1

Study on

Patents, trademarks, geographical indications

As a part of Intellectual property right

With relevant provision of WTO

For

Business Law

By

Renzil D’cruz

Web Presence:

about.me/renzilde

linkedin.com/in/renzilde

RenzilDe.com

Presented to

Anant Amdekar

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Index

Sr.no. Topic Pg. no.

1. Introduction

Intellectual property

The TRIPS Agreement

Economic benefits and costs of TRIPS

Importance of flexibilities

IPRs protection

3

3

6

6

7

7

2. WTO and WIPO

Understanding WTO agreement

8

9

3. Patents

Section 5 on Patents

Case Study :Apple vs. Samsung

Case Study :Pfizer’s Canadian Patent on Viagra

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17

21

4. Trademark

Section 2 on Trademark

Case Study : McDonald's Vs McClusky

Case Study : Red Bull wins trademark infringement case

23

31

33

33

5. Geographical indications

Section3 on Geographical Indications

Case Study :Meerut's scissor units get Geographical Indicator tag

Case Study : Tirupati laddu Wants GI tag

35

38

41

41

6. Conclusion 43

7. Abbreviations 48

8. References 49

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Introduction

Intellectual property

According to WIPO, Intellectual property (IP) refers to creations of the mind: inventions,

literary and artistic works, and symbols, names, images, and designs used in commerce.

Intellectual property (IP) is a legal concept which refers to creations of the mind for

which exclusive rights are recognized. Under intellectual property law, owners are granted

certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic

works; discoveries and inventions; and words, phrases, symbols, and designs. Common types

of intellectual property rights include copyright, trademarks, patents, industrial, trade dress,

and in some jurisdictions trade secrets.

Although many of the legal principles governing intellectual property rights have evolved

over centuries, it was not until the 19th century that the term intellectual property began to be

used, and not until the late 20th century that it became commonplace in the majority of the

world.

The innovations and creative expressions of indigenous and local communities are also IP,

yet because they are “traditional” they may not be fully protected by existing IP

systems. Access to, and equitable benefit-sharing in, genetic resources also raise IP

questions. Normative and capacity-building programs are underway at WIPO to develop

balanced and appropriate legal and practical responses to these issues. Example Traditional

Knowledge, Traditional Cultural Expressions/Folklore.

Intellectual Property Rights

Intellectual property rights are the rights given to persons over the creations of their minds.

They usually give the creator an exclusive right over the use of his creation for a certain

period of time. Intellectual property rights are customarily divided into two main areas:

copyright and rights related to copyright and industrial property.

The importance of intellectual property in India is well established at all levels- statutory,

administrative and judicial. India ratified the agreement establishing the World Trade

Organisation (WTO). This contains an Agreement on Trade Related Aspects of Intellectual

Property Rights (TRIPS) which came into force from 1st January 1995. It lays down

minimum standards for protection and enforce/.ment of intellectual property rights in member

countries which are required to promote effective and adequate protection of intellectual

property rights with a view to reducing distortions and impediments to international trade.

The obligations under the TRIPS Agreement relate to provision of minimum standard of

protection within the member countries legal systems and practices.

As an adjunct to the patent system, some countries have introduced utility models (or petty

patents). The novelty criteria for utility models are less stringent and are typically granted for

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small, incremental innovations. Their term of protection is far shorter than for “regular”

invention patents (typically four to seven years). Similarly, industrial designs protect the

ornamental features of consumer goods such as shoes or cars. To be eligible for protection,

designs must be original or new. They are generally conferred for a period of five to fifteen

years.

Having intellectual property laws is not enough. They have to be enforced. This is covered in

Part 3 of TRIPS. The agreement says governments have to ensure that intellectual property

rights can be enforced under their laws, and that the penalties for infringement are tough

enough to deter further violations. The procedures must be fair and equitable, and not

unnecessarily complicated or costly. They should not entail unreasonable time-limits or

unwarranted delays. People involved should be able to ask a court to review an administrative

decision or to appeal a lower court’s ruling.

The agreement describes in some detail how enforcement should be handled, including rules

for obtaining evidence, provisional measures, injunctions, damages and other penalties. It

says courts should have the right, under certain conditions, to order the disposal or

destruction of pirated or counterfeit goods. Wilful trademark counterfeiting or copyright

piracy on a commercial scale should be criminal offences. Governments should make sure

that intellectual property rights owners can receive the assistance of customs authorities to

prevent imports of counterfeit and pirated goods.

One can broadly classify the various forms of IPRs into two categories: IPRs that stimulate

inventive and creative activities (patents, utility models, industrial designs, copyright, plant

breeders’ rights and layout designs for integrated circuits) and IPRs that offer information to

consumers (trademarks and geographical indications). IPRs in both categories seek to

address certain failures of private markets to provide for an efficient allocation of resources.

The Agreement provides for norms and standards in respect of following areas of intellectual

property

Patents

Trade Marks

Copyrights

Geographical Indications

Industrial Designs

Patents:

A patent is a form of intellectual property. It consists of a set of exclusive rights granted by

a sovereign state to an inventor or their assignee for a limited period of time, in exchange for

the public disclosure of the invention. An invention is a solution to a specific technological

problem, and may be a product or a process.

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Patents are legal titles granting the owner the exclusive right to make commercial use of an

invention. To qualify for patent protection, inventions must be new, non-obvious, and

commercially applicable. The term of protection is usually limited to 20 years, after which

the invention moves into public domain. The patent system is one of the oldest and most

traditional forms of IPRs protection. Almost all manufacturing industries make use of the

patent system to protect inventions from being copied by competing firms. Since the early

1980s, patents have also been granted for agricultural biotechnology products and processes

and for certain aspects of computer software.

Trademark:

A trademark is a recognizable sign, design or expression which identifies products or services

of a particular source from those of others. The trademark owner can be an individual,

business organization, or any legal entity. A trademark may be located on a package, a label,

a voucher or on the product itself.

Trademarks are words, signs, or symbols that identify a certain product or company. They

seek to offer consumers the assurance of purchasing what they intend to purchase.

Trademarks can endure virtually indefinitely provided they remain in use. Almost all

industries use trademarks to identify their goods and services. The use of trademarks has

turned out to be of high significance in certain consumer goods industries, such as clothing

and watches.

Copyrights:

Copyright is a legal concept, enacted by most governments, giving the creator of original

work exclusive rights to it, usually for a limited time. Generally, it is "the right to copy", but

also gives the copyright holder the right to be credited for the work, to determine who may

adapt the work to other forms, which may perform the work, which may financially benefit

from it, and other related rights. It is a form of intellectual property (like the patent, the

trademark, and the trade secret) applicable to any expressible form of an idea or information

that is substantive and discrete.

Geographical Indications:

A geographical indication (GI) is a name or sign used on certain products which corresponds

to a specific geographical location or origin (e.g. a town, region, or country). The use of a GI

may act as a certification that the product possesses certain qualities, is made according to

traditional methods, or enjoys a certain reputation, due to its geographical origin.

Industrial Designs:

An industrial design right is an intellectual property right that protects the visual design of

objects that are not purely utilitarian. An industrial design consists of the creation of a shape,

configuration or composition of pattern or colour, or combination of pattern and colour in

three dimensional forms containing aesthetic value. An industrial design can be a two- or

three-dimensional pattern used to produce a product, industrial commodity or handicraft.

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The TRIPS Agreement

The TRIPS Agreement is a multilateral WTO agreement and, as such, applicable to all 158

members of the WTO. It is also binding for every country that accedes to the WTO. The

Agreement’s general obligations require countries to apply the principles of national

treatment (same treatment of foreign title holders and domestic title holders) and most

favoured nation treatment (same treatment of foreign title holders regardless of their country

of origin).

Unlike most other international agreements on intellectual property, TRIPS sets minimum

standards of protection with respect to all forms of intellectual property: copyright,

trademarks and service marks, geographical indications, industrial designs, patents, layout

designs of integrated circuits, and trade secrets. In respect of each of these areas of

intellectual property, the Agreement defines the main elements of protection, namely the

subject-matter to be protected, the rights to be conferred, and permissible exception to those

rights.

For the first time in an international agreement on intellectual property, TRIPS addresses the

enforcement of IPRs by establishing basic measures designed to ensure that legal remedies

will be available to title holders to defend their rights. The approach taken by the Agreement

is to set general standards on, among other things, enforcement procedures, the treatment of

evidence, injunctive relief, damages, and provisional and border measures.

Economic benefits and costs of TRIPS

The signing of TRIPS has generated much controversy about its economic implications for

developing countries. Proponents of the Agreement have argued that stronger IPRs will

stimulate creative industries in developing countries and promote foreign direct investment,

with an overall positive development outcome. Opponents of TRIPS have claimed that the

Agreement will forestall developing countries’ access to new technologies, lead to higher

prices and rent transfers from poor to rich countries, and impose high implementation costs in

resource-constrained environments. As always, the truth lies somewhere in between these

two polar views.

Developing countries indeed host inventive and creative industries that stand to benefit from

stronger IPRs. However, these industries can mostly be found in middle income countries,

rather than low income countries. The empirical evidence discussed above on the link

between FDI and IPRs, suggests that the mere strengthening of an intellectual property

regime is unlikely to result in a dramatic increase in inflows of foreign investment. At the

same time, past reform experiences suggest that stronger IPRs can positively impact on

domestic enterprise development and foreign investment, if they are complemented by

improvements in other aspects of the investment climate. By signalling a country’s

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commitment to internationally binding rules, TRIPS can make a positive contribution in this

regard—though it is difficult to assess the quantitative importance of this contribution.

Importance of flexibilities

Although the TRIPS Agreement lays the foundation toward higher standards of protection for

intellectual property rights on a global scale, it leaves its signatories with important

flexibilities in designing national IPRs regimes. It is important for governments to carefully

consider alternative ways of implementing provisions in the TRIPS Agreement that only set a

broad standard of protection and choose the options that are most suited to domestic needs.

For example, the criteria used for determining the novelty, non-obviousness, and usefulness

of patentable inventions can be defined differently across countries. Thus, a WTO member

may deny patent protection for, say, business methods that are frequently claimed to involve

only a minor inventive step. TRIPS also do not require countries to extent patent protection

to computer software as well as plants or animals.

