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INTELLECTUAL PROPERTY LAWS

INTELLECTUAL PROPERTY LAWS –EXPANDING POSSIBILITIES

• There are about 10 different legislations under the

broad spectrum of IPR laws.

• However, Trademarks, copyrights, Industrial Designs

and Patents are the most popular IP Rights.

• Others like Geographical Indications, Semi conductor

and Integrated Circuits etc are lesser used IP Rights.

• There are others like Confidential Information etc which

are classified as IPR but do not have codified laws yet.

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IPR AND ITS MANAGEMENT

• Dealing with IPR means understanding the

following:

• Identify

• Register and Renew

• USE

• Protect

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BRIEF IDENTIFICATION OF RIGHTS

• Trademarks are names/logos used to identify the

products from one manufacturer and another

• Copyright is the expression of ideas in the form of

literary, dramatic or musical form.

• Patents are inventions that are new, novel and useful.

• Designs are for unique external appearances of an

article of manufacture.

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• Device, brand, heading,

• Label, ticket, name, signature,

• Word, letter, numeral

• Shape of goods, packaging or

• Combination of colours or any

• Combination thereof.

• Services

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Tra

de M

arks

PURPOSE OF TRADE MARK

• To identify a person’s product from that of others

• To protect the public so that they are confident in getting the

exact goods or services when asked for

• To protect an owner’s investment from misappropriation by

infringers

• Trademark helps customers to select goods. By identifying

the source of goods, they convey valuable information to

consumers.

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7Identification

� Trademarks cannot describe the product but must be acreated word/logo.

� The goods and services upon which the brand is usedshould be determined.

� This will assist in ensuring that trade mark is registered inrespect of primary classes of goods and services

� Search before you register a trademark for similar marksalready used or applied or registered

TRADEMARK REGISTRATION

FilingFilingFilingFiling

¨ NumberingNumberingNumberingNumbering

¨ ExaminationExaminationExaminationExamination ¨ EvidenceEvidenceEvidenceEvidence ¨ HearingHearingHearingHearing

¨ AcceptanceAcceptanceAcceptanceAcceptance

¨ AdvertisementAdvertisementAdvertisementAdvertisement¨ OppositionOppositionOppositionOpposition

¨ RegistrationRegistrationRegistrationRegistration

¨ Favorable conclusionFavorable conclusionFavorable conclusionFavorable conclusion

• One should identify which registered trade marks arenot in use.

• If these trade marks are of importance to theorganization, steps should be taken to ensure that theydo not become vulnerable to revocation for non-use

• If these trade marks are no longer of interest to theorganization, costs can be cut by not renewing them.

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Renewal

• Royalty for licensing

• Assignment - Sale

• Signature fees paid for drafting,

commenting or negotiating agreements

• Damages claimed in respect of

litigations

• Fresh licensing and Revenue generation

–Fees for consent to use

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Use and Exploitation

• Use of IDENTICAL or SIMILAR to Registered MARKMARKMARKMARK

• In relation to similar or identical GoodsGoodsGoodsGoods

• Use of Registered Trade Mark as part of BusinessBusinessBusinessBusiness NameNameNameName

• Affixes on Goods or PackagingPackagingPackagingPackaging

• Offers or sells Goods

• Imports or exports Goods

• Use on business papers or advertising materials.

11Protection

Infringement

• Oppose marks identical or deceptively similar

to your registered trademarks, pending

applications or marks used in the course of

trade

• Crucial to maintain monopoly on the

trademark

• Maintaining watch in the Trade Marks Journal

is the pre-requisite

12Protection

Opposition

COPYRIGHT ACT 1957COPYRIGHT (AMENDMENT) ACT 1999

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• Copyright subsists in respect

of • Original literary dramatic, music

and artistic work,

• Cinematograph films,

• Sound recordings,

• Literary work includes Computer

Programs, tables and compilations

including computer databases.

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Cop

yrig

ht

IDENTIFICATIONIDENTIFICATIONIDENTIFICATIONIDENTIFICATION

• Computer program

• Cinematographic film - T.V. Jingles

• Audio and Video cassettes;

• CD Roms, floppy discs;

• Sound recording;

• Dramatic works;

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SUBJECT OF COPYRIGHTSUBJECT OF COPYRIGHTSUBJECT OF COPYRIGHTSUBJECT OF COPYRIGHT

• Examples: Books, articles, photographs, paintings,sculpture, software, websites, architecture,pantomimes, ballets, music, sound recordings, andeven doodles, scribbles, and graffiti.

• Scope: Copyright can apply to any “original work ofauthorship” that is “fixed in any tangible medium ofexpression.” Protection automatically extends to anyqualifying work, whether published or not, andcreated in India.

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EXCEPTIONS:EXCEPTIONS:EXCEPTIONS:EXCEPTIONS:

• Copyright does not apply to facts,

slogans, titles, and simple phrases.

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REGISTRATION AND RENEWALREGISTRATION AND RENEWALREGISTRATION AND RENEWALREGISTRATION AND RENEWAL

• Copyright Registration not

mandatory

• Registration is one time and no

renewal

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TERM OF COPYRIGHTTERM OF COPYRIGHTTERM OF COPYRIGHTTERM OF COPYRIGHT

• Life of author plus 60 years.

• In case of anonymous and pseudonymous works 60years from first publication.

• Copyright notification should appear.

Eg. © R. Sathish Kumar 2019

All rights reserved.

