Beruflich Dokumente
Kultur Dokumente
SHAKIR SHABIR
5TH YEAR
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ACKNOWLEDGEMENT
Firstly, I would like to express my profound sense of gratitude towards the Almighty
ALLAH for providing me with the authentic circumstances which were mandatory for the
completion of my research work.
I am also thankful to Dr. S. Z. AMANI, for his invaluable support, encouragement,
supervision and useful suggestions throughout this research work. His moral support and
continuous guidance enabled me to complete my work successfully. His intellectual thrust
and blessings motivated me to work rigorously on this study. In fact this study could not have
seen the light of the day if his contribution had not been available. It would be no
exaggeration to say that it is his unflinching faith and unquestioning support that has provided
the sustenance necessary to see it through to its present shape.
Shakir Shabir
B.A.LL.B (Hons) 9th Semester
5th Year
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TABLE OF CONTENTS
1. Introduction to intellectual property
6. Introduction
7. Nature of ipr
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20. Injunctions
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23. Manufacturers
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24. Licensors
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28. Closing
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integrated circuits, and undisclosed information have been brought under the umbrella of
intellectual property.
Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article,
literary & artistic work, symbols etc. used in commerce. Intellectual property rights as a
collective term includes the following independent IP rights which can be collectively used
for protecting different aspects of an inventive work for multiple protection:
Patents
Copyrights
Trademarks
Intellectual property is divided into two categories: industrial property, which includes
inventions (patents), trademarks, industrial designs, and geographic indications of source: and
Copyright, which includes literary and artistic works such as novels, poems, plays, films and
musical works etc.
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LITERATURE REVIEW
In addition, technological developments in the 20th century have transformed the majority of
wealth creating work from physically based to knowledge-based. Technology and
knowledge are now the key factors of production. With increased mobility of information and
global work force, knowledge and expertise can be transported instantly around the world,
and any advantage gained by one company can be eliminated by competitive improvements
overnight. The only comparative advantage a company will enjoy will be the process of
innovation-combining market and technology know-how with the creative talents of
knowledge workers to solve a constant stream of competitive problems.and its ability to
derive value from information. The Major challenge before the organization in the coming
years would be to create a culture for IPR regime, so that creative work and innovations get
duly protected. More and more organizations may have to provide at their cost the services of
IP management consulting firm for drafting / prosecution of intellectual property. IPR, very
broadly, are rights granted to creators and owners of works that are results of human
intellectual creativity. These works can be in the industrial, scientific, literary and artistic
domains, which can be in the form of an invention, a manuscript, a suite of software, or a
business name. The importance of Intellectual Property in India is well established at all
levels statutory, administrative and judicial. India ratified the agreement establishing the
World Trade Organization (WTO). This agreement, inter-alia, contains an agreement on
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Trade Related Aspects of IPRs (TRIPS), which came into force from 1st January 1995. It
lays down minimum standards for the protection and enforcement of IPRs in member
countries, which are required to promote effective and adequate protection of intellectual
property rights with a view to reducing distortions of and impediments to international trade.
The obligations under the TRIPS agreement relate to provision of minimum standard of
protection within the member countries legal systems and practices. The agreement provides
for norms and standards in respect of following areas of intellectual property.
Patents
Copyrights
Trademarks
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INTRODUCTION
In today's intellectual era, India has shown a considerable growth in its research and
development. The presence of well-established state of the art labs of Indian as well as
multinational companies in the country has clearly proved the Indian IP status in the world.
The rise in Indian economy is a clear impact of Intellectual Property (IP) influence in the
country. By setting up new technology, incubation centres in various parts of the country and
providing financial aids to the technologist, the Research & Development (R&D)status of the
country has been boosted up.
India being a developing nation, has taken giant leaps in competing towards Trade Related
Intellectual Property Rights (TRIPS) agreement and in compliance of US and European
Intellectual Property Right (IPR) structure. The 21st century can be referred to as the century
of technology, knowledge and in fact the regime of intellect. The country's ability to translate
knowledge into innovation to gain wealth will determine its future. Thus, the innovation is
supposed to be the key to create knowledge into wealth. Therefore, issues of generation,
evaluation, protection and exploitation of IP would become critically important all over the
world1. Through this article, emphasis has been given on the IPRs impact in creating a strong
backbone of the country.
