Email:    •

By Pravin Anand and Vaishali Mittal, Anand and Anand

“In a progressive country change is constant; change is inevitable.”—
Benjamin Disraeli

v14i7_Pravin-AnandThe past few years have seen plentiful developments in the Indian IP regime. The judiciary has consistently delivered landmark decisions in every field of IP, be it patents, copyright or trade marks, and the government has gained widespread global appreciation for its numerous initiatives to strengthen IP, while the legislature has passed new laws that not only prioritise IP disputes (due to their commercial importance), but ensure that they are adjudicated swiftly through specialised forums.

However, these instrumental gains seem to have been lost on authorities ranking India’s performance in comparison with other nations. The Special 301 Report issued by the US Trade Representative (USTR) places India on its priority watch list, while the index published by the Global Intellectual Property Center (GIPC) ranks India 37 out of 38 economies.

Although India does have ground to cover before it can be said to have one of the strongest IP regimes in the world, even with the current IP infrastructure, there are no such glaring drawbacks to deserve such a ranking. In fact, certain facets of legislation, policy and the practice of IP law in India are so unique that they are unmatched anywhere else.

The strengths of Indian IP law
The Commercial Courts Act, 2015 classifies all IP disputes as commercial and thus entitled to swift, expert adjudication. Meanwhile, the executive branch of government dedicated substantial resources to the improvement of IP, with the introduction of campaigns such as Make in India, Digital India, Start-up India along with the National IPR Policy.

Through these campaigns, the government provides incentives to innovators to manufacture, invest and set up businesses here. These efforts ensure that not only is doing business made easier, but grievances of IP holders are given quality adjudication by expert bodies sensitive to their needs and interests, irrespective of their nationality.

Such developments on the judicial front are unprecedented, with the judiciary spearheading the campaign of invigorating IP. Landmark decisions, in sync with internationally established principles, have resulted both in the strengthening of IP, and in exponentially increasing the faith of IP holders in the judicial system.
Various aspects showcasing the true strengths of IP in India are assessed below.

General aspects of IP litigation
It is not only statutory provisions regulating IP, but also the manner in which courts help litigants implement them, that showcase the strengths of the Indian system. The judiciary has single-handedly improved jurisprudence by such leaps and bounds that previously unheard of legal principles have become regular features today.

With an extremely relief-centric approach, the courts have a healthy practice of Anton Piller, Mareva and ex parte injunction orders. Conducting cross-examinations of witnesses through video recordings and setting strictly fixed timelines for trials are some steps that are taken specifically to protect the interests of international entities.

AnA_SReport_chart1_500Trade marks
It can be safely stated that Indian trade mark law can stand its ground against any other regime in the world, in addition to having factors in its kitty which are unique to India.
While trans-border reputation of trade marks and their declaration as being well-known have been established for years now, recent decisions have extended this status to unregistered marks too. Moreover, when only a few regimes confer protection to unconventional trade marks, India does that and a lot more, being one of the few countries to have declared even colour-marks as well-known.

Brand-owners have also been given the liberty to institute lawsuits at those forums where they reside or conduct business. This is a special privilege offered only in trade mark and copyright law, since every other field of law requires one to institute suits at forums where the defendant resides, among other grounds.

Copyright, piracy and trade secrets
The 2013 amendments to the Copyright Act, 1957 led to the implementation of several provisions that strengthened the law and brought it closer to established international practices. Added provisions on the extension of moral rights to authors, mandatory payment of royalty to different entities involved in a copyrighted work, extended protection terms to photographs and other works have bolstered the regime further.

Moreover, the established practice de-hors these amendments had ensured that the menace of counterfeiting and online piracy was well addressed. India has been home to website blocking orders and restraining infringing activities of hyperlinking, meta-tagging, phishing, framing, etc. The fact that these orders were passed at a time when India was warming up to the notion of the internet showcases the constantly proactive approach of the judiciary.

Patent law has grown the most among all fields, with immediate steps being taken to reshape perception whenever it turned sour.

Difficulties caused to patentees due to delays in prosecution of patents saw the judiciary directing the Patent Office to mandatorily increase its workforce and improve resources. Recent trends have seen India rejecting applications for compulsory licenses at the very outset, such as in case of Lee Pharma. Disclosure requirements of international prosecution of patents were heavily toned down and their non-compliance no longer necessarily leads to patent revocation. Moreover, the judiciary has enforced patent rights even in situations where the patentee apprehends sale of infringing products. This concept of quia timet actions, a regular feature in India today, was unheard of previously.
More importantly, India witnessed its first final decisions in contested patent litigation, where a finding of infringement was conclusively given by the judiciary in the Merck and Roche litigation cases. These decisions have clarified that the controversial section 3(d) does not provide a defence to patent infringement and that it is only a patent eligibility criterion.

