Origin, Scope, Need, Types of Intellectual Property Rights(IPR)

This article is written by Nishka Kamath. In this article, the author has made an attempt to discuss all the important types of IPR, including copyright, trademark, patent, geographical indications, designs, trade secrets, plant variety, and semiconductor integrated circuit layout designs. Further, other budding forms of IPR, including digital assets, biodiversity and traditional knowledge, are discussed in brief.

This article has been published by Shashwat Kaushik.

As the name suggests, the term ‘intellectual property’ is the creation of intellect, i.e., the human mind. It has the ability to protect the creation of the human mind and can be in any form, say, a logo, a new invention, any drawing, painting or piece of art, musical compositions, etc. Further, there are IP laws that help one (the owner) exclusively use his/her intellectual property and prevent others from using it without obtaining prior permission from the owner.

Moreover, intellectual property is an intangible (something that cannot be touched, seen or perceived) right that is exercisable in respect of a tangible work. Furthermore, one must note that there is a difference between ownership rights to a tangible product and the rights of an intangible nature. Let us understand this with the help of an example. Say, Ms. Radha has purchased a CD from a local market. Now, she has the right to own and possess the CD. She can also take action against any individual who possesses the CD without obtaining her prior permission. Simply put, the right of possession is the intangible right of the purchaser. Yet, Mr. Krishna, the composer of the music, will have several intangible rights over it, namely:

1. The right to reproduce the music,
2. The right to make copies of that musical composition, etc.

Also, one should note that these intangible rights of the composer are certainly not available to the purchaser of the music CD.

Additionally, there are several types of intellectual property, which are broken into two major categories, namely:

1. Industrial property, and
2. Copyright law.

Under these categories, the main types are segregated as:

Industrial property-

1. Patents:

1. Product patent, and
2.  Process patent.

2. Trademarks,
3. Industrial designs,
4. Layout designs.

Literary property

1. Copyright,
2. Neighbouring rights:

1. Performers rights, and
2. Broadcasting rights.

In this article, an attempt is made to discuss all these important types of intellectual property in detail.

What is a copyright: a brief overview

As the name suggests, a copyright is the ‘right to copy’. Simply put, the individual owning the copyright, i.e., the owner, has the exclusive right over the work and has the authority to make copies of the same. The Oxford Dictionary defines copyright as “the exclusive right to publish or record a work”. It can also be referred to as an intangible (something that cannot be touched) granted to the owner of any literary or artistic work for multiplying copies for a limited time period and publishing the same. In India, copyright provisions, rules, registration, etc., are dealt with by the Copyright Act, 1957.

Definition of copyright

Section 14 of the Copyright Act, 1957, defines copyright as the exclusive rights to do or give permission to someone to do some things with regards to-

1. Literary, dramatic and musical work,
2. Artistic work,
3. Cinematographic film, and
4. Sound recording.

Let us understand this with the help of an instance. Say, there is a boy named Dholu who is a writer and has written a book. In accordance with Section 14 of the Copyright Act, 1957, Dholu has exclusive rights over that work, meaning-

1. Dholu can reproduce the book in any material form, so hard copy and soft copy, both publications are permitted.
2. Dholu can further issue new copies of the book, share them with the public, and keep them for sale, and those copies do not necessarily have to be already in circulation.
3. Dholu can perform his work in public or share it with the general public, say, by reading his book in public through a public reading or radio broadcast.
4. Dholu can further produce a film or sound recording related to the novel.
5. Dholu can also get the book translated and publish it in other languages.
6. Dholu can adapt his novel into another form, like a screenplay. 
7. In relation to a translation or an adaptation of his work, Dholu can perform/follow any of the aforementioned acts.

Please note: If someone other than Dholu wants to do any of the aforementioned pointers to his novel, he/she may need to get his authorisation. If he/she does not follow this, there is a possibility that he/she is infringing on Dholu’s copyright.

Examples of copyright

Example of copyright: a general view

Let us take the example of an Indian author and novelist- Mr. Bholu. As per Section 14 of the Copyright Act, 1957, Mr. Bholu has exclusive rights to his work, meaning:

1. Mr. Bholu has the right to reproduce the novel in any form, including storing it in digital form or producing a soft copy, alongside the hard copy.
2. Mr. Bholu has the authority to issue new copies of his novel to the public, not copies already in circulation.
3. He can further perform his work in public or communicate it to the public, like via a public reading or radio broadcast.
4. Mr. Bholu can also make a film or get a sound recording related to the novel.
5. Mr. Bholu can also get the novel translated into regional and foreign languages.
6. He can also adapt the novel into another form, like a theatrical or screenplay.

Further, with regard to the translation or adaptation of his work, Mr. Bholu can do any of the aforementioned acts. Also, if any other individual has to do any of the above acts, they have to get his prior permission. And if they do not, he/she could be infringing Mr. Bhlu’s copyright.

Examples of copyright gems of India

Cinematograph films

All the original scripts, dialogue, soundtrack, music and other creative elements involved in the movie are protected. For instance, movies like ‘Dilwale Dulhania Le Jayenge’ or ‘3 Idiots’.

Literary, dramatic or musical works

Literary work

Several original literary works, including novels, poems and essays of individuals like Rabindranath Tagore and Vikram Seth.

Dramatic work

A recent example of dramatic work would be the movie- ‘Oh My God’ an adaptation from a Gujarati play.

Musical work

Here, we can take the example of the very famous song ‘YAARAM’ which was originally written by Gulzar and composed by Mr. Bharadwaj. So, here, the copyright over the lyrics will belong to Gulzar, whereas the musical composition will be of the composer.

Original artistic work

Paintings, sculptures, drawings and other artistic works, including renowned personalities like M.F. Hussain and Raja Ravi Verma.

Sound recordings

Instances of sound recordings include songs by Indian musicians A.R. Rahman, Asha Bhosle, Lata Mangeshkar, etc.

Computer programmes

Copyright also safeguards software codes and other computer programmes, such as words, codes, schemes, etc. The famous software in the Indian market are companies like TCS and Infosys.

Characteristics/features of copyright

Originality

Copyright subsists only in cases of original work. Here, the term ‘original’ does not necessarily mean that the work has to be the expression of original or inventive thought; instead, it relates to the expression of the thought; however, it does not have to be in an original or novel form but must not be copied from any other work, meaning it should originate from the author. In other words, no copyright will subsist when it is in the form of any unauthorised reproduction of work or in a work which is not originated from the author.

Exclusive right 

One of the most important features of copyright is that it is an exclusive right. It has a monopolistic effect, thus excluding other individuals from using it. Further, it is pertinent to note that even though the owner of the copyrighted work has a monopoly over the ‘work’, he/she does not have a monopoly over the ‘subject matter of such work.

Multiple rights

Copyright has numerous rights in the same work. Copyright law has assigned ownership of copyright with several other rights, like that of-

1. Reproducing the work,
2. Adaptations of the original work,
3. Translation of the work, etc.

Negative rights

Under copyright law, the owner of the copyrighted content, i.e., the original work, is protected from others. Simply put, one does not have the authority to use the copyrighted work of the owner or the author without obtaining prior permission or consent. Further, as the right is prohibitive in nature, the same can be regarded as a negative right that is available to the author against others.

Exists in the expression of ideas, not just the idea itself

One cannot claim copyright for an idea. Copyrights can only exist in material forms wherein the ideas are expressed. One cannot say that their copyright was infringed simply because an individual adopted their ideas or concepts.

Types of copyright

Copyright consists of a broad spectrum of protections when it comes to various forms of artistic expression; listed below are most of them.

Literary copyright

This sub-category includes original and distinctive literary compositions. Literary copyright may consist-

1. Scripts,
2. Biographies,
3. Novels,
4. Academic theses,
5. Technical manuals,
6. Software codes, etc.

Dramatic copyright

Generally, theatrical compositions fall under this category and include-

1. Scripts that are made for stage performers,
2. Mime shows,
3. Plays,
4. Dance choreography and
5. Any type of written work that is intended for live enactment.

Musical copyright

Under this sub-category, only musical compositions (to be registered with the Copyright Office) and not lyrics or sound recordings are protected.

Artistic copyright

This sub-category, among other artworks, includes:

1. Paintings, 
2. Images and photographs,
3. Designs made by architect,
4. Sketches,
5. Diagrams,
6. Cartoons,
7. Engravings,
8. Graphics,
9. Sculptures, and
10. Blueprints.

Sound recording copyright

Under this sub-category, any form of sound that has been captured (or recorded), say podcasts, audible content, etc., is included. The owner who has such rights also has the right to-

1. Sell or lease copies of recordings to other organisations or individuals,
2. Broadcast the recorded audio to a wide variety of people,
3. Produce other derivative works or recordings that are originally inspired by the original work.

Cinematographic copyright

This sub-category includes all types of visual recordings that display moving images and these images can be captured using any technique, be it analogue or digital and mostly include video films.

Choreographic copyright

This sub-category includes works that are intended to protect unique dance patterns, sequences, patterns, and other types of organised movement.

Architectural copyright

Here, the intellectual property of architects and designers is like that of buildings, architectural plans or blueprints, detailed drains of any structure, etc.

Software and computer programs

Under this sub-category, computer software and programs, from their foundational code to their user interfaces, can be protected. This, in turn, helps in ensuring that the intellectual effort behind developing a software solution is recognised and protected.

Compilations and databases

Here, compilations like encyclopaedias, directories or databases can be protected from copyright infringement.

Ownership of copyright

Term of copyright

The duration for which a copyright is protected depends solely on the type of copyright. It is explained under various sections of the Copyright Act. Let us learn about each of them with the help of some examples.

Section 22: Published literary, dramatic, musical and artistic works

In the case of published literary, dramatic, musical and artistic works, the copyright subsists for the lifetime of the author until 60 years from the beginning of the calendar year, next following the year the author dies, as stated under Section 22. In cases where there is joint ownership, the author who dies last will be taken into consideration.

Example

Let’s consider this situation. There is a man named Golu who is a novelist. He published a book in 1980 and died in 2000. As per Section 22, the copyright for Golu’s book will be effective until 2060, i.e., 60 years from the start of the calendar year when Golu died.

Now, let us make some changes to this scenario. Say, Golu, is the co-author of a book authored mainly by Molu, his classmate, who passed away in 2010. Here, the copyright will last for another 60 years, i.e., until 2070, as Molu was the last to survive among the authors of the book.

Section 23: Anonymous and pseudonymous work

Under Section 23, copyright for anonymous or pseudonymous work will subsist for 60 years from the start of the calendar year following the year when the work was first published. Further, if the identity of the author is made known before the expiration of the said period, the copyright will subsist for 60 years from the time the calendar year begins following the year in which the author dies. In cases where there is joint ownership, the author who dies last will be taken into consideration.

Example

Let us take into consideration a scenario where there is an anonymous author, ‘Ms. Ka’ who published a novel in 1960. As per Section 23(1), the copyright will last until 2020, i.e., 60 years from the year it was first published. Now, the author decided to reveal her true identity in 1980, the copyright will last until 60 years from the beginning of the year following the death of the author.

Now, let’s take another scenario. Here, Mr. A and Ms. B published a book in 1960, whose identity remained anonymous. Then, Mr. A decided to disclose his identity in 1980 and died in 1990, and Ms. B decided to disclose her identity in 2000 and died in 2010. Now, as per Section 23(2)(b), the copyright will subsist until 2070, i.e., 60 years from the beginning of the year following the death of Ms. B, who was the last to die among the names of the disclosed authors.

Section 24: Posthumous work

Under Section 24, in the case of a literary, dramatic or musical work or engraving, wherein copyright subsists at the date of the death of the author or in the case of joint ownership, wherein the last author dies, and the work has not been published before that date, the copyright will last for 60 years from the beginning of the calendar year next following the year in which the work is first published. Further, if the adaptation of the work is published in an earlier year, the period starts from the year after the adaptation is published. Here, the term ‘published’ means it has been performed in public or if the recordings of the same have been offered or sold to the public.

Example

Let us assume there is a renowned playwright, Mrs. Verma, who died in 2020. She wrote a script titled ‘The Destination’ that was not published or performed while she was alive. However, in 2022, a theatre found this play and performed it for the first time. As per Section 24(1), the copyright of the script will continue until 2082, i.e., 60 years from the beginning of the calendar year following the year when the play was first performed.

Furthermore, let us say, Mrs. Verma had also written a musical composition titled ‘Track the Time’, which was unpublished or sold during her lifetime. However, she had made a sound recording of this track that was sold to a company after her death in 2021. Now, in accordance with Section 24(2), ‘Track the Time’ was published in 2021, thus, the copyright lasts for another 60 years, i.e., until 2081.

Section 25: Photograph

The same has been deleted via an amendment in 2012 and became effective on June 21, 2012. Prior to the Amendment, this Section would explain how long the copyright protection would last in the case of photographs.

Example

Let us take the example of Mr. Ghasitaram, who was a professional photographer. He clicked a unique photograph in 2002 and got it registered in accordance with the provisions of the Copyright Act, 1957. As per the original Act, the copyright for photographs will last for 50 years; however, the same was removed by the 2012 Amendment. So, now, if someone uses the photograph clicked by Mr.Ghasitaram without his permission he can claim copyright infringement.

Section 26: Cinematograph films

As per Section 26, the copyright for cinematograph films will last for 60 years from the beginning of the calendar year following the year in which the film is published.

Example

Let us take, for example, a scenario where there is a filmmaker, Mr. Karthik, who released a movie titled ‘The Stars of Bollywood’ in 1990. As per Section 26, the copyright of this film will subsist until 2051 (which can be calculated as follows: 1990, the year of publication + 1, the next calendar year + another 60 years = 2051. During this time, no person has the right to reproduce, distribute or display the film without obtaining prior permission from the filmmaker. And if someone does this, he/she will be liable for copyright infringement.

Section 27: Records

In accordance with Section 27 in case of sound recording or records, a copyright will last for 60 years from the beginning of the calendar year following the year in which the sound recording is published.

Example

Let us consider this scenario. Mr. Swarr published a song in 1980 and as per Section 27, the copyright will last for 60 years, i.e., until 2040. In this situation, he has the right to reproduce, distribute and gain economic benefits from the song. After this, the song will enter public domain, thus allowing anyone to use it without obtaining prior permission from Mr.Swarr or providing any sort of monetary compensation.

Section 28: Government works

Section 28 says that in the case of government work, where the government is the first owner of the copyright therein, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published.

Example

Let us take the example of the Indian Government and an artist named Mr. Kalakar. Say, the Indian Government commissioned an artist in 2021 to create a unique sculpture for a public park. Mr. Kalakar successfully completed the sculpture, which was unveiled in 2022 to the general public. Since, the Indian Government is regarded as the first owner of the copyright of the sculpture, the copyright will last for 60 years from the beginning of the calendar year following the year of first publication, meaning the copyright will subsist with the government until 2082.