NATURE OF IPR
IPRs are the territorial rights which have a fixed term and can be renewed after a
stipulated time as specified in the law by way of making payment toward official fees.
Exceptionally, trade secrets have an infinite life but they don't have to be renewed. Apart
from this, trade secrets have another nature of being assigned, gifted, sold and licensed like
any other tangible property. Unlike other moveable and immoveable properties, these rights
can be separately held in many countries at the same time. IPR can be held only by legal
entities i.e., who have the right to sell and purchase property. In the other way, any nonautonomous institution doesn't have rights to own intellectual property. These rights are
protected by their respective sections and rules.
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Keeping in view the above achievements, our IPR system is still in enact stage. The
continuous efforts of Indian Government gives pace to the intellectual regime but more
efforts are to be taken in overcoming challenges which restrict IPR to reach the international
standards.
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Justice R. K. Abichandani, Role of Judiciary in the Effective Protection of Intellectual Property Right, available
at http://gujarathighcourt.nic.in/Articles/roleofjudicary.htm (last viewed on 30th May 2013).
2
Justice (Dr.) A.S. Anand, Intellectual Property- Indian Experience (1997) 6 SCC J. 1
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of infringing goods or article. The relief of injunction is the most asked for as of its very
nature to prima facie stop further breach and loss to the aggrieved. The right to seek
injunction is a very effective right and courts have discretionary power in matters pertaining
to it, of course subject to certain conditions.
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remedy, by way of judicial discretion, depending upon case to case.12 If the plaintiff succeeds
at the trial in establishing infringement of copyright, he will normally be entitled to a
permanent injunction to restrain future infringements.13
The Act also provides for compensatory civil remedies against infringement of copyright, by
awarding damages. The purpose of award of damage is restoration to plaintiff as if no
damage had been done or as his position was before infringement. The court has observed
that in cases of blatant infringement, an award of damage may be passed under following
three heads:14
a. Compensatory or Actual Damages;
b. Damages to Reputation;
c. Punitive Damages.
ii.
iii.
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CIVIL REMEDIES
A broad array of remedies are available for infringement of intellectual property
rights, which include damages, injunctions, orders for delivery up and destruction of items
which infringe. When an IP rights owners rights have been infringed, various remedies are
available to address the infringement to suit the type of intellectual property infringed and the
extent to which the infringer has wrongfully used the rights.
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2. grant injunctions supportive of this primary injunctive relief to give it better effect to
recognise and enforce the rights of the rights owner, such as injunctions requiring the
infringer to deliver-up materials which infringe the intellectual property rights and/or
destruction of infringing materials; and
3. award sums of money to compensate the owner of the right for any losses suffered by
past infringements. The claimant usually has to decide whether he wants his
compensation calculated by (1) the damage suffered by the claimant ("an inquiry as to
damages" which is usually the loss of profit suffered by the claimant, and often
calculated by reference to a royalty which the defendant would have paid if a licence
had been granted), or (2) the profits made by the defendant in exploiting the right ("an
account of profits"); and
4. award interest on the sums found due upon such enquiry or account from the date
upon which the respective loss was suffered or the respective profit was made; and
5. award costs to the claimant for the expense incurred by the claimant in suing the
defendant - but intellectual property litigation is no different to other litigation in this
respect since the sums recovered by way of costs very rarely reflect the full
expenditure by the successful litigant in proving his case.
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INJUNCTIONS
Injunctions may be ordered where a defendant has been found liable for infringement, to give
the claimant effective relief from future infringement to restrain the defendant from
committing or continuing to infringe the intellectual property of the owner. Importantly,
injunctions may be obtained at the outset of legal proceedings by obtaining interim relief
where unlawful acts are threatened, whether or not infringing acts have previously taken
place.
In some cases, a court will only grant an injunction in respect to those rights that have been
infringed (say in respect to a book). In others it may be inclined to grant the injunction in
respect to the entire work, without reference to the parts infringed and the parts not infringed.
The effect of the latter case is that the defendant will be restricted from reproducing or using
the parts of the work which do not infringe the relevant intellectual property.
