I. General :
The importance of Judiciary in a democratic set up for
protection of personal and proprietary rights can hardly be overestimated. The
principal function of Judiciary is to provide legal remedies against
infringement of personal and property rights of persons.
The intellectual property rights for their effectiveness
depend upon the speed with which they
can be enforced by the courts. The statutory provisions provide only a modicum
of direction as regards the nature of remedies and the procedure for
safeguarding them, leaving a large extent of freeplay within the province of
judges.
Infringement of intellectual property rights is a tortuous
invasion of property. The common law developed several heads of liability
constituting the economic torts. “Their
general characteristics are that the defendant must be acting intentionally or
recklessly; that the plaintiff must suffer or be about to suffer damage; and that they will not apply if some
ground of justification is open to the defendant” (Intellectual Property :
Patents, Copyright, Trade Marks and Allied Rights, (Second Edition) page 28 by
W.R.Cornish). Before statutory provisions in respect of these rights were
enacted the remedy was award of damages by the common law courts, and, remedy
by way of injunction was developed by the equity courts.
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.
II. Equality – A Constitutional Promise :
Even though certain important fundamental rights including
right to carry on any trade or business are guaranteed only to citizens, all
persons including non-citizens can claim equality before the law and equal
protection of the laws (Article 14). Therefore any arbitrary discrimination
against a person who is a non-citizen
qua his claim to be treated equally as others before the law, can be challenged
before the Courts.
Recourse to Court by law is a well recognized concept world
over and firmly entrenched in the Constitutional and other laws of India.
Therefore, any person can claim a statutorily or customarily recognized right
to property. In case of infringement of a legally recognized right recourse to
law cannot be denied and the rule of
law enshrined in Article 14 of the Constitution will enable any person
including a non citizen to approach the legal forum of the country for
redressal of his grievances. In India, as provided by Section 83 of the Code of Civil Procedure alien friends may sue
in any Court otherwise competent to try the suit, as if they were citizens of
India. The alien enemies whether
residing in India or in a foreign Country shall not sue in any such Court without
the permission of the Central Government.
Ordinarily, violation of Intellectual Property Rights has a
private dimension in as much as it affects
the proprietary rights of individuals and may cause financial loss and
loss of credit to the owner. Therefore, the questions of national or public
interest would rarely arise when redressal is sought by a non-citizen for
violation of such proprietary rights by the infringer. The judiciary is bound
to implement the laws and redress grievances of all persons including aliens to
uphold their common law or statutorily recognized rights.
III. Constitutional directive to respect treaty obligations :
As provided
by Article 51(c) of the Constitution of India, the State is under a
constitutional directive to endeavour to foster respect for international law
and treaty obligations in the dealings of the organized peoples with one
another. Though the directive principles of State Policy cannot be enforced in
the Municipal Courts, they are nonetheless fundamental in the governance of the
Country. The definition of ‘State’ given in Article 12 for part III of the
Constitution relating to Fundamental Rights and incorporated in Article 36 for
Part IV which contains the Directive Principles of State Policy; is very wide and
includes judicial and quasi-judicial authorities also. Therefore, the courts in
India are obliged to endeavour to foster respect for international law and
obligations under the international treaties.
The constitutional concern for respecting international law
including international treaties and conventions is also reflected in Article
253 which, notwithstanding the distribution of legislative powers between the
Federal Union and the States, empowers the Parliament to make law for the whole
or any part of the territory of India for implementing any treaty,
agreement or convention with any other
Country or Countries or any decision made at any international Conference,
association or other body. The Parliament is under Article 246 read with entry
14 of the Union List of subjects on which it can legislate contained in
Schedule VII of the Constitution, empowered to legislate with respect to the
subject of entering into treaties and
agreements with foreign countries and implementing of treaties, agreements and
conventions with foreign countries. However, barring treaties which require
legislation to be made, the international agreements entered into by the Union
in exercise of its executive power under Article 73 which are not contrary to
law are required to be recognized by
the Municipal Courts. For entering into treaty or bringing it in force for
India, it is not a Constitutional requirement that the executive should have
the support of Parliamentary legislation. (Maganbhai V. Union of India, AIR
1969 SC 783) The subject of
Patents, inventions and designs; copyright; trade marks and merchandise marks
is assigned to the Parliament under entry 49 of the Union List for the purpose
of legislation.
IV. Developed Judicial System :
India has a
highly developed judicial system with the Supreme Court having plenary powers
(Article 142) to make any order for
doing complete justice in any cause or matter and a mandate in the Constitution
(Article 144), to all authorities, Civil and Judicial, in the territory of India
to act in aide of the Supreme Court. The scope of Writ Jurisdiction of the High
Courts (Article 226) is wiser than traditionally understood and the judiciary
is separate and independent of the executive to ensure impartiality in
administration of justice. The judiciary has a central role to play in this
thriving democracy and shuns arbitrary executive action. The higher judiciary
has been empowered to pronounce upon the legislative competence of the law
making bodies and the validity of a legal provision. The range of judicial
review recognized in the higher judiciary in India is the widest and most
extensive known to any democratic set up in the world.