Geographical indications and plant varieties
India has a very strong infrastructure protecting geographical indications and plant varieties. Besides dedicating specialised legislations for these fields, India is one of the few countries to maintain a database of traditional knowledge. The Traditional Knowledge Digital Library (TKDL), containing information on more than two million medicinal formulations, is a tremendous success and has greatly assisted patent examiners while searching for prior art and has also enabled India to bring about the cancellation or withdrawal of 36 patent applications for traditionally known medical formulations.

Executive’s incentives to startups
Against the backdrop of a strengthening IP system, the National IPR Policy, along with other campaigns, offers several incentives to entrepreneurs to ensure that India receives greater investments. Such incentives include reduced fee for patent filings for startups, accelerated examination of patent applications on payment of higher fees, etc.

Interntional analysis of Indian IP: Overlooking its strengths?
While the assessment of the weaknesses that India’s regime suffers from is correct to a large extent, the evaluation of its strengths isn’t. The main areas facing criticism in the 301 Report and the GIPC Index are given in the table above.

India’s assessment
In addition to the table above, the Special 301 Report has critiqued the government’s initiatives as favouring localisation and indigenous products and services.

v14i7_Vaishali-MitalImprovements needed in Indian IP law
A recent interview by the senior director of IP at GIPC predicted an increase in India’s performance on the Index by 2020. Mere compliance with TRIPS objectives wasn’t found sufficient and India was urged to ensure that its regime employs safeguards in sync with international practices today. Such criticism will undoubtedly paralyse the growth of the Indian regime.

Certain facets warranting legislative and executive action are outlined below:
(i) Trade marks

  1. Consistency is required on parallel importation to enhance revenue;
  2. Delays in the prosecution of trade marks need to be reduced.

(ii) Copyright

  1. Loss of copyright protection on articles registrable under design law (but where registration wasn’t secured) upon production of more than 50 articles needs to be done away with.
  2. Responsibility of intermediaries for de-listing infringing content must
    be tightened.

(iii) Patents

  1. Either pre-grant or post grant oppositions to a patent must be eradicated;
  2. Restraints on patentability of inventions imposed by section 3(d) and section 3(k) must be addressed;
  3. Grant of compulsory licences must depend upon stricter thresholds;
  4. Prima facie validity of granted patents can be considered;
  5. Patent term extensions must be facilitated; and
  6. Disclosure requirements for working of a patent, its international prosecution and consequences of its non-compliance must be relaxed.

The strength of every regime lies in the balance struck between national interests and international expectations, and the past few years have seen India excel at it. Any favour extended to domestic entities by the executive is balanced by the judiciary’s protection of international interests and vice versa. India’s regime is robust not only when compared to its past performance, but also in comparison to the existing regimes of several countries.

Evaluation of the regimes of countries by ranking agencies such as USTR and the GIPC have a significant impact since they help rights-holders invest in regimes based upon such evaluation. A true and fair evaluation of India’s regime is crucial to India to help prevent loss of investments from misconceptions.

Therefore, future assessment of Indian IP by GIPC, USTR or any other agency must definitely take into account its numerous strengths, to enable the world to see it is a robust system. Not the strongest of the strongest, but certainly not the weakest!


