UNIT-III TRADEMARKS  &  COPYRIGHTS
<ul><li>What you will know?   </li></ul><ul><li>Trademarks & Copyrights </li></ul><ul><li>Trademarks: </li></ul><ul><li>- ...
 
Trademarks: <ul><li>A trademark or a service mark is any word, name, symbol, or device or any combination thereof adopted ...
Necessity of trademark registration <ul><li>Two critical functions:  </li></ul><ul><ul><li>i)  Provides assurance that goo...
Contd… <ul><ul><li>Organizations reap the rewards of their investment in developing and marketing a product without fear t...
Kinds of marks  <ul><li>Trade marks:  to distinguish goods </li></ul><ul><li>Service marks:  to distinguish services </li>...
Contd… <ul><li>Kinds of Marks:  Words, letters, drawing, colors, pictures, numerals, figurative elements, slogans, etc. </...
Trade mark: <ul><li>It is a word, name, symbol, or device or a combination thereof, used by a person or business entity , ...
Certification mark: <ul><li>It is a word, name, symbol, or device or a combination thereof, used by one  person or busines...
TRADEMARK REGISTRATION IN INDIA <ul><li>Who can register </li></ul><ul><li>Any individual, Corporate body or firm, claimin...
Contd… <ul><li>The Trademarks Act is also applicable to the protection of service marks, certificate marks and collective ...
<ul><li>To register the mark as a trademark, the mark must meet the following requirements: 1. It must be distinctive 2. I...
<ul><li>5. Geographical names connected with the reputation or quality of the goods or services for which registration is ...
Trademark Filing In India Process of filing a Trade Mark Application in India and Grant of    Trademark Registration Certi...
TRADEMARK REGISTRATION PROCEDURE: <ul><li>Trademark Search:  It is advisable to conduct a trademark search for the relevan...
<ul><li>Post Publication: </li></ul><ul><li>After the advertisement of the Mark in the Gazette, it is open for the general...
Contd… <ul><li>Documents/Information to Prove Distinctiveness </li></ul><ul><li>» The extent of advertisement with a few s...
Contd… <ul><li>  »  If the trade mark has been registered in several countries and the law of Trademark is similar to that...
COPYRIGHTS
What is software copyright? <ul><li>Software copyright is not essentially  different from any other sort of copyright . Ho...
Software copyright issues <ul><li>Copyright  protects only the computer program itself, and not the ideas behind the progr...
Contd… <ul><li>If an organisation is using illegal copies of software the organisation  may face not only a civil suit , b...
The various kinds of software infringement <ul><li>It is worth pointing out, at this stage, that there various forms of so...
<ul><li>Shareware abuse:  where software is licensed &quot;for evaluation purposes only&quot; or the like, it is copyright...
<ul><li>Illicit &quot;special offers&quot; from hardware vendors :  a hardware vendor sells a computer with software insta...
GEOGRAPHICAL INDICATIONS <ul><li>Many goods possess their peculiar properties due to their geographical origin. </li></ul>...
Features of Geographical Indication <ul><li>GI is not owned by a single owner </li></ul><ul><li>Ownership by association o...
<ul><li>Objective  :   </li></ul><ul><li>Customers must not be misled </li></ul><ul><li>Marking must not mislead </li></ul...
GOODS <ul><li>Agricultural  </li></ul><ul><li>Natural </li></ul><ul><li>Manufactured goods </li></ul><ul><li>Goods of Hand...
Goods   I. Agricultural Tea :  Darjeeling, Assam, Nilgiri & Kangra Coffee :  Monsooned Coffee  Rice :  Basmati, Nellore, S...
Goods <ul><li>II. Natural </li></ul><ul><li>Kolar gold </li></ul><ul><li>Illmanite and Monosite of Kerala </li></ul><ul><l...
Manufactured Goods (a). Textiles Pochampally Ikat,  Kasuti Embroidery,  Mysore Silk,  Bhavani Jamakalam,  Kanchipuram Silk...
<ul><li>b). Handicrafts   </li></ul><ul><ul><li>Aranmula Mirrors. </li></ul></ul><ul><ul><li>Bidari Ware. </li></ul></ul><...
Food Stuffs   <ul><li>Bikaneri Bhujiya. </li></ul><ul><li>Andhra Pickles. </li></ul><ul><li>Calicut Halwa. </li></ul><ul><...
Who Can Register? Any  association  of persons or producers or any organization or authority established by or under law  ...
BENEFITS OF GEOGRAPHICAL INDICATION <ul><li>It confers legal protection to geographical indications in India . </li></ul><...
 
Industrial Design <ul><li>After industrial revolution, it became possible to produce articles of unique shapes and designs...
What is Industrial design? <ul><li>Industrial design is defined as an ornamental or aesthetic aspect of an article and the...
Features of Industrial design <ul><li>Industrial Designs make an article attractive and appealing </li></ul><ul><li>They a...
Criteria for Protection as Industrial Design <ul><ul><li>New and Original </li></ul></ul><ul><ul><ul><li>New :   Not Previ...
Issues in INDUSTRIAL DESIGN <ul><li>For shape, Configuration, Ornamentation, Pattern in two or three dimensions </li></ul>...
Indian Cases
Tahiliani Design Private Ltd. vs. Renu Tandon & Anr.  C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court
<ul><li>Allegation that the Defendants’ garments were copies of the garments designed and crafted by the Plaintiff </li></...
<ul><li>Allegation of infringement of copyright as the defendant used the dress in a movie which was worn by an actress </...
