Copyright Piracy In Design

With the advent of industrial development and competition in the global scenario the need to protect new and original designs is an absolute necessity. According to Section 2(d) of the Designs Act, 2000 “design” means only the features 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 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.

Designs which cannot be registered (Section 4 and 5 of the Designs Act, 2000)
 A design which is not new or original.
A design which is not significantly distinguishable from known designs or combination of known designs.
A design, which has been disclosed, to the public anywhere in the world prior to the filing date or the priority date of application.
 A design which comprises or contains scandalous or obscene matter; and
A design which is contrary to public order and morality.

Copyright is defined as the exclusive right to apply a design to any article in any class in which it is registered. The term of this copyright is 10 years and can be extended by 5 years on payment of prescribed fees before the expiry of the previous term. Thus a Copyright in design lasts for maximum 15 years after which it falls under the public domain. Copyright in an industrial design is governed by the Designs Act 2000. If a design is registered under that Act, it is not eligible for protection under the Copyright Act. In case a design which is capable of being registered under the Designs Act, but not so registered, copyright will subsist under the Copyright Act, but it will cease to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or with his license by any other person.

During the existence of Copyright the following acts lead to Copyright Piracy:

    1.  To publish or cause to be published or expose for sale any article covered by the registration to which either the design or any fraudulent or obvious imitation has been applied.

    2.   To apply or cause to be applied the design that is registered to any class of goods covered by the registration, the design or any fraudulent and obvious imitation thereof.

     3.  To import for the purpose of sale any article belonging to the class in which the design has been registered and to which the design or a fraudulent or obvious imitation thereof has been applied.

Remedies

The remedies available against infringement of copyright in design are
1.Injunction (temporary or permanent)
2.Damages or compensation

According to Section 22 of the Act, where a person commits an infringement, he will be liable for every contravention of the section to pay the registered proprietor of the design a sum not exceeding 25 thousand rupees. The total sum recoverable in respect of any one design will not exceed 50 thousand rupees.

If the proprietor elects to bring a suit for recovery of damages for any such contravention and an injunction against the repetition thereof, the infringer is liable to pay such damages as may be awarded and to be restrained by injunction accordingly.

Poulomi Paul

Biopiracy in patents

Bio-piracy as a concept.

Bio piracy is the practice by which ownership of biological products and processes are controlled by the process of patenting. It is essentially viewed as the monopolization of traditional knowledge and biological resources. Bio piracy is also regarded as “double theft” since it not only permits theft of creativity but also grants exclusive rights on the stolen knowledge. India was the first country to raise this vital concern of protection and preservation of traditional knowledge at the World Intellectual Property Rights Organization (WIPO).

Turmeric Case

In the year 1995 patent was granted to University of Mississippi Medical Centre U.S. Patent (5,401,504) on use of Turmeric in Wound Healing. This was an immense blow to Indian’s rich traditional and indigenous knowledge since turmeric has been in use since times immemorial as an anti-parasitic agent, blood purifier, treating common cold apart from being used as an essential ingredient in Indian cuisine. In 1996, The Council of Scientific & Industrial Research (CSIR), India, New Delhi requested the US Patent and Trademarks Office (USPTO) to revoke the patent on the grounds of existing of prior art. The documentary evidence of traditional knowledge proved the extensive use of turmeric in India. The patent was revoked in 1997, after establishing that there was no novelty.

Neem Case

When the European Patent Office revoked the patent granted to Neem, it was considered to be an advance development in the global fight against bio piracy. The EPO reversed its original decision of granting a patent jointly to the US Department of Agriculture (USDA) and US chemical major W R Grace.

Hence, in the wake of the numerous patent applications filed as in case of turmeric, basmati, neem etc. which are endangering India’s traditional knowledge, it is imperative that India takes a strong stance and does not succumb to the pressures created by the West.

Advantages of Trade Mark Registration

A trade mark generally can be a name or a word or numbers or symbol or a device or a shape of goods or packaging or combination of colours which is being used to identify and distinguish ones goods from those of others.  

It is to be mentioned here that, on the principle of trade mark law the registration of a trade mark is not mandatory but helpful when there is any legally proceedings against any kind of disputes on trademark. Trade mark ownership or legal action against trademark infringement. For a registered trade mark, these are the following benefits:

·         Protects the hard earned goodwill in the business of the proprietor

·         Provides an  right to use the trademark in relation to the goods and services

·         Provides the power to assign/license/transfer the trademark to other for royalty

·         Helps to get legal relief and damages after infringement or misuse of trademark

Registration enables the registered proprietor to sue for infringement of registered trade mark irrespective of the fact whether it is used or not used. Registration confers on the proprietor a monopoly right over the use of the mark. But, proprietary rights in a trade mark acquired by use are superior to rights obtained by registration under the Act.

In practice there is a colossal difference between the protection available to a registered trade mark and an unregistered trade mark.   Following are the benefits available to the registered trademarks:

·         Securing exclusivity

·         Protects the hard earned goodwill in market

·         Geographical coverage

·         Deterring and preventing others

·         Protecting yourself from infringement claim

·         Controlling the use of your brand by others

·         Securing the cooperation of third parties

·         Automatic right to sue before court of law

·         Legal ability to recover damages

Lastly, one of the very important issue is burden of proof – in case of a registered trademark the burden of proof (i.e. whether there lies a infringement or not) would be on the infringer and the owner of the trade mark.  