Countries are free to override the exclusive rights of patents by granting so-called

compulsory licenses (government authorizations to use a patent without the patent holder’s

consent). TRIPS only require that compulsory licenses be considered on their individual

merits and that compensation be paid to rights holders.

In the area of copyright, TRIPS allows for important leeway in defining fair use exemptions

to strike a balance between the interests of copyright producers and the interests of the

general public.

IPRs protection:

■ Encourage and reward creative work the main social purpose of protection of copyright and

related rights is to encourage and reward creative work. This is also relevant to protection in

other areas (e.g. industrial designs and patents).

■ Technological innovation Intellectual property rights are designed to provide protection for

the results of investment in the development of new technology, thus giving the incentive and

means to finance research and development activities.

■ Fair competition the protection of distinctive signs and other IPRs aims to stimulate and

ensure fair competition among producers.

■ Consumer protection the protection of distinctive signs should also protect consumers, by

enabling them to make informed choices between various goods and services.

■ Transfer of technology a functioning intellectual property regime should also facilitate the

transfer of technology in the form of foreign direct investment, joint ventures and licensing.

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■ Balance of rights and obligations It should also be noted that the exclusive rights given to

the owners of intellectual property are generally subject to a number of limitations and

exceptions, aimed at balancing the legitimate interests of right holders and of users.

World Trade Organization

The World Trade Organization (WTO) is an organization that intends to supervise and

liberalise international trade. The organization officially commenced on January 1, 1995

under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade

(GATT), which commenced in 1948. The organization deals with regulation of trade between

participating countries; it provides a framework for negotiating and formalizing trade

agreements, and a dispute resolution process aimed at enforcing participants' adherence to

WTO agreements, which are signed by representatives of member governments and ratified

by their parliaments. Most of the issues that the WTO focuses on derive from previous trade

negotiations, especially from the Uruguay Round (1986–1994).

The organization is attempting to complete negotiations on the Doha Development Round,

which was launched in 2001 with an explicit focus on addressing the needs of developing

countries. As of June 2012, the future of the Doha Round remains uncertain: the work

programme lists 21 subjects in which the original deadline of 1 January 2005 was missed, and

the round is still incomplete.The conflict between free trade on industrial goods and services

but retention of protectionism on farm subsidies to domestic agricultural sector (requested by

developed countries) and the substantiation of the international liberalization of fair trade on

agricultural products (requested by developing countries) remain the major obstacles. These

points of contention have hindered any progress to launch new WTO negotiations beyond the

Doha Development Round. As a result of this impasse, there has been an increasing number

of bilateral free trade agreements signed.As of July 2012, there are various negotiation groups

in the WTO system for the current agricultural trade negotiation which is in the condition of

stalemate.

World Intellectual Property Organization

The World Intellectual Property Organization (WIPO) is one of the 17 specialized agencies

of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote

the protection of intellectual property throughout the world."

WIPO currently has 185 member states, administers 24 international treaties, and is

headquartered in Geneva, Switzerland. The current Director-General of WIPO is Francis

Gurry, who took office on October 1, 2008. 184 of the UN Members as well as the Holy See

are Members of WIPO. Non-members are the states of South Sudan, Cook Islands, Kiribati,

Marshall Islands, Federated States of Micronesia, Nauru, Niue, Palau, Solomon Islands,

Timor-Leste, Tuvalu, and the states with limited recognition. Palestine has observer status

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WIPO was formally created by the Convention Establishing the World Intellectual Property

Organization, which entered into force on April 26, 1970. Under Article 3 of this Convention,

WIPO seeks to "promote the protection of intellectual property throughout the world." WIPO

became a specialized agency of the UN in 1974. The Agreement between the United Nations

and the World Intellectual Property Organization

The predecessor to WIPO was the BIRPI (Bureaux Internationaux Réunis pour la Protection

de la Propriété Intellectuelle, French acronym for United International Bureaux for the

Protection of Intellectual Property).The Agreement marked a transition for WIPO from the

mandate it inherited in 1967 from BIRPI, to promote the protection of intellectual property, to

one that involved the more complex task of promoting technology transfer and economic

development.

Understanding WTO agreement

1. Intellectual property: protection and enforcement

The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS), negotiated in the year 1986-94 Uruguay Round, introduced intellectual property

rules into the multilateral trading system for the first time

2. The Nice Classification & India

The Nice Classification, administered by WIPO, is an international classification system for

the classification of goods and services for the purposes of registration of trademarks. It was

established by a multilateral treaty called the Nice Agreement Concerning the International

Classification of Goods and Services for the Purposes of the Registration of Marks, at the

Nice Diplomatic Conference held on June 15, 1957. It is regularly updated to include changes

and advances in technology and commercial practices. From January 1, 2012, the 10th edition

of the Nice Classification was adopted by the World Intellectual Property Organization

(WIPO) for the classification of goods and services for the purposes of registration of trade

marks.

3. Classification systems employed in other countries

Most jurisdictions employ some sort of classification system for goods and services. The

Nice Classification system is applied by around 150 countries in the world (member and non-

members) and by four regional organizations, viz., the African Intellectual Property

Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the

Benelux Organization for Intellectual Property (BOIP) and the European Union Office for

Harmonization in the Internal Market (Trade Marks and Designs) (OHIM).

However, even for jurisdictions which have adopted the Nice Classification, there are slight

differences as to its actual interpretation and implementation. OHIM regards the general

indications and other words of the International Classification (IC) as including not only the

goods they describe literally, but also goods ‘directly related’ thereto. Hence, each item

means more than the sum of its constituent words. Whereas, the UK Registry views the IC as

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simply a list of the goods claimed, and has no significance (for identical goods) beyond the

literal meaning of its constituent words.

In several jurisdictions, the changeover from a national classification system to the

international classification system has created problems in determining what is confusingly

similar. Some jurisdictions (e.g. Japan) have added their own sub-classification system to the

Nice Classification in order to facilitate in determining whether goods or services are

confusingly similar to each other.

4. Its nature as a classification tool

The Nice Agreement on the International Classification of Goods and Services was intended

to be a purely administrative tool for trademark offices without any legal significance. It does

not provide a basis for concluding the similarity of goods and services. However, the

classification system has greatly affected the adjudication of trademark rights due its analysis

and application in the likelihood of confusion by trademark offices and courts.

Taking into account the worldwide cultural differences, some wordings of the headings may

prove to be vague and imprecise. These customs, especially trade practices, are dynamic and

constantly changing. For instance, mobile phones nowadays combine many functions, from

being a communication tool & camera to a word processor & internet browser. The examiner

may sometimes come know about the customs in trade & practices only from the facts and

evidence submitted by the parties. Therefore, it is necessary to base the findings on the

realities of the marketplace, i.e. established customs in the relevant field of industry or

commerce, and not solely on the classification system.

5. Basis of the Nice Classification

The Nice Classification has been structured on the basis of some common characteristics of

goods/services. Many classes are organized according to their function, composition and/or

purpose of use which may be relevant in the comparison of goods/services.

6. Similarity of goods/services

Generally, items may be considered to be similar if they have some common characteristics.

In assessing the similarity of goods, all the relevant factors relating to those goods should be

taken into account, including both their nature as well as the commercial perspective

(intended purpose, method of use, and whether there is any connection between them)

7. Likelihood of confusion

Goods or services listed in the same class may not necessarily indicate similarity.

9. Indian scenario for classification of goods/services

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In the Indian context, the Nice Classification system seems to be inadequate in classifying

certain goods which because of their particular indigenous use, might cause confusion or

result in erroneous classification. In order to accommodate such variant use, the current

classification system needs to be modified / extended to make it more specific for India.

Some typical Indian goods, which cause confusion about the class they belong to, need to be

included in the classification system.

Patents

A patent is a legal monopoly, which is granted for a limited time by a country to the owner

of an invention. Merely holding a patent does not give the owner the right to use or exploit

the patented invention. That right may still be affected by other laws such as health and safety

regulations, food and drugs regulations or even by other patents. A patent, in the eyes of the

law, is a property right that can be given away, inherited, sold, licensed and even abandoned.

As it is conferred by the government, the government can in certain cases revoke the patent

(even after the grant of patent or even if it has been sold or licensed to another in the

meantime).

Product patent provides benefits to an inventor of a tangible object. It is granted for a

new process of manufacturing an already known product or for manufacturing a new product,

or for manufacturing more articles of the same product that is reducing the cost of the already

known product. For example, if a person creates a new computer chip, computer companies

that use that chip in their products must pay the inventor for every product sold.

Process patents are only granted to man-made processes. Natural processes that are

discovered, such as the laws of motion or physics, cannot be patented. A process can be

patented if it is a newly invented way of doing something. it is granted when a new product

has been invented by the person. The product so invented may either be e more or less useful

product than an already known product, or a new product altogether. The definition from the

Supreme Court is "a mode of treatment of certain materials to produce a given result.”

Example if any person find different process to separate pure gold from raw gold.

Process patent in respect of food, medicine or drug, and not product patent.

However, in respect of substance it intended for use or capable of being used as medicine, or

drug, except chemical substances which are ordinarily used as intermediate, patent can be

granted in the manner provided in the patent law

In respect of substances produced by chemical process including alloys, optical glass, semi

conductors and inter-metallic compounds, patents are granted only for the process of

manufacture but not for the substance thereof

Business method patents are a class of patents which disclose and claim new methods of

doing business. This includes new types of e-commerce, insurance, banking, tax compliance

etc. Business method patents are a relatively new species of patent and there have been

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several reviews investigating the appropriateness of patenting business methods. Nonetheless,

they have become important assets for both independent inventors and major corporations

A Patent gives an inventor the right for a limited period of time to stop others from making,

using, selling or importing the patented invention without the permission of the inventor.

That is why a patent is called a "negative right".

Patents are generally concerned with functional and technical aspects of products and

processes and must fulfil specific conditions to be granted.

Most patents are for incremental improvements in known technology - evolution rather than

revolution. The technology does not have to be complex.

Patent rights are territorial; an Indian patent does not confer any rights outside India.

Patent rights last for 20 years in India and also in most countries outside India.

Depending on where you wish your patent to be in effect, you must apply to the appropriate

body. In India, it is The Indian Patent Office. There are various Patent Offices around the

world. Alternatively, a Patent Agent can apply on your behalf.

India had already implemented its obligations under Articles 70.8 and 70.9 of TRIP

Agreement.

1. Legal Basis

The Patents Act 1970, as amended by The Patents (Amendment) Act 2005.

