Alternative methods to resolve intellectual property disputes

What is Intellectual Property?

Human intellect is a gift of man which contributes to the growth and development of the nation. Intellectual Property refers to a property created through the intellect. However, due to many conflicts arising out of the mixture of intellects, Intellectual property disputes arise. It has received central importance globally in past years and is the subject matter of the World Intellectual property organization.

IPR provides a formal framework for ownership of the creator and sharing benefits to the societies to balance the rights of both the owner and the public. The purpose of IP rights is 3 fold, i.e., to reward intellectual creation, promote encouragement & growth, and provide recognition of protection to the Owner. Intellectual Property Disputes can cause a major breach in the relations of the aggrieved parties.

Intellectual property is broadly categorized into two types:  

1. Copyright which included literary artistic and musical work along with neighbouring rights as well.
2.  Industrial property which included inventions, industrial designs, trademarks, unfair competition etc.

India is a member state of WIPO and WTO. As a part of an international convention, India has enacted various laws over different dimensions of IP. India has played a major role in settling the Intellectual Property Disputes of many member countries.

IPR provides a formal framework for ownership of the creator and sharing benefits to the societies to balance the rights of both the owner and the public. The purpose of IP rights is 3 fold, i.e., to reward intellectual creation, promote encouragement & growth, and provide recognition of protection to the Owner. Intellectual Property Disputes can cause a major breach in the relations of the aggrieved parties.

Intellectual Property Disputes and its legal remedies

Infringement

Despite getting legal protection under the national laws, Intellectual disputes of properties are quite frequent among the countries. This dispute arises due to unauthorized use of protected copyright work, patent and trademark. . Intellectual Property Infringement is the prominent reason for IP dispute. It means using someone else’s intellectual property for its own purpose without the consent of the Proprietor. There have been Copyright Infringement, Trademark Infringement, Patent Infringement, Design Infringement.

Copyright Infringement

Copyright Infringement refers to the unauthorized use of someone else’s copyrighted work.

Under Indian Law, The Copyright Act, 1957 extends the copyright protection of the work by giving certain exclusive rights on the owner’s part. Section 51 of the Copyright Act, 1957 talks about infringement.

It states that If a person other than the owner uses any of the exclusive rights available for copyright without prior permission granted by the Registrar of Copyright, it is considered an infringement of copyright.

This is also applicable if the person is caught without any license as well. There are two types of copyright infringement, Primary and Secondary. However, there is an exception to such infringement under this section, making the copyright free to use. They are:

1. For private or personal use, including research.
2. Criticism or review
3. The reporting of current events and current affairs, including public lecture.

Legal Remedies

1. Civil Remedies: Under section 55, the copyright owner is applicable to all such remedies by way of Injunction, Damages and Accounts of profit.

• Criminal Remedies: Under section 63 of the Copyright Act 1957, the copyright holder has the power to take criminal proceedings against the infringer. The statutory provisions provides for the of 6 months imprisonment, which may extended to 3 years or with fine of 50,000 which may extend to 2 lakhs.

However, if the defendant is not aware and has no reasonable ground to believe there is an infringement, the plaintiff loses the above-mentioned remedies.

Trademark Infringement

Section 29 of the Trademark Act, 1999 talks about the infringement of a trademark. It is the use of a mark by an unauthorized or authorized person or the person who is not a registered proprietor, which is identical or deceptively similar to the trademarks concerning the goods and services in respect of which trademark is registered.

There occurs a trademark infringement when a:

1. Mark is identical with or deceptively similar to the registered trademark.
2. If such mark creates confusion in the mind of general public relating to registered trademark
3. If the Mark causes unfair advantage in the market and harms the reputation of the registered trademark.

As per section 103 of the Trademark Act, 1999, The person wrongfully uses the trademark in case of :

1.  Falsification of trademark
2. Falsely applying trademark to goods and services.
3. Makes, Disposes or Possess any instrument with purpose of falsifying trademark.
4. Falsely indicates the country’s name as well as name and address of person manufacturing it.
5. Alters or hamper the indication of origin.

Legal Remedies

Civil Remedies: As per section 30 of the Trademark Act,1999, the civil remedies available to the proprietor of the trademark are Injunction, Damages, and Accounts of Profit.

