Intellectual Property Rights Notes
Intellectual Property Rights (IPR)
Intellectual Property (IP) refers to intangible assets owned by individuals or companies, contributing to national and state economies. Companies rely on the protection of patents, trademarks, and copyrights. IP offers security protection similar to physical property, providing comparative benefits to businesses. In the digital age, IP protection is crucial due to the ease of reproducing templates, logos, or functionalities.
Intellectual Property is defined as creations of the mind, including innovations, literary and artistic works, symbols, names, and images used in commerce. The objective of IP protection is to encourage creativity for the benefit of all and to ensure creators benefit from their creations, incentivizing creative activity and providing investors a return on investment in research and development (R&D). IP empowers individuals, enterprises, and entities to exclude others from using their creations without consent.
Intellectual property rights are legal rights protecting artistic, literary, inventions, discoveries, symbols, or designs for a specific period. IP owners have rights to enjoy their property without disturbances and prevent others from using them. While considered monopoly rights, they are limited in geographical range, time, and scope. IP rights impact industry and business, allowing owners to enforce these rights and prevent the unauthorized manufacture, use, or sale of a product. IP protection encourages publication, distribution, and disclosure of creations to the public, rather than secrecy, and encourages commercial enterprises to select creative works for exploitation.
Nature of Intellectual Property
Intangible Rights over Tangible Property
IP's main characteristic is its intangibility. IP establishes property protection over intangible things like ideas, inventions, signs, and information. This allows creators or owners to benefit from their works when used commercially.
Right to Sue
IP is an asset that can be owned and managed. It can be contested in rights of action, enforced by legal action by those who have the rights. IP is a property right that can be inherited, bought, gifted, sold, licensed, entrusted, or pledged. The IPR owner can use their property as they like, subject to conditions, and can take legal action against unauthorized use, receiving compensation against real property.
Rights and Duties
IP gives rise to both property rights and duties. The IP owner has the exclusive right to produce, copy, and market the work. There is also a negative right to prevent third parties from exercising their statutory rights.
Coexistence of Different Rights
Different types of IPRs can coexist in relation to a particular function. For example, an invention may be patented, and the invention photograph may be copyrighted. A design can be protected under the Design Act and also incorporated into a trademark. Commonalities exist between patent and industrial design, copyright and neighboring rights, trademarks and geographical indications. Some IP rights are positive rights, while others are negative rights.
Exhaustion of Rights
Intellectual property rights are generally subject to the doctrine of exhaustion. After the first sale by the rights holder or with their authority, their right ceases, preventing them from stopping further movement of the goods. Once an IP rights holder has sold a physical product with IPRs attached, they cannot prevent subsequent resale. This principle is based on the free movement of goods. The exclusive right to sell goods cannot be exercised twice for the same goods; the right to restrict further movements expires after the first sale.
Dynamism
IPR is in continuous development, evolving with technology. New items are added to the scope of IPR, and its preservation is being expanded. Examples include Bio Patents, Software Copyrights, and Plant Diversity Protection. The importance and mobility of IP are well established at statutory, administrative, and judicial levels.
Importance of Intellectual Property Rights
Incentivizing Innovation and Creativity
IPR provides creators, inventors, and innovators assurance of reward for their efforts.
Driving Economic Growth and Competitiveness
IPR protection enables businesses to leverage innovations, develop market advantage, and gain a competitive edge in domestic and global markets.
Encouraging Technology Transfer and Collaboration
IPR facilitates technology transfer and encourages collaborations between entities.
Protecting Consumers and Society
IPR safeguards consumers by ensuring the quality, safety, and authenticity of products and services.
Promoting Cultural Diversity and Development
IPR balances rewarding creators and promoting knowledge dissemination and cultural expression.
Encouraging Research and Development in Critical Areas
Strong IPR protection fosters innovation and contributes to advancements in healthcare and other critical sectors.
Strengthening International Relations and Trade
Intellectual property plays a significant role in international trade relations.
Benefits of IPR
Innovative Idea as a Means to Earn Profit
IP transforms innovations into commercially viable products and services. Registering copyright and patents results in increased income.