<ul><li>Case relating to design of upholstery </li></ul><ul><li>Plaintiff claimed to have copyright in the artistic work a...
<ul><li>The Court although upholding that the motives etc. of the plaintiff was artistic and also holding that the defenda...
<ul><li>Plaintiff claimed an injunction on the ground that his designs of shoe soles had distinctive shape and configurati...
<ul><li>Case under the Designs Act, 2000 </li></ul><ul><li>Plaintiff had claimed that defendants copied the design “Stylus...
<ul><li>Judgment of full bench of Delhi High Court   </li></ul><ul><li>Holds primarily that in a case filed for infringeme...
<ul><li>Suit filed alleging infringement of design in respect of a bottle which is being used by plaintiff for packing hai...
<ul><li>Suit filed for the infringement as well as passing off of design in Toy Scooter </li></ul><ul><li>The defendant pl...
<ul><li>Faber Castell “Textliner”. </li></ul><ul><li>A dark green body </li></ul><ul><li>Unique cap of same colour as colo...
<ul><li>Suitcases made by plaintiff copied by defendant </li></ul><ul><li>The entire range was copied </li></ul><ul><li>Cl...
<ul><li>Design of photo-frames </li></ul><ul><li>Registered design </li></ul><ul><li>Defendant was an employee of plaintif...
International Cases
RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 <ul><li>Plaintiff & defendant manuf...
<ul><li>Def argued </li></ul><ul><ul><li>Prototype is not work of artis.crtms. </li></ul></ul><ul><ul><li>No one author is...
<ul><li>Court Held: </li></ul><ul><ul><li>It is work of A.C </li></ul></ul><ul><ul><li>Need not unite with one author </li...
BERNSTEIN v SYDNEY MURRAY(1981) RPC 303 <ul><li>The plaintiffs were owners of copyright in certain sketches for ladies’ ga...
BURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS  (1936) CH D 400 <ul><li>The plaintiff’s  alleged that defendants had...
In MERLET v MOTHERCARE Ltd  (1986) RPC 115 <ul><li>The plaintiff made a prototype baby cape for her child.  </li></ul><ul>...
<ul><li>It was held that though the prototype was a work of craftsmanship it was not a work of artistic craftsmanship.  </...
KOMESAROFF v MICKLE  (1988) RPC 204 <ul><li>A product called (moving sand pictures) comprising a mixture of liquid, colore...
Ford Motor Co.1993 RPC 399 <ul><li>Vehicle parts are not subject matter of design because’ they have no value in commerce ...
George Hensher Ltd s. Restawile Upholstery  1975 RPC 31 <ul><li>Upholstered chairs & settees.  </li></ul><ul><li>One proto...
George Hensher Ltd s. Restawile Upholstery  1975 RPC 31 <ul><li>Artistic craftsmanship need not necessarily mean “work of ...
Merchandising Corpn Vs. Harpbond  1983 FSR 32 <ul><li>Adam from the pop group Adam & Ants </li></ul><ul><li>New look for h...
Animal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985) <ul><li>Novelty slippers </li></ul><ul><li>Resembles a bear’s foot ...
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IPRVIT 3

  1. 1. UNIT-III TRADEMARKS & COPYRIGHTS
  2. 2. <ul><li>What you will know? </li></ul><ul><li>Trademarks & Copyrights </li></ul><ul><li>Trademarks: </li></ul><ul><li>- Necessity of trademark registration </li></ul><ul><li>- Kinds of trademarks </li></ul><ul><li>- Registering a trademark </li></ul><ul><li>Copyrights: </li></ul><ul><li>- Software as Intellectual works </li></ul><ul><li>- Geographical Indication </li></ul><ul><li>- Need for Protection </li></ul><ul><li>- Generic Geographical Indication </li></ul><ul><li>- Protecting Industrial designs </li></ul><ul><li>- Necessity and ways to protect the design </li></ul>
  3. 4. Trademarks: <ul><li>A trademark or a service mark is any word, name, symbol, or device or any combination thereof adopted and used by the producer to identify his or her goods or services and distinguish them from those produced or sold by others. </li></ul><ul><li>A sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises” </li></ul><ul><li>They indicate origin and distinguish your product from your competitors. </li></ul><ul><li>They also help maintain quality. </li></ul>
  4. 5. Necessity of trademark registration <ul><li>Two critical functions: </li></ul><ul><ul><li>i) Provides assurance that goods are of certain quality & consistency </li></ul></ul><ul><ul><li>ii) Assist consumers in making decisions about purchase of goods </li></ul></ul><ul><li>The life blood of an organization </li></ul><ul><ul><li>Identifier, communicator and indicator of source. </li></ul></ul><ul><ul><li>Immediate consumer recognition, </li></ul></ul><ul><ul><li>Communicates a way of doing business </li></ul></ul><ul><ul><li>Effective way of business expansion </li></ul></ul><ul><ul><li>They serve as an advertising device so that consumers link a product to a mark </li></ul></ul><ul><ul><li>It’s a broad protection offered from unfair competition </li></ul></ul>
  5. 6. Contd… <ul><ul><li>Organizations reap the rewards of their investment in developing and marketing a product without fear that another business will deceive consumers using the same or confusingly similar marks </li></ul></ul><ul><ul><li>Protects the company by enabling the company to build up a reputation and a loyal clientele and thus a market niche (brand) </li></ul></ul><ul><li>Protects consumers </li></ul><ul><ul><ul><li>They can differentiate between similar goods </li></ul></ul></ul><ul><ul><ul><li>Information as to the source (quality, reputation, trust) </li></ul></ul></ul><ul><ul><ul><li>Indication that all goods or services offered come from a single and reliable producer/ manufacturer/ source </li></ul></ul></ul><ul><li>Creates an overall competitive environment which benefits society as a whole </li></ul>