The Patents Rules, 2003, as amended by The (Amendment) Rules 2006.

The Patents (amendment) Act, 1999

The Patents (amendment) Act, 2002

The Patents (amendment) Act, 2005

Rules pertaining to Patents

The Patents (Amendment) Rules 2005

The Patents (Amendment) Rules 2006

The Patents Act, 1970, which is currently the law relating to patents in India, was

promulgated to encourage scientific research new technology and industrial progress. This

enactment is based on the U.K. Patents Act, 1949 in many respects, but also differs from it in

relation to drugs, medicines, product patents and licensing of patents.

The following would not qualify as patents

An invention which is frivolous or which claims anything obvious or contrary to the

well established natural law.

An invention, the primary or intended use of which would be contrary to law or

morality or injurious to public health a discovery, scientific theory or mathematical

method

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A mere discovery of any new property or new use for a known substance or of the

mere use of a known process, machine or apparatus unless such known process results

in a new product or employs at least one new reactant

A substance obtained by a mere admixture resulting only in the aggregation of the

properties of the components thereof or a process for producing such substance

A mere arrangement or re-arrangement or duplication of a known device each

functioning independently of one another in its own way

A method or process of testing applicable during the process of manufacture for

rendering the machine, apparatus or other equipment more efficient for the

improvement or restoration of the existing machine, apparatus or other equipment or

for the improvement or control of manufacturer

A method of agriculture or horticulture

A method or process for the medicinal, surgical, curative, prophylactic or other

treatment of human beings or any process for a similar treatment of animals or plants

to render them free of disease or to increase their economic value or that of their

products

An invention relating to atomic energy falling under the Atomic Energy Act, 1962

2. Filing a Patent Application

Any person, even if he or she is a minor, may apply for a patent either alone or jointly with

any other person. Such persons include the inventor, or his assignee or legal representative in

the case of an ordinary application or, in the case of a priority application, the applicant in the

convention country or his assignee or his legal representative. A corporate body cannot be

named as an inventor. Foreigners and nationals not living in India need an address for service

in India for this purpose. They may appoint a registered agent or representative whose

address for service can be the address for service in India.

Place of filing:

An application for a patent must be filed at the Patent Office branch within whose territorial

jurisdiction the applicant resides or has his principal place of business or domicile. A foreign

applicant must file at that Patent Office branch within whose jurisdiction his/her address for

service is located.

Priority:

Priority can be claimed from the earliest corresponding application in a convention country,

provided that the Indian application is filed within twelve months of the priority date.

Multiple and partial priorities are allowed.

Specification:

A priority application must be filed with a complete specification in the first instance but a

non-priority application may be filed with either a provisional specification or a complete

specification. Where a provisional specification is filed in the first instance, a complete

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specification must be filed within twelve months. Where two or more cognate provisional

specifications have been filed, they may be combined and all their subject matter may be

incorporated into a single complete specification to be filed within twelve months of the date

of the earliest filed provisional specification.

Naming of inventor(s):

As regards non-priority applications, the inventor(s) must be named in the application form.

As regards priority applications, a declaration as to inventor ship must be filed with the

application or within a period of one month.

Information of corresponding applications in other countries:

It is necessary at the time of filing a patent application in India, to inform the Controller of

the details of all corresponding applications in other countries and to undertake to keep the

Controller so informed up to the grant of the Indian application. Failure to do so could result

in the refusal of the application in case it is opposed, or even revocation of a patent in

proceedings before the High Court.

Eligibility

The 'true and first inventor' of the invention or his assignee or the legal representative of such

person may apply for an ordinary patent. A company or a firm cannot be termed as a 'true and

first inventor'. Also the 'true and first inventor' does not include either the first importer of an

invention into India or a person to whom an invention is first communicated from outside

India. The Government may apply for a patent.

If an employee makes an invention during his employment, he would be entitled to make an

application for a patent.

If an invention is made by an employee specifically employed in research and development,

it is presumed that the invention belongs to the employer.

The person applying for a patent may or may not be an Indian citizen.

Rights of the Patent

Right to use and exercise the patent: The patentee has the exclusive right to make use,

exercise, sell or distribute the patented article or substance in India or to use or exercise the

method or process if the patent is for a process. However, this right is exercisable during the

term of the patent only.

Right to transfer and surrender: A patentee has power to assign, grant licence (exclusive or

limited) or otherwise deal with the patent for any consideration.

Right to surrender the patent: Rights before sealing-during the period from the date of

advertisement of the acceptance of a complete specification and the date of the sealing of

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patent, the applicant can exercise all the privileges and rights of a patentee except the filing of

a suit for infringement.

Compulsory Licenses

A compulsory license, also known as statutory license or mandatory collective management,

provides that the owner of a patent or copyright licenses the use of their rights against

payment either set by law or determined through some form of arbitration. In essence, under

a compulsory license, an individual or company seeking to use another's intellectual property

can do so without seeking the rights holder's consent, and pays the rights holder a set fee for

the license.

The Patents Law stipulates that at any time after the expiration of 3 years from the date of

sealing of the patent, any person interested may make an application to the controller alleging

that the reasonable requirements of the public with respect to the patented invention have not

been satisfied or that the patented invention is not available to the public at reasonable price

and seek the grant of a compulsory licence to work the patented invention.

In March 2012, India granted its first compulsory license ever. The license was granted to

Indian generic drug manufacturer Natco Pharma Ltd for Sorafenib tosylate, a cancer drug

patented by Bayer. Non-governmental groups reportedly welcomed the decision

Revocation of Patents

A patent can be revoked by the High Court, inter alia, in the following circumstances:

The patent was granted on the application of a person not entitled to apply therefore

The patent was obtained wrongfully in contravention of the rights of any person

The invention is not new

The invention is obvious or does not involve any inventive step

The invention is not useful

The patent was obtained on a false suggestion or representation

3. Patent Publication

Publication takes place 18 months from the date of the application. Urgent publication is

possible on request on payment of fees. From the date of publication of the application for a

patent and until the date of grant of the patent, the applicant will have the like privileges and

rights as if a patent for the invention had been granted on the date of publication of the

application.

Pre-Grant opposition of patent application:

After publication but before the date of grant, anyone may file an opposition to the grant of a

patent, by way of representation.

4. Patent Examination

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Examination of application:

Both formal and substantive examinations are made by the Indian Patent Office. Examination

is by request.

Procedure:

An applicant is required to meet all the objections and requirements of the Patent Office

within a period of twelve months from the date of the first examination report (FER) issued

by the Controller. No extension of time is permitted. If a patent application is not put in order

in twelve months from the date of the FER, it lapses.

5. Grant of a Patent

The grant of an application is published in the Official Journal and is notified therein for post-

Grant opposition. A patent can be revoked within one year after grant by post-Grant

opposition proceedings before the Controller of Patents.

6. Post-grant Procedures

Revocation of a patent:

It is possible for a patent to be revoked on the grounds of: prior publication anywhere in the

world, public use or knowledge in India, lack of novelty with regard to the subject matter,

obviousness, lack of inventiveness, ambiguity, insufficiency of description of the invention,

fraud, false suggestion or representation that the person named as the inventor is not the true

inventor, lack of utility, non-patentability of subject matter (E.g. food, drug or medicine per

se, atomic energy, mere admixture, mere arrangement of known devices, process of testing,

method of agriculture or horticulture, process of medicinal treatment), failure to furnish or

falsity in information regarding corresponding applications in other countries supplied to the

Controller or that the invention is contrary to law or morality.

Annuities:

Except in the case of a patent of addition, for which no annuities are payable, annual renewal

fees must be paid during the life of an Indian patent, the first of such fees falling due at the

end of the second year of the life of a patent granted. Renewal fees due during the pendency

of the application are payable within a period of three months from the date the patent is

taken on record in the Register of Patents. Renewal fees for two or more years may be paid in

advance if the patentee so desires. A maximum extension of six months may be obtained on

payment of the prescribed penalty fees. If the renewal fee in question is not paid within the

extended period available, the patent will lapse.

Restoration:

A lapsed patent may be restored if an application for restoration is made within 18 months of

the date of lapsing of the patent, provided it can be shown that the lapsing of the patent was

unintentional and that there was no undue delay in making the application for restoration.

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Working of patents:

Every patentee and every licensee is required to furnish within three months from the end of

every calendar year, a statement as to the extent to which the invention has been worked in

India on a commercial scale in the preceding year. Non-filing of this statement is a criminal

offence.

Marking:

Marking is not compulsory but advisable as otherwise damages may be difficult to recover in

cases of infringement. The invention may be marked with the word “Patented” or “Patent”

accompanied by the number and year of the patent.

Infringement:

An infringement suit may be instituted by a patentee or his exclusive licensee. Every ground

for revocation is available as a defence and revocation can be counter claimed in

infringement proceedings. The Court may grant relief in respect of a valid claim or claims

even though one or more other claims in the suit may be held to be invalid. Relief may

include damages and costs as awarded by the court. A suit for injunction may be instituted

and damages recovered in cases where there have been groundless threats. Any person may

institute a suit for declaration as to non-infringement of a patent. The onus of proof of non-

infringement lies with the defendant.

SECTION 5: PATENTS

Article 27

Patentable Subject Matter

1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any

inventions, whether products or processes, in all fields of technology, provided that they are

new, involve an inventive step and are capable of industrial application. (5) Subject to

paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents

shall be available and patent rights enjoyable without discrimination as to the place of

invention, the field of technology and whether products are imported or locally produced.

2. Members may exclude from patentability inventions, the prevention within their territory

of the commercial exploitation of which is necessary to protect ordre public or morality,

including to protect human, animal or plant life or health or to avoid serious prejudice to the

environment, provided that such exclusion is not made merely because the exploitation is

prohibited by their law.

3. Members may also exclude from patentability:

(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;

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(b) plants and animals other than micro-organisms, and essentially biological processes

for the production of plants or animals other than non-biological and microbiological

processes. However, Members shall provide for the protection of plant varieties either by

patents or by an effectivesui generis system or by any combination thereof. The provisions of

this subparagraph shall be reviewed four years after the date of entry into force of the WTO

Agreement.

