Nov 1, 2017
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Intellectual Property Protection in India

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This article explains Intellectual Property and gives knowledge about the various forms of Intellectual Property and so the International Intellectual Property Protection.

INTRODUCTION

Intellectual Property (IP) has traditionally categorized into Industrial property and Copyright. The term Industrial Property includes patents, trademarks, industrial designs, and geographic indications of source. Copyright protection thus granted to protect literary, artistic and musical works. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs. Intellectual property rights generally known as bundle of exclusive rights granted to the lawful owner.

The term intellectual property denotes the specific legal rights, and not the intellectual work itself. Its important to beware of what these IP rights are, how they can protect and, in due course, how to benefit from them.

Importance of Intellectual Property

Developments of new products and processes, brand names, content, etc. are resource intensive and usually require huge investments. It is therefore, the expectation of the individuals or entities creating them that they have exclusive rights over their creation to the exclusion of others. Intellectual Property system and laws essentially provides this exclusivity. For certain forms of IP like trademark and copyright, the right is born the day the work is created, registration though not mandatory provides certain benefits and advantages like prima facie proof of the ownership making it easier to enforce the IP right in court. Otherwise, the registered owner will have to prove that the IP belongs to him when the IP is used in an unauthorized manner.

In case of trademark only a registered proprietor can claim and sue for infringement. For certain IP like patents and designs, the right is granted upon making application and complying with the rules prescribed for their registration. The IP so protected helps the registered owners to reap the returns of their investments by preventing others from using the creation without permission. IP rights in essence are said to be negative rights. IP rights and registrations help the owner to exclude third parties from using the creation in an unauthorized manner and having a free ride on the efforts of the original inventor. It provides an incentive to keep creating and benefit from them.

The various forms of Intellectual Property Protection thus detailed below:-

1. TRADEMARK

A trademark considered the most valuable asset owned by a business. When a business is successful, others will imitate not only the ideas and market strategy, but very often they will also imitate the trademarks, product packaging, distinctive markings, etc. used by a successful company. Businesses with particularly successful products or services spend considerable amounts of time, effort and money creating, establishing and promoting their unique identities.

Owners who fail to pay sufficient attention towards the protection of their companies trademarks face a number risks, including the inability to register or use their own marks on a future date, the dilution of the market’s recognition of their products or services, and, in some cases end up spending huge resources in legal action to prevent unauthorized use or justify the use of their own property.

It is therefore pertinent that the trademarks be registered over all the goods and/or services over which the mark is used. The legislations which deal with the protection and registration of trademarks in India are The Trademark Act, 1999 and The Trademark Rules 2002. In India, trademark registration is valid for a period of ten years. The same maybe renewed from time to time for additional periods of ten years each.

The term trademark or service mark includes any word, name, symbol, or device, or any combination thereof to identify and distinguish goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.

2. PATENT

Patent is a form of protection that provides a person or legal entity with exclusive rights for making, using or selling a concept or invention and excludes others from doing the same, also for claiming damages from those who infringe the invention.

Patents generally cover innovations, products or processes that include new functional or technical aspects. However its granted by the Indian Patent Office and has a term of 20 years. After expiration of this 20 year monopoly the product/ invention will fall in the public domain for any third party to use it.

The legislations which deal with the protection and registration of patents in India are The Patent Act, 1970 and The Patent Rules 2003. The patent Act 1970 has undergone three (3) amendments in 1999, 2002 and 2005. In the 2005 amendment introduced product patent protection for food, pharma and chemical inventions.

In India an invention/product has to satisfy various criteria to qualify for a patent are:
  • New/ Novel- The invention has a feature that sets it apart from previous inventions and is unknown to the public.
  • Non-obviousness- The invention’s novelty must not be obvious to someone who has ordinary skill in the area of invention.
  • Utility- The invention considered useful.

Like other IP laws patent protection is territorial in nature. Registration of a patent ensures protection in all over India. If somebody wants to protect their invention in another country they have to file application in each and every country where the Applicant wants patent protection for their product/invention.

3. COPYRIGHT

Copyright a right given by the law to the creators of literary, dramatic, musical and artistic works and producers of cinematographic films and sound recordings. In fact, it is a bundle of rights including rights of reproduction, communication to the public, adaptation and translation of the work.

The creator of a copyrighted work has right to control/ prevent unauthorized copying or reproduction of their work by others for a certain time period, after the said work will enter in the public domain. The protection of copyright varies according to national legislations and the type of work. The Indian law extends copyright protection for the work made by an individual for life time of the author plus sixty (60) years. The Copyright Act, 1957 and the Copyright Rules, 1958 provide for protection of copyrights in India.

There are various criteria for securing copyright protection for a work.

Firstly, the work must be original and secondly, the work must be fixed or presented in tangible form such as writing, recording, film or photography, etc. Copyright does not protect the underlying idea but only the expression of that particular idea protected under copyright.

Copyright however provided automatically to the author of any original work covered by the law as soon as the work thus created. Registration is not mandatory, but provides for protection of ownership in case of dispute. Copyright registration is invaluable to a copyright holder who wishes to take a civil or criminal action against infringement.

