Business law : Intellectual property right: Patents, trademarks, geographical indications


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Business law presentation on Patents, trademarks, geographical indications As a part of Intellectual property right With relevant provision of WTO also this Presentation covers case study on Apple vs Samsung case, Viagra Patent issue,Basamati rice, Darjeeling tea etc.

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Business law : Intellectual property right: Patents, trademarks, geographical indications

  1. 1. Study on Patents, trademarks, geographical indications As a part of Intellectual property right With relevant provision of WTO For Business Law By Renzil D’cruz Web Presence: Presented to Anant Amdekar 1
  2. 2. Index Topic Pg. no. 1. Introduction 3 Intellectual property 3 The TRIPS Agreement 6 Economic benefits and costs of TRIPS 6 Importance of flexibilities 7 7 IPRs protection WTO and WIPO 2. Understanding WTO agreement 3. Patents 8 9 11 Section 5 on Patents 17 Case Study :Apple vs. Samsung 21 Case Study :Pfizer’s Canadian Patent on Viagra 4. Trademark 23 Section 2 on Trademark Case Study : McDonald's Vs McClusky 33 Case Study : Red Bull wins trademark infringement case 5. 31 33 Geographical indications 35 Section3 on Geographical Indications 38 Case Study :Meerut's scissor units get Geographical Indicator tag 41 Case Study : Tirupati laddu Wants GI tag 41 6. Conclusion 43 7. Abbreviations 48 8. References 49 2
  3. 3. Introduction Intellectual property According to WIPO, Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. Intellectual property (IP) is a legal concept which refers to creations of the mind for which exclusive rights are recognized. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; discoveries and inventions; and words, phrases, symbols, and designs. Common types of intellectual property rights include copyright, trademarks, patents, industrial, trade dress, and in some jurisdictions trade secrets. Although many of the legal principles governing intellectual property rights have evolved over centuries, it was not until the 19th century that the term intellectual property began to be used, and not until the late 20th century that it became commonplace in the majority of the world. The innovations and creative expressions of indigenous and local communities are also IP, yet because they are “traditional” they may not be fully protected by existing IP systems. Access to, and equitable benefit-sharing in, genetic resources also raise IP questions. Normative and capacity-building programs are underway at WIPO to develop balanced and appropriate legal and practical responses to these issues. Example Traditional Knowledge, Traditional Cultural Expressions/Folklore. Intellectual Property Rights 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 creation for a certain period of time. Intellectual property rights are customarily divided into two main areas: copyright and rights related to copyright and industrial property. The importance of intellectual property in India is well established at all levels- statutory, administrative and judicial. India ratified the agreement establishing the World Trade Organisation (WTO). This contains an Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which came into force from 1st January 1995. It lays down minimum standards for protection and enforce/.ment of intellectual property rights in member countries which are required to promote effective and adequate protection of intellectual property rights with a view to reducing distortions and impediments to international trade. The obligations under the TRIPS Agreement relate to provision of minimum standard of protection within the member countries legal systems and practices. As an adjunct to the patent system, some countries have introduced utility models (or petty patents). The novelty criteria for utility models are less stringent and are typically granted for 3
  4. 4. small, incremental innovations. Their term of protection is far shorter than for “regular” invention patents (typically four to seven years). Similarly, industrial designs protect the ornamental features of consumer goods such as shoes or cars. To be eligible for protection, designs must be original or new. They are generally conferred for a period of five to fifteen years. Having intellectual property laws is not enough. They have to be enforced. This is covered in Part 3 of TRIPS. The agreement says governments have to ensure that intellectual property rights can be enforced under their laws, and that the penalties for infringement are tough enough to deter further violations. The procedures must be fair and equitable, and not unnecessarily complicated or costly. They should not entail unreasonable time-limits or unwarranted delays. People involved should be able to ask a court to review an administrative decision or to appeal a lower court’s ruling. The agreement describes in some detail how enforcement should be handled, including rules for obtaining evidence, provisional measures, injunctions, damages and other penalties. It says courts should have the right, under certain conditions, to order the disposal or destruction of pirated or counterfeit goods. Wilful trademark counterfeiting or copyright piracy on a commercial scale should be criminal offences. Governments should make sure that intellectual property rights owners can receive the assistance of customs authorities to prevent imports of counterfeit and pirated goods. One can broadly classify the various forms of IPRs into two categories: IPRs that stimulate inventive and creative activities (patents, utility models, industrial designs, copyright, plant breeders’ rights and layout designs for integrated circuits) and IPRs that offer information to consumers (trademarks and geographical indications). IPRs in both categories seek to address certain failures of private markets to provide for an efficient allocation of resources. The Agreement provides for norms and standards in respect of following areas of intellectual property      Patents Trade Marks Copyrights Geographical Indications Industrial Designs Patents: A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time, in exchange for the public disclosure of the invention. An invention is a solution to a specific technological problem, and may be a product or a process. 4
  5. 5. Patents are legal titles granting the owner the exclusive right to make commercial use of an invention. To qualify for patent protection, inventions must be new, non-obvious, and commercially applicable. The term of protection is usually limited to 20 years, after which the invention moves into public domain. The patent system is one of the oldest and most traditional forms of IPRs protection. Almost all manufacturing industries make use of the patent system to protect inventions from being copied by competing firms. Since the early 1980s, patents have also been granted for agricultural biotechnology products and processes and for certain aspects of computer software. Trademark: A trademark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher or on the product itself. Trademarks are words, signs, or symbols that identify a certain product or company. They seek to offer consumers the assurance of purchasing what they intend to purchase. Trademarks can endure virtually indefinitely provided they remain in use. Almost all industries use trademarks to identify their goods and services. The use of trademarks has turned out to be of high significance in certain consumer goods industries, such as clothing and watches. Copyrights: Copyright is a legal concept, enacted by most governments, giving the creator of original work exclusive rights to it, usually for a limited time. Generally, it is "the right to copy", but also gives the copyright holder the right to be credited for the work, to determine who may adapt the work to other forms, which may perform the work, which may financially benefit from it, and other related rights. It is a form of intellectual property (like the patent, the trademark, and the trade secret) applicable to any expressible form of an idea or information that is substantive and discrete. Geographical Indications: A geographical indication (GI) is a name or sign used on certain products which corresponds to a specific geographical location or origin (e.g. a town, region, or country). The use of a GI may act as a certification that the product possesses certain qualities, is made according to traditional methods, or enjoys a certain reputation, due to its geographical origin. Industrial Designs: An industrial design right is an intellectual property right that protects the visual design of objects that are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or colour, or combination of pattern and colour in three dimensional forms containing aesthetic value. An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft. 5
  6. 6. The TRIPS Agreement The TRIPS Agreement is a multilateral WTO agreement and, as such, applicable to all 158 members of the WTO. It is also binding for every country that accedes to the WTO. The Agreement’s general obligations require countries to apply the principles of national treatment (same treatment of foreign title holders and domestic title holders) and most favoured nation treatment (same treatment of foreign title holders regardless of their country of origin). Unlike most other international agreements on intellectual property, TRIPS sets minimum standards of protection with respect to all forms of intellectual property: copyright, trademarks and service marks, geographical indications, industrial designs, patents, layout designs of integrated circuits, and trade secrets. In respect of each of these areas of intellectual property, the Agreement defines the main elements of protection, namely the subject-matter to be protected, the rights to be conferred, and permissible exception to those rights. For the first time in an international agreement on intellectual property, TRIPS addresses the enforcement of IPRs by establishing basic measures designed to ensure that legal remedies will be available to title holders to defend their rights. The approach taken by the Agreement is to set general standards on, among other things, enforcement procedures, the treatment of evidence, injunctive relief, damages, and provisional and border measures. Economic benefits and costs of TRIPS The signing of TRIPS has generated much controversy about its economic implications for developing countries. Proponents of the Agreement have argued that stronger IPRs will stimulate creative industries in developing countries and promote foreign direct investment, with an overall positive development outcome. Opponents of TRIPS have claimed that the Agreement will forestall developing countries’ access to new technologies, lead to higher prices and rent transfers from poor to rich countries, and impose high implementation costs in resource-constrained environments. As always, the truth lies somewhere in between these two polar views. Developing countries indeed host inventive and creative industries that stand to benefit from stronger IPRs. However, these industries can mostly be found in middle income countries, rather than low income countries. The empirical evidence discussed above on the link between FDI and IPRs, suggests that the mere strengthening of an intellectual property regime is unlikely to result in a dramatic increase in inflows of foreign investment. At the same time, past reform experiences suggest that stronger IPRs can positively impact on domestic enterprise development and foreign investment, if they are complemented by improvements in other aspects of the investment climate. By signalling a country’s 6
