JAMIA MILLIA ISLAMIA

“REMEDIES FOR
IPR
INFRINGEMENT”
SUBMITTED TO DR. S. Z. AMANI
By SAIF ALI (Sec. A, IX Sem.)
 ““REMEDIES FOR IPR INFRINGEMENT”

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.

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SYNOPSIS

PART-I
 Introduction
 Nature of the IPR
 Indian perspective on IPR
 Protection of IPR
PART-II
 Remedies against exploitation of IPR
 Remedies under Patent Act, 1970
 Remedies under Design Act.
 Civil Remedies
PART-III
 Injunctions
PART-IV
 Delivery up and destruction
 Damages
 Vulnerabilities and risks
PART-V
 Manufacturers
 Limitation
PART-VI
 Conclusion
BIBLIOGRAPHY

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INTRODUCTION TO INTELLECTUAL PROPERTY

Over the past two decades, intellectual property rights have grown to a stature from where it
plays a major role in the development of global economy. In the 1990s, many countries
unilaterally strengthened their laws and regulations in this area, and many others were poised to
do likewise. At the multilateral level, the successful conclusion of the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS) in the World Trade Organization
enhanced the protection and enforcement of IPRs to the level of solemn international
commitment.
The new global IPR system comes with both benefits and costs. The domain of intellectual
property is vast. Copyrights, Patents Trademarks and Designs are known to have received
recognition for a long time. Newer forms of the protection are also emerging particularly
stimulated by the exciting developments in scientific and technological activities.
Intellectual property refers to the creations of the human mind like inventions, literary and
artistic works, and symbols, names, images and designs used in commerce. 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 and plays, films, musical works,
artistic works such as drawings, paintings, photographs and sculptures, and architectural designs.
Rights related to copyright include those of performing artists in their performances, producers
of phonograms in their recordings, and those of broadcasters in their radio and television
programs. Intellectual property rights protect the interests of creators by giving them property
rights over their creations.
The most noticeable difference between intellectual property and other forms of property,
however, is that intellectual property is intangible, that is, it cannot be defined or identified by its
own physical parameters. It must be expressed in some discernible way to be protectable.
Generally, it encompasses four separate and distinct types of intangible property namely- patents,
trademarks, copyrights, and trade secrets, which collectively are referred to as “intellectual
property.”
However, the scope and definition of intellectual property is constantly evolving with the
inclusion of newer forms under the gambit of intellectual property.
In recent times, geographical indications, protection of plant varieties, protection for semi-
conductors and 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:-

 Copyrights

 Trademarks

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 Registered (Industrial) design

 Protection of IC layout design,

 Geographical indications, and

 Protection of undisclosed information

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

WHAT IS INTELLECTUAL PROPERTY?

Intellectual property refers to creations of the mind: inventions; literary and artistic works; and
symbols, names and images used in commerce. Industrial Property includes patents for
inventions, trademarks, industrial designs and geographical indications. Copyright covers literary
works (such as novels, poems and plays), films, music, artistic works (e.g., drawings, paintings,
photographs and sculptures) and architectural design. Rights related to copyright include those of
performing artists in their performances, producers of phonograms in their recordings, and
broadcasters in their radio and television programs.

NATURE OF INTELLECTUAL PROPERTY RIGHTS

IPR are largely territorial rights except copyright, which is global in nature in the sense that it is
immediately available in all the members of the Berne Convention. These rights are awarded by
the State and are monopoly rights implying that no one can use these rights without the consent
of the right holder. It is important to know that these rights have to be renewed from time to time
for keeping them in force except in case of copyright and trade secrets. IPR have fixed term
except trademark and geographical indications, which can have indefinite life provided these are
renewed after a stipulated time specified in the law by paying official fees. Trade secrets also
have an infinite life but they don‘t have to be renewed. IPR can be assigned, gifted, sold and
licensed like any other property. Unlike other moveable and immoveable properties, these rights
can be simultaneously 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. These rights especially, patents,
copyrights, industrial designs, IC layout design and trade secrets are associated with something
new or original and therefore, what is known in public domain cannot be protected through the
rights mentioned above. Improvements and modifications made over known things can be
protected. It would however, be possible to utilize geographical indications for protecting some
agriculture and traditional products.

WHAT ARE INTELLECTUAL PROPERTY RIGHTS?

Intellectual property rights are like any other property right. They allow creators, or owners, of
patents, trademarks or copyrighted works to benefit from their own work or investment in a
creation. These rights are outlined in Article 27 of the Universal Declaration of Human Rights,
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which provides for the right to benefit from the protection of moral and material interests
resulting from authorship of scientific, literary or artistic productions. The importance of
intellectual property was first recognized in the Paris Convention for the Protection of Industrial
Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works
(1886). Both treaties are administered by the World Intellectual Property Organization (WIPO).

