March 19, 2018 By adminjl Comments are Off

print

USE OF ADR MECHANISM IN SOLVING IPR CONFLICTS

[Vol 2/ Issue 1/ May 2016] [ISSN 2394 -9295]

Alok Verma

Research Scholar (Law)

Vikram University, Ujjain

Email ID: alok17advocate@gmail.com

ABSTRACT

Since centuries, habitants of India have evolved with several forms of dispute resolution mechanisms and over period of time, they have customized, varied according to needs. Sometimes disputable transactions create multi -jurisdictional disputes between the nationalities of different countries having different social backgrounds and mindsets. Usually those business entities having familiarity with ADR are able to resolve such conflicts efficiently. As the determination of commercial or non commercial disputes before different national courts can result into high legal and other costs as well as conflicting awards therefore, the ADR has a potential to provide business entities belonging to distinct nationalities a single unified forum of arbitrariness thereby having a final enforceable award binding across multiple jurisdictions hence, increasingly, IP owners and users are approaching to many of known ADR procedures like arbitration and mediation to resolve their IP disputes.

The intellectual property conflicts are not that conflicts which cannot be resolved through ADR. As intellectual property conflicts being a specialized in its nature and it require specialized services of ADR experts in resolving IP conflicts, mainly due to non availability of IP experts in India is the main obstacle in resolving IP conflicts through arbitration or through ADR. Thus, like any other emerging field of Law, IP conflict resolution also has plenty of debatable issues before it. In this research paper, it will be my endure to develop into the issue like whether ADR can be real alternative to solve IP disputes. Also whether, an alternative dispute resolution procedure can play effective role in resolving IP conflicts, if so, to what extent.

Keywords: Alternative Dispute Resolution, Intellectual Property rights, Multi Jurisdictional Disputes

INTRODUCTION

Disputes relating to intellectual property protection are gradually escalating in the Indian legal setting. Intellectual property protection is available for a limited period for the intellectual property creator who has to enforce it in an effective manner. Because of the excessive delays in the judicial system, there is a need to look for other solutions and mechanisms for sharing the burden of the judiciary. This is particularly relevant because the aggrieved person enjoys limited rights and the only remedy available is that which is prescribed under substantive legislations. Alternative dispute resolution measures are gaining prominence for enforcing the protection of intellectual property. This article explores the use of alternative legal mechanisms for the protection of intellectual property rights in India.

ALTERNATIVE DISPUTE RESOLUTION MECHANISM

Alternate dispute resolution embodies within its garb different modes of resolving a dispute, other than that provided by the traditional model of litigation. Arbitration, mediation, settlement and conciliation are some of the models which are the alternatives to court based litigation. The Arbitration and Conciliation Act, 1996 has been the main statute in India dealing with the two cited alternate forms of dispute resolution. The Civil Procedure Code, 1908 also provides for the adoption of different models for the expeditious determination of disputes. The merits of the modes of alternate dispute resolution are not only limited to speedy remedy, but also, to the flexibility, cost effectiveness, confidentiality and business oriented results. The traditional court based litigation system is adversarial in nature which might lead to severing the relationship between the parties, whereas the alternative dispute resolution methodology provides a way for the amicable settlement of disputes. In fact, the Indian judiciary has effectively tried to bring mediation and settlement for intellectual property disputes in the traditional model of litigation, through the reading of section 89 of the Civil Procedure Code, 1908. Even where the alternative dispute resolution methods fail to be the effective choice for the determination of disputes related to intellectual property rights, they can be used for narrowing down the issues for contestability in a traditional model of litigation.

NEED OF ADR IN INTELLECTUAL PROPERTY DISPUTES

The intellectual efforts of the creators of intellectual property are valued on the basis of the sign of the rights affixed to intellectual output‘. Intellectual property protection provides a pointer to the creator to exert his powers over third parties, who, without his permission, try to use the fruits of his labour. The rationale for the creation of rights gets defeated if they cannot be enforced. The owners of intellectual property have to be their own watchdogs and take recourse to the Courts for the infringement of their rights. Indian Courts have taken a giant dive towards the development of an intellectual property regime in India; however, the available resources could be put to better and proper use by the Courts in India if the alternate dispute resolution is deployed. Matters related to patent law and copyright law, which involve intersection with science and an understanding of technology, need special adjudicating officers, who can comprehend the interdisciplinary nature of the case at hand with sufficient ease. The limited nature of protection given to the owner of intellectual property rights, call for developing mechanisms to execute immediate and swift justice.

