TRIPS-Patent,Trademarks,Industrial Design


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TRIPS-Patent,Trademarks,Industrial Design

  1. 1. I f y o u h a v e b e e n a s k i n g y o u r s e l f t h i s q u e s t i o n , t h e n t h i s i s f o r y o u !
  2. 2. INTELLECTUAL PROPERTY (IP) • Intellectual properties refer to creations of mind, literary and work of art, symbols, names and signs used in commerce. • It is like any other property right. • Allows creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation.
  3. 3. RECOGNITION OF IP • The importance of intellectual property was first recognized in the Paris Convention for the Protection of Industrial Property(1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886). • Both treaties are administered by the World Intellectual Property Organization (WIPO).
  4. 4. IMPORTANCE OF IP An efficient and equitable intellectual property system :- • Help all countries to realize intellectual property’s potential as a catalyst for economic development ,social and cultural well-being. • Help strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.
  5. 5. INTELLECTUAL PROPERTY RIGHTS (IPR) • Intellectual property rights are the rights given to persons over the creations of their minds. • They usually give the creator an exclusive right over the use of his/her creation for a certain period of time. • IPR is customarily divided into two main areas:  Copyrights and rights related to Copyrights Industrial Property
  6. 6. TRIP’s The TRIPS Agreement: • The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual property.
  7. 7. FEATURES OF THE AGREEMENT  Standards  The Agreement sets out the minimum standards of protection to be provided by each Member.  Each of the main elements of protection is defined • The standards are set by  Meeting the substantive obligations set by WIPO, Paris convention and Berne convention. • The TRIPS Agreement adds a substantial number of additional obligations on matters where the pre-existing conventions are silent or were seen as being inadequate.
  8. 8. Enforcement • This set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights. • The Agreement lays down certain general principles applicable to all IPR enforcement procedures.  Dispute Settlement • The Agreement settles disputes between WTO Members in respect to the TRIPS obligations, subject to the WTO's dispute settlement procedures.
  9. 9. PRINCIPLES • The Agreement provides for certain basic principles, such as national and most-favoured-nation treatment, and some general rules to ensure that procedural difficulties in acquiring or maintaining IPRs do not nullify the substantive benefits that should flow from the Agreement. • The obligations under the Agreement will apply equally to all Member countries, but developing countries will have a longer period to phase them in. • Agreement is a minimum standards agreement, which allows Members to provide more extensive protection of intellectual property if they so wish. • Members are left free to determine the appropriate method of implementing the provisions of the Agreement within their own legal system and practice.
  10. 10. GOALS • The general goals of the TRIPS Agreement are contained in the Preamble of the Agreement, which reproduces the basic Uruguay Round negotiating objectives established in the TRIPS area by the 1986 Punta del Este Declaration. • These objectives include:-  The reduction of distortions and impediments to international trade  Promotion of effective and adequate protection of intellectual property rights  Ensuring that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade. • The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
  11. 11. INDUSTRIAL DESIGN ORIGIN Designing and Printing of Linen Act(1787) U.K Design Act,1911 British Govt. in India Indian Design Act,2000
  12. 12. ADVANTAGES OF INDUSTRIAL DESIGN • Beautiful & Appealing • Increases market potential • Safeguarding the features of the product • Exclusivity • Encourage fair and competitive trading practices • Promotes Creativity
  13. 13. Few Examples
  14. 14. INDIAN DESIGN ACT,2000 • Repealed & Replaced the Designs Act,1911 • Meaning of ‘Design’ under the Act • Controller of Industrial Design
  15. 15. MAIN PROVISIONS OF THE ACT 1. The ‘Controller General of Patents, Designs and Trade Marks’ appointed shall be the controller for Industrial design. 2. Registration Formality 3. Prohibition of Registration 4. Certification 5. Expiration & Renewal 6. Public Inspection 7. Petition for the cancellation 8. Benefits of Registration 9. Refused applications 10.Infringement
  16. 16. ARTICLES Article 25-Registeration for Protection 1 .Exclusivity 2 .Obligation Articles 26-Protection 1.Ownership 2.Exception to Protection 3.Duration
  17. 17. STEPS FOR REGISTRATION Step 1. Finding out whether any registration already exists Step 2. Preparing a representation of the design Step 3. Identifying the class of design Step 4. Providing a statement of novelty Step 5. Including a disclaimer Step 6. Claiming a priority date
  18. 18. Step 7. Determining the fee to be paid Step 8. Ensuring all enclosures are attached Step 9. Complying with objections (if any) Step 10. Providing full details
  19. 19. INDUSTRIAL DESIGNS THAT CANNOT BE REGISTERED • Opposing to public moral values. • Any process of construction. • Not distinguishable from previously registered designs. • Includes Trademark. • Books, jackets, calendars, certificates, forms and other documents, dressmaking patterns, greeting cards, leaflets, maps and plan cards, postcards, stamps, medals • Flags, Emblems or Signs of any country. • Integrated circuits.