  6. 7. Kinds of marks <ul><li>Trade marks: to distinguish goods </li></ul><ul><li>Service marks: to distinguish services </li></ul><ul><li>Collective marks: to distinguish goods or services by members of an association- Indian Bar Association, American bar association </li></ul><ul><li>Certification marks: BIS, Agmark, Trust mark, BVQI </li></ul><ul><li>Well-known marks: benefit from stronger </li></ul><ul><li>protection </li></ul>
  7. 8. Contd… <ul><li>Kinds of Marks: Words, letters, drawing, colors, pictures, numerals, figurative elements, slogans, etc. </li></ul><ul><ul><ul><li>e.g.: Sony, Reebok, Himalaya, Toyota, Dabur, Coca-Cola, Lion, Adidas, Kit Kat, Kodak, Make it happen, Just do it </li></ul></ul></ul><ul><ul><ul><li>In some countries: sounds, smells, three-dimensional marks are also registered </li></ul></ul></ul><ul><ul><ul><li>Advertising slogans – Its finger lickin good (KFC) </li></ul></ul></ul><ul><ul><ul><li> The secret of my energy (Boost) </li></ul></ul></ul><ul><li>Functions of a mark: </li></ul><ul><ul><li>Identification function (origin) </li></ul></ul><ul><ul><li>Quality function </li></ul></ul><ul><ul><li>Communication function </li></ul></ul>
  8. 9. Trade mark: <ul><li>It is a word, name, symbol, or device or a combination thereof, used by a person or business entity , or which a person has a bonafide intention to use, to identify and distinguish his or her goods from those manufactured by others and to indicate the source of these goods </li></ul><ul><li>Service mark: </li></ul><ul><li>It is a word, name, symbol, or device or a combination thereof, used by a person or business entity , or which a person has a bonafide intention to use, to identify and distinguish the services of a person from those of others and to indicate the source of these services. </li></ul><ul><li>43 different classes of trade marks and service marks (e.g., audio recordings; entertainment services; paper goods; jewelry; clothing) </li></ul>
  9. 10. Certification mark: <ul><li>It is a word, name, symbol, or device or a combination thereof, used by one person or business entity to certify that the goods or services of others have certain features in regard to quality, material, mode of manufacture, or some other characteristic. </li></ul><ul><li>Eg.: yellow pages trust mark, Ag mark, Silk mark etc.. </li></ul><ul><li>Collective mark: </li></ul><ul><li>Mark used by a collective member organization such as labour union, fraternity, professional society etc., to identify that the person displaying the mark is a member of the organization </li></ul><ul><li>Eg. Indian Bar Association, American Bar Association, </li></ul><ul><li>Mortgage banker’s Association etc. </li></ul>
  10. 11. TRADEMARK REGISTRATION IN INDIA <ul><li>Who can register </li></ul><ul><li>Any individual, Corporate body or firm, claiming to be the proprietor of the trade mark, used or proposed to be used by him desiring to register it can file an application before the registrar for the registration of his trademark. </li></ul><ul><li>TRADE MARK PROTECTION: </li></ul><ul><li>The Trademarks Act, 1999 provides protection to the owner of a trademark and imposes criminal liabilities for the infringement of the trademark owner’s rights. </li></ul><ul><li>To enjoy protection, the owner of a trademark must apply for registration with the Trademark Registrar of the Registry of Trademarks, India. </li></ul>
  11. 12. Contd… <ul><li>The Trademarks Act is also applicable to the protection of service marks, certificate marks and collective marks. </li></ul><ul><li>The Trade Mark Registry Office performs the statutory duties in connection with the registration of Trade mark and other activities related thereto. </li></ul><ul><li>TRADEMARK REGISTRATION VALIDITY owner is required to apply for the renewal after this time-period. Date of registration of the Trade Mark is the date on which the application for Trade Mark is filed. </li></ul><ul><li>WHAT MARKS ARE REGISTRABLE AS TRADEMARKS? A trademark is a “mark” used or proposed to be used for or in connection with goods or services to distinguish such goods or services from other goods or services. A Mark can be any brand, heading, label, ticket, name, sign letter, text, word, numeral, slogan, base line, shape, colour or combination of any of these. </li></ul>
  12. 13. <ul><li>To register the mark as a trademark, the mark must meet the following requirements: 1. It must be distinctive 2. It must not be identical or similar to a mark already registered or any pending prior application for registration; 3. It must not be prohibited by the Trademarks Act 4. It must be owned by the applicant </li></ul><ul><li>SELECTING A SUITABLE TRADE MARK-10 POINTS TO REMEMBER. </li></ul><ul><li>1. A trade mark may be a word, letter, a device or numeral or signature, shape of goods, packaging or combination of colours or any combination thereof. It is better if it is simple in design. </li></ul><ul><li>2. If it is word it should be easy to speak, spell and remember </li></ul><ul><li>3. An ideal trade mark is an invented or coined word </li></ul><ul><li>4. Word which are laudatory or which directly refers to the character or quality of the goods or services should not be adopted . </li></ul>
  13. 14. <ul><li>5. Geographical names connected with the reputation or quality of the goods or services for which registration is sought should not be adopted. </li></ul><ul><li>6. It is advisable to conduct a market survey to ascertain whether any identical or deceptively similar mark is used for the same goods or services by any other person in the market. </li></ul><ul><li>7. It is advisable not to imitate another person’s trade mark or any other well known trade mark even if the goods or services are different. </li></ul><ul><li>8. Before applying for registration it is advisable to obtain preliminary advice regarding the distinctiveness of your mark from the Registrar by making a request on from TM-55 with a prescribed fee. </li></ul><ul><li>9. Further a request can be made on Form TM-54 with a prescribed fee to obtain an official report to ascertain whether any identical or deceptively similar trade mark exists on the Register or is pending for registration for the same or similar goods or services. </li></ul><ul><li>10. Moreover, a personal inspection or search of the Register of Trade Marks on payment of a prescribed fee may be done. </li></ul>
