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Study Material

INTELLECTUAL PROPERTY LAW

Brief Introduction

Intellectual property law relates to legal legislations/acts/statutes that deal with intellectual property. Intellectual property can be defined as a property which is intangible in its inherent nature and form and is borne out of application of mind.

For example, a book which is written by Z is said to be an intellectual property of Z. The book is the (intellectual) property of Z as it has been written by him, where Z has applied his wisdom, mind and intellect to write that book.

Hence, any property, tangible or intangible, which is the result of application of someone’s mind is said to be an intellectual property. Laws that govern intellectual property are called Intellectual Property Laws.

INTELLECTUAL PROPERTY RIGHTS

Intellectual property refers to creations of the mind which include inventions; literary and artistic works; and symbols, names and images used in commerce.

Laws which protect the intellectual property of an individual, extending them certain rights to exercise in pursuance to the mode of use and disposal of their property (intellectual) are called Intellectual Property Rights.

Intellectual property rights are like any other property right. They allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation.

For example, A writes a book, ‘The story of God’. The book is the property of A and A can choose to do whatever with his book. He can publish it and put it up for sale; he can choose to sell it for free or he may choose to not do anything with his book at all. Hence, A has the right to decide to do whatsoever with his intellectual property.

Such rights are extended to him by virtue of the laws applicable in India as Intellectual Property Laws and the rights so extended are called Intellectual Property Rights. 

HISTORY OF INTELLECTUAL PROPERTY RIGHTS

The importance of intellectual property was first recognized in the Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886). Both treaties are currently administered by the World Intellectual Property Organization (WIPO), which is part of the United Nations.

Paris Convention: The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on 20 March 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property. The Convention is currently still in force. The substantive provisions of the Convention fall into three main categories: national treatment, priority right and common rules.

Berne Convention: The Berne Convention for the Protection of Literary and Artistic Works, usually known as the Berne Convention, is an international agreement governing copyright which was first accepted in Berne, Switzerland, in 1886.

Hence historically, Intellectual property laws were divided into two categories:

1.    Industrial Property:

Intellectual Property capable of industrial use and be used for profit making were protected.

Includes patents for inventions, trademarks, industrial designs and geographical indications; and

2.    Copyright:

Intellectual property that transmitted information in written form were protected, as people could create permeance and reachability of knowledge.

Covers literary works (such as novels, poems and plays), films, music, artistic works (e.g., drawings, paintings, photographs and sculptures) and architectural design.

Why protect intellectual property and extend protection rights?

Protection of Intellectual Property is important and relates to continuous evolution & development of mankind. As discussed, intellectual property is a by-product of one’s intellectual effort which includes both time and money.

For example, Mr. Arthur Swent spends 20 years of his life developing a cure for cancer. In the process, he spends all his savings and incurs debt from friends and family to support his research. Finally, when he develops the cure, few pharma companies copy his medicinal cure and start selling it commercially all over the world.

Hence, Mr. Arthur Swent gets no credit for his 20 years of toil and is unable to recover his deserving money to pay back his debt and cover his expenses spent on his research.

Thus, if one’s invention is not given any protection and commercial giants can exploit their research and toil, no individual will put efforts to develop anything (mechanical technology, medical advancements, inventions etc.) and hence the human race will come to a stand-still as no new developments to preserve our existence will happen.

For the same reason, intellectual property rights were developed so that one’s intellectual by-product can be protected and individuals will keep putting research and efforts to develop new inventions and technologies.

In the same example, Mr. Arthur Swent on developing the cure for cancer could apply for (a patent) protection under intellectual property laws. Once he is legally protected, Mr. Arthur Swent could choose to do anything with his developed cure. If any person or a company if copies his cure without his permission, Mr. Arthur Swent could sue for infringement and receive compensation for violating his right. Hence, his rights will be protected persuading him to keep investing into further research.  

Why is international protection of IPR needed?

If a citizen of India invents a computer software which can terminate any virus that enters your personal computer. The invention is capable of industrial use and has the capacity to generate huge economic revenue. He gets it patented in India and his invention is protected. Hence, he can choose to sell it to whomsoever he wants and no person can sell it in India without his permission.

But let us say, a UK tourist visits India and takes the invention back to his country and starts selling it commercially. Thus, the intellectual property right of the person who invented the software is infringed and some other person is reaping the benefits of his invention.

