India’s unique solutions for IP compensation

By Pravin Anand and Raunaq Kamath, Anand and Anand
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Every law student is familiar with the Latin maxim “ubi jus ibi remidum”, which means that there is no right without a remedy. In fact, the strength of a legal system is dependent in a big way on the versatile remedies that its judges can fashion.

In the field of intellectual property (IP), until recently remedies were restricted to injunctions, damages and, in unusual cases, Anton Piller orders, Mareva Injunctions, John Doe orders, etc. Most of the unusual orders were not provided for, until recently, in the statute book, but were judge-made law. Late Judge Hugh Laddie in fact drafted the Anton Piller order when he was a lawyer.

Pravin Anand Anand and Anand
Pravin Anand
Anand and Anand

PAYMENT OF DAMAGES

Damages were on the statute book but not granted due to one reason or another. From 2005, the courts started to grant damages, and over the next 11 years there were more than 240 cases where damages were granted – in some cases compensatory damages alone, in others punitive and exemplary damages as well.

The principles on which damages ought to be granted have been discussed in several cases and have evolved from case to case. Once in a while a defendant turns up having blatantly infringed the plaintiff’s IP, but is unable to pay damages, mainly due to financial constraints.

What is interesting is that when the courts recognize that the defendant has done something wrong, they generally tend to believe that the defendant must pay back, if not in money, in some other way. What have been these different ways to pay back? This article looks at a diverse range of remedies fashioned by Indian courts primarily to get a defendant to pay back.

SEEDS, SPITTOONS AND SOFTWARE

Examples of unique orders that have been passed are given below:

(1) In a suit where the defendants were selling counterfeit RAY BAN sunglasses, they were directed to distribute 500 pieces of unbranded glasses to the Blind Relief Association, instead of paying compensatory damages.

(2) In Dharampal Premchand v Tata Zarda Factory, the defendants were applying the plaintiff’s BABA ZARDA trademark to their tobacco-based products. The court ordered the defendants to install spittoons in cancer hospitals in Hyderabad.

(3) A defendant caught with unlicensed Microsoft software was directed to work with Microsoft in anti-piracy campaigns and participate in seminars to advocate the correct and legal use of software.

(4) In Pioneer Hi-Bred International v Pioneer Seed Company, the plaintiff complained that the quality of its joint venture partner in India, by association the defendant’s agricultural seeds, had fallen below the germination standard. The defendant suggested having the seeds tested in a laboratory. Justice Mahendra Narayan felt, however, that testing could be done on the court’s premises and directed the court’s head gardener to plant the seeds for testing. On the returnable date the gardener complained that the seeds had been eaten by birds and was accordingly directed to protect the seeds with umbrellas.

(5) In a case where the plaintiff complained of violation of its trademark, SUPERFLAME, the court queried the defendant as to why it was using BLUE SUPERFLAME for its corporate name. When the defendant claimed that the flame in a gas appliance is blue, the court asked for a demonstration, which was held in the judges’ corridor of the High Court. The case, post demonstration, was ultimately decided in the plaintiff’s favour.

(6) Burger King filed a case against a highway restaurant that was using a name that it claimed violated its rights. The defendant did not enter an appearance and so the court appointed a commissioner to physically paint over wherever the impugned name appeared, including on all milestones and hoardings along the highway.

(7) Tata and Polo have obtained orders where defendants were directed to undergo community service including at orphanages, health clinics and homes for the elderly instead of paying compensatory damages.

Raunaq Kamath Anand and Anand
Raunaq Kamath
Anand and Anand

With the recognition that IP matters are commercial disputes that need quick disposal, a few things have happened. First, courts have been stricter on timelines. Second, mediation and ADR have become increasingly important as they tend to conclude matters rapidly. Third, a new concept of summary disposal has developed, even where the defendant has filed a written statement (as opposed to a matter proceeding ex parte); and fourth, there is a tendency for courts to pass creative orders, which may bring in early resolution of the dispute.

Interesting as they sound, these orders have also benefited society, contributed to companies’ corporate social responsibility, and have attracted positive media attention, making the plaintiff look sensitive and humane.

PRAVIN ANAND is the managing partner of Anand and Anand, and RAUNAQ KAMATH is a managing

Anand & Anand

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