Module 1 IPR
Module 1 IPR
The aim of the International conventions on IPR is to standardize and streamline and
regional registration procedures. This is achieved through the simplification and
harmonization certain features of those procedures , thus making IPR applications and
the administration of registrations in multiple jurisdictions less complex and more
predictible.
1. Paris Convention
2. Madrid agreement and protocol
3. TRIPS agreement and minimum International standuards for trade marks
4. The Berne convention for the protection of literary and Artistic works
5. The universal copyright Convention
6. Patent co operation Treaty
1. Paris convention: is all about all different types of IP not just one type of IP. Two
noteable principles:
1. Principle Nationaltreatment-
2. Right of Prioprity - putting something first or first come first serve.
Madrid system
The madrid protocol for the worldwide recognition of trademark, is the essential global
framework for encouraging the enrollment of trademarks. The process by which an
international registration may be defeated for all countries in which it is protected, by
means of a single invalidation or revocation action against the basic registration has
become generally known by the term “central attack”.
Central attack : means within 5 years if the domestic trademark application is rejected
then even the international trademark will also be rejected.
TRIPS convention: In this convention they wanted USA and European Union wanted them to
join or become a signatory to the convention. They gave recognition to wines and spirits of
European Union ( geographical Indication and TCE - Traditional Cultrual Expression) and
gave USA IPC.
Brought the commercial aspect to the convention. India became a signatory to the TRIPS
convention in the year 1994.
Berne Convention : took place in the year 1886; it only talks about copyright, the subject
matter was copyright protection. Copyright is creative and original. The convention gives or
lays down a minimum term of protection under copyright ( no renewal).
A trademark can be any word, phrase, symbol, design, or a combination of these things that
identifies your goods or services. It's how customers recognize you in the marketplace and distinguish
you from your competitors. The word “trademark” can refer to both trademarks and service marks.
Example: Amul logo and Netflix
Conventional trademarks like words, symbols, logos, devices, and names have been commonly used
globally. Non-conventional trademarks go beyond conventional trademarks in terms of their nature,
characteristics, and potential. These include both visible marks (colour, shape, holograms, etc.)
What is use?
•The determination of whether a mark has been continuously used is a matter of fact which
varies from case to case.
•Moreover, with regard to the term “use” the Courts have stated that, the term ”use” does not
necessarily mean and imply actual physical sale and it is now well settled that even mere
advertisement without having even the existence of the goods can be said to be an use of the
mark.
•So for instance, the mark has been registered but hasn’t been manufactured yet,
nevertheless the trademark owner has started to promote the mark by way of advertisements
or TV commercials, which according to the courts, is usage of the mark though the mark
hasn’t been used as such.
What is non-use?
•If the owner of the mark hasn’t used the mark for more than 5 years and 3 months, then
he may lose his trademark rights in such rectification proceedings or opposition
proceedings.
•The onus to prove non-use is on the person who files the application for rectification,
however the onus might be shifted to the trademark owner in the course of hearing and if he
fails to establish usage, his mark will be liable to be removed from the register.
Trademark Infringment Act, 1999
Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is
defined as a use of a mark, by an unauthorized or an authorized person or a
person who is not the registered proprietor, which is identical or deceptively
similar to the trademark in relation to the goods or services in respect of which
the trademark is registered.
●If the mark in dispute is identical with or deceptively similar to the registered
trademark and is in relation to the same or similar goods or services;
●If the identical or similar mark can cause confusion in the minds of general
public to have an association with the registered trademark
●If the registered trademark is used as a part of trade name or business
concern for goods and services in respect of which the trademark is registered
●If the trademark is advertised and as a result it takes unfair advantage or is
contrary to the honest practices or is detrimental to the distinctive character
and reputation of the registered trademark.
In Durga Dutt vs. Navaratna Pharmaceutical (AIR 1962 Ker 156), the
court set the distinction between passing off and infringement suit.
The action for infringement is a statutory remedy conferred on the
registered owner of a registered Trade mark and has an exclusive right
to the use of the trade mark in relation to those goods. And the passing
off is available to the unregistered goods and services.
Comparitive Advertisment
It is a method of commercialising product by diminishing the other’s
product. There are two types of comparitive advertisment:
Legal - when not writing the name of the product
Illegal - when the product name is shown or advertised
Indian Patent Law is defined by various provisions of the Patents Act, 1970. Under this law,
patent rights are granted for inventions covering a new and inventive process, product or an
article of manufacture that are able to satisfy the patent eligibility requirements of having
novelty, inventive steps, and are capable of industrial application. Animals and patents
cannot be patented.
Surrender of patent lisence means where you give up on the right of the patent
holder, for the greater good of the public at large.
Example: Volvo had given up there patent right saying that every company must
have this iv there vehicle for the safety of the customers, it was for the greater good
of the public at large.
In India, patent protection is granted to the process and product but in USA the
patent protection is only granted to the product.
