Intellectual Property Laws In India
Author:- Anjulika Arya, 2nd Year LLB Student, Dr. Rizvi College of Law, Karari,Kaushambi, Uttar Pradesh, Affiliated to Prof. Rajendra Singh (Rajju Bhaiya) University, Prayagraj
INTRODUCTION
With the rapid globalisation and opening up of the Indian economy, "Intellectual Capital" has become one of the key wealth drivers in the present international trade. Intellectual property rights have become significantly conspicuous on the legal horizon of India both in terms of new statutes and judicial pronouncements. India ratified the agreement for establishing the World Trade Organization (the "WTO"), which contains the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Indian Statutes, enforcement provisions and methods of dispute resolution with respect to intellectual property (IP) protection are now fully TRIPS-compliant.
India has laws covering various areas of intellectual property as enumerated herein below:
Trade Marks
Patents
Copyrights and Related Rights
Industrial Designs
Geographical Indications
Layout Designs of Integrated Circuits
Plant Varieties
Information Technology and Cyber crimes
Data Protection
Broadly, the following acts deal with the protection of intellectual property:
Trade Marks Act, 1999
The Patents Act, 1970 (as amended in 2005)
The Copyright Act, 1957
The Designs Act, 2000
The Geographical Indications of Goods (Registration and Protection) Act, 1999
The Semiconductor Integrated Circuits Layout Design Act, 2000
The Protection of Plant Varieties and Farmers' Right Act, 2001
The Information Technology Act, 2000
TRADEMARKS
India's obligations under the TRIPS Agreement for protection of trademarks, inter alia, include protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of compulsory licensing of trademarks, etc.
With the globalisation of trade, brand names, trade names, marks, etc, have attained an immense value that require uniform minimum standards of protection and efficient procedures for enforcement as were recognised under the TRIPS. In view of the same, extensive review and consequential repeal of the old Indian Trade and Merchandise Marks Act, 1958 was carried out and the new Trade Marks Act, 1999 was enacted. The said Act of 1999, with subsequent amendments, conforms to the TRIPS and is in accordance with the international systems and practices.
The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass applications, increasing the term of registration of a trademark to ten years as well as recognition of the concept of well-known marks, etc. The Indian judiciary has been proactive in the protection of trademarks, and it has extended the protection under the trademarks law to Domain Names as demonstrated in landmark cases of Tata Sons Ltd. v Manu Kosuri & Ors [90 (2001) DLT 659] and Yahoo Inc. v Akash Arora [1999 PTC 201].
India, being a common law country, follows not only the codified law, but also common law principles, and as such provides for infringement as well as passing off actions against violation of trademarks. Section 135 of the Trade Marks Act recognises both infringement as well as passing off actions.
Well-known Trademark and Trans-border Reputation
India recognises the concept of the "Well-known Trademark" and the "Principle of Trans-border Reputation". A well-known Trademark in relation to any goods or services means a mark that has become so to the substantial segment of the public, which uses such goods or receives such services such that the use of such a mark in relation to other goods and services is likely to be taken as indicating a connection between the two marks.
Trans-border Reputation concept was recognised and discussed by the Apex Indian Court in the landmark case of N. R. Dongre v Whirlpool (1996) 5SCC 714. The Trademark "WHIRLPOOL" was held to have acquired reputation and goodwill in India. The mark "WHIRLPOOL" was also held to have become associated in the minds of the public with Whirlpool Corporation on account of circulation of the advertisements in the magazines despite no evidence of actual sale. Hence, the trademark WHIRLPOOL was held to have acquired trans-border reputation which enjoys protection in India, irrespective of its actual user or registration in India.
Legal Remedies against Infringement and/or Passing off
Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against infringement and passing off.
