This article on IPR Laws is written by Bhargav Chetankumar Thakkar, pursuing M.A. in business law from NUJS, Kolkata.
Intellectual property rights have grown to a position from where it plays an important role in the global economy’s development over the past two decades. In 1990s, laws and regulations were strengthened I this area by many countries unilaterally. In the multilateral level, there was enhanced protection and enforcement of IPRs to the level of solemn international commitment because of the successful conclusion of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in World Trade Organization.
There is a vast domain of intellectual property. Designs, Copyrights, and Patents Trademarks since a long time have received recognition. Newer forms of the protection are also developing particularly encouraged by the stimulating emergence in technological and scientific activities.
THE CONCEPT OF INTELLECTUAL PROPERTY
The intellectual property’s concept is not a new one as Renaissance northern Italy is thought to be the framework of the intellectual property system. A Venetian Law of 1474 made the first methodical attempt to protect inventions in a form of patent, which allowed right to an individual for the first time. The invention of the printing press and movable type by Johannes Gutenberg around the year 1450, helped in the origin of the first copyright system in the world.
By the end of 19th century, new creative ways of manufacture aided caused large-scale industrialization accompanied by fast growth of cities, the investment of capital, expansion of railway networks, and nationalism led many countries to establish their modern Intellectual Property laws. In this point of time, the International Intellectual Property system also began to take shape with the creation of the Paris Convention for the Protection of Industrial property in 1883 and the Berne Convention for the protection of Literary and Artistic Works in 1886. The evidence underlying Intellectual Property throughout its history has been that the rewards and credits related with ownership of inventions and creative works encourage further creative and inventive activity that, motivates economic growth
The Convention establishing the World Intellectual Property Organization (1967) gives the following list of the subject matter protected by intellectual property rights:
- trademarks, service marks, and commercial names and designations;
- inventions in all fields of human endeavour;
- industrial designs;
- protection against unfair competition; and
- “all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.”
- literary, artistic and scientific works; scientific discoveries;
- performances of performing artists, phonograms, and broadcasts;
The role and importance of the intellectual property protection has been formed in the Trade-Related Intellectual Property Systems (TRIPS) Agreement, with the establishment of the World Trade Organization (WTO). At the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) treaty in 1994, it was negotiated.
The TRIPS Agreement incorporates, in principle, every form of intellectual property and targets the complementary and firming standards of protection and providing for operative enforcement at national as well as international level. It addresses the applicability of general GATT principles and the provisions in international agreements on IP (Part I). It also builds standards for scope, usage, readiness (Part II), enforcement (Part III), acquisition and maintenance (Part IV) of Intellectual Property Rights. Moreover, it addresses related dispute prevention and settlement mechanisms (Part V). Formal provisions are addressed in Part VI and VII of the Agreement, which cover transitional, and institutional arrangements, respectively.
The TRIPS Agreement came into effect on 1st January 1995, is considered till date most complete multilateral agreement on intellectual property. The areas of intellectual property it covers are as following:
- Trademarks which include service marks as well;
- Industrial designs;
- Copyright and related rights (i.e. producers of broadcasting organisation, the rights of performers);
- Geographical indications which include appellations of origin;
- The lay-out designs (topographies) of assimilated circuits;
- The information which are not closed which includes test data and trade secrets;
- Patents which include protection of new varieties of plants;
INTELLECTUAL PROPERTY SYSTEM IN INDIA
In 1485 the first system of protection of intellectual property came in the form on Venetian Ordinance historically. In England in 1623 it was followed by Statue of Monopolies, which extended rights of patents for Technology Inventions. In 1760, patent laws were introduced in The United States. Between 1880 and 1889 patent laws of most European countries were developed. In the year 1856 in India Patent Act was introduced which remained in force for more than 50 years which was later modified and revised and was called “The Indian Patents and Designs Act, 1911”. A complete bill on patent rights was enacted after Independence in the year 1970 and was called “The Patents Act, 1970”.
Specific statues protected only specific type of intellectual output; till very recently only four forms were protected. The protection was in the form of grant of designs, patents, trademarks and copyrights. In India, copyrights were regulated under the Copyright Act, 1957; trademarks under Trade and Merchandise Marks Act 1958; patents under Patents Act, 1970; and designs under Designs Act, 1911.
