Intellectual Property in India: the Substantive Law Martins, Building, Liverpool Tuesday 18 September 2007 Jane Lambert Barrister

TRIPs Obligations India is founder member of World Trade Organization (“WTO”) WTO Membership is conditional upon compliance with TRIPs (Trade-related Aspects of Intellectual Property Rights)

India is founder member of World Trade Organization (“WTO”)

WTO Membership is conditional upon compliance with TRIPs (Trade-related Aspects of Intellectual Property Rights)

TRIPs Obligations TRIPs requires WTO members to protect: original artistic and literary works including software, databases, films and sound recordings performances by actors, dancers, musicians, singers and other performers

TRIPs requires WTO members to protect:

original artistic and literary works including software, databases, films and sound recordings

performances by actors, dancers, musicians, singers and other performers

TRIPs Obligations TRIPs requires WTO members to protect: broadcasts and sound recordings trade marks geographical indications industrial designs

TRIPs requires WTO members to protect:

broadcasts and sound recordings

trade marks

geographical indications

industrial designs

TRIPs Obligations TRIPs requires WTO members to protect: inventions in all fields of technology plant varieties semiconductor topographies undisclosed information

TRIPs requires WTO members to protect:

inventions in all fields of technology

plant varieties

semiconductor topographies

undisclosed information

TRIPs Obligations TRIPs also requires WTO members to provide: fair and inexpensive civil remedies criminal sanctions for counterfeiting and piracy customs controls at air and sea ports and frontiers

TRIPs also requires WTO members to provide:

fair and inexpensive civil remedies

criminal sanctions for counterfeiting and piracy

customs controls at air and sea ports and frontiers

Has India complied with TRIPs? On the whole, yes enacted new trade mark, design, plant protection and semi-conductor topography statutes and amended patent and copyright laws imposed criminal liability for counterfeiting and piracy

On the whole, yes

enacted new trade mark, design, plant protection and semi-conductor topography statutes and amended patent and copyright laws

imposed criminal liability for counterfeiting and piracy

Has India complied with TRIPs? Only two complaints against it: DS55 by USA in 1996 and DS79 by EC in 1997 on patent protection for pharmaceuticals which India rectified appointed high level commission to report on compatibility with TRIPs on change of patent law

Only two complaints against it:

DS55 by USA in 1996 and DS79 by EC in 1997 on patent protection for pharmaceuticals which India rectified

appointed high level commission to report on compatibility with TRIPs on change of patent law

Overview Many similarities with UK law but several significant differences: registration of copyrights and semi-conductor topographies threats action in copyright not yet party to Madrid Protocol or Hague convention no direct protection of functional designs

Many similarities with UK law but several significant differences:

registration of copyrights and semi-conductor topographies

threats action in copyright

not yet party to Madrid Protocol or Hague convention

no direct protection of functional designs

Statutes Patents Act 1970 amended 1999, 2002 and 2003 Designs Act 2000 Trade Marks Act 1999 Geographical Indication of Goods (Registration and Protections) Act 1999

Patents Act 1970 amended 1999, 2002 and 2003

Designs Act 2000

Trade Marks Act 1999

Geographical Indication of Goods (Registration and Protections) Act 1999

Statutes Copyright Act 1957 amended 1983, 1984, 1992, 1994 and 1999 Protection of Plant Varieties and Farmers’ Rights’ Act 2001 Semiconductor Integrated Circuits Layout-Design Act 2000

Copyright Act 1957 amended 1983, 1984, 1992, 1994 and 1999

Protection of Plant Varieties and Farmers’ Rights’ Act 2001

Semiconductor Integrated Circuits Layout-Design Act 2000

Intellectual Property Office Controller-General of Patents, Designs and Trade Marks at Mumbai (Bombay) Patent Office at Kolkatta (Calcutta) and branches at Chennai (Madras), Mumbai and Delhi for patents and designs Trade Marks at Trade Marks Registry at Mumbai and regional offices at Chennai, Kolkatta, Delhi and Ahmedabad Geographical Indications at Geographical Indications Registry at Chennai

Controller-General of Patents, Designs and Trade Marks at Mumbai (Bombay)

Patent Office at Kolkatta (Calcutta) and branches at Chennai (Madras), Mumbai and Delhi for patents and designs

Trade Marks at Trade Marks Registry at Mumbai and regional offices at Chennai, Kolkatta, Delhi and Ahmedabad

Geographical Indications at Geographical Indications Registry at Chennai

Other Registries Copyright Office, Department of Secondary and Higher Education Registry of Semiconductor Integrated Circuits Layout-Designs, Department of Information Technology Plant Varieties Registry, Department of Agriculture and Co-operation

Copyright Office, Department of Secondary and Higher Education

Registry of Semiconductor Integrated Circuits Layout-Designs, Department of Information Technology

Plant Varieties Registry, Department of Agriculture and Co-operation

Courts and Tribunals Intellectual Property Appellate Board for appeals from Registrar of Trade Marks (may soon have design and patents jurisdiction) Copyright Tribunal for appeals from Registrar of Copyrights Regional High Courts for infringement claims Supreme Court of India

Intellectual Property Appellate Board for appeals from Registrar of Trade Marks (may soon have design and patents jurisdiction)

Copyright Tribunal for appeals from Registrar of Copyrights

Regional High Courts for infringement claims

Supreme Court of India

Use of IP System in 2006 Patents Applications: 28,882 Grants: 7,359 Trade Marks Applications: 103,419 Registrations: 109,361

Patents

Applications: 28,882

Grants: 7,359

Trade Marks

Applications: 103,419

Registrations: 109,361

Use of IP System in 2006 Designs Applications: 5,372 Registrations: 4,431 Geographical Indications Registrations: Includes “Darjeeling Tea” and “Mysore Silk”

Designs

Applications: 5,372

Registrations: 4,431

Geographical Indications

Registrations:

Includes “Darjeeling Tea” and “Mysore Silk”

Conclusion India not like China, Korea or Japan in terms of massive volumes of patent applications Intellectual property tends to be brand and design rather than technology focussed Nevertheless, firms like Ranbaxy and Tata are major users of worldwide patent system.

India not like China, Korea or Japan in terms of massive volumes of patent applications

Intellectual property tends to be brand and design rather than technology focussed

Nevertheless, firms like Ranbaxy and Tata are major users of worldwide patent system.

Any Questions Jane Lambert nipc The Media Centre 7 Northumberland Street Huddersfield HD1 1RL Tel 0870 990 5081 www.nipclaw.com