Intellectual Property Rights

With the changing market trends and environment, Intellectual Property Rights have become the face of the competition. To get the best commercial results from intellectual property ownership, any company or individual must now take steps to protect their intellectual property.

The World Intellectual Property Organization (WIPO) defines Intellectual property (IP) as creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce. For example- an author’s copyright on a book or an article; design of logo of a company or product; patent for the process of chewing gum; etc.

Intellectual Property is divided into two main categories: 

• Copyrights- includes writings, paintings, musical works, dramatic works, audiovisual works, sound recordings, photographic works, broadcast, sculpture, drawings, architectural works, etc.
• Industrial Property- includes inventions (patents), trademarks, industrial designs, and geographic indications of source. 

To protect the Intellectual Property there are certain exclusive rights given to the owner or the creator to protect and use their creation for a certain period as stated by the World Trade Organization (WTO). Protection of Intellectual Property is gaining more attention from legislative, administrative, and judicial bodies to save the infringement of IP rights of the owner as it is the need of the fast-growing market in every sector. 

Intellectual Property Laws In India

George Alfred DePenning was the first person in India to protect his intellectual property. In 1856, he filed the first patent application for his invention, “An Efficient Punkah Pulling Machine”. The Government of India enacted the Patents Act in 1856 to grant what was then known as “exclusive privileges for the encouragement of inventions of new manufactures”. The petition was accepted, and the invention received the country’s first Intellectual Property protection.

The main legislation protecting Intellectual Property Rights In India are as follows:

• The Copyright Act, 1957
• The Trade Marks Act, 1999 and the Trade Marks Rules, 2002; Trade Marks (Amendment) Act, 2010
• The Patent Act, 1970
• The Designs Act, 2000 and the Designs Rules, 2001; The Designs (Amendment) Rules, 2008
• Geographical Indications of Goods (Registration and Protection) Act, 1999; The Geographical Indications of Goods (Registration and Protection) Rules, 2002

1. The Copyright Act, 1957

Section 14 of the Act defines “Copyright” as the exclusive right subject to the provisions of this Act, to do or authorize the doing of any of the acts mentioned in this section in respect of a work or any substantial part thereof. In simple words, it is the bundle of exclusive rights given to the author or creator of original work, including the right to copy, distribute and adapt the work. As creativity is the key to progress, it is important to safeguard and encourage the same in society. Hence, the Copyright of work protects the artists, authors, writers, designers, dramatists, musicians, architects, and producers of sound recordings, cinematograph films, and computer software creations and motivates them to create more. 

Provisions under The Copyright Act, 1957 that helps a creator to protect his creation are as follow:

1. The Act divides classes of work on which copyright protection is available under Section 13 of the Act as – a) original literary, dramatic, musical, and artistic works; (b) cinematograph films; and (c) sound recording. It includes Computer Programmes also. 

2. Section 17 of the Act provides for instances under which the author of the work is treated as a first owner of the copyright. In the case of  Donoghue v. Allied Newspaper Ltd., (1937) it was clear that Copyright does not protect mere “ideas.” When B writes articles based on A’s ideas, the copyright in the articles belongs to B, not A, because there can be no copyright in an idea, no matter how original it is, but only in the specific form of language or picture through which the idea or information is conveyed.
3. Section 22 to 29 of the Act deals with the term of copyright. Copyright generally lasts for sixty years.

• any literary, dramatic, musical, or artistic work (other than a photograph) published within the lifetime of the author until sixty years from the beginning of the calendar year next following the year in which the author dies.
• In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and public undertakings, and works of international organizations, the 60 years is counted from the date of publication. 
• In the case of Broadcast reproduction right and Performers right – 25 years from the beginning of the calendar year next following the year in which the broadcast and performance are made. (Section 37 and 38)
• The copyright infringements are discussed under Section 51 of the Act.

5. Section 55 of the Act talks about the civil remedies for copyright infringement injunction, damages, accounts, and otherwise as are or may be conferred by law for the infringement of a right. A person is liable for the punishment under Section 63 of the Act for a minimum of six months and with a fine which shall not be less than fifty thousand rupees. 

• The Trade Marks Act, 1999

The law governing Trademark registration and its infringement in India is “ The Trade Marks Act, 1999 and the Trade Marks Rules, 2002”. It protects the trademark from infringement by a passing off or/and infringement action. 

Trademark is commonly known as “Brand Name”. Section 2(m) of the Act defines “mark” it includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. Section 2(ZB) states “trademark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include the shape of goods, their packaging, and combination of colours. 

Trademarks help customers in distinguishing the goods or services of one company from another. It performs functions such as identifying the goods or services and their origin, guaranteeing their unchanged quality; advertising the goods/services, and creating an image for the goods/ services. 

Important Provisions under The Trade Marks Act, 1999 are :

1. Registration of Trademark is under Section 18 of the Act. A person needs to apply in writing in a prescribed format for the registration.

