INTELLECTUAL PROPERTY RIGHTS (IPR)
These notes
are being compiled to help the students for educational purposes during
Covid-19 pandemic.
IPR: An
Overview
The general assumption
about property is that it is something movable or immovable tangible thing, which
is most of the time expensive one. However, as it is very much indicative from
the word ‘intellectual’, the ‘intellectual property’ can be understood as the
property created by mind like some ideas, inventions, literary or artistic
creations etc which are intangible most of the time but can be converted into
tangible things. We all know that the owners of movable or immovable tangible
properties possess legal rights over their property and every country has laws
to protect such properties of their citizens from any kind of encroachment or
any illegal authority claimed over them.
However, it is sad to
know that till recently the creations of mind, the product of intellect of
people were not considered as equivalent to the physical properties and that’s
why there were no significant and sufficient laws to protect such properties.
Perhaps it was so because of no monetary value associated with the intellectual
properties.
It was only in 1995 that a significant step was taken and the Trade Related Aspects of Intellectual Property Rights Agreement (TRIPS) was formed at the end of seven years of negotiations from 1986 to 1993, as part of the Uruguay Round of Multilateral Trade Negotiations of the GATT. The TRIPS Agreement came into force on the 1st of January 1995, with the establishment of the World Trade Organization (Puri & Varma, 2005).
It does not mean that there were no laws related to intellectual properties in India. Laws were there but they were not enough to protect the intellectual properties rights of the people. The people and government had not thought to protect their ancient knowledge by any specific law. Indians always believed in knowledge sharing and that’s why the medicinal uses of turmeric, basil, neem etc were in public domain since long and yet it was not protected under any law. It was only after the controversy of claims over the medicinal uses of turmeric and neem and claims over basmati rice by American companies that people in India became aware about their intellectual property rights and a need of strong laws were felt. Also, the commercial interest of the people compelled many companies and individuals to protect their intellectual properties.
Similarly, there are several definitions of intellectual property rights. One of the best definitions among them is given by World Trade Organisation (WTO): “Ownership of ideas, including literary and artistic works (protected by copyright), inventions (protected by patents), signs for distinguishing goods of an enterprise (protected by trademarks) and other elements of industrial property.”
It is obvious from the above definition given by WTO that the intellectual property rights are mainly of three types:
I. Copyright
II. Patents
III. Trademarks
Some of the
important features of IPR are as following:
i. Intellectual
Property Rights are legal rights, which result from intellectual activity in
industrial, scientific, literary & artistic fields. These rights Safeguard
creators and other producers of intellectual goods & services by granting
them certain rights to control the use of their creations or products. (WIPO,
2008). Protected IP rights like other property can be a matter of trade, which
can be owned, sold or bought.
ii. They
allow creators, or owners, of patents, trademarks or copyrighted works to benefit
from their own work or investment in a creation. (WIPO)
iii.
IPR
are largely territorial or country specific rights except copyrights which is
global in nature in the sense that it is immediately available in all the
members of the Berne Convention. (Saha, n.d.)
iv.
Legal
protection is granted to the owner or creator of the Intellectual property
under different related acts. That means inventions, designs and other
industrial innovations can be protected under Patent Act, trademarks can be
protected under Trademark Act and Copyright Act covers literary works
(such as novels, poems and plays), films, music, artistic works (e.g. drawings,
paintings, photographs and sculptures) and architectural design.
v. The protection given under these Acts are for a definite period of time depending upon the law of the country.
Tracing the history of IPR in India
The history of IPR in India can be traced back to as early as 1957, when first time The Copyright Act was introduced for Indians with some modifications to the similar kind of act which was already existing and was borrowed from the British but was very much similar to United Kingdom Copyright Act. Actually, the East India Company had already introduced the Copyright Act in India in 1847 out of its own interest but it was merely a reflection of Copyright Act of Great Britain which was already into existence for almost one century. In 1914, the then Indian legislature enacted a new Copyright Act which merely extended most portions of the United Kingdom Copyright Act of 1911 to India. Thus, the modern Copyright Act of India has seen a long and complicated journey of 150 years. Today, the Copyright Act of 1957, the Copyright Rules, 1958 and the International Copyright Order, 1999 govern the copyright protection in India. (Adukia R.S., n.d.)
Just like the Copyright
Act, the Patent law in India had also seen many dawn and dusks. From being
introduced in 1856, it underwent amendments for eleven times in the years 1859,
1872, 1883, 1888, 1911, 1920, 1930, 1945, 1950, 1952, to the commencement of The
Patents Act, 1970. Though, even after 1970, many changes in the Patent Act have
been done but this year is like a milestone in the history of IPR because this
Act remained in force for almost 24 years till 1994 without any change. After
that three amendments were done in the Act of 1970 in the years 2000, 2003 and
finally in 2005 which is in force till date. The Act has now been radically
amended to become fully compliant with the provisions of TRIPS (Saha, n.d.)
