This article is written by
. In this article, the author has made an attempt to discuss all the important types of IPR, including copyright, trademark, patent, geographical indications, designs, trade secrets, plant variety, and semiconductor integrated circuit layout designs. Further, other budding forms of IPR, including digital assets, biodiversity and traditional knowledge, are discussed in brief.
This article has been published by .
As the name suggests, the term ‘intellectual property’ is the creation of intellect, i.e., the human mind. It has the ability to protect the creation of the human mind and can be in any form, say, a logo, a new invention, any drawing, painting or piece of art, musical compositions, etc. Further, there are IP laws that help one (the owner) exclusively use his/her intellectual property and prevent others from using it without obtaining prior permission from the owner.
Moreover, intellectual property is an intangible (something that cannot be touched, seen or perceived) right that is exercisable in respect of a tangible work. Furthermore, one must note that there is a difference between ownership rights to a tangible product and the rights of an intangible nature. Let us understand this with the help of an example. Say, Ms. Radha has purchased a CD from a local market. Now, she has the right to own and possess the CD. She can also take action against any individual who possesses the CD without obtaining her prior permission. Simply put, the right of possession is the intangible right of the purchaser. Yet, Mr. Krishna, the composer of the music, will have several intangible rights over it, namely:
Also, one should note that these intangible rights of the composer are certainly not available to the purchaser of the music CD.
Additionally, there are several types of intellectual property, which are broken into two major categories, namely:
Under these categories, the main types are segregated as:
Industrial property-
Literary property
In this article, an attempt is made to discuss all these important types of intellectual property in detail.
As the name suggests, a copyright is the ‘right to copy’. Simply put, the individual owning the copyright, i.e., the owner, has the exclusive right over the work and has the authority to make copies of the same. The Oxford Dictionary defines copyright as “the exclusive right to publish or record a work”. It can also be referred to as an intangible (something that cannot be touched) granted to the owner of any literary or artistic work for multiplying copies for a limited time period and publishing the same. In India, copyright provisions, rules, registration, etc., are dealt with by the .
of the Copyright Act, 1957, defines copyright as the exclusive rights to do or give permission to someone to do some things with regards to-
Let us understand this with the of an instance. Say, there is a boy named Dholu who is a writer and has written a book. In accordance with Section 14 of the Copyright Act, 1957, Dholu has exclusive rights over that work, meaning-
Please note: If someone other than Dholu wants to do any of the aforementioned pointers to his novel, he/she may need to get his authorisation. If he/she does not follow this, there is a possibility that he/she is infringing on Dholu’s copyright.
Let us take the example of an Indian author and novelist- Mr. Bholu. As per Section 14 of the Copyright Act, 1957, Mr. Bholu has exclusive rights to his , meaning:
Further, with regard to the translation or adaptation of his work, Mr. Bholu can do any of the aforementioned acts. Also, if any other individual has to do any of the above acts, they have to get his prior permission. And if they do not, he/she could be infringing Mr. Bhlu’s copyright.
All the original scripts, dialogue, soundtrack, music and other creative elements involved in the movie are protected. For instance, movies like ‘Dilwale Dulhania Le Jayenge’ or ‘3 Idiots’.
Several original literary works, including novels, poems and essays of individuals like Rabindranath Tagore and Vikram Seth.
A recent example of dramatic work would be the movie- ‘Oh My God’ an adaptation from a Gujarati play.
Here, we can take the example of the very famous song ‘YAARAM’ which was originally written by Gulzar and composed by Mr. Bharadwaj. So, here, the copyright over the lyrics will belong to Gulzar, whereas the musical composition will be of the composer.
Paintings, sculptures, drawings and other artistic works, including renowned personalities like M.F. Hussain and Raja Ravi Verma.
Instances of sound recordings include songs by Indian musicians A.R. Rahman, Asha Bhosle, Lata Mangeshkar, etc.
Copyright also safeguards software codes and other computer programmes, such as words, codes, schemes, etc. The famous software in the Indian market are companies like TCS and Infosys.
Copyright subsists only in cases of original work. Here, the term ‘original’ does not necessarily mean that the work has to be the expression of original or inventive thought; instead, it relates to the expression of the thought; however, it does not have to be in an original or novel form but must not be copied from any other work, meaning it should originate from the author. In other words, no copyright will subsist when it is in the form of any unauthorised reproduction of work or in a work which is not originated from the author.
One of the most important features of copyright is that it is an exclusive right. It has a monopolistic effect, thus excluding other individuals from using it. Further, it is pertinent to note that even though the owner of the copyrighted work has a monopoly over the ‘work’, he/she does not have a monopoly over the ‘subject matter of such work.
Copyright has numerous rights in the same work. Copyright law has assigned ownership of copyright with several other rights, like that of-
Under copyright law, the owner of the copyrighted content, i.e., the original work, is protected from others. Simply put, one does not have the authority to use the copyrighted work of the owner or the author without obtaining prior permission or consent. Further, as the right is prohibitive in nature, the same can be regarded as a negative right that is available to the author against others.
One cannot claim copyright for an idea. Copyrights can only exist in material forms wherein the ideas are expressed. One cannot say that their copyright was infringed simply because an individual adopted their ideas or concepts.
Copyright consists of a broad of protections when it comes to various forms of artistic expression; listed below are most of them.
This sub-category includes original and distinctive literary compositions. Literary copyright may consist-
Generally, theatrical compositions fall under this category and include-
Under this sub-category, only musical compositions (to be registered with the Copyright Office) and not lyrics or sound recordings are protected.
This sub-category, among other artworks, includes:
Under this sub-category, any form of sound that has been captured (or recorded), say podcasts, audible content, etc., is included. The owner who has such rights also has the right to-
This sub-category includes all types of visual recordings that display moving images and these images can be captured using any technique, be it analogue or digital and mostly include video films.
This sub-category includes works that are intended to protect unique dance patterns, sequences, patterns, and other types of organised movement.
Here, the intellectual property of architects and designers is like that of buildings, architectural plans or blueprints, detailed drains of any structure, etc.
Under this sub-category, computer software and programs, from their foundational code to their user interfaces, can be protected. This, in turn, helps in ensuring that the intellectual effort behind developing a software solution is recognised and protected.
Here, compilations like encyclopaedias, directories or databases can be protected from copyright infringement.
The duration for which a copyright is protected depends solely on the type of copyright. It is explained under various sections of the Copyright Act. Let us learn about each of them with the help of some examples.
In the case of published literary, dramatic, musical and artistic works, the copyright subsists for the lifetime of the author until 60 years from the beginning of the calendar year, next following the year the author dies, as stated under . In cases where there is joint ownership, the author who dies last will be taken into consideration.
Let’s consider this situation. There is a man named Golu who is a novelist. He published a book in 1980 and died in 2000. As per Section 22, the copyright for Golu’s book will be until 2060, i.e., 60 years from the start of the calendar year when Golu died.
Now, let us make some changes to this scenario. Say, Golu, is the co-author of a book authored mainly by Molu, his classmate, who passed away in 2010. Here, the copyright will last for another 60 years, i.e., until 2070, as Molu was the last to survive among the authors of the book.
Under , copyright for anonymous or pseudonymous work will subsist for 60 years from the start of the calendar year following the year when the work was first published. Further, if the identity of the author is made known before the expiration of the said period, the copyright will subsist for 60 years from the time the calendar year begins following the year in which the author dies. In cases where there is joint ownership, the author who dies last will be taken into consideration.
Let us take into consideration a scenario where there is an anonymous author, ‘Ms. Ka’ who published a novel in 1960. As per Section 23(1), the copyright will last 2020, i.e., 60 years from the year it was first published. Now, the author decided to reveal her true identity in 1980, the copyright will last until 60 years from the beginning of the year following the death of the author.
Now, let’s take another scenario. Here, Mr. A and Ms. B published a book in 1960, whose identity remained anonymous. Then, Mr. A decided to disclose his identity in 1980 and died in 1990, and Ms. B decided to disclose her identity in 2000 and died in 2010. Now, as per Section 23(2)(b), the copyright will subsist until 2070, i.e., 60 years from the beginning of the year following the death of Ms. B, who was the last to die among the names of the disclosed authors.
Under , in the case of a literary, dramatic or musical work or engraving, wherein copyright subsists at the date of the death of the author or in the case of joint ownership, wherein the last author dies, and the work has not been published before that date, the copyright will last for 60 years from the beginning of the calendar year next following the year in which the work is first published. Further, if the adaptation of the work is published in an earlier year, the period starts from the year after the adaptation is published. Here, the term ‘published’ means it has been performed in public or if the recordings of the same have been offered or sold to the public.
Let us assume there is a renowned playwright, Mrs. Verma, who died in 2020. She wrote a script titled ‘The Destination’ that was not published or performed while she was alive. However, in 2022, a theatre found this play and performed it for the first time. As per Section 24(1), the copyright of the script will continue until 2082, i.e., 60 years from the beginning of the calendar year following the year when the play was first performed.
Furthermore, let us say, Mrs. Verma had also written a musical composition titled ‘Track the Time’, which was unpublished or sold during her lifetime. However, she had made a sound recording of this track that was sold to a company after her death in 2021. Now, in accordance with Section 24(2), ‘Track the Time’ was published in 2021, thus, the copyright lasts for another 60 years, i.e., until 2081.
The same has been deleted via an amendment in 2012 and became effective on June 21, 2012. Prior to the Amendment, this Section would explain how long the copyright protection would last in the case of photographs.
Let us take the example of Mr. Ghasitaram, who was a professional photographer. He clicked a unique photograph in 2002 and got it registered in accordance with the provisions of the Copyright Act, 1957. As per the original Act, the copyright for photographs will last for 50 years; however, the same was removed by the 2012 Amendment. So, now, if someone uses the photograph clicked by Mr.Ghasitaram without his permission he can claim copyright infringement.
As per , the copyright for cinematograph films will last for 60 years from the beginning of the calendar year following the year in which the film is published.
Let us take, for example, a scenario where there is a filmmaker, Mr. Karthik, who released a movie titled ‘The Stars of Bollywood’ in 1990. As per Section 26, the copyright of this film will subsist until 2051 (which can be calculated as follows: 1990, the year of publication + 1, the next calendar year + another 60 years = 2051. During this time, no person has the right to reproduce, distribute or display the film without obtaining prior permission from the filmmaker. And if someone does this, he/she will be liable for copyright infringement.
In accordance with in case of sound recording or records, a copyright will last for 60 years from the beginning of the calendar year following the year in which the sound recording is published.
Let us consider this scenario. Mr. Swarr published a song in 1980 and as per Section 27, the copyright will last for 60 years, i.e., until 2040. In this situation, he has the right to reproduce, distribute and gain economic benefits from the song. After this, the song will enter public domain, thus anyone to use it without obtaining prior permission from Mr.Swarr or providing any sort of monetary compensation.
says that in the case of government work, where the government is the first owner of the copyright therein, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published.
Let us take the example of the Indian Government and an artist named Mr. Kalakar. Say, the Indian Government commissioned an artist in 2021 to create a unique sculpture for a public park. Mr. Kalakar successfully completed the sculpture, which was unveiled in 2022 to the general public. Since, the Indian Government is as the first owner of the copyright of the sculpture, the copyright will last for 60 years from the beginning of the calendar year following the year of first publication, meaning the copyright will subsist with the government until 2082.
As per , in the case of a work where a public undertaking is the first owner of the copyright therein, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published.
Let us take an example of a government publishing house who published one of the many books in 2020. As per Section 28A, the copyright of this book will be owned by the public undertaking until 2080. So, until 2080, the public undertaking will have the exclusive rights to reproduce, distribute, and adapt the work.
As per , in case of any international organisation to which the rules stated in apply, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published
Say, WHO (World Health Organisation) published a health research paper on 1st July 2020. Now, as per Section 29, the copyright of this research paper is WHO until 2080, meaning no party, person, or individual has the right to reproduce, distribute or display the research paper without seeking proper permission from WHO. If they do so, it will amount to copyright infringement.
to discusses provisions for registering a copyright. Let us see what each Section says.
Section 44 states that the Register of Copyrights must be kept at the Copyright Office.
talks about eateries in the Register of Copyrights.
states that indexes of the Registrar of Copyrights and indexes thereof shall also be kept at the Copyright Office.
Under , forms and the Register of Copyrights and indexes thereof must be kept open to inspection at all reasonable times and any individual is entitled to take copies of the same or extract information from the same, provided the requisite fees to obtain the same are paid.
discusses the Register of Copyrights, which has to be prima facie evidence of particulars entered therein.
talks about correcting eateries (like changing the name, address, particulars or any errors that occurred accidentally) in the Register of Copyrights
discusses the guidelines related to the rectification of Register by Copyright board.
Section 50A deals with eateries made in the Register of Copyrights, etc., that must be published. It says that any work entered upon under Section 45 or the correction of every entry thus made under Section 49, and every change made under Section 50 shall be published by the Registrar of Copyrights in the official gazette or in such other manner as they deem fit.
and discuss acts that are regarded as fair dealing of any copyrighted work. Fair use or fair dealing can be referred to as using copyrighted material of any other individual for specific purpose, like-
Simply put, fair use or fair dealing means reasonable use. One must note that, whether or not an act comes under the category of fair dealing or fair use, would solely rely on the facts of that particular case; so there is no hard and fast rule per se to clever which all acts would come under the category of copyright infringement. The doctrine of fair use or fair dealing has some limitations to the extent to where it can be applied, they are as follows:
discusses the civil remedies available to the owner, viz.,
This means restraining an individual by way of injunction from doing the act of infringement.
Here, infringing the copyright will attract a penalty in monetary form. There are two types of damages, namely:
This relief is provided to restrict the unjust use of the copyright by the Defendant. Here, the owner of the copyright has the right to ask for profits which the infringer or Defendant earned by using the copyrighted material of the owner.
In addition to the aforementioned pointers, in the event that any individual converts the copyrighted work in any form without obtaining prior permission from the owner, the infringer is liable for damages. Such an act may attract a penalty relating to-
Under , if a person having knowledge of a particular copyright, decides to infringe it anyway (the only exception being the resale of share rights in original copies under Section 53A), they will have to face imprisonment between 6 months and 3 years and a fine not less than ₹50,000/- and up to ₹2 Lakhs.
Second and subsequent conviction
Further, under , for second and subsequent conviction, the penalty includes a minimum of 1 year and a maximum of 3 years of imprisonment, a fine of a minimum ₹1 Lakh and a maximum of 2 Lakhs.
Additionally, under , if any person knowingly uses or infringes copies of computer programs, there could be a minimum jail time of 7 days and a maximum imprisonment of 3 years, a fine of a minimum ₹50,000/- and a maximum ₹2 Lakhs.
Under , if an individual makes false entries in the Register of Copyright, etc., for producing or tendering false entries, the penalty is imprisonment of up to 1 year or fine or both.
Under , making a false statement for deceiving or influencing any authority or officer, the penalty is imprisonment of up to 1 year, a fine or both.
Under , publishing a sound recording or a video film that is against (that talks about video and audio piracy) will attract imprisonment of up to 3 years and a fine.
Under , if an individual possesses plates or other materials that are used for making infringing copies, the individual may be charged with an imprisonment of 2 years and also a fine.
In University of London Press vs. University of Tutorial Press [(1916) 2 Ch 601], it was that examination papers are considered to be original literary work as the person who makes the question paper invests their labour and skill into making it. Such a person is said to be the author of the question paper and the copyright of such a paper will vest in him/her.
Further, in the case of Zee Telefilms Ltd vs. Sundial Communications [(2003) 27 PTC], the Bombay High Court held that even the concept notes that were made in relation to a television film, that have characters, notes, plots, sketches, etc., will fall under the category of literary work.
In one case [ ], the England and Wales High Court (Chancery Division) held that a photograph that has no involvement of movement or action cannot be treated as dramatic work.
In , the Delhi High Court held that musical work is not simply a combination of melody and harmony or either of them, rather, it has to be printed, reduced to writing or graphically be produced or reproduced to copyright.
In the case of , the Delhi High Court held that any kind of video as well as television both come under the purview of cinematograph film. Simply put, cinematograph film is not simply related to the movies played in cinemas or theatres.
In the case of Donoghue vs. Allied Newspapers [(1937) 3 All ER 503], the Court set forth a clarification that the originator of a brilliant, noteworthy idea is not the owner of the copyright in a work, unless he/she is also the creator behind that work. So, if an individual discusses one of his/her top notch ideas with another individual and that person copies the idea and converts it into a book, play, movie, etc., the latter will be regarded as the owner of the work as opposed to the former, the one who gave the idea. In other words, the one who merely spoke about a concept- the originator has no right or ownership in the product where copyright subsists.
In yet another case of , the Kerala High Court held that if a cartoonist draws any cartoon after he/she is terminated by the employer of a magazine company, the proprietor has no right whatsoever to claim copyright.
In the case of , the Delhi High Court held that in accordance with Section 22 of the Copyright Act, the copyright in the work of the grandfather will not subsist 50 years after his death.
In , the Delhi High Court held that a copyright exists irrespective of whether it is registered or not. The Court further claimed that registration is merely a piece of evidence as to when the author claims his/her ownership over artistic or some other work.
In one of the most recent cases [Bombay Private Limited vs. Feel Good India and Anr.], the infringement of copyright with regards to artistic form consisting of label marks was established. Here, a pharmaceutical company manufactured cough syrups titled ‘Adulsa-Plus Cough Syrup’ and ‘Ayusas-Adulsa Cough Syrup’. The Court appointed a court receiver and reached the inference that the Defendant had not only infringed on the work of the Plaintiff but also attempted to discard goods from their factory and further mislead the Court. The Court passed an order that the Defendant pay a cost of ₹ 25 lakh.
Then, in yet another case [ ], the Supreme Court of India held that it is not crucial that an alleged infringement be the exact replica of the original work, but rather that the similarities between the original and the alleged infringed work are sufficient as an indication to claim that the same is a copy.
Basically, a trademark can be defined as a ‘mark’ that distinguishes goods and materials belonging to one individual from that belonging the another. In simple words, a trademark is said to be a visual symbol or a sign in any form, be it a device, a word or even a label for that matter that is used for identifying specific goods and/or services supplied by others. Also, the trademark or symbol can be in any form, including a combination of drawings, pictures, colours, words, letters, numbers, etc. For instance, the trademark of soaps like ‘Lux’ and ‘Rexona’ are identified by their names (trademarks), even though both deal with a similar type of product, i.e., soap.
Further, we can say that a trademark is a marketable and commercial asset of the owner. It is a type of intellectual property that has several rights. As opposed to a copyright that has a limited time period, a trademark is available to its owner for perpetuity. In India, any issue related to trademarks is dealt with under the .
As per Oxford Dictionary, a trademark is defined as any distinguished symbol that helps the general public identify a particular product of a trader. The symbol may include a device, words or a combination of them. Further, of the Trade Marks Act, 1999, defines the term ‘mark’ as anything that includes:
Further, Section 2(1)(zb) says a trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one individual from that of others and may conclude:
There are two types of trademarks: registered and unregistered. Let us understand this with the help of some examples.
In India, some of the most famous registered trademarks are as follows:
In India, some of the most famous unregistered trademarks are as follows:
Interesting fact: In 1977, RiceTech Inc., an American company, got Basmati Rice . However, it is considered a public right instead of a private right and no trader or individual can exclusive rights to using its name.
Based on several judgements, the following are some of the key characteristics of a trademark:
Even though a trademark could be in any form, i.e., well known trademark, a house mark, name of a brand, collective mark, certified mark, etc., there are two basic types of trademark, as discussed above in examples. Let us take a look at both of them.
Basically, as the name suggests, a registered trademark is one whose name is registered under the Trade Marks Act, 1999. In accordance with Section 2(1)(w) of the Trade Marks Act, 1999, a registered trademark means any trade mark that is actually on the register and remains in force. Any usage of such a mark without obtaining prior consent from the owner of the mark may lead to the owner bringing an action of infringement against such a user.
An unregistered trademark is one that is not registered under the provisions of the Trade Marks Act, 1999. This type of trademark is also addressed as a ‘common law mark’. There are numerous unregistered trademarks in India, maybe more than the registered trademarks. It is pertinent to note that, even though such a mark may not be registered, the owner of the mark has common law rights and will have the legal right when it comes to passing off the goods and hence, the owner can restrain the unauthorised use of such a mark, thus protecting the mark from being used or exploited.
A service mark is a mark that is available in respect of services provided. Some instances of financial marks include-
A property mark is a mark that is used to indicate that a certain movable property belongs to a specific individual. It denotes the ownership of such a property.
As the name suggests, an ‘associated mark’ is a mark that is associated or joined to another mark. The most common of associated marks include the following:
Generally, a certification mark that the products and services have undergone proper testing when it comes to quality, durability and stability.
A collective trademark or collective mark can be described as a trademark owned by its members to identify themselves with a level of quality or accuracy, geographical origin or any feature set forth by a company or organisation.
An existing registered trademark can be defined as a mark that is registered under the , immediately before the Trade Marks Act, 1999, came into existence.
In accordance with of the Trade Marks Act, 1999, in the case of joint ownership, the relationship between the joint owners is such that both parties, organisations or entities can make use of the trademark together; however, neither of them has the right to be the absolute owner of the trademark.
A trademark owner can be any person, business organisation, or legal entity. A trademark can be located on any package, a label, a voucher or on the product itself.
Interestingly, the most unique feature of a trademark is its perpetual life. Even though it has to be initially registered for a period of 10 years, it can be periodically renewed and can be used for an indefinite duration, with the exception that it is removed from the register or prohibited by a court order. It is pertinent to note that the first trademark that was registered in the UK under No. 1 of 1876, consisting of a red equilateral triangle and related to alcoholic beverages, is still in force to date.
Registering a trademark is important because it helps protect the proprietor’s rights. The rights given after registering a trademark are available to the proprietor for an indefinite time period by merely renewing the same, as opposed to other intellectual properties like patents, designs, copyrights, etc.
of the Trade Marks Act, 1999, discusses provisions related to the infringement of a copyright. The essentials of trademark infringement are as follows:
The 3 basic civil remedies that are available to the proprietor in case of infringement are as follows:
The remedies are discussed under and of the Trade Marks Act, 1999.
Criminal remedies are discussed under to of the Trade Marks Act, 1999. The criminal remedies include:
The other remedies are penalties for
Under Section 102 and Section 103, the penalty for falsifying and falsely applying a trademark is minimum imprisonment for 6 months, maximum imprisonment of 3 years and a fine.
Apart from the civil and criminal remedies available to the proprietor, the Trade Marks Act, 1999, also grants certain powers in the hands of administrative authorities to provide relief and remedies to anyone whose rights were infringed upon or aggrieved or to those individuals or organisations whose trademark was infringed. Thus, such powers may be exercised in respect of-
One of the first landmark judgments for filing a trademark related case was the ‘Whirlpool case’ and the case title was , wherein the Supreme Court gave its judgement relating to passing-off action.
Please note: There is no explicit definition of the term ‘passing off’ in the Trade Marks Act; however, it has been mentioned in several Sections of the Act, like:
The courts have drawn its meaning from common law. Basically, passing off occurs when a mark is not only deceptively similar to that of the other mark but also creates some sort of confusion among customers that will ultimately result in damage to the goodwill and business of the owner whose trademark is not registered. The main purpose of passing off action is to ensure that no owner’s rights, goodwill or reputation are affected or exploited just because they have not registered their trademark.