Export Business Opportunities
IP improves a company's productivity in the export market. IP right holders can sell products and services in foreign countries, obtain franchise arrangements with overseas corporations, or export proprietary products.
Encourage the Ideas by Securing Them
IP protection is necessary to prevent duplication of concepts or developments for monetary benefit. IP security should be implemented for all sizes of companies. After evaluating market needs, a person should determine which Intellectual Property Rights (trademark, copyright, or patent registration) should be used to cover various areas of IP.
Business Growth
Protecting exclusive goods or services is very important for small-scale enterprises, as rivals will use them to take away market share. Losing market share at the initial level can be dangerous in the long run.
Types of IPR
Copyright
The Copyrights Act, 1957, protects the expression of an idea rather than the idea itself. Protection under copyright can be obtained for original literary, dramatic, musical, and artistic works; cinematograph films; and sound recordings. Copyright protection can also be obtained for computer programs. A copyright is an exclusive right granted to a person to do or authorize certain activities regarding the copyrighted work. For example, for a literary, dramatic, or musical work, the owner is permitted to perform the work, make translations, make adaptations, etc. Section 17 states that the author of the original work is the first owner, who can license the copyright to third parties through a written agreement.
Trademark
The Trade Marks Act, 1999, defines a trademark as a mark capable of being represented graphically and distinguishing goods or services of one person from those of others, including the shape of goods, their packaging, and combination of colors. A trademark protects symbols, colors, shapes, words, etc., representing a good or service. Primary requirements for registration include that the mark should distinguish the goods/services from others and be capable of graphical representation. The Trade Marks Act provides absolute grounds of refusal of registration, such as a mark not having a distinctive character, being deceptive or confusing, being hurtful to religious sentiments, or being offensive, scandalous, or obscure. Relative grounds of refusal also exist, such as similarity with pre-existing marks. India is a signatory to the Madrid Protocol, under which a trademark can be applied for and registered internationally, with the prerequisite of first filing in India. Trademark registration protects the brand name, logo, sound, shape, etc., and distinctively identifies the goods/services. The validity of a trademark registration is for an initial period of 10 years, renewable perpetually for successive periods of 10 years.
Patent
The Patents Act, 1970, defines a patent as an intellectual property right protecting any new invention. It is an exclusive right protecting the inventor's rights and preventing unauthorized use and misappropriation. A patent is granted for 20 years from the date of filling the application. A patent is registered only if the invention is novel and original (not introduced in the public domain in India or anywhere else), capable of industrial application (ability to be used in an industry), and involves inventive steps (a feature involving technical advance or economic significance that makes the invention not obvious to a person skilled in the art). Registered patent holders have the right to prevent third parties from using, selling, making, importing, etc., the product without prior consent and to prevent third parties from using, selling, offering, etc., a product obtained from that process without consent. India is a signatory to the Patent Cooperation Treaty (PCT), permitting an applicant to file for an international patent and obtain patent protection in multiple countries simultaneously.
Industrial Design
The Design Act, 2000, covers industrial design as the process of converting ideas into appealing products that can be mass-produced, involving research and analysis based on market demand. It focuses on the form and features of the product. Industrial design can be represented in two-dimensional forms such as drawings, lines, colors, patterns, and painting, or in three-dimensional forms such as any article or product. Under Section 2(d), a design means the features of shape, configuration, pattern, ornaments, or composition of lines or colors applied to any article, judged solely by the eye. An application for registration is made to the Controller-General of Patents, Designs and Trade Marks. A design is considered for registration if it is novel and an original innovation, has not been disclosed to the public, and can be easily distinguished from other known designs. Protection is afforded for an initial period of 10 years, extendable for a further period of 5 years.
Procedure for Registration of Design in India
Chapter II of the Designs Act, 2000, outlines the procedure for registration:
Filing of an application: An application is made in the prescribed form with the prescribed fees to the patent office.
Examination of the application: The controller sends the application to be examined to check its eligibility for registration. A positive signal from the examiner leads to acceptance and further processing.
Communicating the objections, if any: The examiner notifies the applicant of any defects, and the applicant is required to remove all objections and resubmit the application within six months.
