INTELLECTUAL PROPERTY LAWS IN

INDIA

PRESENTED BY:

Mr. Joseph KoshyHead, Intellectual Property, Fox Mandal

FOX MANDALOUR OFFICES

In India:

New Delhi, Noida, Bangalore, Bhubaneswar, Chandigarh, Chennai, Hyderabad, Kolkata, Mumbai and Pune with associate offices at Cochi, Trivandrum

In Other Countries:

United Kingdom (London), France (Paris), Guinea (Conakry) and Bangladesh (Dhaka)

INTELLECTUAL PROPERTY

Intellectual Property refers to creation that arises from the human

intellect i.e. inventions in all fields of human endeavor, scientific

discoveries, industrial designs for article, literary & artistic work,

symbols etc. used in commerce.

Nature/ characteristics of Intellectual Property:

• Creation of human mind (Intellect)

• Intangible property

• Exclusive rights given by statutes

• Time-bound and Territorial/Jurisdictional

TRIPS Compliance

• India is a signatory of TRIPs Agreement in the Uruguay

Round agreement of 1995 and hence, the government

has initiated action to bring in the requisite changes.

• In the last few years, India has enacted fully TRIPs-

compliant Trademarks Act, Copyright Act, Designs

Registration Act, Geographical Indications Act and

Protection of Layouts for Integrated Circuits Act.

• A novel Plant Varieties Protection and Farmers Rights Act

2001 and the Bio-diversity Act 2002 are also in Place.

Two Kinds of Intellectual Property

Industrial Property i.e. Trademarks, Patents, Industrial

Designs etc.

Copyright i.e. Artistic works, Literary works

PATENTSPatent is a monopoly or exclusive right granted by a country

in favour of the owner of an invention (both process &

products ) to make, use, manufacture & market their

invention.

The patent right is territorial in nature.

Patents provide incentives to individuals by recognizing

their creativity & these incentives encourage innovation.

Patents Act, 1970, in TRIPS compliant and has

incorporated all parameters.

Term of Registered Patent: 20 years.

TRADEMARK Trademark is a distinctive sign that provides to the owner of the mark the

exclusive right to use it and identify goods or services belonging to the

owner.

Trademark consists in symbol, logo, word, sound, color, design, or other

device that is used to identify a business or a product in commerce.

Trademark application can be filed in an appropriate national or regional

trademark office. WIPO administers an international registration

application for trademarks.

The Trade Marks Act, 1999 governs the Trademark laws.

Term of Registered Trademark: 10 years and Renewable.

COPYRIGHT

Copyright exist in unique expression of idea/ for creating an original literary or

dramatic or musical or artistic work.

In India, The Copyright Act, 1957 governs the law on copyright.

Copyright protects the expression of an idea and not the idea itself.

The owner may assign to any person the copyright.

Copyright is a kind of incentive for recognizing the work and rewarding

economic benefits.

The work is open for public inspection once the copyright is registered.

Copyrighted work can be used for teaching, research and development

without permission if used fairly.

COPYRIGHT

What can be covered under copyright:

Works relating to Literary, Films, Dramatic, Musical, Artist, Sound recording

What is not covered under copyright:

Ideas, Facts, Recipes, Work lacking originality, Names, Titles and Short Phrases.

Duration of copyright:

Author’s lifetime + 50 years from the end of the calendar year in which the author dies,

50 years for films and sound recordings,

25 years for typographical arrangements of a published edition,

Copyright protection always expires on December 31 of the last calendar year of protection.

DESIGNS Designs consists in ornamental or aesthetic aspects of an article

distinguishing it with other article, which may consist of 3D or 2D features,

such as shape or surface, patterns, lines or color and is part of article itself.

It makes an article attractive and appealing and hence they add to the

commercial value of a product and increase its marketability.

Any technical features of the article not protected as intellectual property.

The Designs Act, 2000 deals with the designs aspect of intellectual property.

Terms of the Design: 15 years. Initially the right is granted for a period of 10

years, which can be extended, by another 5 years. 

Organization Structure – IP Offices

Ministry of Industry & Commerce

Office of the ControllerGeneral of Patents, Designs

And Trademarks

Designs wing

(Kolkatta)

Patent office

( Kolkatta, Delhi,

Mumbai, Chennai)

Trade Marks

Registry( Kolkata,

Delhi,Mumbai, Ahmedab

adChennai)

Geographical

Indications

Registry( Chenna

i)

Patent Informati

onService

( Nagpur)

TECHNOLOGY TRANSFER & LICENCING AGREEMENTS

Technology transfer is the process by which a technology, expertise, knowhow or facilities developed by one individual, enterprise or organization is transferred to another individual, enterprise or organization

Technology Transfer Agreement

Know-how Agreement (know-how agreement involves the

transfer of information or skills which have not received statutory recognition)

Important clauses and issues – Technology

Transfer Agreements

Define Technology and Lists of IPRs Grant of License Rights and Obligations of Licensee and

Licensor Exclusive/ Non-exclusive Transferability Revocability Royalty payment and calculation

Territory

Sub-licensing

Advertising and Promotion

Audit of accounts from outside agency

(Contd…)

LICENSING LAWS

• No specific licensing laws for IP in India.

• Principally governed by the Indian Contracts Act, 1872.

• Governed by common law practices.

ROYALTY PAYMENTS

In terms of the extant foreign exchange laws in India, banks may permit drawal of foreign exchange by persons for payment of royalty and lump-sum payment under technical collaboration agreements freely, without the approval of the Government of India;

ROLE OF INDIAN JUDICIARY

The principal function of Judiciary is to

provide

legal remedies against infringement of

personal and property rights of persons.

Infringement of intellectual property rights

is a tortuous invasion of property.

Contd….

• The Courts in India are empowered under the

domestic laws to grant reliefs against violation

of Intellectual Property rights.

• The judiciary plays two distinct roles in relation

to IP:

1. Interpretation of the various IP Statutes.

2. Adjudication of IP Matters.

REMEDIES FOR INFRINGEMENT

The remedies for misappropriation of IP granted by the Judiciary can be in the forms of:

1. Civil Remedies

2. Criminal Remedies

REMEDIES CIVIL

1. Injunction - Spring Board Doctrine a. Interlocutory or interim b. Permanent or Final c. Injunction against threats.

2. Anton Pillar Orders or Ex Parte Orders  3. Orders for deliver-up/surrender or seize and destroy 4. An award of costs and damages5. Tracing orders.

CRIMINALCriminal action (Imprisonment/ Fine) is provided only for trade marks and copyrights infringement.

Contd…

Civil & Criminal Remedies are distinct and independent and can be availed simultaneously.

When a court has to form an opinion upon a point crucial to a case and pertaining to technology or art the opinion of that of an expert can be sought by the court under Section 45 of the Indian Evidence Act.

The provisions of The Arbitration & Conciliation Act are also applicable to all IP disputes.

THANKYOU!