Intellectual Property Law, Lecture notes of Intellectual Property (IP)

Download Intellectual Property Law and more Lecture notes Intellectual Property (IP) in PDF only on Docsity! INTELLECTUAL PROPERTY RIGHTS IN INDIA 1. INTRODUCTION Intellectual property Right (IPR) is a term used for various legal entitlements which attach to certain types of information, ideas, or other intangibles in their expressed form. The holder of this legal entitlement is generally entitled to exercise various exclusive rights in relation to the subject matter of the Intellectual Property. The term intellectual property reflects the idea that this subject matter is the product of the mind or the intellect, and that Intellectual Property rights may be protected at law in the same way as any other form of property. Intellectual property laws vary from jurisdiction to jurisdiction, such that the acquisition, registration or enforcement of IP rights must be pursued or obtained separately in each territory of interest. Intellectual property rights (IPR) can be defined as the rights given to people over the creation of their minds. They usually give the creator an exclusive right over the use of his/her creations for a certain period of time. What is Intellectual Property? Intellectual property is an intangible creation of the human mind, usually expressed or translated into a tangible form that is assigned certain rights of property. Examples of intellectual property include an author's copyright on a book or article, a distinctive logo design representing a soft drink company and its products, unique design elements of a web site, or a patent on the process to manufacture chewing gum. What is Intellectual Property Rights? Intellectual property rights (IPR) can be defined as the rights given to people over the creation of their minds. They usually give the creator an exclusive right over the use of his/her creations for a certain period of time. Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. Categories of Intellectual Property One can broadly classify the various forms of IPRs into two categories: • IPRs that stimulate inventive and creative activities (patents, utility models, industrial designs, copyright, plant breeders’ rights and layout designs for integrated circuits) and • IPRs that offer information to consumers (trademarks and geographical indications). IPRs in both categories seek to address certain failures of private markets to provide for an efficient allocation of resources 1 addition to 10)in800 (f r each claim -addition to 30)spec fica i n4 each sheet of prior ty.case of every multiple Mul ple f 4000 in 40002to 3 ) in addi i n 1 1 1App c ti n for Pat nt ers n(s).n turahanL gal En it oth r N t ra erso Desc ptimou f fe s ( rupees) o.F m IP is divided into two categories for ease of understanding: 1. Industrial Property 2. Copyright Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs Intellectual property shall include the right relating to: i. Literary, artistic and scientific works; ii. Performance of performing artists; iii. Inventions in all fields of human endeavour; iv. Scientific discoveries; v. Industrial designs; vi. Trademarks, service marks and etc; vii. Protection against unfair competition. What is a property? Property designates those things that are commonly recognized as being the possessions of an individual or a group. A right of ownership is associated with property that establishes the good as being "one's own thing" in relation to other individuals or groups, assuring the owner the right to dispense with the property in a manner he or she deems fit, whether to use or not use, exclude others from using, or to transfer ownership. Properties are of two types - tangible property and intangible property i.e. one that is physically present and the other which is not in any physical form. Building, land, house, cash, jewellery are few examples of tangible properties which can be seen and felt physically. On the other hand there is a kind of valuable property that cannot be felt physically as it does not have a physical form. Intellectual property is one of the forms of intangible property which commands a material value which can also be higher than the value of a tangible asset or property. Rights protected under Intellectual Property The different types of Intellectual Property Rights are: i. Patents ii. Copyrights 2 by the Indian applicants, Maharashtra accounted for the maximum number followed by Delhi, Tamil Nadu, Karnataka, Andhra Pradesh, West Bengal etc. ▲ During 2009-10, 6092 design applications were filed, 6266 examined and 6025 registered. The number of applications filed by the Indian applicants was 4267. The number of registered designs in force at the end of 2009-10 was 39008. ▲ During 2009-10, 1,41,943 trademark applications were filed, 25875 examined and 67,490 registered. The number of applications filed by the Indian applicants was 1,34,403. The total number of registered trademarks as of 31st March, 2010 is 8,22,825. ▲ During 2009-10, 40 Geographical indications applications were filed and 14 were registered. A total of 120 Geographical Indications have been registered till 31st March, 2010. ▲ During 2009-10, 142 applications were received for access of bio-resources