Ipr Act

INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

Patents, Trademark, Logos, Brands, Industrial design & Geographical Indication as a part of Intellectual Property Right

SUBMITTED & PRESENTED BY:

Animesh Singh

104

Nidhi Suvarna Virbhadra Tolnoor Aakanksha Vasudeva Bhooshan Vengurlekar Dhanshree Vichare Rohan Wakode

106 112 114 116 118 120

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INTELLECTUAL PROPERTY RIGHTS

INDEX SERIAL NO. 1

TOPIC

PAGE NO.

Intellectual Property Rights

1

2

World Trade Organization(WTO)

3

3

Trade Related Aspects Of Intellectual Property Rights (TRIPS)

3

4

World Intellectual Property Organization (WIPO) - Function - Membership

5 6 6

5

Patent - Evolution - Definition Of Patent - Invention - Invention Not Patentable - Principles - Kinds Of Patent - Main Objects Of Patent - Term Of Patent - Rights Of Patent - Application Of Patent - Date Of Patent - Infringement - Exclusive Marketing Rights (EMR) - Patent Co-Operation Treaty (PCT) - Amendments - Case Study

7 7 8 9 9 10 11 12 12 13 14 14 14 15 16 17 19

6

Trademark - Legislation - What Is Trademark - Requirements Of Good Trademark - Functions Of Trademark - Types Of Trademark - Benefits Of Trademark - Registration Of Trademark - Protection Of Trademark - Criminal Proceedings - Amendments - Case Study

20 20 21 21 22 22 23 25 26 26 27 28

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Brands - Definition Of Brand

30 30 3

INTELLECTUAL PROPERTY RIGHTS

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Logos -

What Does Brand Include In It Features Of Brand Definition Of Logos Brand Slogans Logo Designs Case Study

30 31 33 33 34 34 37

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Industrial Design - Introduction - Amendment - Objectives - Definition Of Design - Features Of Design - Essentials Of Design - Registration Of Design - Exclusions From Scope Of Design - Infringement - Case Studies

38 38 39 41 42 43 44 47 48 48 49

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Geographical Indicators - Introduction - Who Is Producer - Who Can Apply For Registration - Registration Process - Case Studies

52 52 52 53 53 55

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Conclusion

59

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Bibliography

62

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INTELLECTUAL PROPERTY RIGHTS

INTELLECTUAL PROPERTY RIGHTS: The modern IPR tool kit provides a range of distinct legal platforms for protection of the fruits of human creativity that span from innovations in technical fields, products and services, literary/artworks, performances, computer programs. It should be appreciated that each of these instruments is governed by a set of laws with frameworks that offer varying degrees of protection, rights, obligations, enforcement procedures and relief’s. Therefore every nation interested in protecting intellectual property within its geopolitical control has to enact laws related to patent, copyright, trademark, geographical indication etc. For business and trade, Intellectual and Property Rights (IPR) act as key components of strategy formulation that influence global business practices. An appropriate combination of the instruments in the tools kit needs to be exploited to achieve optimal protection

of a specific intellectual asset. For example a patent can

protect an invention related to the “ball point” in a “ball-point pen”. The shape of a pen can be protected by a design registration, the name of the pen can be a trade mark, the style in which certain words are inscribed on the pen or the literature accompanying it could be protected by copyright. Similarly the internals of a restaurant can be registered as a service mark, its name as a trade that would help to differentiate it from other restaurants involved in similar service.

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INTELLECTUAL PROPERTY RIGHTS

PATENT

TRADEMARK BRANDS & LOGOS

COPYRIGHT

INTELLECTU AL PROPERTY RIGHTS

GEOGRAPHICAL INDICATORS

DESIGN

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INTELLECTUAL PROPERTY RIGHTS

WORLD TRADE ORGANSIATION The World Trade Organization ("WTO") is the principle international body concerned with solving trade problems between countries and with negotiating trade-liberalizing agreements. The WTO takes the place of the former General Agreement on Tariffs & Trade (GATT) and is the embodiment of the results of the 1986-1994 Uruguay Round of trade negotiations concluded under GATT. The WTO was established on 1st January 1995 and it encompasses previous GATT legal instruments, as they existed when the Uruguay Round was completed. However, the WTO extends new disciplines to economic and trade sectors not covered in the past. While the GATT was limited to trade in goods, the WTO covers trade in services, including such sectors as banking, insurance, transport, tourism and telecommunications sectors as well as the provision of labour. In addition, the WTO covers all aspects of trade related intellectual property rights. The WTO joins the International Monetary Fund (IMF) and the World Bank as the third pillar of the global economic management system. In terms of governance, the WTO’s principle one-member, one-vote makes it unique among multilateral institutions. (Both IMF and World Bank operate a weighted voting system with voting power depending on the amount of money contributed to the budget.) Despite this, in the WTO, there is still a noticeable imbalance when it comes to the attentiveness with which a country’s voice is heard. The WTO and the Agreements under it are treaties concluded by member states and therefore forms part of international economic law as opposed to international trade law.

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INTELLECTUAL PROPERTY RIGHTS

TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS) The TRIPS Agreement which is binding on all WTO members entered into force on January 1, 1995. The Agreement is based on negotiations held during the Uruguay Round of multilateral trade negotiations on aspects of intellectual property rights which impacted an international trade. The Uruguay Round of negotiations was concluded on December 15, 1993.The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), negotiated during the Uruguay Round, introduced intellectual property rules for the first time into the multilateral trading system. The Agreement, while recognizing that intellectual property rights (IPRs) are private rights, establishes minimum standards of protection that each government has to give to the intellectual property right in each of the WTO Member countries. The Member countries are; however, free to provide higher standards of intellectual property rights protection. The Paris Convention (1967) for Industrial Patents and the Berne Convention (1971) for Copyrights are the starting points of the TRIPS. Members are expected to comply with these standards. Similarly the obligations under the Rome Convention (1961) and the IPIC Treaty (1989) are also protected under TRIPS 1(a) Copyrights and related rights; 2(b) Trade marks; 3(c) Geographical Indications; 4(d) Industrial Designs; 5(e) Patents; 6(f) Layout designs of integrated circuits; and 7(g) Protection of undisclosed information (trade secrets).

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INTELLECTUAL PROPERTY RIGHTS

NEED FOR TRIPS: To achieve the reduction of distortions and impediments to international trade, the member countries of the WTO recognized the following: 1. There is the need to promote effective and adequate protection of Intellectual Property Rights. 2. There is the need to provide effective and appropriate means for the enforcement of trade related aspects of Intellectual Property Rights and settlements of dispute between governments regarding them. 3. There is the need for the maximum flexibility in domestic implementation of laws and regulations in the least developed countries. 4. There is the need to establish a mutually supportive relationship between the WTO and the World Intellectual Property Organization (WIPO) as well as other relevant international organizations.

THE WORLD INTELLECTUAL PROPERTY ORGANISATION (WIPO) CONVENTION The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest.

The WIPO Convention, the constituent instrument of the World Intellectual Property Organization (WIPO), was signed at Stockholm on July 14, 1967, entered into force in 1970 and was amended in 1979. WIPO is an intergovernmental organization that became in 1974 one of the specialized agencies of the United Nations system of organizations. The origins of WIPO go back to 1883 and 1886 when the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary 9

INTELLECTUAL PROPERTY RIGHTS and Artistic Works, respectively, were concluded. Both Conventions provided for the establishment of an “international bureau”. The two bureaus were united in 1893 and, in 1970, were replaced by the World Intellectual Property Organization, by virtue of the WIPO Convention. WIPO has two main objectives. The first is to promote the protection of intellectual property worldwide. The second is to ensure administrative cooperation among the intellectual property Unions established by the treaties that WIPO administers.

Functions of the WIPO: The WIPO, through its appropriate organs has the following functions: 1. To promote the development of measures designed to facilitate the efficient protection of Intellectual Property Rights throughout the world to harmonize the national legislation in this field; 2. To perform the administrative tasks of the Paris union, the Special Unions established in relation with that union, and the Berne Union; 3. To encourage the conclusion of international agreements designed to promote the protection of intellectual property; 4. To offer its cooperation to states requesting legal-technical assistance in the field of intellectual property; 5. To assemble the and disseminate information concerning the protection of intellectual property, carry out and promote studies in this field, and publish the results of such studies; and 6. To maintain services facilitating the International Protection of Intellectual Property and wherever appropriate, provide for registration in this field and the publication of the data concerning the registrations etc. (Art. 4)

Membership of WIPO:

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INTELLECTUAL PROPERTY RIGHTS The membership of WIPO is open to any state which is a member of any of the Unions. Even if it is not a member of a Union, a nation can join WIPO if it is a member of the United Nations or other specialized agencies, or if it is invited by the General Assembly. Even the members of the International Atomic Energy agency and parties to the statute of the International court of Justice are also entitled to the WIPO membership.

