INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
7.4 Prerequisites and Restrictions to Filing a Lawsuit While there are no mandatory requirements before ini - tiating a lawsuit, issuing a demand letter/cease-and- desist notice to a suspected infringer might assist in stopping the infringement without resorting to litiga - tion, thus accelerating the process. Before taking action, it is also a good idea to perform necessary investigations. Under Section 12A of the Commercial Courts Act 2015, pre-institution mediation is mandatory for com - mercial suits, including IP rights disputes (such as trade mark, copyright and patent suits), where the suit is of specified value and does not seek urgent interim relief. In IP rights matters, courts routinely exempt mediation when urgent injunctions are sought to pre - vent ongoing infringement; however, in the absence of such urgency, failure to undergo mediation renders the plaint liable to rejection, as reaffirmed by the Supreme Court in Patil Automation Pvt. Ltd. v Rakheja Engi- neers Pvt. Ltd . [2022 SCC OnLine SC 1028]. Section 142 of the Trade Marks Act 1999, on the other hand, protects a person from threats of infringement lawsuits by allowing courts to declare that the claims of infringement and breach of rights are unjustified and groundless. 7.5 Lawsuit Procedure In India, lawsuits for infringement and passing off, among other claims, can be filed before District Courts and cannot be heard in any court lower than a District Court. Further, a suit relating to trade mark dispute can also be brought before a High Court having original juris - diction (ie, the High Courts of Delhi, Mumbai, Chennai and Kolkata). Legal practitioners (registered under the Central Advo - cates Act 1961) or registered trade mark agents can represent parties. Parties can also present their cases in person (Section 145, Trade Marks Act 1999).
Costs of Litigating Infringement Actions Investigation fees, attorneys’ fees and expenses, notarisation fees, translation fees and court fees are all examples of usual costs. After a first-instance decision, litigation costs, including attorneys’ fees, are recoverable. However, there is no guarantee that a party against whom an injunction is obtained will have to bear the expenses of litigation. The court has complete discretion over whether or not to award expenses. Foreign trade mark and copyright owners can bring infringement claims in India. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants Section 142 of the Trade Marks Act 1999 protects a person from threats of infringement lawsuits by ena - bling courts to declare that the claims of infringement and breach of rights are unjustified and groundless. 7.7 Small Claims No response is available for this jurisdiction. 7.8 Effect of Trade Mark and Copyright Office Decisions The development of trade mark law in India is heav - ily inspired by judicial pronouncements. High Court decisions (with appellate and writ jurisdiction) bind lower courts in their respective jurisdictions and are an important source of trade mark law. Decisions of As with other trade mark policies, the enforcement of trade mark counterfeiting laws serves to safeguard potential consumers. The Customs Act 1962, read with the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007, makes it illegal to import goods that infringe on IP rights. Because counterfeit goods are intrinsically prohibited under the Customs Act, they have the authority to halt the clearance of goods on their own initiative, as well as where there are prima facie evident or reasonable grounds to believe that the import of specific goods may infringe on IP rights. the TMO also have a major role to play. 7.9 Counterfeiting and Bootlegging
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