• Intellectual Property Right [IPR]

  • With the advent of the knowledge and information technology era, intellectual capital has gained substantial importance. Consequently, Intellectual Property [IP] and rights attached thereto have become precious commodities and are being fiercely protected. In recent years, especially during the last decade, the world has witnessed an increasing number of cross-border transactions. Companies are carrying on business in several countries and selling their goods and services to entities in multiple locations across the world. Since intellectual property rights [IPRs] are country-specific, it is imperative, in a global economy, to ascertain and analyze the nature of protection afforded to IPRs in each jurisdiction. 

    Intellectual Property Rights [IPRs] are legal rights, which result from intellectual activity in industrial, scientific, literary & artistic fields. They are the rights given to persons over the creations of their minds. The IPRs usually give the creators and other producers of intellectual goods & services an exclusive right over the use of his/her creation for a certain period of time. The IPRs can be owned, sold or bought. Trade Marks, Patents and Copy Rights affect the growth and prosperity of every industry, particularly, pharmaceuticals, publishing and entertainment. The Indian government has taken several initiatives to create a conducive environment for the protection of intellectual property rights of innovators and creators. The IPR includes the following- Patent, Trade Mark, Copyright, Passing Off, Industrial Designs, Trade Secrets, Protection of New Plant Variety, Etc.   

    A PATENT is a monopoly right granted to a person for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem. It provides protection for the invention to the owner of the patent. The patent right is granted for a limited period, i.e 20, and thereafter it may be renewed also. Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others. All patent owners are obliged, in return for patent protection, to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world. Such an ever-increasing body of public knowledge promotes further creativity and innovation in others. Infringement of patent is liable for legal action. An action for infringement of a patent can be instituted by filing a civil suit in the Court having jurisdiction. The Indian Patent Act, 1970 contains the law governing patents.    

    A TRADEMARK is a distinctive visual symbol or sign in the form of name, word, device, letter, numeral, etc., that identifies certain goods or services as those produced or provided by a specific person or enterprise. It may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colours used as distinguishing features. It provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services. It helps consumers identify and purchase a product or service. Registration of trademark is prima facie proof of its ownership giving statutory right to the proprietor. Trademark rights may be held in perpetuity. The initial term of registration is for 10 years; thereafter it may be renewed from time to time. An action for infringement of a trade mark can be instituted by filing a civil suit in the Court having jurisdiction. The Trade Marks Act, 1999 contains the law governing Trade Marks.    

    A COPYRIGHT is a legal term describing rights given to creators for their literary and artistic works. It is a sort of negative right, which prohibits others from reproducing or copying the work of the copy right holder. The kinds of works covered by copyright include: literary works [novels, poems, plays, reference works, newspapers and computer programs; databases; films, musical compositions, and choreography] artistic works [paintings, drawings, photographs and sculpture; architecture; and advertisements, maps and technical drawings], dramatic works, and musical works. Copyright subsists in a work by virtue of creation; hence it’s not mandatory to register. However, registering a copyright provides evidence that copyright subsists in the work and the creator is the owner of the work. Creators often sell the rights to their works to individuals or companies best able to market the works in return for payment. These payments are often made dependent on the actual use of the work, and are then referred to as royalties. These economic rights have a time limit, that is, for the lifetime of author plus sixty (60) years after creator’s death. The registration of Copy right is optional and is not a condition precedent for acquiring copyright. The registration however avails the copyright holder a prima facie evidence, which he could use in the Court of law at his will. The entries, as made in the register of the copyright office, are duly published in the official gazette of the Government and therefore the Courts accept the certified copy of the registration as a full proof of copyright, requiring no further proof of the same. An action for infringement of a copyright can be instituted by filing a civil suit in the Court having jurisdiction. The Copyright Act, 1957 contains the law governing copy rights.

    Industrial Designs refer to creative activity, which result in the ornamental or formal appearance of a product. The essential purpose of design law it to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The design right refers to a novel or original design that is accorded to the proprietor of a validly registered design. Under the TRIPS Agreement, minimum standards of protection of industrial designs have been provided for. As a developing country, India has already amended its national legislation to provide for these minimal standards. The legislation on industrial designs in India is contained in the New Designs Act, 2000 [ For short the Act] and this Act serves its purpose well in the rapid changes in technology and international developments. India has also achieved a mature status in the field of industrial designs and in view of globalization of the economy, the present legislation is aligned with the changed technical and commercial scenario and made to conform to international trends in design administration. The Act is also aimed to enact a more detailed classification of design to conform to the international system and to take care of the proliferation of design related activities in various fields.

