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Defences against infringement of Intellectual Property Law

Intellectual property (IP) is a kind of property that includes hypothetical and intangible creations of a human intellect. There are many types of intellectual property laws and some of the many countries in the world recognize the laws more than that of other countries. The commonly known types of Intellectual Property are copyright laws, patent laws, trademark laws and trade secret laws. The main motive of intellectual property law is to encourage the creation and production of a wide variety of intellectual goods.

To achieve this motive, the law gives people and businesses property rights to the information and intellectual goods they create, usually for a limited period of time. This gives economic incentive for the creation because it allows people to profit from the information and intellectual goods they create or produce. These economic incentives are expected to encourage innovation and contribute to the technological progress of countries, which ultimately depends on the extent of protection granted to the innovators.

India has laws and protection of the same covering various area of intellectual property which is enumerated below:
  • Trade Marks deals with the Trade Marks Act 1999
  • Patents deals with the Patents Act, 1970 (as amended in 2005)
  • Copyrights and Related Rights deals with the Copyright Act, 1957
  • Industrial Designs deals with the Designs Act, 2000
  • Geographical Indications deals with the Geographical Indications of Goods (Registration and Protection) Act, 1999
  • Plant Varieties deals with The Protection of Plant Varieties and Farmers' Right Act, 2001
  • Data Protection deals with the Information Technology Act, 2000

Infringement of IP laws
An Intellectual property Infringement is the violation or breach of an intellectual property right. IP rights are infringed when a document protected by IP laws is used, copied or otherwise exploited without having the proper permission from a person who owns the original rights. Examples of an Intellectual Property infringement are counterfeiting and piracy."

Counterfeiting is the practice of imitating or emulating genuine goods often to inferior quality, with the intent to take advantage of the superior value of the imitated product in the market. Piracy is an unauthorized copying, use, reproduction and/or distribution of materials which are protected by intellectual property rights. There are different types of intellectual property rights, such as copyrights, patents, trademarks, industrial designs, and trade secrets.

Therefore, an intellectual property infringement for instance be the following:
  • Copyright infringement
  • Patent infringement
  • Trademark infringement
  • Design infringement

Defences against infringement of Intellectual Property laws
In the civil proceedings and the criminal prosecutions under common law a defendant may put up a defense (or defence) in an attempt to avoid criminal or civil liability. Other than contesting the accuracy of any allegation made against them in a criminal or civil proceeding, a defendant may also make allegations against the prosecutor or plaintiff or raise a defense, arguing that even if the allegations put up against the defendant are true. The defendant is nevertheless not liable for the same. Likewise, there are few defences in the intellectual property law.