In , the Supreme Court stated that a trade name must be descriptive enough so as to indicate the link or relation between the goods and the mark. Thus, if a monogram (a symbol made up of a person’s initials) relating to a trade name is not descriptive enough to show that there is a relation between the product and the mark of a specific marketing company, one cannot say that it is a trade name of a marketing company.
In the case of Anglo French Drug vs. Hony-N-Bois 1989 PTC 289 (Bombay), the Court held that the registration for the term ‘Hepasyp’ for ayurvedic medicine was denied because it consisted of the deceptive words ‘hepa’ meaning liver and ‘syp’ having an obvious meaning syrup, which described the product for ailments related to the liver.
In the case of , the Calcutta High Court held that distinctiveness must be ascertained as it is at the date of application for registration.
In , the Bombay High Court held that the Plaintiff was a registered proprietor of the trademark “M-SEAL”. The Defendant adapted and used the mark “SM SEAL” with all the important features of the trademark “M-SEAL”. The Court held that the Defendant’s usage of impugned marks was creating a lot of confusion and deception. The Court passed an order restraining the Defendant from using the trademark “SM-SEAL”.
The Delhi High Court in the case of , passed an order restraining the Defendant from using the trade name “PLAY WAY” on the basis that the Defendant has adopted the word “PLAY” which is the heart and soul of the name of the magazine owned by the Plaintiff titled “PLAYBOY” with the main objective of exploiting the trade on its goodwill and widespread reputation.
In , the Court of Appeal in Jamaica made an observation that a mark can be said to be infringed by another trader in case he/she even without making use of the whole of the mark or even anything related to the goods. Instead, even if the trader uses one or more of the distinct features of the mark or goods, it will result in infringement. The focus must be on the sound and significance of the words used in the mark.
In yet another case ( ), the Supreme Court stated that when it comes to two marks that are identical to each other, one can say, there was an infringement. The Court claimed that when two marks are identical, no further question arises as to whether an infringement is made thereof.
As per Indian law, a patent is an exclusive right, privilege or monopoly that is granted to an inventor to make use of his/her innovative techniques or scientific talent and gain profit from the same. The main purpose of this system is to motivate individuals to invest in new techniques or make proper use of scientific innovation by promoting their protection and utilisation so as to contribute towards the progress of industries. This, in turn, contributes to promoting technological advancements and to the transfer and dissemination of technology. As per the system, patent rights make sure that the owner has property rights (also legal title) over their invention and the owner can make full use of the patent system and the pros the system and grant come with.
Please note: Patent rights are territorial in nature, which is why an inventor has to file different applications for patent registration in different countries.
Additionally, a patent can also be referred to as a ‘government licence’ which provides the owner/holder with exclusive rights to a process, design or new invention for a specific period of time.
The term ‘patent’ comes from the Latin phrase ‘patene’, meaning ‘to open’. There is no comprehensive definition of this term; however, it is defined under Section 2(m) of the , as “a patent granted under the Act and includes for the purpose of sections , , , , , , , , , , , , , , , , , , , , , and Chapters XVI, XVII and XVIII, a patent granted under the .
In India, some of the most famous patented creations are as :
The following are some of the of patent:
In India, there are types of patents, namely:
This is one of the most common types of patent in India. It includes any type of invention or innovation in a product, process or even a machine. It is also addressed as ‘patent of inventions’. So, if anyone has innovated a new type of electric vehicle or any machinery that is related to solar power, he/she/they can apply for a utility patent.
To protect a new variety of plants, inventors obtain plant patents. This is one of the most important types of patents in India and is known to protect new plant hybrids and organically discovered plants. For instance, a type of African violet, a new type of almond tree, etc.
A design patent is a patent that is known to protect any aesthetic looking goods that were produced or manufactured. Basically, design patents protect surface ornamentation of the product. In simple words, it protects the look of the product. So, an individual or organisation can apply for a unique shape or design and claim ownership of the same once the patent is granted. Further, if one wants to claim exclusive rights over any functionality of a particular product, one must file an application form for a utility patent. Design patents are pocket friendly in comparison to plant and utility patents. An instance of a design patent would be the bottle designed by Pepsi, which is known for its unique shape, look and feel.
In India, there are 7 types of patent application, namely:
Under of the Patent Act, 1970, the following individuals can apply for a patent and eventually get their invention patented, thus granting them ownership rights:
Please note: An application for patent registration may be made either alone or in a joint manner which includes any other individual.
As per Section 53 of the Patent Act, 1970, talks about the term of patent. It stated the following:
Now, after the Patents (Amendment) Act, 2002, the provision says:
In order to register a patent, one has to follow the following steps:
Step 1:File an application in the patent office.
Step 2:Provisional/complete specification should be filed.
Step3:Acceptance of Specification.
Step 4:Publication of Application.
Step 5:Request for Application.
Step 6:Examination and Report of Examiner.
Step 7:Approval.
Or
In case there are any objections, there will be a division of application and then amendment after opposition or objection, then the patent will be granted/approved.
The sections related to the application or registration of a patent are as follows:
talks about the individuals who have the right to apply for a patent.
discusses the form of the patent application.
lays down special provisions that are required when it comes to foreign applications.
discusses provisional and complete specifications.
includes the content required at the time of filing provisional and complete specifications.
talks about publication and examination of applications.
The following acts will amount to infringement of a patent:
The following acts do not amount to infringement:
A patentee, licensee, assignee, or the co-owner has the authority to file a suit within 3 years from the date of infringement. The individual(s) can seek the following remedies:
In accordance with the , a patentee may claim a declaration stating that the act of the infringer must be said to be unlawful and that there be a declaration that the patentee receives compensation for the act of infringement.
Further, relief of injunction can be claimed under Section 38 of the Specific Relief Act, 1963. Thus, a perpetual injunction (commonly known as a permanent injunction) is granted against the infringer in the Civil Court.
The patentee has the right to seek liquidated or unliquidated damages from the infringer.
Whatever profit has been incurred by the infringer while infringing the patent, a patentee may claim that the same be transferred to their account.
The patentee may also seek remedy from the court that the certificate in his favour be issued, declaring the validity and duration of the certificate in favour of the patentee to safeguard the interest of the patentee.
The patentee also has the right to claim cost for the expenses incurred for filing the lawsuit for patent infringement in accordance with the provisions laid down in the , and Civil Manual. The court may allow appropriate costs to the patentee if he/she claims for the same.
The Defendant in a lawsuit filed against him/her may take any or more of the following defences:
If any individual does not comply with the provisions mentioned under section 35 or makes or causes an application for grant of a patent against the provisions laid in Section 39, he/she shall be punished with 2 years imprisonment or a fine, at times, both, as stated under .
Under Section 119 of the Patent Act, 1970, if any individual makes a false entry in the register and tenders or produces such entries, then he/she shall be liable to 2 years imprisonment or a fine, at times, both.
Under , if there is any unauthorised claim of patent rights, there is a penalty of a fine of up to 1 lakh rupees.
Under Section 121, an individual may face a 6 months imprisonment or fine, at times, both, if he/she wrongfully uses on his place of business or any documentation thereof the words ‘patent office’ or any such words that would mislead someone to believe that his place of business is or is officially connected to the patent office.
Under , if an individual denies or fails to supply the requisite information as required under Section 100(5) and Section 146 regarding working of patent, he/she shall be punishable with a fine that could extend to 10 lakh rupees.
Section 123
Under , if any individual does not comply with the provisions laid down under Section 129, he/she shall be punishable with fine that may extend to 1 lakh rupees in case the offence is carried on for the first time. Further, the fine will be up to 5 lakh rupees in case of a second or subsequent offence.
Under , is applicable to companies, corporate bodies or any organisations that may commit an offence under the provisions laid down in the Patent Act, 1970. Basically, this Section ensures that legal entities as well as individuals (director, manager, secretary or other officer of the company) are held responsible for their actions.
In the case of , the Supreme Court held the following are objects of patent law:
The Court further stated that patents are granted only for inventions that are new and useful. They must have novelty and utility. It also must be the discovery of the inventor itself.
In , the Allahabad High Court held that a firm also has the right to patent as assignee.
The Delhi High Court, in the case of , held that every ground upon which a patent could be revoked will be made available as a ground for defence.
GI is a sign that is used on goods that carry a special geographical origin and possess qualities, reputation or features that are essentially attributable to that place of origin. Generally, a GI includes the name of the place of origin of the goods. Before the commencement of the , there was no law as such that safeguarded any agricultural goods, natural goods, handicrafts, manufactured goods, foodstuffs, etc. in order to protect GIs, especially as India had ratified the TRIPS (Trade Related Intellectual Property Rights), under which, until and unless a GI is protected in the country it was originated, there can be no obligations on other countries of TRIPS to extend such reciprocal protection.
As per Section 2(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999, ‘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 the 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.”
The simple explanation of this will be any name that is not the name of a country, region or say, a locality of that particular country shall also be regarded as the geographical indication if it relates to a specific geographical area and is used on or in relation to particular goods that originated from that country, region or locality as the case may be.
A ‘producer’ includes-
Some examples of geographical indicators (GI tags) as follows:
The use of GIs are not limited to agricultural products per se. As per the Geographical Indications of Goods (Registration and Protection) Act, 1999 (or Indian law), the protection to GI is not only limited to handicrafts and agricultural goods but also extends to manufacturing goods. Further, GIs may also shed light on the qualities of a product that are due to human factors associated with the place of origin of the products, like some special manufacturing skills and traditions. One must note that the place of origin could be a village, a town, a region or even a country. So, to answer the above question, no, GI is not limited to agricultural products and extends to food products, handicrafts, etc.
Usually, GIs are recognised by consumers to denote the origin and quality of products. Say, Alphonso mango (or Hapus Amba) from Ratnagiri. A lot of these products have acquired valuable reputations, which, if not protected properly, may lead to misrepresentation or dishonest commercial operations. False use of GIs by parties that are not entitled to get them may be detrimental to consumers and legitimate producers. Here, consumers are misled into believing that they are getting a genuine product, whereas the truth is that they are being deceived into believing the same and are getting an imitation. In such a scenario, legitimate producers are deprived of valuable business and the established reputation of their product is damaged.
Basically, a trademark can be said to be a sign that is used by an individual to distinguish its goods and services from those of other individuals. It provides the owner with the right to exclude others from using its trademark. Further, a trademark will most often than not consist of a fancy name or device.
On the other hand, a GI tells consumers that a product manufactured in a certain place has some features that are linked to that place of production. A GI may be used by producers who make their product in that particular location designated by a GI and whose products share specified qualities.
As opposed to a trademark, the name used as a GI is generally predetermined by the name of the place where it was produced. Some of GIs in relation to this pointer are:
The main purpose of getting a GI is to exclude unauthorised individuals from misusing GIs. Registering GIs in turn will protect consumers from deception, add to the economic growth and development of the producers of such products and further promote goods bearing Indian geographical indications in the export market.
Generally, a lot of GIs come from villages and small towns. Once these GIs are protected, it can result in higher income for the producers that reside in such regions, which in turn, has the potential to transform the rural economy for the better. It will also attract investments by investors in such markets. The general features of GI :
The category-specific features of GI are as follows:
A lot of registered and potential GIs in India belong to the MSME sector (Micro, Small & Medium Enterprises). A GI protection for them would ensure that the market there develops and has increased returns.
GIs are unique products that come from demarcated areas. So, cultivation or the manufacturing process within itself, attracts tourists. Also, handicrafts and handlooms that have special features will always attract tourists. Further, regions can attract tourists to taste the special GI foods or drinks or buy such unique products with added discounts or at a discounted price.
GI tags are used in the following of products:
Some instances of handicrafts would be:
Some instances of foodstuff products would be:
Some instances of wine and drinks would be:
An instance of agricultural products would be Basmati rice.
Well, no instance can be found online but it is one important type of GI.
The term ‘ownership’ in GI is referred to as ‘producer’. The following individuals who deal with these 3 categories of goods come under the term ‘producer’:
The registration of an authorised user will be for a period of 10 years or for the period till the date on which the registration of the GI in respect of which the authorised user is registered expires, whichever is earlier.
Let us understand this in FAQs format.
of the Geographical Indications of Goods (Registration and Protection) Act, 1999, talks about registration with respect to particular goods and areas. As per this Section, there is no mandate to register a GI. However, registering a GI will have the following benefits:
To register a GI, the producer has to follow this procedure:
Please note:To access the forms, kindly follow this .
An authorised user, i.e., the proprietor, has the exclusive right to use the GIs in relation to goods with respect to its registration.
Yes, a registered GI can be renewed from time to time for a period of 10 years each. The producer has to make an application within the prescribed time limit and pay the requisite
amount of fees for renewal.
If a GI is not renewed from time to time, the registrar sends a notice for renewal (this includes the date of expiration, the conditions, the requisite amount of fees, etc.) and even then if the producer does not want to renew the GI, the Registrar may remove the GI or the authorised user from the register.
The Appellate Board or the Registrar of Geographical Indications has the authority to remove the GI or an authorised user from the register. Furthermore, an application by an aggrieved person can be made.
No, a Gi is a public property that belongs to the producers of the concerned gods. It cannot be assigned, transmitted, licensed, pledged, mortgaged or have any such agreements. However, when the authorised user or producer dies, the right to that GI will be delegated to the successor in title.
Let us understand this pointer in FAQs form.
Any registered proprietor or authorised user of a registered GI can initiate an infringement action.
Mentionriceelow are some landmark cases on GIs in India.
Navara Rice is one of the types of rice found in India and is quite a unique grain plant in the Oryza group. It originated in Kerala and is famous for the medical properties it holds. In 2007, this product received GI protection and was licenced to Navara Rice Farmers’ Society, which caused a rise in the number of growers of this crop. However, it was mentioned that only those farmers who belong to the same society have the right to sell their produce of this variety of rice.
Now as per an NGO based in Kerala, nobody has any on the historical origin of this variety of rice. Additionally, one cannot grant GI on seeds because with migration, there is a chance that seeds also migrate and adapt to the local ecology with genetic changes. This is why there is a need for more clarity on GI laws.
In 2019, the GI tag was granted to the ethnic leather chappals, commonly known as Kolhapuri chappals, by the CGPDTM (Controller General of Patents, Designs, and Trade Marks). This tag was granted to several districts of Maharashtra (namely Kolhapur, Sangli, Solapur and Satara) and Karnataka (namely Belgaum, Dharwad, Bagalkot and Bijapur). There was a joint bid for GI tag of Kolhapuri Chappals by the Sant Rohidas Leather Industries & Charmakar Development Corporation Limited of Maharashtra (LIDCOM) and the Dr. Babu Jagjeevan Ram Leather Industries Development Corporation of Karnataka (LIDKAR) in 2009, which fructified in 2018 into the GI tag being granted in favour of the artisans of the two states.
Well, the main objective behind this GI tag being granted to 2 states and 8 districts was because there was a large demand for Kolhapuris and a decline in supply of leather in the state of Maharashtra. Another issue was the change of fashion and taste among the youth of India and across the globe. Additionally, there was also a rise in competition and the most proverbial threat was that of ‘Chinese imitation’.
Under Class 30, Tirupati Laddus applied for registration of GI by the Tirumala Tirupati Devasthanam and they received GI tag in 2009. This laddu is offered as ‘naivedyam’ to Tirupati Balaji and then offered as ‘prasadam’ to the devotees after they have worshipped Lord Venkateshwara, the presiding deity at SriVari Temple in Tirupati, Andhra Pradesh.
However, in the same year as GI tag was granted to these laddus, a PIL was filed in the Madras HIgh Court against this GI tag. The same was filed by Mr. R.S. Parveen Raj, who was a resident of Trivandrum. His suit was filed on the following 3 grounds:
The Court dismissed the petition on the grounds that an alternative and efficacious forum was available for adjudication of such a dispute. Under the G.I. Act, such a petition could have been filed either before the G.I. Registry or the IPAB (Intellectual Property Appellate Board).
Mithila Makhana, an aquatic fox nut grown in the area of Mithila region in Bihar and its neighbour Nepal. The name was as a GI tag in the name of Mithilanchal Makhana Utpadak Sangh. After this tag, no unauthorised user or company can benefit or incur profit on the same name as this. This was done to help improve exports in the market. Further, the growers of this nut will mainly be benefited from the tag and will earn more profits, eventually leading to a better lifestyle of the farmers and growers of this variety of nuts residing in that location.
Please note: Before we dive deep into this part, designs are also known as industrial designs and the rights granted to the registered proprietor of that design are known as ‘design rights’ or ‘design patent’.
Basically, design can be said to be a type of intellectual property that protects any composition, be it two or three dimensional lines, patterns, shapes or colours. The present , has been replaced by the , that prevailed in British India. Since the enactment of the 1911 Act, a significant amount of progress has been made in the field of science and technology and with such development there was a need to provide more effective protection to registered devices, which is when the 2000 Act came into enactment. This Act also intended to ensure that the law does not unnecessarily extend protection beyond what is needed to create the required incentive for Designs Activity while removing impediments to the free usage of available designs.
Under Section 2 (d) of the Designs Act, 2000, the term ‘design’ can be referred to only the-
thereof applied to any article, be it two or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode, principle, construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as defined in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.
Some of the well known instances of industrial design as follows:
The following are some of the main features of designs:
There is no classification of types of design under Indian law.
The ownership of the designs vests with the proprietor or owner of the design under the Design Act, 2000.
Under this Act, the proprietor or owner has the following rights:
Under Section 11 of the Act, once the design is registered, the proprietor has copyright over that design. Here, copyright can be defined as the exclusive rights to apply a design to any article in any class where the design is registered.
Once the proprietor files for registration and the same is approved, the inventor behind inventing a design has the copyright for 10 years,after this, he/she can increase it for another 5 years provided a request is made to the Controller along with the requisite fees.
The rights in the design are capable of being transferred through assignment or transmission including via mortgaging and licensing either through contracts or by the operation of law that has to be noted (mandatory) to the Controller General.
Once the design is registered, it is protected from any copying or substantial copying of a design for commercial purposes by a third party. Such an infringement will be regarded as piracy. Simply put, when any design is copied without obtaining a prior written consent of the owner, it is regarded as infringement of that design. The owner of the proprietor has all the rights (and monopoly) over that design and in case of infringement, the infringer is to compensate the owner for such an act.
The duration of a registered design is 10 years from the date of registration, initially, i.e., after its registration, but in cases where claim to priority has been permitted, the duration can be 10 years from the priority date. This period can be further extended for 5 years with an application made in Form 3 accompanied by the requisite amount of fees to the Controller before the expiry of the said initial period of 10 years. The proprietor of a design may make an application for such extension even as soon as the design is registered.
To access the forms, kindly follow this .
Let us understand this pointer in FAQs format.
There are about 8 essential necessary for successfully registering a design, they are as follows:
The design has to be novel and unique in nature.
The design must be judged solely on the basis of its features (through the eyes-visual representation). Simply put, the features must be visible.
The design must not be disclosed to the public in India or anywhere across the world by prior publication or by prior use or in any other manner.
It must have significant difference from designs or their combination thereof that are already registered or pre-existing or disclosed to the public.
To register the design, there must not be any scandalous or obscene content.
The design has to be applied to an article by an industrial process.
It should not have any feature that is purely functional.
It must not, in any way, consist of any trademark or property mark or artistic work as defined under the Copyright Act, 1957.
Briefly, the process of registering a design consists of the following steps:
Let us understand each of these steps in brief.
The proprietor or the individual who holds the design has to file an application for registering the design. As per Section 5(1) of the Designs Act, 2000, the Controller will register the design if the following requisites are met:
The application has to be followed by a prescribed fee, prescribed form and in the prescribed manner.
The application under Section 5 of the application must be accompanied by 4 copies of the representation of the design and the application must mention the Class under which the design has to be registered. The applicant has to also file a brief statement of novelty with the application.
Please note: As per the Designs Act, 2000, there is a type for registration of design known as Locarno Classification (which is followed in a lot of jurisdictions, including India). It consists of 32 classes, numbered 1 to 31 and an additional Class 99 to include articles that do not fall under the above 31 classes. Most of these classes are further divided into subclasses. It is pertinent that design applications must be filed in a particular class depending upon the predominant material with which the article is made or is capable of being made.
According to the Locarno Classification system the Designs Register is divided into 32 classes. The application for design has to be filed in a particular class to obtain protection in that class. The list of class is as follows:
It includes foodstuffs.
It includes articles of clothing and haberdashery.
It includes travel goods, cases, parasols and personal belongings, not elsewhere specified.
It includes brushware.
It includes textile piecegoods, artificial and natural sheet material.
It includes furnishing.
It includes household goods, not elsewhere specified.
It includes tools and hardware.
It includes packages and containers for the transport or handling of goods.
It includes clocks and watches and other measuring instruments, checking and signalling instruments.
It includes articles of adornment.
It includes means of transport or hoisting.
It includes equipment for production, distribution or transformation of electricity.
It includes recording, communication or information retrieval equipment.
It includes machines, not elsewhere specified.
It includes photographic, cinematographic and optical apparatus.
It includes musical instruments.
It includes printing and office machinery.
It includes stationary and office equipment, artists’ and teaching materials.
It includes sales and advertising equipment, signs.
It includes games, toys, tents and sports goods.
It includes arms, pyrotechnic articles, articles for hunting, fishing and pest killing.
It includes fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment,
It includes medical and laboratory equipment.
It includes building units and construction elements.
It includes lighting apparatus.
It includes tobacco and smokers’ supplies.
It includes pharmaceutical and cosmetic products, toilet articles and apparatus.
CLASS 30
It includes machines and appliances for preparing food or drink, not elsewhere specified.
It includes miscellaneous.
On considering the application, if the Controller is of the opinion that the applicant fulfils all the prescribed requirements, he/she shall register the design.further, in case while considering the application there are any objections to appear in front of the Controller, a statement consisting of all such objections will be forwarded to the applicant or his/her agent.
Once the applicant or his/her agent receives the statement, the objection has to be removed within 1 month from the date of communication of the objections. Failing to do so shall be deemed to have the effect of the application being withdrawn. The ap;licant may also apply to the Controller to hear the matter. In case the Controller does not accept the application after the submission, the applicant may make an appeal directly to the Central Government. The decision taken by the /central Government will be final.
As mentioned above, the decision taken by the Central Government will be final.
Once the design is accepted, the Controller will direct the registration and publication of the particulars of the application and the representation of the article to which the design has been applied, in the official Gazette. While publishing the design in the Gazette, the controller may select one or more views of the representation of the design, which in his opinion would depict the design in the best possible manner.
When the design is finally accepted, it shall be entered in the Register of Design, with all the important information as mandated by the Act. the important information, inter alia, may include the following information:
The registration of a design can be cancelled at any time after the design has been registered if there is a petition for cancellation in Form 8 with the prescribed amount of fee addressed to the Controller of Designs for these reasons:
Generally, the term ‘piracy of a design’ is used to address infringement of copyright. The same has been mentioned under Section 22 of the Designs Act, 2000. Let us read some FAQs on piracy of designs.
Basically, piracy of a design means the application of a design or its imitation to any article that belongs to any class (discussed above) of articles where the design has been registered for selling or importing these articles without obtaining a prior consent in written format from the registered proprietor. Publishing such registered articles or exposing the terms of that sale with knowledge of the unauthorised application of the design to them will also amount to of the design.
