This article is written by Sneha Singhal, Galgotias University B.A.LL.B.(Hons.) During her internship at LeDroit India.
Abstract
As the global economy expands, intellectual property (IP) has become an indispensable and highly valuable asset, offering IP right holders a crucial competitive advantage for growth and development. Nevertheless, enforcing IP rights across borders presents significant challenges due to complexities arising from jurisdictional issues, enforcement mechanisms, and the diverse legal frameworks governing IP in different nations.
This article seeks to address whether Indian judgements on IP can be enforced abroad along with the difficulties an IP holder faces when their work crosses borders singling out the issues involved during an IP dispute. This article examines jurisdiction enforcement challenges and the impact of cultural and legal differences, illustrated by specific dispute examples.
KEYWORDS: Intellectual property (IP), jurisdictional issues, cross border enforcement, IP dispute, Judgments
Introduction
The law protects intellectual property via patents, copyrights, and trademarks, enabling individuals to secure recognition or financial gain from their inventions and creations. This protection fosters a flourishing environment for creativity and innovation by carefully balancing the rights of innovators with the wider public interest.
WIPO recognizes six main types of intellectual property laws. Besides the three already mentioned above, these include geographical indications, Industrial designs, and trade secrets. While each of these six IP laws is protected worldwide under different national acts, their international framework is primarily established by the TRIPs Agreement and conventions administered by WIPO.
Cross border IP enforcement is indeed the process of protecting intellectual property rights when they are violated across international borders. It involves taking legal actions to stop infringement and often seeks remedies such as damages or injunctions. This is a complex area due to the variation in IP laws and enforcement mechanisms across different jurisdictions. Generally Indian judgments on IP cannot be enforced directly in the foreign countries. It requires recognition mainly through bilateral or multilateral agreements.
International treaties and conventions are crucial for establishing legal consistency in international property (IP) laws and streamlining procedures for international jurisdiction. Among these, the TRIPS Agreement stands out as one of the most comprehensive global standards for the protection and enforcement of IPRs, requiring all member countries to incorporate its provisions into their domestic laws. Similarly, the Berne convention governs copyright, and the Paris convention addresses industrial property, both serving to manage international IP matters and facilitate cross border enforcement.
While IP laws generally offer smooth registration and enforcement within a single nation due to a unified legal framework, the landscape drastically shifts when IP crosses international borders.
This article will seek to find out challenges in enforcing Indian judgement on IP in foreign nations along with relevance of the international convention in enforcing the judgements.
Jurisdictional challenges in IP enforcement
International intellectual property disputes arise when there’s a disagreement or infringement concerning IP rights between entities, often multinational corporations, owners or inventors, operating across different countries and their unique legal systems.
A major point of contention in cross border intellectual property disputes is jurisdiction. IP rights are inherently territorial, meaning they can generally only be enforced within the specific country or region where they were granted. This presents a complex problem for resolving disputes, particularly when infringing activities occur across several different jurisdictions, as it makes choosing the appropriate legal venue challenging. Due to its territorial aspect, IPR enforcement is difficult, courts often face conflicting national legislation and international treaties, which hinders timely reforms.
Deciding the correct court or legal jurisdiction for IP disputes is challenging due to their territorial nature, particularly in cross-border infringements or when entities from different territories are involved. The case’s decision may diverge because they tend to base their arguments on their respective countries’ laws.
For instance, in the case of Dwango Co., Ltd. v. FC2, Inc. (Japan), Dwango, the company behind the “Niconico” video platform, owned patents for a system that overlaid user comments on videos. A US based company, FC2, provided a comparable service to Japanese users, but their services were located outside of Japan. The key issue was whether FC2’s activities constituted patent infringement under Japanese law, given that the services were operated from outside Japan. The supreme court of Japan upheld the IP high court’s decision, ultimately dismissing FC2s appeal. The court ruled that the patent rights extend beyond inventions primarily located in Japan or programs predominantly transmitted from outside japan. This decision aligns with the aim of patent law, which is to protect and incentivize inventions that foster industrial development and When considering a complete system, treating program transmission or system installation as equivalent to system production means that a certain degree of patience or understanding is necessary for those processes too.
Legal Framework for Cross Border Enforcement of Judgments
INDIAN POSITION
India is not a signatory to any international convention. India relies on a system of bilateral treaties and the principle of reciprocity to facilitate the enforcement of decrees and judgements from other countries. India has notified certain countries like The United Kingdom, Aden, Fiji, Singapore, Malaysia, Trinidad and Tobago, New Zealand, the Cook Islands (including Niue) and the Trust Territories of Western Samoa, Hong Kong, Papua and New Guinea, Bangladesh and the United Arab Emirates as “reciprocating territories”.
A reciprocating territory is a country or jurisdiction that has an agreement with India for the mutual recognition and enforcement of judgments as provided by section 44a of the Civil procedure code, 1908 where the judgement passed by superior courts in India will directly be enforced on in the reciprocating country and vice versa. This makes a process more efficient and cost effective. On the other hand,
Non reciprocating territories are countries that lack a mutual legal agreement with India for the direct enforcement of court judgements. Consequently, enforcing judgments from these territories in India involves a more intricate and often complex legal process, typically requiring a fresh lawsuit to be filed in an Indian court. This hinders increased litigation expenses and delayed enforcement.