Criminal Remedies: As per section 103 of the Trademarks Act, 1999, the person infringing the registered trademark shall be liable to receive 6 months imprisonment, which may extend to 3 years, along with a fine. The amount of which is from fifty thousand to two lakh. Also, there can be seizure of powers of an infringing person as well.

Administrative remedies: As per Section 9(1), Section 11 of the Trademarks Act, 1999, administrative remedies include interrogation, correction of a registered trademark, and keeping a check on the trade activity that bears trademark infringement.

Patent Infringement

Patent infringement is the damage to the exclusive rights of the Patentee. As per section 107 of the patent act 1970, a person commits patent infringement when he uses a patented invention of the patentee without his prior authorization. The acts which lead to the infringement are:

1. making, using offering for sale, selling or importing of the patented product.
2. Use of patented process or using, offer for sale, selling and importing of product made by the patented process.

There are two types of infringement under patent law

1. Direct Infringement: It occurs when product similar patented product is in use for commercial purpose without prior consent of patentee.
2. Indirect infringement: it occurs when there is deceit or accidental infringement of patent.

Legal Remedies Legal remedies under patent law include Interlocutory Injunction, Damages, and Accounts of Profits. In case of infringement, a suit can also be filed in the District or High court of competent jurisdiction. The patent act does not provide for criminal action in patent infringement.

Alternative Methods

Some of the alternative methods of Intellectual Dispute Resolution in India are Negotiation, Mediation, and Arbitration.

Negotiation in its most basic sense is a means of settling differences between 2 parties. It is done to achieve to and fro communication between the aggrieved parties to try to find a common and suitable solution. For negotiations to happen, you don’t particularly need an attorney; you can directly negotiate with the other party depending on your situation. Negotiation is the first method of choice for settling the dispute and trying to reach a mutually acceptable agreement. If no conclusion is reached, you may engage in any other option.

Mediation also acts as an agreeable way of Alternative Dispute Resolution between 2 parties. In this process, a 3rd person (mediator) acts as a liaison between the parties to reach a  mutually acceptable agreement. The need for Mediation arises only if the earlier negotiations prove unsuccessful. Some examples of mediation are between employers and employees, family members, landlords and tenants, child custody, divorce, etc.

Arbitration is the settlement of a submitted dispute matter to an intermediary impartial person(the arbitrator) for decision. This is an out-of-court method for finding a solution to re-resolve a dispute. In Arbitration, the entire control of the process is with the arbitrator. This is considered to be one of the most used methods for Alternate Dispute Resolutions. It is the last step before the dispute arrives at a court of law. This is generally used in labor disputes – between firefighters and the city in wage disputes.

Need for ADR

Alternate Dispute Resolution is one of the ways of achieving a low-cost conclusion to a long scale trial. ADR is a great way of reducing time for disputes regarding intellectual property between any 2 parties. ADR is also becoming widely popular in India as well. Many major companies have a clause of settling their disputes through arbitration or mediation before even moving to litigation.

ADR is used for settling Intellectual Property disputes because it acts as a single, less time-consuming, and cost-efficient method of settling a dispute. There is a need for ADRs in the judicial world because:

• Simple Procedure: Intellectual Disputes, especially international ones, may involve many different procedures of various jurisdictions. This can cause a risk for contradictory results. However, the process involving ADRs is much less simpler as there is a single procedure regarding the settlement of dispute between 2 countries.
• Autonomy of parties: The aggrieved parties have full discretion as to how they will settle the dispute between them. They don’t have to follow the long, traditional methods of trial in court.
• Neutral: The arbitrator/ mediator is a person who will have no relation to the parties creating a sense of fair play and neutrality between the parties as well.
• Confidential: ADRs are one of the most safe and secure ways of settling a dispute.

Our Thoughts

ADRs, especially Arbitration and Mediation, are in some ways more superior than Litigation. As far as Intellectual Property Disputes are concerned, ADRs are less costly, less time-consuming, and have faster conclusions. ADRs provide both parties a common and neutral ground along with the privacy they require to settle big matters. Therefore, they are much better than Litigation/trials.