for research/ commercial use, transfer of research results, intellectual property rights and third party transfer. Totally, 13 agreements have been signed. So far, 11 patents have been granted on the applications cleared by NBA. The NBA has also received a royalty amount of Rs.37.89 lakhs from the applicants who have exported bio-resources. ▲ In 2010-11, a total of 642 applications representing 28 crops were received by the Authority for seeking plant variety protection under the Act. The applications belong to new (395), extant (216), farmers’ varieties (30) and essentially derived variety (1) categories. Initiatives of Government of India towards protection of IPR 1. The Government has brought out A Handbook of Copyright Law to create awareness of copyright laws amongst the stakeholders, enforcement agencies, professional users like the scientific and academic communities and members of the public. 2. National Police Academy, Hyderabad and National Academy of Customs, Excise and Narcotics conducted several training programs on copyright laws for the police and customs officers. 3. The Department of Education, Ministry of Human Resource Development, Government of India has initiated several measures in the past for strengthening the enforcement of copyrights that include constitution of a Copyright Enforcement Advisory Council (CEAC), creation of separate cells in state police headquarters, encouraging setting up of collective administration societies and organization of seminars and workshops to create greater awareness of copyright laws among the enforcement personnel and the general public. 4. Special cells for copyright enforcement have so far been set up in 23 States and Union Territories, i.e. Andhra Pradesh, Assam, Andaman & Nicobar Islands, Chandigarh, Dadra & Nagar Haveli, Daman & Diu, Delhi, Goa, Gujarat, Haryana, Himachal Pradesh, Jammu & Kashmir, Karnataka, Kerala, Madhya Pradesh, Meghalaya, Orissa, Pondicherry, Punjab, Sikkim, Tamil Nadu, Tripura and West Bengal. 5. The Government also initiates a number of seminars/workshops on copyright issues. The participants in these seminars include enforcement personnel as well as representatives of industry organizations. 2. HISTORY OF IPR IN INDIA 5 George Alfred DePenning is supposed to have made the first application for a patent in India in the year 1856. On February 28, 1856, the Government of India promulgated legislation to grant what was then termed as "exclusive privileges for the encouragement of inventions of new manufactures" i.e the Patents Act. On March 3, 1856, a civil engineer, George Alfred DePenning of 7, Grant’s Lane, Calcutta petitioned the Government of India for grant of exclusive privileges for his invention - "An Efficient Punkah Pulling Machine". On September 2, DePenning, submitted the Specifications for his invention along with drawings to illustrate its working. These were accepted and the invention was granted the first ever Intellectual Property protection in India. History of Copyright Law in India Modern copyright law developed in India gradually, in a span of more than 150 years. Copyright law entered India in 1847 through an enactment during the East India Company's regime. According to the 1847 enactment, the term of copyright was for the lifetime of the author plus seven years post-mortem. But in no case could the total term of copyright exceed a period of forty-two years. The government could grant a compulsory licence to publish a book if the owner of copyright, upon the death of the author, refused to allow its publication. The act of infringement comprised in a person’s unauthorized printing of a copyright work for (or as a part of attempt of) "sale hire, or exportation", or "for selling, publishing or exposing to sale or hire". Suit or action for infringement was to be instituted in the "highest local court exercising original civil jurisdiction." The Act provided specifically that under a contract of service copyright in "any encyclopedia, review, magazine, periodical work or work published in a series of books or parts" shall vest in the "proprietor, projector, publisher or conductor." Infringing copies were deemed to be copies of the proprietor of copyrighted work. Importantly, unlike today, copyright in a work was not automatic. Registration of copyright with the Home Office was mandatory for the enforcement of rights under the Act. However, the Act also specifically reserved the subsistence of copyright in the author, and his right to sue for its infringement to the extent available in law other than the 1847 Act. At the time of its introduction in India, copyright law had already been under development in Britain for over a century and the provisions of the 1847 enactment reflected the learnings from deliberations during this period. In 1914, the then Indian legislature enacted a new Copyright Act which merely extended most portions of the United Kingdom Copyright Act of 1911 to India. It did, however, make a few minor modifications. First, it introduced criminal sanctions for copyright infringement (sections 7 to 12). Second, it modified the scope of the term of copyright; under section 4 the "sole right" of the author to "produce, reproduce, perform or publish a translation of the work shall subsist only for a period of ten years from the date of the first publication of the work." The author, however, retained her "sole rights" if within the period of ten years she published or authorised publication of her work a translation in any language in respect of that language. The 1914 Act was continued with minor adaptations and modifications till the 1957 Act was brought into force on 24th January, 1958. History of Patent Law in India 6 The first legislation in India relating to patents was the Act VI of 1856. