Reshaping perceptions about Indian IP law

The past few years have seen many developments in the Indian IP regime. The judiciary has consistently delivered landmark decisions in every field of IP, be it patents, copyright, or trade marks. The government has gained widespread global appreciation for its numerous initiatives to strengthen IP, while the legislature has passed new laws that not only prioritise IP disputes (due to their commercial importance), but ensure that they are adjudicated swiftly through specialised forums.

However, these instrumental gains seem to have been lost on authorities ranking India's performance in comparison with other nations. The Special 301 Report issued by the USTR places India in its priority watch list, while the Index published by GIPC ranks India 37 out of 38 economies.

Although India does have ground to cover before it can be said to have one of the strongest IP regimes in the world; even with the current IP infrastructure, there are no such glaring drawbacks to deserve such a ranking. In fact, certain facets of legislation, policy and the practice of IP law in India are so unique that they are unmatched anywhere else. Burgeoning investments by businesses from foreign nations and increasing decisions protecting rights holders by the judiciary are testament to India's robust IP regime.

With this in mind, this article argues that the strong suits of Indian IP jurisprudence and practice should not be overlooked when its performance is assessed.

Last year, Parliament enacted the Commercial Courts Act, 2015 classifying all IP disputes as commercial, and thus entitled to swift, expert adjudication. Meanwhile, the executive dedicated substantial resources to the improvement of IP, with the introduction of campaigns such as Make in India, Digital India, Start-up India along with the National IPR Policy. Through these campaigns, the government provides incentives to innovators to manufacture, invest and set up businesses here. These efforts ensure that not only is doing business made easier, but grievances of IP holders are given quality adjudication by expert bodies sensitive to their needs and interests, irrespective of their nationality.

Such developments on the judicial front are unprecedented, with the judiciary spearheading the campaign of invigorating IP. Landmark decisions, in sync with internationally established principles, have resulted both in the strengthening of IP, and in exponentially increasing the faith of IP holders in the judicial system.

Various aspects showcasing the true strengths of IP in India are assessed below.

It is not only statutory provisions regulating IP, but also the manner in which courts help litigants implement them, that showcase the strengths of the Indian system. The judiciary has single-handedly improved jurisprudence by such leaps and bounds that previously unheard-of legal principles have become regular features today.

With an extremely relief-centric approach, the courts have a healthy practice of Anton Pillar, Mareva and ex parte injunction orders. Conducting cross-examinations of witnesses through video recordings and setting strictly fixed timelines for trials are some steps that are taken specifically to protect the interests of international entities.

Several strong suits of the manner in which IP is practised in courts in India are shown in table 1.

Table 1
S.No	Strength
1	Award of compensatory and punitive damages in litigation
2	Award of recovery of actual costs of litigation
3	Frequently awarded ex parte interim injunctions
4	Frequently awarded Anton Pillar orders
5	Frequently awarded Mareva Injunctions
6	Frequently awarded John Doe orders against unidentified Defendants
7	Establishment of Commercial Courts for speedy and efficient adjudication
8	Speedy adjudication through Fast Track Trials
9	Enforcement of the Hague Convention for transmission and recordal of evidence from countries abroad
10	Strong precedent on consumer protection
11	Easy recordal of evidence from countries abroad
12	Neutral, active and strong media reporting of litigation
13	Efficient Training Institutes for judges
14	Use of English as the first language in the judiciary
15	Establishment of electronic courts to reduce paper, enhance network and infrastructure
16	Strong contempt jurisdiction
17	Strong system on substantiating judgments with reasons
18	Strong system on following established precedent: Stare Decisis
19	Infrastructure facilitating easy enforcement of foreign decrees
20	Healthy support for Alternate Dispute Resolution (ADR) procedures

It can be safely stated that Indian trade mark law can stand its ground against any other regime in the world, in addition to having factors in its kitty which are unique to India.

While trans-border reputation of trade marks and their declaration as being well-known have been established for years now, recent decisions have extended this status to unregistered marks too (Toyota Jidosha Kabushiki Kaisha v Mr Deepak Mangal & Ors, CS (OS) 2490 of 2009, judgment dated July 8 2016, The High Court of Delhi). Moreover, when only a few regimes confer protection to unconventional trade marks, India does that and a lot more, being one of the few countries to have declared even colour-marks as well known (Deere & Co v S Harcharan Singh, CS (OS) 3670 of 2014, The High Court of Delhi).

