Chapter 07 Intellectual Property Laws


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Chapter 07 Intellectual Property Laws

  1. 1. Chapter 7 INTELLECTUAL PROPERTY LAWS WHAT IS `INTELLECTUAL PROPERTY`  Companies use their assets as part of the operations of their business and, as such, they contribute to the development of the organisation as a whole. Managing and protecting assets is, therefore, a key operational and strategic function.  Assets may be classified as: - 1. Tangible (or physical) assets - land and building, plant and machinery and tools and equipment. 2. Intangible assets - goodwill, patents, designs, trademarks and copyrights -Intellectual property rights (IPRs)  Intellectual property, often known as IP, allows people to own their creativity and innovation in the same way that they can own physical property. The owner of IP can control and be rewarded for its use, and this encourages further innovation and creativity to the benefit of us all. Types of Intellectual Property  There are four main types of IPRs:- 1. Patents: registered rights protecting industrial invention, which last for upto 20 years. 2. Trademarks registered rights for brand identity, which can continue as long as the registration fees are paid. 3. Designs registered designs (which lasts upto 25 years) and unregistered design right protect the aesthetic appearance of articles. 4. Copyright unregistered protection for authors, artists and composers against the unauthorised copyin of their works, which lasts for the life of the author plus 70 years.  The first three categories are known as registered or monopoly rights as the process of registration effectively prevents others from exploiting an invention, brand or design without the owner’s consent. TRADEMARKS ACT, 1999 What is `Trade Mark`  A `Trade Mark` is a distinguishing mark used in the course of trade of goods of one manufacturer or trader and, therefore, it seeks to protect the interest of the consumer as well as the trader. A trademark may consist of a device depicting the picture of animals, human beings, etc., words, letters numerals, signatures or any combination thereof. Trademark Owner or Proprietor  The person in whose name the Trade mark is registered and his name is so entered in the Register maintained by the Registrar Trademarks. Registered users (Section 48)  A person other than the registered proprietor of a trademark may be registered in respect of any or all of the goods or services in respect of which the trademark is registered. (Ex – HLL products manufactured by some other manufacturer) Trademarks as a series  Where the proprietor of a trademark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trademarks. Each such separate trademark shall satisfy all the conditions applying to and have all the incidents of, an independent trademark. (Ex – `Liberty` and `Ballerina` used for Ladies Sandals) Limitation as to Colour  A trademark may be limited wholly or in part to any combination of colours. When a trademark is registered without limitation of colour, it shall be deemed to be registered for all colours. (Ex- Airtel – in Red and White colours) TYPES OF TRADEMARKS Classification Description (A) Registered Trade Mark A trademark registered with the Registrar of Trade Marks in the name of a person. (B) Certification mark The owner of that mark is called Registered Owner or Proprietor. A mark used in commerce with the owner’s permission by someone other than its owner,  to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or  that the work or labor on the goods or services was performed by members of a union. (Ex – Woolmark; AGMARK) (C) Collective mark A trademark or service mark used in commerce, by all the members of a cooperative, an association etc. (Ex- Lijjat papad, FICCI) (D) Well-known trademark A mark, which has become so well known to the substantial segment of the public,
  2. 2. IIPM 47 CH. – 7 INTELLECTUAL PROP. RIGHTS that the use of same trademark is used in relation to other goods or services, in the same course of trade, would cause confusion in the minds of the users/beneficiaries of the goods or services. (Ex – Raxona chappals) (E) Service mark A mark used in the course of trade, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. (Ex- Hutch) What can be registered as a trademark? Trading names Ex- Lal Quila Basmati Chawal (Rice) Signatures Ex - Cadbury’s bar of chocolate. Newly invented words Ex - ORTEM Geographical names Ex – Bikaneri bhujia Distinctive packaging Ex.- Radial Tyres Smells, sounds and colours Ex – Zevit capsules from SKF Glaxo REGISTRATION OF TRADEMARK [SECTION 3 TO 8]] Registrar of Trademark  The Central Government may, appoint Controller-General of Patents, Designs and Trademarks, who shall be the Registrar of Trademarks. Further officers may also be appointed under the superintendence and direction of the Registrar. These officers shall perform such functions as the Registrar may authorize them from time to time. Trademarks Registry and offices thereof  The Trademarks Registry shall be established. There are five offices of the Trade Marks Registry - located at Mumbai, Chennai, Delhi, Kolkata and Ahmedabad. There shall be a seal of the Trademarks Registry. The Register of Trademarks  The Register of Trade mark shall be kept at the head office. In that Register all registered trade marks with the names, addresses and description of the proprietors, notifications