From Idea To Empire: The Benefits Of Registering Your IP

Posted On - 25 June, 2024 • By - King Stubb & Kasiva

Introduction

The contemporary innovation age recognizes that ideas are as valuable as any physical asset.  Intellectual property (IP) rights safeguard creations, inventions, and expressions, granting exclusive ownership. Registering IP offers a strategic advantage. It strengthens legal standing, deters infringement, and unlocks opportunities for licensing and commercialization, maximizing the value of an organization’s intellectual property portfolio.

Unregistered IP offers limited legal protection. While common law rights may exist for trademarks (based on prior use) and some creative works (unpublished works under copyright law), these rights are weaker and more difficult to enforce compared to registered IP.

The benefits of registering IP like trademarks, copyrights, and patents, among others, are:

Trademarks

  • Exclusive Right to Use and Prevent Infringement: Registering a trademark grants the owner the exclusive right to use that mark for their goods or services in the registered class. This allows them to stop others from using confusingly similar marks that could mislead consumers.
  • Public Record of Ownership: Registration creates a public record of the ownership of the trademark with the trademark office. This simplifies infringement claims as ownership is readily established.
  • Presumption of Validity in Court: A registered trademark carries a presumption of validity in court. This means the burden of proof shifts to the infringer to demonstrate why the mark should not be protected. This can be a significant advantage in litigation.

Indian Case Study: Registering a trademark with the Controller General of Patents, Designs and Trademarks (CGPDTM) per the Trademarks Act, 1999[1] grants the owner the exclusive right to use that mark for their goods or services in the registered class. This allows them to stop others from using deceptively similar marks.

For instance, in Mahendra and Mahendra Paper Mills Ltd. v. Mahindra & Mahindra[2] a new company was prohibited from using “Mahendra & Mahendra” despite operating in a different industry (paper mills vs. vehicles) from the established corporation Mahindra & Mahindra. The court recognized that “Mahindra” had gained distinctiveness due to the established company’s five decades of use, and consumers would likely associate the new company’s name with the well-known brand, creating confusion. This case underscores the importance of brand reputation in trademark law, where even businesses in different sectors can infringe upon established trademarks if their names cause a likelihood of confusion.

Copyrights

  • Exclusive Rights: Registering a copyright grants the owner exclusive rights to reproduce, distribute, adapt, and display the copyrighted work. This includes literary works (books, articles), artistic works (paintings, sculptures), musical works, and audiovisual works (films, videos).
  • Strengthened Position in Infringement Lawsuits: A copyright registration certificate serves as prima facie evidence of copyright ownership in court. This strengthens the owner’s position in infringement lawsuits as they do not need to prove initial ownership, just the infringement itself.
  • Potential for Statutory Damages: Copyright registration also allows the owner to claim statutory damages in infringement cases. This means they can seek a predetermined amount of compensation set by law, instead of relying solely on proving actual financial losses.

Indian Case Study: Registering a copyright with the Copyright Office of India under the Copyright Act, 1957[3] provides prima facie evidence of ownership in court. This strengthens the owner’s position in infringement lawsuits.

For instance, in Shree Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah[4], a Bengali film, “Poran Jaye Joliya Rae,” faced copyright infringement charges for allegedly copying the Hindi blockbuster “Namastey London.”  Here, the court broadened the definition of “copy” under copyright law. Copyright infringement was not limited to just physical copies, but also encompassed creating a substantially similar film. By comparing scenes and analyzing the overall structure, the court found the Bengali film to be a derivative work infringing upon the story and screenplay of “Namastey London.” This case highlights how copyright protection extends beyond the physical form of a work and safeguards the underlying creative elements.

Patents

  • Exclusive Rights and Market Control: A registered patent grants the owner the exclusive right to make, use, sell, or import your invention for a set period (typically 20 years in India). This allows the owner to control the market for their invention and prevent others from copying it without their permission.
  • Discouraging Competitors: A strong patent portfolio deters competitors from entering the owner’s market space, as they risk infringement lawsuits. This can give them a significant competitive advantage.
  • Licensing Potential: Patents can be valuable assets. Owners can license their patent rights to other companies for a fee, generating additional revenue streams.

