The capacity to obtain adequate redress in situations of intellectual property
infringement is critical to the worldwide patent protectionist regime's success.
The Patent Act of 1970 (hereafter referred to as the act) establishes the
legislative basis for the functioning of the Indian patent system.
of the act specifies the types of relief that a court may provide in patent
infringement cases. Essentially, it provides two types of remedies: the first is
the award of an injunction against the patent infringer, and the second is the
proper damages that the patentee has suffered as a result of his patent being
infringed. After the infringement has been determined, both of these remedies
This type of situation frequently makes it difficult for the
patent owners to preserve and keep infringement-related damages until the real
guilt is established. As a result, the patentee usually asks for an interim
injunction as a quick and temporary remedy. The legislation is largely silent on
temporary injunctions, but courts have interpreted section 108 liberally in the
past, allowing interim injunctions to be granted.
In addition Article 50 of the
Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement, to
which India is a member, gives power to court systems to issue temporary
injunctions. General provisions for the award of interim injunction are found in
Order 39- Rule 1&2 of the Code of Civil Procedure 1908, Section 151 of the Code
of Civil Procedure, and Section 37 of the Special Relief Act 1963.
provisions are widely relied upon by courts when granting temporary relief. In
the previous four decades, the jurisprudence surrounding interim injunctions in IPR has gone through many phases. As a result, understanding these steps is
critical in grasping the concept of temporary injunction in its broadest sense.
Analysis of Temporary Injunctions
In Specific Relief Act 1963, temporary injunctions are defined in Section
37 which states that "temporary Injunction are such as are to continue until a
specified time, or until the further order of the court, and they may be granted
at any stage of a suit." Order XXXIX of the Civil procedure Code, 1908, lays
forth the procedure for obtaining a temporary injunction.
The Hon'ble Supreme court has maintained in a series of decisions, including the
landmark Gujarat Bottling Co. Ltd. Case
, that when considering an
application for a temporary injunction, the Court must follow specific
guidelines, many of which are briefly described below:
- The applicant for a temporary injunction must prove his case prima
facie. For this purpose, the Court will look at the basic facts that show
the applicant has a prima facie case to contest, rather than the merits of
the matter. The petitioner must then demonstrate that the claims in the
temporary injunction application are justified.
- The court will also investigate the applicant's activity, which should
be done even before a move to set aside an order is made under Order 39 Rule
4 of the CPC, 1908.
- If the order is not issued, the court must weigh the balance of
convenience, or the comparative damage sustained by the applicant and
- The court will first consider the degree of the loss that would be
suffered by the applicant if the order is not granted, as well as whether
the loss is recoupable through monetary compensation. The party who stands
to lose the most is said to have the balance of convenience on their side,
and the court will either grant or deny the order.
- If directed, the court might further ask the party to post compensation
security or give an assurance to pay the compensation.
In circumstances of extraordinary exigency, Order 39 Rule 3 of the Code of Civil
Procedure, 1908 allows for an ex-parte temporary injunction. However, Rule 3
does not require a new application for an ex-parte injunction; instead, such an
application should be filed as part of a bi-parte interim injunction
application, and the applicant must establish necessity in order for an ex-parte
injunction/order to be granted. The Court has a mandate under Order 39 Rule 3A
of the CPC, 1908, to continue the bi-parte procedures and dispose of the
application within 30 days after passing such an ex-parte order.
Temporary Injunctions under TRIPS Agreement
The TRIPs Agreement, unlike other intellectual property treaties, contains
comprehensive measures for intellectual property enforcement. Infringement of
intellectual property rights is punishable by civil, administrative, and
criminal means under the Agreement. Members are required under the Agreement to
develop fair and equitable processes for enforcing intellectual property rights.
Furthermore, the procedures should not be overly complicated or expensive, nor
should they include arbitrary time limitations or unjustified delays. According
to Article 44 of the Agreement, a Member State's judicial authorities have the
ability to require a party to stop infringing. Inter alia, to prevent imported
items involving the infringement of an intellectual property right from entering
the channels of commerce in their jurisdiction promptly after customs
clearance. Article 50 of the Trade Related Aspects of Intellectual Property
Rights (TRIPS) agreement, to which India is a member, gives power to court
systems to issue temporary injunctions.
