Intellectual property issues within India working with the authorities


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Intellectual property issues within India working with the authorities

  1. 1. Intellectual Property Concerns in India and the Law Enforcement By Pawanjit S Ahluwalia The term ‘Intellectual Property’ includes the creative and literary outputs of human mind, like novels, music, motion pictures and industrial designs that are used for commercial purposes. Intellectual property though consists of original creations but the same creations are divided into two main categories, viz a) Creations being used for industrial purposes, and b) Creations that are copyrighted material. Industrial Property consists of patents or inventions, trademarks, industrial designs and geographical indications of source. Patents are rights that are granted exclusively for inventions pertaining to a product or a process. A trademark is a symbol or a word or a name that is put on goods in the market place that indicates its source. Service marks are given to services as opposed to products. Trademark rights ensure that the symbol word or name which identifies the source of the product is not duplicated. Whereas, copyright protects the authors of original works of art music, film and literary outputs. In India, the beginning of Intellectual Property Rights (IPR) is marked with the ‘patent system’ instituted by the British Colonial government based on their own patent system in 1856. As such, to save the interests of inventors, the then British rulers enacted the Indian Patents and Designs Act, 1911 (Act 2 of 1911). India has throughout shown serious concerns towards IP Rights and systematically developed laws to protect these rights. Today, there is a well established statutory, administrative and judicial framework to safeguard Intellectual Property Rights (IPRs) in India, whether they relate to patents, trademarks, copyright or industrial designs. Well known international trademarks have been protected in India even when they were not registered in India.
  2. 2. The Indian Trademarks law through Court rulings has been extended to service marks in addition to trademarks for goods. The Court rulings have helped computer software companies in successfully curtailing piracy and protecting computer database. The Courts, upholding the doctrine of ‘breach of confidentiality’ accorded an extensive protection of trade secrets. Right to privacy, which is not protected even in some developed countries, has been recognized in India. A Brief Background of IPR Development in India In the year 1883 Paris Convention for protection of industrial property came into existence. This was the first internationally recognized agreement for cooperation among nations for the protection of intellectual property. As many as 140 States signed the agreement of the Convention to implement its provisions. The Convention in the widest sense used the term, ‘industrial property’. Article 1 (2) of the Convention states, “The protection of industrial property has as its objects patents, utility models, industrial designs, trade marks, service marks, and trade names, indications of source or appellations of origin and the repression of unfair competition.” Article 1 (3) says, “Industrial property shall be understood in the broadest sense and shall apply not (only) to industry and commerce proper but likewise to agricultural and extractive industries and to all manufactured or natural products, for example wine, grain, tobacco leaf, fruit, cattle, minerals, water, beer, flowers and flour”. The Paris Convention bears the concept of a ‘union’, viz the countries to which that convention applied, constituted, a ‘union’ for the protection of industrial property. This meant that a national of any country of union enjoyed the protection of industrial property in all other countries of the union, to the extent the advantages of the laws granted to its own nationals. The Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement adopted this provision of the Paris Convention. As India was not a member of the Paris Convention, hence it was not obliged to implement the provisions of the Convention. However, after signing the TRIPS Agreement, India is now obliged to recognize and implement the