WHY PROMOTE AND PROTECT INTELLECTUAL

PROPERTY?
There are several compelling reasons. First, the progress and well-being of humanity rest on its
capacity to create and invent new works in the areas of technology and culture. Second, the legal
protection of new creations encourages the commitment of additional resources for further
innovation. Third, the promotion and protection of intellectual property spurs economic growth,
creates new jobs and industries, and enhances the quality and enjoyment of life. An efficient and
equitable intellectual property system can help all countries to realize intellectual property‘s
potential as a catalyst for economic development and social and cultural well-being. The
intellectual property system helps strike a balance between the interests of innovators and the
public interest, providing an environment in which creativity and invention can flourish, for the
benefit of all.

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 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

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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

 Registered (industrial) design

 Protection of IC layout design,

 Geographical indications, and

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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
world. 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 non autonomous institution doesn't have rights to
own intellectual property. These rights are protected by their respective sections and rules.

INDIAN IPR SCENARIO PERSPECTIVE

Earlier when IPR was in its preliminary stage, lot of problems arose relating to its
implementation, policies, Act/ Rules, financial and governmental support. Earlier, companies
and inventors were also not aware of IPR, therefore risk of infringement was at an alarming level
without a healthy system, and companies were not interested to go for R&D process in India.
This resulted in the death of inventions, high risk of infringement, economic loss and decline of
an intellectual era in the country. Keeping in view all the above problems, India has taken strong
steps in strengthening IPR in the country. For example, the first Indian Patent Law came in 1856.
Further, the same was modified from time to time by Indian patent system.
New patent law was made after independence in the form of the Indian Patent Act 1970. Later, it
was amended in compliance with the TRIPS provision. Recently, in2005, amendments were
made in IPR. While the process of bringing out amendments was going on, India became a
member of the Paris Convention, Patent Cooperation Treaty, Budapest Treaty and finally signed

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the TRIPS agreement to comply with the International and Indian standards. Recently, India
signed the "Madrid Protocol" which further enhances the applicability of Trademarks in 89
countries. Further, interest of Small and Medium Enterprises (SMEs), Indian industries,
technologist, scientist and inventors are gaining in this field. More number of research oriented
persons is filing their inventions on a large scale. More number of foreign companies is now
establishing their in-house R&D centres in India, which is a clear sign of IPR influence in the
country.
Apart, from this, the country's first Compulsory License (CL) against the Bayer cancer drug
"NEXAVAR" highlights the Indian IPR regime on the international window. This CL gives a ray
of hope to Indian Pharma INC which is not capable of producing lifesaving drugs and now can
manufacture such drugs at a very low cost. Such nature of CL boosts up the health industry of
the country. Due to this, high end drugs can be manufactured and supplied to the patients at a
very nominal rate which is a sign of a disease free society. According to a recent survey, it was
estimated that the number of Trademark and Patent filings have increased 20 times as that of
previous years.
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.

INDIAN PERSPECTIVE: CHALLENGES IN IPR

Today, IPR plays an important role in every sector and has become an important aspect of
research for Pharma and research oriented industries. The continuous efforts of the government
in policy establishment, IT protection, infrastructure, IPR search portals and manpower made
this Industry a step ahead. In consideration of all the achievements, our industry is still facing
troublesome challenges not only at domestic level but also at international level. Firstly, in India
IPR lacks its roots in remote areas, such areas are considered to be the hot bed of inventions.
Many people are still unaware about IPR and their advantages in taking rights for their
intellectual property. In such cases, the government should promote the awareness of IPR in such
remote areas. Large number of awareness camps and educational hubs has to be organized for
the skilled impart of knowledge among the inventors. Secondly, a legal issue plays an important
role in IPR situation in the country. Today various trademark and patent infringement matters are
gaining their significance in the legal story of the country. In such increase of IPR matter, a
skilled team of law persons (Judges, advocates) and IPR professionals are required. Apart from
the above issues, TRIPS flexibility is yet another object to be discussed here.
Earlier, when Indian Patent system was not in compliance with TRIPS, there was a risk of a
healthy Patent protection provision in India. But today the condition has totally changed. India is
now a member of TRIPS agreement and our patent system is fully compliant with the TRIPS.
Even though Indian Patent Act contains all the TRIPS flexibilities, the relevant provisions
require fine tuning, especially of those related to the patent protection, compulsory license and
government use.

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PROTECTION OF INTELLECTUAL PROPERTY

RIGHTS
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 law.1
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 sold.

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 conventions.

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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 right.4 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,
1. The Trade Marks Act, 1999,
2. The Copyright Act, 1957,
3. The Patents Act, 1970 and
4. 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, of course 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 case.5 It is well settled, that a court shall not
readily presume the existence of jurisdiction of a court which was not conferred by the statute.
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 erasure. 7 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 justified.
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
favour and his suffering an irreparable injury in the absence of grant of injunction.9 The court
under section 54 of Specific Relief Act has discretion to grant perpetual injunction.

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REMEDIES UNDER COPYRIGHT ACT

The Act extends protection to the work by conferring certain exclusive rights on the author. The
act provides for civil remedies10 by 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 ‗owner11‘ and not to a prospective owner’. Injunction is an equitable 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.
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.