They are:
  1. Copyright Infringement Defence
    • Invalidity � The defendant may show and prove that the owner's copyright is invalid.
    • License � The defendant may demonstrate that they have a valid license.
    • Public Domain � The defendant may opportunely argue that the work done is in the public domain.
    • Statute of Limitations � The defendant may argue that the statute of limitations for enforcement of an infringement action has run.
    • Accident � The defendant may claim unknowing or unaware or innocent infringement. This is not generally an available defense for commercial use of a copyrighted wok.
    • Fair Use Doctrine � The fair use doctrine claims that there is must be a valid and legal use of the copyrighted work that does not infringe upon the holder's rights. Instances of fair use may include the following uses:
      • review of the material (such as critique or criticism)
      • academic use (such as teaching the material or research)
      • satire or other parody of the work
      • news or public commentary.
  2. Patent Infringement Defence
    • The defendant may prove that they are compliant, by data that shows they are not infringing, or argue that the asserted patent is invalid, if that be the case.
    • The defendant may stop selling or making the infringed product.
    • The defendant may negotiate licensing fees from the patent owner by cross asserting your patent portfolio (if the plaintiff is not an NPE).
    • The defendant may start with non-infringement defence to avoid the infringement claim. Cost of hiring an expert for non-infringement defence is considered to be the best amongst all the available options.
    • The defendant may prove that the patent has been wrongfully obtained by the plaintiff. That the subject of that claim is not an invention within the meaning of this Act, or is not patentable under the Act of Patents Act 1970.
    • Insufficient disclosure of the invention or the method by which it is to be performed.
    • In the case of a patent granted on convention application if in case the application for patent was not made within twelve months from the date of the first application filed for protection for the invention made in a convention country or in India.
  3. Trademark Infringement Defence
    • Doctrine of Laches: Stating that the plaintiff neglected to assert a right or claim which can be taken together with lapse of time and other circumstances causing prejudice to defendant which operates as bar in court of equity.
    • Estoppel: The doctrine of estoppel has three important elements:
      • Position of authority assumed by the defendant.
      • Submission to and dependence upon that assumption by the plaintiff
      • Injury suffered by the plaintiff as an immediate consequence of such submission and dependence."
    • Unclean Hands:
      Invoked by a court only when a plaintiff otherwise entitled to relief has acted so improperly with respect to the argument that the public interest in punishing the plaintiff counterbalances the need to prevent defendant's illegal conduct.
    • Fair Use/ Collateral Use:
      Fair use allows fair comment that incidentally involves use of the mark for a purpose other than that normally made of a trademark. Most often happens in advertising cases (so long as there are no untrue claims) and parody cases (but it is not fair use when a claimed parody is used to promote competitive goods or services). Collateral use allows the use of goods that bear a pre-existing mark.

      Essentially, when a party uses a trademarked item as a component of a more complex product, the doctrine of collateral allows the party to identify the component by its trademarked name without any fear of being liable for infringement. This is only true to the extent the party does not deceive the public into thinking that the product being sold is actually marketed by the trademark owner.
  4. Design Infringement defense
    • Repair Defense
      The repair defence is a complete defence to the claim of design infringement, if the purpose of using the design is to repair a product. It only applies to complex products, which should contain two or more replaceable component parts. The use of the part must restore its overall appearance in whole or part. Repair in this situation means the restoring of damaged parts or replacing damaged parts, replacing incidental items when restoring the component part, or carrying out maintenance on the complex product. After the scope of repair defense, it has been defined the spare part dealers can have the confidence of getting to know how far the repair defence applies in relation to the sale of spare parts. Importers and sellers of spare parts in the automotive aftermarket should still be wary, particularly when staff are interacting and making sales with customers. For Original Equipment Manufacturers, noting what the 'repair defence' entails, you can adjust your design protection strategy accordingly.

Relevant cases of defense used in infringement of Intellectual Property laws:
  • Design Infringement Defense:
    Repair defence was tested successfully in GM Technology Operations LLC v SSS Auto parts Pty Ltd (2019) 139 IPR 199. In this case, GM Global Technology Operations (Holden) sought an injunction against SSS Auto Parts (SSS) for the sale of spare Holden parts to second hand owners to be used to repair Holden Commodores. The claim was made on the basis that SSS was importing these parts for a purpose other than repair. The Court found that even if there was a dual purpose to a spare part (i.e. for repair and enhancement of a vehicle), this would not exclude the repair defence.
  • Patent Infringement Defense:
    Hindusthan Lever Ltd v Godrej Soaps Ltd [1996] AIR Cal 367; Raviraj Gupta v Acme Glass Mosaic Industries (1994) 56 DLT 673, the Delhi High Court rejected the application for the grant of ad-interim injunction made by the plaintiff.
  • F. Hoffmann-LA Roche Ltd. & Anr. v CIPLA Ltd., RFA (OS) 92/2012) counter claim filed by Cipla seeking revocation of IN ‗577 in favour of Roche was dismissed, Delhi High court set aside the impugned decision dismissing suit for injunction filed by Roche.
Defenses are generally recognized as exemptions from liability that the law would otherwise impose. By successfully affirming a defense, a person avoids the normal consequences of the applicable liability rule. According to this rule, whether a defense is available or not what matters only is, to the person who raised it and to the plaintiff or the prosecutor who initiated legal proceedings against that person.

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