7 April, 2015

 

Legal News & Analysis – Asia Pacific  India – Intellectual Property

 

India has an elaborate and an all – encompassing legislative regime for administration, protection and enforcement of diverse categories of Intellectual Property (IP). IP regime in the country has evolved significantly in the last 20 years after the establishment of World Trade Organization (WTO) pursuant to which TRIPS agreement came into being. India being a founder member of WTO became a party to TRIPS which not only led to amendment of almost all the existing IP legislations in the country but also resulted in introduction of new IP enactments. Currently, the IP framework in the country is governed by 8 different Acts, each of which, are in sync with India’s international commitments and development priorities. Each Act protects a unique form of intellectual property and grants different types of exclusive rights to creators, owners and also provides a framework to balance the interests of the   right holders and the social interests of the users in accessing knowledge and cultural goods and thus is pivotal in fulfilling the ultimate objective of the intellectual property

 

The Trade Marks Act, 1999

 

The Trade Marks Act, 1999 (as amended in 2010) coupled with the Trade Mark Rules, 2002(as amended in 2014) forms the statutory basis of protection, registration and administration of trade marks in India. Any mark that can be graphically represented (represented in paper form) and is distinctive (capable of distinguishing good and services of one person from those of another) can be registered under the Act. The registration of the mark is for 10 years and can be renewed ad-infinitum from time to time in accordance with the provisions of the Act. Registration confers on the trademark owner a host of exclusive rights, acts as the prima-facie evidence of the validity of the mark and enables the right holder to initiate infringement action in case of violation of exclusive rights. Additionally, the Act accords protection to well-known trademarks and also recognises the common law rights of the trademark owner to initiate passing off action even if the mark is not registered. The Trademarks Act is administered in India by the Trade Marks Registry in accordance with the provisions of the Trademarks Act, 1999. The Registry, which has its offices at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad, is the nodal agency for registration of trademarks in India. The Registry functions under the constant supervision of Office of Controller General of Patents, Designs and Trademarks (CGPDTM) which in turn functions under Department of Industrial Policy and Promotion (DIPP) of the Ministry of Commerce and Industry.

 

The Patents Act, 1970

 

The Patents Act, 1970 accords protection to “inventions” which are defined to be new product or process involving an inventive step and capable of industrial application albeit inventions such as business methods, agricultural methods and mere discoveries of new forms of already known substances not resulting in enhancement of known efficacy of the respective substances (the famous section 3(d) bar) are not protectable. The Act accords exclusive rights of making, using, offering for sale, selling and importing to the patent holder. However some exceptions in the form of compulsory licensing provisions, research exemptions, etc., limiting the exclusive monopoly of the patent holder, have been provided in the Act so as to subserve the national interests of the country. Indian Patent Office, headquartered in Kolkata, and having branches in Mumbai, Delhi and Chennai is the nodal agency for registration of patents in India.

Patent applications can be filed with Indian Patent Office either with complete specification or with provisional specification along with fee as prescribed in schedule I of the Patent Rules, 2003.  In case the application is filed with provisional specification, complete specification needs to be filed within 12 months from the date of filing of the provisional application.  Since India follows first to file system for according priority in patent applications, it is useful to file a provisional application beforehand. Patent protection is granted for 20 years from the date of filing of the patent application subject to regular payment of renewal fees. However unlike trademarks, registration of patents is not a prima-facie evidence of its validity. The Act also provides no.of mechanisms such as post opposition proceedings, revocation proceedings, counter claim in patent infringement suit to challenge the grant of the patent.

 

The Copyright Act, 1957

 

The Copyright Act, 1957 coupled with Copyright Rules, 2013 provides protection to original literary, dramatic, musical and artistic works, cinematograph films, sound recordings and computer programmes. The Act also recognises broadcast reproduction right and performer’s right and accords protection to them. Generally, the  author of works are regarded as the first owner of the copyrights subject to some exceptions in case of  Government works, works done in the course of the employment, etc. The Act grants bundle of rights to copyright owners such as right to

     

  • reproduce the work in material form,
  •  communicate the work to the public
  • issue copies of the work not being copies already in circulation
  • make adaptations of the work

 

The nature and scope of rights vary depending on the category of the work. To facilitate equitable access to the copyrighted works for the users, the Act puts certain limitations on the exclusive rights of the copyright holders and permits usage of the copyrighted work without the permission of the copyright owners provided the use is fair and is for certain specific purposes such as education, news reporting, etc. which have already been provided in the Act. The Act also provides for compulsory and statutory licensing of copyrighted works in certain cases for the benefit of the disabled or for broadcasting.

 

While registration is not mandatory for seeking copyright protection, it is advisable to do so as register of copyrights is prima-facie evidence of particulars entered therein. Copyright Office, headed by Registrar of Copyrights, accords registration to Copyrights and the term of copyright protection depends on the nature of the work.