PATENT

INTRODUCTION In India, the national regime pertaining to patents is contained in Patents Act, 1970 as amended time and again and the recent amendment was done by patents amendment act2006. This legislation has been enacted to amend and consolidate the law relating to patents. The object of patent law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which, after the expiry of the fixed period of the monopoly, passes into the public domain. The fundamental principle of the Patent Law is that a patent is granted only for an invention, which must be new and useful. That is to say, it must have novelty and utility.

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INTELLECTUAL PROPERTY RIGHTS It is essential for the validity of a patent that it must be the inventor’s own discovery as opposed to mere verification of what was already known before the date of the patent.

EVOLUTION OF PATENT ACT The history of Patent regime in India is a history of legislative enactments. Even during the British rule, in 1859, the ‘Act for granting exclusive privileges to inventors’ was passed. The main aim of this act was to enable the English Patent holders to acquire control over Indian markets. The Patents and Designs Act, 1911 was a comprehensive legislation. It occupied the field in India, till the passing of the Patent Act of 1970. After independence, the parliament appointed two expert committees headed by Justice Bakshi Tek Chand and Justice Rajagopala Iyengar. These committees found that the foreign multinational corporations misused the patent laws in India, and they registered about 90 percent of patents registered in India. This led to a thorough debate in Parliament and outside. As a result, the Patents Act 1970 has been separately enacted separating from the Patents And Design Act, 1911.

DEFINITION OF PATENT Section 2 (1) (m) of the Patents Act,1970 defines patent as : "Patent" means a patent granted under this Act and includes for the purposes of sections 44, 49, 50, 51, 52, 54, 55, 56, 57, 58, 63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154 and 156 and Chapters XVI, XVII and XVIII, a patent granted under the Indian Patents and Designs Act, 1911 (2 of 1911) The word patent originated from the Latin Word “Patene” which means, “to open”. It is a legal document issued by the government to an inventor, his heirs, assigns, etc. It defines

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INTELLECTUAL PROPERTY RIGHTS an “invention” and grants the right to prevent others from making, using, or selling the invention in the country. The right exists for a definite period from the date of grant. The patent is a license given to an inventor to make exclusive use of his invention. The patent can be correctly defined as the exclusive right to use or exercise an invention granted to a person for a limited period in consideration of the disclosure of the invention. It is the protection assures by the state to use the invention in monopoly. The patent must be in respect of Invention and not of a Discovery. The invention must be new, useful and industrially applicable.

INVENTIONS Section 2 (1) (j) of the Patents Act, 1970 defines invention:"Invention" means any new and usefula) Art, process, method or manner of manufacture; b) Machine, apparatus or other article; c) Substance produced by manufacture.

INVENTIONS NOT PATENTABLE: a) An invention which is frivolous or which claims anything obviously contrary to well established natural laws; (b) An invention the primary or intended use of which would be contrary to law or morality or injurious to public health; (c) The mere discovery of a scientific principle or the formulation of an abstract theory;

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INTELLECTUAL PROPERTY RIGHTS (d) The mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant; (e) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance; (f) The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (g) A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture; (h) A method of agriculture or horticulture; (i) Any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products. Similarly, the Act clearly provides that inventions relating to Atomic energy are not patentable (under section 4). Further in section 5 of the Act, the grant of a patent is restricted in the following cases in the sense that only a process patent can be granted in their respect: Inventions where only methods or processes of manufacture patentable. In the case of inventions(a) Claiming substances intended for use, or capable of being used, as food or as medicine or drug, or (b) Relating to substances prepared or produced by chemical processes (including alloys, optical glass, semi-conductors and inter-metallic compounds), No patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable.

PRINCIPLES: 

Novelty

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INTELLECTUAL PROPERTY RIGHTS 

Non-obviousness



Usefulness

Novelty An invention will be considered novel if it does not form a part of the global state of the art. Information appearing in magazines, technical journals, books, newspapers etc. constitutes the state of the art. Oral description of the invention in a seminar/conference can also spoil novelty. Novelty is assessed in a global context. An invention will cease to be novel if it has been disclosed in the public through any type of publications anywhere in the world before filing a patent application in respect of the invention. Prior use of the invention in the country of interest before the filing date can also destroy the novelty. Novelty is determined through extensive literature and patent searches. Non-obviousness The invention must be non-obvious to a person skilled in the art to which the invention relates. Usefulness An invention must possess utility for the grant of patent. No valid patent can be granted for an invention devoid of utility. Exceptions Some inventions in spite of being new, non-obvious and useful cannot be patented under the act. Such non-patentable inventions would be: 

Injurious to public health or violates morality or public interest



New method s of agriculture or horticulture.



Process of treatment

KINDS OF PATENT Generally, the patents can be classified into two types: 15

INTELLECTUAL PROPERTY RIGHTS 

PROCESS PATENT

Process patent means that when a substance is invented or produced, a patent is not granted to the substance itself but it is only the method or the process of manufacturer of a substance that is granted a patent. Therefore the patent is granted to process but not to the product, in this kind of patent. 

PRODUCT PATENT

In product patent, the patent is granted not to the method or process of manufacture of a substance but to the substance itself. Therefore in this kind of patent, it is the product that is covered and protected. The invention for which patent is claimed may be a product or an article or a process. In the case of an article, the patent is the end product or the article. In the case of a process, the patent does not lie in the end product, but only in the process by which it is arrived in Section 5 of the Patent Act, 1970. The entire scientific process is to be looked into before granting the process.

MAIN OBJECTS OF THE PATENT: •

To encourage Research and Development and consequently more inventions;

•

To induce the inventor to disclose the invention to the public at large;

•

To reward a recognition for the labor, the skill and the expenses put on the inventions and to put the same in the commercial use; and

•

To encourage more and more investments in Research and Development.

A granted patent has a maximum term that is fixed by the statute. However, the patentee has to pay renewal fee to maintain the patent rights in the country where the right was obtained. Maintenance systems vary from country to country.

TERM OF PATENT

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INTELLECTUAL PROPERTY RIGHTS (1) Subject to the provisions of this Act, the term of every patent granted under this Act shall(a) In respect of an invention claiming the method or process of manufacture of a substance, where the substance is intended for use, or is capable of being used, as food or as medicine or drug, be five years from the date of sealing of the patent, or seven years from the date of the patent whichever period is shorter; and (b) In respect, of any other invention, be fourteen years from the date of the patent. (2) A patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within that period as extended under this section. (3) The period prescribed for the payment of any renewal fee shall be extended to such period, not being more than six months longer than the prescribed period, as may be specified in a request made to the Controller if the request is made and the renewal fee and the prescribed additional fee paid before the expiration of the period so specified.

RIGHTS OF PATENTEES (1) Subject to the other provisions contained in this Act, a patent granted before the commencement of this Act, shall confer on the patentee the exclusive right by himself, his agents or licensees to make, use, exercise, sell or distribute the invention in India. (2) Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted after the commencement of this Act shall confer upon the patentee(a) Where the patent is for an article or substance, the exclusive right by himself, his agents or licensees to make, use, exercise, sell or distribute such article or substance in India;

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INTELLECTUAL PROPERTY RIGHTS (b) Where a patent is for a method or process of manufacturing an article or substance, the exclusive right by himself, his agents or licensees to use or exercise the method or process in India.

WHO CAN APPLY FOR PATENT An application for an invention may be made by any of following persons; a) Any person claiming to be the true and first inventor of the invention, b) Any assignee of such invention, c) The legal representatives of any deceased person who could be either the first true inventor or the assignee. Application may be made jointly by two or more corporations as assignees. APPLICATION FOR PATENT : 1) Every Application must be made in prescribed form and filed in the Patent office . 2) The Application shall enclosed a provisional or a complete specification of the invention. 3) The Application , then , sent for examination to the examiners who thoroughly examines the following matters : a) Whether the application and the specification relating thereto are in accordance with the requirements of this Acts. b) Whether is any lawful ground of objection to the grant of the patent under this Act in pursuance of the Application. c) Any other matter which may be prescribed. d) Consideration of report of examiner by controller.

DATE OF PATENT

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INTELLECTUAL PROPERTY RIGHTS Under section 45 of act, every patent should be dated as of date on which the complete specification was filed. Therefore, the actual date will be backdated to the date of filing the complete specification and it will not be the date of sealing.

