SANJAY KHERADVOCATE

INTRODUCTION TOINTELLECTUAL PROPERTY RIGHTS

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The Emerging Importance Of IPR

GROWING AWARENESS

ECLIPSE OF NATIONAL BOUNDARIES

HARMONISATION OF LAWS

THE NEXT ECONOMY OF IDEAS

U.S. ConstitutionA 1 Section 8

To promote the progress of Science and useful Arts, by securing for limited

Times to Authors and Inventors the exclusive Rights to their respective

Writings and Discoveries

What Is WTO ?• Int. body dealing with rules of trade bet. Nations• governed by the agreements signed between nations• agreement on harmonizing commercial laws • Basic Principles :

- Non-discrimination between countries- Non-discrimination within a country- Gradual movement towards Free Trade- Predictability- Promoting Competition

GATT / WTO Chronology

1947 Birth of GATT Geneva (12 + 11= 23)1949 5000 tariff concessions exchanged1956 $ 2.5 billion worth of Tariff concessions1986 Uruguay - biggest negotiating mandate

agreed upon1993 Geneva - Uruguay Round completed1994 Marrakesh - The Final Act of the UR

- WTO (TRIPS ) Agreement - 124 nations signatories

1995 WTO came into force - HQ Switzerland

FORMS OF INTELLECTUAL PROPERTY

COPYRIGHT

TRADEMARKS

GEOGRAPHICAL INDICATIONS

INDUSTRIAL DESIGNS

PATENTS

INTEGRATED CIRCUITS

UNDISCLOSED INFORMATION

What is Intellectual Property ?

Property created as a result of intellectual creative effort or commercial reputation and goodwill.

Basic Form : Intangible Territorial

Statutory/Common law Prov.’s

NATURE OF INTELLECTUAL PROPERTY

• IP IS AN INTANGIBLE PROPERTY

• SET OF RIGHTS

( Different set of rts. for diff. IPs)

- RT. TO EXCLUSIVE USER

- RT. TO PREVENT OTHERS

- RTS. ENCAPSULATED IN A TIME FRAME

- RT. TO ASSIGN, TO LICENSE

- INHERITABLE

BROAD SCOPE OF IP LAWS

NATURE OF THE PROPERTY

MODE/S OF ACQUISITION

NATURE OF RIGHTS CONFERRED

COMMERCIAL EXPLOITATION

ENFORCEMENT OF RIGHTS / REMEDIES AVAILABLE AGAINST

INFRINGEMENT

TRADEMARKS

William Shakespeare

He who filches my good nameRobs me of that which not enriches

him,but makes me poor indeed

TRADE & SERVICE MARKS

WHAT IS A TRADE MARK

a mark used or proposed to be usedin relation to goods for the purposeof indicating a connection in the course of trade between the goods and some person having the rightto use the mark

TRADE & SERVICE MARKS

What is a MARK :includes a device brand

heading label ticket name signature word letter numeral OR any combination thereof

shape of goods, packaging, colour - TMA’99

Sound, Smell - also marks - NOT in India

FUNCTIONS OF A TRADEMARK

Traditional Role • distinguish the products of one manufacturer from those of another• indicate the source or origin of the goods• represent the goodwill of the manufacturer

TM as a part of the marketing mix• Guarantee of QUALITY• Guarantee of AUTHENTICITY• Create a feeling of TRUST• Aid to Branding

WORLDS MOST VALUABLE BRANDS

1. COCA COLA 84

2. MICROSOFT 57

3. IBM 44

4. GENERAL ELECTRIC 34

5. FORD 33

6. DISNEY 32

7. INTEL 30

8. McDONALD’S 26

9. A T & T 24

10. MARLBRO 21

1999 US $ Billion

World’s Most Valuable Brand

0

20

40

60

80

100

120

1999 2000 2001

BV Mkt. Cap

-5%-13%

61%

$ Bn.