Related Articles by Firm
A fresh approach to legal solutions
We talk to Titus Rahiri, director and founder of KorumLegal, about technology, disruption and the future of legal services ...
Recent developments in banking dispute resolution in China
New methods of financing and challenging economic conditions have fuelled new types of disputes ...
Much Ado About Nothing – Ministerial Resolution 972/2017 and Arbitration in Dubai - Horizons & Co
The last few months have been an exceptionally remarkable time for disputes lawyers in Dubai ...
The tourism and hospitality sector 2017 — the year gone by
This year several policy decisions and judicial pronouncements affecting the tourism and hospitality sector were implemented. We have set out below some of the key developments and their effect on the sector ...
The “Good Faith” Principle
Hong Kong Court of Appeal holds that the “Good Faith” Principle is Complementary to the “Choice of Remedies” Principle, Aligning Hong Kong Law with Singapore Law ...
What’s new with Cybersecurity in Singapore?
With the increasing frequency of cyber-attacks, the new Cybersecurity Bill could not have come at a more pertinent time ...
RBI granted powers to act on the resolution of stressed assets
By way of a circular dated May 5, 2017 (Circular), the Reserve Bank of India (RBI) amended the Framework for Revitalising Distressed Assets in the Economy ...
India Update for May 2017
The May 2017 India newsletter from Clasis Law includes an article on “Corporate Compliances: Necessity and Implication”, as well as Banking, Projects, Energy & Natural Resources and IP updates ...
Thailand’s Act on Digital Development for Economy and Society Comes into Force
Thailand has finally enacted the Act on Digital Development for Economy and Society B.E. 2560 (A.D. 2017) (“Digital Development Act”). It was published in the Royal Gazette on 24th January 2017 and has been effective on and from 25th January 2017...
Vietnam Client Alert - November 2015
Vietnam's National Assembly recently passed new laws which affect investments, real estate, employment, use of internet resources and sanctions on administrative violations.
Vietnam Client Alert
This edition discusses new laws on overtime rules, corporate seals and use of IPRs in company names to the resolution of domain name disputes. Moreover, it presents an overview of how the new Trans Pacific Partnership will affect Vietnam.
Myanmar Opened its Broadcasting and TV Market
The Broadcasting Law 2015 opens commercial licenses for TV or radio for bidding under an independent supervisory authority. This offers wide opportunities to investors from broadcasting infrastructures to broadcasting services.
China Streamlines Commercial Registration System
Effective 1 October 2015, government authorities will no longer issue organization code certificate or tax registration certificate but consolidate their functions into new version of business license.
China Increases Standards of Reward for Transformation of Scientific and Technological Achievements
The newly revised Law on Promoting the Transformation of Scientific and Technological Achievements of PRC respects any reward agreement and provides default reward standards in the event of no prior mutually agreed reward standards.
Budget 2015 - Canada
The Budget 2015 contains several significant proposals to amend the Income Tax Act while also providing updates on previously announced tax measures and polices. Here are some highlights.
Statutory Registration of Standard Terms and Conditions in Tanzania
All companies doing business in Tanzania should know the salient points of the Standard Form (Consumer Contracts) Regulations 2014 which takes effect on 29 December 2015.
Flurry of New Energy Legislation Proposed in Tanzania
The Tanzanian Government is in the process of a radical overhaul of regulations governing the energy and extractive sector.
Tanzania Bill Establishing the Petroleum Act 2015
Tanzania's proposed Petroleum Act 2015 introduces key changes to the Petroleum Exploration and Production Act 1980 and the Petroleum Act 2008.
Draft Implementation Rule Addresses Vague Issues in the Labor Contract Law
The recent draft Implementation Rule reveals Chinese labor authorities’ efforts to clarify vagueness in the implementation of the Labor Contract Law for the past years.
Cyber Security Law to Tighten Network Operators and Users Supervision
The draft Cyber Security Law aims to strengthen supervision over cyber security. The proposed measures will influence not only network operators directly but also users and all public sectors.
Shanghai's New Immigration Policy to Attract Foreign Talents
The Shanghai Public Security Bureau released the Implementation Rules on Series of Immigration Policies of Shanghai Sci-tech Innovation Center. The article describes the standards for foreigners to be identified as “overseas talents”, the conditions to apply for permanent residence and ...
Draft Law Outlines Dos and Don’ts of Foreign NGOs for the First Time
The second draft of the Law on Administration of Foreign Nongovernmental Organizations was published recently. The Draft Law defines foreign NGOs which refer to non-profitable and nongovernmental social organizations established overseas.
Tanzanian Energy Developments
Summary of the latest industry developments, as well as the country’s political developments, with a special focus on the Ministry of Energy and Minerals (MEM)
India: Latest Legal Updates for May 2015
