Title of the Paper: CHALLENGES IN IP ENFORCEMENT

IN INDIA

Sub-theme: CHALLENGES IN IP ENFORCEMENT IN INDIA

Author

Name: Bhanusree J S

Name of Institute: Kerala Law Academy Law College

Official Designation: Fourth Year B. Com LL. B Student

E-mail Address: bhanusree1312@gmail.com

Postal Address: “Kallingal Madom", TLRA-47, Tank View Lane, Palkulangara, Pettah P.O.,
Trivandrum, Pin Code – 695024 Contact Number: 7736616725

Co-Author

Name: Nibin P. Mathew

Name of Institute: Kerala Law Academy Law College

Official Designation: Fourth Year B. Com LL. B Student

E-mail Address: nibinpmathew2002@gmail.com

Postal Address: Gihon- Lavender 4, iCloud homes Winds of change, Alathara, Akkulam,
Sreekaryam, Trivandrum – 695017, Kerala Contact Number: 8078150491
 ABSTRACT

In today’s world, art, entertainment and technology are all considered a way of life. Resting
across the vast lands of the digital world, people can access and to an extent use these creative
works. All such creative works come under the purview of intellectual property. Most often
intellectual properties share their nexus to ownership,Coming from exclusive owners, who by
their right can claim and control public display and performance of their creations.

Humans have always enjoyed the feeling of ownership, being acclaimed and credited for his/her
work has always been a part of their reverie. As much a pleasure it gives, the same is the feeling
of betrayal when the much acclaimed work is taken and adapted by another without the assent or
permission of the owner. This is right on point where intellectual property rights and it's
enforcement comes into play. The main aim of these rights is to protect the owners from
unauthorised use of their creation. The stronghold provided by these rights help maintain the
harmony of ownership. However, nothing in today's world is absolute. All these rights and
provision are subject to numerous challenges when it comes to their
maintenance and enforcement.

KEYWORDS: Intellectual property, Copyright, IT law, Authorship, Ownership, Patent,

Trademark, India
 CHAPTER 1: INTRODUCTION

The human mind and thought, the spectrum of human ability and innovation is much beyond just
a marvel. Humanity has been in constant evolution and progression; this zenith is evident as we
live in the post-modern world. The Human Race has embraced art and entertainment, explored
the abyss of science and technology, glorified the beauty of literature, and always revered the
inventors and creators. We have reached the pinnacle of our existence, with the genesis of
innovations and creation occurring each day.

Innovation is something we come across many times in our daily lives. From the basic amenities
to the multi-integrated chipsets, from a painting to a high budget movie, all these are the product
of an innovation, a creation rooted out from the cosmos of intellectual thought. Such creations
have existed since time immemorial. Hence, we do not know who created certain properties
belonging to an earlier era. However, we do know most of the creators of some of the most
exclusive works, thanks to the codified books of history.

Intellectual property (IP) pertains to any original creation of the human intellect such as artistic,
literary, technical, or scientific creation. Intellectual property rights (IPR) refers to the legal rights
given to the inventor or creator to protect his invention or creation for a certain period of time 1.
These legal rights confer an exclusive right to the inventor/creator or his assignee to fully utilize
his invention/creation for a given period of time. IP protection can be sought for a variety of
intellectual efforts including

(i) Patents2

(ii) Industrial designs relates to features of any shape, configuration, surface pattern,
composition of lines and colors applied to an article whether 2-D, e.g., textile, or 3-D, e.g.,
toothbrush3

(iii) Trademarks relate to any mark, name, or logo under which trade is conducted for any
product or service and by which the manufacturer or the service provider is identified.
1
1. Singh R. Vol. 1. New Delhi: Universal Law Publishing Co. Pvt. Ltd; 2004. Law relating to intellectual property

2
Bainbridge DI. New York: Longman; 2002. Intellectual property.
3
New Delhi: Universal Law Publishing Co. Ltd; 2004. Anonymous. The Design Act. 2000 along with Design Rules
2001.
 Trademarks can be bought, sold, and licensed. Trademark has no existence apart from the
goodwill of the product or service it symbolizes. Recently, the Department for Promotion
of Industry and Internal Trade (DPIIT) revised the trademark registration laws in India.4

(iv) Copyright relates to expression of ideas in material form and includes literary,
musical, dramatic, artistic, cinematography work, audio tapes, and computer software.
India actively participates in the World Intellectual Property Organization (WIPO). 5

(v) Geographical indications are indications, which identify as good as originating in the
territory of a country or a region or locality in that territory where a given quality,
reputation, or other characteristic of the goods is essentially attributable to its
geographical origin6

CHAPTER 2: ENFORCEMENT CHALLENGES

4
New Delhi: Commercial Law Publisher (India) Pvt. Ltd; 2004. Anonymous. The Trademarks Act 1999 along with
trade Marks Rules 2002.