  7. 7. commitment to internationally binding rules, TRIPS can make a positive contribution in this regard—though it is difficult to assess the quantitative importance of this contribution. Importance of flexibilities Although the TRIPS Agreement lays the foundation toward higher standards of protection for intellectual property rights on a global scale, it leaves its signatories with important flexibilities in designing national IPRs regimes. It is important for governments to carefully consider alternative ways of implementing provisions in the TRIPS Agreement that only set a broad standard of protection and choose the options that are most suited to domestic needs. For example, the criteria used for determining the novelty, non-obviousness, and usefulness of patentable inventions can be defined differently across countries. Thus, a WTO member may deny patent protection for, say, business methods that are frequently claimed to involve only a minor inventive step. TRIPS also do not require countries to extent patent protection to computer software as well as plants or animals. Countries are free to override the exclusive rights of patents by granting so-called compulsory licenses (government authorizations to use a patent without the patent holder’s consent). TRIPS only require that compulsory licenses be considered on their individual merits and that compensation be paid to rights holders. In the area of copyright, TRIPS allows for important leeway in defining fair use exemptions to strike a balance between the interests of copyright producers and the interests of the general public. IPRs protection: ■ Encourage and reward creative work the main social purpose of protection of copyright and related rights is to encourage and reward creative work. This is also relevant to protection in other areas (e.g. industrial designs and patents). ■ Technological innovation Intellectual property rights are designed to provide protection for the results of investment in the development of new technology, thus giving the incentive and means to finance research and development activities. ■ Fair competition the protection of distinctive signs and other IPRs aims to stimulate and ensure fair competition among producers. ■ Consumer protection the protection of distinctive signs should also protect consumers, by enabling them to make informed choices between various goods and services. ■ Transfer of technology a functioning intellectual property regime should also facilitate the transfer of technology in the form of foreign direct investment, joint ventures and licensing. 7
  8. 8. ■ Balance of rights and obligations It should also be noted that the exclusive rights given to the owners of intellectual property are generally subject to a number of limitations and exceptions, aimed at balancing the legitimate interests of right holders and of users. World Trade Organization The World Trade Organization (WTO) is an organization that intends to supervise and liberalise international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade (GATT), which commenced in 1948. The organization deals with regulation of trade between participating countries; it provides a framework for negotiating and formalizing trade agreements, and a dispute resolution process aimed at enforcing participants' adherence to WTO agreements, which are signed by representatives of member governments and ratified by their parliaments. Most of the issues that the WTO focuses on derive from previous trade negotiations, especially from the Uruguay Round (1986–1994). The organization is attempting to complete negotiations on the Doha Development Round, which was launched in 2001 with an explicit focus on addressing the needs of developing countries. As of June 2012, the future of the Doha Round remains uncertain: the work programme lists 21 subjects in which the original deadline of 1 January 2005 was missed, and the round is still incomplete.The conflict between free trade on industrial goods and services but retention of protectionism on farm subsidies to domestic agricultural sector (requested by developed countries) and the substantiation of the international liberalization of fair trade on agricultural products (requested by developing countries) remain the major obstacles. These points of contention have hindered any progress to launch new WTO negotiations beyond the Doha Development Round. As a result of this impasse, there has been an increasing number of bilateral free trade agreements signed.As of July 2012, there are various negotiation groups in the WTO system for the current agricultural trade negotiation which is in the condition of stalemate. World Intellectual Property Organization The World Intellectual Property Organization (WIPO) is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world." WIPO currently has 185 member states, administers 24 international treaties, and is headquartered in Geneva, Switzerland. The current Director-General of WIPO is Francis Gurry, who took office on October 1, 2008. 184 of the UN Members as well as the Holy See are Members of WIPO. Non-members are the states of South Sudan, Cook Islands, Kiribati, Marshall Islands, Federated States of Micronesia, Nauru, Niue, Palau, Solomon Islands, Timor-Leste, Tuvalu, and the states with limited recognition. Palestine has observer status 8
  9. 9. WIPO was formally created by the Convention Establishing the World Intellectual Property Organization, which entered into force on April 26, 1970. Under Article 3 of this Convention, WIPO seeks to "promote the protection of intellectual property throughout the world." WIPO became a specialized agency of the UN in 1974. The Agreement between the United Nations and the World Intellectual Property Organization The predecessor to WIPO was the BIRPI (Bureaux Internationaux Réunis pour la Protection de la Propriété Intellectuelle, French acronym for United International Bureaux for the Protection of Intellectual Property).The Agreement marked a transition for WIPO from the mandate it inherited in 1967 from BIRPI, to promote the protection of intellectual property, to one that involved the more complex task of promoting technology transfer and economic development. Understanding WTO agreement 1. Intellectual property: protection and enforcement The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), negotiated in the year 1986-94 Uruguay Round, introduced intellectual property rules into the multilateral trading system for the first time 2. The Nice Classification & India The Nice Classification, administered by WIPO, is an international classification system for the classification of goods and services for the purposes of registration of trademarks. It was established by a multilateral treaty called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, at the Nice Diplomatic Conference held on June 15, 1957. It is regularly updated to include changes and advances in technology and commercial practices. From January 1, 2012, the 10th edition of the Nice Classification was adopted by the World Intellectual Property Organization (WIPO) for the classification of goods and services for the purposes of registration of trade marks. 3. Classification systems employed in other countries Most jurisdictions employ some sort of classification system for goods and services. The Nice Classification system is applied by around 150 countries in the world (member and nonmembers) and by four regional organizations, viz., the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Organization for Intellectual Property (BOIP) and the European Union Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM). However, even for jurisdictions which have adopted the Nice Classification, there are slight differences as to its actual interpretation and implementation. OHIM regards the general indications and other words of the International Classification (IC) as including not only the goods they describe literally, but also goods ‘directly related’ thereto. Hence, each item means more than the sum of its constituent words. Whereas, the UK Registry views the IC as 9
  10. 10. simply a list of the goods claimed, and has no significance (for identical goods) beyond the literal meaning of its constituent words. In several jurisdictions, the changeover from a national classification system to the international classification system has created problems in determining what is confusingly similar. Some jurisdictions (e.g. Japan) have added their own sub-classification system to the Nice Classification in order to facilitate in determining whether goods or services are confusingly similar to each other. 4. Its nature as a classification tool The Nice Agreement on the International Classification of Goods and Services was intended to be a purely administrative tool for trademark offices without any legal significance. It does not provide a basis for concluding the similarity of goods and services. However, the classification system has greatly affected the adjudication of trademark rights due its analysis and application in the likelihood of confusion by trademark offices and courts. Taking into account the worldwide cultural differences, some wordings of the headings may prove to be vague and imprecise. These customs, especially trade practices, are dynamic and constantly changing. For instance, mobile phones nowadays combine many functions, from being a communication tool & camera to a word processor & internet browser. The examiner may sometimes come know about the customs in trade & practices only from the facts and evidence submitted by the parties. Therefore, it is necessary to base the findings on the realities of the marketplace, i.e. established customs in the relevant field of industry or commerce, and not solely on the classification system. 5. Basis of the Nice Classification The Nice Classification has been structured on the basis of some common characteristics of goods/services. Many classes are organized according to their function, composition and/or purpose of use which may be relevant in the comparison of goods/services. 6. Similarity of goods/services Generally, items may be considered to be similar if they have some common characteristics. In assessing the similarity of goods, all the relevant factors relating to those goods should be taken into account, including both their nature as well as the commercial perspective (intended purpose, method of use, and whether there is any connection between them) 7. Likelihood of confusion Goods or services listed in the same class may not necessarily indicate similarity. 9. Indian scenario for classification of goods/services 10
