Role To Be Played By Judiciary Under Intellectual Property Laws

Article for Blog Post Writing Competition 2011 | by Deepankar Sharma

April 28th, 20119:48 pm

The judiciary plays two distinct roles in relation to IP:

1. Interpretation of the various IP Statutes.

2. Adjudication of IP Matters.

1. Interpretation of the several of IP Statutes.

India under its commitment under the TRIPs has introduced many IP legislations to modernize its age-old IP legislations in order to be in harmony with the international laws. The new laws modifying existing provisions or introducing new provisions have been rushed through without weighing the long-term implications of such legislations. The judiciary would have an important role in interpreting these news laws if any conflicts arise with other existing statutes.

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. 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Outside certain exceptional cases, such as a treaty providing for a money to a foreign power which must be withdrawn from the Consolidated Fund of India a treaty affecting the justifiable rights of a citizen or affecting life or liberty or the imposition of a tax which can be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.

2. Adjudication of IP Matters.

To comprehend the role of the judiciary in relation to adjudication of IP matters we have to look into the genesis of IP and the life cycle of IP.

The four stages of the life cycle as illustrated are:

(1) Creating the intellectual property,

(2) Protecting the intellectual property,

(3) Utilizing the intellectual property and

(4) Enforcing the intellectual property.




The judiciary actively contributes in the first state by enforcing Contractual Obligations arising out contracts dealing with IP. It is important to note that the Article 300-A4 of the Constitution of India guarantees that no person shall be deprived of property, which in relevance to IP ensure the right of the inventor/author over his or her invention/work. All such contractual agreements that deal with the transfer of IP are also governed under the Indian Contracts Act. Disputes often arise over the ownership of IP.


The second step in the IP Life cycle is the protection of IP that is created. There are different forms of IP Protection available in India: Patent Designs Trade & Service Mark & Company Names Copyright Plant varieties & Plant breeder’s rights Trade Secrets Geographical Indications All the above listed forms of IP protection are implemented by means of respective Statutes like the Indian Patents Act, The Indian Trade & Merchandise Act etc. Theses Statutes that protect the individual IP tools have established Quasi-Judicial Authorities & Bodies like the: Controller of Patents & Designs Registrar of Trademarks & the Trademarks Appellate Board Registrar of Copyrights & the Copyright Board All these officers are conferred with various statutory powers for the discharge of their functions. Appeal lies against any order or decision of the Registrar/Controller to the respective Appellate Boards. In case of failure on the part of the authorities in discharging their duties or any arbitrary decisions in excess of their powers, judicial remedies can be sought. The judiciary before entertaining any matter in this regard it must be ensured that the appellant/plaintiff has fully exhausted other available statutory remedies as provided in the respective Acts before approaching the Court.


The third stage in the IP Life Cycle that is utilizing and strategically exploiting IP may involve licensing and cross-licensing arrangements, assignments, transfer of property etc. Legal implications arise out of such instances. Provision of statutes like the Indian Contracts Act, Indian Stamp Act, and Transfer of Property Act etc. are applicable to the licensing arrangements. The courts role in this regard also relates to the disputes arising of IP Contracts. The Indian Patent Act provides for remedies against the abuse of the monopoly rights granted under a patent. In spite of the grant of a compulsory licence if the reasonable requirement of the public remains unsatisfied or that the patented invention is not available to the public at a reasonable price, the Controller of Patents may revoke the patent. Compulsory Licences are also available for copyright under the Section #2 A of The Copyright Act to reproduce and publish works at a reasonable price. All such decisions by the quasi judicial authorities can be appealed in courts.


The fourth stage, enforcing the intellectual property, is the most important stage in the lifeline of an intellectual property. This stage prevents others from unauthorized utilisation and exploitation of protected intellectual property for the duration of the protection. Misappropriation & Infringement of Intellectual Property is a crime and the Statutes governing IP list out as what constitutes and infringement.

Principles/Tests of Infringement of Intellectual Property

Courts follow certain principles/tests to ascertain the alleged infringement. These tests have evolved from preceding case and principles put forth by eminent jurisprudents.

Principles relating to copyright infringement were set out by the Supreme Court in the R.G. Anand vs Delux Films case after considering a number of English, Indian and American authorities.

The task of a judge is to look at the two articles (i.e. the registered and the infringing article), to observe their similarity and differences, to see them together and separately, and to bear in mind that in the end the question whether or not the design of the defendants’ article is substantially different from that of the plaintiff is to be answered by consideration of the respective designs as a whole, and viewed through the eyes of the consumer or customer, Common trade usage and trade variants and the degree of novelty in the registered design must be considered. The statement of novelty in the registered design and the state of knowledge at the date of registration must be taken into account. A difference in scale cannot be regarded as evidence of dissimilarity of design.

In patent infringement proceedings the onus of establishing infringement is on the plaintiff. In order to constitute infringement the defendant must be shown to have taken the invention claimed in substance. As to what real substance of the invention, whether it be a combination or a process must be decided on the evidence. Inducement to infringe (Contributory Infringement) is also an offence. A suit for infringement can be instituted only after the grant of the patent.

Remedies for Infringement of Intellectual Property

The judiciary should ensure that the remedies for intellectual property infringement consists of should sufficient punishment so as to cause deterrence of wrongful activity. Deterrence is crucial since violations of intellectual property rights often involve no loss of tangible assets and do not even require any direct contact with the rights holder, the rights holder often does not know it is a victim until a defendant’s activities are specifically identified and investigated.


Article By

Deepankar Sharma

Student, 3RD Year, BA. LLB. (Hons.)

(Jaipur National University), Jaipur

[Submitted as an entry for the Blog Post Writing Competition, 2011]


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