Impact of summary judgement on IP disputes: A Critical

Analysis

-Jeetika Aggarwal, School of Law, NMIMS Bangalore

KEYWORDS: Summary Judgement, Intellectual Property Disputes, Oral hearings, Speedy

trial, Trademark disputes.

1. Introduction

The re-establishment of IPAB (Intellectual Property Appellate Tribunal) recommended by the

Department related Parliamentary Standing Committee on Commerce clearly shows the need
to have speedy disposal of IP cases in India. One such step taken for speedy disposal of cases
by the lawmakers was the inclusion of Order XIII-A under Code of Civil Procedure (CPC).
This coupled with the amendments made in the Commercial Courts Act, 2015 (“Act”) were
essentially introduced to streamline the procedures related to commercial litigation as a part of
Ease of doing business in India initiative. The 253rd Law Commission report introduced a new
procedure named ‘Summary Judgement’ under Order XIII-A. This order empowered the courts
to decide a claim pertaining to commercial dispute without conducting the oral trials and to
make conditional orders wherever necessary. Even after six years of its inception, the provision
is underutilized and has only been used in disputes pertaining to passing off, trademark and
copyright infringement because the litigants are more proactive in such cases. This extract will
discuss the practical application of Order XIII-A by highlighting the challenges faced and
criticism of the provision with respect to Intellectual Property disputes in India.

2. Impact of Applicability of Order XIII-A of CPC to IP Disputes

‘Summary Judgements’ is not a new concept under CPC as Order XXXVII deals with summary
suits, the only difference between the two is that the former deals with relief relating to
commercial dispute whereas the latter deals with relief relating to liquidated demand or fixed
sum of debt. The main purpose of summary judgement is to avoid unnecessary trials and the
two requirements to file an application under it are that (i) there should be no genuine issue of
material fact and (ii) the party moving the suit should be entitled to such rights. Section
2(1)(c)(xvii) of the Commercial Courts Act mentions about the nature of ‘commercial dispute’

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which also includes matters pertaining to intellectual property rights relating to registered and
unregistered trademarks, copyright, patent, design, domain names, geographical indications.
Such disputes shall not be less than ‘specified value’ i.e. the value of the subject-matter of the
suit shall be more than one crore.

The courts are nowadays inclined towards summary judgements as the procedure is time and
cost effective, however as mentioned above by various judgements this process have at times
proved more time and capital consuming if not done in a detailed manner. Although it is
pertinent to take a note of the fact that the provision of summary judgement under Order XIII-
A have helped the courts to decide the matter in which the plaintiff is not required to lead
evidence ex-parte as IP disputes are sometimes pertaining to infringers who do not appear in
the proceedings of the suit.

2.1. Pros of Summary Judgements

Under the current IP regime intellectual property related litigation in India is done in three
broad ways - civil litigation, criminal litigation and arbitration. However, seeking remedies
through these lawsuits have not proved cost and time effective for the litigants. Cases related
to trademark, patent, copyright etc. involve the ‘goodwill’ of the claimants and delay in
delivering justice hampers the same.

It is important to remember that occasionally conflicts over intellectual property rights include
infringers who do not appear in court. Summary judgement under Order XIII-A of the CPC,
rather than requiring the plaintiff to lead evidence ex parte, is an effective procedure for
resolving disagreements in such instances.

In Merck Sharpe Dohme v Glenmark, which was the first patent infringement suit to receive
permanent injunction after the enactment of the Patents Act, 1970 emphasises the importance
of such principle as the Supreme court fixed the hours given to each party’s counsel to argue.
After such instances the inception of Order XIII-A has been of paramount importance to obtain
a smaller number of interim injunctions and evolve a fast-track litigation. The court in Suntec
Environmental Inc v Trojan Technologies Inc stated that IP disputes are technical in nature and
do not require live evidence giving summary judgements for the matter. An application for
summary judgement also has a tactical benefit since, even if the applicant may be unsuccessful,
the opposing party will be obliged to present its case and evidence at an early stage.