Injunctions may nevertheless be refused if the defendant has given undertakings not to
infringe in the future, or the claimant has conducted itself in a fashion which would disentitle
itself to the relief available from the Court. An injunction will almost certainly be ordered
where the evidence before the court shows pattern of conduct of the defendant suggests the
infringement is likely to reoccur.
Where licences as of right are available to the infringer and the licensor undertakes to take
licence, the court is not likely to an injunction. Because injunctions are discretionary
remedies, they may be refused by the court on the basis of by acquiescence, laches, delay on
the part of the claimant or where the balance of convenience does not favour making the
injunction. Even then, the court retains its jurisdiction to make an award of damages or an
account of profits in favour of the claimant for the infringing acts of the defendant.
This relief enables the rights owner to obtain possession of infringing articles for the purposes
of destroying of the infringing works or obliterating the infringing parts of the works. This
jurisdiction of the court may also be applied for the purposes of obtaining articles or devices
used to manufacture infringing articles.
In cases of trade mark infringement, the defendant may be ordered take some equivalent step
to delivering up infringing articles, such as erasing trade marks from goods and verifying that
the same has been done under oath.
MANUFACTURERS
Where the rights owner reproduces and sells articles, the claimant will be entitled to the loss
of profit it would have made on the articles sold by the defendant which infringe the rights of
the owner. Where the court draws the view that only some of the sales of the defendant would
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have been lost by the claimant, the court may award a notional license fee for the balance of
the articles.
In some cases, a claimant is able to establish that goods or services were often sold with the
infringing goods, and those sales have been lost as well. In these circumstances, the court
may be inclined to grant damages in relation to the loss of sales of those related goods as
well.
Where the defendant is in direct competition with the claimant and the loss suffered extends
beyond the mere sales of the goods, such as goodwill and reputation, the court has
jurisdiction to award a sum to compensate the claimant for that loss as well.
Recoverable loss may also take the form of loss suffered as a result of:
a. reducing the prices that the claimant is able to levy for use, and/or
b. withdrawing products from sale as a result of the infringing conduct. In these cases,
the reduced profits are recoverable as well as the losses suffered on the claimants
own stock. Damages suffered by a parent company for the infringement the rights
licensed by a subsidiary are also recoverable, whether as a capital loss or income.
LICENSORS
Businesses which grant licences for the use of the intellectual property rights are in a
different position to those which manufacture and sell articles embodying infringed
intellectual property rights. A court is likely to look to the usual licence fee charged by the
owner of the intellectual property rights and treat the defendant as a notional licensee of the
intellectual property rights to arrive at a sum per infringement payable by the defendant for
its infringement. . In some cases, a court may take the view that the notional licence fee does
not properly reflect the damage suffered by the IP rights owner, and inflate the licence fee to
a sum which it thinks is more appropriate.
Furthermore, in cases where the extent of the infringement is not ascertainable (such as
distribution of copies of films as a result of peer-to-peer file sharing), the court recognises
that the claimant may not be in a position to produce evidence of all the sales lost as a result
of the infringement. In such cases, the court may be inclined to attribute the loss of sales of
the film to the infringer, provided that evidence of the forecasts of the sales of the film and
comparable films establish the loss of sales.
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OTHER CASES
The facts of the case in question may show that the intellectual property rights owner does
not manufacture goods or license the intellectual property rights as part of its business. The
underlying principles of awards of damages apply to cases both within and outside the
established categories of cases discussed above. Thus the damages suffered by a claimant
which does not license its rights or manufacture articles is in the same position other
claimants. The court should be provided with relevant evidence in order to properly assess
the damages suffered by the particular claimant based on the idiosyncrasies of the cases at
hand.
The calculation of an award of damages may be a notional license fee or the cost of obtaining
the same goods or services elsewhere. It may be the case that the claimant has been forced to
engage enquiry agents and forensic experts to detect an infringement and the extent of the
rights of the infringement. Furthermore, the claimant may have had to incur legal costs
making applications to the Court to obtain the identity of infringers, which is frequently the
case in respect to infringement of copyright works published on the internet. These costs are
also usually recoverable in the form of damages.
ADDITIONAL DAMAGES
Damages awards are compensatory and not designed to allow the claimant to profit from the
infringement of intellectual property rights. There are cases where the defendant obtains
some additional benefit by the infringement of relevant intellectual property rights.