Section 28A: Public undertakings

As per Section 28A, in the case of a work where a public undertaking is the first owner of the copyright therein, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published.

Example

Let us take an example of a government owned publishing house who published one of the many books in 2020. As per Section 28A, the copyright of this book will be owned by the public undertaking until 2080. So, until 2080, the public undertaking will have the exclusive rights to reproduce, distribute, and adapt the work.

Section 29:International organisations

As per Section 29, in case of any international organisation to which the rules stated in Section 41 apply, the copyright will last for 60 years from the beginning of the calendar year following the year in which the work is first published

Example

Say, WHO (World Health Organisation) published a health research paper on 1st July 2020. Now, as per Section 29, the copyright of this research paper is with WHO until 2080, meaning no party, person, or individual has the right to reproduce, distribute or display the research paper without seeking proper permission from WHO. If they do so, it will amount to copyright infringement.

Registration of copyright

Section 44 to Section 50A discusses provisions for registering a copyright. Let us see what each Section says.

Section 44

Section 44 states that the Register of Copyrights must be kept at the Copyright Office.

Section 45

Section 45 talks about eateries in the Register of Copyrights.

Section 46

Section 46 states that indexes of the Registrar of Copyrights and indexes thereof shall also be kept at the Copyright Office.

Section 47

Under Section 47, forms and the Register of Copyrights and indexes thereof must be kept open to inspection at all reasonable times and any individual is entitled to take copies of the same or extract information from the same, provided the requisite fees to obtain the same are paid.

Section 48

Section 48 discusses the Register of Copyrights, which has to be prima facie evidence of particulars entered therein.

Section 49

Section 49 talks about correcting eateries (like changing the name, address, particulars or any errors that occurred accidentally) in the Register of Copyrights

Section 50

Section 50 discusses the guidelines related to the rectification of Register by Copyright board.

Section 50A

Section 50A deals with eateries made in the Register of Copyrights, etc., that must be published. It says that any work entered upon under Section 45 or the correction of every entry thus made under Section 49, and every change made under Section 50 shall be published by the Registrar of Copyrights in the official gazette or in such other manner as they deem fit.

Infringement of copyright

Fair dealing/fair use: exception to copyright infringement 

Section 52(1)(a) and Section 52(1)(b) discuss acts that are regarded as fair dealing of any copyrighted work. Fair use or fair dealing can be referred to as using copyrighted material of any other individual for specific purpose, like-

1. Research,
2. Criticism,
3. Review,
4. Reporting current events,
5. Current affairs,
6. Giving lectures in public, etc.

Simply put, fair use or fair dealing means reasonable use. One must note that, whether or not an act comes under the category of fair dealing or fair use, would solely rely on the facts of that particular case; so there is no hard and fast rule per se to clever which all acts would come under the category of copyright infringement. The doctrine of fair use or fair dealing has some limitations to the extent to where it can be applied, they are as follows:

1. The nature, extent and quantum of use of the copyrighted work.
2. The main object behind using or including the work- whether it is for commercial or non-commercial purposes.
3. The likelihood of competition between the copyrighted work and the original work.
4. The impact the usage of the copyrighted material would have on the potential market value of the copyrighted work.

Civil remedies

Section 55 discusses the civil remedies available to the owner, viz.,

Injunction 

This means restraining an individual by way of injunction from doing the act of infringement.

Damages

Here, infringing the copyright will attract a penalty in monetary form. There are two types of damages, namely:

1. One for infringing copyright, and
2. The other for converting copyright work into another form of work.

Accounts of profits

This relief is provided to restrict the unjust use of the copyright by the Defendant. Here, the owner of the copyright has the right to ask for profits which the infringer or Defendant earned by using the copyrighted material of the owner.

Damages for conversion

In addition to the aforementioned pointers, in the event that any individual converts the copyrighted work in any form without obtaining prior permission from the owner, the infringer is liable for damages. Such an act may attract a penalty relating to-

1. Criminal remedies (imprisonment from 6 months to 3 years, a fine, at times both), and
2. Administrative remedies (rights granted to authorities like the Registrar of Copyright, the Copyright Board and the Copyright Societies).

Criminal remedies

Infringement of copyright despite having proper knowledge of the copyright

Under Section 63, if a person having knowledge of a particular copyright, decides to infringe it anyway (the only exception being the resale of share rights in original copies under Section 53A), they will have to face imprisonment between 6 months and 3 years and a fine not less than ₹50,000/- and up to ₹2 Lakhs.

Second and subsequent conviction

Further, under Section 63A, for second and subsequent conviction, the penalty includes a minimum of 1 year and a maximum of 3 years of imprisonment, a fine of a minimum ₹1 Lakh and a maximum of 2 Lakhs.

Using or infringing copies of computer programs

Additionally, under Section 63B, if any person knowingly uses or infringes copies of computer programs, there could be a minimum jail time of 7 days and a maximum imprisonment of 3 years, a fine of a minimum ₹50,000/- and a maximum ₹2 Lakhs.

Making false entries

Under Section 67, if an individual makes false entries in the Register of Copyright, etc., for producing or tendering false entries, the penalty is imprisonment of up to 1 year or fine or both.

Making false statements

Under Section 68, making a false statement for deceiving or influencing any authority or officer, the penalty is imprisonment of up to 1 year, a fine or both.

Publishing a sound recording or video film in violation of Section 52A

Under Section 68A, publishing a sound recording or a video film that is against Section 52A (that talks about video and audio piracy) will attract imprisonment of up to 3 years and a fine.

Possessing plates/other materials used for making copies of the infringed material

Under Section 65, if an individual possesses plates or other materials that are used for making infringing copies, the individual may be charged with an imprisonment of 2 years and also a fine.

Landmark cases related to copyright

Literary work

In University of London Press vs. University of Tutorial Press [(1916) 2 Ch 601], it was held that examination papers are considered to be original literary work as the person who makes the question paper invests their labour and skill into making it. Such a person is said to be the author of the question paper and the copyright of such a paper will vest in him/her. 

Further, in the case of Zee Telefilms Ltd vs. Sundial Communications [(2003) 27 PTC], the Bombay High Court held that even the concept notes that were made in relation to a television film, that have characters, notes, plots, sketches, etc., will fall under the category of literary work.

Dramatic work

In one case [Creation Records vs. New Group Newspapers (1997) EMLR 444], the England and Wales High Court (Chancery Division) held that a photograph that has no involvement of movement or action cannot be treated as dramatic work.

Musical work

In Gramophone Company vs. Super Cassettes Industries [(1996) PTC 252 Delhi], the Delhi High Court held that musical work is not simply a combination of melody and harmony or either of them, rather, it has to be printed, reduced to writing or graphically be produced or reproduced to copyright.

Cinematograph film

In the case of Balwindar Singh vs. Delhi Administration [Delhi AIR 1984 Delhi 379], the Delhi High Court held that any kind of video as well as television both come under the purview of cinematograph film. Simply put, cinematograph film is not simply related to the movies played in cinemas or theatres.

Ownership of copyright

In the case of Donoghue vs. Allied Newspapers [(1937) 3 All ER 503], the Court set forth a clarification that the originator of a brilliant, noteworthy idea is not the owner of the copyright in a work, unless he/she is also the creator behind that work. So, if an individual discusses one of his/her top notch ideas with another individual and that person copies the idea and converts it into a book, play, movie, etc., the latter will be regarded as the owner of the work as opposed to the former, the one who gave the idea. In other words, the one who merely spoke about a concept- the originator has no right or ownership in the product where copyright subsists.

In yet another case of V.T.Thomas vs. Malayala Manorama AlR 1988 Ker 291, the Kerala High Court held that if a cartoonist draws any cartoon after he/she is terminated by the employer of a magazine company, the proprietor has no right whatsoever to claim copyright.

Term of copyright

In the case of Khemraj Shrikrishandas vs. Garg & Co. And Anr. [AIR 1975 DELHI 130, ILR (1975) 2 DELHI 251], the Delhi High Court held that in accordance with Section 22 of the Copyright Act, the copyright in the work of the grandfather will not subsist 50 years after his death.

Registration of copyright

In Glaxo Operations Uk Ltd. vs. Samrat Pharmaceuticals, (AIR 1984 Del. 265), the Delhi High Court held that a copyright exists irrespective of whether it is registered or not. The Court further claimed that registration is merely a piece of evidence as to when the author claims his/her ownership over artistic or some other work.

Infringement of copyright

In one of the most recent cases [Bombay Private Limited vs. Feel Good India and Anr.], the infringement of copyright with regards to artistic form consisting of label marks was established. Here, a pharmaceutical company  manufactured cough syrups titled ‘Adulsa-Plus Cough Syrup’ and ‘Ayusas-Adulsa Cough Syrup’. The Court appointed a court receiver and reached the inference that the Defendant had not only infringed on the work of the Plaintiff but also attempted to discard goods from their factory and further mislead the Court. The Court passed an order that the Defendant pay a cost of ₹ 25 lakh.

Then, in yet another case [R.G. Anand vs. M/S. Delux Films & Ors. 1978 AIR 1613], the Supreme Court of India held that it is not crucial that an alleged infringement be the exact replica of the original work, but rather that the similarities between the original and the alleged infringed work are sufficient as an indication to claim that the same is a copy.

What is a trademark:a brief overview

Basically, a trademark can be defined as a ‘mark’ that distinguishes goods and materials belonging to one individual from that belonging the another. In simple words, a trademark is said to be a visual symbol or a sign in any form, be it a device, a word or even a label for that matter that is used for identifying specific goods and/or services supplied by others. Also, the trademark or symbol can be in any form, including a combination of drawings, pictures, colours, words, letters, numbers, etc. For instance, the trademark of soaps like ‘Lux’ and ‘Rexona’ are identified by their names (trademarks), even though both deal with a similar type of product, i.e., soap.

Further, we can say that a trademark is a marketable and commercial asset of the owner. It is a type of intellectual property that has several rights. As opposed to a copyright that has a limited time period, a trademark is available to its owner for perpetuity. In India, any issue related to trademarks is dealt with under the Trade Marks Act, 1999.

Definition of trademark

As per Oxford Dictionary, a trademark is defined as any distinguished symbol that helps the general public identify a particular product of a trader. The symbol may include a device, words or a combination of them. Further, Section 2(1)(m) of the Trade Marks Act, 1999, defines the term ‘mark’ as anything that includes:

1. Device, 
2. Brand,
3. Label,
4. Ticket,
5. Name,
6. Word,
7. Signature,
8. Letter,
9. Numbers or numerical,
10. Shape of goods,
11. Packaging or combination of colours or any combinations thereof.

Further, Section 2(1)(zb) says a trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one individual from that of others and may conclude:

1. Shape of commodities,
2. The packaging, or
3. A combination of both.

Examples of iconic trademarks from India

There are two types of trademarks: registered and unregistered. Let us understand this with the help of some examples.

Registered

In India, some of the most famous registered trademarks are as follows:

1. The brand name- Amul, known for dairy products, etc.,
2. The brand Kingfisher (known for its beer and other commodities),
3. The name and design of the car-Tata Nano,
4. The brand name and logo of Patanjali.

Unregistered

In India, some of the most famous unregistered trademarks are as follows:

1. Basmati rice (considered generic, so not registered),

Interesting fact: In 1977, RiceTech Inc., an American company, got Basmati Rice patented. However, it is considered a public right instead of a private right and no trader or individual can claim exclusive rights to using its name.

2. Alphonso mangoes (known as ‘Hapus’).

Characteristics/features of trademark

Based on several judgements, the following are some of the key characteristics of  a trademark:

1. The definition of ‘mark’ and ‘trademark’ in themselves consist of a name under which goods, articles and commodities are sold (say, the usage of corporate names like ‘Bajaj’ or ‘Godrej’ or ‘Kirloskar’ are allowed). 
2. A trademark is a mark like that of a label, signature, number, letter or a combination of all or any of them.
3. Trademark is a type of intellectual property and is liable to receive protection under the Trade Marks Act (or in accordance with the law).
4. A trademark is capable of being represented in a graphical manner.
5. A trademark must be used (or proposed to be used) in a manner that is related to the goods or services thus provided.
6. Preferably, a trademark must be an invented word.
7. A trademark must show some type of nexus (a connection or link between the product and the trademark) between the goods and/or services thus provided and the mark.
8. It may consist of the shape of goods and their packaging or a combination thereof.
9. It should give a proper description of the goods and/or services the product is thus offering, i.e., the name should be suggestive enough. For instance, The Beauty Shop has products related to beauty.

Types of trademark

Even though a trademark could be in any form, i.e., well known trademark, a house mark, name of a brand, collective mark, certified mark, etc., there are two basic types of trademark, as discussed above in examples. Let us take a look at both of them.

Registered and unregistered trademark

Registered trademark

Basically, as the name suggests, a registered trademark is one whose name is registered under the Trade Marks Act, 1999. In accordance with Section 2(1)(w) of the Trade Marks Act, 1999, a registered trademark means any trade mark that is actually on the register and remains in force. Any usage of such a mark without obtaining prior consent from the owner of the mark may lead to the owner bringing an action of infringement against such a user.

Unregistered trademark

An unregistered trademark is one that is not registered under the provisions of the Trade Marks Act, 1999. This type of trademark is also addressed as a ‘common law mark’. There are numerous unregistered trademarks in India, maybe more than the registered trademarks. It is pertinent to note that, even though such a mark may not be registered, the owner of the mark has common law rights and will have the legal right when it comes to passing off the goods and hence, the owner can restrain the unauthorised use of such a mark, thus protecting the mark from being used or exploited.

Categories of trademark

Service mark

A service mark is a mark that is available in respect of services provided. Some instances of financial marks include-

1. Financial services,
2. Hospitality services, etc.

Property mark

A property mark is a mark that is used to indicate that a certain movable property belongs to a specific individual. It denotes the ownership of such a property.

Associated trademarks

As the name suggests, an ‘associated mark’ is a mark that is associated or joined to another mark. The most common examples of associated marks include the following:

1. The marks of Pidilite Industries Limited (PIL), i.e., FEVISTIK, FEVICOL, etc., all have the same prefix ‘FECI’.
2. Another example would be Amul Label for ice cream, milk and milk products.

Certification trademarks

Generally, a certification mark suggests that the products and services have undergone proper testing when it comes to quality, durability and stability.

Collective trademarks

A collective trademark or collective mark can be described as a trademark owned by its members to identify themselves with a level of quality or accuracy, geographical origin or any feature set forth by a company or organisation.

Existing registered trademark

An existing registered trademark can be defined as a mark that is registered under the Trade and Merchandise Act, 1958, immediately before the Trade Marks Act, 1999, came into existence. 

Jointly owned trademark

In accordance with Section 24 of the Trade Marks Act, 1999, in the case of joint ownership, the relationship between the joint owners is such that both parties, organisations or entities can make use of the trademark together; however, neither of them has the right to be the absolute owner of the trademark.

