1. INTELLECTUAL PROPERTY RIGHTS
INTRODUCTION TO
INTELLECTUAL PROPERTY RIGHTS
SANJAY KHER
ADVOCATE

2. Economic Times – 2nd Feb. 2002

3. The Emerging Importance Of IPR
GROWING AWARENESS
ECLIPSE OF NATIONAL BOUNDARIES
HARMONISATION OF LAWS
THE NEXT ECONOMY OF IDEAS

4. U.S. Constitution A 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

5. What Is WTO ? agreement on harmonizing commercial laws
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

6. GATT / WTO Chronology 1947 Birth of GATT Geneva (12 + 11= 23)
tariff concessions exchanged
$ 2.5 billion worth of Tariff concessions
Uruguay - biggest negotiating mandate
agreed upon
Geneva - Uruguay Round completed
Marrakesh - The Final Act of the UR
- WTO (TRIPS ) Agreement
- 124 nations signatories
WTO came into force - HQ Switzerland

7. FORMS OF INTELLECTUAL PROPERTY
COPYRIGHT
TRADEMARKS
PATENTS
INDUSTRIAL DESIGNS
GEOGRAPHICAL INDICATIONS
INTEGRATED CIRCUITS
UNDISCLOSED INFORMATION

8. 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

9. 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

10. 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

11. TRADEMARKS

12. William Shakespeare He who filches my good name
Robs me of that which not enriches him,
but makes me poor indeed

13. TRADE & SERVICE MARKS in relation to goods for the purpose
WHAT IS A TRADE MARK
a mark used or proposed to be used
in relation to goods for the purpose
of indicating a connection in the
course of trade between the goods and some person having the right
to use the mark

14. TRADE & SERVICE MARKS includes a device brand heading label
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

15. 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

17. WORLDS MOST VALUABLE BRANDS
1999 US $ Billion
COCA COLA
MICROSOFT 57
IBM
GENERAL ELECTRIC 34
FORD
DISNEY 32
INTEL 30
McDONALD’S 26
A T & T 24
MARLBRO 21

18. World’s Most Valuable Brand
$ Bn.
113 84
61% 72 69
-13%
-5%

19. 80% OF THE IMPACT BUT ONLY 20% OF THE COST INTANGIBLES VALUE QUALITY
PERCEPTIONS
QUALITY
PERCEPTIONS
SERVICES
AFTER SALES
SERVICE
BEFORE SALES
SERVICE
FUNCTION
DELIVERY
DURING SALES
SERVICE
PACKAGING
DESIGN
ORGANISATION
PRODUCT
USER’S RECOMMENDATION
OTHER
AVAILABILITY
PRICE
FEATURES
EFFICACY
WARRANTIES
ADVICE
ADD-ONS
FINANCE
BRAND
NAME
REPUTATION
CORPORATE
IMAGE

20. Mkt.Cap v/s BV 1
$ bn
380
199
113
104 69 65 53 35
61%
17%
27%
34%

21. Mkt. Cap v/s B. V 67
$ bn 13 12 11 8 6 7 6
82%
9 %
66 %
93%

22. Unaffected BV - infact done better
$bn

23. 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
™ 

24. Some Famous Brands ( Trade Marks )
Mercedes Benz for vehicles
Coca Cola for beverages
Intel for computer
Crocin for pharma
Bournvita for food stuff
MGM - roar of Lion for entertainment
Taj Hotels for hotels
Nike for shoes
501 Bar for soaps

25. Kodak Easy to pronounce Easy to remember Easy to spell and write
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
Kodak
Emblems & Names ( Prev. Of Misuse ) Act 1950
Interest Of Consumers Paramount

26. 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

27. THE TRADE MARK REGISTRY
HEAD OFFICE MUMBAI
BRANCH OFFICES CALCUTTA
DELHI
CHENNAI
AHMEDABAD
REGISTRAR OF TM’s CG OF PAT. & DESIGNS
REGISTRY IS A TRIBUNAL WITH POWERS OF CC
TRADE MARK JOURNAL