One of the supreme advantages of copyright protection is that unlike other IP rights, protection is available in several countries across the world, by reason of India being a member of Berne Convention. Protection is given to works first published in India, in respect of all countries that are member states to treaties and conventions to which India is a member. Thus, without formally applying for protection, copyright protection is available to works first published in India, across several countries. The government of India vide International Copyright Order, 1999 has extended copyright protection in India to works first published outside India.

4. INDUSTRIAL DESIGNS

An industrial design refers to the creation of a shape, configuration or composition or combination of pattern or color in three dimensional forms containing aesthetic value. Designs Act protects only designs that are aesthetic in nature. An industrial design can be a two- or three-dimensional pattern. Novelty and originality are important criteria for a design registration. In addition, only those designs that thud apply to an article by an industrial process will however protected.

The Indian law of designs is enshrined in the Designs Act, 2000 and the Design Rules, 2001.The industrial design registration grants the proprietor the exclusive rights of selling, importing and applying the design to any product. India has adopted the ‘first to file’ system, which means that the right holder should file the application on the earliest point of time to rule out the possibility of any other person claiming for the rights of the intended designs. Any person can apply for the industrial design rights as far as the design is new, not previously published in any nation, reproducible through industrial means, not against to the public order, distinct from the known designs, not consisting of any obscene material and eye catching. In India, a design registration is valid for a period of 10 years, renewable for a further period of 5 years.

The registration of a design confers the copyright in the design for the period of registration to the proprietor. Copyright means the exclusive right to apply the design in respect of the article thus registered.

Some artistic works which is not possible to registered as the design. They are painting, sculpture, drawing (including a diagram, map, chart or plan), an engraving or photograph (whether or not any such work possesses artistic quality), a work of architecture, and any other work of artistic craftsmanship.

Design rights granted on a country-by-country basis. An Indian registration provides protection only in India and its territories. If the proprietor of a design wishes to protect a design in other countries, the owner must seek protection in each country separately under the relevant laws.

5. GEOGRAPHICAL INDICATION (GI)

Geographical Indication refers to “Indication which identifies a good as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin’.

In India, the geographical indications regime is regulated by the Geographical Indications of Goods (Registration & Protection) Act, 1999 and the Geographical Indication of Goods (Regulation and Protection) Rules, 2002. Registration of the geographical indication is not compulsory in India the owner of the unregistered geographical indication can enforce his rights through the common law remedy of passing off. However recommendable to register the geographical indication as the registration certificate acts as the prima facie evidence in the court in case of any dispute and no additional evidence thus required to prove the validity / ownership.

In India, a geographical indication may initially registered for a period of ten years, and it can renewed from time to time for further periods of 10 years. Indian law places certain restrictions in that a registered geographical indication is not a subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement.

At the international level, TRIPS sets out minimum standards of protection that WTO members bound to comply within their respective national legislations. However, as far as the scope of protection of geographical indication under TRIPS is concerned, there is a problem of hierarchy. This is because, although TRIPS contains a single, identical definition for all geographical indication, irrespective of product categories, it mandates a two-level system of protection: (i) the basic protection applicable to all geographical indication in general (under Article 22), and (ii) additional protection applicable only to the geographical indication denominating wines and spirits (under Article 23).”

India remains one of the world’s most challenging major economies with respect to Intellectual Property Protection and enforcement.

Intellectual Property Protection are therefore as follows:-

1.Trade Secrets under Intellectual Property Protection

Trade secret, a formula, process, device or other business information kept confidential to maintain an advantage over the competitors. The information which includes formula, pattern, compilation, programme, device, method, technique, or process, that derives independent economic value from not then generally known or readily ascertainable.

Therefore, the ingredients of trade secrets are-

(a) such information not generally known to the public which in turn confers economic or commercial benefit through the maintenance of confidentiality and exclusivity, and

(b) subjected to reasonable efforts of secrecy since disclosure would result in undue enrichment of others. For example, Maaza’s formula for its aerated drinks and Dominoes recipe for its delicious pizza considered as trade secrets which have preserved for many decades.

2. Interface with Intellectual Property under Intellectual Property Protection

Article 1(2) of the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), states that intellectual property protection shall include of undisclosed information.

Article 39 of the TRIPS Agreement states that in the course of ensuring effective protection against unfair competition as provided in Article 10b of the Paris Convention, with respect to information which

(a) a secret not generally known or readily accessible,

(b) has commercial value by virtue of secrecy, and

(c) has subjected to reasonable steps for ensuring its secrecy,

Member nations are to ensure that natural and legal persons have the possibility of preventing such information, within their control, from disclosed to, acquired by, or used by others without their consent, in a manner contrary to honest commercial practice. However submitted that the possibility referred to hereinbefore implies that trade secrets should accord to Intellectual Property protection within the legal system and not necessarily in the IP legislative framework of the said Member nation.

