PATENTS, TRADEMARK AND INDUSTRIAL DESIGN AS A PART OF INTELLECTUAL PROPERTY RIGHT WITH REFERENCE TO RELEVANT CLAUSES OF TRIPS

1. PATENTS, TRADEMARK AND
INDUSTRIAL DESIGN AS A
PART OF INTELLECTUAL
PROPERTY RIGHT WITH
REFERENCE TO RELEVANT
CLAUSES OF TRIPS

2. INTELLECTUAL PROPERTY RIGHTS
Introduction Of Intellectual Property:
• When ability of human mind to think, create and
express gives birth to an invention or innovation then
it is called as an Intellectual Property.
NEED:
• To protect the invention or innovation from being
copied by some one else.
• People should respect the creative and innovative
work of the creator.
• Creator can get social and economic benefits.
• To increase investment in R&D and FDI inflow.

3. OBJECTIVES OF INTELLECTUAL
PROPERTY RIGHTS
• IPR Awareness:
With rapid globalization many companies might plan
to expand their businesses offshore. In such cases it
is very important for them to understand how they
can protect their IPs at an offshore location
• Generation of IPRs:
Along with the aspect that IPRs should have
economic value, Investment in R&D will increase the
generation of IPRs

4. • Commercialization of IPR:
Value for IPRs through selling or transferring
rights
• Fighting against IPR infringement:
It is important to fight against IPR infringement
because the IPR holder puts in efforts to invent or
innovate also infringement may cause loss to him.
• Human Capital Development:
To strengthen and expand human resources,
institutions and capacities for teaching,
training, research and skill building in IPRs

5. P
JOURNEY OF INDIAN IPR ACTS
Patent Act
1970
Patent Act
(Amended)
: 1999
Trademark
Act: 1999
Designs
Act: 2000
Patent Act
(Amended):2002
Patent Act
(Amended):
2005
Trademark Act
(Amended):
2010
Patent Act and
Trademark Act
(Amendments):
2017

6. National Intellectual Property Organisation
• The answer is National Intellectual Property
Organization (NIPO). NIPO is an initiative with a vision to
make India Intellectual superpower.
Functions Of NIPO
• To develop policy in the area of IP, harnessing
Intellectual Property assets and knowledge to generate
economic wealth.
• To encourage infrastructural development for
registration of IPRs

7. World Intellectual Property Organization
• World Intellectual Property Organisation was
established in 1967 with a mission of development of
balanced IP system.
 The main functions of WIPO are:
• To promote world wide protection of both industrial
IP and copyrights
• To deliver quality services in global intellectual
property system

8. TYPES OF IPRs IN INDIA
• Patent: Patent is granted for invention of a product
or process which has industrial application.
• Design: Design refers only to shape, size, colour
combination or pattern applied to two or three
dimensional article.
• Trademark: It is used to distinguish between
different products and services. Trademark can be
sign, symbol, words etc.
• Geographical indication: A particular product has a
particular geographical origin then it is called
geographical indications. eg. Paithani (Saree)
• Copyrights: Rights given specifically to music, literary,
artistic work’s creators

9. PATENT
 Patents are rights that are given to an inventor of a
product or a process.
 The requirements and rights of the patent are
determined by the national law.
 Patents must be new, inventive, and have an industrial
application.
 Governed by the Patent Act 1970.

10. OBJECTIVES OF A PATENT
 To encourage inventor.
 To protect the inventor’s interest.
 To encourage research and development.
 To ensure fair trade practices.

11. THE PATENT ACT, 1970
 Lays down the rights and gives advantage to the
patentee.
 The Patents Act 1970, along with the Patents Rules
1972, came into force on 20th April 1972, replacing
the Indian Patents and Designs Act 1911.
 The patents act has been amended several times in
1999,2002,2005 and in 2017

12. PRINCIPLES UNDER PATENT LAW
 Novelty: The invention must always be new.
 Useful: Utility means an invention must have a purpose.
 Non obvious requirement: The invention must be not
considered obvious in the field of invention to qualify as
a valid invention.
 Invention must be fully disclosed: The adequate
disclosure, properly confer the power to exclude others
from practicing the patented technology.

13. TYPES OF PATENTS
 Utility Patents: A Utility patent is an exclusive right given
for an invention, which allows the right holder to prevent
others from using the protected invention without his
authorization for a limited period of time.
 Design Patents: A design patent is a form of protection
which allows an inventor to protect the original shape or
surface ornamentation of a useful manufactured article.
 Plant Patents: Plant patents are only available for
plants that are new, distinctive and asexually
reproduced. A person can only obtain a plant patent
if he or she has been able to asexually reproduce the
plant.