Insights into the proposed New Land Bill, recent Supreme Court judgment on the principle of the arbitration agreement, proposed enhancement of the pecuniary jurisdiction of the District Courts of Delhi and other legal updates
SAFE New Regulation Promotes Discretionary Settlement of FIEs’ Capital Nationwide
The State Administration of Foreign Exchange (SAFE) released a circular on Reforming the Administration of the Settlement of Foreign Exchange Capital of Foreign-invested Enterprises which further promotes discretionary settlement of foreign investment enterprises’ foreign exchange capital nationwide. The circular take ...
Singapore: a snapshot of employment changes in 2014
The Singapore Parliament has rolled out a number of employment-related legislative changes.
Statutory paternity leave legislation in Hong Kong
From 27 February 2015, male employees in the private sector are entitled to three days’ paternity leave.
Preparation for annual individual income tax declaration for 2014 in PRC
Indivdual taxpayers with an annual income of RMB120,000 or more shall file an annual individual income tax return with the within three months of the beginning of the next year.
Shanghai clarifies labour dispatch rules
The Shanghai Municipal Human Resources and Social Insurance Bureau and Shanghai Superior People’s Court jointly issued the Meeting Minutes on Application of Law on Labour Dispatch on 31 December 2014.
China requires work visa for certain short-term work tasks
As of 1 January 2015, China has further tightened immigration requirements for foreigners coming to China for short term work tasks.
Ship arrest in China - Increased clarity from the Supreme People's Court
The Supreme People's Court of the PRC published the Regulations for Certain Issues Concerning the Application of Law Relating to Arrest and Auction of Ships which took effect on March 1, 2015.
Cabotage and its impact in Indonesia
Indonesia's shipping and offshore marine industry underwent major changes since the introduction of the Maritime Law No. 17 of 2008.
Oil price volatility - global employment issues
Amidst the oil & gas layoffs, the industry has to ensure that it has the manpower skills in place to respond to demand when oil prices recover.
Shanghai Court rules on SHIAC jurisdiction following CIETAC breakaway
Shanghai Court recently ruled SHIAC has jurisdiction on disputes arising from a clause referring the disputes to "CIETAC Shanghai Sub-Commission".
Oil price volatility - risks and opportunities in 2015
The sharp fall in oil prices amid deteriorating sentiment over the global economy has made investors weary of investing in other commodities.
Oil price volatility - legal issues in the E&P sector
With oil prices at their lowest for over five years, E&P companies and the governments of the countries where they conduct their exploration and production activities are now assessing their options.
The Singapore approach to scrutiny of arbitral awards
International arbitration must, out of necessity, rely on the courts to uphold and enforce arbitral awards and to support the arbitral process...
The new CIETAC Arbitration Rules 2015
The New Rules adopt both best practices and the latest developments in international commercial arbitration and accommodate the increasing needs of the parties arbitrating at CIETAC.
China’s Supreme People’s Court issues judicial opinion on work-related injuries
The Regulations define the general framework of work-related injury matters, including the scope of work-related injuries, verification of the injury, and obligations and liabilities of employers, amongst other aspects.
China’s plans to accelerate growth of insurance market
State Council's vision on bringing China's insurance industry into the modern age
China’s Supreme People’s Court issues judicial opinion on work-related injuries
As of 1 September 2014, the new judicial opinion of the China's Supreme People’s Court concerning work-related injuries (the “Opinion”) came into force
A watershed in the availability of corporate information in China?
In March 2014, the State Administration for Industry and Commerce launched the National Company Credit Information System (the NCCIS)...
APAC Employment Update
Employment updates from China, India, Japan, Thailand and Mongolia ...
Tanzania: energy market developments
Including: the impact of the August's US-Africa leaders summit; plus, an overview of the power utility giant, TANESCO,and its future in the Tanzanian market
Road infrastructure in Tanzania
The ability of Tanzania to upgrade and improve its road infrastructure will be one of the key factors in whether it can continue the impressive rates of economic growth ...
Tanzania: Impact of foreign exchange regulation amendments
The latest amendments to the foreign exchange regulations have relaxed and in some cases removed restrictions on inward foreign investment in the Dar es Salam Stock Exchange ...
India Update, inc. 'Building India through PPP'
This edition brings a featured article on Public Private Partnerships, as well as key judgements passed by the Hon’ble Supreme Court of India, changes in corporate and commercial matters and case laws in indirect taxation.
Enforceable obligation to be friendly: a new principle of law
A recent judgment from the Commercial Court in London established a new principle of law, in one of the cases brought by Clyde & Co’s dispute resolution team in Dubai ...
Employment law developments across the GCC
a summary of the key employment law developments across the GCC ...
An overview of medical malpractice in the UAE
With an increasing focus on regulation and reforms by local health authorities,there is evidence of a more litigious approach developing in the area of medical malpractice ...