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the sovereign. Fresh legislation for granting ‘exclusive privileges’ was introduced in 1859 as Act XV of 1859. This legislation contained certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful inventions only and extension of priority period from 6 to 12 months. The Act excluded importers from the definition of inventor. The 1856 Act was based on the United Kingdom Act of 1852 with certain departures including allowing assignees to make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty. The Act of 1859 provided protection for invention only and not for designs whereas United Kingdom had been protecting designs from 1842 onwards. To remove this lacuna, the ‘Patterns and Designs Protection Act’ (Act XIII) was passed in 1872. This Act amended the 1859 Act to include any new and original pattern or design or the application of such pattern to any substance or article of manufacture within the meaning of ‘new manufacture’. The Act XV of 1859 was further amended in 1883 by XVI of 1883 to introduce a provision to protect novelty of the invention, which prior to making application for their protection were disclosed in the Exhibitions of India. A grace period of 6 months was provided for filing such applications after the date of the opening of such Exhibition. In 1888, new legislation was introduced to consolidate and amend the law relating to invention and designs in conformity with the amendments made in the UK law. In 1911, the Indian Patents and Designs Act, 1911, (Act II of 1911) was brought in replacing all the previous legislations on patents and designs. This Act brought patent administration under the management of Controller of Patents for the first time. This Act was amended in 1920 to provide for entering into reciprocal arrangements with UK and other countries for securing priority. In 1930, further amendments were made to incorporate, inter-alia, provisions relating to grant of secret patents, patent of addition, use of invention by Government, powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. In 1945, another amendment was made to provide for filing of provisional specification and submission of complete specification within nine months. After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its objective. It was found desirable to enact comprehensive patent law owing to substantial changes in political and economic conditions in the country. Accordingly, the Government of India constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949, to review the patent law in India in order to ensure that the patent system is conducive to the national interest. The Committee submitted its interim report on 4th August, 1949 with recommendations for prevention of misuse or abuse of patent right in India and for amendments to sections 22, 23 & 23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts of 1919 and 1949. Based on the recommendations of the Committee, the 1911 Act was amended in 1950 (Act XXXII of 1950) in relation to working of inventions and compulsory licence/revocation. In 1952, an amendment was made to provide compulsory licence in relation to patents in respect of food and medicines, insecticide, germicide or fungicide and a process for producing substance or any invention relating to surgical or curative devices, through Act LXX of 1952. The compulsory licence was also 7 3. OVERVIEW OF LAWS RELATED TO INTELLECTUAL PROPERTY RIGHTS IN INDIA The Rules and Laws governing Intellectual Property Rights in India are as follows: 1. The Copyright Act, 1957, The Copyright Rules, 1958 and International Copyright Order, 1999 2. The Patents Act, 1970 The Patents Rules, 2003, The Intellectual Property Appellate Board (Patents Procedure) Rules, 2010 and The Patents (Appeals and Applications to the Intellectual Property Appellate Board) Rules, 2011 3. The Trade Marks Act, 1999, The Trade Marks Rules, 2002, The Trade Marks (Applications and Appeals to the Intellectual Property Appellate Board) Rules, 2003 and The Intellectual Property Appellate Board (Procedure) Rules, 2003 4. The Geographical Indications of Goods (Registration and Protection) Act, 1999 and The Geographical Indications of Goods (Registration and Protection) Rules, 2002 5. The Designs Act, 2000 and The Designs Rules, 2001 6. The Semiconductors Integrated Circuits Layout-Design Act, 2000 and The Semiconductors Integrated Circuits Layout-Design Rules, 2001 7. The Protection of Plant varieties and Farmers’ Rights Act, 2001 and The Protection of Plant varieties and Farmers Rights’ Rules, 2003 8. The Biological Diversity Act, 2002 and The Biological Diversity Rules, 2004 9. Intellectual Property Rights (Imported Goods) Rules, 2007 4. COPYRIGHT 4.1. What is Copyright? Copyright is the set of exclusive rights granted to the author or creator of an original work, including the right to copy, distribute and adapt the work. Copyright lasts for a certain time period after which the work is said to enter the public domain. Copyright gives protection for the expression of an idea and not for the idea itself. For example, many authors write textbooks on physics covering various aspects like mechanics, heat, optics etc. Even though these topics are covered in several books by different authors, each author will have a copyright on the book written by him / her, provided the book is not a copy of some other book published earlier. Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby protecting and rewarding creativity. Creativity being the keystone of progress, no civilized society can afford to ignore the basic requirement of encouraging the same. Economic and social development of a society is dependent on creativity. The protection provided by copyright to the efforts of writers, artists, designers, dramatists, musicians, architects and producers of sound recordings, cinematograph films and computer software, creates an atmosphere conducive to creativity, which induces them to create more and motivates others to create. 10 4.2. Copyright law in India The Copyright Act of 1957, The Copyright Rules, 1958 and the International Copyright Order, 1999 governs the copyright protection in India. It came into effect from January 1958. The Act has been amended in 1983, 1984, 1992, 1994 and 1999. Before the Act of 1957, copyright protection was governed by the Copyright Act of 1914 which was the extension of British Copyright Act, 1911. The Copyright Act, 1957 consists of 79 sections under 15 chapters while the Copyright Rules, 1958 consists of 28 rules under 9 chapters and 2 schedules. 4.3. Meaning of copyright According to Section 14 of the Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:- (a) in the case of a literary, dramatic or musical work, not being a computer programme, (i) to reproduce the work in any material form including the storing of it in any medium by electronic means; ii. to issue copies of the work to the public not being copies already in circulation; iii. to perform the work in public, or communicate it to the public; iv. to make any cinematograph film or sound recording in respect of the work; v. to make any translation of the work; vi. to make any adaptation of the work; vii. to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi); (b) in the case of a computer programme,- i. to do any of the acts specified in clause (a); ii. to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme: Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental. (c) in the case of an artistic work,- i. to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work; ii. to communicate the work to the public; iii. to issue copies of the work to the public not being copies already in circulation; iv. to include the work in any cinematograph film; v. to make any adaptation of the work; vi. to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv); (d) In the case of cinematograph film, - 11 (i) to make a copy of the film, including a photograph of any image forming part thereof; (ii) to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the film to the public; (e) In the case of sound recording, - i. to make any other sound recording embodying it; ii. to sell or give on hire, or offer for sale or hire, any copy of the sound recording regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the sound recording to the public. Explanation : For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation. 4.4. Classes of works for which copyright protection is available Indian Copyright Act affords separate and exclusive copyright protection to the following 7 clauses of work: 1. Original Literary Work 2. Original Dramatic Work 3. Original Musical Work 4. Original Artistic Work 5. Cinematograph Films 6. Sound recording 7. Computer Programme Copyright will not subsist in any cinematograph film if a substantial part of the film is an infringement of the copyright in any other work or in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has been infringed. In case of work of architecture, copyright will subsist only in the artistic character and design and will not extend to processes or methods of construction. 4.5. Ownership of Copyright The author of the work will be the first owner of the copyright in the following instances: i. In the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar 12 4.10. Rights of Broadcasting Organisation and of Performers Every broadcasting organisation will have a special right to be known as 'broadcast reproduction right' in respect of its broadcasts. The broadcast reproduction right will subsist until twenty-five years from the beginning of the calendar year next following the year in which the broadcast in made. This would prevent any person other than the broadcasting organisation from: i) Re-broadcasting what has already been broadcasted ii) Causing the broadcast to be seen or heard by the public on payment of charges iii) Making any sound/visual recording of the broadcast iv. Making any reproduction