Important Components of Temporary InjunctionsThere are 3 important components that should be proved before availing the grant
of temporary injunctions:
- Prima Facie
In Wander Ltd. And Anr. vs Antox India P. Ltd., the Supreme Court discussed
the purpose of giving an interlocutory injunction, stating that while the
plaintiff's rights and violations are ambiguous, the court must act on
well-established principles. The purpose, according to the court, is to protect
the plaintiff in the event that damages are insufficient to recompense him. The
tests established in the American Cynamid and Series 5 cases have been
followed by Indian courts. According to the former, one must look at the entire
case to determine if there is a question to be tried, and if there is, one must
consider the balance of convenience between the parties, keeping in mind that
there are solid reasons to keep the status quo. It was also said that proving a
probability, even a high probability, is not required. In the latter instance,
the court was of the opinion that if it is clear from the evidence that one
party's case is significantly stronger than the other, the court should not
- Balance of Convenience
In general, the balance of convenience is considered relative, which means that
one party's loss and hardship should be higher than the other's. As a result,
unless the balance of the case favours one party, the Court is unlikely to grant
an injunction for the apparent reason that the other party will suffer as a
result of the Court's decision.
- Irreparable Injury
In a case involving infringement or passing off, it is necessary to ensure that
no further harm is done to a party who has established the occurrence of a prima
facie case and balance of convenience, irreparable injury is considered from the
plaintiff's perspective to determine whether refusing to grant an injunction
will result in irreparable injury or loss.
Temporary Injunctions in case of Patents
If a patentee's exclusive patent rights are infringed upon, the Patents Act of
1970 grants the patentee the right to sue. The Limitation Act sets a three-year
statute of limitations for filing a lawsuit when a patent is infringed upon. In
most cases, the plaintiff bears the burden of proof in showing that the
defendant infringed on the plaintiff's patent, though the burden of proof may be
decided at the court's discretion in specific cases. In India, both district and
high courts have the authority to consider patent infringement claims.
if the defendant files a counterclaim for revocation of the patent, only the
High Court has jurisdiction to consider the matter. The court will issue a
temporary injunction in the early stages of the plaintiff's lawsuit. This law
was enacted to keep the defendant from benefitting from the usage of other
patented goods. A patentee must show that the patent is valid and that the
defendant has infringed on it in order to get a temporary injunction.
Furthermore, the subsequent violation of his patent rights has cost him a sum of
money that he will never be able to recoup.
India's history with interim injunctions in high-tech patent disputes is
extensive and thorny. Despite all of the difficulties raised, and despite the
fact that courts have stated that it should be used judiciously, few observers
are surprised to find it being used excessively. While there has been
considerable agreement that temporary injunctions should only be given in
extraordinary circumstances, the reality is less apparent.
There are usually
three criteria that the court must look into while considering these grants:
- prima facie case,
- balance of convenience,
- irreparable injury.
Temporary injunction applications are often decided ex parte, or without the
presence of the defendant, in a relatively short period of time. In terms of
'public interest,' the audi alteram partem concept is sadly difficult to apply
in this context, because civil rights have public interest ramifications. This
leaves it up to the court to keep an eye on any irreversible harm to the greater
public interest, particularly individuals whose lives (or deaths) are dependent
on the medications in question. It's also important to be aware of smart
litigation techniques that may be used.
The number of pharma patent lawsuits
filed against individuals as the first defendant, rather than the allegedly
infringing generic company, has increased in recent years. In most
circumstances, courts are not expected to immediately assume patent validity and
the same is also stated in Section 13(4) of the Patent Act 1970. For example, in
circumstances where there are serious patent oppositions are pending, a judge
could order the plaintiff to re-defend the patent.
In other circumstances, where
there are little to no doubts about the validity of the patent, the court is
entitled to assume it is valid. Ex-parte temporary injunctions are almost always
more difficult to obtain, especially in complex patent matters.
Ramrameshwari Devi v. Nirmala Devi
established the conditions under which
ex-parte relief might be granted. Experience demonstrates that ex-parte
temporary injunction orders in some circumstances can create havoc, and getting them overturned or
amended in our existing legal system is a headache, the Supreme Court wrote in
The court must 'make an endeavour' to dispose of the ex-parte
application inside 30 days on the day it is granted, according to Order 39 Rule
3A of the CPC. However, pharmaceutical patent issues involve exceedingly
complicated scientific and technological concerns that are difficult to settle
in such a short period of time, leaving margin for error.
We'll look at some potential defences against these ostensibly incorrect
temporary injunctions. The Delhi High Court discussed in Shenzen OnePlus
Technology Co. Ltd. v. Micromax Informatics Ltd
A delicate balance has to be struck between the right of the plaintiff and the
right of the defendant at the stage of granting an ad-interim injunction. Only
if a Court were to find that so grave and so irreparable is the injury that even
a day's delay cannot be brooked, and so strong is the prima facie case made out,
only then would a Court be justified in granting an ad-interim injunction.
