Patents

What is Patent?

The word “Patent” refers to a monopoly right over an invention. Not all inventions are patentable nor it is essential to protect inventions solely through Patent. The statutory definition of Patent under the Patents Act, 1970 as a Patent for any invention granted under the Act.

Rights in a Patent

Patent registrations confer on the rightful owner a right capable of protection under the Act i.e. the right to exclude others from using the invention for a limited period of time. The monopoly over patented rights can be exercised by the owner for a period of 20 years after which it is open to exploitation by others. A Patent confers the right to manufacture, use, offer for sale, sell, or import the invention for the prescribed period.

Time Period for which Patent is granted

Initially, the Act provided for a shorter term of protection for medicine or drug substances. However, vide the Amendment Act of 2005 uniform period of 20 years was provided for all the Patents. Thus, once the prescribed period of 20 years is over, then any person can exploit the patented invention. It would be further be relevant to mention that similar to a trademark even the term of a patent begins from the date of application of the Patent.

Invention under the Patent Act

The term “invention” is defined as a new product or process involving an inventive step capable of industrial application. The term “industrial application” refers to capable of industrial application in relation to an invention that means that the invention is capable of being made or used in the industry. One of the pre-requisite of the invention is that it should be new i.e. the invention proposed to be patented has not been in the public domain or that it does not formed part of the state of the art.

Under the Patent Act, both processes and products are entitled to qualify as inventions if they are new, involve an inventive step, and are capable of industrial application.

Requirements to Qualify as Invention

• The invention must be new;
• The invention must involve an inventive step;
• The invention must be capable of industrial application or utility;
• The invention shouldn’t come under the inventions which are not patentable under Section 3 and 4 of the Patent Act, 1970.

What Inventions are not Patentable?

Non-patentable inventions are enumerated under Section 3 and 4 of the Patents Act. Such inventions are delineated below:

• Any Invention which is frivolous or which claims anything contrary to well established natural laws is not patentable.
• Inventions that are contrary to public order or morality are not patentable.
• An idea or discovery cannot be a subject matter of a patent application.
• Inventions pertaining to known substances and known processes are not patentable i.e. mere discovery of a new form of a known substance that does not enhance the known efficacy of that substance is not patentable.
• An invention obtained through a mere admixture or arrangement is not patentable.
• A method of agriculture or horticulture cannot be the subject matter of the patent.
• A process involving the medical treatment of humans and animals or to increase their economic value cannot be the subject matter of a patent.
• Plants and animals in whole or in part are not patentable.
• A mathematical or business method or a computer program per se or algorithms are excluded from patent protection.
• Matters that are the subject matter of copyright protection like literary, dramatic, musical, or artistic work is not patentable.
• Any scheme or rule.
• Presentation of information.
• The topography of integrated circuits.
• Traditional knowledge.
• Inventions relating to atomic energy.

Trademarks

What is Trademark?

The Trademark Act, 1999 under Section 2 (zb) defines “trade mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors…”

Furthermore, the Act also provides for the definition of ‘mark’ under Section 2(m) which enumerates a mark to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.

Rights of a Trademark

• Right to Exclusive Use
• Right to Seek Statutory Remedy against an Infringement
• Right to Assign trademark to any other person
• Right to Seek Correction of Register
• Right to Alter Registered Trademark

Time Period for which Trademark is granted

In India, the term of protection for a trademark is 10 years from the date of application, renewable every 10 years on payment of the requisite fee.

Types of marks under the Trademark Act

• Product Mark
• Service Mark
• Collective Mark
• Certification Mark
• Shape marks
• Pattern Mark
• Sound Mark

Requirements to Qualify as Trademark

• The Mark is Capable of Being Represented graphically:

‘Graphical representation’ has been defined under Section 2(1)(k) of Trademark Rules, 2007 as the representation of a trademark for goods or services represented or capable of being represented in paper form and include representation in digitized form. Such a graphical representation of a trademark also encompasses within its purview shape of goods, their packaging, combination of colors, in other words, it brings within its ambit “trade dress”. This essential requisite for qualification as a valid trademark merely implies that the mark should be capable of being put on the register in a physical form and also being published in the Journal. This requirement of a valid trademark was further expounded by the European Trademark Office, wherein it elucidated two primary reasons for geographical representation a trademark:

• Enable traders to identify with clarity what other traders have applied for registration as trademark and for what product;
• Enable the public to determine with precision the sign which forms the subject of trademark registration.

• Capable of Distinguishing Goods and Services of One Person From Those of Others:

The definition of “trade mark” under Section 2(1)(zb) of the 1999 Act means a mark “which is capable of distinguishing the goods or services of one person from those of others”. Therefore, the use of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not qualify for the protections under the TM Act. This requisite of a trademark primarily enumerates that a trademark must be distinctive i.e. it should not be devoid of a distinctive character.

What cannot be registered as a Trademark?

• Absolute Grounds for Refusal of Trademark Registration:

Section 9 of the Trademark Act, 1999 enumerates grounds on which a trademark registration can be absolutely refused.

The Act provides that the following marks can be refused:

• Marks that are devoid of any distinctive character;
• Marks which serve to designate the kind, quality, intended purpose, values, geographical origin or the time of production of goods;
• Marks which have become customary in the current language or in the established practices of the trade.