Ownership of trademark

A trademark owner can be any person, business organisation, or legal entity. A trademark can be located on any package, a label, a voucher or on the product itself.

Term of trademark

Interestingly, the most unique feature of a trademark is its perpetual life. Even though it has to be initially registered for a period of 10 years, it can be periodically renewed and can be used for an indefinite duration, with the exception that it is removed from the register or prohibited by a court order. It is pertinent to note that the first trademark that was registered in the UK under No. 1 of 1876, consisting of a red equilateral triangle and related to alcoholic beverages, is still in force to date.

Registration of trademark

Registering a trademark is important because it helps protect the proprietor’s rights. The rights given after registering a trademark are available to the proprietor for an indefinite time period by merely renewing the same, as opposed to other intellectual properties like patents, designs, copyrights, etc.

1. Section 3 to Section 17 discusses provisions related to the registrar and the conditions for the registration of a trademark. 
2. Further, Section 18 to Section 26 talk about the procedure and duration of registration. 
3. Additionally, Section 27 to Section 36 discuss the effect of registration. 

Infringement of trademark

Section 29 of the Trade Marks Act, 1999, discusses provisions related to the infringement of a copyright. The essentials of trademark infringement are as follows:

1. The infringement is similar to or same as a trademark that is already registered.
2. The mark is used in the course of a trade.
3. The infringed mark is much more likely to cause confusion on part of the public.
4. The infringement can even be by way of spoken words.
5. Infringement may also occur due to visual representation.

Remedies for copyright infringement

Civil remedies

The 3 basic civil remedies that are available to the proprietor in case of infringement are as follows:

1. Injunction-

1. Ex parte injunction,
2. Interlocutory injunction.

2. Damages or accounts of profits,
3. Delivery of infringing labels and marks for destruction and erasers.

The remedies are discussed under Section 134 and Section 135 of the Trade Marks Act, 1999.

Criminal remedies

Criminal remedies are discussed under Section 101 to Section 121 of the Trade Marks Act, 1999. The criminal remedies include:

1. Forfeiture of the goods (Section 111), and
2. Costs of defence or prosecution (Section 117).

The other remedies are penalties for

Under Section 102 and Section 103, the penalty for falsifying and falsely applying a trademark is minimum imprisonment for 6 months, maximum imprisonment of 3 years and a fine.

1. Under Section 104, the penalty for selling any commodities or goods or for services where a false trademark or false trade description is given is minimum imprisonment for 6 months and a maximum imprisonment of 3 years and a fine.
2. Under Section 107, the penalty for falsely representing a trademark as registered is imprisonment up to 3 years or a fine, at times, both.

Administrative remedies

Apart from the civil and criminal remedies available to the proprietor, the Trade Marks Act, 1999, also grants certain powers in the hands of administrative authorities to provide relief and remedies to anyone whose rights were infringed upon or aggrieved or to those individuals or organisations whose trademark was infringed. Thus, such powers may be exercised in respect of-

1. Under Section 7, classifying goods and services for registration.
2. Under Section 8, publication of alphabetical index for classification of goods and services.
3. Under Section 9 to Section 16, granting or refusing to register a trademark.
4. Under Section 22 and Chapter VII, correction and making amends in the Register.
5. Under Section 25, renewal, removal and restoration of registration.
6. Under Section 38, assignability and transmissibility of trademarks that are registered.
7. Under Section 45, registration of assignments and transmissions. 

Landmark cases one must know related to trademark

First case

One of the first landmark judgments for filing a trademark related case was the ‘Whirlpool case’ and the case title was N. R. Dongre vs. Whirlpool Corporation 1996 (16) PTC 583, wherein the Supreme Court gave its judgement relating to passing-off action.

Please note: There is no explicit definition of the term ‘passing off’ in the Trade Marks Act; however, it has been mentioned in several Sections of the Act, like:

1. Section 11(3)(a),
2. Section 27,
3. Section 134, and
4. Section 135.

The courts have drawn its meaning from common law. Basically, passing off occurs when a mark is not only deceptively similar to that of the other mark but also creates some sort of confusion among customers that will ultimately result in damage to the goodwill and business of the owner whose trademark is not registered. The main purpose of passing off action is to ensure that no owner’s rights, goodwill or reputation are affected or exploited just because they have not registered their trademark.

Trade name

In Nirlex Spares vs. Commissioner of Central Excise (2008) 2 SCC 628, the Supreme Court stated that a trade name must be descriptive enough so as to indicate the link or relation between the goods and the mark. Thus, if a monogram (a symbol made up of a person’s initials) relating to a trade name is not descriptive enough to show that there is a relation between the product and the mark of a specific marketing company, one cannot say that it is a trade name of a marketing company.

Inventive trademark

In the case of Anglo French Drug vs. Hony-N-Bois 1989 PTC 289 (Bombay), the Court held that the registration for the term ‘Hepasyp’ for ayurvedic medicine was denied because it consisted of the deceptive words ‘hepa’ meaning liver and ‘syp’ having an obvious meaning syrup, which described the product for ailments related to the liver.

Registration

In the case of Imperial Tobacco vs. Registrar AIR (1977) Calcutta 413 AIR 1977 CAL 413, the Calcutta High Court held that distinctiveness must be ascertained as it is at the date of application for registration.

Infringement

In Pidilite Industries Ltd. vs. S.M. Associates 2004 (28) PTC 193 (Bom), the Bombay High Court held that the Plaintiff was a registered proprietor of the trademark “M-SEAL”. The Defendant adapted and used the mark “SM SEAL” with all the important features of the trademark “M-SEAL”. The Court held that the Defendant’s usage of impugned marks was creating a lot of confusion and deception. The Court passed an order restraining the Defendant from using the trademark “SM-SEAL”.

The Delhi High Court in the case of Playboy Enterprises, Inc. vs. Bharat Malik 2001 PTC 328 (Del), passed an order restraining the Defendant from using the trade name “PLAY WAY” on the basis that the Defendant has adopted the word “PLAY” which is the heart and soul of the name of the magazine owned by the Plaintiff titled “PLAYBOY” with the main objective of exploiting the trade on its goodwill and widespread reputation.

In Decordova vs. Vick Chemicals 1951 (68) RPC 103, the Court of Appeal in Jamaica made an observation that a mark can be said to be infringed by another trader in case he/she even without making use of the whole of the mark or even anything related to the goods. Instead, even if the trader uses one or more of the distinct features of the mark or goods, it will result in infringement. The focus must be on the sound and significance of the words used in the mark.

In yet another case (Durga Dutt vs. Navratna AIR 1965 SC 980), the Supreme Court stated that when it comes to two marks that are identical to each other, one can say, there was an infringement. The  Court claimed that when two marks are identical, no further question arises as to whether an infringement is made thereof.

What is a patent: a brief overview

As per Indian law, a patent is an exclusive right, privilege or monopoly that is granted to an inventor to make use of his/her innovative techniques or scientific talent and gain profit from the same. The main purpose of this system is to motivate individuals to invest in new techniques or make proper use of scientific innovation by promoting their protection and utilisation so as to contribute towards the progress of industries. This, in turn, contributes to promoting technological advancements and to the transfer and dissemination of technology. As per the system, patent rights make sure that the owner has property rights (also legal title) over their invention and the owner can make full use of the patent system and the pros the system and grant come with.

Please note: Patent rights are territorial in nature, which is why an inventor has to file different applications for patent registration in different countries.

Additionally, a patent can also be referred to as a ‘government licence’ which provides the owner/holder with exclusive rights to a process, design or new invention for a specific period of time.

Definition of patent

The term ‘patent’ comes from the Latin phrase ‘patene’, meaning ‘to open’. There is no comprehensive definition of this term; however, it is defined under Section 2(m) of the Patent Act, 1970, as “a patent granted under the Act and includes for the purpose of sections 44, 49, 50, 51, 52, 54, 55, 56, 57, 58, 63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154, 156 and Chapters XVI, XVII and XVIII, a patent granted under the Indian Patents and Designs Act, 1911.

Examples of patented creations of India

In India, some of the most famous patented creations are as follows:

1. Patanjali Ayurvedic Products (has its main focus on Ayurveda and traditional medical systems).
2. Bharat Biotech’s Covexin (a national COVID-19 vaccine that helped curb this deadly disease).
3. Frugal Engineering Philosophy (a company developed by Tata Motors with the primary goal of building outstanding quality automobiles at prices that are considerably reasonable.)

Characteristics/features of patent

The following are some of the features of patent:

1. Not only the product but also the process can be patented as per the Patent Act, 1970.
2. The invention has to be useful and novel and must be something that is not obvious.
3. The patent must be capable of being used in the industry and if not, the same may amount to the patent being revoked. 
4. The invention must be new and should not be a form of Section 3 and Section 4 that discuss exceptions of ideas that cannot be patented.
5. In cases of disparity, there are fast track mechanisms established that will help resolve the issue and dispose of the appeal.

Types of patent and patent application

Types of patent

In India, there are 3 types of patents, namely:

Utility patents

This is one of the most common types of patent in India. It includes any type of invention or innovation in a product, process or even a machine. It is also addressed as ‘patent of inventions’. So, if anyone has innovated a new type of electric vehicle or any machinery that is related to solar power, he/she/they can apply for a utility patent.

Plant patents 

To protect a new variety of plants, inventors obtain plant patents. This is one of the most important types of patents in India and is known to protect new plant hybrids and organically discovered plants. For instance, a type of African violet, a new type of almond tree, etc.

Design patent

A design patent is a patent that is known to protect any aesthetic looking goods that were produced or manufactured. Basically, design patents protect surface ornamentation of the product. In simple words, it protects the look of the product. So, an individual or organisation can apply for a unique shape or design and claim ownership of the same once the patent is granted. Further, if one wants to claim exclusive rights over any functionality of a particular product, one must file an application form for a utility patent. Design patents are pocket friendly in comparison to plant and utility patents. An instance of a design patent would be the bottle designed by Pepsi, which is known for its unique shape, look and feel.

Types of patent application

In India, there are 7 types of patent application, namely:

1. Provisional patent,
2. Ordinary or non provisional patent,
3. Conventional Application,
4. PCT International Application,
5. PCT National Phase Application,
6. Application for Patent of Addition,
7. DivisionalApplication.

Ownership of patent

Under Section 6 of the Patent Act, 1970, the following individuals can apply for a patent and eventually get their invention patented, thus granting them ownership rights:

1. Any individual who is claiming to be the true and first inventor.
2. Any individual who is the assignee of the aforementioned individual and one who has the right to make such an application.
3.  Any individual who is the legal representative of any deceased person who just before his/her death, was entitled to make such an application.

Please note: An application for patent registration may be made either alone or in a joint manner which includes any other individual.

Term of patent

As per Section 53 of the Patent Act, 1970, talks about the term of patent. It stated the following:

1. When it comes to any invention that claims patent right for the method or process of manufacturing a particular substance, where the substance is intended for use or has the ability to be used as food, medicine or drug, the term would be 5 years from the date the patent was sealed (i.e., the date the patent was sealed by the Patent Office), or 7 years from the date of patent, i.e., the date when complete specification was filed, whichever period is shorter.
2. When it comes to other inventions, the term would be 14 years from the date of patent.

Now, after the Patents (Amendment) Act, 2002, the provision says:

1. For every patent granted after the above Amendment was carried on, the term of patent shall be twenty years from the date of filing of the application for the patent.
2. It further says, if the requisite amounts or fees are not paid to renew the patent, the patent shall not be entitled to be protected further.

Registration of patent

In order to register a patent, one has to follow the following steps:

Step 1:File an application in the patent office.

Step 2:Provisional/complete specification should be filed.

Step3:Acceptance of Specification.

Step 4:Publication of Application.

Step 5:Request for Application.

Step 6:Examination and Report of Examiner.

Step 7:Approval.

Or

In case there are any objections, there will be a division of application and then amendment after opposition or objection, then the patent will be granted/approved.

Sections that discuss registration

The sections related to the application or registration of a patent are as follows:

Section 6

Section 6 talks about the individuals who have the right to apply for a patent.

Section 7

Section 7 discusses the form of the patent application.

Section 8

Section 8 lays down special provisions that are required when it comes to foreign applications.

Section 9 

Section 9 discusses provisional and complete specifications.

Section 10

Section 10 includes the content required at the time of filing provisional and complete specifications.

Section 11

Section 11 talks about publication and examination of applications.

Infringement of patent

Infringement of patent:the basics

Acts that amount to infringement of a patent

The following acts will amount to infringement of a patent:

1. If an individual or company has actually produced the patented article without obtaining prior permission from the patentee.
2. If the individual or organisation uses a patent process without seeking consent of the patentee.
3. If any individual uses, exercises, sells or distributes any patented article or process without having any lawful authority to do so.

Acts not amounting to infringement of a patent

The following acts do not amount to infringement:

1. There was an innocent use of the patented material or process.
2. The use was for experimentation and instruction purposes.
3. The use was for invention in foreign vessels.

Remedies for infringement of a patent

A patentee, licensee, assignee, or the co-owner has the authority to file a suit within 3 years  from the date of infringement. The individual(s) can seek the following remedies:

Declaration

In accordance with the Specific Relief Act, 1963, a patentee may claim a declaration stating that the act of the infringer must be said to be unlawful and that there be a declaration that the patentee receives compensation for the act of infringement.

Injunction

Further, relief of injunction can be claimed under Section 38 of the Specific Relief Act, 1963. Thus, a perpetual injunction (commonly known as a permanent injunction) is granted against the infringer in the Civil Court.

Damages

The patentee has the right to seek liquidated or unliquidated damages from the infringer.

Accounts for profit

Whatever profit has been incurred by the infringer while infringing the patent, a patentee may claim that the same be transferred to their account.

Certificate of validity

The patentee may also seek remedy from the court that the certificate in his favour be issued, declaring the validity and duration of the certificate in favour of the patentee to safeguard  the interest of the patentee.

Cost

The patentee also has the right to claim cost for the expenses incurred for filing the lawsuit for patent infringement in accordance with the provisions laid down in the Civil Procedure Code, 1908, and Civil Manual. The court may allow appropriate costs to the patentee if he/she claims for the same.

Defences available in the lawsuit filed for patent infringement

The Defendant in a lawsuit filed against him/her may take any or more of the following defences:

1. The patentee has no right to sue for patent infringement.
2. The allegainstions made by the patentee are false and frivolous in nature.
3. The invention was used by obtaining prior permission of the patentee or on licence.
4. The principle of estoppel or res judicata is pleaded.
5. The claims to be infringed are invalid.
6. The existence of a restrictive contract is declared  unlawful.
7. The act of infringement is actually within the ambit of innocent infringement or is done when the term of patent has lapsed.
8. The alleged infringement is not novel or obvious.

Offences and penalties for patent infringement

Section 118:Contravention of secrecy provisions

If any individual does not comply with the provisions mentioned under section 35 or makes or causes an application for grant of a patent against the provisions laid in Section 39, he/she shall be punished with 2 years imprisonment or a fine, at times, both, as stated under Section 118.

