Lawyer Monthly Magazine - April 2019 Edition

APR 2019 93 Client Choice www. lawyer-monthly .com ABOUT MANISHA SINGH I am one of the co-founders and the Managing Partner at LexOrbis. LexOrbis is a premier and amongst the fast- est growing IP firms in India having offices at 3 strategic locations i.e. Delhi, Mumbai and Bengaluru. With a team of over 75 highly reputed lawyers, engineers and scien- tists the Firm acts as a one stop shop and provide practi- cal solutions and services on all Intellectual Property and legal issues faced by technology companies, research institutions, universities, broadcasters, content developers and brand owners. Its services include Indian and global IP (patents/designs/trademark/copyright/GI/plant varie- ties) portfolio development and management, advisory and documentation services on IP transactions/technol- ogy-content transfers and IP enforcement and dispute resolutions at all forums across India. The Firm has a Glob- al reach with trusted partners and associate firms. I overview and supervise all practice groups at the Firm. Starting my career at the time when Indian IP laws and practices were undergoing substantial changes pursuant to India’s obligations to comply with the TRIPS agreement, I have been involved regularly in advising and apprising Indian policy and law makers on global standards associated with IP administrative and enforcement systems. I am a prolific writer and speaker and have authored over 500 articles and papers on contemporary IP and Legal issues in India. I work closely with IP administrative authorities and have been deeply involved in bringing transparency, speed and efficiency in the Indian IP administration. LM Courts of India (especially Delhi, Bombay, Calcutta and Madras) render speedy dispensation of justice to right holders in IPR matters. Generally, the repercussions of infringement are permanent injunction or restraint to continue with the infringing use of the IP in question together with recovery of damages or an account of profits, and delivery-up of infringing goods for destruction. The courts in India have judiciously, yet befittingly, time and again awarded both compensatory as well as punitive damages, to right holders depending on the facts and circumstances of the case. Also, the costs of proceedings are awarded in favour of the right holder and against the infringer on a case to case basis. Where there has been absolute flagrancy of infringement over a sustained period of time and/or the defendant has been proved to be a habitual infringer, the Courts have not shied away in awarding adequate quantum of punitive or exemplary damages to the right holders. Recently, the Delhi High Court has awarded punitive damages totalling up to a sum of INR 3.85 Crores (USD 541,983) collectively against a group of infringers who had been willfully and incorrigibly infringing the reputed trademark of the plaintiff for more than 25 years. In patent infringement cases as well, the courts have awarded heavy punitive damages in favour of right holders depending on the intention and flagrancy of the defendants’ conduct. There are also provisions for the arrest and imprisonment of persons involved in the infringement and especially, an enhanced term of imprisonment for habitual or repeat offenders along with fine. What should be a company’s first course of action when they believe their IP asset is being infringed? Depending on the size and past behaviour of the infringing party and other factors, right holders may resort to either directly filing cases in the court or first approaching the other party to refrain from continuing with the wrongful acts by sending a cease and desist notice. In most civil cases, it is imperative for the right holder to seek an order of temporary ad-interim injunction from the court so that until the trial is concluded, the defendant is restrained from pursuing its alleged infringing activities till a decision is reached or final order of permanent injunction is passed. What do you think can be done to tackle counterfeit goods in this field? A strong and continuous market vigil, which includes market surveys and investigations both offline and online, is imperative to tackle the menace of counterfeiting in India and once the counterfeiters are identified, strong and deterrent actions both under civil and criminal justice systems need to be taken wherever necessary, as stated above. LM CONTACT DETAILS Manisha Singh Tel: +91 9811161518 | Manisha@lexorbis.com www.lexorbis.com