Thus, intellectual property rights need an international application and protection. To achieve the same the United Nations have developed the TRIPS agreement which compels all UN member nations to follow a minimum standard if intellectual property right protection. Hence, if A gets a patent (IP protection) in India, the patent is applicable in all countries who are members of the United Nations. ‘A’ can sue any person in any country being part of the United Nations for violation of his intellectual property right.        

Trade-Related Aspects of Intellectual Property Rights (TRIPS):

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international legal agreement between all the member nations of the World Trade Organization (WTO). It sets down minimum standards for ‘intellectual property regulation’ by national governments (like India, Japan, Sri Lanka etc.), of many forms of intellectual property as applied to nationals of other WTO member nations. TRIPS agreement was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994 and is administered by the WTO. It is regulated by the WTO as intellectual property forms a major part of international trade.

TRIPS agreement was compulsory to be signed by all countries who wanted to be a part of WTO. No country would not want to be a part of WTO as it is an organization which facilitates world trade and a countries economic development is largely dependent on organizations like WTO. Hence, TRIPS agreement has a large international application. 

Indian Legislations

There are many areas of intellectual property laws in India.

1.    The Trade and Merchandise Marks Act, 1958 has been replaced by the Trade Marks Act, 1999,

2.    The Copyright Act, 1957 has been amended to protect computer programs as “literary work”;

3.    The Patent Act, 1970 has been amended by the Amendment Acts of 1999 and 2002 and 2005.

4.    The Designs Act of 1911 has been completely replaced by the Designs Act of 2000.

The following laws have been enacted to protect newly recognized species of intellectual property in India:

·         The Geographical Indications of Goods (Registration and protection) Act, 1999;

·         The Semiconductor Integrated Circuits Layout Design Act, 2000; 

·         The Protection of Plants & Varieties and Farmers Rights Act, 2001; and

·         The Biological Diversity Act, 2002

These acts, and particularly the impact of recent amendments to the acts. The scope of CLAT examination is restrictive and the following topics cover the syllabus.

[A] PATENTS

Definition

A patent is an ‘exclusive right of use’ granted for an invention a product or process that provides a new way of doing something or that offers a new technical solution to a problem. A patent provides patent owners with protection for their inventions, that no person can use the said invention without the permission of the patent owner.

Essentials

a)    Novelty: the first essential for grant of patent is that the invention/product/technology so developed should be new or novel. It should not be copied nor should be a mere upgrade of a certain product or technology. Patents cannot be granted to discoveries, but is only for new and npon-copied inventions.

b)    Non-obvious: the invention should not be an obvious implication of existing technology or product. In simpler terms, it means upgrading an existing technology by fusing two or more inventions.

c)    Industrial Application: the invention can be granted a patent only when it is capable of industrial use and can generate money.

It should be capable to be used as a product in some industry or factory.

Any invention which does not have economic importance cannot be patented and as such requires no patent as no one can earn money by stealing your invention, hence, not violating your intellectual property right.

Term of Protection

20 years is the protection term for patents.

 

Under The Patents Act, 1970:

Section 53. Term of patent.

(1)    Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent.

 

Explanation.—For the purposes of this sub-section, the term of patent in case of International applications filed under the Patent Cooperation Treaty designating India, shall be twenty years from the international filing date accorded under the Patent Cooperation Treaty.

Examples

Telephone, computer mouse, incandescent light buld, Light Emitting Diode (LED), mimeograph, pendrive (USB), plasma TV etc. are all examples of patents.

Additional Information

Evergreening: it is concept where once a patent is granted the patent holder renews his patent after 20 years (renewal term is of 10 years) by making simple upgrades in the already patented invention. If such renewal is made, the patent will never expire and the inventor can misuse the same for his benefit. Hence, this is called evergreening and it is an avoided practice (illegal in some jurisdictions) in the field of IPR laws.

 

Public Domain: Once the patent term expires the invention becomes part of the public domain and any member of the general public can use the invention without prior permission of the patent holder.

This is so done because 20 years is time enough for a person to reap economic benefits of his invention (developed by toil and money), after which members of the public can use that invention to develop it further and create a more advance technology/invention.

Granting Authority in India

Patents are granted by national patent offices or by regional offices that carry out examination work for a group of countries.

 

[B] COPYRIGHT AND DESIGN

Definition

Copyright (or author’s right) is a legal term used to describe the rights that creators have over their literary and artistic works.

Works covered by copyright range from books, music, paintings, sculpture, and films, to computer programs/software, databases, advertisements, maps, and technical drawings.

