Registration and Protection of Designs in India

In India registration and protection of Designs are regulated by Designs Act 2000 and Designs rules 2001. Design is defined under Section 2 of Designs Act 2000 as only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual mechanical or chemical, separate or combined, 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 as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957(14 of 1957).  A design is prohibited from registration on the grounds mentioned under Section 4 of the relevant Act, i.e.,

a) that the design is not new

b) that it has been previously published in India or in any other country by publication in tangible form or by use in or in any other way prior to the filing date, or where applicable, the priority date, or where applicable, the priority date of the application for registration; or 

c) that it has been significantly distinguishable from known designs or d) comprises or contains scandalous or obscene matter.   Further, a design is subject to cancellation on the grounds mentioned under Section 19 of the relevant Act, i.e., a) that the design has been previously registered in India, 

b) that it has been previously published in India or in any other country prior to the date of registration or c) that the design is not a new or original design or c) that the design is not registrable under this Act; or 

e) that it is not a design as defined under clause (d) of section 2. 

Although in India design has not been classified further into categories according to Designs Act 2000, but it has been observed that Indian Courts classify the design in question into aesthetic and functional. An aesthetic design is one which is applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof. A functional design means any design applied to any article, whether for the pattern or the shape or the configuration thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied is to perform. In India the landmark judgment which acted as precedent for subsequent cases was passed in Bharat Glass Tube Limited v. Gopal Glass Works Limited. In this case the the Court gave interpretation of Section 2 (d) stating “Designs has been defined in Section 2(d) which means that a feature of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process. That means that a feature or a pattern which is registered with registering authority for being produced on a particular article by any industrial process whether manual, mechanical or chemical or by any other means which appears in a finished article and which can be judged solely by eye appeal.  The definition of design as defined in Section 2(d) read with application for registration and rule 11 with form 1 makes it clear that the design which is registered is to be applied to any finished article which may be judged solely by eye appeal. A conjoined reading of these three provisions makes it clear that a particular shape or a particular configuration is to be registered which is sought to be produced on any finished article which may be judged solely by eye appeal.[1] However the judgment passed in Interlego v. Tyco Industries,[2] the landmark British case which was pertaining to designs of toy bricks originated in Hong Kong and eventually was filed before the Privy Council in the United Kingdom acted as guiding principle for cases in India. In that the Privy Council observed that the bricks qualified for registered design protection, and thus did not qualify for copyright protection. Lord Oliver observed as follows -

“Inevitably a designer who sets out to make a model brick is going to end up by producing a design, in essence brick shaped. […] There is clearly scope in the instant case for that argument that what gives the Lego brick its individuality and the originality without which it would fail for want of novelty as a registrable design is the presence of features which serve only the functional purpose of enabling it to interlock effectively with the adjoining bricks above and below”.

The court further held that design drawings were a combination of both artistic and literary works. The written matter on such a drawing comprised the literary matter, and the graphics the artistic matter.

The only changes made to the drawings were alterations to some radii and to the dimensions of some elements. Lord Oliver further observed-

“Take the simplest case of artistic copyright, a painting or a photograph. It takes great skill, judgement and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no-one would reasonably contend that the copy, painting, or enlargement was an "original" artistic work in which the copier is entitled to claim copyright. Skill, labour or judgement merely in the process of copying cannot confer originality.”

In India designs are protected by two legal rights, they are as follow:

1)      Registered Designs

2)      Artistic Copyright

 

Design registration in India gives the owner, a monopoly on his or her design, i.e. the right for a limited period to stop others from making, using or selling the design without the owner’s permission and is additional to any design right or copyright protection that may exist automatically in the design.

           Under Section 6 

           (1) a design may be registered in respect of any or all of the articles comprised in a prescribed class of articles. 

        (2)Any question arising as to the class within which any article falls shall be determined by the Controller whose decision in the matter shall be final.

         (3)Where a design has been registered in respect of any article comprised in a class of article, the application of the proprietor of the design to register it in respect of some one or more other articles comprised in that class of articles shall not be refused, nor shall the registration thereof invalidated—

Under Section 7 the Controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in such manner as may be prescribed and thereafter the design shall be open to public inspection.

           Under Section 11when a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.

           To conclude with, a design is entitled to be registered and protected from being copied and applied on the same article and of the same class of articles which is not merely functional but has an aesthetic appeal to eye. At the same time a design is entitled of copyright which is absolutely original and has not been copied from any other class of articles.

