law relating to intellectual property

Introduction to Intellectual Property for SLIM PGDipMaxwell Ranasinghe

• Intellectual property is an intangible property

• It has its unique features• It is created by human intellect• It cover ideas, inventions, literary creations,

unique names, models, logos, industrial processes, computer software programs etc.

• It can have a monetary value• It can be owned, transferred, sold or

licensed to another person to use• It is governed in SL by Intellectual Property

Act No 36 of 2003

IPA covers three main important areas as to intellectual property◦Patent Rights◦Copy Rights◦Trade and Service Marks◦We will briefly identify Patent Rights

and Copy Rights but will discuss little detail on Trade Marks and Service Marks as it is directly involves with branding a major component of Marketing.

• Patent Rights• Patent rights are given for products or

processes of technological nature• A technological invention is patentable if it is –

-new or - involves and inventive step and - is industrially applicable e.g.. New machine to pluck tea leaves,

coconuts, new engine developed to run on waste oil, new drug to cure aids, new process to improve extraction of cinnamon oil, new process of eliminating mosquitoes

• Rational underlying patents–To encourage inventors to publicize

their inventions upon a guarantee that inventors are given an exclusive right to use it for a specific period.–A social contract where state grants

a monopoly for the inventor to profit from his or her invention in return for making the product available for general use and for enabling further research and development

Validity of patents◦A patent is valid for 20 years after

the filing date of application at the Patents Office

◦After two years from the date of grant, it must be renewed each year until the expiration of the term of patent

Rights of the owner of patents◦Exclusive right to

Exploit the patented inventionsAssign the patent to another oneLicense the patent to another one to use

( Law relating to Patents is extensive and one has to a study it in detail to get a good knowledge about it)

Copy RightsThe Law governing copyrights are now

included in the Intellectual Property ActWorks of authors of Sri Lanka, works

first published in Sri Lanka and all works (even foreign) which by virtue of treaties entered into by SL are to be protected.

Even SL folklore are protected under the Act

Duration of copy rights◦Economic rights Author’s lifetime plus 50 years after his

death Joint work - during the life time of the

surviving author plus 50 years after his or her death

Work published anonymous or pseudonym 50 years from the date of publication

Cinema, radio, TV 50 years from the date of broadcasting or public presentation

Photographic works – 25 years

◦Moral rights Moral rights can be exercised by author and by heirs after the authors death for 50 years

Moral rights can be exercised even if the author or heirs do not have economic rights ( E.g.. Even after transferring of economic rights)

Enforcement of copyrights◦An injunction could be obtained from

court ( Commercial High Court) for prohibiting the infringement and also can claim damages

◦Infringement of copyright is a crime punishable by a Magistrate

◦( Law relating to copy rights are extensive and one has to study in detail to have a good knowledge)

• Trade Marks and Service MarksThese are governed by Intellectual Property ActDefinitions of Trade Marks and Service Marks

A trademark is any visible sign serving to distinguish the goods of one enterprise from those of others enterprises.

A service Mark is any visible sign to distinguish the services of one enterprise from those other enterprisesTrade marks are attached to products and Service marks are attached to services.

Other than that there is no practical difference in both. Same principles of Law are applicable for both.

• Functions of a trade mark– It serves to distinguish goods or services of

different enterprises . – It indicates the source and quality of the

goods and services to the consumer– It enables the owners to individualize the

mark and promote the product to consumers– It allows the owner to improve the quality of

the product bearing the mark to have an advantage over the competitive products.–Marks significantly assists consumer to make

their choices

• Exclusive right to a mark• Upon proper registration one will get an

exclusive right to use the mark• The law does not make registration

compulsory• Even a non registered mark may seek legal

redress under other laws such as unfair competition. Under Common law “Passing off”( pretence of one person that his goods are those of another).

• But it is always better to be registered under IPA to get better protection and rights

• What constitutes a mark { sec 102(3)} • Any visible sign capable of distinguishing goods

or services of different enterprise can generally constitute a lawful mark. A mark may consists of– Arbitrary or fanciful designations– Names– Geographical names– Slogans– Devices– Letters– Numbers– Labels– Combination or arrangements of colours and shapes of

goods or containers etc.

