INDIA Law and Practice Contributed by: Pravin Anand and Rohil Bansal, Anand and Anand
A rights-owner of such confidential information can approach the courts in India for prohibitive reliefs against persons who without authorisation acquire such information. The courts will only pass prohibi - tive orders if it is shown that the defendant obtained the confidential information fraudulently. 1.10 Licensing General principles of contract law in India govern the licensing rights of an owner of a trade secret. They may license them to any party on any agreed-upon terms, subject to the condition that the agreement should not be contrary to the law of the land. As per Section 10 of the Indian Contract Act, all agreements are contracts if they are made with the free consent of parties competent to contract, for a lawful considera - tion and with a lawful object. For the sake of caution, the owner may enter into an NDA with the licensee to ensure that the latter is under a contractual obligation to maintain secrecy as regards such trade secrets as have been handed over to them in confidence, and such NDAs may be built into the licence agreement to make it watertight. The main objective is to ensure that trade secrets are handed over to the licensee under circumstances implying trust or confidence as regards their non- disclosure or unauthorised use. 1.11 What Differentiates Trade Secrets From Other IP Rights IP rights in India are protected under various codified statutes or acts (see 1.1 Sources of Legal Protec- tion for Trade Secrets ). Trade secrets, on the other hand, are not protected through a codified statute but through contract law or the equitable doctrine of breach of confidentiality. IP rights have specified terms of protection as per the following statutes. • Section 23 of the Copyright Act – the term of copy - right for a work published anonymously is 60 years from the beginning of the calendar year following the year in which the work was first published. For a work concerning a disclosed author, the period is 60 years from the death of the author.
• Section 53 of the Patents Act – the term of every granted patent is 20 years from the date of filing of the application for the patent. • Section 25 of the Trade Marks Act – the registration of a trade mark is valid for a period of ten years, and thereafter may be renewed from time to time. • Section 11 of the Designs Act – a design registra - tion is valid for ten years and may be extended for another five years. However, for a trade secret, the rights of its owner persist so long as its secrecy is maintained. While the owner of an IP right can apply for regis - tration of their title with the concerned governmental authority, this is not available for trade secrets. Finally, the costs associated with maintaining secrecy and protection of a trade secret can be much higher in certain cases, compared to IP rights, which are reg - isterable. 1.12 Overlapping IP Rights Trade secrets and IP rights are two different aspects, even though their genesis may be the same. The rights accrue to an owner of a trade secret either by virtue of a contract or in accordance with the prin - ciples of equitable relief under the common law, and it remains a trade secret till such time as the rele - vant conditions are fulfilled and it is not in the public domain. However, upon registration of an IP right (such as a patent or design right) with the governmental author - ity, the owner is rewarded with a monopolistic right to the exclusion of others in rem for a certain period of time, after which any person from among the pub - lic can use the technology that was once the subject matter of said IP right. 1.13 Other Legal Theories It is possible to bring a claim for breach of fiduciary duty against an employee who steals a trade secret, and against a defendant for tortious interference where it has induced an employee to breach a contractual confidentiality obligation to the owner/employer.
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