  3. 3. provision of “national treatment to nationals of other members”, in accordance to the provisions of TRIPS Agreement. The Paris Convention dealt with Patents, Trade Marks, Designs and Utility Models but did not deal with copyright. The rights granted under copyright include artistic, literacy and musical works. The first international convention addressing copyright was “The Berne Convention of 1886’, to which India is one of the members, among 120 States. In the year 1947, the General Agreement on Tariffs and Trade (GATT) came into existence, thereby regulating the international trade. During 1980s, multi national corporations and international agencies started emphasizing to include intellectual property as a subject of discussion at GATT, as the developed countries were curious to get statutory protection for their patents, trade marks and designs, which were largely being infringed by developing countries. The developed countries had spent huge funds on research and development of their products such as formulae of drugs, which the developing countries were copying for commercial benefits without being liable for damages. The developed countries could not protect their inventions/innovations. In the absence of global legal provisions, each country either followed its own statute or had no statute at hand. After the sustained efforts for a universal IP Law, the developed countries in the year 1986 could get some relief, when the Uruguay Round of negotiations began under the GATT, which concluded in Marrakesh on April 15, 1986, with the signing of the ‘Final Act’. Including TRIPS, this Final Act, contained 28 agreements. One of the decisions taken in Marrakesh was the formation of World Trade Organization (WTO), which is a package deal. The member nations have to accept the entire package of agreements in toto and can not defy the provisions without quitting the WTO. PATENTS
  4. 4. Patent means the grant of some privilege, property or authority made by the government to one or more individuals. The instrument by which such grant is made is called as ‘Patent’. The term ‘Patent’ in India acquired statutory status after the enactment of the ‘The Patents Act’ in 1930, which was last amended in the year 2005. The Patents Rules 2005 were amended in the years 2005 and 2006. By grant of Patent, an invention becomes the creation of intellect applied to capital and labour for producing some new and useful thing. Such creation is termed as the exclusive property of the inventor. The patentee enjoys the exclusive proprietary right in the same manner as owner of any other moveable property possesses. The Patent Law guarantees the exclusive right of a patentee to gain commercial mileage out of his invention. In the case of Bishwanath Prasad Radhey Shyam Vs Hindustan Metal Industrial (1979) 2 S C C 511, the Hon’ble Supreme Court of India held,” the object of patent law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent office, which after expiry of the fixed period of the monopoly, passes into the public domain”. The principles governing the Indian Patent law includes, that the patentable invention must be a new product or process, must be non-obvious, must be useful and must be capable of industrial application. However, certain inventions despite possessing the aforesaid conditions cannot be patented under the Act, if the same are injurious to public health, morality or interest; are the duplication of known properties or are related to atomic energy, etc. The Indian Patents Act, 1930, does not recognize patent protection for computer programmes. The protection of computer programmes and computer data in India is however covered under Section 2 (O) of the Copyright Act of 1957.
  5. 5. The use of the invention by a person other than the patentee constitutes infringement of the patent and is as such illegal. The Act prescribes the legal relief to the patentee against infringement through civil suits to get the reliefs of:- (a) Interlocutory Injunction. (b) Damages. (c) Account of profits. According to the Indian law, the burden of proof in case of infringement is not on patentee in case the subject matter of the patent is a process for obtaining a new product or if there is a likelihood that the identical product is made by the process of the patentee. The Controller of Patents can revoke a patent at any time if the criteria like the novelty are not fulfilled. The violations of the prescribed conditions and giving false information in the disclosure forms may cause the termination of the patent. In India, although the Act provides the exclusive right of use to the patentee for commercial gain, but the Central Government may acquire the patents from the patentee and use any invention even without paying any royalty or compensation to the inventor. For example, the Central Government may acquire the invention of a medicine for the purpose of distribution in a dispensary or hospital. The Government of India has recently formulated the draft guidelines relating to the latest amended Patent Act, 2005. As per the guidelines, non inventions, inventions, relating to atomic energy, or those contrary to public order or causing serious prejudice to human beings, animals, health or environment will not be patentable. The draft guidelines also aim that individual researchers, inventors, industries and Research and Development organisations get familiar with the patent system in India. The guidelines provide for a user-friendly system for obtaining and maintaining patents under the existing legal system. The process of preparing genetically modified organisms is patentable, but the clones and new variety of plants are not patentable.