 

Copyright in Design-

Designs are also protected under Copyright Law. Design rights are similar to that of copyrights, where copyright protects works which are literary or artistic, design laws protect design works like design of a coke bottle or a soap, design of a dress or a car etc.

Essentials

·         Copyrights subsist in any original work naturally and there is no compulsion to protect a work under copyright if one can prove that the work is his and is original.

·         Copyright protection becomes compulsory and essential when one wishes to commercially exploit his work and license it to publishers for printing, publishing etc.

 

·         There is only one condition for grant of copyright: the work should be ‘original’ and not copied. 

 

·         Copyrights do not subsist is Ideas. They have to be executed ideas.

For example, A tells a story to B. B subsequently deploys the story in a book, which becomes a top seller. A has no claim against B.

Term of Protection

Lifetime of the author plus 60 years thereafter.

The revenue so generated after the authors death is the right of his legal heirs.

 

Indian Copyright Act, 1957, Chapter V, Sections 22 to 29 deal with term of copyright.

 

Section 22. Term of copyright in published literary, dramatic, musical and artistic works.-

Except as otherwise hereinafter provided, copyright shall subsist in any literary, dramatic, musical or artistic work (other than a photograph) published within the lifetime of the author until sixty years from the beginning of the calendar year next following the year in which the author dies. 

Explanation.- In this section the reference to the author shall, in the case of a work of joint authorship, be construed as a reference to the author who dies last.

Examples

Books, song lyrics, photographs, drama scripts, computer software (coding) etc.  

Additional Remarks

On infringement of Copyright-

Under Copyright Act 1957,

Civil Remedies: Injunction

·         Only effective remedy

·         Court has to weigh the damage to the plaintiff if the injunction is not granted,

·         as opposed to the damage to the defendant if it is Interlocutory injunction is the preferred method for preventing infringement,

·         sometimes an ex-parte injunction.

Criminal Remedies:

·         Section 64 empowers the Police (any officer not below the rank of sub-inspector) to seize infringing copies without warrant,

·         Police Raids (Power of search, seizure & arrest without a warrant),

·         Fines (min. Rs. 50,000 - Rs. 2,00,000)

·         Imprisonment (6 months to 3 years)

 

[Note:-Pirated CD’s and torrent downloads under Indian law is actually a criminal offence. Photo/Xerox copy of books and material if not for research or educational purpose is infringement of copyright.]

 

[C] TRADEMARKS

Definition

·         A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company.

 

·         What do trademarks do?

Trademark protection ensures that the owners of marks have the exclusive right to use them to identify their goods or services, or to authorize others to use them in return for payment.

 

·         The period of protection varies, but a trademark can be renewed indefinitely upon payment of the corresponding/renewal fees.

 

·         What kinds of trademarks can be registered?

Trademarks may be one or a combination of words, letters and numerals. They may consist of drawings, symbols or three-dimensional signs, such as the shape and packaging of goods.

 

Essentials

A trademark has to be:

[1] a distinctive mark or a symbol,

[2] one or a combination of words, letters and numerals,

[3] drawings, symbols or three-dimensional signs.

 

A trademark is a sign that depicts a quality of good or service, hence needs protection.

For example, the symbol of car manufacturer Audi, has a reputation of delivering quality assurance cars hence its symbol has value due to the research and innovation that they bring in their products. 

Term of Protection

10 years is the term of trademark protection which is renewable indefinitely against payment of requisite renewal fees.  

Examples

(Trademarks)

Audi

McDonalds

BMW

Adidas

Reebok

Nike

Apple

Additional Remarks

Passing-Off: A cause of action for passing off is a form of intellectual property enforcement against the unauthorized use of a get-up, the whole external appearance or look and feel of a product, including any marks or other indication used, which is considered to be similar to that of another individuals’ product, including any registered or unregistered trademarks.

Passing off is of particular significance where an action for trade mark infringement based on a registered trade mark is unlikely to be successful (due to the differences between the registered trade mark and the unregistered mark).

Passing off is a common law cause of action, whereas statutory law provides for enforcement of registered trademarks through infringement proceedings.

 

For example, you buy a Nike shoe from a road side shop for Rs. 4000/- thinking it to be an original Nike shoe (which is not), the shopkeeper is liable under infringement of trademark laws; as he passed-off a fake Nike shoe as original.

