• Abhinav Agrawal

Intellectual Property Rights: A legal perspective

Updated: Jan 11




This Article is written by Abhinav Agrawal

Today, law is emerging in various fields and providing the vast opportunity to explore it in every possible aspect. There are various facets like Criminal law, corporate law, Cyber law, Property law etc. But this time what is galvanizing everyone attention is Intellectual Property Law and the Rights associated with it. Intellectual Property Law (IP) is an exponentially growing field. We are witnessing a large multinational companies is focusing in protecting their products from their competitors in every possible aspect. There are number of products that we are using are covered with different IP’s. India is becoming a hub of startups and R&D centers, which are nothing but intellectual creations. Intellectual Property law gives due recognition and protection to your creativity in various fields and set it up before the society. People protect what they create. It is a basic human tendency for which they need another set of people.

Introduction

An intellectual property right is not just a right to exclude others from using, selling, producing the protected assets. It is also designated to provide the holder with the positive right to assign or license his rights for the commercial and other bonafide uses. This includes a right to reproduction, distribution and sale of an IPR protected technology or product or process. There are various types of IPR’s like Patent, Trademark, Copy Rights, Geographical Indications, Designs, Trade secrets etc. In general Patents, Trademarks, Industrial Designs and Geographical Indications are put under the category of Industrial Property These are distinguished from the product of creativity that are protected through Copyrights. The main purpose of intellectual property law is to encourage the creation of a wide variety of intellectual goods. To achieve this, the law gives people and businesses property rights to the information and intellectual goods they create, usually for a limited period of time. This gives economic incentive for their creation, because it allows people to profit from the information and intellectual goods they create. These economic incentives are expected to stimulate innovation and contribute to the technological progress of countries, which depends on the extent of protection granted to innovators

World intellectual property organization

The World Intellectual Property Organization or as it is popularly called, WIPO, is a specialized agency of the United Nations, which serves as a forum for its Member States to establish and harmonize rules and practices for the protection of intellectual property rights. WIPO also services global registration systems for trademarks, industrial designs and appellations of origin, and a global filing system for patents. These systems are under regular review by WIPO’s Member States and other stakeholders to determine how they can be improved to better serve the needs of users and potential users.

Among newer or developing countries, however, many are still in the process of building up their legal frameworks on various types of Intellectual Property and their systems. With the increasing globalization of trade and rapid changes in technological innovation, WIPO plays a key role in helping these systems to evolve through treaty negotiation; legal and technical assistance; and training in various forms, including in the area of enforcement.

From the private parties to state, anyone and everyone can avail the benefits of tools and techniques developed by WIPO, with its member states, to not only be accessible to all but to provide support in cases of violation.

WIPO is a largely self-financed organization. More than 90 percent of its annual budget is generated by the international registration and filing systems. A fund from member states, WIPO’s publications and the Arbitration and Mediation Center contributes to the remaining 10 percent of the funds.

Patents

A patent is an exclusive right granted for an invention which is product or a process that provides in general a new way of doing something or offers a new technical solution to a problem. Patent provides an exclusive rights to a product or process which is Novel, Inventive Step and have an industrial application can be patented in India. However, it must not fall into the category of inventions that are non-patentable as provided under sections 3 and 4 of the (Indian) Patents Act, 1970.

We must keep in mind the subject matter which is going to be patentable shall not exist or is not a existing state of art and is obviously novel. All the inventions cannot be protected as patents. Patentable object should be non obvious. Just attaching a wheel or stand or handle to an existing object would not be an inventive step. It is also essential that the product concern should have enough utility by the way of industrial application i.e. it should be capable of being produced industrially in a large quantities.

How to file a patent application ?

A patent application should specify the following points:

A Title of the invention

B Date of filing

C A detailed description of the invention

D All the claims that bring out the scope of invention

E Drawings and illustrations

F Abstract of the invention

In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee and in case the inventor has passed away his Legal Representative can also file it.

The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an “international” patent application. Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or, at the applicant’s option, with the International Bureau of WIPO in Geneva. A single patent application under patent Co-operation treaty allows a patentable subject matter to receive patent protection in all the members countries at once.

To encourage innovation patents are not permanently protected Terms of every patent in India and USA is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification.