REMEDIES UNDER PATENTS ACT 1970

Where any person threatens any other person by any means, with proceedings for infringement
of a patent,15 any person aggrieved thereby may bring a suit against him praying for following
reliefs:
i. A declaration that the threats are unjustifiable;
ii. An injunction against continuance of threats; and
iii. Such damages, if any.
However, a mere notification of existing of a patent does not constitute a threat of proceeding.16
Injunctions,17 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
infringing.18

REMEDIES UNDER THE DESIGNS ACT

The Designs Act provide for two remedies, alternate to each other, 19 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.

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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.

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 owner‘s 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.

REMEDIES FOR INFRINGEMENT

The rights of an intellectual property owner are different in respect of each type of intellectual
property right – copyright, designs, trademarks, patents and confidential information protect
different types of assets. These individual areas of protection may also overlap.
There are certain types of Court order which are general to all types of intellectual property.
Thus if a right has been infringed or breached, the Courts will generally:
1. grant an injunction to restrain any future infringement or breach of that right by the
defendant - if the defendant does continue to infringe the right in breach of an injunction
then he is in contempt of Court and is liable to be sent to prison and/or fined, and if the
contemnor is a company, it is liable to be fined, to have its assets taken out of its control
and/or to be managed by Court appointed managers); and
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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AVAILABILITY OF REMEDIES FOR

INFRINGEMENT
This collection of remedies available to intellectual property rights owners is an impressive
suite of potential orders to address and correct unlawful conduct flowing from infringement.
Other than damages or an account of profits, these remedies are aimed to restore the IP
owner‘s exclusivity of use of the intellectual property rights in question. Courts have also
been known to order that the defendant published newspaper and journal advertisements
notifying the relevant public of the infringement and the correcting the position.
The remedies are designed to prevent further distribution of infringing goods, to discover
where infringing materials originate and to whom they have been sent. These remedies fall
under the categories of:
a. remedies for infringement;
b. statutory remedies for delivery up and seizure of infringing goods, and
c. Interim relief.

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

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award of damages or an account of profits in favour of the claimant for the infringing acts of
the defendant.

DELIVERY UP AND DESTRUCTION

Delivery up is another form of ancillary relief which exists to ensure that the relief granted to
the claimant for infringement is effective. English courts have an inherent jurisdiction and
statutory jurisdiction to make order for the delivery of articles which infringe the intellectual
property rights of the owner.
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.

DAMAGES FOR INFRINGEMENT

This is the most common remedy sought by IP rights owners whose intellectual property has
been infringed. A successful claimant is entitled to damages for any harm caused which
flows directly and naturally from the infringement. To be recoverable, the loss claimed must
have been caused by the infringement. To put it another way, the infringement must be the
effective cause of the loss suffered by the intellectual property rights owner.
The claimant must prove the loss suffered at the hands of the infringer; however the court
will usually assume that the acts of the infringer have caused harm. Where the loss suffered
in monetary terms is not amenable to quantification by mathematical calculation, the court
will do conduct its investigation to arrive at a fair figure to award by way of damages. An
infringer, who examines a work and judiciously selects the parts of the work and thereby
infringes only part of the work, may be found liable for infringing the entire work.
There are several categories of case in respect to the approach the court is likely to take to
calculate damages. These broad categories are
a. manufacturers,
b. licensors and
c. others.

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

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would 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 claimant‘s 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.

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.

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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
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.

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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.

IMPORTANT JUDGMENTS ON INTELLECTUAL

PROPERTY RIGHTS COVERING INFRINGEMENT
ISSUES
Bajaj Auto Limited Vs. TVS Motor Company Limited1
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.

Bayer Corporation Vs. Union of India2

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 (Cipla‘s) 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 subsisting over that drug. It also claimed that CIPLA‘s ―SORANIB is a ―Spurious
Drug‖ as defined under the Drugs Act, for which market approval cannot be granted.

1
JT 2009 (12) SC 103
2
162(2009) DLT 371

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The Hon‘ble 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 India‘s 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 CIPLA‘s
―SORANIB‖ cannot come under the category of spurious goods as there is no element of
passing off like deception or imitation present in CIPLA‘s drug.

Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr3
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 defendant‘s 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
the registered trade mark by the defendant, subject to the condition that the court is prima
facie convinced of invalidity of registration of the defendant‘s 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.

The Coca-Cola Company Vs. Bisleri International Pvt. Ltd4

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

3
MANU/DE/0797/2009
4
Manu/DE/2698/2009

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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.

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CONCLUSION
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
world.

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BIBLOGRAPHY
BOOKS REFERRED
Kailasam and Vedaraman Law of Trademarks and Patent Geographical-indications

 Act-Intellectual Property Rights (Pocket Size Edn.)

 Intellectual Property Rights in India by VK Ahuja

 Venkateswaran on Law of Trademark law and Passing off by Kapil Wadhwa, Dr.

 Abhishek Manu Singhvi Law Relating to Intellectual Property Rights by Dr. M.K
Bhandari

 JOURNALS REFERRED India Law Journal

 Indian Society of International Law

 Journal of Law and Economics.s

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