copyrights,patents trademarks

LEGAL ASPECT OF BUSINESS Trimester - 2

MET’s

INSTITUTE OF COMPUTER SCIENCE

TRIMESTER - II

SUBJECT:

Legal Aspect Of Business

TOPIC:

Copyrights, Patent, Trademark, Geographical Indications as a part of Intellectual

Property Rights in India (with respect to TRIPS as in WTO)

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INDEX

Sr. No. Topic Page No.

1 Intellectual Property 03

2 TRIP 05

3 Copyrights 10

4 Trademark 24

5 Geographical Indication 39

6 Patent 52

7 Conclusion 64

8 Bibliography 66

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INTELLECTUAL PROPERTY RIGHTS

Definition

Intellectual property rights can be defined as the rights given to people over the creations of their

minds. They usually give the creator an exclusive right over the use of his/her creations for a

certain period of time.

Intellectual property rights are divided into two main categories:

1. Copyright and rights related to copyright: i.e. rights granted to authors of literary and

artistic works, and the rights of performers, producers of phonograms and broadcasting

organizations. The main purpose of protection of copyright and related rights is to

encourage and reward creative work.

2. Industrial property: This includes the protection of distinctive signs such as trademarks

and geographical indications, and industrial property protected stimulate innovation,

design and the creation of technology.

Different Types of IPRs

Trademarks and Service Mark

Industrial Design Registration

Copyright

Layout Designs for Integrated Circuits

Geographical Indications

Trade Secrets and Undisclosed Information

Competitive Practices in Contractual Licenses

Patents

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Need to protect IPRS

Intellectual property protection is critical to fostering innovation. Without protection of ideas,

businesses would not reap the full benefits of their inventions and would focus less on research

and development. Similarly, artists would not be fully compensated for their creations and

cultural vitality would suffer as a result. Piracy, counterfeiting and the theft of intellectual

property assets pose a serious threat to all American businesses. Exporters face unfair

competition abroad, non-exporters face counterfeit imports at home and all businesses face legal,

health and safety risks from the threat of counterfeit goods entering their supply chains.

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TRIPS AGREEMENT

History

Ideas and knowledge are an increasingly important part of trade. Most of the value of new

medicines and other high technology products lies in the amount of invention, innovation,

research, design and testing involved. Films, music recordings, books, computer software and

on-line services are bought and sold because of the information and creativity they contain, not

usually because of the plastic, metal or paper used to make them. Many products that used to be

traded as low-technology goods or commodities now contain a higher proportion of invention

and design in their value — for example brand named clothing or new varieties of plants.

Creators can be given the right to prevent others from using their inventions, designs or other

creations — and to use that right to negotiate payment in return for others using them. These are

“intellectual property rights”. They take a number of forms. For example books, paintings and

films come under copyright; inventions can be patented; brand names and product logos can be

registered as trademarks; and so on. Governments and parliaments have given creators these

rights as an incentive to produce ideas that will benefit society as a whole.

Formation

The extent of protection and enforcement of intellectual property rights varied widely around the

world; and as intellectual property became more important in trade, these differences became a

source of tension in international economic relations. New internationally-agreed trade rules for

intellectual property rights were seen as a way to introduce more order and predictability, and for

disputes to be settled more systematically.

The WTO’s TRIPS Agreement is an attempt to narrow the gaps in the way these rights are

protected around the world, and to bring them under common international rules. It establishes

minimum levels of protection that each government has to give to the intellectual property of

fellow WTO members. In doing so, it strikes a balance between the long term benefits and

possible short term costs to society. Society benefits in the long term when intellectual property

protection encourages creation and invention, especially when the period of protection expires

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and the creations and inventions enter the public domain. Governments are allowed to reduce

any short term costs through various exceptions, for example to tackle public health problems.

And, when there are trade disputes over intellectual property rights, the WTO’s dispute

settlement system is now available

The TRIPS Agreement, came into effect on 1st January 1995 and is to date the most

comprehensive multilateral agreement on intellectual property. The areas of intellectual

property that it covers are:

copyright and related rights (i.e. the rights of performers, producers of sound recordings

and broadcasting organizations);

trademarks including service marks;

geographical indications including appellations of origin;

industrial designs;

patents including the protection of new varieties of plants;

the layout-designs of integrated circuits;

undisclosed information including trade secrets and test data.

Agreement on TRIPS

Structure of the agreement

The trips agreement builds on the main international conventions on IPRs by incorporating most

of their provisions. Its further provides that countries may in pursuance of these conventions

guarantee higher protection that is required by the Trips Agreement, as long as it does not

contravene its provisions.

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Provisions of TRIPS

i. how basic principles of the trading system and other international intellectual property

agreements should be applied

ii. how to give adequate protection to intellectual property rights

iii. how countries should enforce those rights adequately in their own territories

iv. how to settle disputes on intellectual property between members of the WTO special

transitional arrangements during the period when the new system is being introduced.

Features of the TRIPS agreement

i. Standards. In respect of each of the main areas of intellectual property covered by the

TRIPS Agreement, the Agreement sets out the minimum standards of protection to be

provided by each Member. Each of the main elements of protection is defined, namely

the subject-matter to be protected, the rights to be conferred and permissible exceptions

to those rights, and the minimum duration of protection. The Agreement sets these

standards by requiring, first, that the substantive obligations of the main conventions of

the WIPO, the Paris Convention for the Protection of Industrial Property (Paris

Convention) and the Berne Convention for the Protection of Literary and Artistic Works

(Berne Convention) in their most recent versions, must be complied with.

ii. Enforcement. The second main set of provisions deals with domestic procedures and

remedies for the enforcement of intellectual property rights. The Agreement lays down

certain general principles applicable to all IPR enforcement procedures. In addition, it

contains provisions on civil and administrative procedures and remedies, provisional

measures, special requirements related to border measures and criminal procedures,

which specify, in a certain amount of detail, the procedures and remedies that must be

available so that right holders can effectively enforce their rights.

iii. Dispute settlement. The Agreement makes disputes between WTO Members in respect

of TRIPS obligations sub ject to the WTO's dispute settlement procedures.

The starting point of the intellectual property agreement is basic principles.

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1. National treatment: treating one’s own nationals and foreigners equally.

2. Most Favoured Nation (MFN): equal treatment for nationals of all trading partners in the

WTO.

3. The TRIPS Agreement has an additional important principle: intellectual property

protection should contribute to technical innovation and the transfer of technology. Both

producers and users should benefit, and economic and social welfare should be enhanced,

the agreement says.

Concept of ‘Most-favoured’

This sounds like a contradiction. It suggests special treatment, but in the WTO it actually means

non-discrimination— treating virtually everyone equally.

This is what happens. Each member treats all the other members equally as “most-favoured”

trading partners. If a country improves the benefits that it gives to one trading partner, it has to

give the same “best” treatment to all the other WTO members so that they all remain “most-

favoured”.

Most-favoured nation (MFN) status did not always mean equal treatment. The first bilateral

MFN treaties set up exclusive clubs among a country’s “most-favoured” trading partners. Under

GATT and now

WTO, the MFN club is no longer exclusive. The MFN principle ensures that each country treats

it’s over 150 fellow-members equally.

WIPO

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Objectives and main activities

The World Intellectual Property Organization (WIPO) is the United Nations specialised agency

that coordinates international treaties regarding intellectual property rights. Its 184 member states

comprise over 90% of the countries of the world, who participate in WIPO to negotiate treaties

and set policy on intellectual property matters such as patents, copyrights and trademarks. WIPO

was established in 1967 by the WIPO Convention, which states that WIPO’s objective was “to

promote the protection of intellectual property throughout the world …”. WIPO currently

administers 24 treaties and facilitates the negotiation of several proposed treaties covering

copyrights, patents and trademarks.

The nine strategic goals were adopted by Member States in the Revised Program and Budget for

the 2008/09 Biennium.They are:

Balanced Evolution of the International Normative Framework for IP

Provision of Premier Global IP Services

Facilitating the Use of IP for Development

Coordination and Development of Global IP Infrastructure

World Reference Source for IP Information and Analysis

International Cooperation on Building Respect for IP

Addressing IP in Relation to Global Policy Issues

A Responsive Communications Interface between WIPO, its Member States and All

Stakeholders

An Efficient Administrative and Financial Support Structure to Enable WIPO to Deliver its

Programs although WIPO administers 24 treaties that deal with intellectual property rights, the

World Trade Organisation (WTO) administers what is arguably the most important treaty on the

subject, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS

Agreement). Unlike WIPO treaties, the TRIPS Agreement includes powerful enforcement

mechanisms such as trade sanctions and litigation before the World Court that force countries

into compliance with the provisions in the agreement.

Standards of Protection

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The second part of the TRIPS agreement looks at different kinds of intellectual property rights

and how to protect them. The purpose is to ensure that adequate standards of protection exist in

all member countries. Here the starting point is the obligations of the main international

agreements of the World Intellectual Property Organization (WIPO) that already existed before

the WTO was created.

In some cases, the standards of protection prescribed were thought inadequate. So the TRIPS

agreement adds a significant number of new or higher standards. The standards for protection are

explained in detail under each sub-topic of the TRIPS agreement.

Transition arrangements: 1, 5 or 11 years or more

When the WTO agreements took effect on 1 January 1995, developed countries were given one

year to ensure that their laws and practices conform with the TRIPS agreement. Developing

countries and (under certain conditions) transition economies were given five years, until 2000.

Least-developed countries had 11 years, until 2006— now extended to 2013 in general, and to

2016 for pharmaceutical patents and undisclosed information.

If a developing country did not provide product patent protection in a particular area of

technology when the TRIPS Agreement became applicable to it (1 January 2000), it had up to

five additional years to introduce the protection. But for pharmaceutical and agricultural

chemical products, the country had to accept the filing of patent applications from the beginning

of the transitional period (i.e. 1 January 1995), though the patent did not need to be granted until

the end of this period. If the government allowed the relevant pharmaceutical or agricultural

chemical to be marketed during the transition period, it had to — subject to certain conditions —

provide an exclusive marketing right for the product for five years, or until a product patent was

granted, whichever was shorter.

Subject to certain exceptions, the general rule is that obligations in the agreement apply to

intellectual property rights that existed at the end of a country’s transition period as well as to

new ones.