The Civil Courts have jurisdiction to try all suits of a
civil nature excepting suits of which their cognizance is either expressly or
impliedly barred. (Section 9 of the Code of Civil Procedure). The exclusion of
jurisdiction of a Civil Court to entertain civil causes is not readily inferred
and there is a presumption in favour of the
jurisdiction of a Civil Court. As noted above aliens may sue in any
court as if they were citizens of India (Section 83 of Code of Civil
Procedure). Therefore, in respect of violation of any property rights including
intellectual property rights any aggrieved person can resort to remedies
available under the Indian law in any court which has jurisdiction in the
matter. Aliens and Foreign corporation can invoke the principle of equality before the law enshrined in Article
14 of the Constitution of India which applies to ‘any person’ and is not
limited to citizens. This should allay any doubts in the International
Community about the protection of the legitimate interests of their nationals
who may have to seek redressal in this country, of their grievances against
violation of their legal rights.
V. Recognition of Intellectual Property Rights not new to
Indian Courts:
Even before India became independent there were intellectual
property laws viz. the Indian Patent and Designs Act, 1911; The Indian Copy
Rights Act, 1914; The Indian Merchandise Marks Act, 1889 and the Trade Marks
Act, 1940 which though repealed by the corresponding laws namely Patents Act,
1970 (Section 162 repealing Patents and Designs Act 1911 in sofar as it related
to Patents), The Copyright Act, 1957 (Section 79) and Trade and Merchandise
Marks Act, 1958 (Section 136), the existing rights, and liabilities as also the
decisions taken under the repealed laws were saved. The valuable private
proprietary rights of the owners of intellectual property or their assignees
enjoyed previously to the governmental changes cannot be swept clean out of
existence by some malign magic. The Constitutional change bringing India into
existence as a sovereign power (Indian Independence Act 1947 since repealed by
Article 395 of the Constitution of India) which was supposed to have affected
public rights and national status, was not intended to interfere with private
rights of property, whether real or personal, whether based on common law or
the statute law and whether owned by persons residing inside or outside the
territory which may even affect the citizens of India who may have acquired
sub-interests in the property in question by way of lien, assignment or
trust. All the existing laws were to
continue in force subject to the provisions of the Constitution (See Article
372). The onus that the plaintiff’s existing rights in the intellectual
property have been confiscated or extinguished, expressly or by necessary
implication as a result of political changes would clearly be on the defendant.
Emergence of a new state or change of sovereignty within a State does not bring
about any change in the private rights of its citizens or the laws governing
such rights. Law once established continues
to operate until changed by a competent legislative power. It is not
changed merely by change of Sovereignty. Therefore, the Courts have with them
while dealing with infringement of Intellectual Property rights a wealth of
past experiences and judicial approaches in such matters to draw upon and to
view these proprietary rights in their proper perspective.
VI. Courts’ Powers under the present Intellectual Property Laws :
The Courts
in India are empowered under the municipal laws to grant reliefs against
violation of Intellectual Property rights, and the parameters reflected in Part
III of the TRIPS Agreement are already adopted enabling the
courts to protect these private rights. This can be briefly outlined :
(A) Copyrights
: The Civil proceedings in respect
of the infringement of Copyright or any other right conferred by the copyright
Act can be instituted in the District Court having jurisdiction (Section 62).
The civil remedies available for the infringement of the copyright are by way
of injunction, damages accounts and otherwise as are or may be provided by law
for such infringements (Section 55). There is a rebuttable presumption that
the person whose name appears on the
work or the copies of the work as published, is the author or the publisher of
the work, as the case may be (Section 55(2). Independently of his copyright,
the author of a work has a special right to claim authorship of the work and to
restrain or claim damages in respect of any distortion, mutilation,
modification or other act which is done before the expiration of the term of
copyright if such deviation would be
prejudicial to the honour or reputation of the author (Section 57). The
infringing material (copies and plates) will be deemed to be the property of
the owner of the copyright (Section 58). Remedy in the case of groundless
threat of legal proceedings is by way of a declaratory suit that the
infringement alleged was in fact not any infringement of any legal rights of
the person making such threats and the court can grant an injunction against
continuance of groundless threats and award
damages sustained by the owner by reason of such threats, except where
the person making such threats, with due diligence commences and prosecutes an
action for infringement of the copyright claimed by him. (Section 60). Though no
copyright can be claimed except as provided by the Act it is specifically
provided that there will be no abrogation of any right or jurisdiction to
restrain a breach of trust or confidence. (Section 16).