4.India’s Policy Approach under Intellectual Property Protection

The 1989 GATT (General Agreement on Tariffs and Trade) discussion paper of India sets out that as per India, trade secrets cannot be considered to be intellectual property rights, because while the fundamental basis of intellectual property right rests in its disclosurepublication and registration, trade secrets are premised upon secrecy and confidentiality. It maybe noted that disclosure and publication are necessary before according the protection of exclusivity when viewed from the IPR context since the prosecution stage involves challenges and objections which test the grant of said exclusivity. The paper further goes on to state that the observance and enforcement of secrecy and confidentiality should governed by contractual obligations and the provisions of appropriate Civil Law but not by intellectual property law.

On May 12, 2016 India approved the National IPR Policy with seven objectives and elaborative steps undertaken by the identified ministries/departments. One of these objectives was to ensure an effective legal and legislative framework for the protection of IPRs. The steps outline taken towards attaining this objective include, among other things, identification of important areas of study and research for future policy development, and one such area identified was the protection of trade secrets. Hence it may be noted that India has taken a step towards considering the protection of trade secrets under the ambit of IPR protection.

Subsequently, the U.S.-India Trade Policy Forum held on October 20, 2016 in New Delhi included a meeting of the High-Level IP Working Group, a side-event on trade secrets, and several notable consensus outcomes related to promoting IP. India announced that it has taken important initiatives and steps, designed to enhance trade secrets protection in India, showing India’s strong commitment towards the importance of trade secrets protection.

These initiatives and steps include the following:
  • A workshop convened with government officials, academics, legal experts and representatives from U.S. and Indian industry that facilitated the exchange of information and best practices on trade secrets protection in both countries;
  • India noted that it protects trade secrets through a common law approach;
  • A toolkit would prepare for industry, especially SMEs, to highlight applicable laws and policies that may enable them to protect their trade secrets in India;
  • A training module for judicial academies on trade secrets may also considered;
  • A further study on various legal approaches to protection of trade secrets will also undertaken by India.

5. India’s Common Law Approach under Intellectual Property Protection

The Delhi High Court in American Express Bank Ltd. v. Priya Puri, defined trade secret as formula, technical know-how or a method of business adopted by an employer which is unknown to others and such information has reasonable impact on organizational expansion and economic interests. Indian courts have approached trade secrets protection on the basis of principles of equity, action of breach of confidence and contractual obligations.

  • Equity

In John Richard Brady v. Chemical Process Equipments P. Ltd., it was held that independent of an underlying contract or in the absence of one, he who has received information in confidence is not allowed to take unfair advantage of it. This lays down that undue enrichment at the expense or detriment of another goes against the tenets of equity and fairness which need not be dependent on contractual obligations.

  • Breach of Confidence

In Zee Telefilms Ltd. v. Sundial Communications Pvt. Ltd., it laid down that in an action of breach of confidence, the obligation of confidence not limited to the original recipient but also extends to those persons who received the information with knowledge acquired at the time or subsequently that originally given in confidence. In Diljeet Titus v. Alfred Adevare & Ors, it was held that the Court must step in to restrain a breach of confidence independent of any right under law and that such an obligation need not be expressed but be implied and the breach of such confidence is independent of any other right.

Therefore, submitted that the protection of trade secrets does not always necessarily stem from the owner of such secret who has a right per se in respect of the same but from the implied obligation to maintain confidence by virtue of the nature of trade secrets in general.

  • Contractual Obligations

In Niranjan Shankar Golikari v. Century Spinning, it was held that negative covenants in employment agreements pertaining to non-disclosure of confidential information operative during the period of the contract of employment and even thereafter, are generally not regarded as restraint of trade and therefore do not fall under Section 27 of the Contract Act, 1872 as a former employee should not be allowed to take unfair advantage of the employer’s trade secrets which are vital for business. Post service restraint in maintaining confidentiality and also carrying on any other business for a limited period is permissible under the exception to Section 27 of the Contract Act, as held in Homag India Pvt. Ltd. v. Mr. Ulfath Ali Khan.

6. Conclusion for Intellectual Property Protection

Hence submitted that as explained hereinabove, the common law trinity of equity, breach of confidence and contractual obligations for the Intellectual Property protection of trade secrets shall well suite to business requirements in India. India’s position should not mistaken to connote that there is insufficient intellectual property protection accorded to trade secrets and confidential information in the country. In fact, it must clarified that Intellectual Property Protection may not consider as correct form of protection accorded to trade secrets. Trade Secrets rely on their nature of secrecy which precludes the quid pro quo disclosure required by the State before granting a statutory right of monopoly. Moreover, secrecy prevents the subject matter from testing with regards to the scope of “has commercial value” and “has subjected to reasonable steps of secrecy”.

Intellectual Property Protection pertinent to note that statutory enactment may not seem sufficient to define the scope of what constitutes trade secret and protection thereof which could consider more adequately handled on a case to case basis by the common law approach. It would be apposite to mention that legal proceedings and pleadings pertaining to trade secrets should base on high modicum of confidentiality to protect the nature of the information as such.

 

 

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Article Categories:
Trademarks Copyrights IP

Avani is a LL.B. student of New Law College. Classical use of language and adeptness with the written word make her treasure useful legal information. In her spare time, she writes prose and pursue an active interest in creative writing.

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