organizers : nirc of icsi two days capacity building workshop for practicing … · 2012-11-06 ·...
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TWO DAYS CAPACITY BUILDING WORKSHOP FORPRACTICING COMPANY SECRETARIES
PRESENTED BY : AJAY GARG, CORPORATE COUNSEL & LAWYERS
18.08.2012
FORE-NOON SESSION : REALISTIC OPPORTUNITIES IN IPR
ORGANIZERS : NIRC of ICSI
Following are the person who may be TM attorney-
Ø Advocate
Ø Graduate
Ø A member of Institute of Company Secretaries of India
Ø Any fit & proper person
AJAY GARGCorporate Counsel & Lawyers
Ø Apply in Form TMA- 1.
Ø Furnish necessary information
ØA TM attorney will be a Copyright Attorney
AJAY GARGCorporate Counsel & Lawyers
Ø TRADE MARK ACT , 1999
Ø COPYRIGHT ACT , 1957
Ø PATENT ACT , 1970 (2005)
Ø DESIGNS ACT , 2000
Ø GEOGRAPHICAL INDICATION OF
GOODS ACT, 1999
Ø BIOLOGICAL DIVERSITY ACT , 2002
Ø PROTECTION OF PLANT VARIETIES &
FARMERS’ RIGHT ACT , 2001
Ø SEMICONDUCTOR INTEGRATED
CIRCUIT LAYOUT DESIGN ACT,2000
AJAY GARGCorporate Counsel & Lawyers
AJAY GARGCorporate Counsel & Lawyers
Act : Trade Marks Act, 1999
Rules : Trade marks Rules 2002
Classes : Goods and Services
Goods Classes : Fourth Schedule (Class 1-34)Services Classes : Fourth Schedule (Class 35-45)
Forms : Second Schedule
Forms : Third Schedule (to be used by Registrar)
Fees : First ScheduleWebsite : www.ipindia.nic.in
Main Office : In Mumbai
AJAY GARGCorporate Counsel & LawyersAJAY GARG
Corporate Counsel & Lawyers
CompetentCompetentadministrationadministration
Ministry of Commerce Ministry of Commerce Dept. Of industrial Policy & Promotion Dept. Of industrial Policy & Promotion Controller General of Trade MarksController General of Trade MarksTrade Marks RegistryTrade Marks Registry
Web siteWeb siteAddressAddress
www.ipindia.nic.inwww.ipindia.nic.in
AddressAddress Trade Marks Registry,Trade Marks Registry, DelhiDelhiIntellectual PropertyIntellectual Property Bhavan, Bhavan, Plot NO.32, Section 14,Dwarka,Plot NO.32, Section 14,Dwarka, DelhiDelhi
TelephoneTelephone011011--28082915/ 16/1728082915/ 16/17
TelefaxTelefax 01128032381 01128032381
JurisdictionJurisdiction State of Jammu & Kashmir, Punjab, Haryana, State of Jammu & Kashmir, Punjab, Haryana, UttarPradesh,UttarPradesh, HimachalHimachal Pradesh, Union Pradesh, Union
Territory of Delhi andTerritory of Delhi and ChandigarhChandigarh
AJAY GARGCorporate Counsel & Lawyers
Tips to be remembered:
q Creativity
q Fonts
q Color Scheme
q Tagline
q Combination of picture and words
q Dictionary words / Coined words
q Geometrical Shapes
AJAY GARGCorporate Counsel & Lawyers
v WORD MARK
Microsoft ESPN DISNEY
v LOGOS, PICTURES OR DRAWINGS
v SLOGANS
v PRODUCT SHAPES
AJAY GARGCorporate Counsel & Lawyers
TM - ORGANIZATIONAL STRUCTURE
MINISTRY OF COMMERCE AND INDUSTRY
MINISTRY OF COMMERCE AND INDUSTRY
DEPT. OF INDUSTRIAL POLICY & PROMOTION
DEPT. OF INDUSTRIAL POLICY & PROMOTION
CONTROLLER GENERAL OF TRADE MARKS
CONTROLLER GENERAL OF TRADE MARKS
TRADE MARKS REGISTRYTRADE MARKS REGISTRY
JOINT REGISTAR OF TRADEMARKSJOINT REGISTAR OF TRADEMARKS
AJAY GARGCorporate Counsel & Lawyers
FILING OF APPLICATION
ALLOTMENT OF APPLICATION NO.