of such sound recording ro visual recording where such initial recording was done without licence or, where it was licensed, for any purpose not envisaged by such licence v. Selling or hiring or offering to sell or hire sound/visual recordings. Where any performer appears or engages in any performance, he will have a special right known as the 'performer's right' in relation to such performance. The performer's right will subsist until fifty years from the beginning of the calendar year next following the year in which the performance is made. These rights are: i) No person may make a sound/visual recording of the performer’s performances ii) Reproduce a sound/visual recording iii) Broadcast the performance iv) Communicate to the public otherwise than by broadcast 4.11. Intellectual Property Rights (IPR) of Computer Software In India, the Intellectual Property Rights (IPR) of computer software is covered under the Copyright Law. Accordingly, the copyright of computer software is protected under the provisions of Indian Copyright Act 1957. Major changes to Indian Copyright Law were introduced in 1994 and came into effect from 10 May 1995. These changes or amendments made the Indian Copyright law one of the toughest in the world. The amendments to the Copyright Act introduced in June 1994 were, in themselves, a landmark in the India's copyright arena. For the first time in India, the Copyright Law clearly explained: • The rights of a copyright holder • Position on rentals of software 15 • The rights of the user to make backup copies Since most software is easy to duplicate, and the copy is usually as good as original, the Copyright Act was needed. Some of the key aspects of the law are: • According to section 14 of this Act, it is illegal to make or distribute copies of copyrighted software without proper or specific authorization. • The violator can be tried under both civil and criminal law. • A civil and criminal action may be instituted for injunction, actual damages (including violator's profits) or statutory damages per infringement etc. • Heavy punishment and fines for infringement of software copyright. • Section 63 B stipulates a minimum jail term of 7 days, which can be extended up to 3 years 4.12. Copyright Infringements Some of the commonly known acts involving infringement of copyright: • Making infringing copies for sale or hire or selling or letting them for hire; • Permitting any place for the performance of works in public where such performance constitutes infringement of copyright; • Distributing infringing copies for the purpose of trade or to such an extent so as to affect prejudicially the interest of the owner of copyright ; o Public exhibition of infringing copies by way of trade; and o Importation of infringing copies into India. Civil Remedies for Copyright Infringement A copyright owner can take legal action against any person who infringes the copyright in the work. The copyright owner is entitled to remedies by way of injunctions, damages and accounts. The Criminal Offence Any person who knowingly infringes or abets the infringement of the copyright in any work commits criminal offence under Section 63 of the Copyright Act. The minimum punishment for infringement of 16 copyright is imprisonment for six months with the minimum fine of Rs. 50,000/-. In the case of a second and subsequent conviction the minimum punishment is imprisonment for one year and fine of Rs. one lakh. 4.13. International Copyright Copyrights of works of the countries mentioned in the International Copyright Order are protected in India, as if such works are Indian works. Copyright of nationals of countries who are members of the Berne Convention for the Protection of Literary and Artistic Works, Universal Copyright Convention and the TRIPS Agreement are protected in India through the International Copyright Order. The list of such countries is mentioned in the schedule of the International Copyright Order, 1999. 4.14. Licences Provisions with regard to licences are detailed in Chapter VI of the Copyright Act, 1957. Copyright Licence is granted by the owner of the copyright in any existing work or the prospective owner of the copyright in any future work in writing signed by him or by his duly authorized agent. In the case of a licence relating to copyright in any future work, the licence will take effect only when the work comes into existence. Where a person to whom a licence relating to copyright in any future work is granted dies before the work comes into existence, his legal representatives, in the absence of any provision to the contrary in the licence, will be entitled to the benefit of the licence. Any person can apply for the grant of copyright licence in Form II to produce and publish translation of a literary or dramatic work in any language in general use in India after a period of three years from the publication of such work, if such translation is required for the purpose of teaching, scholarship or research. The Copyright Board after holding an enquiry may direct the registrar to grant copyright licence to the person to publish the work or translation thereof in the language mentioned in the application. The applicant should deposit the amount of royalty as specified by the