INTELLECTUAL PROPERTY ACT

Submitted By:Udit JainVanshika GuptaSonakshi GovilShruti MittalSunita SahuSreevatsan Natrajan

Definition

Creations of mind for which exclusive

rights are recognized.

Exclusiv

e Rights

Intangible

assets:Musical

Literary

artistic works

discoveries and

inventions;

words

phrases

symbols

designs

Stated objective “Promote progress”

Financial Incentive

Mutual Benefit

Includes

Copyright

Trademarks

Patents

Layout of integrated circuit design

Industrial design rights

Trade dress

Trade secrets

CASE :

YAHOO vs.

SUPER

CASSETTES

INDUSTRIES

In Super Cassettes Industries Ltd. V Yahoo Inc. the Honorable High Courtof Delhi On Friday, May 30th 2008 issued notice to Yahoo Inc. and itsIndian subsidiary Yahoo Web Services (India) Pvt. Ltd on a suit filed bySuper Cassettes Industries Limited (SCIL) owner of the largest Indianmusic label "T-Series" for infringement of their copyright caused byunlicensed streaming of SCIL's copyright works on Yahoo's portalvideo.yahoo.com

Hima Kohli J. passed an order that the defendantis restrained from reproducing, adapting, distributing

or transmitting in any manner on its website, `www.video.yahoo.com’ or otherwise infringing

in any manner, the cinematograph films, sound recordings and/or the underlyingliterary or musical works of the plaintiff,in which the plaintiff claims copyright,

without obtaining an appropriate licensefrom the plaintiff.

Similar case was filed against Youtube.Com by the plaintiff and injunctive orders were issued by

the court.

CASE :

Oxford University Press , Press Of The

Cambridge University, Cambridge

University Press India Pvt. Ltd,

Informa UK Ltd vs.

Rameshwari Photocopy Services and

The University of Delhi

The defendants (i.e. Rameshwari Photocopy shop and

Delhi University) are accused by the plaintiffs that they

regularly compiles up the data from copyrighted books and

make them available to students.

• Plaintiffs whereas in this case say that “publishers are not

charity house” and questions the system ''why publishers

should be giving out their works for free” as they have also

paid the authors of the books enough money to sell their

written material.

• Also plaintiffs have asked for money relief that amounts for

around Rs.60,01200 for court fees and jurisdiction and

Rs.65000 for court fees

In October 2012, the court passed a stay order on the production of course pack. In March this year ASEAK was formed to protect the interest of the students. In April this Year (2013), during the hearing, the students pleaded for rejection of the stay order on the sale of course pack as the exams were near. But the judge rejected their plea and the stay order remained

Case: Rogers vs Koons

Art Rogers:

Photographer

Jeff Koons: Artist

Outcome

Similarities between the 2 images

Koons defence was rejected

Koons was forced to pay a monetary

settlement to Rodgers.

Significance

Can you build upon another’s work to create

your own original piece?

It also brought up the issue of photography as

art, was photography just a documentation of

the world, or is it a creative and artistic

product?

Case: Don Vs Don2

Brief

allegations of criminal breach of trust and misappropriation of property levelled by the makers of the 1978 film Don against the makers of the 2011 film 'Don 2'.

In 2011, Nariman Films partner Nadir Irani filed complaints against 'Don 2' co-producers RiteshSidhwani, Farhan Akhtar and Shah Rukh Khan.

Irani's contention was Nariman Films gave remake rights only for the first instalment of 'Don', which released in 2006. Irani said the agreement expired in 2009 and that the makers had no right to make 'Don 2'.

Director Farhan Akhtar's father Javed, who

was a close friend of the Iranis, convinced

them to part with the remake rights.

Nariman Films filed a civil suit alleging

that Don 2 violated copyright laws by adopting

the original Don's signature tune, songs, script,

characters and music.

Ahead of Don 2's release in December

2011,Irani approached the High Court seeking

a stay on the film. The court did not grant the

stay, saying theatres had already been

booked. The company then filed a private

complaint against the 'Don 2' production team,

seeking the filing of an FIR.

Magistrate ask the police to first investigate the

case and submit a report.

Verdict

The complaint also names Red Chillies,

Reliance Entertainment, Baba Arts, Bipin

Salva and 10 others.

The dispute ended only when the two parties

agreed for an out-of-court settlement.

The Trade Marks

Act,1999

Introduction

Section 2 (1) (zb) of the Act defines a ‘trade mark’ as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

Section 2 (1) (m) of the Act defines ‘mark’ as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

Importance

Trademarks do not prevent competition in a particular type of product but confer a monopoly in the mark. Competitors are only prevented from using the same or similar mark to identify their product.

The importance of trademarks lies in their association with quality and consumer expectations in a product or service. They can be seen as serving four main purposes:

First, identifying the product of its origin,

Secondly, advertising the product/service and lending it a brand name,

Thirdly, protecting the business’ reputation and goodwill, and

Fourthly, protecting consumers from deception, that is to prevent the buying public purchasing inferior goods or services in the mistaken belief that they originate from or are provided by another trader.