The Trademark Act of
1999 is culmination of sustained effort towards such an Act since 1860. A
specific Indian Trademark Act was passed in 1940 which was replaced by
Trademark and Merchandise Act, 1958 and finally Trademark Act 1999 was enforced
by the Government of India in compliance with the TRIPS obligation on the
recommendation of the World Trade Organisation.
List of laws related to intellectual properties in India:
The Copyright Act, 1957, the Copyright Rules, 1958 and International Copyright Order, 1999.
The Patents Act, 1970, the Patents Rules, 2003, the Intellectual Property Appellate Board (Patents Procedure) Rules, 2010 and the Patents (Appeals and Applications to the Intellectual Property Appellate Board) Rules, 2011.
The Trade Marks Act, 1999, the Trade Marks Rules, 2002, the Trade Marks (Applications and Appeals to the Intellectual Property Appellate Board) Rules, 2003 and the Intellectual Property Appellate Board (Procedure) Rules, 2003
Apart from these laws the following laws have been enacted to protect newly recognized species of intellectual property in India.
1.
The
Geographical Indications of Goods (Registration and Protection) Act, 1999 and
the Geographical Indications of Goods (Registration and Protection) Rules, 2002
2.
The
Designs Act, 2000 and the Designs Rules, 2001The Semiconductors Integrated
Circuits Layout-Design Act, 2000 and the Semiconductors Integrated Circuits
Layout-Design Rules, 2001
3.
The
Protection of Plant varieties and Farmers’ Rights Act, 2001 and The Protection
of Plant varieties and Farmers Rights’ Rules, 2003
4.
The
Biological Diversity Act, 2002 and the Biological Diversity Rules, 2004 Intellectual
Property Rights (Imported Goods) Rules, 2007 (Adukia R.S., n.d.)
Main types
of Intellectual Property Rights
Copyright
Before looking at the provisions of Copyright Act in Indian context, let us see how World Intellectual Property Organisation (WIPO) has described it: “Copyright law is a branch of that part of the law which deals with the rights of intellectual creators. Copyright law deals with particular forms of creativity, concerned primarily with mass communication. It is concerned also with virtually all forms and methods of public communication, not only printed publications but also such matters as sound and television broadcasting; films for public exhibition in cinemas, etc. and even computerized systems for the storage and retrieval of information. Copyright deals with the rights of intellectual creators in their creation. Most works, for example books, paintings or drawings, exist only once they are embodied in a physical object. But some of them exist without embodiment in a physical object. For example, music or poems are works even if they are not, or even before they are, written down by a musical notation or words. Copyright law, however, protects only the form of expression of ideas, not the ideas themselves. The creativity protected by copyright law is creativity in the choice and arrangement of words, musical notes, colors, shapes and so on. Copyright law protects the owner of rights in artistic works against those who “copy”, that is to say those who take and use the form in which the original work was expressed by the author.” (WIPO, 2008)
(a) in the case of a
literary, dramatic or musical work, not being a computer programme, -
(i) to reproduce the work in any
material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the
public not being copies already in circulation;
(iii) to perform the work in public, or
communicate it to the public;
(iv) to make any cinematograph film or
sound recording in respect of the work;
(v) to make any translation of the
work;
(vi) to make any adaptation of the
work;
(vii) to do, in relation to a translation
or an adaptation of the work, any of the acts specified in relation to the work
in sub-clauses (i) to (vi);
(b) in the case of a
computer programme,-
(i) to do any of the acts specified in
clause (a);
“(ii) to sell or give on commercial
rental or offer for sale or for commercial rental any copy of the computer
programme: Provided that such commercial rental does not apply in respect of
computer programmes where the programme itself is not the essential object of
the rental.”
(c) in the case of an
artistic work-
(i) to reproduce the work in any
material form including depiction in three dimensions of a two-dimensional work
or in two dimensions of a three-dimensional work;
(ii) to communicate the work to the
public;
(iii) to issue copies of the work to
the public not being copies already in circulation;
(iv) to include the work in any
cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation
of the work any of the acts specified in relation to the work in sub-clauses
(i) to (iv);
(d) In the case of
cinematograph film, -
(i) to make a copy of the film,
including a photograph of any image forming part thereof;
(ii) to sell or give on hire, or offer
for sale or hire, any copy of the film, regardless of whether such copy has
been sold or given on hire on earlier occasions;
(iii) to communicate the film to the
public;
(e) In the case of
sound recording, -
(i) To make any other sound recording embodying it;
(ii) To sell or give on hire, or offer for sale or hire, any copy of the sound recording regardless of whether such copy has been sold or given on hire on earlier occasions;
(iii) To communicate the sound recording to the public. (Source: Copyright Office, India.)
