Groundless threat of infringement remedies under ip lawsPresentation Transcript
GROUNDLESS THREATS OF INFRINGEMENT- REMEDIES UNDER IP LAWS By Shelley Anandhavalli. E Advocate Altacit Global Email: [email_address] Website: www.altacit.com
Groundless Threats of Infringement has become a cheap weapon to attack the credibility of an IP owner’s intellectual property.
IP laws are designed to prevent intellectual property owners from making wrongful threats of infringement action against other parties.
These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies.
GROUNDLESS THREATS OF INFRINGEMENT
It also provides for exclusive protection to those who become victims of such threats.
Where one party makes a threat to sue another for infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action.
a person aggrieved by such threats may bring an action against him in the Courts of Law.
What constitutes groundless threats?
Unjustifiable accusation of infringement of the intellectual property
Threat to stop using or obtain any benefits out of the subject Intellectual property
Intellectual Property law recognizes and protects the person against groundless threats of infringement by giving him an opportunity
to bring a suit against the person making such threats
obtain a declaration that the threats are unjustifiable
injunction against the continuance of the threats
recovery of damages.
Section 106 of the Patents Act, 1970 :
[Power of court to grant relief in cases of groundless threats of infringement proceedings]
Where any person threatens any other person by circulars or advertisements or by communications, oral or writing addressed to any other person with proceedings for infringement of a patent, any person aggrieved thereby may bring a suit against him praying for the following reliefs:
(1) declaration to the effect that the threats are unjustifiable
(2) an injunction against the continuance of the threats and
(3) such damages, if any as he has sustained thereby
A mere notification of the existence of a patent does not constitute a threat of proceeding within the meaning of this section.
Section 60 of the Copyrights Act,1957 :
Where any person claiming to be the owner of copyright in any work, by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged infringement of the copyright, then the aggrieved person may
institute a declaratory suit that the alleged infringement to which the threats related was not in fact an infringement of any legal rights of the person making such threats
and may in any such suit obtain an injunction against the continuance of such threats
Recover such damages, if any, as he has sustained by reason of such threats
Provided that this section shall not apply if the person making such threats, with due diligence, commences and prosecutes an action of infringement of the copyright claimed by him.
Section 142 of the trademarks Act, 1999
Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered or alleged to have been pending registration, then
An injunction against the continuance of the threats can be sought
Recovery of any damages
The aggrieved person 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 trade mark.
This section shall not be applicable if the registered proprietor of the trade mark, or a registered user with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.
Nothing in this section shall render a legal practitioner or a registered trade marks agent liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
Sh. Manoj Kumar Maheshwari vs Tips And Toes Cosmetics Pvt. Ltd.
It is alleged that plaintiff is selling the goods under the trademark/label 'SUPREME SUHAG', whereas, defendant is selling the goods under the trademark 'SHILPA'.
Defendant is threatening the plaintiff to stop trading under the trademark 'SUPREME SUHAG' failing which, defendant would institute legal proceedings against the plaintiff.
The plaintiff has been able to make out a prima facie case for grant of injunction. The suit is, accordingly, decreed by directing the defendant to desist from giving such threats