5.ipr

UNNI IIM CALCUTTA 1

Prof. V.K. Unni

Public Policy & Management Group

Indian Institute of Management Calcutta

E-mail: [email protected]

Intellectual Property Laws deal with the creative aspects of human mind

With the advent of the TRIPS agreement which is a part and parcel of WTO, Intellectual Property creation and protection has become a very crucial tool for all corporates

All IPRs are territorial in nature

UNNI IIM CALCUTTA 2

They are broadly classified into

1. Copyrights

2. Patents

3. Trademarks

4. Designs

5. Geographical Indications

6. Confidential Information (Trade Secrets)

7. Semiconductor Layouts

UNNI IIM CALCUTTA 3

The law of copyright protects all original literary, dramatic, musical and artistic works

It also protects entrepreneurial works like cinematographic works and sound recordings

Copyright just like all other intellectual property is a negative right

Copyright is based on the concept of originality and fixation

The plain meaning of originality is to make sure that the work has originated from the author / creator

Thus the work should not be copied from some other source

Originality does not mean that the work should be inventive novel, stylish or unique

Fixation only means that the work should be fixed in a medium

UNNI IIM CALCUTTA 4

Copyrightable works can be divided into 2 broad categories

1. Literary, dramatic, musical and artistic works which should be original

2. Entrepreneurial works like sound recordings and cinematographic films where originality is not a requirement

However both the categories of work should be fixed in a medium

Copyright need not be registered although many owners get it registered for evidentiary value

UNNI IIM CALCUTTA 5

Copyright being a negative right, grants the copyright owner the right to prevent another person from

1. Making copies of his copyrighted work in any material form

2. Distributing the copies not being copies already in circulation;

3. Performing the work in public/ showing/communicating to the public (through broadcasting / Internet etc)

4. Making an adaptation of the work (adaptation means translation, converting a story into drama format etc)

5. Making a cinematographic film/sound recording from that work

6. In the case of Computer Programs, Films and sound recording the owners have the right of commercial rental also

UNNI IIM CALCUTTA 6

Literary Work

Literary work is any work, other than a dramatic or musical work, which is written, spoken, or sung,

It certainly includes works like time-tables, compilations, databases, football coupons, question papers, computer programs etc

Thus in the case of a song the lyrics will be considered as a literary work

Literary refers to the nature of the work, that is, one in which the expression is conveyed by means of words/ symbols

Dramatic Work

Generally a dramatic work, means a work of dance, drama or mime

It is a work of action, with or without words or music, which is capable of being performed before an audience

7

Under the Indian definition dramatic work" includes any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting form that is fixed in writing or otherwise

Musical Works

It consists of the music notations and excludes any words or action intended to be sung or spoken

The definition of a musical work clarifies that it does not include words intended to be sung or spoken with the music or action intended to be performed with the music

A dramatic work may include music: then music will be entitled to a separate copyright, notwithstanding that the music also forms an integral part of the dramatic work

UNNI IIM CALCUTTA 8

Artistic Works

It includes paintings, drawings, diagrams, charts, plans, photos, maps, engravings, sculptures etc irrespective or artistic quality

Works of architecture like buildings

Works of artistic craftsmanship e.g. specially designed jewellery, designer furniture etc

Sound recordings

They are entrepreneurial works and are based on an original literary, dramatic or musical work

The definition of sound recording covers a recording where there is no underlying work, such as a recording of people talking, howling or of other sounds such as the sounds of wildlife.

