Fighting it out

1
883

Pravin Anand and Nishchal Anand evaluate IP dispute resolution processes in India

Litigation has proven to be the most effective tool to combat trademark and copyright infringement in India. In fact, matters of counterfeiting and piracy often result in a settlement pursuant to the IP owner filing a lawsuit for infringement and obtaining an ex-parte ad interim injunction along with an Anton Piller order, i.e. a direction to enter the defendant’s premises and search and seize infringing goods. These matters usually end in settlements where the defendant suffers a decree and may also agree to pay damages.

Contentious matters may not get settled as easily. However, India’s courts have developed rich jurisprudence in this field, which has resulted in parties being able to estimate somewhat accurately their chances of success, and better manage their cases. Delhi High Court took the first positive step in this direction in 2002, when it directed the parties in Bawa Masala Company v Bawa Masala Company Pvt Ltd to refer the matter for early neutral evaluation.

In the past five years, Delhi High Court has referred a number of trademark and copyright disputes to Samadhan – the Delhi High Court Mediation and Conciliation Centre, which has played an instrumental role in quickly disposing of matters. The mediators empanelled with Samadhan are lawyers from the Bar, highly trained in dispute resolution and knowledgeable about trademark and copyright law in India.

Pravin Anand
Pravin Anand

Compared to conventional trademark and copyright matters, patent litigation is relatively recent in India and has picked up pace only in the past decade. Jurisprudence with respect to patent law is also underdeveloped. Pharmaceutical patents are among the most hotly contested patent litigations. The only pharmaceutical patent infringement lawsuit, which was decided pursuant to trial in India, is the dispute between F Hoffmann-La Roche and Cipla for the drug Tarceva, which was decided by Delhi High Court in 2012. Overall the trend in India with respect to patents, particularly pharmaceutical patents, has been pro-generic. One of the reasons behind this is public interest and easy access to life-saving drugs.

Alternative dispute resolution has hardly been used as a remedy in patent infringement matters, and only recently has Delhi High Court referred a few highly contentious matters to mediation. These matters are pending. Irrespective of the outcome, this is a welcome change where innovators and generic companies are at least attempting to find a middle ground to protect innovation while keeping public interest in mind.

Arbitration in intellectual property matters is uncommon. In fact, arbitration cannot be invoked without a contract or agreement providing the same, which is usually absent in conventional infringement matters.

However, with respect to domain name disputes, India has adopted the World Intellectual Property Organization’s Uniform Domain Name Dispute Resolution Policy and modified it to form the equivalent .IN Domain Name Dispute Resolution Policy, which is administered by the National Internet Exchange of India (NIXI). NIXI comprises a panel of arbitrators which has presided over 620 disputes relating to domain names since its inception in 2006.

Nishchal Anand
Nishchal Anand

While the advancement of technology has enabled IP owners to expand their markets and reach consumers, it has benefited infringers equally. The Indian judiciary has recognized that at times it is impossible to pin down the actual infringers when the infringement takes place on the internet. The menace would continue despite sending cease and desist letters or obtaining restraining orders from court. Therefore, Indian law provides for take-down notices or directions from the court to be given to intermediaries such as websites, service providers, etc., to directly block access to the infringing content. In such circumstances, it becomes essential for IP owners to work with third parties to resolve disputes.

The desire of any party in a dispute is to have a quick resolution and avoid dragging matters to a point when the entire objective is lost. India is changing. Litigations are progressing rapidly with the introduction of the concept of a “four-month trial” by the Supreme Court. Matters which would take five to six years to reach adjudication are now decided in one to two years, depending upon the degree of contest. Parties are less reluctant to experiment with alternative dispute resolution, thus lessening the burden of the courts. Laws are being designed in a way to reduce ambiguity in letter, and conflict between parties. Special courts such as the Intellectual Property Appellate Board have been established to hear and quickly dispose of appeals from the decisions of the Patent and Trademark Offices. These efforts are bound to result in the quick, fair and effective dispensation of justice to parties involved in IP disputes.

Pravin Anand is the managing partner of Anand and Anand. Nishchal Anand is a senior associate at the firm.

Anand_and_Anand_logo_NEW_2014

New Delhi

T: +91 120 4059300

F: +91 120 4243056

Email: [email protected]

[email protected]