  14. 15. Trademark Filing In India Process of filing a Trade Mark Application in India and Grant of Trademark Registration Certificate involves the following steps as detailed in the flow chart herein below OBJECTION
  15. 16. TRADEMARK REGISTRATION PROCEDURE: <ul><li>Trademark Search: It is advisable to conduct a trademark search for the relevant classes before filing the application to register a trademark in order to make sure that there is no identical or similar trademark already registered or for which an application for registration has been submitted. </li></ul><ul><li>Filing Application: The first step in getting a trademark registration is the filing of Trade Mark Application in Form 1, with the logo or word mark (as may be applicable), along with the applicants' particulars, including his address (incase of a company, the registered address of the company). The application to register the trademark is filed with the Registrar of Trademarks. </li></ul><ul><li>Publication in the Trademark Gazette: If after a preliminary examination, the Trademark Registrar considers the mark to be distinctive, it orders the publication of the mark in the Trademark Gazette. </li></ul>
  16. 17. <ul><li>Post Publication: </li></ul><ul><li>After the advertisement of the Mark in the Gazette, it is open for the general public to file their objections to the grant of such trademark registration services. </li></ul><ul><li>If no opposition to the mark is filed within 90 days from the date of publication, or 120 days if request for extension of time is given by an opponent and opposition is refused, mark proceeds for grant of registration certificate. </li></ul><ul><li>Trademark Registration: </li></ul><ul><li>The trademark is registered and the trademark registration certificate is issued by the Registrar of Trademarks if there is no objection </li></ul><ul><li>In case of any objections it has to be clarified (i.e. Distinctiveness has to be proved) by the owner </li></ul>
  17. 18. Contd… <ul><li>Documents/Information to Prove Distinctiveness </li></ul><ul><li>» The extent of advertisement with a few sample copies of advertising material and brochures; » The quantum of usage with a few invoices and the last gross annual sale of the goods under the Trade name; » The extent of use of the mark in respect of time and area; » A brief write-up on the importance attached to the trade mark in particular; » The class of costumers and their standard of intelligence and education; » The date of commencement of the use of the mark; </li></ul>
  18. 19. Contd… <ul><li> » If the trade mark has been registered in several countries and the law of Trademark is similar to that of India, certified copies of the registration of the marks in such countries may also be provided . (Note: Examination report is sent to the attorney in about 45 days from the filing of the mark). </li></ul><ul><li> » If there is no objection and /or opposition raised, the process of registration of trademark usually takes 1-1.5 years and incase of any objection/opposition proceedings it usually takes approx 2 years. </li></ul>
  19. 20. COPYRIGHTS
  20. 21. What is software copyright? <ul><li>Software copyright is not essentially different from any other sort of copyright . However, there are certain aspects of copyright law that are specific to software, because there are practical differences between software and other things that can be copyrighted (books, poems, drawings, sculptures, etc.). </li></ul><ul><li>Copyright law gives a programmer a high degree of control over the program that he or she creates. </li></ul><ul><li>In India you can protect software that you’ve created only by copyright, and not by patents as in the US. </li></ul><ul><li>It is classified as a literary work instead of an “invention”, which performs a mechanical function. </li></ul><ul><li>This is the problem area as far as Indian substantive law is concerned. We follow the European model that affords copyright protection to software unlike patent protection that is granted in the US. </li></ul>
  21. 22. Software copyright issues <ul><li>Copyright protects only the computer program itself, and not the ideas behind the program . That is to say, it is perfectly permissible to take a computer program written by someone else, and write another that does the same thing . If you were the first person to write, say, a spelling checker program, you would have no rights in the concept of a program that checks spelling: you would only have rights in the actual program that you had written. </li></ul><ul><li>The permission of the rights owner is needed in order to run, copy, modify or distribute the software </li></ul><ul><li>A software licensee never takes ownership of the copyright in the software; he merely purchases a licence to use the protected software under the terms and conditions set by the copyright owner and the law. </li></ul><ul><li>Copyright exists in a work from the moment it is recorded </li></ul><ul><li>Remedies for civil copyright infringement may include damages to compensate the copyright owner for damage caused to his business. </li></ul><ul><li>Criminal penalties can include unlimited fines and up to ten years in prison </li></ul><ul><li>The rental of software is illegal without the express permission of the copyright holder. </li></ul>
