INTELLECTUAL PROPERTY LAWS
What is Intellectual Property?
We think, we create and we innovate for betterment. Our creative thinking and our inventions are our Intellectual Property. Thus, Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.
Intellectual property is divided into two categories:
- Industrial Property which includes patents for inventions, trademarks, industrial designs and geographical indications.
- Copyright which covers
- literary works (such as novels, poems and plays),
- films, music,
- artistic works (e.g., drawings, paintings, photographs and sculptures) and
- architectural design.
What is Intellectual Property Right (IPR)?
Intellectual property rights are rights to use and enjoy Intellectual property exclusively.
Like no one use our house property without our permission; in the similar manner no one can use our Intellectual property without our permission. This right is known as Intellectual Property Right.
IPR allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation.
Why promote and protect intellectual property rights?
Intellectual property rights reward creativity and human endeavor, which fuel the progress of humankind.
- First, the progress and well-being of humanity rest on its capacity to create and invent new works in the areas of technology and culture.
- Second, the legal protection of new creations encourages the commitment of additional resources for further innovation.
- Third, the promotion and protection of intellectual property spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life.
An efficient and equitable intellectual property system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well-being.
The intellectual property system helps strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.
Further, consumers would have no means to confidently buy products or services without reliable, international trademark protection and enforcement mechanisms to discourage counterfeiting and piracy.
Historical framework of IPR
Historically the first system of protection of intellectual property came in the form of Venetian Ordinance in 1485 in Europe. This was followed by Statute of Monopolies in England in 1623, which extended patent rights for Technology Inventions. In the United States, patent laws were introduced in 1760. Most European countries developed their Patent Laws between 1880 to 1889.
Legal Framework of Intellectual Property Laws in India
At present following are the major Intellectual Property Laws in India:
- Trade Mark Act, 1999;
- Designs Act, 2000;
- Copyright Act, 1957 [last amended by Copyright (Amendment) Act, 2012]; and
- Patents Act, 1970 [last amended in 2005]
- Geographical Indications of Goods (Registration and Protection) Act, 1999, and
- Protection of Plant Varieties and Farmers’ Rights Act, 2001.
At present, Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in the World Trade Organization elevates the protection and enforcement of IPRs at International Level.
(Protected under Trade Mark Act, 1999 and Common Laws)
Important Definitions (According to Trade Mark Act, 1999)
Trade mark means a mark
- capable of being represented graphically and
- which is capable of distinguishing the goods or services of one person from those of others
and may include
- shape of goods, their packaging and combination of colours;
Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
Well-known trade mark, in relation to any goods or services, means
- a mark which has become so well known
- to the substantial segment of the public which uses such goods or receives such services
- that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection between
- those (other) goods or services and
- a person using the mark in relation to the first-mentioned goods or services.
Thus, trade mark is a mark which provides a unique identity to goods or services of a business. If a trade mark is registered under Trade Mark Act, 1999, no one can use that mark commercially except the owner of that mark or the person authorised by the owner.
Prerequisites for a trade mark to be registered
- The selected mark should be capable of being represented graphically (that is in the paper form).
- It should be capable of distinguishing the goods or services of one undertaking from those of others. (distinctive)
India follows the NICE Classification of Goods and Services for the purpose of registration of trademarks. The NICE Classification groups products into 45 classes (classes 1-34 include goods and classes 35-45 include services). The NICE Classification is recognized in majority of the countries and makes applying for trademarks internationally a streamlined process. Every person, seeking to trademark a good or service, has to choose from the appropriate classes, out of the 45 classes.
India recognizes the concept of the “Well-known Trademark” and the principle of “Trans-border Reputation”.
According to the concept of Trans-border Reputation, protection is given by one country to the trade mark of another country even if the concerned goods/services are not available in the former (country giving protection).
Further, Well-known Trademarks cannot be registered. Examples of well-known trademarks are Google, Tata, Yahoo, Pepsi, Reliance, etc.
After applying for Trade Mark, one can use “TM” with the Trade Mark.
After getting the Trade Mark, one can use “®” with the Trade Mark.
The trademarks can be broadly classified into following five categories:
- Generic (Weakest and Cannot be Protected)
Generic marks means using the name of the product for the product, like “Salt” for salt.
- Descriptive (Weaker and Hard to Protect)
Descriptive marks mean the mark describing the characteristic of the products, like using the mark “Fair” for the fairness creams.
- Suggestive (Weaker and Hard to Protect)
Suggestive marks mean the mark suggesting the characteristic of the products, like “Habitat” for home furnishings products.
- Arbitrary (Strongest and Easiest to Protect)
Arbitrary marks means mark which exist in popular vocabulary, but have no logical relationship to the goods or services for which they are used, like “Blackberry” for phones.
- Invented/Coined (Strongest and Easiest to Protect)
The invented/ coined marks means coining a new word which has no dictionary meaning, like “Adidas”.
