Intellectual Property Litigation in India
IP Litigation Team at SSRANA
The Founding Partners of S.S. Rana & Co., with a legacy in IP litigation practice of 55 years each serve as the guiding light and have been instrumental in driving the Firm’s IP litigation practices. It is indeed noteworthy to mention that the Founding Partners of the Firm have been engaged in some landmark IP cases which have streamlined the current IP litigation and enforcement landscape of India.
The firm is also registered as an Advocate-on-Record with the Supreme Court of India and is thus equipped to represent before all Courts i.e. from the Lowest to the Highest Court i.e.. the Hon’ble Supreme Court in the country.
Advocate- On- Record (AOR) in the Supreme Court of India
The Firm has successfully represented innumerable multinationals and Fortune 500 companies in the last 37 years in establishing their rights in the Courts of India and securing favourbale orders that have adequately safeguarded the IP rights of right holders. The Team vigorously defends clients’ IP interests through enforcement and dispute resolution actions, including mediation, litigation, injunctions, and cease-and-desist measures against infringers including surveillance.
Delhi High Court orders Sardarbuksh to stop Infringing Starbucks Trademarks and Copyrights
The IP Litigation Team has demonstrated consistent success in executing enforcement actions that have effectively safeguarded all the clients’ intellectual property rights, particularly in trademark and domain name infringement matters amongst others. Through strategic interventions and strategies, well-drafted cease-and-desist communications, and proactive negotiations, the firm has been able to secure favorable and expeditious resolutions without the need for escalation to litigation in a majority of the matters. These outcomes reflect the firm’s commitment to providing efficient, practical, and result-oriented solutions for its clients.
The firm incorporates innovation in legal strategy and practice by pioneering use of dynamic injunctions and John Doe / Anton Pillar orders for combating counterfeiting and infringement, adopting of novel procedural strategies before courts and regulatory bodies leading to precedent-setting outcomes, integrating of alternative dispute resolution mechanisms within IP and commercial disputes, and using interdisciplinary expertise, technical experts, engineers, and economists supporting litigation and advisory work and innovative enforcement models combining technology, investigation, and rapid legal action for counterfeit control.
John Doe Orders
We have been successful in obtaining John Doe Orders (also known as an “Ashok Kumar order” in India) – a court injunction issued against defendants whose identities are not yet known to the plaintiff (our clients) but believed to be committing or likely to commit infringement, fraud, or misuse. It is a preventive and protective legal remedy, usually granted ex parte, to immediately restrain the wrongful act even before the infringer’s identity is discovered and to authorize enforcement against anyone later found committing the act, in urgent situations where delay could render relief meaningless for the clients.
The Conundrum of Fake Franchise and Dealerships
Anton Piller Orders
We have also been successful in obtaining Anton Piller Orders – a court order that allows the plaintiff to enter the defendant’s premises to search for, inspect, and seize evidence—such as infringing goods, documents, or digital material to prevent its concealment, destruction, or alteration before trial. It is an extraordinary, preventive remedy granted ex parte to ensure that crucial evidence of infringement or unlawful activity is preserved, to prevent obstruction of justice by ensuring that the client can later prove infringement or wrongdoing through safeguarded materials by way of immediate preservation of evidence before the defendant can tamper with it, or engage in deliberate concealment or destruction of infringing material.
Dynamic Injunctions
We have also been successful in obtaining Dynamic Injunctions – a court order that extends automatically to cover future or newly identified infringing acts, websites, or online links without requiring the client to file a fresh case each time a new infringement occurs, is especially useful in the digital environment, where infringers create mirror websites, duplicate URLs, or new social-media accounts to evade an earlier blocking or takedown order. This injunction empowers the clients to notify authorities and internet service providers of such new infringing links, which can then be promptly blocked under the same order ensuring continuous protection without repetitive litigation.
The changing dynamics of IP litigation in India
With the abolishment of the Intellectual Property Appellate Board (IPAB) in April 2021 and subsequent establishment of the Intellectual Property Division in the High Courts of India, the IP litigation and enforcement landscape in India has transformed tremendously. The establishment of specialized IP Benches have aided in strengthening the IP ecosystem in India.
Hence, India’s IP sector has gone a structural reorientation in the last decade. Specialized IPDs in Delhi, Madras, Calcutta, with Karnataka in tow, each supported by tailored procedural rules and technical expertise have been instrumental in changing the IP adjudication ecosystem. The IPDs have passed progressive judgments, such as award of pecuniary/ exemplary damages, passing of dynamic injunctions, which have instilled trust of IP right holders in the IP litigation and enforcement landscape of India.
IP Infringement- Civil and Criminal Remedies
When any Intellectual Property Rights (IPR) of the IP owner is violated then the aggrieved party has two exclusive remedies available:
- Civil remedy
- Criminal remedy
CIVIL REMEDIES
Civil remedies can be enforced by filing a suit for infringement of IP and/or passing off in the competent court. Further in case of copyright, trademark and patent following reliefs of civil nature are available to the right holder:
i. Interlocutory/Temporary/Ad-interim Injunction
Interlocutory/Temporary/Ad-interim Injunction generally mean prohibiting an action by a party to a lawsuit until the disposal of the suit. It is discretionary relief and granted only if the plaintiff is able to establish that there is prima facie case in his favour, the balance of convenience lies in his favour and if the temporary injunction is not granted he will bear irreparable loss.
ii.Mareva Injunction
Mareva injunction is to protect the interests of the plaintiff during the pendency of the suit and is granted to restrain the defendant from disposing of their assets within the jurisdiction until the trial ends or judgment in the action for infringement is passed.
iii. Anton Pillar Orders
In appropriate cases, the court has inherent jurisdiction on an application by the plaintiff made ex parte and in camera to require the defendant to permit the plaintiff to enter his premises and take inspection of relevant documents and articles and take copies thereof or remove them for safe custody. These are known as Anton Piller orders. The necessity for such an order arises when there is grave danger of relevant documents and infringing articles being removed or destroyed, so that the ends of justice will be defeated.
iv. John Doe Orders
John Doe orders are the orders issued by the court to search and seize against unnamed/ unknown defendants; which virtually translates into untrammeled powers in the hands of the plaintiffs, aided by court-appointed local commissioners, to raid any premises where infringement activities may be carried out.
v. Permanent/Perpetual Injunction
Permanent / Perpetual Injunction is a final order of a court that a person or entity refrain from certain activities permanently or take certain actions in perpetuity.
vi. Damages or Accounts of Profits
Damages or accounts of profits are two mutually exclusive remedies granted to the Plaintiff. Damages are granted to the plaintiff to compensate for the losses suffered by the Plaintiff on account of the defendant’s acts. Accounts of profits is an equitable remedy and requires the defendant to hand over to the plaintiff the actual amounts of profits made by the him due to the infringing activities.
vii. Delivery-up and Destruction
Under this relief the infringing goods are delivered to the plaintiff or destroyed.
Related Posts
Territorial Jurisdiction of Delhi High Court in Trademark Infringement Cases
India: Court grants damages of INR 5 Lakhs for infringement of the mark ‘Nokia’
For more information on Intellectual Property Litigation in India, please write to us at info@ssrana.com.