If any individual contravenes any copyrighted design, he/she will be liable for every offence and may be asked to pay a fine not exceeding ₹25,000/- to the registered proprietor, subject to a maximum of ₹50,000/- recoverable as contract debt in respect of any one design. The registered proprietor has the right to file a lawsuit for recovery of the damages thus caused by any such contravention and for injunction against repetition of the same.
Please note: The total sum to be recoverable shall not go beyond ₹50,000/- as recoverable as contract debt in respect of any one design.
The lawsuit for infringement (or piracy), recovery of damage, etc., must be filed in any court below the court of the District Judge.
If a Defendant is charged with design infringement or piracy suit, he/she can refer to the following defences:
In case the design is cancelled as per the provision mentioned in then Act, the Defendant can claim the same and use it as a defence.
As mentioned above, the copyright on a particular design is available for a limited time period. If the Defendant can provide evidence that the design has surpassed the time period (for which it was predicted) as mentioned under provisions of the Act, he/she may be allowed to make use of the design.
If there is an unreasonable delay on the part of the Plaintiff to file the lawsuit, the Defendant has the power to plead acquiescence and on the basis of this pleading, may be allowed to use the design.
If the Defendant provides evidence that the Plaintiff is not the registered proprietor of the copyrighted (or the duly authorised agent or licensee) of that particular design, he/she may be permitted to make use of the design.
The Defendant can claim that the design in question is neither new nor original.
The Defendant can state that his design was previously registered in India, if that is the case.
The Defendant may raise a defence of his design was published in India before the date of registration.
The Defendant can claim that the Plaintiff has not approached the court with clean hands and that his/her conduct is tainted.
Section 2(a) of the Designs Act, 2000, defines the term ‘article’ as any article of manufacture and any substance, artificalor partly artifical and partly natural and includes any part of an article that is capable of being made and sold separately. However, one must note that there is a difference between article and design. In the case of , the Delhi High Court held that design means the features that form the conception or idea of a shape.
In yet another case- , there were some caps of bottles that were manufactured separately but were used for the same bottles manufactured by the same manufacturer. However, the nature of the cap was such that there was a possibility that the same could be sold separately, though not currently done by the manufacturer. Here, the Bombay High Court held that the caps are entitled to be registered as a separate item of commerce.
In the case of , the Delhi High Court held that the concept of a new or an original type of design is relatable to the publication of such a design or its availability to the public in India. The Court further stated that if the contention is that the Defendant has received brochures from several nations like Malaysia, Korea, and Japan with respect to such goods, the mere receipt of such brochures will not be said to be the publication of such designs within India.
In yet another case, , the Appellant and Respondent manufactured biscuits. The design of the Appellant was registered. The design of the Respondent also had an identical design embossed on the biscuit, the only difference being that instead of ‘AP’ (which was embossed on the biscuits of the Appellant), letters ‘AP’ was embossed on the biscuits of the Respondent. Aggrieved by the mark, the Appellant filed a lawsuit for injunction, stating that the Respondent had committed piracy of his design. The Andhra High Court issued a temporary injunction based on the registered design.
In the case of , the Bombay High Court held that in an infringement suit it must be found at the outset that, judged solely by the eye, there is an indispensable similarity in the two designs.
In , the Delhi High Court held that the passing off action is not available when it comes to registered design. Thus, the parties are relegated to the remedy under the Designs Act to seek cancellation of registration and other remedies under the Act.
A trade secret is any practice or process of a company that is usually not known (to the general public) outside of the company. Such information gives the company a competitive edge over its competitors and is often a product of internal research and development. The essentials of a trade secret are as follows:
There is no explicit law that governs the protection of trade secrets in India. However, these rights are enforced through contract law ( ), principles of equity or by way of a common law action for breach of confidence. In the case of , the Calcutta High Court, on the definition for ‘trade secret’ in Black’s Law Dictionary, observed that a trade secret is a formula, process, device or other business information that is kept a secret (confidential) to maintain an advantage over competitors. The information will consist mainly of:
that deevies any independent financial value, actual or potential, from not being generally known or disclosed to the public or readily ascertainable by those individuals or companies who can benefit (financially) from its disclosure or use and that a reasonable attempt is made to maintain secrecy when it comes to the product.
Some of the examples of trade secrets well known in India as follows:
Interesting fact: In 2006, some individuals tried to share the formula of Coca Cola with one of its biggest competitors, Pepsi; however, Pepsi informed Coca-Cola about the incident).
The most common characteristic of a trade secret are as follows:
There are several types of trade secrets, namely:
Let us understand this pointer with the help of some FAQs.
Generally, when a trade secret is deemed to be protected, the owners have the right to preclude the information that was obtained in a lawful manner under their control from being disclosed, acquired or used by other individuals without obtaining their prior consent. Some unfair practices in this regard include:
It also includes the usage or disclosure of any trade secret by a third party who was aware or was negligently failing to know that these practices were involved in the acquisition of the confidential information. However, one must note that the use of trade secrets by an individual who gained the information through a legitimate business transaction without negligence is not regarded as illegal. For instance, a competitor may buy a product, look at the construction and composition of the commodity and extract the secret knowledge embedded in the product (so called reverse engineering), which will not be regarded as a violation of trade secrets.
Generally, trade secrets in India are governed by common law, namely:
Under Section 27 of the Indian Contract Act, 1872, parties cannot disclose information that is against the terms of the contract between the parties, i.e., non disclosure agreements.
Sections , , , and of the , deal with cases that constitute criminal breach of trust.
Trade secrets are property rights that can be assigned and licenced to other individuals. The individual or organisation that holds the trade secret also has the authority to permit third parties to access and use the trade secret information. Yet, considering the secret nature of the trade secret, it is not always easy for others to ascertain if the information concerned meets the requirement for trade secret protection. Thus, in comparison to patents, it is a little more tough to transfer and licence such secretive information and to resolve arguments or disputes that may thus arise. Further, since a potential licensee will necessarily have to have access to trade secret information to ascertain several factors, like-
It is important that a non disclosure agreement be signed between both parties (i.e., the licensor and the licensee). Furthermore, in order to keep the trade secret really a secret, the licensor of the trade secret must take reasonable steps to keep the information confidential.
In order for a proprietor to get his/her rights over a trade secret, he/she has to furnish the nature of the information that he/she believes to be a trade secret and how it came into his/her possession. If such information is not made available, the court may deny to grant such a right, as held in the case of . Basically, there is a distinction between general knowledge regarding business of an organisation or the general skill and expertise of employees accumulated in the course of employment in an organisation and trade secrets that can be protected. Thus, it is crucial that the proprietors mention the information that may consist of a trade secret. In some instances, there is a chance that the trade secret information may include works that were created and developed by the proprietor and could be granted protection. Here, the principles of authorship and ownership applicable to copyright will be applicable. However, in some cases, the trade secret information has to be shown by the proprietor to prove that he/she is the rightful owner of such a title. In other words, if the information is derived or created by an individual with the information readily avoidable in public, such information will not be regarded as a trade secret and no protection will actually be granted to such an owner.
As we know, there is no specific law that governs trade secrets in India, so there is no per se for the protection of trade secrets. In simple words, unlike other types of IPs, that usually have limited duration, trade secrets are protected for an indefinite time period. Further, a trade secret can be for an unlimited period of time, until and unless it is discovered or legally acquired by some other individual or organisation or disclosed to the public.
As opposed to other forms of IPS, trade secrets are protected without registration, i.e., trade secrets do not need procedural formalities to be followed to be protected.
Please note: Infringement of trade secrets is also known as ‘misappropriation’. There is no explicit law that defines the term ‘misappropriation’; however, when a trade secret is delivered by improper means (arising from civil, including breach of contract or tortuous wrongs or criminal acts), it would be regarded as misappropriation of trade secrets.
There is no specific law for trade secret misappropriation; yet, offences like criminal breach of trust, theft or cheating may be applicable in cases where a trade secret is infringed.
The punishment for criminal breach if trust is imprisonment for up to 3 years or a fine. One can say that a criminal breach of contract was committed when an individual dishonestly misappropriated or converted for his/her own usage any property that has been entrusted to him/her, or dishonesty uses or sells (or disposes) aby such property and breaches the contract (could be expressed or implied, i.e., in written or oral form, respectively), or applicable law, or allows any other individual to do so. An action for such a breach can be brought under the .
The defences to a large extent rely on the facts of each case, however, these are the most common defences:
In case of misappropriation or infringement of a trade secret, the owner can seek relief of injunction (could be temporary or permanent), so the Defendant is refrained from using or disclosing the trade secret. The courts have the discretion to grant such a relief and apply the following tests (as mentioned in to ascertain the same:
The courts have further held that the main motive for granting an interim injunction is to protect the Plaintiff against injury by violation of its rights, where such an injury cannot be adequately compensated by damages. This statement is especially true for trade secrets whose utility or value is derived from their confidential nature. Thus, the need for such a protection for the Plaintiff must be weighed against any injury that may be caused to the Defendants by being prevented from exercising their legal rights.
Litigants can also seek damages and rendition of accounts of profit as one of the remedies to trade secret misappropriation or infringement. Damages are further divided into three categories, namely:
Apart from the aforementioned remedies, there are no civil remedies available in cases of wilful trade secret appropriation; however, there are some remedies available to the Plaintiff or the rights holder, including:
There is no explicit offence of trade secret misappropriation but the infringement or misappropriation may result in a criminal breach of trust, theft or cheating may be applicable. The matters may be governed under the following laws:
It is pertinent to note that there are no specific laws relating to trade secret misappropriation in India, as it is governed totally on the grounds of common law principles (that have evolved through judicial precedents) and Indian contract law.
Further, the Bombay High Court, in the case of , stated that for any piece of information to be considered as a trade secret the following criteria must be met:
The Delhi High Court, aforementioned above, in the case of Ambiance India Pvt. Ltd. vs. Shri Naveen Jain 122 (2005) DLT 421, held that if the nature of the information that is said to be a trade secret is not revealed, the court has the authority to not grant protection for the trade secret.
In some cases, there could be information made and developed by proprietor that would be subject to being protected like client lists as mentioned by the Delhi High Court in the case of or technical drawings in .
In , the Defendant was a former employee of the company (which is the Plaintiff in this case), made use of the contacts database collected by the Plaintiff. The Delhi High Court held that the contacts database belonged to the Plaintiff and that it was developed through skill and labour of the Plaintiff.
Plant variety is a type of IPR. Plant variety protection, also known as ‘plant breeder’s right’ is a form of a Plant Breeder’s Rights (PBRs) that provides exclusive rights to a breeder of the registered variety. In India, this form of IPR is protected under the .
Under , the term ‘variety’ is defined as a “a plant grouping except micro-organism within a single botanical taxon of the lowest known rank, which can be-
(i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping;
(ii) distinguished from any other plant grouping by expression of at least one of the said characteristics; and
(iii) considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation,
and includes propagating material of such variety, extant variety, transgenic variety, farmers variety and essentially derived variety.”
Plant varieties have been classified into several categories, let us look at a examples.
The following are some of the of registered oilseeds in India:
The following are some of the of registered cereals in India:
The following are some of the of registered vegetables in India:
The following are some of the of legumes registered in India:
The following are some of the of registered flowers in India:
The following are some of the of registered spices in India:
The following are some of the of registered fruits in India:
The following are some of the characteristics of plant varieties:
Under the PPVFR Act, 2001, there are 18 plant species that can be registered under the Act, they are as follows:
They include:
Thy include:
They include:
The PPV&FR Act, 2001, grants proprietary ownership to plant breeders and farmers for their varieties. Once the protection is granted, the owners have the rights to-
the variety registered under the Act.
Every variety of plant has a different term of protection, let us take a look at each of them:
In case of trees and vines, the duration of protection is 18 years from the date of registration of that variety.
In case of extant varieties, the duration of protection is 15 years from the date of registration of that variety.
In case of other crops, the duration of protection is 15 years from the date of registration of that variety.
Let us understand this pointer with the help of some FAQs.
In order to be eligible for protecting a plant variety, it must have the following features:
To be registered, a plant variety has to be clearly distinguishable by at least one essential characteristic from any existing or commonly known varieties in any country while the application for registration is being filed.
A variety has to be sufficiently uniform in its essential characteristics.
The essential characteristics of a plant variety must be stable after repeated propagation or in case of a particular cycle of propagation, at the end of each cycle.
An application for registering a plant variety can be made by:
As India is a member of WTO (World Trade Organisation) and signatory of TRIPS, it is crucial for India to provide protection to plant varieties either via patents, the sui generis system, or by both. Just like most of the developing nations, India decided to exclude patents for plants and plant varieties; however, it exercised the sui generis option for effective protection of plant varieties. India enacted ‘The Protection of Plant Varieties and Farmers’ Rights’ (PPVFR) Act, 2001, for plant variety registration.
Under the PPVFR Act, 2001, there are 4 types of plant varieties that are registrable:
A variety that is not in public domain in India earlier than one year before the date of filing; or outside India, when it comes to trees or vines earlier than 6 years, or in any other case, earlier than 4 years.
Any variety that is not notified under the , or any new variety about which there is common knowledge or a farmers’ variety or any other variety that is in public domain is considered to be an extant variety.
A variety that has been traditionally cultivated and evolved by the farmers in their fields or a type which is a wild relative or land race of a variety about which farmers possess common knowledge.
An essentially derived variety shall be said to be essentially derived from such an initial variety when it is predominantly derived from such an initial variety, or from a variety when it is predominantly derived from such an initial variety, while retaining the expression of the important features that lead to the genotype or combination of genotypes of such initial variety. An EDV conforms to such an initial variety that results from the genotype or combination of genotypes of such an initial variety.
All plant varieties are not entitled to legal protection in India, meaning some plant varieties are excluded from protection under the PPVFR Act, 2001. Any variety where prevention of commercial exploitation of any such plant variety is crucial to protect public order or public morality or human, animal and plant life and health, or to avoid serious prejudice to the environment, or any varieties that has terminator technology, or any variety that belongs to any species or general that is not enlisted in the notification issued by the Central Government cannot be registered for protection under the PPVFR Act, 2001.
If any individual falsely represents a variety of plant as his/her/its registered variety, then the same act can be punished by imprisonment for a term not less than 6 months that is extendable up to 3 years or a fine amounting to not less than Rs. 1 lakh that is extendable up to Rs. 5 lakhs, or, at times, both.
In the case of , the Delhi High Court held that the PPVFR Authority’s order that claimed that the parent lines of known hybrid varieties cannot be as a ‘new’ plant variety under the PPVFR Act. The Court held that if the hybrid comes under the category of ‘extant variety’ of which individuals have common knowledge, then its parental lines cannot be said to be novel.
In the case of , the Supreme Court set aside the order of the Delhi High Court that claimed that the patent by Monsanto Technology on BT cotton seeds was invalid as seeds cannot be patented under the Indian IP laws. Monsanto sold these genetically modified cottons in India in a joint venture with Maharashtra Hybrid Seeds Co., called Mahyco Monsanto Biotech (India) Ltd. (MMBL). This argument reached the Court when Nuziveedu Seeds Ltd. (NSL) continued to sell the genetically modified seeds even when MBBL had terminated its licence with NSL.The Supreme Court ruled out the order of the division bench and restored the order of the single judge bench.
In India, the semiconductor integrated circuits layout design is governed under the . This Act was passed to comply with the TRIPS Agreement. This Act protects the layout designs of semiconductor chips and integrated circuits that are broadly used in a range of electronic products from computers to automobiles. IP rights protect all these three dimensional designs of integrated circuits, including the positioning of the electronic components.
Under the SICLD Act the following definitions are of utmost importance:
A semiconductor integrated circuit is defined as “a product having transistors or other circuitry elements, which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function”.
The term ‘layout design’ is defined as “a layout of transistors, and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit”.
The term ‘commercial exploitation’ in relation to SICLD means “to sell, lease, offer or exhibit for sale or otherwise distribute such semiconductor integrated circuits for any commercial purpose”.
The examples of semiconductor integrated circuits layout design, in India, :
Diode, Gunn Diode, Schottky Diode, Solar Cell. Zener Diode, light-weight Emitting Diode (LED)
This includes-
This includes-
This includes-
Let us understand this pointer with the help of FAQs.
Instead of requiring the designs’ incorporation in a physical semiconductor chip, the SICLD Act, 2000, protects the layout design itself. Thus, this IP right eliminates the need for protecting the actual article. Section 17 of the SICLD Act describes the same in an explicit manner. Registration requires a 3D representation of the layout design and compliance with all other statutory requirements before the design is actually registered.
Integrated circuits are created with the human mind and carry a high economic value, so it is necessary that they are protected. These designs are multi layered complex pieces of technology. It takes a lot of time, energy and funding to come up with such efficient designs; hence, these designs, technologies and products have to be protected with the help of strict IPR laws that are specially drafted for such complex patterns.
Chips consist of several subparts, and since some of them may be novel in nature by themselves, several applications for patents to be granted or registered will have to be filed. Simply put, for every such novel component, material used, chip, etc., a different patent application will have to be filed. This technique will obviously be time consuming and not feasible when it comes to modern technological advancements like semiconductor integrated circuit layout designs. Also, patents have to be original, distinct and non obvious and since circuits are typically upgraded from earlier versions, newer layout designs fail to meet the standards for patentability. Most of these chips and designs will be excluded from the ambit of patent law as the layout designs are of a developmental nature instead of being creative in nature.. Thus, the SICLD Act, 2000, provides for sui generis protection.
There are no types of semiconductor integrated circuits layout design per se; however, there are 2 types of integrated circuit designs, namely:
The ownership for semiconductor integrated circuits layout design can be made by those individuals who to be the creator of the layout design, his legal representative, a person registered in the prescribed manner as a layout design agent or a person in the sole and regular employment of the principal, to be given in writing to the registrar in the prescribed manner. The application can be filed either alone or jointly. The application has to be filed with the territorial jurisdiction, i.e., a principal place of business in India of the applicant.
Once a layout design is registered, the proprietor gets the exclusive right to use the layout design and to obtain relief in case there is any infringement. This right is available to the registered proprietor of that layout design irrespective of whether the design was embodied in the article or not.
The registration of the layout design will only be for a period of 10 years that is calculated from the date of filing an application for registration or from the date where the first commercial exploitation began (anywhere in the country) whichever is earlier.
The process for registering semiconductor integrated circuits layout design is as follows:
Under this law, any act that includes reproduction, sale, import or distribution of integrated circuit layout design for commercial purpose is regarded as infringement. However, if such an act is carried on for the purposes of scientific evaluation, analysis, research or teaching, it will not be considered as an act of infringement. Further, if any individual commits infringement, he/she shall be punished with an imprisonment for a term that is extendable for up to 3 years or a fine that will not be less than Rs. 50,000/- and is extendable to Rs. 10 lakhs. At times, imprisonment and fine both can be applied as punishment.
No Indian cases can be found, hence cases from an international perspective are discussed for the understanding of the readers.
In this , the England and Wales High Court (Patent Court) held that the Plaintiff has failed to prove their claims of breach of confidence and copyright infringement. The Court further claimed that the Defendant had not breached the fiduciary duties to the Plaintiff.
In this , the Court ruled that a company (Renergy Micro-Technologies (Shenzhen) Co., Ltd.) must immediately stop infringing the exclusive rights granted to another Company- HiTrend Company. The Shanghai Court also claimed that the infringer must compensate the company with RMB3.2 million, considering the financial losses they sustained and also pay for the reasonable expenses they underwent to cease the infringement. Upon this judgement, the parties disagreed and agreed to accept the verdict and appeal to the Shanghai Higher People’s Court. The Court dismissed the appeal and upheld the original judgement.
A new form of IP that is being increasingly recognised is digital assets. This form includes-
The most common examples of digital assets can also include documents, audio, videos, logos, slide presentations, spreadsheets and websites. So, those materials have the potential to produce economic benefits.
Digital assets include but are not limited to:
and other relevant digital data that is in circulation, is, or will be stored on digital appliances like:
For instance, the need tree is said to have multiple uses in India and its usage is referred to as traditional knowledge. This application was mentioned in Indian contexts about 2000 years ago and is used for decades in agriculture, human and veterinary medicine, toiletries and cosmetics and also as an insect and pest repellent.
The major reasons as to why traditional knowledge has to be protected are as follows:
In India, the following laws and regulations protect the information passed on from generation to generation, a.k.a., traditional knowledge:
This Act deals with fundamental issues related to traditional knowledge like:
Under this Act, patent protection shall be granted for processes that are related to the use of assets (like microorganisms and plants or animals, etc.), and also for those processes that are known to indigenous areas which meet the same requirements.
Copyright protection can be given to those traditional knowledge holders whose imaginative demonstrative, mainly artists that belong to indigenous religious and indigenous groups, are protected from illegal reproduction and misuse of such demonstrations. The relationship between the creators/artists/authors and their work is being dealt with under moral rights in accordance with of the Copyright Act, 1957.
Under this Act, the rights of a plant breeder if he/she discovers a new variety of plant which is distinct, stable, uniform and novel can be protected and registered. PBR (plant breeder’s rights) can also be obtained based on traditional plant diversity.
Under this Act, all methods of producing commodities and those techniques who have undergone a change or have evolved with time to yield better results can be protected. Further, GIs can be used to protect therapeutic products in India.
India does not have an explicit statute that protects traditional knowledge and folklore, but it is a work in progress. The following are some of the noteworthy cases involving traditional knowledge.
Over the past centuries, this tree that is well known in India has been used as biopesticide and medicine. This tree, as we know, has several medicinal and healing properties and the same has been mentioned in several ancient Indian Ayurveda texts. The EPO (European Patent Office) withdrew its patent number 436257 that was issued to the United States of America and to the cosmopolitan business W.R. Grace for the Neem tree insecticide extracted from the seed. Despite neem’s properties coming from an ancient tradition, about 12 UD patents were recently withdrawn and all of these involved neem based emulsions and solutions.
In 1993, the University of Mississippi Medical Centre received patent rights for curing a wound by applying turmeric onto a wound of an individual. An application for reexamining such a registration form filed along with about 2 dozen mentions,which upshot in early success.
The USPTO (United States Patent and Trademark Office) granted RiceTec, an American company, the patent for Basmati rice. In India, this created a lot of chaos and a request for reexamination of such registration was filed, which made the USPTO understand that the core claims made by the company were irrelevant.
Mentioned below are some of the approaches initiated by the Indian government to protect traditional knowledge:
In 1995, there was an affiliation with the residents of Jardhar in Tehri Garhwal district
of Uttar Pradesh, the NGO Kalpavriksh started a movement to trace the diversity of indigenous seeds and conservation practices by the local community.
Honey Bee Network has the world’s largest grass-root novelty database. This network is run by SRISTI (Society for Study and Initiatives for Sustainable Technology & Institutions, Ahmadabad). The main motive of this network is to promote popular innovation, to protect IPRs for small innovators and to ensure that original innovators and information providers get the profit out of it.
Please note: Only the most important types of IPs are discussed, to serve academic purposes.
We know, intellectual property can be used for several reasons, like-
Further, these IPs, which are assets, cme in numerous shapes and sizes. Some assets do not have a physical presence (commonly known as intangible assets), but IP holds just as much value for corporations as that of tangible assets. Generally, patents involving logos or brand names which can be patented, registered and trademarked assist consumers in recognising popular companies and their products. Considering this, it becomes quite crucial for companies to take the requisite steps to protect such assets to prevent them from being misused or infringed by third parties.