INFRINGEMENT OF PATENTS The Patents Act confers upon the patentee an exclusive right to use, make exercise, sell or distribute the patented article or substance through him or through agents or licensees. Any interference or violation of these rights means an infringement. The remedy in this case is an injunction to restrain the future infringement and an action for recovery of the damages caused or profit made using the patented substance or process as the case may be. An action for infringement means enforcement of the patentee’s rights and many times provoking counter claims for revocation of the patent. Actions can be taken by filing a suit in District/High Court. The relief, which a court may grant, includes injunctions (temporary or permanent) and at the option of the plaintiff, either damages or an account of profit. Followings are the reliefs available in a suit for infringement a) Injunction b) Damages c) An account of profits; or d) An order for deliver-up or destruction; e) Certificate of validity; or f) Costs

EXCLUSIVE MARKETING RIGHTS (EMR): The term EMR means the exclusive marketing rights to sell or distribute the article or substance covered in a patent or patent application in the country. The purpose of EMRs is to ensure that the innovator can market free copies of his product.

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INTELLECTUAL PROPERTY RIGHTS To comply with the requirements of TRIPS, pending the transition to a full-fledged product patent regime, provisions relating to exclusive marketing rights in the areas of drugs and agro chemical products were incorporated in the Patents Act, 1970 with cut of date from January 1, 1995. Section 24 of the Act stipulates that India has to receive applications for patents containing claims for drugs and agro chemical products with the condition that such applications can be taken up for consideration of granting EMR if an application is made. The application for the grant of an EMR can be made for an invention relating to an article or substance intended for use or capable of being used as a drug or medicine, developed after 1.1.2005. The Act specifically debars grant of EMR to substance based on traditional system of medicine. Upon getting the EMR, the applicant has the exclusive right to sell or distribute the product of the invention for a period of five years from the date of grant or till the date of grant or rejection of the application for patent, whichever is earlier. The corresponding patent application would be taken up for examination after 1.1.2005, which is the time provided to India to bring a product patent regime in all the fields of science and technology. Hitherto, four EMRs were granted by the Patent Office: · Novartis AG for blood anti-cancer medicine, Glivec/Gleevec (beta crystalline form of imatinib mesylate) · Eli Lilly & Company, USA for erectile dysfunction medicine, Cialis (Tadalafil) · Wockhardt for ‘Nadifloxacin' under the brand name NADOXIN · United Phosphorus for ‘fungicide saaf, a combination of carbendazim and mancozeb'

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INTELLECTUAL PROPERTY RIGHTS

PATENT COOPERATION TREATY (PCT) The Patent Cooperation Treaty is an International treaty, which provides facility to the applicant to file a single patent application and designate the countries in which he/she wants to protect his IP rights. Thus a single patent application is filed for the purpose of an international search report and to claim the priority date in all the designated countries. After receiving the international examination report, the applicant has to file a request in each designated country to take on record his/her application and this is called national phase of a patent application. A PCT application also provides an international filing date through a single patent application. India is a member country to PCT

AMENDMENTS

THE PATENTS (AMENDMENT) BILL OF 1999 The amendment was largely concerned with a transitional period until TRIPs is implemented. The Indian parliament implemented a mailbox for accepting product patent applications, and Exclusive Marketing Rights, which gave protection akin to a product patent for the 5 year transitional period.

THE PATENTS (AMENDMENT) ACT,2002 Salient Features of The Patents (Amendment) Act, 2002 And The Patents Rules, 2003: •

Term of every patent which is in force including a patent restorable, U/S. 60 as on 20.5.2003 has now become 20 years from date of filing.

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INTELLECTUAL PROPERTY RIGHTS •

Time for restoration of a ceased patent, U/S 60 has now increased from 12 months to 18 months as such an application for restoration of a patent ceased on or after 20th May,2003 can be filed within 18 months from the date of ceasession.

•

A new definition of "Invention" means a new product or process involving inventive step and capable of industrial application; has now come in force.

•

A method or process of testing during the process of manufacture will now be patentable. Process defined, U/S 3(i) in case of plants, are now patentable while a process for diagnostic and therapeutic has now been considered as non patentable,

•

18 months publication has been introduced; therefore, every patent will now be published just after 18 months from the date of filing/priority and will be open for public on payment. As such the filing intimation being published in the Gazette immediately after filing has been stopped.

•

Provision for the withdrawal of application by applicant any time before grant has been introduced.

•

Time for putting the application in order for acceptance U/S 21 has now been reduced from 15/18 months to 12 months.

•

Fees required to be paid on documents can now be paid within 1 month from its date of filing.

THE PATENTS (AMENDMENT) ACT,2006 •

Now the request for examination can be made within 48 months from priority date or from the international filing date, which ever is earlier etc. (It was 36 months earlier). The application for grant of patent should be put in order within 12 months from the date of issue of First Examination Report. (Earlier it was 6 months with a provision of extension up to three months). The fee may be paid through electronic means.

•

The proof of the right to apply for the patent for invention can be furnished within six months from the date of application (Earlier it was three months). The information about name of other countries in which Patent application for same

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INTELLECTUAL PROPERTY RIGHTS or substantially invention filed or objections received (under Section 8) can be furnished within six months (earlier it was three months). •

On request for early publication of application, the Controller shall ordinarily publish application within one month.

•

Request for examination can be made within forty eight months from the date of priority or from date of application (international filing date), whichever is earlier (It was earlier thirty six months.

CASE STUDY 1: NEEM BATTLE WON BY INDIA.

After a long wait of 10 years on March 8, 2005 the European Patent Office rejected the appeal filed by the Transnational Company to grant patent on use of Neem as fungicide. European Patent Office had granted patent for the neem-based bio-pesticide for the use of food crops. Due to strong opposition from India the patent was revoked in the year 2000. Vandana Shiva who represented India put forward evidence to show that the use of Neem in varied forms is part of Indian Traditional knowledge. She opined there was no novelty in the so-called neem-fungicide. The neem derivatives have been in use traditionally as insect soaps, cosmetics, and contraceptives. The appeal was rejected by European Patent Office on the ground that the technique used was well known to local farmers, lacked any incentive step and that such indigenous knowledge could therefore not be Patented.

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INTELLECTUAL PROPERTY RIGHTS

TRADEMARK LEGISLATION (INDIA TRADEMARK LAW) The Government of India has notified the Trade Marks Act 1999 on 15 September 2003, thereby repealing the old Trade and Merchandise Marks Act 1958. The new Act brought into force statutory framework with respect to trademarks in India in line with emerging worldwide trends as well as with India’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

WHAT IS A TRADEMARK A ‘Mark` may consist of a word or invented word, signature, device, letter, numeral, brand, heading, label, name written in a particular style, the shape of goods other than those for which a mark is proposed to be used, or any combination thereof or a combination of colors and so forth. Subject to certain conditions, a trademark may also be symbolized by the name of a person, living or dead. FOR E.g.: One of the most famous Brand which Recognizes the Food Products.

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INTELLECTUAL PROPERTY RIGHTS

Use of ‘TM’, ‘SM’ and  notation with Trademark: The "TM" or “SM” notation is merely a means of informing third parties that the person claims trademark rights to the word, slogan, or phrase associated with ‘TM’ or ‘SM’ notation. The same can be used once the application is made for registration of a Trademark. After the grant the symbol  is used. The legal requirements to register a trademark under the Act are:  The selected mark should be capable of being represented graphically (that is in the paper form).  It should be capable of distinguishing the goods or services of one undertaking from those of others.  It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

REQUIREMENTS OF A GOOD TRADE MARK:  It should be easy to understand, speak and spell. For e.g.: TATA  It must not be complicated.  Use of Words or coin words are best trademarks. For e.g.: COCA COLA  Avoid using the Geographical words as a Trade Mark.  Avoid using Qualitative Words like super, best, special etc.  Market Research is essential for a Good Trade Mark.

FUNCTIONS OF TRADEMARKS: A Trademark performs following functions:

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INTELLECTUAL PROPERTY RIGHTS 1) It identifies product and its origin. E.g.: “HAMAM” identifies the soap originating from the company manufacturing the soap. 2) It guarantees quality E.g.: “HAMAM” Soap could be similar but different from the soap label with mark “: LUX “ 3) It advertises the product. E.g.; the trademark “LG” is associated swiss electric items so the trademark ‘LG a/c’ of particular quality and particular class of goods. Thus it advertises the product while distinguishing it from LG’s competitors. 4) It creates an image of the product in the minds of the consumers E.g.: the

mark represents Mac Donald food items.

