J.Sai Deepak is an Associate Partner (Litigation) at Saikrishna & Associates. Sai is an engineer-turned-litigator whose core competence lies in IP litigation, competition law and economic offences.
In Banyan Tree Holding v A Murali Krishna Reddy the Delhi High Court clarified the importance and scope of the special jurisdiction provision (ie, Section 62 of the Copyright Act 1957). However, there seems to be a school of thought that Section 62 vests Indian courts with untrammelled long-arm jurisdiction even in strictly extraterritorial situations.
Standard-essential patent litigation is on the rise, especially in relation to the technology standards prescribed by the European Telecommunications Standards Institute (ETSI). ETSI's IP Rights Policy has been criticised for facilitating abuse by patentees that claim to own standard-essential patents. To appreciate these criticisms, it is imperative to understand the policy of a comparable standard-setting organisation, such as the Institute of Electrical and Electronics Engineers.
The Supreme Court recently issued its much-anticipated decision in IPRS v Sanjay Dalia. The case considered the interpretation of the special jurisdiction provisions in Section 62 of the Copyright Act and Section 134 of the Trademarks Act. The court held that if a cause of action arises at the place where the plaintiff's principal office is located, it cannot rely on Section 62 or Section 134 to institute a suit where its branch office is located.
A streamlined framework for rectification of a company name is now available under the Companies Act 2013. Under the new act, the registered proprietor of a trademark can apply for rectification of a company name that is identical to or too closely resembles the registered trademark. In addition, the owner of an unregistered trademark which is used as a company name may use Section 16(1)(a) of the act as an alternative remedy to a passing-off suit.
Section 22 of the Designs Act 2000 deals with piracy of registered designs and enumerates the reliefs available to design owners. A clear reading of Section 22(2) reveals that it provides two reliefs to registered design owners in the event of infringement. These two options are disjunctive in nature, which means that design owners must choose between the two.
The Delhi High Court recently held that a composite suit for infringement of a registered design and a passing-off action is not maintainable. According to the court, two independent suits must be filed (although these can be tried together if there are aspects that are common to both suits), but a single composite suit is not possible. This conclusion has been questioned.
As patent litigation increases, so too does the importance of understanding the nuances of those provisions of the Patents Act that deal with suits for patent infringement, and the defences that can be raised therein. One such issue is whether the consequence of raising a defence of invalidity is the same as instituting a counterclaim to invalidate a patent under the act.
Although the Supreme Court's recent verdict on the so-called 'IT writ petitions' addressed some primary concerns relating to Section 79(3)(b) of the Information Technology Act (which applies to internet intermediaries), it failed to address other equally important concerns which have a concrete and critical bearing on the intermediary liability regime. As such, it appears that the court has passed up an opportunity which may not present itself again.