Each type of IP comes with unique features and acts as a cornerstone for protecting these forms of innovation and expression. By learning about these types of IPs, including patents, trademarks, copyrights, trade secrets, plant varieties, etc., it is evident that IPs play an indispensable role in fostering innovation, safeguarding creators’ rights, and driving economic growth.
Generally, the individual who has created the work is regarded as the owner. Yet, intellectual property ownership can be said to vary depending on different types of property and under varying circumstances. For instance, if any work is created for an employer, the employer is regarded as the owner of that intellectual property. Further, there is a possibility that ownership rights can be transferred from one party to another.
What is the main object of intellectual property?
Intellectual property can be used for several reasons, like branding and marketing. Further, it is also used to protect assets that give a competitive edge over other similar or same businesses or products.
The Convention, WIPO (World Intellectual Property Organization) that established the word ‘intellectual property’ has provided quite a broad definition that intellectual property right shall include the rights related to-
Usually, an intellectual property is infringed without knowledge or intention, i.e., unwittingly. In order to avoid being sued for infringement of any intellectual property, one must ensure that their company or organisation is not using any material that is either copyrighted or trademarked. Further, they must ensure that the brand logo is not similar to or resembling another brand in a manner that would mislead someone to think it was the other brand. Additionally, when it comes to patents, it is always a good idea to carry out a patent search to ensure that any ideas are their own and not otherwise. If the scenario is the opposite, one must find ways to licence them through proper channels.
Word of advice: There are several IP lawyers (in India and abroad) that have specialised in the process of this and they ensure that you (their client) are not using anybody else’s protected intellectual assets. Moreover, if any individual is hired to do creative work for another individual or his/her company or organisation, they must ensure that the contract between both parties has an explicit mention that any creative material that is generated becomes the property of the company and not the individual who was hired to complete the task.
The following are some on types of IPs in India.
Correct answer: b
Correct answer: c
Correct answer: d
Correct answer: a
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Introduction
As the name suggests, the term ‘intellectual property’ is the creation of intellect, i.e., the human mind. It has the ability to protect the creation of the human mind and can be in any form, say, a logo, a new invention, any drawing, painting or piece of art, musical compositions, etc. Further, there are IP laws that help one (the owner) exclusively use his/her intellectual property and prevent others from using it without obtaining prior permission from the owner.
Moreover, intellectual property is an intangible (something that cannot be touched, seen or perceived) right that is exercisable in respect of a tangible work. Furthermore, one must note that there is a difference between ownership rights to a tangible product and the rights of an intangible nature. Let us understand this with the help of an example. Say, Ms. Radha has purchased a CD from a local market. Now, she has the right to own and possess the CD. She can also take action against any individual who possesses the CD without obtaining her prior permission. Simply put, the right of possession is the intangible right of the purchaser. Yet, Mr. Krishna, the composer of the music, will have several intangible rights over it, namely:
- The right to reproduce the music,
- The right to make copies of that musical composition, etc.
Also, one should note that these intangible rights of the composer are certainly not available to the purchaser of the music CD.
Additionally, there are several types of intellectual property, which are broken into two major categories, namely:
- Industrial property, and
- Copyright law.
Under these categories, the main types are segregated as:
Industrial property-
- Patents:
- Product patent, and
- Process patent.
- Trademarks,
- Industrial designs,
- Layout designs.
Literary property
- Copyright,
- Neighbouring rights:
- Performers rights, and
- Broadcasting rights.
In this article, an attempt is made to discuss all these important types of intellectual property in detail.
Copyright
What is a copyright: a brief overview
As the name suggests, a copyright is the ‘right to copy’. Simply put, the individual owning the copyright, i.e., the owner, has the exclusive right over the work and has the authority to make copies of the same. The Oxford Dictionary defines copyright as “the exclusive right to publish or record a work”. It can also be referred to as an intangible (something that cannot be touched) granted to the owner of any literary or artistic work for multiplying copies for a limited time period and publishing the same. In India, copyright provisions, rules, registration, etc., are dealt with by the .
Definition of copyright
of the Copyright Act, 1957, defines copyright as the exclusive rights to do or give permission to someone to do some things with regards to-
- Literary, dramatic and musical work,
- Artistic work,
- Cinematographic film, and
- Sound recording.
Let us understand this with the of an instance. Say, there is a boy named Dholu who is a writer and has written a book. In accordance with Section 14 of the Copyright Act, 1957, Dholu has exclusive rights over that work, meaning-
- Dholu can reproduce the book in any material form, so hard copy and soft copy, both publications are permitted.
- Dholu can further issue new copies of the book, share them with the public, and keep them for sale, and those copies do not necessarily have to be already in circulation.
- Dholu can perform his work in public or share it with the general public, say, by reading his book in public through a public reading or radio broadcast.
- Dholu can further produce a film or sound recording related to the novel.
- Dholu can also get the book translated and publish it in other languages.
- Dholu can adapt his novel into another form, like a screenplay.
- In relation to a translation or an adaptation of his work, Dholu can perform/follow any of the aforementioned acts.
Please note: If someone other than Dholu wants to do any of the aforementioned pointers to his novel, he/she may need to get his authorisation. If he/she does not follow this, there is a possibility that he/she is infringing on Dholu’s copyright.
Examples of copyright
Example of copyright: a general view
Let us take the example of an Indian author and novelist- Mr. Bholu. As per Section 14 of the Copyright Act, 1957, Mr. Bholu has exclusive rights to his , meaning:
- Mr. Bholu has the right to reproduce the novel in any form, including storing it in digital form or producing a soft copy, alongside the hard copy.
- Mr. Bholu has the authority to issue new copies of his novel to the public, not copies already in circulation.
- He can further perform his work in public or communicate it to the public, like via a public reading or radio broadcast.
- Mr. Bholu can also make a film or get a sound recording related to the novel.
- Mr. Bholu can also get the novel translated into regional and foreign languages.
- He can also adapt the novel into another form, like a theatrical or screenplay.
Further, with regard to the translation or adaptation of his work, Mr. Bholu can do any of the aforementioned acts. Also, if any other individual has to do any of the above acts, they have to get his prior permission. And if they do not, he/she could be infringing Mr. Bhlu’s copyright.
Examples of copyright gems of India
Cinematograph films
All the original scripts, dialogue, soundtrack, music and other creative elements involved in the movie are protected. For instance, movies like ‘Dilwale Dulhania Le Jayenge’ or ‘3 Idiots’.
Literary, dramatic or musical works
Literary work
Several original literary works, including novels, poems and essays of individuals like Rabindranath Tagore and Vikram Seth.
Dramatic work
A recent example of dramatic work would be the movie- ‘Oh My God’ an adaptation from a Gujarati play.
Musical work
Here, we can take the example of the very famous song ‘YAARAM’ which was originally written by Gulzar and composed by Mr. Bharadwaj. So, here, the copyright over the lyrics will belong to Gulzar, whereas the musical composition will be of the composer.
Original artistic work
Paintings, sculptures, drawings and other artistic works, including renowned personalities like M.F. Hussain and Raja Ravi Verma.
Sound recordings
Instances of sound recordings include songs by Indian musicians A.R. Rahman, Asha Bhosle, Lata Mangeshkar, etc.
Computer programmes
Copyright also safeguards software codes and other computer programmes, such as words, codes, schemes, etc. The famous software in the Indian market are companies like TCS and Infosys.
Characteristics/features of copyright
Originality
Copyright subsists only in cases of original work. Here, the term ‘original’ does not necessarily mean that the work has to be the expression of original or inventive thought; instead, it relates to the expression of the thought; however, it does not have to be in an original or novel form but must not be copied from any other work, meaning it should originate from the author. In other words, no copyright will subsist when it is in the form of any unauthorised reproduction of work or in a work which is not originated from the author.
Exclusive right
One of the most important features of copyright is that it is an exclusive right. It has a monopolistic effect, thus excluding other individuals from using it. Further, it is pertinent to note that even though the owner of the copyrighted work has a monopoly over the ‘work’, he/she does not have a monopoly over the ‘subject matter of such work.
Multiple rights
Copyright has numerous rights in the same work. Copyright law has assigned ownership of copyright with several other rights, like that of-
- Reproducing the work,
- Adaptations of the original work,
- Translation of the work, etc.
Negative rights
Under copyright law, the owner of the copyrighted content, i.e., the original work, is protected from others. Simply put, one does not have the authority to use the copyrighted work of the owner or the author without obtaining prior permission or consent. Further, as the right is prohibitive in nature, the same can be regarded as a negative right that is available to the author against others.
Exists in the expression of ideas, not just the idea itself
One cannot claim copyright for an idea. Copyrights can only exist in material forms wherein the ideas are expressed. One cannot say that their copyright was infringed simply because an individual adopted their ideas or concepts.
Types of copyright
Copyright consists of a broad of protections when it comes to various forms of artistic expression; listed below are most of them.
Literary copyright
This sub-category includes original and distinctive literary compositions. Literary copyright may consist-
- Scripts,
- Biographies,
- Novels,
- Academic theses,
- Technical manuals,
- Software codes, etc.
Dramatic copyright
Generally, theatrical compositions fall under this category and include-
- Scripts that are made for stage performers,
- Mime shows,
- Plays,
- Dance choreography and
- Any type of written work that is intended for live enactment.
Musical copyright
Under this sub-category, only musical compositions (to be registered with the Copyright Office) and not lyrics or sound recordings are protected.
Artistic copyright
This sub-category, among other artworks, includes:
- Paintings,
- Images and photographs,
- Designs made by architect,
- Sketches,
- Diagrams,
- Cartoons,
- Engravings,
- Graphics,
- Sculptures, and
- Blueprints.
Sound recording copyright
Under this sub-category, any form of sound that has been captured (or recorded), say podcasts, audible content, etc., is included. The owner who has such rights also has the right to-
- Sell or lease copies of recordings to other organisations or individuals,
- Broadcast the recorded audio to a wide variety of people,
- Produce other derivative works or recordings that are originally inspired by the original work.
Cinematographic copyright
This sub-category includes all types of visual recordings that display moving images and these images can be captured using any technique, be it analogue or digital and mostly include video films.
Choreographic copyright
This sub-category includes works that are intended to protect unique dance patterns, sequences, patterns, and other types of organised movement.
Architectural copyright
Here, the intellectual property of architects and designers is like that of buildings, architectural plans or blueprints, detailed drains of any structure, etc.
Software and computer programs
Under this sub-category, computer software and programs, from their foundational code to their user interfaces, can be protected. This, in turn, helps in ensuring that the intellectual effort behind developing a software solution is recognised and protected.
Compilations and databases
Here, compilations like encyclopaedias, directories or databases can be protected from copyright infringement.
Ownership of copyright
Term of copyright
The duration for which a copyright is protected depends solely on the type of copyright. It is explained under various sections of the Copyright Act. Let us learn about each of them with the help of some examples.
Section 22: Published literary, dramatic, musical and artistic works
In the case of published literary, dramatic, musical and artistic works, the copyright subsists for the lifetime of the author until 60 years from the beginning of the calendar year, next following the year the author dies, as stated under . In cases where there is joint ownership, the author who dies last will be taken into consideration.
Example
Let’s consider this situation. There is a man named Golu who is a novelist. He published a book in 1980 and died in 2000. As per Section 22, the copyright for Golu’s book will be until 2060, i.e., 60 years from the start of the calendar year when Golu died.
Now, let us make some changes to this scenario. Say, Golu, is the co-author of a book authored mainly by Molu, his classmate, who passed away in 2010. Here, the copyright will last for another 60 years, i.e., until 2070, as Molu was the last to survive among the authors of the book.
Section 23: Anonymous and pseudonymous work
Under , copyright for anonymous or pseudonymous work will subsist for 60 years from the start of the calendar year following the year when the work was first published. Further, if the identity of the author is made known before the expiration of the said period, the copyright will subsist for 60 years from the time the calendar year begins following the year in which the author dies. In cases where there is joint ownership, the author who dies last will be taken into consideration.
Example
Let us take into consideration a scenario where there is an anonymous author, ‘Ms. Ka’ who published a novel in 1960. As per Section 23(1), the copyright will last 2020, i.e., 60 years from the year it was first published. Now, the author decided to reveal her true identity in 1980, the copyright will last until 60 years from the beginning of the year following the death of the author.
Now, let’s take another scenario. Here, Mr. A and Ms. B published a book in 1960, whose identity remained anonymous. Then, Mr. A decided to disclose his identity in 1980 and died in 1990, and Ms. B decided to disclose her identity in 2000 and died in 2010. Now, as per Section 23(2)(b), the copyright will subsist until 2070, i.e., 60 years from the beginning of the year following the death of Ms. B, who was the last to die among the names of the disclosed authors.
Section 24: Posthumous work
Under , in the case of a literary, dramatic or musical work or engraving, wherein copyright subsists at the date of the death of the author or in the case of joint ownership, wherein the last author dies, and the work has not been published before that date, the copyright will last for 60 years from the beginning of the calendar year next following the year in which the work is first published. Further, if the adaptation of the work is published in an earlier year, the period starts from the year after the adaptation is published. Here, the term ‘published’ means it has been performed in public or if the recordings of the same have been offered or sold to the public.
Example
Let us assume there is a renowned playwright, Mrs. Verma, who died in 2020. She wrote a script titled ‘The Destination’ that was not published or performed while she was alive. However, in 2022, a theatre found this play and performed it for the first time. As per Section 24(1), the copyright of the script will continue until 2082, i.e., 60 years from the beginning of the calendar year following the year when the play was first performed.
Furthermore, let us say, Mrs. Verma had also written a musical composition titled ‘Track the Time’, which was unpublished or sold during her lifetime. However, she had made a sound recording of this track that was sold to a company after her death in 2021. Now, in accordance with Section 24(2), ‘Track the Time’ was published in 2021, thus, the copyright lasts for another 60 years, i.e., until 2081.
Section 25: Photograph
The same has been deleted via an amendment in 2012 and became effective on June 21, 2012. Prior to the Amendment, this Section would explain how long the copyright protection would last in the case of photographs.
Example
Let us take the example of Mr. Ghasitaram, who was a professional photographer. He clicked a unique photograph in 2002 and got it registered in accordance with the provisions of the Copyright Act, 1957. As per the original Act, the copyright for photographs will last for 50 years; however, the same was removed by the 2012 Amendment. So, now, if someone uses the photograph clicked by Mr.Ghasitaram without his permission he can claim copyright infringement.
Section 26: Cinematograph films
As per , the copyright for cinematograph films will last for 60 years from the beginning of the calendar year following the year in which the film is published.
Example
Let us take, for example, a scenario where there is a filmmaker, Mr. Karthik, who released a movie titled ‘The Stars of Bollywood’ in 1990. As per Section 26, the copyright of this film will subsist until 2051 (which can be calculated as follows: 1990, the year of publication + 1, the next calendar year + another 60 years = 2051. During this time, no person has the right to reproduce, distribute or display the film without obtaining prior permission from the filmmaker. And if someone does this, he/she will be liable for copyright infringement.
Section 27: Records
In accordance with in case of sound recording or records, a copyright will last for 60 years from the beginning of the calendar year following the year in which the sound recording is published.
Example
Let us consider this scenario. Mr. Swarr published a song in 1980 and as per Section 27, the copyright will last for 60 years, i.e., until 2040. In this situation, he has the right to reproduce, distribute and gain economic benefits from the song. After this, the song will enter public domain, thus anyone to use it without obtaining prior permission from Mr.Swarr or providing any sort of monetary compensation.
Section 28: Government works
says that in the case of government work, where the government is the first owner of the copyright therein, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published.
Example
Let us take the example of the Indian Government and an artist named Mr. Kalakar. Say, the Indian Government commissioned an artist in 2021 to create a unique sculpture for a public park. Mr. Kalakar successfully completed the sculpture, which was unveiled in 2022 to the general public. Since, the Indian Government is as the first owner of the copyright of the sculpture, the copyright will last for 60 years from the beginning of the calendar year following the year of first publication, meaning the copyright will subsist with the government until 2082.
Section 28A: Public undertakings
As per , in the case of a work where a public undertaking is the first owner of the copyright therein, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published.
Example
Let us take an example of a government publishing house who published one of the many books in 2020. As per Section 28A, the copyright of this book will be owned by the public undertaking until 2080. So, until 2080, the public undertaking will have the exclusive rights to reproduce, distribute, and adapt the work.
Section 29:International organisations
As per , in case of any international organisation to which the rules stated in apply, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published
Example
Say, WHO (World Health Organisation) published a health research paper on 1st July 2020. Now, as per Section 29, the copyright of this research paper is WHO until 2080, meaning no party, person, or individual has the right to reproduce, distribute or display the research paper without seeking proper permission from WHO. If they do so, it will amount to copyright infringement.
Registration of copyright
to discusses provisions for registering a copyright. Let us see what each Section says.
Section 44
Section 44 states that the Register of Copyrights must be kept at the Copyright Office.
Section 45
talks about eateries in the Register of Copyrights.
Section 46
states that indexes of the Registrar of Copyrights and indexes thereof shall also be kept at the Copyright Office.
Section 47
Under , forms and the Register of Copyrights and indexes thereof must be kept open to inspection at all reasonable times and any individual is entitled to take copies of the same or extract information from the same, provided the requisite fees to obtain the same are paid.
Section 48
discusses the Register of Copyrights, which has to be prima facie evidence of particulars entered therein.
Section 49
talks about correcting eateries (like changing the name, address, particulars or any errors that occurred accidentally) in the Register of Copyrights
Section 50
discusses the guidelines related to the rectification of Register by Copyright board.
Section 50A
Section 50A deals with eateries made in the Register of Copyrights, etc., that must be published. It says that any work entered upon under Section 45 or the correction of every entry thus made under Section 49, and every change made under Section 50 shall be published by the Registrar of Copyrights in the official gazette or in such other manner as they deem fit.
Infringement of copyright
Fair dealing/fair use: exception to copyright infringement
and discuss acts that are regarded as fair dealing of any copyrighted work. Fair use or fair dealing can be referred to as using copyrighted material of any other individual for specific purpose, like-
- Research,
- Criticism,
- Review,
- Reporting current events,
- Current affairs,
- Giving lectures in public, etc.
Simply put, fair use or fair dealing means reasonable use. One must note that, whether or not an act comes under the category of fair dealing or fair use, would solely rely on the facts of that particular case; so there is no hard and fast rule per se to clever which all acts would come under the category of copyright infringement. The doctrine of fair use or fair dealing has some limitations to the extent to where it can be applied, they are as follows:
- The nature, extent and quantum of use of the copyrighted work.
- The main object behind using or including the work- whether it is for commercial or non-commercial purposes.
- The likelihood of competition between the copyrighted work and the original work.
- The impact the usage of the copyrighted material would have on the potential market value of the copyrighted work.
Civil remedies
discusses the civil remedies available to the owner, viz.,
Injunction
This means restraining an individual by way of injunction from doing the act of infringement.
Damages
Here, infringing the copyright will attract a penalty in monetary form. There are two types of damages, namely:
- One for infringing copyright, and
- The other for converting copyright work into another form of work.
Accounts of profits
This relief is provided to restrict the unjust use of the copyright by the Defendant. Here, the owner of the copyright has the right to ask for profits which the infringer or Defendant earned by using the copyrighted material of the owner.
Damages for conversion
In addition to the aforementioned pointers, in the event that any individual converts the copyrighted work in any form without obtaining prior permission from the owner, the infringer is liable for damages. Such an act may attract a penalty relating to-
- Criminal remedies (imprisonment from 6 months to 3 years, a fine, at times both), and
- Administrative remedies (rights granted to authorities like the Registrar of Copyright, the Copyright Board and the Copyright Societies).
Criminal remedies
Infringement of copyright despite having proper knowledge of the copyright
Under , if a person having knowledge of a particular copyright, decides to infringe it anyway (the only exception being the resale of share rights in original copies under Section 53A), they will have to face imprisonment between 6 months and 3 years and a fine not less than ₹50,000/- and up to ₹2 Lakhs.
Second and subsequent conviction
Further, under , for second and subsequent conviction, the penalty includes a minimum of 1 year and a maximum of 3 years of imprisonment, a fine of a minimum ₹1 Lakh and a maximum of 2 Lakhs.
Using or infringing copies of computer programs
Additionally, under , if any person knowingly uses or infringes copies of computer programs, there could be a minimum jail time of 7 days and a maximum imprisonment of 3 years, a fine of a minimum ₹50,000/- and a maximum ₹2 Lakhs.
Making false entries
Under , if an individual makes false entries in the Register of Copyright, etc., for producing or tendering false entries, the penalty is imprisonment of up to 1 year or fine or both.
Making false statements
Under , making a false statement for deceiving or influencing any authority or officer, the penalty is imprisonment of up to 1 year, a fine or both.
Publishing a sound recording or video film in violation of Section 52A
Under , publishing a sound recording or a video film that is against (that talks about video and audio piracy) will attract imprisonment of up to 3 years and a fine.
Possessing plates/other materials used for making copies of the infringed material
Under , if an individual possesses plates or other materials that are used for making infringing copies, the individual may be charged with an imprisonment of 2 years and also a fine.
Landmark cases related to copyright
Literary work
In University of London Press vs. University of Tutorial Press [(1916) 2 Ch 601], it was that examination papers are considered to be original literary work as the person who makes the question paper invests their labour and skill into making it. Such a person is said to be the author of the question paper and the copyright of such a paper will vest in him/her.
Further, in the case of Zee Telefilms Ltd vs. Sundial Communications [(2003) 27 PTC], the Bombay High Court held that even the concept notes that were made in relation to a television film, that have characters, notes, plots, sketches, etc., will fall under the category of literary work.
Dramatic work
In one case [ ], the England and Wales High Court (Chancery Division) held that a photograph that has no involvement of movement or action cannot be treated as dramatic work.
Musical work
In , the Delhi High Court held that musical work is not simply a combination of melody and harmony or either of them, rather, it has to be printed, reduced to writing or graphically be produced or reproduced to copyright.
Cinematograph film
In the case of , the Delhi High Court held that any kind of video as well as television both come under the purview of cinematograph film. Simply put, cinematograph film is not simply related to the movies played in cinemas or theatres.
Ownership of copyright
In the case of Donoghue vs. Allied Newspapers [(1937) 3 All ER 503], the Court set forth a clarification that the originator of a brilliant, noteworthy idea is not the owner of the copyright in a work, unless he/she is also the creator behind that work. So, if an individual discusses one of his/her top notch ideas with another individual and that person copies the idea and converts it into a book, play, movie, etc., the latter will be regarded as the owner of the work as opposed to the former, the one who gave the idea. In other words, the one who merely spoke about a concept- the originator has no right or ownership in the product where copyright subsists.
In yet another case of , the Kerala High Court held that if a cartoonist draws any cartoon after he/she is terminated by the employer of a magazine company, the proprietor has no right whatsoever to claim copyright.
Term of copyright
In the case of , the Delhi High Court held that in accordance with Section 22 of the Copyright Act, the copyright in the work of the grandfather will not subsist 50 years after his death.
Registration of copyright
In , the Delhi High Court held that a copyright exists irrespective of whether it is registered or not. The Court further claimed that registration is merely a piece of evidence as to when the author claims his/her ownership over artistic or some other work.