Section 119:Falsification of entries in register, etc.

Under Section 119 of the Patent Act, 1970, if any individual makes a false entry in the register and tenders or produces such entries, then he/she shall be liable to 2 years imprisonment or a fine, at times, both.

Section 120:Unauthorised claim of patent rights

Under Section 120, if there is any unauthorised claim of patent rights, there is a penalty of a fine of up to 1 lakh rupees.

Section 121:Wrongful use of words ‘patent office’

Under Section 121, an individual may face a 6 months imprisonment or fine, at times, both, if he/she wrongfully uses on his place of business or any documentation thereof the words ‘patent office’ or any such words that would mislead someone to believe that his place of business is or is officially connected to the patent office.

Section 122:Refusal or failure to give information

Under Section 122, if an individual denies or fails to supply the requisite information as required under Section 100(5) and Section 146 regarding working of patent, he/she shall be punishable with a fine that could extend to 10 lakh rupees.

Section 123:Practice by non-registered patent agents

Under Section 123, if any individual does not comply with the provisions laid down under Section 129, he/she shall be punishable with fine that may extend to 1 lakh rupees in case the offence is carried on for the first time. Further, the fine will be up to 5 lakh rupees in case of a second or subsequent offence.

Section 124:Offences by companies

Under Section 124, is applicable to companies, corporate bodies or any organisations that may commit an offence under the provisions laid down in the Patent Act, 1970. Basically, this Section ensures that legal entities as well as individuals (director, manager, secretary or other officer of the company) are held responsible for their actions.

Landmark cases one must know related to patent

Objectives of patent

In the case of Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries (AIR 1982, SC 1444), the Supreme Court held the following are objects of patent law:

1. To encourage scientific research;
2. To encourage new technology;
3. To encourage industrial progress;
4. To grant exclusive privilege to have ownership, use or sell the patented method or product for a limited time period; and
5. To stimulate new inventions of commercial utility.

The Court further stated that patents are granted only for inventions that are new and useful. They must have novelty and utility. It also must be the discovery of the inventor itself.

Ownership of patent

In Shining Industries And Anr. vs. Shri Krishna Industries AIR 1975 ALLAHABAD 231, the Allahabad High Court held that a firm also has the right to patent as assignee.

Defences available in the lawsuit filed for patent infringement

The Delhi High Court, in the case of Franz Xaver Huemer vs. New Yash Engineers (AIR 1997 DELHI 79), held that every ground upon which a patent could be revoked will be made available as a ground for defence.

What are geographical indications: a brief overview

GI is a sign that is used on goods that carry a special geographical origin and possess qualities, reputation or features that are essentially attributable to that place of origin. Generally, a GI includes the name of the place of origin of the goods. Before the commencement of the Geographical Indications of Goods (Registration and Protection) Act, 1999, there was no law as such that safeguarded any agricultural goods, natural goods, handicrafts, manufactured goods, foodstuffs, etc. in order to protect GIs, especially as India had ratified the TRIPS (Trade Related Intellectual Property Rights), under which, until and unless a GI is protected in the country it was originated, there can be no obligations on other countries of TRIPS to extend such reciprocal protection.

Definition of geographical indications

As per Section 2(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999, ‘geographical indication’ in relation to goods, means “an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in the case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.”

The simple explanation of this will be any name that is not the name of a country, region or say, a locality of that particular country shall also be regarded as the geographical indication if it relates to a specific geographical area and is used on or in relation to particular goods that originated from that country, region or locality as the case may be.

Who is a producer when it comes to GIs

A ‘producer’ includes-

1. Any individual who manufactures goods when it comes to agricultural goods, including the individual who processes or packages such goods;
2. Any individual who exploits the goods, in case of natural goods;
3. Any individual who makes or manufactures handicraft or industrial goods;
4. Any individual who trades or deals in the production, exploitation, making or manufacturing of goods.

Examples of unique geographical indicators in India

Some examples of geographical indicators (GI tags) are as follows:

Products	Category	State/Union Territory
Rasagola	Foodstuff	Odisha
Paithani Saree and Fabrics	Handicraft	Maharashtra
Vazhakkulam Pineapple (now merged With Application No. 130)	Agricultural	Kerala
Feni	Manufactured	Goa
Nashik Valley Wine	Manufactured	Maharashtra
Surat Zari Craft	Handicraft	Gujarat
Santipur Saree	Handicraft	West Bengal
Puneri Pagadi	Handicraft	Maharashtra
Bydagi Chilli (or Bedgi Mirch)	Agricultural	Karnataka
Gadwal Sarees	Gadwal Sarees	Gadwal Sarees
Bikaneri Bhujia	Foodstuff	Rajasthan
Lucknow Zardozi	Handicraft	Uttar Pradesh
Hyderabad Haleem	Foodstuff	Telangana
Berhampur Phoda Kumbha Saree & Joda	Textile	Odisha
Kaipad rice	Agricultural	Kerala
Moirang Phee	Textile	Manipur
Arunachal orange	Agricultural	Arunachal Pradesh
Kullu shawl (logo)	Textile	Himachal Pradesh
Leather toys in Indore	Handicraft	Madhya Pradesh
Ratlami sev	Foodstuff	Madhya Pradesh
Kolhapur lemon	Agricultural	Maharashtra
Waigaon turmeric	Agricultural	Maharashtra
Kolhapur jaggery	Agricultural	Maharashtra
Screw Pine Craft of Kerala (Logo)	Handicraft	Kerala
Shahi Litchi	Agricultural	Bihar

Some basics to know on geographical indications

Can GIs only be used for agricultural products

The use of GIs are not limited to agricultural products per se. As per the  Geographical Indications of Goods (Registration and Protection) Act, 1999 (or Indian law), the protection to GI is not only limited to handicrafts and agricultural goods but also extends to manufacturing goods. Further, GIs may also shed light on the qualities of a product that are due to human factors associated with the place of origin of the products, like  some special manufacturing skills and traditions. One must note that the place of origin could be a village, a town, a region or even a country. So, to answer the above question, no, GI is not limited to agricultural products and extends to food products, handicrafts, etc.

Why do geographical indication need protection

Usually, GIs are recognised by consumers to denote the origin and quality of products. Say, Alphonso mango (or Hapus Amba) from Ratnagiri. A lot of these products have acquired valuable reputations, which, if not protected properly, may lead to misrepresentation or dishonest commercial operations. False use of GIs by parties that are not entitled to get them may be detrimental to consumers and legitimate producers. Here, consumers are misled into believing that they are getting a genuine product, whereas the truth is that they are being deceived into believing the same and are getting an imitation. In such a scenario, legitimate producers are deprived of valuable business and the established reputation of their product is damaged.

What are the key differences between GIs and trademark

Basically, a trademark can be said to be a sign that is used by an individual to distinguish its goods and services from those of other individuals. It provides the owner with the right to exclude others from using its trademark. Further, a trademark will most often than not consist of a fancy name or device.

On the other hand, a GI  tells consumers that a product manufactured in a certain place has some features that are linked to that place of production. A GI may be used by producers who make their product in that particular location designated by a GI and whose products share specified qualities. 

As opposed to a trademark, the name used as a GI is generally predetermined by the name of the place where it was produced. Some instances of GIs in relation to this pointer are:

1. Kashmir Pashmina from Jammu & Kashmir,
2. Darjeeling tea from West Bengal,
3. Nagpur Orange & Paithani Saree and Fabrics from Maharashtra, 
4. Kanjeepuram sarees and Nilgiri tea from Tamil Nadu, etc.

Characteristics/features of geographical indications

The main purpose of getting a GI is to exclude unauthorised individuals from misusing GIs. Registering GIs in turn will protect consumers from deception, add to the economic growth and development of the producers of such products and further promote goods bearing Indian geographical indications in the export market.

GI and rural economy

Generally, a lot of GIs come from villages and small towns. Once these GIs are protected, it can result in higher income for the producers that reside in such regions, which in turn, has the potential to transform the rural economy for the better. It will also attract investments by investors in such markets. The general features of GI include:

1. It gives legal protection to GIs in India.
2. It prevents unauthorised usage by  others when it comes to registered GIs.
3. It gives legal protection to Indian GIs, which in turn will help increase the number of exports.
4. It promotes economic prosperity of producers of goods that are produced in a geographical territory.

The category-specific features of GI are as follows:

GI and industry

A lot of registered and potential GIs in India belong to the MSME sector (Micro, Small & Medium Enterprises). A GI protection for them would ensure that the market there develops and has increased returns.

GI and tourism

GIs are unique products that come from demarcated areas. So, cultivation or the manufacturing process within itself, attracts tourists. Also, handicrafts and handlooms that have special features will always attract tourists. Further, regions can attract tourists to taste the special GI foods or drinks or buy such unique products with added discounts or at a discounted price.

Types of geographical indications

GI tags are used in the following type of products:

Handicrafts

Some instances of handicrafts would be:

1. Madhubani painting from the Mithila region of India and Nepal.
2. Mysore silk originates from the city of Mysore in the state of Karnataka. 

Foodstuff products 

Some instances of foodstuff products would be:

1. Tirupati Laddus registered by Tirumala Tirupati Devasthanams.
2. The GI granted to both West Bengal and Orissa for Rasagola. 

Wine and drinks

Some instances of wine and drinks would be:

1. Champagne, Cognac of France; 
2. Scotch Whisky of UK; 
3. Tequila of Mexico.

Agricultural products

An instance of agricultural products would be Basmati rice.

Industrial products 

Well, no instance can be found online but it is one important type of GI.

Ownership of geographical indications

The term ‘ownership’ in GI is referred to as ‘producer’. The following individuals who deal with these 3 categories of goods come under the term ‘producer’:

1. Agricultural goods include production, processing, trading or dealing.
2. Natural goods include exploiting, trading or dealing.
3. Handicrafts or industrial goods include making, manufacturing, trading or dealing.

Term of geographical indications

The registration of an authorised user will be for a period of 10 years or for the period till the date on which the registration of the GI in respect of which the authorised user is registered expires, whichever is earlier.

Registration of geographical indications

Let us understand this in FAQs format.

Is registration of a GI compulsory

Section 8 of the Geographical Indications of Goods (Registration and Protection) Act, 1999, talks about registration with respect to particular goods and areas. As per this Section, there is no mandate to register a GI. However, registering a GI will have the following benefits:

1. Registration offers better legal protection to facilitate an action for infringement.
2. The registered proprietors have the right to initiate an infringement action.
3. The authorised proprietor can exercise the exclusive right to use the GI.

How to apply to register a particular GI

To register a GI, the producer has to follow this procedure:

1. Fill in an application for registration of a GI Authorised User. It must be in the prescribed form (GI-3A).

Please note:To access the forms, kindly follow this link.

2. The form must be accompanied by a prescribed fee of  ₹500/- for filling a GI Authorised User Application.
3. The statement of case must be accompanied by an affidavit.
4. Further, a copy of the consent letter from the registered proprietor or in case the consent letter is not available, a  copy of application may be endorsed to the registered proprietor for information.
5. The requisite fees may be paid through cash or money orders, bank drafts or cheques.
6. The same has to be addressed to the Registrar of Geographical Indications, payable at Chennai.

Who can use the registered GI

An authorised user, i.e., the proprietor, has the exclusive right to use the GIs in relation to goods with respect to its registration.

Can a registered GI be renewed

Yes, a registered GI can be renewed from time to time for a period of 10 years each. The producer has to make an  application within the prescribed time limit and pay the requisite 

amount of fees for renewal.

What is the effect if a GI is not renewed

If a GI is not renewed from time to time, the registrar sends a notice for renewal (this includes the date of expiration, the conditions, the requisite amount of fees, etc.) and even then if the producer does not want to renew the GI, the Registrar may remove the GI or the authorised user from the register.

Can a registered GI, a registered authorised user or a registered producer be removed from the Register

The Appellate Board or the Registrar of Geographical Indications has the authority to remove the GI or an authorised user from the register. Furthermore, an application by an aggrieved person can be made.

Can register GI be assigned, transmitted, etc.

No, a Gi is a public property that belongs to the producers of the concerned gods. It cannot be assigned, transmitted, licensed, pledged, mortgaged or have any such agreements. However, when the authorised user or producer dies, the right to that GI will be delegated to the successor in title.

Infringement of geographical indications

Let us understand this pointer in FAQs form.

When will one claim that a registered GI was infringed?

1. When any user who does not have the authority to use the GI (commonly known as an ‘unauthorised user’) makes use of a GI that indicates or suggests that such goods originate in a geographical area other than at the that very place where it originated at the first place and when that GI misleads the public into believing that the geographical origin of that good was in the other location.
2. When any such usage of GI results in an unfair competition including passing off with respect to registered GIs.
3. When the use of another GI results in false representation to the public that goods originate in a territory with respect to  which a registered geographical indication relates.

Who can initiate an infringement action

Any registered proprietor or authorised user of a registered GI can initiate an infringement action.

Landmark cases one must know related to geographical indications

Mentionriceelow are some landmark cases on GIs in India.

The famous case of Navara rice: Tamil Nadu vs. Kerala

Navara Rice is one of the types of rice found in India and is quite a unique grain plant in the Oryza group. It originated in Kerala and is famous for the medical properties it holds. In 2007, this product received GI protection and was licenced to Navara Rice Farmers’ Society, which caused a rise in the number of growers of this crop. However, it was mentioned that only those farmers who belong to the same society have the right to sell their produce of this variety of rice.

Now as per an NGO based in Kerala, nobody has any evidence on the historical origin of this variety of rice. Additionally, one cannot grant GI on seeds because with migration, there is a chance that seeds also migrate and adapt to the local ecology with genetic changes. This is why there is a need for more clarity on GI laws.

The famous Kolhapuri chappals

In 2019, the GI tag was granted to the ethnic leather chappals, commonly known as Kolhapuri chappals, by the CGPDTM (Controller General of Patents, Designs, and Trade Marks). This tag was granted to several districts of Maharashtra (namely Kolhapur, Sangli, Solapur and Satara) and Karnataka (namely Belgaum, Dharwad, Bagalkot and Bijapur). There was a joint bid for GI tag of Kolhapuri Chappals by the Sant Rohidas Leather Industries & Charmakar Development Corporation Limited of Maharashtra (LIDCOM) and the Dr. Babu Jagjeevan Ram Leather Industries Development Corporation of Karnataka (LIDKAR) in 2009, which fructified in 2018 into the GI tag being granted in favour of the artisans of the two states.

Well, the main objective behind this GI tag being granted to 2 states and 8 districts was because there was a large demand for Kolhapuris and a decline in supply of leather in the state of Maharashtra. Another issue was the change of fashion and taste among the youth of India and across the globe. Additionally, there was also a rise in competition and the most proverbial threat was that of ‘Chinese imitation’.