Brand-owners have also been given the liberty to institute lawsuits at those forums where they reside or conduct business. This is a special privilege offered only in trade mark and copyright law, since every other field of law requires one to institute suits at forums where the defendant resides, among other grounds. Some strong suits of trademark law in India are shown in table 2.

Table 2
S.No	Strength
1	Strong protection of unconventional trademarks
2	Recognition of trans-border reputation without physical presence of the mark in India
3	Establishment of prima fade validity of registered trademarks
4	Availability of common law remedy of passing off for unregistered trademarks
5	Protection of marks used prior in time against subsequently registered trademarks: Prior Use trumps Registration
6	Recognition of partial assignment of trademarks, either with or without goodwill
7	Reversal of normal rule for jurisdiction - Plaintiff entitled to sue where he resides or conducts business
8	Strong practice of recognizing well-known trademarks

The 2013 amendments to the Copyright Act, 1957 led to the implementation of several provisions that strengthened the law and brought it closer to established international practices. Added provisions on the extension of moral rights to authors, mandatory payment of royalty to different entities involved in a copyrighted work, extended protection terms to photographs and other works have bolstered the regime further.

Moreover, the established practice de-hors these amendments had ensured that the menace of counterfeiting and online piracy was well addressed. India has been home to website blocking orders and restraining infringing activities of hyperlinking, meta-tagging (Tata Sons Limited v Bodacious Tatas & Ors, Order of September 8 1999, CS (OS) 1991 of 1999, The High Court of Delhi), phishing, framing, etc. The fact that these orders were passed at a time when India was warming up to the notion of the internet showcases the constantly proactive approach of the judiciary.

The importance of protecting trade secrets has been well recognised for many years, and there is strong precedent for their protection. In fact, the absence of a dedicated law has motivated the judiciary to develop innovative methods to protect trade secrets more fiercely, such as the categorisation of such disputes as commercial disputes, entitling them to swift and expert adjudication (Sanofi Winthrop v Dr Kirti B Maheswhari & Ors. , CS (OS) 2265 of 2014, order dated January 7 2016, The High Court of Delhi).

Several strong suits of Indian IP are shown in the table 3.

Table 3
S.No	Strength
1	Healthy practice of orders blocking websites hosting infringing content
2	Various orders preventing impermissible internet activities such as hyper-linking, framing, phishing
3	Legislative protection and judicial enforcement of Moral Rights
4	Healthy record of copyright protection to characters
5	infrastructure in place for Digital Rights Management, Data Privacy and Disclosure
6	Effective protection of trade-secrets through judicial orders
7	Effective formation of confidentiality clubs in litigation to prevent dissemination
8	Authority with powers of self-regulation code for advertisements (ASCI)
9	Legislative protection for and judicial enforcement of broadcasting production rights
10	Legislative protection and judicial enforcement of performers’ rights
11	Copyright protection extended to unregistered works
12	Availability of resale royalty rights
13	Reversal of normal territorial jurisdiction - Copyright holder permitted to institute a lawsuit at a forum of residence or business

Patent law has grown the most among all fields, with immediate steps being taken to reshape perception whenever it turned sour.

Difficulties caused to patentees due to delays in prosecution of patents saw the judiciary directing the Patent Office to mandatorily increase its workforce and improve resources (Nitto Denko v Union of India). Recent trends have seen India rejecting applications for compulsory licences at the very outset, such as in case of Lee Pharma Limited v AstraZeneca AB (CLA No 1 of 2015, order dated January 19 2016, The Controller General of Patents). Disclosure requirements of international prosecution of patents were heavily toned down, and their non-compliance no longer necessarily leads to patent revocation (Sukesh Behl v Koninklijke Phillips Electronics, FAO (OS) 16 of 2014). Moreover, the judiciary has enforced patent rights even in situations where the patentee apprehends sale of infringing products (Bristol Myers Squibb Company & Ors v JD Joshi & Anr, judgment dated June 29 2015 in CS (OS) 2303 of 2009, The High Court of Delhi). This concept of quia timet actions, a regular feature in India today, was unheard of previously.

More importantly, India witnessed its first final decisions in contested patent litigation, where a finding of infringement was conclusively given by the judiciary in the Merck and Roche litigation (Merck Sharp & Dohme Corporation v Glenmark Pharmaceuticals Ltd , judgment dated October 7 2015 in CS(OS) 586/2013, The High Court of Delhi and Cipla Ltd v F Hoffmann-La Roche Ltd, judgment dated November 27 2015, The High Court of Delhi). These decisions have clarified that the controversial section 3(d) does not provide a defence to patent infringement and that it is only a patent eligibility criterion.

Other factors responsible for the strength of patent law are shown in table 4.