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2.2. Cons of Summary Judgements

1. Impact on IP Suits where oral evidence is a prerequisite: The Delhi High Court while
delivering the judgement in the case of Bright Enterprises Private Ltd. v. MJ Bizcraft LLP,
where the plaintiffs contested for dilution of goodwill by defendants for using ‘PRIVEE’ in
their night clubs’ names which was similar to plaintiff’s mark ‘PRIVE’, emphasised on the
Period of Filing Application, the Contents of Application and the Nature of Proceedings under
the said provision. Hence in such IP suits where concepts like ‘goodwill’ and essential feature’
are being contested oral evidence from parties is a pre-requisite as such issues are subjective to
interpretation and the courts may not analyse the issues in a detailed manner, this was also
observed in Rockwool International v. Thermocare Rockwool (India).

2. High Onus of Proof and Additional Litigation Expenses/ Mis applicability of Order XII A:
- The provisions under Order XIII-A can be disadvantageous if the party loses the summary
judgement application and then proceed to trial in the normal manner. If one loses their
summary judgement application, they will almost certainly be compelled to pay the opponent's
costs, which will typically be due within 14 days. However, the matter will still go to trial as
usual, but even if one’s eventually victorious at trial, they will have lost both their own
summary judgement costs and any costs ordered to be paid to the Defendant. This was observed
in Ahuja Radios v. A. Karim in which the application was initially made for summary
judgement over the mark ‘AHUJA’, but afterwards the court noted that the defendants had no
real prospects, and a permanent injunction was passed. Order XIII-A Rule 3 (a) requires that
the parties should not have real prospects of succeeding on the claim. This is a high standard
and the other party has to merely show that their case may succeed at trial.

Another appropriate judgement to demonstrate the mis-applicability of Order XIII-A is Syrma

Technology Private Limited v. Powerwave Technology Sweden AD. In this case, the Single
judge accepted plaintiff’s application for summary judgement because there was lack of
specificity in the pleadings of the defendant. The division bench set aside the order and stated
that the previous judgement was improbable and the defendants had a possibility to proceed to
trial. However, the defendant was still required to pay a conditional deposit that was around
66% of the amount in dispute.

The courts are nowadays inclined towards summary judgements as the procedure is time and
cost effective, however as mentioned above by various judgements this process have at times

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proved more time and capital consuming if not done in a detailed manner. Although it is
pertinent to take a note of the fact that the provision of summary judgement under Order XIII-
A have helped the courts to decide the matter in which the plaintiff is not required to lead
evidence ex-parte as IP disputes are sometimes pertaining to infringers who do not appear in
the proceedings of the suit.

3. The Road Ahead

Intellectual Property suits are generally of high value, and such provision can be a snag to the
litigation procedure if not facilitated with due care and a detail-oriented approach. IP litigation
involve intangible assets owned by businesses, and checking the validity, their potential value
and the risks involved becomes important as it forms an integral part of transactions involving
mergers and acquisitions, joint ventures, investment, project finance and transactions related
to securities. There should be a subject-matter check, conflict check, ownership check and
validity check. All such details cannot be brought up in the preliminary stage, hence the
provisions of summary judgement impede Intellectual property related litigation.

Considering the number of pending suits in the Indian Courts and to avoid the delay in justice
delivery system summary judgements is essential and should not only be limited to IP disputes.
Delhi High Court specifically have utilized the provision to its best capacity so far by allowing
the parties to file application for IP disputes under Order XIII-A, other high courts should also
take cognizance of the same and bring out a better picture of the judicial process. However a
detailed and uniform framework should be adopted to try such suits and another amendment
can be introduced to focus on the specifications pertaining to transactional disputes such as IP
disputes. With the rising IP disputes in the country, it would be interesting to observe how the
courts strike a balance between the provisions of summary judgements and suits involving
intellectual property.

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