ISSUE OF EXAMINATION REPORT BY THE TRADE MARK OFFICE
OBJECTION RAISED
NO OBJECTION OBJECTION REMOVED
BY EVIDENCE ETC.
HEARING BEFORE THE TRIBUNAL ARGUMENTS AND EVIDENCE ETC. Objection Not Overcome
Application Abandoned
OBJECTION UPHELD
REGISTRATION REFUSED
OBJECTION OVERRULED
PUBLICATION IN THE TRADEMARK JOURNAL
4 MONTHS PERIOD FOR PUBLIC OBJECTIONS, IF NO OPPOSITION WITH IN 4 MONTHS, THE TRADEMARK IS
PROCEEDED FOR REGISTRATION
ISSUE OF REGISTRATION CERTIFICATE
RENEWAL FEE BECOMES DUE AND PAYABLE EVERY TEN YEARS w.e.f. THE DATE OF THE FILING OF APPLICATION
AJAY GARGCorporate Counsel & Lawyers
PROCEDURE FOR REGISTRATION OF TRADEMARK IN INDIA
Ø Initially for 10 Years.
Ø Can be renewed for further 10 Years
Ø Can be subsequently renewed time and again.
AJAY GARGCorporate Counsel & Lawyers
1.1. INFIRNGEMENT ACTION :INFIRNGEMENT ACTION :
ØØ Injunction Injunction –– exex--party or interlocutory orderparty or interlocutory order
ØØ Damages or Account of Profits.Damages or Account of Profits.
ØØ Impounding of unused labels / destruction Impounding of unused labels / destruction of the sameof the same
ØØ Order for delivery of the infringing labels;Order for delivery of the infringing labels;
ØØ Seizure and confiscation;Seizure and confiscation;
ØØ PenaltiesPenalties
2.2. PASSING OFF PASSING OFF
AJAY GARGCorporate Counsel & Lawyers
q E-filing is provided by the Trade Mark Authorities :
q
ØTM Search
Ø New Application
Ø www.ipindia.nic.in
AJAY GARGCorporate Counsel & Lawyers
COPYRIGHT BASICSCOPYRIGHT BASICSAct : Copyright Act, 1957
Rules : Copyright Rules 1958
Main Office : DelhiForms : Schedule I
Fee Structure : Schedule II
Ownership of Copyright : First ownership defined
differently for different categories
Website : http://copyright.gov.in/
AJAY GARGCorporate Counsel & Lawyers
WORKS PROTECTED WORKS PROTECTED UNDER COPYRIGHT LAWUNDER COPYRIGHT LAW
1.Artistic work
2. Cinematograph work
3. Sound recording
4. Dramatic works;
5. Musical work;
6. Original literary work
AJAY GARGCorporate Counsel & Lawyers
ORGANIZATION STRUCTURE OF ORGANIZATION STRUCTURE OF COPYRIGHT IN INDIACOPYRIGHT IN INDIA
MINISTRY OF HUMAN RESOUCE DEVELOPMENT
MINISTRY OF HUMAN RESOUCE DEVELOPMENT
DEPT. OF EDUCATIONDEPT. OF EDUCATION
COPYRIGHT OFFICECOPYRIGHT OFFICE
REGISTAR OF COPYRIGHTREGISTAR OF COPYRIGHT
AJAY GARGCorporate Counsel & Lawyers
DEPUTY REGISTAR OF COPYRIGHTDEPUTY REGISTAR OF COPYRIGHT
SECTION OFFICERSSECTION OFFICERS
EXAMINERSEXAMINERS
Competentadministration
Copyright DivisionDepartment of Higher EducationMinistry of Human Resource DevelopmentGovernment of India
Web siteaddress
http://copyright.gov.in/
Address 4th Floor, Jeevan Deep Building, 1 & 2 Parliament StreetNew Delhi, 110001
Telephone (91 11) 233 41 739(91 11) 233 62 436(91 11) 233 81 894 (Dr. Shri G.R. Raghavender)(91 11) 233 82 436 (Dr. Suresh Chand)
Telefax (91 11) 233 84 687
E-mail address
COPYRIGHT OFFICE
AJAY GARGCorporate Counsel & Lawyers
Objection Filed(Y/N)?