28. REGISTRATION PROCEDURE
SELECTION OF MARK
SEARCH
PRELIMNARY ADVICE
APPLICATION
EXAMINATION
OBJECTION
ADVERTISEMENT
OPPOSITION
ACCEPT / REJECT
PROCEEDS TO REGISTRATION
DURATION : 10 YEARS

29. Licensing UNREGISTERED TM REGISTERED TM COMMON LAW LICENSE
R U AGREEMENT
UNREGISTERED TM
COMMON LAW LICENSE
EFFECT ?
NO TRAFFICKING IN TRADEMARKS
PUBLIC INTEREST PARAMOUNT
CONTROL OVER USER

30. 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.

31. 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.

35. Action before Statutory Authorities
REMEDIES
ACTION BEFORE
CRIMINAL COURTS
ACTION IN
CIVIL COURTS
Action before Statutory Authorities

36. DEFENSES
TERRITORIAL
INVALIDITY
LIMITATION
STATUTORY EXCEPTION

37. 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

38. 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

39. INFRINGEMENT / PASSING OFF
OFFENCE
FALSIFYING THE MARK
FALSELY APPLYING THE MARK
MAKING / POSSESSING INSTRU. OF FALSIFICATION
FALSELY REPRESENTING A TM AS REGISTERED
SELLING GOODS FALSELY MARKED
PENALTIES
IMPRISONMENT / FINE / OTHERS

40. A few instances of trademark disputes
Vaseline Vanildene
Amrutanjan Amrutmanthan
Godrej Goldage
Double Bubble
Rustom Ruston
Rysta Aristo

41. Service Marks Marks Which Are Capable Of Distinguishing Services
New Provision TMA
Insurance
Banking
Hotels
Laundry
Education
Transport
Research Laboratories

42. COPYRIGHTS

43. COPYRIGHTS Right To reproduce the work ( incl. Storing )
MEANING OF COPYRIGHT :
Right To
reproduce the work ( incl. Storing )
issue copies of the work
perform work in public
communicate the work to the public
make translation
make adaptation
sell or give on hire

44. COPYRIGHT Copyright subsists in original
literary, dramatic, musical & artistic works
cinematographic films
sound recordings
which are either first published in India, ..

46. © COPYRIGHTS Paintings Sculpture Drawings ( maps,..) Engravings
Range Of Copyright Protection
Product Packaging Scenic Arrangement
Paintings Sculpture
Drawings ( maps,..) Engravings
Photographs Architectural Works
Computer Software Research Papers
Computer databases Choreographic work

47. COPYRIGHTS - No Copyright in ideas, themes,principles
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

48. INFRINGEMENT OF COPYRIGHT
CIVIL & / OR CRIMINAL LIABILITY
injunction
damages
account for profit / delivery up
imprisonment
fine
seizure of goods }
both
THE FAIR DEALING CONCEPT

49. 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

50. MULTI-PARTY RIGHTS IN CREATIVITY
Kahin Deep Jaale
Kahin Dil
SONG : IDEA FOR A SONG
LYRICS
COMPOSER
SINGERS
PRODUCER
No Copyright
Shakeel Badayuni Hemant Kumar
Lata Mangeshkar
Geetanjali Pictures

51. PATENTS

52. A RIGHT TO PREVENT OTHERS
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

53. AIMS & 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)

54. FUNDAMENTAL PRINCIPALS OF PATENTABILITY
Patent Right subsists in an INVENTION
INVENTION must be NEW (NOVEL)
USEFUL (UTILITY)
NON-OBVIOUS

55. 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

56. 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

57. PATENT GRANT PROCEDURE
PATENT APPLICATION
PROVISIONAL
SPECIFICATIONS
COMPLETE
SPECIFICATION
SPECS.
COMPLETE
ABANDONED IF
COMPLETE SPECIFICATION
NOT FILED WITHIN
12 +3 MONTHS
EXAMINATION