Article 28

Rights Conferred

1. A patent shall confer on its owner the following exclusive rights:

(a) where the subject matter of a patent is a product, to prevent third parties not having the

owner's consent from the acts of: making, using, offering for sale, selling, or importing (6) for

these purposes that product;

(b) where the subject matter of a patent is a process, to prevent third parties not having the

owner's consent from the act of using the process, and from the acts of: using, offering for

sale, selling, or importing for these purposes at least the product obtained directly by that

process.

2. Patent owners shall also have the right to assign, or transfer by succession, the patent and

to conclude licensing contracts.

Article 29

Conditions on Patent Applicants

1. Members shall require that an applicant for a patent shall disclose the invention in a

manner sufficiently clear and complete for the invention to be carried out by a person skilled

in the art and may require the applicant to indicate the best mode for carrying out the

invention known to the inventor at the filing date or, where priority is claimed, at the priority

date of the application.

2. Members may require an applicant for a patent to provide information concerning the

applicant's corresponding foreign applications and grants.

Article 30

Exceptions to Rights Conferred

Members may provide limited exceptions to the exclusive rights conferred by a patent,

provided that such exceptions do not unreasonably conflict with a normal exploitation of the

patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking

account of the legitimate interests of third parties.

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Case Study : Apple vs. Samsung

Over the course of the last few years, Apple has unleashed a slew of intellectual-property

lawsuits against Android device manufacturers such as: HTC, Motorola and of course, the

poster child of this continued litigation, Samsung. While IP lawsuits are nothing new in the

world of technology manufacturers, it has become glaringly apparent after the ban of the

Galaxy Tab 10.1 in Germany (back in September 2011) that this case could hold serious

repercussions for both parties and consumers alike.

Since then, the two mobile giants have been preparing for their trial case which is scheduled

for Monday, July 30. With no love lost between the two parties and the astronomical stakes at

hand, this case has all the makings of a landmark trial.

The Complaint

The case began over a year ago with Apple issuing an official complaint on April 15, 2011,

stating:

"Instead of pursuing independent product development, Samsung has chosen to slavishly

copy Apple's innovative technology, distinctive user interfaces, and elegant and distinctive

product and packaging design, in violation of Apple's valuable intellectual property rights."

The interesting thing about the complaint brought forth by Apple is its wording. Apple takes

as much issue with Samsung lifting design elements from their brand, as they do with the

core design of its operating system Android. Notably this greatly increases the significance of

this case, potentially making this case as much about Google as it is about Samsung.

Trade Dress Infringement

Apple introduces a number of trade dress infringement claims under 15 U.S.C. -- 1125 and 15

U.S.C. -- 1114. Trade dress is a form of intellectual property that basically refers to the visual

aesthetics of a product or packaging (including design elements) that signify the source of the

product with consumers. Basically meaning any iconic visuals that spur brand recognition

with the consumer, such as Apple's use of the prefix 'i' in their products (i.e. iPhone, iPod).

Namely this law is in place to protect the consumer from being confused into thinking that a

product has affiliation with another brand or company.

If you take a look at the case (which can be found here) it's apparent that some of these

individual claims are outlandish. For example, it's unlikely that Apple will try to sue

everyone who uses a tray that cradles their product so that it's visible when opening the

packaging. However, the important thing to understand is that the court will be looking at

these claims collectively; deciding if the overall appearances of Samsung's products

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(hardware, software, and packaging) are intended to create a connection between Apple

products.

Additionally it's worthwhile to note that Apple has a stronger claim with their second and

third trade dress claims than their first, due to the fact that they have already established

patents for the elements that are addressed in the claims. This means that Apple has already

convinced the US Patent and Trademark office that these elements are distinctive and

protectable. Again, it all comes back to whether or not the design of Samsung's products

could confuse the 'average' consumer into thinking that they are Apple products.

Infringement of design patents

In addition to the three prior trade dress claims, Apple also makes a number of design patent

claims that act somewhat similar to the previous claims made. The major difference between

the trade dress claims and patent claims is how they are legitimized, but regardless, both

claims ultimately raise the same question: is the protected device similar enough to the

product in question that it could potentially trick the consumer into thinking that there is a

connection between the two?

This question (while grossly oversimplified) is what the majority of the case will revolve

around, especially the portions that specifically target Samsung's designs.

Additional Patent Claims

While the majority of the case revolves around Samsung's designs, Apple has issued a

number of claims that deal with more technical claims revolving around Android-related

content. Most of these claims are related to small technical applications, but the major claim

of course is the one concerning patent #8,086,604: "the universal interface for retrieval of

information in a computer system" (a.k.a. their universal search function).

Damages

On July 24, Apple released information that outlined the proposed damages of Samsung's

alleged patent infringement at $2.5 billion. This would cover what Apple estimates are $500

million in lost profits, about $2 million form Samsung's "unjust enrichment", and $25 million

for other "reasonable royalty damages". These damages are also apt to grow if Samsung is

found to have wilfully infringed the patents, and Apple argues that Samsung "chose to

compete by copying Apple".

If Samsung is found guilty of infringing patents, one of two things could happen. Either

Samsung would be forced to stop selling the products that use the infringing elements or

Samsung would have to license these patents from Apple. If the latter is the case, Apple is

asking anywhere from $2.02 per unit of "over scroll bounce" techniques to $24 for more in-

depth patents.There is also a great deal of risk involved for Apple as well. If Samsung is to

win its counterclaim it could potentially cost Apple billions of dollars in licensing fees and

force them to remove products off their shelves. While this is unlikely, it certainly is not out

of the realm of possibility.

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At this point it seems rather unlikely that the two parties will be able to reach a form of

settlement; meaning that the 10 jurors (most of whom likely have little to no prior

understanding of software design and the patent system) will have the power not only to

determine liability, but to put a dollar figure on the amount.

Pfizer’s Canadian Patent on Viagra

The Supreme Court of Canada, on November 8, 2012, invalidated the Canadian Viagra patent

owned by Pfizer Canada Inc. (“Pfizer”), just one and a half years before its natural expiration

date. This decision on the popular erectile dysfunction (ED) drug has opened up a huge

market for generics and closed Pfizer’s exclusive monopoly.

The Supreme Court of Canada, by this ruling, has reinforced the fundamentals of patent law.

The court held that although the applicant knew about the specific active compound in the

drug, the claims did not pinpoint the exact compound that “induces penile erection in

impotent males.” This exact compound, sildenafil citrate, was mentioned along with many

others that do not cause the desired effect. Since complete disclosure is an important pre-

condition to the grant of patents, the court said that “if there is no quid (no written disclosure)

then there can be no quo (no protection)."

Teva Canada Limited (“Teva”), a generic company, applied to the Federal Court for a “notice

of compliance” in order to produce a generic version of Viagra, alleging that Pfizer’s patent

was invalid and did not meet the disclosure requirements. The Federal Court refused to issue

the notice of compliance (2009 FC 638, 76 C.P.R. (4th) 83). Teva appealed to the Federal

Court of Appeal. The Federal Court of Appeal also dismissed the appeal (2010 FCA 242,

[2012] 2 F.C.R. 69). Teva then appealed to the Supreme Court (2012 SCC 60).

Facts

Patent 2,163,446 (“Patent ‘446”) concerned the use of a “compound of formula (I)” or a “salt

thereof” for the treatment of ED. The formula (I) described in Claim 1, was capable of

generating 260 quintillion possible compounds. Claims 2 to 5 were for successively smaller

ranges of compounds of formula (I), with Claim 5 narrowed down to a range of nine

compounds. Claims 6 and 7 related to a single compound each. Claim 7 related to sildenafil,

the active compound in Viagra.

Although the patent included a statement that “one of the especially preferred compounds

induces penile erection in impotent males,” the patent application did not disclose that the

only effective compound, sildenafil, is found in Claim 7, or that the remaining compounds

had not been found to be effective in treating ED.

Teva argued that although Pfizer knew that sildenafil had much more activity than all the

other compounds listed in the specification (260 quintillion chemical compounds), it did not

disclose this fact. Sildenafil “was hidden like a leaf in the forest,” and therefore, Patent ‘446

should be held invalid for concealment and avoidable obscurity.

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Pfizer, on the other hand, submitted that there was no avoidable obscurity and it complied

fully with the disclosure requirements of the Act.

Legal Issue

The main issue before the Supreme Court was whether Pfizer’s patent met the disclosure

requirement of the Act.

Reasoning of the Supreme Court

The Supreme Court, after examining all the facts, reasoned that the invention was not

sildenafil, per se, but “the use of sildenafil to treat ED,” because this compound was already

known. In fact, Pfizer had been investigating sildenafil as a cardiovascular drug when it

stumbled upon its use in treating ED.

Pfizer had conducted tests to demonstrate that sildenafil was effective in treating ED, but

none of the other compounds in Patent ’446 had been shown to be effective in doing so.

Therefore, the invention was the use of sildenafil for the treatment of ED. This had to be

disclosed in order to meet the requirements set out in s. 27(3) of the Act.

The Supreme Court reasoned that whether or not a specification is sufficient depends on what

a skilled person would consider to be sufficient. The disclosure in Patent ’446 would not have

enabled a skilled person to work the invention because it did not indicate that sildenafil was

the effective compound. Even though a skilled reader can infer that in case of cascading

claims, the useful claim concerning a single compound is usually at the end, in this case, the

claims ended with two individually claimed compounds. There was no basis for a skilled

person to determine which of Claim 6 and Claim 7 contained the useful compound. Further

testing would have been required to determine which of those two compounds was actually

effective in treating ED.

Conclusion

The Supreme Court, while delivering its judgment, clarified that “sufficiency of disclosure

lies at the very heart of the patent system,” and the applicant must give the full information

that is necessary to work the invention.

The judge held that Pfizer deliberately concealed from the public the identity of the only

compound which produced the desired effect. This was contrary to the disclosure requirement

under s. 27(3) of the Act. The judge also held that the disclosure was insufficient because a

skilled reader having only the specification would not be able to put the invention into

operation, without further testing and experimentation. By a unanimous 7-0 judgment, the

Supreme Court allowed the appeal with costs and held that the patent was void.

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This judgment sends out a very strong message to patent applicants that adequate disclosure

in the specification is a precondition for the grant of patents.

Trademark

A Trade Mark is any sign which can distinguish the goods and services of one trader from

those of another. A sign includes words, logos, colours, slogans, three-dimensional shapes

and sometimes sounds and gestures.

