Intellectual Property Right [IPR] In India
Hello Counsel provides a variety of IPR services in the fields of Trademark, Patent, Copyright, Design, Trade Secrets, Geographical Indication, Data Protection, etc. Our law firm conducts IP due diligence and IP audits for companies going for acquisitions, mergers and joint ventures.
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Intellectual Property Right [IPR] In India
With the advent of the knowledge and information technology era, intellectual capital has gained substantial importance. Consequently, Intellectual Property [IP] and rights attached thereto have become precious commodities and are being fiercely protected. In recent years, especially during the last decade, the world has witnessed an increasing number of cross-border transactions. Companies are carrying on business in several countries and selling their goods and services to entities in multiple locations across the world. Since intellectual property rights [IPRs] are country-specific, it is imperative, in a global economy, to ascertain and analyze the nature of protection afforded to IPRs in each jurisdiction.
Intellectual Property Rights [IPRs] are legal rights, which result from intellectual activity in industrial, scientific, literary & artistic fields. They are the rights given to persons over the creations of their minds. The IPRs usually give the creators and other producers of intellectual goods & services an exclusive right over the use of his/her creation for a certain period of time. The IPRs can be owned, sold or bought. Trade Marks, Patents and Copy Rights affect the growth and prosperity of every industry, particularly, pharmaceuticals, publishing and entertainment. The Indian government has taken several initiatives to create a conducive environment for the protection of intellectual property rights of innovators and creators. The IPR includes the following- Patent, Trade Mark, Copyright, Passing Off, Industrial Designs, Trade Secrets, Protection of New Plant Variety, Etc.
provides protection for the invention to the owner of the patent. The patent right is granted for a limited period, i.e 20, and thereafter it may be renewed also. Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others. All patent owners are obliged, in return for patent protection, to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world. Such an ever-increasing body of public knowledge promotes further creativity and innovation in others. Infringement of patent is liable for legal action. An action for infringement of a patent can be instituted by filing a civil suit in the Court having jurisdiction. The Indian Patent Act, 1970 contains the law governing patents.
1. Trademark
2. Copyright
3. Designs
4. Industrial Designs
5. Trade Secrets
6. Patent
7. Layout Design
8. Protection Of New Plant Variety
Our Referral Practice broadly include the following:
Designs- Layout Design For Integrated Circuits
Geographical Indications: Registration for protection of geographical indications relating to goods: Decisions of the Registrar appealable before the Intellectual Property Appellate Board (IPAB).
Industrial Designs
Infringements-
Jurisdictional Issues: Territorial Jurisdiction of the Courts in the IPR matters- Legal Provisions governing the Jurisdictional Issues- the S-134 of the Trade Mark, 1999- The S-62 of the Copy Right Act, 1957- The S-104 of the Patents Act, 1970 & The S-22 of the Designs Act, 2000- S-20 CPC, 1908- Related Judgments- (i) Indian Performing Rights Society Ltd. V. Sanjay Dalia- (ii) Ultra Homes Pvt. Ltd. v. Purushottam Kumar Chaubey- (iii) Manugraph India Ltd. v. Sigmarq Technologies Pvt. Ltd.- Jurisdiction In Case Of Infringement Through Online Marketplaces- World Wrestling Entertainment Inc. v. M/s Reshma Collection- (ii) Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy- (iii) Bhagwan Goverdhandas Kedia Vs Girdharilal Parshottamdas & Co.-
Patent: The Patents (Amendment) Act 2002 was enacted to bring our patent regime in line with the TRIPS agreement. Vide this amendment, the Intellectual Property Appellate Board [IPAB] was conferred with the jurisdiction to hear all cases against any order or decision of the controller and all cases pertaining to revocation of patent other than on a counter claim in a suit for infringement and rectification of registers.
Passing Off
Protection of New Plant Variety
Grounds For Filing Of Suit for infringement Of IPR
Trade Mark : Trade Marks Act, 1999
TRIPS Agreement.
Concerned Courts & Fora: IPR
Hon'ble Supreme Court Of India.
High Court Of the Concerned State;
Intellectual Property Appellate Board (IPAB);
Registrar of Trademarks and the Intellectual Property Appellate Board (IPAB)
Registrar Of Trade mark;
Controller of Patents;
CGPDTM- Controller General of Patents, Designs, and Trade Marks- The Office of the CGPDTM is located at Mumbai- The Controller General supervises the working of the Patents Act, 1970, as amended, the Designs Act, 2000 and the Trade Marks Act, 1999 and also renders advice to the Government- https://ipindia.gov.in/
Patent- The Head Office of the Patent is at Kolkata and its Branch offices are located at Chennai, New Delhi & Mumbai-
Trade Mark- The Trade Marks registry is at Mumbai and its Branches are located in Kolkata, Chennai, Ahmedabad and New Delhi
Design- The Design Office is located at Kolkata in the Patent Office.
Patent- The Offices of The Patent Information System (PIS) is at Nagpur.
NIIMP- National Institute of Intellectual Property Management (NIIPM) are at Nagpur. on matters relating to these subjects.
GI- Geographical Indications- In order to protect the Geographical Indications of goods a Geographical Indications Registry has been established in Chennai.
Legislations Governing IPR In India
Geographical Indications of Goods (Registration and Protection) Act 1999.
Intellectual Property Appellate Board (Procedure) Rules, 2003.
Judgments & Citations: IPR In India
Judgments & Citations: Foreign Judgments
Commil Usa, Llc V. Cisco Systems, Inc., 2012-1042, Prost, Chief Judge, Newman & O’malley, Circuit Judges, United States Court Of Appeals For The Federal Circuit [PDF Full Judgment].