Publication of particulars of registered designs: After registration, the Controller publishes the prescribed particulars in the Designs Rules, 2001, after which the design is open for public inspection.
Registration: Upon registration, the registered owner gets copyright in the design for ten years from the date of registration.
Geographical Indications of Goods
The Geographical Indications of Goods (Registration and Protection) Act, 1999, covers goods widely popular due to their place of origin, for example, 'Darjeeling tea'. A Geographical Indication is defined as an indication that identifies goods (agricultural, natural, or manufactured) originating from a territory, region, or locality where a given quality, reputation, or characteristic is essentially attributable to its geographical origin. The GI Act covers agricultural goods, food stuff, handicraft goods, manufactured goods, and natural goods. The application requires a statement explaining how the geographical indication affects the origin of the good, its quality, characteristics, and reputation, the class of goods, particulars of the appearance of the geographical indication, and the map of the territory/area/country where the good originated. Protection is awarded for 10 years, renewable for further tenures of 10 years.
The Protection of Plant Varieties and Farmer’s Rights
The Protection of Plant Varieties and Farmer’s Right Act, 2001, recognizes the rights of Indian farmers and provides protection to plant varieties to encourage growth and development of more plant varieties. India became a member of the Trade Related Aspect of Intellectual Property Rights Agreement (TRIPS) in 1994, which requires members to provide for the protection of plant varieties [Article 27(3)(b) of TRIPS]. Registered plant varieties are recorded in the National Register of Plant Varieties. Any breeder, farmer, or authorized person can apply for registration of a new plant variety if it satisfies the conditions of novelty, distinctiveness, uniformity, and stability. Novelty requires that the plant variety must not be sold at the date of filing the application. Distinctiveness requires at least one distinguishing factor from all other existing and protected plant varieties. Uniformity means that all essential characteristics must be uniform. Stability means that the essential characteristics must remain unchanged after repeated propagation. The validity of registration is 9 years for trees and vines and 6 years for crops, with the option of renewal.
Integrated Circuits Layout
The Semiconductor Integrated Circuits Layout-Design Act, 2000, defines a semiconductor integrated circuit as a product having transistors and other circuitry elements inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material, designed to perform an electronic circuitry function. A semiconductor is any physical substance that facilitates current flow. All layout-designs capable of being registered are required to be original, commercially unexploited, inherently distinctive, and distinguishable from other registered layout-designs. The application has to be in writing and filed before the Registrar in the Semiconductor Integrated Circuits Layout-Design Registry. Protection is afforded for 10 years. A fee of Rs 5000 is required for registration. The act discourages layout designs that exploit any values, legal rights, etc., and prohibits non-original designs. Only original, new inventions with non-destructive motives are approved.
Trade Secrets
A trade secret is a company's process or practice not public information, providing an economic benefit. Trade secrets must be actively protected and are typically the result of research and development.
Patents
A patent is a legal document granting individuals or businesses the right to safeguard their inventions, preventing unauthorized import, production, or sale. Inventors patent creations to protect innovative ideas. Patent Registration provides inventors with exclusive ownership and usage rights for their product, service, or technology, granting a monopoly for the patent's validity. Inventors and businesses must safeguard innovative ideas and stop others from using, selling, or making their inventions without permission. Sections 3 and 4 of the Indian Patents Act 1970 state the inventions that cannot be patented. An invention under Section 2(j) means a new product or process involving an inventive step and capable of industrial application.
The patentability criteria of an invention:
Patentable subject matter: The invention must relate to a patentable subject matter and not fall under Sections 3 or 4 of the Patents Act.
Novelty: Under Section 2(l), the invention should never have been published in the public domain and should be new with no identical or similar prior arts.
Inventive step or Non-Obviousness: Under Section 2(ja), the invention must involve technical advance or economic significance and not be obvious to a person skilled in the art.
Capable of Industrial Applications: Under Section 2(ac), the invention must be capable of being made or used in an industry and have practical utility.
An enabling patent disclosure must disclose the invention sufficiently to enable a person skilled in the field to carry out the invention without undue effort. If the patent specification does not reveal an enabling patent, then a patent will most definitely not be granted.