Procedure for Registration of a Copyright
you can register your original work with the copyright registrar under Chapter X of the Indian Copyright Act,1957 and Rule 70 of the Copyright Rules’ 2013.
The steps involved in the registration process are:
Step 1: File an Application
In the first step :
The author of the work,
copyright claimant, owner of an exclusive right for the work or an authorized
agent file an application either physically in the copyrights office or through
speed/registered post or through e-filing facility available on the official
website (copyright.gov.in).
For registration of
each work, a separate application must be filed with the registrar along with
the particulars of the work. Along with this, the requisite fee must also be
given, Different types of work have different fees.
For example, getting
the copyright for an artistic work registered, the application fees is INR 500,
while for getting the copyright for a cinematograph film registered is INR
5000. The application fees range from INR. 5000 to INR. 40000. It can be paid
through a demand draft (DD) or Indian postal order (IPO) addressed to the
Registrar of Copyright Payable at New Delhi or through e-payment facility. This
application must be filed with all the essential documents.
At the end of this step, the registrar will issue a dairy number to the applicant.
Step 2: Examination
In the next step, the
examination of the copyright application takes place.
Once the dairy number is issued, there is a minimum 30 days waiting period. In this time period, the copyright examiner reviews the application. This waiting period exists so that objections can arise and be reviewed. Here the process gets divided into two segments:
In case no objections
are raised, the examiner goes ahead to review and scrutinize the application to
find any discrepancy.
If there is no fault and all the essential documents and information is provided along with the application, it is a case of zero discrepancies. In this case, the applicant is allowed to go forward with the next step.
In case some discrepancies
are found, a letter of discrepancy is sent to the applicant. Based upon his
reply, a hearing is conducted by the registrar. Once the discrepancy is
resolved, the applicant is allowed to move forward to the next step.
In case objections are
raised by someone against the applicant, letters are sent out to both parties
and they are called to be heard by the registrar.
Upon hearing if the objection is rejected, the application goes ahead for scrutiny and the above-mentioned discrepancy procedure is followed.
In case the objection is not clarified or discrepancy is not resolved, the application is rejected and a rejection letter is sent to the applicant. For such applicant, the copyright registration procedure ends here.
Step 3: Registration
The final step in this process can be termed as registration. In this step, the registrar might ask for more documents. Once completely satisfied with the copyright claim made by the applicant, the Registrar of Copyrights would enter the details of the copyright into the register of copyrights and issue a certificate of registration.
The process registration of copyright completes when the applicant is issued the Extracts of the Register of Copyrights (ROC)
Thus, in nutshell, it can be said that, “Copyright is the set of exclusive rights granted to the author or creator of an original work, including the right to copy, distribute and adapt the work. Copyright lasts for a certain time period after which the work is said to enter the public domain. Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby protecting and rewarding creativity.”
Patent
When somebody often says something, people say that this is his patent dialogue means that statement is created and used by him. Thus, people have a fair idea of what patent is. Let us see how it is defined by various persons and organisations.
According to The Law Lexicon (2001) “The word patent means the exclusive privilege granted by the sovereign authority to an inventor with respect to his invention”
Similar to this
definition a more elaborated definition of patent is given by WIPO as follows: “A
patent is a document, issued, upon application, by a government office (or a
regional office acting for several countries), which describes an invention and
creates a legal situation in which the patented invention can normally only be
exploited (manufactured, used, sold, imported) with the authorization of the
owner of the patent. “Invention” means a solution to a specific problem in the
field of technology. An invention may relate to a product or a process. The protection
conferred by the patent is limited in time (generally 20 years). Patents are
frequently referred to as “monopolies”, but a patent does not give the right to
the inventor or the owner of a patented invention to make, use or sell
anything. Thus, while the owner is not given a statutory right to practice his
invention, he is given a statutory right to prevent others from commercially
exploiting his invention, which is frequently referred to as a right to exclude
others from making, using or selling the invention. Simply put, a patent is the
right granted by the State to an inventor to exclude others from commercially
exploiting the invention for a limited period, in return for the disclosure of
the invention, so that others may gain the benefit of the invention. The
disclosure of the invention is thus an important consideration in any patent
granting procedure.” (WIPO, 2008)
In compliance with TRIPS and WIPO, in India too “A Patent gives a monopoly right to a person who has invented a new and useful product or a new process of making a product or an improvement or modification of an existing product or process. It is a statutory grant conferring exclusive right to manufacture the patented product or manufacture a product according to the patented process for a limited period of time, that is, a period of 20 years.” (Puri & Varma, 2005).