  22. 23. Contd… <ul><li>If an organisation is using illegal copies of software the organisation may face not only a civil suit , but corporate officers and individual employees may have criminal liability. </li></ul><ul><li>No one is exempt from copyright law. All individuals, organisations and government agencies are subject to the law. </li></ul><ul><li>Web publication or other internet-based publication does not take a work outside the realm of copyright law: you still need the copyright owner's permission to publish their work regardless of the publication medium. </li></ul><ul><li>Ignorance of the Law does not excuse infringement . </li></ul>
  23. 24. The various kinds of software infringement <ul><li>It is worth pointing out, at this stage, that there various forms of software copyright infringement - all of which must be avoided! </li></ul><ul><li>The most common kinds of infringement are the following: </li></ul><ul><li>Wholly unlicensed use: for example, copying a piece of software from a friend, or over the Internet, etc., where the licence for the software does not explicitly permit this. </li></ul><ul><li>Overuse: for example, buying a piece of software licensed for one computer, and installing it on two. </li></ul><ul><li>Failure to have a licence assigned, or to re license : if you acquire hardware second-hand, this does not necessarily transfer all software licenses, and you must take steps to ensure that your use is lawful. </li></ul>
  24. 25. <ul><li>Shareware abuse: where software is licensed &quot;for evaluation purposes only&quot; or the like, it is copyright infringement to exceed these terms. </li></ul><ul><li>Obtaining software fraudulently: for example, getting a reduced rate by pretending that your business is a educational institution. </li></ul><ul><li>&quot; Warez&quot; copyright infringement: A &quot;warez&quot; site is a site on the Internet that allows people to download infringing copies of software. The software will usually have had its digital rights management &quot;broken&quot; , and is referred to as &quot;a warez copy&quot;, or &quot;a hacked copy&quot;. Needless to say, the people who make warez copies, the people who run warez sites, and the people who download and use warez copies are all copyright infringers. </li></ul>
  25. 26. <ul><li>Illicit &quot;special offers&quot; from hardware vendors : a hardware vendor sells a computer with software installed, but (often unknown to the customer) the software is unlicensed. </li></ul><ul><li>Making an unlawful copy of software on a burnable CD-ROM, or the like, for the purpose of giving it to someone else. (Note that, in contrast, making a back-up copy is usually lawful! A back-up copy is a spare copy, made in case the original is erased or damaged by accident. </li></ul><ul><li>Counterfeiting: this is the making of unlawful copies of software on burnable CD-ROM, or the like, on a commercial scale, and having them sold under the pretence that they are lawful copies (by putting them in deceptive packaging, etc.). Counterfeiting is the preserve of professional criminals. If software is on sale at a greatly reduced price, it may well be counterfeited. </li></ul>
  26. 27. GEOGRAPHICAL INDICATIONS <ul><li>Many goods possess their peculiar properties due to their geographical origin. </li></ul><ul><li>GI is the best method to indicate the geographical origin of goods and services. </li></ul><ul><li>Many agricultural products (tea, rice); dairy products (cheese), wines and spirits (Champagne) owe their special quality and reputation to their geographical place of growth or processing. </li></ul><ul><li>Protection Given to indications which identify goods as originating from /manufactured in a particular territory where a given quality, reputation or other characteristics of the goods is essentially attributable to that region </li></ul><ul><li>Sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin </li></ul><ul><li>Ex: Basmati rice, Darjeeling Tea, Kolhapuri Chappals , French wine, Scotch Whisky, Rockford Cheese, Champagne etc. </li></ul>
  27. 28. Features of Geographical Indication <ul><li>GI is not owned by a single owner </li></ul><ul><li>Ownership by association of persons </li></ul><ul><li>No assignment , licensing or mortgage </li></ul><ul><li>Any producer in the region can use the GI on the product provided it is prepared by the norms set out for the use of that GI. </li></ul><ul><li>GI is registered in the national register and is similar to the certification mark identifying the origin of the good. </li></ul><ul><li>Govt. can register GI in the international register maintained by WIPO for world wide protection. </li></ul><ul><li>It is an offence to use false GI on goods </li></ul><ul><li>Unauthorized use has Civil / Criminal liabilities. </li></ul>
  28. 29. <ul><li>Objective : </li></ul><ul><li>Customers must not be misled </li></ul><ul><li>Marking must not mislead </li></ul><ul><li>No Dilution </li></ul><ul><li>Economic prosperity </li></ul><ul><li>INDICATION </li></ul><ul><li>Includes </li></ul><ul><li>Any name </li></ul><ul><li>Geographical or Figurative representation </li></ul><ul><li>(or) Any combination of them </li></ul><ul><li>Conveying or suggesting the Geographical Origin </li></ul>
  29. 30. GOODS <ul><li>Agricultural </li></ul><ul><li>Natural </li></ul><ul><li>Manufactured goods </li></ul><ul><li>Goods of Handicrafts </li></ul><ul><li>Industry </li></ul><ul><li>Food Stuffs </li></ul>
  30. 31. Goods I. Agricultural Tea : Darjeeling, Assam, Nilgiri & Kangra Coffee : Monsooned Coffee Rice : Basmati, Nellore, Sona masuri. Wheat : Punjab, Madhya pradesh. Fruits : Alphonso, Banganapalli. Vegetable: Bangalore Brinjals. Spice : Malabar Pepper.