Tirupati Laddu:the savoury from Andhra Pradesh’

Under Class 30, Tirupati Laddus applied for registration of GI by the Tirumala Tirupati Devasthanam and they received GI tag in  2009. This laddu is offered as ‘naivedyam’ to Tirupati Balaji and then offered as ‘prasadam’ to the devotees after they have worshipped Lord Venkateshwara, the presiding deity at SriVari Temple in Tirupati, Andhra Pradesh.

However, in the same year as GI tag was granted to these laddus, a PIL was filed in the Madras HIgh Court against this GI tag. The same was filed by Mr. R.S. Parveen Raj, who was a resident of Trivandrum. His suit was filed on the following 3 grounds:

1. GI was granted to a single producer.
2. There is a lack of distinctiveness.
3. The name of the laddus were quite generic in nature.

The Court dismissed the petition on the grounds that an alternative and efficacious forum was available for adjudication of such a dispute. Under the G.I. Act, such a petition could have been filed either before the G.I. Registry or the IPAB (Intellectual Property Appellate Board).

The recent Mithila Makhana GI tag

Mithila Makhana, an aquatic fox nut grown in the area of Mithila region in Bihar and its neighbour Nepal. The name was registered as a GI tag in the name of Mithilanchal Makhana Utpadak Sangh. After this tag, no unauthorised user or company can benefit or incur profit on the same name as this. This was done to help improve exports in the market. Further, the growers of this nut will mainly be benefited from the tag and will earn more profits, eventually leading to a better lifestyle of the farmers and growers of this variety of nuts residing in that location.

What are designs: a brief overview

Please note: Before we dive deep into this part, designs are also known as industrial designs and the rights granted to the registered proprietor of that design are known as ‘design rights’ or ‘design patent’. 

Basically, design can be said to be a type of intellectual property that protects any composition, be it two or three dimensional lines, patterns, shapes or colours. The present Designs Act, 2000, has been replaced by the Designs Act, 1911, that prevailed in British India. Since the enactment of the 1911 Act, a significant amount of progress has been made in the field of science and technology and with such development there was a need to provide more effective protection to registered devices, which is when the 2000 Act came into enactment. This Act also intended to ensure that the law does not unnecessarily extend protection beyond what is needed to create the required incentive for Designs Activity while removing impediments to the free usage of available designs.

Definition of designs

Under Section 2 (d) of the Designs Act, 2000, the term ‘design’ can be referred to only the-

1. Features of shape,
2. Configuration, 
3. Pattern,
4. Ornament,
5. Composition of lines, colour or combination

thereof applied to any article, be it two or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode, principle, construction or anything which is in substance a mere mechanical device, and does not include any trade mark, as defined in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.

Examples of Indian designs

Some of the well known instances of industrial design are as follows:

1. The Piaggio ‘Vespa’ Scooter,
2. The ‘Contour’ bottle by Coca Cola,
3. The Volkswagen ‘Beetle’,
4. The Apple iMac,
5. The Dyson Dual Cyclone Vacuum Cleaner.

Characteristics/features of designs

The following are some of the main features of designs:

1. It grants the proprietor exclusive rights over the new and original design.
2. It acts as an asset for the proprietor or the owner of the design.
3. It can help the proprietor initiate a legal proceeding in case of infringement by a third party.
4. It serves as prima facie evidence when it comes to filing a lawsuit for design infringement.
5. It gives the proprietor the right to sell, transfer and licence the design with ease.

Types of designs

There is no classification of types of design under Indian law.

Ownership of designs

The ownership of the designs vests with the proprietor or owner of the design under the Design Act, 2000. 

Rights of proprietor

Under this Act, the proprietor or owner has the following rights:

Copyright in the design

Under Section 11 of the Act, once the design is registered, the proprietor has copyright over that design. Here, copyright can be defined as the exclusive rights to apply a design to any article in any class where the design is registered.

Duration of copyright in design

Once the proprietor files for registration and the same is approved, the inventor behind inventing a design has the copyright for 10 years,after this, he/she can increase it for another 5 years provided a request is made to the Controller along with the requisite fees.

Transfer of rights

The rights in the design are capable of being transferred through assignment or transmission including via mortgaging and licensing either through contracts or by the operation of law that has to be noted (mandatory) to the Controller General.

Piracy of design

Once the design is registered, it is protected from any copying or substantial copying of a design for commercial purposes by a third party. Such an infringement will be regarded as piracy. Simply put, when any design is copied without obtaining a prior written consent of the owner, it is regarded as infringement of that design. The owner of the proprietor has all the rights (and monopoly) over that design and in case of infringement, the infringer is liable to compensate the owner for such an act.

Term of designs

The duration of a registered design is 10 years from the date of registration, initially, i.e., after its registration, but in cases where claim to priority has been permitted, the duration can be 10 years from the priority date. This period can be further extended for 5 years with an application made in Form 3 accompanied by the requisite amount of fees to the Controller before the expiry of the said initial period of 10 years. The proprietor of a design may make an application for such extension even as soon as the design is registered.

To access the forms, kindly follow this link.

Registration of designs

Let us understand this pointer in FAQs format.

What are the essential requirements for registration under the Design Act, 2000

There are about 8 essential necessary for successfully registering a design, they are as follows:

Novelty

The design has to be novel and unique in nature.

Judgement 

The design must be judged solely on the basis of its features (through the eyes-visual representation). Simply put, the features must be visible.

Disclosures

The design must not be disclosed to the public in India or anywhere across the world by prior publication or by prior use or in any other manner.

Distinguishability

It must have significant difference from designs or their combination thereof that are already registered or pre-existing or disclosed to the public.

Public morality

To register the design, there must not be any scandalous or obscene content.

Application

The design has to be applied to an article by an industrial process.

Functionality

It should not have any feature that is purely functional.

Copyright

It must not, in any way, consist of any trademark or property mark or artistic work as defined under the Copyright Act, 1957. 

What is the process of registration for a design under the Design Act, 2000

Briefly, the process of registering a design consists of the following steps:

1. Submitting the application.
2. acceptance/objections/refusal.
3. Removal of objecion/making an appeal to the Central Government.
4. Design of Central Government.
5. Registration of the design.

Let us understand each of these steps in brief.

Submission of application

The proprietor or the individual who holds the design has to file an application for registering the design. As per Section 5(1) of the Designs Act, 2000, the Controller will register the design if the following requisites are met:

1. The design must be new and original.
2. The individual who is claiming that a particular design belongs to him/her, the same must not be published in any country.
3. It must not be against any public order or morality.

The application has to be followed by a prescribed fee, prescribed form and in the prescribed manner.

Designs to be filed along with the application

The application under Section 5 of the application must be accompanied by 4 copies of the representation of the design and the application must mention the Class under which the design has to be registered. The applicant has to also file a brief statement of novelty with the application. 

Please note: As per the Designs Act, 2000, there is a type for registration of design known as Locarno Classification (which is followed in a lot of jurisdictions, including India). It consists of 32 classes, numbered 1 to 31 and an additional Class 99 to include articles that do not fall under the above 31 classes. Most of these classes are further divided into subclasses. It is pertinent that design applications must be filed in a particular class depending upon the predominant material with which the article is made or is capable of being made.

According to the Locarno Classification system the Designs Register is divided into 32 classes. The application for design has to be filed in a particular class to obtain protection in that class. The list of class is as follows:

List of class under the Locarno Classification

CLASS 1

It includes foodstuffs.

CLASS 2 

It includes articles of clothing and haberdashery.

CLASS 3 

It includes travel goods, cases, parasols and personal belongings, not elsewhere specified.

CLASS 4 

It includes brushware.

CLASS 5

It includes textile piecegoods, artificial and natural sheet material.

CLASS 6 

It includes furnishing.

CLASS 7

It includes household goods, not elsewhere specified.

CLASS 8 

It includes tools and hardware.

CLASS 9 

It includes packages and containers for the transport or handling of goods.

CLASS 10 

It includes clocks and watches and other measuring instruments, checking and signalling instruments.

CLASS 11 

It includes articles of adornment.

CLASS 12 

It includes means of transport or hoisting.

CLASS 13 

It includes equipment for production, distribution or transformation of electricity.

CLASS 14 

It includes recording, communication or information retrieval equipment.

CLASS 15 

It includes machines, not elsewhere specified.

CLASS 16 

It includes photographic, cinematographic and optical apparatus.

CLASS 17 

It includes musical instruments.

CLASS 18 

It includes printing and office machinery.

CLASS 19 

It includes stationary and office equipment, artists’ and teaching materials.

CLASS 20 

 It includes sales and advertising equipment, signs.

CLASS 21 

It includes games, toys, tents and sports goods.

CLASS 22 

It includes arms, pyrotechnic articles, articles for hunting, fishing and pest killing.

CLASS 23 

It includes fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment,

CLASS 24 

It includes medical and laboratory equipment.

CLASS 25 

It includes building units and construction elements.

CLASS 26 

It includes lighting apparatus.

CLASS 27 

It includes tobacco and smokers’ supplies.

CLASS 28 

It includes pharmaceutical and cosmetic products, toilet articles and apparatus.

CLASS 29 

It includes devices and equipment against fire hazards, for accident prevention and for rescue.

CLASS 30 

It includes articles for the care and handling of animals.

CLASS 31 

It includes machines and appliances for preparing food or drink, not elsewhere specified.

CLASS 99 

It includes miscellaneous.

Acceptance or objection of the application

On considering the application, if the Controller is of the opinion that the applicant fulfils all the prescribed requirements, he/she shall register the design.further, in case while considering the application there are any objections to appear in front of the Controller, a statement consisting of all such objections will be forwarded to the applicant or his/her agent.

Removal of objection/ making an appeal to the Central Government

Once the applicant or his/her agent receives the statement, the objection has to be removed within 1 month from the date of communication of the objections. Failing to do so shall be deemed to have the effect of the application being withdrawn. The ap;licant may also apply to the Controller to hear the matter. In case the Controller does not accept the application after the submission, the applicant may make an appeal directly to the Central Government. The decision taken by the /central Government will be final.

Decision of the Central Government

As mentioned above, the decision taken by the Central Government will be final.

Publication of particulars of registered designs

Once the design is accepted, the Controller will direct the registration and publication of the particulars of the application and the representation of the article to which the design has been applied, in the official Gazette. While publishing the design in the Gazette, the controller may select one or more views of the representation of the design, which in his opinion would depict the design in the best possible manner.

Register of designs

When the design is finally accepted, it shall be entered in the Register of Design, with all the important information as mandated by the Act. the important information, inter alia, may include the following information:

1. The number of the design,
2. The Class under which such a design is registered,
3. The date when the application was filed for registering in India,
4. The reciprocatory date (if any),
5. Claim for registration, etc.

Cancellation of registration 

The registration of a design can be cancelled at any time after the design has been registered if there is a petition for cancellation in Form 8 with the prescribed amount of fee addressed to the Controller of Designs for these reasons:

1. The design has been registered before in India.
2. The design has been published in India or anywhere before the date of registration.
3. The design is not new or original.
4. The design is not registerable.
5. It is not a design per se under Section 2(d).

Infringement/piracy of designs

Generally, the term ‘piracy of a design’ is used to address infringement of copyright.  The same has been mentioned under Section 22 of the Designs Act, 2000. Let us read some FAQs on piracy of designs.

What is piracy of a design

Basically, piracy of a design means the application of a design or its imitation to any article that belongs to any class (discussed above) of articles where the design has been registered for selling or importing these articles without obtaining a prior consent in written format from the registered proprietor. Publishing such registered articles or exposing the terms of that sale with knowledge of the unauthorised application of the design to them will also amount to piracy of the design.

What is the punishment for piracy of a registered design

If any individual contravenes any copyrighted design, he/she will be liable for every offence and may be asked to pay a fine not exceeding ₹25,000/- to the registered proprietor, subject to a maximum of ₹50,000/- recoverable as contract debt in respect of any one design. The registered proprietor has the right to file a lawsuit for recovery of the damages thus caused by any such contravention and for injunction against repetition of the same. 

Please note: The total sum to be recoverable shall not go beyond ₹50,000/- as recoverable as contract debt in respect of any one design.

The lawsuit for infringement (or piracy), recovery of damage, etc., must be filed in any court below the court of the District Judge.

Defences that can be used by the Defendant in case of infringement/piracy lawsuit

If a Defendant is charged with design infringement or piracy suit, he/she can refer to the following defences:

Cancellation

In case the design is cancelled as per the provision mentioned in then Act, the Defendant can claim the same and use it as a defence.

Expiry

As mentioned above, the copyright on a particular design is available for a limited time period. If the Defendant can provide evidence that the design has surpassed the time period (for which it was predicted) as mentioned under provisions of the Act, he/she may be allowed to make use of the design.

Unreasonable delay

If there is an unreasonable delay on the part of the Plaintiff to file the lawsuit, the Defendant has the power to plead acquiescence and on the basis of this pleading, may be allowed to use the design.

No right to sue

If the Defendant provides evidence that the Plaintiff is not the registered proprietor of the copyrighted (or the duly authorised agent or licensee) of that particular design, he/she may be permitted to make use of the design.

Design not new or original

The Defendant can claim that the design in question is neither new nor original.

Design was previously registered

The Defendant can state that his design was previously registered in India, if that is the case. 

Prior publication

The Defendant may raise a defence of his design was published in India before the date of registration.

Conduct of Plaintiff

The Defendant can claim that the Plaintiff has not approached the court with clean hands and that his/her conduct is tainted.

Landmark cases one must know related to designs

Design and not article

Section 2(a) of the Designs Act, 2000, defines the term ‘article’ as any article of manufacture and any substance, artificalor partly artifical and partly natural and includes any part of an article that is capable of being made and sold separately. However, one must note that there is a difference between article and design. In the case of Rotela Auto Components (P) Ltd. And Anr. vs. Jaspal Singh And Ors. 95 (2002) DLT 830, the Delhi High Court held that design means the features that form the conception or idea of a shape.

In yet another case- Marico Limited A Company Registered vs. Raj Oil Mills Limited A Company  2008 (37) PTC 109, there were some caps of bottles that were manufactured separately but were used for the same bottles manufactured by the same manufacturer. However, the nature of the cap was such that there was a possibility that the same could be sold separately, though not currently done by the manufacturer. Here, the Bombay High Court held that the caps are entitled to be registered as a separate item of commerce.

Registration

In the case of Texla Metals & Plastics Pvt. Ltd. vs. Anil K. Bhasin And Ors. 2001 PTC 146 (Del.), the Delhi High Court held that the concept of a new or an original type of design is relatable to the publication of such a design or its availability to the public in India. The Court further stated that if the contention is that the Defendant has received brochures from several nations like Malaysia, Korea, and Japan with respect to such goods, the mere receipt of such brochures will not be said to be the publication of such designs within India.