COPYRIGHT

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Meaning

Copyright is a legal concept, enacted by most governments, giving the creator of an original

work exclusive rights to it, usually for a limited time. Copyright is basically the right to copy and

make use of literary, dramatic or musical artistic works, cinematographic films, records and

broadcasting, computer programs and software. Copyright is a proprietary right, which accrues

on the creator as soon as the work is created. The idea in the work does not need to be new but

the form, be it literary, artistic, scientific, in which it is expressed must be the original creation of

the author.

In India the first copyright Act was passed in the year 1914. At present, the Copyright Act, 1957

governs copyright law in India. The original Act of 1957 has been amended in the year 1983,

1984, 1992, 1994 and 1999.

Tenure for Copyright

A copyright is not protected in perpetuity. The general rule is that copyright lasts for 60 years. In

the case of original literary, dramatic, musical and artistic works the 60-year period is counted

from the year following the death of the author. In the case of cinematograph films, sound

recordings, photographs, posthumous publications, anonymous and pseudonymous publications,

works of government and works of international organisations, the 60-year period is counted

from the date of publication.

For performer’s right, the tenure for Copyright is 50 years (however it was 25 years prior to the

amendment made in 1999)

Indian Copyright law

In India the first Copyright Act was passed in 1914. It was a replica of the English Copyright Act

of 1911, suitably modified to make it applicable to the then British India. The Act presently in

force was legislated in 1957 and is known as Copyright Act, 1957 as amended by Copyright

(Amendment) Act, 1999. It adopted many principles and provisions contained in the UK Act of

1956.

Rights Requiring Authorization of Copyright

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Owners of copyright in a protected work have a right to exclude others from using it without

authorization. Often described as exclusive rights to authorize others to use the protected works.

The acts usually requiring the authorization of copyright owners is listed as below:

Reproduction rights: copying and reproducing the work

Performing rights: Performing the work in public (Play or concert)

Recording rights : Making a sound recording of the work (Eg: gramophone records or

phonograms in the technical language of copyright law)

Motion picture rights: Making a motion picture (Cinematographic work)

Broadcasting rights: Broadcasting the work by radio or television

Translation and adaptation rights: Translating and adapting the work.

In addition to these exclusive rights of an economic character, copyright laws provide original

authors moral rights. These rights enable authors even after they have transferred their economic

rights, to claim authorship of the work and to object any distortion or other derogatory action in

relation to the work, which would be prejudicial to their reputation and honor.

Provision of TRIPs Agreement

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The main provisions on copyright and neighbours rights are contained in the Berne and Rome

conventions. The TRIPS Agreement complements these provisions, particularly in relation to:

Computer programs and databases

Rental rights to computer programs, sound recording, films and literary works, audio

visuals

Computer programmes [TRIPS, Article 10] The agreement provides that computer programs

should be considered literary works and protected under national copyright laws.

Rental Rights [TRIPS, Article 11] The Agreement requires countries to provide authors of

computer programmes, sound recording and cinematographic films “ the right to authorize or

prohibit the commercial rental” of their copyright works. A member country “shall be expected

from this obligation in respect off cinematographic works unless such rental has led to

widespread copying of such works, materially imparing the exclusive right to reproduction

conferred on authors”

Copyright (Amendment) Act, 1994

The Copyright (Amendment) Act, 1994 came into force with effect from May 10, 1995 and

some of the salient features thereof are listed below:

(i) A comprehensive definition for "computer programme" (reading as follows has been

introduced : "Computer programme" means a set of instructions expressed in words, codes,

schemes or in any other form, including a machine readable medium capable of causing a

computer to perform a particular task or achieve a particular result"

As under the earlier Act, computer programmes continue to be treated as "literary works".

(ii) In relation to any literary, dramatic, musical or artistic work which is computer-generated,

the person who causes the work to be created is the "author".

(iii) A for knowing use of infringing copy of computer programme prescribing imprisonment

new offence has been added in the Act for a term which shall not be less than 7 days but which

may extend to 3 years and with fine ranging from Rs 50,000 (US $ 1,500 approx.) to Rs 200,000

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(US $ 6,000 approx.) Where the computer programme has not been used for gain or in the

course of trade or business the court may not impose any sentence of imprisonment and may

instead only impose a fine up to US $ 1,500. stipulates that certain acts, which when done

without the license of the owner of such right, shall

(iv) Every "broadcasting organisation" has been conferred with a special right known as

"broadcast reproduction right" which shall subsist until 25 years from the beginning of the

calendar year in which the broadcast is made. The Act be deemed to have infringed such right.

(v) Certain acts which do not constitute infringement of copyright the important one being "the

making of copies or adaptation of a computer programme by the lawful possessor of a copy of

such computer programme, from such copy (i) in order to utilize the computer programme for

the purpose for which it was supplied; or (ii) to make back-up copies purely as a temporary

protection against loss, destruction or damage .

However, the copyrights amendment Act of 1999 extends copyright protection to performers

from the present twenty-five years to at least fifty years computed from the end of the calendar

year in which the performance took place. It further empowers the Government to extend the

provisions of the Copyright Act to broadcasts and performances made in other countries

provided those countries extend similar protection to broadcasts and performances made in India.

Main Features of the Copyrights Act of 1957

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1. Creation of a copyright Office and a copyright board to facilitate registration of copyright

and to settle certain kinds of disputes arising under the act and for compulsory licensing

of the Copyright.

2. Definition of various categories of work in which copyrights subsists and the scope of the

rights conferred on the author under the act.

3. Provision to determine the first ownership of copyright in various categories of works.

4. Term of copyright for different categories of work

5. Provisions relating to assignment of ownership and licensing of copyright including

compulsory licensing in certain circumstances.

6. Provisions relating to performing right of or by societies

7. Broadcasting rights

8. International copyright

9. Definition of infringement of copyright

10. Exception to the exclusive right conferred on the author or acts, which do not constitute

infringement.

11. Authors special rights

12. Civil and criminal remedies against infringement - A copyright owner can take legal

action against any person who infringes the copyright in the work. The copyright owner

is entitled to remedies by way of injunctions, damages and accounts.

13. Remedies against groundless threat against legal proceedings

Copyright Infringement

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Any person who knowingly infringes or abets the infringement of the copyright in any work

commits criminal offence under Section 63 of the Copyright Act. The minimum punishment for

infringement of copyright is imprisonment for six months with the minimum fine of Rs. 50,000/-

In the case of a second and subsequent conviction the minimum punishment is imprisonment for

one year and fine of Rs. 1 lakh.

No court inferior to that of a Metropolitan Magistrate or a Judicial Magistrate of the first class

shall try any offence under the Copyright Act.

Copyright in a work shall be deemed to be infringed -

When any person, without a license granted by the owner of the Copyright Does

anything, the exclusive right to do which is by this Act conferred upon the owner of the

copyright .

When any person - Make for sale on hire, or sells or lets for hire, or by way of trade

displays or offers for sale or hire, or Distributes either for the purposes of trade or to such

an extent as to affect prejudicially the owner of the copyright, or By way of trade exhibits

in public, or Imports into India, any infringing copies of the work: Provided that nothing

shall apply to the import of one copy of any work for the private and domestic use of the

importer.

Explanation – For the purposes of this section, the reproduction of a literary, dramatic, musical

or artistic work in the form of a cinematograph film shall be deemed to be an "infringing copy".

Caselets:

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Case: Angelina Jolie sued by Journo for Copyright Violation

Issue: Infringement on Book – The Subject Work

Year: 2011

Angelina Jolie is being sued for copyright violation by Croatian Journalist James Braddock, who

claims her movie ‘In the Land of Blood and Honey’ is based on his book ‘The Subject Work’.

In a lawsuit filed in a federal court in Illinois, Mr. Braddock claims he met with producer Edin

Sarkic, who is working on Angelina’s movie several times throughout 2008 to discuss the

possibility of his tome being adapted for the big screen.

Mr. Braddock is seeking an injunction to block the films scheduled release on December 23, as

well as unspecified damages.

Copyright Infringement in Cyber Space and Indian Laws

The availability of digitized information on internet has raised the issues relating to legal

protection of such information because intellectual property, in the form of computer software

and digitized entertainment, is a highly tempting target for reproduction and distribution. The

digital material in the form of music, graphics, software, and other works can be "copied" and

transmitted over the Internet with a remarkable ease and without the author's permission.

But copyright law provides protection in respect of digital information, computer programmes,

multimedia etc. in cyberspace as well as in the real world. Illegal duplication, file-sharing,

linking, framing or use of any type of intellectual property even in cyber space, constitutes

copyright infringement in the eye of law. Though copyright infringement on internet has become

a global issue, we have analysed here the applicability of Indian Copyright Act in order to deal

with copyright infringement in cyber space.

Section 51 of the Copyright Act, 1957 lays down the provisions relation to the infringement of

copyright. It does not expressly provide as to whether such infringement occurred in cyberspace

or in physical world. If we read the language of the Section 51 along with the Section 14 of the

Copyright Act, 1957 it becomes clear that reproducing any copyrighted work, issuing copies of

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the work to the public or communicating the work to the public would amount to the copyright

violation under the Act.

But, in case of linking or in-lining there is no reproduction of any copyrighted work. The

reproduction takes place at the end of the user who visits the linked page via link. Let us explain

the copyright infringement in respect of linking, framing and in-lining along with the

applicability of Indian Copyright Act, 1957 to deal with these issues.

Linking

Linking means the joining of any two web pages on Internet. A link is an embedded electronic

address that points to another location and takes the user there. A link may lead either to another

file in the same website, or to a file on a different computer located elsewhere on the Internet.

Before linking deep in to any site it is prudent to first take the permission of the owner of site.

On the other hand, in order to prevent unwanted linking the creator of web site should insert a

prohibition clause in its terms of use as “ do not link to this site without any express consent of

copyright holder of this site .”

Under Indian Copyright Act, 1957 the legality of framing can be tested by applying the

provisions of section 51 read with section 14 of the Act. In case of framing, the framer of the

other's site neither reproduces the copyrighted content nor making copy of the same but he

provides only a visiting browser with instructions to retrieve the content of that site in to framer's

website. Therefore, the framer of site cannot be held liable for unauthorized copying or

reproduction of copyrighted work under Indian Copyright Act but he could be trapped under

section 57(1) of the Act for infringing the right to integrity of the copyright owner.

