Principles of Industrial Property Rights
← INDEX
1. Introduction 02 2. World Trade Organization (WTO) 04 3. World Intellectual Property Organization (WIPO) 05 4. Trade Related Aspects of Intellectual Property Rights (TRIPS) 07 5. Trademarks 10 a. Types of Trademarks 10 b. Section II (TRIPS) 11 c. Trend in Trademark applications 18 d. Country comparison 19 e. Case study: Redbull v/s Unasi Management Inc. 20 6. Geographical Indications 24 a. Appellations of Origin 24 b. Difference between Appellation of Origin & Geographical Indications 25 c. Section III 26 d. Trend in Geographical Indication applications 31 7. Industrial Design 32 a. Section IV 32 b. Trend in Industrial Design applications 35 c. Country Comparison 36 d. Case Study: Bajaj Auto Ltd. v/s RanomotoGulsar 37 8. Patents 39 a. Section V 40 b. Product Patents 48 c. Product Patents in Pharma 50 d. Trends in Patent applications 54 e. Country Comparison 55 f. Case Study: Apple v/s Samsung 56 9. Conclusion 59 10. Bibliography 62
← INTRODUCTION
The main objective of this assignment is the intent to provide an introduction to non-specialists to the subject of industrial property. It explains the principles underpinning industrial property rights. It describes the most common forms of industrial property, including patents for inventions, trademarks, industrial designs and geographical indications
To begin with, trademarks and patents can be aptly said as the true guardians of the inventors, budding industrialists and the people capable of performing outstanding and path breaking work. The concepts of trademarks and patents are governed under the terminology of Intellectual Property Rights. Intellectual property rights include the aspects of copyrights and industrial property. According to the Indian law, these aspects of Intellectual property rights (IPR) are majorly governed by 3 set of laws namely The Trademarks Act, 1999: The Patents Act 1970, as amended by The Patents (Amendment) Act 2005 and The Patents Rules, 2003, as amended by The (Amendment) Rules 2006.
IPR is generally categorised into two branches. They are:
1. Copyrights 2. Industrial property a. Patents & Utility Models b. Trademarks, Certification marks & Collective marks c. Industrial Designs d. Geographic Indications of source e. Integrated Circuits f. Protection against Unfair Competition
The basic need of IPR is to protect the rights of the inventors for their commercial exploitation and thrusting trade and commerce and innovation on a national as well as a global scale. All over the world, several measures have been undertaken to strengthen the intellectual property laws.
The main purpose of IPR is to protect and promote radicalism along the several fractions of the society. A better understanding of the IPR will allow the state as well as the industrial circuit to assess the levels of development and impact on the national as well as the global scale. The emergence of several new elements such as Internet has caused policymakers, legislators, rights holders, content creators, businesses, content users and others to rethink the way intellectual property should operate in a modern inter-connected society. The range of new technologies and the speed of innovation raises intellectual property issues: domain names are often inextricably linked with trademark issues; and the ease with which digital technologies allow for copying and distribution challenges intellectual property right law enforcement.
Tuning with the changing industrial world, the intellectual property rights have continued to strengthen its position in the India. In 1999, the government has passed the important legislation in relation to the protection of intellectual property rights on the terms of the worldwide practices and in accordance to the India 's obligations under the Trade Related Aspects of Intellectual Property Rights.
It consists of – • The Patents (Amendment) Act, 1999
• The Trade Marks Bill, 1999
• The Copyright (Amendment) Act, 1999
• Geographical Indications of Goods (Registration & Protection) Bill, 1999
• The Industrial Designs Bill, 1999
• The Patents (Second Amendment) Bill, 1999
← WORLD TRADE ORGANIZATION (WTO)
The World Trade Organization (WTO) is the only global international organization dealing with the rules of trade between nations. At its heart are the WTO agreements, negotiated and signed by the bulk of the world’s trading nations and ratified in their parliaments. The goal is to help producers of goods and services, exporters, and importers conduct their business.
ORIGIN
The WTO was born out of negotiations. It was established on 1st January 1995 and was created from the 1986–94 negotiations called the Uruguay Round. The headquarters are located in Geneva, Switzerland. As on 24th August 2012, there are 157 member nations in the organization. Its member governments run the WTO. The members make all major decisions as a whole, either by ministers (who usually meet at least once every two years) or by their ambassadors or delegates (who meet regularly in Geneva).
FUNCTIONS
← It is an organization for trade opening ← It is a forum for governments to negotiate trade agreements ← It is a place for them to settle trade disputes ← It operates a system of trade rules. ← Administering WTO trade agreements ← Forum for trade negotiations ← Technical assistance and training for developing countries
← WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)
The World Intellectual Property Organization (WIPO) is an international organization dedicated to ensuring that the rights of creators and owners of intellectual property are protected worldwide and that inventors and authors are thus recognized and rewarded for their ingenuity.
As a specialized agency of the United Nations, WIPO exists as a forum for its Member States to create and harmonize rules and practices to protect intellectual property rights. Most industrialized nations have protection systems that are centuries old. Many new and developing countries, however, are now building up their patent, trademark and copyright laws and systems. With the rapid globalization of trade during the last decade, WIPO plays a key role in helping these new systems evolve through treaty negotiation, legal and technical assistance, and training in various forms, including in the area of enforcement of intellectual property rights.
WIPO also provides international registration systems for patents, trademarks, appellations of origin and industrial designs. These greatly simplify the process for simultaneously seeking intellectual property protection in a large number of countries. Instead of having to file national applications in many languages, these systems enable applicants to file a single application, in one language, and to pay a single application fee. The WIPO-administered systems of international protection include four different mechanisms of protection for specific industrial property rights:
← The Patent Cooperation Treaty (PCT) for filing patent applications in multiple countries. ← The Madrid System for the International Registration of Marks for trade and service marks. ← The Hague System for the International Deposit for Industrial Designs. ← The Lisbon System for the International Registration of Appellations of Origin.
Anyone applying for a patent or registering a trademark or design, whether at the national or international level, needs to determine whether their creation is new or is owned or claimed by someone else. To make this determination, huge amounts of information must be searched. Four WIPO treaties have created classification systems, which organize information on different branches of industrial property into indexed, manageable structures for easy retrieval:
← Strasbourg Agreement Concerning the International Patent Classification. ← Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. ← Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks. ← Locarno Agreement Establishing an International Classification for Industrial Designs.
WIPO also provides an Arbitration and Mediation Center, which offers services for the resolution of international commercial disputes between private parties involving intellectual property. The subject matter of these proceedings includes both contractual disputes (such as patent and software licenses, trademark coexistence agreements, and research and development agreements) and non-contractual disputes (such as patent infringement).
The Center is also now recognized as the leading dispute resolution service provider for disputes arising out of the abusive registration and use of Internet domain names.
← TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)
The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), negotiated in the 1986-94 Uruguay Round, introduced intellectual property rules into the multilateral trading system for the first time.
ORIGIN
Ideas and knowledge are an increasingly important part of trade. Most of the value of new medicines and other high technology products lies in the amount of invention, innovation, research, design and testing involved. Films, music recordings, books, computer software and on-line services are bought and sold because of the information and creativity they contain, not usually because of the plastic, metal or paper used to make them. Many products that used to be traded as low-technology goods or commodities now contain a higher proportion of invention and design in their value — for example brand named clothing or new varieties of plants.
Creators can be given the right to prevent others from using their inventions, designs or other creations — and to use that right to negotiate payment in return for others using them. These are “intellectual property rights”. They take a number of forms. For example books, paintings and films come under copyright; inventions can be patented; brand names and product logos can be registered as trademarks; and so on. Governments and parliaments have given creators these rights as an incentive to produce ideas that will benefit the society as a whole.
The extent of protection and enforcement of these rights varied widely around the world; and as intellectual property became more important in trade, these differences became a source of tension in international economic relations. New internationally-agreed trade rules for intellectual property rights were seen as a way to introduce more order and predictability, and for disputes to be settled more systematically. The Uruguay Round achieved that.
The WTO’s TRIPS Agreement is an attempt to narrow the gaps in the way these rights are protected around the world, and to bring them under common international rules. It establishes minimum levels of protection that each government has to give to the intellectual property of fellow WTO members. In doing so, it strikes a balance between the long-term benefits and possible short-term costs to society. Society benefits in the long term when intellectual property protection encourages creation and invention, especially when the period of protection expires and the creations and inventions enter the public domain.
Governments are allowed to reduce any short-term costs through various exceptions, for example to tackle public health problems. And, when there are trade disputes over intellectual property rights, the WTO’s dispute settlement system is now available.
FUNCTIONS
1. Application of basic principles of the trading system and other international intellectual property agreements 2. To give adequate protection to intellectual property rights 3. Enforcement of the rights of the countries and its application in its own territories 4. Settlement of disputes on intellectual property between members of the WTO 5. Special transitional arrangements during the period when the new system is being introduced
The TRIPS Agreement has an additional important principle: intellectual property protection should contribute to technical innovation and the transfer of technology. Both producers and users should benefit, and economic and social welfare should be enhanced, the agreement says.
How to protect intellectual property: common ground-rules
The second part of the TRIPS agreement looks at different kinds of intellectual property rights and how to protect them. The purpose is to ensure that adequate standards of protection exist in all member countries. Here the starting point is the obligations of the main international agreements of the World Intellectual Property Organization (WIPO) that already existed before the WTO was created:
1. The Paris Convention for the Protection of Industrial Property (patents, industrial designs, etc.) 2. The Berne Convention for the Protection of Literary and Artistic Works (copyright).
← TRADEMARKS
Trademarks are words, names, symbols, or devices used by manufacturers of goods to identify their goods, and to distinguish their goods from goods manufactured and sold by others. A person who sells his goods under a particulate trademark acquires a sort of limited exclusive right to use the mark in relation those goods. Trademark law protects this right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion. Trademark law protects the goodwill of a business and also protects the consumers ' ability to accurately ascertain the source of goods and services.
As with copyright, most countries have enacted statutes for the registration and protection of trademarks. To be registered as a trademark, a sign must be capable of representation in a visible form.
The criteria of distinctiveness have been laid down in TRIPS agreement and also in Paris Convention, which provides that registration can be denied to trademarks, which are devoid of any distinctive character. Lack of distinctiveness may include cases, which are either too simple or too complicated. Similarly, the Paris Convention disallows protection of marks, which are somewhat vague.
TYPES OF TRADEMARKS Under the Indian trademark law the following are the types of trademarks that can be registered: • Product trademarks A product trademark is a mark that identifies the seller of the goods. It distinguishes the seller from the rest of the competitors. E.g. Sony, Hewlett Packard, Nike
• Service trademarks A service trademark is used to identify the services of an entity, such as the trademark for a broadcasting service, retails outlet, etc. They are used in advertising for services. E.g. Kaya Skin Clinic, Jawed Habib Salon, Richfeel • Certification trademarks A certification trademark is one that is capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, the method of manufacture, the quality or other specific features E.g. ISO certification • Collective trademarks A collective trademark is registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group. E.g. Chartered Accountants (CA)
SECTION 2: TRADEMARKS
Article 15
Protectable Subject Matter
1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.
2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).
3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.
4. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.
5 Members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration.
Caselet #1: Proctor & Gamble v/s Joy Creators and others
The plaintiff company is also engaged in the business of manufacturing and selling skin care and personal cleansing products, including anti-aging moisturizer under the trademark OLAY. The plaintiff company is also using the trademarks Olay Total Effects and Total Effects in respect of anti-aging products. The plaintiff holds registration in respect of trademark Olay Total Effects.
It is alleged that in or about April, 2008, the plaintiff company came across an advertisement of application No.1224385 for registration of the label, which contains the mark Joy Ultra Look Total Effects in respect of Soap, Perfumery Essential Oils, Hair Lotions and Creams, Dentifrices etc., claiming use of the aforesaid mark/label since April, 2001. The plaintiff, thus, claims infringement of its registered and well-known trademark Olay Total Effects. Though it was alleged in the written statement of defendant (Joy Ultra Look Total Effects) that they were prior user of the words "Total Effects", they have not come forward to prove the claim made by them. In fact, they have themselves admitted that they had agreed to delete the words "Total Effects" from their trademark provided the plaintiff agreed not to claim damages. This clearly shows an admission on the part of the defendants that they are not entitled to use the words "Total Effects" as a part of their trademark. The defendants were thereby restrained from manufacturing, selling or marketing age defying foundation or any other product in respect of which the plaintiff holds the registered word mark Olay Total Effects. The plaintiff is also awarded punitive damages amounting to Rs.1, 00,000/- each against defendant.
Caselet #2: Parle Agro v/s Cadbury Ltd. In early 2006, Parle Agro Ltd filed a suit against Cadbury India Ltd in Bombay High Court, over the use of the word ‘Fruity’ in Cadbury Fruity Gems, as it contended that it would dilute the brand value of its main product ‘Frooti’, a mango drink. Parle Agro had also sought an ad-interim relief to prevent Cadbury from marketing “Fruity Gems” until the case is decided. Within months, Cadbury moved the Delhi High Court against Parle Agro and sought a declaration that the word “Fruity” was commonly used in the English language and the Mumbai-based Parle cannot claim exclusivity to a completely descriptive term. According to Cadbury Spokesperson, the Bombay High Court has refused to grant an interim injunction to Parle. In June 2008, Cadbury and Parle Agro tried to settle the matter outside the court, but Parle refused the settlement terms offered by Cadbury. After Cadbury lost its appeal on declaration in the Delhi HC, it moved the Supreme Court to transfer the Infringement case from Bombay High Court to Delhi High Court, so as to avoid conflicting Judgments from the two courts. However the Supreme Court rejected this plea.
Article 16
Rights Conferred
1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.
2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.
3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.
Caselet#3:Tata Sons Ltd. vs. Mr MD Jawed & ANR
In this case, the issue was whether the defendants Mr. MD Jawed & ANR were using the mark (A-One TATA) deceptively. The defendants are stated to be co-owners of M/s. Durga Scale Co., which is engaged in the business of manufacturing and selling weighting scales and spring balances under the trade mark A-One TATA.
The Court after referring to the provisions of Trademark Act, Article 6bis, of the Paris Convention, Article 16 of TRIPS provisions, and judicial recognition given to well known marks concluded that as far as India was concerned, “TATA is almost a household name”
The court imposed punitive damages to the tune of Rs. Two lacs and also refrained them permanently from using the TATA Mark.
http://indiankanoon.org/doc/1499969/
Article 17
Exceptions
Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.
Caselet #4: Tatasons Limited v/s Greenpeace International It is a case of ‘fair use’, an exception employed to defend an allegation of trademark infringement. According to Indian Law ‘Fair use’ of trademark means use in accordance with honest practices’ that does not take unfair advantage of the trademark, or is detrimental to the mark’s distinctive character. TATA Sons had filed a lawsuit against Greenpeace in the Delhi High Court claiming defamation and trademark infringement and asked for Rs. 10 crore in damages for using the’ T’ logo in their online game Turtle vs. TATA. Tata Group took an offence to being called “demons” in that game. Greenpeace defended its use of Tata’s trade marks in its online game Turtle vs. TATA (in which Tata’s logo is portrayed as turtle-chasing villains) as nominative fair use and parodic. On this basis, it is argued that use of the trademark fell outside the statutory ambit of Section 29(4) of the Trade Marks Act, 1999*.The court observed that Greenpeace is not a competitor of Tata’s and as far as being called ‘demons’, the Court held such reference to be parodic. The Delhi High Court has denied TATA’s plea for injunction to remove the game, upholding the right to free speech
Article 18
Term of Protection
Initial registration, and each renewal of registration, of a trademark shall be for a term of no less than seven years. The registration of a trademark shall be renewable indefinitely.
