INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY INTELLECTUAL PROPERTY INTELLECTUAL PROPERTY INTELLECTUAL PROPERTY

RIGHTS RIGHTS RIGHTS RIGHTS

A.Ram Kumar

Advocate

High Court of Andhra Pradesh Intellectual Property Rights

& Information Technology

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Inscription on the copula in WIPO HQ

• Human genius is the source of all works of art and invention. These works are the

guarantee of a life worthy of men. It is the duty of the state to ensure with diligence the protection of Arts and Inventions

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History of IPR in India

• The concept of intellectual property started seeping in India during the British rule.

• enactments like the Trade Mark Act of 1940, the Copy Right Act of 1709, which was later

amended by the Acts of 1775, 1814, 1842, 1914 and the 1957 Act.

• The designs Act came into being in the year 1911 and was prevalent since then.

• first Patent Act was enacted in 1856 which was

re enacted by an another act in 1859

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IPR – Intellectual Property Rights

• To understand the damage piracy can cause it is important to know what is intellectual property

• What are Intellectual Property Rights?

• 1- String of legal right/s available for protection and exploitation of technology, design, secret, logos, labels etc.,

• 2 - It is born of an intellect and devised by the individual out of his own ingenuity and tool being information and knowledge and

requires again an intellect to exploit and use such property.

• 3 - It is an intangible property since a property of mental labour

• 4 -Created by putting together information in tangible object and capable of multiplication at different locations in the world

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Basic characteristics of IPR’s

• It confers statutory right on the individual.

They exist on the intellectual creation as such

• These rights are limited in time

• They are also territorial in application

• The rights granted are essential negative

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Why IPR at all for India?

• Commercial exploitation if Indian knowledge and geographical goods of India

• along with the continuation of our heritage of resources, products and devices a statutory protection and preservation is necessary to prevent their transfer into the hands of other countries.

• Cases like the Basmati, Turmeric, Tamarind

sounded warning bells and alerted the IPR

community in India

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Basic Forms of IPR

• PATENT

TRADE MARK COPYRIGHT

TRADE SECRET AND CONFIDENTIAL INFORMATION

MASK WORK.

DESIGNS

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IPR – Asset Of Business

• Increasingly being recognized as vital asset of business – intellectual capitalism.

• IPR’s have obvious commercial benefits in enabling monopoly to be maintained in a particular area of business to the exclusion of the competition.

• Commercial values of IPR’s cannot be evaluated because of intangibility and the uniqueness of the property. Returns are considerable and not measurable by any standards.

• The holder of the proprietary right has the freedom to exploit the invention commercially and get financial benefits or otherwise and he can prevent the others from exploiting the invention

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WTO, TRIPS and India

• WTO established with a specific purpose of Fostering World trade and such trade to be free trade

• IPR was brought under its scope keeping in view the consequences of free trade

• Done at the insistence of Developed nations but at the same time after negotiations with GATT members countries.

• TRIPS (Trade Related aspects if IPR) is the result of this, and TRIPs sought to harmonise the country specific laws on IPR’

• Method was to impose an obligation on member countries to amend their existing laws on IP and afford the basic protection

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Why was IPR brought within the realm of WTO

• “the developed countries saw IP as the fruit of creative capacity and effort of their

individual citizens and companies, as a legitimate basis of these companies and individuals to earn a trading advantage”

• WTO was also given a very powerful

dispute settlement process.

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IPRs that are covered under the TRIPS

• Patents

• Trade Marks

• Copyrights

• Geographical indications

• Industrial designs

• Layout-design (topographic) of Integrated

Circuits

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Trademark –definition

• A trade mark can be defined as a visual symbol, a letter device or a label applied to articles or services with an view to indicate to the public the identity of the product and its origin

• Section 2(1)(m) of the Trade Marks Act, 1999, defines

trade marks as “Mark, includes a device, brand, heading,

label, ticket, name, signature, word, letter, shape of goods,

packaging or combination of colours or any combination

thereof.

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The New act of 1999

• New act provides for registration of service as TM

• Registration of TM of which are imitation of well know marks is not permitted

• Part A and Part B registers done away with. Only single register

• Provides for registration of “collective marks” owned by an association

• Providing enhanced punishments

• Providing for filing single application for registration in more than one class.

• Period of registration and renewal increased from 7 to 10 years

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Functions of a Trade Mark

• It identifies the product and its Origin. For Eg Cadburys chocolate

• It guarantees its quality

• Since the marks represents the product, the TM advertises the product

• It creates an image of the product in the

minds of the public.

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Essentials of a Good TM

• Should be distinctive- the mark should earmark the said product distinct from other similar products

• TM preferably should be invented word

• Should be easy to pronounce and remember

• If a device, the device mark should be capable of being described

• The mark should spell correctly

• Should not be descriptive but could be suggestive

• Should be short and appealing to the eye

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TM registration process

• Application for Registration Under Section 16

• Acceptance of application

• If not withdrawn after acceptance of application .Section 19

• Advertisement of application Section 20

• Opposition of Registration Section 21

• If application not opposed.If application is opposed and rejected.

Under section 23

• Registration of the Mark

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TM- rights conferred on owner

• Rights conferred on owner of trade mark after registration:

• 1. the exclusive rights to use the Mark in relation to the goods or services in respect of which the mark is registered;

• 2. the right to obtain relief in case of any infringement of his

registered mark by a third party in nature of temporary or permanent injunctions, damages and Accounts of profit..