of assignment and transmissions, the names, addresses and descriptions of registered users, conditions, limitations and such other matter relating to registered trademarks shall be entered. The Register may be kept wholly or partly in computer floppies diskettes or in any other electronic form subject to prescribed safeguards. Classification of goods and services  The Registrar shall classify goods and services, as far as may be, in accordance with the International classification of goods services for the purposes of registration of trademarks. The Registrar may publish in the prescribed manner an alphabetical classification of goods and services. Registration of Trademark  Any person claiming to be the proprietor or a trademark used or proposed to used by him shall apply in writing to the Registrar in the prescribed manner for the registration of his trademark. A single application may be made for registration of a trademark for different classes of goods. After due compliance of related procedures, the Registrar may register with or without conditions. GROUNDS OF REFUSAL [SECTION 9 TO 11] (A) Absolute grounds (i) The name of any single chemical element or compound, or notified by Registrar as an international non- proprietary. (ii) Marks exclusively used in that trade; (iii) Deceptive to public or cause confusion; (iv) Hurt the religious susceptibilities (v) Scandalous or obscene matter (vi) Prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. (vii) Consists exclusively of shape of goods (B) Relative grounds - (i) Likelihood of confusion on the part of the public (ii) Proposed trademarks are deceptively similar to an existing. (iii) Its use in India liable to be prevented by virtue of law of passing off or copyright. Honest concurrent use, etc by more than one person  In the case of honest concurrent use or of other special circumstances the Registrar may permit the registration by more than one proprietor with such conditions and limitations, if any, as the Registrar may think fit. Duration, renewal, removal and restoration of registration  The registration of a trademark shall be for a period of 10 years may be renewed for further period of 10 years from time to time. INFRINGEMENT Infringement of registered trademarks LECTURES BY PROF. S N GHOSH
  3. 3. IIPM 48 CH. – 7 INTELLECTUAL PROP. RIGHTS  When a person other than the registered proprietor of permitted user uses a mark in the course of trade for which original owner is registered, and such a mark is identical with, or deceptively similar to the registered trademark relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. (Ex – `Palmolive` (registered mark); `Pamolive`(infringement) Passing Off  It means when any person not authorised to use any registered trade uses the same in order to cause confusion or deception in the mind of the user or injure reputation of the registered owner. There shall be actual damage by such unauthorised use. It constitutes an infringement, when proved. REDRESSAL MECHANISM [SECTIONS 83 TO 100]  The Central Government has notified the establishment of an Appellate Board known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it. The Appellate Board shall consist of a Chairman, Vice-Chairman and other Members (Judicial and Technical). Appeals to Appellate Board- within 3 months`  Any person aggrieved by an order or decision of the Registrar may prefer an appeal to the Appellate Board within 3 months from the date receipt of a copy said Order or decision. All proceedings shall be judicial proceedings under Indian Penal Code and Code of Criminal Procedure. Bar of jurisdiction of courts, etc.  No court or other authority shall have any jurisdiction, powers or authority in relation to the matters referred to in appeal. OFFENCES AND PENALTIES [SECTIONS 103] Penalty for applying/selling false trademarks, trade descriptions, etc.  An imprisonment upto three years and fine upto Rs. 2 Lakhs may be imposed on violation of the Act. TRADEMARK AGENTS Agents may present the applicant before Registrar (Section 145)  The Registrar may authroise the legal practioners or registered agents may be authorised to represent their principals. PATENTS ACT, 1970 What is `Patent`  Patent is a monopoly granted to the original inventor of a product or process that is capable of commercial exploitation. The benefits of patent protection  The patent gives the patent holder the right to stop others from using the invention concerned or to choose to let others use it under agreed terms. It also brings the right to take legal action against others who might be infringing the invention to claim damages. Patent right is assignable. Patent Requirements  Be novel.  Involve an inventive step  Capable of Commercial Exploitation  Be described. TRIP AGREEMENT Compliance of the TRIP Agreements  India is a signatory to the agreement establishing the World Trade Organization (WTO). The WTO Agreement, inter-alia, contains an agreement on intellectual property rights, namely, the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). The TRIPs Agreement requires member countries to align their legislations on intellectual property in conformity with their obligations under the TRIPs Agreement.  The Patent Act 1970 has been amended in 1999, 2002 and 2005 so as to make Indian Patent Act fully compliant of the TRIP Agreement. INVENTIONS NOT PATENTABLE (SECTION 3 AND 4)  Frivolous or claims made are obvious or contrary to well established natural laws.  Contrary to law or morality or injurious to public heath. (Ex.-Method for gambling)  Mere discovery of a scientific principle or the formulation of an abstract theory. (Ex -Scientific theory is a statement about the natural world.)  The mere discovery of any new property or its use or of the mere use of a known process, machine or apparatus. (Ex - Use of Aspirin for cardio-vascular disease)  A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof (Ex – Alloy) LECTURES BY PROF. S N GHOSH
