Cross-Border Enforcement of Indian Intellectual Property Rights: Strategies for Patents, Trademarks, and Copyrights Abroad

Introduction : India’s businesses are becoming increasingly successful overseas, with growing exports, technology licensing, and establishment of brands in new markets. However, this success exposes them to the risk of infringement that is difficult to litigate: intellectual property rights are primarily territorial, meaning that an Indian patent ceases to protect the holder as soon as the infringing goods leaves the customs.

Such considerations are relevant to any Indian business with a presence beyond the domestic market. Even a small exporter or a D2C company listing its products on foreign platforms faces infringement as soon as it makes its first international sale. This blog provides a practicable action list to help such a business enforce its patents, trademarks, and copyrights abroad: building foreign rights in anticipation of disputes through multilateral filings, customs recording, and trademark/design monitoring; litigating or opposing bad faith foreign filings in domestic or foreign courts; and coordinating Indian and foreign counsel in gathering evidence and submitting briefs.

A- Multilateral Treaties for Building Foreign Rights in Patents, Trademarks, and Copyrights

India has been a signatory to the Patent Cooperation Treaty (PCT) since December 7, 1998,[1] and a PCT application filed in New Delhi affords protection in over a hundred countries and a delay in filing national phase patents by 30 to 31 months from the priority date, giving time to evaluate the commercial viability in the target markets. The same applies to trademarks under the Paris Convention, with priority given for twelve months from the date of first filing. Twelve months of priority from the filing date also applies to designs, although India has not acceded to the Hague System yet, preventing design applicants from recording international design registrations; it is anticipated that India will join the Hague System as part of the imminent Design Act, 202X, following which design protection will also be available under the Paris Convention. The six-month priority window applies to copyright as well, although copyright in India is not subject to registration. India has been a member of the Berne Convention since April 28, 1928, and copyright in India automatically extends to other Berne members, of which there are over one hundred and eighty as of 2023. An Indian copyright registration certificate may therefore be used as evidence of authorship and priority in a foreign copyright dispute, even though it is not a requirement for copyright protection.

B- Indian Customs Enforcement Framework and Rules

Customs border measures offer a rights holder the best opportunity to stop infringement before it inflicts significant damages on the legitimate trade of the goods. India’s own customs laws, which fall under the Customs Act, 1962, and the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, therefore, afford considerable protection to Indian trade. Under the Rules, a rights holder may record its trademarks, copyrights, registered designs, and geographical indications with the Indian Customs IPR Recordation Portal for a period of five years, renewable upon expiry of the underlying IP, for protection against import of infringing goods. Patents, however, were excluded by the 2018 Amendment Rules,which recognized that patent infringement involves technical expertise that customs lacks.

C- Foreign Customs, Border Measures, and Similar Regimes

The United States General Accountability Office (GAO)’s website iprr.cbp.gov allows recordation of trademarks and copyrights only, with fees ranging from USD 190 per international class. Patents may not be recorded at all: a patentee must seek a Section 337 exclusion order from the United States International Trade Commission (ITC), which has exclusive jurisdiction over patent infringement disputes. A similar comprehensive regime is used in the European Union, which under Regulation (EU) No 608/2013allows recordation of patents, trademarks, designs, copyright, geographical indications, and plant variety rights by way of a single “Union application for action” which takes effect in each Member State.

Territoriality Doctrine and its Exceptions in Indian Courts

Indian courts have long held that the goodwill attaching to a trademark in one country does not automatically extend to another, distinguishing India from common law jurisdictions such as the United Kingdom and the United States, although Indian courts do recognize exceptions to this rule. A detailed discussion of these exceptions is necessary to understand what an Indian business must do to litigate or oppose foreign infringement. In N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714,the Supreme Court granted protection to the foreign trademark WHIRLPOOL on the ground that advertisements in foreign magazines had created a transborder reputation in India for the brand. In Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, the court found that the plaintiff Indian company’s prior use of the trademark OCUFLOX, prior to its use or registration by the foreign defendant, was entitled to protection in India on the ground that a pharmaceutical trademark’s reputation is to be judged in light of the probability of confusion between the drugs and the serious health risks associated therewith.

However, twenty-two years later, in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, The Supreme Court declined to extend the reputation of the foreign trademark PRIUS to India, holding that the petitioner’s global reputation was not sufficient; it had to demonstrate the extent of goodwill in India as of the relevant date. The doctrine of territoriality prevails today and dictates that an Indian business cannot expect Indian courts to afford protection to its trademarks on the basis of its foreign reputation. By the same token, trademarks bear little to no reputation abroad on the strength of their domestic reputation. Consequently, an Indian trademark must be recorded in the foreign jurisdictions as well, under either the Madrid Protocol or the appropriate local law. Registration, rather than reliance on reputation, is the only sure way to establish trademark protection abroad.