Note: As per Indian Trademarks Act 1999, the term for renewal of registration is no less than 10 years.
Article 19
Requirement of Use
1. If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless the trademark owner shows valid reasons based on the existence of obstacles to such use. Circumstances arising independently of the will of the owner of the trademark, which constitute an obstacle to the use of the trademark, such as import restrictions on, or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use.
Article 21
Licensing and Assignment
Members may determine conditions on the licensing and assignment of trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and that the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which it belongs.
Caselet #5: Sahara One v/s Star one
Sahara One, the Media and Entertainment Company of the Sahara group, had issued a legal notice to Star India. The issue pertains to Star India branding its new channel as Star “One”. Sahara One felt that by doing this, Star India had copied Sahara 's brand.
In a petition filed in the Delhi High Court, Sahara India Mass Communication, which owns the Sahara One brand, asked that Star India be restrained from using “One” as it had registered the brand first.
Star India then changed the logo of its new channel from 'One ' to 'Star One '. The Sahara Group 's petition in the Delhi High Court sought to restrain Star from using 'One ' and after the court’s hearing, Star agreed to the court 's suggestion to use the word Star along with one in the logo.
TREND IN TRADEMARK APPLICATIONS
• There was a 9% increase in filing from previous year. Although the effect of global meltdown of the economy shadowed in the overall filing rate of IP applications, the trademarks applications witnessed an upward trend.
• Total numbers of trademarks registered were 67490, which is a 34% decrease from 2008-09.
• More number of applications was registered in the year 2009, as there were a lot many pending cases from the year 2005. This was because a number of examiners left the organization and many were promoted.
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COUNTRY COMPARISON
• In the year 2009, India registered 8% increase in the number of trademark applications whereas Australia registered a 9% decrease in the number of trademark applications. China registered a 19% increase in the number of trademark applications.
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CASESTUDY: Redbull v/s Unasi Management Inc.
Introduction
Under the Domain name dispute resolution policy, the dispute regarding a domain name is compulsorily submitted to the administrative authority or panel where the complainant alleges that
(a) the impugned domain name is identical or confusingly similar to the trademark or service mark in which the complainant has the rights; or
(b) The proprietor has no right or legitimate interest in respect of the domain name; or
(c) The domain name was registered and being used in bad faith. Thus three main components that the complainant is required to establish are ‘deceptive similarity’, ‘lack of rights or legitimate interests’ and ‘bad faith’. For ascertaining ‘deceptive similarity’ an objective analysis of the disputed domain name is needed. The rules for judging deceptive similarity would apply to the domain names to a great extent. For determining whether the proprietor of the domain name has any ‘right or legitimate interest’ in the domain name, the pertinent consideration are
(a) whether before any notice of the dispute the proprietor of the domain name has used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bonafide offering of goods or services; or
(b) whether the proprietor as an individual business or organization has been commonly known by the domain name, even if he/she has acquired no trademark or service mark rights; or
(c) The proprietor is making a legitimate non-commercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service at issue. The policy also specifies the manner in which ‘bad faith’ can be proved by the complainant. Four circumstances reflecting bad faith are enumerated in the policy itself. First, where acquisition of the domain name is done for the purposes of remitting or transferring the domain name to the complainant or to the competitor of the complainant for valuable consideration. In this case the consideration must be in excess of documentation out- of- pocket costs relating to the domain name. Second, the domain name was registered in order to prevent the proprietor of the trademark or the service mark from reflecting the mark in the corresponding domain name. However the conduct of the proprietor must indicate the same. Third circumstance indicating malafide would be where the domain name was registered primarily for the purposes of disrupting the business of a competitor. Fourth, the proprietor must have intentionally attempted to attract for commercial gain, the internet users to his/her website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of his/ her website or location or a product or service on his/her location. The relief that the complainant is entitled to receive in such proceedings is limited to cancellation of the domain name or the transfer of registration of the domain name to the complainant. Generally, whenever a complaint is filed before the WIPO Arbitration and Mediation Centre it transmits the request for verification of registration of the domain name, to the Registrar. The Registrar then sends a report containing the identity of the proprietor of the domain name and the contact details for administrative, billing, and technical contact. Thereafter the Centre examines the complaint to see as to whether is fulfills the formal requirements of the Domain Name Dispute Resolution policy and the rules made there under. Once satisfied that the complaint is in order, the Centre notifies the respondent of the complaint. Thereafter a panel is appointed for deciding the matter. The panel may consist of a single person as well.
Case study The case of Red Bull v/s Unasi Management Inc. shall be discussed here to provide a better understanding of the intricacies involved in dispute resolution under the policy. The concepts like ‘deceptive similarity’, ‘legitimate interests’ and bad faith’ involved in domain name disputed are also examined in this case. Redbull is the proprietor of several generic as well as country Top Level Domains. The principle website of Redbull is www.redbull.com which hosts information about Redbull products and other activities of the company and also provides links to its various websites. The Trademark RED BULL is registered in 199 countries in name of Red Bull Company or its subsidiaries. Unasi is the proprietor of the domain name wwwredbull.com where the links to websites relating to the rival energy drinks are posted. When a person visits this website a pop up window appears on the screen. Aggrieved by this Redbull filed a complaint before the WIPO Arbitration and Mediation Centre against Unasi, praying for the transfer of the impugned domain name to Red bull. Red bull averred that its energy drinks under the trademark RED BULL are sold in many countries and million of euros have been spent in advertising the drink. As a result of massive publicity campaigns, the energy drink under the trademark REDBULL has acquired global reputation. Red Bull Company has been involved in organizing Formula One Racing that has given it worldwide media coverage. Redbull contended that the impugned domain name integrated the trademark RED BULL in its entirety The disputed domain name is identical or confusingly similar to its trademark REDBULL and was designed to mislead the Internet users who often make the typographical mistake by omitting the period after "www" when intending to actually visit Redbull website. Unasi did not refute the allegations made by Red Bull Company against it. In order to arrive at the decision, the panel considered the three ingredients namely ‘deceptive similarity’, ‘legitimate interests’ and ‘bad faith’. The panel ruled that disputed domain name was deceptively similar to the trademark RED BULL. The only difference between the domain name and the trademark was the prefix ‘www’. As www (world wide web) is a generic term and a common prefix to domain names in Urls, it is not capable of distinguishing the domain name from the trademark REDBULL. The panel reiterating the earlier rulings stated that ‘the domain names that consist of trademark with prefix www are confusingly or deceptively similar to the trademark’. The panel then considered whether Unasi had any ‘rights or legitimate interest’ in the domain name wwwredbull.com. Unasi had been using the domain name by posting links to the competing energy drinks, which shows that it was aware of Red bull’s product and was free riding on the good will and reputation of the trademark REDBULL. As Unasi has made no rebuttal, it proves the disputed domain name was adopted solely for the purpose of diverting the customer of red bull. There are no circumstances that demonstrate any right or legitimate interest of Unasi in the domain name. For deciding upon whether there was bad faith on part of Unasi in adopting the domain name, the panel considered the factors that indicate bad faith. The panel was of the opinion that since the Redbull is a world famous trademark it is unlikely that Unasi was not aware of its existence. When an Internet user accesses the website under the disputed domain name a pop up window appears which indicates that Unasi is benefiting through the advertisement. Even if the viewers can eventually know that this is not the site they are looking for, the initial diversion of the customers is caused. As the website contains numerous links to competing drinks, it establishes an intention to disrupt the business of Redbull company. The foregoing facts prove that the Unasi has bad intention in adopting the domain name wwwredbull.com. The panel ruled that since Redbull has established all the three elements –‘deceptive similarity’, ‘lack of rights or legitimate interests’ and ‘ bad faith’, the disputed domain name is transferred to red bull.
← GEOGRAPHICAL INDICATIONS
A geographical indication is a name or sign used on certain products, which corresponds to a specific geographical location or origin (e.g. an own, region, or country). The use of a GI may act as a certification that the product possesses certain qualities, is made according to traditional methods, or enjoys a certain reputation, due to its geographical origin.
Presently the protection of Geographical Indication has emerged as one of the most contentious Intellectual Property Rights issues in the WTO’s Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS define geographical indication as “any indication that identifies a product as originating from a particular place, where a given quality, reputation or other characteristics of the product are essentially attributable to its geographical origin.” Also a geographical indication gives exclusive right to a region (town, province or country) to use a name for a product with certain characteristics that corresponds to their specific location.
APPELLATIONS OF ORIGIN (AOO)
Appellations of Origin are the actual names of the geographical places of origin of products, e.g., “Napa Valley” for California wine, but go further than indications of source in that they denote a genuine qualitative link between the products and the places of origin. The Lisbon Agreement defines an appellation of origin as “the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.” This Agreement facilitates the international protection of appellations of origin by offering the possibility of obtaining protection in the Contracting Parties to the Lisbon Agreement through a single registration.
DIFFERENCE BETWEEN AOO & GI
Not all GIs are appellations of origin. A GI is considered an appellation of origin only when both the quality and reputation or other characteristics of the product in question are due exclusively or essentially to the geographical environment.
Further, whereas appellations of origin refer only to geographical names, such as Bordeaux, Champagne and Tequila, symbols such as the Eiffel Tower in Paris or the Matterhorn in Switzerland could function as GIs.
Caselet#1: Tirupati temple to keep laddu patent
The Venkateswara temple in Andhra Pradesh, India’s richest temple, Monday scored a sweet legal victory: the Geographical Indications Registry upheld its claim of a patent over the famous Tirupati laddu.
The laddu, which is offered as a prasad, was granted a Geographical Indicator (GI) tag in September 2009 — the tag ensures a product becomes synonymous with a geographical location — after Tirumala Tirupati Devasthanams (TTD) convinced the Registry that the laddu was unique in its “preparation, quality and reputation.”
But, owing to the growing demand, unscrupulous elements, including hawkers, were selling their preparations as Tirupati laddu. Granting it a GI tag, TTD argued, would curb the problem as violating GI laws invites punishment. The Registry’s order granting the GI tag was, however, challenged by R S Praveen Raj, a scientist from Thiruvananthapuram, and an intellectual property rights activist.
The tag, he contended, is meant to benefit local producers and act as an indicator of the geographical origin of the product.
Thus, everyone from Tirupati has the right to use GI tag as long as their laddus are prepared in Tirupati and have the same delicacy and features as the laddu prepared by TTD. On Monday Chinnaraja G Naidu — Assistant Registrar of Trade Marks and GI, Chennai — issued the verdict, upholding TTD’s claim and fined Raj Rs 10,000. His contention is that anyone from Tirupati can prepare laddus of the same quality as the ones prepared at the Venkateswara shrine and use the GI tag.
SECTION 3: GEOGRAPHICAL INDICATIONS
Article 22
Protection of Geographical Indications
1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent:
(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;
(b) Any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).
3. A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.
4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication, which, although literally true as to the territory, region or locality in which the goods originate falsely represents to the public that the goods originate in another territory.
Caselet #1: Colombian Coffee – Café de Colombia
In the case of the Denomination of Origin Colombian Coffee, it has been shown before the European Commission and other country 's authorities where Colombian Coffee is in the process to or has been recognized with this distinction, that the quality of the product corresponds not only to the specific conditions of climate, localization and environmental characteristics of the land of coffee, but to the support and quality controls in each of the production processes associated with the production of Colombian Coffee. The Colombian Coffee PGI deals with natural and human factors essentially affecting the quality of the product and the authorities of different countries have evaluated and recognized them before granting a special protection to this coffee.
http://www.origin-gi.com/index.php?option=com_content&view=article&id=44&Itemid=42&lang=en
Article 23
Additional Protection for Geographical Indications for Wines and Spirits
1. Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation" or the like.[1]
2. The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Member 's legislation so permits or at the request of an interested party, with respect to such wines or spirits not having this origin.
3. In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled.
4. In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system.
Caselet#2: Tennessee Whiskey
Tennessee whiskey is straight bourbon whiskey produced in the state of Tennessee. This definition is legally established under the North American Free Trade Agreement (NAFTA) and the law of Canada, which states that Tennessee whiskey, must be "a straight Bourbon whisky produced in the State of Tennessee.”
http://en.wikipedia.org/wiki/Tennessee_whiskey
Article 24
International Negotiations; Exceptions
1. Members agree to enter into negotiations aimed at increasing the protection of individual geographical indications under Article 23. The provisions of paragraphs 4 through 8 below shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral or multilateral agreements. In the context of such negotiations, Members shall be willing to consider the continued applicability of these provisions to individual geographical indications whose use was the subject of such negotiations.
2. The Council for TRIPS shall keep under review the application of the provisions of this Section; the first such review shall take place within two years of the entry into force of the WTO Agreement. Any matter affecting the compliance with the obligations under these provisions may be drawn to the attention of the Council, which, at the request of a Member, shall consult with any Member or Members in respect of such matter in respect of which it has not been possible to find a satisfactory solution through bilateral or plurilateral consultations between the Members concerned. The Council shall take such action as may be agreed to facilitate the operation and further the objectives of this Section.
3. In implementing this Section, a Member shall not diminish the protection of geographical indications that existed in that Member immediately prior to the date of entry into force of the WTO Agreement.
4. Nothing in this Section shall require a Member to prevent continued and similar use of a particular geographical indication of another Member identifying wines or spirits in connection with goods or services by any of its nationals or domiciliary who have used that geographical indication in a continuous manner with regard to the same or related goods or services in the territory of that Member either (a) for at least 10 years preceding 15 April 1994 or (b) in good faith preceding that date.
5. Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either:
(a) Before the date of application of these provisions in that Member as defined in Part VI; or
(b) Before the geographical indication is protected in its country of origin; measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication.
6. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in the territory of that Member. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO Agreement.
7. A Member may provide that any request made under this Section in connection with the use or registration of a trademark must be presented within five years after the adverse use of the protected indication has become generally known in that Member or after the date of registration of the trademark in that Member provided that the trademark has been published by that date, if such date is earlier than the date on which the adverse use became generally known in that Member, provided that the geographical indication is not used or registered in bad faith.
8. The provisions of this Section shall in no way prejudice the right of any person to use, in the course of trade, that person’s name or the name of that person’s predecessor in business, except where such name is used in such a manner as to mislead the public.
9. There shall be no obligation under this Agreement to protect geographical indications, which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country.
TREND IN GEOGRAPHICAL INDICATION APPLICATIONS
• There was a 9% decrease in filing of geographical indications from the previous year.
• In 2009-10, 40 applications have been filed and 14 were registered.
• More number of applications was registered in the year 2008, as there were a lot many pending cases from the previous years. This was because a number of examiners left the organization and many were promoted.
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← INDUSTRIAL DESIGNS
Industrial designs refer to creative activity, which result in the ornamental or formal appearance of a product, and design right refers to a novel or original design that is accorded to the proprietor of a validly registered design. Industrial designs are an element of intellectual property. Under the TRIPS Agreement, minimum standards of protection of industrial designs have been provided for.
Industrial designs are usually protected against unauthorized copying or imitation for a period of around 10 years. The WIPO Model Law for developing countries on Industrial Design defines “industrial designs” as “any composition of lines and colours of any 3 dimensional form…(which) gives a special appearance to a product of industry or handicraft and (which) can serve as a pattern for product of industry or handicraft.” The TRIPS negotiations for protection of industrial designs were marked by divergence of views between the EC, which demanded protection for all designs including functional designs, and the US, which sought specifically to exclude protection for functional designs such as for “automobile crash parts.”
SECTION 4: INDUSTRIAL DESIGNS
Article 25
Requirements for Protection
1. Members shall provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations.
2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.
Article 26
Protection
1. The owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.
2. Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.