5
New Delhi: Commercial Law Publisher (India) Pvt. Ltd; 2005. Anonymous. The Copyright Act 1957 as amended
up to 1999 along with Copyright Rules 1958 and International Copyright Order 1999.

6
New Delhi: Universal Law Publishing Co. Ltd; 2004. Anonymous. The Geographical Indications of Goods
(registration and protection) Act, 1999 along with Geographical Indications of Goods (registration and protection)
Rules 2002.
Working like two sides of the same coin, infringement of ipr and enforcement of ipr are two of
the most important terms that come into play when it comes to ip. The enforcement of these rights
cannot curtailed within the four walls of a nation but traverses beyond boundaries. These rights
conferred upon legal persons are mandatory to be enforced in a dynamic world. Regardless of the
local hurdles of a nation, like the legislation governing, there are many other challenges in the
enforcement of these rights which can be broadly categorised into:

A. Cross-Border Challenges

For as long as the WTO has existed, the enforcement of intellectual property rights has
been a major challenge for both developed and developing countries. The countries
disagreed vehemently over the levels of enforcement that should be included as part of the
Agreement’s minimum standards.7 While adequate enforcement is essential to the
effective operation of the intellectual property system, higher enforcement standards often
come with a hefty price tag, difficult tradeoffs, 8 and significant intrusions on national
sovereignty. To strike a balance in the TRIPS Agreement, developing countries demanded
the adoption of Article 41.5,9 which explicitly states that a WTO member is not required to
devote more resources to intellectual property enforcement than to other areas of law
enforcement.10 These countries also successfully introduced ambiguities, flexibilities,
limitations, and exceptions into the enforcement provisions in the TRIPS Agreement.11

7
See Peter K. Yu, TRIPS and Its Achilles’ Heel, 18 J. INTELL. PROP. L. 479, 492–99 (2011) (discussing the
enforcement-related negotiation challenges).
8
See Peter K. Yu, Enforcement, Economics and Estimates, 2 WIPO J. 1, 2–6 (2010) (discussing the costs of strong
intellectual property enforcement norms and the resulting trade-offs).
9
See CARLOS M. CORREA, TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS: A
COMMENTARY ON THE TRIPS AGREEMENT 417 (2007) (“Article [41.5] was introduced upon a proposal by the
Indian delegation, and essentially reflects developing countries’ concerns about the implications of Part III of the
Agreement. It was not part of the US and EC proposals that provided the basis for most of Part III of the
Agreement.”); UNCTAD–ICTSD, RESOURCE BOOK ON TRIPS AND DEVELOPMENT 585 (2005) (“.
10
See TRIPS Agreement art. 41.5 .
11
See JAYASHREE WATAL, INTELLECTUAL PROPERTY RIGHTS IN THE WTO AND DEVELOPING
COUNTRIES 7 (2001) (advancing the concept of “constructive ambiguities”); Peter K. Yu, The Objectives and
Principles of the TRIPS Agreement, 46 HOUS. L. REV. 979, 1022–23 (2009) (discussing the ambiguities within the
TRIPS Agreement).
 For example, Articles 41 through 61 contain many vague, broad, undefined, and result-
oriented terms. These terms include “‘effective’, ‘reasonable’, ‘undue’, ‘unwarranted’,
‘fair and equitable’, and ‘not . . . unnecessarily complicated or costly.’” 12 Instead of
mandating specific actions, these provisions merely require a grant of official authority. 13
In the words of academic commentators, these provisions have become the “Achilles’ heel
of the TRIPS Agreement.”14 Although developed countries initially harbored hope that the
TRIPS regime would be vastly improved through the mandatory WTO dispute settlement
process, they soon realized that the problems within the enforcement provisions were far
too deep.15 Since then, developed countries have actively pushed for the development of
greater enforcement levels at the bilateral, plurilateral, and multilateral levels. 16 These
efforts culminated in the establishment of ACTA and the recent negotiation of the Trans-
Pacific Partnership Agreement.17

