CIPRA Internship for December 2020 Tort in IPR A presentation by Rupayan Thakur Page | 1 Tort in IPR Defining Tort A Tort1 is an act or omission that gives rise to injury or harm to another and amounts to a civil wrong for which courts impose liability. In the context of torts, injury2 describes the invasion of any legal right, whereas harm describes a loss or detriment in fact that an individual suffers. The primary aims of Tort Law are to provide relief to injured parties for harms caused by others, to impose liability 3 on parties responsible for the harm, and to deter others from committing harmful acts. Torts can shift the burden of loss from the injured party to the party who is at fault or better suited to bear the burden of the loss. Typically, a party seeking redress through tort law will ask for damages4 in the form of monetary compensation. Less common remedies include injunction5 and restitution6. Introduction to Intellectual Property Rights Intellectual Property 7 is the product of the human intellect including creativity concepts, inventions, industrial models, literature etc. Intellectual Property Rights8 (IPR) do not differ from other property rights. They allow their owner to completely benefit from their product which was initially an idea that developed and crystallized. They also entitle them to prevent others from using, dealing or tampering with their products without prior permission from them. They can legally sue them and force them to stop and compensate for any damages. IPR is not a new concept. It is believed that IPR initially started in North Italy9 during the Renaissance10 era. In 1474, Venice11 issued a law regulating Patents protection that granted an exclusive right for the owner. Copyright dates back to 1440 when Johannes Gutenberg 12 invented the printing press with replaceable and moveable letters which were wooden and metal. Late in the 19th Century, a number of countries felt the necessity of laying down laws regulating IPR. Globally, two conventions constitute the core for IPR. These are : 1 https://www.britannica.com/topic/tort 2 https://courses.lumenlearning.com/wmopen-introbusiness/chapter/tort-law-liability-and-damages/ 3 https://lawexplores.com/the-nature-of-tortious- liability/#:~:text=Tort%20concerns%20civil%20wrongs%20leading,action%20for%20unliquidated%20damages.' %20( 4 https://blog.ipleaders.in/damages-under-tort- law/#:~:text=Damage%20is%20the%20loss%20suffered,is%20available%20to%20the%20plaintiff. 5 http://www.legalserviceindia.com/legal/article-484-injunction-and-extra-judicial-remedies-under-tort- law.html#:~:text=An%20injunction%20is%20an%20order,either%20damage%20or%20apprehended%20damag e. 6 https://uk.practicallaw.thomsonreuters.com/1-107-7154?transitionType=Default&contextData=(sc.Default) 7 https://www.wipo.int/about-ip/en/ 8 https://www.dubaicustoms.gov.ae/en/IPR/Pages/WhatIsIPR.aspx 9 https://www.wipo.int/edocs/lexdocs/laws/en/it/it037en.pdf 10 https://www.britannica.com/event/Renaissance 11 https://en.wikipedia.org/wiki/Republic_of_Venice 12 https://www.britannica.com/biography/Johannes-Gutenberg Page | 2 The Paris Convention for the Protection of Industrial Property (1883)13 The Berne Convention for the Protection of Literary and Artistic Works (1886)14 Copyright, Patent, Trade Mark etc protects creators from those who would or wishes to pirate these efforts. The US Constitution 15 vividly describes the concept of IPR as well as their possible remedies in case of infringement. A similar approach too is taken by the European Court of Justice (ECJ)16. India in the context of IPR has also not remained behind. In order to ensure that the hard works of our nation remains our own glory and in order to protect our creators, it too has enacted numerous laws in this sphere. These include : The Copyright Act, 195717 The Patents Act, 197018 The Trademarks Act, 199919 The Geographical Indications of Goods (Registration and Protection) Act, 199920 The Designs Act, 200021 The Semiconductor Integrated Circuits Layout Designs Act, 200022 The Protection of Plant Varieties and Farmers’ Rights Act, 200123 The Biological Diversity Act, 200224 Tort in IPR Contributing to the growing domestic IP jurisprudence, the Delhi High Court25 has recently upheld unfair competition tort in a matter pertaining to data and information emanating from a cricketing event and held that such information qualifies as quasi-property26. This article briefly discusses the said emerging trend of protecting property rights through common law remedies and its plausible outcomes and consequences. IPR laws in India have selectively recognized the economic tort of unfair competition. The Trade Marks Act, 1999 provides for a non-obstante provision which allows a person to initiate