In yet another case, Ampro Food Products vs. Ashoka Biscuit Works And Ors. AIR 1973 AP 17, the Appellant and Respondent manufactured biscuits. The design of the Appellant was registered. The design of the Respondent also had an identical design embossed on the biscuit, the only difference being that instead of ‘AP’ (which was embossed on the biscuits of the Appellant), letters ‘AP’ was embossed on the biscuits of the Respondent. Aggrieved by the mark, the Appellant filed a lawsuit for injunction, stating that the Respondent had committed piracy of his design. The Andhra High Court issued a temporary injunction based on the registered design.

Test for infringement

In the case of Faber-Castell vs. Pikpen Private Limited 2003 (27) PTC538 (BOM), the Bombay High Court held that in an infringement suit it must be found at the outset that, judged solely by the eye, there is an indispensable similarity in the two designs. 

Remedies for infringement

In Micolube India vs. Rakesh Kumar 2012 (50) PTC 161, the Delhi High Court held that the passing off action is not available when it comes to registered design. Thus, the parties are relegated to the remedy under the Designs Act to seek cancellation of registration and other remedies under the Act.

What are trade secrets: a brief overview

A trade secret is any practice or process of a company that is usually not known (to the general public) outside of the company. Such information gives the company a competitive edge over its competitors and is often a product of internal research and development. The essentials of a trade secret are as follows:

1. It must have a commercial value.
2. It is known to a limited group of people.
3. The owner of such a secret has taken reasonable steps to keep such information secret.

Definition of trade secrets

There is no explicit law that governs the protection of trade secrets in India. However, these rights are enforced through contract law (the Indian Contract Act, 1872), principles of equity or by way of a common law action for breach of confidence. In the case of Tata Motors Limited & Anr vs State Of West Bengal & Ors. (GA No. 3876 of 2008 in WP No. 1773 of 2008), the Calcutta High Court, relying on the definition for ‘trade secret’ in Black’s Law Dictionary, observed that a trade secret is a formula, process, device or other business information that is kept a secret (confidential) to maintain an advantage over competitors. The information will consist mainly of:

1. A formula,
2. A pattern,
3. A commercial information,
4. A programme,
5. A device,
6. Any method,
7. Any technique or
8. A process

that deevies any independent financial value, actual or potential, from not being generally known or disclosed to the public or readily ascertainable by those individuals or companies who can benefit (financially) from its disclosure or use and that a reasonable attempt is made to maintain secrecy when it comes to the product.

Examples of trade secrets

Some of the examples of trade secrets well known in India are as follows:

1. Google’s search algorithm (is constantly being modified to prevent third parties from hacking into the system and being shown on the top while being searched.
2. The  Coke Syrup Formula by Coca-Cola (a secret since 1981 and not a registered trademark, for they (the company) will have to disclose the information to the patent office).

Interesting fact: In 2006, some individuals tried to share the formula of Coca Cola with one of its biggest competitors, Pepsi; however, Pepsi informed Coca-Cola about the incident).

3. KFC’s original recipe (kept a secret by Colonel Sanders and then a few others by signing a confidentiality agreement beforehand).
4. The Big Mac Special Sauce by McDonald’s.

Characteristics/features of trade secrets

The most common characteristic of a trade secret are as follows:

1. They are not public information.
2. Their secrecy provides a monetary benefit to the holder.
3. Attempts are made to actively protect such secrecy.

Types of trade secrets

There are several types of trade secrets, namely:

1. Business,
2. Financial,
3. Scientific, 
4. Technical,
5. Engineering,
6. Economical.

Basics of trade secrets

Let us understand this pointer with the help of some FAQs.

What are the rights granted for a protected trade secret

Generally, when a trade secret is deemed to be protected, the owners have the right to preclude the information that was obtained in a lawful manner under their control from being disclosed, acquired or used by other individuals without obtaining their prior consent. Some unfair practices in this regard include:

1. Industrial or commercial espionage,
2. Breach of contract,
3. Breach of confidence and
4. Inducement of breach.

It also includes the usage or disclosure of any trade secret by a third party who was aware or was negligently failing to know that these practices were involved in the acquisition of the confidential information. However, one must note that the use of trade secrets by an individual who gained the information through a legitimate business transaction without negligence is not regarded as illegal. For instance, a competitor may buy a product, look at the construction and composition of the commodity and extract the secret knowledge embedded in the product (so called reverse engineering), which will not be regarded as a violation of trade secrets.

How is trade secret law governed in India

Generally, trade secrets in India are governed by common law, namely:

Contract law

Under Section 27 of the Indian Contract Act, 1872, parties cannot disclose information that is against the terms of the contract between the parties, i.e., non disclosure agreements.

Indian Penal Code, 1860

Sections 405, 406, 407, 408 and 409 of the Indian Penal Code, 1860, deal with cases that constitute criminal breach of trust.

Can one sell and licence trade secret

Trade secrets are property rights that can be assigned and licenced to other individuals. The individual or organisation that holds the trade secret also has the authority to permit third parties to access and use the trade secret information. Yet, considering the secret nature of the trade secret, it is not always easy for others to ascertain if the information concerned meets the requirement for trade secret protection. Thus, in comparison to patents, it is a little more tough to transfer and licence such secretive information and to resolve arguments or disputes that may thus arise. Further, since a potential licensee will necessarily have to have access to trade secret information to ascertain several factors, like-

1. The value of the secret,
2. The utility of the secret, etc.,

It is important that a non disclosure agreement be signed between both parties (i.e., the licensor and the licensee). Furthermore, in order to keep the trade secret really a secret, the licensor of the trade secret must take reasonable steps to keep the information confidential.

Ownership of trade secrets

In order for a proprietor to get his/her rights over a trade secret, he/she has to furnish the nature of the information that he/she believes to be a trade secret and how it came into his/her possession. If such information is not made available, the court may deny to grant such a right, as held in the case of Ambiance India Pvt. Ltd. vs. Shri Naveen Jain 122 (2005) DLT 421. Basically, there is a distinction between general knowledge regarding business of an organisation or the general skill and expertise of employees accumulated in the course of employment in an organisation and trade secrets that can be protected. Thus, it is crucial that the proprietors mention the information that may consist of a trade secret. In some instances, there is a chance that the trade secret information may include works that were created and developed by the proprietor and could be granted protection. Here, the principles of authorship and ownership applicable to copyright will be applicable. However, in some cases, the trade secret information has to be shown by the proprietor to prove that he/she is the rightful owner of such a title. In other words, if the information is derived or created by an individual with the information readily avoidable in public, such information will not be regarded as a trade secret and no protection will actually be granted to such an owner.

Term of trade secrets

As we know, there is no specific law that governs trade secrets in India, so there is no duration per se for the protection of trade secrets. In simple words, unlike other types of IPs, that usually have limited duration, trade secrets are protected for an indefinite time period. Further, a trade secret can be protected for an unlimited period of time, until and unless it is discovered or legally acquired by some other individual or organisation or disclosed to the public. 

Registration of trade secrets

As opposed to other forms of IPS, trade secrets are protected without registration, i.e., trade secrets do not need procedural formalities to be followed to be protected.

Infringement of trade secrets

Please note: Infringement of trade secrets is also known as ‘misappropriation’. There is no explicit law that defines the term ‘misappropriation’; however, when a trade secret is delivered by improper means (arising from civil, including breach of contract or tortuous wrongs or criminal acts), it would be regarded as misappropriation of trade secrets.

There is no specific law for trade secret misappropriation; yet, offences like criminal breach of trust, theft or cheating may be applicable in cases where a trade secret is infringed.

Penalty for infringement of trade secret or misappropriation

The punishment for criminal breach if trust is imprisonment for up to 3 years or a fine. One can say that a criminal breach of contract was committed when an individual dishonestly misappropriated or converted for his/her own usage any property that has been entrusted to him/her, or dishonesty uses or sells (or disposes) aby such property and breaches the contract (could be expressed or implied, i.e., in written or oral form, respectively), or applicable law, or allows any other individual to do so. An action for such a breach can be brought under the Code of Criminal Procedure, 1973. 

Defences in case of infringement/misappropriation of trade secret

The defences to a large extent rely on the facts of each case, however, these are the most common defences:

1. Information is already known to the general public (or public domain),
2. Information that has to be protected is not actually a trade secret) even when it is confidential information),
3. The information has been disclosed by the Plaintiff through negligence and failure to maintain secrecy. 
4. The Defendant obtained the information through independent study, skill or labour (one can use this defence even in case of reverse engineering) without having access to the Plaintiff’s information. 
5. The Defendant does not have any express or implied obligation to keep the information a secret.

Remedies for infringement

Preliminary/temporary/interim or final injunction

In case of misappropriation or infringement of a trade secret, the owner can seek relief of injunction (could be temporary or permanent), so the Defendant is refrained from using or disclosing the trade secret. The courts have the discretion to grant such a relief and apply the following tests (as mentioned in Gujarat Bottling Co. Ltd. vs. Coca Cola Co. (1995) 5 SCC 545 to ascertain the same:

1. Whether there is any prima facie case made out by the Plaintiff in the case,
2. Whether the balance of convenience is in the favour of the Plaintiff, and
3. Whether the Plaintiff would undergo injury beyond repair in the event that the intention is not granted.

The courts have further held that the main motive for granting an interim injunction is to protect the Plaintiff against injury by violation of its rights, where such an injury cannot be adequately compensated by damages. This statement is especially true for trade secrets whose utility or value is derived from their confidential nature. Thus, the need for such a protection for the Plaintiff must be weighed against any injury that may be caused to the Defendants by being prevented from exercising their legal rights.

Damages

Litigants can also seek damages and rendition of accounts of profit as one of the remedies to trade secret misappropriation or infringement. Damages are further divided into three categories, namely:

1. Liquidated damages,
2. Actual damages, and
3. Punitive damages.

Other civil remedies

Apart from the aforementioned remedies, there are no civil remedies available in cases of wilful trade secret appropriation; however, there are some remedies available to the Plaintiff or the rights holder, including:

1. Orders granting return of trade secrets or delivery of material that has trade secrets,
2. Appointing court commissioners to take stock of the materials misappropriated by the Defendant (for assistance in quantifying damages).
3. The courts may also direct local police to help the court commissioners carry out appropriate search and seizure orders.

Civil remedies

There is no explicit offence of trade secret misappropriation but the infringement or misappropriation may result in a criminal breach of trust, theft or cheating may be applicable. The matters may be governed under the following laws:

1. The Indian Penal Code, 1860;
2. The Copyright  Act, 1957;
3. The Information Technology Act, 2000.

Administrative remedies

It is pertinent to note that there are no specific laws relating to trade secret misappropriation in India, as it is governed totally on the grounds of common law principles (that have evolved through judicial precedents) and Indian contract law.

Landmark cases one must know related to trade secrets

Criteria to be considered as a trade secret

Further, the Bombay High Court, in the case of Bombay Dyeing and Manufacturing Co Ltd vs. Mehar Karan Singh (2010 (112) BomLR 375), stated that for any piece of information to be considered as a trade secret the following criteria must be met:

1. The extent to which the trade secret is known outside business,
2. The extent to which the information is known to those inside the business, say the employees,
3. The necessary precautions taken by the holder to guard secrecy,
4. The saving affected and the value to the holder in having the information as against competitors,
5. The amount of effort or money spent in getting and developing the information, and
6. The amount of time and expense it would take others to get and duplicate the information.

Ownership of trade secret

The Delhi High Court, aforementioned above, in the case of  Ambiance India Pvt. Ltd. vs. Shri Naveen Jain 122 (2005) DLT 421, held that if the nature of the information that is said to be a trade secret is not revealed, the court has the authority to not grant protection for the trade secret.

In some cases, there could be information made and developed by proprietor that would be subject to being protected like client lists as mentioned by the Delhi High Court in the case of Mr. Diljeet Titus, Advocate vs. Mr. Alfred A. Adebare And Ors. 2006 (32) PTC 609 (DEL) or technical drawings in John Richard Brady And Ors. vs. Chemical Process Equipments Pvt. Ltd. And Anr. AIR 1987 DELHI 372.

Secrecy of trade secrets

In Burlington Home Shopping Pvt. Ltd. vs Rajnish Chibber 1995 (35) DRJ 335, the Defendant was a former employee of the company (which is the Plaintiff in this case), made use of the contacts database collected by the Plaintiff. The Delhi High Court held that the contacts database belonged to the Plaintiff and that it was developed through skill and labour of the Plaintiff.

What are plant varieties: a brief overview

Plant variety is a type of IPR. Plant variety protection, also known as ‘plant breeder’s right’ is a form of a Plant Breeder’s Rights (PBRs) that provides exclusive rights to a breeder of the registered variety. In India, this form of IPR is protected under the Plant Variety Protection And Farmers Rights (PPVFR) Act, 2001. 

Definition of plant varieties

Under Section 2(za), the term ‘variety’ is defined as a “a plant grouping except micro-organism within a single botanical taxon of the lowest known rank, which can be-

(i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping;

(ii) distinguished from any other plant grouping by expression of at least one of the said characteristics; and

(iii) considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation,

and includes propagating material of such variety, extant variety, transgenic variety, farmers variety and essentially derived variety.”

Examples of flora finery:India’s plant varieties under protection

Plant varieties have been classified into several categories, let us look at a few examples.