2. The duration of protection available shall amount to at least 10 years.
Caselet #1: Faber-Castell v/c Pikpen Private Limited This is a Plaintiffs Motion for an injunction restraining the defendants from infringing the plaintiffs registered design of a marker pen or a highlighter sold by the plaintiffs under the trademark "Textliner". The plaintiffs also claim an injunction restraining the defendants from passing-off their highlighter or marker pen under the trade mark "Textliner" by use of the impugned trade mark "Textliner" and by adopting the almost identical configuration, shape, design, color scheme and get-up for their product. The plaintiffs are proprietors of registered design No. 174429 dated 1.8.1997. This registration is under the Designs Act, 1911. http://www.indiankanoon.org/doc/1543503/ As a developing country, India has already amended its national legislation to provide for these minimal standards. The essential purpose of design law is to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The existing legislation on industrial designs in India is contained in the New Designs Act, 2000 and this Act will serve its purpose well in the rapid changes in technology and international developments. India has also achieved a mature status in the field of industrial designs and in view of globalization of the economy; the present legislation is aligned with the changed technical and commercial scenario and made to conform to international trends in design administration.
This replacement Act is also aimed to enact a more detailed classification of design to conform to the international system and to take care of the proliferation of design related activities in various fields.
Obligations envisaged in respect of industrial designs are that independently created designs that are new or original shall be protected. Individual governments have been given the option to exclude from protection, designs dictated by technical or functional considerations, as against aesthetic consideration, which constitutes the coverage of industrial designs. The right accruing to the right holder is the right to prevent third parties not having his consent from making, selling or importing articles being or embodying a design, which is a copy or substantially a copy of the protected design when such acts are undertaken for commercial purposes. The duration of protection is to be not less than 10 years.
A 'design ' is defined to mean only the features of shape, configuration, pattern ornament or composition of lines or colours applied to any two or three dimensional article by any manual, mechanical or chemical, industrial process or means, 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 or property mark or artistic work. Unlike the trademark, a design covers the whole body of the goods and is part and parcel of the goods themselves.
TREND IN INDUSTRIAL DESIGN APPLICATIONS
• In the year 2009, India experienced a 7% decrease in applications filed from last year. The applications filed were 6092, applications examined were 6266 and the numbers of applications granted were 6025.
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COUNTRY COMPARISON
• In the year 2009, India registered 7% decrease in the number of Industrial Design applications whereas Australia registered a 15% decrease in the number of Industrial Design applications.
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CASESTUDY: Bajaj Auto Ltd. v/s RanomotoGulsar
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Bajaj Auto Limited (BAL), which has been aggressive to keep its two-wheelers on a fast track has shown that if need be it do the same to protect its turf — from copycats, that is. The company moved at a scorching pace when it found Sri Lankan importer Ranatunga Motor and Chinese manufacturer TaianChiran Machinery selling the RanomotoGulsar, which BAL maintains is an imitation of its thoroughbred, Pulsar 180. And before the rogue companies could change gears, BAL promptly filed a suit in Colombo High Court. And, sure enough, the verdict went in favour of the Indian company
"The importer has agreed, in court, that the Chinese bikes are a copy of our Pulsar 180 and we have won the case on the grounds that this amounts to unfair competition," BAL executive director Sanjiv Bajaj told ET. BAL sells about 5,000-6,000 motorcycles per month in Sri Lanka. Of this, Pulsar has a share of 1,000 per month. An elated Mr Bajaj said, "This judgement is a strong signal to deter anyone wanting to copy our other, higher selling, products."
Mr Bajaj added that they had first come across copies of their bikes in Iran, but these were just one or two. But, this was the first time they saw it in volumes, since the Sri Lankan importer had brought in 26 bikes and had also sold a few. BAL 's inquiries in China have not lead it to find the manufacturer, with Mr Bajaj stating that there are over 400 manufacturers of motorcycles there.
However, the court document says it is located in Taiwan Hi Tech Development Zone of Shandong. BAL and its distributor, David Pieris Motor Co, had filed the civil suit in the High Court of the Western Province of Colombo. Since the Chinese manufacturer was not present in court, the order was passed ex parte.
As part of its global strategy, BAL has been registering its name, design and brands in the markets it intends to sell. Additionally, it has begun to locate a team or set up a small office in those markets to track such cases. It has also alerted its distributors, who will be the first to be hit by such copies.
"We have teams or offices in Mexico, Egypt, Dubai, Bangladesh, Sri Lanka, Indonesia, Nigeria and are in the process of setting one up in Iran. Now that we have won the case in Sri Lanka, we have despatched copies of the legal order to all our distributors, so that they can use it as a precedent," Mr Bajaj said.
← PATENTS
A patent gives an inventor of an innovative machine/idea/process, a control over who is allowed to implement, make, use, sell, or distribute products based on that invention. If I invent a machine and patent it, and if you look at my machine and create a different machine, which conceptually uses the same idea/mechanism, then you are violating my patent – you can’t do that without my permission. Patent protection only exists if you file the patent with the patent office, and if the patent is accepted.
A patent is thus an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. In order to be patentable, the invention must fulfill certain conditions. A patent provides protection for the invention to the owner of the patent. The protection is granted for a limited period, generally 20 years. Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner 's consent. These patent rights are usually enforced in a court, which, in most systems, holds the authority to stop patent infringement. A court can also declare a patent invalid upon a successful challenge by a third party.
The TRIPS agreement says patent protection must be available for inventions for at least 20 years. Patent protection must be available for both products and processes, in almost all fields of technology. Governments can refuse to issue a patent for an invention if its commercial exploitation is prohibited for reasons of public order or morality. They can also exclude diagnostic, therapeutic and surgical methods, plants and animals (other than microorganisms), and biological processes for the production of plants or animals (other than microbiological processes).
Plant varieties, however, must be protectable by patents or by a special system (such as the breeder’s rights provided in the conventions of UPOV — the International Union for the Protection of New Varieties of Plants).
The agreement describes the minimum rights that a patent owner must enjoy. But it also allows certain exceptions. A patent owner could abuse his rights, for example by failing to supply the product on the market. To deal with that possibility, the agreement says governments can issue “compulsory licenses”, allowing a competitor to produce the product or use the process under license. But this can only be done under certain conditions aimed at safeguarding the legitimate interests of the patent-holder.
If a patent is issued for a production process, then the rights must extend to the product directly obtained from the process. Under certain conditions alleged infringers may be ordered by a court to prove that they have not used the patented process.
An issue that has arisen recently is how to ensure patent protection for pharmaceutical products does not prevent people in poor countries from having access to medicines — while at the same time maintaining the patent system’s role in providing incentives for research and development into new medicines. Flexibilities such as compulsory licensing are written into the TRIPS Agreement, but some governments were unsure of how these would be interpreted, and how far their right to use them would be respected.
SECTION 5: PATENTS
Article 27
Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.[2] Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect public order or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
3. Members may also exclude from patentability:
(a) Diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) Plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.
Article 28
Rights Conferred
1. A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling, or importing[3] for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
2. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts.
Caselet #1: Bilski v/s Kappos
The controversy hinged on determining the requisite elements necessary to obtain patent protection specifically, whether a business method satisfies the elements and qualifies for patent protection. The business method in question sought to explain to buyers and sellers of commodities in the energy market how to effectively protect against the risk of price changes using a simple mathematical formula. While more than a simple mathematical equation, the patent application did little beyond simply recording a mathematical formula and describing how it was to be applied to the process of commodities trading.
Affirming the lower court’s decision, the United States Court of Appeals for the Federal Circuit denied protection to the petitioners’ patent application, holding that their application failed the “machine-or-transformation test,” which the court determined was the sole basis by which to analyse patentability under section 101 of the patent Act. On appeal to the United States Supreme Court, the petitioners claimed that the appellate court erred in its application of the “machine-or-transformation test” and sought patent protection for their business
http://heinonline.org/HOL/LandingPage?collection=journals&handle=hein.journals/tuljtip13&div=17&id=&page=
Article 29
Conditions on Patent Applicants
1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.
2. Members may require an applicant for a patent to provide information concerning the applicant’s corresponding foreign applications and grants.
Caselet#2: Ball Spline Case
The present case involves a claim of damage by the appellee against the appellant for the infringement of a patent. The appellee holds a patent on an invention called 'Infinite Sliding Spline The appellant has produced and marketed products. The first instance court found that elements of components in the scope of patented claim in the specification do not coincide with the accused products, but nevertheless, ruled that the accused products fall within the technological scope of the Invention, there is a possibility of replacement and easiness of replacement between the Invention and the accused products. The judgment of the first instance court should be reversed, and remanded to the first instance court for further review.
Judgment “Even if there exists an element which differs from the accused product in the elements recited in the claims, the accused product is considered to fall within the technical scope of the patented invention if the following five requirements are fulfilled: The element is not an essential part of the patented invention; Even if the element is replaced in the accused product, the object of the patented invention can be attained with the same meritorious effect; A person skilled in the art could have easily conceived the replacement of the element at the time the product was made; The accused product is not identical to publicly known technology at the time of filing, and the skilled person could not have easily conceived the product from publicly known technology at the time of filing; and there are no particular circumstances, for example, to exclude the product from the claims in the prosecution of the application.”
Article 30
Exceptions to Rights Conferred
Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.
Article 31
Other Use Without Authorization of the Right Holder
Where the law of a Member allows for other use[4] of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:
(a) authorization of such use shall be considered on its individual merits;
(b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly;
(c) the scope and duration of such use shall be limited to the purpose for which it was authorized, and in the case of semi-conductor technology shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive;
(d) Such use shall be non-exclusive;
(e) Such use shall be non-assignable, except with that part of the enterprise or goodwill, which enjoys such use;
(f) Any such use shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use;
(g) Authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances, which led to it, cease to exist and are unlikely to recur. The competent authority shall have the authority to review, upon motivated request, the continued existence of these circumstances;
(h) The right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;
(i) The legal validity of any decision relating to the authorization of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member;
(j) Any decision relating to the remuneration provided in respect of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member;
(k) Members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive. The need to correct anti-competitive practices may be taken into account in determining the amount of remuneration in such cases. Competent authorities shall have the authority to refuse termination of authorization if and when the conditions, which led to such authorization, are likely to recur;
(l) where such use is authorized to permit the exploitation of a patent ("the second patent") which cannot be exploited without infringing another patent ("the first patent"), the following additional conditions shall apply:
(i) The invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;
(ii) The owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the invention claimed in the second patent; and
(iii) The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.
Article 33
Term of Protection
The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date.[5]
Caselet #4: United States of America v/s Canada
On 6 May 1999, the US requested consultations with Canada in respect of the term of protection granted to patents that were filed in Canada before 1 October 1989. The US contended that the TRIPS Agreement obligates Members to grant a term of protection for patents that runs at least until twenty years after the filing date of the underlying protection, and requires each Member to grant this minimum term to all patents existing as of the date of the application of the Agreement to that Member. The US alleged that under the Canadian Patent Act, the term granted to patents issued on the basis of applications filed before 1 October 1989 is 17 years from the date on which the patent is issued. The US contended that this situation is inconsistent with Articles 33, 65 and 70 of the TRIPS Agreement.
Article 34
Process Patents: Burden of Proof
1. For the purposes of civil proceedings in respect of the infringement of the rights of the owner referred to in paragraph 1(b) of Article 28, if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:
(a) If the product obtained by the patented process is new;
(b) If there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.
2. Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in subparagraph (b) is fulfilled.
3. In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account.
Caselet #5: Bajaj Auto Ltd. v/c TVS Motor Company Ltd.
The case involves the issues of patent infringement by the defendant and the damages for the same. The case further touches upon the controversy regarding justification of the threats issued by the defendant of the same case. The plaintiffs along with the state of Maharashtra alleged the defendants of infringement of the patents of the plaintiffs, which concerns the invention of the technology of improved internal combustion engine. The remedy sought by the plaintiffs is that of permanent injunction for prohibiting the defendants from using the technology or invention described in the patents of the plaintiffs; and preventing them from marketing, selling offering for sale or exporting 2/3 wheelers (including the proposed 125cc TVS FLAME motorcycle) that contain the disputed internal combustion engine or product that infringe the patent.
PRODUCT PATENT
When you patent a product it means you have received recognition that your invention (not an idea) is new, unique and useful. A patent gives you the right to prevent others from making, using, selling, promoting for sale, or importing your invention in the country where your patent was issued. Governments issue patents subject to their existing laws and according to their rules and regulations. In the United States, for example, the recognition comes from the United States Patent and Trademark Office.
Global
We live in a global economy where products are manufactured, shipped and marketed around the world - so to prevent others from making, using, selling or promoting for sale your invention in other countries - you must obtain a patent in those countries. Only an inventor may apply for a patent and they can do so in any country despite their citizenship. Every country has its own patent laws, however, many countries co-operate with each other regarding patents through international treaties.
These international agreements allow you to apply for a patent in one country and to subsequently apply to other countries, within a prescribed period of time.
In other words, you have a timeline to follow once you apply for a patent in one country and decide to widen your patent protection around the world. This allows you, with your investor(s) and/or licensee, an opportunity to assess profitability worldwide before patenting worldwide. A patent attorney or agent is familiar with these agreements and network with lawyers or agents throughout the world for the purpose of obtaining patents in other countries.
Improvements
Patents are issued not only for new inventions but also for new and useful improvements to existing inventions. About 95% of patents are for improvements to existing inventions. You cannot patent a product if it was invented by someone else but never patented it. You cannot patent a product that was known or used, publicly disclosed or printed in a publication in any country more than one year prior to your application. You cannot patent a product or an improvement to an existing invention that is obvious to anyone familiar with the area of your invention. You cannot simply substitute material or change the size and expect to get a patent.
Strategies
Inventions typically evolve from an idea to a new, unique and useful product. If you publicly disclose your invention more than one year prior to filing for a patent application you will not be issued a patent. If you file a patent application too early, before fully developing your invention, your patent may not properly describe your invention. The first steps you should take with your idea is begin using these important tools -
1. Patent Search.
2. Non-Disclosure Agreement.
3. Prototype.
4. Patent Notebook.
5. Business Plan.
These tools are used to evolve your idea into an invention that can be patented for profit. Successful inventors will utilize these tools to evaluate the potential profitability of their inventions and to prepare for a further comprehensive patent search by a patent attorney or agent - before seeking investment or spending thousands of dollars for a patent.
PRODUCT PATENTS IN PHARMA
The Indian Pharmaceutical industry is one of the largest in the developing world and is ranked as the fourth largest in terms of production and 13th largest in terms of domestic consumption value. With the changes brought about by the patents act of 1970, Indian drug manufactures became experts in the field of reverse engineering and increased its supply of less expensive copies of the world’s best-selling patent protected drugs. This could only be possible because there was no product patents system for drugs and medicines. While the patent act of 1970 in its original form does provide a distinction between product patents and process patents, the exception provided in section 5 of the act of 1970 (which has been omitted by the amendment of 2005) offered only a process patent for food, medicine or drug substances and specifically excluded product patents for the same. Thus India was able to copy foreign patented drugs without paying a license fee and was able to make it available to the masses at one-tenth of the original price.
Moreover the Drug Price control Order, 1970 put a cap on the maximum price that could be charged and ensured that the life saving drugs are available at reasonable prices. The Act of 1970 could be considered to be one of the most progressive statutes, which safeguards both the interest of the inventor and the consumer in a balanced manner. The Act has been promulgated keeping Directive Principles of State Policy contained in Article 39 of the Constitution in mind. Hence with a regulatory system focusing on process patents and being in the grip of a rigid price control framework, the Indian pharmaceutical industry has emerged from a import dependent industry to in the 1950’s to having achieved world wide recognition as a low cost producer of high quality pharmaceutical products with an annual export turnover of more than $ 1.5 billion dollars.