By Ranidipa Ghosh

For Biswajit Sarkar

---

[1] 2008 AIR 2520

[2] [1989] AC 217

Licensing Agreement

A License is a contractual right that gives someone permission to do a certain activity or to use certain property that is owned by someone else. In an Intellectual property license, one company grants permission to another to use its Intellectual property, to which it has exclusive rights.

A License allows an intellectual property rights holder (the licensor) to create a business from an invention or creative work by charging a user (the licensee) for product use. It also helps to control, manage and protect the intellectual property.

In Intellectual property, Licensing agreement is a written contract under which the owner of a copyright, know how, patent, service mark, trademark, or other intellectual property, allows a licensee to use, make, or sell copies of the original. Such agreements usually limit the scope or field of the licensee, and specify whether the license is exclusive or non-exclusive, and whether the licensee will pay royalties or some other consideration in exchange. While licensing agreements are mainly used in commercialization of a technology, they are also used by franchisers to promote sales of goods and services.

A variety of such licensing agreements are available, which may be broadly categorized as follows:

·         Technology licensing agreement: By a technology licensing agreement the licensor authorizes the licensee to use the technology under certain agreed terms and conditions. It is, therefore, a contract freely entered into between two parties and contains terms and conditions so agreed. Therefore, if any Small and medium size enterprises (SME) is interested in improving the quality of its product or manufacturing a new product by using the rights owned by others in the form of a patent, utility model, or know how protected by a trade secret then acquiring such rights through a licensing agreement is the right solution.

·         Trademark licensing and franchising agreement: A trademark license is an arrangement by which the licensor consents to the use of its trademark by the licensee on agreed terms and conditions. A franchising agreement is granted by the franchisor to the franchisee to use its trademark and the franchised system. Therefore, if any SME is interested in marketing the product or service, and the brand (trademark) of that product, is owned by others or, entering and expanding the existing market for the product or service for which the SME owns the right conferred by a trademark then considering a trademark license or a franchise agreement is the right solution.

·         Copyright license agreements: The Copyright License Agreement is an agreement between the owner of the copyright in any existing work or the prospective owner of the copyright and the company or individual in any future work in writing to another person for a limited time. This license should not be mistaken with an assignment. Therefore, if any SME is interested in manufacturing, distributing or marketing the results of the literary and artistic efforts of creators or, entering a market or expanding or extending the existing market for the literary and artistic efforts of the enterprise, then considering a copyright license agreement is the right solution.

However, in practice, all or some of these agreements often form part of one single contract, since, it involves not only the intellectual property rights but many other rights also.

Under the Trademark Act 1999, the assignability and transmissibility of trademark are covered from Section 37 to Section 45.Section 37 of the said Act deals with the power of the registered proprietor to assign the trademark; and the assignability and transmissibility of registered and unregistered trademark whether with or without the goodwill of the business concerned is covered under Section 38 and Section 39 of the Act respectively. The registration of the assignment comes under the purview of Section 45 of the said Act.

In International context, a formal licensing agreement is possible only if the intellectual property right that is wish to license is also protected in the other country or countries, and, if the intellectual property is not protected in such other country or countries then the property would not be license and also there would be no legal right to put any restriction on its use by anyone else.

By Biswajit Sarkar

In Re EMC: Another Blow to patent troll

Hardly one year after passing of the American Invents Act which addressed some of the irritating habits of patents trolls now it is the turn of US Court of appeal for Federal circuit to address the menace of patent owners who uses patent litigation as a tool to make money from companies rather than entering into actual business.

On May 4^th 2012, the Court of Appeal issued a blow to all Non-practicing entities who files multi- defendant cases as an effort to avoid the requirements of the America Invents Act. The Court in this case held that “Joinder” is not appropriate in multi-defendant patent infringement cases where only commanlity is alleged infringement of same patents. 

Oasis Research LLC, the plaintiff in the original suit is the owner of four US patents which deals with off-site computer data storage by allowing home computer users to remotely connect to an online service system for purposes of external data storage. Oasis Research LLC files a Multi – defendant patent infringement claim against the petitioners (defendants in original suit) as they offer online backup and storage though various websites.

The petitioners filed motions before the Eastern Texas District Court to sever the claims and transfer them to various jurisdictions. The District court denied petitioners motions reasoning that claims of Oasis LLC satisfy the transaction or occurrence test of Rule 20 of Federal Rules of Civil Procedure.