Thus it only protects recording of the sound and not the sound per se

Cinematographic films

Cinematographic films also fall under the category of entrepreneurial works

Here protection is given only to the recording of images and not to the image per se

Sound recording accompanying the film will be treated as part of a film

Authorship and Ownership of Copyright

Since copyright is a property right which can be owned and assigned certain crucial questions regarding its mechanisms for exploiting the work would arise

As far as law is concerned authorship and ownership are 2 distinct and separable rights

UNNI IIM CALCUTTA 10

Author has the moral right, while owner has the economic right to exploit the work (like the right to prevent others from making copies, distributing it, broadcasting , making adaptations etc)

Sometimes author of the work will be the owner also, but there are umpteen instances wherein the owner of the work is different from its author

Generally ownership flows from authorship

Generally the author is considered to be the first owner of the work

But there is an exception in the case of works made in the course of employment


The copyright owner may decide the manner in which a work has to be exploited

He may grant licenses for publishing his work to one company and may grant licenses for adapting the work to some body else

Instead of going for a license, he may assign his copyright of the work to another party

Thus the owner of the copyright has the exclusive right to do certain things and in case anybody does any of these acts without his consent, infringement will result

Who is an author ?

In the case of a story , novel or a drama the person who writes / creates it

The music composer in the case of a musical work

An artist in the case of a painting, sculpture etc, a photographer in the case of a snap


The producer in relation to a film or sound recording

Ownership of Copyright

Generally author of the work is the first owner of copyright

But there is an exception to this general rule

Thus if any literary, dramatic, musical or artistic work made by an

employee in the course of his employment then his employer will be

the first owner, subject to an agreement to the contrary

In case of photos, portraits, engravings, films made for valuable

consideration the person who has paid the consideration will be 1st

owner,


Once a work qualifies for copyright protection, 2 distinct categories of rights may arise

First one is the economic right, granted to the copyright owner

Second one is the non economic right or moral right granted to the author

To be very simple moral rights protect the non economic interests of the author and this will remain with the author even after he assigns the economic right to others (Sec 57 Copyright Act)

Moral rights are only available to the authors, it is not available to the copyright owners, however they can be exercised by authors legal heirs also

Moral rights can be broadly divided into 2

1. Paternity Right 2. Integrity Right


The right of attribution (Paternity right)

It provides the creators of copyrighted works with the right to be

identified as the author and can be claimed even after the expiry of

copyright

Paternity right will be infringed when the author has not been

properly identified in a copyrighted work

The authors name must appear in each copy of the work in a

reasonably prominent manner

Even after authors death it can be enforced by his/her legal

representatives


Integrity right

This right is otherwise called as the right to object to derogatory treatment of the work

Thus the author of a literary/dramatic/ musical/artistic work has the right to oppose any derogatory treatment of the work

Derogatory treatment means any act which amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour/reputation of the author

After the 2012 Amendment India recognises a perpetual integrity right which means that it will extend even after the expiration of copyright

Thus in India moral rights exist in perpetuity


Duration of copyright is life of the author plus 60 years

Apart from the protection given to the categories of works mentioned earlier the law also affords protection to broadcasting corporations and performers under rights called Broadcast Reproduction Right and Performers Right

Performers right protects live performances and this is very beneficial for the performers like Daler Mehendi, whose performances may be mostly based on non-copyrighted works

It subsists for a period of 50 yrs from the date of performance

Performance in relation to performers right means any visual or acoustic presentation made live by one or more performers

Broadcasting right is valid for 25 years from the date of broadcast


In 2011, a Macaque monkey from Indonesia swiped a traveling British photographers (David Slater) camera and thereafter took many snaps including the selfie shown earlier

Later on this snap reached Wikipedia who used the said snap in Wikimedia commons, an online repository of free images.

When Slater came to know that the said snap was used in Wiki he sent a notice to them to remove the snap in August 2014

However Wikipedia refused Slaters request to take the photos down from the website and noted that the snap is in the public domain because as the work of a non-human animal, it has no human author in whom copyright is vested.

In other words Wikipedia argues that Slater is not the copyright owner of the snap


Idea Expression Dichotomy Idea-expression dichotomy is a very important principle

in copyright law

To be very simple, idea-expression divide or idea-expression dichotomy is a concept which is generally designed to protect the fixed expression of an idea rather than the basic idea itself.