  6. 6. In India, there is a Compulsory Licensing System in place since the inception of the Patents Act, 1970. As per the provisions of Section 84 of Patents Act, 1970, the term of patent can cut short by the grant of compulsory license or `License of right’ to any person, in case the patented invention has not met the reasonable requirement of the public at a reasonable price. The provision is intended to provide for necessary and adequate safeguard for the protection of public interest, taking into account the specific needs of a developing country, like India. The provision of `Compulsory License’ is aimed to avoid the misuse of an Exclusive Marketing Right by the right holder, in compliance with Article 31 of TRIPS. There are however certain implications of TRIPS for India as India being a member of the World Trade Organisation (WTO) has to implement the TRIPS Agreement in totality. There have been allegations by international community that while the laws in India on trade marks, copyrights, designs are in conformity with the provisions of the TRIPS Agreement, but there is absence of effective patent protection in the pharmaceutical sector and that India has failed to meet its obligations required under Articles 70.8 and 70.9 of the TRIPS Agreement. The fact remains that India is a social welfare state and the Patent Act of 1970, was designed to ensure that the patent rights relating to pharmaceuticals and agricultural products could be regulated by the government. The aim for excluding the above was to keep the prices low and to ensure the adequate supply and growth of Indian industry. Other apprehensions included the threat to the traditional knowledge of Indian medicines like Unani and Ayurvedic as these medicinal products have existed in our country for centuries without anyone exercising a monopoly right over them. As such, whatever may have been the constraints, India needs to amend the Indian Patent Act, 1970, in accordance with the obligation imposed by the TRIPS Agreement. However, to counter such allegations, it is to communicate that the Government of India with the aim to meet its obligations under Articles 70.8 and 70.9, on 31st December, 1994, promulgated an Indian Patents (Amendments) Ordinance, 1994, to extend the provisions, to receive product patent applications in the field of pharmaceutical and agricultural chemical products and also for grant of exclusive marketing rights. Pursuant to
  7. 7. this measure, the Indian Patent Office has been receiving product patent applications in these fields. India has established a mail box system through administrative instructions. Numerous applications have already been filed in this mail box system. Many of the filed application belong to US companies. However, the USA filed a complaint against India before WTO Dispute Settlement Body, objecting that India is under obligation to the TRIPS Agreement to amend its Patents Act, 1970, to provide the legal status to the system of mail box applications and that instead of amending the law, India had put in place mail box system by an administrative order, which too lapsed on 26th March 1995. Whereas, India maintains that mail box applications have a proper legal status under Indian Law and that India was free to choose an administrative method pending the amendment in legislation. In addition to the above legislative provisions, the Government of India has taken several measures to streamline and strengthen the intellectual property administration system in the country. For this purpose the implementing authority was constituted having office of the Controller General of Patents, Designs & Trade marks, which is situated at Bhoudhik Sampada Bhavan, Antop Hill, Mumbai, with regional offices at Chennai, New Delhi and Kolkata. Whenever the monopoly rights of the patentee are violated, his rights are secured again through judicial intervention. Section 104 of the Act provides that a suit for infringement shall not be instituted in any Court inferior to a District Court. In case the defendants make a counter claim for revocation of the patent, the suit is transferred to the High Court for adjudication as the High Court has the jurisdiction to try cases of revocation, Section 104-A, of the Patents (Amendment) Act, 2002 provides for burden of proof in case of suits concerning infringement. The provisions of the Code of Civil Procedure (CPC) govern the procedures for conducting a suit for infringement. The suit can only be instituted by a person who has a right in the patent, such as, the patentee, the exclusive licensee, a compulsory licensee, assignee and the co-owners of a patent. The onus of establishing the infringement is on the plaintiff. For getting interlocutory injunctions in a patent case, the plaintiff has to show a prima-facie case of infringement for
  8. 8. justifying the grant of an injunction, which is not an easier task. Whereas, it is comparatively easy for the defendant to establish defence sufficient to prevent the grant of such an injunction for variety of reasons. The Madras High Court in case of Wockhardt Ltd. Vs Hetero Drugs Ltd; (2006) 31 PTC 65, laid down the following principles for granting the interim injunction:- (a) Whether the plaintiff has a prime facie case? (b) Whether the balance of convenience is in favour of the plaintiff? (c) Whether the plaintiff would suffer an irreparable injury, if his prayer for introductory injunction is disallowed? The Supreme Court, in the case of Morgan Stanlex Mutual Fund Vs Kartick Das (1994) 4 SSC 225, laid down the following principles:- (a) Whether the refusal of injunction would involve greater injustice than the grant of it would involve. (b) The Court would expect a party applying for injunction to show utmost good faith in making the application. (c) The general principles like prima facie case, balance of convenience and irreparable loss would also be considered by the Court. There is a provision under the Patents (Amendment) Act, 2002, to practice as a Patent agent. A person desiring to be registered as Patent Agent has to apply with the Head Office or the Patent Office, as per the procedure specified in Patent Rules, 2003. A Patent Agent is entitled to practice before the Controller and prepare all documents, transact all business and discharge such other functions that may be prescribed by the controller. TRADE MARK In India, the Trade Mark law has been evolved to recognize and protect the proprietary right of a trader to use a mark for his goods or services. The law is contained in the Trade Marks Act, 1999, repealing the earlier Trade and Merchandise Marks Act, 1958. However, there are certain principles, on which these laws have been devised.