A trademark is therefore a "badge" of trade origin. It is used as a marketing tool so that

customers can recognise the product of a particular trader. To be registrable in India it must

also be capable of being represented graphically, that is, in words and/or pictures.

The Trade Marks Act, 1999 has been enacted to amend and consolidate the law relating to

trade marks, but the Act has not come into force yet, thus the Trade and Merchandise Marks

Act, 1958 remains the Act currently in force. The Trade Marks Act, 1999 is more compliant

with the Trade Related Intellectual Property Rights (TRIPS) Agreement. The new Act will

bring many changes, some of which are as below

Providing for registration of trade marks for services, in addition to goods

Providing an Appellate board for speedy disposal of appeals

Providing enhanced punishment for the offences relating to trade marks

Filing of a single application for registration in more than one class of goods or

services

Increasing the period of registration and renewal from 7 to 10 years

The person claiming to be the owner of the trade mark must apply to the Registrar in the

prescribed manner. The application has to be made to the Trade Mark Registry within whose

territorial limits the principal place of business of the applicant is located.

An application shall not be made in respect of goods comprised in more than one prescribed

class of goods.

On filing of the application, the authorities conduct a search to ensure that the proposed

trademark is not similar or deceptively similar to existing and registered trademarks.

Thereafter, the Registrar may refuse the application or may accept it, subject to any

amendment / modification / condition / limitation, as the Registrar may deem necessary.

Upon receipt and acceptance of the registration application, the Registrar shall cause the

application advertised in the prescribed manner.

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If no opposition to the application is received (within generally three months from the date of

the application), or if the opposition is decided in favour of the applicant, the Registrar shall

register the Trade mark.

Registration of the Trade mark is not compulsory. However, without the registration the

owner of the Trade mark cannot bring an action for infringement of trade mark if it is copied

by others.

Trademarks Registration period

The registration of a trade mark is for a period of 7 years from the date of the application. It

can be renewed for successive periods of 7 years each.

Infringement of Trade mark

Application of any false trade mark or trade description to any goods or the act of sale or

possession of such falsely applied or used trade mark constitutes a criminal offence. The

punishment for various offences can be in the form of imprisonment for a period of six

months to three years along with penalty at the prescribed rates.The law also provides for

enhanced penalty for repetitive conviction.

Changes in the Indian Trade Mark Law

On February 8, 2007, India ratified its accession to the Madrid Protocol, a system for

international registration of Trade Marks. In order to bring into force the Madrid Protocol in

India, The Trade Marks (Amendment) Act, 2010 was passed on 21st September, 2010.

However, the Amendment Act has not yet been implemented, i.e., there has been no

notification from the government as to the effective date for the Amendment Act to come into

force. The important changes to be introduced by this Act are as follows:

1. The Trade Marks (Amendment) Act, 2010, incorporates a new chapter IV-A containing

special provisions relating to international registration of Trade Marks. An international

application may be made in India for extending the protection in the designated countries

within a period of 18 months.

2. The Trade Marks (Amendment) Act, 2010, also removes the discretion of the registrar to

extend the time for filing a notice of opposition for published applications and provides a

uniform time limit of four months in all cases.

Trade Marks Act, 1999

Some of the important features of the present Trade Marks Act, 1999, which was introduced

in India from September 15, 2003, are as follows:

Service Marks

A mechanism is available to protect marks used in the service industry. Thus businesses

providing services like computer hardware and software assembly and maintenance,

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restaurant and hotel services, courier and transport, beauty and health care, advertising,

publishing and educational services and the like are now in a position to protect their names

and marks. A service mark or servicemark is a trademark used in some countries, notably the

United States, to identify a service rather than a product.When a service mark is federally

registered, the standard registration symbol ® or "Reg U.S. Pat & TM Off" may be used (the

same symbol is used to mark registered trademarks). Before it is registered, it is common

practice (with some legal standing) to use the service mark symbol ℠ (a superscript SM).

"TM" and "SM" designations indicate that a person or entity claims rights in a particular

trademark or service mark. They do not indicate that the mark has been registered. Even

though a mark is not registered, a person or entity claiming ownership may place the "TM" or

"SM" designation next to it.

® This designation indicates that a mark is federally registered. It should only be used if the

United States Patent and Trademark Office has granted registration.

Examples of service marks are: McDonald's (restaurant services), Wal-Mart (retail business

services) and AT&T (telecommunications services.)

Collective Marks

A collective trade mark or collective mark is a trademark owned by an organization (such as

an association), whose members use them to identify themselves with a level of quality or

accuracy, geographical origin, or other characteristics set by the organization. Marks being

used by a group of companies can be protected by the group collectively.

Examples of collective trade marks include

The "CA" device used by the Institute of Chartered Accountants.

The mark "CPA", used to indicate members of the Society of Certified Public

Accountants.

The marks of various confederated lobby groups.

Well-known Marks

Marks which are deemed to be well-known have been defined by the Trade Marks Registry.

Such marks will enjoy greater protection. Persons will not be able to register or use marks

which are imitations of Well-known Trade Marks.

Famous marks are those that enjoy a high degree of consumer recognition. However, few

trademarks enjoy the status of “fame.” Examples of marks held to be famous in certain

jurisdictions include MACDONALDS, KFC, COCA-COLA, KODAK, WIMBLEDON and

APPLE.

Certification mark (Quality mark)

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A certification mark on a commercial product may indicates several things:The existence of a

follow-up or product certification agreement between the manufacturer of a product and an

organization with national accreditation for both testing and certification, Legal evidence that

the product was successfully tested in accordance with a nationally accredited standard,

Legal assurance the accredited certification organization has ensured that the item that was

successfully tested is identical to that which is being offered for sale,

Legal assurance that the successful test has resulted in a certification listing, which is

considered public information, which sets out the tolerances and conditions of use for the

certified product, to enable compliance with the law through listing and approval use and

compliance,

Example

ISI mark is a certification mark for industrial products in India. The mark certifies that a

product conforms to the Indian Standard, mentioned as IS:xxxx on top of the mark,

developed by the Bureau of Indian Standards

The BIS hallmark is a hallmarking system for gold as well as silver jewellery sold in India

certifying to the purity of the metal. It certifies that the piece of jewellery conforms to a set of

standards laid by the Bureau of Indian Standards, the national standards organization of India.

AGMARK is a certification mark employed on agricultural products in India, assuring that

they conform to a set of standards approved by the Directorate of Marketing and Inspection,

an agency of the Government of India.

Enlarged scope of registration

Persons who get their marks registered for particular goods in a particular class and

commence using their marks can sue and prevent other persons from:

(i) Using the same or similar marks even for different goods falling in other classes

(ii) Using the same or similar marks even only as part of their firm name or company name

(iii) Using the same or similar mark only in advertising or on business papers

(iv) Importing or exporting goods under the said Trade Mark

(v) Unauthorized oral use of the said Trade Mark

Stringent punishment

The punishment for violating a Trade Mark right has been enhanced. The offence has now

been made cognizable and wide powers have been given to the police to seize infringing

goods. At the same time the power of the Courts to grant expert injunctions have been

amplified.

Appellate Board

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An appellate board (IPAB) has been constituted (based in Chennai) for speedy disposal of

Appeals and rectification applications.

Expedited procedure

Mechanisms have been set in place for expediting search and registration by paying five

times the normal fee.

Enhanced renewal period

Registered Trade Marks need to be renewed every ten years.

License agreements do not need to be compulsorily registered.

1. Legal Basis

The Trade Marks Act, 1999

New Elements in the Trade Marks Act, 1999

The Trade Marks Rules, 2002

The law is based mainly on the United Kingdom Trade Marks law and provides for the

registration of Trade Marks which are being used, or which will be used for certain goods to

indicate a connection between them and some person who has the right to use the marks, with

or without any indication as to the identity of the person.

2. Filing a Trademark Registration in India

Application for registration:

An application for registration may be made by any person claiming to be the proprietor of a

mark but only as regards the particular goods or service in respect of which he/she is using or

proposing to use the mark. At the time of filing the application, the proprietor must have the

intention to use the mark himself/herself or though a registered user.

Foreigners and nationals not living in the country:

Such persons may be recorded as being registered proprietors of Trade Marks but they must

provide the Registry with an address for service in India, otherwise, they must appoint a

registered agent or representative.

Kind of marks:

The law provides for the registration of association trademarks, certification marks, defensive

marks and collective marks.

Registrability:

To be register, a Trade Mark application must contain or consist of the following essential

particulars

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The name of a company, individual or firm represented in a special or particular manner;

The signature of the applicant for registration or some predecessor in his/her business;

An explanation with sufficient precision, a description by words of the Trade Mark, if

necessary, and depiction of the graphical representation of the Trade Mark, which may be:

ne or more words having no direct reference to the character or quality of the goods and not

being, according to its ordinary signification, a geographical name, or a surname, or a

personal name, or any common abbreviation thereof, or the name of a sect, caste or tribe in

India;

Service marks: Registrable in India in eleven classes.

Priority:

Can be claimed from the earliest corresponding application in a Convention country provided

that an application is filed in India within six months of the priority date. Multiple and partial

priorities are allowed.

Classification:

The international classification of goods is used and separate applications must be filed for

goods falling in different classes. Classes 1 to 34 are available for goods; and classes 35-45

are available for services.

Territory Covered:

The Trade Mark legislation covers the whole of the territory of India, including the States of

Jammu and Kashmir and the territories of Goa, Daman, Diu, Dadra, Nagar Haveli and

Pondicherry.

3. Examination

Applications are examined to ensure that they comply with the requirements of the law and

that they do not conflict with marks which are already registered, or which are the subjects of

earlier pending applications.

Amendments:

An application may be amended provided the amendment does not constitute a major

alteration of the mark.

Ground for refusal:

Registration may be refused in respect of marks which are scandalous or obscene, which are

likely to deceive, cause confusion, or offend religious susceptibilities, which are contrary to

the law or morality, or which would otherwise be disentitled to protection in a court, which

are accepted chemical names or which are identical to other marks for the same goods or

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description of goods. In the case of identical marks, registration may however be allowed

upon proof that the mark was being used concurrently and in good faith.

Hearing: A hearing may be sought with regard to applications which the Registrar proposes

to refuse and an appeal may be made to the Intellectual Property Appellate Board against any

orders issued at a hearing.