Trade Marks infringement

Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees.

Trademark infringement occurs if a person other than the registered proprietor in the course of trade, in relation to the same good or services for which the mark is registered, uses the same mark or a deceptively similar mark. This particularly harms the goodwill of a brand if its trademark is well-known.

The laws relating to trade mark infringement are enshrined under Section 29 of the Trade Marks Act, 1999.

Pantaloons vs. Shoppers’ Stop

Shoppers’ Stop and Lifestyle dragged their rival Pantaloon to court as they were miffed with an advertisement issued by the flagship company of Kishore Biyani owned Future Group that offered 10% extra discount to their loyal customers vide an advertisement issued in The Times of India, New Delhi, dated 28th June, 2008. The complainant retailers had accused Pantaloon of trademark violations and unfair business practices.

Pantaloon’s ‘Central’ mall at Gurgaon had offered 30% discounts to its customers over the weekend. Loyalty card holders of competing retailers like Shopper’s Stop, Lifestyle and Westside, were lured by Pantaloon by offering an additional 10% discount on select brands of apparel.

The advertisement asked such customers to “present their

membership card to avail this offer.

The petitioners contended that Pantaloon was luring the

former’s customers by using their name in an unfair manner.

The Hon’ble Delhi High Court issued an injunction restraining

Pantaloon from using names of its rivals in the ads until the

next hearing.

Cadbury vs. Nestle

Nestle SA, challenged a trademark ruling stating that a colour

cannot be protected under Section-3(1) (a) of Trade Marks

Act, 1994(UK Act)and this colour doesn’t have a meaning.

Cadbury subsequently filed a counterstatement denying the

grounds of opposition. Cadbury proved to the court that they

have been using this colour for a century now.

Cadbury was granted trademark for purple (Pantone 2685C)

colour on 20th October 2011. The registered mark was to be

used for Chocolate in bar and tablet form; eating chocolate;

drinking chocolate; preparations for making drinking

chocolate

According to the Birmingham Mail, on 1st October,

2012 Judge Colin Birss in London high court dismissed

Nestlé's primary case stating that: “Since on the evidence the

public associates the colour purple itself with Cadbury’s

chocolate, Cadbury is entitled to a registered trade mark for

that colour on the relevant goods.”

However, the ruling does not extend to Cadbury's boxes of

chocolates, or dark or white chocolate, as the judge ruled that

the colour was not distinctive to chocolate in general.

CASE :

Tata's Mount Everest

vs. Bisleri

Mount Everest had dragged the country's largest packaged water firm to the Delhi High Court in 2008 for using the words 'from the Himalayas' on bottles of its packaged natural mineral water brand Bisleri.

Mount Everest had claimed that it had registered the words Himalaya, Himalayan, Himalayas as trademarks.

Following this, Bisleri had moved the Intellectual Property Appellate Board (IPAB) to remove the registration of the trademarks Himalaya.

• The order ends a three-year dispute between Bisleri and Mount Everest in theformer's favour and clears way for packaged water companies to use terms such

as 'Himalaya' and 'Himalayan' for water sourced from the mountains.

• In its order, IPAB said, "A condition shall be imposed to the effect that registration does not confer an exclusive right to use of the device of mountain or the word'Himalayan' and that the word Himalayan shall be used in respect of water sourcedfrom Himalayan mountain.“

• The writ petition is accordingly allowed with costs of Rs.10,000/- to be paid by Respondent No.1 BIPL to the Petitioner within four weeks from today. The application also stands disposed of.

HONDA using the trade mark “HONDA” in India since 1957

1983- Hero Honda Motors Ltd. permitted to use the mark “HERO HONDA”

1985- Honda Siel Power Products Ltd. permitted to use the mark "SHRIRAM HONDA“

1997- Honda Siel Cars India, manufacture and sale of motor cars under the house mark HONDA.

Registered trade mark HONDA in India in various classes under the Trade and Merchandise Marks Act, 1958

Case (28th November 2002)• Application for registration of trade mark HONDA in respect

of pressure cookers (non-electric) had been filed in the

name of M/s. Steel India

• The company opposed the said application by taking out

opposition proceedings before the Registrar, Trade Marks

• 1999 - Defendants moving another application for

registration of trade mark HONDA in class 21.

• Still using the trade mark HONDA, a cease and desist

notice was served & they did not reply.

• present suit for permanent injunction, passing off, rendition

of accounts and delivery up

Plaintiff Defender

Plaintiff’s Allegations

Using the mark HONDA in respect of their goods pressure cookers, are passing off the same as the goods of the plaintiff

en-cashing upon the plaintiff's goodwill and reputation attached to its mark HONDA.

Defender’s Arguments

Goods of defender are completely different from plaintiff’s goods

carrying on the business of manufacturing and marketing of 'pressure cookers' under the trade mark HONDA since the year 1985.

the visual presentation of the mark HONDA, under which the defendants' products are being marked, is such that no confusion and deception of any kind can arise.