  20. 20. THE HAGUE SYSTEM • The Hague System for the International Registration of Industrial Designs provides a practical business solution for registering up to 100 designs in over 60 territories through filing one single international application ADVANTAGES • Minimum of formality and expense • Single international application, in one language, accompanied by the payment of a single set of fees, in one currency and with one Office (the International Bureau). • Better management of the protection offered
  23. 23. CASE STUDY 1.Bharat Glass Tube Limited VS Gopal Glass Works Limited 2. The case of a toymaker 3.Turning an IP Dispute into a Business Opportunity
  24. 24. THE PATENT ACT, 1970 DEFINITIONS • Patent • Invention • Discovery • Patentee • Patent agent
  25. 25. NEED OF PATENT
  26. 26. CONDITIONS TO BE SATISFIED BY AN INVENTION TO BE PATENTABLE • Novelty • Inventiveness (Non-obviousness) • Usefulness
  27. 27. TYPES OF INVENTIONS WHICH ARE NOT PATENTABLE IN INDIA (SECTION 3) • Frivolous or contrary to law • Commercial exploitation • Discovery of scientific principle • Known process, machine or apparatus • Re-arrangement or duplication of known devices • A method of agriculture or horticulture • Inventions relating to atomic energy • Musical or artistic work
  29. 29. CONSEQUENCES OF GRANT OF PATENT RIGHTS OF A PATENTEE: • Right to exploit the patent • Right to grant licence etc. • Right to surrender • Right to sue for infringement
  30. 30. EXPIRY OF A PATENT • Patent has lived its full term. • Patentee fails to pay the renewal fee. • Validity of the patent has been successfully. challenged by an opponent. • Patent is revoke.
  31. 31. INFRINGEMENT • Types of Patent Infringement (a) Direct (b) Indirect (c) Contributory (d) Induced • Patent infringement cost • How to Sue for Patent Infringement Damages
  32. 32. PATENT CO-OPERATION TREATY • The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), between more than 140 Paris Convention countries ADVANTAGES • Brings the world within reach • Postpones the major costs associated with internationalizing a patent application • Provides a strong basis for patenting decisions • Is used by the world’s major corporations, universities and research institutions when they seek international patent protection • Allows you to apply securely and easily online, and to save money by doing so
  36. 36. TRADEMARK MEANING • Trademark?? • Service mark?? Consists of • Words e.g. coca cola • Letters e.g. idea • Numbers e.g. 501 • Symbols e.g. McDonald’s golden arches • Signature e.g. Ford or Johnnie Walker • Shape e.g. Motorola
  37. 37. FUNCTIONS • Identify • Distinguish • Source of origin • Quality • Advertise
  38. 38. TYPES OF TRADEMARKS • Product Trade-Mark Example: Nike "swoosh” Make my trip and Tata • Service Trade-Mark Example: CCD, Kaya skin clinic • Certification Mark Example: ISI • Collective Mark: Example: CA, NAAC, NGO • Defensive Trade-Mark Example: Mercedes • Jointly owned trademarks
  39. 39. TYPES OF NON CONVENTIONAL TRADEMARKS 1) SOUND MARKS: • Yahoo- yodel • MGM and their lion's roar; • Intel and the three-second chord sequence used with the Pentium processor 2) SCENT MARK • First Scent Mark in the European Union was - “the smell of fresh cut grass” for goods, namely tennis balls in 1999 • Odor of beer for dart flights and the scent of roses for tyres -first olfactory marks to be registered in the U.K • The fragrance of 'Chanel No 5' for perfume failed
  40. 40. EVOLUTION OF TRADEMARK LAW IN INDIA Problems solved by applying section 54 of specific relief act of 1877 and trade marks were registered under Indian registration act 1908 Indian trade mark act was passed in 1940 in correspondence with English trademarks act. Later was replaced by trademarks and merchandise act 1958 On September 15, 2003, the Indian trade mark act and its trademark rules came into effect. This was done to make it compliant to TRIPS obligation