FOREIGN PERSPECTIVE
Doctrine of comity of nations
The comity of nations is a principle in international law that promotes mutual respect and cooperation between countries and their legal systems. India generally follows the principle while enforcing IP judgements. It can be done with the countries having reciprocal agreement with India. Under comity of nations, while the reviewing court doesn’t reopen cases previously decided by its own internal courts, it can still uphold and enforce foreign court judgements. This is only done after a careful review of the foreign court judgements. This is only done after a careful review of the foreign judicial systems fairness and impartiality, ensuring the foreign court had personal jurisdiction over the defendant and subject matter jurisdiction, and confirming the absence of fraud.
Requirements for recognition and enforcement in major jurisdictions (UK, US, Singapore).
Singapore
To enforce an Indian IP judgement in Singapore, the judgment must first be recognized which can be achieved through the Reciprocal Enforcement of Foreign Judgments Act 1959 (the “REFJA”) and the Choice of Court Agreements Act 2016 (the “CCAA”). Once recognized, the judgment can be enforced as if it were a Singaporean judgement.
US
In the US, enforcing foreign judgments, decree or orders requires filing suit in a competent court, as enforcement through letters rogatory is not permitted under US law. The court will then determine whether to recognize and enforce the foreign judgement.
UK
In England and Wales, a foreign judgment must first be recognized by the court before it can be enforced. Once recognised, it holds the same weight as a judgment originally issued in England and Wales. Generally, there are three methods for recognizing a foreign judgment in the UK i.e. enforcing Hague convention judgment, a judgment under statutory regime, and under the common law regime, with the appropriate method depending on the jurisdiction where the judgment was initially obtained. India is covered under the enforcing a judgment under statutory regime. Where it can be enforced through the foreign judgment act, for the countries who are not a part of Hague convention.
Role of international treaties and mechanism
Hague convention
The 2019 Hague convention on recognition and enforcement of foreign judgements in civil or commercial matters aims to streamline the recognition and enforcement of foreign judgments across international borders, thereby enhancing legal certainty, reducing costs, and saving time for businesses and individuals in international disputes.
The Convention’s objective is admirable as it intends to ease global trade and investment by ensuring that judgments made in one member country can be recognised and enforced in another with free-flowing
By March 2024, the US, North Macedonia, Costa Rica, Russia, Montenegro, and the UK have signed the convention. It became effective for EU member states (except Denmark) and Ukraine on September 1, 2023, the same day the European Union also ratified it. As of now, India is not a member of any multilateral treaty including The Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil Matters, 2019.
TRIPS
The WTO trips agreement establishes minimum standards for the protection and enforcement of IP rights that all member countries must adhere to. This includes various forms of IP such as patents, trademarks, copyrights and trade secrets. Furthermore, the agreement obligates members to provide suitable methods for the settlement of disputes related to IP and prohibits prejudice in the application of IP rights.
The Berne Convention for copyright gives automatic protection. This is its most significant feature. The author does not need to register their work in each member country. Member states agree to grant the same copyright protection to work as they grant to their own nationals.
The Paris convention for the protection of industrial property is primarily recognized for reciprocal rights, allowing innovators to often obtain protection in member states without local registration in each. The patent cooperation treaty (PCT) provides a single filing procedure for patents across several countries, simplifying the initial application process. The Madrid protocol facilitates obtaining trademark registration in numerous countries through a streamlined process.
World Intellectual Property Organization (WIPO)- the dispute resolution mechanism
Disputes can be often resolved through litigation, arbitration or mediation even after preventive measures have been taken. While litigation offers enforceable judgments, it can be costly and lead to restrictive outcomes. Alternatively, ADR methods like mediation and arbitration provide a more affordable and private means of resolution. WIPO arbitration and mediation centre, specializes in international intellectual property IP disputes.
Conclusion and Recommendation
The enforcement of Indian intellectual property judgements in other countries is complicated by the inherent territoriality of IP rights, the disparate legal landscapes across nations, and the lack of a cohesive global enforcement system. Despite indies strong domestic IP protection and alignment with international treaties like TRIPS, the lack of adherence to global enforcement conventions, directly impedes the enforceability of its judgments in other nations.
The mutual enforcements of judgments offer relief through streamlined processes in reciprocating territories. Conversely, in non-reciprocating territories enforcement demands initiating entirely new legal proceedings, which often burdens parties with increased litigation costs and significant procedural delays.
Jurisdictional issues significantly complicate cross border disputes, requiring courts to contend with differing legal standards, cultural interpretations and enforcement procedures. While international conventions like berne convention and Paris convention provide some standardization for IP protection, they do not offer a complete solution for judgment enforcement.
To overcome the limited and case specific enforcement of Indian IP judgments abroad, comprehensive measures are needed. Standardizing bilateral agreements, actively participating in multilateral treaties and fostering robust international cooperation are vital to ensure the effective protection of IP rights in today’s globalized economy.