According to the Patent
Act, 1970, Patentable inventions are new products or processes,
involving inventive steps and capable of being made or used in an industry. It
means the invention to be patentable should be technical in nature and should
meet the following criteria –
• Novelty: The matter
disclosed in the specification is not published in India or elsewhere before
the date of filing of the patent application in India.
- Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document.
- Industrially applicable: Invention should possess utility, so that it can be made or used in an industry.
(a) an invention which
is frivolous or which claims anything obviously contrary to well established
natural laws;
(b) an invention the
primary or intended use or commercial exploitation of which could be contrary
to public order or morality or which causes serious prejudice to human, animal
or plant life or health or to the environment; (For e.g. process of making
brown sugar will not be patented.)
(c) The mere discovery
of a scientific principle or the formulation of an abstract theory (or discovery
of any living thing or non-living substances occurring in nature);
(d) the mere discovery
of a new form of a known substance which does not result in the enhancement of
the known efficacy of that substance or the mere discovery of any new property or
mere new use for a known substance or of the mere use of a known process,
machine or apparatus unless such known process results in a new product or
employs at least one new reactant;
(e) a substance
obtained by a mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substance;
(f) the mere
arrangement or re-arrangement or duplication of known devices each functioning independently
of one another in a known way;
(g) a method of
agriculture or horticulture; (For e.g., the method of terrace farming cannot be
patented.)
(h) any process for the
medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other
treatment of human beings or any process for a similar treatment of animals to
render them free of disease or to increase their economic value or that of
their products; (For e.g., any new technique of hand surgery is not patentable)
(i) plants and animals
in whole or any part thereof other than micro-organisms but including seeds, varieties
and species and essentially biological processes for production or propagation
of plants and animals;
(j) a mathematical or
business method or a computer programme per se or algorithms;
(k) a literary,
dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television productions;
(I) a mere scheme or
rule or method of performing mental act or method of playing game;
(m) a presentation of
information;
(n) topography of
integrated circuits;
(o) an invention which
in effect, is traditional knowledge or which is an aggregation or duplication
of known properties of traditionally known component or components.
(p) Inventions relating to atomic energy and the inventions prejudicial to the interest of security of India. (Source: Intellectual Property Office, India)
Trademarks
Trademarks can be in
the form of letters, numerical or words or signs, symbols, drawings, three
dimensional shapes, music or audio, fragrances, colors; anything which identifies
any good or service. It helps consumers in identifying the authentic goods and
services. It protects the owner’s right to exclusively use the trademark or
authorise other person to use it in lieu of payment. According to WIPO (2008),
“A trademark is any sign that individualizes the goods of a given enterprise
and distinguishes them from the goods of its competitors.” This definition
mentions about two aspects of trademarks, which also can be referred as the
functions of the trademarks. These aspects are – “Individualisation of goods which
provides authenticity and identity to the product” and “It helps in
distinguishing the products of one enterprise from the other enterprise”. Though these two are different aspects of
trademarks, they are also interdependent and that’s why WIPO suggests looking
at them together for all practical purposes. Individualisation of goods and
services for consumer by using trademarks does not mean that the consumers must
be informed about the actual person who has manufactured it or who is trading
it. It only has to create trust of the consumer into the enterprise.
In compliance with the
definition given by WIPO, in India too, the Trademarks Act, 1999 explains, “Trade
mark means 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 shape of goods, their packaging and combination of colours; and—
(i)
in
relation to Chapter XII (other than section 107), a registered trade mark or a
mark used in relation to goods or services for the purpose of indicating or so
as to indicate a connection in the course of trade between the goods or
services, as the case may be, and some person having the right as proprietor to
use the mark; and
(ii)
in relation to other provisions of this Act, a
mark used or proposed to be used in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade
between the goods or services, as the case may be, and some person having the
right, either as proprietor or by way of permitted user, to use the mark
whether with or without any indication of the identity of that person, and
includes a certification trade mark or collective mark;” (Source:
Ministry of Law, India)
This explanation gives rise to two key features of Trademark: Trademark must be distinctive and trademark must be used in commerce. There are mainly four types of trademarks - Trademark, Service Mark, Collective Mark, Certification Mark. The Trade Marks Act, 1999 (TMA) protects the trademarks and their infringement can be challenged by a passing off or/and infringement action. The Act protects a trade mark for goods or services, on the basis of either use or registration or on basis of both elements.
