Intellectual property (IP) laws safeguard the rights of creators and innovators by granting exclusive rights to their intangible creations. However, instances of infringement can occur, leading to legal disputes. In such cases, defendants may raise specific defenses to counter allegations of infringement. This article explores common defenses against IP infringement, including copyright, patent, trademark, and design infringement, along with relevant examples.
Understanding IP Infringement:
IP infringement occurs when someone violates the rights of the IP owner by using, copying, or exploiting protected intellectual property without authorization. This can include counterfeiting and piracy, which involve the unauthorized reproduction or distribution of copyrighted works, patented inventions, trademarks, or designs.
Types of IP Infringement:
- Copyright Infringement: Unauthorized use or reproduction of copyrighted works.
- Patent Infringement: Unauthorized use, manufacture, or sale of patented inventions.
- Trademark Infringement: Unauthorized use of trademarks or logos that are confusingly similar to registered trademarks.
- Design Infringement: Unauthorized replication or imitation of registered designs or industrial designs.
Defenses Against IP Infringement:
- Copyright Infringement Defense:
- Invalidity: Challenging the validity of the copyright.
- License: Demonstrating the existence of a valid license.
- Public Domain: Arguing that the work is in the public domain.
- Fair Use Doctrine: Asserting fair use for purposes such as criticism, research, or parody.
- Patent Infringement Defense:
- Non-infringement: Providing evidence to show compliance with patent claims.
- Invalidity: Arguing that the asserted patent is invalid.
- Repair Defense: Claiming that the use of patented components is for repair purposes.
- Trademark Infringement Defense:
- Doctrine of Laches: Asserting a delay in asserting trademark rights.
- Estoppel: Challenging the plaintiff’s position of authority and dependence.
- Unclean Hands: Alleging improper conduct by the plaintiff.
- Fair Use/Collateral Use: Invoking fair use for legitimate purposes.
- Design Infringement Defense:
- Repair Defense: Claiming the use of designs for repair purposes.
- Invalidity: Challenging the validity of the registered design.
- Relevant Case Examples:
- Design Infringement Defense:
- Repair defence was tested successfully in GM Technology Operations LLC v SSS Auto parts Pty Ltd (2019) 139 IPR 199. In this case, GM Global Technology Operations (Holden) sought an injunction against SSS Auto Parts (SSS) for the sale of spare Holden parts to second hand owners to be used to repair Holden Commodores. The claim was made on the basis that SSS was importing these parts for a purpose other than repair. The Court found that even if there was a dual purpose to a spare part (i.e. for repair and enhancement of a vehicle), this would not exclude the repair defence.
- Patent Infringement Defense:
- Hindustan Lever Ltd v Godrej Soaps Ltd [1996] AIR Cal 367; Raviraj Gupta v Acme Glass Mosaic Industries (1994) 56 DLT 673, the Delhi High Court rejected the application for the grant of ad-interim injunction made by the plaintiff.
- F. Hoffmann-LA Roche Ltd. & Anr. v CIPLA Ltd., RFA (OS) 92/2012) counter claim filed by Cipla seeking revocation of IN ‗577 in favour of Roche was dismissed, Delhi High court set aside the impugned decision dismissing suit for injunction filed by Roche.
- Defenses against IP infringement play a crucial role in legal proceedings, allowing defendants to challenge allegations and avoid liability. By understanding the available defenses and relevant case examples, individuals and businesses can effectively protect their rights and navigate IP disputes.