TYPES OF TRADEMARKS: Letter mark: mark includes a letter mark. The identity created by this letter mark is unique and distinctive from others. E.g.: IBM, LG, GE, and GM etc. 1) Symbol mark: These may take shape of brands or logos .A logo is a visual depiction of a company and gives an identity to it. E.g.; The logo of a Daimler Benz, or Audi 2) Brand: It usually refers to that kind of mark, which is branded on goods themselves constituting the trademark. E.g.; COKE brand beverages.

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INTELLECTUAL PROPERTY RIGHTS 3) Label and Ticket: It means a mark having various features usually painted on a paper and attached to the goods themselves. And a Ticket may be said to do a label attached to goods by a string. E.g.: Label attached to the readymade clothes, like Van Heusen shirts. 4) Colour Combination: A colour combination of scheme can also constitute a mark with in the boundaries of act. E.g.; a dealer can have a trademark in combination of colour. 5) Numerals: Combination of numbers can also used as trade mark.

E.g.: Hayward’s 5000,555 Cigarette. 6) Containers: A container is a three-dimensional or two-dimensional form may fall within the definition of a mark. Under the sec (2) 1999. 7) Shape of goods: Shape of goods can be a trademark. E.g.: Shape of the soap like LUX, DOVE. 8) Packaging: It can be a trademark subject. Eg: A pouch of a toothpaste or cream with a distinctive feature may be a trademark. Like Fair and Lovely. 9) Device: It would refer to such a mark, which does not fall under any other category already mentioned.

BENEFITS OF A TRADEMARK: Trademark registration protects the goodwill of a business and also helps to identify and distinguish the source of the goods or services of one party from those of others. Trademark registration is an evidence of ownership of the trademark and also 27

INTELLECTUAL PROPERTY RIGHTS constructive notice nationwide are issued of the trademark owner's claim. Trademark registration in India can also be used as a basis for obtaining registration in foreign countries.



The Registered Proprietor:

The Registered Proprietor of a trade mark can stop other traders from unlawfully using his trade mark, sue for damages and secure destruction of infringing goods and or labels. 

The Government:

The Trade Marks Registry is expected to earn revenue of nearly Rs.40 crores during the current year and which is perpetually on the rise. 

The Legal professionals:

The Trade Marks Registration system is driven by professionals and legal and Para legal advisors (Agents) who act for the clients in the processing of the trade marks application.



The Purchaser and ultimately Consumers of trade marks goods and services.

WHO CAN APPLY FOR REGISTRATION OF TRADEMARK: Any person, claiming to be the proprietor of a trade mark which is either used by him or is proposed to be him, if he is desirous of registering it, may apply to Registrar of Trade Mark in the prescribed manner, for the registration of his trade mark. INFORMATION REQUIRED FOR REGISTRATION OF TM:  Full name and address of Applicant.  Specification of goods or services specified in terms of individual names.  Class; International Class of goods and services.  Mark-character, device, figure, three-dimensional mark, logo and/or color.  Prior use is not required to file an application.  Details of Convention Priority, if any- first filed country, filing number and date; the term of  Priority is six(6) months.

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INTELLECTUAL PROPERTY RIGHTS

DOCUMENTS REQUIRED:  Power of Attorney (neither notarization nor consular legalization required) to be executed by an individual or a representative of a corporation.  Certified copy of the application which is the basis of the Convention priority (if applicable) may be filed within three (3) months from the Indian filing date.  A clear print of the mark or 10 prints of color mark (not larger than 7cm x 7cm) REGISTRATION: When an application for registration of a trademark has been accepted and either  The application has not opposed and the time for notice of opposition has acquired or;  Application has been opposed and the opposition has been decided in the favour of applicant The Registrar should be registered the said trade mark unless the Central Government directs otherwise. WHAT IS TIME REGISTRATION:

PERIOD

REQUIRED

FOR

APPLICATION

OF

On the basis of “FIRST COME FIRST SERVE “it takes on an average about 5-6 years before the mark is registered provided no opposition is entered by any third party. FACTORS TO BE CONSIDERED BY THE REGISTRAR: The Registrar, while deciding the application, has to keep himself aware abreast of the following factors  Absolute grounds for refusal of registration  Limitation as to colour

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INTELLECTUAL PROPERTY RIGHTS  Relative grounds for refusal of registration  Honest and concurrent use  Prohibition of registration of names of chemical elements etc.  Names and representations of living persons or persons who recently died etc.

DURATION, RENEWAL, AND REMOVAL OF REGISTRATION:  The registration of a trade mark, after the commencement of Trademark Act 1999, shall be for a period of 10 years, and it can be renewed from time to time in accordance with the provisions.  Registered proprietor of a trademark has to make payment of the prescribed fee, renew the registration of the trademark for a period of 10 years from the date of expiry.  At the prescribed time before the expiry of a trade mark the Registrar will send notice to the registered proprietor by which a renewal of registration may be obtained. If at the proprietor is not able to pay the fee then the Registrar may remove the trademark from the register.  Where a trademark has been removed, after 6 months or within 1 year from the expiry of the last registration, on payment of the prescribed fee the Registrar restore the trade mark to the register and renew the registration of the trade mark. PROTECTION OF TRADE MARK: If the mark is a registrable one the best way to protect it is by registration. Infringement of the mark can be easily established. If the infringing mark is identical and the goods covered by registration, the success in an action for infringement is almost certain unless the registration can be attacked on the ground of invalidity of registration or the defendant could establish honest concurrent user on the part of the registered proprietor or prior user. 30

INTELLECTUAL PROPERTY RIGHTS

In the case of unregistered marks and marks which are not registrable the only they can be protected is by an action for passing of. The plaintiff will have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark. CRIMINAL PROCEEDINGS. Under the Trade Mark Act 1999, the individual or business firms who unauthorizedly deal with the trademarks can be punished for various offences. The punishment of these offences include a minimum imprisonment of 6 months and minimum fine of Rs 50,000 / - which may extend to a maximum 3 years and Rs 2,00,000 /- respectively. On second or subsequent conviction sec 105 of ACT provides Provision for enhanced penalty. NEW ELEMENTS IN TRADE MARKS ACT, 1999



Major changes that have taken place in the Trade Marks Act, 1999 (in force since 15th Sept. 2003) which has replaced the earlier Trade & Merchandise Marks Act, 1958 (now repealed) includes the following:



It has enlarged the definition of trademark.

It now includes shape of goods,

packaging and combination of colors, which can be adopted as a trademark. 

The Act provides for registration of trade mark for services in addition to goods



It provides for a single Register of Trade Marks with simplified procedures for registration.



The Act has simplified the procedure for registration of registered user (licensing of registered trade mark).



Provides for registration of collective marks owned by association of persons.



Provides for establishment of an Intellectual Property Appellate Board for speedy disposal of appeal from Registrar orders and decision



Transferred the final authority for registration of certification of trade marks to the Registrar. 31

INTELLECTUAL PROPERTY RIGHTS 

Provides for enhanced punishment for the offences relating to trade marks on par with the Copyright Act, 1957 to prevent the sale of spurious goods.



Prohibits use of someone else’s trademarks as part of corporate names or of business concern.



Provides for filing of a single application for goods or services falling in more than one class (multi class filing).



Increased the period of registration and renewal from 7 yrs to 10 yrs.



Has made some trade mark offences cognizable.



The Act has amplified the powers of the court to grant ex parte injunction in certain cases.



There are other related amendments to simplify and streamline the administration of the trade marks law and procedures in the country CASE STUDY:

1) CASE STUDY OF: LACOSTE V/S CROCODILE

V/S French clothing company Lacoste has won a key trademark infringement litigation in the latest round of its long-running trademark battle in China. In October 2004, the Changsha Intermediate People's Court in Hunan province ruled that a department store in the city must stop selling products, which infringe Lacoste's crocodile mark and pay damages to Lacoste. It was reported that after revealing a department store in the city sold leather bags, belts, and briefcases with a crocodile device mark that was similar to its famous crocodile mark, Lacoste initiated legal proceedings in the court against the store in August 17, requesting for an injunction and damages. 32

INTELLECTUAL PROPERTY RIGHTS

The defendant argued that the crocodile on its products faced to the left, while Lacoste's crocodile faced to the right. In addition, the store tried to argue that it would be exempted from paying damages to the plaintiff because it had bought the goods from a Chinese supplier who had, in turn, bought the goods from a manufacturer licensed by Crocodile International, a Singapore company who had registered a crocodile device mark in China with its head turning to the right. The store also requested the court to suspend the legal proceedings due to other pending litigations between Lacoste and Crocodile International in other courts. The court ruled that ordinary consumers would pay attention to the image of crocodile itself, and neglect the facing of the crocodile. The crocodile facing to the left was a mirror image of crocodile facing to the right. They were confusingly similar. The argument that the store would be exempted from paying damages to the plaintiff was not accepted by the court. The court believed that the store must have known the plaintiff's mark due to the popularity of the mark in China. The evidence proving that it had obtained the goods from a legitimate channel was deemed insufficient. The suspension request was also refused because the court was of the opinion that the products in question and parties involved in this litigation and other litigations were different. An injunction was granted and damages of RMB 5,000 ($600) were rendered. Lacoste is in a long-running dispute with Crocodile International in China for trademark infringement and unfair competition. At least one such a case is pending in the Beijing No 2 Intermediate People's Court. According to local newspapers, the defendant had appealed the decision.

