“Respect for inventors is the key for success of a patent system”
-Kalyan C. Kankanala
When creator provides an exclusive right over the use of his/her creations for a certain time period, this is called an Intellectual property rights. The term Intellectual property throws light on the idea that this subject matter is the product of the mind or intellect, and that Intellectual property rights are protected under the law in the same manner as any other form of property. The acquisition, registration or enforcement of Intellectual property rights vary from jurisdiction to jurisdiction.
Categories of Intellectual Property: For ease of understanding Intellectual property is divided into two categories:
- Industrial Property
Industrial Property: This includes inventions, trademarks, industrial designs and geographical indications of source.
Copyright: The literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, painting, photograph and sculptures and architectural designs are included under the copyrights.
Rights Protected under Intellectual Property:
- Geographical indications
- Industrial design
- Trade secrets and confidential information
Patents are exclusive rights granted for an invention which may be a product or a process as well. An owner of a patent has the sole right over his/her invention. This mean that invention cannot be commercially, made, used, distributed, imported or sold by others without the consent of patent owner. A patent protection is generally granted for twenty years from filling of application and after the expiry of this period of twenty years, the knowledge become part of public domain.
The Patent system in India is administered by the Patents Act, 1970 as amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003, as amended by the Patents (Amendment) Rules, 2006. The system is administered under the superintendence of the Controller General of Patents, Designs, Trademarks and Geographical indications. The Office of the Controller General comes under the Department of Industrial Policy and promotion, Ministry of Commerce and Industry. There are four patent offices in India. The head office is located at Calcutta and other patent offices located at Delhi, Mumbai and Chennai.
Requirements under India law for patent protection:
- It must be new inventive product or process
- It must be capable of industrial application
- It should be non-obvious
Patents are the most important intellectual property right in areas like electronics, pharmaceutical, biotechnology and manufacturing business. The details of all the patents are publically disclosed. This public disclosure of the patents encourages further innovation and inventions.
In Bayer Corporation V. UOI & Ors. ( 22nd April, 2019), Delhi HC held that, export of a patented invention for experimental purposes is also covered under Section 107A of the Patents Act, 1970 and thus does not amount to patent infringement.
Copyrights plays vital role in the areas like music, films, entertainment, software, and internet related businesses and publishing arts. Copyright is the set of exclusive rights granted to the author or creator of an original works, including the right to copy, distribute and adapt the work. Copyright lasts for a certain time period after the lapse of time the work is said to enter the public domain. Copyrights protect and reward the creativity by ensuring certain minimum safeguards of the rights of authors over their creations.
According to The Copyright Act, 1957, a copyright subsists in an original literacy, dramatic, musical or artistic work, cinematograph films and sound recordings. This means you can claim a copyright on a variety of your original works. Copyright will only protect expression of ideas and not the idea or concept itself. Facts, titles, phrases and forms cannot be copyrighted.
In Fermat Education V. M/s Sorting Hat Technologies Ltd. (13th August, 2018) Madras HC held that the fair use of the materials by a teacher or a pupil in the course of instruction cannot be pressed into service since the first defendant uploads materials for consideration. It was held that once consideration is paid for uploading materials, then it becomes a business venture and a responsibility is imposed on the defendants to ensure that they do not infringe the copyright of any another person. It was held that defendants cannot enjoy the fruits of infringed material prepared by the plaintiffs.
In B.N. Firos V. State of Kerala (27th March, 2018), SC held that upon reading the Copyright Act and the IT Act together, it can be observed that only those ‘computer systems’ should be considered as ‘protected system’ under the Information Technology Act, which qualify as ‘Government Works’ as per the Copyright Act. The Court rejected the Appellant developer’s claim of copyright of in the software created as a part of government project, holding that the Government is the first owner of the software in question, since the work was first published by a Government Body as per Section 2(k) of the Copyright Act which defines the ‘Government work’. Once this condition was satisfied, the Notification under Section 70 of the IT Act 2000 in Official Gazette was found to be lawful.
The signs which distinguish one company from another are termed as Trademarks. A trademark is a visual symbol which may be a word signature, name, device, label, numerals or combination of colors used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. The Trademarks Act, 1999 and The Trademarks Rules, 2002 govern the law relating to Trademarks in India.
Key Features of Trademarks:
- It must be distinctive
- It must be used in commerce
In Toyota Jidosha Kabushiki Kaisha V. M/s Prius Auto Industries Ltd. (Civil Appeal No. 5375-5377 of 2017) SC reiterated that IP rights are territorial not global. The Court refused to grant an injunction restraining the defendant from using its trademark Prius even Toyota was the prior user of the mark. It is reasoned that even though Toyota’s mark was well known outside India, Toyota failed to show that it enjoyed a reputation in the Indian market at the relevant point of time, when the defendant began using the mark in India.