Copyright Board in the account of the original owner of the work. The copyright licence will be terminated at any time after the granting of a licence to produce and publish the translation of a work in any language, if the owner of the copyright in the work or any person authorized by him publishes a translation of such work in the same language and which is substantially the same in content at a price reasonably related to the price normally charged in India for the translation of works of the same standard on the same or similar subject. No termination will take effect until after the expiry of a period of three months from the date of service of a notice in Form IIB on the person holding such licence by the owner of the right of translation intimating the publication of the translation as aforesaid. 17 For an application for registration of change in particulars of copyright Rs. 400/- entered in the Register of Copyrights in respect of Cinematograph film per work (Section 45) For an application for registration of copyright in a Sound Recording Rs. 400/- (Section 45) per work For an application for registration of changes in particulars of copyright Rs. 200/- entered in the Register of Copyrights in respect of Sound Recording (Section per work 45) Rs. 20/- For taking extracts from the indexes (Section 47) per work Rs. 20/- For taking extracts from the Register of Copyrights (Section 47). per work For a certified copy of an extract from the Register of Copyrights of the Rs. 20/- indexes (Section 47) per work For a certified copy of any other public document in the custody of the Rs. 20/- Register of Copyright or the Copyright Board per work For an application for prevention of importation of infringing copies (Section Rs. 400/- 53) per place of entry per work Time taken for registration After filing application and receiving diary number the applicant should wait for a mandatory period of 30 days so that no objection is filed in the Copyright office against the claim that particular work is created by the applicant. If such objection is filed it may take another one month time to decide as to whether the work could be registered by the Registrar of Copyrights after giving an opportunity of hearing the matter from both the parties. If no objection is filed the application goes for scrutiny from the examiners. If any discrepancy is found the applicant is given 30 days time to remove the same. Therefore, it may take 2 to 3 month’s time for registration of any work in the normal course. The cooperation of the applicant in providing necessary information is the key for speedy disposal the matter. Any person aggrieved by the final decision or order of the Registrar of Copyrights may, within three months from the date of the order or decision, appeal to the Copyright Board. 20 Copyright Registration Workflow Filing of Application along with fee [DD/IPO} y Issue of Diary No. 1 30 days mandatory waiting for objections Objection Filed (Y/N? No objection Objection filed Serutinization Application accepted Sending Letter |<«—_—____ by Examiner (Objections rejected) to both parties Discrepancy letter | Application t Discrepancy issued to applicant | 22Pted Reply fre Ce both Found parties ‘Discrepancy y y (Y/N)? Reply from applicant Hearing by 1 Registrar No Discrepancy Found Hearing by Registrar due to rejection Application Yes- Registration Approved (Y/N)? (Dy. Registrar} Registration Approved iccepted (Y/N)? Application rejected y 1 Application rejected Sending Extracts from Register to the Applicant ¥ Sending Rejection Jetter to the Applicant O 21 22 No feescale in India patented inven�on on commercial St t me t regarding working of 27roc di g under the Act agent/or any person i a ma�er or Form f auth risa�on of pat nt 6 Trade Marks are distinctive symbols, signs, logos that help consumer to distinguish between competing goods or services. A trade name is the name of an enterprise which individualizes the enterprise in consumer’s mind. It is legally not linked to quality. But, linked in consumer’s mind to quality expectation. Key Features of Trademark • Trademark must be Distinctive • Trademark must be used in Commerce Types of Trademark • Trademark, • Servicemark, • Collectivemark, • Certification Mark Functions of Trademark Trademark performs four functions – • It identifies the goods / or services and its origin; • It guarantees its unchanged quality; • It advertises the goods/services; • It creates an image for the goods/ services. 6.2. Trade Marks law of India The Trade Marks Act, 1999 and the Trade Marks Rules, 2002 govern the law relating to Trade Marks in India. The Trade Marks Act, 1999 (TMA) protects the trade marks and their infringement can be challenged by a passing off or/and infringement action. The Act protects a trade mark for goods or services, on the basis of either use or registration or on basis of both elements. 6.2.1. Who can apply for Trademark? Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing in Form TM-1 for registration. The application should contain the trade mark, the goods/ 25 services, name and address of applicant and agent (if any) with power of attorney, period of use of the mark and signature. The application should be in English or Hindi. It should be filed at the appropriate office. 