The distinction between a product patent and process patent that existed prior to the 1995 TRIPS agreement helped India develop a huge generic drug industry, which had its basis on reverse engineering of brand name drugs through slightly modified processes.
The most important amendment, which had to be introduced, by the amendment of 2005 in order to make the existing patent regime in India TRIPS compliant was the introduction of pharmaceutical product patents. The amendment of 2005 extends full TRIPS coverage to food, drugs and medicines. It requires patents to be provided to products as well, while the patent regime provided by the act of 1970 required patents only to be granted for chemical processes, which resulted in the production of a particular drug. The term of a patent protection has been extended to twenty years compared to the seven years, which was provided by the act of 1970. This was made applicable to all the member countries and hence rules out all the differences with respect to patent protection, which prevailed in different countries.
If the law of the country provides so, then the use of the subject matter of the patent shall be permitted without the authorization of the patent holder, including use by the government or any other third party authorized by the government. However such use shall be permitted only if prior to such use, the user has made efforts to obtain the authorization of the patent holder and such efforts have not been successful within a reasonable period of time. This requirement can be waived in case of a national emergency after notifying the patent holder.
The burden of proof with respect to infringement matters has been reversed under the new act. The onus of proving on a legal complaint that the process used by one enterprise is totally different from that, which has been used by another, would lie on the defendant. Prior to the amendment the responsibility was on the patent holder to establish patent infringement. The new amendment was not to affect the drugs, which were in the market prior to 1995. As far as those drugs, which were produced between 1995 and 2005, they will have the right to continue to produce them in return for the payment of a fixed royalty to the patent holder. The main problem arises for those drugs, which are now being manufactured and patented. The only way by which such drugs can be manufactured in India is by way of compulsory licenses. The government grants such compulsory licenses on grounds such as non-availability, high prices, public interest etc. The process ought to be simple and easy but the problem lies in the fact that the procedure has been left very ambiguous by the new Act.
The immediate and the most drastic effect that TRIPS compliance and introduction of the new Act of 2005 will have will be with respect to the health sector in India. The patients are the ultimate beneficiaries of the pharmaceutical research and development. By denying product patents India will be able to encourage bulk generic drug production at cheap prices. However generics are not the only solution to counter the problem of access to medicines.
Generic production of drugs will not necessarily result in the innovation of new and more effective drugs and by not acknowledging innovation India will run the risk of not having access to future medicines, which will in turn affect public health. Denying patents and allowing the generic companies to freely copy the new drugs cannot be the solution to deliver medication to the patients too poor to buy them, be it rural or urban India. The actual problem lies in the fact that the product patents not only increase the cost of the drugs and medicines, but that most of them fail to introduce research and development in the neglected diseases. Lack of access to affordable medicines was a reason for the vast majority of deaths that took place due to HIV/AIDS in the developing countries. Hence while on one side the introduction of product patents will help in development of new and more effective drugs, the problem still remains that the research and development undertaken by the drug manufactures evade the neglected diseases and the diseases which are region specific such as medicines for malaria and tuberculosis which are found prevailing in developing countries like India.
Unlike in the developed countries, the lack of the penetration of medical insurance makes the people directly affected by the increase in the prices and hence decreases the affordability. The patent system makes the lives of the people outside the sphere of social security, which forms majority in the developing countries, impossible.
A product patent system will make India dependent on the multinational companies for technology and for permission to produce the patented drug. Exorbitant prices will be charged and the Indian pharmaceutical industry will become subservient to the MNC’s. They will lose the position that they had gained in the wake of the Act of 1970.
The most practicable solution to the problem, which at the same time allows for TRIPs compliance would be granting of dual licenses. This would mean that the patent would be partly product patent and after a reasonable time being given to the inventor to make a reasonably large profit it would be converted to a process patent whereby the patented drug can be manufactured by competing manufacturers using an alternative process. This would solve the problem of excessive hike in prices and would render the drugs more accessible to the millions suffering. Collaboration with the MNC’s on various fronts such as research and development, manufacturing and marketing will help Indian Pharmacy companies make profitable breakthroughs.
The non-provision of product patents has been one of the strongest aspects of our Patents Act. Complete compliance with all aspects of the TRIPs agreement is prejudicial to our national interest and the TRIPs agreement itself places limitations on our ability to enact out national legislations in public interest. To prevent public interest from being prejudicially effected it is imminent to mobilize public opinion against complete compliance of the obligation under TRIPS. It must always be remembered that pharmaceutical industry owes a moral responsibility to the society. The monopoly granted by patents to the Drug companies should not be exercised without responsibility. Hence it can be safely said that India having rushed through with the third amendment of 2005 to the patents act without proper parliamentary scrutiny and without having tactfully dealt with issues relating to food, health and technology was not in public interest.
TREND IN PATENT APPLICATIONS
• A sudden drop in filing by 6.8% in the number of applications. It broke the growing trend in patent filings in India over 7 years. It is also noted that there was a sharp drop in patents examined and granted.
• Total number of patents granted was 6168, which is a 61.6% decrease from 2008-09
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REASON FOR DOWNWARD TRENDS
• The world economy had faced a meltdown • A number of 55 patent examiners left the organization between 2004-2009 and 47 examiners were promoted as Assistant controllers in 2009
COUNTRY COMPARISON
• In the year 2009, India registered 7% decrease in the number of Patent applications whereas Australia registered a 10% decrease in the number of Patent applications. China on the other hand registered a 9% increase in the number of Patent applications.
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CASESTUDY: Apple v/s Samsung
Over the course of the last few years, Apple has unleashed a slew of intellectual-property lawsuits against Android device manufacturers such as: HTC, Motorola and of course, the poster child of this continued litigation, Samsung. While IP lawsuits are nothing new in the world of technology manufacturers, it has become glaringly apparent after the ban of the Galaxy Tab 10.1 in Germany that this case could hold serious repercussions for both parties and consumers alike.
Since then, the two mobile giants have been preparing for their trial case, which is scheduled for Monday, July 30. With no love lost between the two parties and the astronomical stakes at hand, this case has all the makings of a landmark trial.
The Complaint
The case began over a year ago with Apple issuing an official complaint on April 15, 2011, stating: "Instead of pursuing independent product development, Samsung has chosen to slavishly copy Apple 's innovative technology, distinctive user interfaces, and elegant and distinctive product and packaging design, in violation of Apple 's valuable intellectual property rights."
The interesting thing about the complaint brought forth by Apple is its wording. Apple takes as much issue with Samsung lifting design elements from their brand, as they do with the core design of its operating system Android. Notably this greatly increases the significance of this case, potentially making this case as much about Google as it is about Samsung.
Trade Dress Infringement
Apple introduces a number of trade dress infringement claims under 15 U.S.C. -- 1125 and 15 U.S.C. -- 1114. Trade dress is a form of intellectual property that basically refers to the visual aesthetics of a product or packaging (including design elements) that signifies the source of the product with consumers. Basically meaning any iconic visuals that spur brand recognition with the consumer, such as Apple 's use of the prefix 'i ' in their products (i.e. iPhone, iPod). Namely this law is in place to protect the consumer from being confused into thinking that a product has affiliation with another brand or company.
If you take a look at the case (which can be found here) it 's apparent that some of these individual claims are outlandish. For example, it 's unlikely that Apple will try to sue everyone who uses a tray that cradles their product so that it 's visible when opening the packaging. However, the important thing to understand is that the court will be looking at these claims collectively; deciding if the overall appearances of Samsung 's products (hardware, software, and packaging) are intended to create a connection between Apple products.
Additionally it 's worthwhile to note that Apple has a stronger claim with their second and third trade dress claims than their first, due to the fact that they have already established patents for the elements that are addressed in the claims.
This means that Apple has already convinced the US Patent and Trademark office that these elements are distinctive and protectable. Again, it all comes back to whether or not the design of Samsung 's products could confuse the 'average ' consumer into thinking that they are Apple products.
Infringement of design patents
In addition to the three prior trade dress claims, Apple also makes a number of design patent claims that act somewhat similar to the previous claims made. The major difference between the trade dress claims and patent claims is how they are legitimized, but regardless, both claims ultimately raise the same question: is the protected device similar enough to the product in question that it could potentially trick the consumer into thinking that there is a connection between the two? This question (while grossly oversimplified) is what the majority of the case will revolve around, especially the portions that specifically target Samsung 's designs.
Additional Patent Claims
While the majority of the case revolves around Samsung 's designs, Apple has issued a number of claims that deal with more technical claims revolving around Android-related content. Most of these claims are related to small technical applications, but the major claim of course is the one concerning patent #8,086,604: "the universal interface for retrieval of information in a computer system" (a.k.a. their universal search function).
Damages
On July 24, Apple released information that outlined the proposed damages of Samsung 's alleged patent infringement at $2.5 billion. This would cover what Apple estimates are $500 million in lost profits, about $2 million form Samsung 's "unjust enrichment", and $25 million for other "reasonable royalty damages". These damages are also apt to grow if Samsung is found to have wilfully infringed the patents, and Apple argues that Samsung "chose to compete by copying Apple".
If Samsung is found guilty of infringing patents, one of two things could happen. Either Samsung would be forced to stop selling the products that use the infringing elements or Samsung would have to license these patents from Apple. If the latter is the case, Apple is asking anywhere from $2.02 per unit of "over scroll bounce" techniques to $24 for more in-depth patents.
There is also a great deal of risk involved for Apple as well. If Samsung is to win its counterclaim it could potentially cost Apple billions of dollars in licensing fees and force them to remove products off their shelves. While this is unlikely, it certainly is not out of the realm of possibility.
At this point it seems rather unlikely that the two parties will be able to reach a form of settlement; meaning that the 10 jurors (most of whom likely have little to no prior understanding of software design and the patent system) will have the power not only to determine liability, but to put a dollar figure on the amount.
← CONCLUSION
It is generally asked, why should a trademark be registered? The answer is that if you are not the owner of the trademark of the name of your business, you are at a risk of being hindered in preventing others from using the same and, potentially, not being able to use it yourself if another gets there before you. It is very important to be IP (intellectual property) focused when it comes to business. All large companies follow this approach. A trademark is an asset to the business that may be licensed or assigned.
In helping to deciding whether or not your mark can be registered, it is necessary to carry out a trademark search. A trademark search is one of the most important stages of registering a trademark successfully. The purpose of the search is to establish whether or not a similar or identical mark exists which will raise any objections subsequent to filing the application. The search also enables you to identify which classes the similar or identical marks exist under and which marks they do not exist under so that you can seek protection under them. A trademark search does not only determine whether your mark can be registered or not, but it also prevents you from losing filing fees if the application is thrown out. It is therefore important from the outset to make sure your mark is capable of registration.
It is essential that you keep up a pro-active trademark policy, a one-off registration is all well and good but you might not be protecting your brands in the best way possible. You should ensure that you carry out regular audits considering: What current trade mark applications / registrations you own. When are the renewal dates for these applications / registrations; what are your most valuable brands (it may be that you have overlooked some); What products or brands have you discontinued or changed recently? It may well be that some marks no longer require protection, accordingly you would want to withdraw any pending applications and cancel any renewals; Are your current registrations covering you as well as they could i.e. are the goods / services for which they are registered still the same? And are the territories in which they are sold or marketed still the same?; and one point that is nearly always missed out is a thorough review of your marketing and sales materials in order to see whether or not they can be registered slogans, logos or names that you use and have not thought about registering.
Trademarks are essentially territorial and as such the associated rights in relation to preventing infringement are to a certain extent limited according to the jurisdictions in which a trademark is registered and or used. Therefore generally a trademark owner from one jurisdiction would not necessarily be able to stop someone from using its mark in another jurisdiction. This basic position has arguably been complicated by e-commerce. The Internet and wide spread use of e-commerce mean that a trademark has a wider reach than was previously the case, given that a website can potentially be viewed by anyone, anywhere in the world. Therefore at a basic level it would appear that if a company displays its goods or services on a website, its trade marks are potentially being used on a global scale given that customers in any country may be able to access the website.
However, this is an over simplification. In order to bring an infringement action it is likely that the trade mark owner would need to be able to show more than just a theoretical availability of the website within the jurisdiction in which infringement is alleged. A trademark owner would need to able show that he has actually had dealings with customers within that jurisdiction. This may be achieved either through: advertising directed specifically at that country, the website itself being specifically directed to customers in that country, or through evidence of a significant number of sales within the country. In addition in the absence of any registered rights within that jurisdiction the trade mark owner will have to rely on the law relating to unregistered trade marks in the country in question. This is likely to impose a heavier burden of proof than is required in respect of a registered trademark.
Where a mark is unregistered, the owner has to look to the common law for protection and must rely on a passing off action to prevent infringement. However, this can be notoriously time-consuming and expensive. To succeed in such an action, the proprietor must produce evidence of his ownership of goodwill or reputation in the mark, and evidence that the unauthorised use of his mark amounts to a misrepresentation which is causing, or is likely to cause, damage. Protection of a new, unregistered brand name or mark may be impossible since it may not have attracted sufficient goodwill to support an action for passing off. Gathering evidence to demonstrate that there is a misrepresentation, usually in the form of evidence of confusion (or a likelihood of confusion), is labour intensive and costly, particularly where survey evidence is the only means of showing that there is confusion and market research companies and experts are involved.
The essence of a trademark has always been that it is a badge of origin. It indicates a trade source: a connection in the course of trade between the goods and the proprietor of the mark. That is the function of a trademark. Therefore marks consisting exclusively of such signs or indications are not eligible for registration the marks are distinctive.
In order to gain common law rights in a trademark, the owner must use the mark on goods or services in commerce. These rights may be limited to the area in which the owner is doing business. Countries like India have, only federal registration system for trademarks. However some countries like USA have provision of registration in any State as well as from the federal trademarks office. In order to secure a State registration, the owner must use the goods or services in commerce and simply file the mark with the Secretary of State. The boundaries of protection for a State trademark are limited to the particular State. A federal trademark registration extends the owner 's trademark rights nationwide. The federal registration serves as notice to all other trademark owners and generally trumps any other form of trademark protection, of course with some limitations
← BIBLIOGRAPHY
← www.indiankanoon.com
← http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm
← http://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm
← http://www.copynot.com/Pages/Trips.html
← http://www.ipfrontline.com/depts/article.aspx?id=11882&deptid=6#
← http://www.sinapseblog.com/2009/12/case-note-indian-patent-revocation-case_30.html
← http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds170_e.htm
← http://www.indiankanoon.org/doc/100435/
← Intellectual Property Rights - Prabuddha Ganguli
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[1] Notwithstanding the first sentence of Article 42, Members may, with respect to these obligations, instead provide for enforcement by administrative action.
[2] For the purposes of this Article, the terms "inventive step" and "capable of industrial application" may be deemed by a Member to be synonymous with the terms "non-obvious" and "useful" respectively.
[3] This right, like all other rights conferred under this Agreement in respect of the use, sale, importation or other distribution of goods, is subject to the provisions of Article 6.
[4] "Other use" refers to use other than that allowed under Article 30.
[5] It is understood that those Members that do not have a system of original grant may provide that the term of protection shall be computed from the filing date in the system of original grant.
