PATENTS, TRADEMARKS & GEOGRAPHICAL INDICATIONS AS A PART OF INTELLECTUAL PROPERTY RIGHTS W.R.T. WTO

Group members:PRASHANT RANSING 11-743 JAYESH SANGLE 11-745MAYANK SATIA 11-747 JESAL SHETHNA 11-749MANGESH TALANGKAR 11-751 MADHURI THAKUR 11-753ROHAN VAIDYA 11-755 ANKITA VICHVE 11-757MILIND WADKAR 11-759

INTRODUCTION

What is IPR• It is the right given to people over the creation of their

minds.• These are divided into two categories

copyrights and rights related to copyrightsintellectual property

• Objective a)Financial incentive b)Economic growth c)Morality

NEED AND PURPOSE OF IPR

• Advancement of technology• Chances of stealing of ideas and inventions• Encourage and reward creative work• Exclusive opportunity to the inventor• Create ownership

TRIPS Agreement

TRIPS maximizes the contribution to economic growth by:• Minimum standards for IPR• Prescribing elements for implementation of IPR• Creating a transparency mechanism • Creating a predictable, rules-based system• Allowing for mechanisms to ensure that IPR support

widely accepted public policy objectives

Table showing registration requirement as well as period of protection under TRIPS as well as in India

IPR ACT REGISTRATION REQUIREMENT

PERIOD OF PROTECTION UNDER TRIPS

PERIOD OF PROTECTION IN INDIA

PATENTS COMPULSORY 20 YEARS FROM THE DATE OF FILLING

20 YEARS FROM THE DATE OF FILLING

TRADEMARKS OPTIONAL INITIAL FOR 7 YEARS+RENEWAL FOR 7 YEARS AND SO ON

INITIAL FOR 10 YEARS+RENEWAL FOR 10 YEARS AND SO ON

GEOGRAPHICAL INDICATIONS

OPTIONAL INITIAL FOR 7 YEARS+RENEWAL FOR 7 YEARS INDEFINITELY(7+7+7+…)

INITIAL FOR 10 YEARS+RENEWAL FOR 10 YEARS INDEFINITELY(10+10+10+…)

PATENT

• A patent is an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention, provided the invention satisfies certain conditions stipulated in the law

Under the article 27.1 of TRIPS agreement, patent is available for any invention relating to the product or process, which is

NOVEL : new to the public;

Involves any new incentive step;

Capable of industrial application;

What can be patented?

WHAT CANNOT BE PATENTED?

• Inventions contrary to public order or morality

• Inventions relating to diagnostic, therapeutic and surgical methods for the treatment of humans or animals

• Inventions relating to process for production of plants and animals other than micro-organism and essentially biological processes for the production of plants and animals other than non-biological and micro logical processes

IS A PATENT GRANTED IN ONE COUNTRY ENFORCEABLE IN OTHER COUNTRIES?

• NO, there is nothing like a global patent or a world patent

• Patent application is to be submitted in countries of interest

Exception- Regional Systems

eg-European patent office

• Each country is free to grant or refuse a patent on the basis of scrutiny by its patent office

NON PATENTABLE INVENTIONS :

• An invention which is frivolous or which claims anything obviously contrary to well established natural laws

• An invention whose intended use or exploitation would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment

• Scientific principal or formulation of an abstract theory

• The mere discovery of a new form of a known substance which does not result in enhancement of the known efficacy of that substance

• A method of agriculture or horticulture

• Any process for medical, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings

• Discovery of any living thing or non-living substance occurring in nature

• Mathematical or business methods or a computer program per se or algorithms

SECTION 5: PATENTS (w.r.t. WTO)

Article 28 : Rights Conferred

• Where the subject matter of a patent is a product it should prevent the third party from , using, offering for sale, selling, or importing of that product• 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

• Disclosure of the invention• Applicant for a patent should provide information

concerning the applicant's corresponding foreign applications and grants.

Article 32 : Revocation/Forfeiture

• An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available

Article 34 : Process Patents: Burden of Proof

• Infringement of the rights of the ownera. If the product obtained by the patented process is new

b. If the identical product was made by the process

• The burden of proof shall be on the alleged infringer only if the condition referred to in (a) is fulfilled or only if the condition referred to in (b) is fulfilled.

• The legitimate interests of defendants taken into account.

CASELETS

• Microsoft

• Indian Pharma Patent Case – Imatinib

• Apple Inc

TRADEMARK• The parliament enacted the Trademarks act 1999, replacing

the Trade and Merchandise Marks Act, 1958• A trademark or trade mark is one of the elements of

Intellectual Property Right and is represented by the symbol ™ or ®• A trademark is a type of intellectual property, and typically

a name, word, phrase, logo, symbol, design, image, or a combination of these elements• The term trademark is also used informally to refer to any

distinguishing attribute by which an individual is readily identified, such as the well known characteristics of celebrities

RIGHTS & REMEDIES OF A TRADE MARK OWNER

• The owner of a registered trademark may commence legal proceedings for trademark infringement • The owner of a common law trademark may also file suit• Two types of remedies are available to the owner of a

trademark • an action for infringement' in case of a registered trademark• an action for passing off' in the case of an unregistered trademark

TRADE MARK (w.r.t. WTO)

• Article 15 : Protectable Subject Matter• Any sign, or any combination of signs, capable of

distinguishing the goods or services of one undertaking from those of other undertakings • Where signs are not inherently capable of distinguishing

the relevant goods or services, Members may make register ability depend on distinctiveness acquired through use

• Article 16 : Rights Conferred• 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 signs

• 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.

