Enforcement of Intellectual Property Rights - IPR I

On this page

1. TRIPS Part III
2. Civil remedies in India
3. Special orders developed by the courts
4. Damages
5. Criminal enforcement
6. Border measures
7. Alternative dispute resolution and online enforcement
How this is examined

Cases checked to exist. Read the judgment before quoting a holding.

Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.

Why enforcement matters. Before TRIPS, treaties set standards but said nothing on enforcement, so rights on paper could be worthless in practice. Part III of TRIPS was the first international code of IP enforcement. An answer on this topic should move from the TRIPS obligations to the Indian remedies, statute by statute, and end with the courts that now hear IP cases.

1. TRIPS Part III

General obligations (Article 41): enforcement procedures must permit effective action against infringement, including expeditious remedies to prevent infringement and remedies that deter further infringement; they must be fair and equitable, not unnecessarily complicated or costly; decisions should be reasoned and subject to judicial review. Members are not required to create a separate judicial system for IP, nor to shift resources from general law enforcement (Article 41(5)).
Civil and administrative procedures (Articles 42–49): fair procedures; orders to produce evidence in the opponent’s control (43); injunctions (44); damages adequate to compensate (45); other remedies, including disposal of infringing goods outside channels of commerce (46); right of information about third parties (47); indemnification of wrongly enjoined defendants (48).
Provisional measures (Article 50): prompt and effective measures to prevent infringement and to preserve evidence, including inaudita altera parte (without hearing the defendant) where delay is likely to cause irreparable harm.
Border measures (Articles 51–60): right holders must be able to ask customs to suspend release of counterfeit trademark goods and pirated copyright goods; members may extend this to other rights.
Criminal procedures (Article 61): at least for wilful trademark counterfeiting or copyright piracy on a commercial scale, with imprisonment or fines sufficient to deter. In China – Intellectual Property Rights (DS362, panel, 2009) the panel read “commercial scale” by reference to what is typical in the relevant market, and found that the United States had not proved China’s thresholds too high.

2. Civil remedies in India

Each statute provides for a civil suit for infringement: section 108 of the Patents Act, sections 134 and 135 of the Trade Marks Act, sections 55 and 62 of the Copyright Act, and section 22 of the Designs Act. The remedies are:

Injunction, interim and permanent;
damages or an account of profits, at the plaintiff’s option;
delivery up and destruction of infringing goods and the means of making them; and
in trade mark and copyright suits, jurisdiction where the plaintiff resides or carries on business (section 134(2) Trade Marks Act; section 62(2) Copyright Act), a special rule to help right holders sue near home. The Supreme Court limited forum shopping under these sections in Indian Performing Rights Society Ltd. v. Sanjay Dalia, 2015 INSC 452, (2015) 10 SCC 161: where the plaintiff has a branch at the place where the cause of action arose, it must sue there rather than at its distant head office.

Interim injunctions follow the three tests of a prima facie case, balance of convenience and irreparable harm (American Cyanamid Co. v. Ethicon Ltd., House of Lords, 1975). In Wander Ltd. v. Antox India (P) Ltd. (Supreme Court, 1990) the Court held that an appellate court should not interfere with the trial court’s discretion on an interim injunction unless it was exercised arbitrarily or perversely. In patent cases Indian courts are slower to grant interim relief where the defendant raises a credible challenge to validity, and they weigh the public interest in medicines (Roche v. Cipla, Delhi High Court, 2008).

3. Special orders developed by the courts

Anton Piller orders: Anton Piller KG v. Manufacturing Processes Ltd. (Court of Appeal, 1976) allowed an ex parte order permitting the plaintiff’s solicitors to enter the defendant’s premises to inspect and seize evidence. Indian courts appoint local commissioners for the same purpose under Order XXVI of the Code of Civil Procedure.
Mareva injunctions to freeze assets so a judgment is not defeated.
John Doe (Ashok Kumar) orders against unnamed defendants: the Delhi High Court in Taj Television Ltd. v. Rajan Mandal (2003) granted one to stop unauthorised cable broadcast of the football World Cup. They are now routine before film releases and sporting events.
Dynamic injunctions: in UTV Software Communications Ltd. v. 1337x.to (Delhi High Court, 2019) the court declared certain websites “flagrantly infringing” and allowed the plaintiffs to extend the blocking order to mirror and redirect sites without a fresh suit.