• 3. right of the proprietor to assign the trade mark and give effectual receipts for any consideration for such assignment.

• 4. right to apply for leave to add or any alteration, to the mark, which alteration shall not affect the substantial identity of the mark.

• Registration of a trade mark is the prima facie proof of validity of the registered trade mark.

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Infringement of TM

• using a deceptively similar mark as to goods or services

• using a deceptively similar mark as to the trade origin

• using a phonetically similar mark – word per se

• using a strikingly similar mark – word or logo

• using the plaintiff’s marks on reconditioned goods

• taking substantial features of an registered trademark and using it

• using the plaintiff’s labels without authorisation

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Infringement of TM- Criminal action

• Sec 78 of 1958 act is reflected in Sec 103 of the new Act- applying false TM and Trade descriptions - Punishment which is not less than 6 months which may extent to 3 years and a fine from Rs. 50,000 to rs. 2 lakhs

• Sec 79 of 1958 act is reflected in Sec 104 of the new Act – penalty for elling goods or providing services to which false TM or false trade description is applied - Punishment which is not less than 6 months which may extent to 3

years and a fine from Rs. 50,000 to rs. 2 lakhs

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Infringement of TM- Civil action

• Suit for Infringement- or passing off - to be filed with in 3 years from date of infringement

• The relief that can be granted to the plaintiff or (1)

injunction restringing further use of infringing mark (2) damages or an account of profits (3) order for delivery – up of infringing labels or marks for destruction or eraser

• Injunction can be anton piller order – ex-parte orders to inspect defendants primes ; mareva injunction orders to freeze defendants assets when such assets can be

dissipated ; interlocutory or perpetual injunction

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Copyright

• Copyright, the first intellectual property in the world to receive legal recognition, is a unique Intellectual Property right in that it does not fall under the category of Industrial Property

• Copyright protection covers areas of work in printing, music, communication, entertainment and computer software

• Copyright can be defined as exclusive right given by the Law for certain terms of years to an author, composer (or his assignee) to print publish and sell copies of the original work in full or in part.

• It can also be defined as an incorporeal right granted to the author or organization of certain literary or or Artistic work, whereby the said person , for a special period has the sole and exclusive privilege to multiply copies of the said work.

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Copyright - Definition

• Section 14 of the Copyright Act, 1957, gives a lengthy definition of what Copyright means. For the purpose of brevity and easy understanding the definition under the Act is analysed as under:

• 1. Copyright is a bundle of exclusive rights.

• 2. Its given by the law

• 3. Given to the creator of literary, dramatic, musical and artistic works.

4. Exclusive right to engage in and license others to reproduce the works in any material form, to make copies of work to the public, to perform the work in public, communicate the work public to make translation of the work or an

adaptation of the work.

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Characteristics of Copyright

• It’s a creation of a specific statute

• Its form of intellectual property

• It’s a monopoly right restraining others from exercising that right

• Copyright is a negative right in that it is prohibitory in nature

• Copyright consists of bundle of rights in the same work

• It also consists of rights derives from original works like

right of public performance etc

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Infringement of Copyright

• Section 51 defines infringement of copyright in general

• Infringement under these section means reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an infringing copy.

• Elements that need to be present to make an infringement act are (1) substantial copying (2) direct evidence of copying, from a copyrighted source

• Section 52 lists out acts which do not constitute infringement of the copyright

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Remedies for Infringement

• 3 kinds of remedies available against infringement

• 1 Civil Remedies like injunction, damages, account on profits, delivery of infringing copies, damages for conversion anton piller order ;

interlocutory and damages are accounts of profits

• 2 Criminal Remedies which – imprisonment which may be from 6 months to 3 years and with fine from 50,000 to 2 lakhs

• 3 Administrative Remedies – moving registrar of copyrights to ban import of infringing copies into India.

• Section 63, 63A, 64, 67 and 65 provide for punishment

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Patents

• The national legal regime pertaining to patents is contained in the Patents Act, 1970 as amended by the Patents Amendment Act, 1999.

• The 1999 act is as consequence of amendments carried out to bring the act in conformity with the TRIPS Agreement

• The new act includes product patent in Pharma Industry

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Patents Definition

• The Patent Act, 1970 does not provide for a comprehensive definition.

• Section 2 (m) of the Act merely says that patent means a patent granted under this act and includes for the purposes of sections

44,49,50,51,52,54,55,56,57,58,63,65,66,68,69,70,78,134,1 40,153,154 and 156 and chapters xvi, xvii, and xviii a

patent granted under the Indian Patents and Designs Act.

1911.

• Patent is legal monopoly granted to the owner of a new

invention which is capable of industrial use, for a limited

period of time.

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Features of Patent

• To be patentable the invention must be new and useful, non obvious. Obvious invention are not patentable

• The act also debars injurious inventions or

inventions which violate public morality

and all processes relating to treatment of

humans, plant and animals.

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Procedure for acquisition of patents

• Application for patent

• Reference of application of Examiners

• Examination of application by examiner, search and investigation

• Acceptance of complete specification and advertisement in the Gazette

• Opposition to Grant Patent

• Granting and Sealing of patent

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Rights conferred on a Patentee

• To exploit the patent

• To licence the patent to another

• To assign the patent to another to surrender the patent

• To surrender the patent

• To sue for the infringement of the patent

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Infringement of Patents

• What can amount of infringement

(1) The colourable imitation of an invention.

(2) Immaterial variations in the invention.

(3) Mechanical equivalents

(4) Taking essential features of the invention.

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