Food can be patented but people prefer trade secrets like KFC chicken or Pepsi and
COCo cola.
Rights and duties of patent holder after being registered:
Duties:
1. Duty to disclose ( they have to disclose each and everything on the public
domain)
2. Duty to request examination
3. Duty to respond or clear objection
4. Duty to pay statutory fees.
5. Duty to obligate and follow compulsory licensing
Section 100- Section 100 of IPA 1970 provides the power to the Government or any person
authorized by it to use the patented invention ‘for purposes of Government’.
Section 47(1)-
section 47(2)-
Section 47(3)-
Section 47( 4)-
Section 49-
Section 107-
Copyright
Creative and original- creative means application of a persons own intellctual mind
and original means not copied.
Labour theory:
Idea Expression Dichotomy- Copyright doesn’t protect the idea but patents protect idea.
From Article
IPR is basically about exclusive rights like monopolistic right over your work in
any intelleactual property. But sometimes doctrine of equity says that if any
invention,intelactual work benifits a public at large if its for educational purpose,
medical use then its not an infringment as its for public at large . Fair use is an
exception of copyright, where fair use of the work of the author by giving him
acknowledgement to his work. Fair use is a concept from uS and Fair dealing is a
concept of UK which is being followed in Indian copyright laws. The origin of fair
dealing is from England copyright laws from 1911, from the doctrine of equity.
In the case of “The Chancellor, Masters & Scholars of the University of Oxford & Ors. V. Rameshwari
Photocopy Services & Anr (DU photocopy case) the legal spat had begun in August 2012 when the
plaintiffs filed a suit in the Court making the allegation that the RPS and delhi university were
violating their copyrights by distributing the compilations of parts of books of their publication in th
form of course packs. In action to such complaint The Court had then issued an interim stay against
the RPS in October 2012.
Justice Rajiv Sahai End law of the Delhi High Court on September 16 2016, dismissed the suit by
observing “Copyright, especially in literary works, is thus not an inevitable, divine, or natural right
that confers on authors the absolute ownership of their creations”. The 94 pages landmark IP ruling
banked on the observation that Section 52(1)(i) of the Copyright Act is wider enough to include the
acts of photocopying and the creation of course packs by University for its students. The further cour
observed that “If Delhi University can photocopy, so can it’s agents (Rameshwari photocopy shop) or
any other photocopier, whether inside or outside the University”.
OVERALL ANALYSIS
All modern copyright system ensures the situation where copyright will not be treated as infringed by
the unauthorized reproduction of any copyrighted content. Under such cases, the judiciary or any oth
authoritative body in the interest of justice has to favour the other interest over the claim of the
copyright owner. On 1 June 2014 united kingdom has added three new statutory instruments into
their Copyright, Designs and Patents Act 1988. These statutory instruments updated the exceptions
and limitations to the rights of performers and copyright around Research, Education, Libraries and
Archives, Disability, and Public. Administration. The updated Research, Education, Libraries and
Archives regulation extends the copyright exception for students and libraries from just literary and
artistic works to all forms of copyright works. So every country is accepting the rule where there
copyrighted work may be used and reproduce for the welfare of education system and students. Gettin
the study material available in different book of big publication houses is not so easy. Numerous
difficulties may arise while doing this whether it could be financial or any other. So if a person want
to attain the higher education without any privation than he would rather prefer reproducing of the
relevant matter of his need through copying than purchasing of such expensive books.
Infringment of copyright :
Violation of copyrigt by coping somelse creative work for commercial
gain purpose. It has been defined in Indian Copyright Act under section
51.
Issues: 1) Plagarism
2) ownership
3) Derivated work
USA, Japan and china have said that AI cannot be the owner of the genearted
work.
Geographical Indication
Geographical Indication (GI) is a sign used on a product that originates from a
specific geographical location. The product must possess reputation and qualities of
the place of origin. GI are generally registered on products produced by rural,
marginal and indigenous communities over generations that have garnered
massive reputation at the international and national level due to some of its unique
qualities. GI tag gives the right to only those registered users the right to use the
product name, and prevents others from using the product name that does not meet
the standards prescribed.
Geographical Indications – Laws & Treaties: There are many laws and treaties
enacted by the World Intellectual Property Organisation (WIPO) and World Trade
Organisation (WTO) for the protection of Geographical Indications.
Paris Convention
Madrid Agreement
Lisbon Agreement
WTO- The main Agreement under WTO for protection of Geographical Indications is
listed below.Trade Related Aspects of Intellectual Property Rights (TRIPS)
Agreement
Geographical Indications – Law passed in India
There are some products which have its origins from different states, in
such a scenario the origin will be mentioned as India.
Phulkari Handicraft – Origin from Punjab, Haryana, Rajasthan.
Warli Painting – Maharashtra, Gujarat, Daman & Diu
Malabar Robusta Coffee – Kerala & Karnataka
Geographical Indications – States in India