What is Patentable?
Products: New and inventive physical items such as machines, devices, chemicals, pharmaceuticals, and manufactured goods.
Processes or Methods: Innovative methods that offer a novel way of accomplishing a specific task or producing a product can be patented.
Machines: Any new and useful machines or mechanical inventions can be patented.
Manufactured Articles: Items created through a novel process or having unique features can be patented.
Chemical Compounds: New and inventive chemical compounds can be patented.
Biotechnological Inventions: Innovations in biotechnology can be patented.
Software and Computer-Implemented Inventions: In some instances, software and computer-related inventions can be patented, provided they demonstrate novelty and an inventive step.
What Cannot Be Patented?
The Patent Act of 1970 specifies exclusions from patentability which includes:
Inventions that violate natural laws.
Inventions harmful to humans, animals, plant life, or the environment.
Discoveries of scientific principles or abstract theories.
Discoveries of naturally occurring living or non-living substances.
Inventions that are merely a known process or machine unless they result in a new product.
Simple mixtures that combine the properties of their components.
Basic arrangements or rearrangements of common devices.
Inventions excluded by the Patents (Amendment) Act, 2002.
Methods for agriculture or horticulture.
Processes related to medicinal, surgical, curative, diagnostic, therapeutic, or human/animal disease prevention.
Inventions concerning plants, animals (including seeds, varieties, species), except microorganisms.
Computer programs or mathematical methods.
Creations related to literary, dramatic, musical, or artistic works, including films and television productions.
Simple game-playing methods.
Mere information presentation.
Topography of integrated circuits.
Inventions aggregating or duplicating known properties of components traditionally known.
Inventions related to atomic energy (not patentable).
Procedure for Obtaining a Patent:
A patent application can be filed at any of the four patent offices in India namely; Kolkata, Delhi, Mumbai or Chennai.
The patent application passes through the following stages:
Filing:
The true and first inventor, assignee or legal representative of the inventor can file
Application can be filed by a national of any country
Application shall have a provisional or complete specification
Priority date is the date of first filing
Requires Form 1, Form 2, Form 3, Form 5, and Form 26
Publication: Published on the expiry of 18 months after the priority date
Examination: The request has to be made within 48 months from the date of priority of filing
Opposition:
Pre-grant opposition: where a person object the granting of patent.
Post-grant opposition: Any person can challenge the grant of a patent within a period of twelve months of granting of the patent.
Grant: Application satisfies all the requirements of the patent act
Procedure for Opposition to Grant of Patent (S.25-26):
Grant of patent may be opposed at two stages namely 'pre- grant opposition' and 'post-grant opposition. Under pre-grant opposition, any person or any third party or Government may challenge the application of grant of patent and inform to the Controller of Patents for opposition, in writing against the grant of a patent after the application for a patent has been published but before the grant of a patent. Post grant opposition may be filed at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of the patent by interested person.
Pre-grant opposition or post grant opposition can be made on the grounds listed under section 25(1)(a) to (k) of the Patent Amendment Act, 2005:
Wrongfully obtaining the invention
anticipation by prior publication
anticipation by prior date, Prior claiming in India
Prior public knowledge or public use in India
Obviousness and lack of inventive step
non patentable subject matter
insufficiency of description of the invention
non-disclosure of information as per the requirement or providing materially false information by an applicant
Patent application not filed within 12 months of filing the first application in a convention country.
On receipt of the opposition the Controller shall intimate the patentee and also constitute an Opposition Board' to look into the allegation. The Opposition Board shall afford opportunity to all concerned parties and examine the complaint. On the basis of the recommendation of the Opposition Board, the Controller shall order to maintain or amend or revoke the patent as the case may be.
Term of Patent:
A patent is for twenty years from the date of application which is granted on a territorial basis by appropriate Office of the Patent.
However, a patent expires under the following circumstances:
On the expiry of the term.
Patentee failing to pay the annual renewal fee.
Patent is revoked
Patent is a legal monopoly hence transferable and inheritable. Government may if required impose restrictions.