Differentiation in Customs and Anti-counterfeiting Tools

India’s exclusion of patents from customs recordation is indicative of the general divergence in the approaches of customs offices to different forms of IPR. As noted in the previous section, while the United States Customs and Border Protection allows recordation of trademarks and copyrights, patents must be addressed separately in the form of a Section 337 litigation before the International Trade Commission. Meanwhile, the EU Regulation 608/2013 provides extensive customs protection to each of the six IPR categories.

Counterfeiting can also arise from domestic infringement, particularly when counterfeiting takes place at the domestic level, rather than at the borders. Injunctions against unidentified infringers have long been available in India through ex parte orders. The concept is best illustrated by the Delhi High Court’s famous order in Taj Television Ltd. v. Rajan Mandal, [2003] FSR 22, which directed the cable operators to remove unauthorized telecasts of the 2002 FIFA World Cup in response to a John Doe order. Similar orders are available in the UK, the US, Canada, and Singapore, where Indian rights holders may apply through local counsel for injunctive relief without naming specific infringers. The Traditional Knowledge Digital Library hosted by the Council for Scientific and Industrial Research (CSIR) since 2001, has allowed India to oppose several patent applications by foreign entities on the grounds of India’s traditional knowledge of medicinal substances.

An agreement with the Brazilian patent office, signed in February 2026, has extended this to eighteen patent offices, including the USPTO, the EPO, and the JPO. Online infringement of copyright requires a different remedy: the notice and takedown procedure, which the US offers as a statutory remedy, allows the rights holder to remove infringing content from the platform hosting it without going through the lengthy litigation process. It is a cheaper, faster first step in combating copyright infringement.

Challenging Foreign Patent Office Grants: Examples and Procedural Notes

The most important precedents in this area concern the oppositions brought against the infamous US patents for turmeric use, basmati rice, and neem fungicide. When the University of Mississippi Medical Center filed for and was granted a patent (US Patent No. 5,401,504) for a method of using turmeric for healing purposes in 1995, the Council for Scientific and Industrial Research (CSIR) responded by submitting nearly thirty documents to the United States Patent and Trademark Office (USPTO) in support of an opposition. CSIR’s submission included Sanskrit and Urdu manuscripts as well as contemporary scientific literature, including the Journal of the Indian Medical Association from 1953. A similar opposition was mounted by APEDA before the USPTO in response to RiceTec Inc.’s US Patent No.5,663,484for basmati rice lines and grains and was successful in cancelling most of the claims in the patent and deleting “basmati” from the title.

The opposition to the patent (EP 0436257) for neem-based fungicide and pesticide issued to W.R. Grace and the US Department of Agriculture was more protracted but ultimately successful as well: the patent was revoked by the European Patent Office in 2000, with the decision being upheld on appeal in 2005. The coalition that submitted the opposition included Indian environmentalist Vandana Shiva’s research foundation. Notably, neither the CSIR nor the APEDA nor the opponents in the neem patent case were required to litigate their oppositions abroad: each was successful by demonstrating extensive prior Indian knowledge of the subject matter covered by the disputed patent claims. Prior art research, compiled according to the requirements of the foreign patent office, is a useful preliminary step in challenging potentially infringing foreign patents.

Procedurally, it is important to note that in each of these cases, the Indian petitioner was able to rely on the extensive body of research conducted in India on the subject matter of the patent. Evidence of continuous use, including sales figures and marketing expenditures, is often necessary for trademarks, but it is vital for virtually every other form of intellectual property. The preparation of such evidence may be handled by local counsel, who can authenticate it for submission before foreign courts or patent offices. In addition, where litigation in a foreign jurisdiction becomes necessary, local counsel can advise the client on the most appropriate timing for it. Litigation in foreign courts is often complicated by the need to submit evidence authenticated according to the Hague Apostille Convention of 1961, particularly for the 120+ countries that have ratified it: instead of certification by consul generals, certified public lawyers may be able to append an apostille directly to the document. This is another matter that Indian counsel may assist with, particularly when advising the client on the intricacies of foreign evidence submissions.

Another advantage of engaging Indian counsel is that a uniform strategy can be developed for coordinating litigation and oppositions in multiple jurisdictions. There are advantages to having one counsel handle the matter, including consistency in the argument before different patent offices or judges, particularly where parallel litigation is possible. For instance, the construction of the claims in a patent office opposition in India is likely to be similar to that in a US district court, particularly where the same counsel prepared both documents. Parallel litigation in different jurisdictions is also common in trademark disputes, where the same specimens of use may be submitted to patent offices in each country. It is important to submit evidence to all relevant authorities, including customs, as early as possible; recordation with customs is an inexpensive procedural step, but it is often necessary to prevent infringement. Finally, local counsel will be familiar with the secrecy and privilege surrounding communications with foreign patent agents; while not all jurisdictions impose such restrictions, it is vital to receive direct advice in confidence if sensitive information concerning an impending foreign litigation is to be shared with the Indian client.

Practical Implications

The most obvious practical implication of the territoriality of trademarks, copyrights, and patents is that an Indian exporter must register its rights in the foreign jurisdiction(s) of interest to it. This includes trademarks under the Madrid Protocol and core inventions under the PCT, and may be supplemented by recordation of trademarks, copyrights, designs, and geographical indications with the customs departments of the target countries. The matter of patents requires particular caution, due to the differences in the approach taken by the Indian and foreign authorities. As the analysis in this blog demonstrates, patent infringement, as opposed to trademark infringement, is generally much less amenable to customs intervention.

There is limited value in a free enterprise system for the small exporter who cannot afford to litigate patent infringement in the United States or in other jurisdictions. Cross border litigation and dispute resolution generally require substantial funding, but there are steps that an Indian business may take to reduce the costs significantly. At the strategic planning level, an Indian business must recognize that foreign IPR disputes are best addressed through coordination of counsel rather than through multiple separate consultations. There are multiple reasons for this, including those discussed below.

First and foremost, evidence in support of a trademark, copyright, or patent litigation or opposition is likely to be found in India. Sales figures and marketing expenditure data on the trademark and patent in India are vital pieces of evidence if the foreign litigation is to succeed. This evidence must be submitted in a manner acceptable to the foreign court or patent office: the authentication process may be expedited by local counsel familiar with the requirements. At the tactical level, a uniform strategy may be developed on the advice of one counsel, rather than multiple foreign associates, who may have different views on timing and strategy. This includes uniformity in the arguments made before different patent offices and courts, for instance, or the use of identical specimens and evidence of use in parallel litigation proceedings. Another consideration is the need to submit relevant evidence to the customs authorities in the target countries, where applicable. Recordation with customs is a relatively cheap and simple procedure; it may be necessary to prevent infringing goods from entering India.

It is not always necessary or cost effective to pursue active litigation or dispute resolution: a cease and desist letter may suffice in many instances, particularly where the infringer has not pursued active steps to register its trademark or patent or sell infringing goods. However, it must be coupled with proactive measures to monitor trademarks and patents for possible infringement and register the rights in the relevant foreign jurisdictions.

The most crucial step in this regard is the early recordation with customs, where applicable, and the maintenance of a vigilant watch over trademarks and patents in the relevant foreign jurisdictions. A trademark or patent watch is typically more cost effective when it is set up by one counsel on behalf of the client rather than by multiple foreign associates. It is likely to yield better results as well, as it is much more comprehensive and covers disputes in multiple jurisdictions at the same time. A cease-and-desist letter is usually an adequate response to initial findings of this sort, unless the infringer is clearly preparing for litigation or has already engaged in litigation.

It is important that an Indian exporter understand its options, which include the multilateral treaties, customs recordation, and trademark patent watch programs explained in this blog, before engaging in foreign trademark, copyright, or patent litigation or dispute resolution.

The choice of forum is particularly crucial, as is explained in this blog, because it determines how evidence will be submitted and what role foreign counsel will play. Indian exporters must be on constant watch for possible infringement, but most importantly, they must ensure that trademarks, copyrights, and patents are recorded with the customs and patent offices of the foreign jurisdictions of interest to them.

Financial aid to SMEs is likely to be more accessible to Indian exporters seeking to protect their IPR abroad. The MSME and start up development ecosystem in India offers reimbursements to MSMEs and startups in certain cases, including under the sector specific scheme for Electronics and Information Technology launched by the Ministry of Electronics and IT:[18] up to Rs 15 lakh or fifty percent of the expenses on international patent filings, whichever is lower, may be reimbursed. Similar schemes are available at the state level, but the conditions and eligibility criteria change frequently, requiring due diligence on the part of the exporter.