    TRADE SECRETS: It may be confidential business information that provides an enterprise a competitive edge may be considered a trade secret. Usually these are manufacturing or industrial secrets and commercial secrets. These include sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes. Contrary to patents, trade secrets are protected without registration. A trade secret can be protected for an unlimited period of time but a substantial element of secrecy must exist, so that, except by the use of improper means, there would be difficulty in acquiring the information.

    LAYOUT DESIGN FOR INTEGRATED CIRCUITS: Semiconductor Integrated Circuit means a product having transistors and 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 aim of the Semiconductor Integrated Circuits Layout-Design Act 2000 [For short SICLD] is to provide protection of Intellectual Property Right (IPR) in the area of Semiconductor Integrated Circuit Layout Designs and for matters connected therewith or incidental thereto. The main focus of SICLD Act is to provide for routes and mechanism for protection of IPR in Chip Layout Designs created and matters related to it. The SICLD Act empowers the registered proprietor of the layout-design an inherent right to use the layout-design, commercially exploit it and obtain relief in respect of any infringement. The initial term of registration is for 10 years; thereafter it may be renewed from time to time. Department of Information Technology Ministry of Communications and Information Technology is the administrative ministry looking after its registration and other matters.

    PROTECTION OF NEW PLANT VARIETY: The objective of this act is to recognize the role of farmers as cultivators and conservers and the contribution of traditional, rural and tribal communities to the country’s agro biodiversity by rewarding them for their contribution and to stimulate investment for R & D for the development new plant varieties to facilitate the growth of the seed industry. The Plant Variety Protection and Farmers Rights act 2001 was enacted in India to protect the New Plant Variety. Initially 12 crop species have been identified for registration, that is, Rice, Wheat, Maize, Sorghum, Pearl millet, Chickpea, Green gram, Black gram, Lentil, Kidney bean etc. India has opted for sui-generic system instead of patents for protecting new plant variety. Department Agriculture and Cooperation is the administrative ministry looking after its registration and other matters.

    Intellectual Property Appellate Board [IPAB]: IPAB has its headquarters at Chennai. The Registry is situated at Chennai, where sittings are also held. Circuit sittings are held at present at Delhi, Mumbai, Kolkata and Ahmedabad. Its Chennai Address is as follows: Annex-I, Guna Complex, II Floor, 443 Anna Salai, Teynampet, Chennai, Tamil Nadu 600018, Phone: 044 2432 8902.

    We at Hello Counsel realize that Intellectual Property Rights are important in today's technology driven age. We specialize in the Intellectual Property (IP) laws in India. We provide a variety of Intellectual Property services in the fields of Trademark, Patent, Copyright, Design, Trade Secrets, Geographical Indication, Data Protection, etc. We conduct IP due diligence and IP audits for companies going for acquisitions, mergers and joint ventures.

    Our Referral Practice broadly include the following:

    • Copyright   
    • Designs- Layout Design For Integrated Circuits
    • Geographical Indications: Registration for protection of geographical indications relating to goods: Decisions of the Registrar appealable before the Intellectual Property Appellate Board (IPAB). 
    • Industrial Designs  
    • Jurisdiction: Trade Mark, Patents & Infringement
    • Licencing & Franchising
    • Patent: The Patents (Amendment) Act 2002 was enacted to bring our patent regime in line with the TRIPS agreement. Vide this amendment, the Intellectual Property Appellate Board [IPAB] was conferred with the jurisdiction to hear all cases against any order or decision of the controller and all cases pertaining to revocation of patent other than on a counter claim in a suit for infringement and rectification of registers.
    • Passing Off
    • Protection of New Plant Variety
    • Suit for infringement and rectification of registers
    • Trade Mark  
    • Trade Secrets
    • TRIPS Agreement.

    Concerned Courts & Fora: IPR

    • Hon'ble Supreme Court Of India.
    • High Court Of the Concerned State;
    • Intellectual Property Appellate Board (IPAB);
    • Registrar Of Trade mark;
    • Controller of Patents.

     

    Legislations Governing IPR In India

    Related Links: Legislations Governing IPR In India

    Judgments & Citations: IPR In India

    Judgments & Citations: Foreign Judgments

    • Commil Usa, Llc V. Cisco Systems, Inc., 2012-1042, Prost, Chief Judge, Newman & O’malley, Circuit Judges, United States Court Of Appeals For The Federal Circuit [PDF Full Judgment].