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INTELLECTUAL PROPERTY RIGHTS The decision will be regarded as a valuable victory for Lacoste after it lost copyright infringement litigation with Crocodile International earlier this year. According to the trademark law, any person who sells goods that infringe the trademark right of another person, without knowing the goods are infringing, shall not be liable to pay damages to the trademark owner if he can prove that he obtains the goods from a legitimate source and can identify the supplier

BRANDS DEFINITION

A brand is a collection of images and ideas representing an economic producer; more specifically, it refers to the concrete symbols such as a name, logo, slogan, and design scheme. The psychological aspect, sometimes referred to as the brand image, is a symbolic construct created within the minds of people and consists of all the information and expectations associated with a product or service. For e.g.: ARROW, ZOD, NIKE etc. As per the Marketing Concept, The Consumer is assumed as a “KING”. And the main aim is to provide satisfaction to them. A brand often includes an explicit logo, fonts, color schemes, symbols, sound which may be developed to represent implicit values, ideas, and even personality. WHAT DOES BRAND INCLUDE IN IT?  LOGO : REEBOK , ADDIDAS  AMBASSADOR: SHARUKH KHAN / AMITABH. B. OF PEPSI , 34

INTELLECTUAL PROPERTY RIGHTS

 VISUAL EFFECT : SURF EXCEL {DAGH ACHE HOTE HAI }  AUDIO EFFECT : NESCAFE { TING IT DING, TIN TIN TIN }  MUSIC / SOUND : AIRTEL { TI DI DI NI NI TI DI DI NI }  CHARACTERS : BOOMER {SUPERMAN } , PARLE –G { LITTLE BOY }

FEATURES OF BRAND: 1) It must be Unique, Distinctive and Original. E.g.: Mentos ( Dimag Ki Batti Jalao ) 2) It must be more attractive and relevant.

DAIRY MILK 3) It must inspire the feeling of trust and confidence among customers E.g.: PEARS Soap

EXAMPLES OF BRANDS : 1) HYUNDAI MOTORS:

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INTELLECTUAL PROPERTY RIGHTS

Hyundai Motor India Limited (HMIL) is a wholly owned subsidiary of Hyundai Motor Company, South Korea and is the second largest and the fastest growing car manufacturer in India. HMIL presently markets 35 variants of passenger cars in six segments. The company recorded combined sales of 252,851 during calendar year 2005 with a growth of 17.26% over year 2004. HMIL is India's fastest growing car company having rolled-out 10,00,000 cars in just 90 months since its inception and is the largest exporter of passenger cars with exports of over Rs. 1,800 crores. HMIL has recorded a growth of 27.2% in exports over the year 2004. The year 2005 has been a significant year for Hyundai Motor India. It achieved a significant milestone by rolling out the fastest “200,000th” export car. HMIL exports to over 60 countries globally and made a foray into the highly competitive UK market by exporting its first shipment of 820 cars.

COMPANY NAME

BRAND

MCDONALD’ S One of the best brands in food products.

CADBURY One of the best brands in chocolates.

RAYMOND The oldest brand in garment industry.

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INTELLECTUAL PROPERTY RIGHTS

BMW One of the best brands in Automobile Industry.

LOGOS DEFINITION: A logo is a graphic element, symbol, or icon of a trademark or brand and together with its logotype, which is set in a unique typeface or arranged in a particular way. A typical logo is designed to cause immediate recognition by the viewer. The logo is one aspect of the brand of a company or economic entity, and the shapes, colors, fonts and images are usually different from others in a similar market. Logos may also be used to identify organizations or other entities in non-economic contexts. A logo is an iconic symbol designed to represent a company, organization, product, service, and sometimes certain places. In recent times the term 'logo' has been used to describe signs, emblems, coats of arms, symbols and even flags. True logos may generally be contrasted with emblems, or marks, which include non-textual graphics of some kind. Emblems with non-textual content are considered one aspect of a complete logo. The uniqueness of a logo is often necessary to avoid confusion in the marketplace among clients, suppliers, users, affiliates, and the general public. To the extent that a logo achieves this objective, it may function as a trademark, and may be used to uniquely

37

INTELLECTUAL PROPERTY RIGHTS identify businesses, organizations, events, products or services. Once a logo is designed, one of the most effective means for protecting it is through registration as a trademark, so that no unauthorized third parties can use it, or interfere with the owner's use of it. E.g.: The Coca-cola logo can be identified in any language because of the standards of color and the iconic ribbon wave.

BRAND SLOGANS: Sometimes a slogan is included in the logo. If the slogan appears always in the logo, and in the same graphic shape, it can be considered as part of the logo. In this case it is a brand slogan also called a claim, a tagline or an end line in the advertising industry. The main purpose is to support the identity of the brand together with the logo. The difference between a slogan and a brand slogan is that brand slogan remains the same for a long time to build up the brand's image, while different slogans link to each product or advertising campaign. Color: Color is important to the brand recognition, but should not be an integral component to the logo design, which would conflict with its functionality. Some colors are associated with certain emotions that the designer wants to convey. For instance, loud colors, such as red, that are meant to attract the attention of drivers on freeways are appropriate for companies that require such attention. For Eg :  In the United States red, white, and blue are often used in logos for companies that want to project patriotic feelings.  Green is often associated with health foods,  Light blue or silver is often used to reflect diet foods.

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INTELLECTUAL PROPERTY RIGHTS  Do not use face of a living person.  Avoid photography or complex imagery as it reduces the instant recognition a logo demands. For other brands, more subdued tones and lower saturation can communicate dependability, quality, relaxation, etc LOGO DESIGN: Logo design is commonly believed to be one of the most important areas in graphic design, thus making it the most difficult to perfect. The logo, or brand, is not just an image, it is the embodiment of an organization. Because logos are meant to represent companies and foster recognition by consumers it is counterproductive to redesign logos often. When designing (or commissioning) a logo practices to encourage are to  To avoid over-the-top in an attempt to be unique.  Use few colors, or try to limit colors.  Avoid gradients (smooth colours) as a distinguishing feature.  Produce alternatives for different contexts.  Design using vector graphics, so the logo can be resized without loss of fidelity.  Be aware of design or Trademark Infringements.  Include guidelines on the position on a page and white space around the logo for consistent application across a variety of media.  Do not use a specific choice clip-art as a distinguishing feature.  Avoid culturally sensitive imagery, such as religious icons or national flags, unless the brand is committed to being associated with any and all connotations such imagery may evoke. EXAMPLES:  Apple Computer, Inc.'s apple with a bite out of it started out as a rainbow of color, and has been reduced to a single color without any loss of recognition.

39

INTELLECTUAL PROPERTY RIGHTS 

Coca Cola's script is known the world over, but is best associated with the color red; its main competitor, Pepsi has taken the color blue, although they have abandoned their script logo.



IBM, also known as "Big Blue" has simplified their logo over the years, and their name. What started as International Business Machines is now just "IBM" and the color blue has been a signature in their unifying campaign as they have moved to become an IT services company.

 There are some other logos that must be mentioned when evaluating what the mark means to the consumer. Automotive brands can be summed up simply with their corporate logo- from the Chevrolet "Bow Tie" mark to the circle marks of VW, Mercedes-Benz and BMW, to the interlocking "RR" of Rolls-Royce each has stood for a brand and clearly differentiated the product line. Logos can represent any organization or entity, not just corporations. Perhaps the most recognizable and possibly the oldest of these is the emblem of the Olympic Games: the Olympic Rings, five interlocking rings (blue, yellow, black, green, and red respectively) on a white field.

