SANJAY KHER ADVOCATE INTRODUCTION TO INTELLECTUAL PROPERTY RIGHTS.
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Transcript of SANJAY KHER ADVOCATE INTRODUCTION TO INTELLECTUAL PROPERTY RIGHTS.
SANJAY KHERADVOCATE
INTRODUCTION TOINTELLECTUAL PROPERTY RIGHTS
Eco
nom
ic T
imes
– 2
nd F
eb. 2
002
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
N
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