Practice Area

Intellectual Property Litigation is a facet of commercial litigation, which involves and includes practice in various areas simultaneously such as trade marks, copyrights, patents, designs, trade secrets, unfair competition, competition law, torts, constitution, media & entertainment law, tele-communications, technology and e-commerce, social media, plant varieties, geographical indications, traditional knowledge, etc.

Pre-litigation mediation is an attempt preferred by the parties to settle the issue in speedy manner by an unbiased third party before approaching the court. Parties have the rights to choose their mediators. The final agreement arrived as a result of this settlement is legally binding and can also be enforced through a court of law in case of breach of any terms or conditions by either parties. Any settlement reached in a pre-litigation mediation has the same status and effect as that of an arbitral award on agreed terms as under section 30 of the Arbitration and Conciliation Act, 1996.

A party desirous of initiating litigation has the option to approach Pre-Litigation mediation, which is even before or after sending legal notice.

A legal notice in IP litigation is not mandatory. Apart from litigating in the Courts, parties may file petitions at the Registry /IPAB for rectification/cancellation of intellectual property of each other. Orders arising from the same can be challenged and assailed by way of an appeal /Writ.

Appeals are preferred to the superior courts against the orders/judgments of the District Courts, High Courts, IPAB and Registry.
The procedure carried out in a commercial suit is as follows:

• The suit commences when the Plaint is filed by the Plaintiff which is presented before the Court. Along with the Plaint, an application for interim injunction under Order 39 Rule 1 & 2, CPC is filed seeking interim stay of the impugned use of infringing Intellectual Property by the Defendant till the matter is decided by the Court post trial. Notice is issued to the Defendant to appear on the first date of hearing if a caveat has been filed.
• In cases of urgency, where the Plaintiff has approached the courts at the first opportunity, the Court after examining the prima-facie merits of the case, may grant an ex-parte injunction on the first date and issue summons /notice to the Defendant to appear on the next date and file its reply to the injunction application and its Written statement. The injunction application will then be decided after the Court hears the arguments of both the parties.
• An application can be moved by the Plaintiff for appointment of a Local Commissioner for seizure/collecting evidence regarding infringing goods, products or services from the premises of the infringer. The Local Commissioner will then furnish a report in the Hon’ble Court which shall then be considered as a strong piece of evidence to be relied by the Court in deciding the merits of the case.
• The Defendant can move an application for vacation of any such interim injunction which has been granted. The Court, if satisfied that there has been any material particular which has been concealed by the Plaintiff or there has been a change of circumstances in the matter may vacate the injunction after satisfying that such order shall be passed in the interests of justice.
• The Defendant can also move any application for dismissal of suit for lack of jurisdiction, insufficient court fee, no cause of action, etc.
• In the meanwhile, the Pleadings are completed. The Defendants are supposed to file their written statement within 30 days from the date of service of Plaint upon them. This statutory period of 30 days can be extended upto 120 days by the Court for reasons to be recorded in writing for allowing such grant of extension and upon payment of costs, if any by the Defendant. Along with the written statement, the Defendants are supposed to file their affidavit admitting or denying the Plaintiff’s documents which have been filed along with the Plaint.
• After the written statement is filed and is placed on record, the Court grants time to the Plaintiff to file its replication. Admission/Denial of Defendant’s documents filed along with the written statement is also done by the Plaintiff.
• The pleadings are complete. The issues are framed by the Court at this stage and then the trial commences. The recording of evidence takes place which includes the cross-examination of the witnesses. The Plaintiff and Defendant are called upon to produce the evidence by way of affidavits of all the witnesses.
• Recording of evidence is a lengthy and time-consuming task considering the fact that the parties first have to file their evidence by way of an affidavit and then the said witness is cross examined by the opposite side. In some matters there can be multiple witnesses which could be private and/or summoned witnesses. The courts have been encouraging parties for opting to record evidence before a court appointed commissioners, which is much faster and can be recorded on a day to day basis. Evidence before a commissioner can be recorded in months whereas the same evidence recorded before the Registrar/court can take years. The commissioners are either advocates or retired judicial officers. The fee of the commissioner is either shared or is paid by one party. The winning party can claim the fee of the commissioner paid by it as cost at the time of preparation of the decree.
• After the evidence is recorded, the matter is finally heard. The court may also direct the parties to file their written arguments
• The parties can opt for mediation in order to try for the settlement where an unbiased mediator is appointed by the Court who tries and harmonize the dispute between the parties by taking sessions and providing a platform to the parties to negotiate. The settlement arrived can be recorded by the Court and a settlement decree can then be passed. The court also returns the court fee in case mediation is arrived at. In case settlement is arrived at an initial stage say before the framing of issues the courts are pleased to return the complete court fee paid. In case settlement is arrived before the final judgement is rendered then a party may receive 50% of the court fee paid.
• The suit is either decreed, dismissed or disposed off. The losing party may assail the order by filing an appeal before the Higher court.