  9. 9. (1) Absolute proprietary on any word or symbol can not be bestowed upon to a trader, vide Section 28 (3) of the Trade Marks Act, 1999. (2) Surnames and geographical names are not register able as trade mark. However, there are 28 Indian products registered with the Geographical Indications (GI) Registry, such as Darjeeling tea, with exceptions under the Geographical Indications of Goods (Registration and Protection) Act, 1999. Similarly, a surname can be registered upon proof of its distinctiveness. (3) No trade mark is to be registered if the same is against public interest. (4) According to Section 47 of the Act, the trade mark should remain in constant use. The non-use of the same may cause its removal from the Register. (5) Like other property, the trade mark is also a form of property, which can be assigned and transferred to other person or party. (6) A person using a trade mark without registration will be given preference in respect to the monopolistic rights if he has been using the same trade mark prior to the use by another person who has got its registration. (7) The trade mark under the Law does not only protect the interest of the trader, but also provides the opportunity to others to file opposition to the registration of a trade mark after it has been advertised in the Trade Mark Journal. Even in certain cases, objections can be made after the mark has been registered. A Register of Trade Marks is maintained under Section 6 of the Trade Marks Act, 1999 and the Registrar is the sole authority in this respect. The particulars of registration under Rule 59 (2),
  10. 10. include, the names, addresses and description of the proprietors, notifications of assignment and transmissions as well as the names, addresses and description of registered users, conditions, limitations and such other matters relating to the registered trade marks. However, the phenomenon of registration is not the absolute right of the prospective user. Under Section 9 of the Trade Marks Act, 1999, the authorities can refuse the registration of trade mark on various grounds such as the trade marks devoid of any distinctive character or the trade marks which consist exclusively of indications which have become customary in the current language or established practices of the trade or if it is of such nature as to deceive the public or cause confusion, etc. In India, the trade mark is protected against infringement through:- (i) Civil Remedies In case the instances of infringement occur, the Civil Court, not lower than the District Court can be moved for grant of interlocutory injunction, Anton Pillar Orders, damages and account of profits. The provisions for grant of injunction are contained in Section 36 to 42 of the Indian specific Relief Act, 1963 and Order XXXIX Rule 1 & 2 and Section 151 ( Inherent Power of the Court) of the Code of Civil Procedure,1908. (ii) Criminal Proceedings Action can be initiated against the person causing infringement in a criminal court. However, under the law both actions i.e. civil and criminal can be initiated simultaneously. Under the civil law proceedings, the plaintiff seeks relief for himself, while under the criminal law proceedings the complainant seeks award of punishment to the infringer. (iii) Administrative Remedies At a point of time when the Trade Mark Registry is in the process of considering the grant of a trade mark, the opposition of the registration of deceptively similar type of a trade mark, can protect the trade mark by stopping the
  11. 11. proceeding of the registration. Even if the trade mark has been registered through deceptive means, the same can be removed by the Registrar. According to Indian laws, infringement of a trade mark constitutes when a person other than the registered proprietor or permitted user of the trade mark in the course of trade, in relation to the same goods or services for which the mark is registered, uses the mark or makes a deceptively similar type of mark. The courts in matters where infringing marks are identical with the registered trade mark and the goods and services are also identical, presume that such mark is likely to mislead and confuse the general public. For initiating action against infringement, the following conditions must be fulfilled:- (a) The Complainant should be a registered owner of a trade mark. (b) The respondent must use the similar mark deceptively. (c) The use must be in relation to the goods of the plaintiff. (d) The use by the respondent must be in the course of trade. It will be pertinent to mention a few Court rulings for protections of trade marks against infringement. In a case, Vidya Bhushan Jain Vs Collector of Customs, (2006) 32 PTC 480 (Mad), the writ petition was filed for issuance of a writ of mandamus, directing the respondents to pass orders on the representations dated 30th October 2004 and 2nd February, 2005, to strictly enforce the bar contained in Sections 29(6) and 140 of the Trade Mark Act, 1999, and consequently direct them not to permit import of any goods infringing the registered trade mark ELFY of the petitioner in any manner. The respondents were directed to consider the said representation on merits and in accordance with the law. In another case, (PTC 1996, 567) the Plaintiff under the registered trade mark “Lakme” was selling the cosmetic products, while for the same type of products, the defendant was using the trade mark “Like-me”. The Court granted permanent injunction on grounds that there was striking resemblance between the two words, which are also phonetically similar.