Geographical Indication of Goods
There are many products which are known by their geographical origin, whether by name or by symbols; like “Champagne,” “Cognac,” “Roquefort,” “Chianti,” “Pilsen,” “Porto,” “Sheffield,” “Havana,” “Tequila,” “Darjeeling”—are some well-known examples of such names with which the products of certain nature and quality are associated. According to WIPO (2008), “the term is intended to be used in its widest possible meaning. It embraces all existing means of protection of such names and symbols, regardless of whether they indicate that the qualities of a given product are due to its geographical origin (such as appellations of origin), or they merely indicate the place of origin of a product (such as indications of source). This definition also covers symbols, because geographical indications are not only constituted by names, such as the name of a town, a region or a country (“direct geographical indications”), but may also consist of symbols. Such symbols may be capable of indicating the origin of goods without literally naming its place of origin. Examples for such indirect geographical indications are the Eiffel Tower for Paris, the Matterhorn for Switzerland or the Tower Bridge for London.”
In compliance with WIPO, the Geographical Indications of Goods (registration and protection) Act, 1999 explains: “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 characteristic of such goods is essentially attributable to its geographical origin and in 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. Explanation—For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be;” (Source: Ministry of Law, India)
Some examples of Indian Geographical Indications are - Solapur Chaddar, Solapur Terry Towel, Basmati Rice, Darjeeling Tea, Kanchipuram Silk Saree, Alphanso Mango, Nagpur Orange etc.
Designs
The concept of protection for designs whether industrial or ornamental emerged as a result of industrial revolution, mass production, increasing competition among enterprises and globalisation. After globalisation, the competition among enterprises increased severely; which forced every enterprise to make its own identity and along with other factors of identity, designing is also an important factor. This is the reason that a separate protection laws for design, or ornamentation was felt and it was introduced at a global as well as national level. According to WIPO, “Industrial design refers to the creative activity of achieving a formal or ornamental appearance for mass-produced items that, within the available cost constraints, satisfies both the need for the item to appeal visually to potential consumers, and the need for the item to perform its intended function efficiently.”
Here in India, as per the Design Act, 2000, the definition was given as: “design” means 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 trade mark 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.” (Source: Intellectual Property Office, India)
A unique design for any product not only attracts the consumers but also the producing company acquires much more praise, which it can’t afford to lose. It not only enhances its prestige and reputation but also provides a thrust for economic gain. These designs can be pertaining to a wide variety of products of different industries like handicrafts, medical instruments, watches, jewellery, house wares, electrical appliances, vehicles and architectural structures anything. It is majorly for aesthetic purpose.
Semiconductor Integrated Circuits Layout-Design
The layout of transistors on the semiconductor integrated circuit or topography of transistors on the integrated circuit determines the size of the integrated circuit as well as its processing power. That is why the layout design of transistors constitutes such an important and unique form of intellectual property fundamentally different from other forms of intellectual property like copyrights, patents, trademarks and industrial design (Adukia R.S., n.d.).
As per the Semiconductor Integrated Circuits Layout-Design Act, 2000 in India: “layout-design” means a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit; “semiconductor integrated circuit” means a product having transistors and other circuitry elements which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function; (Source: Ministry of Law, India)
Protection of Plant Varieties and Farmers Rights
India; primarily being an agrarian economy; intended to recognise and protect the rights of the farmers keeping in mind their contribution towards conserving and improving the plant varieties which is essential for agricultural development of the country. This was also essential to facilitate the growth of seed industry in India and boost the research and development in agriculture. With these visions; an Act was passed “to provide for the establishment of an effective system for protection of plant varieties, the rights of farmers and plant breeders and to encourage the development of new varieties of plants” in 2001. It was called “the Protection of Plant Varieties and Farmers’ Rights Act, 2001” and was implemented in 52nd year of Republic of India.
As per this Act: “variety”, means a plant grouping except micro-organism within a single botanical taxon of the lowest known rank, which can be: -
(i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping;
(ii) distinguished from any other plant grouping by expression of at least one of the said characteristics; and
(iii) considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation, and includes propagating material of such variety, extant variety, transgenic variety, farmers’ variety and essentially derived variety.” (Source: Ministry of Law, India)
Such an Act was essential for protecting and encouraging the rights of the farmers; who strive to increase the varieties of plants and put their effort to develop new plants and the quality of seeds.
Biological Diversity
India; being a country of rich biodiversity; possesses very rare traditional knowledge which can lead it to use biological resources as assets. Since the world has realised the importance of environment and biodiversity, it has been remained a constant effort to protect the biodiversity anywhere in the world and with this commitment United Nations Convention on Biological Diversity was organised at Rio De Janeiro on 5th June, 1992 and India became one of the signatories of this convention. By signing this convention, India and other signatories got sovereign rights over their biological resources. Such rights were considered necessary “to provide for conservation, sustainable utilisation and equitable sharing of the benefits arising out of utilisation of genetic resources and also to give effect to the said Convention.” Such concerns formed the ground for India to pass an Act “to provide for conservation of biological diversity, sustainable use of its components and fair and equitable sharing of the benefits arising out of the use of biological resources, knowledge and for matters connected therewith or incidental thereto” in 2002. It was called the Biological Diversity Act, 2002 and was enacted by Parliament in the 53rd year of the Republic of India.