an action for passing off in case of unregistered trade mark. However, such provision is not recognized in copyright, design or patent statutes. Till recently, the Indian Courts recognized unfair competition tort (passing off) only in trademarks. However, in 2012, Bombay High Court27 observed that passing off action may lie against a design violation, provided that the consumers associate the unique design with the source and 13 https://www.wipo.int/treaties/en/ip/paris/ 14 https://www.wipo.int/treaties/en/ip/berne/ 15 https://www.whitehouse.gov/about-the-white-house/the-constitution/ 16 https://europa.eu/european-union/about-eu/institutions-bodies/court-justice_en 17 https://www.indiacode.nic.in/handle/123456789/1367?locale=en 18 http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_113_1_The_Patents_Act_1970_- _Updated_till_23_June_2017.pdf 19 http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf 20 http://www.ipindia.nic.in/act-1999.htm 21 http://ipindia.nic.in/writereaddata/images/pdf/act-of-2000.pdf 22 https://www.indiacode.nic.in/bitstream/123456789/1998/1/200037.pdf 23 http://legislative.gov.in/actsofparliamentfromtheyear/protection-plant-varieties-and-farmers-rights-act-2001 24 https://www.indiacode.nic.in/bitstream/123456789/2046/1/200318.pdf 25 http://delhihighcourt.nic.in/ 26 https://findwords.info/term/quasi-property 27 https://bombayhighcourt.nic.in/ Page | 3 that the infringer has copied the design with mala fide to deceive the consumers. [Videocon Industries Limited v. Whirlpool India Limited, 2012 (6) Bom CR 178]28 The Division Bench further observed that : “Action for passing off can be initiated, where interest of an author or owner of a copyright work in his business reputation and goodwill is damaged by misrepresentation that falls outside the copyright law, i.e. the Act. Passing off action will be maintainable, when the claim is not based on infringement of copyright but damage to reputation and goodwill of the proprietor and the said damage is caused by deceit or misrepresentation by the defendant.”29 Tangible properties like land, jewellery etc is protected from interference by trespass and conversion, as well as from carelessly inflicted harm by the Tort of Negligence30. But question remains of what a person's interest in the results of his intellectual efforts – to what are works of art and literature or scientific inventions afforded protection by the law of torts? In countries like the UK, New Zealand31 and Australia32 where Common Law33 is practiced, the Tort of Passing off34 is a Common Law Tort that is used for the enforcement of unregistered Trademark rights. A trader’s Goodwill 35 is protected by the Tort of passing off from misrepresentation. It not only prevents misrepresentation by a trader of his goods or the services being provided but also holds out some connection or association with another when it is false. Actionable under Common Law, the law of Passing off in India is mainly to protect the Goodwill that is attached to unregistered Trademarks. One should not get benefit from the labour of another person is founded in the basic principle of law. In the Trademarks Act, 1999 the concept of Passing off is defined in Section 27(2), 134 (1)(c) and 135. The jurisdiction or power of the District Courts in the matter of passing off suits, to try the suit or issue injunction is referred in Section 134(1)(c). Establishment of the case and the irreparable injury or loss causes is done by the plaintiff. A statutory law such as the United Kingdom Trade Marks Act, 199436 in Passing off and is a Common Law cause of action, providing for the enforcement of registered trademarks through infringement proceedings. The Directive on the Enforcement of IPR (Directive 2004/48) 37 lays down a number of enforcement measures, procedures and remedies which the Member States of the European Union (EU)38 must make available to IPR holders to fight off infringement. These include : 28 https://indiankanoon.org/doc/188051985/ 29 https://www.lakshmisri.com/insights/articles/protecting-property-rights-through-common-law-remedies/# 30 https://blog.ipleaders.in/negligence-in-the-law-of-torts/ 31 https://gg.govt.nz/office-governor-general/roles-and-functions-governor-general/constitutional-role/constitution 32 https://www.aph.gov.au/~/media/05%20About%20Parliament/52%20Sen/523%20PPP/2012_Australian_Con stitution.pdf 33 https://www.investopedia.com/terms/c/common- law.asp#:~:text=Common%20law%20is%20a%20body,or%20written%20rules%20of%20law. 34 https://selvams.com/kb/in/trademarks/passing-off- action/#:~:text=Passing%20off%20is%20a%20form,the%20goods%20of%20another%20person. 35 https://www.investopedia.com/terms/g/goodwill.asp 36 https://www.legislation.gov.uk/ukpga/1994/26/contents 37