Oilseeds

The following are some of the instances of registered oilseeds in India:

Crop	Name of applicant
Sesame [Gujarat Til-3 (AT-93)]	Junagarh Agricultural University, Gujarat
Rapeseed (Toria) [ORT (M) 2-4 (Parbati)]	Orissa University of Agriculture & Technology
Castor [Deepak (DCH-177) (Hybrid)]	Indian Council of Agricultural Research (ICAR)
Sunflower [DRSH-1 (PCSH-243)]	Indian Council of Agricultural Research (ICAR)
Soybean [Jawahar Soybean 97-52 (JS 97-52)]	Indian Council of Agricultural Research (ICAR)
Indian mustard (Sarso) [RCC-4]	CSK Himachal Pradesh Krishi Vishvavidyalaya
Linseed [BINWA (KL-210)]	Indian Council of Agricultural Research (ICAR)
Sesame [JLT-408 (JLS-9848-2)]	Mahatma Phule Krishi Vidyapeeth
Groundnut [Girnar-2 (PBS-24030)]	Indian Council of Agricultural Research (ICAR)
Groundnut [Gujarat Junagarh Groundnut-17 (JSP-48)]	Indian Council of Agricultural Research (ICAR)
Indian mustard (Sarso) [GM-3 (Gujrat Mustard-3)]	Sardarkrushinagar Dantiwada Agricultural University

Cereals

The following are some of the instances of registered cereals in India:

Crop	Name of applicant
Sorghum [CSH-22SS (NSSH-104)]	Indian Council of Agricultural Research (ICAR)
Pearl millet [JKBH-26 (MH-595)]	JK Agri Genetics Ltd.
Maize [Pratap Hybrid Maize-1 (EH -50802)]	Indian Council of Agricultural Research (ICAR)
Wheat [WR-544 (Pusa Bold)]	Indian Council of Agricultural Research (ICAR)

Vegetables

The following are some of the instances of registered vegetables in India:

Crop	Name of applicant
Okra/Lady’s Finger [Kashi Pragati (VRO-6)]	Indian Council of Agricultural Research (ICAR)
Potato (FL 1867)	Pepsi Co. India Holding Pvt. Ltd.
Cauliflower [Pusa Sharad (Sel-309-1-2)]	Indian Council of Agricultural Research (ICAR)
Brinjal [Pusa Ankur (DBSR-91)]	Indian Council of Agricultural Research (ICAR)
Onion (PHULE SAMARTH)	Mahatma Phule Krishi Vidyapeeth
Tomato (BA-1031)	Nuziveedu Seeds Pvt. Ltd.
Okra/Lady’s Finger [Kashi Pragati (VRO-6)]	Indian Council of Agricultural Research (ICAR)

Legumes

The following are some of the instances of legumes registered  in India:

Crop	Name of applicant
Black Gram [KU-91 (Azad Urd-2)]	Indian Council of Agricultural Research (ICAR)
Green Gram [Kamadeva (OUM-11-5)]	Indian Council of Agricultural Research (ICAR)
Field Pea [Kashi Shakti (VR-7)]	Indian Council of Agricultural Research (ICAR)
Lentil [Pant Lentil-5]	Indian Council of Agricultural Research (ICAR)
Kidney Bean [Kashi Udai (VR-6)]	Indian Council of Agricultural Research (ICAR)
Pigeon Pea [TT 401]	Indian Council of Agricultural Research (ICAR)
Chickpea [Haryana Chana-3 (H-86-18)]	Indian Council of Agricultural Research (ICAR)

Flowers

The following are some of the instances of registered flowers in India:

Crop	Name of applicant
Rose (Arka Swadesh)	ICAR- Indian Institute of Horticultural Research, Bangalore
Orchid (Tiew Lyngskaw)	President, Nonglwai Orchid Conservation Society
Carnation [IIHRP 1 (Arka Flame)]	Indian Institute of Horticultural Research

Spices 

The following are some of the instances of registered spices in India:

Crop	Name of applicant
Nutmeg (MUNDATHANAM)	Michael Joseph
Turmeric (Varna)	Indian Council of Agricultural Research (ICAR)
Small Cardamom (PANIKULANGARA GREEN BOLD NO.1)	Joy Peter
Black pepper ( Pepper Thekkan)	T.T. Thomas
Fenugreek (Jatni)	Ashok Mehta
Ginger (Aadi-LO)	Dhaneshwar Mahto
Coriander (Pal Dhaniya)	Udesi Pal
Turmeric (Surkha)	Surendra Kumar

Fruits 

The following are some of the instances of registered fruits in India:

Crop	Name of applicant
Apricot (GYALCHIMA TILI)	Tsering Angmo
Grapes (Sarita Purple Seedless)	Dattatraya Nanasaheb Kale
Walnut (CITH-W-1)	Indian Council of Agricultural Research, Central Institute of Temperate Horticulture
Pomegranate (Bhagawa)	Mahatma Phule Krishi Vidyapeeth
Guava (VNR BIHI)	VNR Seeds Pvt. Ltd.
Mango (DESHI GOLA)	Puttilal
Mulberry (Sahana)	Central Silk Board

Characteristics/features of plant varieties

The following are some of the characteristics of plant varieties:

1. It is distinctive in nature (i.e., it has to be different either in colour, form, size, etc.)
2. It is of homogenous nature (i.e., homogeneous in characteristic when it comes to height, leaf and stem colour, flower size and shape, flowering fate, etc.)
3. The characteristics of such a plant variety must be constant over time (for instance, if the variety of flowers flowered at 120 days after being planted, the next year flowering should also take place in the same time range).

Types of plant varieties

Under the PPVFR Act, 2001, there are 18 plant species that can be registered under the Act, they are as follows:

Cereals

They include:

1. Rice,
2. Wheat,
3. Maize,
4. Sorghum,
5. Pearl millet.

Legumes

Thy include:

1. Chickpea,
2. Mungbean,
3. Urdbean,
4. Field pea,
5. Rajmash,
6. Lentil,
7. Pigeon pea.

Fibre crop

They include:

1. Four species of cotton namely:

1. Gossypium arboreum L. and G;
2. herbaceum L. (iploid cotton);
3. G. barbadense L. and G;
4. hirsutum (Tetraploid cotton).
5. Two species of Jute, namely:

1. Corchorus olitorius L. and C.
2. Capsularis L.

Ownership of plant varieties

The PPV&FR Act, 2001, grants proprietary ownership to plant breeders and farmers for their varieties. Once the protection is granted, the owners have the exclusive rights to-

1. Produce, 
2. Sell,
3. Market,
4. Distribute,
5. Import or
6. Export

the variety registered under the Act.

Term of plant varieties

Every variety of plant has a different term of protection, let us take a look at each of them:

Trees and vines

In case of trees and vines, the duration of protection is 18 years from the date of registration of that variety.

Extant varieties 

In case of extant varieties, the duration of protection is 15 years from the date of registration of that variety.

Other crops

In case of other crops, the duration of protection is 15 years from the date of registration of that variety.

Registration of plant varieties

Let us understand this pointer with the help of some FAQs.

What is the criteria for protecting a plant variety

In order to be eligible for protecting a plant variety, it must have the following features:

Distinct 

To be registered, a plant variety has to be clearly distinguishable by at least one essential characteristic from any existing or commonly known varieties in any country while the application for registration is being filed.

Uniform

A variety has to be sufficiently uniform in its essential characteristics.

Stable

The essential characteristics of a plant variety must be stable after repeated propagation or in case of a particular cycle of propagation, at the end of each cycle.

Who can apply for the registration of a plant variety

An application for registering a plant variety can be made by:

1. Any individual who is claiming to be the breeder of the plant variety.
2. Any individual who is the successor of the breeder of the plant variety.
3. Any individual who is the assignee or the breeder of the variety in respect of the right to make such an application.
4. Any farmer, group of farmers or community of farmers who are claiming to be the breeder of that plant variety.
5. Any individual who has the authority to make an application on behalf of the farmers.
6. Any university or publicly funded agricultural institution that claims to be the breeder of the variety.

Why are plant varieties to be protected/registered

As India is a member of WTO (World Trade Organisation) and signatory of TRIPS, it is crucial for India to provide protection to plant varieties either via patents, the sui generis system, or by both. Just like most of the developing nations, India decided to exclude patents for plants and plant varieties; however, it exercised the sui generis option for effective protection of plant varieties. India enacted ‘The Protection of Plant Varieties and Farmers’ Rights’ (PPVFR) Act, 2001, for plant variety registration.

What are registrable patents in India

Under the PPVFR Act, 2001, there are 4 types of plant varieties that are registrable:

New variety

A variety that is not in public domain in India earlier than one year before the date of filing; or outside India, when  it comes to trees or vines earlier than 6 years, or in any other case, earlier than 4 years.

Extant variety

Any variety that is not notified under the Seeds Act, 1966, or any new variety about which there is common knowledge or a farmers’ variety or any other variety that is in public domain is considered to be an extant variety.

Farmers’ variety

A variety that has been traditionally cultivated and evolved by the farmers in their fields or a type which is a wild relative or land race of a variety about which farmers possess common knowledge.

Essentially derived variety (EDV)

An essentially derived variety shall be said to be essentially derived from such an initial variety when it is predominantly derived from such an initial variety, or from a variety when it is predominantly derived from such an initial variety, while retaining the expression of the important features that lead to the genotype or combination of genotypes of such initial variety. An EDV conforms to such an initial variety that results from the genotype or combination of genotypes of such an initial variety.

What are non registrable plant varieties in India

All plant varieties are not entitled to legal protection in India, meaning some plant varieties are excluded from protection under the PPVFR Act, 2001. Any variety where prevention of commercial exploitation of any such plant variety is crucial to protect public order or public morality or human, animal and plant life and health, or to avoid serious prejudice to the environment, or any varieties that has terminator technology, or any variety that belongs to any species or general that is not enlisted in the notification issued by the Central Government cannot be registered for protection under the PPVFR Act, 2001.

Infringement of plant varieties

If any individual falsely represents a variety of plant as his/her/its registered variety, then the same act can be punished by imprisonment for a term not less than 6 months that is extendable up to 3 years or a fine amounting to not less than Rs. 1 lakh that is extendable up to Rs. 5 lakhs, or, at times, both.

Landmark cases one must know related to plant varieties

Maharashtra Hybrid Seed Co and Anr vs. Union of India and Anr [(2015) 217 DLT 175]

In the case of Maharashtra Hybrid Seed Co and Anr vs. Union of India and Anr [(2015) 217 DLT 175], the Delhi High Court held that the PPVFR Authority’s order that claimed that the parent lines of known hybrid varieties cannot be registered as a ‘new’ plant variety under the PPVFR Act. The Court held that if the hybrid comes under the category of ‘extant variety’ of which individuals have common knowledge, then its parental lines cannot be said to be novel.

 Monsanto vs. Nuziveedu Seeds [2018 SCC OnLine Del 8326]

In the case of Monsanto vs. Nuziveedu Seeds [2018 SCC OnLine Del 8326], the Supreme Court set aside the order of the Delhi High Court that claimed that the patent by Monsanto Technology on BT cotton seeds was invalid as seeds cannot be patented under the Indian IP laws. Monsanto sold these genetically modified cottons in India in a joint venture with Maharashtra Hybrid Seeds Co., called Mahyco Monsanto Biotech (India) Ltd. (MMBL). This argument reached the Court when Nuziveedu Seeds Ltd. (NSL) continued to sell the genetically modified seeds even when MBBL had terminated its licence with NSL.The Supreme Court ruled out the order of the division bench and restored the order of the single judge bench.

What is a semiconductor integrated circuits layout design: a brief overview

In India, the semiconductor integrated circuits layout design is governed under the Semiconductor Integrated Circuits Layout-Designs Act (SICLDA), 2000. This Act was passed to comply with the TRIPS Agreement. This Act protects the layout designs of semiconductor chips and integrated circuits that are broadly used in a range of electronic products from computers to automobiles. IP rights protect all these three dimensional designs of integrated circuits, including the positioning of the electronic components.

Definition of semiconductor integrated circuits layout design

Under the SICLD Act the following definitions are of utmost importance:

Semiconductor integrated circuit

A semiconductor integrated circuit is defined as “a product having transistors or other circuitry elements, which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function”.

Layout design

The term ‘layout design’ is defined as “a layout of transistors, and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit”.

Commercial exploitation 

The term ‘commercial exploitation’ in relation to SICLD means “to sell, lease, offer or exhibit for sale or otherwise distribute such semiconductor integrated circuits for any commercial purpose”.

Examples of semiconductor integrated circuits layout design

The examples of semiconductor integrated circuits layout design, in India, include:

Two-Terminal Device

Diode, Gunn Diode, Schottky Diode, Solar Cell. Zener Diode, light-weight Emitting Diode (LED)

Three-Terminal Device

This includes-

1. Bipolar semiconductor device, 
2. IGBT semiconductor device, 
3. semiconductor Controlled Rectifier.

Four-Terminal Device 

This includes- 

1. Hall impact (Magnetic Effect) detector.

Multi-Terminal Device 

This includes-

1. microcircuit (ICs), 
2. microchip, 
3. RAMs, 
4. ROMs.

Basics of semiconductor integrated circuits layout design

Let us understand this pointer with the help of FAQs.

What is protected by the SICLD Act, 2000

Instead of requiring the designs’ incorporation in a physical semiconductor chip, the SICLD Act, 2000, protects the layout design itself. Thus, this IP right eliminates the need for protecting the actual article. Section 17 of the SICLD Act describes the same in an explicit manner. Registration requires a 3D representation of the layout design and compliance with all other statutory requirements before the design is actually registered.

Why do such layouts need IPR protection

Integrated circuits are created with the human mind and carry a high economic value, so it is necessary that they are protected. These designs are multi layered complex pieces of technology. It takes a lot of time, energy and funding to come up with such efficient designs; hence, these designs, technologies and products have to be protected with the help of strict IPR laws that are specially drafted for such complex patterns.

Why cannot patents protect the semiconductor integrated circuits layout designs

Chips consist of several subparts, and since some of them may be novel in nature by themselves, several applications for patents to be granted or registered will have to be filed. Simply put, for every such novel component, material used, chip, etc., a different patent application will have to be filed. This technique will obviously be time consuming and not feasible when it comes to modern technological advancements like semiconductor integrated circuit layout designs. Also, patents have to be original, distinct and non obvious and since circuits are typically upgraded from earlier versions, newer layout designs fail to meet the standards for patentability. Most of these chips and designs will be excluded from the ambit of patent  law as the layout designs are of a developmental nature instead of being creative in nature.. Thus, the SICLD Act, 2000, provides for sui generis protection.

Characteristics/features of semiconductor integrated circuits layout design

1. The law protects the layout and designs of semiconductor integrated circuits with the help of a registration process.
2. There is a mechanism to distinguish which layout design can be protected.
3. There are rules to prohibit registration of layout designs that are not original in nature or those that have been commercially exploited.
4. The Act has several provisions relating to-

1. Determination of payment of royalty for registered layout design in case of innocent or unintentional infringement,
2. Penalties for infringement (in the form of imprisonment and fines), etc.
3. The registrar is appointed for administration and the Appellate Board is established in order to facilitate legal objectives.

Types of semiconductor integrated circuits layout design

There are no types of semiconductor integrated circuits layout design per se; however, there are 2 types of integrated circuit designs, namely:

1. Digital IC design,
2. Analog IC design.

Ownership of semiconductor integrated circuits layout design

The ownership for semiconductor integrated circuits layout design can be made by those individuals who claim to be the creator of the layout design, his legal representative, a person registered in the prescribed manner as a layout design agent or a person in the sole and regular employment of the principal, to be given in writing to the registrar in the prescribed manner. The application can be filed either alone or jointly. The application has to be filed with the territorial jurisdiction, i.e., a principal place of business in India of the applicant.

Exclusive right to the registered proprietor or owner of the layout

Once a layout design is registered, the proprietor gets the exclusive right to use the layout design and to obtain relief in case there is any infringement. This right is available to the registered proprietor of that layout design irrespective of whether the design was embodied in the article or not.

Term of semiconductor integrated circuits layout design

The registration of the layout design will only be for a period of 10 years that is calculated from the date of filing an application for registration or from the date where the first commercial exploitation began (anywhere in the country) whichever is earlier.

Registration of semiconductor integrated circuits layout design

Registration process for semiconductor integrated circuits layout design

The process for registering semiconductor integrated circuits layout design is as follows:

1. Filing an application by the creator in writing to the registrar in the SICLD registry in a prescribed form. It must also include-

1. 3 sets of drawings produced to the plotter that talk about the layout design, and
2. 3 sets of photographs of masks used for fabricating the semiconductor integrated circuits by using such a layout design or drawings which talks about the pattern of such masks.