By: Casurina Chatterjee 

Microsoft is a Well-Known mark now; now declared!

Much debate revolves around which should be treated as a well-known mark, and which does not qualify for such “extended” protection. In a case of its own kind, the Delhi High Court has let Microsoft enjoy the celebrated status of being “well-known” amongst the public en masse.

The Plaintiff’s contentions that the company enjoys stellar reputation across the world, and enjoys a market at a global level, boasting of equally great volumes of usage have yielded in punitive damages being awarded in an ex parte case. With heavy investments having flown from the company into advertisements and brand management, the brand name is now exclusively identified and associated with the company.

The court relying on an earlier Supreme Court judgment in N R Dongre v. Whirlpool Corporation has held that Microsoft is a “well-known” trade mark, and that no one else is entitled to use the mark in a similar or dissimilar business as the mark had come to acquire unique goodwill and reputation.

The Court went on to hold that awarding punitive damages, is an appropriate vehicle for deterring infringers from engaging in illegal trade practices in their greed for business. The Court has awarded Rupees Two lakhs in terms of compensatory damages, Rupees Three lakhs in the form of punitive damages and another Fifty Thousand Rupees as costs to the suit.

With this, the brand name Microsoft joins the elite list of “well-known” marks, as maintained by the Registrar of Trade Marks. 

- Bagmisikha Puhan

###HASHTAG COCA-COLA###

Recently, the beverage giant Coca-Cola sought to register two hashtags as trademarks namely #cokecanpics and #smilewithacoke. These hashtags are being used on Twitter in connection with the company’s soft drinks. The company used the hashtag #cokejourney on Twitter to promote personal development among Coca-Cola fans.

Hashtags consist of the hash symbol (“#”) followed by a word or phrase. Hashtags are a useful way to categorize conversations within multiple platforms, including Twitter, Facebook and Instagram. A user clicks on the hashtag and can see the content posted by other users with the same hashtag.

Coca-Cola is not a pioneer in this area. There have been other companies who have applied to register hashtags as trademarks to protect their online campaigning. In 2014, a UK cheese company by the name Wyke Farms. They had sought to register an online competition ‘Free Cheese Friday’ as a trademark. The trademark is used only to protect the company’s online marketing campaigns.

The question that arises here is whether Coca-Cola will be able to register these two hashtags as trademarks. Hashtags can be registered like any other mark and the traditional rules apply. It certainly will be able to do so and it will be subject to how it plans to use these hashtags.  

- Nayanika Singhal

A Dotty Issue

A common problem ailing the fashion industry is copyright infringement over designs of clothing and footwear. Particularly, when retailers abroad create a piece of clothing which he might consider artistic and unique in one part of the world but in truth is already being protected under the Copyright laws in another far flung part of the world. Since ignorance of the law is no defense, these retailers have to pay the price, sometimes quite literally, for something they thought innocent.

The Olem Shoe Corp. v. Washington Shoe Corp is one such case. Olem Shoe Corporation (“Olem”) infringed Washington Shoe Company’s (“Washington Shoe”) copyrights in polka dot and zebra stripe women’s rain boot designs. The Eleventh Circuit Court relying on the certificate of registration determined that Washington Shoe’s copyrights for polka dots and zebra-striped designs are valid.

The question that arises here is of ‘willful infringement’ and if in such a case the infringer is liable to pay additional penalties. Infringement or active inducement of infringement is willful when it is done deliberately and intentionally, and with the knowledge of the existence of a copyright. The Eleventh Circuit Court held that Olem’s infringement was not willful, and thus not subject to enhanced statutory damages. The Court determined that Washington Shoe could not establish willfulness on a theory of Olem’s actual knowledge, because “there is no evidence that Olem knew of Washington Shoe’s copyrights and chose to violate them.” 

The case demonstrates that even simple designs may be protected under the law. It also demonstrates that ignorance on the part of a retailer will not protect him from copyright infringement liability.

-- Nayanika Singhal

Noodle Restaurant in a Soup

The city of San Francisco hosts two restaurants namely ‘Chubby Noodle’ and ‘Fat Noodle’. When the owners of Chubby heard of a restaurant to be named ‘Fat Noodle’ they sued them for trademark infringement. Chubby claimed that Fat Noodle was “confusingly similar” to its trademarked ‘Chubby Noodle”.

Chubby in its claims alleged that the words ‘chubby’ and ‘fat’ are in fact synonyms and notes that both restaurants’ logos incorporate a stylized bowl with noodles in the bowl. Fat Noodle, on the other hand, claims that the concept for the restaurant was conceived in 2008 which was long before Chubby existed.

Now if the aim of Chubby is to block all restaurants with their names which are synonyms of chubby, it is petty and silly to say the least. The objective of trademarks is not to breed pettiness but to actually protect unique creations. The San Francisco courts will have a huge “chow down” in their Courts soon.

-- Nayanika Singhal