8472

69

113

PRODUCTPACKAGING

FUNCTION

DESIGN

FEATURES

EFFICACY

PRICE

DURING SALES SERVICE

BEFORE SALES SERVICE

AFTER SALES SERVICE

DELIVERY

AVAILABILITY

ADVICE

FINANCEADD-ONS

WARRANTIES

VALUEPERCEPTIONS

QUALITY PERCEPTIONSO

RG

AN

ISA

TIO

N

BRANDNAME

CORPORATE IMAGE

REPUTATION

OT

HE

RU

SE

R’S

RE

CO

MM

EN

DA

TIO

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SERVICES

INTANGIBLES80% OF THE IMPACTBUT ONLY 20% OF THE COST

Mkt.Cap v/s BV1

050

100150200250300350400450500

Cok

e

Mic

roso

ft

I B

M

N

okia

'01 Mkt. Cap '01 BV

61% 17% 27% 34%

113

69

380

65

199

53104

35

$ bn

Mkt. Cap v/s B. V. Mkt. Cap v/s B. V. 2 2

0

10

20

30

40

50

60

70

Pepsi Nike Kodak Xerox

'01 Mkt. Cap '01 BV

9 % 66 %82%

93%

67

812

613

117 6

$ bn

Unaffected BV - infact done better

-5

5

1525

35

45

19992000

2001

1999 33.5 17.78 11.28

2000 38 21.1 12.97

2001 42.4 21.7 13.85

GE Mercedes BMW

$bn

Rights of a trade mark owner :

• to use • to prevent others from using similar or deceptively similar marks• protection also extended to related classes• statutory protection

™

Some Famous Brands ( Trade Marks )

Mercedes Benz for vehiclesCoca Cola for beveragesIntel for computerCrocin for pharmaBournvita for food stuffMGM - roar of Lion for entertainmentTaj Hotels for hotelsNike for shoes501 Bar for soaps

WHAT IS A GOOD TRADEMARK

Broadly :

Easy to pronounce Easy to remember Easy to spell and write Should not be descriptive Should be short Appeal to EYE & EAR Satisfy statutory requirements

• Emblems & Names ( Prev. Of Misuse ) Act 1950 • Interest Of Consumers Paramount

Kodak

STATUTORY REQUIREMENTS TO REGISTRATION

BROADLY

MARK MUST BE DISTINCTIVE ADAPTED TO DISTINGUISH MUST NOT CONFLICT MUST NOT DECEIVE NOT CONTRARY TO LAW MUST NOT BE SCANDALOUS / OBSCENE MUST NOT HURT RELIGIOUS SENTIMENTS

THE TRADE MARK REGISTRY

HEAD OFFICE - MUMBAIBRANCH OFFICES - CALCUTTA

DELHI CHENNAI AHMEDABAD

REGISTRAR OF TM’s CG OF PAT. & DESIGNS

REGISTRY IS A TRIBUNAL WITH POWERS OF CC

TRADE MARK JOURNAL

REGISTRATION PROCEDURE

SELECTION OF MARK

SEARCH PRELIMNARY ADVICEAPPLICATIONEXAMINATIONOBJECTIONADVERTISEMENTOPPOSITIONACCEPT / REJECT PROCEEDS TO REGISTRATION

DURATION : 10 YEARS

Licensing

REGISTERED TM

R U AGREEMENT

UNREGISTERED TM

COMMON LAW LICENSE

• EFFECT ?• NO TRAFFICKING IN TRADEMARKS• PUBLIC INTEREST PARAMOUNT• CONTROL OVER USER

ASSIGNABILITY- TRADE MARK

•PROPRIETOR OF TM SHALL HAVE POWER TO ASSIGN TM & TO GIVE EFFECTUAL RECEIPTS FOR ANY CONSIDERATION FOR SUCH ASSIGNMENT.

• A REGD. TM SHALL BE ASSIGNABLE & TRANSMISSIBLE WITH/ WITHOUT GOODWILL OF BUSINESS

CONCERNED & IN RESPECT OF ALL GOODS IN WHICH TM IS REGD. OR OF SOME ONLY OF THE GOODS.

• AN UNREGD. TM - NOW ASSIGNABLE OR TANSMISSIBLE EVEN WITHOUT THE GOODWILL OF THE BUSINESS CONCERNED.