Infringement of copyright
In one of the most recent cases [Bombay Private Limited vs. Feel Good India and Anr.], the infringement of copyright with regards to artistic form consisting of label marks was established. Here, a pharmaceutical company manufactured cough syrups titled ‘Adulsa-Plus Cough Syrup’ and ‘Ayusas-Adulsa Cough Syrup’. The Court appointed a court receiver and reached the inference that the Defendant had not only infringed on the work of the Plaintiff but also attempted to discard goods from their factory and further mislead the Court. The Court passed an order that the Defendant pay a cost of ₹ 25 lakh.
Then, in yet another case [ ], the Supreme Court of India held that it is not crucial that an alleged infringement be the exact replica of the original work, but rather that the similarities between the original and the alleged infringed work are sufficient as an indication to claim that the same is a copy.
Trademark
What is a trademark:a brief overview
Basically, a trademark can be defined as a ‘mark’ that distinguishes goods and materials belonging to one individual from that belonging the another. In simple words, a trademark is said to be a visual symbol or a sign in any form, be it a device, a word or even a label for that matter that is used for identifying specific goods and/or services supplied by others. Also, the trademark or symbol can be in any form, including a combination of drawings, pictures, colours, words, letters, numbers, etc. For instance, the trademark of soaps like ‘Lux’ and ‘Rexona’ are identified by their names (trademarks), even though both deal with a similar type of product, i.e., soap.
Further, we can say that a trademark is a marketable and commercial asset of the owner. It is a type of intellectual property that has several rights. As opposed to a copyright that has a limited time period, a trademark is available to its owner for perpetuity. In India, any issue related to trademarks is dealt with under the .
Definition of trademark
As per Oxford Dictionary, a trademark is defined as any distinguished symbol that helps the general public identify a particular product of a trader. The symbol may include a device, words or a combination of them. Further, of the Trade Marks Act, 1999, defines the term ‘mark’ as anything that includes:
- Device,
- Brand,
- Label,
- Ticket,
- Name,
- Word,
- Signature,
- Letter,
- Numbers or numerical,
- Shape of goods,
- Packaging or combination of colours or any combinations thereof.
Further, Section 2(1)(zb) says a trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one individual from that of others and may conclude:
- Shape of commodities,
- The packaging, or
- A combination of both.
Examples of iconic trademarks from India
There are two types of trademarks: registered and unregistered. Let us understand this with the help of some examples.
Registered
In India, some of the most famous registered trademarks are as follows:
- The brand name- Amul, known for dairy products, etc.,
- The brand Kingfisher (known for its beer and other commodities),
- The name and design of the car-Tata Nano,
- The brand name and logo of Patanjali.
Unregistered
In India, some of the most famous unregistered trademarks are as follows:
- Basmati rice (considered generic, so not registered),
Interesting fact: In 1977, RiceTech Inc., an American company, got Basmati Rice . However, it is considered a public right instead of a private right and no trader or individual can exclusive rights to using its name.
- Alphonso mangoes (known as ‘Hapus’).
Characteristics/features of trademark
Based on several judgements, the following are some of the key characteristics of a trademark:
- The definition of ‘mark’ and ‘trademark’ in themselves consist of a name under which goods, articles and commodities are sold (say, the usage of corporate names like ‘Bajaj’ or ‘Godrej’ or ‘Kirloskar’ are allowed).
- A trademark is a mark like that of a label, signature, number, letter or a combination of all or any of them.
- Trademark is a type of intellectual property and is liable to receive protection under the Trade Marks Act (or in accordance with the law).
- A trademark is capable of being represented in a graphical manner.
- A trademark must be used (or proposed to be used) in a manner that is related to the goods or services thus provided.
- Preferably, a trademark must be an invented word.
- A trademark must show some type of nexus (a connection or link between the product and the trademark) between the goods and/or services thus provided and the mark.
- It may consist of the shape of goods and their packaging or a combination thereof.
- It should give a proper description of the goods and/or services the product is thus offering, i.e., the name should be suggestive enough. For instance, The Beauty Shop has products related to beauty.
Types of trademark
Even though a trademark could be in any form, i.e., well known trademark, a house mark, name of a brand, collective mark, certified mark, etc., there are two basic types of trademark, as discussed above in examples. Let us take a look at both of them.
Registered and unregistered trademark
Registered trademark
Basically, as the name suggests, a registered trademark is one whose name is registered under the Trade Marks Act, 1999. In accordance with Section 2(1)(w) of the Trade Marks Act, 1999, a registered trademark means any trade mark that is actually on the register and remains in force. Any usage of such a mark without obtaining prior consent from the owner of the mark may lead to the owner bringing an action of infringement against such a user.
Unregistered trademark
An unregistered trademark is one that is not registered under the provisions of the Trade Marks Act, 1999. This type of trademark is also addressed as a ‘common law mark’. There are numerous unregistered trademarks in India, maybe more than the registered trademarks. It is pertinent to note that, even though such a mark may not be registered, the owner of the mark has common law rights and will have the legal right when it comes to passing off the goods and hence, the owner can restrain the unauthorised use of such a mark, thus protecting the mark from being used or exploited.
Categories of trademark
Service mark
A service mark is a mark that is available in respect of services provided. Some instances of financial marks include-
- Financial services,
- Hospitality services, etc.
Property mark
A property mark is a mark that is used to indicate that a certain movable property belongs to a specific individual. It denotes the ownership of such a property.
Associated trademarks
As the name suggests, an ‘associated mark’ is a mark that is associated or joined to another mark. The most common of associated marks include the following:
- The marks of Pidilite Industries Limited (PIL), i.e., FEVISTIK, FEVICOL, etc., all have the same prefix ‘FECI’.
- Another example would be Amul Label for ice cream, milk and milk products.
Certification trademarks
Generally, a certification mark that the products and services have undergone proper testing when it comes to quality, durability and stability.
Collective trademarks
A collective trademark or collective mark can be described as a trademark owned by its members to identify themselves with a level of quality or accuracy, geographical origin or any feature set forth by a company or organisation.
Existing registered trademark
An existing registered trademark can be defined as a mark that is registered under the , immediately before the Trade Marks Act, 1999, came into existence.
Jointly owned trademark
In accordance with of the Trade Marks Act, 1999, in the case of joint ownership, the relationship between the joint owners is such that both parties, organisations or entities can make use of the trademark together; however, neither of them has the right to be the absolute owner of the trademark.
Ownership of trademark
A trademark owner can be any person, business organisation, or legal entity. A trademark can be located on any package, a label, a voucher or on the product itself.
Term of trademark
Interestingly, the most unique feature of a trademark is its perpetual life. Even though it has to be initially registered for a period of 10 years, it can be periodically renewed and can be used for an indefinite duration, with the exception that it is removed from the register or prohibited by a court order. It is pertinent to note that the first trademark that was registered in the UK under No. 1 of 1876, consisting of a red equilateral triangle and related to alcoholic beverages, is still in force to date.
Registration of trademark
Registering a trademark is important because it helps protect the proprietor’s rights. The rights given after registering a trademark are available to the proprietor for an indefinite time period by merely renewing the same, as opposed to other intellectual properties like patents, designs, copyrights, etc.
- to discusses provisions related to the registrar and the conditions for the registration of a trademark.
- Further, to talk about the procedure and duration of registration.
- Additionally, to discuss the effect of registration.
Infringement of trademark
of the Trade Marks Act, 1999, discusses provisions related to the infringement of a copyright. The essentials of trademark infringement are as follows:
- The infringement is similar to or same as a trademark that is already registered.
- The mark is used in the course of a trade.
- The infringed mark is much more likely to cause confusion on part of the public.
- The infringement can even be by way of spoken words.
- Infringement may also occur due to visual representation.
Remedies for copyright infringement
Civil remedies
The 3 basic civil remedies that are available to the proprietor in case of infringement are as follows:
- Injunction-
- Ex parte injunction,
- Interlocutory injunction.
- Damages or accounts of profits,
- Delivery of infringing labels and marks for destruction and erasers.
The remedies are discussed under and of the Trade Marks Act, 1999.
Criminal remedies
Criminal remedies are discussed under to of the Trade Marks Act, 1999. The criminal remedies include:
- Forfeiture of the goods ( ), and
- Costs of defence or prosecution ( ).
The other remedies are penalties for
Under Section 102 and Section 103, the penalty for falsifying and falsely applying a trademark is minimum imprisonment for 6 months, maximum imprisonment of 3 years and a fine.
- Under , the penalty for selling any commodities or goods or for services where a false trademark or false trade description is given is minimum imprisonment for 6 months and a maximum imprisonment of 3 years and a fine.
- Under , the penalty for falsely representing a trademark as registered is imprisonment up to 3 years or a fine, at times, both.
Administrative remedies
Apart from the civil and criminal remedies available to the proprietor, the Trade Marks Act, 1999, also grants certain powers in the hands of administrative authorities to provide relief and remedies to anyone whose rights were infringed upon or aggrieved or to those individuals or organisations whose trademark was infringed. Thus, such powers may be exercised in respect of-
- Under , classifying goods and services for registration.
- Under Section 8, publication of alphabetical index for classification of goods and services.
- Under to , granting or refusing to register a trademark.
- Under and Chapter VII, correction and making amends in the Register.
- Under , renewal, removal and restoration of registration.
- Under , assignability and transmissibility of trademarks that are registered.
- Under , registration of assignments and transmissions.
Landmark cases one must know related to trademark
First case
One of the first landmark judgments for filing a trademark related case was the ‘Whirlpool case’ and the case title was , wherein the Supreme Court gave its judgement relating to passing-off action.
Please note: There is no explicit definition of the term ‘passing off’ in the Trade Marks Act; however, it has been mentioned in several Sections of the Act, like:
- ,
- Section 27,
- Section 134, and
- Section 135.
The courts have drawn its meaning from common law. Basically, passing off occurs when a mark is not only deceptively similar to that of the other mark but also creates some sort of confusion among customers that will ultimately result in damage to the goodwill and business of the owner whose trademark is not registered. The main purpose of passing off action is to ensure that no owner’s rights, goodwill or reputation are affected or exploited just because they have not registered their trademark.
Trade name
In , the Supreme Court stated that a trade name must be descriptive enough so as to indicate the link or relation between the goods and the mark. Thus, if a monogram (a symbol made up of a person’s initials) relating to a trade name is not descriptive enough to show that there is a relation between the product and the mark of a specific marketing company, one cannot say that it is a trade name of a marketing company.
Inventive trademark
In the case of Anglo French Drug vs. Hony-N-Bois 1989 PTC 289 (Bombay), the Court held that the registration for the term ‘Hepasyp’ for ayurvedic medicine was denied because it consisted of the deceptive words ‘hepa’ meaning liver and ‘syp’ having an obvious meaning syrup, which described the product for ailments related to the liver.
Registration
In the case of , the Calcutta High Court held that distinctiveness must be ascertained as it is at the date of application for registration.
Infringement
In , the Bombay High Court held that the Plaintiff was a registered proprietor of the trademark “M-SEAL”. The Defendant adapted and used the mark “SM SEAL” with all the important features of the trademark “M-SEAL”. The Court held that the Defendant’s usage of impugned marks was creating a lot of confusion and deception. The Court passed an order restraining the Defendant from using the trademark “SM-SEAL”.
The Delhi High Court in the case of , passed an order restraining the Defendant from using the trade name “PLAY WAY” on the basis that the Defendant has adopted the word “PLAY” which is the heart and soul of the name of the magazine owned by the Plaintiff titled “PLAYBOY” with the main objective of exploiting the trade on its goodwill and widespread reputation.
In , the Court of Appeal in Jamaica made an observation that a mark can be said to be infringed by another trader in case he/she even without making use of the whole of the mark or even anything related to the goods. Instead, even if the trader uses one or more of the distinct features of the mark or goods, it will result in infringement. The focus must be on the sound and significance of the words used in the mark.
In yet another case ( ), the Supreme Court stated that when it comes to two marks that are identical to each other, one can say, there was an infringement. The Court claimed that when two marks are identical, no further question arises as to whether an infringement is made thereof.
Patents
What is a patent: a brief overview
As per Indian law, a patent is an exclusive right, privilege or monopoly that is granted to an inventor to make use of his/her innovative techniques or scientific talent and gain profit from the same. The main purpose of this system is to motivate individuals to invest in new techniques or make proper use of scientific innovation by promoting their protection and utilisation so as to contribute towards the progress of industries. This, in turn, contributes to promoting technological advancements and to the transfer and dissemination of technology. As per the system, patent rights make sure that the owner has property rights (also legal title) over their invention and the owner can make full use of the patent system and the pros the system and grant come with.
Please note: Patent rights are territorial in nature, which is why an inventor has to file different applications for patent registration in different countries.
Additionally, a patent can also be referred to as a ‘government licence’ which provides the owner/holder with exclusive rights to a process, design or new invention for a specific period of time.
Definition of patent
The term ‘patent’ comes from the Latin phrase ‘patene’, meaning ‘to open’. There is no comprehensive definition of this term; however, it is defined under Section 2(m) of the , as “a patent granted under the Act and includes for the purpose of sections , , , , , , , , , , , , , , , , , , , , , and Chapters XVI, XVII and XVIII, a patent granted under the .
Examples of patented creations of India
In India, some of the most famous patented creations are as :
- Patanjali Ayurvedic Products (has its main focus on Ayurveda and traditional medical systems).
- Bharat Biotech’s Covexin (a national COVID-19 vaccine that helped curb this deadly disease).
- Frugal Engineering Philosophy (a company developed by Tata Motors with the primary goal of building outstanding quality automobiles at prices that are considerably reasonable.)
Characteristics/features of patent
The following are some of the of patent:
- Not only the product but also the process can be patented as per the Patent Act, 1970.
- The invention has to be useful and novel and must be something that is not obvious.
- The patent must be capable of being used in the industry and if not, the same may amount to the patent being revoked.
- The invention must be new and should not be a form of Section 3 and Section 4 that discuss exceptions of ideas that cannot be patented.
- In cases of disparity, there are fast track mechanisms established that will help resolve the issue and dispose of the appeal.
Types of patent and patent application
Types of patent
In India, there are types of patents, namely:
Utility patents
This is one of the most common types of patent in India. It includes any type of invention or innovation in a product, process or even a machine. It is also addressed as ‘patent of inventions’. So, if anyone has innovated a new type of electric vehicle or any machinery that is related to solar power, he/she/they can apply for a utility patent.
Plant patents
To protect a new variety of plants, inventors obtain plant patents. This is one of the most important types of patents in India and is known to protect new plant hybrids and organically discovered plants. For instance, a type of African violet, a new type of almond tree, etc.
Design patent
A design patent is a patent that is known to protect any aesthetic looking goods that were produced or manufactured. Basically, design patents protect surface ornamentation of the product. In simple words, it protects the look of the product. So, an individual or organisation can apply for a unique shape or design and claim ownership of the same once the patent is granted. Further, if one wants to claim exclusive rights over any functionality of a particular product, one must file an application form for a utility patent. Design patents are pocket friendly in comparison to plant and utility patents. An instance of a design patent would be the bottle designed by Pepsi, which is known for its unique shape, look and feel.
Types of patent application
In India, there are 7 types of patent application, namely:
- Provisional patent,
- Ordinary or non provisional patent,
- Conventional Application,
- PCT International Application,
- PCT National Phase Application,
- Application for Patent of Addition,
- DivisionalApplication.
Ownership of patent
Under of the Patent Act, 1970, the following individuals can apply for a patent and eventually get their invention patented, thus granting them ownership rights:
- Any individual who is claiming to be the true and first inventor.
- Any individual who is the assignee of the aforementioned individual and one who has the right to make such an application.
- Any individual who is the legal representative of any deceased person who just before his/her death, was entitled to make such an application.
Please note: An application for patent registration may be made either alone or in a joint manner which includes any other individual.
Term of patent
As per Section 53 of the Patent Act, 1970, talks about the term of patent. It stated the following:
- When it comes to any invention that claims patent right for the method or process of manufacturing a particular substance, where the substance is intended for use or has the ability to be used as food, medicine or drug, the term would be 5 years from the date the patent was sealed (i.e., the date the patent was sealed by the Patent Office), or 7 years from the date of patent, i.e., the date when complete specification was filed, whichever period is shorter.
- When it comes to other inventions, the term would be 14 years from the date of patent.
Now, after the Patents (Amendment) Act, 2002, the provision says:
- For every patent granted after the above Amendment was carried on, the term of patent shall be twenty years from the date of filing of the application for the patent.
- It further says, if the requisite amounts or fees are not paid to renew the patent, the patent shall not be entitled to be protected further.
Registration of patent
In order to register a patent, one has to follow the following steps:
Step 1:File an application in the patent office.
Step 2:Provisional/complete specification should be filed.
Step3:Acceptance of Specification.
Step 4:Publication of Application.
Step 5:Request for Application.
Step 6:Examination and Report of Examiner.
Step 7:Approval.
Or
In case there are any objections, there will be a division of application and then amendment after opposition or objection, then the patent will be granted/approved.
Sections that discuss registration
The sections related to the application or registration of a patent are as follows:
Section 6
talks about the individuals who have the right to apply for a patent.
Section 7
discusses the form of the patent application.
Section 8
lays down special provisions that are required when it comes to foreign applications.
Section 9
discusses provisional and complete specifications.
Section 10
includes the content required at the time of filing provisional and complete specifications.
Section 11
talks about publication and examination of applications.
Infringement of patent
Infringement of patent:the basics
Acts that amount to infringement of a patent
The following acts will amount to infringement of a patent:
- If an individual or company has actually produced the patented article without obtaining prior permission from the patentee.
- If the individual or organisation uses a patent process without seeking consent of the patentee.
- If any individual uses, exercises, sells or distributes any patented article or process without having any lawful authority to do so.
Acts not amounting to infringement of a patent
The following acts do not amount to infringement:
- There was an innocent use of the patented material or process.
- The use was for experimentation and instruction purposes.
- The use was for invention in foreign vessels.
Remedies for infringement of a patent
A patentee, licensee, assignee, or the co-owner has the authority to file a suit within 3 years from the date of infringement. The individual(s) can seek the following remedies:
Declaration
In accordance with the , a patentee may claim a declaration stating that the act of the infringer must be said to be unlawful and that there be a declaration that the patentee receives compensation for the act of infringement.
Injunction
Further, relief of injunction can be claimed under Section 38 of the Specific Relief Act, 1963. Thus, a perpetual injunction (commonly known as a permanent injunction) is granted against the infringer in the Civil Court.
Damages
The patentee has the right to seek liquidated or unliquidated damages from the infringer.
Accounts for profit
Whatever profit has been incurred by the infringer while infringing the patent, a patentee may claim that the same be transferred to their account.
Certificate of validity
The patentee may also seek remedy from the court that the certificate in his favour be issued, declaring the validity and duration of the certificate in favour of the patentee to safeguard the interest of the patentee.
Cost
The patentee also has the right to claim cost for the expenses incurred for filing the lawsuit for patent infringement in accordance with the provisions laid down in the , and Civil Manual. The court may allow appropriate costs to the patentee if he/she claims for the same.
Defences available in the lawsuit filed for patent infringement
The Defendant in a lawsuit filed against him/her may take any or more of the following defences:
- The patentee has no right to sue for patent infringement.
- The allegainstions made by the patentee are false and frivolous in nature.
- The invention was used by obtaining prior permission of the patentee or on licence.
- The principle of estoppel or res judicata is pleaded.
- The claims to be infringed are invalid.
- The existence of a restrictive contract is declared unlawful.
- The act of infringement is actually within the ambit of innocent infringement or is done when the term of patent has lapsed.
- The alleged infringement is not novel or obvious.
Offences and penalties for patent infringement
Section 118:Contravention of secrecy provisions
If any individual does not comply with the provisions mentioned under section 35 or makes or causes an application for grant of a patent against the provisions laid in Section 39, he/she shall be punished with 2 years imprisonment or a fine, at times, both, as stated under .
Section 119:Falsification of entries in register, etc.
Under Section 119 of the Patent Act, 1970, if any individual makes a false entry in the register and tenders or produces such entries, then he/she shall be liable to 2 years imprisonment or a fine, at times, both.
Section 120:Unauthorised claim of patent rights
Under , if there is any unauthorised claim of patent rights, there is a penalty of a fine of up to 1 lakh rupees.
Section 121:Wrongful use of words ‘patent office’
Under Section 121, an individual may face a 6 months imprisonment or fine, at times, both, if he/she wrongfully uses on his place of business or any documentation thereof the words ‘patent office’ or any such words that would mislead someone to believe that his place of business is or is officially connected to the patent office.
Section 122:Refusal or failure to give information
Under , if an individual denies or fails to supply the requisite information as required under Section 100(5) and Section 146 regarding working of patent, he/she shall be punishable with a fine that could extend to 10 lakh rupees.
Section 123
ractice by non-registered patent agents
Under , if any individual does not comply with the provisions laid down under Section 129, he/she shall be punishable with fine that may extend to 1 lakh rupees in case the offence is carried on for the first time. Further, the fine will be up to 5 lakh rupees in case of a second or subsequent offence.
Section 124:Offences by companies
Under , is applicable to companies, corporate bodies or any organisations that may commit an offence under the provisions laid down in the Patent Act, 1970. Basically, this Section ensures that legal entities as well as individuals (director, manager, secretary or other officer of the company) are held responsible for their actions.
Landmark cases one must know related to patent
Objectives of patent
In the case of , the Supreme Court held the following are objects of patent law:
- To encourage scientific research;
- To encourage new technology;
- To encourage industrial progress;
- To grant exclusive privilege to have ownership, use or sell the patented method or product for a limited time period; and
- To stimulate new inventions of commercial utility.
The Court further stated that patents are granted only for inventions that are new and useful. They must have novelty and utility. It also must be the discovery of the inventor itself.
Ownership of patent
In , the Allahabad High Court held that a firm also has the right to patent as assignee.
Defences available in the lawsuit filed for patent infringement
The Delhi High Court, in the case of , held that every ground upon which a patent could be revoked will be made available as a ground for defence.
Geographical indications (GIs)
What are geographical indications: a brief overview
GI is a sign that is used on goods that carry a special geographical origin and possess qualities, reputation or features that are essentially attributable to that place of origin. Generally, a GI includes the name of the place of origin of the goods. Before the commencement of the , there was no law as such that safeguarded any agricultural goods, natural goods, handicrafts, manufactured goods, foodstuffs, etc. in order to protect GIs, especially as India had ratified the TRIPS (Trade Related Intellectual Property Rights), under which, until and unless a GI is protected in the country it was originated, there can be no obligations on other countries of TRIPS to extend such reciprocal protection.
Definition of geographical indications
As per Section 2(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999, ‘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 the 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.”
The simple explanation of this will be any name that is not the name of a country, region or say, a locality of that particular country shall also be regarded as the geographical indication if it relates to a specific geographical area and is used on or in relation to particular goods that originated from that country, region or locality as the case may be.
Who is a producer when it comes to GIs
A ‘producer’ includes-
- Any individual who manufactures goods when it comes to agricultural goods, including the individual who processes or packages such goods;
- Any individual who exploits the goods, in case of natural goods;
- Any individual who makes or manufactures handicraft or industrial goods;
- Any individual who trades or deals in the production, exploitation, making or manufacturing of goods.