Duration of trade mark
- The registration of a trade mark, shall be for a period of 10 years, but may be renewed from time to time in accordance with the provisions of this section.
- The Registrar shall, on application made by the registered proprietor of a trade mark renew the registration of the trade mark for a period of 10 years from the date of expiration of the original registration or of the last renewal of registration.
Enforcement of Trade Mark Rights
It should be noted that to establish the right on a trade mark, registration under the Act is not mandatory. Rights in trademarks are acquired by use. But registration makes the establishment of right easier. Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. The prior adoption and use of the trademark is of utmost importance under trademark laws.
The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings. Further, infringement of a trademark is also a cognizable offence and criminal proceedings can also be initiated against the infringers.
[Protected under Patent Act, 1970]
What is Patent?
A patent is an exclusive right granted for a new invention – a product or process that provides a new way of doing something, or that offers a new technical solution to a problem.
Thus patent is available for “process” as well as “product”.
- means a new product or process involving an inventive step and capable of Industrial application.
- means a feature of an invention that involves
- technical advance as compared to the existing knowledge or
- having economic significance or
that makes the invention not obvious to a person skilled in the art.
- means any invention or technology which has not been
- anticipated by publication in any document or
- used in the country or elsewhere in the world before the date of filing of patent application with complete specification.
i.e. the subject matter has not fallen into public domain or that it does not form part of the state of the art.
What are not inventions? (Section 3)
The following are not inventions within the meaning of this Act, –
- an invention which is frivolous (not having any serious purpose or value) or which claims anything obvious contrary to well established natural laws;
- an invention the primary or intended use of which would be contrary to law or morality or injurious to public health;
- the mere discovery of a scientific principle or the formulation of an abstract theory;
- the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
- a substance obtained by a mere mixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
- the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
- a method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture;
- a method of agriculture or horticulture;
- any process for the medicinal, surgical or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.
Inventions relating to atomic energy not patentable (Section 4)
No patent shall be granted in respect of an invention relating to atomic energy falling within Section 20 of the Atomic Energy Act, 1962.
Enforcement of Patent Rights
Under the (Indian) Patents Act, 1970 only a civil action can be initiated in a Court of Law. Like trademarks, the relief which a court may usually grant in a suit for infringement of patent includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings.
[Protected under Copyright Act, 1957]
Meaning of Copyright/Class of work protected (Section 14)
Copyright means the exclusive right, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:-
- in the case of a literary, dramatic or musical work, not being a computer programme,
- to reproduce the work in any material form
- to store any work in any medium by electronic means;
- to issue copies of the work to the public;
- to perform the work in public, or communicate it to the public;
- to make any cinematograph film or sound recording in respect of the work;
- to make any translation of the work;
- in the case of a computer programme,-
- to do any of the acts specified in clause (a);
- to sell or give on commercial rental any copy of the computer programme
- in the case of an artistic work,
- to reproduce the work in any material form;
- to communicate the work to the public;
- to issue copies of the work to the public;
- to include the work in any cinematograph film;
- to make any adaptation of the work;
- In the case of cinematograph film, –
- to make a copy of the film, including a photograph of any image forming part thereof;
- to sell or give on hire any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions;
- to communicate the film to the public;
- In the case of sound recording, –
- to make any other sound recording embodying it;
- to sell or give on hire any copy of the sound recording regardless of whether such copy has been sold or given on hire on earlier occasions;
- to communicate the sound recording to the public.
The creators of works protected by copyright, and their heirs and successors (generally referred to as “right holders”), have certain basic rights under copyright law. They hold the exclusive right to use or authorize others to use the work on agreed terms. The right holder(s) of a work can authorize or prohibit:
- its reproduction in all forms, including print form and sound recording;
- its public performance and communication to the public;
- its broadcasting;
- its translation into other languages; and
- its adaptation, such as from a novel to a screenplay for a film.
Copyright Act, 1957, distinguish between different classes of works such as literary, artistic, musical works and sound recordings and cinematograph films.
Term of copyright in published literary, dramatic, musical and artistic works
If such literary, dramatic, musical and artistic works is published within the lifetime of the author, term is
- 60 years from the beginning of the calendar year next following the year in which the author dies.
In the case of a work of joint authorship,
- 60 years from the beginning of the calendar year next following the year in which author who dies last.
Term of copyright in anonymous and pseudonymous works (where the identity of author is hidden)
- 60 years from the beginning of the calendar year next following the year in which the work is first published.
- but where the identity of the author is disclosed before the expiry of the said period, copyright shall subsist until 60 years from the beginning of the calendar year next following the year in which the author dies.
Term of copyright in
- cinematograph films
- sound records
- Government work
- works of public undertakings
- works of international organisations
60 years from the beginning of the calendar year next following the year in which the photograph, film, sound record, government work etc. is published.