The Central Government by Section 40 is empowered to direct
that all or any of the provisions of the Copyright Act shall apply to foreign
works. The government has made the
International Copyright Order, 1991 applying the provisions of the Copyright
Act as indicated in paragraph 3 of the Order, except those of Chapter VIII
relating to Rights and Broadcasting Organisation and of Performers and the
provisions which apply exclusively to Indian Works, to the Bern Conventions
Countries and the Universal Copyright Convention Countries.
(B)
Patents and Designs : The suits for a declaration as to non-infringement (Section 105 of
the Patents Act), or, for any relief in cases of groundless threats of
infringement proceedings (Section 106), or, for infringement of a patent
(Section 107, 108), shall be instituted in a District Court having jurisdiction
(Section 104). However, if there is a counter claim for revocation of patent,
the suit and the counter claim shall be transferred to the High Court for
decision. The Court in cases of
groundless threats of infringement proceedings is empowered to a give
declaration that the threats are unjustifiable, issue injunction against their
discontinuance and award damages, if any, as he has sustained (Section 106). In
any suit for infringement a court may grant an injunction (subject to such
terms as the court thinks fit) and, at the option of the plaintiff either
damages or an account of profits (Section 108) Appeal lies to the High Court
against the decision, order or direction of the Controlled as provided by
Section 116(2).
For piracy of any registered design by a person he
will be liable for every contravention of Section 53 of the Designs Act, 1911
to pay to the registered proprietor of the design a sum not exceeding Rs. 500/-
(but not exceeding in all Rs. 1000/- in
respect of any one design) as a contract debt or if the proprietor elects
to bring a suit for recovery of damages for such contravention and for an
injunction against repetition thereof, to pay damages as may be awarded and to
be restrained by injunction (Section 53(2) of the Designs Act, 1911). Remedy in
case of groundless threats of legal proceedings by a patentee will mutates
mutandis apply in the case of registered designs (section 54 of Designs Act,
1911).
(C)
Trade Marks : Suits for the infringement of a registered
trade mark or relating to any right in such trademark or for passing off are to
be instituted in a Court not inferior to a District Court (Section 106 of the
Trade and Merchandise Marks Act, 1958). The Court is empowered to grant in such
suit an injunction subject to such terms, as the court thinks fit, and at the
option of the Plaintiff, either damages or an account of profits. (Section
106).
VII. Statutory
interpretation and treaties :
In
interpreting a statute, the Courts in India would, so far as its language
permits, construe it so as not to be inconsistent with the comity of nations or
the established rules of International law. If the terms of the legislation are
not clear and are reasonably capable of more than one meaning, the
international agreements or conventions on the points become relevant, for,
there is a prima facie presumption that Parliament does not intend to act in
breach of International law, including therein specific treaty obligations; and
if one of the meanings which can reasonably be ascribed to the legislation is
consonant with the treaty obligations and the other is not, the meaning which
is consonant is to be preferred. (Kubic
Dariusz V. Union of India AIR 1990 SC
605, 615, Saloman V. Commissioner of Customs & Excise (1966) 3 ALL ER 871
(CA)). Where an international agreement is incorporated in an Indian
Statute, the statute should be
construed with a view to attaining
uniformity in the different jurisdictions in which the agreement operates. This
would ordinarily be the approach of Courts in India while dealing with the
matters relating to intellectual property rights which is warranted by the
Constitutional directive to the State to foster respect for International law
and treaty obligations (Article 51).
Outside certain exceptional cases, such as a treaty
providing for a money to a foreign power which must be withdrawn from the
Consolidated Fund of India a treaty affecting the justiciable rights of a
citizen or affecting life or liberty or the imposition of a tax which can be
done only by legislation, it is
competent for the executive to enter
into treaties binding on India. Where
the treaties envisage enactment or change of municipal law the Courts
will not be in a position to directly implement the treaty provision until it
gets incorporated in the municipal law. Therefore, while it would be obligatory
on the part of the State under the International law to make provisions in its laws as agreed to under a treaty, the obligation cannot be enforced
in a municipal court. However, where the municipal law on the subject is
not in any way inconsistent with the treaty obligations undertaken by the
Executive, while implementing the municipal law, that aspect will assume great significance and its implementation
will be done by the municipal courts in furtherance of the fulfillment of the
obligations undertaken by the Executive which do not require to be followed up
by any legislative action.
VIII. Courts’ discretionary powers and treaties :
In the
field where the law courts enjoy
discretion such as while granting interlocutory reliefs or imposing conditions
while making discretionary orders, the Courts can and should keep in view the
treaty obligations which bind the State and
make orders and impose conditions which are supported by the provisions
of binding treaties and conventions. The extent to which rights and obligations
of the owners of the intellectual property rights and infringers would get
affected in the jurisdictions other than its own can also be one of the
parameters to be kept in mind by the
municipal court for the sound exercise of its discretionary powers.