Patent Infringement
Patent infringement is a violation which involves the unauthorized use, production, sale, or offer of sale of the subject matter or Invention of another’s patent. The basic idea behind patent infringement is that unauthorized parties are not allowed to use patents without the owner’s permission. When there is infringement of patent, the court generally compares the subject matter covered under the patent with the used subject matter by the “infringer”, infringement occurs when the infringer Uses patent material from in the exact form. Patent infringement occurs directly or indirectly.
Direct patent infringement:
The most common form of infringement is direct infringement, where the Invention that infringes patent claims is actually described, or the Invention performs substantially the same function.
Indirect patent infringement:
Another form of patent infringement is indirect infringement, which is divided into two types:
Infringement by inducement is any activity by any third party that causes another person to infringe the patent directly. This may include selling parts that can only be used realistically for a patented invention, selling an invention with instructions to use in a certain method that infringes on a method patent or licenses an invention that is covered by the patent of another. The inducer must assist intentional infringement, but does not require intent to infringe on the patent.
Contributory infringement is the sale of components of material that are made for use in a patented invention and have no other commercial use. There is a significant overlap with indications, but contributor violations require a high level of delay. Violations of the seller must have direct infringement intent. To be an obligation for indirect violations, a direct violation must also be an indirect act.
Remedies for Patent Infringement
Patent infringement lawsuits can result in significantly higher losses than other types of lawsuits. Some laws, such as the Patent Act, allow plaintiffs to recover damages. Several remedies are available to patent owners in the event of an infringement. Measures available in patent infringement litigation may include monetary relief, equal relief and costs, and attorneys’ fees.
Monetary Relief:
Monetary relief in the form of compensatory damages is available to prevent patent infringement:
Indemnity compensation – A patent owner may have lost profits for infringement when they established the value of the patent.
Increased damage – Up to three times, compensation charges can be charged in cases of will or violation of will.
The time period for damages – The right to damages can be claimed only after the date when the patent was issued and only 6 years before the infringement claim is filed.
Equitable relief:
Orders are issued by the court to prevent a person from doing anything or Act. Injections are available in two forms:
Preliminary injunction – Orders made in the initial stage of lawsuits or lawsuits that prevent parties from doing an act that is in dispute (such as making a patent product)
Permanent injunction – A final order of a court which permanently ceases certain activities or takes various other actions.
Copyright
Copyright is a right given by the law to the author or creator of original literary dramatic, musical, artistic works and producers of cinematograph films and sou recordings. It is a bundle of rights including the rights of reproduction, communication to the public, adaptation and translation of the work.
Copyright Covers:
Indian Copyright Act affords separate and exclusive copyright protection to following seven clauses of work:
Original Literary Work.
Original Dramatic Work.
Original Musical Work.
Original Artistic Work.
Cinematograph Films.
Sound recording.
Computer Programme.
An Author under the Copyright Act shall mean:
In the case of a literary or dramatic work the author, i.e. the person who creates the work.
In the case of a musical work, the composer.
In the case of a cinematograph film, the producer.
In the case of a sound recording, the producer.
In the case of a photograph, the photographer.
In the case of a computer-generated work, the person who causes the work to be created.
Meaning of 'Fair Use':
The copyright law permits limited use of copyright material without permission from the copyright holder. This is called fair use.
The Fair use is permitted:-
for the purpose of research or private study,
for criticism or review
for reporting current events,
in connection with judicial proceeding,
performance by an amateur club or society if the performance is given to a non-paying audience, and
the making of sound recordings of literary, dramatic or musical works under certain conditions.
Rights of a Copyright Holder:
Moral Right: enbles the holder of the right to publish or not, when and in what tom to publish and also to refrain others from distorting his work, image or honour.
Economic Right: enables the copyright holder to have monetary benefits and thus permits
i. to reproduce the work in any material form and store it in any medium
ii. to issue copies of the work to public;
iii. to perform or communicate his work to public;
iv. To make any film or sound recording; to make any translation of the work;
v. to make any adaptation of the work;
vi. to do, in relation to a translation or adoption with respect to act specified above.
vii. In case of computer programme there are two more additional rights to the above- mentioned rights. The right to sell or give on commercial rental.Right of assignment: Like in the case of other intellectual rights, the copyright holder can assign his rights.
