India: WIPO Asian Regional Symposium On The Enforcement Of Intellectual Property Rights

Last Updated: 16 June 1998
Organised by

The World Intellectual Property Organisation (WIPO) in cooperation with the Intellectual Property Department of the Government of Hong Kong, Special Administrative Region, People's Republic of China

Hong Kong, June 1 to 3, 1998


By Pravin Anand - Anand & Anand


1.1 For a thousand years Europe has known trial by ordeal where innocence was determined by a mere ability to perform cruel tests such as walking barefoot on burning coal. Trial by battle was the next alternate where kings sent out their armies or champions and the winner would represent the truth. About 700 years ago a more humane form of dispute resolution emerged - trial by litigation.

1.2 In a world of cloning, lunar motels and cyberspace, does this make litigation old and obsolete or does it make it robust and time tested? The answer is probably a mix of both.


2.1 ADR means alternate to bringing a law suit although dispute resolution processes like Arbitration, mediation and mini trials may not necessarily be "alternate" to litigation. They are all tools available to a lawyer who can use them wisely to achieve creative solutions.

2.2 To define the terms in a simple sense:-

  • Negotiation is when the parties to a dispute talk it out.
  • Arbitration is when parties choose to have a neutral give a binding decision in relation to their dispute.
  • Expedited arbitration is another form of arbitration where the rules give the arbitrator broader powers to speed up the proceedings.
  • Mediation involves a neutral person who facilitates negotiations by helping the parties understand their interests in an informal, non confrontational way. The mediator cannot impose a settlement. This is particularly good where parties want to continue with their business relationship.
  • Mini trials are variations where parties present an abbreviated version of their case to neutrals for evaluation.
  • Mediation and default arbitration, is a combined procedure where the parties agree to refer their disputes to binding arbitration if their mediation efforts are not successful.
  • Expert determination is a system by which parties may agree that an expert's decision on some point, such as similarity of two computer programmes, may bind them.

2.3 ADR is consensual in nature which means that there must be an agreement between parties either before the dispute has arisen or even during litigation to have their dispute decided by a private forum.

The agreement provides parties with a lot of flexibility in terms of the procedure that they wish to apply, the law, the forum, language etc.

2.4 The crucial issue is why "ADR" or why "Arbitration" when there is a low cost state funded court system available as opposed to arbitration where parties have to pay the cost of the arbitrator which in some cases like ICC arbitration may be commensurate to the amount involved.

The advantages of arbitration are many:-

a) The most important reason is "time". In this world of Moores Law where computer costs half every 18 months because of doubling of computer speed, litigation life measured in years is totally unacceptable to industry. But then Arbitration may also take long time and for this reason the rules of the WIPO Centre on expedited arbitration are quite relevant.

b) On the whole, Arbitration costs lesser than litigation because of its final nature while in litigation appeals may rapidly multiply cost.

c) Another great advantage of Arbitration is that you can select your own arbitrator. This is particularly important in Patent, Trade Secret and High Technology cases where you can get an expert in the filed of your choice. You can always have a technical advisor in court proceedings but eventually the judge must understand the technology in order to apply it and even if he does so, he may lack the proper mind set to decide the matter.

d) Confidentiality is preserved so the fact that the proprietor of an Intellectual Property settled for a "lesser sum" with one infringer would remain a secret and not affect all other cases.

e) The International Character of IP Rights has made arbitration more attractive than multinational court litigation.

For example, Domain name cases where some consent has been obtained as a condition of registration are best decided by mediation or arbitration. Litigation can fail due to complex jurisdictional issues or there may be contradictory judgements in different courts.

f) The other great advantage of Arbitration is that Arbitral Awards are enforceable in many countries under the New York Convention (115 countries) while court judgements are not.

g) The fact that a Party can choose its own judge, forum and choice of law makes it more business like. Parties do not like to suffer the severe disadvantage of suing in another country with a totally alien legal culture. It is perceived that foreign courts do not understand foreign concepts and foreign ways of doing things.

h) Another reason which favours ADR as a whole is that the ongoing relationship between parties may be embittered and destroyed by litigation while it is likely to be preserved in the case of ADR.