Cont.

ASSIGNABILITY- TRADE MARK

•RESTRICTIONS ON ASSIGNMENT OR TRANSMISSION WHERE MULTIPLE EXCLUSIVE RIGHTS WOULD BE CREATED: TM SHALL NOT BE ASSIGNABLE/ TRANSMISSIBLE IN RELATION TO SAME GOODS OR TMs RESEMBLING EACH OTHER, WHERE IT WOULD DECEIVE OR CAUSE CONFUSION.

•ASSIGNABILITY AND TRANSMISSIBILITY OF CERTIFICATION TMs: NOT ASSIGNABLE OTHERWISE THAN WITH CONSENT OF CENTRAL GOVT.

• ASSIGNABILITY AND TRANSMISSIBILITY OF ASSOCIATED TMs: ONLY AS A WHOLE AND NOT SEPARATELY.

REMEDIES

ACTION IN CIVIL COURTS

ACTION BEFORE CRIMINAL COURTS

• Action before Statutory Authorities

DEFENSES

• TERRITORIAL

• INVALIDITY

• LIMITATION

• STATUTORY EXCEPTION

PASSING OFF

PRINCIPLE :NO MAN IS ENTITLED TO REPRESENT HIS GOODS AS BEING THE GOODS OF ANOTHER

THUS : EXISTENCE OF GOODWILL MISREPRESENTATION INJURY / POSSIBILITY OF INJURY

• GENERAL APPLICABILITY• P/O ACTION PROTECTS GOODWILL• INFRINGEMENT / PASSING OFF

PASSING OFF

• UNREGISTERED TRADEMARK• IS A TORT • FRAUDULENT INTENTION IS NOT NECESSARY• MISREPRESENTATION NEED NOT BE DIRECT• BUT MUST BE MADE TO PROSPECTIVE CUSTOMER• INJURY - A FORESEEABLE CONSEQUENCE• ACTUAL DAMAGE / QUIA TIMET ACTION

CASES : KODAK V/S KODAK LEGO V/S LEGO IRRIGATION

INFRINGEMENT / PASSING OFF

OFFENCEFALSIFYING THE MARKFALSELY APPLYING THE MARKMAKING / POSSESSING INSTRU. OF FALSIFICATIONFALSELY REPRESENTING A TM AS REGISTEREDSELLING GOODS FALSELY MARKED

PENALTIESIMPRISONMENT / FINE / OTHERS

A few instances of trademark disputes

Vaseline Vanildene Amrutanjan Amrutmanthan Godrej Goldage Double Bubble Rustom Ruston Rysta Aristo

Service Marks

Marks Which Are Capable Of Distinguishing Services

New Provision - 1999 TMA

InsuranceBankingHotelsLaundryEducationTransportResearch Laboratories

COPYRIGHTS

COPYRIGHTS

MEANING OF COPYRIGHT : Right To

reproduce the work ( incl. Storing )issue copies of the workperform work in publiccommunicate the work to the publicmake translation

make adaptationsell or give on hire

COPYRIGHT

Copyright subsists in original

literary, dramatic, musical & artistic workscinematographic films sound recordingswhich are either first published in India, ..

COPYRIGHTS

Range Of Copyright Protection

Product Packaging Scenic Arrangement Paintings Sculpture Drawings ( maps,..) Engravings Photographs Architectural Works Computer Software Research Papers Computer databases Choreographic work

©

Some Important Concepts :

- No Copyright in ideas, themes,principles- Artistic Quality ?- Copyright subsists in an identical work - Rule : Creation must be independent- Term Of the Copyright : Life + 60 years- Author’s Moral Rights - Registration Of Copyright not a pre-requisite- Fair Dealing, Back-ups, Educational purposes

COPYRIGHTS

INFRINGEMENT OF COPYRIGHT

CIVIL & / OR CRIMINAL LIABILITY

injunctiondamagesaccount for profit / delivery upimprisonment fineseizure of goods both}

THE FAIR DEALING CONCEPT

ASSIGNABILITY- COPYRIGHT•OWNER OR PROSPECTIVE OWNER(FUTURE WORK) MAY

ASSIGN COPYRT. TO ANY PERSON WHOLLY/ PARTIALLY & EITHER GENERALLY OR SUBJECT TO LIMITATIONS AND EITHER FOR THE WHOLE TERM OF COPYRT. OR ANY PART THEREOF. (S.18-19)

• IT MUST BE IN WRITING, SIGNED BY THE ASSIGNOR OR BY HIS DULY AUTHORISED AGENT.