  11. 11. In the Indian context, the Nice Classification system seems to be inadequate in classifying certain goods which because of their particular indigenous use, might cause confusion or result in erroneous classification. In order to accommodate such variant use, the current classification system needs to be modified / extended to make it more specific for India. Some typical Indian goods, which cause confusion about the class they belong to, need to be included in the classification system. Patents A patent is a legal monopoly, which is granted for a limited time by a country to the owner of an invention. Merely holding a patent does not give the owner the right to use or exploit the patented invention. That right may still be affected by other laws such as health and safety regulations, food and drugs regulations or even by other patents. A patent, in the eyes of the law, is a property right that can be given away, inherited, sold, licensed and even abandoned. As it is conferred by the government, the government can in certain cases revoke the patent (even after the grant of patent or even if it has been sold or licensed to another in the meantime). Product patent provides benefits to an inventor of a tangible object. It is granted for a new process of manufacturing an already known product or for manufacturing a new product, or for manufacturing more articles of the same product that is reducing the cost of the already known product. For example, if a person creates a new computer chip, computer companies that use that chip in their products must pay the inventor for every product sold. Process patents are only granted to man-made processes. Natural processes that are discovered, such as the laws of motion or physics, cannot be patented. A process can be patented if it is a newly invented way of doing something. it is granted when a new product has been invented by the person. The product so invented may either be e more or less useful product than an already known product, or a new product altogether. The definition from the Supreme Court is "a mode of treatment of certain materials to produce a given result.” Example if any person find different process to separate pure gold from raw gold. Process patent in respect of food, medicine or drug, and not product patent. However, in respect of substance it intended for use or capable of being used as medicine, or drug, except chemical substances which are ordinarily used as intermediate, patent can be granted in the manner provided in the patent law In respect of substances produced by chemical process including alloys, optical glass, semi conductors and inter-metallic compounds, patents are granted only for the process of manufacture but not for the substance thereof Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been 11
  12. 12. several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations A Patent gives an inventor the right for a limited period of time to stop others from making, using, selling or importing the patented invention without the permission of the inventor. That is why a patent is called a "negative right". Patents are generally concerned with functional and technical aspects of products and processes and must fulfil specific conditions to be granted. Most patents are for incremental improvements in known technology - evolution rather than revolution. The technology does not have to be complex. Patent rights are territorial; an Indian patent does not confer any rights outside India. Patent rights last for 20 years in India and also in most countries outside India. Depending on where you wish your patent to be in effect, you must apply to the appropriate body. In India, it is The Indian Patent Office. There are various Patent Offices around the world. Alternatively, a Patent Agent can apply on your behalf. India had already implemented its obligations under Articles 70.8 and 70.9 of TRIP Agreement. 1. Legal Basis         The Patents Act 1970, as amended by The Patents (Amendment) Act 2005. The Patents Rules, 2003, as amended by The (Amendment) Rules 2006. The Patents (amendment) Act, 1999 The Patents (amendment) Act, 2002 The Patents (amendment) Act, 2005 Rules pertaining to Patents The Patents (Amendment) Rules 2005 The Patents (Amendment) Rules 2006 The Patents Act, 1970, which is currently the law relating to patents in India, was promulgated to encourage scientific research new technology and industrial progress. This enactment is based on the U.K. Patents Act, 1949 in many respects, but also differs from it in relation to drugs, medicines, product patents and licensing of patents. The following would not qualify as patents   An invention which is frivolous or which claims anything obvious or contrary to the well established natural law. An invention, the primary or intended use of which would be contrary to law or morality or injurious to public health a discovery, scientific theory or mathematical method 12
  13. 13.        A 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 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 A mere arrangement or re-arrangement or duplication of a known device each functioning independently of one another in its own way A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacturer A method of agriculture or horticulture A method or 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 An invention relating to atomic energy falling under the Atomic Energy Act, 1962 2. Filing a Patent Application Any person, even if he or she is a minor, may apply for a patent either alone or jointly with any other person. Such persons include the inventor, or his assignee or legal representative in the case of an ordinary application or, in the case of a priority application, the applicant in the convention country or his assignee or his legal representative. A corporate body cannot be named as an inventor. Foreigners and nationals not living in India need an address for service in India for this purpose. They may appoint a registered agent or representative whose address for service can be the address for service in India. Place of filing: An application for a patent must be filed at the Patent Office branch within whose territorial jurisdiction the applicant resides or has his principal place of business or domicile. A foreign applicant must file at that Patent Office branch within whose jurisdiction his/her address for service is located. Priority: Priority can be claimed from the earliest corresponding application in a convention country, provided that the Indian application is filed within twelve months of the priority date. Multiple and partial priorities are allowed. Specification: A priority application must be filed with a complete specification in the first instance but a non-priority application may be filed with either a provisional specification or a complete specification. Where a provisional specification is filed in the first instance, a complete 13
  14. 14. specification must be filed within twelve months. Where two or more cognate provisional specifications have been filed, they may be combined and all their subject matter may be incorporated into a single complete specification to be filed within twelve months of the date of the earliest filed provisional specification. Naming of inventor(s): As regards non-priority applications, the inventor(s) must be named in the application form. As regards priority applications, a declaration as to inventor ship must be filed with the application or within a period of one month. Information of corresponding applications in other countries: It is necessary at the time of filing a patent application in India, to inform the Controller of the details of all corresponding applications in other countries and to undertake to keep the Controller so informed up to the grant of the Indian application. Failure to do so could result in the refusal of the application in case it is opposed, or even revocation of a patent in proceedings before the High Court. Eligibility The 'true and first inventor' of the invention or his assignee or the legal representative of such person may apply for an ordinary patent. A company or a firm cannot be termed as a 'true and first inventor'. Also the 'true and first inventor' does not include either the first importer of an invention into India or a person to whom an invention is first communicated from outside India. The Government may apply for a patent. If an employee makes an invention during his employment, he would be entitled to make an application for a patent. If an invention is made by an employee specifically employed in research and development, it is presumed that the invention belongs to the employer. The person applying for a patent may or may not be an Indian citizen. Rights of the Patent Right to use and exercise the patent: The patentee has the exclusive right to make use, exercise, sell or distribute the patented article or substance in India or to use or exercise the method or process if the patent is for a process. However, this right is exercisable during the term of the patent only. Right to transfer and surrender: A patentee has power to assign, grant licence (exclusive or limited) or otherwise deal with the patent for any consideration. Right to surrender the patent: Rights before sealing-during the period from the date of advertisement of the acceptance of a complete specification and the date of the sealing of 14
  15. 15. patent, the applicant can exercise all the privileges and rights of a patentee except the filing of a suit for infringement. Compulsory Licenses A compulsory license, also known as statutory license or mandatory collective management, provides that the owner of a patent or copyright licenses the use of their rights against payment either set by law or determined through some form of arbitration. In essence, under a compulsory license, an individual or company seeking to use another's intellectual property can do so without seeking the rights holder's consent, and pays the rights holder a set fee for the license. The Patents Law stipulates that at any time after the expiration of 3 years from the date of sealing of the patent, any person interested may make an application to the controller alleging that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at reasonable price and seek the grant of a compulsory licence to work the patented invention. In March 2012, India granted its first compulsory license ever. The license was granted to Indian generic drug manufacturer Natco Pharma Ltd for Sorafenib tosylate, a cancer drug patented by Bayer. Non-governmental groups reportedly welcomed the decision Revocation of Patents A patent can be revoked by the High Court, inter alia, in the following circumstances:       The patent was granted on the application of a person not entitled to apply therefore The patent was obtained wrongfully in contravention of the rights of any person The invention is not new The invention is obvious or does not involve any inventive step The invention is not useful The patent was obtained on a false suggestion or representation 3. Patent Publication Publication takes place 18 months from the date of the application. Urgent publication is possible on request on payment of fees. From the date of publication of the application for a patent and until the date of grant of the patent, the applicant will have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application. Pre-Grant opposition of patent application: After publication but before the date of grant, anyone may file an opposition to the grant of a patent, by way of representation. 4. Patent Examination 15