Infringement of trademark is violation of the exclusive rights granted to the registered proprietor of the trademark to use the same. A trademark is said to be infringed by a person, who, not being a permitted user, uses an identical/similar/deceptively similar mark to the registered trademark without the authorisation of the registered proprietor of the trademark. However, it is pertinent to note that the Indian trademark law protects the vested rights of a prior user against a registered proprietor which is based on common law principles.
Passing off is a common law tort used to enforce unregistered trademark rights. Passing off essentially occurs where the reputation in the trademark of party A is misappropriated by party B, such that party B misrepresents as being the owner of the trademark or having some affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of passing off, registration of a trademark is irrelevant.
Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated.
Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be initiated against the infringers. Such enforcement mechanisms are expected to boost the protection of marks in India and reduce infringement and contravention of trademarks.
Relief granted by Courts in Suits for Infringement and Passing off
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.
The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the suit may also include order for:
Appointment of a local commissioner, which is akin to an "Anton Pillar Order", for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc.
Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
The 'John Doe' order, known as "Ashok Kumar Orders" are injunction orders passed by a court of law against entities, whose identity is not known at the time of the issuance of the order. These orders are an exception to the general rule which requires the defendant to be identified prior to the filing of a law-suit. The John Doe order, is important in cases of fly-by-night operators who do not operate from a fixed location. It allows the plaintiff to search the premises and deliver up evidence of infringement of the rights of the plaintiff against the unknown infringers.
A 'Norwich Pharmacal' order is a court order for the disclosure of information or documents against a third party. It is usually granted against a third party which has been innocently mixed up in wrongdoing, forcing the disclosure of documents or information. In the case of Souza Cruz v N K Jain (1995 PTR 97), the Court directed excise and customs commissioners to disclose the complete export records of infringing cigarettes to Ukraine by the Defendant.
Offences and penalties
In case of a criminal action for infringement or passing off, the offence is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and fine which shall not be less than Rs 50,000 (approx. US$ 800) but may extend to Rs 2,00,000 (approx. US$ 3,000).
Procedure of registration of trademark in India
The procedure for registration of a trademark in India is given below:
Convention applications
In order to fulfill the obligations of any treaty, convention or arrangement with a country or countries that are members of inter-governmental organisations, which accord to Indian citizens similar privileges as granted to their own citizens, the Central Government notifies such countries to be Convention Countries. In case of an application for registration of a trademark made in any of the Convention countries, a priority date can be claimed with regard to the application in India, provided that the application is made within six months of the application having been filed in the Convention country. The Government has notified and extended this privilege of priority to the members who have ratified the Paris Convention on Protection of Industrial Property.
Madrid Protocol
After the amendment in the Trade Marks Act in 2010, Chapter IV A was inserted, which contains the special provisions relating to protection of trademarks through international registration under the Madrid Protocol. This amendment allows Indian entities to register their trademarks in 97 countries by filing a single application and in the same way also allows the foreign entities of the member countries of the Madrid Protocol to register their mark in India. India has joined the Madrid Protocol with effect from 8th July, 2013. As per the Amendment Act, from the date of the international registration of a trademark where India has been designated or the date of the recording in the register of the International Bureau about the extension of the protection resulting from an international registration of a trademark to India, the protection of the trademark in India shall be the same as if the trademark had been registered in India.
One of the major changes brought about by the 2010 amendment is inclusion of the words "within eighteen months of the filing of the application" in Section 23 of the Trade Marks Act. The said inclusion puts an obligation on the Registrar to complete the registration process for a mark in a time bound manner. This change will challenge every aspect of the registration process within trademark office in India, forcing deadlines at every stage of the registration procedure laid out under the Trade Marks Act and supplemented by the Trade Mark Rules in India.
Classification of goods and services
For the purpose of classification of goods and services for registration of trademarks, India follows the International Classification of Goods and Services (Nice Classification) published by World Intellectual Property Organization (WIPO). For the purpose of classification of the figurative elements of marks, India follows the Vienna Agreement.