Trademarks

According to WIPO “A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprise”.

Trademark is anything which identifies the origin of goods and services. It protects names, letters, words, numerals, colors, shape, the packaging, or any combination of these. Nowadays, even a Jingle associated with a brand of flavors and fragrances could act as a Trademarks.

The most fundamental feature of a trademark is the distinctiveness of the protected logo, which could lie in the symbol or the words associated with that logo.

A Trademark is an exclusive right to use the logo or he protected name. The owner has the right to prohibit others from exploiting the Trademark. He also has the rights to authorize others to use some or all the rights associated with the Trademark. In fact, well-known trademark does not even require registration to receive protection.

gives the right to the police to arrest in cases of infringement of the trademark. The Act gives a complete definition for the term infringement which is frequently used. In Trademark Act, it provides punishments and penalties for the offenders. It also increases the time duration of registration and also registration of a non-traditional trademark.

Registration of Trademark Any person claiming to be the owner of the trademark or supposed to used the trademark by him in future for this he may apply in writing to the appropriate registrar in a prescribed manner. The application must contain the name of the goods, mark and services, class of goods and the services in which it falls, name and address of the applicant and duration of use of the mark. Here the person means an association of firms, partnership firm, a company, trust, state government or the central government.

Grounds for refusal of trademark registration– Absolute grounds for the refusal of trademark is explained in section 9 of the trademark act, Any trademark which are devoid of any distinctive character, that , not capable of distinguishing the goods or services, which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin.

And also a time of production of goods or rendering of the offerings or different characteristics of the goods or offerings which consists solely of marks or indications which have come to be average in the present language. That marks are not entitled to registration. Except it is confirmed that the mark has in fact acquired a new character as a result of use before the date of application.

It is also mention that the marks shall not be registered as a trade mark if —-

it is of such nature as to deceive the public or cause confusion: (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (c) it comprises or contains scandalous or obscene matter;(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Rights of a registered trademark is infringed by the who is not being a registered proprietor uses it in a course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

Passing off is a common law tort used to enforce unregistered trademark rights. It protects the right of the person against any misuse of his product or goodwill by the defendant. It is enumerated that no proceedings can be instituted to prevent the infringement of the unregistered trade mark but Section 27 talks about the rights of action a person whose trademark is used by any other person in order to destroy its reputation or goodwill. For this registration of Trademark is irrelevant.

In the case of Mahendra And Mahendra Paper Mills … vs Mahindra And Mahindra Ltd on 9 November, 2001 it is held that that there are three major tests which should be kept in consideration while determining the action against the unregistered trademark is the they being : (1) is there any special aspect of the common feature which has been copied ? (2) mode in which the parts are put together differently, i.e., whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts ?

The above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK. …Broadly stated, in an action for passing–off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered.

In the case T.V. Venogopal vs Ushodaya Enterprises Ltd. & Anr on 3 March, 2011. It is observed by the Learned counsel for the respondent company submitted that the scope of passing–off action is wider than in an infringement of trademark or copyright action. Therefore, in an action of passing–off, an injunction can be granted even against a registered trademark holder.

The measures for passing off is different from the measures of an infringement. The claim for infringement is a lawful remedy whereas the claim for passing off is a common law remedy. Therefore, in order to establish infringement with respect to a registered trademark, it is only required to prove that the infringing mark is same or deceptively similar to the certified mark and no more proof is required. In the case of a passing off claim, proving that the marks are same or deceptively similar only is not sufficient.

It is observed that a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated.

Copyrights

. Copyrights are indeed one of the oldest forms of intellectual property it calls for originality and creativity. Copyrights will be protected whether the work id registered or not, even the work is done by anonymous or pseudonymous artist is protected as copyrights. According to WIPO A copyright (or author’s right) is a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyrights range from books, music, paintings, sculpture, and films to computer programs, databases, advertisements, maps and technical drawings.

Copyright protection exists not only during the lifetime of the author but also beyond it. WIPO’s Berne Convention for protection of Literary and artistic works which goes back to 1886 provides a time limit for copyright to subsist. It is 50 years after the death of the creator after the expiration of the period the work would fall in public domain. India follows the principle of life + 60 years.