Bibliography: It consists of – • The Patents (Amendment) Act, 1999 • The Trade Marks Bill, 1999 • The Copyright (Amendment) Act, 1999 • Geographical Indications of Goods (Registration & Protection) Bill, 1999 • The Industrial Designs Bill, 1999 • The Patents (Second Amendment) Bill, 1999 ← WORLD TRADE ORGANIZATION (WTO)
1. Introduction 02 2. World Trade Organization (WTO) 04 3. World Intellectual Property Organization (WIPO) 05 4. Trade Related Aspects of Intellectual Property Rights (TRIPS) 07 5. Trademarks 10 a. Types of Trademarks 10 b. Section II (TRIPS) 11 c. Trend in Trademark applications 18 d. Country comparison 19 e. Case study: Redbull v/s Unasi Management Inc. 20 6. Geographical Indications 24 a. Appellations of Origin 24 b. Difference between Appellation of Origin & Geographical Indications 25 c. Section III 26 d. Trend in Geographical Indication applications 31 7. Industrial Design 32 a. Section IV 32 b. Trend in Industrial Design applications 35 c. Country Comparison 36 d. Case Study: Bajaj Auto Ltd. v/s RanomotoGulsar 37 8. Patents 39 a. Section V 40 b. Product Patents 48 c. Product Patents in Pharma 50 d. Trends in Patent applications 54 e. Country Comparison 55 f. Case Study: Apple v/s Samsung 56 9. Conclusion 59 10. Bibliography 62
← INTRODUCTION
The main objective of this assignment is the intent to provide an introduction to non-specialists to the subject of industrial property. It explains the principles underpinning industrial property rights. It describes the most common forms of industrial property, including patents for inventions, trademarks, industrial designs and geographical indications
To begin with, trademarks and patents can be aptly said as the true guardians of the inventors, budding industrialists and the people capable of performing outstanding and path breaking work. The concepts of trademarks and patents are governed under the terminology of Intellectual Property Rights. Intellectual property rights include the aspects of copyrights and industrial property. According to the Indian law, these aspects of Intellectual property rights (IPR) are majorly governed by 3 set of laws namely The Trademarks Act, 1999: The Patents Act 1970, as amended by The Patents (Amendment) Act 2005 and The Patents Rules, 2003, as amended by The (Amendment) Rules 2006.
IPR is generally categorised into two branches. They are:
1. Copyrights 2. Industrial property a. Patents & Utility Models b. Trademarks, Certification marks & Collective marks c. Industrial Designs d. Geographic Indications of source e. Integrated Circuits f. Protection against Unfair Competition
The basic need of IPR is to protect the rights of the inventors for their commercial exploitation and thrusting trade and commerce and innovation on a national as well as a global scale. All over the world, several measures have been undertaken to strengthen the intellectual property laws.
The main purpose of IPR is to protect and promote radicalism along the several fractions of the society. A better understanding of the IPR will allow the state as well as the industrial circuit to assess the levels of development and impact on the national as well as the global scale. The emergence of several new elements such as Internet has caused policymakers, legislators, rights holders, content creators, businesses, content users and others to rethink the way intellectual property should operate in a modern inter-connected society. The range of new technologies and the speed of innovation raises intellectual property issues: domain names are often inextricably linked with trademark issues; and the ease with which digital technologies allow for copying and distribution challenges intellectual property right law enforcement.
Tuning with the changing industrial world, the intellectual property rights have continued to strengthen its position in the India. In 1999, the government has passed the important legislation in relation to the protection of intellectual property rights on the terms of the worldwide practices and in accordance to the India 's obligations under the Trade Related Aspects of Intellectual Property Rights.
It consists of – • The Patents (Amendment) Act, 1999
• The Trade Marks Bill, 1999
• The Copyright (Amendment) Act, 1999
• Geographical Indications of Goods (Registration & Protection) Bill, 1999
• The Industrial Designs Bill, 1999
• The Patents (Second Amendment) Bill, 1999
← WORLD TRADE ORGANIZATION (WTO)
The World Trade Organization (WTO) is the only global international organization dealing with the rules of trade between nations. At its heart are the WTO agreements, negotiated and signed by the bulk of the world’s trading nations and ratified in their parliaments. The goal is to help producers of goods and services, exporters, and importers conduct their business.
ORIGIN
The WTO was born out of negotiations. It was established on 1st January 1995 and was created from the 1986–94 negotiations called the Uruguay Round. The headquarters are located in Geneva, Switzerland. As on 24th August 2012, there are 157 member nations in the organization. Its member governments run the WTO. The members make all major decisions as a whole, either by ministers (who usually meet at least once every two years) or by their ambassadors or delegates (who meet regularly in Geneva).
FUNCTIONS
← It is an organization for trade opening ← It is a forum for governments to negotiate trade agreements ← It is a place for them to settle trade disputes ← It operates a system of trade rules. ← Administering WTO trade agreements ← Forum for trade negotiations ← Technical assistance and training for developing countries
← WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)
The World Intellectual Property Organization (WIPO) is an international organization dedicated to ensuring that the rights of creators and owners of intellectual property are protected worldwide and that inventors and authors are thus recognized and rewarded for their ingenuity.
As a specialized agency of the United Nations, WIPO exists as a forum for its Member States to create and harmonize rules and practices to protect intellectual property rights. Most industrialized nations have protection systems that are centuries old. Many new and developing countries, however, are now building up their patent, trademark and copyright laws and systems. With the rapid globalization of trade during the last decade, WIPO plays a key role in helping these new systems evolve through treaty negotiation, legal and technical assistance, and training in various forms, including in the area of enforcement of intellectual property rights.
WIPO also provides international registration systems for patents, trademarks, appellations of origin and industrial designs. These greatly simplify the process for simultaneously seeking intellectual property protection in a large number of countries. Instead of having to file national applications in many languages, these systems enable applicants to file a single application, in one language, and to pay a single application fee. The WIPO-administered systems of international protection include four different mechanisms of protection for specific industrial property rights:
← The Patent Cooperation Treaty (PCT) for filing patent applications in multiple countries. ← The Madrid System for the International Registration of Marks for trade and service marks. ← The Hague System for the International Deposit for Industrial Designs. ← The Lisbon System for the International Registration of Appellations of Origin.
Anyone applying for a patent or registering a trademark or design, whether at the national or international level, needs to determine whether their creation is new or is owned or claimed by someone else. To make this determination, huge amounts of information must be searched. Four WIPO treaties have created classification systems, which organize information on different branches of industrial property into indexed, manageable structures for easy retrieval:
← Strasbourg Agreement Concerning the International Patent Classification. ← Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. ← Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks. ← Locarno Agreement Establishing an International Classification for Industrial Designs.
WIPO also provides an Arbitration and Mediation Center, which offers services for the resolution of international commercial disputes between private parties involving intellectual property. The subject matter of these proceedings includes both contractual disputes (such as patent and software licenses, trademark coexistence agreements, and research and development agreements) and non-contractual disputes (such as patent infringement).
The Center is also now recognized as the leading dispute resolution service provider for disputes arising out of the abusive registration and use of Internet domain names.
← TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)
The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), negotiated in the 1986-94 Uruguay Round, introduced intellectual property rules into the multilateral trading system for the first time.
ORIGIN
Ideas and knowledge are an increasingly important part of trade. Most of the value of new medicines and other high technology products lies in the amount of invention, innovation, research, design and testing involved. Films, music recordings, books, computer software and on-line services are bought and sold because of the information and creativity they contain, not usually because of the plastic, metal or paper used to make them. Many products that used to be traded as low-technology goods or commodities now contain a higher proportion of invention and design in their value — for example brand named clothing or new varieties of plants.
Creators can be given the right to prevent others from using their inventions, designs or other creations — and to use that right to negotiate payment in return for others using them. These are “intellectual property rights”. They take a number of forms. For example books, paintings and films come under copyright; inventions can be patented; brand names and product logos can be registered as trademarks; and so on. Governments and parliaments have given creators these rights as an incentive to produce ideas that will benefit the society as a whole.
The extent of protection and enforcement of these rights varied widely around the world; and as intellectual property became more important in trade, these differences became a source of tension in international economic relations. New internationally-agreed trade rules for intellectual property rights were seen as a way to introduce more order and predictability, and for disputes to be settled more systematically. The Uruguay Round achieved that.
The WTO’s TRIPS Agreement is an attempt to narrow the gaps in the way these rights are protected around the world, and to bring them under common international rules. It establishes minimum levels of protection that each government has to give to the intellectual property of fellow WTO members. In doing so, it strikes a balance between the long-term benefits and possible short-term costs to society. Society benefits in the long term when intellectual property protection encourages creation and invention, especially when the period of protection expires and the creations and inventions enter the public domain.
Governments are allowed to reduce any short-term costs through various exceptions, for example to tackle public health problems. And, when there are trade disputes over intellectual property rights, the WTO’s dispute settlement system is now available.
FUNCTIONS
1. Application of basic principles of the trading system and other international intellectual property agreements 2. To give adequate protection to intellectual property rights 3. Enforcement of the rights of the countries and its application in its own territories 4. Settlement of disputes on intellectual property between members of the WTO 5. Special transitional arrangements during the period when the new system is being introduced
The TRIPS Agreement has an additional important principle: intellectual property protection should contribute to technical innovation and the transfer of technology. Both producers and users should benefit, and economic and social welfare should be enhanced, the agreement says.
How to protect intellectual property: common ground-rules
The second part of the TRIPS agreement looks at different kinds of intellectual property rights and how to protect them. The purpose is to ensure that adequate standards of protection exist in all member countries. Here the starting point is the obligations of the main international agreements of the World Intellectual Property Organization (WIPO) that already existed before the WTO was created:
1. The Paris Convention for the Protection of Industrial Property (patents, industrial designs, etc.) 2. The Berne Convention for the Protection of Literary and Artistic Works (copyright).
← TRADEMARKS
Trademarks are words, names, symbols, or devices used by manufacturers of goods to identify their goods, and to distinguish their goods from goods manufactured and sold by others. A person who sells his goods under a particulate trademark acquires a sort of limited exclusive right to use the mark in relation those goods. Trademark law protects this right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion. Trademark law protects the goodwill of a business and also protects the consumers ' ability to accurately ascertain the source of goods and services.
As with copyright, most countries have enacted statutes for the registration and protection of trademarks. To be registered as a trademark, a sign must be capable of representation in a visible form.
The criteria of distinctiveness have been laid down in TRIPS agreement and also in Paris Convention, which provides that registration can be denied to trademarks, which are devoid of any distinctive character. Lack of distinctiveness may include cases, which are either too simple or too complicated. Similarly, the Paris Convention disallows protection of marks, which are somewhat vague.
TYPES OF TRADEMARKS Under the Indian trademark law the following are the types of trademarks that can be registered: • Product trademarks A product trademark is a mark that identifies the seller of the goods. It distinguishes the seller from the rest of the competitors. E.g. Sony, Hewlett Packard, Nike
• Service trademarks A service trademark is used to identify the services of an entity, such as the trademark for a broadcasting service, retails outlet, etc. They are used in advertising for services. E.g. Kaya Skin Clinic, Jawed Habib Salon, Richfeel • Certification trademarks A certification trademark is one that is capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, the method of manufacture, the quality or other specific features E.g. ISO certification • Collective trademarks A collective trademark is registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group. E.g. Chartered Accountants (CA)
SECTION 2: TRADEMARKS
Article 15
Protectable Subject Matter
1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.
2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).
3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.
4. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.
5 Members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration.
Caselet #1: Proctor & Gamble v/s Joy Creators and others
The plaintiff company is also engaged in the business of manufacturing and selling skin care and personal cleansing products, including anti-aging moisturizer under the trademark OLAY. The plaintiff company is also using the trademarks Olay Total Effects and Total Effects in respect of anti-aging products. The plaintiff holds registration in respect of trademark Olay Total Effects.
It is alleged that in or about April, 2008, the plaintiff company came across an advertisement of application No.1224385 for registration of the label, which contains the mark Joy Ultra Look Total Effects in respect of Soap, Perfumery Essential Oils, Hair Lotions and Creams, Dentifrices etc., claiming use of the aforesaid mark/label since April, 2001. The plaintiff, thus, claims infringement of its registered and well-known trademark Olay Total Effects. Though it was alleged in the written statement of defendant (Joy Ultra Look Total Effects) that they were prior user of the words "Total Effects", they have not come forward to prove the claim made by them. In fact, they have themselves admitted that they had agreed to delete the words "Total Effects" from their trademark provided the plaintiff agreed not to claim damages. This clearly shows an admission on the part of the defendants that they are not entitled to use the words "Total Effects" as a part of their trademark. The defendants were thereby restrained from manufacturing, selling or marketing age defying foundation or any other product in respect of which the plaintiff holds the registered word mark Olay Total Effects. The plaintiff is also awarded punitive damages amounting to Rs.1, 00,000/- each against defendant.
Caselet #2: Parle Agro v/s Cadbury Ltd. In early 2006, Parle Agro Ltd filed a suit against Cadbury India Ltd in Bombay High Court, over the use of the word ‘Fruity’ in Cadbury Fruity Gems, as it contended that it would dilute the brand value of its main product ‘Frooti’, a mango drink. Parle Agro had also sought an ad-interim relief to prevent Cadbury from marketing “Fruity Gems” until the case is decided. Within months, Cadbury moved the Delhi High Court against Parle Agro and sought a declaration that the word “Fruity” was commonly used in the English language and the Mumbai-based Parle cannot claim exclusivity to a completely descriptive term. According to Cadbury Spokesperson, the Bombay High Court has refused to grant an interim injunction to Parle. In June 2008, Cadbury and Parle Agro tried to settle the matter outside the court, but Parle refused the settlement terms offered by Cadbury. After Cadbury lost its appeal on declaration in the Delhi HC, it moved the Supreme Court to transfer the Infringement case from Bombay High Court to Delhi High Court, so as to avoid conflicting Judgments from the two courts. However the Supreme Court rejected this plea.
Article 16
Rights Conferred
1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.
2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.
3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.
Caselet#3:Tata Sons Ltd. vs. Mr MD Jawed & ANR
In this case, the issue was whether the defendants Mr. MD Jawed & ANR were using the mark (A-One TATA) deceptively. The defendants are stated to be co-owners of M/s. Durga Scale Co., which is engaged in the business of manufacturing and selling weighting scales and spring balances under the trade mark A-One TATA.
The Court after referring to the provisions of Trademark Act, Article 6bis, of the Paris Convention, Article 16 of TRIPS provisions, and judicial recognition given to well known marks concluded that as far as India was concerned, “TATA is almost a household name”
The court imposed punitive damages to the tune of Rs. Two lacs and also refrained them permanently from using the TATA Mark.
http://indiankanoon.org/doc/1499969/
Article 17
Exceptions
Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.
Caselet #4: Tatasons Limited v/s Greenpeace International It is a case of ‘fair use’, an exception employed to defend an allegation of trademark infringement. According to Indian Law ‘Fair use’ of trademark means use in accordance with honest practices’ that does not take unfair advantage of the trademark, or is detrimental to the mark’s distinctive character. TATA Sons had filed a lawsuit against Greenpeace in the Delhi High Court claiming defamation and trademark infringement and asked for Rs. 10 crore in damages for using the’ T’ logo in their online game Turtle vs. TATA. Tata Group took an offence to being called “demons” in that game. Greenpeace defended its use of Tata’s trade marks in its online game Turtle vs. TATA (in which Tata’s logo is portrayed as turtle-chasing villains) as nominative fair use and parodic. On this basis, it is argued that use of the trademark fell outside the statutory ambit of Section 29(4) of the Trade Marks Act, 1999*.The court observed that Greenpeace is not a competitor of Tata’s and as far as being called ‘demons’, the Court held such reference to be parodic. The Delhi High Court has denied TATA’s plea for injunction to remove the game, upholding the right to free speech
Article 18
Term of Protection
Initial registration, and each renewal of registration, of a trademark shall be for a term of no less than seven years. The registration of a trademark shall be renewable indefinitely.