Certain Acts not to be Infringement of Copyrights (Under The Copyright Act, 1957)

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(1) The following acts shall not constitute an infringement of copyright namely -

(a) A fair dealing with a literary, dramatic, musical or artistic work [not being a computer

programme for the purposes of – private use, including research, Criticism or review, whether of

that work or of any other work.

The making of copies or adaptation of a computer programme by the lawful possessor of a copy

of such computer programme, from such copy-

(i) In order to utilize the computer programme for the purposes for which it was supplied,

or

(ii) To make back up copies purely as a temporary protection against loss, destruction or

damage in order only to utilize the computer programme for the purpose for which it was

supplied;

(b) A fair dealing with a literary, dramatic, musical or artistic work for the purpose of reporting

current events- In a newspaper, magazine or similar periodical, or in a cinematograph film or by

means of photographs,

(c) The reproduction of a literary, dramatic, musical or artistic work for the purpose of judicial

proceeding or for the purpose a report of a judicial proceedings;

(d) The reading or recitation in public of any reasonable extract form a published literary or

dramatic work;

(e) The publication in a collection, mainly composed on non copyright matter, bona fide intended

for the use of educational institutions and so described in the title and in any advertisement

issued by or on behalf of the publisher, of short passages from published literary or dramatic

works, not themselves published for the use of educational institutions, in which copyright

subsists;

(f) The person making the sound recordings has given a notice of his intentions to make the

sound recordings, has provided copies of all covers or labels with which the sound recordings are

to be sold, and has paid in the prescribed manner to the owner of rights in the work royalties in

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respect of all such sound recordings to be made by him, at the rate fixed by the Copyright Board

in this behalf.

Provided that where the identity of the author of such work, or, in the case of a work of joint

authorship, of any of the authors is known to the library, museum or other institution, as the case

may be, the provisions of this clause shall apply only if such reproduction is made at a time more

than fifty years from the date of the death of the author or, in the case of a work of joint

authorship, from the death of the author whose identify is known or, if the identify of more

authors than one is known from the death of such of those authors who dies last.

(g) The reconstruction of a building or structure in accordance with the architectural drawings or

plans by references to which the building or structure was originally constructed.

Provided that the original construction was made with the consent or licence of the owner of the

copyright in such drawings and plans.

Caselets:

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Case: Copyright Infringement of Don Movie

Product: Movie Don 2

Year: 2011

The makers of Shah Rukh Khan-starrer 'Don-2 - The King is Back', which has got embroiled in

the copyright issue, maintain that they have not done anything wrong. The movie is a remake of

the Amitabh Starrer ‘Don’ (1978).

Nariman Films, the producers of the original DON have sent a legal notice to Excel

Entertainment for copyright infringement, saying that they had only given the right to remake the

movie and not a sequel.

The producers of the original ‘Don’ have reportedly alleged that the sequel has infringed upon

their original copyright. Shahrukh Khan made it clear that his DON sequel is not at all a stolen

piece. The original Amitabh Bachan DON never had a sequel, so there is no question of copying

anything as the script is original.

Earlier the makers of original Don, starring Amitabh Bachchan have slapped a legal notice at the

producers and are dragging Excel Entertainment, Red Chillies and Reliance Entertainment over

copyright issue. But on the other hand, Don 2's confident producer Ritesh Sidhwani cleared all

airs by tweeting, "About the notice from the original producers of Don, be rest assured that we

have done nothing wrong and shall stick to the correct legal and moral principles."

Copyleft

The "reversed 'c' in a full circle" is the copyleft symbol. It is the copyright

symbol mirrored. Unlike the copyright symbol, it has no legal meaning.

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Copyleft describes the practice of using copyright law to offer the right to distribute copies and

modified versions of a work and requiring that the same rights be preserved in modified versions

of the work. In other words, copyleft is a general method for making a program (or other work)

free, and requiring all modified and extended versions of the program to be free as well. Copyleft

is a form of licensing and can be used to maintain copyright conditions for works such as

computer software, documents and art. In general, copyright law is used by an author to prohibit

others from reproducing, adapting, or distributing copies of the author's work. In contrast, under

copyleft, an author may give every person who receives a copy of a work permission to

reproduce, adapt or distribute it and require that any resulting copies or adaptations are also

bound by the same licensing agreement.

Copyleft licenses (for software) require that information necessary for reproducing and

modifying the work must be made available to recipients of the executable. The source code files

will usually contain a copy of the license terms and acknowledge the author(s).

Copyleft: A Challenge to Software Copyright

The legitimacy of copyright is being challenged by an emerging concept of ‘Copyleft’. The

concept originated with Richard Stallman, but came to public attention with the Linux Operating

System. Copyleft is opposed to the proprietary nature of copyright. Copyleft basically means that

a person has the right to use, modify and distribute software and even improve upon it, without

adding any restrictions thereon. As Stallman says, ‘instead of a means of privatizing software, it

becomes a means of keeping software free’.

Linux Operating System

A user of the Linux Operating System has an implied license to modify, distribute and improve

upon the Linux software. This gives him the opportunity to deal with any bugs and defects in the

system immediately, without waiting for an upgrade from the proprietor. It is mainly due to this

reason that Linux has over 10 million users worldwide!

Another advantage in using the Linux Operating system is that it is cheaper. As compared to

Microsoft, a Linux user does not have to pay any license fee for use the Linux operating system

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or software. Companies are increasingly supporting Linux as over other operating systems. IBM,

Dell, Intel, Siemens, Sony, Boeing and even Microsoft itself are using Linux.

Types of Copyleft

1. Strong and Weak copyleft

Strong copyleft provisions can be imposed to all derived works which means that the first

creator of the works has the most rights. The most well known free software license that uses

strong copyleft is the GNU General Public License. Strong license is also Design Science

License that can apply to art, music, sports photography and video.

Weak copyleft refers to license where not all derived work inherit the copyleft license. Its inherit

depends on how it was derived. Weak copyleft licenses are mostly used for software libraries by

allowing links to other libraries (GNU Lesser General Public License). Most important users of

weak copyright are Mozilla and OpenOffice.org.

If author wants no ownership he could just put work in public domain

2. Full and Partial Copyleft

"Full" and "partial" copyleft relate to another issue: Full copyleft exists when all parts of a work

(except the license itself) may only be modified and distributed under the terms of the work's

copyleft license. Partial copyleft exempts some parts of the work from the copyleft provisions,

thus permitting distribution of some modifications under terms other than the copyleft license, or

in some other way does not impose all the principles of copylefting on the work. For example,

the GPL linking exception made for some software packages (see below)

Case Study

Case: Apple V/S Hong Kong LCD maker

Product: iPad

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Year: 2011

Apple could face a charge of up to US$1.6 billion if it wants to continue using the iPad name for

its popular tablet devices in mainland China after a significant copyright infringement court loss

to a Hong Kong LCD maker.

According to a report in the Chinese state-owned Xinhua news agency, Proview International

Holdings, which registered the iPad name in both Taiwan and mainland China in 2000 and 2001

respectively, had sold the Taiwan rights to Apple in 2009 for a mere US$54,000 but not the

China rights.

Strangely, Apple still attempted to sue Proview for trademark infringement in China, claiming

the 2009 sale covered both Taiwan and China.

The Municipal Intermediate People's Court in Shenzhen, however, rejected Apple's case.

After winning the case, financially struggling Hong Kong-based, Proview Technology, which

owns the iPad trademark for China, will now seek compensation from Apple for use of the name.

Proview is under debt restructuring administration by a Chinese management consultancy, which

now wants to make Apple pay for what will be considered its infringement of Proview's iPad

trademark in China.

Hejun Vanguard Group, the Chinese management consultant, is quoted as saying that Apple's

copyright infringement is clear and that it has been selling iPads in China since September last

year in defiance of the laws. The more iPads that Apple sells the more compensation it will have

to pay Proview, a Hejun spokesman said in Xinhua.

Hejun is reportedly seeking $1.6 billion from Apple for the unfettered right to use the iPad

trademark. Apple, however, has the right of appeal.

TRADEMARK

Meaning

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A trademark is any sign that individualizes the goods of a given enterprise and distinguishes

them from goods of its competitors. Or in other words a trademark is a word or symbol or

combination thereof used by manufacturer or vendor in connection with a product or service.

Marketing of a particular good or service by the producer is much better off as by trademark

because recognition becomes easier and quality is assured. The owner of the mark can prevent

the use of similar or identical signs by competitors if such marks can lead to

confusion.Trademark is one of the areas of intellectual property and its purpose is to protect the

mark of the product or that of a service. Hence a trademark is defined as a mark capable of

being represented graphically and which is capable of distinguishing the goods and services of

one person from those of others and may include shape of goods, their packaging and

combination of colors ,they include a device ,brand, heading ,label ticket ,name ,signature, word,

letter,numeral ,shape of goods, packaging or combination of colors or any combination thereof.

The Trademark Act was introduced to provide for registration and better protection of

Trademarks and for prevention of the use of fraudulent marks on merchandise. This Law also

enables the registration of trademarks so that the proprietor of the trademark gets legal right to

the exclusive use of the trademark. The objective of this act was easy registration and better

protection of trademarks and to prevent fraud. Trademark Act 1999 was done by the Government

of India so that the Indian Trademark Law is in compliance with the TRIPS obligation on the

recommendation of the World Trade Organization (WTO). The rules of the Trademark act 1999

are called as Trademark Rules 2002. Both the Act and its set of rules came to effect on

September 15th 2003. The trademark act 1999 and its trademark rules 2002 presently govern

Indian Trademark Laws in India.

Tenure and the Renewal of trademark registration

The trademark is initially registered for a period of 10 years, which is calculated from the date

of filing of the application and in case of convention application, from the date of priority. It can

be renewed further after every ten (10) years. The registration is required to be renewed within 6

months before the date of expiry of the registration, i.e., 10 years from the date of the application

or subsequent renewals. The failure in renewing the trademark within the stipulated period of

time and a grace period of maximum 1 year granted for restoration of the trademark,

automatically leads to removal of the trademark from the Register of Trademarks.

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Non use cause cancellation of trademark

If a trademark is not used for 5 years continuously it would become a matter of cancellation of

trademark. A particular trademark becomes vulnerable to cancellation on the ground of “non-

use” as soon as a continuous period of 5 years or more have elapsed from the date on which the

said mark was actually placed on the register. In other words, the 5 years non-use period is to be

calculated from the sealing date or the date on which registration certificate was issued.

