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Guest Post: Groundless threat of Infringement proceedings- A Comparison spanning a few India IP Legislations


Shashank Mangal is a fifth year student of ILS Law College, Pune. He is the Head Student Co-ordinator of the IPR Cell. Further, he is the author of quite a few IP papers and guest posts in SPICY IP. In this post, he discusses ‘groundless threat of infringement proceedings’ from the perspective of some of the IP statutes.

groundlessthreatGroundless threat of Infringement proceedings- A Comparison spanning a few India IP Legislations

It’s always the patentees’, authors’, registered proprietors’ and all other rights holders’ story we listen to, but there is also a world where genuine practices are attempted to be tarnished as infringing acts and people engaged  therein are threatened in the name of legal proceedings. The provisions which we have for controlling such scenario span across various IP legislations and depict a high degree of similarity. This Post attempts at analyzing the differences in these provisions and the significance of those differences…..

(1)          The Concept of a remedy in case of groundless threats

The Copyright Act, 1957, Patents Act, 1970, Trade Marks Act, 1999, Designs Act, 2000 and the Geographical Indications of Goods (Registration and Protection) Act, 1999 through sections 60, 106, 142, 23 and 73 respectively aim at providing remedy to a victim who receives groundless threats of infringement proceedings from the IP right holder or any other person as the case may be. The common features of these remedies are;

i) declaration by a court that the threats are unjustifiable,

ii) damages, if any, sustained by the victim,

iii) injunction against the IP right holder or any other person as the case may be to restrain it from sending such threats.

(2)          Difference in the scope and ambit of similar provisions in the Copyright, Patent & Trade Mark, Designs and GI Acts

The differences in the scope and ambit of all these, prima facie, similar looking provisions have been given below;

 Basis of Difference  Copyright Act, 1957 (S.60)

 

 Patents Act, 1970 (S.106)

 

 Trade Marks Act, 1999 (S.142)

 

 Designs Act, 2000 (S. 23)  Geographical Indications of Goods (Registration and Protection) Act, 1999 (S.73)

 

Placement in the Act In Chapter XII-Civil Remedies In Chapter XVII-Suit Concerning Infringement of Patents

 

In Chapter XIII-Miscellaneous In Chapter V- Legal Proceedings

 

 

In Chapter IX-Miscellaneous

 

Protection against whom

Any person claiming to be the owner of copyright in any work Any person (whether entitled to or interested in a patent or an application for a patent or not)

 

Any person (the person making the threat may or may not be the registered proprietor or the registered user of the trademark)

 

S.23 of the Designs Act, 2000 stipulates that in the matters of groundless threats of infringement proceedings in cases of copyright in designs, the provision of the Patents Act, 1970 (S. 106) shall apply mutatis mutandis. S. 73 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 is analogous to S.142 of the Trade Marks Act, 1999
Way out for the  one who makes groundless threats via circulars / advertisements etc

 

The section doesn’t apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright claimed by him.

 

In such suit, the threatener must prove that the acts in respect of which the proceedings were threatened constitute or, if done, would constitute, an infringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the specification.

 

1) In such suit, the threatener must satisfy the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or if done, would constitute, an infringement of the trademark.

 

2) The section does not apply if the threatener (the threatener being either a registered proprietor or a registered user) with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.

 

Liability of Legal Practitioner and Registered Patent or Trade Mark Agent

 

(No Provision)

(No provision)

Not liable to any action in respect of any act done by him in his professional capacity on behalf of a client.

(3)          ANALYSIS & CONCLUSION

From the above table, it appears that each provision bears a considerable degree of resemblance to its counterparts. The Designs Act, 2000 and the Geographical Indications of Goods (Registration and Protection) Act, 1999 have incorporated the exact provisions of Patents Act, 1970 and Trade Marks Act, 1999 respectively.

The following conclusions can be drawn after analyzing the above table;

[The conclusions in respect of the Trademark Act, 1999 and the Patents Act, 1970 also apply to the Geographical Indications of Goods (Registration and Protection) Act, 1999 and the Designs Act, 2000 respectively.]

 (a) Protection against whom

While the scope of protection conferred by the Copyright Act, 1957 upon a person receiving groundless threats of legal proceedings for alleged copyright infringement is confined to such a threat coming from the owner or claimant of that work only, the patent and trademark legislations extend such protection even against the threateners who don’t claim to be the proprietor, patentee, licensee, assignee, registered user etc. of the impugned patent or trademark.

(b)  Way out for the threatener

[To avoid any possible confusion, I just want to demonstrate that why the threatener in such cases is a defendant and should not be understood to be a plaintiff. The threatener is the party which threatens the other party with an infringement suit by way of notices, circulars, advertisements etc. Aggrieved at this, the other party, as a plaintiff, files a suit in a court of law alleging that the threats are groundless. And hence the threatener becomes a defendant in such a case.]

This is a tricky area as all the three legislations considered under this heading have something different to offer.

In case of Copyright, the defendant (against whom the suit under S. 60 of the Copyright Act is filed) or the threatener, can defeat the plaintiff’s suit by commencing a prosecution against the plaintiff (after carrying out due diligence). In such an eventuality the plaintiff’s suit will automatically become infructuous as was held by the Hon’ble High Court of Delhi in Super Cassette Industries Ltd. v. Bathla Cassettes (P) Ltd., AIR 1994 Del. 237.

In case of Patents, the way available to the defendant (against whom the suit under S. 106 of the Patents Act is filed) or the threatener is to defend the suit by proving the things mentioned in the above drawn table. The section is silent on the issue that whether filing of an infringement suit by the defendant renders the plaintiff’s suit redundant.

In case of Trade Marks, the threatener or the defendant (against whom the suit under S. 142 of the Trade Mark is filed) can opt for either of the preceding options, as both of them have been recognized by the Trade Mark Act.

(c) Liability of Legal Practitioners and Registered Trade Mark or Patent Agents

While the Copyright and Patent Acts are silent on the issue of the liability of legal practitioners or Registered Trade Mark or Patent Agents for giving groundless threats of infringement proceedings in their professional capacity (on behalf of their clients), the trademark act succinctly protects them against possibility of any such liability coming their way.

I thank Dr. Nilima Bhadbhade, Professor at ILS Law College, Pune for suggesting me to carry out such an analysis.

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Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

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