Intellectual Property

This chapter focuses on intellectual property and legislation for protection of intellectual property. Considering that, social enterprises are likely to come up with innovative products and methods, this chapter talks about the laws and regulations around intellectual property, patent, copyright, trademark etc.

1. What do intellectual property rights mean?
2. What are the protections provided by IP laws?
3. Are there any other types of intellectual property?
4. What are the important legislations for protection of intellectual property in India?
5. Why is it necessary to patent the products?
6. What sorts of inventions are patentable?
7. What are the relevant factors, which are to be considered while applying for patent?
8. When an application for patent should be filed?
9. What is the term of patent in India?
10. How does a patent expire?
11. What sort of work is given protection under Indian Copyright Act, 1957?
12. What are the rights of Copyright holder?
13. How long does a copyright last in India?
14. Are copyrights assignable?
15. What is a trademark and how is it different from a service mark?
16. Is it mandatory to register the trademark?
17. Is it possible to sell the trademark?
18. Whether sounds or smells be treated as trademarks?
19. What is the term of a trademark?
20. What is a design?
21. What does the law of design protect?
22. Is it necessary to register the design?
23. When should the design be registered?
24. How do registrations of Design provide protection from exploitation?
25. How long is the term of design registration right?
26. What is the meaning of the term Geographical Indication?
27. Can a geographical indicator be registered in the name of an individual?
28. What kinds of indications does the law bar?
29. How long does Geographical Indications last?
30. What are the remedies available to the infringement of geographical indicators?
31. What is meant by domain name and why is it registered?

1. What do intellectual property rights mean?

Intellectual property is understood to mean types of creations of human mind in literary, scientific, artistic, industrial and scientific fields for which property rights are recognized and accorded under applicable laws. Intellectual Property Rights are rights granted to the producer of intellectual property for a limited period to control the use of production of such intellectual property.

2. What are the protections provided by IP laws?

IP laws in India provide the following protections:

a. Patents: A Patent is a negative right, which gives an inventor the right for a limited period to stop others from making, using, selling or importing an invention without the permission of the inventor.
b. Trademark: Any sign such as words, logos, colours, slogans, three-dimensional shapes and sometimes sounds and gestures which can distinguish the goods and services of one trader from those of another.
c. Service Marks: The marks which are used in any form of service business where actual goods under that mark are not traded e.g. a hotel is a service business and the mark would be Taj or Oberoi or Sheraton etc.
d. Copyright: Copyright work is usually the result of creative skill. Any original literary, dramatic, musical or artistic work, and cinematographic film and sound recording is protected by copyrights.
e. Design: Design protection gives the owner a monopoly on his/her product. Design includes the features of shape, configuration, pattern or ornament or composition of lines or color applied to any two or three-dimensional article.
f. Geographical Indication: The protection isgiven to goods that can be identified as originating or manufactured in any particular region or locality and some specific characteristic of such goods is essentially attributable to its geographical conditions.

3. Are there any other types of intellectual property?

The other types of intellectual property are:

a. Plant Varieties: Any plant shall be deemed to be distinct if it is clearly distinguishable from any other variety whose existence is a matter of common knowledge
b. Trade Secrets: Trade Secrets include any information which is either secret or has some commercial value attached to it.
c. Traditional Knowledge: It comprises of the vast expanse of knowledge, innovations and practices of indigenous and local communities embodying their traditional life-styles.
d. Domain names: Easy to remember domain names are used to identify, locate and reach information on the Internet and to connect computers, people on the Internet.

4. What are the important legislations for protection of intellectual property in India?

The important legislations for the protection of intellectual property are:

a. The Patents Act, 1970,
b. The Trade Marks Act, 1999
c. The Copyright Act, 1957
d. The Designs Act, 2000
e. The Biodiversity Act, 2002
f. The Geographical Indications of Goods (Registration and Protection) Act, 1999

5. Why is it necessary to patent the products?

Patenting a product protects exclusive rights of an inventor over his/her invention. Patenting a product will also protect an inventor against his/her invention being copied and exploited commercially without his/her permission and will serve to debar others from using, selling, offering for sale or manufacturing the product.

6. What sorts of inventions are patentable?

A unique and non-obvious invention capable of industrial application is patentable. The invention must be a:

a. Process, method or manner of manufacture
b. Machine, apparatus or a product
c. Substance produced by manufacture including any new and useful improvements of any of them and an alleged invention.

7. What are the relevant factors, which are to be considered while applying for patent?

In order to be patentable, an invention must be new, unique, capable of industrial application and non-obvious.

8. When an application for patent should be filed?

Filing an application for a patent at the earliest is recommended. However, an application with provisional specification may be made provided it is followed with complete specification within twelve (12) months from the date of filing such an application, however, if the complete specification is not filed, the application shall be deemed to be abandoned.

9. What is the term of patent in India?

Registration of a patent in India subsists for a period of twenty (20) years from the date of filing of application for such patent.

10. How does a patent expire?

A patent will expire:

20 years from the date of filing of application for such patent;
If the patentee fails to pay the renewal fee towards the patent;
If the validity of the patent has been successfully challenged by an opponent by filing an opposition; and
If the patent is revoked.

11. What sort of work is given protection under Indian Copyright Act, 1957?

Copyright protects the original expression of thought or information in some concrete or tangible form. Copyright subsists in the following types of works: Original Literary (including software and compilations), dramatic, musical and artistic; Cinematograph films and Sound recordings.