  16. 16. Examination of application: Both formal and substantive examinations are made by the Indian Patent Office. Examination is by request. Procedure: An applicant is required to meet all the objections and requirements of the Patent Office within a period of twelve months from the date of the first examination report (FER) issued by the Controller. No extension of time is permitted. If a patent application is not put in order in twelve months from the date of the FER, it lapses. 5. Grant of a Patent The grant of an application is published in the Official Journal and is notified therein for postGrant opposition. A patent can be revoked within one year after grant by post-Grant opposition proceedings before the Controller of Patents. 6. Post-grant Procedures Revocation of a patent: It is possible for a patent to be revoked on the grounds of: prior publication anywhere in the world, public use or knowledge in India, lack of novelty with regard to the subject matter, obviousness, lack of inventiveness, ambiguity, insufficiency of description of the invention, fraud, false suggestion or representation that the person named as the inventor is not the true inventor, lack of utility, non-patentability of subject matter (E.g. food, drug or medicine per se, atomic energy, mere admixture, mere arrangement of known devices, process of testing, method of agriculture or horticulture, process of medicinal treatment), failure to furnish or falsity in information regarding corresponding applications in other countries supplied to the Controller or that the invention is contrary to law or morality. Annuities: Except in the case of a patent of addition, for which no annuities are payable, annual renewal fees must be paid during the life of an Indian patent, the first of such fees falling due at the end of the second year of the life of a patent granted. Renewal fees due during the pendency of the application are payable within a period of three months from the date the patent is taken on record in the Register of Patents. Renewal fees for two or more years may be paid in advance if the patentee so desires. A maximum extension of six months may be obtained on payment of the prescribed penalty fees. If the renewal fee in question is not paid within the extended period available, the patent will lapse. Restoration: A lapsed patent may be restored if an application for restoration is made within 18 months of the date of lapsing of the patent, provided it can be shown that the lapsing of the patent was unintentional and that there was no undue delay in making the application for restoration. 16
  17. 17. Working of patents: Every patentee and every licensee is required to furnish within three months from the end of every calendar year, a statement as to the extent to which the invention has been worked in India on a commercial scale in the preceding year. Non-filing of this statement is a criminal offence. Marking: Marking is not compulsory but advisable as otherwise damages may be difficult to recover in cases of infringement. The invention may be marked with the word “Patented” or “Patent” accompanied by the number and year of the patent. Infringement: An infringement suit may be instituted by a patentee or his exclusive licensee. Every ground for revocation is available as a defence and revocation can be counter claimed in infringement proceedings. The Court may grant relief in respect of a valid claim or claims even though one or more other claims in the suit may be held to be invalid. Relief may include damages and costs as awarded by the court. A suit for injunction may be instituted and damages recovered in cases where there have been groundless threats. Any person may institute a suit for declaration as to non-infringement of a patent. The onus of proof of noninfringement lies with the defendant. SECTION 5: PATENTS Article 27 Patentable Subject Matter 1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. (5) Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. 2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. 3. Members may also exclude from patentability: (a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals; 17
  18. 18. (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effectivesui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement. Article 28 Rights Conferred 1. A patent shall confer on its owner the following exclusive rights: (a) where the subject matter of a patent is a product, to prevent third parties not having the owner's consent from the acts of: making, using, offering for sale, selling, or importing (6) for these purposes that product; (b) where the subject matter of a patent is a process, to prevent third parties not having the owner's consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process. 2. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts. Article 29 Conditions on Patent Applicants 1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application. 2. Members may require an applicant for a patent to provide information concerning the applicant's corresponding foreign applications and grants. Article 30 Exceptions to Rights Conferred Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties. 18
  19. 19. Case Study : Apple vs. Samsung Over the course of the last few years, Apple has unleashed a slew of intellectual-property lawsuits against Android device manufacturers such as: HTC, Motorola and of course, the poster child of this continued litigation, Samsung. While IP lawsuits are nothing new in the world of technology manufacturers, it has become glaringly apparent after the ban of the Galaxy Tab 10.1 in Germany (back in September 2011) that this case could hold serious repercussions for both parties and consumers alike. Since then, the two mobile giants have been preparing for their trial case which is scheduled for Monday, July 30. With no love lost between the two parties and the astronomical stakes at hand, this case has all the makings of a landmark trial. The Complaint The case began over a year ago with Apple issuing an official complaint on April 15, 2011, stating: "Instead of pursuing independent product development, Samsung has chosen to slavishly copy Apple's innovative technology, distinctive user interfaces, and elegant and distinctive product and packaging design, in violation of Apple's valuable intellectual property rights." The interesting thing about the complaint brought forth by Apple is its wording. Apple takes as much issue with Samsung lifting design elements from their brand, as they do with the core design of its operating system Android. Notably this greatly increases the significance of this case, potentially making this case as much about Google as it is about Samsung. Trade Dress Infringement Apple introduces a number of trade dress infringement claims under 15 U.S.C. -- 1125 and 15 U.S.C. -- 1114. Trade dress is a form of intellectual property that basically refers to the visual aesthetics of a product or packaging (including design elements) that signify the source of the product with consumers. Basically meaning any iconic visuals that spur brand recognition with the consumer, such as Apple's use of the prefix 'i' in their products (i.e. iPhone, iPod). Namely this law is in place to protect the consumer from being confused into thinking that a product has affiliation with another brand or company. If you take a look at the case (which can be found here) it's apparent that some of these individual claims are outlandish. For example, it's unlikely that Apple will try to sue everyone who uses a tray that cradles their product so that it's visible when opening the packaging. However, the important thing to understand is that the court will be looking at these claims collectively; deciding if the overall appearances of Samsung's products 19
  20. 20. (hardware, software, and packaging) are intended to create a connection between Apple products. Additionally it's worthwhile to note that Apple has a stronger claim with their second and third trade dress claims than their first, due to the fact that they have already established patents for the elements that are addressed in the claims. This means that Apple has already convinced the US Patent and Trademark office that these elements are distinctive and protectable. Again, it all comes back to whether or not the design of Samsung's products could confuse the 'average' consumer into thinking that they are Apple products. Infringement of design patents In addition to the three prior trade dress claims, Apple also makes a number of design patent claims that act somewhat similar to the previous claims made. The major difference between the trade dress claims and patent claims is how they are legitimized, but regardless, both claims ultimately raise the same question: is the protected device similar enough to the product in question that it could potentially trick the consumer into thinking that there is a connection between the two? This question (while grossly oversimplified) is what the majority of the case will revolve around, especially the portions that specifically target Samsung's designs. Additional Patent Claims While the majority of the case revolves around Samsung's designs, Apple has issued a number of claims that deal with more technical claims revolving around Android-related content. Most of these claims are related to small technical applications, but the major claim of course is the one concerning patent #8,086,604: "the universal interface for retrieval of information in a computer system" (a.k.a. their universal search function). Damages On July 24, Apple released information that outlined the proposed damages of Samsung's alleged patent infringement at $2.5 billion. This would cover what Apple estimates are $500 million in lost profits, about $2 million form Samsung's "unjust enrichment", and $25 million for other "reasonable royalty damages". These damages are also apt to grow if Samsung is found to have wilfully infringed the patents, and Apple argues that Samsung "chose to compete by copying Apple". If Samsung is found guilty of infringing patents, one of two things could happen. Either Samsung would be forced to stop selling the products that use the infringing elements or Samsung would have to license these patents from Apple. If the latter is the case, Apple is asking anywhere from $2.02 per unit of "over scroll bounce" techniques to $24 for more indepth patents.There is also a great deal of risk involved for Apple as well. If Samsung is to win its counterclaim it could potentially cost Apple billions of dollars in licensing fees and force them to remove products off their shelves. While this is unlikely, it certainly is not out of the realm of possibility. 20