2.5 Having said this, let us see the advantages of litigation:

a) There is a perception that agreeing to ADR would be seen as a sign of weakness. Consequently, where there is wilful infringement and a need to send a strong signal that nothing less than full victory would do - Litigation is a preferred option.

b) The precedent value of Litigation is its main strength . Thus in the software industry in USA there has been a lot of Thematic Litigation to determine fundamental paradigms that may define competition in future. The "look and feel" cases and the "Abstraction - Filtration - Comparison" test are examples of this.

As opposed to this, Arbitration awards are not published and have no precedent value. The converse argument is that if the decision is a negative one it could act as a road map for infringers.

c) Judges are subjected to the discipline of statutory procedural rules, Evidence Act and a structure of appeals. As opposed to this, arbitrators enjoy a lot more freedom and in certain situations, this may not be desirable.

d) Another great strength of litigation is the fact that the courts are great at granting interim orders. In some countries, arbitrators do not have this power and even if they do, it leads to practical problems. If an arbitrator refuses interim relief because he does not wish to prejudge the issue, courts are reluctant to grant relief on the ground that a competent tribunal is seized with the matter and if it has refused the relief there must be a good reason for doing so.

Considering that in some countries interim relief of injunction, Anton Piller Orders, Mareva Injunctions and Norwich Pharmacal Orders are practically the main thing (with little or no possibility of damages being granted) this can be a major problem.

The time lost in appointing an arbitrator may be too late where immediate relief is desired. The WIPO Supplementary Emergency Interim Relief Rules provide for an emergency arbitrator available on 24 hours notice who can convene ex parte hearings and make ex parte awards.

2.6 Some of the main issues relating to Arbitration are as follows:-

a) An award, unlike an IP right is in personam and can only bind the parties. Under the laws of some countries a distinction is made between disputes relating to the validity of an IP right and disputes relating to existence or ownership of the right. It is felt that disputes of the latter kind are good subject matter for arbitration while arbitration may not apply where the grant of a registration is involved because these are acts of a sovereign power. It is only the sovereign power which can adjudicate regarding validity and adjudication and the adjudication by a private tribunal simply has no effect.

In recent years most countries have liberalised their thinking. Some countries like France and Japan qualify arbitrability on public policy grounds permitting only those matters to be referred which can be lawfully compromised by the parties. Others like the US have a more liberal approach and disputes with regard to ownership, validity and infringement of patents and trade marks can be arbitrated.

b) Enforceability of awards is another issue as the steps that need to be taken vary from country to country. In some countries like USA, Switzerland and India, an award must be filed with the court and a judgement would make the award a rule of the court. In countries like England and China there is no need to file the award or register it.

2.7 Mediation is quite successful in trade mark conflicts where creative business driven solutions are possible such as addition of a House Mark or slight change in the mark or confining the mark to a different trade channel.

A variation to litigation is an expedited trial procedure known in India. The judge can persuade the defendant at the plaintiffs' suggestion to record evidence before a court appointed official. Normal trial may take five years but this procedure is known to reduce the period to as short a term as six months to one year. Once evidence is recorded, it is the court who decides the dispute but effectively the bottleneck due to the courts cluttered diary is overcome.

In a court proceedings where the plaintiff seeks an Anton Piller Order, a court official or independent solicitor can be appointed to give a neutral fact finding on some issue. The report of the neutral is almost impregnable and often catalyses a settlement.


Any person involved in the enforcement of IP rights must familiarise himself with these invaluable tools of Arbitration and Mediation.

It is ideal to include a multi step process in contracts, so that there is a "back up" technique if one fails to achieve the desired results.

The message is best put in the words of Abraham Lincoln " "You should discourage litigation. You should persuade your neighbours to compromise whenever you can. You should point out to them that a nominal winner is often a loser - in fees, in expenses and it is a waste of time".

The emphasis on the adversarial approach should be diluted as justice thrives best in a system founded on compromise, negotiation and mutual understanding rather than hostility and acrimony.


HEAD OFFICE ADDRESS:   1, Jaipur Estate
                       Nizamuddin East
                       New Delhi- 110013

Tel:     (91 11) 4619639; (91 11) 4615833; (91 11) 4623148;
         (91 11) 4641749; (91 11) 4645067; (91 11) 4645078

Fax:     (91 11) 4624243; (91 11) 4642060; (91 11) 3325045

E-mail:   Click Contact Link 

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions