Combating infringement through the courts and law enforcement authorities.

(prHWY.com) March 13, 2012 - Gurgaon, India -- India's judicial system is primarily a legacy of British rule in India. After India gained independence, the majority of the laws remained, with only slight modifications. The court system is as follows:

* The Supreme Court of India is the highest judicial authority in India. This court has original, appellate and advisory jurisdiction. Supreme Court decisions are law and are binding on all other Indian courts. In trademark cases the Supreme Court has appellate powers over high court decisions. The appellant is required
to seek leave from the Supreme Court to hear its appeal.

* The high courts stand at the head of each state's judicial administration. There are 21 high courts in total. Each high court has powers of jurisprudence over all subordinate courts within its jurisdiction -namely, the district and sessions courts and other lower courts. In IP cases the high court has appellate power over district court decisions.

* The district and sessions courts comprise the highest level of courts in a district for civil and criminal cases, respectively. They may act as trial courts of first instance and they apply both federal and state laws. States are divided into districts, within which a district and sessions judge is head of the judiciary, presiding over civil and criminal cases, respectively.

* At the village level, disputes are frequently resolved by panchayats or lok adalats (people's courts), whose decisions are appeasable to the district and sessions court. Trademark disputes must be filed at the district court with appropriate jurisdiction. Jurisdiction is determined by where the defendant resides or carries on its business.

exceptions to this rule, which brand owners often use to select the forum in which they wish to litigate. Only five high courts - Delhi, Mumbai, Chennai, Kolkata and Jammu and Kashmir - can act as a court of first instance in suits for trademark infringement and passing off. All other high courts have appellate jurisdiction. In general, rights holders prefer toile trademark litigation cases at the high court, and this is primarily the reason why most cases come up before these five high courts.

In particular, the Delhi High Court has earned a reputation as the preferred court for IP litigation. In order to discourage forum shopping, the courts have recently been applying a strict test at the admission stage for cases where the defendant is based in a different state. Further guidelines on the ability to invoke jurisdiction on the basis of web presence have also been laid down.

Pursuant to the Civil Procedure Code, a lawsuit generally has three components. The plaintiff submits a statement of claim seeking a grant of permanent injunction, a rendition of the accounts to determine the profits made or damages and costs.

Applications may be made for:

* An interim injunction against the infringer and

* The appointment of a court receiver or commissioner to search the premises and seize the infringing goods, inspect the accounts and take samples. Documents, including registration certificates, may be submitted to support the plaintiff's case

The courts grant interim injunction orders ex parte and inter parts, provided that the rights holder can establish a prima facie case and show that the balance of convenience is in its favor. In many cases where copying is apparent, the court will grant an interim injunction ex parte

without having to hear argument from the other side. In order to make a strong case for an ex parte interim injunction, brand owners are advised to produce:

* registration certificates;
* sales and advertising figures;
* sales invoices evidencing a physical presence in the market;
* advertising material, including brochures, magazine and newspaper advertisements, articles and extracts
from websites; and
* annual reports showing a strong financial standing.

Where the rights holder can show that the defendant's goods clearly bear its mark and that, on being served with a court summons, the defendant will remove the infringing goods, the court generally allows the request for the appointment of a court commissioner with powers to search the premises and seize the infringing goods. In many cases the courts will order that police assistance be given to the court-appointed officer when carrying out
the search and seizure.

Thus, the impact of the raid is clearly felt by the trader in question. The Indian courts have a significant
backlog of cases; in this context, the stories about civil actions taking a decade or more for a final decision to be issued are true. However, with the right kind of preparation, an interim injunction can be obtained quite quickly,
together with a request to carry out a search and seizure. Thereafter, instead of becoming caught up in the court and trial procedures, which can take a long time to conclude given the backlog of cases, it is advisable to engage the defendant in a settlement discussion in order to control its current and future business activities and to enforce the
handover of its infringing goods for destruction. In many cases, when faced with a well-prepared suit reinforced by a hard-hitting raid, defendants quickly choose to settle. In addition, depending on the seizure, in many cases it is possible to negotiate the defendants into paying costs. Experience shows that, first and foremost, it is necessary to choose the correct forum.

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