4. Grant of Trade Mark & Protection

Opposition:

Applications that have been accepted are advertised in the Trade Marks Journal and

opposition may be filed within three months of the date of advertisement; an extension time

of one month for filing the opposition may be obtained upon application. The Register was

formerly divided into two parts. Part A contained the marks already registered under the

Trade Marks Act 1940, and all marks which were distinctive or had acquired distinctiveness

(satisfactory evidence to this effect must be produced) could be registered in Part A of the

Register. Part B contained marks which could not be registered in Part A or which were not

distinctive but were capable of distinguishing the goods of the applicants. Since 2003 this

distinction has been removed. There is now only a single register.

Duration of registration: Ten years, renewable for further periods of ten years each.

Renewal fees:

Must be paid before but not more than six months before the date of expiry of the last

registration; a mark may be restored within one year from the last date of renewal upon

application to the Registrar, either completely or subject to such conditions and limitations as

he/she may think fit to impose. A Trade Mark which has been removed from the Register for

non-payment of renewal fees can be cited against an application for registration during a

period of one year as from the date of removal.

Assignment:

A registered Trade Mark can be assigned with or without the goodwill of the business

concerned. An unregistered Trade Mark is not assignable without the goodwill of the

business concerned except if it is used in the same business as a registered Trade Mark and

assigned to the same person and along with a registered Trade Mark covering the same

goods.

Registered user:

The Central Government can refuse the registration of a registered user if it is against the

public interest or the development of industry, trade or commerce in India. Before doing so

the Central Government must disclose the facts and circumstances on the basis of which it

proposes to refuse the registration of a registered user and give the applicant an opportunity

of a hearing.

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Marking of goods:

The law does not prescribe that a registered Trade Mark, when used by its proprietor, be

described as such on the goods to which it is applied nor does it require that the proprietor's

identity be disclosed. Where a mark is used by a registered user, however, goods must be

marked in such a way as to disclose the identity of the registered proprietor and the fact that

the mark is being used by the registered user by permission of the registered proprietor. All

goods imported into or manufactured or assembled in India may be required to be marked in

such a way as to indicate their country of origin. Under Section 139 of the Act, the Indian

Government will, from time to time, issue notifications specifying the manner in which the

goods are to be marked.

Rectification for non-use:

The Register may be rectified (removal of a mark) in respect of a registered mark and one of

the grounds for applying for rectification is the non-use of a mark for a period exceeding five

years and one month before filing of the rectification application unless there are special

circumstances excusing non-use.

Infringement:

Suits may be filed against the infringement of registered marks and in any suit; registration

may be regarded as valid in all respects even years from the date of registration. Unregistered

Trade Marks with reputation in India or internationally Well-known Trade Marks can be

protected against misuse in a passing off action.

Trademarks have been defined as any sign, or any combination of signs capable of

distinguishing the goods or services of one undertaking from those of other undertakings.

Such distinguishing marks constitute protectable subject matter under the provisions of the

TRIPS Agreement. The Agreement provides that initial registration and each renewal of

registration shall be for a term of not less than 7 years and the registration shall be renewable

indefinitely. Compulsory licensing of trademarks is not permitted.

Keeping in view the changes in trade and commercial practices, globalisation of trade, need

for simplification and harmonisation of trademarks registration systems etc., a comprehensive

review of the Trade and Merchandise Marks Act, 1958 was made and a Bill to repeal and

replace the 1958 Act has since been passed by Parliament and notified in the Gazette on

30.12.1999. This Act not only makes Trade Marks Law, TRIPS compatibility but also

harmonises it with international systems and practices. Work is underway to bring the law

into force.

Trade Mark Classification of Goods and Services

Classification goods and services into different classes for the purpose registration of

trademarks enable systematic storage and retrieval of information.

31

However, in determining whether two or more trademarks are confusingly similar, it is

necessary to examine the nature of the goods or services. It is not sufficient to merely rely on

the class number under which those trademarks are registered.

Although the classification system was established as an administrative tool, it has been

playing an equally important role in evaluating the scope of rights and in determining

infringement disputes.

SECTION 2: TRADEMARKS

Article 15

Protectable Subject Matter

1. Any sign, or any combination of signs, capable of distinguishing the goods or services of

one undertaking from those of other undertakings, shall be capable of constituting a

trademark. Such signs, in particular words including personal names, letters, numerals,

figurative elements and combinations of colours as well as any combination of such signs,

shall be eligible for registration as trademarks. Where signs are not inherently capable of

distinguishing the relevant goods or services, Members may make registrability depend on

distinctiveness acquired through use. Members may require, as a condition of registration,

that signs be visually perceptible.

2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a

trademark on other grounds, provided that they do not derogate from the provisions of the

Paris Convention (1967).

3. Members may make registrability depend on use. However, actual use of a trademark shall

not be a condition for filing an application for registration. An application shall not be refused

solely on the ground that intended use has not taken place before the expiry of a period of

three years from the date of application.

4. The nature of the goods or services to which a trademark is to be applied shall in no case

form an obstacle to registration of the trademark.

5. Members shall publish each trademark either before it is registered or promptly after it is

registered and shall afford a reasonable opportunity for petitions to cancel the registration. In

addition, Members may afford an opportunity for the registration of a trademark to be

opposed.

Article 16

Rights Conferred

1. The owner of a registered trademark shall have the exclusive right to prevent all third

parties not having the owner's consent from using in the course of trade identical or similar

32

signs for goods or services which are identical or similar to those in respect of which the

trademark is registered where such use would result in a likelihood of confusion. In case of

the use of an identical sign for identical goods or services, a likelihood of confusion shall be

presumed. The rights described above shall not prejudice any existing prior rights, nor shall

they affect the possibility of Members making rights available on the basis of use.

2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In

determining whether a trademark is well-known, Members shall take account of the

knowledge of the trademark in the relevant sector of the public, including knowledge in the

Member concerned which has been obtained as a result of the promotion of the trademark.

3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or

services which are not similar to those in respect of which a trademark is registered, provided

that use of that trademark in relation to those goods or services would indicate a connection

between those goods or services and the owner of the registered trademark and provided that

the interests of the owner of the registered trademark are likely to be damaged by such use.

Article 17

Exceptions

Members may provide limited exceptions to the rights conferred by a trademark, such as

fair use of descriptive terms, provided that such exceptions take account of the legitimate

interests of the owner of the trademark and of third parties.

Article 18

Term of Protection

Initial registration and each renewal of registration, of a trademark shall be for a term of no

less than seven years. The registration of a trademark shall be renewable indefinitely.

33

Case Study : McDonald's attacks teen named "McClusky" over

trademark infringement

McDonald's has initiated a legal battle against 19-year-old Lauren McClusky over her

attempt to trademark the name of a charity festival.

McClusky,whose father is radio promoter Jeff McClusky, has held three annual fundraisers

for the Chicago chapter of the Special Olympics. The first year, she co-organized the festival

with a person whose name also began with the prefix Mc, so they dubbed it McFest.

After the third year, McClusky filed to make McFest into a registered trademark. McDonald's

responded by filing against the request. At first, McClusky said, she was "kind of honored"

that McDonald's had even noticed her event.

McDonald's financially supports the Special Olympics and has stated that it has no intention

of interfering with charitable fundraising.

McDonald's trademarks include McPen, McBuddy, McBurger, McDouble, McFree, McJobs,

McLight, McPool, McProduct, McRuler, McShades, McShirt, McWatch and the prefix "Mc."

Although McDonald's and McClusky have both expressed a desire for a peaceful resolution,

they remain in a standoff. McDonald's refuses to withdraw its complaint, and McClusky is

unwilling to accept McDonald's sponsorship for her event. Due to the work she has already

put into building local awareness and recognition of the fundraiser, she is also unwilling to

change the name.

Case Study : Red Bull wins trademark infringement case in the

UAE

The regional representative office of the original Austrian energy drink, has won a lawsuit

against a prominent local importer for selling a competitor product - Bullfighter - which was

found guilty of trademark infringement.

The importer was fined AED 15,000.

Red Bull is a registered trademark in the UAE. The Red Bull registered trademark reserves

exclusive rights to the product's distinctive logo, name, symbol and design, which identify

and distinguish it from other products. In this case, Red Bull argued that the competitor was

34

misleading customers into believing that its product was a Red Bull product or was endorsed

by Red Bull due to its similar name and packaging, and hence carried the benefits and

qualities that Red Bull offers.

Ultimately, the court took the view that the competitor had intentionally adopted a product

which appropriated part of the trade or reputation of Red Bull and had attempted to capitalise

on Red Bull's reputation, effective marketing and significant market share.

This decision serves as a warning to any business tempted to take advantage of the reputation

of a competitor's product by copying distinctive aspects of the brand.

Selim Chidiac, Red Bull's Regional Director, commented: "Red Bull strives to protect our

loyal consumers from being misled into purchasing products that do not conform to our

impeccable standards and high-quality stringent scientific testing.

"We would also like to congratulate the local UAE judicial system for how seriously they

treat trademark infringement cases. This is good news, both for the manufacturers, who stand

to lose revenue, and for consumers who are misled into purchasing products they believe to

be the genuine article, but which are in fact poor imitations." Chidiac added.

35

Geographical indications

A place name is sometimes used to identify a product. This “geographical indication” does not only

say where the product was made. A geographical indication is usually a place name giving the origin

of the goods to which it is applied. More importantly, it identifies the product’s special

characteristics, which are the result of the product’s origins. These goods usually have a quality which

can only be obtained if they are produced in the specified place, for example, because of the climate,

or local soil conditions, or quality of the water.

Geographical indications are mostly used in relation to agricultural products, but may also be applied

to other products which rely on human or other factors.Well-known examples include “Champagne”,

“Scotch”, “Tequila”, and “Roquefort” cheese. Wine and spirits makers are particularly concerned

about the use of place-names to identify products, and the TRIPS Agreement contains special

provisions for these products. But the issue is also important for other types of goods.

This is a fairly recent form of intellectual property protection, which was introduced to protect the

public from deception, whether deliberate or otherwise. It means, for example, that if you buy Scotch

whisky, you know that it is made in Scotland, and it not a product made in the same way as Scotch

Geographical indications are protected by International Treaties, and signatories of these treaties then

incorporate protection into their own national laws, either by amendment of existing laws, or the

creation of new ones. Geographical indications are therefore ultimately enforced under national law.