As per this Act: “biological diversity” means the variability among living organisms from all sources and the ecological complexes of which they are part and includes diversity within species or between species and of eco-systems; “biological resources” means plants, animals and micro-organisms or parts thereof, their genetic material and by-products (excluding value added products) with actual or potential use or value, but does not include human genetic material; (Source: Ministry of Law, India)
Not only because India was party to the Convention on Biological Diversity, but also to safeguard and conserve our rich biological diversity, sustainable use of their components and to be able to share their knowledge with others without losing proprietorship over them, such an Act was essential for India.
The Need for Protection
Same as necessity is the mother of invention; new inventions in any field are necessity for the growth of human civilisations. It is necessary to protect the human capacity to create or invent new things from being exploited by any other person or organisation without the permission of the creator or inventor. Such protection in the form of legal rights would encourage people for further innovation without any fear of exploitation. These inventions or creations may lead the country towards economic growth and prosperity of its people. In return, the company or people responsible for such inventions are rewarded by providing legal rights over their inventions so that no one can use it without their permission. Thus, the protection of intellectual properties can balance the interests of the innovators and the public interest at the same time by satisfying their humane expectations and providing a conducive environment for creativity and invention which can be used in larger interest of the human beings.
Apart from the broad views on need of protection of intellectual properties, some crude realities are that the society has moved from agrarian to industrialisation to globalisation and so the form of competitions also moved beyond fair values. In today’s highly competitive world, where one side consumers are having a number of choices and they are considered as kings of the market, other side they themselves fell prey to the unfair competition prevailing in the market and get cheated. In such scenario, not only fair companies and products need legal protection but consumers also need to be protected from such unfair competition among the companies in the market. In free market system which is led by competitions, unfair means are bound to be used. These cannot be checked by self regulation and a strong legal system is essential to prevent the creator, inventor as well as consumers from any kind of exploitation.
RECENT AND LANDMARK IPR JUDGEMENTS
The implementation of these legislations led to a rise in the number of intellectual property disputes that came before the Courts. As people were now aware of the rights they possessed, they did not hesitate in seeking legal reliefs such as damages, injunctions or compensation against the infringement of their IP. Over the years, the Courts have adjudicated countless IP disputes, each with their unique facts, contentions and situations. Thus, the words of the law have been thoughtfully interpreted to align it with the intended purpose behind the law, and Courts have evolved their own principles to be applied while deciding upon cases of intellectual property.
Bajaj Electricals Limited vs. Gourav Bajaj & Anr.
The Plaintiff was a part of the renowned Bajaj industry conglomerate, and had electrical stores of the same brand name. The Defendant owned 2 electrical stores and used the name ‘Bajaj’ as a part of his store names and also had a website for the same. Besides this, the Defendant used the expression “Powered by: BAJAJ” in the course of his trade. The Plaintiff established their right over the name by proving that ‘Bajaj’ had been legally granted the status of a well-known trademark, and thus the Defendant had no right to use it. It was further contended that the use of the above stated expression by the Defendant was a clear attempt to deceive the public by suggesting that the Plaintiff sponsored/ endorsed the Defendant’s stores. Thus, the Plaintiff filed a suit for an injunction against the infringing act by the Defendant.
Judgement: The Bombay High Court pondered the question as to whether the present case came under the defense of use of personal name. They held that such defense was not valid as the Plaintiff had adequately proved the mala fide intention of the Defendant behind the adoption of the name ‘Bajaj’ in the course of trade. The Court passed an interim injunction against the use of the trademark in the store names as well as the domain name of the Defendant.
Marico Limited vs. Abhijeet Bhansali
The Defendant herein was a social media influencer, who also operated a YouTube channel of his own. In a video posted on the channel, the Defendant made denigrating comments about Parachute Coconut Oil, which is the Plaintiff Company’s product. The Plaintiff Company had earned immense goodwill in the market owing to the good quality of their goods and were vigilant regarding the disparaging comments being made about their product, as well as the use of their trademark ‘Parachute’. The use of the trademarked name violated the exclusive right conferred to the Plaintiff as the proprietor of the trademark, which amounted to infringement. Thus, they approached the Bombay High Court seeking an injunction against the Defendant.
Judgement: The Court relied on the Trademarks Act, 1999 and in a clear interpretation of Section 29 of the Act, held that the Defendant was guilty of infringing the trademark of the Plaintiff by using it without prior authorization in his video. Hence, an interim injunction was passed against the Defendant along with an order for the removal of the impugned video.