Grant License: The holder can also grant license to others with regard to the copyright.
What is the Term of a Copyright?
For work published during the lifetime of the author the term of a Copyright is for the lifetime of the author plus 60 years.
For cinematographic films, records, posthumous publication, anonymous publication, works of government and international agencies, the term is 60 years from the beginning of the calendar year following the year in which the work was published.
For broadcasting, the term is 25 years from the beginning of the calendar year following the year in which the broadcast was made.
Infringement of Copyrights:
Copyright infringement is the use or production of copyright-protected material without the permission of the copyright holder. Copyright infringement means that the rights afforded to the copyright holder, such as the exclusive use of a work for a set period of time, are being breached by a third party. In short infringement is undertaking following activities without permission:
to communicate the sound recording to the public;
Reproducing without permission.
Translation
Adaptation
To perform the work in public or communicate to the public
To make cinematographic film or sound recording.
In case of computer programs, the rights also include the right to sell or give on hire, or offer for sale or hire any copy of the computer programme, regardless of whether such copy has been sold or given on hire on earlier occasions.
Remedies of Copyright Infringement:
The basic objective of copyright is to exclude others from exploiting work commercially without consent or license from the copyright holder. There are basically three types of remedies.
Before Civil Courts: A copyright holder may move a Civil Court to grant injunction against such person, claim damages and accounts
Criminal Courts: To get the infringer imprisoned and the infringing copies seized.
Besides one can get ANTON PILLER order from court, which means that court grants an ex-parte order if it feels that the case is balanced in favour of copyright holder, damage otherwise cause could be great, there should be clear evidence to show the presence of infringing copies in the premises of infringer, having knowledge he could be liable for imprisonment ranging 6 months, 3 years and fine of Rs. 50,000- to Rs. 2 lakhs.
Before Registrar: The copyright holder may also request the Registrar of copyright to stop importing infringing copies and confiscation. And also for delivery of confiscated copies.
Procedure for Registration of a Work under Copyright Act:
Following are the steps involved in registration of copyright:
The author or publisher or the owner of or other person interested in the copyright in, any work may make an application in the prescribed Form IV accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights.
On filing of the application, the applicant will have to wait for a mandatory period of 30 days during which objection if any can be filed.
The Registrar after hearing objection/s if any and on being satisfied shall make entry in the Register of Copyright. The entry shall be admissible as evidence in the Courts.
The register of copyrights and indexes thereof kept under this Act shall at all reasonable times be open to inspection, and any person shall be entitled to take copies of, or make extracts from, such register or indexes on payment of such fee and subject to such conditions as may be prescribed.
The Register of Copyrights may, in the prescribed cases and subject to the prescribed conditions, amend or alter the Register of Copyrights.
Any person aggrieved by any final decision or order of the Registrar of Copyright may appeal to the Copyright Board within three months from the date of the order or decision.
Trademark
A trade mark (popularly known as brand name) is a visual symbol which may be a word signature, name, device, label, numerals, symbols 3D marks, slogans, sounds, gestures, shapes, packaging or colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. Thus, trade mark is a badge of trade origin and is a marketing tool. The trade mark used must be capable of being represented graphically.
The symbols used for Trade Marks are:
SM: For unregistered service mark to promote or brand service.
TM: for unregistered Trade Mark to promote or brand goods.
®: Registered trade mark
Good Trade Marks possess the following characteristics:
It should be easy to pronounce, spell and remember.
It should be distinctive and should not have deceptive similarity.
It should not be descriptive.
It should satisty the requirements of registration.
It should not belong to the class of marks prohibited for registration.
Functions of Trademark:
Trade mark identifies the product and its origin,
Guarantees its unchanged qualities and
Helps to advertise the product.
Protects the innocent public from buying goods of inferior quality.
Guards the commercial goodwill of a trader.
Types of Trademark:
Service mark: A service is the same as Trade Mark except that it identifies the source of services available. Thus, service mark enables a consumer to distinguish between the different services. Example, Hospitality, Healthcare, Insurance, Travel services, etc.