• ASSIGNMENT OF COPYRT. IN ANY WORK SHALL IDENTIFY SUCH WORK + SPECIFY RIGHTS ASSIGNED & DURATION AND TERRITORIAL EXTENT OF SUCH ASSIGNMENT., ROYALTY PAYABLE

MULTI-PARTY RIGHTS IN CREATIVITY

SONG : IDEA FOR A SONGLYRICSCOMPOSERSINGERSPRODUCER

No Copyright

Shakeel Badayuni Hemant KumarLata MangeshkarGeetanjali Pictures

Kahin Deep Jaale Kahin Dil

PATENTS

What is a Patent ?

A RIGHT

BESTOWED BY THE STATE ,

AND WHICH RIGHT

VESTS IN AN INVENTION.

A RIGHT TO PREVENT OTHERS

FROM MAKING USE OF AN

INVENTION

AIMS & OBJECTIVESAIMS & OBJECTIVES

• Reward the inventor

• Benefits to society - quid pro quo

• Technical advancement

• Encourage investment in infrastructure

• Increase employment opportunities

• Encourage Research & Development

• Patent protection emphatically stated in US Constitution (A 1 S 8)

• Reward the inventor

• Benefits to society - quid pro quo

• Technical advancement

• Encourage investment in infrastructure

• Increase employment opportunities

• Encourage Research & Development

• Patent protection emphatically stated in US Constitution (A 1 S 8)

FUNDAMENTAL PRINCIPALS OF PATENTABILITY

Patent Right subsists in an INVENTION

INVENTION must be NEW (NOVEL)

USEFUL (UTILITY)

NON-OBVIOUS

TERM OF A PATENT

• A PROCESS OF MANUFACTURE OF SUBSTANCE USED AS FOOD / MEDICINE / DRUG

• ANY OTHER INVENTION

• FIVE YEARS FROM SEALING OR SEVEN YEARS FROM DATE OF PATENT WHICHEVER IS SHORTER

• FOURTEEN YEARS FROM DATE OF PATENT

FEATURES OF THE ACT

• ELABORATE DEFINTION OF INVENTION• ABOLITION OF PRODUCT PATENT, …….• STRINGEMENT REQ. REGARDING DESCRIPTION• PRIORITY DATE PROVISION• GROUNDS OF OPPOSITON EXTENDED• SECRECY FOR DEFENCE PURPOSES• USE OF INVENTION FOR STUDY, RESEARCH GOVERNMENT PURPOSES• ELABORATE PROVISIONS FOR PATENT OF ADD.• STRICT REQ. RE. ASSIGNMENT AND TRANSFER• POWERS OF CONTROLLER INCREASED

PATENT GRANT PROCEDURE

PATENT APPLICATION

PROVISIONALSPECIFICATIONS

COMPLETESPECIFICATION

ABANDONED IF COMPLETE SPECIFICATION

NOT FILED WITHIN12 +3 MONTHS

SPECS.COMPLETE

EXAMINATION

REFUSAL U/S 15

APPEAL TOHIGH COURT

ABANDONEDU/S 21(1)

ACCEPTENCEOF C.S. IN 15 + 3

MONTHS

GAZETTE NOTIFICATION

OPPOSITIONIN 4 + 1 MONTHS

SEALING &PATENTGRANT

HEARING & DECISION

REFUSAL ACCEPTANCE

APPLEAL TO HIGH COURT

REFUSAL

REFUSAL OF PATENT U/S 27

S L P

RENEWAL

LAPSE

RESTORATION

REVOCATION

RIGHTS AND OBLIGATIONS OF PATENTEE

RIGHTS:• RIGHT TO MAKE OR USE THE PATENTED ARTICLE• RIGHT TO USE THE PATENTED PROCESS• RIGHT TO PREVENT OTHERS FROM MAKING USE