• Article 21 : Licensing and Assignment• Members may determine conditions on the licensing and

assignment of trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and that the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which the trademark belongs.

SCOPE OF FOREIGN INVESTORS

• Get trademark searches conducted in the Indian Trade Marks Registry in the classes that are of interest to you

• Get common law searches conducted to ascertain whether third parties are using your trademarks and if so, the extent of such use.

• Based on this information decide if the trademark is available for use or not.

• Should the trademark be available for use, immediately apply for the registration.

• The rights holder should also consider hiring a watching service to monitor the trademark journals

Case studies• Pantaloon attracting customers using unfair business practices • Two local shop owners were restrained from using amul

trademark

GEOGRAPHICAL INDICATION• Definition :- TRIPS defines GI as any indication that identifies

a product as originating from a particular place, where a given quality, reputation or other characteristics of the product are essentially attributable to its geographical origin

HISTORY OF THE TRIPS PROVISIONS ON GI

The Uruguay Round of the GATT negotiations began in 1986, precisely when India’s development policy making process was at a watershedAt Doha India wanted to extend protection under ‘geographical indication’ (GI) beyond wine and spirit, to other products

NEED FOR LEGAL PROTECTION OF GI

• Without suitable legal protection, the competitors who do not have any legitimate rights on the GI might ride free on its reputation. • Resulting in loss of revenue for the genuine right-holders of

the GI• Misleads consumers.• Hamper the goodwill and reputation associated with the GI

COUNTRIES OPPOSING

United States, Australia, New Zealand, Canada, Argentina, Chile, Guatemala and Uruguay are strongly opposed to any ‘extension’

DEFINITION OF GI INCLUDED IN SECTION 1(3) (E) OF THE INDIAN GI ACT

• Clarifies that for the purposes of this clause, any name which is not the name of a country, region or locality of that country “shall” also be considered as a GI if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be

THE INDIAN GI ACTThe legislations which deals with protection of GI’s in India are

- ‘The Geographical Indications of Goods (Registration & Protection) Act, 1999’ (GI Act), and

- ’The Geographical Indications of Goods (Registration and Protection) Rules, 2002 (GI Rules)

STATUS OF GI REGISTRATIONS IN INDIA

• Around 65 GI’s of Indian origin have already been registered with the GI Registry. These include GI like Darjeeling (tea), Pochampalli, Ikat (textiles), Chanderi (sarees), Kancheepuram silk (textiles), Kashmir Pashmina (shawls), Kondapalli (toys), and Mysore (agarbattis)

CASELET : IMPORTANCE OF STRAWBERRY IN MAHABALESHWAR

• Product: Strawberry• Year: September 2009

• The strawberry mainly grown in Mahabaleshwar-Panchagani belt of Western Maharashtra region has now received GI status and now will be recognized as "Mahabaleshwar Strawberry", brand name for the strawberry• All India Strawberry Grower's Association had applied for

the GI status to Chennai based Geographical Indication Registry

• There are over 1800 strawberry growers in Mahabaleshwar-Panchgani belt on 2000 acres and produced 20, 000 tons of strawberry every year. The total cost of the production is more than Rs 100 crore. The climatic condition of Mahabaleshwar is very suitable for strawberry than any other part of the country and is similar to Europe and hence, we are able to grow good quality fruits over here. The taste and sweetness of this fruit is unique• Due to GI recognition we are able to export the fruit to

over 153 countries in the world

CASELET : OBTAINING GI STATUS FOR PUNERI PAGDI

• Product: Puneri Pagdi• Year: May 2010• Shree Puneri Pagdi Sangha recently managed to obtain

geographical indication (GI) status for the famed Puneri Pagadi, the traditional headgear of Maharashtrians, and thus ensure its conservation.• No one would be able to manufacture them through

wrong means and would not be able to amend the traditional way of making them. With the endorsement of the GI, no turban made outside Pune region can be legally sold under the name of Puneri Pagadi and this will benefit local artisans.

SECTION 3: GEOGRAPHICAL INDICATIONS (w.r.t. WTO)

Article 22: Protection of Geographical Indications

• Members shall provide the legal means for interested parties to prevent

• 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

• 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 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.

• 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

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

Article 24: International Negotiations; Exceptions

• 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 consider the continued applicability of these provisions to individual geographical indications whose use was the subject of such negotiations

• 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

STATISTICS

Total GI applications

230

Registered 146

Merged application

7

Withdrawn 4

Refused 2

Abundant 2

Opposed 2

Under process 67

Year Patent Trademark

1996 1960 39689

1997 249 39599

1998 2658 46934

1999 2645 61637

2000 2959 69382

2001 3473 81495

2002 4204 9746

2003 5425 79515

2004 6708 67455

2005 8022 77907

2006 9444 93649

2007 10534 124871

2008 11546 127991

2009 11937 143418

CONCLUSION