6.2.2. Jurisdiction for filing application A trade mark application should be filed at the appropriate office of the Registry within whose territorial limits, the principal place of business in India of the applicant is situate. In the case of joint applicants, the principal place of business in India of the applicant will be that of the person whose name is first mentioned as having a place of business. If the applicant has no principal place of business in India, he should file the application at that office within whose territorial jurisdiction, the address for service in India given by him is located. No change in the principal place of business in India or in the address for service in India shall affect the jurisdiction of the appropriate office once entered. 6.2.3. Location and Jurisdiction of Trademarks Office 1) Trade Marks Registry, Mumbai (Head Office) Intellectual Property Bhavan, Near Antop Hill Head Post Office, S.M. Road , Antop Hill, Mumbai 400037 Tel: 022-2410 1144, 24101177, 24148251, 24112211 Fax: 24120808, 24132295 Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa. 2) Trade Marks Registry, Delhi Intellectual Property Bhavan, Plot NO.32, Section 14, Dwarka, Delhi Tel. 011-28082915/ 16/17 Fax: Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh 3) Trade Marks Registry, Kolkata, CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake, Kolkata700091 (Telfax. 033-23677311) Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, 26 Sikkim , Tripura and Union Territory of Nagaland, Andamar & Nicobar Island. 4) Trade Marks Registry, Ahmedabad, 15/27 National Chambers, 1st floor, Ashram road, Ahmedabad - 380 009. Tel: 079-26580567 Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Damman, Diu, Dadra and Nagar Haveli 5) Trade Marks Registry, Chennai IP building, GST Road, Guindy Chennai-600032 Tele: 044-22502041, Fax: 044-22502042 Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island. 6.2.4. Particulars to be filed with application for registration The application should be filed in triplicate with the following particulars – • Graphic representation of the trademark. • Five Additional representations are to be provided corresponding exactly with one another. • In the case of three dimensional mark, the reproduction of the mark should consist of a two dimensional or photographic reproduction. • Where the trade mark contains a word or words in scripts other than Hindi or English, a transliteration and translation of each word in English or in Hindi should be given indicating the language to which the word belongs, at the time of filing the application to facilitate completion of data entry at the initial stage itself. • The application may contain a declaration claiming priority as per the Paris Convention. 6.2.5. Procedure for series registration 27 However second and subsequent offences shall be more severely punished. There shall be an Imprisonment of not less than one year which may extend to three years and a fine which shall not be less Rupees One lakh, but may extend to Rupees Two Lakh. The court can propose a lower punishment than the minimum, only after recording adequate and special reasons for the same. 6.2.11. E-filing of Trademark application E-filing is the service provided by the Trademark Registry in order to enable customers to apply for a Trade Mark on-line allowing from the applicant’s browser to: • Complete an electronic application form; • Provide the associated attachments; • Complete the necessary payment details Procedure for e-filing In order to submit an electronic application form, following steps should be followed - 1. Acquire Class 3 Digital Signatures from (n)Code Solutions or Tata Consultancy Services (TCS) or SafeScrypt from Sify . The Procedure for getting the Digital Signature and the location of their Offices is available at their website. 2. For users (Proprietors/Agents or Attorneys), already registered with TMR (Trademark Registry) Office India can complete online registration by providing a desired User ID, their User Type (Proprietor/Agent/Attorney) and User Code. 3. For Users who are not registered as Proprietor / Attorney with TMR Office, they can search and fill online form to obtain User code (Party Code). 4. Secure Login into the system with created User Id and the Digital Signatures. 5. Obtain a New Reference Number for New Application. Use this option when the applicant wants to apply for a new Trademarks Application. 6. Update Application Details: Use this option to edit / update the application details along with relevant images and attached documents. Final Submission to TMR-India with Digital Signature is included in this option after which application cannot be edited. 7. The Cases which are Digitally Submitted to TMR, India are available for online payment. The applicant can pay for more than one application in a single transaction. Once the payment is realized as confirmed by the Payment Gateway, an acknowledgement receipt for the fees paid is generated by the system indicating the Receipt Number, Application Number and Date of Filing. 8. An applicant can also view online History and status of the applications filed by him / her by clicking Status of Filed Application. 