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How are Intellectual Property Rights Claimed

July 4, 2020

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This article is written by Pratikesh Shankar of the National University of Study and Research in Law, Ranchi. In this article, the author discusses different Intellectual Property Rights and how they are claimed in India.

Introduction

Before I start the topic, I wish to put a few questions to the readers of this article. Firstly, are you aware of the controversy related to Udd Gaye song by singer and music producer Ritviz or the controversy related to the trending song Genda Phool by Badshah?

Secondly, do you know that in 1995, confectionery maker Cadbury trademarked “Pantone 2685C”, which is a specific shade of the colour purple but a few years back in 2018, the UK Court of Appeal rejected the trademark revision application by Cadbury? This iconic colour is used by Cadbury to make the packing of Dairy Milk chocolate bars distinctive.

Thirdly, do you know how to safeguard your rights when you invent any new product or process? And lastly, have you ever seen symbols like “©”, “™”, “®”, etc. around you?

These few questions bring us to a common question, i.e., “How are the rights in an intangible property protected? Through this article, I will deal with the concept of some of the Intellectual Property Rights such as the Copyright Act, the Patent Act, the Trade Marks Act, and the Designs Act.

Intellectual Property rights

The term “Property” is used to define things that are owned by an individual, or group of individuals, over which one has exclusive rights. There are two types of properties, which are corporeal property and incorporeal property, or tangible property and intangible property. Corporeal or tangible property is the physical object which can be perceived by touch whereas incorporeal or intangible property is the abstract object which cannot be perceived by touch. Intellectual property is considered as intangible or incorporeal property. Things around us that do not occur naturally are the result of human intellectual creations. Intellectual Property refers to the creations of the human mind such as literary and artistic works, inventions, designs, etc. which are new and original.

Intellectual property is broadly divided into two categories:

Source: ibef.org

Intellectual Property Right (IPR) protects the rights of the creators by giving them an exclusive right over the creations of their minds. It allows the creators to reap the fruits, i.e., to gain economic benefits from their intellectual endeavour for a certain period of time. It excludes others from taking undue advantage of others’ creations. It creates a monopoly.

In the present time, the advancement of technology has changed lives and society. The market is growing fast and competitive. So, the need for protecting intellectual property is also felt all across the world. The protection and promotion of intellectual property serve as an incentive. They act as a driving force and encourage new intellectual works that ultimately benefit society.

Further, these help in the economic growth of the country creates new employment opportunities and enhances the quality of life. Intellectual Property Rights are country-specific which means that one has to seek protection separately under relevant laws of different countries to get IPR protection in that country.

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Common Types of Intellectual Property

Copyright

Copyright has its roots in the common law system which was later governed by the national laws of many countries. In the olden days, the concept of copyright was concerned only with the field of literature and arts but in recent times the horizon of copyright expanded considerably. It has become a well-recognised type of intellectual property that gives protection to the rights of creators of certain classes of work such as original literary, dramatic, musical works, artistic works, cinematograph films, and sound recordings. Now, computer programs also fall within the domain of copyright protection.

Copyright protection is not given to ideas, concepts, modes of operation, procedures, or mathematical concepts. It only protects the expressions. This means that if there is some idea in your mind then you will not get copyright protection for your idea. You will have to express your thought or idea in some way, like by writing it down or by saving it in an electronic form. It should not be a copy of another’s work but it should originate from the mind of the creator. So, the emphasis is given on the originality of the creator’s work for copyright protection.

Patent

A patent is a legal right that is awarded to a person for his invention. It confers a monopoly to the inventor and enables him to control the use, sell, commercial production, distribution, etc. of the invention. This means that no one else can use, sell, distribute, etc. without the prior consent of the patent holder. This right is available for a certain period of time. This exclusive right is granted by the state so the state also has the right to revoke under special circumstances. A patent is not granted for inventions that can potentially be misused for an illegal or immoral purpose.

Trademark

Trademark refers to a distinctive sign or symbol which is used by the owners of a product to make it distinguishable from its competitors. It creates an image in the minds of the consumers about the product which protects the goodwill and identity of the product. It also restricts the competitors from using similar signs and from selling counterfeit products of inferior quality.

The registration of a trademark does not require any prior use of that sign or symbol but it should not be identical or deceptively similar to an existing trademark.