  12. 12. In a case, (PTC 1995, 389) Plaintiffs were the bonafide manufacturer of tooth paste `Colgate’, whereas, the defendants used the mark `Collegiate’. The mark, `Collegiate’ was restrained through injunction, on the grounds that the mark was phonetically identical and the deceptively similar letters in white with red background create confusions in the minds of customers. In SIA Gemes and Jewellery Pvt. Ltd., Mumbai Vs SIA Fashion, Mumbai, (AIR 2004 Bom10), the defendants were using Plaintiff’s trade name “SIA”. The shops of the Plaintiff and the defendant were in the same vicinity. The Court ruled that a suit by Plaintiff for an injunction restraining the defendant from passing off their goods as those of the plaintiff by using the trade name SIA in the course of trade, is maintainable, even though the word SIA is the name of Goddess Sita, which is a common name in India. Still the trade mark “SIA” is distinctive for the purpose of passing off action. In Satyam Infoway Ltd Vs Sifynet Products Pvt. Ltd. (AIR 2004 SC 3540), the Hon’ble Supreme Court of India, ruled, a passing off action, as the phrase “Passing Off” itself suggests, is to restrain the defendant from passing off its goods and services to the public as that of the plaintiff. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The statutory authority under the Trade Marks Act, 1999, is the Joint Registrar, Trade Marks, in respect of functions of Registration, situated at Mumbai, supported by Deputy Registrar and Assistant Registrars sitting at Kolkata, New Delhi, Chennai and Ahmedabad, who exercise the powers as the Registrar delegated to them. In addition to the above, the Central Government established the Intellectual Property Appellate Board, which sits at Chennai by a notification with effect from 15th September, 2003, for jurisdiction powers and authorities. The Fourth Schedule of the Trade marks Rules, 2002, has laid down the classification of goods and services. In all there are 34 classes of goods as well as 8 classes of services mentioned in the schedule. The Intellectual Property Appellate Board have the same power as are vested in a Civil Court under the Code of Civil Procedure,
  13. 13. 1908, while trying a suit in respect of receiving evidence, issuing summons to witnesses, requisitioning any public record and any other matter which may be prescribed. Any proceeding before the Appellate Board is deemed to be judicial proceeding within the meaning of Section 196 of the Indian Penal Code, 1860 and the Appellate Board is deemed to be a Civil Court for the purposes of Section 195 of the Code of Criminal Procedure, 1973. The Intellectual Property Appellate Board being empowered under Section 92 of the Trade Marks Act, 1999, made the Intellectual Property Appellate Board (Procedure) Rules, 2003. These rules came into force wef December 5, 2003. The rules provide procedure for appeal, payment of fees, documents to be attached with application, adjournments for hearing, orders of Appellate Board and the relevant forms. COPYRIGHT Copyright is the intellectual property right, which a person acquires in a work, through his intellectual labour is called his `Copyright’. The primary objective of a copyright law in India is to protect the fruits of a man’s hard work, labour, creativity and skill from being taken away by other people. The statutory definition of copyright in India vide Section 14 of the Copyright Act, 1957, means the exclusive right to do or authorize others to do certain acts in respect of :- (a) Literary, dramatic or musical works. (b) Artistic work (c) Cinematographic film (d) Sound recording In India, Copyright Act was passed in 1914. It was a replica of the British Copyright Act of 1911, which was suitably modified in context of British India. The prevalent Copyright Act was passed in the year 1957 and was amended by Copyright (Amendment) Act, 1999. The requirement for protecting the copyright is that the author must have created the work with “sufficient judgment, skill, labour and capital”. However, the owner of a copyright has no