Opposition proceedings
After advertisement of a trademark in the Trade Marks Journal, (which is available online at the website of Office of Registrar of Trademarks) an opposition challenging the application for registration can be filed by any person within a period of 4 months.
Rectification of Trademark
An aggrieved person may file an application before the Registrar of Trademarks or to the Intellectual Property Appellate Board (IPAB) for cancellation or varying the registration of the trademark on the ground of any contravention or failure to observe a condition entered on the Register in relation thereto.
The application for rectification can also be filed for removal of an entry made in Register, without sufficient cause or wrongly remaining on the Register and for correction of any error or defect in any entry in the Register.
Assignment, Transmission and Licensing of Trademarks in India
The Patent Act
The Patent Act is a law that governs the registrationand protection of patents in India. A patent is a legalright granted to the inventor of a new, useful, andnon-obvious product or process, regarding theexclusive permission to make, use, and sell theinvention for a certain specifi ed period of time. Thepurpose of the Patent Act is to promote innovationand technological advancement in India, by providingthe owners of newly invented products andprocesses, a legal framework for protecting theirinventions against misuse and forgery.
The Patent Act provides for the registration ofpatents with the Indian Patent Offi ce, and outlines therequirements for patentability, including novelty, non-obviousness, and utility. Once granted, a patentprovides the owner with the exclusive right to use,manufacture, and sell the invention for a period of 20years from the date of fi ling, provided that the annualrenewal fee is paid every year.
The Act also provides for the enforcement of patentrights through civil and criminal proceedings, andsets out penalties for infringement of those rights. Inthe case of infringement of a patent, the owner of thepatent can seek remedies such as injunctions,damages, and account of profi ts. On the other hand,the infringer will be imposed with criminal penaltiesfor intentional infringement of patent rights, includingfi nes and imprisonment.
The Copyright Act
The Copyright Act is a law which regulates theregistration and legal protection of copyrights inIndia. Copyrights are defined under the Act as anexclusive right to reproduce, distribute, and performan original work of authorship, be it an original pieceof literature, music, song, script, drama, art,cinematographic film, or audio tune.
Although registration under the Copyright Act is notmandatory for Copyright protection, it can still beobtained for availing certain benefits like possessinga legal evidence for ownership of the copyrightedwork, and being enabled to sue any third party for theinfringement of rights provided to the owner underthe Copyright Act.
As far as the validity of the Copyright Registration isconcerned, for literary, dramatic, musical, and artisticworks (other than photographs), the registration lastsfor the lifetime of the author plus 60 years after theirdeath. For photographs, the copyright lasts for thelifetime of the author plus 60 years after their death,but if the photograph is published, then the copyrightlasts for 60 years from the year of publication. Forcinematographic films, sound recordings, andgovernment works, the copyright lasts for 60 yearsfrom the year of publication.Once the copyright termhas expired, the work enters the public domain andcan be freely used by anyone without the need forpermission or payment to the original copyrightowner.
The main purpose of the Copyright Act is to promotecreativity and the dissemination of knowledge by incentivizing creators to produce more new andoriginal works and ensuring that their efforts are wellprotected and compensated for.
The Design Act
The Industrial Designs Act is a law that governs theregistration and protection of industrial designs inIndia. The Act defines an industrial design as aunique and specific feature of shape, configuration,pattern, ornamentation, or composition of lines andcolors applied to any product in three-dimensional ortwo-dimensional form.
The Act aims to promote innovation and creativity inindustrial designs by providing legal protection to theowners of such designs against misuse and forgery.The purpose is to ultimately incentivize designersand manufacturers to invest time, money, andresources into developing new designs at the end ofthe day!
Besides, the Act sets out the requirements forregistration of an industrial design, including that thedesign must be novel, original, and not previouslypublished or used in India. The registration processinvolves filing an application with the Indian PatentOffice and paying the required fees. Once registered,the owner of an industrial design would have theexclusive right to use the design and prevent othersfrom using it without permission for as long as 10years from the date of Registration.