Design

Design refers to the ornamental or overall visual aspect of an article. It can consist of three-dimensional features, such as the shape or configuration of an article, or two-dimensional features, such as patterns, lines or colour applied to the article. It gives aesthetic value to the article. The design has to be new and original and should not be linked to any functional aspect of the article.

How is it claimed?

Legislation governing the rights

The Copyright Act, 1957

The Act governs the subject of copyright law in India. Section 13 of the Act provides that copyright in India subsists in original literary, dramatic, musical, artistic works, cinematograph films and sound recordings. Copyright does not subsist in works where there is a copyright infringement of some other works. A computer programme is also covered under the definition of literary work and so it is protected under copyright.

Berne Convention of 1886 and the Universal Copyright Convention of 1952 recognise the concept of national treatment and automatic protection. This means that a work originating in any of the member states of these conventions will automatically get the same protection and treatment across all the member states. As India is also a member of these conventions, these benefits are available to the Indian Citizens. But the copyright protection is not available automatically to the non-members of these conventions and one has to separately apply for registration in those countries where he wants protection.

The copyright owner has two types of rights which are:

(i) Economic Rights – Section 17 to 21 of the Act deal with the Ownership of Copyright and the Rights of the Owner. Section 30 to 32 B of the Act deals with the Licences by owners of Copyright. Under this, the copyright owner has the right to make use, assign, sell, distribute, lease, licence its work, and commercially exploit it.

(ii) Moral Rights – Under Section 57 of the Act, the author is granted “special rights” which are moral rights. They exist independently of the author’s copyright and subsist even after the copyright is sold, assigned, or leased. So, the author has the right to claim authorship on his work; and restrain or claim damages with respect to any distortion, modification, mutilation, or any other act which can be prejudicial to his repute.

Section 22 to 29 of the Act deals with the term of copyright protection in the matters of published literary, dramatic, musical, artistic works, anonymous and pseudonymous works, posthumous work, cinematograph films, sound recording, government works, public undertaking works and works of international organisations.

In the cases of literary, dramatic, musical or artistic works, the term of copyright protection is the lifetime of the author and 60 years thereafter. Whereas, in the cases of anonymous and pseudonymous works, posthumous work, cinematograph films, sound recording, government works, public undertaking works and works of international organisations, the term of copyright protection is 60 years from the beginning of the next year calendar following the year in which the work has been first published.

The Patents Act, 1970

This Act governs the grant of a patent to any new invention in India. The term “invention” has been defined under Section 2(1)(j) of the Act.

For an invention to be patentable, the conditions are:

(i) Novelty: An invention will be called novel if it satisfies these two conditions:

Not Anticipated

Chapter VI of the Act deals with Anticipation but the term has not been defined anywhere in the act. It has only been used in a negative sense in this chapter of the Act.

According to Section 34 of the Act, there are only four circumstances under which there will be no anticipation of the invention and these are:

Section 29 of the Act: If the invention was published in a specification before 1st January 1912 or if there was a fraudulent claim.
Section 30 of the Act: If the invention was disclosed to the government.
Section 31 of the Act: If the invention was displayed in public with the permission of the first inventor.
Section 32 of the Act: If the invention was publicly worked in India for the reasonable trial and if it was reasonably necessary.

Except for these circumstances, everything will fall within the meaning of anticipation.

Not a state of the art

The Indian Patent Act does not define the term “state of the art” but various Indian case laws have explained this term. The invention shall be considered a state of the art if matters such as the product, process, or information relating to product or process, are available to the public by publication of description or by use, before the priority date.

(ii) Inventive Step: The significant feature of the invention should involve technical advancement as compared to prior knowledge or should lead to commercial success or both.

It should also not be obvious to the person who is skilled in the art.

(iii) Industrial Application: The invention is capable of being made or used in the industry.

So, the patent is granted once all the above criteria of patentability are fulfilled and when the new invention does not fall within Section 3 of the Act and Section 4 of the Act.

Patent protection is a territorial and a country-specific right. There is no concept of a global patent which means that a patent application filed in India will only get patent protection in India. Also, the principle of “first-to-apply” is applicable in the Indian Patent Law. It means that if there are two patent applications for identical products then the patent will be awarded to the one who was first to file the application.

The term “patentee” has been defined under Section 2(1)(p) of the Act as the person who is the grantee or proprietor of the patent.