 

The Designs Act, 2000

 

The Designs Act, 2000, which repealed and replaced the earlier Designs Act, 1911, provides the statutory scheme for protection of designs and has been in force since 11th May, 2001. The Act provides for minimal standards for protection of Industrial Designs as contemplated in the TRIPS Agreement and coupled with the Designs Rules, 2001, as amended in 2008, streamlines the procedural aspects pertaining to registration and processing of design applications. What would constitute design has been defined statutorily to mean “features of shape, configuration, pattern or ornament or composition of lines or colour or  their combination  applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, which in the finished article appeal to and are judged solely by the eye”. Once all these requirements are fulfilled, feature may suitably be called as the “design” under the Act and it becomes eligible for registration provided

     

  •    it is new or original,
  •   has not been disclosed by prior publication or use or in any other way,
  •   is sufficiently distinguishable from known designs or their combination
  •   does not contain scandalous or obscene matter and is not contrary to public order or morality

 

Registration of design is mandatory as unregistered designs are not enforceable under the Designs Act, 2000 though if a design by long and continuous use has become distinctive of owner’s goods it may be protected under the common law action of passing off. However, to succeed under “Passing Off”, the owner must establish that the design of article has become distinctive of his goods owing to continuous use.

Application for registration of design may be filed at any of the four locations of the Indian Patent Office at viz. Delhi, Mumbai, Kolkata & Chennai. However, Designs Wing is located only at Kolkata. Accordingly design applications filed in the other three Offices are sent to Kolkata and are processed there. It’s possible to file new design applications for registration electronically since 9th March, 2015. The term of design protection is 10 years which may be extended for another 5 years.

 

Geographical Indications of Goods (Registration and Protection) Act, 1999

 

India enacted GI (Geographical Indications) Act as part of its obligations under TRIPS as under TRIPS if the GI is not protected in the country of its origin, there is no requirement under the TRIPS Agreement for other countries to extend the reciprocal protection. The Act provides comprehensive definition to GI and extends GI status to all such agricultural, natural or manufactured goods whose quality, reputation or other characteristic is essentially attributable to geographical origin. As per the Act, any association of persons or producers or any organisation, representing the interests of the producers of the concerned goods, can seek GI Registration. Registration confers the following advantages on the right holders

     

  • Confers legal protection to GI in India
  • prevents unauthorized use of registered GI
  • enables seeking legal protection  in other countries

The term of GI protection is 10 years and the protection may be extended ad-infinitum by filing for renewals at regular intervals.

 

Semiconductor Integrated Circuits Layout Design Act, 2000

 

The Act establishes sui generis regime for protection of layout designs of Integrated Circuits. The criteria for registration of layout designs is

     

  • originality,
  • not commercially exploited anywhere in India
  • distinctiveness
  •  capability of being distinguished from other layout designs

 

Any creator of the layout design can seek registration of his layout design by filing an application with the Semiconductor Integrated Circuits Layout Designs Registry (SICLDR) located in Delhi. Registration of layout design gives the owner the following rights

     

  • Right to use
  • Right to reproduce
  • Right to sell
  • right to import the layout design

Registration also provides the exclusive right to obtain relief in respect of infringement. Additionally Registration also acts as the prima facie evidence of the validity of layout designs. The term of protection of layout design is 10 years from the date of filing an application for registration or from the date of first commercial exploitation whichever is earlier.

 

Protection of Plant Varieties and Farmers Rights Act, 2001

 

The Act established an elaborate and effective framework for protection of plant varieties and protection of rights of farmers and plant breeders. The Act allows for registration of any new variety which is novel, distinctive, uniform and stable. Application for registration has to be made to the Plant Variety Registry located in Delhi. The term of protection after registration is nine years in case of trees and vines and six years in case of other crops. The registration may be reviewed and renewed. However the total period of registration shall not exceed

     

  • in the case of trees and vines, eighteen years from the date  of   registration of the  variety
  • in the case of extant varieties, fifteen years from the date of  notification of that variety  by the Central Government
  • In other cases, fifteen years from the date of registration of the variety.

 

Biological Diversity Act, 2002

 

The Act provides an institutional framework for conservation of biological diversity in India and for facilitating fair and equitable sharing of benefits arising out of the use of biological resources among all the stakeholders. Accordingly, the National Biodiversity Authority (NBA) was set up in 2002 to fulfil the mandate of the Act. NBA is an autonomous body and advises the Government of India on a plethora of issues pertaining to conservation, sustainable use of biological resource and equitable sharing of benefits among the stakeholders.

 

While the above mentioned are the categories of IP which have been granted statutory protection in India, Indian Courts though their judicial pronouncement have also accorded protection to trade secrets and prevented breach of confidential information though trade secrets, currently, are not statutorily protected in India.

 

 

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