Intellectual Property: On the Path to Reformation
October 2, 2019
Intellectual property (IP) forms part of our overall growth strategy. This is the message that the Indian government is sending out like never before, as is evident from a number of measures that have been put in place in recent times. The trends show that the government is keen not just to augment efficiency at the Controller’s office, but also to make an effort from a regulatory and legislative perspective. Some of the changes strongly reflect the government’s resolve to push for massive digitisation to strengthen transparency and bring uniformity and consistency into the way the Intellectual Property Office (IPO) functions. The changes are aimed at boosting investor confidence in the long term and signal that India is a pro-IP destination with a conducive environment for innovation and the protection of IP.
The IP regime has been on course to harmonise with internationally accepted jurisprudence ever since India signed up for the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) with new laws, regulations and authorities set up one after the other in compliance with the international obligations. Amendments in patent and copyright laws, new laws on trademarks, design, geographical indications, semiconductor topographies, plant variety and biodiversity marked the beginning of this century. Coupled with these legislative changes, there were also steady changes in the administration with new IP offices and infrastructure set up.
However, the effectiveness of the intellectual property rights (IPR) regime was always short of international expectations as both domestic and overseas industries consistently complained of, among other things, rising levels of piracy and counterfeiting, and consequent losses primarily on account of weak enforcement mechanisms. And that’s not to mention the delays caused in obtaining registration, recordals and oppositions, at the IPO or to see a trial through in Courts. All this now appears to be changing.
The National IPR Policy announced in May 2016 is the foundation beneath the existing IP regime’s infrastructure. It aims to give unequivocal recognition to the fact that IP is a marketable financial asset and an economic tool. It also seeks to create an environment of creativity and innovation, where knowledge is the main driver of development.
A few months before the Policy was announced the government kicked off the Startup India campaign, aimed at creating an ecosystem that is conducive for growth of Startups in India. The Department of Industrial Policy and Promotion (DIPP) launched a scheme “Startups Intellectual Property Protection” (SIPP), which provided “Facilitators” – by reimbursing their professional charges – to assist Startups in filing and processing their applications for patents, design and trademarks. It is also noteworthy that a lower official fee for Startups filing applications has been provisioned in both the Patent (Amendment) Rules 2016 as well as the Trade Marks Rules 2016.
The Trade Marks Rules notified in March this year have revamped the practice by reducing the number of forms required for prosecution of trademarks from 74 to 8 and, among other changes, has fixed timelines for filing evidence, provided for expedited processing till registration, made provisions for email correspondence and reduced the number of adjournments for each party. Similarly, the Patent (Amendment) Rules 2016, notified in May of 2016, aim at bringing in more efficiency and faster prosecution of applications. In addition, to address delays and pendency, the Controller’s office has also initiated a process of mediation in qualified contested trademark matters in collaboration with the Delhi State Legal Service Authority.
Another significant step in Patent law was the introduction (on February 19, 2016) of a revised set of Guidelines for Computer Related Inventions giving much needed clarity on examination of applications in the field of computer related inventions. At the same time (on March 1, 2016), DIPP released a discussion paper on Standard Essential Patents (SEPs) and their availability on Fair, Reasonable and Non-Discriminatory (FRAND) terms inviting comments from stakeholders on a number of issues involving licensing of SEPs, methodology for royalty payments, etc. Coincidently, in the same month, the government brought the administration of copyright law and that of semiconductor topographies within the ambit of DIPP under the Ministry of Commerce and Industry addressing the long-held demand from some quarters to do so for smoother functioning of all IP laws by one authority. All these steps when cumulatively viewed only point to one direction.
Apart from the aforesaid legislative and regulatory changes, the judiciary as usual has been proactive in protecting the interest of IP owners – Indian and overseas alike – and, consistent with its approach to uphold honesty, equity and good conscience, it has given us a few landmark precedents involving IP rights. These include resting the debate on territorial jurisdiction in cases involving trademark and copyright law, which provided an extra forum to litigate at the Plaintiff’s place of business or residence. The Delhi University photocopy case interprets one of the exceptions to copyright infringement and permits reproduction of works by teachers or students in the course of instructions by including photocopying of course books in any quantity thus balancing public and private interests. Similarly the issue regarding exemption to internet intermediaries from liability for third party infringement of material or content on their platform stands clarified for now.
It is relevant to note here that IP disputes are getting more complex in the wake of multifold economic and industrial growth and usage of high technology in everyday life. While the disputes were more or less straightforward in the last century with trademark infringement, passing off, copyright violations in entertainment and publishing occupying the largest space, the situation in the past ten or so years has changed dramatically. In addition to disputes relating to high technology patents, we are witnessing cases where there is collision of different laws at a point where they interface with each other. The Microfibres case drew a line between artistic works and design rights and clarified that artistic works used on industrial products fall under Design law and have limited protection. The Greenpeace case balanced the need for freedom of speech and expression with the trademark rights. Similarly, the interface between IP and competition law was put to test in a case before Competition Law authorities in relation to the automotive industry. This is surely not the end – more such cases will emerge in the near future.
There is no doubt that greater specialisation will be required from all stakeholders as the commercial relationships, formation of alliances and joint ventures get more complex and involve higher level of technology. Therefore, bringing in IP disputes within the ambit of the Commercial Disputes and Commercial Courts Act is a significant and far sighted move. It is likely that we would further need special IP benches soon to deal with the emerging disputes that are going to get even more complex.
Of course many in the industry still see gaps that need to be filled up and have a long list of asks from the government including strengthening of our enforcement mechanism to tackle piracy and counterfeiting or legislation in the trade secret and confidential information arena. The trends, suggest, however, that they will get addressed sooner than later.
 Indian Performing Rights Society Ltd. vs. Sanjay Dalia AIR 2015 SC 3479
 The Chancellor, Masters & Scholars of the University of Oxford vs. Rameshwari Photocopy Services 233(2016)DLT279
 Myspace Inc. vs. Super Casettes Industries Ltd. 2017 (69) PTC1 (Del)
 Microfibres Inc. vs. Girdhar & Co. 2009 (40) PTC 519 (Del)
 Tata Sons Ltd. vs. Greenpeace International 178(2011)DLT705
 Shamsher Kataria vs. Honda Siel Cars India Ltd. 2015 CompLR 753 (CCI)