The establishment of WTO and India also being signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), many new legislations were passed for the protection of intellectual property rights to meet the obligations internationally. These included the following: Designs Act, 1911 was changed by the Designs Act, 2000; Trade Marks, called the Trade Mark Act, 1999; the Copyright Act, 1957 was revised number of times, the latest is known as Copyright (Amendment) Act, 2012; and the recent amendments made to the Patents Act, 1970 in 2005. Other than this, plant varieties and geographical indications were also enacted in new legislations. These are called Geographical Indications of Goods (Registration and Protection) Act, 1999, and Protection of Plant Varieties and Farmers’ Rights Act, 2001 respectively.
Intellectual property rights have developed to a stature from where it plays an important role in developing economy globally, over the last fifteen years. In 1990s, laws and regulations were strengthened I this area by many countries unilaterally. In the multilateral level, there was enhanced protection and enforcement of IPRs to the level of solemn international commitment because of successful conclusion of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in World Trade Organization. It is felt strongly that under the competitive environment globally, stronger IPR protection rises the incentives for innovations and raises returns to international transfer of technology.
DEVELOPMENT OF TRIPS IN INDIA
The Development of World Trade Organisation was as a result of International trade calls and framework of trade calls for harmonization of several aspects of Indian Law relating to Intellectual Property Rights. The TRIPS agreement set minimum standards for protection for IPR rights and also set a time frame within which countries were required to make changes in their laws to comply with the required degree of protection. In view of this, India has taken action to modify and amend the various IP Acts in the last few years.
- Patents Act, 1970:
India after signing the TRIPS agreement and forming part of the Agreement establishing the World Trade Organization (WTO) for the purpose of reduction of distortions and impairments to international trade and promotion of effective protection of intellectual property rights, became signatory, the Patent act as amended time to time in the year 1995, 1999, 2002 and 2005 to meet its obligations under the TRIPS agreement. Further, it has been amended to support the various technological developments in India, to match with the development of the International intellectual property laws, India has also made amendments in the Intellectual property rights. The amendments were also aimed at making the Act a modern, harmonized and user-friendly legislation for protection of national and public interests along with fulfilling India’s international obligations under the TRIPS Agreement.
Subsequently the rules under the Patent Act have also been amended and these became effective from May 2003. These rules have been further amended by Patents (Amendment) Rules 2005 w.e.f 01.01.2005. Thus, the Patent Amendment Act, 2005 is now fully in force and operative.
- Trade Mark Act, 1999:
The law of trademarks is also now modernized under the Trademarks Act of 1999. A trademark is a special symbol for distinguishing the goods offered for sale or put in the market by one dealer from another. In India, the trademarks were protected for more than four decades as per the provisions of the Trade and Merchandise Mark Act, 1958. India joined the World Trade Organisation from its inception. One of the agreements in that related to the Intellectual Property Rights (TRIPS). In December, 1998 India acceded to the Paris Convention.
Also, The Trade Mark bill which was introduced in 1994, is the result of vast modification made in Trade and Merchandise Marks Act, 1958. The said modification can be called modernisation made for easy trading and commercial practices, to increase trading overseas by globalisation and bring investment from overseas and most importantly to make trademark management system as simple as possible and more recognition of the same in judicial system.
The bill could not be passed but pointed out the areas where the huge changes were required, thereafter the Trademarks Bill of 1999 was introduced with the fresh review of the required development in various area, such as trade and commercial practices, globalisation etc., the same was later passed in the Parliament and replaced with Trade and Merchandise Act, 1958 with assent of the President on the date of 30th December, 1999; the introduction of Trade Marks Act, 1999 has been proved to be very fruitful to India for going global in trade and commerce area.
The salient features of the Act mainly includes as follows:
- Earlier only goods and services covered was by the way of registration, but in this Act the infringement has broaden the meaning as it also includes unauthorised use of similar mark or confusingly similar mark where the goods and services which are very similar and create confusion or chance of confusion stands.
- Even though where the unauthorised use of trademark is made of any well known trademark of India and the interest of the owner is any way infringed, the action of infringement can be taken against the same.
- Further, it gave more power to police by authorising them to seize infringing material without any warrant issued.
- The Designs Act, 2000:
Science and technology started boosting up in the beginning of 20th century, and the urge to provide more reliable judicial system came in place for better protection of this field and for the protection of the industrial designs. The steps were required to be taken to promote more and more development in design industry by providing protection under registered design. Though it was very essential to protect the design only to the extent it was required and not any more than that and to allow use of available design for free too. The current Act is in line with the TRIPS agreement and therefore line with globalisation of trade and commerce.