  41. 41. INDIAN TRADEMARK ACT ,1999 • Classification system • Requirements for filing trademark application
  43. 43. • Term and renewal of trade-mark • Licensing and assignment • Enforcement
  44. 44. MARKS THAT CANNOT BE REGISTERED • Marks that describe value, quantity, quality, or intended purpose of the goods or services; • Marks that are deceptive; • Marks that are contrary to public order or morality; • Marks that consist of armorial bearings, flags and other emblems or official signs of States or international intergovernmental organizations; • Marks of such a nature as to infringe rights acquired by third parties in the country where protection is claimed (for example: marks that are identical or similar to marks).
  45. 45. INFRINGEMENT • Fundamentals of infringement (Any or below all aspect will be considered under infringement) • copy of whole registered mark with a few additions and alterations, • The infringed mark is used in the course of trade the use of the infringed mark is printed or usual representation of the mark in advertisement. Any oral use of the trademark is not infringement. • The mark used by the other person almost resembles the mark of the registered proprietor which is likely to mislead or cause confusion • Grounds for Infringement of registered Trademark • Advertising an infringed trademark leads to unfair advantage or is harmful to the unique characteristics and also does not support the reputation of earlier trademark.
  46. 46. • Any person who is not registered owner of a trademark or a person who is given the permission uses the trademark which is identical or similar to the original trademark or is does not uses it for goods and services for which it is registered. The trademark that has been registered has already created a reputation of its own and use of infringed mark will cause unfair advantage or is harmful to the reputation of trademark which is registered • A person who uses a registered trademark as his trade name or in his business concern or part of both which deals with goods and services for which the trademark is registered. • If any distinct part of a trademark that is registered and which has words, the trademark can be infringed by verbally using those words as well as visual representation of it. • If any person intentionally uses the trademark for which he knows that he is not authorized by the owner of the mark then it is considered to be infringement.
  47. 47. E.g.: Gorbatschow Vodka KG (“Plaintiff”) -Vs- John Distillers Limited (“Defendant”) E.g.: McDonalds
  48. 48. • Remedies – an action for infringement in case of a registered trademark – an action for passing off in the case of an unregistered trademark • Relief – Injunction – Damages – Accounts of profits – E.g – Finolex Cables
  49. 49. INTERNATIONAL REGISTERATIONS TWO WAYS: • File a trademark application with the trademark office of each country in which you are seeking protection, • Use the Madrid system
  50. 50. MADRID SYSTEM • Madrid system for the international registration of trademarks provides one single procedure for the registration of a mark in several territories. It is governed by two treaties, the Madrid Agreement and the Madrid Protocol, and is administered by the International Bureau of WIPO in Geneva, Switzerland. ADVANTAGES: • Apply for protection of a mark in over 80 territories • Can extend its geographical scope to additional Contracting Parties in a quick, simple and cost-effective manner; • Just one single expiry date and the registration can be renewed simply (and also electronically) • Administration costs are less, compared to several filings in national territories • India became a member of Madrid protocol on july 8 2013
  53. 53. CASE STUDIES • Cadbury V/S Nestle • William Grant & Sons Ltd. v. McDowell & Co. Ltd
  54. 54. Project Done by :- • Vaibhavi shah • Yash ghatalia • Sudipto hizli • Sony mathews • Sharon pangeth • Tanay shah • Vinod prakash • Yash adukia