    Judgments& Citations: Injunctions & Stay

    • State of Madhya Pradesh Vs The Intellectual Property Appellate Board, Chennai, and 4 others, WP No.5798 of 2016, Judgment Dated: NA/ Status: Pending, Bench: CJ & M.M.Sundresh, JJ, Madras High Court [Full PDF Judgment]- Issue, the inclusion of certain areas of Madhya Pradesh as Basmati growing areas needed to be examined by the Assistant Registrar of Geographical Indications, in view of the impugned order of the Intellectual Property Appellate Board- There is also a plea which is not capable of being raised in the proceedings before the Assistant Registrar of Geographical Indications and can be raised before HC only as a consequence of the impugned order.- Interim Order, “It is directed that till the decision is taken in the writ petition, no precipitative action will be taken by the second respondent in respect of the produce from the State of Madhya Pradesh qua the existing areas where such rice is alleged to have been grown [PDF Of the order dated- 17.02.2016] [PDF Of Interim Order].
    • Info Edge (India) Ltd. Versus Rakesh Kalia, Cs(Comm) 36/2015, Judgment Dated-15.12.2015, Bench: Hima Kohli, J, Delhi High Court [Full PDF Judgment]- Case concerning a leading internet job portal, “NAUKRI.COM”- Restraining Orders sought by the naukri.com against infringement of the trademark, passing off, unfair competition, infringement of copyright etc.- Injunction granted.

    Judgments& Citations: Trade Marks Act, 1999

    • Data Infosys Ltd. And Ors. Versus Infosys Technologies Ltd., FAO (OS) 403/2012, Judgment Dated: 05.02.2016, Bench: S. Ravindra Bhat, Vipin Sanghi, Najmi Waziri, JJ, Delhi High Court [Full PDF Judgment]- Question, whether prior permission of the Court is necessary under Section 124(1)(b)(ii) of the  Trade Marks Act, 1999 for rectification of a registered trademark, during the pendency of a suit.- DB referred the matter to full bench when it observed/ noticed a judicial conflict on this question.-  The first view is that proceedings for rectification of the defendant’s mark cannot be initiated without the prima facie satisfaction of the plea by the Court and that the suit cannot be adjourned or stayed in terms of Section 124(1)(b)(ii) of the Act to await the outcome of the rectification proceedings initiated by the plaintiff before the Intellectual Property Appellate Board (hereafter “IPAB”) - if the procedure outlined therein is not followed. The other view is that such proceedings (for rectification before the IPAB) can be initiated without the permission of the court trying the infringement suit and the consequence of not obtaining permission is only that the applicant cannot seek stay of suit.- Held, “1. (a) IPAB has exclusive jurisdiction to consider and decide upon the merits of a plea of trademark registration invalidity – applying Section 47 and 57 of the Act- in the context of an infringement suit based on such registered trademark. Access to IPAB is not dependent on the civil court’s prima facie assessment of tenability of a plea of invalidity of trademark registration. In other words, Section 124 of the Trademarks Act does not control the choice of a litigant to seek rectification of a registered trademark. (b) The decision in Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals and Pharmceuticals Ltd. 2007 (34) PTC 469 (DB) (Del) and all other judgments which hold that the plea of rectification can be raised by a party to an infringement suit, only if the court trying the suit, rules it to be prima facie tenable and that if such finding is not recorded, the party cannot avail the remedy of rectification of a registered trademark, is accordingly overruled. 2. This Court holds, by its majority judgment (Vipin Sanghi, J dissenting on this point) that the two situations whereby the infringement action is stayed, are when the rectification proceedings are instituted before the filing of the suit (Section 124 (1) (i)) and after the plea of invalidity is held to be prima facie tenable under Section 124 (1) (ii)). In the first situation, if such plea exists, before the filing of the suit, the Court has to stay the suit to await the decision of the IPAB. In the second situation, if there is no application for rectification before the IPAB when the suit is filed and a party to the infringement suit, wishes to challenge it after the filing of the suit, it may do so, but the court has to assesses the tenability of the invalidity plea- if it finds it prima facie tenable, then and then alone, would it stay the suit to enable the party to approach the IPAB within a time period. If the party does not avail of this, or approaches the IPAB after the period given, the court would proceed with the suit; the plea of invalidity is deemed abandoned in the infringement suit.”

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