IP in India: 2021 Recap

Nicolas Gutierrez

IP Advisor - India IP SME Helpdesk

2021 has been an eventful year for many people (though many will also have quietly stayed at home as required by current events). The same cannot be said of the Indian IP environment which has seen some important developments during the past year. We have chosen to highlight a handful of those, which we believe are of particular significance for EU SMEs in that they relate to aspects – either substantive or procedural – which can impact them directly.

On the registration of copyright

A landmark decision was reached by the Indian High Court in the case of Sanjay Soya v Narayani TC. While the specifics of the case are not particular important, one of the central points raised by the judges is indeed: that of the requirement to register the copyright over a work to be able to enforce it against infringers.

For a little context, it must be pointed out that the Copyright Act of 1957 stipulates that copyright over a work arises from the moment of creation and can be enforced from this point onwards. In principle, this should mean that copyright registration, while potentially useful as a preliminary proof of creation and ownership of the copyright over a work, is not necessary to bring actions against infringers. Nevertheless, there was doubts as to the requirement of registration for the enforceability of copyright, and inconsistent judicial decisions on the matter. In the latest decision on the matter, Dhiraj Dharamdas v Sonal, the Bombay High Court stipulated that copyright registration was compulsory for enforcement measures.

In the present case of Sanjay Soya v Narayani TC, the Delhi High Court revoked the Bombay Court’s decision, stating that it was based on a wrong interpretation of the law, and should therefore be discarded. This decision therefore confirmed that no copyright registration is necessary in India to enforce the copyright over a work.

On the responsibility of intermediaries in trade mark infringement cases

The question of whether intermediaries, and especially internet service providers, can be held accountable for trade mark infringements carried out on their websites or through their services has been a hot topic in the world of IP for the past decade. In layman terms, the question is whether an online service provider such as Google, Youtube, Amazon or other online shops can be held responsible for the infringement of users of their platform.

In the case of M/S DRS Logistics v Google, the question was whether Google was infringing on M/S trade marks by allowing M/S’s competitors to use it as a keyword, i.e. making their results appear whenever someone looked for M/S on the search engine. M/S claimed this was confusing the consumers and amounted to trade mark infringement. The question was whether Google was liable for this infringement, as well as M/S’s competitors.

The Delhi High Court decided that Google could be found liable and that it had the responsibility to investigate complaints raised by trade mark owners alleging that their rights were being infringed upon on the platform. This is a different approach from the one taken by the European Court of Justice when faced with the same question almost a decade ago, where it considered that since Google could not be said to be using the trade mark itself, it could not be liable for trade mark infringement.

This is a clear and important difference in the Indian and European approach, one that any business active in the online retailing and marketing business would do well to have in mind.

On changes to the IP judicial structure in India: the end of IPAB

Possibly the most significant development this year in the Indian IP world was the end of the Intellectual Property Appellate Board. This court had been established in 2003 to hear any appeals against decisions made by the registrar for the registration of trade mark, geographical indications and patents (the latter only since 2007). The purpose of this court was to unload the High Courts of the country from the cases, thereby hopefully lessening their workload and therefore solving the backlog which they experienced in deciding the cases brought to it.

The IPAB found many obstacles since its inception, mainly due to its understaffing and the fact that the decision made by this appeal court could themselves by appealed against, thereby lessening its effect on the backlog problem. Nevertheless, it was a tool that offered a solution to the overburdening of the Hight Courts.

The dissolution of IPAB means that all the cases that it had pending by April 2021 were transferred to the High Courts. This may have direct effects on the time necessary to obtain decisions not only on appeals regarding registration of trade marks, geographical indications or patents (for which this can be very problematic, taking into account that patents only last for 20 years from the date of filing, and not grant), but can also lead to longer queues and waiting time for the resolution of all cases which are dealt with by these courts, including actions taken in cases of infringement.