Judgments& Citations: Injunctions & Stay
State of Madhya Pradesh Vs The Intellectual Property Appellate Board, Chennai, and 4 others, WP No.5798 of 2016, Judgment Dated: NA/ Status: Pending, Bench: CJ & M.M.Sundresh, JJ, Madras High Court [Full PDF Judgment]- Issue, the inclusion of certain areas of Madhya Pradesh as Basmati growing areas needed to be examined by the Assistant Registrar of Geographical Indications, in view of the impugned order of the Intellectual Property Appellate Board- There is also a plea which is not capable of being raised in the proceedings before the Assistant Registrar of Geographical Indications and can be raised before HC only as a consequence of the impugned order.- Interim Order, “It is directed that till the decision is taken in the writ petition, no precipitative action will be taken by the second respondent in respect of the produce from the State of Madhya Pradesh qua the existing areas where such rice is alleged to have been grown [PDF Of the order dated- 17.02.2016] [PDF Of Interim Order].
Info Edge (India) Ltd. Versus Rakesh Kalia, Cs(Comm) 36/2015, Judgment Dated-15.12.2015, Bench: Hima Kohli, J, Delhi High Court [Full PDF Judgment]- Case concerning a leading internet job portal, “NAUKRI.COM”- Restraining Orders sought by the naukri.com against infringement of the trademark, passing off, unfair competition, infringement of copyright etc.- Injunction granted.
Judgments& Citations: Trade Marks Act, 1999
Data Infosys Ltd. And Ors. Versus Infosys Technologies Ltd., FAO (OS) 403/2012, Judgment Dated: 05.02.2016, Bench: S. Ravindra Bhat, Vipin Sanghi, Najmi Waziri, JJ, Delhi High Court [Full PDF Judgment]- Question, whether prior permission of the Court is necessary under Section 124(1)(b)(ii) of the Trade Marks Act, 1999 for rectification of a registered trademark, during the pendency of a suit.- DB referred the matter to full bench when it observed/ noticed a judicial conflict on this question.- The first view is that proceedings for rectification of the defendant’s mark cannot be initiated without the prima facie satisfaction of the plea by the Court and that the suit cannot be adjourned or stayed in terms of Section 124(1)(b)(ii) of the Act to await the outcome of the rectification proceedings initiated by the plaintiff before the Intellectual Property Appellate Board (hereafter “IPAB”) - if the procedure outlined therein is not followed. The other view is that such proceedings (for rectification before the IPAB) can be initiated without the permission of the court trying the infringement suit and the consequence of not obtaining permission is only that the applicant cannot seek stay of suit.- Held, “1. (a) IPAB has exclusive jurisdiction to consider and decide upon the merits of a plea of trademark registration invalidity – applying Section 47 and 57 of the Act- in the context of an infringement suit based on such registered trademark. Access to IPAB is not dependent on the civil court’s prima facie assessment of tenability of a plea of invalidity of trademark registration. In other words, Section 124 of the Trademarks Act does not control the choice of a litigant to seek rectification of a registered trademark. (b) The decision in Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals and Pharmceuticals Ltd. 2007 (34) PTC 469 (DB) (Del) and all other judgments which hold that the plea of rectification can be raised by a party to an infringement suit, only if the court trying the suit, rules it to be prima facie tenable and that if such finding is not recorded, the party cannot avail the remedy of rectification of a registered trademark, is accordingly overruled. 2. This Court holds, by its majority judgment (Vipin Sanghi, J dissenting on this point) that the two situations whereby the infringement action is stayed, are when the rectification proceedings are instituted before the filing of the suit (Section 124 (1) (i)) and after the plea of invalidity is held to be prima facie tenable under Section 124 (1) (ii)). In the first situation, if such plea exists, before the filing of the suit, the Court has to stay the suit to await the decision of the IPAB. In the second situation, if there is no application for rectification before the IPAB when the suit is filed and a party to the infringement suit, wishes to challenge it after the filing of the suit, it may do so, but the court has to assesses the tenability of the invalidity plea- if it finds it prima facie tenable, then and then alone, would it stay the suit to enable the party to approach the IPAB within a time period. If the party does not avail of this, or approaches the IPAB after the period given, the court would proceed with the suit; the plea of invalidity is deemed abandoned in the infringement suit.”.
· Commil Usa, Llc V. Cisco Systems, Inc., 2012-1042, Prost, Chief Judge, Newman & O’malley, Circuit Judges, United States Court Of Appeals For The Federal Circuit [PDF Full Judgment].
· Cadila Healthcare Ltd. Versus. Cadila Pharmaceuticals Ltd.’, Appeal (civil) 2372 of 2001, Judgment Dated: 26.03.2001, Bench: B.N.Kripal, Doraswamy Raju, British Kumar, JJ, Supreme Court Of India [Full PDF Judgment] -2001 (5) SCC 73- The SC observed as follows: “35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered: (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trade marks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods. (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”.
· F.Hoffmann-La Roche Ltd & Anr Vs. Cipla Ltd., RFA (OS) 92 Of 2012, Judgment Dated- 27.11.2015, Bench: Pradeep Nandrajog, J & Mukta Gupta, Delhi High Court [Full PDF Judgment]. Extent & Scope Of Patents Act, 1970.
Related Links: Legislations Governing IPR In India
We at Hello Counsel realize that Intellectual Property Rights are important in today's technology driven age. We specialize in the Intellectual Property (IP) laws in India. We provide a variety of Intellectual Property services in the fields of Trademark, Patent, Copyright, Design, Trade Secrets, Geographical Indication, Data Protection, etc. We conduct IP due diligence and IP audits for companies going for acquisitions, mergers and joint ventures.
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