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Counter strategies - malicious prosecution, groundless

by:Chairlady     2020-07-01
With the advent of India as an important emerging market for global players, protection of trademarks, patents and designs regarding goods and services has fast become a very vital issue. Increasingly, IPR stake holders are discovering it necessary to enforce their rights in the Indian Courts through litigation. Harmful ingredient India was a neglected market, some of these IPRs, particularly trade marks, were being used by local entities even legitimately, in the absence for the foreign IPR holder your Indian market. In other cases, there has been an actual deliberate copying of the global trade mark taking advantage of what is termed as 'trans border reputation'. In and others there was prolific counterfeiting of the trade mark or design. In every one of these cases, if the global IPR holder now really wants to establish its IPR in India it must deal with these violations to protect its market in In india. Defendants who have been accustomed for unregulated market and minimal attack from the IPR holder on their activities, are suddenly feeling for most of these enforcement moves. The defendants are using conventional tried and true defence techniques to protect their respective businesses. At the same time they and also the legal fraternity, involved in defending these litigations, are continuously evolving newer and innovative counter strategies for defeating and/or delaying and thereby frustrating these enforcement litigations.In this dissertation, I propose to identify these conventional and non conventional counter strategies deployed by defendants and their legal advisors, suggest mechanisms to anticipate these strategies and frame alternative mechanisms to effectively deal with them. Global holders of IPRs do not take into account two fundamental differences in litigation principles in India. Firstly, litigation is very inexpensive for Indian defendants and secondly, the Indian Courts are choked with cases, therefore it takes an inordinately long time for Courts to decide matters and therefore the Judges are quite liberal in granting adjournments. If the daily Board of any Judge in any court is studied, it would be humanly not possible in your Judge to even cursorily take up all the matters during the day and it is therefore preordained that many for the matters will be adjourned. Defendants take advantage among these procedural delays as a matter of strategy to defeat enforcement actions.Another typical tactic adopted by defendants in India is to go ahead and take most aggressive stand possible from the start of the proceedings. Therefore, unlike other countries where defendants generally reply to notices requiring them to cease and desist infringement of an IPR and even make counter offers of settlement, the normal practice in India is to attack the IPR stake holder and/or its IPR. This attack can take various forms: The commonest advisors all is to challenge the validity of the IPR . In respect of trade marks and patents, the validity among the rights are challenged at the Intellectual Property Appellate Tribunal, based in Chennai. In the event of a patent, if the Patent has been recently granted, a post grant opposition may also be filed within one year of the publication for this date of grant in the Patent Office itself relating with section 25(2) among the Patents Act. In scenario of a registered Design, revocation proceedings are commenced at the Controller of Designs at Kolkata. In 2008, the Designs Rules were modified to make revocation of a design simpler. Another common remedy when served with a notice is to file an action for groundless threat of legal proceedings [under section 142 for the Trade Marks Act 1999 for instance] and sue for damages. A further type of action is a declaratory suit seeking to declare that the action of the defendant doesn't amount to infringement. [under section 105 of the Patents Act, for instance] A not so common strategy is that the defendant itself files a suit for passing off against the stake holder asserting, that in fact it is the defendant who is the rightful owner and the IPR holder who has sent the cease and desist notice in the first place, has violated the rights of the opponent. All these defences are fairly robust and therefore, currently I not advocate the issuance of a cease and desist notice to a potential infringer in the Indian context. If the IPR holder has in fact decided to go after an infringer, an action for infringement must be filed as soon as can be after the investigation stage is over. This will effectively thwart the actions for groundless threats as well as not available once a litigation is actually filed [see for instance section 142(2) of the trade marks Act]. When it appears to litigation in the Indian environment, the conventional legal advise has visited file an action and seek an interim actually an ex parte injunction against the defendant. Any certain extent this makes perfect sense because of the inordinate delays customary in the Indian Courts. However, the potential defendants have come to be aware this anxiety of the IPR stake holders and their legal advisers. Therefore their initial strategy is to delay and thwart the acquiring of the matter for interim injunction in determine. This strategy takes is very important of filing a sheaf of interlocutory applications challenging every possible aspect of your suit. It starts with challenging the jurisdiction of your Court to entertain the Suit. It is often seen that many among the legal retainers of Global IPR holders are found in the metro cities of Delhi, Mumbai, Kolkata and Chennai. Often the infringer may not have any activity in these cities, but the action for infringement is filed in one people cities for the ease of the stakeholders' lawyers. Associated with suit is therefore suitable for the infringer to challenge the jurisdiction of legal court. To prevent this type of counter strategy, it makes sense to file the suit within the jurisdiction of your Court where the defendant resides or carries on business. In my experience Judges outside the Metro Cities in India are really keen to deal with IPR issues and some times pronounce very