Some place names have, however, become synonymous with particular styles of product, regardless

of where they are produced, for example Dijon for mustard, and Cheddar for cheese, and so are not

protected as Geographical Indications.

Using the place name when the product was made elsewhere or when it does not have the usual

characteristics can mislead consumers, and it can lead to unfair competition. The TRIPS Agreement

says countries have to prevent this misuse of place names.

For wines and spirits, the agreement provides higher levels of protection, i.e. even where there is no

danger of the public being misled.

Some exceptions are allowed, for example if the name is already protected as a trademark or if it has

become a generic term. For example, “cheddar” now refers to a particular type of cheese not

necessarily made in Cheddar, in the UK. But any country wanting to make an exception for these

reasons must be willing to negotiate with the country which wants to protect the geographical

indication in question.

36

The agreement provides for further negotiations in the WTO to establish a multilateral system of

notification and registration of geographical indications for wines. These are now part of the Doha

Development Agenda and they include spirits. Also debated in the WTO is whether to negotiate

extending this higher level of protection beyond wines and spirits.

Place names (or words associated with a place) used to identify products (for example,

“Champagne”, “Tequila” or “Roquefort”) which have a particular quality, reputation or other

characteristic because they come from that place.

Why Are Geographical Indications Suddenly an Issue?

WTO Members and their nationals are increasingly recognizing that geographical indications,

like trademarks, are valuable as marketing tools in the global economy. Furthermore,

intellectual property owners are finding that protecting IP is no longer just a domestic

endeavour.

The Geographical Indications Act affords protection to goods that can be identified as

originating or manufactured in the territory of a country, or a region or locality in that

territory where a given quality, reputation or other characteristic of such goods is essentially

attributable to its geographical conditions. In the case where such goods are manufactured

goods, one of the activities of production, processing or preparation of the goods concerned

takes place in such territory or locality as the case may be. The term is initially for a period of

10 years and can be renewed from time to time.

Until recently India did not have a specific law governing Geographical Indications of goods,

which could adequately protect the interests of producers of such goods. Unless a

Geographical Indication is protected in the country of its origin, there is no obligation under

the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) for other

countries to extend reciprocal protection. In view of this, it was considered necessary to have

a comprehensive legislation for registration and for providing adequate protection for

Geographical Indications. Thus, the government enacted a pertinent legislation, namely, the

Geographical Indications of Goods (Registration and Protection) Act, 1999. The legislation is

administered through the Geographical Indications Registry under the overall charge of the

Controller General of Patents, Designs and Trademarks. This Act, along with the

Geographical Indications of Goods (Registration and Protection) Rules, 2002 came into force

on September 15, 2003.

A Geographical Indications Registry has been established in Chennai for the purpose of

administering the legislation. Appeal against the Registrar's decision would be to the

Intellectual Property Appellate Board established under the Trade Marks legislation.

1. Significance of Geographical Indication Registration

Such identification enables the product to gain a reputation and goodwill all over the world,

consequently resulting in premium prices in national and international markets.

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Recognition of a particular commodity as a Geographical Indication also confers the right to

protection under the Geographical Indication Act, 1999, thereby preventing an unauthorised

use of the commodity registered as GI by any third party.

Geographical Indication registration encourages community ownership and therefore it helps

in proper distribution of the economic benefits accrued from commercialisation of the

commodity across a wider section of people in that territory.

2. Registered Geographical Indications in India

A Geographical Indication signals that particular goods have originated from or are

manufactured in a particular territory. A classic example of an international Geographical

Indication is Champagne. The goods can be in any form, natural, manufactured or

agricultural. Some commodities that have been recently granted the status of a Geographical

Indication by the Government of India include Gir Kesar Mango, Bhalia wheat, Kinhal Toys,

Nashik Valley wine, Monsoon Malabar Arabica Coffee, Malabar Pepper, Alleppy Green

Cardamom and Nilgiris Orthodox Tea. Other examples include Darjeeling Tea, Mysore Silk,

Paithani Sarees, Kota Masuria, Kolhapuri Chappals, Bikaneri Bhujia and Agra Petha.

Each of the aforesaid commodities, which have been granted the status of Geographical

Indication, possesses distinct features related to their respective territories. For example,

Monsoon Malabar coffee has a yellowish tinge due to its exposure to the sea winds for nearly

six months in a year. Malabar pepper is grown exclusively in Thalassery and other northern

parts of Kerala. Its corns are larger than the typical black pepper corns with a dark brown

colour. It is very aromatic and pungent, and the most complex, balanced and elegant of

peppers.

The Alleppey green cardamom is the traditional grade that is internationally accepted. The

size, colour and chemical constituents of this grade of cardamom, with high oil content, set it

apart. The identity of this brand is interwoven with the geographical name Alleppey, a coastal

district in Kerala. Nilgiris tea has an exquisite flavour and aroma, accompanied by a creamy

mouth feel. These qualities are due to the high elevation of the Nilgiris coupled with its cold,

dry and misty weather.

GIs: Procedural Overview

Any association of persons, producers, organisations or authority established by or under the

law can apply for a Geographical Indication provided that the applicant must represent the

interests of the producers.

An application for registration of a Geographical Indication is to be made in writing, along

with the prescribed fees, and should be addressed to the 'Registrar of Geographical

Indications.' The application should include the requirements and criteria for processing a GI

application as specified below:

The class of goods;

The territory;

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The particulars of appearance;

Particulars of producers;

An affidavit of how the applicant claims to represent the interest in the GI;

The standard bench mark or other characteristics of the GI;

The particulars of special characteristics;

Textual description of the proposed boundary;

The growth attributes in relation to the GI pertinent to the application;

Certified copies of the map of the territory;

Special human skill involved, if any;

Number of producers; and

Particulars of inspection structures, if any, to regulate the use of the GI.

On receipt of the application, a number will be allotted. Thereafter, the application would be

examined to check whether it meets the requirements of the Act and Rules. For this purpose

the Registrar shall ordinarily constitute a Consultative Group of experts to ascertain the

correctness of the particulars furnished. After issuance of the Examination Report,

submissions of the applicant would be considered. If no further objection is raised, the

application would be accepted and would be advertised in the Geographical Indications

Journal. An opposition can be lodged within a maximum of four month from the date of

publication. If the opposition is dismissed, the application will proceed to registration in Part

A of the Register unless the Central Government otherwise directs.

SECTION 3: GEOGRAPHICAL INDICATIONS

Article 22

Protection of Geographical Indications

1. Geographical indications are, for the purposes of this Agreement, indications which

identify a good as originating in the territory of a Member, or a region or locality in that

territory, where a given quality, reputation or other characteristic of the good is essentially

attributable to its geographical origin.

2. In respect of geographical indications, Members shall provide the legal means for

interested parties to prevent:

(a) the use of any means in the designation or presentation of a good that indicates or

suggests that the good in question originates in a geographical area other than the true place

of origin in a manner which misleads the public as to the geographical origin of the good;

(b) any use which constitutes an act of unfair competition within the meaning of Article

10bis of the Paris Convention (1967).

3. A Member shall, ex officio if its legislation so permits or at the request of an interested

party, refuse or invalidate the registration of a trademark which contains or consists of a

geographical indication with respect to goods not originating in the territory indicated, if use

39

of the indication in the trademark for such goods in that Member is of such a nature as to

mislead the public as to the true place of origin.

4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical

indication which, although literally true as to the territory, region or locality in which the

goods originate, falsely represents to the public that the goods originate in another territory.

Article 23

Additional Protection for Geographical Indications for Wines and Spirits

1. Each Member shall provide the legal means for interested parties to prevent use of a

geographical indication identifying wines for wines not originating in the place indicated by

the geographical indication in question or identifying spirits for spirits not originating in the

place indicated by the geographical indication in question, even where the true origin of the

goods is indicated or the geographical indication is used in translation or accompanied by

expressions such as “kind”, “type”, “style”, “imitation” or the like.

2. The registration of a trademark for wines which contains or consists of a geographical

indication identifying wines or for spirits which contains or consists of a geographical

indication identifying spirits shall be refused or invalidated, ex officio if a Member's

legislation so permits or at the request of an interested party, with respect to such wines or

spirits not having this origin.

3. In the case of homonymous geographical indications for wines, protection shall be

accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each

Member shall determine the practical conditions under which the homonymous indications in

question will be differentiated from each other, taking into account the need to ensure

equitable treatment of the producers concerned and that consumers are not misled.

4. In order to facilitate the protection of geographical indications for wines, negotiations shall

be undertaken in the Council for TRIPS concerning the establishment of a multilateral system

of notification and registration of geographical indications for wines eligible for protection in

those Members participating in the system.

Article 24

International Negotiations; Exceptions

1. Members agree to enter into negotiations aimed at increasing the protection of individual

geographical indications under Article 23. The provisions of paragraphs 4 through 8 below

shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral or

multilateral agreements. In the context of such negotiations, Members shall be willing to

40

consider the continued applicability of these provisions to individual geographical indications

whose use was the subject of such negotiations.

2. The Council for TRIPS shall keep under review the application of the provisions of this

Section; the first such review shall take place within two years of the entry into force of the

WTO Agreement. Any matter affecting the compliance with the obligations under these

provisions may be drawn to the attention of the Council, which, at the request of a Member,

shall consult with any Member or Members in respect of such matter in respect of which it

has not been possible to find a satisfactory solution through bilateral or plurilateral

consultations between the Members concerned. The Council shall take such action as may be

agreed to facilitate the operation and further the objectives of this Section.

3. In implementing this Section, a Member shall not diminish the protection of geographical

indications that existed in that Member immediately prior to the date of entry into force of the

WTO Agreement.

4. Nothing in this Section shall require a Member to prevent continued and similar use of a

particular geographical indication of another Member identifying wines or spirits in

connection with goods or services by any of its nationals or domiciliaries who have used that

geographical indication in a continuous manner with regard to the same or related goods or

services in the territory of that Member either (a) for at least 10 years preceding 15 April

1994 or (b) in good faith preceding that date.

5. Where a trademark has been applied for or registered in good faith, or where rights to a

trademark have been acquired through use in good faith either:

(a) before the date of application of these provisions in that Member as defined in Part VI;

or

(b) before the geographical indication is protected in its country of origin;

measures adopted to implement this Section shall not prejudice eligibility for or the validity

of the registration of a trademark, or the right to use a trademark, on the basis that such a

trademark is identical with, or similar to, a geographical indication.

