Transcript Introduction to the Intellectual Property System in India Sagar Chandra Anand and Anand.

Introduction to the Intellectual
Property System in India
Sagar Chandra
Anand and Anand
The Law Has Doubled !
From four to Nine IP
Legislations
From 412 Sections to
827 Sections
OVERVIEW
INTELLECTUAL PROPERTY (IP or IPR)
INDUSTRIAL PROPERTY
TRADEMARKS
PATENTS
INDUSTRIAL DESIGNS
TRADE SECRETS
LAYOUT DESIGNS OF IC’s
GEOGRAPHICAL INDICATIONS
UNFAIR COMPETITION
COPYRIGHTS &
RELATED ISSUES
CONDITIONS FOR PROTECTION OF
TRADEMARKS
Must be distinctive
Generic
Bread for
Bread
Descriptive
Rollerblade
for skates
Suggestive
Whirlpool
for Washers
Arbitrary
Apple for
Computers
Fanciful
Exxon
/Kodak
Distinctiveness
Low
Medium
High
TRADEMARKS CAN BE:
WORDS
& LABELS
SYMBOLS
TRADE DRESS
.. OR NON-TRADITIONAL SUBJECT
MATTER
SMELL
SHAPE
SLOGANS
ZIPPO v. ANIL MOOLCHANDANI
• Shape mark registration awarded in India under registration number
714368 in Class 34
• Instituted shape mark infringement case against counterfeiters in Delhi
High Court seeking exparte ad interim injunction
• Through detailed order dated 13th July 2006 the learned Single Judge
granted exparte injunction
• The order which is the first of its kind in India acknowledged Zippo to
be a renowned trademark and extended the scope of judicial protection
to the shape aswell.
WHAT IS A PATENT?
REQUIREMENTS OF
PATENTABILITY ARE:
NOVELTY
UTILITY
NON-OBVIOUSNESS
COMPONENTS OF PATENT:
PATENT SPECIFICATION
MUST DISCLOSE THE INVENTION
HOW TO MAKE & USE IT
CLAIMS
DEFINES THE INVENTION FOR APPLYING
CONDITIONS OF PATENTABILITY
DETERMINING INFRINGEMENT
DURATION
20 YEARS FROM THE DATE OF APPLICATION
INDUSTRIAL DESIGN
• Protected under the Designs Act, 2000
• Protects
external
shape,
configuration,
surface
pattern
or
ornamentation
of
an industrially reproduced article
• New and novel
• Judged solely by the eye
• Non functional
Surface
Pattern
Shape
Clip
Design
Surface
Pattern
TRADE SECRECT
PROTECTED BY COMMON LAW AND
ALTERNATE TO PATENT SYSTEM
PROCESS OF MANUFACTURE, DRAWINGS,
KNOW-HOW, INFORMATION, LIST OF
CUSTOMERS, ETC.
TRADE SECRETS ARE PROTECTED
IF:
A) The information must be secret
B) Disclosed under conditions of confidentiality
C)Person attempts to misuse the trade secret
D) Criminal remedy for breach of trust
Examples
• Coca Cola Formula
• Most Famous locked in bank
vault, operable only by
board resolution
• Known to only two
employees at a time who
cannot travel on a flight
together
Examples
• Angostura Bitters
• Known to 4 people in
Siegert family
• Also kept in a bank vault
Gaud Asthma Cure – A traditional trade
secret –160 years old
SEMI-CONDUCTOR CHIPS
• Layout designs of integrated circuits
protected by statute: The Semiconductor
Integrated Circuits Layouts-Design Act,
2000
• Act is being implemented in phases; Section
3 and 5 brought into force which relates to
Registrar and Registry.
CONDITIONS FOR REGISTRATION
• Originality
• Non Commercial Exploitation anywhere in
India or in a convention country
• Inherently distinctive
GEOGRAPHICAL INDICATIONS
• Protected by Statute:
The Geographical Indications of Goods
(Registration and Protection) Act, 1999
• Duration of protection for a period of 10
years
Certification Trademark,
GIs - Darjeeling Tea
POCHAMPALLY IKAT
COPYRIGHT
GENERAL PRINCIPLES
Ideas vs Expression
 Independent development not covered:
“copying essential”

–

Presumptions :

Access;

No explanation;

Substantial Reproduction
Fixation
WHAT IS PROTECTED

Definition of “Works” :
–
–
–
–

Musical (e.g. musical composition)
Artistic (e.g. labels of products)
Literary (e.g. books and computer software)
Dramatic (e.g. a Play)
Neighbouring rights
–
–
–
–
Performing Rights
Cinematographic films (e.g. video films)
Sound Recording (e.g. audio tapes and
compact discs)
Broadcasting rights
WHAT IS COPYRIGHT?
– Restricted
rights:
– Right to reproduce (e.g. 3D reproduction engineering drawings)
– Right to publish
– Right to perform or communicate to public
– Right to make film or sound recording
– Right to make translation or adaptation
Multiple IP rights converge….
Arbitration and ADR experience in IP cases
in India
•
•
•
•
•
Patents to GIs – every conceivable type
Cost of Litigation – relatively low
2nd Largest Bar in the world
Over 500 Courts
One of the most litigious societies –
outstanding infrastructure of Law, Courts
and Lawyers
Settlement in IP Cases
• 90% of Counterfeiting cases settle after initial
stages
• Section 89 CPC -- Mediation Experience
– Not compulsory and no fear
– Delhi Judicial Academy
– Return of Court fees under Section 16 of the Court Fees
Act, 1870
• Successful cases of FORD and LEVIS
ENFORCEMENT SYSTEM
• Civil Remedies
Microsoft/BSA
Samsung
• Police/Criminal Remedies
Casio
Phillip Morris
• Customs
Cisco
Rayban
TAKE HOME POINTS
• Create and Innovate
• Protect
• Enforce
• License
THANK YOU