erudite and favourable judgements, when built explained the legal provisions clearly. Another expedient measure adopted by Plaintiffs will be the use of a local authorised signatory to execute the documents, particularly the Plaint. It is common that a junior lawyer from the local litigating lawyer's office is due to the authority to make all statements on behalf of the Global IPR holder. Other than local technical or legal matters which may require that a local or legal person may be so authorized, where facts and evidence is staying laid before the Court, the practice of having an external authorized signatory towards main pleadings, must be avoided, because this provides the defendant a chance to challenge the signatory. If the suit were to ever go on to trial it may pose all types of problems for the plaintiff, particularly if the plaintiff decides to change its litigation lawyer. This counter strategy can be prevented if the constituted attorney of the Plaintiff or a senior officer of the Plaintiff executes the pleading papers to start with. I must at this stage force on an important maxim that is not relished. The grant of an interim injunction is a purely discretionary relief whereas the grant of the permanent injunction is to decided purely on the merits from the case. A new consequence of the very nature of your interim relief, for countering the interim injunction, the defendant adopts two parallel strategies : In the first place the defendant challenges the validity of the IPR. The actual Indian Trade Marks your validity been recently challenged underneath the provisions of section 142 of the Act, the trial judge must stay the procedures. Secondly the defendant pleads balance of convenience in its favour. The total of convenience counter strategy at the interim stage has often worked in preference of the offender. These pleas include attempting to show the apparent mala fide actions of the Plaintiff including that of excessively overcharging for these products protected with the IPR , delay in filing the Suit, acquiescence and latches, lamenting any defendant together with its business is to suffer irreparable loss, how the Indian clients are likely end up being deprived belonging to the low cost defendants goods and a similar customers end up being oppressed from plaintiff, your employees on the defendants and the associates become deprived of employment. Record goes as well as on. At the interim stage the Courts in India have been successfully persuaded by these pleas. (see for example the recent case of Roche vs Cipla in the Delhi High Court, where Roche was portrayed like a villain or maybe even fined a tremendous amount for 'daring' attempt on the 'altruistic' defendant ) Many two strategies to to tackle these counter strategies. By proper investigation of the defendant's activities, the suit should include all is definitely wrong with the defendant's remedys. Instances where the defendant's products, even items that are not the niche of the suit, also been required to be recalled become led in evidence. Actually test could be performed set up that the defendants products under the infringing IPR are subs standard as well as definitely not up to the standards of company's Plaintiff's pieces. Any evidence to exhibit that the defendant is unreliable and capable of placing unsatisfactory, substandard product in the market, or are themselves violating be beneficial tipping the scales and is overtaken by the Plaintiff in matters of discernment. Alternatively, in my opinion, the Plaintiff should trade off the interim injunction application a great order for expediting the invalidity proceedings and the trial produce injunction. On rare occasions, Judges themselves have favoured a steps for success completion of the trial, as happened within Scotch Whiskey Association's case at the Mumbai High Court. Recently, a Judge of the Delhi High Court commented on the paucity of final judgements in IPR matters while dealing having a patent interim injunction case. Once the validity challenge already been shaken off, the infringement action precipitates to whether the act within the defendant comes from infringement not really. The action is now free from any distractive and disruptive processes. In the rare occasion at which the proceedings have proceeded to trial, the defendant commences its dilatory activities in trying to needle the plaintiff. Especially when a witness is necessary travel from abroad, that not uncommon for the defendant going to any length to seek an adjournment. I must here also stress significance of costume of continuous investigation using an activities among the defendant. Rarely will the defendant file an action for malicious prosecution in case the plaintiff is ready to obtain a decree in the defendant. A long time before even a decree is obtained or damages awarded against it, the defendant is most probably to have changed its address, location, constitution effectively name thus thwarting the plaintiff's makes an attempt. Most decrees in India go unexecuted. The primary cause in this is feasible of ongoing investigation efforts by the local team. With continuous monitoring all these activities could be taken into account during the proceedings.In having the defendants' counter strategies, IPR stake holders should bear in the mind never to underestimate their opponents' tenacity to pursue their cause, particularly once the dice is sometimes heavily loaded against the stake holders in site to website place can.Unfortunately, stake holders in IPRs in India, particularly the global players, have not really accepted this fundamental maxim.IPRs, being by their very nature a kind of a negative monopoly,- giving the IPR holder the to prevent others from making, selling or importing products which infringe the IPR, -are often looked at in India as instruments of oppression. In fact in the latest judgement delivered by the Intellectual Property Appellate Tribunal, [the Glivec case] the Tribunal even whet on to state, whilst refusing the grant of a patent, that the grant associated with an patent may against a person's eye of frequent public thus contrary to 'public order', thus questioning the information on the very IPR system in the first place.
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