  21. 21. At this point it seems rather unlikely that the two parties will be able to reach a form of settlement; meaning that the 10 jurors (most of whom likely have little to no prior understanding of software design and the patent system) will have the power not only to determine liability, but to put a dollar figure on the amount. Pfizer’s Canadian Patent on Viagra The Supreme Court of Canada, on November 8, 2012, invalidated the Canadian Viagra patent owned by Pfizer Canada Inc. (“Pfizer”), just one and a half years before its natural expiration date. This decision on the popular erectile dysfunction (ED) drug has opened up a huge market for generics and closed Pfizer’s exclusive monopoly. The Supreme Court of Canada, by this ruling, has reinforced the fundamentals of patent law. The court held that although the applicant knew about the specific active compound in the drug, the claims did not pinpoint the exact compound that “induces penile erection in impotent males.” This exact compound, sildenafil citrate, was mentioned along with many others that do not cause the desired effect. Since complete disclosure is an important precondition to the grant of patents, the court said that “if there is no quid (no written disclosure) then there can be no quo (no protection)." Teva Canada Limited (“Teva”), a generic company, applied to the Federal Court for a “notice of compliance” in order to produce a generic version of Viagra, alleging that Pfizer’s patent was invalid and did not meet the disclosure requirements. The Federal Court refused to issue the notice of compliance (2009 FC 638, 76 C.P.R. (4th) 83). Teva appealed to the Federal Court of Appeal. The Federal Court of Appeal also dismissed the appeal (2010 FCA 242, [2012] 2 F.C.R. 69). Teva then appealed to the Supreme Court (2012 SCC 60). Facts Patent 2,163,446 (“Patent ‘446”) concerned the use of a “compound of formula (I)” or a “salt thereof” for the treatment of ED. The formula (I) described in Claim 1, was capable of generating 260 quintillion possible compounds. Claims 2 to 5 were for successively smaller ranges of compounds of formula (I), with Claim 5 narrowed down to a range of nine compounds. Claims 6 and 7 related to a single compound each. Claim 7 related to sildenafil, the active compound in Viagra. Although the patent included a statement that “one of the especially preferred compounds induces penile erection in impotent males,” the patent application did not disclose that the only effective compound, sildenafil, is found in Claim 7, or that the remaining compounds had not been found to be effective in treating ED. Teva argued that although Pfizer knew that sildenafil had much more activity than all the other compounds listed in the specification (260 quintillion chemical compounds), it did not disclose this fact. Sildenafil “was hidden like a leaf in the forest,” and therefore, Patent ‘446 should be held invalid for concealment and avoidable obscurity. 21
  22. 22. Pfizer, on the other hand, submitted that there was no avoidable obscurity and it complied fully with the disclosure requirements of the Act. Legal Issue The main issue before the Supreme Court was whether Pfizer’s patent met the disclosure requirement of the Act. Reasoning of the Supreme Court The Supreme Court, after examining all the facts, reasoned that the invention was not sildenafil, per se, but “the use of sildenafil to treat ED,” because this compound was already known. In fact, Pfizer had been investigating sildenafil as a cardiovascular drug when it stumbled upon its use in treating ED. Pfizer had conducted tests to demonstrate that sildenafil was effective in treating ED, but none of the other compounds in Patent ’446 had been shown to be effective in doing so. Therefore, the invention was the use of sildenafil for the treatment of ED. This had to be disclosed in order to meet the requirements set out in s. 27(3) of the Act. The Supreme Court reasoned that whether or not a specification is sufficient depends on what a skilled person would consider to be sufficient. The disclosure in Patent ’446 would not have enabled a skilled person to work the invention because it did not indicate that sildenafil was the effective compound. Even though a skilled reader can infer that in case of cascading claims, the useful claim concerning a single compound is usually at the end, in this case, the claims ended with two individually claimed compounds. There was no basis for a skilled person to determine which of Claim 6 and Claim 7 contained the useful compound. Further testing would have been required to determine which of those two compounds was actually effective in treating ED. Conclusion The Supreme Court, while delivering its judgment, clarified that “sufficiency of disclosure lies at the very heart of the patent system,” and the applicant must give the full information that is necessary to work the invention. The judge held that Pfizer deliberately concealed from the public the identity of the only compound which produced the desired effect. This was contrary to the disclosure requirement under s. 27(3) of the Act. The judge also held that the disclosure was insufficient because a skilled reader having only the specification would not be able to put the invention into operation, without further testing and experimentation. By a unanimous 7-0 judgment, the Supreme Court allowed the appeal with costs and held that the patent was void. 22
  23. 23. This judgment sends out a very strong message to patent applicants that adequate disclosure in the specification is a precondition for the grant of patents. Trademark A Trade Mark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes words, logos, colours, slogans, three-dimensional shapes and sometimes sounds and gestures. A trademark is therefore a "badge" of trade origin. It is used as a marketing tool so that customers can recognise the product of a particular trader. To be registrable in India it must also be capable of being represented graphically, that is, in words and/or pictures. The Trade Marks Act, 1999 has been enacted to amend and consolidate the law relating to trade marks, but the Act has not come into force yet, thus the Trade and Merchandise Marks Act, 1958 remains the Act currently in force. The Trade Marks Act, 1999 is more compliant with the Trade Related Intellectual Property Rights (TRIPS) Agreement. The new Act will bring many changes, some of which are as below      Providing for registration of trade marks for services, in addition to goods Providing an Appellate board for speedy disposal of appeals Providing enhanced punishment for the offences relating to trade marks Filing of a single application for registration in more than one class of goods or services Increasing the period of registration and renewal from 7 to 10 years The person claiming to be the owner of the trade mark must apply to the Registrar in the prescribed manner. The application has to be made to the Trade Mark Registry within whose territorial limits the principal place of business of the applicant is located. An application shall not be made in respect of goods comprised in more than one prescribed class of goods. On filing of the application, the authorities conduct a search to ensure that the proposed trademark is not similar or deceptively similar to existing and registered trademarks. Thereafter, the Registrar may refuse the application or may accept it, subject to any amendment / modification / condition / limitation, as the Registrar may deem necessary. Upon receipt and acceptance of the registration application, the Registrar shall cause the application advertised in the prescribed manner. 23
  24. 24. If no opposition to the application is received (within generally three months from the date of the application), or if the opposition is decided in favour of the applicant, the Registrar shall register the Trade mark. Registration of the Trade mark is not compulsory. However, without the registration the owner of the Trade mark cannot bring an action for infringement of trade mark if it is copied by others. Trademarks Registration period The registration of a trade mark is for a period of 7 years from the date of the application. It can be renewed for successive periods of 7 years each. Infringement of Trade mark Application of any false trade mark or trade description to any goods or the act of sale or possession of such falsely applied or used trade mark constitutes a criminal offence. The punishment for various offences can be in the form of imprisonment for a period of six months to three years along with penalty at the prescribed rates.The law also provides for enhanced penalty for repetitive conviction. Changes in the Indian Trade Mark Law On February 8, 2007, India ratified its accession to the Madrid Protocol, a system for international registration of Trade Marks. In order to bring into force the Madrid Protocol in India, The Trade Marks (Amendment) Act, 2010 was passed on 21st September, 2010. However, the Amendment Act has not yet been implemented, i.e., there has been no notification from the government as to the effective date for the Amendment Act to come into force. The important changes to be introduced by this Act are as follows: 1. The Trade Marks (Amendment) Act, 2010, incorporates a new chapter IV-A containing special provisions relating to international registration of Trade Marks. An international application may be made in India for extending the protection in the designated countries within a period of 18 months. 2. The Trade Marks (Amendment) Act, 2010, also removes the discretion of the registrar to extend the time for filing a notice of opposition for published applications and provides a uniform time limit of four months in all cases. Trade Marks Act, 1999 Some of the important features of the present Trade Marks Act, 1999, which was introduced in India from September 15, 2003, are as follows: Service Marks A mechanism is available to protect marks used in the service industry. Thus businesses providing services like computer hardware and software assembly and maintenance, 24