Collective mark: A collective mark may be owned by an association/ groups. The members may use the collective mark provided they comply with the set criteria established by the association. Example: CA, CPA.
Certification mark: A certificate trade mark means a guarantee mark which indicates that the goods to which it is applied are of a certain quality or are manufactured in a particular way or come from a certain region or use some specific material or maintain a certain level of accuracy.
The goods must originate from a certain region rather from a particular trader. Certification marks are also applicable to services and the same parameters will have to be satisfied. Further these marks are registrable just like any other Trade Mark. Also, they may be used by anyone whose goods or services meet the established standards. A important requirement for the registration of a certification mark is that the entity which applies for registration is competent to certify the product concerned.
Examples: Agmark, ISI mark, BSI mark.
Image mark or architectural design: This mark is given provided the architectural design is that of a building owned by an individual or a company. Further, the building should be recognizable by many people. Lastly, the building should represent a brand that associates a product or service to, a source. Example: Taj Mahal Palace Hotel at Mumbai.
Sound marks: the facility of for registration of a sound mark. The mark will be required to be submitted in MP3 format along with graphical representation of the sound notation. Example: Yahoo Yodel.
Trademarks that cannot be registered:
The following are the types of marks that cannot be registered in India:
That which is not capable of distinguishing the goods or services of one person from those of another person; or
Consisting exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; or
Has become customary in the current language; or
Of such nature as to deceive the public or cause confusion; or
Contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
Comprises or contains scandalous or obscene matter; or
Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.; or
A generic term; or
Words or shapes commonly used.
Rights Conferred by Registration of Trade Mark:
The proprietor or the owner of the goods or service has the right to apply for the registration of the trade mark with the Office of the Registry of Trade Marks. Once the Trade Mark is registered, the proprietor or owner of the Trade Mark enjoys the statutory rights of not only to the exclusive use of the said mark in relation to the goods or services for which the same is registered but also to entertain others from using an identical or deceptively similar mark in respect of the goods or services.
Procedure for Registration a Trademark:
Filing: With requisite details and the feels at any one of the office of Trade Mark Registry which has its head office at Mumbai and branch offices at Ahmedabad, Chennai, Delhi and Kolkata.
Examination: The office of the registry shall examine the report
Advertisement: An advertisement shall be given in the Indian Trade Mark journal. This enables the public to file objections if any. Opposition can be filed within 3 months from the date of the advertisement in the journal, which is extendable by 1 month
Registration: If there is no objection or when there is an objection which has been heard and disposed of, the Registrar shall proceed to register the trade mark.
Acts Amounting to Infringement of Trademark:
Using the same or similar marks even for different goods falling in other classes;
Using the same or similar marks even only as part of their firm name or company name;
Using the same or similar mark only in advertising or on business papers; or
Importing or exporting goods under the said Trade Mark; or
Unauthorized oral use of the said Trade Mark.
Trade Mark rights can be obtained from the Office of the Registrar of Trade Marks. The rights are granted for a period of ten years which is renewable.
Remedies for infringement of Rights:
The innocent party can avail of the following remedies:
Civil Remedies: When instances of infringement and passing off occur, the court of competent jurisdiction not lower than District Court can be moved for grant of interlocutory injunction, Anthon Pillar Orders, damages and account of profits.
Criminal Proceedings: Complaints may be made against the person causing infringement.
Imprisonment between 6 months up 3 years and fine of Rs. 50,000 to 2 lakhs say be levied. Both the action, under the civil law and criminal law can be initiated simultaneously under the civil law proceedings, the plaintiff seeks reliefs for himself while under the criminal law proceedings the complaint seeks award of punishment to the infringer.
A case may be filed within 3 years of cause of action (infringement).
Passing Off:
Means passing off one's goods or business as the goods or business of another.
Thus Passing Off involves:
Invasion of the proprietary rights over which another person has protection and
There must be misrepresentation.
Invasion has resulted in damage to that other person.
For 'Passing Off' the remedies available to the person holding the proprietary rights include injunction, civil and criminal liabilities.
Geographical Indications:
A geographical indication (GI) is a sign used on products that have a specific