Section 48 of the Act deals with the rights of the patentee. The patentee has an exclusive right to prevent the third parties, who do not have his consent, from making, using, selling, importing, or offering to sale, the patented products. The term “consent” here means that the patentee can assign or licence his rights.

Section 53 of the Act provides for the term of every patent. Every patent in India is granted for a term 20 years from the date of filing the patent application.

Rule 80 of the Patents Rules 2003, requires the patentee to maintain the patent by paying renewal fee as specified in First Schedule at the expiration of the second year from the date of patent grant. The fee has to be paid in every subsequent year thereafter and if the patent fee is not paid then the patent ceases.

The Trade Marks Act, 1999

This Act governs the registration of trademarks for goods and services in India. It also provides protection to the trademarks and prevents fraudulent use of it.

The Hon’ble Supreme Court in the case of Dau Dayal v. State of Uttar Pradesh (AIR 1959 SC 433), discussed the object of trademark laws. The court held that: “the law of trademark is to protect the rights of persons who manufacture and sell goods with distinct trademarks against invasion by other persons passing off their goods fraudulently and with counterfeit trademarks as those of the manufacturers.”

Section 2 (zb) of the Act defines the term “trademark” as:

a mark,
capable of being represented graphically,
capable of distinguishing the goods and services of one person from those of others,
Include the shape of goods, their packing, and combination of colours,
used or can be used in relation to goods or services,
visual representation of the mark,
Indicate connection in the course of trade between the goods and services.

The term “mark” under Section 2 (m) of the Act includes a brand, device, label, heading, name, letter, the shape of goods, signature, packaging, word, numeral, or combination of colours or any related combination. The term “graphical representation” is defined under Rule 2 (k) of The Trademark Rules, 2017. It means that the representation of a trademark for goods and services is capable of being represented in paper form and also includes representation in digitised form.

Trademark protection is not provided to any geographical names and laudatory words such as best, perfect, super, etc.

Under this act, well-known trademarks and trans-border reputation trademarks are also protected. Section 2(zg) of the Act defines “well-known trademarks” as a mark that has become substantial and the use of such mark in relation to other goods or services would be likely to indicate a connection between the two. For example, “Amul” is a well-known trademark which deals in dairy products across India. If any other company starts its food production business with the name of “Amul” then the customers will think that both the products are from the same company. If a trademark is granted to the other company then it will directly affect the reputation and goodwill of Amul.

The concept of trans-border reputation is also accepted in the Indian Trademark Act. This is a concept where a country recognises the reputation of popular trademarks of other countries. In India, it protects the reputation of trademarks which have not entered the Indian market. It prevents any applicants of their country from registering identical or similar trademarks in the names of popular trademarks.

Section 25 of the Act deals with the duration, renewal, removal, and restoration of trademark registration. Registration of any trademark is valid for a period of 10 years. It can also be renewed for the next ten years from the date of the expiration of the original registration or of the last renewal of registration.

The Designs Act, 2000

This Act governs the law relating to the protection of designs in India. The main object of the Act is to protect designs that are new and original and can be applied to a particular article by the industrial process.

The term “design” is defined under Section 2 (d) of the Act.

The essential requirements for a design to qualify for protection are:

It must be new and original.
There should be no prior publication or disclosure of the design.
It must relate to features of shape, colour, configuration, pattern, the composition of lines, or ornamentation of the article.
It should be applied to any article by any industrial means or process.
It must not be applicable to a functional aspect of the article.
It must be judged solely by the eyes.
It should be visible in a finished article.

There are many overlapping areas of design with copyright, patent, and a trademark but any of two cannot subsist together. It is because different intellectual properties have different sets of procedures and protections.

According to Section 11 of the Act, the term of design is of ten years which can be renewed for the next 5 years. However, the total term for design registration cannot exceed 15 years.

Registration

Copyright

Copyright in a work is acquired automatically and does not require any formal application. This means that work gets protected by copyright as soon as it comes into existence from mere idea or concept to expression. Registration is not a prerequisite for getting copyright in a work. However, the Indian Copyright Act provides for a copyright registration procedure. The copyright registration certificate can be used to establish right over that work in cases of infringement.

However, in the case of Nav Sahitya Prakash v. Anan Kumar (AIR 1981 All 200), it was held that “the registration is not a prerequisite for the acquisition of a copyright.”

The registration application can be filed for both published and unpublished works. For published works, three copies have to be attached with the registration application. In the case of unpublished works, copies of manuscripts or extracts can be sent with the registration application.