58. REFUSAL U/S 15
ABANDONED
U/S 21(1)
ACCEPTENCE
OF C.S. IN
MONTHS
APPEAL TO
HIGH COURT
GAZETTE NOTIFICATION
OPPOSITION
IN MONTHS
REFUSAL OF
PATENT U/S 27
HEARING & DECISION
REFUSAL
ACCEPTANCE
APPLEAL TO
HIGH COURT
SEALING &
PATENT
GRANT
S L P
REFUSAL

59. RENEWAL
LAPSE
RESTORATION
REVOCATION

60. RIGHTS AND OBLIGATIONS OF PATENTEE
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 LICENCES
OBLIGATIONS:
NOT TO PREJUDICE THE INTEREST OF THE PUBLIC
SECURE AND WORK THE PATENT
QUALITY AND PRICE OF GOODS.
UNJUSTIFIABLE THREAT OF INFRINGEMENT

61. ABUSE OF PATENT RIGHTS REMEDY
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

62. NON-WORKING / ABUSE OF MONOPOLY
REVOCATION
COMPULSORY LICENCE
LICENCE OF RIGHT

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

64. ASSIGNABILITY- PATENTS
Legal Assignments
Equitable Assignments
Assignments Before Grant
Mortgages
Operation by Law
Acquisition by Central Government
IN WRITING
REGISTRATION

65. 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 process
which in the finished article appeal to and are judged by the eye.
Term : Protection for 15 years ( renewable )

69. Geographical Indications
Protection Given To :
indications which identify goods
as originating from/manufactured in
a particular territory
where a given quality, reputation or
other characteristics of the goods
is essentially attributable to that region

70. Customers must not be misled Marking must not mislead No Dilution
Objective :
Customers must not be misled
Marking must not mislead
No Dilution
Economic prosperity
Darjeeling Tea
Basmati Rice
Paithani Saris
Kolhapuri Chappals
Scotch Whisky
Rockford Cheese
Champagne

71. Features Of A G I Statute :
No individual ownership
Ownership by association of persons
Registration Validity : 10 years
No assignment , licensing or mortgage
Unauthorised use has Civil / Criminal liab.
Importance of a G I statute :
Under Trips, protection only if
reciprocal protection
Currently no specific Law in Force

72. 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

73. in relation to that variety Exclusive right to market
Breeders are conferred with
certain rights
for a certain duration
in 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

74. Protection Of Integrated Circuit
Concerns the protection of the intellectual
property 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 )

75. PROTECTION OF UNDISCLOSED INFORMATION BETTER KNOWN AS TRADE SECRETS

76. SOME HARD FACTS
Results of Survey Conducted by the American Society for Industrial Security ( ASIS )
Jan’97 - Jan 98 : Fortune Companies
sustained losses of more than $ 45 billion
from proprietary information thefts
Manufacturing organizations reported losses
totaling nearly $900 million

77. 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

78. 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

79. 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

80. 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.

81. 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

82. 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”

83. 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

84. 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

85. Misappropriation Of Trade Secrets
Fraud
Theft
Unauthorised Interception
Breach Of Confidence
Public Disclosure

86. 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

87. Security Measures BROADLY Corporate governance ethos Work culture
Systems & Procedures
Agreements & Contracts
Corporate goodwill
Periodic systems review
Establishing security levels

88. Positive Aspects Of Trade Secret Laws
Appreciation of benefits
Stabilizes relationships
Protects rules of Fairplay
Increases Efficiency
Increases Productivity
Ensures Accountability

89. Negative Aspects Of Trade Secrets
VOLATILE
LOSS OF SECRECY
CONSTANT VIGILANCE

90. 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

91. THE “ RING FENCE ” OF IP Kodak Packaging - Copyright Act
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

92. "Thou shalt not steal."
Old Testament Ex. 20, 15.

93. 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 hen
But by stealing thousands
We become gentlemen

94. THANKYOU