The presentation dealt with the Indian experience with enforcing IP through litigation and some lessons for the growing legal system of Cambodia.

1. IP Enforcement through Litigation Lessons from India By Apar Gupta Partner Advani & Co. North Block (Delhi), Advani& Co.

2. Outline India’s Legal System Loom Crafts v. Weave Crafts (Design & Copyright) Banyan Tree Holdings v. A. Murali Krishna (Trademark) Pest Control v. Sugar Cane Breeding Institute(Patent Litigation) Common Lessons

3. 1. India’s Legal System The IP System in India Parallels to Cambodia It is statutory Also common law India is also a member of TRIPS Has made amendments with the laws The various enactments and forms of IP Copyright Trademarks Patents Designs Pub Door Man, Shewsburryby By Calotype46 CC BY-NC-SA 2.0

4. 1. India’s Legal System The adjudicatory system in India A hierarchical system of courts. A Supreme Court the court of first instance court of ultimate appeal State High Courts the court of first instance and court of ultimate appeal often IP infringement actions are preferred in them Lower courts allow IP enforcement actions is on the basis of the valuation of the infringement IPAB – Intellectual Property Appellate Board Disputes as to the ownership and the assignment of the IP right Appeals from the decisions of the TrademarkandPatent office The High Court by James Cridland (CC BY-NC-SA 2.0)

5. 2. Loom Crafts v. Weave Crafts (Design & Copyright) Design/Copyright: Woven furniture by an Indian manufacturer sold and marketed in foreign markets. Alleged Infringement: Entire catalogues of the Manufacturers designs (loom crafts) are copied and put online by the Defendant (Weave crafts). Litigation: An ex-parte injunction is taken against the Defendants. Where : Delhi High Court What : Suit for Mandatory Injunction and Damages Loom Crafts, Outside Catalogue 2011

6. 2. Loom Crafts v. Weave Crafts (Design & Copyright) Relevant Issues in the Litigation Injunctions are granted ex-parte Injunctions are not the final decision of the case Important to have contracts with employees and suppliers One item multiple forms of intellectual property Industrial Designs in furniture(LCEL – 1007) Trademarks in the name (loom craft) Copyright in photographs (catalog) Loom Crafts, LCEL-1007 (webimage)

7. 3. Banyan Tree Holdings v. A. Murali Krishna (Trademark) Trademark: Not registered in India but the Plaintiffs claim it is well known. Not trademark infringement but passing off Alleged Infringement: The name of the plaintiffs resort is utilized by the defendant, real estate developer, for apartments he is building. Litigation: An ex-parte injunction is refused against the Defendants. Where : Delhi High Court What : Suit for Mandatory Injunction and Damages

8. 3. Banyan Tree Holdings v. A. Murali Krishna (Trademark) Defendant PLAINTIFF

9. 3. Banyan Tree Holdings v. A. Murali Krishna (Trademark) Relevant Issues in the Litigation Registration is prima facia evidence of ownership In the absence of registration common law remedies are available When people associate the mark with the source When it is a well known trademark Websites sometimes create jurisdiction

10. 4. Pest Control v. Sugar Cane Breeding Insitute(Patent Litigation) Problem: Insect borers destroy the sugarcane produce in belts of Maharashtra and Tamil Nadu. Solution/Invention: A trap loaded with pheromones to attract these sugarcane borers and decrease the infestation. Alleged Infringement: Similar trap for sugarcane borers is made. Litigation: An ex-parte injunction is taken against the Defendants right in the middle of the sugarcane planting season. Where : Delhi High Court What : Suit for Mandatory Injunction and Damages

11. 4. Pest Control v. Sugar Cane Breeding Institute (Patent Litigation) Defendant PLAINTIFF Pest Control, Sugarcane Trap (webimage) Sugar Cane Breeding Institute(webimage)

12. 4. Pest Control v. Sugar Cane Breeding Institute (Patent Litigation) Prior Art 2 Prior Art 1 US Patent No. 234,976 (Nov. 30, 1880) US Patent No. 464,343 (Dec. 1, 1891)

13. 4. Pest Control v. Sugar Cane Breeding Institute (Patent Litigation) Relevant Issues in the Litigation Does the injunction hold Patent Right is not the only Right Too soon is often hazardous Patent Right is not absolute Early Years : Controllers grant IP Rights liberally Sugarcane Juice by Prasad Kholkute (CC BY-SA 2.0)

15. ex-parte is also often granted

16. defendant may challenge them

17. if they hold suit is compromised with a consent orderRegistrations and Contracts should be in Order Plaintiffs usually prefer the high courts even though they end up paying more Our courts look to foreign jurisdictions

18. Thank You Apar Gupta, Partner, Advani & Co. apar.gupta@advaniandco.com