Sameer Wadekar & Anr. vs. Netflix Entertainment Services Pvt. Ltd & Ors.
The present suit was instituted upon the basis of an allegation that the Defendant had copied the literary work of the Plaintiff and converted the same into a web series without his consent, thereby infringing his copyright. The main contention raised by the Plaintiff was that there were several similarities between his work and the web series, and that he had previously shared his work with an individual who was a known associate of the Defendant. Hence, he claimed copyright infringement and sought an injunction against the release of the web series.
Judgement: The Bombay High Court scrutinized both the works, and concluded that the similarities were not sufficient to declare the web series as a copy of the literary work of the Plaintiff. The similarities that arose were merely related to the concept, and no infringement could be claimed for the same. It also held that the mere fact that the Plaintiff had shared his work with an associate of the Defendant was not enough to establish a prima facie case of copyright infringement. Thus the application for injunction was dismissed and the release of the web series was permitted.
Star India Pvt. Ltd. vs. Moviestrunk.com & Ors.
The Plaintiff herein was a film production and distribution company, whereas the Defendants operated several online streaming websites. The present suit was filed against the illegal streaming of one of the Plaintiff’s films on the Defendants’ websites, which amounted to copyright infringement. The Plaintiff thus approached the Delhi High Court seeking relief against the infringement.
Judgement: The Court recognized the right of the Plaintiff granted by the Copyright Act, 1957 over the exclusive exploitation and distribution of their copyrighted content. There was a clear case of infringement against the Defendants who had made the film available to the public without the knowledge and consent of the Plaintiff. Hence the Court granted an injunction and also awarded suitable damages.
International Society for Krishna Consciousness (ISKCON) vs. Iskcon Apparel Pvt. Ltd & Ors.
The present suit was filed before the Bombay High Court for alleged trademark infringement and passing off. The Plaintiff contended that by selling garments under the name of ‘Iskcon’, the Defendant was infringing their trademark and attempting to pass off his brand as being associated with the Plaintiff group. The Plaintiff also sought to get their mark declared as a well-known trademark.
Judgement: The Court declared that in the present scenario, a clear case of trademark infringement had been established, and hence ordered the Defendants to refrain using the Plaintiff’s mark. It was also concluded that the Plaintiff’s mark satisfied all the statutory requirements of a well-known trademark, and thus the Court declared it as such.
Bajaj Auto Limited Vs. TVS Motor Company Limited
The Supreme Court of India by this landmark judgment has directed all the courts in India for speedy trial and disposal of intellectual property related cases in the courts in India. In two-year-old dispute involving two companies, which have been locked in a patent dispute over the use of a twin-spark plug engine technology, the Supreme Court observed that suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction. The Supreme Court directed that hearing in the intellectual property matters should proceed on day-to-day basis and the final judgment should be given normally within four months from the date of the filing of the suit. The Supreme Court further directed to all the courts and tribunals in the country to punctually and faithfully carry out the aforesaid orders.
Bayer Corporation Vs. Union of India
Bayer Corporation, instead of filing a suit for infringement, filed an inventive writ petition in the Delhi High Court desiring that since the applications of Cipla “SORANIB” allegedly infringed its patent, its (Cipla’s) marketing approval application under the Drugs Act should not even be processed or entertained. It is for the first time that an attempt is made to link drug approval to patent infringement in India. However, the Delhi High Court, denying the injunction, imposed a substantial cost of Rs. 6.75 Lakh to deter any such future attempts.
Bayer relied on the argument that a combined reading of Section 2 of the Drugs and Cosmetic Act along with Section 48 of the (Indian) Patent Act, 1970 establishes a Patent Linkage Mechanism under which no market approval for a drug can be granted if there a patent subsisting over that drug. It also claimed that CIPLA’s “SORANIB” is a “Spurious Drug” as defined under the Drugs Act, for which market approval cannot be granted.
Judgement: The Hon’ble High Court of Delhi held that there is no Drug- Patent Linkage mechanism in India as both the Acts have different objectives and the authority to determine patent standards, is within the exclusive domain of the Controller of Patents. Moreover, the patent linkage will have undesirable effect on the India’s Policy of Public Health. It further held that the market approval of a drug does not amount to infringement of patent. Therefore, the patent infringement cannot be presumed, it has to be established in a court of law. Such adjudication is beyond the jurisdiction of Drug Authorities.
On the issue of “SORANIB” being a spurious drug, the court held that CIPLA’s “SORANIB” cannot come under the category of spurious goods as there is no element of passing off like deception or imitation present in CIPLA’s drug”.
Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr.