Section 44 to 50A of the Act deals with the Registration of the Copyright. Section 44 of the Act states that a Register of Copyrights will be kept at the Copyright Office. The names or titles of works and the names and addresses of authors, publishers and owners of copyright and such other particulars will be maintained in that Register of Copyrights.

Procedure of Registration

Rule 16 under Chapter VI of the Copyright Rules, 1958 deals with the application for Registration of Copyright. Every application has to be made in accordance with Form IV and for the change in the particulars of copyright entered in the Register of Copyright has to be made in accordance with Form V as prescribed in the first schedule to the Rules.
Every registration application for each separate work should be made in triplicate with the fee prescribed in the second schedule to the Rules.
The person applying for registration has to mandatorily give a notice of his application to every person who has a claim, interest or a dispute in the subject matter of the copyright.
The application must be duly signed by the applicant. If applicable then the Power of Attorney also known as Vakalatnama should be enclosed after it is signed by the applicant and accepted by the Advocate.
The application is filed then.

Steps in Copyright Application

Source: indiabizline.in

This flowchart displays all the steps after an application for a grant of a copyright registration certificate is submitted before the Indian Copyright Office.

Patent

Application for Patent

Section 6 of the Act provides that an application for patent can be made by the following persons:

6(1)(a) – True and first inventor
6(1)(b) – Assignee of the true and first inventor
6(1)(c) – Legal representative
6(2) – True and First inventor, Assignee or Legal representative can file it alone or jointly with any other person

As per Section 2(1)(y) of the Act, “true and first inventor” does not include the first importer of an invention to India or the first person to be communicated about an invention from outside India.

Types of Application

Provisional Application

It is filed when the invention is still under trial or experimentation stage. The inventor can file this application with the provisional specification to get a priority date. But, the inventor has to file a complete specification within 12 months from the date of filing of a provisional application.

Regular Application

It is a fresh application that is filed with complete specifications. It does not either claim any priority of application made in a convention country or any other earlier application under process in the office.

Convention Application

It is an application that is filed, claiming a priority date based on the same or substantially similar application filed in any other convention member country. This application has to be filed in the Indian Patent Office within 12 months from the date of first filing in any of the convention member countries. Section 133 of the Act deals with the convention countries. Also, Section 2(c) of the Act defines “convention application” as an application for a patent made by virtue of section 135 of the Act.

Patent Cooperation Treaty (PCT)National Phase Application

Patent Cooperation treaty is administered by WIPO and India is a member state of PCT. It provides for the filing of a single international patent application which has the same effect as national applications filed in the designated countries. Section 2(ia) of the Act defines International Application as a patent application which is made in accordance with the Patent Cooperation Treaty. The applicant has the liberty to seek protection in as many member states of PCT as needed by filing a single application. When India is designated in the PCT International application, the applicant has to file the national phase application in India within 31 months from the International filing date or the priority date.

Application of Addition

Chapter IX of the Act deals with the amendment of application and specification. If after filing complete specification, more improvements are made then the applicant can go for an application of addition.

Divisional Application

According to Section 16 of the Act, if after filing an application, the applicant or controller notices that there is more than one invention in the application, then the applicant of his own or to meet the official guidelines, may divide the application and file two or more applications. This must be done before the grant of patent. This whole process is known as the Divisional Application.

Form of Application

Section 7 of the Act deals with the form of application and contains the following points:

Single patent application for every new invention. A patent can be filed in respect of a substance or in respect of a process. But, a single patent cannot be bifurcated to state that one relates to a substance and the other relates to the process.
The international application under PCT will also be a valid application under this Act.
When an application is filed by the assignee then he has to furnish with the document of proof of right to file for a patent.
When an application is filed by a person who has the possession of the invention then a declaration has to be attached with the application, acknowledging the true and first inventor.
Every application other than a convention application or PCT application should contain a provisional or complete specification of the invention.

Specifications

In order to get patent protection for an invention, the applicant has to describe the invention in such a way that a person skilled in the art, is able to perform the invention after going through the description. Section 9 of the Act deals with Provisional and Complete Specifications. An application filed with provisional or complete specifications helps the applicant to get a priority date for his invention.