6. Nothing in this Section shall require a Member to apply its provisions in respect of a

geographical indication of any other Member with respect to goods or services for which the

relevant indication is identical with the term customary in common language as the common

name for such goods or services in the territory of that Member. Nothing in this Section shall

require a Member to apply its provisions in respect of a geographical indication of any other

Member with respect to products of the vine for which the relevant indication is identical

with the customary name of a grape variety existing in the territory of that Member as of the

date of entry into force of the WTO Agreement.

7. A Member may provide that any request made under this Section in connection with the

use or registration of a trademark must be presented within five years after the adverse use of

the protected indication has become generally known in that Member or after the date of

41

registration of the trademark in that Member provided that the trademark has been published

by that date, if such date is earlier than the date on which the adverse use became generally

known in that Member, provided that the geographical indication is not used or registered in

bad faith.

8. The provisions of this Section shall in no way prejudice the right of any person to use, in

the course of trade, that person's name or the name of that person's predecessor in business,

except where such name is used in such a manner as to mislead the public.

9. There shall be no obligation under this Agreement to protect geographical indications

which are not or cease to be protected in their country of origin, or which have fallen into

disuse in that country.

Case Study :Meerut's scissor units get Geographical Indicator tag

Now, with a Geographical Indicator (GI) status, Meerut's scissor industry has got a new lease

of life. Country's only scissor cluster has been blunted by the pirated versions of not so

reliable scissors manufactured elsewhere and sold as made in Meerut. The con has surpassed

borders to China that has been destination flooding the local market with its products.

Industry players believe that the recent initiatives by the government to revive the industry by

adorning it with a special GI status is expected to benefit it handsomely in the days to come.

City's scissor industry has roughly 60,000 people employed directly and indirectly. The size

of the scissor varies from six inches to fourteen inches and the prices range between Rs 50

and Rs 250.

The GI tag will not have any bearing on the prices of scissors. "The prices of the scissors will

not increase just because of the GI. Now, we will be able to save a lot because of the cluster

as all the requisite infrastructure will now be in one place under one roof. How-ever, the

scissors will be more authentic now."

Case Study : Tirupati laddu Wants GI tag

A scientist from Kerala has moved the Supreme Court challenging the grant of Indian patent

for ‘Tirupati laddu’ with the tag of ‘Geographical Indication’ (a temple offering). R.S.

Praveen Raj, working in the National Institute for Interdisciplinary Science and Technology,

Thiruvananthapuram, sent a letter in this regard to Chief Justice of India K.G. Balakrishnan

with a request that it might be treated as a writ petition.

He said the matter was about “the prejudice caused to Article 25 of the Constitution and the

violation of Sections 9(d), 11 and 9(a) of the Geographical Indication of Goods (Registration

and Protection) Act, 1999 in the action by the Controller-General of Patents, Designs and

Trademarks, Government of India and the Registrar of Geographical Indications to register

Tirupati Laddu as “goods’ under the Geographical Indication of Goods (Registration and

Protection) Act, 1999.

42

Mr. Raj said he was concerned at the potential devastation to the country “that is likely to

happen if private appropriation of religious symbols is allowed.”

The conferment of the GI tag on Tirupati laddu would ban others from making and marketing

laddus under the same name. “The GI status gives the Tirumala laddus a built-in legal

protection and makes any infringement of the rights an offence.”

According to him, the “GI Act is meant for the protection of ‘Goods’ only and the Act

defines ‘Goods’ as any agricultural, natural or manufactured goods or any goods of handicraft

or of industry. Food stuff is also included in the definition under Section 2(1)(f) of the GI Act

provided that such food stuff can be stocked, preserved and sold as goods.”

“Tirupati laddu cannot be classified as one among agricultural goods, natural goods or

handicraft, leaving an option to schedule it under industrial goods. But it is quite hard for

devotees to believe that temple offerings are equivalent to manufactured goods or

commercially significant commodities.”

Mr. Raj said: “Allowing GI registration of goods produced by private entities would defeat

the spirit of GI protection, which is meant for protecting, preserving and promoting collective

community rights as opposed to private monopoly rights growth. The GI tag on Tirupati

laddu also passes a wrong message to the public that temple prasadams are akin to ‘industrial

goods’.”

43

Conclusion

Copyrights, patents, trademarks, etc apply to different types of creations or inventions. They

are also treated differently.

Patents, industrial designs, integrated circuit designs, geographical indications and

trademarks have to be registered in order to receive protection. The registration includes a

description of what is being protected — the invention, design, brand name, logo, etc — and

this description is public information.

Copyright and trade secrets are protected automatically according to specified conditions.

They do not have to be registered, and therefore there is no need to disclose, for example,

how copyrighted computer software is constructed.

Other conditions may also differ, for example the length of time that each type of protection

remains in force.

We have conducted a survey to test knowledge on Intellectual Property(IP) and share on face

book where 20 participants have answered the poll. All participants were graduated from

various stream but studied basic of law during graduation.

In question one we asked about “novelty” in relation to a product or a process where most of

the audience is not aware about the right answer and shows insufficient knowledge on same

44

What is the meaning of “novelty” in relation to a product or a process?

20 answers

Not used

5 votes

25%

Not anticipated

3 votes

15%

Not published

6 votes

30%

All of the above

6 votes

30%

The owner of a patent can grant licenses:

20 answers

To registered companies only

1 vote

5%

To individuals only

4 votes

20%

To anyone

14 votes

70%

To anyone, but only after taking permission from the Controller General of Patents, Designs

and Trade Marks

1 vote

5%

A person develops a technique to demonstrate that energy cannot be created or destroyed.

Can this technique be patented?

20 answers

Yes

9 votes

45%

No

11 votes

45

55%

The role of the Trade Mark Registry is to:

20 answers

Register Trade Marks

11 votes

55%

Notify the Trade Mark owner in case of infringement of his registered TradeMark

4 votes

20%

Adjudicate Trade Mark infringement proceedings

4 votes

20%

All of the above

1 vote

5%

Which of the following can be registered as a Trade Mark:

20 answers

Descriptive word (e.g., superior, pure, perfect, etc.)

0 votes

0%

Word indicating a geographical origin

5 votes

25%

Invented or coined word

4 votes

20%

Used or proposed to be used mark

1 vote

5%

All of the above

2 votes

10%

Only 3 and 4

8 votes

40%

Which of the following would be a good Trade Mark:

20 answers

“Car Rentals” for car rental service

1 vote

5%

“Health Drink” for fruit juices

3 votes

15%

“Krystal” for window cleaner product

14 votes

70%

“Clean and Fresh” for laundry service

1 vote

5%

“Rental Homes” for rented apartments

46

1 vote

5%

The term 'Geographical Indications' could be used for:

20 answers

Agricultural goods

3 votes

15%

Natural goods

0 votes

0%

Manufactured goods

6 votes

30%

All of the above

10 votes

50%

None of the above

1 vote

5%

Geographical Indications are used to indicate:

20 answers

A geographical place

2 votes

10%

A link between some characteristic of the good and the particular region where it is produced

15 votes

75%

The origin of goods

2 votes

10%

The place where the goods are manufactured/produced

1 vote

5%

The sign used for a Geographical Indication may be:

20 answers

A name of a geographical place

3 votes

15%

A symbol

5 votes

25%

A map

1 vote

5%

All of the above

8 votes

40%

Only 1 and 2

3 votes

15%

47

If a T-shirt contains a label of “Made in India”, is it a Geographical Indication?

20 answers

No

10 votes

50%

Yes

6 votes

30%

Maybe

4 votes

20%

Which one of the following is not a Geographical Indication?

20 answers

Goa Feni

1 vote

5%

Nagpur orange

2 votes

10%

Indian Neem tree

14 votes

70%

Kolhapuri chappal

3 votes

15%

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List of Abbreviations

DSB Dispute Settlement Body

GATS General Agreement on Trade in Services

GATT General Agreement on Trade and Tariffs

IPR Intellectual Property Right

LDC Least-Developed Country

PTA Preferential Trade/Investment Agreement

TNC Transnational Corporation

TRIPs Trade-Related Aspects on Intellectual Property Rights

UNCTAD United Nations Conference on Trade and Development

WIPO World Intellectual Property Organisation

WTO World Trade Organisation

49

References

Trade-Related Aspects of Intellectual Property Rights

By Prof. Dr. Birgit Mahnkopf

Patent Protection, Transnational Corporations, and Market Structure: A Simulation

Study of the Indian Pharmaceutical Industry. By Fink, C. Journal of Industry,

Competition and Trade 1(1), pp. 101-121. (2001)

Trade-Related Intellectual Property Rights: From Marrakech to Seattle. By Fink, C. and

C.A. Primo Braga, In K. Deutsch and B. Speyer, Freer Trade in the Next Decade: The

Millennium Round and the World Trade Organization, (Rutledge), pp. 180-198.

The WTO’s Future Role within Global Economic Governance by Paul Dittmann in

Berlin School of Economics and Law – Institute of Management Berlin

Intellectual Property and the WTO

By Carsten Fink

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Web Reference:

Intellectual Property Law: Trademarks

http://www.indiainbusiness.nic.in/investment/trademarks.htm

Patents, Trademarks and Copyright

http://www.indiainbusiness.nic.in/investment/ipr.htm

Intellectual Property in India

http://ipindia.nic.in/tmr_new/default.htm

Intellectual Property Law: Patents, Trademarks and Copyright

http://www.alllaw.com/topics/intellectual_property

Intellectual Property Law: cases

http://www.rkdewan.com/

Intellectual property rights, the WTO and developing countries

http://www.mba-berlin.de/fileadmin/doc/CEEBS/Dittmannintellectualproperty.pdf

India — Patent Protection for Pharmaceutical and Agricultural Chemical Products

http://www.wto.org/english/tratope/dispue/casese/ds50e.htm

Protecting the Geographical Indication for Darjeeling Tea

http://www.wto.org/english/rese/bookspe/casestudiese/casestudiese.htm

Intellectual property: protection and enforcement

http://www.wto.org/english/thewtoe/whatise/tife/agrm7e.htm

IP Policy and Enforcement

http://www.uspto.gov/ip/global/index.jsp

Index of disputes issues

http://www.wto.org/english/tratope/dispue/dispusubjectsindexe.htm

About Geographical Indications

http://www.wipo.int/geo_indications/en/about.html