SHOULD COMMON LAW REMEDY PREVAIL OVER STATUTORY REMEDY IN IP LAWS

As an IP lawyer, I always think about the remedies available under the umbrella of statutes and common law and whether common law remedy should prevail over statutory remedy in respect of the rights of Intellectual properties. Let me discuss it in this article. 

First of all it is required to be understood what is statutory remedy and what is common law remedy. 

Statutory  Remedy: 

Statutory remedy means a remedy available in the statute for the protection of IPR or Statutes protect the rights of the owners of the intellectual properties. It is due to the necessity among human beings for maintaining the socio-legal and socio- economic condition of society, the legal system was developed. Statute is codified.  For instance, the remedy against the infringement of action and criminal action  mentioned in various IP laws. 

Common Law Remedy: 

Common law remedy means a remedy which is not within the ambit of any statute. It is based on unwritten common laws. Now the question is what is such common law ? As English people ruled over India for many years, Common laws are derived from English law, or judge-made law or case law or judicial precedent. They are based upon social costumes, rituals and traditions. The roots of common laws were enshrined in the period of Middle Age in England and it was imposed or applied on British Colonies across the world.  Such law is codified. They are not mentioned in the statutes. 

In IP Laws, common law remedy i.e. passing off action plays vital role along with the statutory remedy i.e. infringement action or criminal action in with regard to any suit and criminal complaint respectively. 

My concerned is whether common law remedy should prevail over statutory remedy as in the realm of IP, the awareness among people of India can only be spread by the way of statutory remedy. Registration of trade mark, copyright, design, patent or other IP is a part of statutory remedy. The Government has established separate body for registration of such IPR. Appellate Board is there. So after spending too much expenses, time and energy by Government for the protection of IPR qua registration of IPR for acquiring statutory rights. The protection of statutory rights, the power is enforced to the District Court for infringement action where the plaintiff resides or carries on business or works for personal gain as per section 134 of the Trade marks Act, 1999 and section 62 of the Copyright Act.

Is it logical that somebody who has not been registered proprietor of IP, comes and restrains the registered proprietor of IP on the basis of prior use of that IP, more particularly, trade mark. ?  Then what  is the meaning of being vigilant for acquiring statutory protection ?   What is the meaning of the establishment of Govt. offices for registration of IP ? On the basis of establishment of  prior use of the trade mark, a registered trade mark is rectified or the registered proprietor is restrained from using the registered trade mark. The entire exercise of registration and statutory remedy becomes futile.

In my opinion statutory rights should be protected and prevailed over common law rights if awareness and importance and value of IP law is  to be established in the eyes of  people.  I think those days of common law remedies should be over in the era of education, awareness, independence, expression. science, technology, commerce and industry.

Chirag Bhatt
IP Lawyer
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