However, a token sale of a particular product bearing the mark is sufficient to ward-off non-use

cancellation proceedings. But there are some special circumstances that can be pleaded to defend

a non-use cancellation action.

The courts in India have acknowledged certain special circumstances given below which assist in

defending a non-use cancelation action.

1. General glut in the market.

2. Lack of demand for the goods.

3. Import restrictions.

4. Wartime restrictions.

Caselet:

Case: Hindustan Unilever Ltd V/S Southern Soap Maker

Product: Sunlight

Year:

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Hindustan Unilever Ltd (HUL) lost a trademark case for a 127-year-old soap called Sunlight to a

little known southern soap maker.

Over a year ago, HUL had dragged the Kerala-based Thai Group to court for “infringing” on the

Sunlight brand. The Thai Group is the parent company of Ashique Chemicals and Aghin

Chemicals, which manufacture and market detergent brand SunPlus.

HUL’s contention has been that Sun, Sunlight and Sunsilk are its registered trademarks, which

Ashique and Aghin had trespassed on. However, the Bombay High Court in its order last week

dismissed HUL's interim application on the grounds that the consumer products giant had not

used its registered mark for detergent Sun ever since it got it registered 60 years ago.

Need of Trademark

Registration of trademark is not mandatory but in the present day scenario there is increasing

infringement and a lot of cases are challenged so it is advisable to register Trademarks. There is

also a need for trademarks to be globally protected. This is said because most have regional or

local name brands and most constantly push these weak names while struggling to get global

clearance. A trademark can thus be called a device that gives distinctiveness and a mode of

identification to a particular product or service. An increasing number of countries also allow for

the registration of less traditional forms of trademarks such as single colors, three dimensional

signs (shapes of product packaging), audible signs (sounds) or smell. It is said that a trademark

is a valuable business asset and a marketing tool which could help in financing of the business in

a way. A brand is always a trademark but a trademark is not always a brand.

Important Amendment:

Special provisions relating to protection of trademarks through international registration under

the madrid protocol

The new amendments done in The Trademark (amendment) Act, 2010 are as follows:

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• An amendment to Section 21 of the Trademarks Act, 1999 to do away with the one month

discretionary extension that the Registrar could grant in the case of an opposition to an

advertised trademark. The amendment therefore restricts the time period to file an opposition to

only 3 months from the date of registration which was 4 months earlier.

• An amendment to Section 23 of the Trademarks Act, 1999 to ensure that a trademark is

registered within 18 months of filing the trademark application.

• An amendment to delete Sections 40, 41 & 42 of the Trademark Act, 1999. Section 40 places a

restriction on assignment or transmission of trademarks where multiple exclusive rights would be

created. Section 41 places a restriction on assignment or transmission where exclusive rights

would be created in different parts of India. Section 42 states the conditions for assignments

otherwise than in connection with the goodwill of a business.

• An amendment to Section 45 of the Trademark Act, 1999 to ensure that a person who has an

assignee or licensee of a trademark cannot initiate any trademark infringement proceedings under

the Trademark Act, 1999 until such time that the assignment or transmission has been registered

with the Registrar of Trademarks under Section 45(1) of the Trademarks Act, 1999.

• An amendment to delete Chapter X of the Trademarks Act, 1999. This chapter deals with

special provisions for trademarks relating to 'textile goods'.

• Miscellaneous amendments to Sections 150 and 157 of the Trademarks Act, 1999 in order to

ensure consistency in the language of the remaining amendments.

Effects of international registration:

From the date of the international registration of a trade mark where India has been designated or

the date of the recordal in the register of the International Bureau about the extension of the

protection resulting from an international registration of a trade mark to India, the protection of

the trade mark in India shall be the same as if the trade mark had been registered in India.

Duration and renewal of international registration.

The international registration of a trade mark at the International Bureau shall be for a period of

ten years and may be renewed for a period of ten years from the expiry of the preceding period.

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Reasons for the amendments

1. A person desirous of obtaining registration of his trade mark in other countries has to make

separate applications in different languages and pay different fees in the respective countries.

There is no provision under the Trade Marks Act, 1999 (hereinafter referred to as Trade Marks

Act) to facilitate Indian nationals as well as foreign nationals to secure simultaneous protection

of trade marks in other countries.

2. The Madrid Protocol, administered by the International Bureau of the World Intellectual

Property Organization (WIPO), a specialized agency of the United Nations, was adopted in 1989.

The Madrid Protocol is a simple, facilitative and cost-effective system for international

registration of trade marks. It enables the nationals of the Member countries of the Protocol to

obtain protection of trademarks within the prescribed period of 18 months by filing single

application with one fee and in one language in their country of origin, which in turn is

transmitted to the other designated countries through the International Bureau.

3. Accession to the Madrid Protocol will entail amendments to the Trade Marks Act. For this

purpose, it is proposed to suitably amend the Trade Marks Act and to incorporate therein a new

Chapter IVA containing special provisions relating to protection of international registration of

trademarks under the Madrid Protocol. It is sought to empower the Registrar of Trade Marks to

deal with international applications originating from India as well as those received from the

International Bureau and maintain record of international registrations. Definitions of new terms

are being given. It is further proposed to provide for the effect of international registration,

duration and its renewal.

4. It is also proposed to reduce the time period of filing a notice of opposition of published

applications from four months to three months for speedy disposal of proceedings. Further, with

a view to simplify the law relating to transfer of ownership of trade marks by assignment or

transmission and to bring the law generally in tune with international practice and modern

business needs.

Types of Trademarks

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There are basically four types of trademarks:-

1. Service Mark- Service Marks are marks used in any form of service business where

actual goods under that mark are not traded. Services are identifying the source of

Service provided by Company/Firm/Individuals. Services are offered and purchased. Ex-

Insurance, Education, Transport, Building construction etc.

2. Collective Mark- The collective mark is different from other trademarks as a collective

mark distinguishes the goods or services of members of an association of persons from

the goods or services of others. The association is registered as proprietor of the

trademark and the members who use the marks can do if they fulfill regulations, which

are filed together with the application users. Use by members, referred to as authorized

users, is deemed to be the use by the proprietor.

3. Certification Mark- Certification mark is a mark that certifies that goods and/or services

of another meet certain very specific standards of quality.

Ex: ISI MARK, AGMARK etc.

4. Trade Dress- The literal meaning of Trade Dress is - the overall image of a product used

in its marketing or sales that is composed of the nonfunctional elements of its design,

packaging, or labeling (as colors, package shape, or symbols). That means there is a

specific way of writing any product name, its unique background and other remarkable

signs. The concept of trade dress has much importance in a country like India where one

third of the population is still illiterate. Trade dress helps the illiterate people who cannot

read the trademark on the product as well as the manufacturers to reach the people easily.

The salient features of the Indian Trademarks Act, 1999

i. With the Trade Marks Act, 1999, being brought into force on September15, 2003, India

has made a step towards fulfilling its international obligations. Consequently, the Indian

trademark law has now become fully compatible with the International standards laid

down in the TRIPS Agreement. The New Act primarily consolidates and amends the old

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Trade & Merchandise Marks Act, 1958 and provides for better protection of goods and

services. The extended and salient features of the New Act are the following:

ii. The definition of Trademark has been expanded to encompass any mark capable of

distinguishing the goods and services of one, from the goods and services of another and

may include any mark capable of graphical representation including aspects of shape of

goods, their packaging, and combination of colors. As a result, even well-known designs

can now avail protection under trademark law.

iii. The definition of trademark under the Act includes products as well as services, such as

insurance, financial services, real estate and telecommunications.

iv. The trademark law provides for ‘well-known trademarks’. However, a trademark can be

established as a well-known trademark, only if it is known to a considerable number of

people who use such a product or avail such a service. This provision is adopted to

accommodate the requirement of Art 16 of the TRIPS agreement. The well-known

trademark is a mark used over particular goods or services that has obtained sufficient

recognition among the consumers using such goods or services. The conditions laid

down for the determination of a well-known trademark are (1) Knowledge of

recognitions, (2) Promotion of trademark, (3) Duration, extent and geographical area, (4)

Registration and use.

v. The system of maintaining registration of trademarks in part A and part B is omitted.

Only a single register will be maintained hereafter, thereby giving no room for

discrimination between applicants, as was done formerly. All applicants are now given

equal rights and opportunities.

vi. As one of the means to simplify and streamline the procedure of registration, it is now

made possible to file one single application for registration of a mark in different classes

of goods or services, instead of filing separate applications.

vii. The term of protection of trademarks (tenure) enhanced from the previous 7 years to 10

years. Renewal is possible before completion of 10 years in perpetuity.

viii. An Appellate Board has been established having its national headquarters in Chennai. It

is “roving in nature”, would have sittings in Kolkata, Mumbai, Delhi, Ahmadabad

periodically depending upon the work demand.

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ix. The New Act provides the registered proprietor who has a trademark over goods, a

preemptive right over associated services and vice versa. Thus it prohibits any other

trader from using the mark even over “similar” goods or services.

x. The protection of trademark is extended to prevent any ‘corporate’ or “business concern”

from using someone else mark as its trade name or name of its “business concern”,

dealing in goods and services in respect of which the mark is registered.

xi. To prevent the sale of spurious goods and falsification of trademarks, enhanced

punishment is incorporated. Punishment will be a minimum of 6 months and can extend

to 3 years and a fine of rupees 50,000 to 3 lakhs.The police can arrest the violators

without a warrant as they come to know of such activities as these are considered serious

offences.

xii. The previous Act enabled a trademark owner to register a mark in other classes as a

defensive mechanism; the same is omitted.

xiii. The Act also extends the applicability of convention countries to include members of

Group or Union of countries and Inter-governmental organizations such as members of

the WTO.

Caselet:

Case: Blue Nile, Inc. v. Ice.com, Inc

Product: “look and feel” website

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Year:

Blue Nile, Inc. v. Ice.com, Inc., the plaintiff sued the defendant for copying the overall “look and

feel” of plaintiff’s retail jewelry websites, including the design of plaintiff’s search

pages. Although the court ordered more factual development before it could rule definitively on

the issue, the court did hold that it was possible for the look and feel of the websites to have trade

dress protection

All these types of Trademarks are equally important and promote activity as well as maintain the

distinctiveness of the product.