The Industrial product basically includes two factors, i.e. artistic work and functioning part of the product. Though in Design Act only artistic work is covered and not functioning part of the product, though the artistic work should be unique and not usual. For example, table with for legs and top would not be considered as design, but the table with unique top and unique style of bottom can be registered.
Day by day industrial design becoming daily part of the life of the consumer by catching consumers eyes through unique designs. For the same reason, it has become essential to provide protection to such industrial designs.
The salient features of the Design Act, 2000 can be drawn as follows:
- definition of the terms “article”, “design” has been given vide scope.
- the scope is given to the term “prior publication”.
- Introduction of provision for delegation of powers of the Controller to other officers and stipulating statutory duties of examiners.
- Provision of identification of non-registrable designs.
- Provision for substitution of applicant before registration of a design.
- Substitution of Indian classification by internationally followed system of classification.
- Provision for inclusion of a register to be maintained on computer as a Register of Designs.
- Provision for restoration of lapsed designs.
- Provisions for appeal against orders of the Controller before the High Court instead of Central Government.
- Revoking of period of secrecy of two years of a registered design.
- Providing for compulsory registration of any document for transfer of right in the registered design.
- Introduction of additional grounds in cancellation proceedings and provision for initiating the cancellation proceedings before the Controller in place of High Court.
- Enhancement of quantum of penalty imposed for infringement of a registered design.
- Provision for grounds of cancellation to be taken as defence in the infringement proceedings to be in any court not below the Court of District Judge.
- Enhancing initial period of registration from 5 to 10 years, to be followed by a further extension of five years.
- Provision for allowance of priority to other convention countries and countries belonging to the group of countries or inter-governmental organizations apart from United Kingdom and other Commonwealth Countries.
- Provision for avoidance of certain restrictive conditions for the control of anticompetitive practices in contractual licenses.
- The Geographical Indications of Goods (Registration and Protection ) Act, 1999:
Geographical Indication is new in India and recently introduced result of the event where turmeric, neem and basmati were patented by persons outside India. To avoid letting outside misuse the Indian Geographical indications and indicating the goods are not basically indicated from Indian locality.
After such instance it became necessary to have legislation for registration and providing adequate protection to geographical indications. The bill introduced in the parliament and passed and with the assent of the president the Geographical indication of Goods (Registration and Protection) Act, 1999, came into force. The Act is administered by the Geographical Indication Registry under the jurisdiction of the Controller General of Patents, Designs and Trade Marks.
The salient features of this legislation are as under:
- Provision of definition of several important terms like “geographical indication”, “goods”, “producers”, “packages”, “registered proprietor”, “authorized user” etc.
- Provision for the maintenance of a Register of Geographical Indications in two parts-Part A and Part B and use of computers etc. for maintenance of such Register. While Part A will contain all registered geographical indications, Part B will contain particulars of registered authorized users.
- Registration of geographical indications of goods in specified classes.
- Prohibition of registration of certain geographical indications.
- Provisions for framing of rules by Central Government for filing of application, its contents and matters relating to the substantive examination of geographical indication applications.
- Compulsory advertisement of all accepted geographical indication applications and for inviting objections.
- Registration of authorized users of registered geographical indications and providing provisions for taking infringement action either by a registered proprietor or an authorized user.
- Provisions for higher level of protection for notified goods.
- Prohibition of assignment etc. of a geographical indication as it is public property.
- Prohibition of registration of geographical indication as a trademark.
- Appeal against Registrar’s decision would be to the Intellectual Property Board established under the Trade Mark legislation.
- Provision relating to offences and penalties.
- Provision detailing the effects of registration and the rights conferred by registration.
- Provision for reciprocity powers of the registrar, maintenance of Index, protection of homonymous geographical indications etc.
Copyright Act, 1957:
The Copyright Act, 1957 is one of the oldest existing intellectual property rights act. It has been amended quite a few times to align with global trade and commerce. The act relates to person creativity to, it protects the right of literary, artistic, musical works and sound recordings and cinematograph films. For instance, it provides the copyright to author for his lifetime and 60 years after his death. It does not required to be qualitative work for being eligible for the registered under this act, any unique work with very little in common with any other work can be considered as eligible for this purpose.
Under the copyright, the author not only get right to the authorship but also get right under which without his prior permission his work cannot be amended. If any amendment which may done against his will can be brought into the court by the author, and he can get order to recover any kind of damages and stop such act immediately.
A digital industry sees very big role of copyright, the computer programming was added in the Act in 1984 as literary work to give recognition to computer programming and provide protection to the same. Though, the separate definition was provided for the same later in 1994.