  4. 4. IIPM 49 CH. – 7 INTELLECTUAL PROP. RIGHTS  The mere arrangement or re-arrangement or duplication of known devices (Ex - Umbrella with fan)  A method or a process for enhancing machine efficiency. (Ex - Process for testing of chlorine level in the water)  A method of agriculture or horticulture (Ex - A method for cultivation of an algae)  Any process for the medicinal, surgical, curative, prophylactic or other treatment of living animals to make them disease free. (Ex - treatment of malignant tumour cells)  Inventions relating to Atomic energy [Section 4] Who may apply for Patent  An application for a patent may be made by the first inventor, his assignee or legal representative or foreign national of a convention country on reciprocal basis. Types of Patent Applications a. Patent applications under Patents Act 1970. b. International applications under PCT. Secrecy direction of certain inventions  The Registrar while sealing a Patent may issue security directions for products or process for defence purposes. Term of a patent  The term of every patent shall be 20 years from the date of filing application for patent. A patent may be revoked by the High Court on any of the specified grounds. Compulsory licences  At any time after 3 years from the date of the sealing of a patent, any person including Central Government in the public interest may make an application to the Controller for grant of compulsory licence on patent on specified grounds. The Controller on being satisfied with the expediency and urgency and public interest, my grant compulsory licence. Revocation of patents by the Controller for non-working  Where patented invention is not available to public at a reasonably affordable price, the Central Government has been empowered to apply to the Controller for revocation of compulsory licence after 2 years from the grant of licence. REDRESSAL MECHANISM [SECTION 116] Appellate Board  The Appellate Board established under the Trade Marks Act, 1999 shall be the Appellate Board for the Patent Act also. INTERNATIONAL ARRANGEMENTS Notification as to convention countries (Section 133)  The Central Government may, declare and notify a country to be a convention country with a view to the fulfillment of a treaty, on reciprocal basis. THE COPYRIGHT ACT 1957 What is copyright  Copyright is a kind of intellectual property. Copyrights generally protect works of art including poetry, movies, video games, DVDs, paints, sculptures, literary, dramatic or musical work, musical works, photographs, or architectural designs, among others. To qualify for a copyright, the work must be “fixed in a tangible medium of expression.”  A copyright does not cover an author’s ideas – which is why the work must be fixed in a tangible medium. In other words, the work must exist in some physical form, such as a tape recording, on film, on paper, or even in an email.  Copyright is not a positive right but a negative right that is the right to stop others from exploiting the work without the copyright owners consent or license. Thus where, for instance, the work is derived from some other work in which copyright subsists as in the case of translation, adoption or abridgement of a literary work the author of such work can stop others from exploiting it but he cannot himself exploit that work without the consent or license of the original work from which the work has been derived. Conditions for qualifying as copyright a) The work is first published in India. b) Where the work is first published outside India the author, at the date of publication must be a citizen of India. c) In the case of an architectural work of art, the work is located in India COPYRIGHT BOARD, POWERS AND PROCEDURE [SECTIONS 11 TO 12] Constitution and composition of the Copyright Board  The Central Government shall constitute a Copyright Board, which shall consist of a Chairman and fourteen other members. The Chairman of the Copyright Board shall be a person who is or, has been, a judge of a High Court or is qualified for appointment as a Judge of a High Court LECTURES BY PROF. S N GHOSH