Filing of application along with fee (DD/IPO)
Issue of Dairy No.
30Days Mandatory waiting for Objections
Objection filedNo Objection
Securitizationby Examiner
Application accepted(Objections rejected)
Sending Letter to both parties
Reply from both parties
Hearing by Registrar
Discrepancy letter issued to applicant
Reply from applicant
Hearing by Registrar due to rejection
Discrepancy
(Y/N)?
Application
Accepted
Discrepancyfound
Application Accepted (Y/N)?
Registration Approved (Y/N)? (Dy. Registrar)
Application rejectedRegistration approved
Sending Rejection letter to the Applicant
Sending Extracts from Register to the Applicant
ApplicationRejected
NoYes
No Discrepancy found
PROCEDURE FOR REGISTRATION OF COPYRIGHT IN INDIA
AJAY GARGCorporate Counsel & Lawyers
ASSIGNMENT• In writing,
• Signed.
• Should identify the work with royalty
• Specify the rights assigned, duration and territorial extent.
• Rights should be exercised within a period of 1 year.
• If period not stated-then deemed to be 5 years.
AJAY GARGCorporate Counsel & Lawyers
DURATION AND TERMS OF COPYRIGHT
Copyright protection lasts for 60-year from the year following the death of the author of the works mentioned below:
ØLiterary work ØDramatic work Ømusical work Øartistic work
AJAY GARGCorporate Counsel & Lawyers
Ø Injunctions whether interim or final.
Ø Damages.
Ø Criminal Action
Ø Imprisonment
AJAY GARGCorporate Counsel & Lawyers
Ø EXCLUSIVE MARKETING RIGHT
Ø NEW INVENTION
Ø TERM OF PATENT ( 20 YEARS)
Ø IS IMPROVEMENT PATENTANLE
Ø METHODS / PROCESSES OF MANUFACTURE - PATENTABLE
AJAY GARGCorporate Counsel & Lawyers
STAGES STAGES -- FILING TO GRANT OF PATENTFILING TO GRANT OF PATENT
PUBLICATION OF APPLICATION
REQUEST FOR EXAMINATION
GRANT OF PATENT
3rd Party Representation
Revocation/Amendment
OPPOSITION
• PROMPTLY AFTER 18 MONTHS FROM P.D.
• WITHIN 48 MONTHS FROM F.D.
• ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS
• IF P.S.IS FILED C.S. TO BE FILED WITHIN 12MONTHS
• WITHIN 12 MONTHS
FILING OF APPLICATIONPROVNL. / COMPLETE
Decision of Controller
EXAMINATION-ISSUE OF FER
Appeal
Appellate Appellate BoardBoard AJAY GARGCorporate Counsel & Lawyers
SCOPE OF REFERRAL PRACTICE
Ø Needs to connect with other professional.
Ø Moving successfully into less travelled territory.
Ø Always bring admiration and accolades.
Ø Be always in touch with colleagues, friends and professional friends.
AJAY GARGCorporate Counsel & Lawyers
PROFESSIONAL OPPURTUNITIESACTIVITY INDICATIVE
FEESLEVEL - I
SEARCH 5,000 Rs.
TEMPORARY REGISTRATION
10,000Rs.
DEPARTMENTAL OBJECTION
20,000Rs.
PERMANENT REGISTRATION
5,000Rs.
LEVEL - IIOPPOSITION AGAINST
NEWAPPLICANT 50,000Rs.
AJAY GARGCorporate Counsel & Lawyers
CONT……….
AJAY GARGCorporate Counsel & Lawyers
RENEWAL 50,000 Rs.
RESTROATION 50,000Rs.
LEVEL -III
INFRINGEMENT ???Lacs
VALUATION ???Lacs
DEPARTMENTAL OBJECTION
??? Lacs