B. Digital Challenges

12
UNCTAD–ICTSD, supra note 9, at 576; see also J.H. Reichman, Universal Minimum Standards of Intellectual
Property Protection Under the TRIPS Component of the WTO Agreement, in INTELLECTUAL PROPERTY AND
INTERNATIONAL TRADE: THE TRIPS AGREEMENT 23, 71 (Carlos M. Correa & Abdulqawi A. Yusuf eds., 2d
ed. 2008) (“[The TRIPS] enforcement provisions—unlike the substantive standards set out in the agreement—are
truly minimum standards, as attested by the loose and open-ended language in which they are cast.”).
13
See Rachel Brewster, The Surprising Benefits to Developing Countries of Linking International Trade and
Intellectual Property, 12 CHI. J. INT’L L. 1, 31 (2011) (“[T]he TRIPS Agreement’s enforcement provisions are
institution-oriented, not outcome-oriented.”).
14
E.g., J.H. Reichman & David Lange, Bargaining Around the TRIPS Agreement: The Case for Ongoing Public-
Private Initiatives to Facilitate Worldwide Intellectual Property Transactions, 9 DUKE J. COMP. & INT’L L. 11, 34–
39 (1998) (explaining why the enforcement provisions are the “Achilles’ heel of the TRIPS Agreement”); Yu, supra
note 6 (using “Achilles’ heel” in the title of the article)
15
See Symposium, U.S. Industries, Trade Associations, and Intellectual Property Lawmaking, 10 CARDOZO J.
INT’L & COMP. L. 5, 10 (2002) (remarks of Jacques J. Gorlin, Director, Intellectual Property Committee)
16
See Yu, Six Secret Fears, supra note 2, at 989–93 (identifying the efforts by developed countries to push for
stronger enforcement at the bilateral, plurilateral, and multilateral levels).
17
See Trans-Pacific Partnership, OFF. THE U.S. TRADE REPRESENTATIVE, http://www.ustr.gov/ tpp (last visited
Feb 27, 2024); see also Meredith Kolsky Lewis, The Trans-Pacific Partnership: New Paradigm or Wolf in Sheep’s
Clothing?, 34 B.C. INT’L & COMP. L. REV. 27 (2011) (discussing the Trans-Pacific Partnership Agreement); Peter
K. Yu, The Alphabet Soup of Transborder Intellectual Property Enforcement, 60 DRAKE L. REV. DISCOURSE 16
(2012)
 Today, the internet, new communications technologies, and file-sharing networks have
caused serious and widespread problems of unauthorized copying throughout the world.
Since 2003, the U.S. recording industry alone has filed lawsuits against more than 35,000
individuals for illegal distribution of copyrighted works via peer-to-peer networks. 18
Courts in the developed world, such as Australia, Canada, and the United States, have also
been inundated with cases addressing secondary copyright liability. 19 To provide a
deterrent against online illegal file-sharing, Chile, France, Taiwan, South Korea, and the
United Kingdom have recently introduced the so-called graduated response system or are
in the process of doing so.20 This mechanism enables internet service providers to take a
wide variety of actions after giving users warnings about their potentially illegal online
21
activities. Among the permissible actions are: suspension or termination of service;
capping of bandwidth; and blocking of sites, portals, and protocols. 22While the TRIPS
Agreement was already ineffective against cross-border enforcement challenges, it was
particularly ill-equipped to address digital challenges. 23 At the time of the TRIPS
negotiations, many demandeur countries did not anticipate the technological change that
the information revolution was about to unleash. Even if they had the foresight to
anticipate such a change, it is unlikely that they would have succeeded in introducing new
norms in this area. Although the biotechnology revolution had already raised many
18
Fred von Lohmann, RIAA v. The People Turns from Lawsuits to 3 Strikes, ELEC. FRONTIER FOUND. (Dec. 19,
2008), http://www.eff.org/deeplinks/2008/12/riaa-v-people-turns-lawsuits3-strikes.
19
See, e.g., Metro-Goldwyn-Mayer Studios Inc. v Grokster, Ltd., 545 U.S. 913 (2005BMG Canada Inc. v. John Doe,
[2004] F.C. 488, aff’d, [2005] F.C.A. 193 (Can.) Universal Music Austl. Pty Ltd v. Sharman License Holdings Ltd.
(2005) 65 I.P.R. 289 (Austl
20
See INT’L FED’N OF THE PHONOGRAPHIC INDUS., IFPI DIGITAL MUSIC REPORT 2011: MUSIC AT THE
TOUCH OF THE BUTTON 3, 19 (2011); Kaitlin Mara, UK Passes Internet Access-Limiting Bill for Alleged IP
Infringers, INTELL. PROP. WATCH (Apr. 8, 2010, 12:11 PM), http://www. ip-watch.org/weblog/2010/04/08/uk-
isps-required-to-limit-internet-access-for-ip-infringers.
21
, see generally Annemarie Bridy, Graduated Response and the Turn to Private Ordering in Online Copyright
Enforcement, 89 OR. L. REV. 81 (2010); Eldar Haber, The French Revolution 2.0: Copyright and the Three Strikes
Policy, 2 HARV. J. SPORTS & ENT. L. 297 (2011); Alain Strowel, Internet Piracy as a Wake-up Call for Copyright
Law Makers—Is the “Graduated Response” a Good Reply?, 1 WIPO J. 75; Peter K. Yu, The Graduated Response, 62
FLA. L. REV. 1373 (2010).
22
See Yu, supra note 31, at 1374.
23
.” Daniel J. Gervais, The TRIPS Agreement and the Doha Round: History and Impact on Economic Development,
in 4 INTELLECTUAL PROPERTY AND INFORMATION WEALTH: ISSUES AND PRACTICES IN THE
DIGITAL AGE 23, 43 (Peter K. Yu ed., 2007).. See id. at 29 (“The 1992 text was not extensively modified and
became the basis for the TRIPS Agreement adopted at Marrakesh on April 15, 1994.”)
 difficult policy and ethical questions by the mid-1980s, Article 27 provides only very
limited coverage of biotechnology-related issues.24 In the end, as far as digital challenges
are concerned, the TRIPS Agreement was obsolete from inception.25
C. Transborder Challenges

