INDIA Law and Practice Contributed by: Pravin Anand and Rohil Bansal, Anand and Anand
In a straightforward civil case involving trade secrets and confidentiality, under normal circumstances there is no need for the claimant to post a bond. 7.2 Measures of Damages The following damages can be claimed in a trade secrets case: • actual/compensatory – based on actual loss caused to the plaintiff and actual profits made by the defendant from misappropriation; • punitive/exemplary – to set an example for other wrongdoers; and • aggravated damages – on account of the extreme mala fide actions of the defendant, especially when actual/compensatory damages are disproportion - ately dwarfed in comparison to the actual amount recoverable by the plaintiffs. The principles governing proof of actual damages, aggravated damages and punitive damages in IP disputes are enshrined in the decision of Hindustan Unilever v Reckitt Benckiser , 2014 (57) PTC 495 [Del] [DB]. This was further upheld in Koninlijke Philips v Amazestore CS (Comm) 737 of 2016. The court also noted that the damages should be granted based on the degree of mala fide conduct. 7.3 Permanent Injunction A permanent injunction will be granted if a claimant is successful in their civil action. If it is practically possible for the defendant to recall a product, the court may pass an order directing recall. In a typical case, there is no limitation on the dura - tion of a permanent injunction, and the defendant is injuncted for all times to come. It is not possible to limit an employee’s subsequent employment in most cases. As observed in the Star India case, any person in any employment for a cer - tain period would acquire knowledge of certain facts without any special effort. The courts in Ambience India and in Krishna Murgai v Superintendence Co AIR 1979 Del 232 held that an employee – particularly after the cessation of their relationship with their employer – is free to pursue their
own business or to seek employment with someone else. However, during the subsistence of their employ - ment, they may be compelled to not engage in any other work or to not divulge the business/trade secrets of their employer to others – especially competitors. In such a case, a restraint order may be passed against an employee, as Section 27 of the Indian Contract Act is no bar in such a situation. However, routine day-to-day affairs of an employer that are commonly known to others cannot be called trade secrets. Trade secrets can be formulae, technical know-how or a peculiar mode or method of business adopted by an employer which is unknown to others. Nonetheless, the courts in John Richard v Chemical Process Equip and in Konrad Wiedemann v Standard Castings held that trade secrets are protected against misuse by any party who may have a relationship with the claimant, irrespective of contract and based on the broad principles of equity, whereby whoever has received information in confidence may not take unfair advantage of it. 7.4 Attorney’s Fees If the claimant is successful in their suit, they may claim litigation costs, including attorney’s fees, and not just damages. Once the court concludes that the claimant is enti - tled to costs, it may ask the claimant to file a detailed memo of costs, and may then pass an order directing the defendant to pay such costs. 7.5 Costs Costs can include: • court fees; • attorney’s fees; • fees of expert witnesses/investigators; • travel expenses;
• fees of court commissioners; and • photocopying/postal expenses, etc.
In the event of the respondent proving that the claim - ant’s case is without any merit and was filed to harass the former, the court may award costs to the respond - ent for harassment and injury suffered.
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