• After the expiry, copyrighted works fall into publicdomain and is free to use

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USE AND EXPLOITATIONUSE AND EXPLOITATIONUSE AND EXPLOITATIONUSE AND EXPLOITATION

• Copyright confers exclusive right to :-• Reproduce the work including storing it in any electronic means;

• To reproduce the work in any material form

• Issue copies of the works to the public;

• To perform the work in public;

• To make any cinematograph film or sound recording in respectof the work;

• Make any translation of the work;

• Make any adaptation of the work;

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PROTECTIONPROTECTIONPROTECTIONPROTECTION

• Copyright Infringement occurs when a person

does anything for which exclusive right is

granted to the owner of copyright without the

owner’s license

• Making for sale, hire, distribution or importation

amounts to infringement

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Civil Remedy

• Civil Suit in a District Court and above

• Relief of injunction, damages or accounts can be sought for

Criminal Remedy

• Whoever knowingly infringes a copyright, can be punished between 6 months & 3 years and with fine between Rs. 50,000/- & Rs. 2 Lakhs

22Protection

Rights conferred under the Designs Act, 2000

• Like patents, registration to be applied forbefore the actual commercial use of the design

• Identification – design protection granted onlyto shape and configuration and not to anymethod of construction

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Des

ign

DESIGN

• Registration valid for 15 years – initial period of 10

years with an extension of 5 years

• Use and exploitation – can be used only on the

products under which class it is registered

• Protection – Only civil remedy before a District Court

for reliefs of injunction and damages

• Cancellation of a registered design can be filed before

the Controller of Patents & Designs

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• Stimulating INNOVATION

• Based on quid pro quo – for the disclosure of his

invention, the patentee gets a monopoly for a

limited period

• NOVELTY – Patent can be obtained only if an

invention is new

• NON-OBVIOUSNESS – An invention must be more

than a routine modification of something already

known

• Enhancing value – should have commercial UTILITY

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Pat

ent

INNOVATION

• An improvement on something known.

• A new combination of different matters already

known.

• New combination arrive at an old result in a better

or more expeditious or economical manner.

• Manner of new manufacture.

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IMPROVEMENT

• Improvement must independently

satisfy the test of invention.

• Infact almost all patents are for

improvements.

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NOVELTY

• Novelty not defined under Indian Law.

• Should be new, must not be publicly knownor publicly used-prior to filing of anapplication.

• Patent would not be granted to enable thepatentee to stop another trader from doingwhat he had done before.

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NON OBVIOUSNESS

• Obvious and does not involve any inventivestep.

• What was known and used before thepriority date of the claim.

• A skilled technician who is well acquaintedwith the technique should not haveknowledge – test is not that of commonman.

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• Application examined only after request filed within 48 months

from priority date otherwise the application is deemed

abandoned.

• Compliance within 12 months from the date of First Examination

Report (FER). No further extension of time is available in this

regard. Otherwise deemed abandoned.

• When all the requirements are met, the patent is granted after 6

months from the date of publication, the letter patent is issued,

entry is made in the register of patents and it is notified in the

Patent Office Journal

30Examination and Grant

OPPOSITION

• Opposition proceedings are available bothpre-grant and post grant of patent;

• Opposition may be filed within 3 months ofpublication;

• After grant of patent but before expiry of 12months from date of publication of the grant ofpatent, any person interested may give noticeof opposition to the Controller;

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RENEWAL

• A patent is valid for 20 years.

However, to keep the patent alive, a

renewal fee must be paid every year.

Otherwise, the patent is liable to be

rendered invalid.

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USE AND EXPLOITATION

• Can be used by the patentee himself or

through an exclusive licensee

• A patent is vulnerable against revocation, if it

is not worked

• A compulsory license can also be sought for

by a third party if the patent is not worked in

India

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PROTECTION

• Take care to oppose or cancel patents of

competitors or others when they have

tendency to interfere with your monopoly

• Can also be done when competitors seek

to monopolize already existing or known

technology

34Opposition/Cancellation

PROTECTION

• Only a civil suit for injunction and

damages can be filed against third

party for infringement of patent

• No criminal liability - nobody goes to

Jail for infringing patent

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OPPORTUNITIES

• Trademark filings have increased by 20% in India for

the year 2018, on an average about 3 lakh

applications are filed in a year in India now.

• Design applications increased by about 13% last year

in India

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OPPORTUNITIES

• Filing is now available online for trademark and copyrightapplications (10% lesser fee for trademark filings online).SME and individual applicants get a 50 % fee reduction.

• Without opposition, a trademark registration is granted within 7 months in India

• New Trademark Rules also offer VIDEO CONFERNCING facilities to attend hearings - though not functional yet.

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OPPURTUNITIES

• Patents filing have increased by 32 % and additional

manpower increased resulted in 108% more patents

scrutinized.

• Copyright registrations has increased by 450% after the

Copyright is merged with the Ministry of Industry and

Commerce.

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OPPURTUNITIES

• All offices have dedicated websites which contain

information and model forms used for acquiring and

maintaining Intellectual Property Rights.

• A mobile app has also been launched by the

department for various information relating to the IP

rights

• It has a dedicated Information Officer under the Right to

Information Act

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OPPURTUNITIES

• Start up facilitators are appointed by the department for

IPR aspirants to approach easily.

• Geographical Indications which associate the product

with a territory are also increasing and several products

that were on the verge of extinction have been revived.

• In Andhra Pradesh, Tirupati ladoos, Banganapalle

Mangoes, Kondapalli Toys, Mangalagiri sarees,

Kalamkari etc are geographical indications registered.

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THANK YOU

R.SATHISH KUMARADVOCATE

© 2019

94440 47537/advsathishkr@gmail.com

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