 

Similarly, you buy a Nike shoe from a road side shop for Rs. 400/- thinking it to be an original shoe. The shopkeeper is liable for infringement of copyright of the registered trademark logo, but not liable under trademark law for passing-off; as you are expected to understand that in Rs. 400/- you cannot buy an original Nike shoe.

 

[D] GEOGRAPHICAL INDICATIONS

Definition

A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities or a reputation due to that place of origin.

 

The use of geographical indications is not limited to agricultural products. They may also highlight specific qualities of a product that are due to human factors found in the product’s place of origin, such as specific manufacturing skills and traditions.

 

The place of origin may be a village or town, a region or a country.

 

An example of the latter is “Switzerland” or “Swiss”, perceived as a geographical indication in many countries for products made in Switzerland and, in particular, for watches.

Essentials

The essentials to apply for a Geographical Indication are:

[1] the goods or services should be a pertinent feature of the geographical location,

[2] the good and services are dependent on the location’s environmental factor

[3] the good or services must be manufactures or practiced by a certain group of individuals, forming an Association.  

Term of Protection

Granted only to ‘Associations of Persons’. Not applicable to Individuals.

10 years is the term of protection which is renewable for consecutive 10 years on payment of requisite fees.

Examples

 

Geographical Indication (India)

 

Product

 

Area

Darjeeling Tea

Darjeeling, West Bengal

Lucknow Chikan Craft

Lucknow, Uttar Pradesh

Varanasi Sarees

Varanasi, Uttar Pradesh

Baluchari Sarees

West Bengal

 

Geographical Indication (World)

 

Product

 

Area

Irish Whiskey

Ireland

Scotch

Scotland

Champagne

France

Roquefort Cheese

France

Basmati Rice

India

Additional Remarks

Geographical indications are understood by consumers to denote the origin and quality of products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by commercial operators. False use of geographical indications by unauthorized parties, for example “Darjeeling” for tea that was not grown in the tea gardens of Darjeeling, is detrimental to consumers and legitimate producers. The former is deceived into believing they are buying a genuine product with specific qualities and characteristics, and the latter are deprived of valuable business and suffer damage to the established reputation of their products.

 

Difference between a geographical indication and a trademark?

A trademark is a sign used by a company to distinguish its goods and services from those produced by others. It gives its owner the right to prevent others from using the trademark.

A geographical indication guarantees to consumers that a product was produced in a certain place and has certain characteristics that are due to that place of production

 

Legal Knowledeg:-

[1] General Agreement on Tariffs and Trade (GATT):  

It was operative before the development of WTO. A treaty created following the conclusion of World War II. Formed in 1947 and signed into international law on January 1, 1948, The General Agreement on Tariffs and Trade (GATT) was implemented to further regulate world trade to aide in the economic recovery following the war. GATT's main objective was to reduce the barriers of international trade through the reduction of tariffs, quotas and subsidies.  

GATT was signed by 23 nations in Geneva on October 30, 1947 and took effect on January 1, 1948. It lasted until the signature by 123 nations in Marrakesh on April 14, 1994 of the Uruguay Round Agreements, which established the World Trade Organization (WTO) on January 1, 1995.

[2] World Trade Organization (WTO):

The World Trade Organization (WTO) is the only international organization dealing with the global rules of trade between nations. Its main function is to ensure that trade flows as smoothly, predictably and freely as possible.

History of WTO- The system was developed through a series of trade negotiations, or rounds, held under GATT. The first rounds dealt mainly with tariff reductions but later negotiations included other areas such as anti-dumping and non-tariff measures. The last round the 1986-94 Uruguay Round led to the WTO’s creation.

[3] World Intellectual Property Organization (WIPO):

WIPO is the global forum for intellectual property services, policy, information and cooperation. It is a self-funding agency of the United Nations, with 189 member states/countries.

In 1893 the organization, BIRPI was established. The two secretariats set up to administer the Paris and Berne Conventions combine to form WIPO's immediate predecessor, the ‘United International Bureaux for the Protection of Intellectual Property’ best known by its French acronym, BIRPI. The organization, with a staff of seven, is based in Berne, Switzerland.

In the year 1970 BIRPI becomes WIPO. The Convention establishing the World Intellectual Property Organization (WIPO) comes into force and BIRPI is thus transformed to become WIPO. The newly established WIPO is a member state-led, intergovernmental organization, with its headquarters in Geneva, Switzerland.

[Note:- Organs of the United Nations form an important part of preparation for CLAT examination. Their headquarters and chairpersons are advised to be remembered.]

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