  25. 25. restaurant and hotel services, courier and transport, beauty and health care, advertising, publishing and educational services and the like are now in a position to protect their names and marks. A service mark or servicemark is a trademark used in some countries, notably the United States, to identify a service rather than a product.When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. Pat & TM Off" may be used (the same symbol is used to mark registered trademarks). Before it is registered, it is common practice (with some legal standing) to use the service mark symbol ℠ (a superscript SM). "TM" and "SM" designations indicate that a person or entity claims rights in a particular trademark or service mark. They do not indicate that the mark has been registered. Even though a mark is not registered, a person or entity claiming ownership may place the "TM" or "SM" designation next to it. ® This designation indicates that a mark is federally registered. It should only be used if the United States Patent and Trademark Office has granted registration. Examples of service marks are: McDonald's (restaurant services), Wal-Mart (retail business services) and AT&T (telecommunications services.) Collective Marks A collective trade mark or collective mark is a trademark owned by an organization (such as an association), whose members use them to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization. Marks being used by a group of companies can be protected by the group collectively. Examples of collective trade marks include  The "CA" device used by the Institute of Chartered Accountants.  The mark "CPA", used to indicate members of the Society of Certified Public Accountants.  The marks of various confederated lobby groups. Well-known Marks Marks which are deemed to be well-known have been defined by the Trade Marks Registry. Such marks will enjoy greater protection. Persons will not be able to register or use marks which are imitations of Well-known Trade Marks. Famous marks are those that enjoy a high degree of consumer recognition. However, few trademarks enjoy the status of “fame.” Examples of marks held to be famous in certain jurisdictions include MACDONALDS, KFC, COCA-COLA, KODAK, WIMBLEDON and APPLE. Certification mark (Quality mark) 25
  26. 26. A certification mark on a commercial product may indicates several things:The existence of a follow-up or product certification agreement between the manufacturer of a product and an organization with national accreditation for both testing and certification, Legal evidence that the product was successfully tested in accordance with a nationally accredited standard, Legal assurance the accredited certification organization has ensured that the item that was successfully tested is identical to that which is being offered for sale, Legal assurance that the successful test has resulted in a certification listing, which is considered public information, which sets out the tolerances and conditions of use for the certified product, to enable compliance with the law through listing and approval use and compliance, Example ISI mark is a certification mark for industrial products in India. The mark certifies that a product conforms to the Indian Standard, mentioned as IS:xxxx on top of the mark, developed by the Bureau of Indian Standards The BIS hallmark is a hallmarking system for gold as well as silver jewellery sold in India certifying to the purity of the metal. It certifies that the piece of jewellery conforms to a set of standards laid by the Bureau of Indian Standards, the national standards organization of India. AGMARK is a certification mark employed on agricultural products in India, assuring that they conform to a set of standards approved by the Directorate of Marketing and Inspection, an agency of the Government of India. Enlarged scope of registration Persons who get their marks registered for particular goods in a particular class and commence using their marks can sue and prevent other persons from: (i) Using the same or similar marks even for different goods falling in other classes (ii) Using the same or similar marks even only as part of their firm name or company name (iii) Using the same or similar mark only in advertising or on business papers (iv) Importing or exporting goods under the said Trade Mark (v) Unauthorized oral use of the said Trade Mark Stringent punishment The punishment for violating a Trade Mark right has been enhanced. The offence has now been made cognizable and wide powers have been given to the police to seize infringing goods. At the same time the power of the Courts to grant expert injunctions have been amplified. Appellate Board 26
  27. 27. An appellate board (IPAB) has been constituted (based in Chennai) for speedy disposal of Appeals and rectification applications. Expedited procedure Mechanisms have been set in place for expediting search and registration by paying five times the normal fee. Enhanced renewal period Registered Trade Marks need to be renewed every ten years. License agreements do not need to be compulsorily registered. 1. Legal Basis    The Trade Marks Act, 1999 New Elements in the Trade Marks Act, 1999 The Trade Marks Rules, 2002 The law is based mainly on the United Kingdom Trade Marks law and provides for the registration of Trade Marks which are being used, or which will be used for certain goods to indicate a connection between them and some person who has the right to use the marks, with or without any indication as to the identity of the person. 2. Filing a Trademark Registration in India Application for registration: An application for registration may be made by any person claiming to be the proprietor of a mark but only as regards the particular goods or service in respect of which he/she is using or proposing to use the mark. At the time of filing the application, the proprietor must have the intention to use the mark himself/herself or though a registered user. Foreigners and nationals not living in the country: Such persons may be recorded as being registered proprietors of Trade Marks but they must provide the Registry with an address for service in India, otherwise, they must appoint a registered agent or representative. Kind of marks: The law provides for the registration of association trademarks, certification marks, defensive marks and collective marks. Registrability: To be register, a Trade Mark application must contain or consist of the following essential particulars 27
  28. 28. The name of a company, individual or firm represented in a special or particular manner; The signature of the applicant for registration or some predecessor in his/her business; An explanation with sufficient precision, a description by words of the Trade Mark, if necessary, and depiction of the graphical representation of the Trade Mark, which may be: ne or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name, or a surname, or a personal name, or any common abbreviation thereof, or the name of a sect, caste or tribe in India; Service marks: Registrable in India in eleven classes. Priority: Can be claimed from the earliest corresponding application in a Convention country provided that an application is filed in India within six months of the priority date. Multiple and partial priorities are allowed. Classification: The international classification of goods is used and separate applications must be filed for goods falling in different classes. Classes 1 to 34 are available for goods; and classes 35-45 are available for services. Territory Covered: The Trade Mark legislation covers the whole of the territory of India, including the States of Jammu and Kashmir and the territories of Goa, Daman, Diu, Dadra, Nagar Haveli and Pondicherry. 3. Examination Applications are examined to ensure that they comply with the requirements of the law and that they do not conflict with marks which are already registered, or which are the subjects of earlier pending applications. Amendments: An application may be amended provided the amendment does not constitute a major alteration of the mark. Ground for refusal: Registration may be refused in respect of marks which are scandalous or obscene, which are likely to deceive, cause confusion, or offend religious susceptibilities, which are contrary to the law or morality, or which would otherwise be disentitled to protection in a court, which are accepted chemical names or which are identical to other marks for the same goods or 28
  29. 29. description of goods. In the case of identical marks, registration may however be allowed upon proof that the mark was being used concurrently and in good faith. Hearing: A hearing may be sought with regard to applications which the Registrar proposes to refuse and an appeal may be made to the Intellectual Property Appellate Board against any orders issued at a hearing. 4. Grant of Trade Mark & Protection Opposition: Applications that have been accepted are advertised in the Trade Marks Journal and opposition may be filed within three months of the date of advertisement; an extension time of one month for filing the opposition may be obtained upon application. The Register was formerly divided into two parts. Part A contained the marks already registered under the Trade Marks Act 1940, and all marks which were distinctive or had acquired distinctiveness (satisfactory evidence to this effect must be produced) could be registered in Part A of the Register. Part B contained marks which could not be registered in Part A or which were not distinctive but were capable of distinguishing the goods of the applicants. Since 2003 this distinction has been removed. There is now only a single register. Duration of registration: Ten years, renewable for further periods of ten years each. Renewal fees: Must be paid before but not more than six months before the date of expiry of the last registration; a mark may be restored within one year from the last date of renewal upon application to the Registrar, either completely or subject to such conditions and limitations as he/she may think fit to impose. A Trade Mark which has been removed from the Register for non-payment of renewal fees can be cited against an application for registration during a period of one year as from the date of removal. Assignment: A registered Trade Mark can be assigned with or without the goodwill of the business concerned. An unregistered Trade Mark is not assignable without the goodwill of the business concerned except if it is used in the same business as a registered Trade Mark and assigned to the same person and along with a registered Trade Mark covering the same goods. Registered user: The Central Government can refuse the registration of a registered user if it is against the public interest or the development of industry, trade or commerce in India. Before doing so the Central Government must disclose the facts and circumstances on the basis of which it proposes to refuse the registration of a registered user and give the applicant an opportunity of a hearing. 29
