Alternative Dispute Resolution in Intellectual Property Disputes

Alternative Dispute Resolution in Intellectual Property Disputes

Author: K. Prajna Kariappa,

3rd Year,
B.B.A. L.L.B. (Hons.),
School of Law, Christ University.

With the surge in innovation and global development undertaken by individuals in various domains of life, society stands at the brink of global challenges in the field of enforcement of intellectual property rights so derived.  These challenges encompass issues that contribute towards the burdensome amount of Intellectual Property (IP) disputes that exist currently. The article aims to dwell into the inception of Alternative Dispute Resolution (ADR) Mechanisms in the field of Intellectual Property disputes by highlighting the pros and cons and therein, primarily focuses on the inclusion of mediation as a mechanism to conquer trademark keying disputes.

Alternative Dispute Resolution Mechanisms

Alternative Dispute Resolution Mechanisms prove to be neutral dispute resolution mechanisms that encompass a wide array of methods that may be opted for by the parties. These include Arbitration, Mediation, Conciliation and Negotiation. ADR provides for consensual dispute resolution among parties in a private forum, that ensures a personalised, party-sensitive and individualistic approach to every dispute that falls under its purview. These mechanisms are further highly preferable owing to the provision of an unbiased specialist intermediary who assists in conducting a flexible procedure, keeping in mind the interests of both the parties, to arrive at a common ground that results in the harmonious culmination to the dispute at hand.

Intellectual Property Rights

Intellectual Property Rights are awarded to any form of novelty, utility and non-obviousness (also called, the NUN Test) that is infused into the innovation by the innovator. It seeks to award a bundle of rights[1] that involve the protection of the intellectual output from duplication or misuse by a third party and thereby prevents free-riding. These intellectual property rights however, are granted for a limited period of time, so as to enable the innovation to be released into public domain and thereafter benefit the society at large.

Necessity precluding the Adoption of ADR Mechanisms in Intellectual Property Rights

The traditional court litigation process comprises of the sole means that Intellectual Property owners may resort to in order to ensure the enforcement and protection of their rights from any form of infringement. This mechanism proves to be detrimental to its cause owing to the excessive delays that are particularly baneful in the field of Intellectual Property which enshrines such rights only for a limited period of time. The delay in court litigation often exceeds the period of Intellectual Property protection guaranteed and therein renders owners to fend for themselves and their rights. Additionally, the Judiciary is overburdened with various cases that requires exceptional proficiency in the matters being dealt with in Intellectual Property which are highly centric around scientific and technical issues. The rationale for the enshrinement of rights lies in its enforceability which is rendered dormant in the event that they cannot be effectively enforced. Owing to the interdisciplinary nature of Intellectual Property, it is recommended that special adjudicating officers be deployed to settle disputes concerning Intellectual Property. The growing influx of Intellectual Property, excessive delays, costliness and rigidity of the Indian Judicial system paves the way for the introduction of ADR to be employed in the dispute resolution of Intellectual Property disputes. In furtherance to this, the current economic downturn provides incentive to the application of such measures which encompass a wide array of benefits such as that of flexibility, individuality, personalisation, expertise and cost – time efficiency.

Indian Judiciary recognising the need for resorting to ADR in Intellectual Property Rights disputes

The Indian judiciary has supported the above view in various judicial pronouncement
s such as those of 
Shree Vardhman Rice & Gen Mills v. Amar Singh Chawalwala[2] wherein the Court opined that “matters relating to trademarks, copyrights and patents should be finally decided expeditiously by the Trial Court instead of merely granting or refusing to grant injunction.”
In Bajaj Auto Ltd. v. TVS Motor Company Ltd[3] the Court highlighted the delay that is incumbent on matters relating to patents, trademarks and copyrights wherein the primary dispute being regarding the inter-partes temporary injunction is fought for years together. The commercial nature of Intellectual Property disputes mandates a speedy dispute settlement.
A landmark case highlighting the usage of ADR is Bawa Masala Co. vs. Bawa Masala Co. Pvt. Ltdand Anr.,[4] where the test of ‘neutral evaluation in an Intellectual Property dispute was laid down by the Delhi High Court. The Court, under the umbrella of S.89, CPC debated on the inclusion of ADR mechanisms in Intellectual Property Rights dispute settlement. While drawing parallels between this test and the process of mediation, the Court stated that both these mechanisms were similar except that “in case of mediation the solutions normally emerge from the parties and the mediator makes an endeavor to find the most acceptable solution whereas in case of early neutral evaluation, the evaluator acts as a neutral person to assess the strengths and weaknesses of each of the parties.” The Court also held that early neutral evaluation is “confidential and cannot be used by any of the parties against the other. There is no award or result filed.”  This stands as a seminal case, where, Indian Courts have inclined towards ADR machinery for solving intellectual property infringement related matters.