COMPANY NAME

LOGO

MONSTER. COM

AIRTEL

40

INTELLECTUAL PROPERTY RIGHTS

COCA-COLA

CASE STUDY:1 SAHARA VS. STAR

V/S STAR AGREES TO CHANGE ONE LOGO Star India will change the logo of its new channel from 'One' to 'Star One'. This follows objections of copyright infringement raised by Sahara group, which relaunched its entertainment channel as 'Sahara One'. The Sahara Group's petition in the Delhi High Court sought to restrain Star from using 'One', but after the hearing, Star agreed to the court's suggestion to use the word Star along with One in the logo. The Star counsel pointed that it would take three months to 41

INTELLECTUAL PROPERTY RIGHTS alter the logo and that the company will launch the channel as scheduled on November 1 and then effect a change in the logo. Ashok Desai, who represented Sahara in the case, had submitted that numbers could be trade marks and as they had been protected by courts in several cases. He urged the court to restrain Star India to use One in the logo of its new channel but alternatively suggested that the court could ask Star to add the word Star to its logo and make it Star One. In its petition filed in the high court, Sahara India Mass Communication, which owns Sahara One, had sought to restrain Star from using One as the former had already registered the brand with the Registrar of Trade Marks. Sahara started its campaign for Sahara One and its logo was unveiled on October 1 2004 in London, the company said, adding Star's campaign for the proposed channel 'One' was creating confusion among the viewers. Star's contention was that it had announced its intention to launch the new channel 'One' in June 2004, much before the rebranding of Sahara's entertainment channel.

INDUSTRIAL DESIGN ACT, 1911 Originally “the Design Act” was a part of “the Patents and Designs Act, 1911”.The Patent Act, 1970 was separately enacted by the Parliament keeping in view the importance of patents world-wide, and also due to growing litigation. The sections relating to patents were deleted from the Patents and Design Act, 1911, thus remaining only the provisions of the Designs Act. Since 1970, the Patents and Design Act, 1911 was called Designs Act, 1911. Hence a number of gaps in the numbers of sections as the sections relating to the designs were not renumbered. OBJECT: The Preamble of the Designs Act, 1911 explains the object of the Act, “An Act to amend the law relating to the protection of designs.” Design Right protection is the primary objective of the Designs Act, 1911 to offer protection for original, industrial design articles. Protection is given to the shape or configuration (whether internal or external) of the whole or part of the designed article. 42

INTELLECTUAL PROPERTY RIGHTS Design right protection is concerned with original industrial design, focusing on the actual article and without any mandatory requirement for original drawings to claim ownership, unless that was how the design was first recorded. Design right for industrial design is copy-right based allowing the owner the exclusive right to produce articles to a particular design, but it is not a monopoly-based right for original industrial design (as opposed to registered designs). The design and brand names are inter-related. For example, ‘Guinness’ which on the first financial brand assessment was valued at 1.7 billion pounds. In India, the Bajaj Chetak is a favorite two-wheeler to several millions of people. The design attribute to Chetak should not be imitated by any two-wheeler manufacturer.

Therefore, design is viewed as a financial asset, it becomes quite obvious that designers and company managers should take a keen interest in making sure that the intellectual property and its ownership is effectively and sufficiently protected. The problem with plagiarism (literary theft) is that reproduction of design products does not require sophisticated know-how, creative skills or cost-consuming Research and Development (R&D). it is therefore important that appropriate measures, such as effective legal protection should be framed to deal with the design piracy to protect the interests of design inventing persons and companies. This is achieved by enacting “The Designs Act, 1911”.

AMENDMENTS: The parliament of India has recently passed the Designs Act, 2000 to consolidate and amend the law relating to protection of designs. The Legislature in its wisdom by enacting the Design Act, 2000 does not want to stop the progress in industrial products as

43

INTELLECTUAL PROPERTY RIGHTS that would amount to pin down the competitors and in the process the technology would be blocked, same would result in clogging the economic growth. This Act has a total of 48 Sections that deal with the various definitions, registrations of designs, copyright in registered designs, exhibition of designs at Industrial and Industrial exhibitions, and powers and duties of the Controller & the Central Government. Since the enactment of the Designs Act, 1911 considerable progress has been made in the field of science and technology. The legal system of the protection of industrial designs requires to be made more efficient in order to ensure effective protection to registered designs. It is also required to promote design activity in order to promote design element in an article of production. This Act is essentially aimed to balance these interests. It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs.

To achieve these purposes, the new Act incorporated inter alia, the following, namely: It enlarges the scope of definitions of “article” and “design” and introduces definition of “original”.  It amplifies the scope of “prior publication”.  It incorporates the provisions for delegations of powers of the Controller to other officers and duties of examiners.  It contains provisions for the identifications of non-register able designs.  It contains provisions for the substitution of application before registration of a design.

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INTELLECTUAL PROPERTY RIGHTS  It introduces internationally followed system of classification in the pace of Indian classification.  It contains provision for maintaining the Register of design on computer.  It contains provisions for restoration of lapsed designs.  It contains provision for appeal against order of the Controller before the High Court instead of Central Government as existing.  It revokes the period of secrecy of two years of a registered design.  It provides for compulsory registration of any document for transfer of right in the registered design.

 It introduces additional grounds in canceling proceedings and makes provision for initiating the cancellation proceedings before the controller in the place of High Court.  It enhances the quantum of penalty imposed for infringement of registered design.  It contains provisions for grounds of cancellation to be taken as defense in the infringement proceedings to be initiated in any court not below the court of the District Judge.  It enhances initial period of registration from 5 to 10 years, to be followed by a further extension of a period of five years.

45

INTELLECTUAL PROPERTY RIGHTS  It contains provisions for allowing of priority to other convention countries and belonging to the group of countries or inter-governmental organizations apart from United Kingdom and other Commonwealth countries.  It contains provisions for avoidance of certain restrictive conditions for the control of anti-competitive practices in contractual licenses.  It contains specific provisions to protect the security of India. THE OBJECTIVE OF THE ACT 1The main purpose of the Design Act is to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial process or means. 2Competition is fierce in India’s economy with a large number of players in the unorganized sector clamoring for a greater market share. Lured by the potential of big profits, there are unscrupulous organizations that deliberately duplicate designs of reputed brands. This could adversely affect the established products causing immense damage to brand equity and even send sales plummeting. Companies also face the possibility of losing reputation and customer goodwill across their other brands. 3To tackle the nefarious designs of the brand counterfeiters, the Design Act, 2000 offers design registration that provides protection for visual appeal/appearance of a product. 4Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The objective of design registration is to see that the artisan, creator, originator, of a design having aesthetic look is not deprived of his bona fide reward by others applying it to their goods.

DESIGN Section 2 (5) of the Designs Act, 1911 defines DESIGN as:

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INTELLECTUAL PROPERTY RIGHTS DESIGN means only the features of shape, configuration, patterns or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal and are judged solely by the eye; but not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade Merchandise Marks Act, 1958, or property mark as defined in section 479 of the Indian Penal Code, 1860 Section 2 (d) of the Designs Act, 2000 defines a “DESIGN”. This definition is similar to the one given under the Act of 1911 except the following added features. It included composition of lines or colors applied to any article. Such article may be either in two dimensional form or in three dimensional form or both. It does not include any artistic work as defined under the copyright Act.

FEATURES OF DESIGN The following features have been considered as essential elements of an Industrial Design. Novelty:Designs are not register able unless they are “new”. This novelty must be reflect manifestly and is to be tested against those designs which are already published or registered in the country. The difference in “immaterial details or in features which are variants commonly used in the trade” are not sufficient to render the design “new”. The designer must have applied some further skill and labour of a draftsmanship. However common trade usage is not the only criterion for judging the novelty of registered designs.

47

INTELLECTUAL PROPERTY RIGHTS

The Whole Article and Parts:An article for which a design may be registered includes “any part of an article if that part is made and sold separately”. “Must Match”:To secure conformity with unregistered design right , the 1988 Act (UK) excludes consideration of features of shape and configuration which are dependant on the appearance of another article of which article is intended by the author of the design to form an integral part. Immaterial Appearance:An exclusive where, the appearance of the article is not material. I.e. if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description and, would not be taken into account if the design were applied to the article .FUNCTIONAL FEATURES :A registrable design does not include features of shape or configuration, which are dictated solely by the function which the article has to perform. Thus in England, the emphasis is on “eye appeal”. An electrical terminal for washing machines was held “unregistrable” because a potential customer would decide to buy it solely for its utility and not because of any attraction in its shape. Thus strictly utilitarian articles were excluded from registration as designs.

ESSENTIALS OF A DESIGN

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INTELLECTUAL PROPERTY RIGHTS It’s clear that an industrial design must fulfill the following essential conditions, to be protected under the law. It Must Be Applied To Articles:A design is something which is applied to an article and not the article itself. An article to which the design is to be applied must be something which can be delivered to the purchaser / customer as a finished article. Therefore, buildings and structures like a 5-star hotel or a petrol filling station cannot be considered as article within may be subjectmatter for registration as design E.g. models of buildings, structures and toys etc.