Export Processing and Special Economic Zones in Tanzania
We examine the features and requirements of the EPZ and SEZ frameworks, set-out the differences and comparative advantages of each ...
Draft National Petroleum Policy of Tanzania
A look at the second draft National Petroleum Policy of Tanzania and ongoing energy market developments
Iran – plans for privatisation and reform in power sector
A look at the historical background to Iran’s power industry and how the latest developments will be transforming the way Iran manages this significant sector.
“Good Samaritan” principles in the UAE: legal liabilities when administering first aid
This article discusses whether a Good Samaritan principle is applied in the UAE, both from the perspective of rescuers and safety officers.
UAE Trade Marks Office puts an end to examination reports
On 19 May 2014, the UAE Trade Marks Office announced that it will no longer issue examination reports or grant extensions of time during the trade mark application process ...
Iran’s new Integrated Petroleum Contracts
Iran hosted an “Oil Show” earlier this month in Tehran. According to reports, over 600 foreign companies from 32 countries and over 1,200 Iranian companies attended ...
FDI laws in Libya
A stark reminder of the fluidity of the legal and practical landscape ...
The legal framework of the port sector in Tanzania
The port sector in Tanzania is one of the largest of East and Central Africa, serving Tanzania as well as the neighbouring landlocked countries of Malawi, Zambia, Democratic Republic of Congo, Burundi, Rwanda and Uganda ...
Registration of private sector foreign loans with the Bank of Tanzania
The Bank of Tanzania requires that all foreign loans from the private sector in Tanzania are registered with them. We look at what this registration means in practice.
What investors should know about Mexico’s new Energy Law
A significant step toward permitting private capital to support Mexican oil and gas production ...
Investigating procurement fraud in South and Southeast Asia
Markets in Asia can pose unexpected challenges for companies that rely on fraud mitigation and investigation practices applicable to developed markets. Quite simply, these practices do not work in Asia ...
Tanzania: Prospecting for and mining of radioactive minerals
New uranium mining projects have recently been announced in Tanzania. This briefing looks at the legislative framework surrounding radioactive minerals in Tanzania.
Public private partnerships in Tanzania
PPP's: an update following the Finance Act 2014
2013/14 Global Fraud Report
Kroll’s 2013/14 Global Fraud Report, prepared in conjunction with the Economist Intelligence Unit, surveyed 901 senior executives from around the world. This document includes an overview of the results and a thought piece on what the results mean for businesses globally. (...
The Tanzania Mortgage Refinance Company
This update looks at the development of TMRC to date and the products offered to Tanzanian banks.
The Chinese currency in the international financial markets
The rise of Chinese trade in Africa generally and Tanzania specifically is well known. China – Tanzania trade reached USD 2.5 billion in 2012 ...
Tanzania’s 4th Offshore Licensing Round: Key Terms
The 4th Tanzania Deep Offshore and North Lake Tanganyika Licensing Round was launched in Dar es Salaam on 25 October by President Jakaya Kikwete ...
Tanzania Security Fact Sheet
This month’s Tanzania update is a fact sheet recapping on the types of security available for different asset classes when taking security over corporate borrowers, with a more detailed focus on debentures and mortgages.
Related Articles
The need to look at Intellectual Property in a new light
Cross border data flows will become one of if not the most important consideration for corporate counsel in the future given the implications for intellectual property (IP), privacy, competition, trade, compliance and innovation ...
Scrutinising CP Group’s acquisition of Tesco
The decision of Thailand’s competition authorities will set a precedent regarding merger control and provide clarity on market definitions.
Protecting privacy during Covid-19
During the Covid-19 outbreak, processing and protection of personal information can be a pivotal and difficult issue. The key lies in balancing the interest of information/data subjects and the interest of society ...
Related Articles by Jurisdiction
‘Make in India’ campaign: Opportunities for investors
With a vision of leading the economy towards a path of high sustainable growth, the Prime Minister of India on September 25th, 2014 launched the ‘Make in India’ campaign. Through the …
India: Institutional Arbitration – Need of the Hour
The need to promote and encourage institutional arbitration for commercial disputes in India ...
PM Modi’s ‘Make in India’ tracing the steps of the lion?
In 2014, the government of India (Government) launched its flagship programme under the brand ‘Make in India’ to boost the manufacturing sector....
Latest Articles
Indonesian government imposes VAT on imported digital goods and services
The tax particularly targets intangible goods and services provided by foreign tech companies that lack a physical presence in Indonesia.
Financing PPP projects in Vietnam
The selection of financing structures for PPPs needs to be carefully considered.
Further changes to civil litigation in the UAE
The amendments bring about some important changes to how matters will be litigated in the UAE courts.