The WIPO Arbitration and Mediation Centre offers a range of cost saving options for SMEs, including a twenty five percent discount on mediation and expedited arbitration, and its UDRP policy allows for cybersquatting disputes to be resolved in as little as one month at a significantly reduced cost. Coalition building among SMEs is another viable option that is available within India: The Federation of Indian Chambers of Commerce and Industry CASCADE initiative offers to represent SMEs in disputes with larger entities at a lower cost. These options do not replace the need to consult local counsel in any foreign litigation, but they do reduce the overall financial burden of IPR protection abroad.

Conclusion

Indian courts have progressively narrowed the scope of protection for foreign trademarks, copyrights, and patents over the last thirty years, and most jurisdictions apply the same principle of territoriality to Indian intellectual property as well. Indian exporters must therefore build foreign rights for their trademarks, copyrights, and patents and anticipate disputes, addressing them through a combination of multilateral treaties, customs recordation and monitoring, and litigation or dispute resolution in foreign courts or tribunals.

For SMEs, the most viable strategy is to be aware of the multilateral treaties and options for customs recording, and to consider dispute resolution options such as mediation or WIPO UDRP for domain name disputes. SMEs should also take advantage of government support schemes for international IPR protection.

Author:- Simran Vohra, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References

1. Patent Cooperation Treaty (PCT), concluded June 19, 1970; instrument of accession deposited by India on September 7, 1998, entering into force on December 7, 1998. Articles 22 and 39 set the timeline for national phase entry (30 to 31 months from priority date).
2. Paris Convention for the Protection of Industrial Property, signed March 20, 1883; India acceded on December 7, 1998. Article 4 establishes priority rights for patent, trademark, and design applications.
3. Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act of July 2, 1999), facilitating unified international registration of industrial designs across contracting states.
4. Berne Convention for the Protection of Literary and Artistic Works, signed September 9, 1886; India acceded on April 28, 1928. Article 5 provides automatic national treatment and protection without formal registration requirements.
5. Customs Act, 1962 (Act No. 52 of 1962) read with the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (CBEC Notification No. 47/2007-Customs (N.T.)).
6. Intellectual Property Rights (Imported Goods) Enforcement Amendment Rules, 2018 (CBIC Notification No. 56/2018-Customs (N.T.)), which amended Rule 2(b) to exclude patent rights from border enforcement recordation mechanisms.
7. Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights, allowing a single EU Union Application for Action (AFA).
8. N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714 (Supreme Court of India holding that transborder reputation generated via global advertising can protect unregistered trademarks in India).
9. Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624 (Supreme Court establishing a worldwide reputation and priority of adoption rule for pharmaceutical and medicinal marks).
10. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1 (Supreme Court upholding territoriality over bare global reputation, requiring proof of localized Indian goodwill as of the relevant date).
11. Taj Television Ltd. v. Rajan Mandal, [2003] FSR 22 (Delhi High Court establishing ex parte “John Doe” / “Ashok Kumar” injunctions against unknown dynamic online and broadcast infringers).
12. Traditional Knowledge Digital Library (TKDL), established in 2001 by CSIR and the Ministry of Ayush, providing global patent examiners with digitized prior art documentation on Indian traditional knowledge.
13. US Patent No. 5,401,504, “Use of Turmeric in Wound Healing,” granted March 28, 1995; formally re-examined and revoked by the USPTO in 1997 following prior art evidence submitted by CSIR.
14. US Patent No. 5,663,484, “Rice Lines Associated with Higher Yield and Superior Grain Quality,” granted September 2, 1997; successfully challenged by APEDA, leading to claim restrictions and removal of “basmati” from title.
15. European Patent EP 0436257, “Hydrophobic Neem Oil Formulations,” granted June 23, 1994; revoked by the European Patent Office (EPO) Technical Board of Appeals in 2005 due to prior public knowledge and lack of novelty.
16. Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents (Apostille Convention), October 5, 1961; India acceded October 26, 2004.
17. Support for International Patent Protection in Electronics & Information Technology (SIPEIT), a scheme under the Ministry of Electronics and Information Technology (MeitY), Government of India, reimbursing IP prosecution costs for MSMEs and startups.
18. WIPO Arbitration and Mediation Center, operating under the WIPO Uniform Domain Name Dispute Resolution Policy (UDRP) and providing reduced-fee alternative dispute resolution services for SMEs.
19. FICCI CASCADE (Committee Against Smuggling and Counterfeiting Activities Destroying the Economy), an initiative established by the Federation of Indian Chambers of Commerce and Industry to combat IP crime and support SME rights holders.