OF THE PATENT• RIGHT TO ASSIGN / GRANT LICENCESOBLIGATIONS:• NOT TO PREJUDICE THE INTEREST OF THE PUBLIC• SECURE AND WORK THE PATENT• QUALITY AND PRICE OF GOODS.• UNJUSTIFIABLE THREAT OF INFRINGEMENT

ABUSE OF PATENT RIGHTS

• IMPORTATION OF PATENTED ARTICLES AND NOT MANUFACTURING THEM LOCALLY.

• REFUSING TO GRANT LICENCES TO WORK PATENT LOCALLY

• IMPOSING UNREASONABLE TERMS• IMPOSING RESTRICTIVE CONDITIONS

REMEDY• COMPULSORY LICENCE• REVOCATION

NON-WORKING / ABUSE OF MONOPOLY

• REVOCATION• COMPULSORY LICENCE• LICENCE OF RIGHT

GROUNDS OF OPPOSITION

• WRONGFUL OBTAINING • PRIOR PUBLICATION• PRIOR CLAIMING• PRIOR PUBLIC KNOWLEDGE• OBVIOUSNESS (LACK OF INVENTION STEP)• NOT PATENTABLE• NOT CLEARLY/SUFFICIENTLY DESCRIBED

ASSIGNABILITY- PATENTS

• Legal Assignments

• Equitable Assignments– Assignments Before Grant

• Mortgages

• Operation by Law

• Acquisition by Central Government

IN WRITING REGISTRATION

Designs Act A registered design includes

features of shape, configuration, pattern, ornament or composition of lines or colours,

Applied to any article

either in two or three dimensions or in both forms by any industrial processwhich in the finished article appeal to and are judged by the eye.

Term : Protection for 15 years ( renewable )

Geographical Indications

Protection Given To :

indications which identify goodsas originating from/manufactured ina particular territorywhere a given quality, reputation or

other characteristics of the goodsis essentially attributable to that region

Objective : Customers must not be misledMarking must not misleadNo DilutionEconomic prosperity

Darjeeling TeaBasmati RicePaithani SarisKolhapuri ChappalsScotch WhiskyRockford CheeseChampagne

Features Of A G I Statute :

No individual ownershipOwnership by association of persons

Registration Validity : 10 yearsNo assignment , licensing or mortgageUnauthorised use has Civil / Criminal liab.

Importance of a G I statute :Under Trips, protection only if reciprocal protection

Currently no specific Law in Force

Protection of Plant Varieties

• Protection of plant varieties either by Patents or by a Sui Generis system

• AKA - Plant Breeders Rights

• Breeder of new variety must satisfy TEST NOVELTY DISTICTIVENESS UNIFORMITY STABILITY

Breeders are conferred with certain rightsfor a certain durationin relation to that variety

• Exclusive right to market• Exclusive right over propagating material• Rt. to sell, market, import or export• Stocking of protected variety• Exception : Farmers Privilege - seed saving• Varieties in PUBLIC DOMAIN - no Rights

Protection Of Integrated Circuit

Concerns the protection of the intellectualproperty in respect of Integrated Circuits

Semi-Conductor Integrated Circuit Layout Designs Act

Trips mandated statute protecting ICB’s

Proposed Rts. Largely Similar To Patent Law( Protection : 8 years )

PROTECTION OF UNDISCLOSED INFORMATION

BETTER KNOWN AS

TRADE SECRETS

SOME HARD FACTS

• Results of Survey Conducted by the American Society for Industrial Security ( ASIS )

Jan’97 - Jan 98 : Fortune 1000 Companies sustained losses of more than $ 45 billion from proprietary information thefts