Exception: Aforesaid mark shall not be refused registration if prior to the date of trademark application; the mark has acquired distinctive character or is a well-known trademark.

• Marks that may cause deception or confusion in public;
• Mark comprises of matter that is likely to hurt religious sentiments of any class of people;
• Mark comprises of scandalous or obscene matter;
• Mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950;
• If the mark consists of the shape of goods which results from the nature of the goods themselves;
• Mark consists of the shape of goods which is necessary to obtain a technical result;
• Mark gives substantial value to the goods.

• Relative Grounds for Refusal of Trademark Registration:

Section 11 provides that a mark shall not be registered:

• If the mark causes likelihood of confusion on part of the public i.e. likelihood of association with the earlier trademark;
• If the mark is identical to a well-known trademark in India and use of the latter mark may be detrimental to the distinctive character of the well-known trademark;
• If the mark’s use in India is liable to be prevented by law of passing off or copyright law;
• The provision further envisages that where the goods are of different description refusal will not be justified but registration may be refused if the mark is likely to be deceptive, deceptively similar or may cause confusion.

Copyright

What is Copyright?

Copyright Laws in India are governed by the Copyright Act, 1957. Perhaps one of the most essential features of copyright is that to secure a copyright registration is not a mandatory requirement. Copyright registration only provides a rule of evidence i.e. the copyright registration can be used as evidence when such right is disputed in a Court of Law. Moreover, Non-registration work does not bar an action for copyright infringement.

Thus, the acquisition of copyright in a work is automatic and it does not require any formality. However, certificate of registration of copyright and the entries made therein serve as prima facie evidence in a court of law with reference to dispute relating to ownership of copyright. Therefore it is always beneficial and advisable to get the Copyright registered.

Persons who can apply for Copyright Registration

Persons who can apply for copyright in a work include the author, the publisher, the owner of, or any person interested in the copyright in the work. Generally, the author is the first owner of the copyright in the work.

Rights in a Copyright

• Assignment of Copyright:

The Copyright Act, 1957 under Chapter IV provides for the assignment of copyright and the mode of assignment of copyright. The owner of the copyright may assign the copyright wholly or in part by writing which is to be signed by the owner or his authorized agent. The assignment may be made generally or may be subject to limitations. The assignment of copyright shall clearly indicate the rights proposed to be assigned along with the size of the work. The assignment of copyright can be for an existing as well as for a future work. However, future work assignments shall not take place unless the work comes into existence.

• Right of the Author to Relinquish Copyright:

Section 21 of the Copyright Act, 1957 provides for the Author’s right to relinquish copyright. It states that the author of work may relinquish all or any of the rights comprised in the work by giving notice in the prescribed form to the Registrar of copyrights. On receipt of the notice, the Registrar shall cause to publish the same in the Official Gazette for the invitation of objection if any.

Time Period for which Copyright is granted

Copyright is protected for a limited time. The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical, and artistic works the 60-year period is counted from the year following the death of the author. In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government, and works of international organizations, the 60-year period is counted from the date of publication.

Who is an Author?

The term “author” has been defined under Section 2(d) of the Copyright Act as:

• In relation to a literary or dramatic work, the author of the work;
• In relation to a musical work, the composer;
• In relation to an artistic work other than a photograph, the artist;
• In relation to a photograph, the person taking the photograph;
• In relation to a cinematograph film or sound recording, the producer; and
• In relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created.

Types of works under the Copyright Act

Copyright shall subsist throughout India in the following classes of works:

• Original literary, dramatic, musical and artistic works;
• Cinematograph films; and
• Sound recording.

Geographical Indication

A geographical indication (GI) is an indication, whether in the form of a name or sign, used on goods that have a specific geographical origin and possesses qualities or a reputation that are due to the place of origin. Geographical indications are valuable rights, which if not adequately protected, can be misused by dishonest commercial operators to the detriment of both the consumers and the legitimate users.

In India, “Geographical Indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristics of such goods is essentially attributable to its geographical origin and in a case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

By registering a geographical indication in India, the rights holder can prevent unauthorized use of the registered geographical indication by others by initiating infringement action by way of a civil suit or criminal complaint. Registration of the GIs in India is not mandatory as an unregistered GI can also be enforced by initiating an action of passing off against the infringer. It is, however, advisable to register the GI as the certificate of registration is prima facie evidence of its validity and no further proof of the same is required.

Registration of Geographical Indications

An application for the registration of a GI is to be made to the Registrar of Geographical Indications in the form prescribed under the Geographical Indications of Goods (Registration and Protection) Act, 1999 (the GI Act) read with the Geographical Indications (Registration and Protection) Rules, 2002 (the GI Rules).

Duration of Protection

A Geographical Indication is registered for a period of 10 years and the registration may be renewed from time to time for a period of 10 years at a time.

Infringement of Geographical Indications

The remedies relating to the infringement of Geographical Indications are similar to the remedies relating to the infringement of Trademark. Similarly, under the (Indian) Geographical Indications of Goods (Registration and Protection) Act, 1999, falsification of a Geographical Indication will carry a penalty with imprisonment for a term which may not be less than six months but may extend to three years and with a fine which may not be less than INR 50,000/- but may extend to INR 2,00,000/-.