  14. 14. monopoly in the subject matter. Others are at liberty to produce the same result (from the common source), provided they do so independently and their work is original. A literary work need not be of literary quality. Even a railway guide or a list of stock exchange quotations qualifies the test of a literary work, provided sufficient labour has been involved in compiling the same. In India, there exists a comprehensive law for protecting the copyright. Some interesting but complex instances are mentioned below. In G leeson Vs Denne, (1975 RPC 471), it was held that if one works hard, walking down the streets, taking down the names of people who live at houses and makes a street directory in the result of that labour, this will justify in making claim to copyright. In Blackwood Vs. Parasurama, (A I R 1959 Madras 410), the Court ruled that a translation of literary work is itself a literary work and is entitled to copyright protection if it is original. The judgment or order of the Courts are exempted from copyright protection. Any person can reproduce or publish them unless such reproductions or publication has been specifically prohibited by the concerned judicial authority. Legal reporters and lawyers generally collect the judgements of the Courts for publishing in Law report and newspapers. However, if the reporters or lawyers also supply head notes prepared by them alongwith the reported judgements, these reports will then be covered under copyright. Historical facts do not attract the provisions of the copyright as the history books are merely the source of information for the readers. However, if the manner of presenting the information is unique, it will be considered as an original literary work. Similarly, a lecture, address, speech or sermon will be entitled to copyright only if it is reduced to writing before its delivery. With regard to letters, copyright subsists in private, commercial and government letters as original literary works, However, in the case of a private letter, the author is the owner of copyright, whereas, in the case of commercial and government letters,
  15. 15. written by employees in the course of employment, the copyright belongs to the employer, according to the Section 17 (a) of the Copyright Act. The catalogues made by manufacturers listing their products are also capable of copyright protection. Copyright also subsists in a dictionary for the arrangement, sequence or idiom format of a dictionary which can not be appropriated by another. Dictionaries are Compilations and compilations are included in the definition of literary work. Computer programmes are considered to be literary works and are entitled to copyright protection. Similarly, programme schedules of television and radio programmes come in the ambit of compilations and are therefore protected under copyright. In addition to the above, question papers set for examination are covered under copyright as the person who sets the question paper invests Labour, skill and time on its preparation. There have been several judgments of the Courts in which this matter was reiterated, viz. Jagdish Prasad Vs Parmeshwar Prasad, (A I R 1966 Pat 33); Agarwala Publishing House Vs Board of High School and Intermediate Education, UP, (AIR 1957, A 119) and University of London Press Vs University Tutorial Press, (1916) 2 Ch 601. A lot of labour is involved in the preparations of thesis and dissertation by the students doing research, which too is protected. In an interesting case, Fateh Singh Mehta Vs. Singhal, (1990) IPR 69 Raj, the guide of the researcher copied material from his own student’s thesis to prepare his own Ph.D thesis. The Court granted interim injunction against awarding Ph.D degree to the guide. Parody and Satire, which are the forms of literary criticism are covered under copyright protection. On the contrary, news published in the newspapers are not covered under copyright but only the manner and style of expression in which it is written. Hence, there is no violation of copyright if a person takes up the matter of the news and rewrites the same in his own words. In another interesting case, Indian Express Vs. Jagmohan, ( AIR 1985 Bom 229 ), the defendants made a movie based on the series of articles published by the plaintiff, in his newspaper, narrating the nightmarish phenomenon of flesh trade prevalent,
  16. 16. which was proved by newspaper’s journalist by purchasing a woman, named Kanta. However, the Court ruled that the stage play on the theme does not constitute the infringement of the copyright. Copyright in India protects the original musical work under the provisions of Section 13 (1) (a). The song if written by the same music composer of the song will get the umbrella of copyright. The remix songs are not an infringement of the copyright of the original musical composition as it comes under the permissible definition of adaptation. With regard to engraving, etching, lithographs and woodcuts, the law recognizes it as art, provided the works are not based on photographs. Hence, the act of copying from an engraving is an infringement of a copyright but the act of copying the engraving produced from a