It would still be a big assumption to presume that everything is well now. For
example, in Novartis Ag v. Sun Pharma Industries (2020), the Delhi High Court
issued an interim injunction despite finding that the three elements had been
proved. However, the court did not record its reasoning for reaching this
determination, nor did it mentioned the public interest aspect.
Temporary Injunctions in case of Trademark:
The first step is to register a trademark. What's more difficult is being
mindful of all the competing brands out there in the market attempting to create
a unique identity for themselves. The two most common reliefs sought in a
trademark infringement or passing-off lawsuit are an injunction and secondly
To begin, it is important to remember that the Supreme Court has been
instrumental in ensuring that trademarks, copyrights, and patents are handled
with in a timely manner on several occasions. In Bajaj Auto Ltd vs Tvs Motor
., they claimed that most intellectual property disputes are
contested between parties purely for the intention of finding a temporary
injunction, and that the process drags on for years until the case is eventually
Instead of simply granting or refusing to grant injunction, the Bench
emphasised that such matters should be handled by the Trial Court very quickly,
usually within 4 months from the date of filing. Obtaining a court order for a
temporary injunction, on the other hand, isn't easy. The plaintiff must
establish a case that includes the following components.
Temporary Injunctions in case of Copyright
The copyright holder, in most cases, wants prompt and effective remedies to
prevent further infringements of his copyright and damage to his business, and
he cannot afford to wait years for a full trial. As a result, the law grants the
plaintiff interim relief in the form of a temporary injunction. The plaintiff
who obtains a temporary injunction has a significant advantage over the
defendant since he is halted in his tracks.
The trial court has sole authority
over whether or not to grant this remedy. The court's discretion is judicial in
nature, and it is governed by norms. It is not arbitrary, vague, or fantastical,
but rather legal and consistent. In a case for granting an temporary injunction
in the United States, a standard four-part criteria was established.
- If the injunction is not ordered, whether the plaintiff will have an
appropriate legal remedy or will be irreparably affected.
- Whether the risk of harm to the plaintiff outweighs the risk of harm to
the defendant from the injunction.
- Whether or not the plaintiff has a substantial chance of succeeding on
- Whether an interlocutory injunction will be in the public interest if it
In the United Kingdom, the standard method was to evaluate whether the plaintiff
had established a prima facie case of copyright infringement, taking into
account the apparent merits of the defence that the defendant intended to
present at trial. If a prima facie case has been made, the court must decide
whether the balance of convenience favours restricting the defendant until the
trial or allowing the plaintiff to recover damages for any infringements by the
defendant during that time.
In cases involving infringement, Indian courts have used a similar three-pronged
criteria to grant interlocutory or temporary injunctions.
Temporary Injunctions in case of Design
The owner of a registered design right has the exclusive right to work on that
design or one that is similar to it. A design right infringement occurs when a
third party manufactures, sells, or uses the registered design or a similar
design for commercial reasons (private or domestic usage is not included), and
the third party is not licenced to do so by the owner of the registered design
The request provided with the application for design registration, as
well as the related designs, specify the details of a registered design right.
Because a design right covers both the registered design and any similar design,
the resemblance of the design (whether it is similar or not) is a factor in
determining whether or not it is infringing.
It is usual for two designs to be regarded similar after comparing them and
recognising resemblance when making an actual judgement about similarity:
- Both designs' unique constitutions as well as the broader dominating
- The design's distinguishing characteristic (distinctive invention,
standout feature when the article is used, etc.)
- Both designs share the same dominant composition
- Only a minor change in dominating constitution exists between the two
designs, or the difference is insignificant.
Encroachment of design is defined by the Design Act of 2000 as piracy of a
registered design. Any fraudulent or evident duplication of a design that has
previously been registered without the approval of the registered owner or
proprietor of the registered design is illegal, according to Section 22 of the
Designs Act, 2000.
Importing any substance or material that bears a strong
resemblance to a design that has already been registered is also prohibited
under this section. If the registered proprietor shows a prima facie case in its
favour under the heading "Balance of Convenience," the registered proprietor may
seek an interlocutory injunction under CPC Order 39, Rules 1 and 2.
Temporary Injunctions in case of Geographic Indications
A geographical indication is a mark that identifies a product as being from a
specific geographic location and has attributes, a reputation, or other features
that are unique to that area or origin.
Kanjeevaram Silk, Drajeeling
Tea etc. Section 22 of the act outlines the laws governing violation of
geographical indications, and this section should be read in conjunction with
section 2 of Article 22 of the TRIPS Agreement, which states that members should
provide protection under the law to interested parties to prevent infringement
of geographical indications by:
- use of any means in the identification or representation of a good that
shows or implies that the good in issue originates in a geographic area
different than the genuine place of origin, causing public confusion
- any use that contains an act of 'unfair competition' under the Paris
Convention's Article 10 (1967).