Table 4
S.No	Field
1	Effective injunctions based on Quia-timet actions (interim injunctions including exparte orders)
2	Conclusive determination of patent infringement after fast-track trial
3	India is a signatory to the Paris Convention Treaty, Budapest Treaty on deposit microorganisms and Hague Treaty on Industrial Design
4	“Singular” attack on validity through a post grant opposition, revocation before IPAB or a counter claim in a suit
5	Follow principle of Natural Justice eg- Audi Alteram Partem
6	Legislative Bolar Exemptions to patent infringement
7	Facilitation of post-grant amendment in patents including by infringement courts
8	India was ranked the 17th International Search Authority and International Preliminary Examining Authority by WIPO

India has a very strong infrastructure protecting geographical indications and plant varieties. Besides dedicating specialised laws for these fields, India is one of the few countries to maintain a database of traditional knowledge. The Traditional Knowledge Digital Library (TKDL), containing information on 2,226,000 medicinal formulations, is a tremendous success and has greatly assisted patent examiners while searching for prior art and has also enabled India to bring about the cancellation or withdrawal of 36 patent applications for traditionally known medical formulations (Protecting India's Traditional Knowledge, WIPO Magazine, June 2011).

In the backdrop of a strengthening IP system, the National IPR Policy, along with other campaigns, offers several incentives to entrepreneurs to ensure that India receives greater investments. Such incentives include reduced fee for patent filings for start-ups, accelerated examination of patent applications upon payment of higher fee, etc.

While the assessment of the weaknesses that India's regime suffers from is correct to a large extent, the evaluation of its strengths isn't. The main areas facing criticism in the 301 Report and the GIPC Index are given below.

In addition to summary shown in table 5, the Special 301 Report has critiqued the government's initiatives as favoring localisation and indigenous products and services.

Table 5
S.No	Special 301 report	GIPC index
Copyright
1	High online piracy requires appropriate camcording legislation	High rates of online and video piracy exist
2	Statutory licenses in line with Berne Convention required and under – reporting of cable subscriptions need addressing	Exemption from liability to intermediaries resulting in weak notice-and-take-down procedures
Trade marks
1	High rates of counterfeiting leading to immense revenue loss	High rates of counterfeiting highlighted
2	Delays in trademark prosecution and opposition causing grievance to proprietors	Inability of brand-owners to protect their mark swiftly and effectively causes concern
Trade-secrets
1	Lack of legislation protecting trade-secrets without contractual provisions	Lack of legislation protecting trade secrets without contractual provisions
2	Difficulty in claiming damages in litigation
Patents and related rights
1	Section 3(d) prohibits patent protection of incremental inventions	Section 3(d) prohibits protection of incremental inventions
2	Pre-grant and post-grant oppositions lead to duplicity	Computerized-implemented-inventions need patent protection
3	Government’s emphasis on Compulsory License Regime	Compulsory Licensing detrimental to investments
4	Cumbersome disclosure requirements for patentees

Table 6
Rank	Top 5 countries		Rank	Last 5 countries
	Name	Score		Name	Score
1	USA	28.61	28.61	Algeria	8.54
2	UK	27.53	35	Thailand	7.4
3	Germany	27.36	36	Vietnam	7.83
4	France	27.22	37	India	7.05
5	Sweden	27.12	38	Venezuela	6.42

Besides being one of 11 countries in the priority watch list in the Special 301 report, the GIPC Index ranked India at 37th ahead only of Venezuela. What is of peculiar interest is the glaring gap between the countries having the strongest and weakest performances.

With the strengths of the Indian regime mentioned above, its categorisation as one of the worst in the world is unduly harsh. The ranking agencies should have taken into account the strong suits of the regime. A few instances where the assessment failed to analyse the situation on the ground are:

Copyright and trade secrets: While cam-cording laws must definitely be enacted, the reports should have taken into account the efficient combatting of piracy with ISP blocking and injunction orders, even in quia timet situations.

Trade marks: A finding of the inability of brand owners to protect their marks in India couldn't have been farther from the truth, considering India's strong jurisprudence on protecting reputation and priority of marks, regardless of the nationality of their proprietors.

Patents: The clarification that section 3(d) does not afford a defence to patent infringement should find mention. Moreover, an isolated grant of compulsory licence must not be equated with India having a legacy of granting such licences to local entities, especially in the backdrop of recent rejections of compulsory licence applications in India.

Government's localisation incentives: Executive policies of Make-in-India, Digital-India, etc, must not be viewed as promoting local interests at the cost of international ones. These policies simply aim to improve the domestic infrastructure through international intervention and provide significant incentives to foreign and domestic entities.