Appeal To The Eye:As can be seen from the definition under the 1911 as well as the 2000 Acts, features of shape, etc, which in the finished article must appeal to the eye and be capable of being judged solely by the eye. In other words, all shapes or configurations or patterns are not capable of being registered. The features should appeal to the eye and should be judged solely by the eye and not by any functional considerations. There must be a special. Peculiar, distinctive, significant or striking appearance - something which catches the eye. Novelty And Originality:A design, for the purpose of registration must be both new and original, not previously published in India. It should be substantially different from pre-existing designs applied to the class of article. The introduction of ordinary trade variants into an old design cannot make it new or original. For e.g. colour may form an element in a design, but colour or colouring as such does not constitute a design, unless the change of colour creates a new pattern or ornament. In deciding the question of novelty or originality, the evidence of experts in the trade is admissible. What amounts to a substantial difference

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INTELLECTUAL PROPERTY RIGHTS must depend on the particular facts of each case. A design which is a fraudulent or obvious imitation of an existing design will be considered a pirate copy. Similarly a design of a water dispenser in a cylindrical shape has been held to be “no novelty” in “Hello Mineral Water Pvt Ltd” vs. “Thermoking California Pure” on the ground that mere novelty of form or shape is insufficient. Novelty involves the presence of some element or new position of an old element in combination, different from anything found in any prior structure.

Copyright In Drawings:Whatever be the nature of the drawing, the purpose and intention would be the relevant criterion to consider whether the drawings are designs in the light of the provision Designs Act, 1911 and the Copyright Act, 1957. Therefore where a design comes within the meaning of the definition, under the Act of 1911 and also within the meaning of section 15 of the Act of 1957, if the same is not registered under the previous Act, cannot be claimed under the latter Act. Presumption Of Originality: Where the statement of novelty filed by the petitioner was in respect of shape, configuration and surface pattern particularly the ridged side of the container. The novelty was not claimed either in relationship to the proportion of the shape or in the colour used. Therefore difference in the proportion of the container and the difference in the colour of the petitioner’s containers and the defendant’s containers are immaterial, as neither the colour nor the proportions were part of the registered design.

No Prior Publication:-

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INTELLECTUAL PROPERTY RIGHTS An application for the registration of a design should be for a new or original design, not previously published in India. The Design Act does not define “publication”. In order to constitute publication, a design must be made available to the public or it is shown to be disclosed to some person without any obligation to keep in a secret / confidential. It is not necessary the design should be actually used. Generally the publication may be classified into two types, (a) publication in prior document; and (b) publication by prior user. If it’s published already, it cannot be registered as a “design” under the Act. In Kemp and company and others vs. Prima Plastics Ltd. The Bombay High Court held that a disclosure of a design by the proprietor to any other person in good faith is not deemed to be a publication of design sufficient to invalidate the copyright thereof, if the registration is obtained subsequent to the disclosure. For instance, if goods are imported from the abroad and are used by the

importer

without its disclosure to anyone else and goods of such design are not available freely in India, then possibly, can be said that there is no publication of the design of the goods so imported. However, if such imported goods are used in full view of general public, then the design of the goods so imported and use, will have to be regarded as having been published in India, apart from the fact that such a design, of later used for manufacture of goods in India, would not be regarded as a new or original design. If for example, an importer imports a car which works on solar energy and even though the car so imported may be only is of its kind in India, but when it is driven on the roads here, it would mean that the design of the car has been made public in India.

7. Effect Of Pre-Publication:Design is a conception, suggestion, or idea of a shape and not an article. It has been already anticipated, it is not “new” or “original”. If it has been pre-published, it cannot claim protection. Publication before registration defeats the proprietor’s right to protection under the Act.

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INTELLECTUAL PROPERTY RIGHTS

REGISTRATION OF DESIGN Sections 3 to 10 of the Designs Act 2000 and rules 11 to 25 of the Designs Rule Act 2001 deal with the registration of designs. The registering authority is the Controller-General of Patents. Designs and Trade Marks, appointed by the Central Government. He will be controller of Designs for the purpose of the Act. They are as follows:Who can apply for registration? Contents of application. Statement of novelty. Prohibition of registration of certain designs. Acceptance of application. Objections. Decision of controller. Certificate of registration. Effect of registration. Cancellation of design. EXCLUSION FROM THE SCOPE OF DESIGN Designs that are primarily literary or artistic in nature are not protected under this act. They are as follows: 1Book, Jackets, Calendars, certificates, greeting cards, maps, post cards, stamps, medals 2Labels, tokens, cartoons 3Any principle or mode of construction of an article 4Mere mechanical contrivance 5Buildings and structures 6Parts of articles not manufactured and sold separately

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INTELLECTUAL PROPERTY RIGHTS 7Mere change in size of an article 8Flags, emblems or signs of any country 9Layout designs of Integrated circuits INFRINGEMENT OF INDUSTRIAL DESIGN 1When an Individual applies a registered Industrial design or a design not different substantially to an article for the purpose of monetary gain through sale, rental, or exposure for sale without the consent of the owner then such an act is termed as Infringement of the registered Industrial Design under Section 22 of the designs act, 2000. The court decides whether there has been an act of infringement after taking into consideration all round aspects of the alleged infringement. If the infringement is proven. 2If anyone contravenes the copyright in a design he is liable for every offence to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design.

CASE STUDY:1 BRITANNIA BISCUITS V/S SARAA LEE BAKERY 2001

FACTS:53

INTELLECTUAL PROPERTY RIGHTS

PETITIONER: - BRITANNIA BISCUITS LTD. DEFENDANT: - SARA LEE BAKERY.

In this case, The Britannia Industries filed a suit for interim injunction restraining the respondent I.e. Saraa Lee Bakery, from committing the acts of piracy of the applicants design, which was registered. Sara Lee Bakery manufactured the impugned product “MILK WALA”, “MILK CREAM BISCUITS” becoming the design which was identical or similar to applicants design.

JUDGEMENTS:The Honorable Court, held that main features in both the biscuits are not substantially same in the eye of the customer specially children. Therefore it was held that there is no infringement

by

the

respondent in respect of the Design

Act

application

and

of

the

Britannia

Biscuits was refused.

CASE STUDY:2 AKI NARULA V/S SUNEET VERMA

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INTELLECTUAL PROPERTY RIGHTS BUNTY BABLI - RANI MUKHERJEE’S COSTUME MADE BY AKI NARULA.

A recent controversy erupted on the 25th April 2005 at the Lakme India Fashion Week. One designer accused another of copying his creation.

The accuser: Designer Suneet Verma Naurla

The accused: Designer Aki

The accusation: Aki, who is designing for the Yashraj film, Bunty Aur Babli, has used a creation from Suneet's 2003 Fall/Winter collection to dress Rani Mukherjee. Suneet Verma alleges that the chiffon poncho and embroidered black dress worn by Rani Mukherjee in the said movie is his creation which was taken by Aki Narula without his prior permission. The damages: Rani's costume by Aki costs Rs 8,500 Suneet's design from the fall collection costs Rs 14,500.

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INTELLECTUAL PROPERTY RIGHTS

GEOGRAPHICAL INDICATION What is a Geographical Indication? Geographical Indications means an indication which identifies such goods as agriculture goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin. Each geographical reputation was carefully built up and painstakingly maintained by the master of that region, combining the best of nature and man, traditionally handed over from one generation to the next for centuries. EXAMPLES OF GEOGRAPHICAL INDICATION IN INDIA Basmati Rice, Darjeeling Tea, Kanchipuram Silk Saree, Kolhapuri Chappal, Aranmula Kannadi etc.

WHO IS THE PRODUCER? A producer is a person dealing with three categories of goods. •

Agriculture goods- including the production, processing, trading or dealing.

•

Natural goods -including exploiting, trading or dealing.

•

Handicrafts or industrial goods- including making, manufacturing, trading or dealing.

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INTELLECTUAL PROPERTY RIGHTS WHO CAN APPLY FOR THE REGISTRATION? Association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering geographical indication in relation to such goods shall apply in writing to the Registrar in such' form and in such manner and accompanied by such fees as may be prescribed for the registration of the geographical indication

REGISTRATION PROCESS : The Register of geographical indication is divided into two parts. Part ‘A’ consists of particulars relating to registered geographical indications and Part ‘B’ consists of particulars of the registered authorized users .The Registration process is similar to both for registration of a geographical indication and an authorized user which is illustrated below. 1. Registration and protection. 2. Assignment and transfer 3. Infringement advice and litigation.