Legal Requirement:

There are three basic requirements for filing a trademark (or service mark) with the Indian

Trademark Registry.

1. The mark must be filed under the name of the actual owner of the mark. The owner of the

mark is the person who controls the nature and the quality of the goods sold or the services

rendered under the mark.

The owner does not have to be an individual; the owner can be a partnership, a company, or an

association. If the owner is a company, then the applicant's name is the name of the company.

2. The applicant specify what type of entity it is (individual, company, etc.) and it’s national

citizenship. It is not required that the applicant has Indian citizenship.

3. The application must be based on an actual use or on a real intention to use the mark in

business. For the application to be based actual use, the applicant should indicate what products

he or she has actually placed the mark on and sold for business. A mark for services will be

considered actual use when it is used or displayed in the sale or advertising of services and the

services are actually rendered.

When you are filing an intent-to-use application, it is sufficient that you state that you plan to use

the mark in commerce. However, you will have to actually use the mark before it can actually be

registered.

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Ground of Refusal

The Trademark Registry will refuse to register a mark if it does not function as a trademark or

service mark.

Not all words, names, symbols or devices function as trademarks. For example, names which

merely describe the goods on which it is used cannot be registered. You cannot register the mark

"computer", for example, for a laptop computer.

The grounds for refusal may be summarized as:

1. The proposed mark consists of or comprises immoral, deceptive, or scandalous matter

2. The proposed mark may disparage or falsely suggest a connection with persons (living or

dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute

3. The proposed mark consists of or comprises the flag or coat of arms, or other insignia of a

country, or of any State or municipality, or of any foreign nation

4. The usage of the proposed mark is prohibited under the Emblems and Names (Prevention of

Improper Use) Act,1950

5. The proposed mark so resembles a mark already registered in the Patent and Trademark Office

(PTO) that use of the mark on applicant's goods or services are likely to cause confusion,

mistake, or deception

6. The proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or

services

7. The proposed mark is primarily geographically descriptive or deceptively geographically

misdescriptive of applicant's goods or services

8. The proposed mark is primarily merely a surname; and

9. Matter that, as a whole, is functional.

Legal Remedies against Infringement and/or Passing off

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Under the Trade Marks Act, both civil and criminal remedies are simultaneously available

against infringement and passing off.

Trademark Infringement and Passing Off

Infringement:

Section 29 of the Trademark Act-1999 talks about various aspects related to infringement as

given in S.29(1) that a registered trade mark is infringed by a person who, not being a registered

proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is

identical with, or deceptively similar to, the trade mark in relation to goods or services in respect

of which the trade mark is registered and in such manner as to render the use of the mark likely

to be taken as being used as a trade mark.

Other subsections describes that in course of the use of the trademark it is said to be infringing

the rights of other company due to use of similar or identical trademark using for marketing of

similar kind of goods and services or use of identical or deceptively similar trademark for any

other kind of goods and services. It is further given in the Sub Section (9) of this section that the

infringement can also be done by the spoken use of those words as well as by their visual

representation. 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.

In Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Ltd ,1988. Ranbaxy Laboratories Ltd

(the plaintiff) company manufactured drugs under the trade name "Calmpose". Dua

Pharmaceuticals Ltd (the defendant)company subsequently floated its similar product under the

trademark "Calmprose". The said two trademarks having appeared phonetically and visually

similar and the dimension of the two strips being practically the same including the type of

packing, the colour scheme and manner of writing, it was found to be a clear case of

infringement of trade mark and the ad interim injunction granted in favour of the plaintiff was

accordingly made absolute.

Passing Off:

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The specific description of passing off is not given in the trademark act It is referred to in section

27(2), 134(1) (c) and 135.Section. So the courts have drawn its meaning from common law that

if the infringement of trademark done in such a manner where the mark is not only deceptively

similar to the trademark of other company but also creating confusion for the customers, which

ultimately results in damage for business of the company.

Under the common law, a person who builds up a reputation in connection with the use of a

particular mark will have rights to prevent another person "passing off" goods or services as

being those of the owner of the mark if such conduct is likely to injure the proprietor's

reputation. The proprietor of a common law trade mark may also be able to prevent registration

of a similar trade mark by another party. 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.

Three elements of Passing Off-

1. The presence of goodwill attached to the claimant's goods or services;

2. Misrepresentation by the defendant which causes confusion to the public;

3. Damage suffered by the claimant.

The above concept of passing off can be explained with the help of this case law:

Honda Motors Co. Ltd V Charanjit Singh & Others

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Honda Motors(Plaintiff) was using trademark "HONDA" in respect of automobiles and power

equipments. Charanjit Singh & Others (defendants) started using the mark "HONDA" for its

pressure cookers. Honda Motors bought an action against the Charanjit Singh & Others for

passing of the business of the plaintiff. It was held that the use of the mark "Honda" by the

defendants couldn't be said to be an honest adoption. Its usage by the defendant is likely to cause

confusion in the minds of the public. The application of the plaintiff was allowed.

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

goodsfor 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:-

(a) 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.

(b) 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.

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 but may extend to Rs. 300,000.

Process of Registering for Trademark

The registration process generally takes at least 2 years from start to finish, although it can last

longer if legal issues arise during the process.

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An application for registration of a trade mark can be filed at Registries located at Delhi,

Mumbai, Chennai and Kolkata based on territorial jurisdiction. In case of foreign applicants,

their agent's address in India shall be measured for the purpose of jurisdiction.

After filing an application, the Trademark Registry will assign your file a serial number and mail

you a receipt about a month after filing.

An examiner with the Trademark Registry will examine the application and will publish the

mark in the Trademark Journal. Other parties will have (90) days from the date of publication to

object to the mark. Thereafter, the Trademark Registry will issue a Certificate of Registration.

Case Study

Case: “Amul wins trademark case in Gujarat HC”

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Issue: Trademark - “Utterly ButterlyAmul”

Year: Sept 26, 2007

(An article from Times of India published on 26 Sep, 2007 )

“Utterly ButterlyAmul's name cannot be used by any other proprietor even if the company is

selling goods other than that sold by the proprietor, who has registered the trademark. In a

significant judgment,” the Gujarat High Court has ruled that a registered trademark user has the

right to restrict others using their trademark for different class or goods.

HC's judgment was in connection with a case where the Kaira District Co-operative Milk

Producers' Union popularly Amul Dairy and the Gujarat Co-operative Milk Marketing

Federation (GCMMF) had filed trademark infringement cases against two local shop owners,

AmulChasmaghar and Amul Cut Piece Stores in the district court. While Kaira Union owns

brand Amul, GCMMF manages the brand.

The district court had passed an order that it was a clear case of infringement and restrained the

two from using Amul trademark. AmulChasmaghar however had challenged the district court's

interim injunction in the HC, where justice D N Patel upheld ruling of the district court.

Justice Patel while upholding the district court's ruling stated that he saw no reason to entertain

AmulChasmaghar's appeal as the order passed by the trial court was true, correct, legal and in

consonance with the facts of the case as well as in accordance with the provisions of the

Trademarks Act 1999.

GEOGRAPHICAL INDICATION

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Definition

Section 2(e) of the Act defines a GI as : “geographical indication”, in relation to goods, means

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.

Interpretation: A geographical indication tells consumers that a product is produced in a certain

place and has certain characteristics that are due to that place of production. Geographical

Indication aims at informing the consumer that a good has the quality, reputation or other

characteristic which is essentially attributable to its geographical origin.

Geographical indications can be used to identify any product that may be associated with a

specific geographic place. Consumer purchases product simply for their qualitative properties

attributing the same to their geographical origin. From ancient times every region had its claim to

fame for its products for example Arabia for horses, China for its silk, Dhaka for its muslin,

Venice for glass, India for its spices. Some well-known GIs are “Darjeeling Tea” from India,

“Chianti Wine” from Italy, and “Champagne Wine” from France; “Tequila Spirit” from Mexico;

“Idaho Potatoes” from USA; “Swiss Chocolates” from Switzerland. All these names typically

convey an assurance of quality & distinctiveness, which is essentially attributable to the fact of

its origin in that defined geographical locality, region or territory.

Examples of geographical Indication in world - Bulgaria: Traminer From Khan Kroum

(Wine), Merlou From Sarkar (Wine); Canada: Canadian Rye Whisky,, Canadian Whisky; Czech

Republic: Beers: Pilsen, Budweis; EU: Wines: Champagne, Sherry, Porto, Chianti, Samos,

Fheinhessen, Mossele Luxembourgeoise, Mittleburgenland, Spirits: Cognac, Brandy De Jerez,

Grappa Di Barolo, Berliner Kummel, Genievre Flandres Artois, Scotch Whicky, Irish Whickey,

Tsikoudia (From Crete); Hungary: Ger (wine)

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An example is the word “Champagne” that is claimed exclusively by the Champagne region of

France, which is the geographical region from which the wine derives its world famous name.

No other wine, even if it is made from the same grape variety, by the same method, and is

identical in taste, aroma and other qualities, can be called “Champagne”. Example the usage of

the phrase “Champagne made in USA” is prohibited although it is not deceptive.

Examples of geographical Indication in India. - Basmati Rice, Darjeeling Tea, Pochampally

Ikat, Jasmin Rice etc

Some of the examples of potential Geographical Indications in Textiles & Clothing in India.

SR.NO PRODUCT STATE

1. Balarampuram Fine Cotton Sarees Kerala

2. Paithan Sarees Maharashtra

3. Sambalpur Sarees Orissa

4. Bomkai Saree & Fabrics Orissa

5. Patola Sarees Gujarat

6. Lucknow Chikan Craft Uttar Pradesh

7. Varanasi Sarees & Brocades Uttar Pradesh

8. Maheswar Sarees In Silk Madhya Pradesh

It has been estimated that about 50000 products in India needs protection under GI.

The registration of a geographical indication is valid for a period of 10 years. GI registration can

be renewed from time to time for further period of 10 years each, if the authorized user so

desires.

Appellation of Origin

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Lisbon Agreement defines an “appellation of origin” as “the geographical denomination of a

country, region, or locality, which serves to designate a product originating therein, the quality or

characteristics of which are due exclusively or essentially to the geographical environment,

including natural and human factors. An appellation of origin is a special kind of geographical

indication, used on products that have a specific quality or characteristics that is exclusively or

essentially due to the geographical environment in which the products are produced. An

appellation of origin (AO) is a special kind of GI.