Denying the reasoning given by the Texas Court, the Court of appeal points out that under the correct test of transaction or occurrence an existence of a single common question of law or fact alone is insufficient to satisfy the transaction- or- occurrence requirement. Thus mere fact that the infringement of same claims of the same patent does not support joinder, even though the claims would raise common questions of claim construction.

Further the joinder of independent defendants is only appropriate where the accused products are same in respect to the same patent. But commonality of patent alone is not sufficient to allow joinder. Commonality shall be supplemented with overlapping facts which give rise to each cause of action. Thus, if there is no actual link between underlying facts of each claim of infringement the independently developed products using differently sources are not to be considered as the part of the same transaction.

The 18 page ruling of the Court of Appeal is a serious financial blow upon the patent owners who count on using cheap litigation to win favourable settlements.

 By Nithin V Kumar

For Biswajit Sarkar

Intellectual Property Rights and its Relevance in India

In earlier times, the concept of property meant something tangible. Man used to be in possession of property and property became the source of wealth and status in the society for him. As time went by, property created by the scope of one’s intellect became what is known as Intellectual Property Right. The problem with Intellectual Property was that it was intangible in nature.

Property has always been a symbol of power and strength for every individual and that is why every individual tries to maximize his property.

A human being is the sole proprietor of his brains and even law gives him a proprietor right in it. Just as John Locke had pointed out, a person has his property, two things:-

1.         The person himself or to say the human body.
2.         The skill of doing labour with his body and the work of his hand.

Similarly, intellect too is an integral part of his personality and it plays vital role in deciding what works his body can engage into or what works his hands would do or in other words we can say that a person intellect is exclusively his own.

Every object whether it is material/ non material, owns its existence to ideas and hence to the origin of ideas, that is intellect. This also holds further that any property in the generic sense, which can claim a proprietary right, is called Intellectual Property.

Further, if intellect or intellectual works is one’s personal characteristic or property, then anything that is the outcome of this application of his intellect is equally his own. This provides the law to give a person the right to own what he has created or produced. And this proprietor right over a product produced out of his intellect is called Intellectual Property Right.

The Twenty First Century is a century of knowledge, indeed the centaury of the Intellect. A nation’s ability to translate knowledge into wealth and social good through innovation hold the key to creation as well as processing of knowledge consequently issues generation, evaluation, exploitation of Intellectual Property would become critically important all over the world. Intellectual Property can be characterized as the property in Idea or their expression. It’s a creation of mind for example:  A technological Innovation, a poem or a design. It protects the rights of individuals and business who have transformed their ideas into property by granting rights to the owner of those properties.

The need arose for laws to protect such kinds of Intellectual Property laws to protect the various forms of Intellectual Property like Trade Marks, copy Rights, Designs, Patent & Geographical Indication.

For instance Tata Nano car: The entire car and its innovative engineering are protected by patents. The name “TATA NANO is protected by Trade Marks”. The design of car has design protection and all the pamphlets made for advertisement of car are protected of copy right.

The rights have been modified and new provisions have been created in order to cover new areas of Science and Technology like Information Technology, Biotechnology and Non Service Sector.  It may be observed that World Trade Organization (WTO) agreement on Trade-Related Aspects of Intellectual Property Right( popularly known as TRIPS) has extended minimum standards for protection globally. Hence India is under a pressure to increase the level of Intellectual Property protection in its own regime, based on standards in developed countries.

There are various forms of IPR. The Trade Related Aspects of Intellectual Property Rights (popularly known as TRIPS) in the Agreement of the World Trade Organisation (WTO) recognises seven forms of IPR, namely, patents, designs, trademarks, copyrights, geographical indications, integrated circuits and trade secrets.

Patents: These are legal rights granted for new inventions employing scientific and technical knowledge. Example: A new drug for the treatment of AIDS and a new cell phone.

Industrial Designs: A design is an idea or conception as to the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, two or three-dimensional or both, by any industrial process or means which in the finished article appeal to and are judged solely by the eye or product. Examples: Designs as applied to shoes, TV, textiles.

Trade Marks: A trade mark is a visual symbol in the form of a word, device or label applied to an article of manufacture or commerce with a view to indicating to the public the origin of manufacture of the goods affixed with that mark .It distinguishes such goods from others in the trade. Examples: Coca Cola in soft drinks, SONY in electronic goods.