BENEFITS OF REGISTRATION : •

It prevents unauthorized use of a registered Geographical Indication goods by third parties.

•

It boosts exports

•

It promotes economic prosperity of producers.

•

Only an authorized user has the exclusive rights to use the geographical indication relation to goods in respect of which it is registered

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INTELLECTUAL PROPERTY RIGHTS

Which of the geographical indication cannot be registered? •

The use of which would be likely to deceive or cause confusion or contrary to any law.

•

Which comprises or contains scandalous or obscene matter or any matter likely to hurt religion susceptibility of any class or section of citizens of India.

•

Which would other wise be disentitled to protection in a court. which are determined to be generic names or indications of goods and are,

•

Therefore, not or ceased to be protected in their country of origin or which have fallen into disuse in that Country.

•

Which, although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be.

Case Studies :1 58

INTELLECTUAL PROPERTY RIGHTS

BASMATI RICE

The Basmati case, which was initially a battle over patents, soon turned into a struggle over geographical indications. Basmati is an aromatic variety of rice grown in the Himalayan region of India and Pakistan. It is slender, aromatic rice that grows in this region and is a major export crop for both countries. The soil and the climate of the region are primarily responsible for the special character of the rice grown there. Although there are other varieties of aromatic rice, like the Thai aromatic rice well know as 'Jasmine,' Basmati rice is more renowned and is totally associated with the geographical region from which it originates. Annual Basmati exports are worth about $300 million and constitute the livelihood of thousands of farmers. The battle for Basmati began in 1997, when the US rice breeding firm, RiceTech Inc. was awarded a patent (US5663484) relating to plants and seeds, seeking a monopoly over various rice lines, including some having characteristics similar to Basmati lines. India requested a re-examination of this patent in 2000 and, in response to this request; the patentee withdrew a number of claims, including those covering Basmati type lines. Further claims were also withdrawn following concerns raised by the USPTO. The dispute has, however, moved on from the patent issue to the misuse of the name “Basmati.” In some countries the term “Basmati” can be applied only to the long-grain aromatic rice grown in India and Pakistan. RiceTech also applied for the registration of the trademark, ‘Texmati,’ in the UK, claiming that “Basmati” was a generic term. It was successfully

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INTELLECTUAL PROPERTY RIGHTS opposed and the UK has established a code of practice for marketing rice. Saudi Arabia (the world’s largest importer of Basmati rice) has similar regulations on the labelling of Basmati rice. The code states, “The belief in consumer, trade and scientific circles is that the distinctiveness of authentic Basmati rice can only be obtained from the northern regions of India and Pakistan due to the unique and complex combination of environment, soil, climate, agricultural practices and the genetics of the Basmati varieties.” But in 1998 the US Rice Federation submitted that the term “Basmati” is generic and refers to a type of aromatic rice. In response, to a petition filed by the US and Indian civil society organizations which sought to prevent US-grown rice from being advertised with the word “Basmati”, the US Department of Agriculture and the US Federal Trade Commission rejected it in May 2001. It opined that the label “American-grown Basmati” did not mislead the consumers, and deemed “Basmati” as a generic term.

CASE STUDY: 2

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INTELLECTUAL PROPERTY RIGHTS

POCHAMPALLY

HANDLOOM

CLUSTER

RECEIVES

IPR

PROTECTION :

The famous Pochampally Ikat tie-and-dye sari has won Intellectual Property Rights Protection, more than a year after it first applied for the same. It is the first traditional Indian craft to receive this status. Pochampally is a small town in Nalgonda district of Andhra Pradesh, a handloom cluster, known for its very unique Ikat design for centuries. It has about 5,000 weavers who weave the handloom with traditional design called Ikat. With the objective of converting this uniqueness into commercial value, the Textiles Committee launched a cluster initiative under its Cluster Development Programme. This the committee decided to do by working closely with two of the main associations in the region - Pochampally Handloom Weavers’ Co Op. Society, an autonomous society registered under the society Act 1860 and Pochampally Handloom Tie & Dye Silk Sarees Manufactures Association, an association. The two bodies are responsible for production and marketing of Pochampally Ikat. The directorate (handlooms & textiles), government of Andhra Pradesh, Weavers Service Centre (WSC), APTDC, NABARD have been involved in the process of GI registration. The services of APTDC was used for filing before GI registry and NABARD has provided funds under its DRIP to cover the costs involved. Under Geographical Indications, a product and its attributes are linked to a specific region; in this case the Ikat fabric is linked to Pochampally. A GI can also be nongeographical name like basmati rice. Producers spend time and money in developing products that are unique to their territory. They should, therefore be protected from misappropriation and unfair competition. Besides, consumers should also be protected from the misuse of the GI associated with the product. Although registration of a GI is not compulsory, it provides a legal protection to a product to facilitate action against 61

INTELLECTUAL PROPERTY RIGHTS infringement. The registration of a GI is valid for a period of 10 years and it can be renewed thereafter. The powerloom clusters at Solapur and Salem also following the path of Pochampally cluster. Remedies : A sentence of imprisonment for a term between six months to three years and a fine between fifty thousand rupees and two lakh rupees is provided in the Act. The court may reduce the punishment under special circumstances.

CONCLUSION

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INTELLECTUAL PROPERTY RIGHTS

The Intellectual Property is to be understood as a result of mental labour distinguished from purely physical labour. In today’s era, of Globalization the Intellectual Property has acquired greater recognition in International law as compared to the Municipal Laws. Nowdays, the international dimension of IP is gaining greater importance. It’s true that globalization and open markets are here not only to stay but to grow and cover all the countries under its blanket, and various international agencies and international financial institution such as WTO, World bank and the IMF reinforce the thought that “globalization and free markets is the only way to go”. The current scenario shows a similar picture with countries trading with each other on a huge scale and on a continuous basis; the world in a true sense has become a “global village”. As countries come close due various reason primarily due to trade coupled with a technological and information boom, the breed of researchers, inventers, innovators and discoverers have found a replenishing tonic- IPR (Intellectual Property Rights). As countries trade and numerous inventions, products, services, ideas, creative works are born it is imperative for any country big or small, strong or weak, to safeguard the interest of it’s indigenous inventors, products, service, solutions, ideas and creative work at large. It’s obligatory for a country, organization, an association or an individual to protect ones interest and discourage others from taking unfair advantage.

Role of Intellectual Property Act in Future :-

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INTELLECTUAL PROPERTY RIGHTS IPR is going to play a crucial role in near future, which can be attributed to the following few reasons :The composition of world-trade is changing. The Commerce in Intellectual Property has become even greater component of trade between nations. The World Commerce has become more interdependent, establishing a need for international co-operation. The new technologies and information storage technologies permit unauthorized copying to take place faster and more efficiently. As it is said nothing is perfect, so is the case with IPR. Following are few suggestions which would make IPR more efficient: 1. Excluding diagnostic, therapeutic and surgical methods for the treatment of humans and animals from the scope of Patents. 2. Excluding plants and animals from Patentability. 3. Avoid Patenting of new uses of known products. 4. Provide an effective compulsory licensing system and adequate government use provisions. 5. Businesses, universities, sport teams, artists, and non-profit organizations should be aware of the commercial value of their IP, and generate revenues from the secondary exploitation of their brands, designs, artworks or any other merchandisable element. Equally, businesses that sell low-priced mass products should consider making use – with legal authorization - of other’s designs, characters and the like, to make their products more popular and attractive. For

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INTELLECTUAL PROPERTY RIGHTS success, businesses will need a mix of IP-related legal knowledge, commercial contract drafting and negotiation skills, and plain good sense. 6. To have an adequate number of well qualified “Patent Agents” to meet ever increasing growing number of Patent applications. Right now there are only 928 registered patent agents in India, but merely 250 are practicing actively. In the last 3 years over fifty thousand patent application are filed, of which 26,846 were filed in last year itself, that says the whole story. 7. Organizations like NIF (NATIONAL INNOVATION FOUNDATION) should be set up which provides platform for new innovators to encourage them to get their innovations patented. The days are changing fast and the material based society is changing into a knowledge based society. In this context we can easily say that IP would play a very important role in the coming generations.

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BIBLIOGRAPHY  Intellectual property rights and the law By Dr. G. B. Reddy

WEBLIOGRAPHY:     

www.wto.org www.wipo.org www.laws4india.com www.newmedia.agencyfaqs.com www.legalservice.com

SEARCH ENGINES:  www.google.co.in  www.yahoosearch.com

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