Manufacturing organizations reported losses totaling nearly $900 million

SOME MORE HARD FACTS

* Of the 1300 companies surveyed by ASIS, 1,100

had fallen prey to incidents of industrial espionage and 550 to suspected incidents of espionage. * The White House Office of Science & Tech. Estimates that since 1990, six million jobs have been lost as a result of trade secret thefts

Definition Of A Trade Secret

is an information which

is a SECRET

has been INTENTIONALLY treated as such

is capable of COMMERCIAL application

involves an ECONOMIC interest

Characteristics of a Trade Secret

• Concept of ‘sufficiently developed’

• No necessity of Novelty

• Inventiveness not a pre-requisite

• Important requirement => SECRET

• Exercise of Skill and Effort

• Desire of Confidentiality

Subject Matter of Trade Secrets

• Any formula, pattern or device or compilation of information which is used in one’s business and which gives the owner over competitors who do not know or use it.e.g. chemical compound, a process of manufacture, treating or preserving material, a pattern for a machine other other device or a list of customers, detailed manufacturing drawings, tolerance data, training materials, source code, etc.

Is Every Confidential Information A Trade Secret ?

An idea is usually not regarded as property

because the concept of property implies

something that can be owned and possessed to

the exclusion of others.

Some element of originality/novelty is necessary

for a claim of ownership in an idea or concept

Must possess ‘concreteness’

that is something in a tangible form

which is in condition for reproduction and

not merely the perception of a desirable

result.

Naked ideas have been characterised as mere

“suggestions” and not as “trade secrets”

Some qualifications on trade secrets• Nothing unlawful about seeking to learn about a

competitor’s products or processes provided no unlawful methods are employed

• Disclosure made in confidence

• Imposes liability not only on those who wrongfully misappropriate trade secrets by breach of confidence, but also in certain conditions, on others who might benefit from the breach

• Does not bar lawful reverse engineering

Some qualifications on trade secrets

• Recognises distinction between ownership of trade secret and ownership of physical object or chattel embodying the same.

# such that transfer of the physical object embodying the trade secret does not under all circumstances give the transferee the right to discover the trade secret from such physical embodiment and thereafter exploit it for his own benefit.# for this the transfer must be made subject to confidential relationship between the parties by putting restrictions in the lease agreement against disassembling the chattel

• Without such reservations an proprietary rights are relinquished

Misappropriation Of Trade Secrets

• Fraud• Theft• Unauthorised Interception• Breach Of Confidence• Public Disclosure

Essentials In An Action For Breach Of Confidentiality

1. Information must have the necessary “quality of confidence”

2. Information must have been imparted under an obligation of confidence

* direct * indirect * no relationship

3. Unauthorised use to the detriment of another

* deliberate * unconscious

BROADLYBROADLY

• Corporate governance ethos

• Work culture

• Systems & Procedures

• Agreements & Contracts

• Corporate goodwill

• Periodic systems review

• Establishing security levels

Security Measures

Positive Aspects Of Trade Secret Laws

• Appreciation of benefits• Stabilizes relationships• Protects rules of

Fairplay• Increases Efficiency• Increases Productivity• Ensures Accountability

Negative Aspects Of Trade Secrets

VOLATILELOSS OF SECRECY

CONSTANT VIGILANCE

TS and PATENT any apparent conflict ?

Trade Secret

Exclusivity : if secret Ownership : due

diligence

No protection against honest discovery

Unltd. duration of right

Patent

Exclusivity: Disclosure

Ownership : Grant

Duration : 20 years

Applies to Inventions Only

Enforced also against innocent

infringers

THE “ RING FENCE ” OF IP

Kodak• Brand name - Trademark Act

• Packaging - Copyright Act

• Camera Body - Designs Act

• Logo - TM & Copyright Acts

• Literature - Copyright Act

• Improved Shutter - Patent Act

• PCB’s - Inte. Cir. Layout Des.

Act

• Film Coating Process - Protection of Confi. Info

"Thou shalt not steal."

Old Testament Ex. 20, 15.

A little stealing is a dangerous part,But stealing largely is a noble art.Oh ! It’s mean to rob a hen roost or a henBut by stealing thousandsWe become gentlemen

THANKYOU