  31. 32. Goods <ul><li>II. Natural </li></ul><ul><li>Kolar gold </li></ul><ul><li>Illmanite and Monosite of Kerala </li></ul><ul><li>Goa Iron ore </li></ul><ul><li>Kota Stone </li></ul><ul><li>Cuddappa Stone </li></ul><ul><li>Neyveli Lignite </li></ul>
  32. 33. Manufactured Goods (a). Textiles Pochampally Ikat, Kasuti Embroidery, Mysore Silk, Bhavani Jamakalam, Kanchipuram Silk, Kota Doria, Chanderi Saree, Solapur Chaddar, Solapur Terry Towel, Kullu Shawl, Kotpad Handloom Fabric, Phulkari Embroidery Madurai Sungudi, Erode Bed sheets
  33. 34. <ul><li>b). Handicrafts </li></ul><ul><ul><li>Aranmula Mirrors. </li></ul></ul><ul><ul><li>Bidari Ware. </li></ul></ul><ul><ul><li>Chanapattna Toys. </li></ul></ul><ul><ul><li>Malabar Hukka </li></ul></ul><ul><ul><li>Tanjore Dolls </li></ul></ul><ul><ul><li>Tanjore Plates </li></ul></ul><ul><ul><li>Tanjore Paintings </li></ul></ul>
  34. 35. Food Stuffs <ul><li>Bikaneri Bhujiya. </li></ul><ul><li>Andhra Pickles. </li></ul><ul><li>Calicut Halwa. </li></ul><ul><li>Tirunelveli Halwa. </li></ul><ul><li>Agra Peta. </li></ul><ul><li>Kolkatta Rasagulla </li></ul>
  35. 36. Who Can Register? Any association of persons or producers or any organization or authority established by or under law representing the interest of producers of the concerned goods
  36. 37. BENEFITS OF GEOGRAPHICAL INDICATION <ul><li>It confers legal protection to geographical indications in India . </li></ul><ul><li>It prevents unauthorized use of a registered geographical indication by others . </li></ul><ul><li>It boosts exports of Indian geographical indications by providing legal protection . </li></ul><ul><li>It promotes economic prosperity of producers . </li></ul><ul><li>It enables seeking legal protection in other WTO member countries . </li></ul>
  37. 39. Industrial Design <ul><li>After industrial revolution, it became possible to produce articles of unique shapes and designs in masses by industrial processes. </li></ul><ul><li>Today manufacturers are paying a lot of attention to the designs of articles that they produce to differentiate from their competitors. </li></ul><ul><li>For unique design or shape companies are investing in research for designs. </li></ul><ul><li>Legal protection has become a necessity for creation of new designs and their application to articles </li></ul>
  38. 40. What is Industrial design? <ul><li>Industrial design is defined as an ornamental or aesthetic aspect of an article and the design may consist of 3D features such as patterns, lines or colours. </li></ul><ul><li>There are 2 forms of designs </li></ul><ul><li> Functional aspect design (Tool box, Car engine, Wrist watch) </li></ul><ul><li> Visual aspect design (Car body, Shape of container, furniture etc.) </li></ul><ul><li>The scope of design protection is very wide covering a variety of products of industry and handicrafts comprising of technical and medical instruments, watches, jewellery, house ware, electrical appliances, vehicles, architectural structures, textile designs, leisure goods and many more. </li></ul>
  39. 41. Features of Industrial design <ul><li>Industrial Designs make an article attractive and appealing </li></ul><ul><li>They add commercial value to a product because shape or configuration of the article can often be a great selling point. </li></ul><ul><li>They increase the marketability of a product </li></ul><ul><li>When companies are competing at equal price and </li></ul><ul><li>functionality, Design is the only differential that matters </li></ul><ul><li>Product value enhancement through Innovation </li></ul><ul><li>Ranges from shape of product to packaging </li></ul><ul><li>Incremental impact for SMEs is significant </li></ul><ul><li>Industrial design: the new differential </li></ul>
  40. 42. Criteria for Protection as Industrial Design <ul><ul><li>New and Original </li></ul></ul><ul><ul><ul><li>New : Not Previously published or used in any country before the date of application for registration. </li></ul></ul></ul><ul><ul><ul><li>Original : The known shape of kutub minar when applied to a cigarette holder is original and it can be registered. Originality should involve real mental activity for conception. </li></ul></ul></ul><ul><ul><li>Capable of mass production or application on an article of utility </li></ul></ul><ul><ul><li>Not contrary to public order or morality </li></ul></ul><ul><ul><li>The shape should not be determined merely by the functionality of the good. </li></ul></ul>
  41. 43. Issues in INDUSTRIAL DESIGN <ul><li>For shape, Configuration, Ornamentation, Pattern in two or three dimensions </li></ul><ul><li>Applied to an Article of Manufacture </li></ul><ul><li>Must Appeal to the Eye as it is solely judged by the Eye </li></ul><ul><li>Valid for 10 years, extendable by 5 more years </li></ul><ul><li>Must not be previously published </li></ul><ul><li>Design Does Not Include : Principle of operation , Mode of construction , Trade Mark </li></ul>
  42. 44. Indian Cases
  43. 45. Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court
  44. 46. <ul><li>Allegation that the Defendants’ garments were copies of the garments designed and crafted by the Plaintiff </li></ul><ul><li>The said garments were supposed to be developed, designed and crafted by the plaintiff as a part of their collection for the year 2006 </li></ul><ul><li>The Hon’ble Delhi High Court vide order dated 21.10.2008 granted ex-parte ad-interim injunction </li></ul><ul><li>Defendant served notice. </li></ul><ul><li>Application for vacation of stay moved claiming that both designs are separate. </li></ul><ul><li>The impugned prints are generic Jamawar Prints </li></ul><ul><li>Matter is sub-judice – Referred to Mediation </li></ul>