A provisional specification is filed by the applicant when the invention has not reached the final stage or when it is still under trial. There are two benefits of a provisional application. First, the applicant gets more time for his invention and second, the applicant gets a priority date for his invention. It is not mandatory for the applicant to file a provisional specification. Within 12 months of the provisional specification, the applicant has to compulsorily file the complete specification.

The complete specification contains the entire description of the invention. The applicant has to necessarily describe his invention in the best possible manner including every single detail. This must be drafted with utmost care and clarity about the invention. Any invention is granted a patent based on the complete specification.

Section 10 of the Act deals with the contents of the specification which has to be filed with the patent application. According to Rule 13 of the Patents Rules, 2003, every specification should be made in Form 2.

Steps in Patent Application

Source: IP India

This flowchart displays all the steps after an application for a grant of patent in Form-1 and provisional/ complete specification in Form-2 are submitted before the Indian Patent Office.

Trademark

Application for Trademark Registration

Section 18 of the Act provides that a person who claims or desires to be the proprietor of the trademark in relation to goods or services can apply for the registration of a trademark. The application for trademark registration has to be in writing to the Registrar.

For the purpose of making an application, “person” under Section 18 of the Act includes:

A Natural Person,
A Body Incorporate,
A Partnership Firm,
Hindu Undivided Family,
Association of Persons (in case of collective Trademarks),
Joint Proprietor,
A Trust,
A Society, or
A Government Authority/Undertaking.

Under Section 24 of the Act, two or more persons can jointly apply for a trademark as joint proprietors.

International Protection under Madrid Protocol

The Madrid Protocol is administered by WIPO which provides trademark protection in the member countries. There is a single trademark registration procedure to seek protection in various territories. India is also a party to this, so it recognises the Madrid Protocol in the Act. Chapter IV A of the Act deals with special provisions relating to the Madrid Protocol. It provides that when there is an application for the registration of a trademark under Section 18 of the Act or when a trademark is registered under Section 23 of the Act, application for international registration of that trademark can also be made by the proprietor under this Act.

Trademark Registration Process

The trademark must fall within the definition of Section 2 (zb) of the Act. It should be distinctive and should not fall within any of the prohibited categories.
It should not be a copy of some other trademark. So, the applicant must do “trademark search” before applying for the registration to ensure that there is no similar trademark that is already available.
Every application for the registration has to be filled to the Trade Marks Registry.
The applications have to be submitted in the relevant prescribed forms given in Schedule II of the Trade Marks Rules 2002. The applicable provisions which have to be complied with are Section 18 of the Act and Rule 12(1), Rule 13(1) and Rule 14(2) of Trade Marks Rules, 2017.
Then the application is filed before the Trade Marks Registry.

Steps in Trademark Application

Source: iPleaders

This flowchart shows all the steps which are followed after an application for a grant of trademark registration is submitted before the Indian Trade Marks Registry.

Design

According to Section 11 of the Act, registration of design gives copyright protection to the registered proprietor of the design. However, the registration of design and protection under copyright cannot exist together due to Section 15 of the Copyright Act. Section 15 of the Copyright Act is a special provision regarding registered designs or which is capable of being registered under the Designs Act.

Unlike the Copyright Act, the protection under the Designs Act is not automatic. Designs have to be registered to get protection under the Designs Act.

Section 4 of the Act deals with the prohibition of registration of certain designs such as:

Designs which are not new or original.
It has been published or disclosed earlier.
Contains scandalous or obscene matter.

Procedure for Design Registration:

The design must fulfill the essential requirements.
It must not fall within Section 4 of the Act.
An application for the registration of a new and original design must be filed by the proprietor which is provided under Section 5 of the Act. Section 2(j) defines the proprietor of a new and original design.
The application is filed at the Office of the Controller General of Patents, Designs, Trademarks, and Geographical Indications.

Steps in Registration of Design

Source: trademarkiso.com

This flowchart shows all the steps which are followed after an application for issue of design certificate is submitted before the Indian Trade Marks Registry.

Enforcing Intellectual Property rights

The main purpose of acquiring rights in intellectual property is to reap the fruits of one’s labour and intellect. But these intellectual property rights will be meaningless if they are not enforced. If there are no proper enforcement mechanisms of these rights then creators, proprietors, licensees, or assignees will not get the benefit that they are entitled to. So, different laws in India relating to Intellectual Property Rights cover the enforcement mechanism.

The enforcement mechanism under different Intellectual Property laws will be discussed in this part.