The present dispute was between the registered trade mark of the plaintiff as well as defendant. It is interesting to note that before filing the suit the plaintiff i.e. Clinique had filed a cancellation petition before the Registrar of Trade Marks, India, against the defendant for cancellation of the defendant’s trade mark CLINIQ. As per the Section 124(1) (ii), of the Indian Trade Marks Act, 1999 a suit is liable to be stayed till the cancellation petition is finally decided by the competent authority.
However, under Section 124(5) of the Act, the court has the power to pass interlocutory order including orders granting interim injunction, keeping of account, appointment of receiver or attachment of any property.
Judgement: In this case, the court held that a suit for infringement of registered trade mark is maintainable against another registered proprietor of identical or similar trade mark.
It was further held that in such suit, while staying the suit proceedings pending decision on rectification/cancellation petition, the court can pass interim injunction restraining the use of the registered trade mark by the defendant, subject to the condition that the court is prima facie convinced of invalidity of registration of the defendant’s trade mark. In this case the court granted an interim injunction in favour of the plaintiff till the disposal of the cancellation petition by the competent authority.
The Coca-Cola Company Vs. Bisleri International Pvt. Ltd Manu
In the present matter, the defendant, by a master agreement, had sold and assigned the trade mark MAAZA including formulation rights, know-how, intellectual property rights, goodwill etc for India only. with respect to a mango fruit drink known as MAAZA.
In 2008, the defendant filed an application for registration of the trade mark MAAZA in Turkey started exporting fruit drink under the trade mark MAAZA. The defendant sent a legal notice repudiating the agreement between the plaintiff and the defendant, leading to the present case. The plaintiff, the Coca Cola Company also claimed permanent injunction and damages for infringement of trade mark and passing off.
Judgement: The Delhi High Court held that if the threat of infringement exists, then this court would certainly have jurisdiction to entertain the suit.
It was also held that the exporting of goods from a country is to be considered as sale within the country from where the goods are exported and the same amounts to infringement of trade mark.
It was held by the court that the intention to use the trade mark besides direct or indirect use of the trade mark was sufficient to give jurisdiction to the court to decide on the issue. The court finally granted an interim injunction against the defendant (Bisleri) from using the trade mark MAAZA in India as well as for export market, which was held to be infringement of trade mark
Novartis v. Union of India
Novartis filled an application to patent one of its drugs called ‘Gleevec’ by covering it under the word invention mentioned in Section 3 of the Patents Act, 1970.
Judgement: The Supreme Court rejected their application after a 7 year-long battle by giving the following reasons: Firstly, there was no invention of a new drug, as a mere discovery of an existing drug would not amount to invention. Secondly, Supreme Court upheld the view that under Indian Patent Act for grant of pharmaceutical patents apart from proving the traditional tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing drugs which also Novartis’s drug did not qualify. This became a landmark judgment because the court looked beyond the technicalities and into the fact that the attempt of such companies to ‘evergreen’ their patents and making them inaccessible at nominal rates.
REFERENCES:
Adukia R.S.( n.d.).
Handbook on Intellectual Property Rights in India. New Delhi.
Biological Diversity
Act, 2002(Source: Ministry of Law, India)
Copyright Act, 1957
(Source: Copyright Office, India.)
Design Act, 2000
(Source: Intellectual Property Office, India)
Geographical
Indications of Goods (registration and protection) Act, 1999(Source: Ministry
of Law, India)
Patent Act,
1970(Source: Intellectual Property Office, India)
Protection of Plant
Varieties and Farmers’ Rights Act, 2001(Source: Ministry of Law, India)
Puri, M & Varma, A.
2005. Intellectual Property Conventions and Indian Law. Working Paper.
Indian Council for Research on International Economic Relations, New Delhi.
Saha, R. (n.d.).
Management of Intellectual Property Rights in India. New Delhi.
Semiconductor
Integrated Circuits Layout-Design Act, 2000 (Source: Ministry of Law, India)
Trademarks Act,
1999(Source: Ministry of Law, India)
World Intellectual
Property Handbook. 2008. WIPO Publications.
COMMERCIAL IP SUIT (L)
NO. 195 OF 2020
COMIP NO. 596 OF 2019
2020 SCC Online Bom 659
CS(COMM) 408/2019
COMMERCIAL IP SUIT (L)
NO. 235 OF 2020
Important websites visited:
www.ipindia.nic.in - Intellectual Property Office, India
www.patentoffice.nic.in – Patent office, India
http://copyright.gov.in/ - Copyright Office, India
www.wipo.int – World Intellectual Property
Organisation
http://www.wto.org – World Trade Organisation
https://copyright.gov.in/Documents/CopyrightRules1957.pdf
http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf
http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf
http://www.ipindia.nic.in/writereaddata/images/pdf/act-of-2000.pdf
https://www.vakilno1.com/slider/5-important-judgments-intellectual-property-rights-cases.html
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