Indication of Source

Indication of source is a sign that simply indicates that a product originates in a specific

geographical region, for example, labels saying “Made in USA” , “Swiss Made” or “Product of

Spain”.

Need for Geographical Indication Indian Act, 1999

Prior to 1999 there was no specific legislation to regulate geographical indication. It was in the

year 1999 that India in compliance with its obligation under TRIPS Agreement enacted the

Geographical Indications of Goods (Registration and Protection) Act, 1999. This act seeks to

provide for registration and better protection GIs relating to goods. It excludes unauthorized

persons from misusing GIs. Geographical indications are understood by consumers to denote the

origin and the quality of products. Many of them have acquired valuable reputations which, if

not protected, may be misrepresented by dishonest commercial operators. Buyer believes in

buying a genuine product with specific qualities and characteristics, while they in fact get a

worthless imitation. The latter suffer damage because valuable business is taken away from them

and the established reputation for their products is damaged.

To qualify for GI protection an indication must:

42

http://www.wipo.int/geo_indications/en/about.html#what


i. Identify the good as agricultural goods, natural goods or manufactured goods

ii. Possess a given quality, reputation or other characteristics which is essentially

attributable to its area of geographic origin.

The Geographical Indications that cannot be registered are:

The use of which would likely to deceive or cause confusion or contrary to any law.

Those which comprise or contain scandalous or obscene matter or any matter likely to

hurt religion susceptibility of any class or section of citizens of India.

Those which would otherwise be disentitled to protection in a court, which are

determined to be generic names or indications of goods.

Features of the Geographical Indication Indian Act, 1999

The important features of the Geographical Indication Indian Act, 1999 are as follows:-

1. It may be used by all producers who make their products in the place designated by a

geographical indication and whose products share typical qualities.

2. It provides higher level of protection for notified goods and remedies for infringements.

3. It provides a mechanism for registration of GIs.

A geographical indication is a public property belonging to the producers of the concerned

goods. It shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage

or such other agreement. However, when an authorized user dies, his right devolves on his

successor in title.

GI protection with TRIPS Agreement

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GI protection is granted by the TRIPS Agreement. The WTO (World Trade Organization) TRIPS

Agreement (an agreement on trade related intellectual property rights) of 1994 is currently the

principal international instrument for protecting and defending GIs. This agreement provides for

two levels of protection. A basic protection fixed in Article 22 for all products which is

determined by an act of misleading the public or unfair competition; and an additional protection

fixed in Article 23 solely for wines and spirits which prevents any incorrect use of GIs on these

types of product. Article 23 says governments may refuse to register or may invalidate a

trademark that conflicts with a wine or spirits GI whether the trademark misleads or not. Article

24 of TRIPS provides a number of exceptions to the protection of geographical indications that

are particularly relevant for geographical indications for wines and spirits (Article 23). For

example, Members are not obliged to bring a geographical indication under protection where it

has become a generic term for describing the product in question.

People responsible for administration of Geographical Indication in India are as follows:-

The Controller General of Patents, Design and Trademarks administers patents, designs,

trademarks and geographical indications, which is under the control of the Department of

Industrial Policy and Promotion.

Ministry of Commerce and Industry, govt. of India.

The Geographical Indications (Registrations and Protection) Act Rule, 2002 has also

stipulate the protection of GI. The GI Act came into force with effect from 15th

September 2003.

The central govt. has established Geographical Indications Registry at Chennai, with

Controller of Patents, Designs & Trademarks of the Registrar of GI where the right

holders can register their respective product.

Caselets

44


1) Case: Importance of Strawberry in Mahabaleshwar

Product: Strawberry

Year: September 2009

The strawberry mainly grown in Mahabaleshwar-Panchagani belt of Western

Maharashtra region has now received GI status and now will be recognised as

"Mahabaleshwar Strawberry", brand name for the strawberry. Earlier, All India

Strawberry Grower's Association had applied for the GI status to Chennai based

Geographical Indication Registry. The association confirmed the acceptance of the same

on Wednesday and now the growers can market their fruit as ' Mahabaleshwar

Strawberry'. All India Strawberry Grower's Association's chairman Balasaheb Khilare,

said, "There are over 1800 strawberry growers in Mahabaleshwar-Panchgani belt on 2000

acres and produced 20, 000 tonnes of strawberry every year. The total cost of the

production is more than Rs 100 crore. The climatic condition of Mahabaleshwar is very

suitable for strawberry than any other part of the country and is similar to Europe and

hence, we are able to grow good quality fruits over here. The taste and sweetness of this

fruit is unique. Talking about the exports of strawberry, he said, "Earlier, we were

exporting strawberry to Brazil and over 400 tonnes of strawberry was exported. But, due

to highly perishable nature of the fruit, the exports were discontinued. But now, due to GI

recognition we are able to export the fruit to over 153 countries in the world.

2) Case: Obtaining GI status for Puneri Pagdi

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Product: Puneri Pagdi

Year: May 2010

Shree Puneri Pagdi Sangha recently managed to obtain geographical indication (GI)

status for the famed Puneri Pagadi, the traditional headgear of Maharashtrians, and thus

ensure its conservation. The Geographical indication (GI) status that we have secured for

'Puneri Pagdi' will make our headgear famous all over the world by the name of Puneri

Pagdi. No one would be able to manufacture them through wrong means and would not

be able to amend the traditional way of making them. With the endorsement of the GI, no

turban made outside Pune region can be legally sold under the name of Puneri Pagadi and

this will benefit local artisans."The Puneri Pagdi can be popularised as a souvenir

showcasing Indian tradition. Even the local artisans will gain employment by this.

Infringement of Geographical Indication

When an unauthorized user uses a geographical indication that indicates or suggests that such

goods originate in a geographical area other than the true place of origin of such goods in a

manner which mislead the public, the registered proprietor or authorized users of a registered

geographical indication can initiate an infringement action.

A sentence of imprisonment for a term between 6 months to 3 years and a fine between fifty

thousand rupees and two lakh rupees or stipulated in the Act. However, the court may reduce the

punishment under special circumstances.

Registration for Geographical Indication Indian Act, 1999

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Geographical Indications Registry is set up in Chennai. Registry maintains a Register of GI

which is divided in to two parts, Part A and Part B. Part A is related to the registration of GIs.

Part A contains details of distinguishing characteristics of the goods and of the registered

proprietor which would be an association of persons or producers or a body representing interest

of such producers like for instance the Tea Board, Coffee Board, Spices Board etc. Part B relates

to the registration of authorized users/proprietors such as names, addresses and descriptions.

Once the need is felt for registration of a good as a GI good, the first and foremost requirement is

to represent the interest of the producers of the good under consideration. The Indian GI Act says

that any association of persons, producers, organization or authority established by or under the

law is eligible to apply for GI registration. The applicant must represent the interest of the

producers. Producers are defined as persons dealing with the following three categories of goods:

1) Agricultural Goods include the production, processing, trading or dealing;

2) Natural Goods include exploiting, trading or dealing; and

3) Handicrafts or Industrial goods include making, manufacturing, trading or dealing

The second stage is the submission of application for registration under the GI Act, 1999. The

application has to include details of special characteristics of the product to convincingly prove

the uniqueness and establish linkages between the product and its place of origin.

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After the preparation of application is completed, applications can be filed and submitted by a

legal practitioner or a registered agent and submitted to the Registrar of Geographical

Indications, Chennai along with a prescribed fee. The application must be in writing in triplicate

in the prescribed format. The application has to be signed by the applicant or his agent and

accompanied by a statement of case.

After the application is submitted, the examiner at the Registrar's office scans the application and

deficiencies have to be corrected by the applicant within one month. The content of the statement

of case is assessed by a consultative group of experts in the area and an examination report is

issued.

Post this process, in case of any objection, the Registrar communicates with the applicant and is

given two months to respond or apply for a hearing. The Registrar may also withdraw an

application after the hearing. Every application within three months of acceptance is published in

the Geographical Indications Journal, which is bi-monthly and bi-lingual (Hindi and English)

statutory publication. The Journals are published on the Registrar of Geographical Indications

website and any person can file a notice of opposition within three months opposing the GI

application published in the journal. At this stage, the applicant can send a copy of

counterstatement which can be accepted or result in abandoning of the application after a

hearing. When an application of GI has been accepted, the Registrar registers the geographical

indication and the applicant is issued a certificate with the seal of the Geographical Indications

Registry. A registered GI is valid for 10 years and can be renewed on payment of renewal fee.

Any person aggrieved by an order or decision can file an appeal to the intellectual property

appellate board (IPAB) within three months. GI is a public property belonging to the producers

and it cannot be transmitted, assigned or mortgaged. The Appellate Board or the Registrar of GI

has the power to remove the GI or an authorized user.

The registration of a geographical indication can be applied by-

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Any association of persons, producers, organisation or authority established by or under

the law can apply

The applicant must represent the interest of the producers

The application should be in writing in the prescribed form.

The application should be addressed to the Registrar of Geographical Indications along

with prescribed fee.