Copyrights: A copyright is basically the right to copy and make use of literary, dramatic, musical, artistic works, cinematographic films, records and broadcasts. It is a proprietary right and comes into existence as soon as the work is created. The concept had its origin in the Common Law. Subsequently it came to be governed by the statutory laws of each country. Examples: Poems, artistic drawings, paintings, computer / programs.

Protection for new plant varieties: TRIPS provisions of the WTO Agreement make it mandatory for member countries to provide protection for new plant varieties. Examples: New variety of rice or wheat. The provisions have given member countries two options for providing protection to new plant varieties —:

(i) Under the patent law itself and;
(ii) By a separate system (called Sui generis system).

Geographical Indications: These are indications that identify goods as originating in the territory of a country, a region or a locality in that territory, where a specific quality, reputation or other characteristic of the goods is essentially attributed to their geographical origin. Examples: Darjeeling tea, Kancheepuram sari.

Indian Government has taken a comprehensive set of initiatives to modernize the intellectual property administration in the country in view of the strategic significance assumed by intellectual property in the context of globalisation and liberalization of the Indian economy and the increasing administrative steps to create a modern and facilitative set up. The Designs Act, 2000, the Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act 1999 have already been enacted to harmonize the Indian IP administration with the global system. In the Ministry of Commerce and Industry, the office of the 'Controller General of Patents, Designs and Trade Marks (CGPDTM)' has been set up under the Department of Industrial Policy and Promotion.

It administers all matters relating to patents, designs, trademarks and geographical indications and also directs and supervises the functioning of :-

•     The Patent Office (including Designs Wing)
•     The Patent Information System (PIS)
•     The Trade Marks Registry (TMR), and
•     The Geographical Indications Registry (GIR)

Besides, a 'Copyright Office' has been set up in the Department of Education of the Ministry of Human Resource Development, to provide all facilities including registration of copyrights and its neighbouring rights.

As far as issues relating to layout design of integrated circuits are concerned, 'Department of Information Technology' in the Ministry of Information Technology is the nodal organisation. While, 'Protection of Plant Varieties and Farmers' Rights Authority' in Ministry of Agriculture administers all measures and policies relating to plant varieties.

For complementing the administrative set up, several legislative initiatives have been taken. It includes, the Trade Marks Act, 1999; the Geographical Indications of Goods (Registration and Protection) Act 1999; the Designs Act, 2000; the Patents Act, 1970 and its subsequent amendments in 2002 and 2005; Indian Copyright Act, 1957 and its amendment Copyright (Amendment) Act, 1999; Semiconductor Integrated Circuit Layout Design Act, 2000; as well as the Protection of Plant varieties and Farmer's Rights Act, 2001.

A human endeavour which promotes Social, Economical, Scientifical or Cultural Development of the society must be encouraged and the creator or the innovator needs to be rewarded by suitable legal protection for his intellectual creation. Consequently Intellectual Property Right are those legal rights which govern the use of creation of Human Brains. Protection of Intellectual Properties is a very critical element in the offshore business model. There have been many cases where companies have lost their position in the market due to the loss of intellectual property. Understanding the country’s IP Rights and following the best practices described in this paper can drastically reduce the risk of losing the company’s intellectual property. Commitment to protect the intellectual property of a company should be developed and nurtured at all levels of the organization.

The bottom-line is that India considers itself a responsible member of the WTO which suggests that international class IPR protection should be in place. For instance even Bill Gates, the chief executive officer of Microsoft Corporation, has distinguished India as a most promising base for software development. If such an IPR-conscious business leader like Gates is of this opinion, one can only conclude that India's IPR scene is no deterrent. And in near future India will formulate more effective law in order to cope up with new areas which are yet to come in the field of IPR. Intellectual Property Rights (IPRs) play an important role in the social, economic and cultural development of a society. Intellectual Property Rights in India (IPRs in India) are gaining lot of attention and importance in India. India has begun to see some positive results as awareness of the need for greater IP protection has increased. India must continue to improve its IPR protection, or risk being left behind as other countries in the developing world implement protections and build their own knowledge based economies.what is a patent.

By
Biswajit Sarkar

Trademark Attorney in India

Introduction

A Trademark is almost like the identity of a good or service. The name, symbol, mark or anything that distinguishes one good from another, can be a trademark. And for maintaining the unique identity of a good or service, it is essential to protect its trademark from being copied or being infringed upon. And that is where the expertise of a Trademark Attorney comes into use. And it is an upcoming profession in India, where more and more lawyers are venturing into the laws of trademark, patents and copyrights.