HONDA is common to the trade and is a common surname in India

plaintiff has not used the mark HONDA in India independently but is using it with some added matter like Hero-HONDA

Suit suffers from delays and latches.

Proceedings

defendants placed on record a search report and copies of the invoices, to indicate that they had been using the trade mark HONDA for many years.

1st application- “SI PRODUCTS” overlooked by HONDA & in 2nd

removed

Affidavit to the effect that the name of charanjit’s uncle is S. Honda Singh not valid

Using Honda separately as Hero and other marks are registered separately

Honda did not know about the refiling of application by defender thus delays and latches are not prominent

Conclusion

plaintiff's suit is an action for passing off

the reputation and goodwill attached to HONDA is of international repute

used by the defendants for pressure cooker, to acquire the benefit of its goodwill so as to create deception for the public who are likely to buy defendant's product believing the same as coming from the house of

Industrial Design Rights

protects the visual design of objects that are not purely utilitarian

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 form containing aesthetic value.

An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft

India's Design Act, 2000

Semiconductor Chip Protection Act

BROOKTREE CORPORATION VSADVANCED MICRO DEVICES

Plaintiff Brooktree was granted mask work registration for its chips identified as

Bt451 and Bt458, combines the functions of a static random access

memory (SRAM) and a digital to analog converter (DAC).

considered as "color palette", producing the colours in colour video

displays having high speed and high resolution

Infringement of mask work registrations in connection with

semiconductor chips used in colour video displays

critical component of the Brooktree chips is the core cell, 80% of chip

coverage, copied by AMD, thus infringing Brooktree's mask work

registrations.

Brooktree must show that A.M.D.'s mask works are substantially similar

to a material portion of the mask works in Brooktree's chips

Defender

non-SRAM portion of its accused chip was not copied, the chips are not "substantially similar“

Infringement under the statute does not require that all parts of the accused chip be copied.

core cell was the product of reverse engineering of the Brooktree chip, and therefore does not constitute infringement under the Semiconductor Chip Protection Act

AMD's defense was that its chips were independently designed after the Brooktree chips were subjected to reverse engineering to learn the Brooktree design.

AMD pointed to its "paper trail" of its two and a half years of effort at a cost in excess of three million dollars.

Counter argue- AMD's lengthy and expensive failures at designing a layout and could not further invest thus copied

Conclusion

agreed that Brooktree's color palette chips

were superior to others then available

AMD’s arguments were not accepted and

found guilty under semiconductor

protection Act.

A Patent is a right granted

to the owner of the patent to

stop others from making,

using or selling the invention

that is the subject of the

patent

The monopoly granted to

the patent owner can last for

up to 20 years.

1. UTILITY

It is the most important type of patent that is granted .

It protects the functional aspect of the invention

It is also the most sought after & requires a lot of skill in drafting &

prosecuting the application on front of the patent granting official

2. DESIGN

This type of patent is granted to protect the ornamental or external

appearance of the invention and not the actual invention.

If a design is of functional necessity then it cannot be registered for

a design patent.

3. PLANT

It is granted for plant variety made through asexual reproduction of

plant varieties.

An invention which claims anything obvious contrary to

well established natural laws.

An invention in the intended use of which can be

injurious to public health.

The mere discovery of a scientific principle or the

formulation of an abstract theory.

A susbtance obtained by a mere mixture of matter

resulting only in the aggregation of the properties of the

components or a process for producing such substance

Madras High Court dismisses

patent infringement case

The Madras High Court has refused to restrain Mishra Dhatu Nigam (MIDHANI) Limited, a Hyderabad-based enterprise, from manufacturing and selling titanium knee prosthesis on a cost-to-cost basis for cancer patients.

The dismissed suit filed by proprietor of a Chennai-based private enterprise held that the plaintiff had not made out a case as MIDHANI selling the prosthesis at Rs 39,200, whereas the private enterprise sold it for Rs 1.36 lakh each.

Conclusion:

The verdict of the case was that the distinguishing features of the MIDHANI product may not qualify their product for a valid patent registration. But they will certainly provide a shield for a defendant against an action in infringement of the patent

Apple had filed an infringement case on Samsung for using one of its

patented features.

Judge Lucy Koh, who has been heading the ongoing patent battle

between the two tech giants, ruled that Samsung violated Apple's

'autocomplete' patent by using it in its keyboard on Galaxy Nexus, Note

and other older devices.

Samsung argued that Apple's patent could only refer to a hardware

keyboard, not the on-screen one used on both iOS and Android

Conclusion :However, Judge Koh found the infringement clear and granted Apple

summary judgment and a suit of $ 290 million.

The report said that Samsung would be now required to prove that the

patent is invalid in order to win and if it fails, Google too could be involved

and would have to work its way out to ensure its Android OS doesn't get

dragged in lawsuits.