The benefits of GI registration are as follows :

i. It prevents unauthorized use of registered Geographical Indication goods by third parties.

ii. It boosts exports

iii. It promotes economic prosperity of producers.

iv. Only an authorized user has the exclusive rights to use the geographical indication in

relation to goods in respect of which it is registered

Till March 2010, 120 goods have been registered under the Act and many more are in the

pipeline. Some of the well known GI goods are 'Darjeeling' (tea), Pochhampalli Ikat, Chanderi

Handloom, 'Basmati' (rice), 'Alphonso' (mango), etc. Out of the total 120 registered GIs, 80

belong to the handicraft category followed by agriculture (31), manufactured (7) and food stuff

(2)

Case Study

49


Case: GI certificate for famous Tirupati Ladoo

Product: Tirupati Ladoo

Year: 2008

The Tirumala Venkateshwara temple in Tirupati, which has acquired a unique sanctity in Indian

tradition, is believed to be the world’s richest Hindu shrine and also the most frequently visited

one. In March 2008, Tirumala Tirupathi Devasthanam TTD, the Trust which manages the

temple, applied for a GI certification before the GI Registry in Chennai for the famous Tirupati

Laddu, which is offered as prasadam (sacred food) to devotees of Lord Venkateshwara for more

than three centuries. The increasing demand for these delicious Laddus had given birth to a

thriving black market in and around Tirupati during the last two decades. Attempts made by the

temple authorities, including raids by its security and vigilance wings, had failed to remedy the

situation. According to the temple officials, they were left with no option but to seek GI

protection in order to tackle the menace of hawkers and black marketers who were producing

fake and spurious Laddus and selling them to unsuspecting pilgrims. The Sri Varu Laddu,

popularly known as the Tirupati Laddu, which has been the centre of controversy for quite

sometime, is made from boondi mixed with sugar syrup and pure cow ghee and contains a

variety of other ingredients such as cashewnuts, cardamom, diamond sugar candies, raisins and

almonds. They are made in two sizes, the small ones weighing between 170 and 180 grams and

the big ones weighing between 700 to 720 grams. It claims that over 1.25 lakh Laddus are

prepared everyday in “pottus” or kitchens of the Tirumala temple. While the big Laddus cost Rs

100 each, the small ones are sold for Rs 25. Since in its application to the GI Registry, the TTD

claims that the approximate number of pilgrims visiting the temple daily is 70,000, it could be

earning anywhere between a Rs 17,50,000 to 70,00,000 per day from the sale of the Laddus to

the visitors. TTD’s application also mentions that the Laddus are not produced anywhere else

apart from the temple and possess distinctiveness in terms of quality, reputation and other

characteristics. In 2008, a panel of experts appointed by the Registrar of Geographical

Indications examined the merits of the application and recommended that the Laddu indeed

deserves a GI tag. Finally, on 15th September, 2009 the Tirupati Laddu was registered as a GI.

Controversy: The grant of GI to Tirupati Laddu has raised a host of controversial issues many of

50


which make a strong case in favour of cancellation of the GI registration. In fact the Madras

High Court is in the process of hearing a public interest litigation (PIL), filed against the grant of

GI to Tirupati Laddu by an individual petitioner. Some of the problematic aspects of the said GI

designation have been discussed below:

GI grant to a single producer

Geographical indication is a collective right which is given to a community of producers to

produce their goods using the GI designation. Thus, the fundamental question which arises is

whether the grant of a GI to TTD is permissible under the law given the fact that the latter is a

single entity. Act allows only a class or group of persons or producers or an association

representing the interests of the producers to be the authorized user of a GI. TTD, on the other

hand, is a single producer employing salaried or contract workers to make the Laddus inside the

temple premises Laddu, even the application filed by TTD mentions the Trust as the sole

beneficiary. The enormous revenue generated from the sale of the Laddus goes entirely into its

pocket without having to be shared with other producers.

Lack of Distinctiveness

One can only wonder as to whether Tirupati Laddu is indeed inherently distinct and possesses

unique features not found in Laddus produced in other regions. A careful perusal of the TTD’s

application makes it clear that it is the size of the Tirupati Laddu which primarily distinguishes it

from other Laddus. With respect to other characteristics, there is no distinctiveness which sets it

apart from Laddus produced elsewhere. The ingredients such as flour, ghee, sugar, almonds,

cardamom, etc which are used for making the Laddus are not very different from that used in

normal Laddus. Moreover, there is neither any particular enrichment in the Laddu which can be

attributed to its geographic origin, nor is the process of production unique to Tirupati. Laddus

produced elsewhere are also made in a similar manner. The temple in its application claims that

unlike other Laddus, Tirupati Laddus go through a stringent series of quality checks, are

prepared by highly skilled cooks and are made of the best quality raw materials. While the use of

such measures point towards the superior quality of the Laddus produced at Tirumala, these do

not necessarily imply that they posses uniqueness sufficient to accord them GI status. However,

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in the absence of any marked distinctiveness from other Laddus, how could GI registry deem it

fit to grant GI status on the Laddu merely because the product is believed to have the divine

blessing of the Lord?

Generic Nature of Goods

Another substantive requirement for acquiring GI status is that the GI should not have become

generic in nature. The name “Tirupati Laddu” is widely used by hundreds of independent

producers both inside as well as outside the region. The only feature which distinguishes these

Laddus from Laddus of other regions is its size. Thus, it might be possible that people identify all

the gigantic Laddus which claim their origin from Tirupati as Tirupati Laddu. Therefore, it can

be argued that the term “Tirupati Laddu”, is used commonly to refer to a type of Laddu (large

Laddus), regardless of whether it is prepared in the temple. If the name has already acquired a

generic status, the grant of GI to Tirupati Laddu is inherently erroneous.

PATENT

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Meaning

Patent are form of a certificate granted by a government. It gives the inventor/innovator the right

to exclude others from imitating, manufacturing, using or selling the invention in question for

commercial use during the specified period

Need of Patent

i. A patent gives you the right to exclude others from making your product.

ii. As a patent gives exclusivity, the patent holder has time to market the invention without

competition making him/her able to charge higher prices.

iii. It gives the right to initiate legal action against anyone that is making or selling, without

permission, the patent holder invention.

iv. You can make money by licensing or selling your invention to someone else.

v. It gives you priority over third parties wanting to register their patents in countries that do

not require registration.

Tenure of Patent: 20 years from the date of application being filed. After 20 years, that

invention becomes a public Domain.

Renewal of Patent: Renewal of Patent has to be done after 2 years from the date of Patent.

Patent Renewal fees are payable every year. The first renewal fee will be due at the expiration

of the second year from the date of the patent. Thereafter renewal fee should be paid at the

expiration of every succeeding year.

Amendments done to Indian Patent Act 1970 in accordance to TRIPS (2005)

i. Increase in patent term for all products and processes to 20 years (from 10 years)

ii. Introduction of product patents for drugs – Initially there were only process patent

allowed in India for sectors like pharmaceuticals, agrochemicals and food, but this

amendment made it possible for products also to be patented in these sectors.

Difference between Process Patent and Product Patent:

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Process patent: It is granted for a new process of manufacturing an already known product or

for manufacturing a new product, or for manufacturing more articles of the same product that is

reducing the cost of the already known product.

Product patent: It is granted when a new product has been invented by the person. The product

so invented may either be more or less useful product than an already known product, or a new

product altogether.

Caselets:

Case: First Product Patent Granted in India

Product: Pegasys

Year: March 1 2006

The Controller General of Patents granted the first product patent in pharmaceuticals to Roche

India Pvt Ltd, the Indian arm of Swiss drug maker F Hoffmann La Roche, for its biotech drug

Pegasys No other company will now be allowed to launch a generic version of the drug in India,

although there is no threat to drugs introduced prior to January 2005. The company had applied

for the patent under the Mailbox facility for post-1995 inventions.

Pegasys, a recombinant DNA technology drug, is one of the advanced drugs in the Interferon

series of proteins, which has varied end uses, mainly for treatment of serious viral infections and

consequent diseases like cancer. It has specific application in adults who have hepatitis C and

signs of liver damage.

Many Indian companies like Hyderabad-based Shantha Biotechnics market interferon drugs in

India. These companies, however, would not need to discontinue production and marketing. This

is because as per the patent rules, companies that had introduced the drug prior to January 2005

would not need to stop production, even if a patent is granted.

Features of Indian Patent Act 1970

54


The Patent law of India has the following salient features that decide whether a patent will be

granted or not:

(a) The object: The object of patent law is to encourage scientific research, new technology and

industrial progress. The price of the grant of the monopoly is the disclosure of the invention at

the Patent Office, which, after the expiry of the fixed period of the monopoly, passes into the

public domain.

(b) Inventive step: The fundamental principle of Patent law is that a patent is granted only for an

invention which must have novelty and utility. It is essential for the validity of a patent that it

must be the inventor's own discovery as opposed to mere verification of what was, already

known before the date of the patent.

(c) Useful: The previous Act, i.e. Act of 1911, does not specify the requirement of being, useful,

in the definition of ‘invention”, but courts have always taken the view that a patentable

invention, apart from being a new manufacture, must also be useful.

(d) Improvement: In order to be patentable, an improvement on something known before or a

combination of different matters already known, should be something more than a mere

workshop improvement, and must independently satisfy the test of invention or an inventive

step. It must produce a new result, or a new article or a better or cheaper article than before. The

new subject matter must involve "invention" over what is old. Mere collocation of more than

one, integers or things, not involving the exercise of any inventive faculty does not qualify for

the grant of a patent.

(e) The guiding tests: To decide whether an alleged invention involves novelty and an inventive

step, certain broad criteria can be indicated. Firstly if the "manner of manufacture" patented, was

publicly known, used or practiced in the country before or at the date of the patent, it will

negative novelty or `subject matter'. Prior public knowledge of the alleged invention can be by

word of mouth or by publication through books or other media. Secondly, the alleged discovery

must not be the obvious or natural suggestion of what was previously known.

Persons entitled to apply for patents

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An application for a patent for an invention may be made by any of the following persons either

alone or jointly with another:

a) True and first Inventor

b) His/her assignee

c) Legal representative of deceased inventor or assignee.

Criteria for Inventions to be Patentable

The basic criteria for an invention to be patentable are the following:

(1) An invention must be novel

(2) Has an inventive step and

(3) Is capable of industrial application

Inventions not Patentable

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Under Section 3 & 4 in Patent Act, and in sub section 3 (a) to 3 (p) gives the areas of inventions

not patentable. For example,

1. An invention which is frivolous or which claims anything obvious contrary to well established

natural laws.

2. An invention the primary or intended use or commercial exploitation of which could be

contrary to public order or morality or which causes serious prejudice to human, animal or plant

life or health or to the environment.

3. The mere discovery of a scientific principle or the formulation of an abstract theory or

discovery of any living thing or non-living substances occurring in nature.

4. The mere discovery of a new form of a known substance which does not result in the

enhancement of the known efficacy of that substance or 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.

5. A substance obtained by a mere admixture resulting only in the aggregation of the properties

of the components thereof or a process for producing such substance.

6. The mere arrangement or re-arrangement or duplication of known devices each functioning

independently of one another in a known way.

7. A method of agriculture or horticulture.

8. Any process for the medicinal, surgical, curative, prophylactic diagnostic therapeutic or other

treatment of human being or any process for a similar treatment of animals to render them free of

disease or to increase their economic value or that of their products.

9. Plants and animals in whole or any part thereof other than microorganisms but including

seeds, varieties and species and essentially biological processes for production or propagation of

plants and animals.

10. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever

including cinematographic works and television productions.

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11. A mere scheme or rule or method of performing mental act or method of playing game.