Trademark Attorney

A Trademark Attorney is a person who is expert in matters relating trademark laws and designs and practices and provides legal advice regarding the matter. He is a professional having extensive knowledge of trademarks and usually deals with court cases relating to Trademark.

Qualifications

In India, any person who has taken a course of study in the rules of practice in patent office i.e. trademark laws, has graduated from a law school and is a member of bar can be a trademark attorney. The attorney must be registered to practice trademark laws before the IPAB (Intellectual Property Appellate Board) or the trademark office and must also be registered to practice law in at least one of the states in India. He must also have passed the IPAB Trademark Law Bar Exam. Many attorneys may also have technical engineering degrees and they can practice law outside the trademark office.

Role of a Trademark attorney

A trademark attorney in India assists trademark holders in every way. They not only provide guidance and counsel on registration and subsequent use of trademarks but also make sure that a trademark does not infringe upon the rights of any other. They are also hired by big corporate companies and firms to provide assistance and guidance in matters relating to trademarks of the company.

A trademark attorney helps ensure that an application is properly registered with the applicable trademark office. During this process, the attorney generally advises his or her client on the probability of the application becoming a registered trademark. Also the attorney evaluates whether any risks are involved with adopting a certain slogan, word, or logo. The attorney also helps the client to check and ensure a potential mark or name does not violate the rights of any other person or entity. If the client decides to move forward with pursuing the mark, the attorney files the application and communicates with the trademark office as needed.

In an infringement or dilution case, a trademark attorney can represent either a plaintiff or defendant. In this role, the attorney must evaluate evidence and develop a theory of his or her client’s case. Other responsibilities include preparing and filing any appropriate paperwork with the court, facilitating the discovery process, and interviewing or deposing witnesses. If the case goes to trial, the attorney represents his or her client in court. If the case is settled outside of court, the attorney usually spearheads negotiations for his or her client.

There are quite a few different trademark attorney jobs available for someone with a law degree and a background in trademark or patent law. One common type of job is at a trademark office, reviewing applications for trademarks and assisting in research for potential infringement cases. An attorney with experience on trademarks can also work with clients interested in bringing a lawsuit against another party over trademark infringement. There are also trademark attorney jobs that involve assisting clients in filling out the paperwork necessary to officially register a trademark.

There are also trademark attorney jobs for lawyers and attorneys interested in working with clients and pursuing litigation. These jobs often involve representing clients in civil lawsuits, usually in suits brought against a defendant based on claims of trademark infringement. In these cases, there are typically trademark attorney jobs available for both the plaintiff and the defendant, and lawyers working in these types of jobs specialize in understanding the requirements of proving infringement.

Some trademark attorney jobs may also include working with clients, but are not directly involved in the adversarial process of civil litigation. These jobs often involve assisting clients with filing for official trademark registration. While the assistance of a lawyer is typically not required to file for registration of a trademark, it can often be helpful to ensure that a trademark will be registered. These trademark attorney jobs usually involve working with a client, reviewing paperwork, filing for registration on behalf of a client, and following up on a registration to ensure the satisfaction of the client.

Trademark attorney and Trademark Agent

Matters of trademark in India are governed by the TRADEMARK ACT, 1999 and the Trademark rules, 2002. The act doesn’t specify anything about a trademark attorney. Thus though it is not compulsory to appoint an attorney for application of a trademark but it is always advisable to do so since a trademark attorney is specialized in matters of trademark. Another person who can be approached for matters of trademark is the Trademark Agent who is described in the Trademark Act, 1999.

There is quiet a difference between a trademark attorney and a trademark agent. Trademark attorneys are lawyers who are members of the bar whereas agents are not lawyers. An agent is registered to practice trademark law before the IPAB of trademark office. He has to have successfully passed the IPAB Trademark Office Exam or has served for four years or more as a IPAB trademark examiner before entering private trademark practice. An agent specializes in registering trademark and practices before the IPAB trademark or Trademark Office, and does not practice law outside but since attorneys are lawyers, they can practice law outside the IPAB Trademark Office. Also they can charge high fees since they can negotiate contracts and represent their clients in court which an agent cannot do as he is not an attorney and thus his fee is also average.