14. PATENTABLE ITEMS
Patentable
Items
Manufacture Process
Composition
Of Matter
Machine

15. TERM OF THE PATENT
 According to the section 53 of the Patents Act 1970,
the term of the patent in India is 20 years from the
date of filing of patent application.
 Patents have to be renewed every year by paying
certain fee every year or in lump sum.
VALIDITY
 Patents are territorial rights hence only applicable in
the country where it is granted unless an
international application is made.
 Under the Patent Cooperation Treaty the term is 20
years from the international filing date.

16. WORLDWIDE PATENT
A “worldwide patent” or a “global patent” does not
exist. Ultimately one needs a separate patent for each
jurisdiction.
International “PCT” Patent Applications
An international “PCT” (Patent Corporation Treaty)
application is filed. It provides an 18 month
international search and an examination process which
gives you an official report of the patentability of your
invention.

17.  THE
REGISTRATION
PROCESS

18. LICENSING OF PATENT
There are two types of patent licenses:
•Exclusive Licenses: These transfer all ownership rights
to a licensee. The licensor still owns the title.
• Non-Exclusive Licenses: A non-exclusive license also
grants the right to use a patent, however, you can
grant non-exclusive license to several users
simultaneously

19. LICENSING OF PATENT
Advantages of Patent Licensing
•Limited Risk: Patent licensing lets you transfer the risk
to another party.
• Global Distribution: Patent licensing can introduce
your invention to a bigger market.
•Limited Time Period: You don't have to give away the
rights to your intellectual property forever. You can
include a time period in the license.
•Eliminating Patent Infringement: This option gives a
competitor the right to your intellectual property, and it
gives you the right to profit at the same time.

20. RIGHTS OF THE PATENTEE
The rights of the patentee under the Act are :-
• To exploit the patent.
• To license the patent to another.
• To assign the patent to another.
• To surrender the patent to another.
• To sue for the infringement of the patent.

21. THE CLAUSES OF TRIPS RELATING TO PATENTS
 Article 27.1 - The TRIPS Agreement requires Member
countries to make patents available for any
inventions, process or product, without
discrimination.
 Article 28 - The rights that are covered by a product
patent include making, using, offering for sale,
selling, and importing for these purposes.
 Article 33 - The term of protection available will not
end before the expiry of the patent which is 20 years.

22. CASELETS
• CELLO
• Ericsson v Xiaomi
CASE STUDY
• APPLE Inc. v SAMSUNG Electronics Co.

23. INTRODUCTION
Brand or Logo
 An idea or a concept cannot be
trademarked
Uniqueness
Reputation of the company

24. NEED OF TRADEMARK
• Helps to prevent Unfair competition
• Helps to avoid confusion and loss of reputation,
customer base and loyalty.

25. ADVANTAGES OF TRADEMARK REGISTRATION
• Exclusive Rights: The owner can use the same for all
the products falling under the respective class
• Builds trust and Goodwill: It helps in creating
permanent customers who are loyal and always opt
for the same brand
• Differentiates Product: It gives the product an
identity which is different from that of the existing
competitors.
• Creation of Asset: Registered trademark is a right
created which can be sold, assigned, franchised or
commercially contracted.

26. ADVANTAGES OF TRADEMARK REGISTRATION
• Use of ® symbol: Once the trademark is registered the proprietor can
use the ® symbol on the logo stating that it is a registered trademark
and no one can use the same trademark.
• Protection against infringement: No competitor or other person can
use the word mark or logo registered by proprietor under trademark.
• Protection for 10 Years at low cost: Online Trademark registration
does not include much cost. Once the proprietor registers the
trademark he has to just pay the maintenance cost and renewal cost
which is after 10 years of registering the trademark.
• Global Trademark Registration: The trademark registered in India can
be used as basis of registration there.

27. WHO CAN REGISTER FOR A TRADEMARK
• An Individual (Person)
• Joint Owners
• Proprietorship Firms
• Partnership Firm
• Indian Company
• Foreign Company
• Trust or Society

28. TRADEMARK ACT 1999
• Defined under section 2 (zb)
• Includes a device, brand, heading, label, ticket,
shape combination of colours.
• Trade and Merchandise Act 1958 replaced by Trade
Marks Act 1999

29. TRADEMARK (AMENDMENT) ACT - 2010
• Passed on 21 September 2010
• It brought Amendments in the act prescribed under the
Trademark Act, 1999
• Registration of Trademark should be done within 18 months
• Increased time period from 3 months to 4 months for filling
the notice of opposition
• Allows Transfer of Trademark
• Introduced Madrid protocol

30. MADRID PROTOCOL
• It enables to register trademark by a single application,
providing applicability in multiple countries
• Single application in one language.
• One fee structure in on currency for members
• 110 members, 117 countries
• Renewal after 10 years for next 10 years.