A recent interview by the senior director of IP, GIPC, predicted an increase in India's performance on the Index by 2020. Mere compliance with TRIPs objectives wasn't found sufficient and India was urged to ensure that its regime employs safeguards in sync with international practices today. Such criticism will undoubtedly paralyse the growth of the Indian regime.

Certain facets warranting legislative and executive action are outlined below:

a) Consistency is required on parallel importation to enhance revenue.

b) Delays in the prosecution of trade marks need to be reduced.

a) Loss of copyright protection on articles registrable under Design law (but where registration wasn't secured) upon production of more than 50 articles needs to be done away with.

b) Responsibility of intermediaries for de-listing infringing content must be tightened.

a) Either pre-grant or post grant oppositions to a patent must be eradicated.

b) Restraints on patentability of inventions imposed by section 3(d) and section 3(k) must be addressed.

c) Grant of compulsory licences must depend upon stricter thresholds.

d) Prima facie validity of granted patents can be considered.

e) Patent term extensions must be facilitated.

f) Disclosure requirements for working of a patent, its international prosecution and consequences of its non-compliance must be relaxed.

Indian IP law has steadily plugged loopholes through the years to ensure that rights-holders do not face inconvenience due to lacunas in the system, and secure relief efficiently.

The strength of every regime lies in the balance struck between national interests and international expectations, and the past few years have seen India excel at it. Any favour extended to domestic entities by the executive is balanced by the judiciary's protection of international interests and vice-versa. India's regime is robust not only when compared to its past performance, wbut also in comparison to the existing regimes of several countries.

Evaluation of the regimes of countries by ranking agencies such as USTR and the GIPC have a significant impact since they help rights holders invest in regimes based upon such evaluation. A true and fair evaluation of India's regime is crucial to India to help prevent loss of investments from misconceptions.

Therefore, future assessment of Indian IP by the GIPC, USTR or any other agency must definitely take into account its numerous strengths, to enable the world to see how strong it truly is: "A robust system which is not the strongest amongst the strongest, but is certainly not the weakest!"

Pravin Anand
		Pravin Anand, managing partner of the firm, completed his law studies in New Delhi in 1979 and since then has been practising as an IP lawyer. He has been a counsel in several landmark IP cases involving the first Anton Piller Order (HMV cases); the first Mareva Injunction Order (Philips case); the first Norwich Pharmacal Order (Hollywood Cigarettes case); moral rights of artists (Amarnath Sehgal case); recognition for pro-bono work for rural innovators at the grass root level (National Innovation Foundation Award - Govt of India); the first order under the Hague Convention (Astra Zeneca case) and several significant cases for pharma clients such as Novartis, Pfizer and Roche. He has been president of FICPI India, AIPPI Indian National Group, APPA India and Asia Euro Forum. He is a co-author of the two volumes of Halsbury's Laws of India (Vol 20 (1) and (2) ) on Intellectual Property and the author of the India chapter in Copyright Throughout the World - WEST (Thomson Reuters). He is also on the editorial board of many leading journals on IP jurisprudence and international legal magazines such as CTLR, PLC - Life sciences, Asia IP, IBLJ, The Patent Lawyer, WIPR, Who's Who Legal - Patents, Lexis Nexis Asia IP Guide and ACCJ. He has spoken extensively as a thought leader at various forums including WIPO, AIPPI, INTA, LES, IBA, LAW ASIA and the UN Conference on LDCs in the Digital World.

Vaishali Mittal
		Vaishali Mittal, a partner at Anand and Anand, works in the litigation department of the firm. She is a law graduate from Jamia Millia Islamia University and BA history (Hons) from Delhi University where she was a gold medallist in her subject. She has been associated with the firm since 2003. She has over nine years of experience in IP spanning a wide range of subjects in highly contested IP litigation matters. She is an attorney with a strong background in IP laws and experience in litigation, prosecution, consultation and drafting. Adept at drafting legal documents and appearing before courts and tribunals, Mittal has a strong appreciation and valuable knowledge of critical strategies for litigation of IP issues in the Indian courts. Mittal is considered as one of the key pillars of the litigation department at Anand and Anand handling complex litigation with her team members. She is training younger lawyers in the art of litigation and playing a leadership role in the department. She has been involved in several landmark judgments that have brought repute to the firm and her handling of seriously contested IP matters has won several accolades from our clients. A contributor to professional law journals on IP matters, Mittal is also a member of AIPPI and INTA.