The third type of enforcement challenges is transborder by nature. Combining both

crossover and digital challenges, they take advantage of the global platform provided by
the internet and new communications technologies. Owing to jurisdictional constraints,
this platform provides pirates and counterfeiters with a widely cherished loophole that is
unavailable with physical goods, which need to be transported through borders. 26 The
availability of electronic commerce has also provided the support needed to enable
criminals to hide their activities and ill-gotten gains.
Downloading services, cyberlockers, online auction sites, trading platforms, bulletin
boards, warez groups, and underground networks have created significant challenges for
intellectual property rights holders.27 As the United States Trade Representative (“USTR”)
reported, massive piracy threats are posed by such notorious internet sites as Baidu in
China, vKontake in Russia, allofmp3.com clones in Russia and Ukraine, isoHunt in
Canada, and The Pirate Bay in Sweden.28

In sum, although transnational challenges strongly resemble the first two types of
challenges, the issues they raise are much more complex. By linking domestic and foreign
enforcement problems, they underscore the impossibility of tackling domestic problems

24
See Yu, supra note 6, at 503.
25
See Marci A. Hamilton, The TRIPS Agreement: Imperialistic, Outdated, and Overprotective, 29 VAND. J.
TRANSNAT’L L. 613, 614–15 (1996) see also J.H. Reichman, The Know-How Gap in the TRIPS Agreement: Why
Software Fared Badly, and What Are the Solutions, 17 HASTINGS COMM. & ENT. L.J. 763, 766 (1995) (“[The
principal weakness of the TRIPS Agreement]
26
Some commentators have described these places as “geopolitical black holes.” NAÍM, supra note 23, at 261
(“Geopolitical black holes are the places where the trafficking networks ‘live’ and thrive.”). As Moisés Naím
explained
27
See Peter K. Yu, Digital Copyright and Confuzzling Rhetoric, 13 VAND. J. ENT. & TECH. L. 881, 933 (2011)
(“From allofmp3.com in Russia to the Pirate Bay in Sweden, foreign websites, services, and networks have created
significant challenges for copyright holders.”).
28
See OFFICE OF THE U.S. TRADE REP. [USTR], OUT-OF-CYCLE REVIEW OF NOTORIOUS MARKETS
(2011), available at http://www.ustr.gov/webfm_send/2595.
 without considering their foreign counterparts. 29 The existence of these challenges further
offers the much-needed justification for a higher benchmark for global intellectual
property enforcement.