Indian Case Study: Registering a patent with the Patent Office of India under the Patents Act, 1970[5] grants the owner exclusive rights over the use, manufacturing, etc. of the product.

For instance, in Cipla Limited v. Novartis AG[6], Novartis, the patent holder for the COPD drug Indacaterol, sued Cipla for patent infringement. Cipla challenged the injunction, arguing Novartis was not “working” the patent in India because they only imported the drug and did not manufacture it domestically. The court disagreed. They found Novartis’ imports were sufficient to meet patient needs and that Section 83 of the Patents Act, regarding working a patent, did not restrict the patentee’s right to an injunction under Section 48. The court also rejected Cipla’s public interest argument, noting Indacaterol was not a life-saving drug. This case highlights the legal right of patent holders to enforce their rights regardless of their manufacturing location, as long as they meet market demands through imports.

The Sword of Enforcement: Taking Action Against Infringement

Venues

  • Registries: Handle opposition, cancellation, and revocation matters.
  • Courts: Deal with infringement lawsuits, appeals from registry decisions, and cancellation actions.
  • High Courts: Have specialized IP divisions and handle appeals from district courts.
  • Commercial Courts: Established under the Commercial Courts Act (CCA) for faster resolution of IP disputes.

Requirements for Jurisdiction and Venue

  • Suits are generally filed where the defendant resides/operates, or the cause of action arose.
  • Trademark/copyright infringement suits can be filed where the plaintiff resides/operates.

Obtaining Evidence

  • Anton Piller Orders: Appoint commissioners to seize infringing goods.
  • Discovery: Request documents and information from the opposing party.

Trial and Decisions

  • Decisions made by qualified judges.
  • Witnesses are examined and cross-examined by a judge (district court) or joint registrars (high court).

Infringement

  • Trademarks: Using identical/deceptively similar marks for similar/identical goods or services, or using a well-known mark.
  • Copyright: Reproducing, adapting, or publicly communicating a copyrighted work without permission.
  • Designs: Applying or importing a design that imitates a registered design.
  • Patents: Violating the exclusive rights granted to a patent holder.

Defences

  • Trademarks: Using a mark for honest purposes, descriptive use, parallel imports, prior use, or bona fide use of one’s own name.
  • Copyright: Fair dealing, reproduction for judicial or educational purposes, performance of a work, or communication for religious ceremonies.
  • Designs/Patents: Invalidity due to prior art, lack of novelty, or obviousness.
  • Common Law: Laches (unreasonable delay) and estoppel (preventing someone from arguing something due to their previous actions).

Remedies

  • Injunctions: Orders to stop infringement (temporary, permanent).
  • Damages: Compensation for financial losses caused by infringement.
  • Costs: Reimbursement of legal expenses incurred in the lawsuit.
  • Delivery Up: Seizure and potential destruction of infringing goods.

Appellate Review

  • Appeals from district courts go to high court division benches.
  • Further appeals to the Supreme Court require special leave.
  • Appellate courts can re-evaluate evidence but generally defer to the lower court’s findings unless unreasonable.
  • New evidence may be allowed with appellate court permission.

Conclusion and The Way Forward

IP registration offers a powerful shield and sword for creators and innovators. Registration strengthens legal protections, deters infringement, and unlocks commercial opportunities. Strategic use of IP rights empowers businesses to maximize the value of their intellectual property portfolios. As the innovation landscape evolves, staying informed about legal developments and enforcement mechanisms is crucial for navigating the complexities of IP protection in India.

[1] https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf.

[2] Mahendra and Mahendra Paper Mills Ltd. v. Mahindra & Mahindra, 2002 (2) SCC 147.

[3] https://copyright.gov.in/documents/copyrightrules1957.pdf.

[4] Venkatesh Films Pvt. Ltd. v. Vipul Amrutlal Shah, AIR 2010 (NOC) 610 (Cal.).

[5] https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf.

[6] Cipla Limited v. Novartis AG, 2017 (70) PTC 80 (Del).

King Stubb & Kasiva,
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