Note: As per Indian Trademarks Act 1999, the term for renewal of registration is no less than 10 years.
Article 19
Requirement of Use
1. If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless the trademark owner shows valid reasons based on the existence of obstacles to such use. Circumstances arising independently of the will of the owner of the trademark, which constitute an obstacle to the use of the trademark, such as import restrictions on, or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use.
Article 21
Licensing and Assignment
Members may determine conditions on the licensing and assignment of trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and that the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which it belongs.
Caselet #5: Sahara One v/s Star one
Sahara One, the Media and Entertainment Company of the Sahara group, had issued a legal notice to Star India. The issue pertains to Star India branding its new channel as Star “One”. Sahara One felt that by doing this, Star India had copied Sahara 's brand.
In a petition filed in the Delhi High Court, Sahara India Mass Communication, which owns the Sahara One brand, asked that Star India be restrained from using “One” as it had registered the brand first.
Star India then changed the logo of its new channel from 'One ' to 'Star One '. The Sahara Group 's petition in the Delhi High Court sought to restrain Star from using 'One ' and after the court’s hearing, Star agreed to the court 's suggestion to use the word Star along with one in the logo.
TREND IN TRADEMARK APPLICATIONS
• There was a 9% increase in filing from previous year. Although the effect of global meltdown of the economy shadowed in the overall filing rate of IP applications, the trademarks applications witnessed an upward trend.
• Total numbers of trademarks registered were 67490, which is a 34% decrease from 2008-09.
• More number of applications was registered in the year 2009, as there were a lot many pending cases from the year 2005. This was because a number of examiners left the organization and many were promoted.
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COUNTRY COMPARISON
• In the year 2009, India registered 8% increase in the number of trademark applications whereas Australia registered a 9% decrease in the number of trademark applications. China registered a 19% increase in the number of trademark applications.
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CASESTUDY: Redbull v/s Unasi Management Inc.
Introduction
Under the Domain name dispute resolution policy, the dispute regarding a domain name is compulsorily submitted to the administrative authority or panel where the complainant alleges that
(a) the impugned domain name is identical or confusingly similar to the trademark or service mark in which the complainant has the rights; or
(b) The proprietor has no right or legitimate interest in respect of the domain name; or
(c) The domain name was registered and being used in bad faith. Thus three main components that the complainant is required to establish are ‘deceptive similarity’, ‘lack of rights or legitimate interests’ and ‘bad faith’. For ascertaining ‘deceptive similarity’ an objective analysis of the disputed domain name is needed. The rules for judging deceptive similarity would apply to the domain names to a great extent. For determining whether the proprietor of the domain name has any ‘right or legitimate interest’ in the domain name, the pertinent consideration are
(a) whether before any notice of the dispute the proprietor of the domain name has used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bonafide offering of goods or services; or
(b) whether the proprietor as an individual business or organization has been commonly known by the domain name, even if he/she has acquired no trademark or service mark rights; or
(c) The proprietor is making a legitimate non-commercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service at issue. The policy also specifies the manner in which ‘bad faith’ can be proved by the complainant. Four circumstances reflecting bad faith are enumerated in the policy itself. First, where acquisition of the domain name is done for the purposes of remitting or transferring the domain name to the complainant or to the competitor of the complainant for valuable consideration. In this case the consideration must be in excess of documentation out- of- pocket costs relating to the domain name. Second, the domain name was registered in order to prevent the proprietor of the trademark or the service mark from reflecting the mark in the corresponding domain name. However the conduct of the proprietor must indicate the same. Third circumstance indicating malafide would be where the domain name was registered primarily for the purposes of disrupting the business of a competitor. Fourth, the proprietor must have intentionally attempted to attract for commercial gain, the internet users to his/her website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of his/ her website or location or a product or service on his/her location. The relief that the complainant is entitled to receive in such proceedings is limited to cancellation of the domain name or the transfer of registration of the domain name to the complainant. Generally, whenever a complaint is filed before the WIPO Arbitration and Mediation Centre it transmits the request for verification of registration of the domain name, to the Registrar. The Registrar then sends a report containing the identity of the proprietor of the domain name and the contact details for administrative, billing, and technical contact. Thereafter the Centre examines the complaint to see as to whether is fulfills the formal requirements of the Domain Name Dispute Resolution policy and the rules made there under. Once satisfied that the complaint is in order, the Centre notifies the respondent of the complaint. Thereafter a panel is appointed for deciding the matter. The panel may consist of a single person as well.
Case study The case of Red Bull v/s Unasi Management Inc. shall be discussed here to provide a better understanding of the intricacies involved in dispute resolution under the policy. The concepts like ‘deceptive similarity’, ‘legitimate interests’ and bad faith’ involved in domain name disputed are also examined in this case. Redbull is the proprietor of several generic as well as country Top Level Domains. The principle website of Redbull is www.redbull.com which hosts information about Redbull products and other activities of the company and also provides links to its various websites. The Trademark RED BULL is registered in 199 countries in name of Red Bull Company or its subsidiaries. Unasi is the proprietor of the domain name wwwredbull.com where the links to websites relating to the rival energy drinks are posted. When a person visits this website a pop up window appears on the screen. Aggrieved by this Redbull filed a complaint before the WIPO Arbitration and Mediation Centre against Unasi, praying for the transfer of the impugned domain name to Red bull. Red bull averred that its energy drinks under the trademark RED BULL are sold in many countries and million of euros have been spent in advertising the drink. As a result of massive publicity campaigns, the energy drink under the trademark REDBULL has acquired global reputation. Red Bull Company has been involved in organizing Formula One Racing that has given it worldwide media coverage. Redbull contended that the impugned domain name integrated the trademark RED BULL in its entirety The disputed domain name is identical or confusingly similar to its trademark REDBULL and was designed to mislead the Internet users who often make the typographical mistake by omitting the period after "www" when intending to actually visit Redbull website. Unasi did not refute the allegations made by Red Bull Company against it. In order to arrive at the decision, the panel considered the three ingredients namely ‘deceptive similarity’, ‘legitimate interests’ and ‘bad faith’. The panel ruled that disputed domain name was deceptively similar to the trademark RED BULL. The only difference between the domain name and the trademark was the prefix ‘www’. As www (world wide web) is a generic term and a common prefix to domain names in Urls, it is not capable of distinguishing the domain name from the trademark REDBULL. The panel reiterating the earlier rulings stated that ‘the domain names that consist of trademark with prefix www are confusingly or deceptively similar to the trademark’. The panel then considered whether Unasi had any ‘rights or legitimate interest’ in the domain name wwwredbull.com. Unasi had been using the domain name by posting links to the competing energy drinks, which shows that it was aware of Red bull’s product and was free riding on the good will and reputation of the trademark REDBULL. As Unasi has made no rebuttal, it proves the disputed domain name was adopted solely for the purpose of diverting the customer of red bull. There are no circumstances that demonstrate any right or legitimate interest of Unasi in the domain name. For deciding upon whether there was bad faith on part of Unasi in adopting the domain name, the panel considered the factors that indicate bad faith. The panel was of the opinion that since the Redbull is a world famous trademark it is unlikely that Unasi was not aware of its existence. When an Internet user accesses the website under the disputed domain name a pop up window appears which indicates that Unasi is benefiting through the advertisement. Even if the viewers can eventually know that this is not the site they are looking for, the initial diversion of the customers is caused. As the website contains numerous links to competing drinks, it establishes an intention to disrupt the business of Redbull company. The foregoing facts prove that the Unasi has bad intention in adopting the domain name wwwredbull.com. The panel ruled that since Redbull has established all the three elements –‘deceptive similarity’, ‘lack of rights or legitimate interests’ and ‘ bad faith’, the disputed domain name is transferred to red bull.
← GEOGRAPHICAL INDICATIONS
A geographical indication is a name or sign used on certain products, which corresponds to a specific geographical location or origin (e.g. an own, region, or country). The use of a GI may act as a certification that the product possesses certain qualities, is made according to traditional methods, or enjoys a certain reputation, due to its geographical origin.
Presently the protection of Geographical Indication has emerged as one of the most contentious Intellectual Property Rights issues in the WTO’s Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS define geographical indication as “any indication that identifies a product as originating from a particular place, where a given quality, reputation or other characteristics of the product are essentially attributable to its geographical origin.” Also a geographical indication gives exclusive right to a region (town, province or country) to use a name for a product with certain characteristics that corresponds to their specific location.
APPELLATIONS OF ORIGIN (AOO)
Appellations of Origin are the actual names of the geographical places of origin of products, e.g., “Napa Valley” for California wine, but go further than indications of source in that they denote a genuine qualitative link between the products and the places of origin. The Lisbon Agreement defines an appellation of origin as “the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.” This Agreement facilitates the international protection of appellations of origin by offering the possibility of obtaining protection in the Contracting Parties to the Lisbon Agreement through a single registration.
DIFFERENCE BETWEEN AOO & GI
Not all GIs are appellations of origin. A GI is considered an appellation of origin only when both the quality and reputation or other characteristics of the product in question are due exclusively or essentially to the geographical environment.
Further, whereas appellations of origin refer only to geographical names, such as Bordeaux, Champagne and Tequila, symbols such as the Eiffel Tower in Paris or the Matterhorn in Switzerland could function as GIs.
Caselet#1: Tirupati temple to keep laddu patent
The Venkateswara temple in Andhra Pradesh, India’s richest temple, Monday scored a sweet legal victory: the Geographical Indications Registry upheld its claim of a patent over the famous Tirupati laddu.
The laddu, which is offered as a prasad, was granted a Geographical Indicator (GI) tag in September 2009 — the tag ensures a product becomes synonymous with a geographical location — after Tirumala Tirupati Devasthanams (TTD) convinced the Registry that the laddu was unique in its “preparation, quality and reputation.”
But, owing to the growing demand, unscrupulous elements, including hawkers, were selling their preparations as Tirupati laddu. Granting it a GI tag, TTD argued, would curb the problem as violating GI laws invites punishment. The Registry’s order granting the GI tag was, however, challenged by R S Praveen Raj, a scientist from Thiruvananthapuram, and an intellectual property rights activist.
The tag, he contended, is meant to benefit local producers and act as an indicator of the geographical origin of the product.
Thus, everyone from Tirupati has the right to use GI tag as long as their laddus are prepared in Tirupati and have the same delicacy and features as the laddu prepared by TTD. On Monday Chinnaraja G Naidu — Assistant Registrar of Trade Marks and GI, Chennai — issued the verdict, upholding TTD’s claim and fined Raj Rs 10,000. His contention is that anyone from Tirupati can prepare laddus of the same quality as the ones prepared at the Venkateswara shrine and use the GI tag.
SECTION 3: GEOGRAPHICAL INDICATIONS
Article 22
Protection of Geographical Indications
1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent:
(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;
(b) Any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).
3. A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.
4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication, which, although literally true as to the territory, region or locality in which the goods originate falsely represents to the public that the goods originate in another territory.
Caselet #1: Colombian Coffee – Café de Colombia
In the case of the Denomination of Origin Colombian Coffee, it has been shown before the European Commission and other country 's authorities where Colombian Coffee is in the process to or has been recognized with this distinction, that the quality of the product corresponds not only to the specific conditions of climate, localization and environmental characteristics of the land of coffee, but to the support and quality controls in each of the production processes associated with the production of Colombian Coffee. The Colombian Coffee PGI deals with natural and human factors essentially affecting the quality of the product and the authorities of different countries have evaluated and recognized them before granting a special protection to this coffee.
http://www.origin-gi.com/index.php?option=com_content&view=article&id=44&Itemid=42&lang=en
Article 23
Additional Protection for Geographical Indications for Wines and Spirits
1. Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation" or the like.[1]
2. The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Member 's legislation so permits or at the request of an interested party, with respect to such wines or spirits not having this origin.
3. In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled.
4. In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system.
Caselet#2: Tennessee Whiskey
Tennessee whiskey is straight bourbon whiskey produced in the state of Tennessee. This definition is legally established under the North American Free Trade Agreement (NAFTA) and the law of Canada, which states that Tennessee whiskey, must be "a straight Bourbon whisky produced in the State of Tennessee.”
http://en.wikipedia.org/wiki/Tennessee_whiskey
Article 24
International Negotiations; Exceptions
1. Members agree to enter into negotiations aimed at increasing the protection of individual geographical indications under Article 23. The provisions of paragraphs 4 through 8 below shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral or multilateral agreements. In the context of such negotiations, Members shall be willing to consider the continued applicability of these provisions to individual geographical indications whose use was the subject of such negotiations.
2. The Council for TRIPS shall keep under review the application of the provisions of this Section; the first such review shall take place within two years of the entry into force of the WTO Agreement. Any matter affecting the compliance with the obligations under these provisions may be drawn to the attention of the Council, which, at the request of a Member, shall consult with any Member or Members in respect of such matter in respect of which it has not been possible to find a satisfactory solution through bilateral or plurilateral consultations between the Members concerned. The Council shall take such action as may be agreed to facilitate the operation and further the objectives of this Section.
3. In implementing this Section, a Member shall not diminish the protection of geographical indications that existed in that Member immediately prior to the date of entry into force of the WTO Agreement.
4. Nothing in this Section shall require a Member to prevent continued and similar use of a particular geographical indication of another Member identifying wines or spirits in connection with goods or services by any of its nationals or domiciliary who have used that geographical indication in a continuous manner with regard to the same or related goods or services in the territory of that Member either (a) for at least 10 years preceding 15 April 1994 or (b) in good faith preceding that date.
5. Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either:
(a) Before the date of application of these provisions in that Member as defined in Part VI; or
(b) Before the geographical indication is protected in its country of origin; measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication.
6. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in the territory of that Member. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO Agreement.
7. A Member may provide that any request made under this Section in connection with the use or registration of a trademark must be presented within five years after the adverse use of the protected indication has become generally known in that Member or after the date of registration of the trademark in that Member provided that the trademark has been published by that date, if such date is earlier than the date on which the adverse use became generally known in that Member, provided that the geographical indication is not used or registered in bad faith.
8. The provisions of this Section shall in no way prejudice the right of any person to use, in the course of trade, that person’s name or the name of that person’s predecessor in business, except where such name is used in such a manner as to mislead the public.
9. There shall be no obligation under this Agreement to protect geographical indications, which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country.
TREND IN GEOGRAPHICAL INDICATION APPLICATIONS
• There was a 9% decrease in filing of geographical indications from the previous year.
• In 2009-10, 40 applications have been filed and 14 were registered.
• More number of applications was registered in the year 2008, as there were a lot many pending cases from the previous years. This was because a number of examiners left the organization and many were promoted.
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← INDUSTRIAL DESIGNS
Industrial designs refer to creative activity, which result in the ornamental or formal appearance of a product, and design right refers to a novel or original design that is accorded to the proprietor of a validly registered design. Industrial designs are an element of intellectual property. Under the TRIPS Agreement, minimum standards of protection of industrial designs have been provided for.
Industrial designs are usually protected against unauthorized copying or imitation for a period of around 10 years. The WIPO Model Law for developing countries on Industrial Design defines “industrial designs” as “any composition of lines and colours of any 3 dimensional form…(which) gives a special appearance to a product of industry or handicraft and (which) can serve as a pattern for product of industry or handicraft.” The TRIPS negotiations for protection of industrial designs were marked by divergence of views between the EC, which demanded protection for all designs including functional designs, and the US, which sought specifically to exclude protection for functional designs such as for “automobile crash parts.”
SECTION 4: INDUSTRIAL DESIGNS
Article 25
Requirements for Protection
1. Members shall provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations.
2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.
Article 26
Protection
1. The owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.
2. Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.