29
Yu, supra at 48, at 933.
 CHAPTER 3: ENFORCEMENT CHALLENGES IN INDIA

The emergence of new technologies and advancements in the digital realm have introduced new
obstacles to intellectual property. Ensuring digital enforcement of these rights has become a
pressing concern. Protecting intangible assets in a globalized environment has become
increasingly challenging, with organizations facing the common threat of imitation and
exploitation of their brand features, resulting in consumer confusion. The following are some
severe threats to intellectual property30:

3D Printing: Advancements in technology and improvements in material quality have facilitated

the mass production of printed objects, leading to potential IP infringement. Existing legislation
generally addresses these violations, although some amendments or modifications may be
required, particularly in the context of nanotechnology or 3D printing31.

Artificial Intelligence: AI presents both challenges and opportunities for IP protection. While AI
can be used to protect digital content, it can also be utilized to imitate layouts, logos, designs, and
other elements, posing a threat to IP rights. Policing crimes such as audio and video
impersonation, cyber-squatting, typo-squatting, and unauthorized live streaming of copyright-
protected digital content necessitate changes in legislation and an updated legal environment
capable of addressing AI-related concerns.

Spatial Computing: Spatial computing is still in its early stages, lacking explicit anti-piracy
measures and protection against infringement. The use of augmented reality (AR) can lead to
manipulation of patented products, layouts, copyrights, and trademarks. Introducing a
certification stamp for authentic information and establishing a digital system can help address
the misuse of spatial computing.

30
‘Future Impact of Emerging Technologies on IP protection and enforcement- EUIPO updates its Tech Watch
Discussion Paper’ CMS Law-Now available at: https://cms-lawnow.com/en/ealerts/2023/03/future-impact-of-
emerging-technologies-on-ip-protection-and-enforcement-euipo-updates-its-tech-watch-discussion-paper last visited
(4th March 2024)

31
Watal J. London: Kluwer Law International; 2001. Intellectual property rights in the WTO and developing
countries.
 CHAPTER 4: CHALLENGES IN COPYRIGHT ENFORCEMENT

In the field of copyright, procedural hurdles, cumbersome policies, and ineffective enforcement
continue to remain concerns. In February 2019, the Cinematograph (Amendment) Bill, 2019,
which would criminalize illicit camcording of films, was tabled in the Parliament. In June 2021,
the Ministry of Information and Broadcasting sought public comments on the Draft
Cinematograph (Amendment) Bill, 2021. While the draft Bill propose to enhance the penalties
against piracy envisaged in the earlier 2019 bill, it also creates new concerns for the right holders
by exempting all exceptions to copyright infringement covered by Section 52 of the India
Copyright Act. The expansive granting of licenses under Chapter VI of the Indian Copyright Act
and overly broad exceptions for certain uses have raised concerns regarding the strength of
copyright protection and complicated the market for music licensing

In August 2021, the DPIIT issued a notice requesting stakeholder comments on the
recommendation of the July 2021 Department Related Parliamentary Standing Committee on
Commerce (DRPSCC) Report to amend Section 31D of the Indian Copyright Act to extend
statutory licensing to “internet or digital broadcasters.” The recommendation broadens the scope
of statutory licensing to encompass not only radio and television broadcasting, but also online
transmissions, despite a High Court ruling earlier in 2019 that held that statutory broadcast
licensing does not include online transmissions. If implemented to permit statutory licensing for
interactive transmissions, the DRPSCC Report’s recommendation would not only have severe
implications for rights holders who make their content available online, but also raise serious
concerns about India’s compliance with relevant international obligations.

India’s Copyright (Amendment) Rules, 2021, became effective in March 2021. These rules
introduced a host of changes regarding copyright societies, including their registration,
management, and functions.

India remained on the Priority Watch List in the USTR Office’s 2023 Special 301 Report due to
concerns over weak intellectual property (IP) protection and enforcement. The 2023 Review of
Notorious Markets for Counterfeiting and Piracy includes physical and online marketplaces
located in or connected to India.
 1. Criminal Enforcement

Despite the impressive expertise of the NCSC 32 and I4C33, India’s federal make-up means that the
responsibility to investigate piracy generally lies with state governments. Thus, the success of
anti-piracy enforcement in India is often determined by subnational rather than national efforts.
Here, the CoP had observed that piracy is “very low in terms of priority in the radar of law
enforcement agencies.” Similarly, the International Intellectual Property Alliance has reiterated
that criminal enforcement in India is “very daunting”, and marked by “lack of appetite by local
enforcement and significant time delays”.