2. The Nice Agreement Concerning the International Classification of Goods and Services for the Registration of Marks (“Nice Classification”) is recognized by WIPO. It categorizes 45 classes (1-34 for goods and 35-45 for services). Section 7 of the Act categorizes goods and services under the International Classification of Goods and Services for Trademark Registration.
3. Sections 21 to 26 of the Act outline the procedure for trademark registration, while sections 9 and 11 of the Act outline the grounds for refusal.

• Section 9 deals with absolute grounds for refusal of the registration of trademark such as trademark- (a) which are devoid of any distinctive character; (b) that serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which have become customary in the current language or the bonafide and established practices of the trade.
• Section 11 discusses the relative grounds for trademark registration refusal, such as if the trademark (a) causes public confusion; (b) is identical to or similar to an earlier trademark; (c) is liable for passing off, or (d) is protected by copyright.
• Section 29 of the Act sets the grounds for the infringement of Trademark whereas section 27 of the Act states that no infringement action will lie in respect of an unregistered trademark, but recognizes the common law rights of the trademark owner to take action against any person for passing off goods as the goods of another person or as services provided by another person or the remedies thereof.

5. A person is liable for the punishment for falsification of trademark or falsely applying the trademark for goods and services not to be less than 6 months imprisonment which may extend to three years and a fine which shall not be less than 50,000/-, but may extend to Rupees Two Lakh (Section 103).  

• The Patent Act, 1970

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. The Patent Act, 1970 defines “patent” as a patent for any invention granted under this Act. Invention under Section 2(1)(j) means a new product or process involving an inventive step and capable of industrial application. The Act aims at the patent owner with exclusive rights to prevent or stop others from commercially exploiting the patented invention. 

The invention must satisfy three basic tests, to qualify for patent:

• NOVELTY- it means the creation of something which did not exist before.
• NON-OBVIOUS- it means the invention should be a new inventive step. That is, it should be a significant improvement to existing technology. The simple changes to existing technology do not qualify for a patent. 
• UTILITY- it means the invention must be useful. 

The procedure for applying for the patent is mentioned under Chapter III (sections 6 to 11) of the Act. The patent application must be made within the applicant’s territorial limits (ie. residence, or domicile, or place of business, or place of origin of the invention).

Penalties under the Act for infringement of patent rights by third-party by way of unauthorized selling, making, importing, using, or offering the invention for sale within India are well explained as:

1. Section 118: deals with the Contravention of secrecy provisions relating to certain inventions. Section 35 is related to the secrecy directions about inventions for defense purposes and Section 39 relates to residents not to apply for patents outside India without prior permission. Failing to comply with both the sections, a person is liable for imprisonment for a term which may extend to two years, or with a fine, or with both.

2. Section 119: deals with the Falsification of entries in the register etc. If any person makes or causes to be made, a false entry in any register kept under this Act, he shall be punishable with imprisonment for a term that may extend to 2 years or with fine or with both.
3. Section 120: deals with the unauthorized claim of patent rights. If any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with a fine which may extend to one lakh rupees. 
4. Section 121: deals with wrongful use of words, “patent office”. If any person uses on his place of business or any document issued by him or otherwise the words “patent office” or any other words which would reasonably lead to the belief that his place of business is or is officially connected with, the patent office, he shall be punishable with imprisonment for a term which may extend to six months, or with fine, or with both.
5. Section 122: deals with refusal or failure to supply information. If any person refuses or fails to furnish information as required under sections 100(5) and 146 he shall be punishable with a fine, which may go up to ten lakh rupees. If he furnishes false information knowingly, he shall be punishable with imprisonment that may extend to 6 months or with a fine or with both. 
6. Section 123: deals with the practice by non-registered patent agents. Any person practicing as a patent agent without registering (section 129) is liable to be punished with a fine of one lakh rupees in the first offense and five lakh rupees for a subsequent offense. 
7. Section 124: deals with offenses by companies. 

• The Designs Act, 2000

The design doesn’t mean art or decoration. But it is more related to science and is a calculated process. Design is something that is applied by industries in their various products like jewellery, handicrafts, watches, electrical appliances, etc. To keep the new and original designs safe and protect the owner from losses, India has enacted The Designs Act, 2000, and the Designs Rules, 2001. The act provides for safeguarding the owner’s interest and promotion of new and innovative designs in the industry. 

• Section 2(d) of the act defines “design” as only the features of shape, configuration, pattern, ornament, or composition of lines or colours 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 in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trademark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.
• Requirements for designs to be protected under the Act are- (a) it should be original and new; (b) should have its applicability to functional articles; (c) should be visible on the article; (d) no previous publication or disclosure of the design.
• A design registration application must be filed in the prescribed manner under section 5 of the Act. After the registration, the controller issues a certificate to the proprietor of the design (Section 9). 
• In case of piracy of the registered design as discussed in section 22 of the Act. A person is prohibited from using the design except or with the permission of the proprietor. The section makes a person liable for infringement if he
  • Fraudulently or imitate design for purpose of sale;
  • Import design for sale;
  • Publish or expose or cause to be published or exposed for sale of that article knowing fraudulent or imitation of design has been applied to it. 
• Section 22(2) of the Act provides relief to a proprietor for his loss.