Examples of unique geographical indicators in India
Some examples of geographical indicators (GI tags) as follows:
| Products | Category | State/Union Territory |
| Rasagola | Foodstuff | Odisha |
| Paithani Saree and Fabrics | Handicraft | Maharashtra |
| Vazhakkulam Pineapple (now merged With Application No. 130) | Agricultural | Kerala |
| Feni | Manufactured | Goa |
| Nashik Valley Wine | Manufactured | Maharashtra |
| Surat Zari Craft | Handicraft | Gujarat |
| Santipur Saree | Handicraft | West Bengal |
| Puneri Pagadi | Handicraft | Maharashtra |
| Bydagi Chilli (or Bedgi Mirch) | Agricultural | Karnataka |
| Gadwal Sarees | Gadwal Sarees | Gadwal Sarees |
| Bikaneri Bhujia | Foodstuff | Rajasthan |
| Lucknow Zardozi | Handicraft | Uttar Pradesh |
| Hyderabad Haleem | Foodstuff | Telangana |
| Berhampur Phoda Kumbha Saree & Joda | Textile | Odisha |
| Kaipad rice | Agricultural | Kerala |
| Moirang Phee | Textile | Manipur |
| Arunachal orange | Agricultural | Arunachal Pradesh |
| Kullu shawl (logo) | Textile | Himachal Pradesh |
| Leather toys in Indore | Handicraft | Madhya Pradesh |
| Ratlami sev | Foodstuff | Madhya Pradesh |
| Kolhapur lemon | Agricultural | Maharashtra |
| Waigaon turmeric | Agricultural | Maharashtra |
| Kolhapur jaggery | Agricultural | Maharashtra |
| Screw Pine Craft of Kerala (Logo) | Handicraft | Kerala |
| Shahi Litchi | Agricultural | Bihar |
Some basics to know on geographical indications
Can GIs only be used for agricultural products
The use of GIs are not limited to agricultural products per se. As per the Geographical Indications of Goods (Registration and Protection) Act, 1999 (or Indian law), the protection to GI is not only limited to handicrafts and agricultural goods but also extends to manufacturing goods. Further, GIs may also shed light on the qualities of a product that are due to human factors associated with the place of origin of the products, like some special manufacturing skills and traditions. One must note that the place of origin could be a village, a town, a region or even a country. So, to answer the above question, no, GI is not limited to agricultural products and extends to food products, handicrafts, etc.
Why do geographical indication need protection
Usually, GIs are recognised by consumers to denote the origin and quality of products. Say, Alphonso mango (or Hapus Amba) from Ratnagiri. A lot of these products have acquired valuable reputations, which, if not protected properly, may lead to misrepresentation or dishonest commercial operations. False use of GIs by parties that are not entitled to get them may be detrimental to consumers and legitimate producers. Here, consumers are misled into believing that they are getting a genuine product, whereas the truth is that they are being deceived into believing the same and are getting an imitation. In such a scenario, legitimate producers are deprived of valuable business and the established reputation of their product is damaged.
What are the key differences between GIs and trademark
Basically, a trademark can be said to be a sign that is used by an individual to distinguish its goods and services from those of other individuals. It provides the owner with the right to exclude others from using its trademark. Further, a trademark will most often than not consist of a fancy name or device.
On the other hand, a GI tells consumers that a product manufactured in a certain place has some features that are linked to that place of production. A GI may be used by producers who make their product in that particular location designated by a GI and whose products share specified qualities.
As opposed to a trademark, the name used as a GI is generally predetermined by the name of the place where it was produced. Some of GIs in relation to this pointer are:
- Kashmir Pashmina from Jammu & Kashmir,
- Darjeeling tea from West Bengal,
- Nagpur Orange & Paithani Saree and Fabrics from Maharashtra,
- Kanjeepuram sarees and Nilgiri tea from Tamil Nadu, etc.
Characteristics/features of geographical indications
The main purpose of getting a GI is to exclude unauthorised individuals from misusing GIs. Registering GIs in turn will protect consumers from deception, add to the economic growth and development of the producers of such products and further promote goods bearing Indian geographical indications in the export market.
GI and rural economy
Generally, a lot of GIs come from villages and small towns. Once these GIs are protected, it can result in higher income for the producers that reside in such regions, which in turn, has the potential to transform the rural economy for the better. It will also attract investments by investors in such markets. The general features of GI :
- It gives legal protection to GIs in India.
- It prevents unauthorised usage by others when it comes to registered GIs.
- It gives legal protection to Indian GIs, which in turn will help increase the number of exports.
- It promotes economic prosperity of producers of goods that are produced in a geographical territory.
The category-specific features of GI are as follows:
GI and industry
A lot of registered and potential GIs in India belong to the MSME sector (Micro, Small & Medium Enterprises). A GI protection for them would ensure that the market there develops and has increased returns.
GI and tourism
GIs are unique products that come from demarcated areas. So, cultivation or the manufacturing process within itself, attracts tourists. Also, handicrafts and handlooms that have special features will always attract tourists. Further, regions can attract tourists to taste the special GI foods or drinks or buy such unique products with added discounts or at a discounted price.
Types of geographical indications
GI tags are used in the following of products:
Handicrafts
Some instances of handicrafts would be:
- Madhubani painting from the Mithila region of India and Nepal.
- Mysore silk originates from the city of Mysore in the state of Karnataka.
Foodstuff products
Some instances of foodstuff products would be:
- Tirupati Laddus registered by Tirumala Tirupati Devasthanams.
- The GI granted to both West Bengal and Orissa for Rasagola.
Wine and drinks
Some instances of wine and drinks would be:
- Champagne, Cognac of France;
- Scotch Whisky of UK;
- Tequila of Mexico.
Agricultural products
An instance of agricultural products would be Basmati rice.
Industrial products
Well, no instance can be found online but it is one important type of GI.
Ownership of geographical indications
The term ‘ownership’ in GI is referred to as ‘producer’. The following individuals who deal with these 3 categories of goods come under the term ‘producer’:
- Agricultural goods include production, processing, trading or dealing.
- Natural goods include exploiting, trading or dealing.
- Handicrafts or industrial goods include making, manufacturing, trading or dealing.
Term of geographical indications
The registration of an authorised user will be for a period of 10 years or for the period till the date on which the registration of the GI in respect of which the authorised user is registered expires, whichever is earlier.
Registration of geographical indications
Let us understand this in FAQs format.
Is registration of a GI compulsory
of the Geographical Indications of Goods (Registration and Protection) Act, 1999, talks about registration with respect to particular goods and areas. As per this Section, there is no mandate to register a GI. However, registering a GI will have the following benefits:
- Registration offers better legal protection to facilitate an action for infringement.
- The registered proprietors have the right to initiate an infringement action.
- The authorised proprietor can exercise the exclusive right to use the GI.
How to apply to register a particular GI
To register a GI, the producer has to follow this procedure:
- Fill in an application for registration of a GI Authorised User. It must be in the prescribed form (GI-3A).
Please note:To access the forms, kindly follow this .
- The form must be accompanied by a prescribed fee of ₹500/- for filling a GI Authorised User Application.
- The statement of case must be accompanied by an affidavit.
- Further, a copy of the consent letter from the registered proprietor or in case the consent letter is not available, a copy of application may be endorsed to the registered proprietor for information.
- The requisite fees may be paid through cash or money orders, bank drafts or cheques.
- The same has to be addressed to the Registrar of Geographical Indications, payable at Chennai.
Who can use the registered GI
An authorised user, i.e., the proprietor, has the exclusive right to use the GIs in relation to goods with respect to its registration.
Can a registered GI be renewed
Yes, a registered GI can be renewed from time to time for a period of 10 years each. The producer has to make an application within the prescribed time limit and pay the requisite
amount of fees for renewal.
What is the effect if a GI is not renewed
If a GI is not renewed from time to time, the registrar sends a notice for renewal (this includes the date of expiration, the conditions, the requisite amount of fees, etc.) and even then if the producer does not want to renew the GI, the Registrar may remove the GI or the authorised user from the register.
Can a registered GI, a registered authorised user or a registered producer be removed from the Register
The Appellate Board or the Registrar of Geographical Indications has the authority to remove the GI or an authorised user from the register. Furthermore, an application by an aggrieved person can be made.
Can register GI be assigned, transmitted, etc.
No, a Gi is a public property that belongs to the producers of the concerned gods. It cannot be assigned, transmitted, licensed, pledged, mortgaged or have any such agreements. However, when the authorised user or producer dies, the right to that GI will be delegated to the successor in title.
Infringement of geographical indications
Let us understand this pointer in FAQs form.
When will one claim that a registered GI was infringed?
- When any user who does not have the authority to use the GI (commonly known as an ‘unauthorised user’) makes use of a GI that indicates or suggests that such goods originate in a geographical area other than at the that very place where it originated at the first place and when that GI misleads the public into believing that the geographical origin of that good was in the other location.
- When any such usage of GI results in an unfair competition including passing off with respect to registered GIs.
- When the use of another GI results in false representation to the public that goods originate in a territory with respect to which a registered geographical indication relates.
Who can initiate an infringement action
Any registered proprietor or authorised user of a registered GI can initiate an infringement action.
Landmark cases one must know related to geographical indications
Mentionriceelow are some landmark cases on GIs in India.
The famous case of Navara rice: Tamil Nadu vs. Kerala
Navara Rice is one of the types of rice found in India and is quite a unique grain plant in the Oryza group. It originated in Kerala and is famous for the medical properties it holds. In 2007, this product received GI protection and was licenced to Navara Rice Farmers’ Society, which caused a rise in the number of growers of this crop. However, it was mentioned that only those farmers who belong to the same society have the right to sell their produce of this variety of rice.
Now as per an NGO based in Kerala, nobody has any on the historical origin of this variety of rice. Additionally, one cannot grant GI on seeds because with migration, there is a chance that seeds also migrate and adapt to the local ecology with genetic changes. This is why there is a need for more clarity on GI laws.
The famous Kolhapuri chappals
In 2019, the GI tag was granted to the ethnic leather chappals, commonly known as Kolhapuri chappals, by the CGPDTM (Controller General of Patents, Designs, and Trade Marks). This tag was granted to several districts of Maharashtra (namely Kolhapur, Sangli, Solapur and Satara) and Karnataka (namely Belgaum, Dharwad, Bagalkot and Bijapur). There was a joint bid for GI tag of Kolhapuri Chappals by the Sant Rohidas Leather Industries & Charmakar Development Corporation Limited of Maharashtra (LIDCOM) and the Dr. Babu Jagjeevan Ram Leather Industries Development Corporation of Karnataka (LIDKAR) in 2009, which fructified in 2018 into the GI tag being granted in favour of the artisans of the two states.
Well, the main objective behind this GI tag being granted to 2 states and 8 districts was because there was a large demand for Kolhapuris and a decline in supply of leather in the state of Maharashtra. Another issue was the change of fashion and taste among the youth of India and across the globe. Additionally, there was also a rise in competition and the most proverbial threat was that of ‘Chinese imitation’.
Tirupati Laddu:the savoury from Andhra Pradesh’
Under Class 30, Tirupati Laddus applied for registration of GI by the Tirumala Tirupati Devasthanam and they received GI tag in 2009. This laddu is offered as ‘naivedyam’ to Tirupati Balaji and then offered as ‘prasadam’ to the devotees after they have worshipped Lord Venkateshwara, the presiding deity at SriVari Temple in Tirupati, Andhra Pradesh.
However, in the same year as GI tag was granted to these laddus, a PIL was filed in the Madras HIgh Court against this GI tag. The same was filed by Mr. R.S. Parveen Raj, who was a resident of Trivandrum. His suit was filed on the following 3 grounds:
- GI was granted to a single producer.
- There is a lack of distinctiveness.
- The name of the laddus were quite generic in nature.
The Court dismissed the petition on the grounds that an alternative and efficacious forum was available for adjudication of such a dispute. Under the G.I. Act, such a petition could have been filed either before the G.I. Registry or the IPAB (Intellectual Property Appellate Board).
The recent Mithila Makhana GI tag
Mithila Makhana, an aquatic fox nut grown in the area of Mithila region in Bihar and its neighbour Nepal. The name was as a GI tag in the name of Mithilanchal Makhana Utpadak Sangh. After this tag, no unauthorised user or company can benefit or incur profit on the same name as this. This was done to help improve exports in the market. Further, the growers of this nut will mainly be benefited from the tag and will earn more profits, eventually leading to a better lifestyle of the farmers and growers of this variety of nuts residing in that location.
Designs
What are designs: a brief overview
Please note: Before we dive deep into this part, designs are also known as industrial designs and the rights granted to the registered proprietor of that design are known as ‘design rights’ or ‘design patent’.
Basically, design can be said to be a type of intellectual property that protects any composition, be it two or three dimensional lines, patterns, shapes or colours. The present , has been replaced by the , that prevailed in British India. Since the enactment of the 1911 Act, a significant amount of progress has been made in the field of science and technology and with such development there was a need to provide more effective protection to registered devices, which is when the 2000 Act came into enactment. This Act also intended to ensure that the law does not unnecessarily extend protection beyond what is needed to create the required incentive for Designs Activity while removing impediments to the free usage of available designs.
Definition of designs
Under Section 2 (d) of the Designs Act, 2000, the term ‘design’ can be referred to only the-
- Features of shape,
- Configuration,
- Pattern,
- Ornament,
- Composition of lines, colour or combination
thereof applied to any article, be it two or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode, principle, construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as defined in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.
Examples of Indian designs
Some of the well known instances of industrial design as follows:
- The Piaggio ‘Vespa’ Scooter,
- The ‘Contour’ bottle by Coca Cola,
- The Volkswagen ‘Beetle’,
- The Apple iMac,
- The Dyson Dual Cyclone Vacuum Cleaner.
Characteristics/features of designs
The following are some of the main features of designs:
- It grants the proprietor exclusive rights over the new and original design.
- It acts as an asset for the proprietor or the owner of the design.
- It can help the proprietor initiate a legal proceeding in case of infringement by a third party.
- It serves as prima facie evidence when it comes to filing a lawsuit for design infringement.
- It gives the proprietor the right to sell, transfer and licence the design with ease.
Types of designs
There is no classification of types of design under Indian law.
Ownership of designs
The ownership of the designs vests with the proprietor or owner of the design under the Design Act, 2000.
Rights of proprietor
Under this Act, the proprietor or owner has the following rights:
Copyright in the design
Under Section 11 of the Act, once the design is registered, the proprietor has copyright over that design. Here, copyright can be defined as the exclusive rights to apply a design to any article in any class where the design is registered.
Duration of copyright in design
Once the proprietor files for registration and the same is approved, the inventor behind inventing a design has the copyright for 10 years,after this, he/she can increase it for another 5 years provided a request is made to the Controller along with the requisite fees.
Transfer of rights
The rights in the design are capable of being transferred through assignment or transmission including via mortgaging and licensing either through contracts or by the operation of law that has to be noted (mandatory) to the Controller General.
Piracy of design
Once the design is registered, it is protected from any copying or substantial copying of a design for commercial purposes by a third party. Such an infringement will be regarded as piracy. Simply put, when any design is copied without obtaining a prior written consent of the owner, it is regarded as infringement of that design. The owner of the proprietor has all the rights (and monopoly) over that design and in case of infringement, the infringer is to compensate the owner for such an act.
Term of designs
The duration of a registered design is 10 years from the date of registration, initially, i.e., after its registration, but in cases where claim to priority has been permitted, the duration can be 10 years from the priority date. This period can be further extended for 5 years with an application made in Form 3 accompanied by the requisite amount of fees to the Controller before the expiry of the said initial period of 10 years. The proprietor of a design may make an application for such extension even as soon as the design is registered.
To access the forms, kindly follow this .
Registration of designs
Let us understand this pointer in FAQs format.
What are the essential requirements for registration under the Design Act, 2000
There are about 8 essential necessary for successfully registering a design, they are as follows:
Novelty
The design has to be novel and unique in nature.
Judgement
The design must be judged solely on the basis of its features (through the eyes-visual representation). Simply put, the features must be visible.
Disclosures
The design must not be disclosed to the public in India or anywhere across the world by prior publication or by prior use or in any other manner.
Distinguishability
It must have significant difference from designs or their combination thereof that are already registered or pre-existing or disclosed to the public.
Public morality
To register the design, there must not be any scandalous or obscene content.
Application
The design has to be applied to an article by an industrial process.
Functionality
It should not have any feature that is purely functional.
Copyright
It must not, in any way, consist of any trademark or property mark or artistic work as defined under the Copyright Act, 1957.
What is the process of registration for a design under the Design Act, 2000
Briefly, the process of registering a design consists of the following steps:
- Submitting the application.
- acceptance/objections/refusal.
- Removal of objecion/making an appeal to the Central Government.
- Design of Central Government.
- Registration of the design.
Let us understand each of these steps in brief.
Submission of application
The proprietor or the individual who holds the design has to file an application for registering the design. As per Section 5(1) of the Designs Act, 2000, the Controller will register the design if the following requisites are met:
- The design must be new and original.
- The individual who is claiming that a particular design belongs to him/her, the same must not be published in any country.
- It must not be against any public order or morality.
The application has to be followed by a prescribed fee, prescribed form and in the prescribed manner.
Designs to be filed along with the application
The application under Section 5 of the application must be accompanied by 4 copies of the representation of the design and the application must mention the Class under which the design has to be registered. The applicant has to also file a brief statement of novelty with the application.
Please note: As per the Designs Act, 2000, there is a type for registration of design known as Locarno Classification (which is followed in a lot of jurisdictions, including India). It consists of 32 classes, numbered 1 to 31 and an additional Class 99 to include articles that do not fall under the above 31 classes. Most of these classes are further divided into subclasses. It is pertinent that design applications must be filed in a particular class depending upon the predominant material with which the article is made or is capable of being made.
According to the Locarno Classification system the Designs Register is divided into 32 classes. The application for design has to be filed in a particular class to obtain protection in that class. The list of class is as follows:
List of class under the Locarno Classification
CLASS 1
It includes foodstuffs.
CLASS 2
It includes articles of clothing and haberdashery.
CLASS 3
It includes travel goods, cases, parasols and personal belongings, not elsewhere specified.
CLASS 4
It includes brushware.
CLASS 5
It includes textile piecegoods, artificial and natural sheet material.
CLASS 6
It includes furnishing.
CLASS 7
It includes household goods, not elsewhere specified.
CLASS 8
It includes tools and hardware.
CLASS 9
It includes packages and containers for the transport or handling of goods.
CLASS 10
It includes clocks and watches and other measuring instruments, checking and signalling instruments.
CLASS 11
It includes articles of adornment.
CLASS 12
It includes means of transport or hoisting.
CLASS 13
It includes equipment for production, distribution or transformation of electricity.
CLASS 14
It includes recording, communication or information retrieval equipment.
CLASS 15
It includes machines, not elsewhere specified.
CLASS 16
It includes photographic, cinematographic and optical apparatus.
CLASS 17
It includes musical instruments.
CLASS 18
It includes printing and office machinery.
CLASS 19
It includes stationary and office equipment, artists’ and teaching materials.
CLASS 20
It includes sales and advertising equipment, signs.
CLASS 21
It includes games, toys, tents and sports goods.
CLASS 22
It includes arms, pyrotechnic articles, articles for hunting, fishing and pest killing.
CLASS 23
It includes fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment,
CLASS 24
It includes medical and laboratory equipment.
CLASS 25
It includes building units and construction elements.
CLASS 26
It includes lighting apparatus.
CLASS 27
It includes tobacco and smokers’ supplies.
CLASS 28
It includes pharmaceutical and cosmetic products, toilet articles and apparatus.
CLASS 29
It includes devices and equipment against fire hazards, for accident prevention and for rescue.
CLASS 30
It includes articles for the care and handling of animals.
CLASS 31
It includes machines and appliances for preparing food or drink, not elsewhere specified.
CLASS 99
It includes miscellaneous.
Acceptance or objection of the application
On considering the application, if the Controller is of the opinion that the applicant fulfils all the prescribed requirements, he/she shall register the design.further, in case while considering the application there are any objections to appear in front of the Controller, a statement consisting of all such objections will be forwarded to the applicant or his/her agent.
Removal of objection/ making an appeal to the Central Government
Once the applicant or his/her agent receives the statement, the objection has to be removed within 1 month from the date of communication of the objections. Failing to do so shall be deemed to have the effect of the application being withdrawn. The ap;licant may also apply to the Controller to hear the matter. In case the Controller does not accept the application after the submission, the applicant may make an appeal directly to the Central Government. The decision taken by the /central Government will be final.
Decision of the Central Government
As mentioned above, the decision taken by the Central Government will be final.
Publication of particulars of registered designs
Once the design is accepted, the Controller will direct the registration and publication of the particulars of the application and the representation of the article to which the design has been applied, in the official Gazette. While publishing the design in the Gazette, the controller may select one or more views of the representation of the design, which in his opinion would depict the design in the best possible manner.
Register of designs
When the design is finally accepted, it shall be entered in the Register of Design, with all the important information as mandated by the Act. the important information, inter alia, may include the following information:
- The number of the design,
- The Class under which such a design is registered,
- The date when the application was filed for registering in India,
- The reciprocatory date (if any),
- Claim for registration, etc.
Cancellation of registration
The registration of a design can be cancelled at any time after the design has been registered if there is a petition for cancellation in Form 8 with the prescribed amount of fee addressed to the Controller of Designs for these reasons:
- The design has been registered before in India.
- The design has been published in India or anywhere before the date of registration.
- The design is not new or original.
- The design is not registerable.
- It is not a design per se under Section 2(d).
Infringement/piracy of designs
Generally, the term ‘piracy of a design’ is used to address infringement of copyright. The same has been mentioned under Section 22 of the Designs Act, 2000. Let us read some FAQs on piracy of designs.
What is piracy of a design
Basically, piracy of a design means the application of a design or its imitation to any article that belongs to any class (discussed above) of articles where the design has been registered for selling or importing these articles without obtaining a prior consent in written format from the registered proprietor. Publishing such registered articles or exposing the terms of that sale with knowledge of the unauthorised application of the design to them will also amount to of the design.
What is the punishment for piracy of a registered design
If any individual contravenes any copyrighted design, he/she will be liable for every offence and may be asked to pay a fine not exceeding ₹25,000/- to the registered proprietor, subject to a maximum of ₹50,000/- recoverable as contract debt in respect of any one design. The registered proprietor has the right to file a lawsuit for recovery of the damages thus caused by any such contravention and for injunction against repetition of the same.
Please note: The total sum to be recoverable shall not go beyond ₹50,000/- as recoverable as contract debt in respect of any one design.
The lawsuit for infringement (or piracy), recovery of damage, etc., must be filed in any court below the court of the District Judge.
Defences that can be used by the Defendant in case of infringement/piracy lawsuit
If a Defendant is charged with design infringement or piracy suit, he/she can refer to the following defences:
Cancellation
In case the design is cancelled as per the provision mentioned in then Act, the Defendant can claim the same and use it as a defence.
Expiry
As mentioned above, the copyright on a particular design is available for a limited time period. If the Defendant can provide evidence that the design has surpassed the time period (for which it was predicted) as mentioned under provisions of the Act, he/she may be allowed to make use of the design.
Unreasonable delay
If there is an unreasonable delay on the part of the Plaintiff to file the lawsuit, the Defendant has the power to plead acquiescence and on the basis of this pleading, may be allowed to use the design.
No right to sue
If the Defendant provides evidence that the Plaintiff is not the registered proprietor of the copyrighted (or the duly authorised agent or licensee) of that particular design, he/she may be permitted to make use of the design.
