The Delhi High Court recently recognised, for the first time, the merit of applying Section 20 of the Evidence Act 1872 in technical IP matters. This decision may have far-reaching consequences in the IP world, as it could eliminate the controversy surrounding infringement suits which involve complex technical questions and help the courts to reach a finding by relying on the opinion of an expert agreed on by both parties.
The Copyright Act specifically addresses authors' special rights, which comprise the right to claim authorship of a work and the right to prevent any distortion, modification or mutilation of a work which would be prejudicial to the author's reputation. While jurisprudence on moral rights is still relatively limited, a few foundational cases are emblematic of India's approach and the associated legal issues.
In Banyan Tree Holding v A Murali Krishna Reddy the Delhi High Court clarified the importance and scope of the special jurisdiction provision (ie, Section 62 of the Copyright Act 1957). However, there seems to be a school of thought that Section 62 vests Indian courts with untrammelled long-arm jurisdiction even in strictly extraterritorial situations.
The Supreme Court recently issued its much-anticipated decision in IPRS v Sanjay Dalia. The case considered the interpretation of the special jurisdiction provisions in Section 62 of the Copyright Act and Section 134 of the Trademarks Act. The court held that if a cause of action arises at the place where the plaintiff's principal office is located, it cannot rely on Section 62 or Section 134 to institute a suit where its branch office is located.
A streamlined framework for rectification of a company name is now available under the Companies Act 2013. Under the new act, the registered proprietor of a trademark can apply for rectification of a company name that is identical to or too closely resembles the registered trademark. In addition, the owner of an unregistered trademark which is used as a company name may use Section 16(1)(a) of the act as an alternative remedy to a passing-off suit.
Circular 41 was issued in order to clarify the rules regarding Customs' right to suspend the clearance of goods that allegedly infringe patents, designs or geographical indications. However, the circular is unclear, as it both clarifies that Customs must wait for a court order before suspending the clearance of allegedly infringing goods and states that Customs can suspend goods without a court order if it exercises extreme caution.
Section 22 of the Designs Act 2000 deals with piracy of registered designs and enumerates the reliefs available to design owners. A clear reading of Section 22(2) reveals that it provides two reliefs to registered design owners in the event of infringement. These two options are disjunctive in nature, which means that design owners must choose between the two.
The Delhi High Court recently held that a composite suit for infringement of a registered design and a passing-off action is not maintainable. According to the court, two independent suits must be filed (although these can be tried together if there are aspects that are common to both suits), but a single composite suit is not possible. This conclusion has been questioned.
The Copyright Act specifically provides for a window for certain acts that will not be considered an 'infringement' of works in which copyright subsists. The Indian courts have recently relied on the de minimis argument as a valid defence for infringement allegations, arguing that some issues are so minor in nature that the courts will not categorise them as contentious at all.
As patent litigation increases, so too does the importance of understanding the nuances of those provisions of the Patents Act that deal with suits for patent infringement, and the defences that can be raised therein. One such issue is whether the consequence of raising a defence of invalidity is the same as instituting a counterclaim to invalidate a patent under the act.
The Indian Patent and Trademark Office (IPO) has established rules concerning the submission of material information known to a patent applicant. These rules define an applicant's duty of disclosure. Two decisions of the Delhi High Court have made clear that it is better to be cautious than to risk revocation of a patent on procedural grounds. Applicants should therefore disclose all material information in their control to the IPO.
In a recent judgment the Supreme Court finally interpreted the term 'efficacy' in the context of patentability. The court did not completely eliminate from the definition any non-therapeutic properties of a known form that could be understood to increase efficacy. As the court refused to rule on the exact scope of 'therapeutic efficacy', the case sets a limited precedent and leaves room for further discussion.