picture is not infringement. A painting can be copyrighted provided the painter has created it as an original piece and not just a copy of another painting. Similarly, the drawing, be it engineering or mechanical or a map, or a plan are protected under copyright, provided they qualify the criteria of originality. In India, the Law is quite complex with regard to the issue of photographs’ copyright. Besides prescribing the conditions of originality, skill and labour before recognizing the `photograph’ as an artistic work, it measures the grant of copyright in a microscopic manner. A photographer’s original photo of Taj Mahal taken at a particular angle is a subject matter of copyright. Whereas, the Law does not restrict another person to take the photograph of Taj Mahal in the same manner, style and angle. Similarly, taking photograph or Photostat copy of a photograph does not constitute the violation of copyright. In Associated Publishers Vs. Bashyam, (AIR 1961 Mad 114), based on two photographs a portrait of Mahatma Gandhi was made. The Court ruled that a portrait based on photographs will be copyrighted, provided it produced the results different to photographs. Further, the law says that when a person or group of persons are asked to pose for a photograph, the publication of the same photograph would not be possible without the prior permission of the posers in question. No such consent is required in case
  17. 17. of a crowd photograph. However, most of the events, conferences and functions covered by the media, photographs of posers including that of elites, ministers and other dignitaries are published, but who takes the formal permission. This activity can only be shielded with the rule of `implied consent’ in the absence of an `expressed consent’. In India, there are three kinds of remedies against infringement of copyright, viz:- (a) Civil Remedies The civil remedies include, injunction for instantly stopping the alleged infringement, damages in the form of monetary loss; account of profit, viz. the profits that the defendant wrongfully earned by selling the infringed copies and damages for converting the original form of author’s work. (b) Criminal Remedies The complainant can initiate criminal action against the infringer, resulting in fine and imprisonment. (c) Administrative Remedies Besides, the judicial intervention, an administrative remedy is also available to the Complainant. This complaint is made before the Registrar of Copyrights with the aim to ban the import of infringing copies, into India and to seek the delivery of the confiscated infringing copies. DESIGNS The then British Government in the year 1911 passed Designs Act, which was subsequently amended extensively. The Designs Act, 1911, was repealed by the Designs Act, 2000. A design to be registered under the Designs Act, 2000, must possess some shape, configuration, pattern or composition of lines or colours. Section 5 of the Act lays down that any person claiming himself the owner of a new or original design that has not previously been published in India can apply for the registration of the design. When a design is registered, the registered owner of the design shall have the copyright of the design for 10 years, extendable for renewal for another five years, totaling 15 years. Infringement of a copyright in a design is called as `Piracy of the Design’. As per the Section 22 (2) of the Act, any person guilty of piracy is liable to a fine of a sum up to 25,000 rupees. The registered proprietor is also at liberty to file a suit for recovery of
  18. 18. damages or for injunction, provided that the total sum recoverable shall not exceed 50,000 rupees. The aggrieved party has at hand the judicial remedy for infringement of a registered design by filing a suit for damages or for injunction. Section 22 (2) stipulates remedy in the form of payment of a certain amount by the person who has pirated the registered design. A few citations are mentioned to show the judicial trend in India in respect of Designs Act, 2000. In officine Lovato SPA Vs. Pravinbhai Jagjivandas Mehta, (2006) 32 PTC 569, the Design No. 181093, was registered on December 17, 1999, in the name of Pravinbhai Jagjivandas Mehta. M/s Officine Lavoto SPA, moved an application to cancel the registration of the above mentioned design, vide Section 19 of the Act, on the ground that the design was not new or original as the same had been published in India and abroad prior to the date of registration. The directions were given to cancel the registration of the design. In Hindustan lever Ltd., Vs, Nirma Pvt. Ltd., (AIR 1992 Bom 195), the