Intellectual Property Rights

Knowledge Economies21st Century is the often labeled as the century of Knowledge as the ability to create, access and use knowledge has become even more than before a fundamental determinant of global competitiveness of enterprises and Economies.

Knowledge Economy has brought about structural changes to the economies of developing countries making it indispensable for companies and policy makers to address new challenges.

Globalization and Intellectual Property Rights

Globalization or (globalization) is the process by which the people of the world are unified into a single society and function together Competition not confined to national boundariesSources of competitiveness shifting to knowledge-based factors of production (high technology and specialist skills)Intellectual Property Rights (IPR) are monopoly rights granted by the State to an inventor/author for the protection of certain intangible creations.

Over 80% of the market value of Microsoft derives from its intangible assets, especially its intellectual property.

The value of the Coca-Cola trademark exceeds US$ 50 billion.

Increasing value of Intangible Assets

Kinds of Intellectual Property

CopyrightPatentsTrademark Industrial design rightsUtility modelsGeographical indicationTrade secretsLayout Designs of Integrated CircuitsPlant variety Protection and Farmers Rights

IP Scenario in India For an economy that is growing as fast as Indias and is touted globally as an emerging powerhouse, the IP scenario in the country remains at a nascent stage.

A look at other countries reveals intellectual protection in India are very low in comparison to many developing countries such as China, Korea, even a small country like Taiwan.

India still has a long way to go and hence IP regime must be such that it fulfils the needs of all the sectors.

Innovation is the key to survival for Indian BusinessIf you always do what youve always done youll always get what you always got (or worse)

WTO World trade organization

TRIPS Trade Related aspects of Intellectual Property Rights

The same bottle could be protected by

Industrial design

Trademark

Patent

Various components of a product can be protected by different IP

Trademark

A trademark is a mark used in relation to goods/ services for the purpose of indicating a connection between the goods/ services and some person having the right as proprietor to use the mark.

Types of Trade MarksymbolsLabels/sloganssoundshapeWord MarkDevice markService marks

FunctionsIdentifies the goods/services and its originGuarantees its unchanged qualityAdvertises the goods/servicesCreates an image for the goods/services

ADOPTION OF A Trade Mark A word, letter or any combination thereof and simple in design.If it is a word it should be easy to speak, spell and remember.The ideal word for a trade mark is an invented or coined word.

History

Prior to 1940 no statutory law relating to Trade marks in India.

The Trade Marks Act, 1940 introduced for the first time machinery for protection of Trade marks in India.

The Trade and Merchandise Mark Act, 1958.

The Trade Marks Act, 1999 present law governing Trade Mark.

current legislationTHE TRADE MARKS ACT, 1999THE TRADE MARKS RULES, 2002

CERTIFICATION TRADE MARKA mark used by a person other than owner certifying certain standard, origin, quality, accuracy or other characteristic are met or materials used or services renderedmeet the standards indicated. Eg. AgmarkIt is mark owned by x but used only by y, z etc.There is no government control over standardsStandards set by owners own regulationCannot be used as a trade markSymbol of some guarantee

Associated marksIdentical with another trademark pending/ registeredSame proprietorSame goods or services

Eg. BAJAJ and BAJAJ Pulsar

ACQUISITION OF PROPERTY IN A TRADEMARK

By use of the mark in relation to particular goods ;orBy registration under the Act; orBy assignment or transmission of the right from another person

USE OF A TRADE MARKPriority in adoptionProlonged use

RegistrationNot compulsoryFor better protection

MARKS NOT REGISTERABLEThe use of which would be likely to deceive or cause confusion.A mark the use of which is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950A mark comprising or contains scandalous or obscene matterA mark comprises or contains any matter likely to hurt the religious susceptibilities of any class or section

TM Registration processThe duly filled application has to filed in the appropriate office of TM Registry in India.Appropriate OfficeLocation of the principal place of business of the applicant If there is no principal place of business in India, it will be determined with reference to the address of service in India given in the application.

Location and jurisdiction of tm registries in indiaTrade Marks Registry, MumbaiTrade Marks Registry, AhmadabadTrade Marks Registry, DelhiTrade Marks Registry, ChennaiTrade Marks Registry, Kolkata

WHO CAN APPLYAny person who claims to be a proprietor of a trademark used or proposed to be used and is desirous of registration of the mark can apply. The application may be made in the name of an individual, partners of a firm, a Corporation, any Government Department, a trust or joint applicants.

Filing requirementsPrescribed application form affixing trade mark at the place indicatedStatement of userFees prescribed Power of Attorney if the applicant is filing the application through an attorney

Filing of applicationAn application shall be filed in the office of the trademark Registrar "within whose territorial limits the principle place of business in India of the applicant or in the case of the joint applicants the principal place of business in India of the applicant whose name is the first mentioned in the application, as having the place of business is situated.

Examination of applicationProcedural groundsAbsolute groundsRelative grounds

Procedural groundsParticulars of the applicationClassification of goods and services

Absolute groundsA trademark,Which is devoid of any distinctive characterWhich indicates quality or other descriptive character of the goods or servicesWhich have become customary in the current language or in the bona fide or established practice of the trade.

ACQUIRED DISTINCTIVENESSBy use Well known mark

Relative groundsA trademark may be refused registration, if it is

identical or similar to an earlier trademark and the respective goods or services, which are identical or similar, or

which is identical or similar to an earlier trademark, but the goods or services, are not similar.

EXAMINATION REPORT & HEARINGIssue Report specifying the grounds for refusalResponse by the ApplicantHearing in certain cases to advance oral arguments along with supporting user documents

Acceptance of applicationNo issues to be addressed orApplicant has responded adequately to the objections in the Report

Advertisement of the applicationPublication in Trade Marks JournalTo invite opposition from publicPeriod - Three months (extension of one month)

registrationNo third-party opposes the registration of the mark during the opposition period orThe opposition is ultimately decided in the applicant's favour the mark will be registered in due course.

Effects of registrationInfringement proceedings can be initiatedExclusive right to use the mark in respect of goods/ services registered

RENEWALDuration of registration is ten years.Renewal after every ten years

Marking of tm

TM for pending trade marks for registered trade marks

Thank you