  45. 47. <ul><li>Allegation of infringement of copyright as the defendant used the dress in a movie which was worn by an actress </li></ul><ul><li>Importance of costumes worn by actors and actresses in a film play special role and serve purpose of promotion of the movie </li></ul><ul><li>Held that all kinds of clothes worn by actors cannot be stated as Fair Use permitted under sec 52 (1) (u). </li></ul>Suneet Varma Design Pvt. Ltd. Vs Jas Kirat Singh Narula & Anr. [2007 (34) PTC 81 (Del)]
  46. 48. <ul><li>Case relating to design of upholstery </li></ul><ul><li>Plaintiff claimed to have copyright in the artistic work applied to upholstery design </li></ul><ul><li>Did not have a registered design however they claimed a copyright in the drawings </li></ul><ul><li>Question was whether without a registered design, the plaintiff could protect the same and whether the copyright was lost because of more than 50 reproduction of the said upholstery fabric design </li></ul>Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del)
  47. 49. <ul><li>The Court although upholding that the motives etc. of the plaintiff was artistic and also holding that the defendants had copied it, on a legal and technical argument that more than 50 reproduction had been made, refused to grant injunction </li></ul>
  48. 50. <ul><li>Plaintiff claimed an injunction on the ground that his designs of shoe soles had distinctive shape and configuration </li></ul><ul><li>During the course of argument, it was revealed that the plaintiff himself had copied designs from Bata India Ltd. </li></ul><ul><li>Thus Court had held that the plaintiff himself being a pirater, no injunction can be granted in favour of the plaintiff </li></ul>1997(17) PTC 268: Baldev Singh vs. Shriram Footwear
  49. 51. <ul><li>Case under the Designs Act, 2000 </li></ul><ul><li>Plaintiff had claimed that defendants copied the design “Stylush”, “Corel” and “Ultra” in respect of bath tubs </li></ul><ul><li>Defendant had not established that he had been selling bath tubs prior to the registration obtained by plaintiff in respect of similar designs </li></ul><ul><li>Plaintiff had a registered design </li></ul><ul><li>Sufficient resemblance between the two designs and the plaintiff’s design was protected </li></ul>Hindustan Sanitary ware & Industries Ltd. vs. Dip Crafts Industries: 2003(26) PTC163 (Del)
  50. 52. <ul><li>Judgment of full bench of Delhi High Court </li></ul><ul><li>Holds primarily that in a case filed for infringement of a design, the defendant would be entitled to take a defence that the registration of the design itself was incorrect </li></ul><ul><li>Various grounds can be taken for claim that the registration was granted wrongly, namely, that the design is not new or original or unique </li></ul><ul><li>If any of the grounds can be proved, then the fact that the design is registered by itself, does not come to the aid of the plaintiff </li></ul><ul><li>Registration can be a proof at the first stage but it has to be established that this was not copied design and that it is a new and original </li></ul>Metro Plastic Industries (Regd.) vs. M/s. Galaxy Footwear New Delhi: 2000(20) PTC 1
  51. 53. <ul><li>Suit filed alleging infringement of design in respect of a bottle which is being used by plaintiff for packing hair oil </li></ul><ul><li>Court found plaintiff’s bottle to be common bottle used by several other companies </li></ul><ul><li>Bottles were held to be in use much prior to the registration of the design of the plaintiff </li></ul><ul><li>No peculiar feature of the bottle registered as a design and the plaintiff had not pin pointed any novelty in the design of the bottle </li></ul><ul><li>Held that for validly of the registered design there must be some novelty and originality in the design sought to be protected and it must have not been pre-published </li></ul>Dabur India Ltd. Vs. Rajesh Kumar & Ors 2008 (37) PTC 227
  52. 54. <ul><li>Suit filed for the infringement as well as passing off of design in Toy Scooter </li></ul><ul><li>The defendant pleaded the prior publication of the design </li></ul><ul><li>Another defense taken by the defendant was that the defendant too was having the registration of the design </li></ul><ul><li>Court held that there were various dissimilarities in the prior published design </li></ul><ul><li>The design of the defendant was identical to the design of the plaintiff </li></ul><ul><li>Hence the defendant is not protected even on account of the registration having been obtained by it which admittedly is the subsequent registration </li></ul>Vikas Jain Vs. Aftab Ahmad And Ors, 2008 (37) PTC 288 (Del)
  53. 55. <ul><li>Faber Castell “Textliner”. </li></ul><ul><li>A dark green body </li></ul><ul><li>Unique cap of same colour as colour of ink </li></ul><ul><li>Gold lettering on green body </li></ul><ul><li>Regd design. </li></ul><ul><li>Prior Publication could be through prior documents or some other prior user. </li></ul><ul><li>Injunction granted </li></ul>Faber Castell Vs. Pikpen - 2003 PTC 538
  54. 56. <ul><li>Suitcases made by plaintiff copied by defendant </li></ul><ul><li>The entire range was copied </li></ul><ul><li>Claim was based on drawings & copyright </li></ul><ul><li>No registered design </li></ul><ul><li>No protection granted as it is manufactured industrially more than 50 times. </li></ul>Samsonite Vs. Vijay Sales 1998 PTC 372
  55. 57. <ul><li>Design of photo-frames </li></ul><ul><li>Registered design </li></ul><ul><li>Defendant was an employee of plaintiff </li></ul><ul><li>Injunction granted protecting the copyright in the design of photo-frames </li></ul>Preeti Gupta Vs. Rajendra Prahladkar 2002 PTC 64