Design not new or original
The Defendant can claim that the design in question is neither new nor original.
Design was previously registered
The Defendant can state that his design was previously registered in India, if that is the case.
Prior publication
The Defendant may raise a defence of his design was published in India before the date of registration.
Conduct of Plaintiff
The Defendant can claim that the Plaintiff has not approached the court with clean hands and that his/her conduct is tainted.
Landmark cases one must know related to designs
Design and not article
Section 2(a) of the Designs Act, 2000, defines the term ‘article’ as any article of manufacture and any substance, artificalor partly artifical and partly natural and includes any part of an article that is capable of being made and sold separately. However, one must note that there is a difference between article and design. In the case of , the Delhi High Court held that design means the features that form the conception or idea of a shape.
In yet another case- , there were some caps of bottles that were manufactured separately but were used for the same bottles manufactured by the same manufacturer. However, the nature of the cap was such that there was a possibility that the same could be sold separately, though not currently done by the manufacturer. Here, the Bombay High Court held that the caps are entitled to be registered as a separate item of commerce.
Registration
In the case of , the Delhi High Court held that the concept of a new or an original type of design is relatable to the publication of such a design or its availability to the public in India. The Court further stated that if the contention is that the Defendant has received brochures from several nations like Malaysia, Korea, and Japan with respect to such goods, the mere receipt of such brochures will not be said to be the publication of such designs within India.
In yet another case, , the Appellant and Respondent manufactured biscuits. The design of the Appellant was registered. The design of the Respondent also had an identical design embossed on the biscuit, the only difference being that instead of ‘AP’ (which was embossed on the biscuits of the Appellant), letters ‘AP’ was embossed on the biscuits of the Respondent. Aggrieved by the mark, the Appellant filed a lawsuit for injunction, stating that the Respondent had committed piracy of his design. The Andhra High Court issued a temporary injunction based on the registered design.
Test for infringement
In the case of , the Bombay High Court held that in an infringement suit it must be found at the outset that, judged solely by the eye, there is an indispensable similarity in the two designs.
Remedies for infringement
In , the Delhi High Court held that the passing off action is not available when it comes to registered design. Thus, the parties are relegated to the remedy under the Designs Act to seek cancellation of registration and other remedies under the Act.
Trade secrets
What are trade secrets: a brief overview
A trade secret is any practice or process of a company that is usually not known (to the general public) outside of the company. Such information gives the company a competitive edge over its competitors and is often a product of internal research and development. The essentials of a trade secret are as follows:
- It must have a commercial value.
- It is known to a limited group of people.
- The owner of such a secret has taken reasonable steps to keep such information secret.
Definition of trade secrets
There is no explicit law that governs the protection of trade secrets in India. However, these rights are enforced through contract law ( ), principles of equity or by way of a common law action for breach of confidence. In the case of , the Calcutta High Court, on the definition for ‘trade secret’ in Black’s Law Dictionary, observed that a trade secret is a formula, process, device or other business information that is kept a secret (confidential) to maintain an advantage over competitors. The information will consist mainly of:
- A formula,
- A pattern,
- A commercial information,
- A programme,
- A device,
- Any method,
- Any technique or
- A process
that deevies any independent financial value, actual or potential, from not being generally known or disclosed to the public or readily ascertainable by those individuals or companies who can benefit (financially) from its disclosure or use and that a reasonable attempt is made to maintain secrecy when it comes to the product.
Examples of trade secrets
Some of the examples of trade secrets well known in India as follows:
- Google’s search algorithm (is constantly being modified to prevent third parties from hacking into the system and being shown on the top while being searched.
- The Coke Syrup Formula by Coca-Cola (a secret since 1981 and not a registered trademark, for they (the company) will have to disclose the information to the patent office).
Interesting fact: In 2006, some individuals tried to share the formula of Coca Cola with one of its biggest competitors, Pepsi; however, Pepsi informed Coca-Cola about the incident).
- KFC’s original recipe (kept a secret by Colonel Sanders and then a few others by signing a confidentiality agreement beforehand).
- The Big Mac Special Sauce by McDonald’s.
Characteristics/features of trade secrets
The most common characteristic of a trade secret are as follows:
- They are not public information.
- Their secrecy provides a monetary benefit to the holder.
- Attempts are made to actively protect such secrecy.
Types of trade secrets
There are several types of trade secrets, namely:
- Business,
- Financial,
- Scientific,
- Technical,
- Engineering,
- Economical.
Basics of trade secrets
Let us understand this pointer with the help of some FAQs.
What are the rights granted for a protected trade secret
Generally, when a trade secret is deemed to be protected, the owners have the right to preclude the information that was obtained in a lawful manner under their control from being disclosed, acquired or used by other individuals without obtaining their prior consent. Some unfair practices in this regard include:
- Industrial or commercial espionage,
- Breach of contract,
- Breach of confidence and
- Inducement of breach.
It also includes the usage or disclosure of any trade secret by a third party who was aware or was negligently failing to know that these practices were involved in the acquisition of the confidential information. However, one must note that the use of trade secrets by an individual who gained the information through a legitimate business transaction without negligence is not regarded as illegal. For instance, a competitor may buy a product, look at the construction and composition of the commodity and extract the secret knowledge embedded in the product (so called reverse engineering), which will not be regarded as a violation of trade secrets.
How is trade secret law governed in India
Generally, trade secrets in India are governed by common law, namely:
Contract law
Under Section 27 of the Indian Contract Act, 1872, parties cannot disclose information that is against the terms of the contract between the parties, i.e., non disclosure agreements.
Indian Penal Code, 1860
Sections , , , and of the , deal with cases that constitute criminal breach of trust.
Can one sell and licence trade secret
Trade secrets are property rights that can be assigned and licenced to other individuals. The individual or organisation that holds the trade secret also has the authority to permit third parties to access and use the trade secret information. Yet, considering the secret nature of the trade secret, it is not always easy for others to ascertain if the information concerned meets the requirement for trade secret protection. Thus, in comparison to patents, it is a little more tough to transfer and licence such secretive information and to resolve arguments or disputes that may thus arise. Further, since a potential licensee will necessarily have to have access to trade secret information to ascertain several factors, like-
- The value of the secret,
- The utility of the secret, etc.,
It is important that a non disclosure agreement be signed between both parties (i.e., the licensor and the licensee). Furthermore, in order to keep the trade secret really a secret, the licensor of the trade secret must take reasonable steps to keep the information confidential.
Ownership of trade secrets
In order for a proprietor to get his/her rights over a trade secret, he/she has to furnish the nature of the information that he/she believes to be a trade secret and how it came into his/her possession. If such information is not made available, the court may deny to grant such a right, as held in the case of . Basically, there is a distinction between general knowledge regarding business of an organisation or the general skill and expertise of employees accumulated in the course of employment in an organisation and trade secrets that can be protected. Thus, it is crucial that the proprietors mention the information that may consist of a trade secret. In some instances, there is a chance that the trade secret information may include works that were created and developed by the proprietor and could be granted protection. Here, the principles of authorship and ownership applicable to copyright will be applicable. However, in some cases, the trade secret information has to be shown by the proprietor to prove that he/she is the rightful owner of such a title. In other words, if the information is derived or created by an individual with the information readily avoidable in public, such information will not be regarded as a trade secret and no protection will actually be granted to such an owner.
Term of trade secrets
As we know, there is no specific law that governs trade secrets in India, so there is no per se for the protection of trade secrets. In simple words, unlike other types of IPs, that usually have limited duration, trade secrets are protected for an indefinite time period. Further, a trade secret can be for an unlimited period of time, until and unless it is discovered or legally acquired by some other individual or organisation or disclosed to the public.
Registration of trade secrets
As opposed to other forms of IPS, trade secrets are protected without registration, i.e., trade secrets do not need procedural formalities to be followed to be protected.
Infringement of trade secrets
Please note: Infringement of trade secrets is also known as ‘misappropriation’. There is no explicit law that defines the term ‘misappropriation’; however, when a trade secret is delivered by improper means (arising from civil, including breach of contract or tortuous wrongs or criminal acts), it would be regarded as misappropriation of trade secrets.
There is no specific law for trade secret misappropriation; yet, offences like criminal breach of trust, theft or cheating may be applicable in cases where a trade secret is infringed.
Penalty for infringement of trade secret or misappropriation
The punishment for criminal breach if trust is imprisonment for up to 3 years or a fine. One can say that a criminal breach of contract was committed when an individual dishonestly misappropriated or converted for his/her own usage any property that has been entrusted to him/her, or dishonesty uses or sells (or disposes) aby such property and breaches the contract (could be expressed or implied, i.e., in written or oral form, respectively), or applicable law, or allows any other individual to do so. An action for such a breach can be brought under the .
Defences in case of infringement/misappropriation of trade secret
The defences to a large extent rely on the facts of each case, however, these are the most common defences:
- Information is already known to the general public (or public domain),
- Information that has to be protected is not actually a trade secret) even when it is confidential information),
- The information has been disclosed by the Plaintiff through negligence and failure to maintain secrecy.
- The Defendant obtained the information through independent study, skill or labour (one can use this defence even in case of reverse engineering) without having access to the Plaintiff’s information.
- The Defendant does not have any express or implied obligation to keep the information a secret.
Remedies for infringement
Preliminary/temporary/interim or final injunction
In case of misappropriation or infringement of a trade secret, the owner can seek relief of injunction (could be temporary or permanent), so the Defendant is refrained from using or disclosing the trade secret. The courts have the discretion to grant such a relief and apply the following tests (as mentioned in to ascertain the same:
- Whether there is any prima facie case made out by the Plaintiff in the case,
- Whether the balance of convenience is in the favour of the Plaintiff, and
- Whether the Plaintiff would undergo injury beyond repair in the event that the intention is not granted.
The courts have further held that the main motive for granting an interim injunction is to protect the Plaintiff against injury by violation of its rights, where such an injury cannot be adequately compensated by damages. This statement is especially true for trade secrets whose utility or value is derived from their confidential nature. Thus, the need for such a protection for the Plaintiff must be weighed against any injury that may be caused to the Defendants by being prevented from exercising their legal rights.
Damages
Litigants can also seek damages and rendition of accounts of profit as one of the remedies to trade secret misappropriation or infringement. Damages are further divided into three categories, namely:
- Liquidated damages,
- Actual damages, and
- Punitive damages.
Other civil remedies
Apart from the aforementioned remedies, there are no civil remedies available in cases of wilful trade secret appropriation; however, there are some remedies available to the Plaintiff or the rights holder, including:
- Orders granting return of trade secrets or delivery of material that has trade secrets,
- Appointing court commissioners to take stock of the materials misappropriated by the Defendant (for assistance in quantifying damages).
- The courts may also direct local police to help the court commissioners carry out appropriate search and seizure orders.
Civil remedies
There is no explicit offence of trade secret misappropriation but the infringement or misappropriation may result in a criminal breach of trust, theft or cheating may be applicable. The matters may be governed under the following laws:
- The Indian Penal Code, 1860;
- The Copyright Act, 1957;
- .
Administrative remedies
It is pertinent to note that there are no specific laws relating to trade secret misappropriation in India, as it is governed totally on the grounds of common law principles (that have evolved through judicial precedents) and Indian contract law.
Landmark cases one must know related to trade secrets
Criteria to be considered as a trade secret
Further, the Bombay High Court, in the case of , stated that for any piece of information to be considered as a trade secret the following criteria must be met:
- The extent to which the trade secret is known outside business,
- The extent to which the information is known to those inside the business, say the employees,
- The necessary precautions taken by the holder to guard secrecy,
- The saving affected and the value to the holder in having the information as against competitors,
- The amount of effort or money spent in getting and developing the information, and
- The amount of time and expense it would take others to get and duplicate the information.
Ownership of trade secret
The Delhi High Court, aforementioned above, in the case of Ambiance India Pvt. Ltd. vs. Shri Naveen Jain 122 (2005) DLT 421, held that if the nature of the information that is said to be a trade secret is not revealed, the court has the authority to not grant protection for the trade secret.
In some cases, there could be information made and developed by proprietor that would be subject to being protected like client lists as mentioned by the Delhi High Court in the case of or technical drawings in .
Secrecy of trade secrets
In , the Defendant was a former employee of the company (which is the Plaintiff in this case), made use of the contacts database collected by the Plaintiff. The Delhi High Court held that the contacts database belonged to the Plaintiff and that it was developed through skill and labour of the Plaintiff.
Plant varieties
What are plant varieties: a brief overview
Plant variety is a type of IPR. Plant variety protection, also known as ‘plant breeder’s right’ is a form of a Plant Breeder’s Rights (PBRs) that provides exclusive rights to a breeder of the registered variety. In India, this form of IPR is protected under the .
Definition of plant varieties
Under , the term ‘variety’ is defined as a “a plant grouping except micro-organism within a single botanical taxon of the lowest known rank, which can be-
(i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping;
(ii) distinguished from any other plant grouping by expression of at least one of the said characteristics; and
(iii) considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation,
and includes propagating material of such variety, extant variety, transgenic variety, farmers variety and essentially derived variety.”
Examples of flora finery:India’s plant varieties under protection
Plant varieties have been classified into several categories, let us look at a examples.
Oilseeds
The following are some of the of registered oilseeds in India:
| Crop | Name of applicant |
| Sesame [Gujarat Til-3 (AT-93)] | Junagarh Agricultural University, Gujarat |
| Rapeseed (Toria) [ORT (M) 2-4 (Parbati)] | Orissa University of Agriculture & Technology |
| Castor [Deepak (DCH-177) (Hybrid)] | Indian Council of Agricultural Research (ICAR) |
| Sunflower [DRSH-1 (PCSH-243)] | Indian Council of Agricultural Research (ICAR) |
| Soybean [Jawahar Soybean 97-52 (JS 97-52)] | Indian Council of Agricultural Research (ICAR) |
| Indian mustard (Sarso) [RCC-4] | CSK Himachal Pradesh Krishi Vishvavidyalaya |
| Linseed [BINWA (KL-210)] | Indian Council of Agricultural Research (ICAR) |
| Sesame [JLT-408 (JLS-9848-2)] | Mahatma Phule Krishi Vidyapeeth |
| Groundnut [Girnar-2 (PBS-24030)] | Indian Council of Agricultural Research (ICAR) |
| Groundnut [Gujarat Junagarh Groundnut-17 (JSP-48)] | Indian Council of Agricultural Research (ICAR) |
| Indian mustard (Sarso) [GM-3 (Gujrat Mustard-3)] | Sardarkrushinagar Dantiwada Agricultural University |
Cereals
The following are some of the of registered cereals in India:
| Crop | Name of applicant |
| Sorghum [CSH-22SS (NSSH-104)] | Indian Council of Agricultural Research (ICAR) |
| Pearl millet [JKBH-26 (MH-595)] | JK Agri Genetics Ltd. |
| Maize [Pratap Hybrid Maize-1 (EH -50802)] | Indian Council of Agricultural Research (ICAR) |
| Wheat [WR-544 (Pusa Bold)] | Indian Council of Agricultural Research (ICAR) |
Vegetables
The following are some of the of registered vegetables in India:
| Crop | Name of applicant |
| Okra/Lady’s Finger [Kashi Pragati (VRO-6)] | Indian Council of Agricultural Research (ICAR) |
| Potato (FL 1867) | Pepsi Co. India Holding Pvt. Ltd. |
| Cauliflower [Pusa Sharad (Sel-309-1-2)] | Indian Council of Agricultural Research (ICAR) |
| Brinjal [Pusa Ankur (DBSR-91)] | Indian Council of Agricultural Research (ICAR) |
| Onion (PHULE SAMARTH) | Mahatma Phule Krishi Vidyapeeth |
| Tomato (BA-1031) | Nuziveedu Seeds Pvt. Ltd. |
| Okra/Lady’s Finger [Kashi Pragati (VRO-6)] | Indian Council of Agricultural Research (ICAR) |
Legumes
The following are some of the of legumes registered in India:
| Crop | Name of applicant |
| Black Gram [KU-91 (Azad Urd-2)] | Indian Council of Agricultural Research (ICAR) |
| Green Gram [Kamadeva (OUM-11-5)] | Indian Council of Agricultural Research (ICAR) |
| Field Pea [Kashi Shakti (VR-7)] | Indian Council of Agricultural Research (ICAR) |
| Lentil [Pant Lentil-5] | Indian Council of Agricultural Research (ICAR) |
| Kidney Bean [Kashi Udai (VR-6)] | Indian Council of Agricultural Research (ICAR) |
| Pigeon Pea [TT 401] | Indian Council of Agricultural Research (ICAR) |
| Chickpea [Haryana Chana-3 (H-86-18)] | Indian Council of Agricultural Research (ICAR) |
Flowers
The following are some of the of registered flowers in India:
| Crop | Name of applicant |
| Rose (Arka Swadesh) | ICAR- Indian Institute of Horticultural Research, Bangalore |
| Orchid (Tiew Lyngskaw) | President, Nonglwai Orchid Conservation Society |
| Carnation [IIHRP 1 (Arka Flame)] | Indian Institute of Horticultural Research |
Spices
The following are some of the of registered spices in India:
| Crop | Name of applicant |
| Nutmeg (MUNDATHANAM) | Michael Joseph |
| Turmeric (Varna) | Indian Council of Agricultural Research (ICAR) |
| Small Cardamom (PANIKULANGARA GREEN BOLD NO.1) | Joy Peter |
| Black pepper ( Pepper Thekkan) | T.T. Thomas |
| Fenugreek (Jatni) | Ashok Mehta |
| Ginger (Aadi-LO) | Dhaneshwar Mahto |
| Coriander (Pal Dhaniya) | Udesi Pal |
| Turmeric (Surkha) | Surendra Kumar |
Fruits
The following are some of the of registered fruits in India:
| Crop | Name of applicant |
| Apricot (GYALCHIMA TILI) | Tsering Angmo |
| Grapes (Sarita Purple Seedless) | Dattatraya Nanasaheb Kale |
| Walnut (CITH-W-1) | Indian Council of Agricultural Research, Central Institute of Temperate Horticulture |
| Pomegranate (Bhagawa) | Mahatma Phule Krishi Vidyapeeth |
| Guava (VNR BIHI) | VNR Seeds Pvt. Ltd. |
| Mango (DESHI GOLA) | Puttilal |
| Mulberry (Sahana) | Central Silk Board |
Characteristics/features of plant varieties
The following are some of the characteristics of plant varieties:
- It is distinctive in nature (i.e., it has to be different either in colour, form, size, etc.)
- It is of homogenous nature (i.e., homogeneous in characteristic when it comes to height, leaf and stem colour, flower size and shape, flowering fate, etc.)
- The characteristics of such a plant variety must be constant over time (for instance, if the variety of flowers flowered at 120 days after being planted, the next year flowering should also take place in the same time range).
Types of plant varieties
Under the PPVFR Act, 2001, there are 18 plant species that can be registered under the Act, they are as follows:
Cereals
They include:
- Rice,
- Wheat,
- Maize,
- Sorghum,
- Pearl millet.
Legumes
Thy include:
- Chickpea,
- Mungbean,
- Urdbean,
- Field pea,
- Rajmash,
- Lentil,
- Pigeon pea.
Fibre crop
They include:
- Four species of cotton namely:
- Gossypium arboreum L. and G;
- herbaceum L. (iploid cotton);
- G. barbadense L. and G;
- hirsutum (Tetraploid cotton).
- Two species of Jute, namely:
- Corchorus olitorius L. and C.
- Capsularis L.
Ownership of plant varieties
The PPV&FR Act, 2001, grants proprietary ownership to plant breeders and farmers for their varieties. Once the protection is granted, the owners have the rights to-
- Produce,
- Sell,
- Market,
- Distribute,
- Import or
- Export
the variety registered under the Act.
Term of plant varieties
Every variety of plant has a different term of protection, let us take a look at each of them:
Trees and vines
In case of trees and vines, the duration of protection is 18 years from the date of registration of that variety.
Extant varieties
In case of extant varieties, the duration of protection is 15 years from the date of registration of that variety.
Other crops
In case of other crops, the duration of protection is 15 years from the date of registration of that variety.
Registration of plant varieties
Let us understand this pointer with the help of some FAQs.
What is the criteria for protecting a plant variety
In order to be eligible for protecting a plant variety, it must have the following features:
Distinct
To be registered, a plant variety has to be clearly distinguishable by at least one essential characteristic from any existing or commonly known varieties in any country while the application for registration is being filed.
Uniform
A variety has to be sufficiently uniform in its essential characteristics.
Stable
The essential characteristics of a plant variety must be stable after repeated propagation or in case of a particular cycle of propagation, at the end of each cycle.
Who can apply for the registration of a plant variety
An application for registering a plant variety can be made by:
- Any individual who is claiming to be the breeder of the plant variety.
- Any individual who is the successor of the breeder of the plant variety.
- Any individual who is the assignee or the breeder of the variety in respect of the right to make such an application.
- Any farmer, group of farmers or community of farmers who are claiming to be the breeder of that plant variety.
- Any individual who has the authority to make an application on behalf of the farmers.
- Any university or publicly funded agricultural institution that claims to be the breeder of the variety.
Why are plant varieties to be protected/registered
As India is a member of WTO (World Trade Organisation) and signatory of TRIPS, it is crucial for India to provide protection to plant varieties either via patents, the sui generis system, or by both. Just like most of the developing nations, India decided to exclude patents for plants and plant varieties; however, it exercised the sui generis option for effective protection of plant varieties. India enacted ‘The Protection of Plant Varieties and Farmers’ Rights’ (PPVFR) Act, 2001, for plant variety registration.
What are registrable patents in India
Under the PPVFR Act, 2001, there are 4 types of plant varieties that are registrable:
New variety
A variety that is not in public domain in India earlier than one year before the date of filing; or outside India, when it comes to trees or vines earlier than 6 years, or in any other case, earlier than 4 years.
Extant variety
Any variety that is not notified under the , or any new variety about which there is common knowledge or a farmers’ variety or any other variety that is in public domain is considered to be an extant variety.
Farmers’ variety
A variety that has been traditionally cultivated and evolved by the farmers in their fields or a type which is a wild relative or land race of a variety about which farmers possess common knowledge.
Essentially derived variety (EDV)
An essentially derived variety shall be said to be essentially derived from such an initial variety when it is predominantly derived from such an initial variety, or from a variety when it is predominantly derived from such an initial variety, while retaining the expression of the important features that lead to the genotype or combination of genotypes of such initial variety. An EDV conforms to such an initial variety that results from the genotype or combination of genotypes of such an initial variety.
What are non registrable plant varieties in India
All plant varieties are not entitled to legal protection in India, meaning some plant varieties are excluded from protection under the PPVFR Act, 2001. Any variety where prevention of commercial exploitation of any such plant variety is crucial to protect public order or public morality or human, animal and plant life and health, or to avoid serious prejudice to the environment, or any varieties that has terminator technology, or any variety that belongs to any species or general that is not enlisted in the notification issued by the Central Government cannot be registered for protection under the PPVFR Act, 2001.
Infringement of plant varieties
If any individual falsely represents a variety of plant as his/her/its registered variety, then the same act can be punished by imprisonment for a term not less than 6 months that is extendable up to 3 years or a fine amounting to not less than Rs. 1 lakh that is extendable up to Rs. 5 lakhs, or, at times, both.