Introduction of the Computer programming created lot of confusion for the inbuilt programmes without which a computer cannot run, which could not be transacted for free with the computer. Later in 1999 with amendment, it was possible to allow selling computers and other similar equipments with the inbuilt programmes for free. It also ensured the growth of newly introduced internet.
- The Protection of Plant Varieties and Farmers’ Rights Act, 2001:
India has seen the growth in the industry of research of plant breeds, to give protection to researcher and to encourage their interest in discovering better breed of plants idea of the Plant Breeders’ Right came in existence. It promises to sustain agricultural progress, as having vast portion of land of India being agricultural land it is very essential.
In wake of TRIPS under Article 27 of it, it was necessary to give protection of plant varieties by patenting or by an effective sui generis system or by any combination thereof, to effect to the same the government introduced the Protection of Plant Varieties and Farmers’ Right Act, 2001, to encourage development of new breeds of plants. Though, the act requires to more investment in research in both private and public sectors for better research of discovering or developing new breeds. Further, it also promises to provide better growth in the seed industry and making available to the Indian farmers better quality of seeds.
- The Semi Conductor Integrated Circuits Layout Design Act, 2000:
In past three decades, information technology and digital industry has seen biggest development, the development also getting pace day by day, and can be called fastest growing sector of the century. The industry has seen significant change in electronic equipments, computers, telecommunication, etc. and also it has affected human life in the biggest manner by providing advancement in many ways. Microelectronics, which primarily refers to Integrated Circuits (ICs) ranging from, Small Scale Integration (SSI) to Very Large Scale Integration (VLSI) on a semiconductor chip – has rightly can be called the core, strategic technology world-over, especially for Information Technology (IT) based society. Integrated circuits require expertise knowledge and the effort to create one depends on complexity of the output. Hence, it is very necessary to cover the same under IPR and it is also necessary to encourage continue Research and Development in the field of microelectronics.
The copyright and patent was unable to provide enough meaning to the right due to restrictions by definitions and purpose of those acts are not sufficient to cover this type of complex right. As the concept of the originality is important, irrespective of the fact that the same is novelty or not unlike patent law which requires both original and novel. Whereas the copyright law was too general to accommodate the original ideas of scientific creation of Layout-Designs of Integrated Circuits. Due to the same, the necessity to provide protection for Layout-Designs of Integrated Circuits felt and to reward and encourage an adequate level of investment of human, financial and technological resources.
- Trade Secrets:
A confidential business information that provides a business an edge to a competition can be considered as Trade Secret. Such information can be both manufacturing and commercial secret.
A trade secret can be protected for an unlimited period of time but a substantial element of secrecy must exist so that, except by the use of improper means, there would be difficulty in acquiring the information. Considering the vast availability of traditional knowledge in the country, the protection under this will be very crucial in reaping benefits from such type of knowledge.
- Utility Models:
A utility model is an exclusive right granted for an invention, which allows the right holder to prevent others from commercially using the protected invention, without his authorization for a limited period of time. In its basic definition, which may vary from one country (where such protection is available) to another, a utility model is similar to a patent. In fact, utility models are sometimes referred to as “petty patents” or “innovation patents.”
Only a small but significant number of countries and regions provide the option of utility model protection. At present, India does not have legislation on Utility models.
The main differences between utility models and patents are the following:
The requirements for acquiring a utility model are less stringent than for patents. While the requirement of “novelty” is always to be met, that of “inventive step” or “non-obviousness” may be much lower or absent altogether. In practice, protection for utility models is often sought for innovations of a rather incremental character which may not meet the patentability criteria.
The term of protection for utility models is shorter than for patents and varies from country to country (usually between 7 and 10 years without the possibility of extension or renewal).
In most countries where utility model protection is available, patent offices do not examine applications as to substance prior to registration. This means that the registration process is often significantly simpler and faster, taking on an average six months.
Utility models are much cheaper to obtain and to maintain. In some countries, utility model protection can only be obtained for certain fields of technology, and only for products but not for processes.
Utility models are considered suitable particularly for SMEs that make “minor” improvements to, and adaptations of, existing products. Utility models are primarily used for mechanical innovations.
The “Innovation patent,” launched in Australia some time back was introduced as a result of extensive research into the needs of small and medium-sized enterprises, with the aim of providing a “low-cost entry point into the intellectual property system.”
To conclude, the various modifications and amendments to earlier Intellectual Property Laws are an indication of India’s move towards new IPR regime so as to prepare ourselves for the global trade competition.