For the revelation of records, the protection of infringing objects, paperwork,
or other facts pertaining to the subject-matter of the complaint, an injunction
may be given as a temporary or permanent injunction. An injunction is issued to
prevent the defendant from disposing of assets that could jeopardise the
plaintiff's capacity to recover damages, costs, or any monetary remedies that
may be granted in the future.
In the years 2004-2005, Darjeeling Tea was India's first GI-labelled product.
Darjeeling tea has a long history dating back to the 1830s. It was regulated by
the government as part of the tea industry starting in 1933 and subsequently
with the Tea Act 1953. Through different directives, the Tea Board has the
ability to oversee all stages of tea production, packaging, and sale.
Tea has a very well taste and freshness that has attracted the attention and
approval of discerning consumers all over the world. Darjeeling Tea's GI
designation has been the subject of several legal battles. On the grounds of
their registered GIs, the Tea Board took steps against ITC Limited. Since 2003,
ITC Limited has operated a premium executive lounge at their ITC Sonar Hotel
called "Darjeeling Lounge."
In 2010, the Board launched a civil complaint in
Calcutta High Court, requesting a temporary injunction to prevent ITC Limited
from using the mark Darjeeling Lounge. They claimed that ITC infringed on their
registered GIs and certification trademarks by using the term "Darjeeling."
further claimed that using the name 'Darjeeling Lounge' is unfair competition
because it causes confusion among customers who visit Darjeeling Lounge, leading
them to believe that there is some connection to Darjeeling Tea. Darjeeling is
largely a place name, according to the defendant, and tea is not the most
important aspect of Darjeeling. Because its monopoly ends at 'tea,' the Tea
Board has no right to claim singularity over 'Darjeeling.'
The complaint was
also argued to be barred by limitation because the use of the 'Darjeeling
Lounge' began prior to the GI Act's implementation and there was a delay in
filing the suit. The action brought by the Tea Board was dismissed, and the
lawsuit was decided in favour of ITC. The Plaintiff's registered GI and
Certification trademarks are limited to tea, and the protection provided by them
does not extend to lounge services, according to the Court.
Temporary Injunctions in case of Trade Secrets
For a variety of reasons, trade secrets have lately become a much more useful
form of intellectual property protection. Trade secret legislation can provide
protection for a wide range of topics that aren't covered by conventional IP
rights. Employee mobility, globalisation, increased interconnection and
networking and reliance on data kept in "the cloud" are all increasing the
danger of trade secret misappropriation in the workplace.
There are basically
three ways to secure your Trade Secrets namely legal measures such
non-disclosure agreement (NDA), non-compete agreement, digital security and
physical security. Typically, a third person that acquires trade secrets having
knowledge or reason to know that they were delivered in violation of trade
secret law is accountable.
Third parties that get trade secrets inadvertently
and without knowledge are less usually held accountable, but they can
nonetheless face injunctions in certain jurisdictions. In general, trade secret
protection includes civil remedies such as damages and injunctions. Injunctive
relief is partially a question of national practise, but it's also an issue of
how much proof is required.
In light of the foregoing, it could be concluded that a party cannot demand a
temporary injunction as a matter of right, nor can the Court deny it
arbitrarily. The Court's discretion, on the other hand, is informed by the
principles outlined above and is dependent on the circumstances and facts of the
case. The party requesting temporary injunction must show not only that he has a
prima facie case, but also that he would suffer irreparable harm if relief is
denied, and that the balance of convenience favours him.
In the case of M. Gurudas and Ors
., the rationale behind Order 39 of the CPC, 1908 can be
summarised as follows: "While considering an application for injunction, the
Court would pass an order thereon having regard to prima facie, balance of
convenience, and irreparable injury."
- Code of Civil Procedure by S.C.Sarkar and P.C. Sarkar, 12th edition
- CPC Approach of Trail Court by Adv. S.L. Deshpande and Adv. Jayant
Jaibhave, edition 2016
- Interim Injunctions: What's the Damage? � A Summary, (September 2,
- The grant of interim injunctions in lawsuits (31 May 2020), https://www.asiaiplaw.com/article/the-grant-of-interim-injunctions-in-lawsuits
- Types of Injunction, https://sagaciousresearch.com/blog/types-injunction/
- Ex Parte Interim Orders: Ex Parte Relief (26 May,
- AIR 1995 SC 2372
- 1990 (2) ARBLR 399 SC
-  2 WLR 316
- 3 SCC(Civ) 882
- AIR 2006 SC 3275