  30. 30. Marking of goods: The law does not prescribe that a registered Trade Mark, when used by its proprietor, be described as such on the goods to which it is applied nor does it require that the proprietor's identity be disclosed. Where a mark is used by a registered user, however, goods must be marked in such a way as to disclose the identity of the registered proprietor and the fact that the mark is being used by the registered user by permission of the registered proprietor. All goods imported into or manufactured or assembled in India may be required to be marked in such a way as to indicate their country of origin. Under Section 139 of the Act, the Indian Government will, from time to time, issue notifications specifying the manner in which the goods are to be marked. Rectification for non-use: The Register may be rectified (removal of a mark) in respect of a registered mark and one of the grounds for applying for rectification is the non-use of a mark for a period exceeding five years and one month before filing of the rectification application unless there are special circumstances excusing non-use. Infringement: Suits may be filed against the infringement of registered marks and in any suit; registration may be regarded as valid in all respects even years from the date of registration. Unregistered Trade Marks with reputation in India or internationally Well-known Trade Marks can be protected against misuse in a passing off action. Trademarks have been defined as any sign, or any combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings. Such distinguishing marks constitute protectable subject matter under the provisions of the TRIPS Agreement. The Agreement provides that initial registration and each renewal of registration shall be for a term of not less than 7 years and the registration shall be renewable indefinitely. Compulsory licensing of trademarks is not permitted. Keeping in view the changes in trade and commercial practices, globalisation of trade, need for simplification and harmonisation of trademarks registration systems etc., a comprehensive review of the Trade and Merchandise Marks Act, 1958 was made and a Bill to repeal and replace the 1958 Act has since been passed by Parliament and notified in the Gazette on 30.12.1999. This Act not only makes Trade Marks Law, TRIPS compatibility but also harmonises it with international systems and practices. Work is underway to bring the law into force. Trade Mark Classification of Goods and Services Classification goods and services into different classes for the purpose registration of trademarks enable systematic storage and retrieval of information. 30
  31. 31. However, in determining whether two or more trademarks are confusingly similar, it is necessary to examine the nature of the goods or services. It is not sufficient to merely rely on the class number under which those trademarks are registered. Although the classification system was established as an administrative tool, it has been playing an equally important role in evaluating the scope of rights and in determining infringement disputes. SECTION 2: TRADEMARKS Article 15 Protectable Subject Matter 1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible. 2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967). 3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application. 4. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark. 5. Members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, Members may afford an opportunity for the registration of a trademark to be opposed. Article 16 Rights Conferred 1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar 31
  32. 32. signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use. 2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark. 3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use. Article 17 Exceptions Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties. Article 18 Term of Protection Initial registration and each renewal of registration, of a trademark shall be for a term of no less than seven years. The registration of a trademark shall be renewable indefinitely. 32
  33. 33. Case Study : McDonald's attacks teen named "McClusky" over trademark infringement McDonald's has initiated a legal battle against 19-year-old Lauren McClusky over her attempt to trademark the name of a charity festival. McClusky,whose father is radio promoter Jeff McClusky, has held three annual fundraisers for the Chicago chapter of the Special Olympics. The first year, she co-organized the festival with a person whose name also began with the prefix Mc, so they dubbed it McFest. After the third year, McClusky filed to make McFest into a registered trademark. McDonald's responded by filing against the request. At first, McClusky said, she was "kind of honored" that McDonald's had even noticed her event. McDonald's financially supports the Special Olympics and has stated that it has no intention of interfering with charitable fundraising. McDonald's trademarks include McPen, McBuddy, McBurger, McDouble, McFree, McJobs, McLight, McPool, McProduct, McRuler, McShades, McShirt, McWatch and the prefix "Mc." Although McDonald's and McClusky have both expressed a desire for a peaceful resolution, they remain in a standoff. McDonald's refuses to withdraw its complaint, and McClusky is unwilling to accept McDonald's sponsorship for her event. Due to the work she has already put into building local awareness and recognition of the fundraiser, she is also unwilling to change the name. Case Study : Red Bull wins trademark infringement case in the UAE The regional representative office of the original Austrian energy drink, has won a lawsuit against a prominent local importer for selling a competitor product - Bullfighter - which was found guilty of trademark infringement. The importer was fined AED 15,000. Red Bull is a registered trademark in the UAE. The Red Bull registered trademark reserves exclusive rights to the product's distinctive logo, name, symbol and design, which identify and distinguish it from other products. In this case, Red Bull argued that the competitor was 33
  34. 34. misleading customers into believing that its product was a Red Bull product or was endorsed by Red Bull due to its similar name and packaging, and hence carried the benefits and qualities that Red Bull offers. Ultimately, the court took the view that the competitor had intentionally adopted a product which appropriated part of the trade or reputation of Red Bull and had attempted to capitalise on Red Bull's reputation, effective marketing and significant market share. This decision serves as a warning to any business tempted to take advantage of the reputation of a competitor's product by copying distinctive aspects of the brand. Selim Chidiac, Red Bull's Regional Director, commented: "Red Bull strives to protect our loyal consumers from being misled into purchasing products that do not conform to our impeccable standards and high-quality stringent scientific testing. "We would also like to congratulate the local UAE judicial system for how seriously they treat trademark infringement cases. This is good news, both for the manufacturers, who stand to lose revenue, and for consumers who are misled into purchasing products they believe to be the genuine article, but which are in fact poor imitations." Chidiac added. 34
  35. 35. Geographical indications A place name is sometimes used to identify a product. This “geographical indication” does not only say where the product was made. A geographical indication is usually a place name giving the origin of the goods to which it is applied. More importantly, it identifies the product’s special characteristics, which are the result of the product’s origins. These goods usually have a quality which can only be obtained if they are produced in the specified place, for example, because of the climate, or local soil conditions, or quality of the water. Geographical indications are mostly used in relation to agricultural products, but may also be applied to other products which rely on human or other factors.Well-known examples include “Champagne”, “Scotch”, “Tequila”, and “Roquefort” cheese. Wine and spirits makers are particularly concerned about the use of place-names to identify products, and the TRIPS Agreement contains special provisions for these products. But the issue is also important for other types of goods. This is a fairly recent form of intellectual property protection, which was introduced to protect the public from deception, whether deliberate or otherwise. It means, for example, that if you buy Scotch whisky, you know that it is made in Scotland, and it not a product made in the same way as Scotch Geographical indications are protected by International Treaties, and signatories of these treaties then incorporate protection into their own national laws, either by amendment of existing laws, or the creation of new ones. Geographical indications are therefore ultimately enforced under national law. Some place names have, however, become synonymous with particular styles of product, regardless of where they are produced, for example Dijon for mustard, and Cheddar for cheese, and so are not protected as Geographical Indications. Using the place name when the product was made elsewhere or when it does not have the usual characteristics can mislead consumers, and it can lead to unfair competition. The TRIPS Agreement says countries have to prevent this misuse of place names. For wines and spirits, the agreement provides higher levels of protection, i.e. even where there is no danger of the public being misled. Some exceptions are allowed, for example if the name is already protected as a trademark or if it has become a generic term. For example, “cheddar” now refers to a particular type of cheese not necessarily made in Cheddar, in the UK. But any country wanting to make an exception for these reasons must be willing to negotiate with the country which wants to protect the geographical indication in question. 35
  36. 36. The agreement provides for further negotiations in the WTO to establish a multilateral system of notification and registration of geographical indications for wines. These are now part of the Doha Development Agenda and they include spirits. Also debated in the WTO is whether to negotiate extending this higher level of protection beyond wines and spirits. Place names (or words associated with a place) used to identify products (for example, “Champagne”, “Tequila” or “Roquefort”) which have a particular quality, reputation or other characteristic because they come from that place. Why Are Geographical Indications Suddenly an Issue? WTO Members and their nationals are increasingly recognizing that geographical indications, like trademarks, are valuable as marketing tools in the global economy. Furthermore, intellectual property owners are finding that protecting IP is no longer just a domestic endeavour. The Geographical Indications Act affords protection to goods that can be identified 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 conditions. In the case where such goods are manufactured goods, one of the activities of production, processing or preparation of the goods concerned takes place in such territory or locality as the case may be. The term is initially for a period of 10 years and can be renewed from time to time. Until recently India did not have a specific law governing Geographical Indications of goods, which could adequately protect the interests of producers of such goods. Unless a Geographical Indication is protected in the country of its origin, there is no obligation under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) for other countries to extend reciprocal protection. In view of this, it was considered necessary to have a comprehensive legislation for registration and for providing adequate protection for Geographical Indications. Thus, the government enacted a pertinent legislation, namely, the Geographical Indications of Goods (Registration and Protection) Act, 1999. The legislation is administered through the Geographical Indications Registry under the overall charge of the Controller General of Patents, Designs and Trademarks. This Act, along with the Geographical Indications of Goods (Registration and Protection) Rules, 2002 came into force on September 15, 2003. A Geographical Indications Registry has been established in Chennai for the purpose of administering the legislation. Appeal against the Registrar's decision would be to the Intellectual Property Appellate Board established under the Trade Marks legislation. 1. Significance of Geographical Indication Registration Such identification enables the product to gain a reputation and goodwill all over the world, consequently resulting in premium prices in national and international markets. 36