This principle has played a lead role in making sure that ideas/principles/concepts, which are considered as the basic building blocks of any work, will always remain in public domain and there can be no monopoly over them


Thus it is not an infringement if someone takes the idea/concept behind a book or a painting

Idea in simple words covers different things such as the ideas which inspired the work, the subject matter of the work, or it may be the general style in which a work is created ( modern painting, samurai architecture etc)

Expression means the most detailed plot including the settings, incidents, sequence of events and special characters if any

The exclusion of ideas from copyright protection is an important technique used to reconcile the interests of the copyright owners against the general public


In the case of Barbara Taylor Bradford v. Sahara Media Entertainment Ltd 2004, Barbara sued for infringement of copyright of her 1979 best seller "A Woman of Substance" and wanted to stop a serial of the respondent "Karishma - a miracle of destiny.

The only material on which petitioners base their claim is an interview given to a journalist by the producer of the serial wherein he mentioned that the serial has taken the "rags to riches" theme of the book.

Court made it very clear that there could not be any copyright in the theme and observed that infringement could be established only by comparing and showing similarity of details, events, situations, expressions of language etc


Infringement can be broadly classified into two Primary infringement Secondary infringement Primary infringement deals with the real act of copying, while

secondary infringement deals with other kinds of dealing like selling the pirated books, importing etc

In any action for infringement the copyright holder has to show the following,

He/she is the owner of the work The person against whom the case is filed (defendant) has carried

out any of the activities falling within the copyright holders domain The defendants work was derived from the copyright work Defendant has copied the whole or substantial portion of the

plaintiffs work


If the copyright holder can prove infringement he will be entitled to civil, criminal as well as administrative remedies

Civil remedies include injunction (where the court asks the defendant to stop the act) and /or damages (monetary compensation) etc

Criminal remedy includes imprisonment for a period from 6 months to 3 years and fine ranging from Rs. 50000 to Rs. 2 lakhs

Administrative remedy means banning the importation of infringing goods, this can be done by the Registrar of Copyright upon application by copyright owner


Upon sued for infringement the defendant may rely upon certain defences

Here the law provides certain exceptions, one such exception is fair dealing

Fair dealing provisions allow copying which would otherwise be an infringement

In many cases the amount of original work used is very relevant It may be fair-dealing to include 5-10% of another work for the

purpose of criticism or review But taking the whole work may not be fair-dealing In almost all common wealth legal systems there are provisions which

deal with fair dealing For the purpose of research/private study Criticism/review Current events


The whole purpose of fair dealing is to permit in appropriate cases the taking of a substantial portion of the copyrighted work

In U.K. / India the following factors influence the courts to evaluate whether there is fair dealing

Purpose: It might be fair dealing to take copy of an entire work for research or private study, but taking large amounts of anothers work for the purpose of review or criticism might not fall under fair dealing

Proportion: Sometimes even proportion of the work taken may be relevant, it may be fair dealing to take around 10% of anothers work for criticism or review but taking around 35-40% of the other work may not be considered as fair


Motive: if the motive of copying is to compete with the

plaintiffs work, then courts may not consider it as an act of

fair dealing

Status of the plaintiffs work: Under the UK/India law also

the status of the plaintiffs work is very important, In the

case works which are unpublished, the scope of fair dealing

is very restricted


Indian Position

In India Sec 52 of Copyright Act deals with defences to infringement,

The Indian Law allows the following

a fair dealing with a literary (except a computer program), dramatic, musical or artistic work for the purposes of private use, including research

criticism or review, whether of that work or of any other work*

Fair dealing for the purpose of reporting current events in a newspaper, magazine or similar periodical*


by broadcast or in a cinematograph film or by means of photographs

Publication in a collection, with the bona fide intention for the use of educational institutions, and so described in the title*, Sec 52 (1) (g)

Any Act of a Legislature can be reproduced or published together with any commentary thereon or any other original matter

Publishing in newspaper magazine or periodical an article on

current economic political social or religious topics * Sec 52 (1) (m)

* Proper acknowledgement needed


It is impossible to define what is fair dealing. It must

be a question of degree . To take long extracts and

attach short comments may be unfair. But, short

extracts and long comments may be fair,


In July 2012 the Copyright Act was amended and this will have some implications on the entertainment industry

Generally a cinematograph film contains literary works such as the script and lyrics, musical works songs background score, artistic works such as the sets, graphics etc.,

Apart from this it will also contain performances by actors, singers, dancers, stuntmen etc

Before the amendment the author is the first owner of copyrights in a work unless such work is commissioned by another person or is created under a contract of service or employment, in which cases the employer or the person commissioning the work is the owner.