• Admissibility of a mark• A mark is admissible if it is not

inadmissible under section 103 and 104–103 under objective grounds• Shapes and forms imposed by inherent

nature e.g.. Head as the trade mark for a cap• • Sec 103 (1) b

• Generic signs or indications– If a mark resembles a sign that has become in the

current language or established trade in SL , a customary designation of the good. Then it cannot be given as an exclusive trade mark.

– E.g.. All soft drinks sold by roadside venders on pavement are generally called “Saruwath”. One may not be able to register “Saruwath” as his or her trade mark under this provision, as it is the customary designation of the goods.

– Word does not become non descriptive by being misspelt. E.g.. Electrix for electical apparatus

– However, descriptive word with other elements association of the product may be given . E.g.. Mobitel , Celltel, Dialog etc.

Marks incapable of distinguishing goods or services

A mark should always have a distinctive character. If not it cannot serve as a mode of distinguishing the goods or services of different enterprises. E.g.. Invented word will create a distinctive character.

Immoral, scandalous and antisocial marks◦Scandalous design◦-contrary to morality◦Offend racial or religious

susceptibilities◦ e.g.. Ghandi Samba, a cross or a

Buddha’s image, a sign or image considered by the general society as vulgar may not be registered as of this provision.

◦Fcuk him Fcuk her ( brand name of French Connection UK)

Misleading marks◦Mark will not be registered if it is

likely to mislead the public or the trade as to the Nature Source Manufacturing process Characteristics Suitability for the purpose of

goods/services concerned

• Names of individuals and enterprises

names can be registered subject to certain rules but it should be of actual persons living or an existing organisation. ( a mark which doe not represent in a special or particular manner the name of an individual or enterprise shall not be registered. )

•

• Geographical names and surnames Generally( according to its ordinary

significance =normal understanding) a geographical name or surname is not allowed to be registered as a trade mark. However, if it can be proved that name or place is of significance for the trade name to distinguish the product it should be possible to register.

• E.g.. Wickremarachchi Ayurveda Drugs• Jinadasage Talaguli

• If a name to be registered as a trade mark it should be special and particular manner where it could serve as a mark of distinction. Therefore, simply printed, type written or written in ordinary hand may not be treated as special or particular manner. Surnames alone cannot be registered generally, therefore, name here denotes the whole name or at least two names together.

• E.g.. Maxwell Ranasinghe

Admissibility of Mark under section 104This section deals with marks

inadmissible due to 3rd party rights1. A Mark which is likely to misleading

resemblance to other lawfully filed or registered marks ( sec 104 (1))

◦ ( likely – not necessarily involve an intention to deceive. Merely causing confusion would be sufficient)

• 2. A mark which resembles in a such a way that is likely to mislead the public of an unregistered mark used in SL by 3rd party in the past and the applicant could not be aware of it.

• Duration of registered mark• Registration is valid for 10 years.

On the expiration of the period, it could be renewed for further periods of 10 years

RegistrationTrade marks, Patents, Industrial

designs (other than copy rights) have to be registered as per the IPA

Once the application is filed, the trade Mark , Patent or Industrial Design will be gazetted. Objections can be made within 3 months to Director General Intellectual Property

If no objections are made it will be registered.

If objections are not made but found later by the original owner still he can go to court for nullity.

Read Chapter XXXII on Unfair competition 160 (1) (a) IPA Any act or practice carried or engaged

in, in the course of industrial or commercial activities, that is contrary to honest practice shall constitute an act of unfair trade

Any act or practice carried or engaged

in, in the course of industrial or commercial activities, that causes, or is likely to cause, confusion with respect to another’s enterprise or its activities, in particular, the products or services offered by such enterprise, shall constitute an act of unfair competition.

( there are 9 subsections under this Sec 160 as to unfair competition and undisclosed information and u requested read the know more about it)