The importance of IP protection in India

India has become a major destination for Japanese outbound investment, and intellectual property is central to nearly every Indian engagement, from manufacturing and joint ventures to technology transfer and brand entry.

India’s IP regime is mature and broadly compliant with the Trade-Related Aspects of Intellectual Property Rights, but it diverges from Japanese practice in ways that often surprise foreign rights holders, including trademark rights tied to use rather than filing, working obligations attached to patents, narrow but real patent exclusions for software, and a trade secrets regime that lives in contract rather than statute.

Navigating these divergences benefits, in our experience, from close coordination between Japanese in-house teams and Indian counsel familiar with cross-border practice.

Indian trademark protection overview

Trademark protection is governed by the Trade Marks Act, 1999 (TMA). Registered marks are valid for 10 years and can be renewed indefinitely. Unregistered marks are protected under the common law tort of passing-off.

India joined the Madrid Protocol in 2013, allowing Japanese applicants to designate India in international applications filed via the Japan Patent Office and administered by the World Intellectual Property Organisation (WIPO), alongside the option of direct national filings.

A point of particular relevance for Japanese rights holders is that India follows a “first to use” principle, in contrast to the “first to file” system that prevails in Japan. Prior and continuous use of a trademark grants superior rights over a later registered proprietor. The concept of “use” is interpreted broadly by Indian courts and does not require actual sales. Business documents, advertising materials, print and electronic media, and digital and social media activity may suffice.

This emphasis on use was recently reaffirmed by Delhi High Court in Thukral Mechanical Works v PM Diesels Private Limited & Anr (2024), which held that statutory registration is subordinate to earlier use and established goodwill.

More cautionary for Japanese brand owners is the Supreme Court’s decision in Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Ltd & Ors (2018). The Supreme Court dismissed Toyota’s claim against an Indian auto parts company that had been using “Prius” since 2001, holding that transborder reputation cannot be assumed from global fame alone.

For brands with substantial global reputation, the TMA also allows owners to apply for formal recognition of a mark as “well known”, securing protection across all classes of goods and services irrespective of registration. The Trade Marks Registry maintains a published list of well-known marks, which includes several Japanese brands.

The registry has also expanded protection to non-traditional marks. In November 2025, the registry accepted for advertisement India’s first smell mark on an application by Japanese company Sumitomo Rubber Industries for a rose scent applied to tyres, with Sumitomo addressing the graphical representation requirement through a seven-dimensional vector, mapping the fragrance across attributes including floral, fruity, woody, nutty, pungent, sweet and minty.

Key points in Patents Act 1970

Patents are governed by the Patents Act, 1970. An invention must be novel, involve an inventive step, be capable of industrial application and must not fall within the statutory exclusions, which include methods of treatment, computer programs per se, and incremental pharmaceutical inventions. A granted patent is valid for 20 years from the filing date.

The exclusion of computer programs per se from patentability has been read narrowly by Indian courts. In Ferid Allani v Union of India & Ors (2014), Delhi High Court held that inventions demonstrating a technical effect or technical contribution remain patentable, even when implemented in software. The reasoning is reflected in the Indian Patent Office’s computer related inventions (CRI) guidelines. For Japanese technology companies, software-related applications must be drafted to articulate clearly the technical problem solved and the technical effect produced.

Like Japan, India follows a “first to file” system, but Japanese counsel familiar with their home regime are sometimes surprised by India’s emphasis on the actual working of patents within its territory. Patentees must periodically submit statements of commercial works in Form 27, and any interested person may seek a compulsory licence after three years from being granted if reasonable public requirements are not met, or the invention is not being worked in India. These are meaningful divergences from the Japanese patent regime. In recent years, Delhi High Court has developed a distinctive body of case law on standard-essential patents and fair, reasonable and non-discriminatory licensing of direct relevance to Japanese technology companies as both licensors and implementers.

In Nokia Technologies OY v Asus, Acer & Hisense (2025), the court adopted a confidentiality club mechanism for licensing-data disclosure, requiring SEP holders to provide all materially comparable licences rather than selectively disclosing favourable ones.

Protection under India’s Designs Act

Design protection under the Designs Act, 2000 covers the visual appearance of a product, including shape, configuration, pattern, ornament and composition of lines or colours. Registration is granted for 10 years, extendable once for a further five.