Landmark cases one must know related to plant varieties
Maharashtra Hybrid Seed Co and Anr vs. Union of India and Anr [(2015) 217 DLT 175]
In the case of , the Delhi High Court held that the PPVFR Authority’s order that claimed that the parent lines of known hybrid varieties cannot be as a ‘new’ plant variety under the PPVFR Act. The Court held that if the hybrid comes under the category of ‘extant variety’ of which individuals have common knowledge, then its parental lines cannot be said to be novel.
Monsanto vs. Nuziveedu Seeds [2018 SCC OnLine Del 8326]
In the case of , the Supreme Court set aside the order of the Delhi High Court that claimed that the patent by Monsanto Technology on BT cotton seeds was invalid as seeds cannot be patented under the Indian IP laws. Monsanto sold these genetically modified cottons in India in a joint venture with Maharashtra Hybrid Seeds Co., called Mahyco Monsanto Biotech (India) Ltd. (MMBL). This argument reached the Court when Nuziveedu Seeds Ltd. (NSL) continued to sell the genetically modified seeds even when MBBL had terminated its licence with NSL.The Supreme Court ruled out the order of the division bench and restored the order of the single judge bench.
Semiconductor integrated circuits layout design
What is a semiconductor integrated circuits layout design: a brief overview
In India, the semiconductor integrated circuits layout design is governed under the . This Act was passed to comply with the TRIPS Agreement. This Act protects the layout designs of semiconductor chips and integrated circuits that are broadly used in a range of electronic products from computers to automobiles. IP rights protect all these three dimensional designs of integrated circuits, including the positioning of the electronic components.
Definition of semiconductor integrated circuits layout design
Under the SICLD Act the following definitions are of utmost importance:
Semiconductor integrated circuit
A semiconductor integrated circuit is defined as “a product having transistors or other circuitry elements, which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function”.
Layout design
The term ‘layout design’ is defined as “a layout of transistors, and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit”.
Commercial exploitation
The term ‘commercial exploitation’ in relation to SICLD means “to sell, lease, offer or exhibit for sale or otherwise distribute such semiconductor integrated circuits for any commercial purpose”.
Examples of semiconductor integrated circuits layout design
The examples of semiconductor integrated circuits layout design, in India, :
Two-Terminal Device
Diode, Gunn Diode, Schottky Diode, Solar Cell. Zener Diode, light-weight Emitting Diode (LED)
Three-Terminal Device
This includes-
- Bipolar semiconductor device,
- IGBT semiconductor device,
- semiconductor Controlled Rectifier.
Four-Terminal Device
This includes-
- Hall impact (Magnetic Effect) detector.
Multi-Terminal Device
This includes-
- microcircuit (ICs),
- microchip,
- RAMs,
- ROMs.
Basics of semiconductor integrated circuits layout design
Let us understand this pointer with the help of FAQs.
What is protected by the SICLD Act, 2000
Instead of requiring the designs’ incorporation in a physical semiconductor chip, the SICLD Act, 2000, protects the layout design itself. Thus, this IP right eliminates the need for protecting the actual article. Section 17 of the SICLD Act describes the same in an explicit manner. Registration requires a 3D representation of the layout design and compliance with all other statutory requirements before the design is actually registered.
Why do such layouts need IPR protection
Integrated circuits are created with the human mind and carry a high economic value, so it is necessary that they are protected. These designs are multi layered complex pieces of technology. It takes a lot of time, energy and funding to come up with such efficient designs; hence, these designs, technologies and products have to be protected with the help of strict IPR laws that are specially drafted for such complex patterns.
Why cannot patents protect the semiconductor integrated circuits layout designs
Chips consist of several subparts, and since some of them may be novel in nature by themselves, several applications for patents to be granted or registered will have to be filed. Simply put, for every such novel component, material used, chip, etc., a different patent application will have to be filed. This technique will obviously be time consuming and not feasible when it comes to modern technological advancements like semiconductor integrated circuit layout designs. Also, patents have to be original, distinct and non obvious and since circuits are typically upgraded from earlier versions, newer layout designs fail to meet the standards for patentability. Most of these chips and designs will be excluded from the ambit of patent law as the layout designs are of a developmental nature instead of being creative in nature.. Thus, the SICLD Act, 2000, provides for sui generis protection.
Characteristics/features of semiconductor integrated circuits layout design
- The law protects the layout and designs of semiconductor integrated circuits with the help of a registration process.
- There is a mechanism to distinguish which layout design can be protected.
- There are rules to prohibit registration of layout designs that are not original in nature or those that have been commercially exploited.
- The Act has several provisions relating to-
- Determination of payment of royalty for registered layout design in case of innocent or unintentional infringement,
- Penalties for infringement (in the form of imprisonment and fines), etc.
- The registrar is appointed for administration and the Appellate Board is established in order to facilitate legal objectives.
Types of semiconductor integrated circuits layout design
There are no types of semiconductor integrated circuits layout design per se; however, there are 2 types of integrated circuit designs, namely:
- Digital IC design,
- Analog IC design.
Ownership of semiconductor integrated circuits layout design
The ownership for semiconductor integrated circuits layout design can be made by those individuals who to be the creator of the layout design, his legal representative, a person registered in the prescribed manner as a layout design agent or a person in the sole and regular employment of the principal, to be given in writing to the registrar in the prescribed manner. The application can be filed either alone or jointly. The application has to be filed with the territorial jurisdiction, i.e., a principal place of business in India of the applicant.
Exclusive right to the registered proprietor or owner of the layout
Once a layout design is registered, the proprietor gets the exclusive right to use the layout design and to obtain relief in case there is any infringement. This right is available to the registered proprietor of that layout design irrespective of whether the design was embodied in the article or not.
Term of semiconductor integrated circuits layout design
The registration of the layout design will only be for a period of 10 years that is calculated from the date of filing an application for registration or from the date where the first commercial exploitation began (anywhere in the country) whichever is earlier.
Registration of semiconductor integrated circuits layout design
Registration process for semiconductor integrated circuits layout design
The process for registering semiconductor integrated circuits layout design is as follows:
- Filing an application by the creator in writing to the registrar in the SICLD registry in a prescribed form. It must also include-
- 3 sets of drawings produced to the plotter that talk about the layout design, and
- 3 sets of photographs of masks used for fabricating the semiconductor integrated circuits by using such a layout design or drawings which talks about the pattern of such masks.
- The second step is acceptance of the application and it is done by returning a copy of the application. Please note, the registrar has the right to withdraw the acceptance if the application is prohibited from being registered for any reason. The registrar may also accept the application with some amendments.
- The accepted application shall be advertised in the prescribed format within 14 days from the date of acceptance. If any opposition is found to such a registration, a notice is sent to the registrar within 3 months from the date of advertisement.
- Then, the registrar may call for evidence by both the parties and finally reach an inference. The counter statement has to be filed within 2 months from the date of receipt of cpy f notice of opposition from the registrar. Also, a copy of the counter statement must be sent to the opposite party.
- The registrar may also conduct a hearing between both the parties and then decide on where the layout design must be registered or not based on the conclusion thus reached after hearing the parties.
- If any party is aggrieved by the decision taken by the registrar, an appeal can be made to the Appellate Board or if it is absent, an appeal can be made to the Civil Court for relief on any ruling of the Registrar.
- In case the application is not opposed or if the opposition has been decided in favour of the applicant, the registrar shall register the said layout design in the register of layout design. Further, a certificate sealed with the seal of SICLD Registry will be issued in the favour of the applicant.
Infringement of semiconductor integrated circuits layout design
Under this law, any act that includes reproduction, sale, import or distribution of integrated circuit layout design for commercial purpose is regarded as infringement. However, if such an act is carried on for the purposes of scientific evaluation, analysis, research or teaching, it will not be considered as an act of infringement. Further, if any individual commits infringement, he/she shall be punished with an imprisonment for a term that is extendable for up to 3 years or a fine that will not be less than Rs. 50,000/- and is extendable to Rs. 10 lakhs. At times, imprisonment and fine both can be applied as punishment.
Landmark cases one must know related to semiconductor integrated circuits layout design
No Indian cases can be found, hence cases from an international perspective are discussed for the understanding of the readers.
Ocular Sciences Ltd vs. Aspect Vision Care Ltd. (1996)
In this , the England and Wales High Court (Patent Court) held that the Plaintiff has failed to prove their claims of breach of confidence and copyright infringement. The Court further claimed that the Defendant had not breached the fiduciary duties to the Plaintiff.
HiTrend Technology (Shanghai) Co., Ltd. vs. Renergy Micro-Technologies (Shenzhen) Co., Ltd. and Shanghai Yachuang Texin Electronics Co., Ltd. (2014)
In this , the Court ruled that a company (Renergy Micro-Technologies (Shenzhen) Co., Ltd.) must immediately stop infringing the exclusive rights granted to another Company- HiTrend Company. The Shanghai Court also claimed that the infringer must compensate the company with RMB3.2 million, considering the financial losses they sustained and also pay for the reasonable expenses they underwent to cease the infringement. Upon this judgement, the parties disagreed and agreed to accept the verdict and appeal to the Shanghai Higher People’s Court. The Court dismissed the appeal and upheld the original judgement.
Digital assets: a new budding form of IPR
A new form of IP that is being increasingly recognised is digital assets. This form includes-
- Proprietary software or algorithms, and
- Online digital content.
Examples of digital assets
The most common examples of digital assets can also include documents, audio, videos, logos, slide presentations, spreadsheets and websites. So, those materials have the potential to produce economic benefits.
Digital assets include but are not limited to:
- Photos,
- Audio files,
- Videos and motion pictures,
- PDFs,
- Presentations,
- Graphics,
- Documents,
- Designs,
- Spreadsheets,
- 3d files,
- E-books
and other relevant digital data that is in circulation, is, or will be stored on digital appliances like:
- Personal computers,
- Laptops,
- Portable media players,
- Tablets,
- Data storage devices.
For instance, the need tree is said to have multiple uses in India and its usage is referred to as traditional knowledge. This application was mentioned in Indian contexts about 2000 years ago and is used for decades in agriculture, human and veterinary medicine, toiletries and cosmetics and also as an insect and pest repellent.
Why must traditional knowledge be protected
The major reasons as to why traditional knowledge has to be protected are as follows:
- Consideration of equality.
- Conservation questions.
- For maintaining traditional customs and community.
- For preventing appropriation of components of traditional knowledge by unauthorised persons.
- For fostering the uses and its significance in development.
Regulations that govern protection of traditional knowledge
In India, the following laws and regulations protect the information passed on from generation to generation, a.k.a., traditional knowledge:
Biological Diversity Act, 2002
This Act deals with fundamental issues related to traditional knowledge like:
- Right to use the natural assets.
- Gathering and consuming such natural assets.
- Dividing the profits that occur out of such an entrance.
- Safeguarding assets from bio piracy.
The Patent Act, 1970
Under this Act, patent protection shall be granted for processes that are related to the use of assets (like microorganisms and plants or animals, etc.), and also for those processes that are known to indigenous areas which meet the same requirements.
The Copyright Act, 1957
Copyright protection can be given to those traditional knowledge holders whose imaginative demonstrative, mainly artists that belong to indigenous religious and indigenous groups, are protected from illegal reproduction and misuse of such demonstrations. The relationship between the creators/artists/authors and their work is being dealt with under moral rights in accordance with of the Copyright Act, 1957.
The Protection of Plant Varieties and Farmers Rights Act (PPVFRA), 2001
Under this Act, the rights of a plant breeder if he/she discovers a new variety of plant which is distinct, stable, uniform and novel can be protected and registered. PBR (plant breeder’s rights) can also be obtained based on traditional plant diversity.
The Geographical Indications of Goods (Registration and Protection) Act, 1999
Under this Act, all methods of producing commodities and those techniques who have undergone a change or have evolved with time to yield better results can be protected. Further, GIs can be used to protect therapeutic products in India.
General cases pertaining to the protection of traditional knowledge
India does not have an explicit statute that protects traditional knowledge and folklore, but it is a work in progress. The following are some of the noteworthy cases involving traditional knowledge.
Neem
Over the past centuries, this tree that is well known in India has been used as biopesticide and medicine. This tree, as we know, has several medicinal and healing properties and the same has been mentioned in several ancient Indian Ayurveda texts. The EPO (European Patent Office) withdrew its patent number 436257 that was issued to the United States of America and to the cosmopolitan business W.R. Grace for the Neem tree insecticide extracted from the seed. Despite neem’s properties coming from an ancient tradition, about 12 UD patents were recently withdrawn and all of these involved neem based emulsions and solutions.
Turmeric
In 1993, the University of Mississippi Medical Centre received patent rights for curing a wound by applying turmeric onto a wound of an individual. An application for reexamining such a registration form filed along with about 2 dozen mentions,which upshot in early success.
Rice
The USPTO (United States Patent and Trademark Office) granted RiceTec, an American company, the patent for Basmati rice. In India, this created a lot of chaos and a request for reexamination of such registration was filed, which made the USPTO understand that the core claims made by the company were irrelevant.
What are some initiatives taken by the Indian Government to protect traditional knowledge
Mentioned below are some of the approaches initiated by the Indian government to protect traditional knowledge:
Beej Bachao Movement
In 1995, there was an affiliation with the residents of Jardhar in Tehri Garhwal district
of Uttar Pradesh, the NGO Kalpavriksh started a movement to trace the diversity of indigenous seeds and conservation practices by the local community.
Honey Bee Network
Honey Bee Network has the world’s largest grass-root novelty database. This network is run by SRISTI (Society for Study and Initiatives for Sustainable Technology & Institutions, Ahmadabad). The main motive of this network is to promote popular innovation, to protect IPRs for small innovators and to ensure that original innovators and information providers get the profit out of it.
Tabular representation on difference between types of IPs
Please note: Only the most important types of IPs are discussed, to serve academic purposes.
| Pointers | Patent | Copyright | Trademark | Design | Geographical indication (GI) | Plant varieties | Trade secrets |
| Meaning | A patent safeguards an invention. It provides the owner the exclusive right to prevent others from selling, making and using the patented invention for a specific time period. | A copyright protects one’s expression of literary or artistic work. This protection arrives automatically thus giving the holder the exclusive right to control reproduction or adaptation. | A trademark is said to be a distinction sign that is used to differentiate between products or services of one business from that of the other. More often than not, trademarks are often closely interlinked to brands. | A design registration safeguards one from any form of outward appearance or aesthetic style of an object. | A geographical indication (GI) can be defined as a sign that is used on materials that have a specific geographical origin and have qualities or reputation that are due to that origin. | Plant varieties can be defined as the protection that gives legal protection to a plant variety to the one breeding it in the form of Plant Breeder’s Rights (PBRs). | A trade secret can be said to be formula, practice, process, design on compilation of information that is used by a business to gain some sort of advantage as compared to the competitors. These secrets are (by definition) not shared with the world at large. |
| Right protected | Any rights related to a new invention to manufacture the product patented or to make use of the process patented. | Any rights related to original, literary, dramatic, musical and artistic works, cinematograph films and records are protected here. | Any rights conferred to a particular mark, that could be in the form of-symbol, word, ordevice applied to articles of commerce to indicate the distinctiveness of goods. | Any rights conferred in respect of a new original design. Perhaps, the design must not be published anywhere across the country. It must be noted that designs generally do not protect functionality or unseen (internal) design elements. | Any rights of goods or services that belong to the specific origin, collective marks, certifications marks and the like are protected. | Any rights relating to a new plant variety, extant varieties or seeds are protected. | Any trade secret regarding a production method, a sales method or any other information on technology or business that is not known to the general public is protected. |
| Duration | Generally, patents are protected for 20 years from the date the application is filed. However, for an invention claiming the method or process of manufacture of a substance under Section 53 of the Patents Act, the duration is 5 or 7 years from the date of dealing the patent. Further, it will be 14 years in respect to other inventions; however, this time period was amended in 2002 (in accordance with the TRIPS requirement), and now the duration is 20 years, as discussed above. | Generally, copyrights are protected for the lifetime of the creator (or author) plus 6o years in the case of a literary, dramatic, musical or artistic work (except photograph) under Section 23.The duration is also 60 years in the following cases-Posthumous work (Section 24),Photograph (Section 25),Cinematograph film (Section 26),Sound recordings (Section 27),Government works (Section 28),Public undertakings (Section 28A),International organisations (Section 29) | The duration for which a trademark may vary, but is usually 10 years and can be renewed (for another 10 years) from time to time. | The time period for registering a design is ten years from the date it was registered; however, this period can be extended for another 5 years through an application in Form-3 followed by paying the requisite fees to the Controller. This process has to be followed before the expiration of the initial period of ten years. | Geographical indications are protected for ten 10 years and can be from time to time for another 10 years. | The time period in the case of plant varieties varies and is as follows:Trees and vines (18 years from the date the variety was registered).Extant varieties (15 years from the date of notification of that variety by the Central Government under the Seed Act, 1966.Other crops (15 years from the date of registration of the variety. | As opposed to trademark, patents, trademarks, etc., trade secrets are protected without registration. Simply put, trade secrets do not need any procedural formalities in order to be protected. Additionally, a trade secret can be protected for an unlimited period of time unless it is discovered or legally acquired by others or made known to the general public. In simple words, a trade secret can be protected as long as the secret is kept. |
| Who can register | For patent, any individual who is the first inventor, assignee, or the legal representative of any deceased person who before his/her death was entitled to file an application for registration. | For each work, any individual or legal entity can file an application for copyright registration. | Any sole proprietor, partners, individual of LLP (limited liability partnership), private limited companies, etc., can file an application for trademark registration In India. | Any proprietor or owner of a design that is new and original and has not been previously published anywhere in any country and is not against public order or morality can apply for a design to be registered in India. | Any individual, manufacturer, organisation or authority established by or under any law can apply for registering GI of their product. | Any farmer or even group of farmers that claim that they are the breeders of a variety of a plant or any individual who has the power to file an application behalf of the University can file an application for registering a plant variety. | As we know there is no explicit law that discusses trade secrets in India.it is pertinent to note that, one can obtain trade secrets without protection and that there is no need to fulfil any formalities for registering a trade secret. |
| Effect of non registration non renewal | If a patent is not renewed again, the protection will end and enter public domain. Once a patent enters public domain, anyone can commercially exploit it without worrying about infringement. | Copyright in India lasts for 60 years, after which it becomes a part of the public domain and anyone can use it without seeking prior permission from the author. | If a trademark is not renewed within the stipulated time period, the registrar will remove the mark from the Register of Trademarks. | If a design is not renewed, the design will cease to have any effect and one cannot further sue any individual or organisation that uses the design. | In case a registered geographical indication is not renewed, it can be removed from the register. | ||
| Punishment for infringement | The punishment for a patent infringement is an imprisonment of a term extendable to 2 years or a fine, at times, both. | The punishment for copyright infringement is an imprisonment of up to 6 months and a minimum fine of Rs. 50,000. | The punishment for trademark infringement is imprisonment for a period of 6 months that is extendable to 3 years and a fine between Rs. 50,000 to Rs. 200, 0000. | The punishment for design infringement is a maximum of Rs. 25,000 for each breach that is recoverable and the amount recoverable for a single design should not exceed Rs. 50,000. | The punishment for GI infringement is imprisonment between 6 months and 3 years and a fine between 50,000 and 2 lakhs. | The punishment for plant varieties infringement is an imprisonment for 6 months that is extendable to 3 years or a fine between Rs. 1 lakh and Rs. 5 lakhs, at times both. | The punishment for infringement of a trade secret (or criminal breach of trust as there is no specific law regarding the same) is an imprisonment of up to 3 years or a fine. |
Conclusion
We know, intellectual property can be used for several reasons, like-
- Branding,
- Marketing,
- Protecting assets to have a competitive edge over other similar businesses, etc.
Further, these IPs, which are assets, cme in numerous shapes and sizes. Some assets do not have a physical presence (commonly known as intangible assets), but IP holds just as much value for corporations as that of tangible assets. Generally, patents involving logos or brand names which can be patented, registered and trademarked assist consumers in recognising popular companies and their products. Considering this, it becomes quite crucial for companies to take the requisite steps to protect such assets to prevent them from being misused or infringed by third parties.
Each type of IP comes with unique features and acts as a cornerstone for protecting these forms of innovation and expression. By learning about these types of IPs, including patents, trademarks, copyrights, trade secrets, plant varieties, etc., it is evident that IPs play an indispensable role in fostering innovation, safeguarding creators’ rights, and driving economic growth.
Frequently Asked Questions (FAQs) on types of intellectual property
Who owns intellectual property?
Generally, the individual who has created the work is regarded as the owner. Yet, intellectual property ownership can be said to vary depending on different types of property and under varying circumstances. For instance, if any work is created for an employer, the employer is regarded as the owner of that intellectual property. Further, there is a possibility that ownership rights can be transferred from one party to another.
What is the main object of intellectual property?
Intellectual property can be used for several reasons, like branding and marketing. Further, it is also used to protect assets that give a competitive edge over other similar or same businesses or products.
What is the scope of intellectual property rights?
The Convention, WIPO (World Intellectual Property Organization) that established the word ‘intellectual property’ has provided quite a broad definition that intellectual property right shall include the rights related to-
- Any type of literally, artistic and scientific work;
- Any sort of performances of performing artists, phonograms, broadcasts;
- Different inventions in all fields of human endeavour;
- Scientific discoveries;
- Industrial designs;
- Trademarks, service marks;
- Protection against unfair competition and all other rights that result from intellectual activity in the industrial, scientific, literary and artistic fields.
How can one avoid infringement of any type of intellectual property?
Usually, an intellectual property is infringed without knowledge or intention, i.e., unwittingly. In order to avoid being sued for infringement of any intellectual property, one must ensure that their company or organisation is not using any material that is either copyrighted or trademarked. Further, they must ensure that the brand logo is not similar to or resembling another brand in a manner that would mislead someone to think it was the other brand. Additionally, when it comes to patents, it is always a good idea to carry out a patent search to ensure that any ideas are their own and not otherwise. If the scenario is the opposite, one must find ways to licence them through proper channels.
Word of advice: There are several IP lawyers (in India and abroad) that have specialised in the process of this and they ensure that you (their client) are not using anybody else’s protected intellectual assets. Moreover, if any individual is hired to do creative work for another individual or his/her company or organisation, they must ensure that the contract between both parties has an explicit mention that any creative material that is generated becomes the property of the company and not the individual who was hired to complete the task.
Multiple Choice Questions on types of intellectual property
The following are some on types of IPs in India.
If an individual has used another artist’s background music in his/her music video, what would the act amount to?
- Identity theft
- Copyright infringement
- Cyber-bullying
- Hacking
Correct answer: b
Generally, the use of information and ideas are protected by IPR are of-
- Cultural value
- Moral value
- Commercial value
- Social value
Correct answer: c
Which among the following is closely related to IP rights?
- TRIMS
- MFN
- GATS
- TRIPS
Correct answer: d
Under what type of agreement is royalty paid on the basis of sale?
- Copyright
- Patent
- Mining
- Licensing
Correct answer: a
References
- University of London Press vs. University of Tutorial Press [(1916) 2 Ch 601]
- Gramophone Company vs. Super Cassettes Industries [(1996) PTC 252 Delhi]
- Donoghue vs. Allied Newspapers [(1937) 3 All ER 503]
- Bombay Private Limited vs. Feel Good India and Anr.
- Anglo French Drug vs. Hony-N-Bois 1989 PTC 289 (Bombay)
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