After the amendment a new proviso has been added to provide that a

cinema production house will not own the copyrights created by its

employees/artists during the course of their employment/ engagement

Interestingly this provision does not apply to works incorporated in a

sound recording and as a result a record label like BMG Crescendo

can still own the works created by its employees or commissioned

authors

Previously the author of a literary, artistic or musical work could

assign the copyright to the producers for incorporation in a film.

Such an assignment could broadly be for both existing and future

modes of exploitation.


There was no right to receive any royalty for exploitation of the works and if such a right existed, it could be transferred or waived.

The 2012 Copyright Amendment has made 3 important changes

Firstly, an assignment made to a producer or other person is not applicable to any medium exploitation that is not in existence at the time of the assignment unless specifically mentioned in the assignment agreement

Secondly, the author of a literary or musical work incorporated in a cinematograph film cannot assign or waive his right to receive equal share of royalties from the assignee for utilisation of such work in any form other than communication to the public in a cinema hall.


This means that producers should now share the non theatrical

exploitation royalties in an equal manner with the script writers,

lyricists and composers

The author however can assign the right to receive royalty to his /her

legal heir or copyright societies

Thirdly the author of a literary or musical work included in a sound

recording shall not assign or waive the right to receive equal share of

royalties from the assignee for utilisation of such work in any form

The author however can assign the right to receive royalty to his /her

legal heir or copyright societies


Though, amendment is done with a noble intention of granting royalty rights to the authors, the amendment can really increase the costs for production houses and entertainment companies

The industry is generally of the view that there is no clarity in royalty mechanism and distribution between producers, authors of underlying works and performers

Freedom of contract between producers and authors of underlying works is abolished by this amendment

The above provisions have serious consequences on the manner in which the deals will have to be negotiated in the film / broadcasting industry with the authors of works and among producers/distributors.


Patent law deals with new industrially applicable inventions

It envisages a very powerful and special mode of protection for inventions

The patent is valid for 20 years from the date of filing the application

Compared to other streams of IPR the property right granted is very strong

A patent is never granted in an automatic way, there is a structured procedure for obtaining a patent


Patents can be given for products as well as processes

Here a monopoly is granted to the patentee for disclosing the details of the invention, which he would have kept as a secret

The disclosure made by the patentee should enable a person skilled in the art to work/make the invention once the patent expires

This would mean that an adequate and enabling disclosure is a condition precedent for obtaining a patent


Patentability Requirements

The invention has to be novel

It should involve an inventive step, i.e. it should be non-obvious

It should be capable of industrial application

It should not be excluded specifically by the statute


Novelty

Invention must be new, it must not already have been available to the public

An invention can be new only if it does not form part of the state of art / prior art

The prior art comprises of all matters made available to the public before the date of the invention whether by written, oral description, by use or in any manner

Prior publication could have occurred anywhere in the world


Inventive Step

There is no precise definition of the term inventive step

An invention can have inventive step if it is not obvious to a person

skilled in the art

Obviousness is always evaluated with reference to skilled worker

Generally commercial success of the invention especially when it

satisfies a long felt want can make an invention non-obvious

(inventive)


Industrial Application

Industrial application is another requirement for patentability

The invention has to be worked industrially

This requirement distinguishes patents from copyright

An invention is capable of industrial application if it can be made or used in any kind of industry including agriculture


Apart from the conditions on novelty, inventive step and industrial application

India law (Sec. 3) also excludes certain inventions from patentability like

an invention which is frivolous or which claims anything contrary to well

established natural laws;

the mere discovery of a scientific principle or the formulation of an

abstract theory; or discovery of any living thing or non living substance

occurring in nature, Sec 3[c]

A mathematical or business method or a computer programme per se, or algorithms Sec 3(k)

An invention which, in effect, is traditional knowledge, or is an aggregation or duplication of known properties of a traditionally known component, Sec 3(p)

42

Rights of a patent holder (Sec 48)

When a patent is for a product, the patent holder has the exclusive right to prevent somebody from making, using, selling, distributing, importing such article

In case of a process patent the patent holder has the exclusive right to prevent somebody from using, selling, exercising, importing the method/process in India

A patent is always territorial in nature

If any person violates any of these rights then there will be infringement

Patent Law only provides for civil remedies like injunction and damages


The Appellant (TVS) and Respondent (Bajaj) are two wheeler automobile manufacturers.