4. Damages

Indian courts long awarded small damages. In Time Incorporated v. Lokesh Srivastava (Delhi High Court, 2005) the court awarded punitive damages against a pirate, a practice later doubted because punitive damages are not compensatory. In Hindustan Unilever Ltd. v. Reckitt Benckiser India Ltd. (Delhi High Court, Division Bench, 2014) the court held that punitive damages may be awarded only in the narrow categories recognised in Rookes v. Barnard (House of Lords, 1964). The Delhi High Court’s IP Division Rules of 2022 now list factors for computing damages, and the court has awarded large compensatory sums in pharmaceutical and trade mark cases. Under the Commercial Courts Act, 2015 costs follow the event and may be substantial.

5. Criminal enforcement

Trade marks: falsifying or falsely applying a trade mark and selling goods with a false mark are offences (sections 103 and 104), with a minimum sentence of six months. Section 115(4) requires the police officer, before a search and seizure, to obtain the opinion of the Registrar on the facts involved.
Copyright: knowing infringement is an offence under section 63, with enhanced punishment for repeat offenders (63A), and knowing use of an infringing computer program (63B). Section 64 empowers the police to seize infringing copies without warrant.
Patents: infringement is not an offence; the offences concern secrecy, falsification and false representation.
Geographical indications and designs: falsifying a GI is an offence; design piracy carries only civil liability, in the form of a sum payable to the proprietor (section 22 of the Designs Act).

Procedure now runs under the Bharatiya Nagarik Suraksha Sanhita, 2023 and evidence under the Bharatiya Sakshya Adhiniyam, 2023, which replaced the Code of Criminal Procedure and the Evidence Act from 1 July 2024. Electronic evidence of online infringement is governed by the Sakshya Adhiniyam.

6. Border measures

Section 11 of the Customs Act, 1962 allows the government to prohibit import of goods to protect patents, trade marks and copyrights. The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 let right holders register their rights with customs, which may then suspend clearance of goods suspected to infringe. The Rules were amended in 2018 to remove patents from their scope, after concern that customs officers were detaining generic medicines in transit on patent grounds. The EU’s seizure of Indian generics in transit through the Netherlands in 2008 and 2009 led India and Brazil to file WTO complaints (DS408 and DS409), which were settled when the EU changed its rules.

Who now hears IP cases. The Tribunals Reforms Act, 2021 abolished the Intellectual Property Appellate Board, which had heard appeals from the Registrar of Trade Marks, the Controller of Patents, the Registrar of GIs and (from 2017) the Copyright Board’s matters. Appeals and rectification and revocation petitions now go to the High Courts. The Delhi High Court set up an Intellectual Property Division in 2021 and framed Intellectual Property Division Rules in 2022; the Madras High Court has one too. Suits are filed in commercial courts or the commercial divisions of High Courts with original jurisdiction, and the Commercial Courts Act requires pre-institution mediation (section 12A) unless urgent interim relief is sought, and allows summary judgment (Order XIIIA). Critics of the abolition point to the loss of technical members; supporters point to the IPAB’s chronic vacancies and backlog.

7. Alternative dispute resolution and online enforcement

Domain name disputes are settled under the ICANN Uniform Domain-Name Dispute-Resolution Policy (1999) and, for .in domains, the IN Domain Name Dispute Resolution Policy; the WIPO Arbitration and Mediation Center administers many UDRP cases. Intermediaries such as e-commerce platforms lose their safe harbour under section 79 of the Information Technology Act, 2000 if they do not remove infringing material after receiving actual knowledge, as interpreted in Shreya Singhal v. Union of India, 2015 INSC 257, (2015) 5 SCC 1, to mean a court or government order, with more specific rules in copyright under section 52(1)(c) of the Copyright Act.

How this is examined

“Discuss the enforcement provisions of TRIPS” or “Explain the civil and criminal remedies for IP infringement in India.” Give TRIPS Articles 41, 50, 51 and 61; then the Indian civil remedies with interim injunctions and the special orders; criminal remedies by statute; border measures; and adjudication after the IPAB. An evaluative closing line on whether India’s system is “effective” under Article 41 earns credit.