2. The duration of protection available shall amount to at least 10 years.
Caselet #1: Faber-Castell v/c Pikpen Private Limited This is a Plaintiffs Motion for an injunction restraining the defendants from infringing the plaintiffs registered design of a marker pen or a highlighter sold by the plaintiffs under the trademark "Textliner". The plaintiffs also claim an injunction restraining the defendants from passing-off their highlighter or marker pen under the trade mark "Textliner" by use of the impugned trade mark "Textliner" and by adopting the almost identical configuration, shape, design, color scheme and get-up for their product. The plaintiffs are proprietors of registered design No. 174429 dated 1.8.1997. This registration is under the Designs Act, 1911. http://www.indiankanoon.org/doc/1543503/ As a developing country, India has already amended its national legislation to provide for these minimal standards. The essential purpose of design law is to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The existing legislation on industrial designs in India is contained in the New Designs Act, 2000 and this Act will serve its purpose well in the rapid changes in technology and international developments. India has also achieved a mature status in the field of industrial designs and in view of globalization of the economy; the present legislation is aligned with the changed technical and commercial scenario and made to conform to international trends in design administration.
This replacement Act is also aimed to enact a more detailed classification of design to conform to the international system and to take care of the proliferation of design related activities in various fields.
Obligations envisaged in respect of industrial designs are that independently created designs that are new or original shall be protected. Individual governments have been given the option to exclude from protection, designs dictated by technical or functional considerations, as against aesthetic consideration, which constitutes the coverage of industrial designs. The right accruing to the right holder is the right to prevent third parties not having his consent from making, selling or importing articles being or embodying a design, which is a copy or substantially a copy of the protected design when such acts are undertaken for commercial purposes. The duration of protection is to be not less than 10 years.
A 'design ' is defined to mean only the features of shape, configuration, pattern ornament or composition of lines or colours applied to any two or three dimensional article by any manual, mechanical or chemical, industrial process or means, 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 or property mark or artistic work. Unlike the trademark, a design covers the whole body of the goods and is part and parcel of the goods themselves.
TREND IN INDUSTRIAL DESIGN APPLICATIONS
• In the year 2009, India experienced a 7% decrease in applications filed from last year. The applications filed were 6092, applications examined were 6266 and the numbers of applications granted were 6025.
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COUNTRY COMPARISON
• In the year 2009, India registered 7% decrease in the number of Industrial Design applications whereas Australia registered a 15% decrease in the number of Industrial Design applications.
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CASESTUDY: Bajaj Auto Ltd. v/s RanomotoGulsar
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Bajaj Auto Limited (BAL), which has been aggressive to keep its two-wheelers on a fast track has shown that if need be it do the same to protect its turf — from copycats, that is. The company moved at a scorching pace when it found Sri Lankan importer Ranatunga Motor and Chinese manufacturer TaianChiran Machinery selling the RanomotoGulsar, which BAL maintains is an imitation of its thoroughbred, Pulsar 180. And before the rogue companies could change gears, BAL promptly filed a suit in Colombo High Court. And, sure enough, the verdict went in favour of the Indian company
"The importer has agreed, in court, that the Chinese bikes are a copy of our Pulsar 180 and we have won the case on the grounds that this amounts to unfair competition," BAL executive director Sanjiv Bajaj told ET. BAL sells about 5,000-6,000 motorcycles per month in Sri Lanka. Of this, Pulsar has a share of 1,000 per month. An elated Mr Bajaj said, "This judgement is a strong signal to deter anyone wanting to copy our other, higher selling, products."
Mr Bajaj added that they had first come across copies of their bikes in Iran, but these were just one or two. But, this was the first time they saw it in volumes, since the Sri Lankan importer had brought in 26 bikes and had also sold a few. BAL 's inquiries in China have not lead it to find the manufacturer, with Mr Bajaj stating that there are over 400 manufacturers of motorcycles there.
However, the court document says it is located in Taiwan Hi Tech Development Zone of Shandong. BAL and its distributor, David Pieris Motor Co, had filed the civil suit in the High Court of the Western Province of Colombo. Since the Chinese manufacturer was not present in court, the order was passed ex parte.
As part of its global strategy, BAL has been registering its name, design and brands in the markets it intends to sell. Additionally, it has begun to locate a team or set up a small office in those markets to track such cases. It has also alerted its distributors, who will be the first to be hit by such copies.
"We have teams or offices in Mexico, Egypt, Dubai, Bangladesh, Sri Lanka, Indonesia, Nigeria and are in the process of setting one up in Iran. Now that we have won the case in Sri Lanka, we have despatched copies of the legal order to all our distributors, so that they can use it as a precedent," Mr Bajaj said.
← PATENTS
A patent gives an inventor of an innovative machine/idea/process, a control over who is allowed to implement, make, use, sell, or distribute products based on that invention. If I invent a machine and patent it, and if you look at my machine and create a different machine, which conceptually uses the same idea/mechanism, then you are violating my patent – you can’t do that without my permission. Patent protection only exists if you file the patent with the patent office, and if the patent is accepted.
A patent is thus an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. In order to be patentable, the invention must fulfill certain conditions. A patent provides protection for the invention to the owner of the patent. The protection is granted for a limited period, generally 20 years. Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner 's consent. These patent rights are usually enforced in a court, which, in most systems, holds the authority to stop patent infringement. A court can also declare a patent invalid upon a successful challenge by a third party.
The TRIPS agreement says patent protection must be available for inventions for at least 20 years. Patent protection must be available for both products and processes, in almost all fields of technology. Governments can refuse to issue a patent for an invention if its commercial exploitation is prohibited for reasons of public order or morality. They can also exclude diagnostic, therapeutic and surgical methods, plants and animals (other than microorganisms), and biological processes for the production of plants or animals (other than microbiological processes).
Plant varieties, however, must be protectable by patents or by a special system (such as the breeder’s rights provided in the conventions of UPOV — the International Union for the Protection of New Varieties of Plants).
The agreement describes the minimum rights that a patent owner must enjoy. But it also allows certain exceptions. A patent owner could abuse his rights, for example by failing to supply the product on the market. To deal with that possibility, the agreement says governments can issue “compulsory licenses”, allowing a competitor to produce the product or use the process under license. But this can only be done under certain conditions aimed at safeguarding the legitimate interests of the patent-holder.
If a patent is issued for a production process, then the rights must extend to the product directly obtained from the process. Under certain conditions alleged infringers may be ordered by a court to prove that they have not used the patented process.
An issue that has arisen recently is how to ensure patent protection for pharmaceutical products does not prevent people in poor countries from having access to medicines — while at the same time maintaining the patent system’s role in providing incentives for research and development into new medicines. Flexibilities such as compulsory licensing are written into the TRIPS Agreement, but some governments were unsure of how these would be interpreted, and how far their right to use them would be respected.
SECTION 5: PATENTS
Article 27
Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.[2] Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect public order or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
3. Members may also exclude from patentability:
(a) Diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) Plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.
Article 28
Rights Conferred
1. A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling, or importing[3] for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
2. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts.
Caselet #1: Bilski v/s Kappos
The controversy hinged on determining the requisite elements necessary to obtain patent protection specifically, whether a business method satisfies the elements and qualifies for patent protection. The business method in question sought to explain to buyers and sellers of commodities in the energy market how to effectively protect against the risk of price changes using a simple mathematical formula. While more than a simple mathematical equation, the patent application did little beyond simply recording a mathematical formula and describing how it was to be applied to the process of commodities trading.
Affirming the lower court’s decision, the United States Court of Appeals for the Federal Circuit denied protection to the petitioners’ patent application, holding that their application failed the “machine-or-transformation test,” which the court determined was the sole basis by which to analyse patentability under section 101 of the patent Act. On appeal to the United States Supreme Court, the petitioners claimed that the appellate court erred in its application of the “machine-or-transformation test” and sought patent protection for their business
http://heinonline.org/HOL/LandingPage?collection=journals&handle=hein.journals/tuljtip13&div=17&id=&page=
Article 29
Conditions on Patent Applicants
1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.
2. Members may require an applicant for a patent to provide information concerning the applicant’s corresponding foreign applications and grants.
Caselet#2: Ball Spline Case
The present case involves a claim of damage by the appellee against the appellant for the infringement of a patent. The appellee holds a patent on an invention called 'Infinite Sliding Spline The appellant has produced and marketed products. The first instance court found that elements of components in the scope of patented claim in the specification do not coincide with the accused products, but nevertheless, ruled that the accused products fall within the technological scope of the Invention, there is a possibility of replacement and easiness of replacement between the Invention and the accused products. The judgment of the first instance court should be reversed, and remanded to the first instance court for further review.
Judgment “Even if there exists an element which differs from the accused product in the elements recited in the claims, the accused product is considered to fall within the technical scope of the patented invention if the following five requirements are fulfilled: The element is not an essential part of the patented invention; Even if the element is replaced in the accused product, the object of the patented invention can be attained with the same meritorious effect; A person skilled in the art could have easily conceived the replacement of the element at the time the product was made; The accused product is not identical to publicly known technology at the time of filing, and the skilled person could not have easily conceived the product from publicly known technology at the time of filing; and there are no particular circumstances, for example, to exclude the product from the claims in the prosecution of the application.”
Article 30
Exceptions to Rights Conferred
Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.
Article 31
Other Use Without Authorization of the Right Holder
Where the law of a Member allows for other use[4] of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:
(a) authorization of such use shall be considered on its individual merits;
(b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly;
(c) the scope and duration of such use shall be limited to the purpose for which it was authorized, and in the case of semi-conductor technology shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive;
(d) Such use shall be non-exclusive;
(e) Such use shall be non-assignable, except with that part of the enterprise or goodwill, which enjoys such use;
(f) Any such use shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use;
(g) Authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances, which led to it, cease to exist and are unlikely to recur. The competent authority shall have the authority to review, upon motivated request, the continued existence of these circumstances;
(h) The right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;
(i) The legal validity of any decision relating to the authorization of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member;
(j) Any decision relating to the remuneration provided in respect of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member;
(k) Members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive. The need to correct anti-competitive practices may be taken into account in determining the amount of remuneration in such cases. Competent authorities shall have the authority to refuse termination of authorization if and when the conditions, which led to such authorization, are likely to recur;
(l) where such use is authorized to permit the exploitation of a patent ("the second patent") which cannot be exploited without infringing another patent ("the first patent"), the following additional conditions shall apply:
(i) The invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;
(ii) The owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the invention claimed in the second patent; and
(iii) The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.
Article 33
Term of Protection
The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date.[5]
Caselet #4: United States of America v/s Canada
On 6 May 1999, the US requested consultations with Canada in respect of the term of protection granted to patents that were filed in Canada before 1 October 1989. The US contended that the TRIPS Agreement obligates Members to grant a term of protection for patents that runs at least until twenty years after the filing date of the underlying protection, and requires each Member to grant this minimum term to all patents existing as of the date of the application of the Agreement to that Member. The US alleged that under the Canadian Patent Act, the term granted to patents issued on the basis of applications filed before 1 October 1989 is 17 years from the date on which the patent is issued. The US contended that this situation is inconsistent with Articles 33, 65 and 70 of the TRIPS Agreement.
Article 34
Process Patents: Burden of Proof
1. For the purposes of civil proceedings in respect of the infringement of the rights of the owner referred to in paragraph 1(b) of Article 28, if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:
(a) If the product obtained by the patented process is new;
(b) If there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.
2. Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in subparagraph (b) is fulfilled.
3. In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account.
Caselet #5: Bajaj Auto Ltd. v/c TVS Motor Company Ltd.
The case involves the issues of patent infringement by the defendant and the damages for the same. The case further touches upon the controversy regarding justification of the threats issued by the defendant of the same case. The plaintiffs along with the state of Maharashtra alleged the defendants of infringement of the patents of the plaintiffs, which concerns the invention of the technology of improved internal combustion engine. The remedy sought by the plaintiffs is that of permanent injunction for prohibiting the defendants from using the technology or invention described in the patents of the plaintiffs; and preventing them from marketing, selling offering for sale or exporting 2/3 wheelers (including the proposed 125cc TVS FLAME motorcycle) that contain the disputed internal combustion engine or product that infringe the patent.
PRODUCT PATENT
When you patent a product it means you have received recognition that your invention (not an idea) is new, unique and useful. A patent gives you the right to prevent others from making, using, selling, promoting for sale, or importing your invention in the country where your patent was issued. Governments issue patents subject to their existing laws and according to their rules and regulations. In the United States, for example, the recognition comes from the United States Patent and Trademark Office.
Global
We live in a global economy where products are manufactured, shipped and marketed around the world - so to prevent others from making, using, selling or promoting for sale your invention in other countries - you must obtain a patent in those countries. Only an inventor may apply for a patent and they can do so in any country despite their citizenship. Every country has its own patent laws, however, many countries co-operate with each other regarding patents through international treaties.
These international agreements allow you to apply for a patent in one country and to subsequently apply to other countries, within a prescribed period of time.
In other words, you have a timeline to follow once you apply for a patent in one country and decide to widen your patent protection around the world. This allows you, with your investor(s) and/or licensee, an opportunity to assess profitability worldwide before patenting worldwide. A patent attorney or agent is familiar with these agreements and network with lawyers or agents throughout the world for the purpose of obtaining patents in other countries.
Improvements
Patents are issued not only for new inventions but also for new and useful improvements to existing inventions. About 95% of patents are for improvements to existing inventions. You cannot patent a product if it was invented by someone else but never patented it. You cannot patent a product that was known or used, publicly disclosed or printed in a publication in any country more than one year prior to your application. You cannot patent a product or an improvement to an existing invention that is obvious to anyone familiar with the area of your invention. You cannot simply substitute material or change the size and expect to get a patent.
Strategies
Inventions typically evolve from an idea to a new, unique and useful product. If you publicly disclose your invention more than one year prior to filing for a patent application you will not be issued a patent. If you file a patent application too early, before fully developing your invention, your patent may not properly describe your invention. The first steps you should take with your idea is begin using these important tools -
1. Patent Search.
2. Non-Disclosure Agreement.
3. Prototype.
4. Patent Notebook.
5. Business Plan.
These tools are used to evolve your idea into an invention that can be patented for profit. Successful inventors will utilize these tools to evaluate the potential profitability of their inventions and to prepare for a further comprehensive patent search by a patent attorney or agent - before seeking investment or spending thousands of dollars for a patent.
PRODUCT PATENTS IN PHARMA
The Indian Pharmaceutical industry is one of the largest in the developing world and is ranked as the fourth largest in terms of production and 13th largest in terms of domestic consumption value. With the changes brought about by the patents act of 1970, Indian drug manufactures became experts in the field of reverse engineering and increased its supply of less expensive copies of the world’s best-selling patent protected drugs. This could only be possible because there was no product patents system for drugs and medicines. While the patent act of 1970 in its original form does provide a distinction between product patents and process patents, the exception provided in section 5 of the act of 1970 (which has been omitted by the amendment of 2005) offered only a process patent for food, medicine or drug substances and specifically excluded product patents for the same. Thus India was able to copy foreign patented drugs without paying a license fee and was able to make it available to the masses at one-tenth of the original price.
Moreover the Drug Price control Order, 1970 put a cap on the maximum price that could be charged and ensured that the life saving drugs are available at reasonable prices. The Act of 1970 could be considered to be one of the most progressive statutes, which safeguards both the interest of the inventor and the consumer in a balanced manner. The Act has been promulgated keeping Directive Principles of State Policy contained in Article 39 of the Constitution in mind. Hence with a regulatory system focusing on process patents and being in the grip of a rigid price control framework, the Indian pharmaceutical industry has emerged from a import dependent industry to in the 1950’s to having achieved world wide recognition as a low cost producer of high quality pharmaceutical products with an annual export turnover of more than $ 1.5 billion dollars.