  56. 58. International Cases
  57. 59. RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 <ul><li>Plaintiff & defendant manufacture ladies clothing. </li></ul><ul><li>Copyright claimed in 3 stages of Manufacturing Procedure viz., </li></ul><ul><li>- design sketches, </li></ul><ul><li>- cutting patterns </li></ul><ul><li>- prototype garments </li></ul>
  58. 60. <ul><li>Def argued </li></ul><ul><ul><li>Prototype is not work of artis.crtms. </li></ul></ul><ul><ul><li>No one author is involved </li></ul></ul><ul><ul><li>Cutting patterns are functional </li></ul></ul><ul><ul><li>One of the sketches was copied from earlier dress </li></ul></ul><ul><ul><li>Dress could not reproduce a sketch </li></ul></ul><ul><ul><li>Stiffness was to be given otherwise it is not a dress </li></ul></ul><ul><ul><li>Delay </li></ul></ul>RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455
  59. 61. <ul><li>Court Held: </li></ul><ul><ul><li>It is work of A.C </li></ul></ul><ul><ul><li>Need not unite with one author </li></ul></ul><ul><ul><li>Dress can be a 3 dimensional reproduction of a sketch </li></ul></ul><ul><ul><li>Huge diff between the earlier dress and new one, hence plaintiff work is original </li></ul></ul>RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455
  60. 62. BERNSTEIN v SYDNEY MURRAY(1981) RPC 303 <ul><li>The plaintiffs were owners of copyright in certain sketches for ladies’ garments in which the garments were shown as worn by ladies. They had displayed garments made from such sketches in fashion shows and shop windows. Defendants have copied the dresses produced from plaintiff’s sketches. It was held that this constituted infringement of copyright in sketches. </li></ul>
  61. 63. BURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS (1936) CH D 400 <ul><li>The plaintiff’s alleged that defendants had infringed the copyright in the sketch described as “ frock being worn by a young lady ” It was also alleged that there was infringement of artistic copyrights in dresses made up by the plaintiff’s in accordance with those sketches, which dress themselves were said to be works of artistic craftsmanship It was held that thee was no infringement of a sketch by a frock. </li></ul>
  62. 64. In MERLET v MOTHERCARE Ltd (1986) RPC 115 <ul><li>The plaintiff made a prototype baby cape for her child. </li></ul><ul><li>The cape was subsequently manufactured by the second plaintiff. </li></ul><ul><li>The defendants copied the plaintiff’s garments and made baby cape in accordance with the copy. </li></ul><ul><li>The plaintiff claiming the handmade prototype garment as a work of craftsmanship it was not a work of artistic craftsmanship brought an action for infringement of copyright. </li></ul>
  63. 65. <ul><li>It was held that though the prototype was a work of craftsmanship it was not a work of artistic craftsmanship. </li></ul><ul><li>It was held that in approaching the question the garment has to be considered by itself and neither as worn nor as containing a baby. </li></ul><ul><li>No aesthetic satisfaction unless worn on the baby </li></ul><ul><li>Action was dismissed. An appeal against infringement of certain drawings was dismissed. </li></ul>In MERLET v MOTHERCARE Ltd (1986) RPC 115
  64. 66. KOMESAROFF v MICKLE (1988) RPC 204 <ul><li>A product called (moving sand pictures) comprising a mixture of liquid, colored sands, and a layer of air bubbles encased within two glass panels was held not a work of artistic craftsmanship. </li></ul><ul><li>They are functional – not regd design </li></ul>
  65. 67. Ford Motor Co.1993 RPC 399 <ul><li>Vehicle parts are not subject matter of design because’ they have no value in commerce except as part of a vehicle </li></ul><ul><li>Mirrors, seats, etc., were capable of registration as substitution was possible without affecting shape of the vehicle. </li></ul><ul><li>The distinction that seems to have been drawn is that there are several parts which are mostly hidden and never seen, such parts cannot be registered as designs. </li></ul><ul><li>However, parts and their circuits if in drawing form are artistic works </li></ul>
  66. 68. George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 <ul><li>Upholstered chairs & settees. </li></ul><ul><li>One prototype was evolved – chairs were copied from it and sold </li></ul><ul><li>Def. copied the chairs and hence the prototype </li></ul><ul><li>Trial Court granted injunction. Appeal court dismissed the injunction. HL refused protection </li></ul>
  67. 69. George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 <ul><li>Artistic craftsmanship need not necessarily mean “work of art”. </li></ul><ul><li>The product may be a commercial success but need not be of Art craftsmanship </li></ul>
  68. 70. Merchandising Corpn Vs. Harpbond 1983 FSR 32 <ul><li>Adam from the pop group Adam & Ants </li></ul><ul><li>New look for himself with Red-Indian face markings </li></ul><ul><li>Two red lines in grease paint, light blue line in between, heart over left eyebrow & a beauty spot </li></ul><ul><li>Def. made a poster of it & made a portrait & superimposed new look over an old poster </li></ul><ul><li>In infringement action court held that this is not a painting and hence not protectable. </li></ul>
  69. 71. Animal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985) <ul><li>Novelty slippers </li></ul><ul><li>Resembles a bear’s foot or paw </li></ul><ul><li>Slipper’s design features separate from its utilitarian features, incl. impractical width of sole, shape of sole, profile of slipper, toes which are unrelated to function and copyrightable. </li></ul><ul><li>Injunction granted. </li></ul>

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