In the High court Bajaj filed an application for permanent injunction in order to prevent TVS from infringing its Patent and/or from using the technology / invention described in the said patent in 2/3 wheelers including the proposed 125 cc 'FLAME' motorcycle of the Appellant.

Bajaj claimed it had invented an unique technology of using two spark plugs for efficient burning of lean air fuel mixture in a small bore engine (bore size between 45 mm and 70 mm) which was the subject matter of the aforementioned patent.

TVS challenged the validity of the patent on the basis that the use of twin plugs in an engine was a part of prior art since it was the subject matter of the expired patent US Honda Patent filed in 1985


The case involves that following issues:

Whether Bajajs patent is valid in view of the Novelty test?

Whether TVSs modified use of the same technology amounts to infringement?

Whether the balance of convenience is in favour of Bajaj or TVS?


Though the merits of the case are yet to be decided in the Madras High Court, the lower court (single bench) decided in favour of Bajaj and held the patent to be valid.

The lower court was of the opinion that infringement had occurred and hence granted an injunction and damages.

The decision was appealed by TVS before the Division Bench of Madras High Court

The division bench overruled the lower court holding that, while the merits of the case were yet to be decided, the balance of convenience was in favour of TVS since it had invested large amounts in the marketing and production of the impugned FLAME model bike.

The court asked TVS to maintain record of sales and accounts but allowed the sale of the product (May 2009 order)


Recently India has witnessed lot of high profile patent battles in the pharma and non pharma sector

Top MNC pharma companies like Novartis, Roche and Bayer are involved in many patent litigation with Indian companies like Cipla

Even in non pharma sector many companies are involved in patent battles to protect their monopoly against rival companies

Very recently (December 2014) the Delhi High Court restrained the Chinese mobile phone company Xiaomi from selling, advertising, manufacturing or importing devices that infringe Ericssonss Standard Essential Patents (SEPs)

The judge also directed the Customs officials to stop the imports under the IPR Rules


Trade Marks are used by manufacturers/ traders to identify their goods and distinguish them from goods made or sold by others

Right from the period of Romans it was common for pottery to be impressed with a mark

The industrial revolution saw an enormous growth in the use of trade marks for advertising

Very often a trade mark is associated with quality and consumer expectations

A trade mark should be used or intended to be used in relation to certain goods/ services


The funda is that a trade mark should denote a connection in the course of trade between a manufacturer or goods in question, and thus if the mark is not being used there then there can be no such connection

Another important aspect is that the mark should be distinctive, i.e. it should be capable of distinguishing the goods and services of one from another

This requirement of distinctiveness serves as a limitation on the types of words being used as marks

Ownership of a trade mark gives the owner a restricted monopoly and the owner has a proprietary right in the mark


Trade Mark Law has the following objectives

1. Protection of business reputation and goodwill

2. Protection of consumers from deception

By fulfilling these two broad objectives this branch of Law strikes at the root of unfair competition


Trade Mark

It must be a mark capable of being represented graphically

(interestingly the term mark has been defined in the Act to include a device, heading, label, name , signature, word, letter, numeral, shape of goods, packaging, combination of colours etc)

It must be capable of distinguishing the goods/ services of one company from that of others

It should be used or intended to be use in relation to goods

In 2008 Yahoo was able to register a sound mark from the Indian Trademark Office


Absolute grounds for refusal of registration (Sec 9)

