Arbitrating Intellectual Property Disputes in India

Date01 December 2019
Publication Date01 December 2019
AuthorDaniel Mathew
Arbitrating Intellectual
Property Disputes in
Daniel Mathew1
Recent years have witnessed enhanced utilisation of varied means of alternative
dispute resolution to resolve a variety of disputes. While many areas have
seamlessly adapted and internalised such extension, intellectual property disputes
continue to offer stubborn resistance. This is because on the one hand intellectual
property represents substantial business asset, while on the other it is an outcome
of a carefully constructed public policy. The tension between the two viewpoints
has a profound effect on how intellectual property disputes are understood and
resolved. As a result, jurisdictions, world over, including India, have struggled to
suitably respond to concerns emanating from private adjudication (in particular
use of arbitration), to resolve public policy issues (such as disputes pertaining to
intellectual property). This article attempts (a) a critical appraisal of the efforts
to arbitrate intellectual property disputes in India, (b) identify and analyse legal
roadblocks to such attempts including contradictory approaches adopted by
Indian courts and (c) finally, undertake an evaluation of a possible compromise
that enables arbitration of intellectual property disputes in India.
Arbitration in India, intellectual property disputes, arbitrability, Arbitration and
Conciliation Act 1996, public policy
A right without a remedy is no right at all, so goes the old adage. To protect rights
of its members, a State tends to recognise, formulate and operationalise various
mechanisms to resolve any disputes concerning protection, preservation and
promotion of their rights. These mechanisms may range from being completely
state centric (for instance state courts) to completely private and protected within
a state-supervised system (conciliation or mediation), to completely private sans
Journal of National
Law University Delhi
6(2) 84–106, 2020
© 2021 National Law
University Delhi
Reprints and permissions:
DOI: 10.1177/2277401720959174
1 National Law University Delhi, Delhi, India.
Corresponding author:
Daniel Mathew, National Law University Delhi, Delhi 110078, India.
Mathew 85
state supervision (negotiation) except in very limited instances. Not all remedies
are suitable for all kinds of rights, and in instances such attempts have presented
unique difficulties. One such would be the usage of arbitration to resolve intell-
ectual property disputes.
Intellectual property, notwithstanding lack of a comprehensive definition, is
generally conferred with extensive protections in most jurisdictions, which
operate erga omnes, meaning that they confer monopoly rights to the holder/
owner. Given the skew monopoly rights introduce, states endeavour to craft intel-
lectual property policies to draw a balance between levels of protection granted
and benefits that members of the State can derive from exploitation of such intel-
lectual property. Given the overall policy and the erga omnes character of intel-
lectual property protections, disputes concerning intellectual property are
ordinarily reserved within the sole domain of state courts. The purpose of this
article is to critically apprise whether national courts, specifically in India, provide
the only possible avenue for resolving intellectual property disputes, or whether
such disputes could be resolved utilising alternate methods of dispute resolution.
The second section of the article would analyse why it is important to explore
alternatives to courts as a mechanism of dispute resolution. The third section
explores various concerns that may arise when attempts are made to resolve intel-
lectual property disputes through alternate methods of dispute resolution, in par-
ticular, arbitration. The fourth section looks at attempts to arbitrate intellectual
property disputes in various jurisdictions. The fifth section looks at the approach
adopted within the Indian jurisdiction to arbitrate intellectual property disputes.
This article, however, does not engage with choice-of-law issues pertaining to
question of arbitrability in an international arbitration. It also limits its focus to
three types of intellectual property namely patents, trademarks, and copyright,
and to instances where civil remedies are being sought. Further, this article focuses
only on the mechanism of arbitration and not on alternate dispute resolution
methods generally.
Courts and ADR
Though adjudication of disputes through courts is the staple method of resolving
disputes, it has over the years come into some disrepute. Some of the major issues
that have plagued working of the court systems have been substantial delays, high
cost and lack of expertise, to name a few.1 Moreover, in the event of a transnational
dispute, factors such as distrust of foreign legal practices and political and
economic structures also form a justification for active avoidance of a particular
court system. Additionally, the adversarial system is charged with regularly failing
1 Gregg A. Paradise, Arbitration of Patent Infringement Disputes: Encouraging the Use of Arbitration
Through Evidence Rules Reform, 64 Fordham L. rev. 247, 251–55 (1995). Harish Narasappa, The
Long, Expensive Road to Justice, available at
judiciary-cji-law-cases-the-long-expensive-road-to-justice/1/652784.html. Docket explosion and
consequent delays have been on numerous occasions flagged as a critical issue by the Supreme Court
of India. See also Utkarsh Anand, More Than 2 Crore Cases Pending in India’s District Courts,
available at

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