  37. 37. Recognition of a particular commodity as a Geographical Indication also confers the right to protection under the Geographical Indication Act, 1999, thereby preventing an unauthorised use of the commodity registered as GI by any third party. Geographical Indication registration encourages community ownership and therefore it helps in proper distribution of the economic benefits accrued from commercialisation of the commodity across a wider section of people in that territory. 2. Registered Geographical Indications in India A Geographical Indication signals that particular goods have originated from or are manufactured in a particular territory. A classic example of an international Geographical Indication is Champagne. The goods can be in any form, natural, manufactured or agricultural. Some commodities that have been recently granted the status of a Geographical Indication by the Government of India include Gir Kesar Mango, Bhalia wheat, Kinhal Toys, Nashik Valley wine, Monsoon Malabar Arabica Coffee, Malabar Pepper, Alleppy Green Cardamom and Nilgiris Orthodox Tea. Other examples include Darjeeling Tea, Mysore Silk, Paithani Sarees, Kota Masuria, Kolhapuri Chappals, Bikaneri Bhujia and Agra Petha. Each of the aforesaid commodities, which have been granted the status of Geographical Indication, possesses distinct features related to their respective territories. For example, Monsoon Malabar coffee has a yellowish tinge due to its exposure to the sea winds for nearly six months in a year. Malabar pepper is grown exclusively in Thalassery and other northern parts of Kerala. Its corns are larger than the typical black pepper corns with a dark brown colour. It is very aromatic and pungent, and the most complex, balanced and elegant of peppers. The Alleppey green cardamom is the traditional grade that is internationally accepted. The size, colour and chemical constituents of this grade of cardamom, with high oil content, set it apart. The identity of this brand is interwoven with the geographical name Alleppey, a coastal district in Kerala. Nilgiris tea has an exquisite flavour and aroma, accompanied by a creamy mouth feel. These qualities are due to the high elevation of the Nilgiris coupled with its cold, dry and misty weather. GIs: Procedural Overview Any association of persons, producers, organisations or authority established by or under the law can apply for a Geographical Indication provided that the applicant must represent the interests of the producers. An application for registration of a Geographical Indication is to be made in writing, along with the prescribed fees, and should be addressed to the 'Registrar of Geographical Indications.' The application should include the requirements and criteria for processing a GI application as specified below:   The class of goods; The territory; 37
  38. 38.            The particulars of appearance; Particulars of producers; An affidavit of how the applicant claims to represent the interest in the GI; The standard bench mark or other characteristics of the GI; The particulars of special characteristics; Textual description of the proposed boundary; The growth attributes in relation to the GI pertinent to the application; Certified copies of the map of the territory; Special human skill involved, if any; Number of producers; and Particulars of inspection structures, if any, to regulate the use of the GI. On receipt of the application, a number will be allotted. Thereafter, the application would be examined to check whether it meets the requirements of the Act and Rules. For this purpose the Registrar shall ordinarily constitute a Consultative Group of experts to ascertain the correctness of the particulars furnished. After issuance of the Examination Report, submissions of the applicant would be considered. If no further objection is raised, the application would be accepted and would be advertised in the Geographical Indications Journal. An opposition can be lodged within a maximum of four month from the date of publication. If the opposition is dismissed, the application will proceed to registration in Part A of the Register unless the Central Government otherwise directs. SECTION 3: GEOGRAPHICAL INDICATIONS Article 22 Protection of Geographical Indications 1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. 2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent: (a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; (b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967). 3. A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use 38
  39. 39. of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin. 4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory. Article 23 Additional Protection for Geographical Indications for Wines and Spirits 1. Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like. 2. The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Member's legislation so permits or at the request of an interested party, with respect to such wines or spirits not having this origin. 3. In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled. 4. In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system. Article 24 International Negotiations; Exceptions 1. Members agree to enter into negotiations aimed at increasing the protection of individual geographical indications under Article 23. The provisions of paragraphs 4 through 8 below shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral or multilateral agreements. In the context of such negotiations, Members shall be willing to 39
  40. 40. consider the continued applicability of these provisions to individual geographical indications whose use was the subject of such negotiations. 2. The Council for TRIPS shall keep under review the application of the provisions of this Section; the first such review shall take place within two years of the entry into force of the WTO Agreement. Any matter affecting the compliance with the obligations under these provisions may be drawn to the attention of the Council, which, at the request of a Member, shall consult with any Member or Members in respect of such matter in respect of which it has not been possible to find a satisfactory solution through bilateral or plurilateral consultations between the Members concerned. The Council shall take such action as may be agreed to facilitate the operation and further the objectives of this Section. 3. In implementing this Section, a Member shall not diminish the protection of geographical indications that existed in that Member immediately prior to the date of entry into force of the WTO Agreement. 4. Nothing in this Section shall require a Member to prevent continued and similar use of a particular geographical indication of another Member identifying wines or spirits in connection with goods or services by any of its nationals or domiciliaries who have used that geographical indication in a continuous manner with regard to the same or related goods or services in the territory of that Member either (a) for at least 10 years preceding 15 April 1994 or (b) in good faith preceding that date. 5. Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either: (a) before the date of application of these provisions in that Member as defined in Part VI; or (b) before the geographical indication is protected in its country of origin; measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication. 6. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in the territory of that Member. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO Agreement. 7. A Member may provide that any request made under this Section in connection with the use or registration of a trademark must be presented within five years after the adverse use of the protected indication has become generally known in that Member or after the date of 40
  41. 41. registration of the trademark in that Member provided that the trademark has been published by that date, if such date is earlier than the date on which the adverse use became generally known in that Member, provided that the geographical indication is not used or registered in bad faith. 8. The provisions of this Section shall in no way prejudice the right of any person to use, in the course of trade, that person's name or the name of that person's predecessor in business, except where such name is used in such a manner as to mislead the public. 9. There shall be no obligation under this Agreement to protect geographical indications which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country. Case Study :Meerut's scissor units get Geographical Indicator tag Now, with a Geographical Indicator (GI) status, Meerut's scissor industry has got a new lease of life. Country's only scissor cluster has been blunted by the pirated versions of not so reliable scissors manufactured elsewhere and sold as made in Meerut. The con has surpassed borders to China that has been destination flooding the local market with its products. Industry players believe that the recent initiatives by the government to revive the industry by adorning it with a special GI status is expected to benefit it handsomely in the days to come. City's scissor industry has roughly 60,000 people employed directly and indirectly. The size of the scissor varies from six inches to fourteen inches and the prices range between Rs 50 and Rs 250. The GI tag will not have any bearing on the prices of scissors. "The prices of the scissors will not increase just because of the GI. Now, we will be able to save a lot because of the cluster as all the requisite infrastructure will now be in one place under one roof. How-ever, the scissors will be more authentic now." Case Study : Tirupati laddu Wants GI tag A scientist from Kerala has moved the Supreme Court challenging the grant of Indian patent for ‘Tirupati laddu’ with the tag of ‘Geographical Indication’ (a temple offering). R.S. Praveen Raj, working in the National Institute for Interdisciplinary Science and Technology, Thiruvananthapuram, sent a letter in this regard to Chief Justice of India K.G. Balakrishnan with a request that it might be treated as a writ petition. He said the matter was about “the prejudice caused to Article 25 of the Constitution and the violation of Sections 9(d), 11 and 9(a) of the Geographical Indication of Goods (Registration and Protection) Act, 1999 in the action by the Controller-General of Patents, Designs and Trademarks, Government of India and the Registrar of Geographical Indications to register Tirupati Laddu as “goods’ under the Geographical Indication of Goods (Registration and Protection) Act, 1999. 41