Owners of copyrights
The following are the owners of the copyrights:
- In musical sound recordings: lyricist, composer, singer, musician and the person or company who produced the sound recording
- In works by journalists during their employment: In the absence of any agreement to the contrary, the proprietor
- In works produced for valuable consideration at the instance of another person: In the absence of any agreement to the contrary, the person at whose instance the work is produced
Assignment of Copyright
The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof. The assignment mention the rights, duration, the territorial limits of the assignment and the royalty payable thereon and should be in writing signed by the assignor or by his duly authorized agent.
Where the assignee does not exercise the rights assigned to him within a period of one year from the date of assignment
Shall lapse after the expiry of the said period unless otherwise specified in the assignment
If the period of assignment is not stated
It shall be deemed to be five years from the date of assignment.
If the territorial extent of assignment of the rights is not specified
It shall be presumed to extend within the whole of India.
Exceptions to the use Copyright
In order to protect the interests of users, some exemptions have been prescribed in respect of specific uses of works enjoying copyright. Some of the exemptions are the uses of the work:
- 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
- for the purpose of education and religious ceremonies
Infringement of Copyright
Copyright in a work is considered as infringed only if a substantial part is made use of unauthorized. What is ‘substantial’ varies from case to case.
For example, if a lyricist copy a very catching phrase from another lyricist’s song, there is likely to be infringement even if that phrase is very short.
The following are 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 ;
- Public exhibition of infringing copies by way of trade; and
- Importation of infringing copies into India.
A copyright owner can take legal action against any person who infringes the copyright and is entitled to remedies by way of injunctions, damages and accounts.
Penalty for infringement and the status of the infringing copies
The minimum punishment for infringement of copyright is imprisonment for 6 months with the minimum fine of Rs. 50,000/-.
In the case of a second and subsequent conviction the minimum punishment is imprisonment for 1 year and fine of Rs. 1 lakh.
All infringing copies of any work in which copyright subsists and all plates used or intended to be used for the production of such infringing copies shall be deemed to be the property of the owner of the copyright.
Application for registration of copyright
- Application for registration is to be made in Form IV as prescribed in the first schedule to the Rules accompanied by the requisite fees prescribed in the second schedule to the Rules
- Separate applications should be made for registration of each work;
- The applications should be signed by the applicant or the advocate in whose favor a Vakalatnama or Power of Attorney has been executed, and the same has to be annexed to the application form.
Administration of the Copyright Law
The Copyright Act provides for a quasi-judicial body called the Copyright Board consisting of a Chairman and 2 or more, but not exceeding 14, other members for adjudicating certain kinds of copyright cases.
The Chairman of the Board is of the level of a judge of a High Court. The Board has the power to:
- hear appeals against the orders of the Registrar of Copyright;
- hear applications for rectification of entries in the Register of Copyrights;
- adjudicate upon disputes on assignment of copyright;
- grant compulsory licence to publish or republish works (in certain circumstances);
- grant compulsory licence to produce and publish a translation of a literary or dramatic work in any language after a period of 7 years from the first publication of the work;
- hear and decide disputes as to whether a work has been published or about the date of publication or about the term of copyright of a work in another country;
- fix the resale share right in original copies of a painting, a sculpture or a drawing and of original manuscripts of a literary or dramatic or musical work.
Rights of the Registrar of Copyrights
The Registrar of Copyrights has the powers of a civil court when trying a suit under the Code of Civil Procedure in respect of the following matters, namely,
- summoning and enforcing the attendance of any person and examining him on oath;
- requiring the discovery and production of any document;
- receiving evidence on affidavit;
- issuing commissions for the examination of witnesses or documents;
- requisitioning any public record or copy thereof from any court or office;
- any other matters which may be prescribed.
[Protected under Geographical Indication of Goods (Registration and Protection) Act, 1999]
What is Geographical Indication?
A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities or a reputation due to that place of origin. Most commonly, a geographical indication consists of the name of the place of origin of the goods.
According to section 2 (1)(e) of the Act, Geographical indication has been defined as “an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.
Registration of geographical indication ensures that none other than those registered as authorised users (or at least those residing inside the geographic territory) are allowed to use the popular product name.
[Protected under Designs Act, 2000]
What is Design?
- only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.
It does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark.
Why “design” should be protected?
The design of a product is having an everlasting effect on the mind of the consumer. A product is recognizable in the dark also due to its unique design. A product design is if attractive adds value from the business point of view. For example, design of a car is very important from customer’s point of view.
Therefore, it is very important to protect design from being commercially used by the competitors.
Applicability of Designs Act, 2000
The design law excludes from its purview the functioning features of an article and grants protection only to those which have an aesthetic appeal. For example,
- the design of a teacup must have a hollow receptacle for holding tea and a handle to hold the cup. These are functional features that cannot be registered. But a fancy shape or ornamentation on it would be registrable.
- a table would have a flat surface on which other objects can be placed. This is its functional element. But its shape, colour or the way it is supported by legs or otherwise, are all elements of design or artistic elements and therefore, registrable if unique and novel.
To be registered under the Act, design must be novel (new, original, or unusual).