Indian Legislature recognising the need for resorting to ADR in Intellectual Property Rights disputes

The Indian Legislature has also emphasized on the inputs of this article by virtue of the proviso to Order XVII Rule 1(2) C.P.C. which states that the hearing of suits in such matters must  “proceed on a day to day basis and the final judgment must be ideally given within four months from the date of filing of the suit.” The Arbitration and Conciliation Act, 1996 embodies the employment of the two main forms of ADR in a statutory manner. The Civil Procedure Code, 1908 also provides for the adoption of different models for the expeditious determination of disputes. S.89 of the Civil Procedure Code, 1908 has been invoked by various courts in order to proliferate the practice of mediation to settle disputes that ultimately reduce the burden of the judiciary.

Pros and Cons of the Inception of ADR in Intellectual Property Rights Disputes

ADR Mechanisms put forth a plethora of pros than cons when being considered in the feasibility of its application in solving Intellectual Property disputes. These include – (i) Certainty of Forum, in the manner of ensuring that the disputes are dealt with by the right people, in the right place and time, thereby additionally ensuring expertise in the adjudication of disputes (ii) Time and Cost efficiency, by virtue of the speedy and flexible process that it offers (iii) Personalised Dispute Settlement, that is embodied in the fact that each of these proceedings occurs with a neutral third party who is an expert in the said area, adjudicating such disputes (iv) Neutrality, which is ensured by the presence of an uninterested third party, often chosen by both parties to the dispute together (v) Confidentiality, Intellectual Property disputes being highly commercial involve a high risk of data-theft and sensitive information which is protected by this process. These benefits listed comprise only of a portion in the vast domain of advantages that ADR has to offer.
The problems that may arise in the course of adoption of ADR mechanisms in Intellectual Property disputes include the territoriality nature of Intellectual Property disputes. The Supreme Court of India, in one of its landmark judgments[5] laid down the principle of public policy consideration which advocates to a restricted approach to confine the expansion of public policy to domestic awards. Such a principles poses as a hurdle to the adoption of ADR in Intellectual Property Rights. Secondly, the adjudi
cation of Intellectual Property disputes is one in the nature of determination of rights enforceable against the world, which may additionally pose as a detrimental factor.
These hurdles may be gainsaid with the aid of international mechanisms that provide for the utilisation of ADR Mechanisms in the domain of various disputes such as the New York Convention,[6] encompassing an international framework for Arbitration and the newly-introduced, Singapore Mediation Convention,[7] that provides international legitimacy to the procedure of Mediation for solving international commercial disputes. Owing to the fact that majority of Intellectual Property disputes prove to be transboundary in nature, the territoriality principle of Intellectual Property must be done away with to ensure the harmonious working of Intellectual Property rights. The second hurdle is nullified by the argument that despite the nature of rights involved, ADR mechanisms can be rightfully utilised to determine whether there is an infringement that has taken place.
The overload of cases in the Indian Judicial system pertaining to Intellectual Property disputes proves to be rather detrimental to its cause showcased by inefficient adjudication of such disputes. Such an ineffective mechanism results in burdensome implications on the Intellectual Property rights owners that render them to fend for their own rights. Alternative Dispute Resolution methods can therein be resorted to, to avail its benefits as enumerated in the article, thereby guaranteeing the harmonious settlements of Intellectual Property disputes.

[1] William Fisher, Theories of Intellectual Property, Harvard University Press.

[2] 2010 (79) ALR 357.

[3] 2009 (77) ALR 687.

[4] AIR 2007 Delhi 284.

[5] O.N.G.C v. Saw Pipes, Appeal (Civil) 7419 2001 of 518.

[6] UNCITRAL, New York Convention, 1958 available at: (last accessed on 15 Feb 2020.

[7] UNCITRAL, International Settlement Agreements Resulting from Mediation, 2018 available at: 

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