In cases of copyright infringement, the court has jurisdiction to make awards of damages over
and above a compensatory basis where the infringement has been committed in
circumstances importing flagrant disregard for the rights of the claimant and the defendant
has acquired some benefit as a result of the infringement.
For instance, a successful company which trades using entirely using unlicensed, pirated
software is not only liable for the infringement of the software by way of an ordinary
damages award, but also acquires a benefit of running a business without having paid the
usual licence fee for the software. The court may hear submissions on deceit or scandalous
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conduct which include deliberate and calculated infringement of the copyright of the claimant
in its assessment of damages suffered.
AGGRAVATED DAMAGES
Awards of aggravated damages are reserved for defendants infringing intellectual property
rights in a high-handed, malicious, insulting or oppressive manner. Awards are assessed
separately to compensatory damages. Such awards are rare, and not available in for all types
of infringement.
EXEMPLARY DAMAGES
Exemplary damages are awarded in addition to compensatory damages in
circumstances where the infringement has been committed with a conscious and
contumelious disregard for the rights of the owner for the purposes of obtaining advantages
which surpass the usual compensatory award of damages. Like aggravated damages,
exemplary damages do not form part of the ordinary compensatory damages award, but form
a separate award. The jurisdiction of the court to award damages under this head is limited to
cases where a precedent exists. Furthermore, the court will have regard for the means of the
defendant during the process of assessing an appropriate award.
CLOSING
Relief for infringement of intellectual property rights are long established remedies, which
are adapted to suit the circumstances of each case. Courts will be cautious not allow a
defendant to profit from unlawful conduct, but at the same time, avoid making orders which
would allow a successful claimant from recovering the same loss twice. The remedies
available in any particular case will depend on the circumstances of the case.
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IPR Law- Dispute over Patent for the Use of Twin-Spark Plug Engine Technology Speedy
disposal of Intellectual property rights cases- The Supreme Court of India by this landmark
judgment has directed all the courts in India for speedy trial and disposal of intellectual
property related cases in the courts in India. In two-year-old dispute involving two
companies, which have been locked in a patent dispute over the use of a twin-spark plug
engine technology, the Supreme Court observed that suits relating to the matters of patents,
trademarks and copyrights are pending for years and years and litigation is mainly fought
between the parties about the temporary injunction. The Supreme Court directed that hearing
in the intellectual property matters should proceed on day to day basis and the final judgment
should be given normally within four months from the date of the filing of the suit. The
Supreme Court further directed to all the courts and tribunals in the country to punctually and
faithfully carry out the aforesaid orders.
IPR Law Bayer Corporation, instead of filing a suit for infringement, filed an inventive writ
petition in the Delhi High Court desiring that since the applications of Cipla SORANIB
allegedly infringed its patent, its (Ciplas) marketing approval application under the Drugs
Act should not even be processed or entertained. It is for the first time that an attempt is made
to link drug approval to patent infringement in India. However, the Delhi High Court,
denying the injunction, imposed a substantial cost of Rs. 6.75 Lakh to deter any such future
attempts.
Bayer relied on the argument that a combined reading of Section 2 of the Drugs and Cosmetic
Act along with Section 48 of the (Indian) Patent Act, 1970 establishes a Patent Linkage
Mechanism under which no market approval for a drug can be granted if there a patent
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subsisting over that drug. It also claimed that CIPLAs SORANIB is a Spurious Drug as
defined under the Drugs Act, for which market approval cannot be granted.
The Honble High Court of Delhi held that there is no Drug- Patent Linkage mechanism in
India as both the Acts have different objectives and the authority to determine patent
standards, is within the exclusive domain of the Controller of Patents. Moreover, the patent
linkage will have undesirable effect on the Indias Policy of Public Health. It further held that
the market approval of a drug does not amount to infringement of patent. Therefore, the
patent infringement cannot be presumed, it has to be established in a court of law. Such
adjudication is beyond the jurisdiction of Drug Authorities.
On the issue of SORANIB being a spurious drug, the court held that CIPLAs SORANIB
cannot come under the category of spurious goods as there is no element of passing off like
deception or imitation present in CIPLAs drug.
Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr22
IPR Law- Suit for infringement by a registered trade mark owner against a registered trade
mark holder: Conditions-The present dispute was between the registered trade mark of the
plaintiff as well as defendant. It is interesting to note that before filing the suit the plaintiff i.e.
Clinique had filed a cancellation petition before the Registrar of Trade Marks, India, against
the defendant for cancellation of the defendants trade mark CLINIQ. As per the Section
124(1) (ii), of the Indian Trade Marks Act, 1999 a suit is liable to be stayed till the
cancellation petition is finally decided by the competent authority.
However, under Section 124(5) of the Act, the court has the power to pass interlocutory order
including orders granting interim injunction, keeping of account, appointment of receiver or
attachment of any property.
In this case, the court held that a suit for infringement of registered trade mark is
maintainable against another registered proprietor of identical or similar trade mark.
It was further held that in such suit, while staying the suit proceedings pending decision on
rectification/cancellation petition, the court can pass interim injunction restraining the use of
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the registered trade mark by the defendant, subject to the condition that the court is prima
facie convinced of invalidity of registration of the defendants trade mark. In this case the
court granted an interim injunction in favour of the plaintiff till the disposal of the
cancellation petition by the competent authority.
IPR Law- Infringement: Export: Threats: Jurisdiction The Delhi High Court held that if the
threat of infringement exists, then this court would certainly have jurisdiction to entertain the
suit. It was also held that the exporting of goods from a country is to be considered as sale
within the country from where the goods are exported and the same amounts to infringement
of trade mark. In the present matter, the defendant, by a master agreement, had sold and
assigned the trade mark MAAZA including formulation rights, know-how, intellectual
property rights, goodwill etc for India only with respect to a mango fruit drink known as
MAAZA.
In 2008, the defendant filed an application for registration of the trade mark MAAZA in
Turkey started exporting fruit drink under the trade mark MAAZA. The defendant sent a
legal notice repudiating the agreement between the plaintiff and the defendant, leading to the
present case. The plaintiff, the Coca Cola Company also claimed permanent injunction and
damages for infringement of trade mark and passing off. It was held by the court that the
intention to use the trade mark besides direct or indirect use of the trade mark was sufficient
to give jurisdiction to the court to decide on the issue. The court finally granted an interim
injunction against the defendant (Bisleri) from using the trade mark MAAZA in India as well
as for export market, which was held to be infringement of trade mark
IPR Law- Rejection of a patent for a Drug which was not inventive or had an superior
efficacy- Novartis filled an application to patent one of its drugs called Gleevec by
covering it under the word invention mentioned in Section 3 of the Patents Act, 1970. The
Supreme Court rejected their application after a 7 year long battle by giving the following
reasons: Firstly there was no invention of a new drug, as a mere discovery of an existing drug
would not amount to invention. Secondly Supreme Court upheld the view that under Indian
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Manu/DE/2698/2009
[CIVIL APPEAL Nos. 2706-2716 OF 2013 (ARISING OUT OF SLP(C) Nos. 20539-20549 OF 2009]
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Patent Act for grant of pharmaceutical patents apart from proving the traditional tests of
novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy
for claims that cover incremental changes to existing drugs which also Novartiss drug did
not qualify. This became a landmark judgment because the court looked beyond the
technicalities and into the fact that the attempt of such companies to evergreen their patents
and making them inaccessible at nominal rates.
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BIBLOGRAPHY
BOOKS REFERRED
Venkateswaran on Law of Trademark law and Passing off by Kapil Wadhwa, Dr.
Abhishek Manu Singhvi
JOURNALS REFERRED
WEBSITES VISITED
www.wikipedia.org
www.cll.com
www.tm-india.com
http://www.academia.edu/7795675/TRADEMARK_LAW_IN_INDIA_A_Critical_and_Comparative_Study
www.thomsonreuters.com
www.indlii.org
https://www.gov.uk/.../intellectual-property-crime-and-infringement
www.legalservicesindia.com/.../trademark-infringement-and-remedies-
www.drukker.co.uk/.../l/infringement-intellectual-property-rights/
www.ssrana.in/Intellectual%20Property/IP...And.../Civil-Remedies.aspx
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