The distinction between a product patent and process patent that existed prior to the 1995 TRIPS agreement helped India develop a huge generic drug industry, which had its basis on reverse engineering of brand name drugs through slightly modified processes.
The most important amendment, which had to be introduced, by the amendment of 2005 in order to make the existing patent regime in India TRIPS compliant was the introduction of pharmaceutical product patents. The amendment of 2005 extends full TRIPS coverage to food, drugs and medicines. It requires patents to be provided to products as well, while the patent regime provided by the act of 1970 required patents only to be granted for chemical processes, which resulted in the production of a particular drug. The term of a patent protection has been extended to twenty years compared to the seven years, which was provided by the act of 1970. This was made applicable to all the member countries and hence rules out all the differences with respect to patent protection, which prevailed in different countries.
If the law of the country provides so, then the use of the subject matter of the patent shall be permitted without the authorization of the patent holder, including use by the government or any other third party authorized by the government. However such use shall be permitted only if prior to such use, the user has made efforts to obtain the authorization of the patent holder and such efforts have not been successful within a reasonable period of time. This requirement can be waived in case of a national emergency after notifying the patent holder.
The burden of proof with respect to infringement matters has been reversed under the new act. The onus of proving on a legal complaint that the process used by one enterprise is totally different from that, which has been used by another, would lie on the defendant. Prior to the amendment the responsibility was on the patent holder to establish patent infringement. The new amendment was not to affect the drugs, which were in the market prior to 1995. As far as those drugs, which were produced between 1995 and 2005, they will have the right to continue to produce them in return for the payment of a fixed royalty to the patent holder. The main problem arises for those drugs, which are now being manufactured and patented. The only way by which such drugs can be manufactured in India is by way of compulsory licenses. The government grants such compulsory licenses on grounds such as non-availability, high prices, public interest etc. The process ought to be simple and easy but the problem lies in the fact that the procedure has been left very ambiguous by the new Act.
The immediate and the most drastic effect that TRIPS compliance and introduction of the new Act of 2005 will have will be with respect to the health sector in India. The patients are the ultimate beneficiaries of the pharmaceutical research and development. By denying product patents India will be able to encourage bulk generic drug production at cheap prices. However generics are not the only solution to counter the problem of access to medicines.
Generic production of drugs will not necessarily result in the innovation of new and more effective drugs and by not acknowledging innovation India will run the risk of not having access to future medicines, which will in turn affect public health. Denying patents and allowing the generic companies to freely copy the new drugs cannot be the solution to deliver medication to the patients too poor to buy them, be it rural or urban India. The actual problem lies in the fact that the product patents not only increase the cost of the drugs and medicines, but that most of them fail to introduce research and development in the neglected diseases. Lack of access to affordable medicines was a reason for the vast majority of deaths that took place due to HIV/AIDS in the developing countries. Hence while on one side the introduction of product patents will help in development of new and more effective drugs, the problem still remains that the research and development undertaken by the drug manufactures evade the neglected diseases and the diseases which are region specific such as medicines for malaria and tuberculosis which are found prevailing in developing countries like India.
Unlike in the developed countries, the lack of the penetration of medical insurance makes the people directly affected by the increase in the prices and hence decreases the affordability. The patent system makes the lives of the people outside the sphere of social security, which forms majority in the developing countries, impossible.
A product patent system will make India dependent on the multinational companies for technology and for permission to produce the patented drug. Exorbitant prices will be charged and the Indian pharmaceutical industry will become subservient to the MNC’s. They will lose the position that they had gained in the wake of the Act of 1970.
The most practicable solution to the problem, which at the same time allows for TRIPs compliance would be granting of dual licenses. This would mean that the patent would be partly product patent and after a reasonable time being given to the inventor to make a reasonably large profit it would be converted to a process patent whereby the patented drug can be manufactured by competing manufacturers using an alternative process. This would solve the problem of excessive hike in prices and would render the drugs more accessible to the millions suffering. Collaboration with the MNC’s on various fronts such as research and development, manufacturing and marketing will help Indian Pharmacy companies make profitable breakthroughs.
The non-provision of product patents has been one of the strongest aspects of our Patents Act. Complete compliance with all aspects of the TRIPs agreement is prejudicial to our national interest and the TRIPs agreement itself places limitations on our ability to enact out national legislations in public interest. To prevent public interest from being prejudicially effected it is imminent to mobilize public opinion against complete compliance of the obligation under TRIPS. It must always be remembered that pharmaceutical industry owes a moral responsibility to the society. The monopoly granted by patents to the Drug companies should not be exercised without responsibility. Hence it can be safely said that India having rushed through with the third amendment of 2005 to the patents act without proper parliamentary scrutiny and without having tactfully dealt with issues relating to food, health and technology was not in public interest.
TREND IN PATENT APPLICATIONS
• A sudden drop in filing by 6.8% in the number of applications. It broke the growing trend in patent filings in India over 7 years. It is also noted that there was a sharp drop in patents examined and granted.
• Total number of patents granted was 6168, which is a 61.6% decrease from 2008-09
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REASON FOR DOWNWARD TRENDS
• The world economy had faced a meltdown • A number of 55 patent examiners left the organization between 2004-2009 and 47 examiners were promoted as Assistant controllers in 2009
COUNTRY COMPARISON
• In the year 2009, India registered 7% decrease in the number of Patent applications whereas Australia registered a 10% decrease in the number of Patent applications. China on the other hand registered a 9% increase in the number of Patent applications.
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CASESTUDY: Apple v/s Samsung
Over the course of the last few years, Apple has unleashed a slew of intellectual-property lawsuits against Android device manufacturers such as: HTC, Motorola and of course, the poster child of this continued litigation, Samsung. While IP lawsuits are nothing new in the world of technology manufacturers, it has become glaringly apparent after the ban of the Galaxy Tab 10.1 in Germany that this case could hold serious repercussions for both parties and consumers alike.
Since then, the two mobile giants have been preparing for their trial case, which is scheduled for Monday, July 30. With no love lost between the two parties and the astronomical stakes at hand, this case has all the makings of a landmark trial.
The Complaint
The case began over a year ago with Apple issuing an official complaint on April 15, 2011, stating: "Instead of pursuing independent product development, Samsung has chosen to slavishly copy Apple 's innovative technology, distinctive user interfaces, and elegant and distinctive product and packaging design, in violation of Apple 's valuable intellectual property rights."
The interesting thing about the complaint brought forth by Apple is its wording. Apple takes as much issue with Samsung lifting design elements from their brand, as they do with the core design of its operating system Android. Notably this greatly increases the significance of this case, potentially making this case as much about Google as it is about Samsung.
Trade Dress Infringement
Apple introduces a number of trade dress infringement claims under 15 U.S.C. -- 1125 and 15 U.S.C. -- 1114. Trade dress is a form of intellectual property that basically refers to the visual aesthetics of a product or packaging (including design elements) that signifies the source of the product with consumers. Basically meaning any iconic visuals that spur brand recognition with the consumer, such as Apple 's use of the prefix 'i ' in their products (i.e. iPhone, iPod). Namely this law is in place to protect the consumer from being confused into thinking that a product has affiliation with another brand or company.
If you take a look at the case (which can be found here) it 's apparent that some of these individual claims are outlandish. For example, it 's unlikely that Apple will try to sue everyone who uses a tray that cradles their product so that it 's visible when opening the packaging. However, the important thing to understand is that the court will be looking at these claims collectively; deciding if the overall appearances of Samsung 's products (hardware, software, and packaging) are intended to create a connection between Apple products.
Additionally it 's worthwhile to note that Apple has a stronger claim with their second and third trade dress claims than their first, due to the fact that they have already established patents for the elements that are addressed in the claims.
This means that Apple has already convinced the US Patent and Trademark office that these elements are distinctive and protectable. Again, it all comes back to whether or not the design of Samsung 's products could confuse the 'average ' consumer into thinking that they are Apple products.
Infringement of design patents
In addition to the three prior trade dress claims, Apple also makes a number of design patent claims that act somewhat similar to the previous claims made. The major difference between the trade dress claims and patent claims is how they are legitimized, but regardless, both claims ultimately raise the same question: is the protected device similar enough to the product in question that it could potentially trick the consumer into thinking that there is a connection between the two? This question (while grossly oversimplified) is what the majority of the case will revolve around, especially the portions that specifically target Samsung 's designs.
Additional Patent Claims
While the majority of the case revolves around Samsung 's designs, Apple has issued a number of claims that deal with more technical claims revolving around Android-related content. Most of these claims are related to small technical applications, but the major claim of course is the one concerning patent #8,086,604: "the universal interface for retrieval of information in a computer system" (a.k.a. their universal search function).
Damages
On July 24, Apple released information that outlined the proposed damages of Samsung 's alleged patent infringement at $2.5 billion. This would cover what Apple estimates are $500 million in lost profits, about $2 million form Samsung 's "unjust enrichment", and $25 million for other "reasonable royalty damages". These damages are also apt to grow if Samsung is found to have wilfully infringed the patents, and Apple argues that Samsung "chose to compete by copying Apple".
If Samsung is found guilty of infringing patents, one of two things could happen. Either Samsung would be forced to stop selling the products that use the infringing elements or Samsung would have to license these patents from Apple. If the latter is the case, Apple is asking anywhere from $2.02 per unit of "over scroll bounce" techniques to $24 for more in-depth patents.
There is also a great deal of risk involved for Apple as well. If Samsung is to win its counterclaim it could potentially cost Apple billions of dollars in licensing fees and force them to remove products off their shelves. While this is unlikely, it certainly is not out of the realm of possibility.
At this point it seems rather unlikely that the two parties will be able to reach a form of settlement; meaning that the 10 jurors (most of whom likely have little to no prior understanding of software design and the patent system) will have the power not only to determine liability, but to put a dollar figure on the amount.
← CONCLUSION
It is generally asked, why should a trademark be registered? The answer is that if you are not the owner of the trademark of the name of your business, you are at a risk of being hindered in preventing others from using the same and, potentially, not being able to use it yourself if another gets there before you. It is very important to be IP (intellectual property) focused when it comes to business. All large companies follow this approach. A trademark is an asset to the business that may be licensed or assigned.
In helping to deciding whether or not your mark can be registered, it is necessary to carry out a trademark search. A trademark search is one of the most important stages of registering a trademark successfully. The purpose of the search is to establish whether or not a similar or identical mark exists which will raise any objections subsequent to filing the application. The search also enables you to identify which classes the similar or identical marks exist under and which marks they do not exist under so that you can seek protection under them. A trademark search does not only determine whether your mark can be registered or not, but it also prevents you from losing filing fees if the application is thrown out. It is therefore important from the outset to make sure your mark is capable of registration.
It is essential that you keep up a pro-active trademark policy, a one-off registration is all well and good but you might not be protecting your brands in the best way possible. You should ensure that you carry out regular audits considering: What current trade mark applications / registrations you own. When are the renewal dates for these applications / registrations; what are your most valuable brands (it may be that you have overlooked some); What products or brands have you discontinued or changed recently? It may well be that some marks no longer require protection, accordingly you would want to withdraw any pending applications and cancel any renewals; Are your current registrations covering you as well as they could i.e. are the goods / services for which they are registered still the same? And are the territories in which they are sold or marketed still the same?; and one point that is nearly always missed out is a thorough review of your marketing and sales materials in order to see whether or not they can be registered slogans, logos or names that you use and have not thought about registering.
Trademarks are essentially territorial and as such the associated rights in relation to preventing infringement are to a certain extent limited according to the jurisdictions in which a trademark is registered and or used. Therefore generally a trademark owner from one jurisdiction would not necessarily be able to stop someone from using its mark in another jurisdiction. This basic position has arguably been complicated by e-commerce. The Internet and wide spread use of e-commerce mean that a trademark has a wider reach than was previously the case, given that a website can potentially be viewed by anyone, anywhere in the world. Therefore at a basic level it would appear that if a company displays its goods or services on a website, its trade marks are potentially being used on a global scale given that customers in any country may be able to access the website.
However, this is an over simplification. In order to bring an infringement action it is likely that the trade mark owner would need to be able to show more than just a theoretical availability of the website within the jurisdiction in which infringement is alleged. A trademark owner would need to able show that he has actually had dealings with customers within that jurisdiction. This may be achieved either through: advertising directed specifically at that country, the website itself being specifically directed to customers in that country, or through evidence of a significant number of sales within the country. In addition in the absence of any registered rights within that jurisdiction the trade mark owner will have to rely on the law relating to unregistered trade marks in the country in question. This is likely to impose a heavier burden of proof than is required in respect of a registered trademark.
Where a mark is unregistered, the owner has to look to the common law for protection and must rely on a passing off action to prevent infringement. However, this can be notoriously time-consuming and expensive. To succeed in such an action, the proprietor must produce evidence of his ownership of goodwill or reputation in the mark, and evidence that the unauthorised use of his mark amounts to a misrepresentation which is causing, or is likely to cause, damage. Protection of a new, unregistered brand name or mark may be impossible since it may not have attracted sufficient goodwill to support an action for passing off. Gathering evidence to demonstrate that there is a misrepresentation, usually in the form of evidence of confusion (or a likelihood of confusion), is labour intensive and costly, particularly where survey evidence is the only means of showing that there is confusion and market research companies and experts are involved.
The essence of a trademark has always been that it is a badge of origin. It indicates a trade source: a connection in the course of trade between the goods and the proprietor of the mark. That is the function of a trademark. Therefore marks consisting exclusively of such signs or indications are not eligible for registration the marks are distinctive.
In order to gain common law rights in a trademark, the owner must use the mark on goods or services in commerce. These rights may be limited to the area in which the owner is doing business. Countries like India have, only federal registration system for trademarks. However some countries like USA have provision of registration in any State as well as from the federal trademarks office. In order to secure a State registration, the owner must use the goods or services in commerce and simply file the mark with the Secretary of State. The boundaries of protection for a State trademark are limited to the particular State. A federal trademark registration extends the owner 's trademark rights nationwide. The federal registration serves as notice to all other trademark owners and generally trumps any other form of trademark protection, of course with some limitations
← BIBLIOGRAPHY
← www.indiankanoon.com
← http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm
← http://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm
← http://www.copynot.com/Pages/Trips.html
← http://www.ipfrontline.com/depts/article.aspx?id=11882&deptid=6#
← http://www.sinapseblog.com/2009/12/case-note-indian-patent-revocation-case_30.html
← http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds170_e.htm
← http://www.indiankanoon.org/doc/100435/
← Intellectual Property Rights - Prabuddha Ganguli
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[1] Notwithstanding the first sentence of Article 42, Members may, with respect to these obligations, instead provide for enforcement by administrative action.
[2] For the purposes of this Article, the terms "inventive step" and "capable of industrial application" may be deemed by a Member to be synonymous with the terms "non-obvious" and "useful" respectively.
[3] This right, like all other rights conferred under this Agreement in respect of the use, sale, importation or other distribution of goods, is subject to the provisions of Article 6.
[4] "Other use" refers to use other than that allowed under Article 30.
[5] It is understood that those Members that do not have a system of original grant may provide that the term of protection shall be computed from the filing date in the system of original grant.
Bibliography: It consists of – • The Patents (Amendment) Act, 1999 • The Trade Marks Bill, 1999 • The Copyright (Amendment) Act, 1999 • Geographical Indications of Goods (Registration & Protection) Bill, 1999 • The Industrial Designs Bill, 1999 • The Patents (Second Amendment) Bill, 1999 ← WORLD TRADE ORGANIZATION (WTO)
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