There are various dimensions of the copyrights:

(a)Economic rights is a right in which author can authorize others to use a work in various ways like Distribution rights, broadcasting rights adaptation rights etc. Creators usually interested in commercializing the creations and they transfer these rights to professionally equipped entities which commercialize these products efficiently and effectively.

(b)Moral rights are integral to the creator that requires recognition and respect for the integrity of his work. The author who exercise these rights can choose to restrict any mixing or modification of his right or even restrict sharing of a work.

(c)Neighboring rights are the rights in which work done by certain persons or organization is being covered. While Copyrights protect the work done by authors neighboring rights protected the work done by all others associated with the work of creation. For e.g. in case of a novel work is done by author is a creator, the publisher also have some rights over it.

Neighboring rights are largely economic as it depend on creator he can authorize or can forbid it. The first recognition of neighboring rights came in with the adoption of 1961 Rome convention for the protection of the performers, producers of phonograms, and broadcasting organizations. This treaty which is administered by WIPO gave performers in audiovisual works such as feature films, videos, and television dramas, rights against unauthorized broadcasts or recording of their performances.

In the year 1996, the World Intellectual Property Organization or WIPO adopted the new copyright treaty, which was updated for the internet age. Now this treaty is called WIPO Copyright treaty.

Geographical Indication

A Geographical Indication (GI) is a sign used on products that have a specific geographical origin and posses qualities or reputation that are due to that origin. In order to function as a GI a sign must identify a product as originating in a given place. In addition the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on geographical place of origin there is a clear link between the product and its original place of production. – By WIPO

All products that are eligible for protection as Geographical Indication share an intimate connection to a town, region or country. Protection of GI is afforded by the national legislation of the respective country. These rights are carried by all the producers in the locality who are carrying on with the activity in the specific geographical area. Registration of the GI is also encouraged as the proprietor have exclusive rights on them and can gain recognition for their products in the international market.

TRADEMARK VERSUS GEOGRAPHICAL INDICATION

A Geographical indication is often confused with the Trademark because both are characterized by the logos and symbols. There is a significant difference between them. Unlike Trademark which distinguishes the goods and services of one trader from that of another. A GI is an indicator of the purity and the originality of the distinctive goods in terms of place of their origin.

Another category of terminology is used in case of collective and certification marks. Collective marks are Trademarks that resembles GI’s. These marks may or may not share an unique Geographical origin as GI does. They are registered in name of Associations of producers or processors and the good concerned originates from the members of the association concerned. Similarly, Certification Marks that apply to goods and services are certified by the designated country. These marks provide the guarantee that the goods and services bearing the mark meet certain defined standard or possesses particular characteristic. Though many GI’s are certified trademarks or Certification Marks.

CONCLUSION

Intellectual property has a different perspective on both legal and economic front. On one hand protection of Intellectual Property provides rights to the holder, while on another it monetarily contributes to the organization, directly or indirectly. It is the product of the creative mind which can be purchased , registered or even traded. There are different possible role that a law student can play in IP Drafting, Litigation Filing & Prosecution Teaching, training and spreading awareness, Analytics and Strategy, Technology assessment and marketing Research, policy, philosophy and advocacy. IP is result of research and development and is usually considered one of the most valuable assets held by several organizations. IP law is too wide and dynamic.

Intellectual Property is not an unusual concept, in fact, it is a concept which is discussed in everyday life whether a movie, book, plant variety, food item, cosmetics, electrical gadgets, software’s etc. It has become a concept of pervasiveness in everyday life. The World Intellectual Property Day on 26th April every year.

END NOTES

https://www.wipo.int/treaties/en/registration/pct/

https://www.wipo.int/treaties/en/text.jsp?file_id=283854

http://www.ipindia.nic.in/acts-rules-tm.htm

https://indiankanoon.org/docfragment/476945/?formInput=passing-off


Trademark Law in India: In a Nutshell

Trademark Law in India      

Click to access 1_43_1_trade-marks-act.pdf

Click to access in122en.pdf


Career Opportunities for Law Graduates in Intellectual Property Law

https://www.wipo.int/geo_indications/en/

https://www.wipo.int/copyright/en/

#ipr #wipo #law #trademarks #patents #geographicalindication #rights #copyrights

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