When a mark is devoid of any distinctive character, i.e when it is not capable of distinguishing the goods/services of one person from those of another, it cannot be registered , for example the word computer cannot be used as a trademark to market computer/IT HARDWARE


If the trade mark consists exclusively of marks/signs which denote the kind, quality, quantity, geographical origin, values etc, Sec 9(1) (b)

If the trade mark consists exclusively of marks/signs which have become customary in the current language or in the bonafide or established practices of trade, Sec 9(1) (c)

But Sec 9(1) (a), (b) and (c) come with an exception

If on the date before the application for registration, the trade mark had acquired a distinctive character as a result of use made of it, then it can be registered,

Similarly if the mark is a well-known mark, then also it can be registered, e.g. Head & Shoulders, Fair & Lovely etc


The following marks cannot be registered in any circumstances

If the mark contains any matter likely to hurt the religious feelings of any class or section of Indian citizens, Sec 9 (2) (b)

If the mark comprises of scandalous or obscene matter then it cannot be registered, Sec 9 (2) (c)

Then marks coming under the purview of Emblems & Names Act 1950 cannot be registered, Sec 9(2) (d)


Relative grounds for refusal of registration

A trademark which is identical to an earlier trademark cannot be registered on similar goods covered by earlier trademark, if there is a likelihood of confusion in the minds of the public which may include a likelihood of association with the earlier mark

The mark Brittania cannot be registered by another company on products like chocolate/ice-cream because Brittania is already registered for Biscuits, cakes etc and somebody registering the identical name for chocolates may be create confusion


A trademark which is similar to an earlier trademark cannot be registered on identical or similar goods covered by earlier trademark, if there is a likelihood of confusion in the minds of the public

The mark Brittanica cannot be registered by another company on products like biscuits, chocolate/ice-cream because Brittania is already registered for Biscuits, cakes etc and somebody registering the similar name for those products may be create confusion


Normally the likelihood of confusion requires an appreciation of the visual, phonetic or conceptual similarity of the marks based on the overall impression given by them

Perception of the average customer is very important

Generally a customer sees a trade mark as a whole and doesnt analyse its individual details


Factors which may lead to confusion

Look and sound of the words

Goods to which the mark is applied

Nature of customers

Surrounding circumstances

What is likely to happen if both the marks were to be used together.


A trade mark which is identical or similar to an earlier trade mark can ordinarily be registered for a dissimilar goods

But this also will not be allowed if the first mark is a well-known mark

For e.g. if Mercedes Benz is considered as a well-known mark, it can stop some chappal manufacturer in Joka if he applies to get a trademark registration for the name Mercedes Benz to market the chappals produced by him


The following factors have to be considered by the Registrar to determine whether a Mark is well known or not

Knowledge or recognition of the trademark in the relevant section of public

Market share, intensity, geographic extent, duration of use of the trade mark

Investments made to promote the trade mark

Successful enforcement of rights associated with the trade mark

Thus in the case of a well-known mark there is no requirement of any confusion in the minds of the public


Trademark Infringement happens when anybody other than the trademark owner uses the mark in the course of trade

1. By affixing it to the goods or packaging

2. Offering the goods for sale, marketing, stocking them for such purposes

3. Importing the goods with the said mark

4. Using the mark on business letters or advertisements

If the mark is infringed the trademark owner can file a case for civil and criminal remedies

Civil remedies include injunction and damages while criminal remedies include imprisonment and fine ranging from Rs. 50000 to Rs. 200000


Many corporates take utmost care to protect their trade/service

marks and are very vigilant in matters involving any misuse or

infringement of their trade marks

Very recently (December 2014) Make My Trip, filed a case for

trade mark infringement against Make My Tours who was using

the mark Make My Tours

The Delhi High Court restrained the use of the mark Make My

Tours as it was causing confusion in the minds of the public

The court accepted the plaintiffs contention that Make My Tours

is deceptively similar to Make My Trip and the two logos in issue

are identical.