plaintiff filed a case for injunction restraining the defendant from using the impugned carton containing label relating to soaps, alleging infringement of their registered design and passing off. It was however contended by the defendant that the said label was a design, capable of being registered under Designs Act and copyright of the said label had ceased to be operative by the provisions of Section 15 (2) of the Copyright Act , 1957. The Court held that the label put on a carton cannot be regarded as a design within the meaning of Section 2 (5) of the Designs act, 1911. In Dabur India Ltd Vs. Emami Ltd., (2006) 32 PTC 125, the plaintiff alleged the violation of interim injunction. The similarity of the bottles of products of the parties had restrained TV commercials. The defendant stated that they have changed the bottles and apologized for the same. The apology was accepted and the application was disposed of. It has been proven beyond doubt that India has got firm laws besides firm conviction to tackle and subdue the infringement of intellectual property rights, which is a tortuous invasion of property. Since time immemorial India has been the golden
  19. 19. treasury of multi-dimensional wisdom, covering not only the physical and mental development but also the economic, technological, scientific development as well as the development of legal system and law making. India view seriously that a solid, broad-based education in law is of vital importance to understand the intricacies of `Intellectual Property’ in the significantly changing and challenging circumstances, although IP rights as a technical subject dates back to the era of industrial revolution and entrepreneurship. In India, Intellectual Property Rights were recognized and introduced in the year 1884, with the passing of Indian Trade and Merchandize Marks Act, 1884, followed by several such laws. However, after coming into existence of World Trade Organisation in the year 1994, India to meet the international obligations amended and enacted new Laws. The post WTO formation laws include:- (a) The Geographical Indications of Goods (Registration and Protection) Act, 1999. (b) The Trade Marks Act, 1999. (c) The Semi Conductor Integrated Circuits Layout design Act, 2000. (d) Copyright (Amendment) act, 1999. (e) The Designs Act, 2000. (f) The Protection of Plant Varieties and Farmers Rights Act, 2001. (g) The Biological Diversity Act, 2002. (h) Indian Patent (Amendment) Act, 2005. (i) The Drugs and Cosmetics Act. The development of IPR laws is synonymous to sustainable economic development. Intellectual property law is the fast growing field of legal system worldwide. There are four main factors behind this unprecedented and rapid evolution and the accompanying massive upsurge in the use of intellectual property system, viz. the advent of the Internet, unprecedented scientific and technological advancement, the emergence of intangible assets, such as knowledge, information and innovation, as the main drivers of economic progress ; and the growing interdependence of Nations, in the result of internationalization of Commerce and Trade.
  20. 20. The negative side of this development is the recurrence of intellectual property rights laws violation worldwide. Trade in pirated and counterfeit goods costs the global economy $650 billions dollars annually, in addition to loss of millions of jobs. The Federal Bureau of Investigation (FBI) describes counterfeiting as “the crime of the 21st Century”. It is heartening to note that in India, judiciary has come down heavily to break the back of those who break IPR Laws. The judges have set new standards in dealing with India’s intellectual property – related (IPR) offences. They are ordering higher punitive damages, imposing litigation costs on defendants and even asking them to do community service and other socially useful work as an innovative way of punishment. To cite an example, in a case between Dharampal Satyapal Group, manufacturers of chewing tobacco Tulsi Zarda and the maker of the knock – off Tara Zarda, the offender was asked to install 100 spittoons at the Osmania Hospital in Hyderabad apart from paying damages. The eternal vigilant judiciary in India is the custodian of intellectual property rights and the other two arms of the government, the executive and the legislature are constantly extending their support by preventing offences and making appropriate excogitated laws to curb the violations. India is socially active Nation, which is committed to protect the interests, lives and property of all its citizens and of those who are associated to our country.