While evaluating the performance shown by the Indian judiciary in cases related to intellectual property rights, the Supreme Court of India has in the case of Shree Vardhman Rice & Gen Mills v. Amar Singh Chawalwalaheld that ―…Without going into the merits of the controversy, we are of the opinion that the matters relating to trademarks, copyrights and patents should be finally decided expeditiously by the Trial Court instead of merely granting or refusing to grant injunction. In the matters of trademarks, copyrights and patents, litigation is mainly fought between the parties about the temporary injunction and that goes on for years and years and the result is that the suit is hardly decided finally. This is not proper. In our opinion, in matters relating to trademarks, copyright and patents, the proviso to Order XVII Rule 1(2) C.P.C. should be strictly complied with by all the Courts, and the hearing of the suit in such matters should proceed on a day to

day basis and the final judgment should be given normally within four months from the date of the filing of the suit. Reiterating its stance in Bajaj Auto Ltd. v. TVS Motor Company Ltd., the Supreme Court of India held that ―experience has shown that in our country, suits relating to the matters of patents, trademarks and copyrights are pending for many years and litigation is mainly fought between the parties over temporary injunction. This is a very unsatisfactory state of affairs, and hence, we had passed the above quoted order in the case of Shree Vardhman Rice & Gen Mills v. Amar Singh Chawalwala to serve the ends of justice. We direct that the directions in the aforesaidorder be carried out by all courts and tribunals in this country punctually and faithfully. It is evident that due to unwarranted delay in the disposal of cases and the costly litigation which could prolong the protection accorded to the work, rather than promoting the progress of intellectually protected work, the aggrieved parties are opting for alternate dispute resolution mechanisms for the advancement of intellectual property rights in India. Moreover, the commercial nature of the transactions involved in majority of intellectual property based litigations, solicits such an approach. Arbitration and Mediation mechanisms have been outlined in recent multilateral agreements with the recognition that traditional litigation is no longer the most viable means of settling international intellectual property disputes. IMPORTANCE OF ADR MECHANISMS IN THE IP ADMINISTRATION

Intellectual property disputes tend to be large and complex and often involve high stakes. Resolving these conflicts through traditional litigation processes can sometimes be detrimental to the business interests of both sides to the dispute. The major disadvantages of litigating these disputes can be the

(1) prolonged time to arrive at a resolution, (2) high cost, (3) inflexibility of the result, (4) lack of control over the outcome, (5) poor predictability of the result, (6) negative publicity and (7) harm to the business relationship. Former Chief Justice of the U.S. Supreme Court, Chief Justice Burger once said ―that the notion that ordinary people want black -robed Judges and well dressed lawyers and fine Courtrooms as settings to resolve their disputes is not correct. People with problems, like people with pains, want relief, and they want it as quickly and inexpensively as possible. The ADR mechanism conjures up various advantages when the same is applied in resolving various IP disputes. To sum -up, following are the various advantages:

1. Quick and Efficient Resolution.

2. Cost Savings.

3. Creative, Business -Driven Results.

4. Control Over Process and Result.

5. Better -Informed Decision -Making.

6. Maintained, Improved, or New Business Relationships.

7. Confidentiality.

PATENT LAW AND ALTERNATE DISPUTE RESOLUTION

Law related to patent channelizes the field of technology with law. As the patent disputes involve an understanding of technical knowledge related to the dispute in question, the biggest hurdle, which the Indian Courts face, is with respect to streamlining the trial of the dispute in a cost effective and prompt manner. Every

dispute in the domain of patent law in India has revolved around the nitty -gritty of interim injunctions and the appeals related to those injunctions. Infact many countries have endorsed the inclusion of arbitration as a model for the resolution of patent disputes. The Patent Act, 1970 particularly under section 103 of the Act makes use of arbitration as a procedure for resolution of dispute. Closer integration of alternate dispute resolution mechanisms in patent infringement suits could be the way forward for appropriate dispensation of justice.

TRADEMARKS AND ALTERNATE DISPUTE RESOLUTION

In India, trademark litigation covers an overwhelming landscape in the intellectual property related litigation. The trademark litigation is an inter partes adjudication. That being the case, the modes of alternative dispute resolution can certainly provide an appropriate recourse to the ailing judiciary.

Moreover, it is germane to note that in cases of cyber squatting, arbitration plays an eminent role in the streamlined procedure outlined under the Uniform Domain Name Dispute Resolution Policy, 1999 and the Indian Domain Name Dispute Resolution Policy for the adjudication of disputes. This brings to fore the importance of arbitration and the use of other alternate dispute resolution measures for reconciliation of the interests of the trademark owner and the impugned party.

ADR IN COPYRIGHTS DISPUTES

A copyright dispute typically involves the issue of whether or not an infringing party has infringed a copyright. A key issue in such a dispute is usually the question of whether the infringer has unlawfully ―copied or derived his own work from a work protected by copyright. The dispute typically involves weighing the evidence of the infringing party‘s access to the original work and the degree of substantial similarity between the particular expressions of the original work and the infringing party‘s work.

