Authored By – Dr. Mohan Dewan & Advocate Tushar Shrikhande
It is a common belief that IP litigation in India can be lengthy and expensive. However, with proper handling and selection of an appropriate forum, this belief can be rendered moot. IP laws in India dictate that a suit for infringement cannot be instituted in a court lower than a District Court. Many litigants, however, mistakenly believe that the High Courts are the most appropriate forums for obtaining remedies in Intellectual Property matters. However, we suggest an alternative forum strategy.
A trademark infringement case recently filed by Finolex Cables Ltd. (Represented by R K Dewan & Co) against M/s Raj Industries, highlighted the advantages of filing a suit before the Pune District Court instead of a High Court. The suit was finally decreed in about 2 years time. This included all stages of trial – filing of the suit, the Court granting an interim injunction, framing of issues, leading evidence, final arguments and the Court granting a permanent injunction in favour of Finolex Cables. Moreover, the cost involved was considerably lower than it would have been had the suit been filed at a High Court. Generally, filing an infringement suit at the District Court costs roughly 4,000 USD as opposed to the cost of 12,000 – 15,000 USD for filing a similar suit at the Delhi, Mumbai or Chennai High Court.
This particular suit for permanent injunction was instituted in 2011, by M/s Finolex Cables, the owner of the trade mark “Finolex”, against M/s Raj Industries and others, to restrain them from using the trademark “Farolex” which was deceptively similar to “Finolex”. The Plaintiff has been using the trademark “Finolex” since 1958. The Court held that the use of the mark “Farolex” was indeed deceptively similar to the trademark “Finolex”. Thus, the Court was pleased to grant a permanent injunction against the opposite party.
Thus, prior to filing a suit for infringement, we recommend carefully assessing the forum in which the case should be filed and prosecuted. Filing a suit at a District Court might be significantly less expensive with a speedier resolution process than filing one at a High Court.