The difference is a technical one. A Trademark Agent may draft and file a trademark application and conduct business with the Indian IPAB or Trademark Office. Once the trademark application has been placed, the agent may track the life of the application. The attorney may represent the application in court also.
In short, a trademark agent is a non-lawyer with a qualification in the trademark arena whereas an attorney is a lawyer with qualifications in the trademark arena.

Scope in India

In India, the status of a Trademark Attorney is not a recognized one. Any lawyer having knowledge about Trademarks can be a trademark attorney. They hold no better place in the legal field than any other lawyer. And most of their work revolves around registration of trademarks. The best job a trademark attorney can get is in a law firm which deals especially in intellectual properties or in corporate firms or companies, which require attorneys to take care of their intellectual issues. There are many reputed IPR law firms in India, which employ trademark attorneys to deal with matters of trademark, patents, copyrights, geographical indications and industrial designs.

They also play the role of private consultants who provide guidance about choosing the trademark, procedure of registration, importance of registration, paper works required, information about validity, renewal and advice regarding right available in case of infringements or other problems. Litigation lawyers also represent their clients in courts in cases of trademark infringement or other violations. The court proceedings take place according to the Civil Procedure Code (CPC).

But on the whole, the job of a trademark attorney is a very lucrative one, since the field of intellectual property i.e. trademarks, patents, copyrights, geographical indications and industrial designs is a less visited one. Common people generally don’t have much knowledge or interest in this field, especially in India. Thus it is required to have good and experienced attorneys to bail the common people out of the difficulties in this field of Intellectual Property.

By Anisha Pal

For Biswajit Sarkar

Need for Patent Registration & Patent Attorneys in India

Patents are the limited exclusive rights granted by the state for the inventor for his invention. It is an acknowledgement of the inventor’s idea. It is the reward given for the truthful disclosure of the working of the invention. This right is guaranteed for a period of 20 years from the date of filing the patent application. The object of invention need to be novel or new, contain inventive step and have utility. These are the important criteria necessary to pass for anything to be patented as per the Indian Patent Act, 1970. To be novel it must not have been anticipated through any prior publication anywhere. To be inventive it need to provide some technical or economical benefit and also not obvious to a person who has expertise in that field. Moreover this invention need to be have some kind of industrial usefulness that it brings commercial success to the inventor and also useful to the people. Again it is necessary that this invention should be patentable which implies that it must belong to certain category of subjects which are eligible to be provided with patents. So we can see that the patent obtaining is a very complex process as it needs to follow all these tests perfectly. But unlike the Copyright or Trademark the invention is not conferred with a Patent once it’s been created or is in use. For getting a statutory protection like patent it is an absolute necessity to get it registered.

Why so?

In the context of patents there is a concept called public domain which can be said in simple terms as everything outside the patent protection. It consists of all those materials which are free for everyone to use or destroy. As per the Patent Act, 1970 patent is granted only as per the Act. So if a patent is not obtained it simply means the invention or whatever just goes into the public domain. In the present situations, the development of new idea is the mantra. Innovation has been added to the essentialities of human survival. If one needs to stay then one needs to bring something new. The recognition of one’s intellectual knowledge is been attributed great importance as intangible property. But for this one need the recognition of law, that too for right person and at right time. Here comes the role of patents.

A patent, by providing various legal rights upon the inventor for his inventions, safeguards him when a question of ownership or any other kinds of problem arises. The primary benefit of holding a patent is that one can control who uses the patented invention and can usually charge people to use it. Unpatented technology can be used by anyone in any way, and the inventor has no legal ground to charge for use or to prosecute users.

The benefits of having a patent include:

1.   Jurisdictional benefit: The patents are territorial in nature and hence, the applications of the patents are to be filed in the local patent offices within the territory specified by the Act, even if any one of the co-inventor is domiciled in India. Hence jurisdictional problem is avoided.

2.   Rights available:  A patent grant gives the patentee the exclusive right to make or use the patented article. He can prevent all others from making or using the patented process also. A patentee has also the right to assign the patent, grant licenses under it, or otherwise deal with it for any consideration.

3.   Exclusive : As a patent gives exclusivity, the patent holder has time to market the invention without competition making him/her able to charge higher prices

4.   Right to sue: It gives the right to initiate legal action against anyone that is making or selling, without permission, the patent holder invention.

5.   Priority in Claims: It gives one priority over third parties wanting to register their patents in countries that do not require registration.

Thus, we can see that only if an invention has been registered as patent that all these benefits accrue to the inventor. Only if these benefits are available, that a person can avail legal protection.

