abide by its global commitments under TRIPS and WIPO. The Courts by these decisions have allayed the apprehension which some foreign investors might have regarding IP protection and have promoted India as a safe and welcome destination for Foreign Investment.

[30] Suit No. 2015 of 2003.
[31] CS (OS) No. 1208 of 2003.

BIBLIOGRAPHY:
ARTICLES:

1. IPR-Enforcement Law in India – RANJAN KUMAR MISRA.
2. Role of Judiciary in IPR Development and Adjudication- Justice Rajesh Tandon
3. Commission on Intellectual Property Rights: Developing Countries and International Intellectual Property Standard-Setting – Peter Drahos.
4. Transnational Enforcement of Intellectual Property Rights- Indian Judiciary- Indian Cases and Suggestions for further strengthening the Intellectual Property Rights.
5. Role of Judiciary in the Effective Protection of Intellectual Property Right: Justice R.K. Abichandani.

BOOKS:

1. Intellectual Property- W.R.Comish.
2. Cases and Materials on Intellectual Property- W.R.Comish.

CASE LAWS:

1. Apple Computer Inc. v. Apple Leasing & Industries: (1993) 18 IPLR 63 [in IA No.7678 of 1989 in Suit No.2751 of 1989].
2. N.R. Dongre & Others v.Whirlpool Corporation & Another: (1996) 5 SCC 714
3. Diamler Benz v. Hybo Hindustan: AIR 1994 Delhi 239.
4. Yahoo! Inc. v. Akash Arora: (1999) FSR 931 (Delhi).
5. Gramophone Co. of India v. Birendra Bahadur Pande & Others: (1984) 2 SCC 534.
6. Taj Television v. Rajan Mandal: 2003 FSR (22) 407.
7. Modi Entertainment Network & Another v. W.S.G. Cricket Pvt. Ltd.: AIR 2003 SC 1177.
8. Amar Nath Sehgal v. Union of India: 2005(30) PTC 258 (Del).
9. Hilton International Company v. Mr. K.V. Kumar: Suit No. 2015 of 2003.
10. Cartier v. Cartier Enterprises: CS (OS) No. 1208 of 2003.

WEBSITES:

1. http://www.mondaq.com/article.asp?articleid=77934
2. http://www.lawyersclubindia.com/articles/A-changing-IP-environment-241.asp
3. http://en.wikipedia.org/wiki/Anti-suit_injunction
4. http://en.wikipedia.org/wiki/Anton_Piller_order
5. http://en.wikipedia.org/wiki/John_Doe
6. http://en.wikipedia.org/wiki/Mareva_injunction
7. https://www.aippi.org/enews/2008/edition01/changing-face_ip_india.html
8. http://gujarathighcourt.nic.in/Articles/roleofjudicary.htm
9. http://www.iipa.com/rbc/2010/2010SPEC301INDIA.pdf
10. http://www.ipo.org/AM/Template.cfm?Section=Home&Template=/CM/ContentDisplay.cfm&ContentID=21815
11. http://jurisonline.in/2009/08/ipr-enforcement-law-in-india/

INDIAN ACTS:

1. The Patents Act, 1970.
2. The Trademarks Act, 1999.
3. The Copyright Act, 1957.
4. Geographical Indications of Goods (Registration and Protection) Act, 1999.
5. Semiconductor Integrated Circuits Layout Design Act, 2000.

INTERNATIONAL LAWS AND AGREEMENTS:

1. World Intellectual Property Organization (WIPO).
2. Trade Related Aspects of Intellectual Property Rights (TRIPS).