In H&M Hennes & Mauritz AB & Anr V. HM Megabrands Pvt. Ltd & Ors. (31st May, 2018), The Delhi HC has secured the rights of a foreign company in their trade mark against the rights of an Indian Company by granting a permanent injunction in favour of plaintiff. The dispute arose when the plaintiff proprietor of the famous brand H&M came across the defendant’s mark HM and filed a suit seeking injunction to restrain the infringement of their trade mark.
In Bigtree Entertainment Pvt. Ltd. V. D. Sharma & Anr. (21st January, 2019) The Delhi HC refused to grant injunction in favour of the plaintiff. The plaintiff, Bigtree Entertainment, proprietor of the “BOOKMYSHOW” mark had filed a suit for trademark infringement, seeking restraint of use of mark “Book My Event” or prefix “Bookmy” by the defendants. The Court held that plaintiff’s mark “BOOKMYSHOW” has not attained exclusivity and that prefix “BOOKMY” is a common English term and its link with booking for shows, events, films etc. is obvious which makes it descriptive of the services in respect of which it is claimed for. It noted that the visual effects namely, font and colour schemes of the rival marks are different and therefore, it is unlikely that the customers would be confused by the said trade names or marks.
Geographical indications of goods are defined as that aspect of industrial property which refers to geographical indication referring to a country or to a place situated therein as being the country or place of origin of that product for instance Darjeeling tea, Swiss Watches, Solapur Chaddar etc. Geographical Indication of Goods (Regulation and Protection) Act, 1999 and The Geographical Indication of Goods (Regulation and Protection) Rules, 2002 deals with the registration and better protection of geographical indication relating to goods. If the quality or reputation of the product is due to the place of origin only then it is granted.
According to the Designs Act, 2000, “design means only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual mechanical or chemical, separate or combined, which is the finished article appeal to and are judged solely by the eye. A maximum time period for an industrial design is fifteen years.
Requirements for registration of design:
- It must be new or original
- Not disclosed to the public anywhere by publication in tangible form or by use or in any other way
- There must be significant difference from known designs or combination of known designs
- It must not contain any obscene elements
- It must not be contrary to public order or morality
In Cello Household Products V. M/s Modware India & Anr. (30th March, 2017), Bombay HC held that this particular bottle of the plaintiff has achieved a great deal of commercial renown, the plaintiff has successfully established reputation for the purpose of passing off. Due to the obvious similarity between the rival designs, the question is not whether it is confusing, but whether it is calculated to deceive because Passing off is an action in deceit; the deceit lies in the misrepresentation; and the misrepresentation must be as to source, i.e., to deceive the average consumer into believing the defendant’s product is the plaintiff’s.
It was held that defendant was attempting to deceive consumers into believing that its products came from the house of Cello i.e. plaintiff as there can be no possible explanation for defendant to adopt a shape, configuration, ornamentation and colour combination, so very nearly identical to that of plaintiff. The third element of passing off i.e. likelihood of damage was also deemed to have been fulfilled in the case. Further, it was held that since defendant’s product was almost identical to the plaintiff’s product, prima facie, plaintiff’s design was sufficiently original and that defendant’s product infringed upon it. Finally, prima facie, design infringement was concluded to have occurred
Trade secrets and confidential information:
A trade secret and confidential information is any information that has been intentionally treated as secret and is capable of commercial application with an economic interest. It provides competition advantage by protecting information which is not readily available with or discernible by the competitors. Agreements and internal policies protect the trade secrets and confidential information.
Non-disclosure agreements with employees and other stakeholders can ensure the non-disclosure of sensitive and confidential information with any third party. Manufacturing secrets, formulas, recipes, practices, patterns or complied information such as list of consumers can be protected as trade secrets.
Intellectual property rights have became significantly conspicuous on the legal horizon of India both in terms of new statues and judicial pronouncements. Intellectual property rights has vital role in all sector and has became a crucial factor for investment decisions by many companies.
India is now TRIPS compliant. This is an international agreement governed by the World Trade Organization (WTO), which sets down minimum standards for many forms of intellectual property regulations as applied to the nationals of other WTO members. The well balanced system of intellectual property rights in India is helpful for foreign companies to protect their intellectual property in India.
Associate at Aggarwals & Associates, S.A.S. Nagar, Mohali