Indian design law operates on a first to file basis. Early filing is therefore critical in sectors that feature prominently in Japanese investment portfolios, particularly consumer electronics, automotive components, packaging, footwear and fast-moving consumer goods.

Recent case law confirms that statutory design protection can coexist with common law remedies. Delhi High Court, in Carlsberg Breweries A/S v Som Distilleries (2018), held that design infringement and passing-off based on trade dress can be tried in a single composite suit, allowing rights holders to combine statutory and common law claims in one proceeding.

Contracts safeguard India trade secrets

Unlike most jurisdictions, India does not have a dedicated trade secrets statute. Protection is built through contractual safeguards, common law principles of equity and breach of confidence, and selective use of contract and information technology legislation.

For Japanese investors transferring sensitive know-how, manufacturing processes or technical data through joint ventures, technology licensing or contract manufacturing, this makes carefully drafted non-disclosure agreements, employment covenants and confidentiality clauses indispensable rather than ancillary.

From the practice perspective, the contractual provisions that hold up most reliably under Indian court scrutiny share specific drafting features: precise definition of “confidential information” with clearly bounded categories; post-termination obligations calibrated to survive without unreasonably restraining ordinary employment mobility; and remedies clauses pairing liquidated damages with injunctive relief.

Copyright protections under the act

Copyright protection under the Copyright Act, 1957 covers original literary, dramatic, musical and artistic works, cinematograph films and sound recordings, and arises automatically on creation. The statute also recognises performers’ rights, authors’ moral rights and broadcast reproduction rights.

For Japanese technology companies, the act’s protections extend to software, treated as a “literary work”, providing an additional protective layer alongside contractual safeguards and any underlying patent rights, particularly where source code, proprietary algorithms or technical documentation are at stake.

India IP enforcement and courts

Following the abolition of the Intellectual Property Appellate Board, several high courts including Delhi, Madras, Calcutta and Himachal Pradesh have established dedicated intellectual property (IP) divisions that hear IP matters at a notably accelerated pace.

Under the Commercial Courts Act, 2015, parties to a non-urgent commercial IP dispute must attempt pre-institution mediation before filing suit, although this requirement is excused where urgent interim relief is sought.

Indian IP courts grant ex parte ad interim injunctions where rights holders demonstrate a prima facie case, balance of convenience and irreparable harm, alongside Anton Piller-style search and seizure orders allowing local commissioners to preserve evidence. Delhi High Court has also developed John Doe (or Ashok Kumar) orders binding unknown infringers and dynamic injunctions, articulated in UTV Software Communication Ltd v 1337X.to & Ors (2017), which extend blocking orders automatically to mirror sites identified later.

For online brand protection, the .IN Domain Name Dispute Resolution Policy (INDRP), administered by the National Internet Exchange of India, provides a fast and inexpensive Uniform Domain Name Dispute Resolution Policy-style remedy for cybersquatting on “.in” and “.co.in” domains.

Border enforcement is also available. Rights holders may record their registered trademarks, copyrights, designs and patents with Indian Customs under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, enabling detention of suspected infringing consignments at points of entry. For Japanese exporters and brand owners, customs recordal is a cost-effective complement to court-led enforcement against parallel imports and counterfeit shipments.

Strategic lessons for Japanese investors

India’s IP regime now provides meaningful commercial protection when approached strategically. For Japanese investors, the recurring lesson is that international recognition does not substitute for market presence in India. Toyota’s experience with the Prius makes the point on the trademark side. Sumitomo’s smell mark, secured through a carefully constructed evidentiary case, makes the point on the upside.

Between those poles lie four practical considerations that distinguish Indian IP practice from that of Japan. Trademark rights are use-based at their foundation; patents carry working obligations that require ongoing attention; the trade secrets gap is filled by contractual architecture rather than statute; and damages awards are now substantive enough to reward deliberate enforcement.

Sujata Chaudhri IP Attorneys
4th Floor, Windsor IT Park,
Tower B, A-1, Sector 125, NOIDA,
Uttar Pradesh – 201301 India
Tel: +91 120 623 3100
Email: info@sc-ip.in
www.sc-ip.in