INDIA Law and Practice Contributed by: Mohit Goel, Sidhant Goel, Aditya Goel and Mehr Bajaj, Sim and San, Attorneys at Law
8.7 International and Cross-Border Considerations
Indian courts permit both rights to coexist where they protect distinct interests (design law: novelty and vis- ual originality; trade mark law: source identification and goodwill), as confirmed in Carlsberg Breweries v Som Distilleries (2018). However, courts prevent trade mark rights from operating as perpetual extensions of expired design monopolies. A product appearance that was registered as a design loses design protec- tion at the end of the 15-year maximum term; con- tinued trade mark or trade dress protection requires demonstrated acquired distinctiveness and source- Copyright and trade marks may coexist in creative works serving dual functions – an artistic logo may be protected by copyright as an original artistic work and simultaneously function as a registered trade mark. Courts grant parallel relief in counterfeiting and piracy matters, but caution against using copyright to obtain perpetual control over branding elements where the distinctive character arises from trade mark rather than independent artistic creativity. In appro- priate cases, a single creative work may give rise to overlapping claims in copyright, trade mark, passing off and moral rights, each addressing a distinct aspect of the commercial harm. 8.6 Enforcement and Remedies Across Multiple IP Rights When multiple IP rights are infringed on the same underlying facts, courts grant a composite injunction covering all successful causes of action. For mon- etary relief, plaintiffs must elect between damages and account of profits per cause of action. Indian law does not permit double recovery: where two causes of action address the same head of loss, quantum is awarded once under the clearest measure. Where genuinely distinct harms are established, courts may recognise both but test the overall total against proportionality and the evidence. In suits combin- ing trade secret misappropriation with registered IP rights, courts may uphold both claims, with quantum structured so that the same profits or sales are not counted twice. identifying function in the marketplace. 8.5 Copyright and Trade Marks
Conflicts between national and international IP regimes in India are managed through a dualist legal frame- work under which international treaties – including the TRIPS Agreement, Paris Convention, Berne Con- vention, Madrid Protocol and PCT – require domestic implementation before they become enforceable. Indian courts therefore apply domestic statutes, such as the Patents Act, 1970 and Trade Marks Act, 1999, rather than treaty provisions directly. While interna- tional obligations may guide interpretation where statutory language is ambiguous, clear legislative provisions prevail, as affirmed in Novartis AG v Union of India . Cross-border disputes are governed by the territori- ality principle (lex loci protectionis), although Indian courts recognise trans-border reputation in trade mark actions where goodwill in India is established. Foreign judgments are enforceable only in accordance with the Code of Civil Procedure 1908, and rights holders often require parallel Indian proceedings. Customs border measures, the Madrid Protocol and the PCT facilitate international protection, but substantive examination and enforcement remain subject to Indian law.
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