IPR Improvements in India

(IPRinfo 2/2010)
Pravid Anand
Partner, Anand & Anand Advocates, India
Abridged and edited by the editors.

The Indian Judiciary can become a source of strength for the Indian Scientific Industry.

In India, recent laws and guidelines have improved the rightholders’ possibilities to defend their intellectual property. Litigation times have decreased. However, there are still big problems like counterfeit goods and weak patent protection of medical products. The training of judges in IP issues also calls for strengthening.

Of the over 500 courts of the country, only a handful are used by IP owners for enforcing their intellectual property. In the biggest cities both district and high courts have had substantial IP practice.

Historically, the north of India was the centre of counterfeiting activity. Therefore the skills to combat counterfeiting have grown around the Delhi High Court, which has acquired fame and experience in IP enforcement. It is estimated that more than half of IP Litigation in India is concentrated in the Delhi High Court.

When the TRIPS Agreement came into effect, new IP laws were added in Indian IP legislation. In addition to the traditional four protection forms (patents, trademarks, copyrights and industrial designs) new acts were introduced. They cover geographical indications, IT, semiconductor chips and plant varieties.

Litigation periods have decreased
In the past few years, the procedural and substantive changes in the IPR laws of India have decreased the timelines of IP enforcement. The cumulative effect of various changes have shrunk the length of litigation from the earlier 5-10 years’ timeframe to 2-3 years.

The Code of Civil Procedure was revised in July 2002. Its effects have begun to show from 2005 onwards.

Amongst the amendments introduced were: a) written statements must be filed within 30 days, extendable to maximum 90 days, b) evidence can be led on affidavits with a right to cross examine, c) evidence could be recorded or presented before a Local Commissioner instead of a Judge.

Furthermore, new technology contributes to shorter handling periods. The Delhi High Court was also declared as an e-court. This concept of an electronic court, which started functioning in December 2008, means that there are e-filing, e-service of summons, e-hearings, e-orders, e-evidence etc.

Deepening division of innovators and generic companies
In the 1980’s, the generics and the innovators in medical business opposed each other on most IP policy issues. There still are disputes over issues like parallel importation, Bolar provisions, the linkage between patent laws and the regulatory provisions.

By the time, however, the generics have prevailed in retaining what is perhaps one of the weakest patent laws in the world. It is difficult for innovator pharmaceuticals companies to succeed in obtaining patents or enforcing them.

Another hotly debated topic in patent law is whether India should finally abolish the system of pre and post grant oppositions. The generic companies have used the combination of two oppositions: often the same company has filed both. However, the recent case law has held that there would be res judicata and that this could not be done.

Parallel import constitutes a major problem
Companies with well known brands in India are facing a major problem of grey market goods, i.e. goods that are legitimately made for foreign markets but brought into India against contractual provisions and thus against the consent of the proprietor.
Some companies have succeeded in restraining parallel goods on trade mark principles. These cases were based on ”a material difference” between goods intended for the foreign market and those intended for sale in India.

Material differences in quality are classified as physical while differences in storage and guarantee conditions are called non-physical. For example, if imported branded soap does not conform to the packaging laws of India, it materially differs from the soap intended for sale in India in respect of physical differences.

On the other hand, if chocolates imported without authorization are badly stored, they would deteriorate in quality, giving the customer an inferior experience, and such changes would be due to non-physical differences.

Another interesting aspect of trade mark law has been brought up lately in a number of cases: can the proprietor object to the sale of second hand goods or repaired goods? So far, the courts have taken the view that if the goods with the trade mark are explicitely represented as second hand, the use of the mark may be permitted.

Common law extended to new fields
The Vestergaard Frandsen case decided before the Delhi High Court in August 2009 was the first time that a confidentiality club was set up to ensure that the parties could share their trade secrets before the court without a risk of losing them.

Judges in India have mostly been open to looking at decisions from all over the world. This has given them the opportunity to pass creative orders, not only on the basis of statutory principles but also extending common law principles to newer fields. These include Internet torts like framing, hyper-linking, phishing, metatagging and Spamming.

On the other hand, the training of judges in intellectual property issues has not always been sufficiently profound. In a few cases information has been shared off the record by the judges or material pulled unexpectedly from the Internet to the surprise of the parties.

Nevertheless, the Indian Judiciary is proactive and strong. Its balanced exposure to IP fundamentals can become a source of strength for the Indian Scientific Industry, which again could produce innovative ideas and creative products in this part of the world.

India in figures
Population: 1.2 billions inhabitants (2008)
Surface area: 3 287 300 km2
GDP: 822 billions of euros (2008)
GDP per capita: 691 euros (2008)
India’s exports to EU (2008): 26 747 millions of euros
India’s imports from EU (2008): 34 680 millions of euros

India as the country of origin of counterfeit goods seized in EU:
2,7% of the counterfeit products total (2007)
34% of the counterfeit medicines (2007)

Indian court structure:
The Supreme Court of India
21 High Courts
About 430 District courts (civil)
Administrative tribunals, Courts of sessions (criminal), other special courts
(Sources: World Bank, European Commission, Indian Government)

LINKS:
Many Indian law firms and law schools maintain web pages on intellectual property law. The Indian patent office, or The Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) also has a lot of information in its web site.
http://www.patentoffice.nic.in/