12. What are the rights of Copyright holder?

The law gives following rights to a Copyright holder:

Literary work:
To reproduce the work in any material form including the storing of it in any medium by electronic means;
To issue copies of the work to the public not being copies already in circulation;
To perform the work in public, or communicate it to the public;
To make any cinematograph film or sound recording in respect of the work;
To make any adaptation of the work;
Artistic work:
To reproduce the work in any material form;
To communicate the work to the public;
To issue copies of the work to public;
To include the work in any cinematograph film;
To make adaptations of the work;
Cinematographic film:
To make a copy of the film, including a photograph of any image forming part thereof;
To sell or give on hire, offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions;
To communicate the film to the public.
Sound recording:
To make any other sound recording embodying it;
To sell or give on hire, offer for sale or hire, any copy of the sound recording, regardless of whether such copy has been sold or given on hire on earlier occasions
To communicate the sound recording to the public.

Copyright subsists and vests with the author automatically from the moment the work is created. Registration by the office of the Registrar of Copyrights is merely an acknowledgement of the existence of a person’s copyright and a prime facie proof of title.

13. How long does a copyright last in India?

The length of protection depends on the work:

Literary, dramatic, musical and artistic works: 60 years after the death of the author;
Anonymous, pseudonymous and posthumous works: 60 years from the beginning of the calendar year following the year the work was first published;
Photographs, sound recordings, films, government work and works of public undertaking or that of international organizations: 60 years from the beginning of the calendar year following the year the work was first published.

14. Are copyrights assignable?

Yes. An owner of a copyright in an existing work or a prospective owner of a copyright in a future work may assign to any person the copyright, in whole or in part either generally or subject to a few limitations for the entire term of the copyright or any part thereof. However, it is important to note that in the case of the assignment of copyright in any future work, the assignment will take effect only when such work comes into existence.

15. What is a trademark and how is it different from a service mark?

Trademark is any name, symbol or combination of both which can be graphically represented and is affixed to any goods or services for the purpose of indicating the source of origin or distinguishing the manufacturer. A service mark is similar to a trademark but indicates only the origin of a service.

16. Is it mandatory to register the trademark?

No. It is not necessary to register a trademark. However, registering a trademark will serve as a prima facie evidence in a court of law with reference to dispute relating to ownership of the trademark. Apart from and/or in addition to registration, a person can also obtain rights in an unregistered mark. By virtue of use of a trademark, a proprietor acquires valuable goodwill, which is protectable at common law by way of a passing off action.

17. Is it possible to sell the trademark?

A trademark may be sold provided such change of ownership of the trademark is effected by an assignment agreement that is properly executed and notarized by both parties and is filed with the trademarks registry.

18. Whether sounds or smells be treated as trademarks?

Sounds and smells may be treated as trademarks provided they are capable of being reproduced graphically and are distinctive. Musical notations along with the sound recording for sound and chemical formula along with the sample for smell are treated as trademark.

19. What is the term of a trademark?

Registration of a trademark subsists for a period of ten (10) years. Subsequent to this, the trademark registration can be renewed for a further period of ten (10) years as per the provisions of the Trademarks Act.

20. What is a design?

Applied by a mechanical or chemical process, designs refer to the overall shape and appearance of good/articles that are aesthetically appealing.

21. What does the law of design protect?

The Design Act protects only an article of manufacture and any substance, which is artificial or partly artificial and includes any part of an article capable of being made and sold separately.

22. Is it necessary to register the design?

It is necessary to register a design to protect it and to ensure that the creator of the design is not deprived of his/her rights to/in it.
When a design is registered, the registered proprietor of the design shall have copyright to the design. However, the copyright shall cease to subsist if the design has not been registered, but has been applied to articles reproduced more than fifty times.

23. When should the design be registered?

Registering a design at the earliest date possible is recommended because if two (2) or more applications for a similar design are filed on different dates then only the first application will be considered for registration of design.

24. How do registrations of Design provide protection from exploitation?

Certificate of registration of a design will serve as prima facie evidence in a court of law with reference to a dispute relating to ownership of the design.

25. How long is the term of design registration right?

A design registration will subsist for a period of ten (10) years. After this period, an application for renewal may be made to the controller for a further extension of five (5) years.

26. What is the meaning of the term Geographical Indication?

A Geographical Indication identifies any goods as originating in a particular locality/territory, where the quality or such other characteristic of the goods is essentially attributable to their geographical origin.

27. Can a geographical indicator be registered in the name of an individual?

No, a geographical indicator cannot be registered in the name of an individual as a registered geographical indicator is a community/group right.

28. What kinds of indications does the law bar?

The indications barred by law are:

a. Indications likely to deceive or cause confusion.
b. Indications contrary to any law.
c. Indications, which contain scandalous/obscene matter.
d. Indications, which would hurt the religious sentiments of people.
e. Indications, which are generic in character.
f. Otherwise disentitled to protection in a court.
g. Originate in one territory, but falsely represented as originating from another territory.

29. How long does Geographical Indications last?

The term of a registered geographical indicator subsists for a period of ten (10) years. Subsequent to which it must be renewed. In the event of non-payment of the renewal fee, a grace period of one (1) year is provided for restoring such registration.

30. What are the remedies available to the infringement of geographical indicators?

The Civil remedies available for the infringement of a geographical indicator include injunctions, damages and the return of such infringing goods for destruction and forfeiture of the goods that bear false representation of an existing Geographical Indication. The criminal remedies include a minimum mandatory sentence of six (6) months imprisonment and maximum of three (3) years and the minimum mandatory fine of 50,000 (Rupees Fifty Thousand only) and a maximum of 2,00,000 (Rupees Two Lakhs only).

31. What is meant by domain name and why is it registered?

Domain names are unique names that are easily identifiable on the World Wide Web. Easy to remember these names are not only used to identify, locate and reach information on the Internet but to connect people, computers on the Internet.
Domain names are registered to preserve order on the Internet and to ensure that no two people own the same domain name. A central registry of all domain names is maintained by ICANN (Internet Corporation for Assigned Names and Numbers).