12. A presentation of information.

13. Topography of integrated circuits

Caselet

Case: Novartis V/S Indian Patent Act

Product: Glivec

Year: 2007

Swiss drug firm Novartis has lost its legal case against the Indian government, who it had

accused of 'unconstitutional' patent law practices.

The case was launched in the year 2007, after the Indian government refused to grant a patent to

Novartis for its cancer drug, Glivec.

India has a provision within its patent law - section 3(d) - which excludes 'incremental

innovations'. Since a patent had previously been granted for imatinib (the active ingredient

of Glivec) in many countries - this meant that Novartis could be refused a patent for what it

claims to be an innovative and improved therapy.

Novartis challenged the constitutionality of section 3(d), but that case had been dismissed by the

High Court in Chennai. The company said that it was disappointed with the decision, but said

that it is unlikely to take its case to the Supreme Court

Patent Infringement

58


Patent infringement means use of an invention or improvement for which someone else owns a

patent issued by the government, without obtaining permission of the owner of the patent by

contract license or waiver. Infringement of Patent can be in the below form:

i) The colorable imitation of an invention.

ii) Immaterial variation in the invention.

iii) Mechanical equivalents.

iv) Taking essential features of the Invention.

The Patentee has to Institute a suit for infringement within three years from the date of

infringement with any District or High Court. The relief’s which may be awarded in such a suit

are-

1) Interrogatory / interim injunction.

2) Damages or account of profits.

3) Permanent injunction.

Caselet:

Case - Bajaj V/S TVS

Product – Flame

Year – Sept 17, 2009

Bajaj had disputed TVS' right on using internal combustion engines with three valves and two

spark plugs in DTSi patent infringement case. Hence Bajaj filed a Patent Infringement suit with

Madras High Court which allowed TVS application for an interim injunction restraining Bajaj

from in any way interfering with the manufacture and marketing of TVS product – “Flame”

Later this dispute was escalated to Supreme Court which ruled its decision in favour of TVS

motors.

Procedure for Patent Registration

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Patent application passes through the following stages:

FILING

Application: An application for a patent can be filed by the true and first inventor.

Form of Application:

Every application shall be accompanied by a specification (Title, Abstract, Written Description,

Drawings, Sample or model, Enablement and Best Mode, Claims and Deposits).

Priority Date

Priority date is the date of first filing allotted by the patent office to an application.

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Place of Filing

A Patent application can be filed at any of the four patent offices in India. Patent Offices are

located at Kolkata, New Delhi, Chennai and Mumbai.

Documents to be submitted at the time of filing.

The documents that need to be submitted at the time of filing a patent application are Form 1,

Form 2, Form 3, Form 5 and Form 26

PUBLICATION

A patent application will be published on expiry of eighteen months after the priority date. It can

be published earlier, if such a request is made by the applicant

EXAMINATION

Request for Examination:

The process of examination starts with a request for examination, which has to be made within

36 months from the date of priority or filing.

Examination:

On receiving the request, the controller shall direct the patent application to the Examiner for

examination.

OPPOSITION

Pre-grant Opposition

Any person can file an opposition for grant of patent after the application has been published.

Post-grant Opposition

Any person can file an opposition within a period of twelve months after the grant of a patent.

Process of Opposition

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On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an

Opposition board to deal with the opposition. The Opposition board decides the issues after

giving reasonable opportunity of hearing to both the parties.

GRANT

If the application satisfies all the requirements of the patent act, the application is said to be in

order for grant. A granted patent shall be published in the official gazette and shall be open for

public inspection. The patent will be valid throughout India.

Case Study

62


Case: Apple V/S Samsung

Product: Samsung Galaxy

Year: April 12, 2011

Introduction: Apple sued Samsung in the United States on April 12, 2011 claiming that

Samsung's Galaxy series of phones and tablets infringed upon patents held by Apple and

unlawfully copied design and functionality elements of its iPhones and iPads. Samsung counter-

sued in South Korea, Japan and Germany with the allegation that Apple had violated a number of

Samsung's wireless networking patents. From there the legal battles expanded to other countries

and products.

The Dispute: Apple has come out on top, having won temporary injunctions banning the sale of

the Galaxy Tab 10.1 in Germany and Australia and the Samsung Galaxy S2 phone in the

Netherlands. Additional cases are pending in Spain and the United Kingdom. In October,

Samsung tried to reverse its luck by taking a page out of Apple's playbook and attempting to

block the sale of the new iPhone 4S in France, Italy, Japan and Australia

Samsung’s performance in Smartphone Industry: Samsung's importance to the smartphone

market cannot be underestimated. In the third quarter of this year, Samsung took the top spot in

smartphone sales with almost 28 million units sold worldwide and a 23.8% market share. Apple

came in a distant second with 17 million sold and a 14.6% share.

Court’s Verdict: U.S. District Judge Lucy Koh, who is hearing the case, has indicated that

Samsung did violate Apple's patents, echoing the Australian courts that said that Samsung

"slavishly" copied the iPhone and iPad.

Case Proceeding: According to a Reuters report, in a particularly telling moment during the

courtroom proceedings, Judge Koh held up an Apple iPad and a Samsung Galaxy Tab and asked

Samsung's lead attorney Kathleen Sullivan if she could identify which was which. "Not at this

distance, your honor," replied Sullivan, who was standing some 10 feet away. Nevertheless,

Apple still needs to prove that its patents are valid before the judge will consider an injunction.

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Relation between Apple and Samsung: An interesting wrinkle in this battle is that Apple spent

a reported $5.7 billion on Samsung display panels, memory chips and processor components in

2010. A full 25% of the parts that went into the iPhone 4 were manufactured by Samsung. And

in 2011, Apple was expected to become Samsung's largest customer by increasing component

spending with its rival to $7.8 billion. Although rumors swirled that Apple was looking for new

suppliers, the two companies have publicly expressed a desire to continue their

purchaser/supplier relationship into 2014.

Conclusion: It seems that even in the midst of a bitter patent dispute, the two companies have

recognized that in order to compete in a rapidly growing technology market, business is business

and they still need each other after all.

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CONCLUSION

Programs initiated by government to protect IPRS are as follows

1. The Government has brought out A Handbook of Copyright Law to create awareness of

copyright laws amongst the stakeholders, enforcement agencies, professional users like the

scientific and academic communities and members of the public. Copies of the Handbook have

been circulated free-of-cost to the state and central government officials, police personnel and to

participants in various seminars and workshops on IPR.

2. National Police Academy, Hyderabad and National Academy of Customs, Excise and

Narcotics conducted several training programs on copyright laws for the police and customs

officers. Modules on copyright infringement have been included in their regular training

programs.

3. The Department of Education, Ministry of Human Resource Development, Government of

India has initiated several measures in the past for strengthening the enforcement of copyrights

that include constitution of a Copyright Enforcement Advisory Council (CEAC), creation of

separate cells in state police headquarters, encouraging setting up of collective administration

societies and organization of seminars and workshops to create greater awareness of copyright

laws among the enforcement personnel and the general public.

4. Special cells for copyright enforcement have so far been set up in 23 States and Union

Territories, i.e. Andhra Pradesh, Assam, Andaman & Nicobar Islands, Chandigarh, Dadra &

Nagar Haveli, Daman & Diu, Delhi, Goa, Gujarat, Haryana, Himachal Pradesh, Jammu &

Kashmir, Karnataka, Kerala, Madhya Pradesh, Meghalaya, Orissa, Pondicherry, Punjab, Sikkim,

Tamil Nadu, Tripura and West Bengal.

5. The Government also initiates a number of seminars/workshops on copyright issues. The

participants in these seminars include enforcement personnel as well as representatives of

industry organizations.

As a consequence of the number of measures initiated by the government, there has been more

activity in the enforcement of copyright laws in the country. Over the last few years, the number

of cases registered has gone up consistently.

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Protection of Intellectual Properties is a very critical element in the offshore business model.

There have been many cases where companies have lost their position in the market due to the

loss of intellectual property. Understanding the country’s IP Rights and following the best

practices described in this paper can drastically reduce the risk of losing the company’s

intellectual property. Commitment to protect the intellectual property of a company should be

developed and nurtured at all levels of the organization.

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BIBLIOGAPHY

Intellectual Property Right:

TRIPS:

http://whoindia.org/LinkFiles/Trade_Agreement_Chapter02_Trade_Agreement_Impact_of_TRI

PS.pdf

http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm

Book-World Trade Organization-Implications For the Indian Economy -P K Vasudeva

WIPO:

Copyright:

Trademark:

http://trademarks4india.com/trademark_process.php

www.indiajuris.com

ipindia.nic.in/tmr_new/tmr_act_rules/TMRAct_New.pdf

http://articles.timesofindia.indiatimes.com/2007-09-26/india-business/27996355_1_trademark-case-amul-dairy-butterly-amul

http://www.legalserviceindia.com/article/l226-Trademark-Infringement-&-Passing-Off.html

http://www.altacit.com/pdf/23-The%20New%20Indian%20Trademark%20Act.pdf

http://www.indiamart.com/sanjeevkumarandco/intellectual-property-rights-practice.html

http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/passingoff1.htm

67

http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/passingoff1.htm

http://www.indiamart.com/sanjeevkumarandco/intellectual-property-rights-practice.html

http://www.altacit.com/pdf/23-The%20New%20Indian%20Trademark%20Act.pdf

http://www.legalserviceindia.com/article/l226-Trademark-Infringement-&-Passing-Off.html



http://www.indiajuris.com/

http://trademarks4india.com/trademark_process.php

http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm

http://whoindia.org/LinkFiles/Trade_Agreement_Chapter02_Trade_Agreement_Impact_of_TRIPS.pdf

http://whoindia.org/LinkFiles/Trade_Agreement_Chapter02_Trade_Agreement_Impact_of_TRIPS.pdf


Geographical Indication:

http://www.wto.org/english/res_e/booksp_e/casestudies_e/case16_e.htm

Patent:

http://www.indianpatent.com/pages/faq_patent.htm

http://www1.american.edu/ted/turmeric.htm

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http://www1.american.edu/ted/turmeric.htm

http://www.indianpatent.com/pages/faq_patent.htm

http://www.wto.org/english/res_e/booksp_e/casestudies_e/case16_e.htm

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charanjit

madras high

linux operating

public property

intellectual

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geographical

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