31. AMENDMENTS IN 2017
• Defined Start-up/Small enterprise
• Turnover less than INR 25
Crores
• Not completed 5 years
Start-up
• For Manufacturing –
Investment not exceeding
INR 10 crores
• For service less than 5 crores
Small
Enterprise

32. Amendments in 2017
1. Registration Fees Increased
2. Concessional Registration Fees
3. Expediting Trademark registration
4. Reduction in number of forms
5. E-services for communications

33. AMENDMENTS IN 2017
6. Well-known Trademarks
7. Applicant’s Affidavit for claiming “use”
8. Sound marks are made easier to register
9. Three-Dimensional marks are made registrable.
10. Reduction and limitation in the number of
adjournments

34. TYPES OF TRADEMARK
• Word Mark
• Product Mark
• Service Mark

35. •Collective Mark
•Certification Mark
•Shape marks
TYPES OF TRADEMARK

36. TYPES OF TRADEMARK
• Pattern Mark
• Sound Mark
• Colour Mark
• Tag line

37. Trademark
search
Trademark
application
Review Objection
AmendmentsAcceptance
Application
Canceled
Decision In
favor of
opposition
Statements
from parties
with evidence
Opposition Advertisements
Trademark
Registration
No Opposition
Decision In
favor of
Applicant
Renewal
(10 years)
Registration
Process

38. LEGAL ASPECTS OF TRADEMARK
 Infringement: Infringement is a breach or
violation of another’s right.
Passing Off: Passing off is used to protect the
goodwill attached with the unregistered
trademark.

39. CASELETS
 PayPal vs PayTm
London Dairy vs Londonderry

40. CLAUSE OF TRIPS
• Article 17:
Provide limited exceptions to the rights laid
down by a trademark
• Article 18:
Renewal should be done for 7 years or more.
• Article 20:
No special requirement for use of trade
marks

41. CASE STUDY
NANDHINI V/S NANDINI

42. INDUSTRIAL DESIGN
• Introduction: Industrial design rights are the part of
the Intellectual Property Rights which aims at
safeguarding the visual designs such as the
appearance, style, design of the industrial objects
such as spare parts, textiles, furniture, etc.
• Designs Act 2000: India’s extraordinary progress in
the field of science and technology made it
necessary to amend The Design Law in India which
was previously governed by the Design Act, 1911
but was later amended in 2000. There are 48
Sections, 48 Rules and 4 Schedules

43. CLASSIFICATION OF DESIGNS IN CLASSES
•Designs are required to categorize in separate classes in
order to provide for systematic registration.
•For the purposes of registration, articles shall be
classified as specified in the Third Schedule.
•32 CLASSES (31 Main classes and 1 Misc. Class as 99)
based on LOCARNO SYSTEM. Classes are further divided
into Sub-Classes.

44. ELIGIBILTY FOR REGISTRATION
• Any person can apply separately or jointly for the
registration of a design, here the term "person"
includes firm, partnership and a body corporate
• Application may also be filed and prepared through
an agent (power of attorney)
• Controller is the decision-maker

45. FINDING OUT WHETHER ANY REGISTRATION
ALREADY EXISTS
• Patent Office officials can help if applicant wants to
inspect previously registered designs
• Following documents required to find out whether
any registration exists of a design
a. If the registration number is known, Form No. 6 along
with the prescribed fees.
b. If the representation of the article or the specimen of
the article is filed (in duplicate), Form No. 7 along
with the prescribed fees

46. FLOW CHART OF
REGISTRATION PROCESS

47. THE TERM OF DESIGN
• Valid for period of 10 years from the date of registration
• Term is extendable further for 5 years by paying a
prescribed fee
ASSISTANCE FOR REGISTRATION OF DESIGN
• Design committee may be approached for previous
registration of design
• Application for registration of design either by the
applicant or agent

48. PRODUCTS BENEFITED
 Physical Products -
• Electronic Devices
• Packages and Containers
• Furnishing and Household Goods
• Jewellery
• Textiles
 Non-physical Products -
• GUI, Graphic Symbols, Logos

49. INFRINGEMENT AND PIRACY OF DESIGNS
• Design Infringement: Piracy involves the unauthorized
acquisition, reproduction, distribution, or performance
of a creative work.
• Penalties: The registered proprietor may bring a suit for
the recovery of the damages for any such infringement
against repetition of the same. Total sum recoverable
shall not exceed Rs 50,000/-
 CASE LAW:
• Dabur India Ltd. vs. Amit Jain , on 31 May, 2007
• Ampro Food Products vs. Ashoka Biscuit Works 26
September, 1972
 Case Study: The Honda case – Injunctive Relief in Industrial
Design in Malaysia

50. CLAUSES OF TRIPS
• Article 25.1 - Obliges members to provide for the
protection of independently created industrial designs.
• Article 25.2 - Taking into account the short life cycle and
sheer number of new designs in the textile sector.
• Article 26.1 - To grant the owner the right to prevent
third parties not having the owner's consent for copying
protected design.
• Article 26.2 - To provide limited exceptions to the
protection of industrial designs.

51. THANK YOU!!!