Pursuing pirates outside major cities appears to be particularly challenging. For example, we
examined the records of a high-profile piracy case in the city of Jabalpur 34. In 2015, the Jabalpur
police had arrested a piracy syndicate responsible for pirating Baahubali, one of the highest
grossing Indian movies of all time. The accused were granted bail by the trial court. However, the
case is still pending and there is no record of a hearing after 2017. Gallingly, the accused were
arrested again, in Hyderabad, for pirating Baahubali 2, the film’s equally successful sequel. While
in the recent case of Knit Pro International v State of Delhi 35, the Indian Supreme Court declared
criminal copyright infringement as a “non-bailable” and “cognizable” offence (i.e. one is
arrestable without warrant and only a court can grant bail), the ground-level impact of the
decision is unclear.

Criminal enforcement is contingent on registering a “First Information Report” (FIR) in

Maharashtra. In other words, such action can only take place when a copyright owner files a
criminal complaint, after which the police prepare a report. The onus of filing the complaint lies
on the copyright owner.

Despite potential advantages, the MIPCU36 does have limitations. For a start, the MIPCU cannot
directly shut down piracy websites or apps. Such action is the administrative remit of the
Indian Ministry of Electronics and Information Technology (MEITY). the unit relies heavily on
voluntary compliance. In this regard, MIPCU listed many difficulties, ranging from non-

32
National Cyber Security Coordinator (NCSC).
33
Indian Cyber Crime Coordination Centre
34
Rahul Mehta v State of Madhya Pradesh 2021 Latest Caselaw 7139 MP
35
2022 LiveLaw (SC) 505
36
Maharashtra Intellectual Property Crime Unit (MIPCU) 2017
compliant hosting services in “rogue geographies” outside India to “members-only” piracy
platforms hidden from public view.

Other limitations raised include sluggish takedown times over weekends, with some mobile apps
taking up to two weeks to act. despite the ubiquity of online piracy, right holders were not
registering enough FIRs with Maharashtra Cyber. this limited the police’s ability to escalate
matters.

The systemic problems with the legal system and law enforcement, the difficulty in prosecuting
overseas-based pirates, adds on to the tendency of many right holders to prioritize the removal of
pirated content over the prosecution of offenders. insofar as it is a state-level body, the MIPCU
had inherently limited powers and resources.

2. Civil Enforcement

On the civil litigation front, the situation in India appears brighter. Many states in India have set
up fast-track courts, and the Delhi High Court has recently established an Intellectual Property
Division. The Delhi High Court’s approach towards online film piracy (expertly summarized by
Justice Pratibha Singh of the Intellectual Property Division in a recent WIPO presentation has
been especially noteworthy37.

In the leading case of UTV Software Communications Ltd. v 1337X.to 38, the court recognized
“dynamic” injunctions (to preempt pages from shifting across different URLs) and specified
criteria to determine when to block “rogue websites” (i.e. websites that "primarily or
predominantly share infringing content).” Pant explained that MEITY officials meet regularly
among themselves and with intermediaries to implement such blocking orders. The MEITY
instructs the Department of Telecommunications to inform ISPs to carry out the blocking of an IP
address, which he notes can be done in “a matter of minutes.” More recently, the Delhi High
Court, in Neetu Singh v Telegram (2022), directed Telegram to disclose information about
uploaders of pirated content.

However, by the time a court order is passed, and finally executed, the proliferation of pirated
content may have already occurred. This shortcoming (which is not peculiar to India) is especially
relevant for pirated streams of live entertainment and sports events. Legal costs, which may be

37
0 David Vaver, Intellectual Property Law: Copyright, Patents, Trade-marks, 2nd edn (Toronto, ON: Irwin Law,
2011),
38
AIRONLINE 2019 DEL 773
prohibitively expensive for smaller outfits, present another major hurdle in the civil litigation
process39

39
See Deborah Azar, ‘A Method To Protect Computer Programs: " e Integration Of Copyright, Trade Secrets, And
Anticircumvention Measures’, Utah Law Review 4 (2008): 1399.
CHAPTER 5: CHALLENGES IN PATENT AND TRADEMARK ENFORCEMENT

In the field of patents, the potential threat of compulsory licenses and patent revocations, and the
narrow patentability criteria under the Indian Patents Act, burden companies across industry
sectors. Patent applications continue to face expensive and time consuming pre- and post-grant
oppositions and excessive reporting requirements. In October 2020, India issued a revised
“Statement of Working of Patents” required annually by patentees. While some stakeholders have
welcomed the revised version of Form 27, concerns remain as to whether the requirement and its
associated penalties suppress innovation, and whether Indian authorities will treat as confidential
the sensitive business information that parties are required to disclose on the form.

