An Expert's View about Law and Compliance in India

Posted on: 18 May 2010

Intellectual Property Rights (IPR) define variety of legal rights in protecting products of intellectual efforts of creativity in the fields of applied art, knowledge and fine arts. Intellectual Property Rights mainly comprise trademarks, patents, copyrights, service marks, designs and confidential information (trade secrets), know-how etc. and the right to protection from passing off.

Intellectual Property Rights are of great importance for modern industry and commerce and, in many cases, they have a very important effect on the economy and on the very existence of a business entity. These comprise the right to control the use of technology and creative material, including rights in artistic, musical and literary work, and the right to prevent others from misusing certain marks, symbols and drawings and in distinguishing one from the other.

The concept of Intellectual Property in India and the world over is taken to be sacrosanct and an impregnable propriety, which has made Patents, Trade Marks, Copyright, Designs, Transfer of Technologies rather tangible in terms of propriety. New laws, for the registration and protection of these rights, have replaced the old and antiquated laws, not only in India but also all over the globe. IP rights are valuable assets, which need to be scrupulously guarded against from being infringed or misused. The value of Intellectual Property cannot be defined in monetary terms; it is an intangible asset of any corporate entity.


It is always advisable that as and when business houses or industrialists adopt a mark/label/logo or create any copyright in a musical, literary, artistic work, or work of a new invention, or develop a three dimensional new design, they should immediately apply for registration of the same under the relevant Act. Needless to say that once registration is obtained, the owner is entitled to statutory protection and has a better title to support his claim in a court of law in case of any dispute. For example, in case of piracy of a brand, copyright, patent or a design, if the owner is having registration under the relevant Act, he can sue the infringers in an action for infringement, and if it is an action for infringement, in all likelihood, the courts are readily inclined to grant protection by way of an ex parte injunction.

In case the owner under the relevant Act does not obtain the registration, one would have to take an action for passing off, which is a common law remedy. In an action of passing off, the courts are a bit hesitant in granting an injunction because they have to rely more on evidence and personal discretion before granting the relief. Therefore, it is advisable to obtain registration as early as possible.

Apart form the above two remedies, criminal action can also be taken under the relevant Acts along with the Indian Penal Code and the Code of Criminal Procedure against infringers and those selling spurious goods in the market.

From the day the Indian economy opened up and from 1999 onwards, there has been a lot of pressure on the Indian Government to make its IP laws more stringent and in conformity with the TRIPS Agreement. As a result, India has been compelled to enact in almost each subject of the IP laws a new Act and introduce major amendments. For example, a new Trade Marks act 1999 came into effect from 15th September 2003, a new Designs Act came into force in 2000, a new Copyrights Act came into effect on 1999, and a new Patent Act with many amendments also came into effect.

In the above new Acts, many amendments have been made by which various important provisions have been added to cover technical, administrative and legal issues, whereby registration process has been made quicker and easier, penalties for offences have been increased, and penal actions have been made more stringent.


Broadly, IP rights in India can be enforced by two ways – Civil action and Criminal action.

Civil action: As and when a party proposed to take a civil action against any infringer, it has to file a Suit for infringement or passing off in a High Court or a District Court (Both courts have jurisdiction). If the Plaintiff has a good prima facie case, Indian Courts are very prompt in granting ex parte Injunctions, restraining the Defendant, his agents, servants etc. from infringing a Trade Mark/Copyright/patent or a design of the Plaintiff. Once an ex parte injunction is granted,in most of the cases, the matter is settled between the parties and a Compromise Decree is passed by the Court in favour of the Plaintiff and against the Defendant. This entire process takes a period of approximately one month to four months. However, an ex parte injunction can be obtained within about three days or so after receiving the documents and instructions from the client.

In case the Defendant fights the case, in that case also, the trial of the entire Suit can be finished within a maximum period of two years, depending upon the caliber and efficiency of the Lawyer representing the Plaintiff in the Court. This has become possible because there have been changes in the Indian Civil Procedure Code, whereby now evidence is led by way of Affidavits instead of oral evidence as heretofore.

Criminal action: In so for as criminal actions are concerned, in case the counterfeiting goods are available on a large scale in the market, and a Mark, or a copyright is infringed at different places, we generally advise our clients to file a Criminal Complaint before the Court of Metropolitan Magistrate and obtain Search & Seizure Orders against Unknown persons/firms etc. After receiving instructions from the Clients with complete address of the Accused along with necessary documents, we at Aggarwal Associates can assure our clients that we shall be in a position to obtain Search & Seizure Orders from the court within ten days or so after receipt of the instructions. Once Search & Seizure Orders are obtained from the Court, the raids can be got conducted with the help of the Police and fake/duplicate goods can be recovered and seized by the police and the same remain in Police custody.

Criminal action leads to criminal prosecution. Once raids are conducted, goods are seized and Police files its report before the Metropolitan Magistrate, charges are framed against the accused and immediately thereafter from the same day, the criminal prosecution turns out to be a State case, meaning thereby that it becomes a case between the State and the accused, and the Counsel for the Complainant or the Complainant need not attend the matter.

Of late there is an increase in patent infringement cases and case law is developing quite fast in this complex field also.


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Posted: 18 May 2010

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Aggarwal Associates

Intellectual Property Rights.