9. An applicant can also view the online status of e-Payments. TMR Flow Chart 30 FILING OF AP PLICATION/CASH RECEIPTS I APPL.NO ALLOTMENT DATA ENTRY I SCANNIN VIENNA, CODIFICATION Examination & Examination Report despatched Accepted Objected Refused/ Show cause hearing withdrnen! abandoned Journal Publication (Manuscript, Hindi Translation, Scanning, Composing) Avagit for oppositon Teta Property Appellate Board Opposition nitegiseration (Manusoript (Fixing of hearingiproduction of ° cari toaran Checking on evidence delivery of judgement tifomes, Checking on merits). Hearings are taken by Hearing officers Application to proceed for Registration If Opposition is allowed & application is refused Renewal, Post Registration Changes ete. 7. DESIGNS 7A What is Design? J Either Review 31 A Design refers to the features of shape, configuration, pattern, ornamentation or composition of lines or colours applied to any article, whether in two or three dimensional (or both) forms. This may be applied by any industrial process or means (manual, mechanical or chemical) separately or by a combined process, which in the finished article appeals to and judged solely by the eye. Design does not include any mode or principle of construction or anything which is mere mechanical device. It also does not include any trade mark or any artistic work. An industrial design registration protects the ornamental or aesthetic aspect of an article. Designs may consist of three-dimensional features, such as the shape or surface of an article, or of twodimensional features, such as patterns, lines or color. Designs are applied to a wide variety of products of different industries like handicrafts, medical instruments, watches, jewelry, house wares, electrical appliances, vehicles and architectural structures. An industrial design is primarily for aesthetic features. Design law in India The essential purpose of design law it to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The Designs Act, 2000 and the Designs Rules, 2001 presently govern the design law in India. The Act came into force on 25th May 2000 while the Rules came into effect on 11th May 2001. The object of the Designs Act to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. 7.2. Need for registration of Design The registration of a design confers upon the registered proprietor the exclusive right to apply a design to the article in the class in which the design has been registered. A registered proprietor of the design is entitled to a better protection of his intellectual property. He can sue for infringement, if his right is infringed by any person. He can license or sell his design as legal property for a consideration or royalty. Registration initially confers this right for ten years from the date of registration. It is renewable for a further period of five years. If the fee for extension is not paid for the further period of registration within the period of initial registration, this right will cease. There is provision for the restoration of a lapsed design if the application for restoration is filed within one year from the date of cessation in the prescribed manner. 7.3. Essential requirements for registration of Design A design should - • Be new or original • Not be disclosed to the public anywhere by publication in tangible form or by use or in any other way prior to the filling date, or where applicable, the priority date of the application for registration. • Be significantly distinguishable from known Designs or combination of known designs. • Not comprise or contain scandalous or obscene matter. 32 During the existence of copyright over any design, other persons are prohibited from using the design except or with the permission of the proprietor, his licensee or assignee. The following activities are considered to be infringement. • To apply the design or any fraudulent imitation of it to any article for sale; • To import for sale any article to which the design or fraudulent or obvious imitation of it, has been applied; • To publish or to expose for sale knowing that the design or any fraudulent or obvious imitation of it has been applied to it. 7.10. Forms and Fees under the Designs Act, 2000 and the Designs Rules, 2001 35 months available. Form 3 Application to extend copyright Before the expiry of | Rs.2000/- initial period of 10 years Form 4 Application for Restoration of | Within one — year | Rs.1000/- lapsed design from date of cessation. Form 5 Inspection of registered design No time limit | Rs.500/- prescribed. Form 6 Request for information when|No _ time limit | Rs.500/- registration number is given. prescribed. Form 7 Request for information when|No _ time limit | Rs.1000/- registration number is not given. prescribed. Form 8 Rs.1500/- Petition to cancel registration of | Any time during design. existence of copyright. Form 9 Rs.500/- Notice of intended exhibition or publication of unregistered design. Form 10 Rs.500/- for Application for registration of a one design. document in the Register Design. Rs.200/- for each additional design Form 11 Rs.500/- for Application for entry of name of one design. proprietor or part proprietor in the Rs.200/- for Register each additional design Form 12 Rs.500/- for Application for entry of mortgage 36 37