The Act also provides for the enforcement of IPrights of the Industrial design owners, through civiland criminal proceedings. In the case of infringementof his IP rights, the design owner can seek remediessuch as injunctions, damages, and account of profits.In addition, the Act also provides criminal penalties,including fines and imprisonment, for intentional infringement of rights by the infringer.
Geographical indications
Geographical indications (GIs) are intellectual property (IP) rights that serve to identify a product that originates from a specific geographical area and that has a quality, reputation, or other characteristics that are essentially attributable to its geographical origin.
The industrial design registration in India recognizes the creation new and original three dimensional features such as new shape of an article, configuration, surface pattern, ornamentations or two dimensional features, such as patterns, lines or colour applied to articles which in the finished state appeal to and is judged solely by the eye. The protection of the design of a product allows the owner to have the exclusive use of certain designs and / or shapes within the market.
Requirements for a design to qualify for Protection
It should be novel and original;
It should be applicable to a functional article;
It should be visible on a finished article;
It should be non-obvious; and
There should be no prior publication or disclosure of the design
Plant Variety Rights
Plant Variety Rights are an internationally recognized form of Intellectual Property (IP) used to protect unique plant varieties. The application of plant variety rights is similar in principle to the IP Protection offered via copyright on books and patents on a wide range of innovative products, including biological material.
Breeding new varieties of plants requires a considerable investment, in terms of skill, labor, material, and economic resources, and may take several years (10 to 15 years in the case of many plant species); however, a new variety, once released, could, in many cases, be easily reproduced by others to rob its breeder of the chance to benefit adequately from the investment made. Sustained breeding efforts are only possible if there is a chance to reward investment. It is, therefore, vital to follow an effective system of Plant Variety Protection, intending to encourage the development of new varieties of plants for the help of society.
The plant variety rights system delivers protection and inspires further innovation in plant breeding by ensuring that the varieties awarded plant variety protection are freely available to others for use in future breeding programs. This access is known as the ‘breeder’s exemption,’ and it has significantly supported the major advances seen in plant breeding over the past 40 years. The plant variety rights system allows plant breeders to amass royalties on the production and sale of seeds of their protected varieties.
Purpose of Intellectual Property Law
The purpose of intellectual property (IP) laws is toprotect the rights of creators and innovators by providing legal frameworks for the ownership, use,and commercialization of their intellectual creations.Intellectual Creations in India include trademarks,patents, copyrights, trade secrets, and other forms ofcreative and innovative expression.
In India, the intellectual property laws offer variousbenefits to different stakeholders, such as:
1. Inventors and creators
Intellectual property laws provide legal protection toinventors and creators by granting them exclusiverights to their creations. This ensures that they canbenefit from the commercialization of their ideas andprevent others from using their creations withoutpermission.
2. Investors and businesses
Intellectual property laws provide investors andbusinesses with the confidence to invest in anddevelop new products and services. They can rely onthe protection provided by these laws to recover theirinvestment and profits.
3. Consumers
Intellectual property laws ensure that consumers canbenefit from high-quality and innovative products andservices. These laws encourage competition and thedevelopment of new technologies, leading to betterproducts and services for consumers.
4. Society & Economy
Intellectual property laws promote innovation,creativity, and economic growth, which contribute tothe overall development of society. They also help tosafeguard traditional knowledge and culturalexpressions, which are important for the preservationof cultural heritage.
Conclusion
In India, the intellectual property regime hasundergone significant changes in recent years,making it more robust and effective in protecting therights of various stakeholders. By providing legalprotection and enforcement mechanisms, IP laws inIndia have contributed to promoting investment,research, and development, technology transfer, andtrade. Additionally, they have enabled businesses andindividuals to monetize their ideas and inventions,thereby promoting economic growth and prosperity.As India continues to grow as a global economicpower, it is essential to have a strong and effective IPregime that balances the interests of all stakeholdersand promotes innovation and creativity.
Reference
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