Brief on how patents are applied:

·         The normal procedure for the application for patent is submitting of patent application form which includes the details about the inventor, small briefing about the invention and its usefulness and also declaration that the applicant is first and true inventor or so authorized by the true inventor along with a fee.

·         Next, the patent office does a search as to whether such inventions exist anywhere else.

·         If the said search is negative, the patent office notifies applicant to submit a detailed description of the invention along with the patent claims and specifications with a fee prescribed.

·         Upon analyzing the patent claims and specifications only the patent office grants the patents.

Role of Patent Attorney:

Therefore, it is solely upon the patent claims and specifications that the patent is granted. The drafting of patent therefore, needs to be very accurate and crafty. It requires a special knowledge and experience to draft such claims. Patent attorneys are the best persons for this work as they are legal people with specified knowledge. Patent attorneys are able to appropriately place a balance between the legal requirement and the patent claim which is technical in character. The whole process of obtaining patent is very legal and complicated. Henceforth, it is crucial that the claims and so called specifications which together determines what-all- are and to –what- limit the patent is made, are drafted in very neatly. Patents Attorneys  research upon whether the invention would be patentable, draft their claims and specifications, keep track with the status of application, also make sure that there happens no procedural default, thus ensuring that the inventor is ensured with the benefit of his invention within reasonable period. 

By

S.Deepika

For Biswajit Sarkar

Trade Mark Registration: Why it is Important?

Today Brands define a man's status. People go for those brands which promise them not only good quality goods but also good status. When a man enters a room, the reasons present there judge him based on the suit he is wearing- “is it Raymond?”- The brand of his watch- “wow its RADO” - the mobile phone he is using. Brands produced a new consumer culture, where the quality and credibility of goods and services where no longer judged by the traditional way, that is by really using it but by looking at the brand name. Brands project the personality of its source, if we put it in another way brands helps the consumers in identifying the source of the product. It is precisely for this purpose brands, or if we rather use the technical term, trademarks have been created.

This concept originated in the Middle Ages when craftsmen and merchants wanted to differentiate their products or services from those offered by competitors. Thus trademark simply means identity card of a company. This very reason makes trademark the most powerful Intellectual property concept. It cost company a lot of time, money and resources to build a credible trademark in the market. Trademark may be names, like well known mobile phone brand 'NOKIA' or famous service provider 'idea' with an inverted 'i' , it may be symbols, for example 'the apple' symbol of APPLE co.. Whatever form it may have it is the most powerful communication tool a company has to communicate with its consumers. A study conducted at Columbia University found that for consumer products and services, well-managed brands typically represent 50 to 80 percentage of the entire value of their companies. For business to business products and services, the percentages were lower but still significant - 20 to 30 percentage. Thus now we are in agreement to the fact that trademark is very important for a company. This importance of trademark makes it very vulnerable too, because there is a chance of others abusing your trademark, for their profit, by playing with your credibility and reputation. Nobody wants all of his/her efforts to go in vein and again if a trademark is to be protected in all the way the law can it is important to get it registered under proper authority. If you are not willing to protect your trademark there is no need for building one. Precisely because otherwise you won't be able to enjoy any of the following rights, which you will lose only because you didn't get it registered and trademark registration becomes important due to following reasons:

• Without registration, a latecomer may register a mark identical or similar to the company's mark, which may prevent the unregistered trademark owner to expand his business to other areas with the same trade mark or may block his attempt to register the trademark later. If you cannot stop your competitor from using a trade mark which is the same as or similar to yours, then your competitor may “get a free ride” on your reputation. In many cases, a reputation is the result of having high quality goods or services, providing superior service, or an effective marketing strategy. These usually involve a significant investment in money, time, and know-how.

• Trademark registration gives the trademark holder to file cases against trade mark violations or abuse of trademark like unfair comparative advertisement.

• Trademark registration establishes the presumptive right of the trademark owner to use the trademark throughout the country.

• For those companies that wish to expand internationally, the date of registration may be used as the priority date in other countries, if they are a member of an international treaty, such as the Paris Convention.

• Discourages others from using confusingly similar marks in the first place by making the mark easy to find in a trademark availability search, thereby preventing problems before they even begin.

• Protects against registration of confusingly similar marks.

• Entitles you to certain statutory damages in case of infringement of your trademark related rights.

By registering it becomes part of your valuable asset, and you can sell it, lease it, mortgage it, and transfer it.

By Aruna A.

For Biswajit Sarkar