India has made some progress on certain administrative decisions in past years, upholding patent
rights, and developing specific tools and remedies to support the rights of a patent holder.
Nonetheless, concerns remain over revocations and other challenges to patents, especially patents
for agriculture, biotechnology, and pharmaceutical products. In addition to India’s application of
its compulsory licensing law, the Indian Supreme Court in 2013 interpreted Section 3(d) of
India’s Patent Law, as creating a “second tier of qualifying standards for patenting chemical
substances and pharmaceuticals.”

Furthermore, the interpretation and application of patent law can be unpredictable and
inconsistent, particularly in important areas such as determining the scope of patentable subject
matter, pre-grant opposition proceedings, and provisions governing the granting of compulsory
licenses40.

In 2016 and 2017, the Patents Rules and the Trade Marks Rules were revised, adopting strict
timelines to dispose of cases, streamline examinations, and reduce certain filing fees to
incentivize start-up activity. In 2019, the Patents (Amendment) Rules further expanded the
categories of applicants eligible for expedited examination of their patent applications. The 2017
examination guidelines for Computer Related Inventions removed all examples of what can and
cannot be patentable, deferring to the patent examiner’s discretion and raising concerns about the
consistency of patentability decisions. In September 2021, the Indian government notified the
Patents (Amendment) Rules, 2021, extending the benefit of fee reduction for patent application

40
https://www.trade.gov/country-commercial-guides/india-protecting-intellectual-property last visited (4th March
2024)
filings to all recognized educational institutions, including foreign institutions. In a positive step
in August 2023, the GoI published the Draft Patents (Amendment) Rules, 2023 for public input.
The key proposed amendments in the Draft Rules aim to streamline and expedite patent
procedures, including those relating to pre-grant opposition, statement and undertaking regarding
foreign patent applications, and annual patent commercial working statement 41.

The Delhi High Court’s direction to the Office of the Controller General of Patents, Designs, and
Trade Marks (CGPDTM) i.e., IP Office to resolve trademark opposition backlog and continuous
monitoring has been a positive step though concerns remain with the excessive delays in
trademark opposition proceedings.

U.S. and Indian companies have advocated for eliminating gaps in India’s trade secrets regime,
such as through the adoption of legislation that would specifically address the protection of trade
secrets42. While India’s National Intellectual Property Rights Policy called in 2016 for trade
secrets to serve as an “important area of study for future policy development,” this work has not
yet been prioritized.

CHAPTER 6: CONCLUSION
41
See generally Nuno Pires De Carvalho, ! e TRIPS Regime of Patent Rights, 3rd edn (Kluwer Law International
2010) who expresses a similar de! nitional scope for the term “intellectual property”.
42
John Richard Brady and Ors. v Chemical Process Equipments, AIR 1987 Del 372.
In conclusion, safeguarding intellectual property (IP) in today's dynamic world necessitates a
multi-faceted approach. While the challenges posed by the ever-evolving technological landscape,
the globalized nature of infringement, and resource constraints are substantial, collaborative
efforts are imperative to ensure the continued efficacy of IP rights.

On one hand, policymakers and legal professionals must strive to continuously adapt legal
frameworks to keep pace with technological advancements and the complexities of cross-border
infringement. This may involve international cooperation to harmonize enforcement procedures
and establish effective legal deterrents against counterfeiting and piracy.

On another hand, fostering public awareness and education regarding IP rights is equally crucial.
Educating individuals about the significance of IP and the potential consequences of infringement
can empower them to make informed choices and contribute to a culture that respects creativity
and innovation.

Furthermore, streamlining enforcement procedures and equipping relevant authorities with the
necessary resources can significantly enhance their capacity to combat IP infringement. By
implementing efficient investigation mechanisms and establishing specialized IP courts, rights
holders can be better equipped to pursue legal action and safeguard their intellectual property.

By adopting a comprehensive and collaborative approach that addresses these challenges, we can
strive to create a robust and effective IP enforcement system that fosters innovation, protects
creators' rights, and ultimately benefits society as a whole.