  5. 5. IIPM 50 CH. – 7 INTELLECTUAL PROP. RIGHTS  The Copyright Board shall be deemed to be a civil court and all proceedings shall be deemed to be judicial proceedings. Functions of the copyright Board  Settlement of disputes with regard to copy right, infringement thereof, assignment, determination of royalties, compulsory licence in public interest, and other matters incidental thereto.  It may be noted that the Copyright Board has no powers to limit the user of copyright to any particular territorial area. Assignment of copyright  The owner of the copyright in an existing work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof.  The assignment shall be in writing and for a consideration. TERM OF COPYRIGHT Published literary, dramatic, musical and artistic works etc. - Lifetime of the author upto 60 years from the beginning of the calendar year next following the year in which the author dies. The broadcast reproduction right - 25 years from the beginning of the calendar year next following the year in which the broadcast is made. Performer's right - 50 years from the beginning of the calendar year next following the year in which the performance is made. LICENCES (Section 30) Licences by owners of copyright  The owner of the copyright in any existing work or the prospective owner of the copyright in any future work may grant any interest in the right by licence in writing signed by him or by his duly authorised agent. Compulsory licence in works withheld from public  Upon a complaint made to the Copyright Board and on being satisfied in the public interest, the Board may direct the Registrar to grant compulsory licence to the Complainant on such conditions as maybe prescribed. COPYRIGHT SOCIETIES (Section 33) Registration of copyright society  The Central Government may, having regard to the interests of the authors and other owners, the interest and convenience of the public and the ability and professional competence of the applicants, may register Association of persons as a copyright society. The Central Government shall not ordinarily register more than one copyright society to do business in respect of the same class of works.  A copyright society may- (i) issue licences in respect of any copy rights under this Act; (ii) collect fees in pursuance of such licences; (iii) distribute such fees among owners of rights after making deductions for its own expenses; (iv) perform any other functions consistent with the provisions of section 35. STATUTORY EXCEPTIONS TO INFRINGEMENT (SECTION 52)  Some of the exceptions provided under the Act are as follows: - (i) a fair dealing with a literary, dramatic musical or artistic work; (ii) the making of copies or adaptation of a computer programme by the lawful possessor; (iii) the doing of any act necessary to obtain information essential for operating inter-operability of an independently created computer programme. (iv) the reproduction of a literary dramatic, musical or artistic work for the purpose of a judicial proceeding; (v) the reading or recitation in public of any reasonable extract from a published literary or dramatic work;. (vi) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for the use of educational institutions; (vii) the reproduction of a literary, dramatic musical or artistic work by a teacher or a pupil in the course of instruction; or as part of the question to be answered in an examination; or in answers to such questions; (viii) the making of sound recordings in respect of any literary, dramatic or musical work, if sound recordings of that work have been made by or with the licence or consent of the owner of the right in the work; the person making the sound recordings has given a notice of his intention to make the sound recordings, has provided copies of all covers or labels with which the sound recordings are to be sold, and has paid in the prescribed manner to the owner of rights in the work royalties in respect of all such sound recordings to be made by him, at the rate fixed by the Copyright Board in this behalf. (x) the causing of a recording to be heard in public by utilising it in an enclosed room or hall. (xi) the making of not more than three copies of a book; (xv) the reproduction, for the purpose of research or private study; REMEDIES AGAINST INFRINGEMENT OF COPYRIGHT (SECTIONS 54 –62)  The Act prescribes penalty by way of imprisonment for a minimum period of 3 years and with fine upto Rs. 2 LECTURES BY PROF. S N GHOSH
  6. 6. IIPM 51 CH. – 7 INTELLECTUAL PROP. RIGHTS lakhs. For any second and subsequent convictions imprisonment up to three years and the fine upto Rs.2 lakhs.  Any police officer, not below the rank of a sub-inspector, may, has also been empowered to seize without warrant, all copies of the work, plates and be produced before a Magistrate. COMPARITIVE ANALYSIS OF PATENT, COPYRIGHT AND TRADEMARK PATENT COPYRIGHT TRADEMARK Right Protected A new invention to Original, literary, dramatic, musical To use a particular mark, which manufacture the product and artistic works, cinematograph may be a symbol, word, device patented or use the process film and records. applied to articles of commerce patented. to indicate the distinctiveness of goods. Time Period 20 years Lifetime plus 50 years for literary, 7 years and may be renewed and in case of food and dramatic, musical and artistic from time to time. drugs 5 or 7 years. works. 50 years from year of publication for records. Who Can Register Actual inventor or an The author or publisher of, or Proprietor of the trademark and assignee of the right to owner of or other person application may be made in the make an application or legal interested in the copyright in any name of an individual, partners representative of either. work. of a Firm, Corporation, Government department or Trust. Commercial Use Assigning rights or licensing By assigning or licensing the right Licensing the right by them to industrialists for a to others on a royalty or lump sum registration of the licensee as a lump sum payment or basis. registered user. royalty basis. Remedy For Injunction, Damages, Civil, Criminal, Administrative. Injunction, Damages, Accounts Infringement Accounts of profits. of profits LECTURES BY PROF. S N GHOSH