SOLUTION

The solution lies in the introduction of alternative dispute resolution mechanisms, for the redressal of grievances related to infringement of protected rights of an intellectual property holder. Alternative dispute resolution mechanisms are less time consuming, efficient and provide flexibility to the right holder. It is important to note that in all the commercial transactions, the route of alternate dispute resolution has already shown its majority over the traditional modes of litigation. Nowadays, contracts related to transfer of intellectual property mostly include the ―arbitration­mediation clause. This highlights the weight of arbitration in commercial intellectual property transactions. In a landmark judgment in the case of Bawa Masala Co. vs. Bawa Masala Co. Pvt. Ltd. and Anr., where a number of legal disputes were resolved througha process of alternate dispute resolution, the Delhi High Court passed orders for adoption of a process known as early neutral evaluation, in an intellectual property based litigation suit. The Court in this case, under the umbrella of section 89 of the Civil Procedure Code, 1908 mooted for the inclusion of such procedures for amicable settlement of disputes. The Court further said that the early neutral evaluation procedure shares the ―same features as a mediation process…the difference is that in case of mediation the solutions normally emerge from the parties and the mediator makes an endeavor to find the most acceptable solution whereas ―in case of early neutral evaluation, the evaluator acts as a neutral person to assess the strengths and weaknesses of each of the parties. The Court further made a distinction between early neutral evaluation and arbitration by stating that in early neutral evaluation ―there is no testimony or oath or examination and such neutral evaluation is not recorded. The Court also held that early neutral evaluation is ―confidential and cannot be used by any of the parties against the other. There is no award or result filed. This stands as a seminal case, where, Indian Courts have tried to bring alternative dispute resolution machinery for solving intellectual property infringement related matters. This case also highlights the inclination, which Indian Courts have started sharing, towards involvement of alternate dispute resolution measures in resolution of such disputes.

However, use of alternative modes of dispute resolution for determination of intellectual property related disputes, may face some problems. Firstly, since the protection of intellectual property is territorial in nature, the public policy consideration as set down by the Supreme Court of India in the case of O.N.G.C v. Saw Pipes, can pose a hurdle towards enforceability of arbitral awards, if made on the mandate of intellectual property related disputes. Secondly, the issue of validity of intellectual property points towards determination of right against everyone. This might pose another roadblock for the use of alternative dispute resolution machinery in intellectual property related disputes. However, the determination of infringement of intellectual property, as it determines the rights between two parties, can certainly be adjudicated by the use of alternative dispute resolution machinery.

CONCLUSION

Statutory rights, which are limited in nature, solicit a different approach for their effective enforcement. The jurisprudence related to the establishment of various quasi -judicial bodies under different intellectual property laws, points out that these bodies were formed to share the load and to render an expert testimony towards the determination of validity of intellectual property. The infringement of intellectual property rights, since it pertains to an inter parties dispute, can be very well adjudicated by using alternative dispute resolution measures.

REFERENCES

1. (2009)10SCC257; See also Pachranga Syndicate Pvt. Ltd. v. Som Nath and Anr., 2010(42)PTC253(Del); See also Sri Rajeswari Fire Works v. Kaliswari Fire works and Ors., C.M.A. (MD) Nos. 1378 and 1388 of 2010.

2. (2009)9SCC797

  1. Kevin R. Casey, Alternative Dispute Resolution and Patent Law, 3 Fed. Cir. B.J. 1 (1993)
  2. Margaret F. Anderson, Intellectual Property Mediations: Special Techniques for a Special Field, 3 Tex. Intell. Prop. L.J. 23, 24 (1994).
  3. Dina R. Janerson, Representing Your Clients Successfully in Meditation: Guidelines for Litigators,

N.Y. Litigator, November 1995, at 15 (quoting Chief Justice Burger at the 1985 Chief Justice Earl Warren Conference on Advocacy: Dispute Resolution Devices in a Democratic Society (Roscoe Pound -American Trial Lawyers Foundation 1985)).

  1. Steven J. Burton, Combining Conciliation with Arbitration of International Commercial Disputes, 18 Hastings Int‘l & Comp. L. Rev. 637 1994­1995
  2. Scott H. Blackmand & Rebecca M. McNeill, Alternative Dispute Resolution in Commercial Intellectual Property Disputes, 47 Am. U. L. Rev. 1709 (1998
  3. AIR 2007 Delhi 284
  4. AIR 2003 SC 2629
  5. M.A Smith et al., rbitration of Patent Infringement and Validity Issues Worldwide, 19 Harv. J.L. & Tech. 299 2005 -2006
  6. http://www.inregistry.in/.IN Domain Name Dispute Resolution Policy (INDRP)
  7. http://www.inregistry.in/.IN Domain Name Dispute Resolution Policy (INDRP),
  8. Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 837 (Fed. Cir. 1992); see also Jessica Litman, Copyright As Myth, 53 U. Pitt. L. Rev. 235 (1991)
  9. Atari Games, 975 F.2d at 837­38; See, e.g., Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167, 1169 (7th Cir. 1997); Repp and K & R Music, Inc. v. Webber, 132 F.3d 882, 891 (2d Cir. 1997); Grubb v. KMS Patriots, L.P., 88 F.3d 1, 6 (1st Cir. 1996)
  10. Atari Games, 975 F.2d at 844.
  11. Adam Epstein, Alternative Dispute Resolution in Sport Management and the Sport Management Curriculum, 12 J. Legal Aspects Sport 153, 154 (2002)

Comments are closed.