Therefore, while the role of judiciary is confined to the four corners of the
statutory provisions governing the intellectual property rights, its discretionary powers enable it to
legitimately take into account the
ramifications that its discretionary orders would have in the context of
the wider horizons of the intellectual property rights.
India has been party to important treaties and conventions
on Intellectual Property, though due to certain internal compulsions, its
approach has been somewhat cautious in
certain fields. As a member of the WIPO
it has important role to play for encouraging
creative activity and promoting
the protection of intellectual property throughout the world. As member of the
WTO the TRIPS Agreement binds it under Article
II 2 of the WTO Agreement. It is therefore under a treaty obligation to give effect to the
provisions of the TRIPS Agreement
for adequate protection of Intellectual Property rights. The Courts
exercising jurisdiction under the Intellectual Property laws have to provide
effective and expeditious remedies against any act of infringement of
intellectual property rights keeping in
view the treaty obligations undertaken by the State in the process of
interpretation of the statutory provisions, exercise of its discretion and
granting adequate reliefs against the
infringements of the intellectual property rights.
IX. Judicial review of administrative and Quasi Judicial orders :
Against the orders of the administrative or quasi-judicial
authorities empowered to take decisions interalia on the question of
registration, recognition, revocation, cancellation or imposition of conditions
under the intellectual property laws, judicial review is permissible as an
effective check on any arbitrary or illegal action. The writ jurisdiction of
the High Court is effectively invoked for ensuring that the authorities act
within the bounds of their powers, do
not take any biased attitude; do not act arbitrarily, do not deny equality
before the law to the concerned person, observe principles of natural justice
and fair play in making orders or
taking action, pass reasoned orders and
communicate their decisions to the affected party to enable them to challenge
any adverse decision. Due to the rapid growth of the administrative law,
requirement of making a reasoned order has emerged as a basic principle of
natural justice in addition to the two traditionally recognized principles of
natural justice namely ‘ No man shall be a judge of his own cause’ and that
‘No on should be condemned unheard’
(See Siemens Engineering V. Union of India, AIR 1976 SC 1785 = (1976)2 SCC 981;
M.P. Industries V. Union of India AIR 1966 S.C 671: (1966) 1 SCR 466).
X. Injunctions:
The
statutory safeguards against infringement of the intellectual property rights in form of injunction
and damages are universally recognized. Apart from the specific
provisions of empowering the Courts to
issue injunction contained in the Intellectual Property laws as noted above, there are provisions in
the specific Relief Act for grant of preventive relief by injunction, temporary
or perpetual, at the discretion of the court (Section 36, 37, 38). A perpetual
injunction can only be granted by the
decree made at the hearing and upon the
merits of the suit and the defendant is thereby perpetually enjoined from the
assertion of a right, or from the commission of an act, which would be contrary
to the rights of the Plaintiff. (Section 37(2) of the Specific Relief Act).
Temporary injunctions can be granted during the pendency of the suit and are
regulated by the code of Civil Procedure (O.XXXIX).
In the field of intellectual property, injunction is almost
always prohibitory in nature. Till the infringement of a right is established
at the trial, interlocutory injunction would constitute a temporary
redress to be granted at the discretion
of the court and has great deal of practical efficacy. The interim period is
sometimes very long because of the
delays in the disposal of the trial. It would therefore be important for the
courts to invariably impose a condition on the plaintiff to undertake to make good any damage suffered by any
defendant from the injunction, should
the plaintiff fail at the trial.
(See Harmen Pictures V. Osborne (1967)2 ALL E.R.324). This principle of
indemnification is incorporated in Article 48 of the TRIPS Agreement and ought to be specifically incorporated in
the provisions of O.XXXIX of the Code of Civil
Procedure, relating to temporary
injunctions and interlocutory orders as a specific rule. There is of
course a general provision under
Section 144 of the Code for applying for restitution; where the orders are
vacated. The courts, however, have ample discretion to impose terms and
conditions while granting interlocutory orders or taking provisional measures
to ensure appropriate compensation being paid to the defendant who ultimately
is found not to have done any infringement. The experience however has shown
that though the courts have discretion to impose such conditions, by and large
it is not imposed leaving scope for the unscrupulous plaintiff to act with
impunity. The courts are empowered to make interlocutory orders under O.XXXIX
Rule 7 of the Code for detention, inspection or preservation of any
property which is the subject matter of
the suit and for this purpose to authorize any person to enter upon or into any
premises in possession of any other party and
authorize samples to be taken. Exparte orders of this nature can be made
under Rule 8(3). Thus it was already within the jurisdiction of the Indian
Courts to make orders under the
procedural rules contained in the Code like Anton Piller order or the Mareva
injunction. Where no specific provisions is made it has inherent jurisdiction
under Section 151 of the Code to make orders necessary for the ends of justice.