With the advent of Internet and domain names, the trademark holders are facing threat from Cybersquatting

During the early days of Internet, many individuals had in fact registered the domain name versions of some famous trade marks and had charged huge amounts from them for selling back these domain names, this practice is popularly called as Cybersquatting

Now there is an international mechanism available to check Cybersquatting under the aegis of Internet Corporation for Assigned Names and Numbers (ICANN)

Lots of Indian companies including Tata, Dr. Reddys, Times of India, Mahindra and Mahindra have successfully used the ICANN policy against cybersquatters


Apart from cybersquatting there are other emerging issues like use of trademark as metatags by competitors, deep-linking, pop up advertisements etc

Tata Sons v Bodacious Tatas [1999, Delhi High Court]. This case concerned the well-known Indian trade mark TATA in its

use as a domain name www.bodacious-tatas.com , as a trade mark and as a meta-tag

The defendants had given hyperlinks to pornographic sites which might very badly affect the companys reputation

The name TATA was also used as a meta-tag to confuse search engines.

Thus, the moment a user queried for TATAs, the defendant's web site would show up in the search results right at the top


The Delhi High Court restrained the use of the

famous trade mark TATA not only as a domain name

and as a trade mark but also as a meta-tag

Duration of Trademark Protection

Trademark is granted protection for a 10 year term

and this can be renewed any number of times

Indian law also allows distinctive shapes to be

registered as trademarks


This area of IPR is concerned with the protection of eye appeal

Designs that are purely functional cannot be registered

Design law protects features of

shape,

configuration,

pattern,

ornamentation or

composition of lines or colours applied to any article

But it does not include certain things like trade marks, artistic wok under the Copyright Act , mere mechanical devices etc


As a matter of general principle designs that are purely functional are not registrable

This would simply mean that if a particular shape is dictated solely to make the article perform certain functional requirements then it cant be registered

Shape means the external form of the article

Configuration means the arrangement of an article

Shape and configuration signifies something in 3 dimensions, i.e the form in which the article is fashioned

Pattern and ornamentation is something which is placed on article for its decoration, its is in 2-dimensional form


Duration of design registration is for a period of 10 years, which can be extended by 5 more years

The followings designs cannot be registered under the Designs Act

Designs which are not new or original

Designs which has been disclosed to the public anywhere in the world prior to the filing date

Design which is not significantly distinguishable from known designs or combination of known designs

Design which comprises of scandalous and obscene matter


Trade Secrets: There is no special law in India to protect trade secrets mostly it comes under the law of contract as in most of the cases there involves an employer-employee relationship

Trade Secrets cannot be registered/published, if that happens the entire trade secret is lost

Definition (Provided in TRIPS Agreement)

A trade secret is any information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

1. Derives independent economic value, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

2. Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy


Since many of the trade secrets cases that come before the courts do

involve contracts and, particularly, contracts of employment, such

cases may be treated as a breach of contract

An employer, like anyone else, is entitled to restrain unauthorized

disclosure or use of information which, in the, is confidential.

On the other hand, for public policy reasons, an employee is entitled

to use and put at the disposal of new employers all his acquired skill

and knowledge, no matter where he acquired that skill and knowledge

and whether it is secret or was so at the time he acquired it

Under Section 27 of the Indian Contract Act, a service covenant that

extended beyond the termination of the service is void.


There are numerous Indian cases in which courts have refused to extend a service covenant beyond the termination of the service

1. American Express Bank Ltd. v. Priya Puri (2006 )

(Delhi High Court has held that freedom of changing employment for improving service conditions is a vital and important right of an employee which cannot be restricted or curtailed even on the ground that he or she has possessed the employers data and confidential information

1. Ambiance India Pvt. Ltd. Vs. Shri Naveen Jain (2005)

2. Pepsi Foods Ltd. and Others Vs. Bharat Coca-Cola Holdings Pvt. Ltd. & others (1999)

3. Sandhya Organic Chemicals P. Ltd V. United Phosphorous Ltd (1999)


Prof. V.K. Unni

Public Policy & Management Group

Indian Institute of Management Calcutta

E-mail: [email protected]


5.ipr

Documents

literary work literary

work adaptation

categories of work

choreographic work

copyrighted work

work of dance

work of action

musical works