Author: Abhinav Gaur, Research Associate
Ubi Jus Ibi Remedium, this latin phrase expedites upon the fundamental of theory of every judicial system, which means where there is a right, there is a remedy. The existence of judiciary as a watchdog for every democratic set up can hardly be argued, as it the existence of judiciary and the punishment implicating laws that deter any wrong in society. The foremost function of judiciary is to provide for legal remedies for trespasses against personal and property rights of person.
The grant of any right’s effectiveness totally depends upon how expeditiously the remedy for such right’s infringement is availed to a person. Intellectual Property Rights is no exception to this fact, as statute in this regard provides only a modicum of direction as regards the nature of remedies and the procedure for safeguarding them, leaving a large extent of role within the province of judges.
Intellectual property is inchoate property when manifested in a legally recognizable way. Property right was, till the deletion of Article 19(1)(f) of the Constitution of India, a fundamental right for citizens, but now under Article 300-A it is separately notified as a Constitutional right ensuring that no person can be deprived of his property save by the authority of law1.
The most intimidating feature of an intellectual property is that it differs from the other forms of property because of uncertainties regarding its value and manner of use. It is not something that can be kept safe in lockers or be hidden from others. Having the right of intellectual property registered is no guarantee of its safety from being stolen. The registration is nothing more, in effect, that the recognition of the right of ownership. This property, which is a product of the intellect is, therefore, very difficult to protect. Commercial piracy is a big business and there is hardly any country in the world where pirated articles are not being sold2.
Protection of Intellectual Property
The phenomenal growth in various fields of technology, industry, commerce and trade during the last two decades is due mainly to the encouraged extensive research and development output resulting from the creative of scientists, technologists and artists all over the world. With dynamics of business set ups, advertisement techniques, business development techniques and grit of human efforts have led from making use of superfast data processing techniques assisted by advanced computer generated creative works. The continuous efforts of human to advance with advancing age in every field like science, technology, commerce, communication and what not; is resulting into intellectual property which is sole creation of human intrigue.
Thus, when so much of research and intellect for over years is invested in invention of an intellectual property, it deserves to be protected. It is so highly prized by all civilized nations that it is thought worthy of protection by national laws and international conventions3.
Remedies against exploitation of Intellectual Property
The intellectual property is protected by the sanctions of law and a right to secure one’s intellectual property is a statutory right4. It is well known principle of law that where there is a right there is a remedy which is derived from the maxim ubi jus ibi remedium. India has four statutes protecting the infringement of intellectual property of a person, namely, (a) The Trade Marks Act, 1999, (b) The Copyright Act, 1957, (c) The Patents Act, 1970 and (d) The Designs Act 2000. Not limited to remedies available in those statutes, an aggrieved person may have recourse to the provisions in Section 479 to 489 Indian Penal Code, 1860 and Section 38 of the Specific Relief Act, 1963.
Generally, it is the civil remedy which is sought in most of the cases. An aggrieved person can file a suit in competent court seeking relief of injunction, damages, accounts and delivery 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, ofcourse subject to certain conditions.
Remedies under the Trademarks Act
When dispute arises or any breach is done in respect to, the infringement of a registered trade mark; or any right registered under trade mark; or for passing off arising out of the use by the defendant of any trade mark (registered/unregistered), shall not be instituted in any court inferior to a district court having jurisdiction to try such case5. It is well settled, that a court shall not readily presume the existence of jurisdiction of a court which was not conferred by the statute6.
The Court has discretion to grant injunction and at the option of plaintiff court may also award damages, together without or without any order for the delivery-up of the infringing labels and marks for destruction or erasure7. The purpose of grant of injunction is not to penalize the defendant but to protect the interest of the plaintiff to the extent it is justified8.
In the case of passing-off it is usual, rather essential, to seek an injunction, temporary or ad interim. The plaintiff must prove, a prime facie case, availability of balance of convenience in his favor and his suffering an irreparable injury in the absence of grant of injunction9. The court under section 54 of Specific Relief Act has discretion to grant perpetual injunction.
Remedies under copyright act
The Act extends protection to the work by conferring certain exclusive rights on the author. The act provides for civil remedies10by the way of seeking injunction/damages or otherwise as may be conferred, on infringement of a right under the Act in respect of any work. This remedy is given to an ‘owner’11and not to a ‘prospective owner’. Injunction is an equitable remedy, by way of judicial discretion, depending upon case to case12. If the plaintiff succeeds at the trial in establishing infringement of copyright, he will normally be entitled to a permanent injunction to restrain future infringements13.
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 court14has observed that in cases of blatant infringement, an award of damage may be passed under following three heads:
(a) Compensatory or Actual Damages;
(b) Damages to Reputation;
(c) Punitive Damages.
Remedies under Patents Act 1970
Where any person threatens any other person by any means, with proceedings for infringement of a patent15, any person aggrieved thereby may bring a suit against him praying for following reliefs:
(a) A declaration that the threats are unjustifiable;
(b) An injunction against continuance of threats; and
(c) Such damages, if any.
However, a mere notification of existing of a patent does not constitute a threat of proceeding16. Injunctions17, at the plaintiff’s behest may also be granted against defendant on the discretion of the court. Court may also order seizing, destroying or forfeiting such material proved to be infringing18.
Remedies under the Designs Act
The Designs Act provide for two remedies, alternate to each other19, which are as follows:-
(a) If any person acts in contravention of Section 22, he shall be liable to pay the registered proprietor of the design a sum not exceeding Rs. 25,000 for every contravention recoverable as a contract debt, provided that total sum recoverable in respect of any one design shall not exceed Rs. 50,000.
(b) The proprietor may bring a suit for recovery for damages for any such contravention, and for an injunction against a repetition thereof, and shall be entitled to recover such damages as awarded by the court on succeeding.
- 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). [↩]
- Justice (Dr.) A.S. Anand, Intellectual Property- Indian Experience (1997) 6 SCC J. 1 [↩]
- Gramophone Company v. Birender Bahadur Pandey, AIR 1984 SC 667 [↩]
- Vikas Vashishth, Law & Practice of Intellectual Property in India, Bharat law house, New Delhi, (3rd ed.), 23. [↩]
- Trade Marks act 1999, s 134 (1). [↩]
- Dhoda House and Patel Field Marshal Industries v S. K. Maingi and PM Diesel Ltd. 2006 (32) PTC 1 (SC). [↩]
- Trade Marks act 1999, s 135 [↩]
- N. R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714 [↩]
- Laxmikant V. Patel v. Chetan bhai Shah (2002) 3 SCC 65 [↩]
- Copyright Act 1957, s. 55 [↩]
- Copyright Act 1957, s. 17 [↩]
- R. M. Subbiah v. N. Sankaran Nair, AIR 1979 Mad 56 [↩]
- K. P. M. Sundhram v. M/S RP Mandir, AIR 1983 Del 461; Hawkins Cookers Ltd v. Magicook Appliances Co., 2002 (25) PTC 713 (Del); Himalaya Drug Co. v. Sumit, 2006 (32) PTC 112 (Del); Diamond Comic Pvt. Ltd. v Raja Pocket Books, 2005 (31) PTC 378 (Del). [↩]
- Microsoft Corporation v. K. Mayuri, 2007 (35) PTC 415 [↩]
- Patents Act 1970, s. 106 [↩]
- Upendra Nath Dass and Sons v. T. C. Martin, AIR 1962 Cal 69 [↩]
- Patents Act, s. 111. [↩]
- Patents Act, s. 108. [↩]
- Designs Act, s. 22(2). [↩]