2. The second step is acceptance of the application and it is done by returning a copy of the application. Please note, the registrar has the right to withdraw the acceptance if the application is prohibited from being registered for any reason. The registrar may also accept the application with some amendments.
3. The accepted application shall be advertised in the prescribed format within 14 days from the date of acceptance. If any opposition is found to such a registration, a notice is sent to the registrar within 3 months from the date of advertisement.
4. Then, the registrar may call for evidence by both the parties and finally reach an inference. The counter statement has to be filed within 2 months from the date of receipt of cpy f notice of opposition from the registrar. Also, a copy of the counter statement must be sent to the opposite party.
5. The registrar may also conduct a hearing between both the parties and then decide on where the layout design must be registered or not based on the conclusion thus reached after hearing the parties.
6. If any party is aggrieved by the decision taken by the registrar, an appeal can be made to the Appellate Board or if it is absent, an appeal can be made to the Civil Court for relief on any ruling of the Registrar.
7. In case the application is not opposed or if the opposition has been decided in favour of  the applicant, the registrar shall register the said layout design in the register of layout design. Further, a certificate sealed with the seal of SICLD Registry will be issued in the favour of the applicant.

Infringement of semiconductor integrated circuits layout design

Under this law, any act that includes reproduction, sale, import or distribution of integrated circuit layout design for commercial purpose is regarded as infringement. However, if such an act is carried on for the purposes of scientific evaluation, analysis, research or teaching, it will not be considered as an act of infringement. Further, if any individual commits infringement, he/she shall be punished with an imprisonment for a term that is extendable for up to 3 years or a fine that will not be less than Rs. 50,000/- and is extendable to Rs. 10 lakhs. At times, imprisonment and fine both can be applied as punishment. 

Landmark cases one must know related to semiconductor integrated circuits layout design

No Indian cases can be found, hence cases from an international perspective are discussed for the understanding of the readers.

Ocular Sciences Ltd vs. Aspect Vision Care Ltd. (1996)

In this case, the England and Wales High Court (Patent Court) held that the Plaintiff has failed to prove their claims of breach of confidence and copyright infringement. The Court further claimed that the Defendant had not breached the fiduciary duties to the Plaintiff.

HiTrend Technology (Shanghai) Co., Ltd. vs. Renergy Micro-Technologies (Shenzhen) Co., Ltd. and Shanghai Yachuang Texin Electronics Co., Ltd. (2014)

In this case, the Court ruled that a company (Renergy Micro-Technologies (Shenzhen) Co., Ltd.) must immediately stop infringing the exclusive rights granted to another Company-  HiTrend Company. The Shanghai Court also claimed that the infringer must compensate the company with RMB3.2 million, considering the financial losses they sustained and also pay for the reasonable expenses they underwent to cease the infringement. Upon this judgement, the parties disagreed and agreed to accept the verdict and appeal to the Shanghai Higher People’s Court. The Court dismissed the appeal and upheld the original judgement.

A new form of IP that is being increasingly recognised is digital assets. This form includes-

1. Proprietary software or algorithms, and
2. Online digital content.

Examples of digital assets

The most common examples of digital assets can also include documents, audio, videos, logos, slide presentations, spreadsheets and websites. So, those materials have the potential to produce economic benefits.

Digital assets include but are not limited to:

1. Photos,
2. Audio files,
3. Videos and motion pictures,
4. PDFs,
5. Presentations,
6. Graphics,
7. Documents,
8. Designs,
9. Spreadsheets,
10. 3d files,
11. E-books

and other relevant digital data that is in circulation, is, or will be stored on digital appliances like:

1. Personal computers,
2. Laptops,
3. Portable media players,
4. Tablets,
5. Data storage devices.

For instance, the need tree is said to have multiple uses in India and its usage is referred to as traditional knowledge. This application was mentioned in Indian contexts about 2000 years ago and is used for decades in agriculture, human and veterinary medicine, toiletries and cosmetics and also as an insect and pest repellent.

Why must traditional knowledge be protected

The major reasons as to why traditional knowledge has to be protected are as follows:

1. Consideration of equality.
2. Conservation questions.
3. For maintaining traditional customs and community.
4. For preventing appropriation of components of traditional knowledge by unauthorised persons.
5. For fostering the uses and its significance in development.

Regulations that govern protection of traditional knowledge

In India, the following laws and regulations protect the information passed on from generation to generation, a.k.a., traditional knowledge:

Biological Diversity Act, 2002

This Act deals with fundamental issues related to traditional knowledge like:

1. Right to use the natural assets.
2. Gathering and consuming such natural assets.
3. Dividing the profits that occur out of such an entrance.
4. Safeguarding assets from bio piracy.

The Patent Act, 1970

Under this Act, patent protection shall be granted for processes that are related to the use of assets (like microorganisms and plants or animals, etc.), and also for those processes that are known to indigenous areas which meet the same requirements.

The Copyright Act, 1957

Copyright protection can be given to those traditional knowledge holders whose imaginative demonstrative, mainly artists that belong to indigenous religious and indigenous groups, are protected from illegal reproduction and misuse of such demonstrations. The relationship between the creators/artists/authors and their work is being dealt with under moral rights in accordance with Section 57 of the Copyright Act, 1957.

The Protection of Plant Varieties and Farmers Rights Act (PPVFRA), 2001

Under this Act, the rights of a plant breeder if he/she discovers a new variety of plant which is distinct, stable, uniform and novel can be protected and registered. PBR (plant breeder’s rights) can also be obtained based on traditional plant diversity.

The Geographical Indications of Goods (Registration and Protection) Act, 1999

Under this Act, all methods of producing commodities and those techniques who have undergone a change or have evolved with time to yield better results can be protected. Further, GIs can be used to protect therapeutic products in India.

General cases pertaining to the protection of traditional knowledge 

India does not have an explicit statute that protects traditional knowledge and folklore, but it is a work in progress. The following are some of the noteworthy cases involving traditional knowledge.

Neem

Over the past centuries, this tree that is well known in India has been used as biopesticide and medicine. This tree, as we know, has several medicinal and healing properties and the same has been mentioned in several ancient Indian Ayurveda texts. The EPO (European Patent Office) withdrew its patent number 436257 that was issued to the United States of America and to the cosmopolitan business W.R. Grace for the Neem tree insecticide extracted from the seed. Despite neem’s properties coming from an ancient tradition, about 12 UD patents were recently withdrawn and all of these involved neem based emulsions and solutions.

Turmeric

In 1993, the University of Mississippi Medical Centre received patent rights for curing a wound by applying turmeric onto a wound of an individual. An application for reexamining such a registration form filed along with about 2 dozen mentions,which upshot in early success.

Rice

The USPTO (United States Patent and Trademark Office) granted RiceTec, an American company, the patent for Basmati rice. In India, this created a lot of chaos and a request for reexamination of such registration was filed, which made the USPTO understand that the core claims made by the company were irrelevant.

What are some initiatives taken by the Indian Government to protect traditional knowledge 

Mentioned below are some of the approaches initiated by the Indian government to protect traditional knowledge:

Beej Bachao Movement

In 1995, there was an affiliation with the residents of Jardhar in Tehri Garhwal district

of Uttar Pradesh, the NGO Kalpavriksh started a movement to trace the diversity of indigenous seeds and conservation practices by the local community.

Honey Bee Network

Honey Bee Network has the world’s largest grass-root novelty database. This network is run by SRISTI (Society for Study and Initiatives for Sustainable Technology & Institutions, Ahmadabad). The main motive of this network is to promote popular innovation, to protect IPRs for small innovators and to ensure that original innovators and information providers get the profit out of it.

Please note: Only the most important types of IPs are discussed, to serve academic purposes.

Pointers	Patent	Copyright	Trademark	Design	Geographical indication (GI)	Plant varieties	Trade secrets
Meaning	A patent safeguards an invention. It provides the owner the exclusive right to prevent others from selling, making and using the patented invention for a specific time period.	A copyright protects one’s expression of literary or artistic work. This protection arrives automatically thus giving the holder the exclusive right to control reproduction or adaptation.	A trademark is said to be a distinction sign that is used to differentiate between products or services of one business from that of the other. More often than not, trademarks are often closely interlinked to brands.	A design registration safeguards one from any form of outward appearance or aesthetic style of an object.	A geographical indication (GI) can be defined as a sign that is used on materials that have a specific geographical origin and have qualities or reputation that are due to that origin.	Plant varieties can be defined as the protection that gives legal protection to a plant variety to the one breeding it  in the form of Plant Breeder’s Rights (PBRs).	A trade secret can be said to be formula, practice, process, design on compilation of information that is used by a business to gain some sort of advantage as compared to the competitors. These secrets are (by definition) not shared with the world at large.
Right protected	Any rights related to a new invention to manufacture the product patented or to make use of the process patented.	Any rights related to original, literary, dramatic, musical and artistic works, cinematograph films and records are protected here.	Any rights conferred to a particular mark, that could be in the form of-symbol, word, ordevice applied to articles of commerce to indicate the distinctiveness of goods.	Any rights conferred in respect of a new original design. Perhaps, the design must not be published anywhere across the country. It must be noted that designs generally do not protect functionality or unseen (internal) design elements.	Any rights of goods or services that belong to the specific origin, collective marks, certifications marks and the like are protected.	Any rights relating to a new plant variety, extant varieties or seeds are protected.	Any trade secret regarding a production method, a sales method or any other information on technology or business that is not known to the general public is protected.
Duration	Generally, patents are protected for 20 years from the date the application is filed. However, for an invention claiming the method or process of manufacture of a substance under Section 53 of the Patents Act, the duration is 5 or 7 years from the date of dealing the patent. Further, it will be 14 years in respect to other inventions; however, this time period was amended in 2002 (in accordance with the TRIPS requirement), and now the duration is 20 years, as discussed above.	Generally, copyrights are protected for the lifetime of the creator (or author) plus 6o years in the case of a literary,  dramatic, musical or artistic work (except photograph) under Section 23.The duration is also 60 years in the following cases-Posthumous work (Section 24),Photograph (Section 25),Cinematograph film (Section 26),Sound recordings (Section 27),Government works (Section 28),Public undertakings (Section 28A),International organisations (Section 29)	The duration for which a trademark may vary, but is usually 10 years and can be renewed (for another 10 years) from time to time.	The time period for registering a design is ten years from the date it was registered; however, this period can be extended for another 5 years through an application made in Form-3 followed by paying the requisite fees to the Controller. This process  has to be followed before the expiration of the initial period of ten years.	Geographical indications are protected for ten 10 years and can be renewed from time to time for another 10 years.	The time period in the case of plant varieties varies and is as follows:Trees and vines (18 years from the date the variety was registered).Extant varieties (15 years from the date of notification of that variety by the Central Government under the Seed Act, 1966.Other crops (15 years from the date of registration of the variety.	As opposed to trademark, patents, trademarks, etc., trade secrets are protected without registration. Simply put, trade secrets do not need any procedural formalities  in order to be protected. Additionally, a trade secret can be protected for an unlimited period of time unless it is discovered or legally acquired by others or made known to the general public. In simple words, a trade secret can be protected as long as the secret is kept.
Who can register	For patent, any individual who is the first inventor, assignee, or the legal representative of any deceased person who before his/her death was entitled to file an application for registration.	For each work, any individual or legal entity can file an application for copyright registration.	Any sole proprietor, partners, individual of LLP (limited liability partnership),  private limited companies, etc., can file an application for trademark registration In India.	Any proprietor or owner of a design that is new and original and has not been previously published anywhere in any country and is not against public order or morality can apply for a design to be registered in India.	Any individual,  manufacturer,  organisation or authority established by or under any law can apply for registering GI of their product.	Any farmer or even group of farmers that claim that they are the breeders of a variety of a plant or any individual who has the power to file an application behalf of the University can file an application for registering a plant variety.	As we know there is no explicit law that discusses trade secrets in India.it is pertinent to note that, one can obtain trade secrets without protection and that there is no need to fulfil any formalities for registering a trade secret.
Effect of non registration non renewal	If a patent is not renewed again, the protection will end and enter public domain. Once a patent enters public domain, anyone can commercially exploit it without worrying about infringement.	Copyright in India lasts for 60 years, after which it becomes a part of the public domain and anyone can use it without seeking prior permission from the author.	If a trademark is not renewed within the stipulated time period, the registrar will remove the mark from the Register of Trademarks.	If a design is not renewed, the design will cease to have any effect and one cannot further sue any individual or organisation that uses the design.	In case a registered geographical indication is not renewed, it can be removed from the register.
Punishment for infringement	The punishment for a patent infringement is an imprisonment of a term extendable to 2 years or a fine, at times, both.	The punishment for copyright infringement is an imprisonment of up to 6 months and a minimum fine of Rs. 50,000.	The punishment for trademark infringement is imprisonment for a period of 6 months that is extendable to 3 years and a fine between Rs. 50,000 to Rs. 200, 0000.	The punishment for design infringement is a maximum of Rs. 25,000 for each breach that is recoverable and the amount recoverable for a single design should not exceed Rs. 50,000.	The punishment for GI infringement is imprisonment between 6 months and 3 years and a fine between 50,000 and 2 lakhs.	The punishment for plant varieties infringement is an imprisonment for 6 months that is extendable to 3 years or a fine between Rs. 1 lakh and Rs. 5 lakhs, at times both.	The punishment for infringement of a trade secret (or criminal breach of trust as there is no specific law regarding the same) is an imprisonment of up to 3 years or a fine.

We know, intellectual property can be used for several reasons, like-

1. Branding,
2. Marketing,
3. Protecting assets to have a competitive edge over other similar businesses, etc.

Further, these  IPs, which are assets, cme in numerous shapes and sizes. Some assets do not have a physical presence (commonly known as intangible assets), but IP holds just as much value for corporations as that of tangible assets. Generally, patents involving logos or brand names which can be patented, registered and trademarked assist consumers in recognising popular companies and their products. Considering this, it becomes quite crucial for companies to take the requisite steps to protect such assets to prevent them from being misused or infringed by third parties.

Each type of IP comes with unique features and acts as a cornerstone for protecting these forms of innovation and expression. By learning about these types of IPs, including patents, trademarks, copyrights, trade secrets, plant varieties, etc., it is evident that IPs play an indispensable role in fostering innovation, safeguarding creators’ rights, and driving economic growth.

Who owns intellectual property?

Generally, the individual who has created the work is regarded as the owner. Yet, intellectual property ownership can be said to vary depending on different types of property and under varying circumstances. For instance, if any work is created for an employer, the employer is regarded as the owner of that intellectual property.  Further, there is a possibility that ownership rights can be transferred from one party to another.

What is the main object of intellectual property?

Intellectual property can be used for several reasons, like branding and marketing. Further, it is also used to protect assets that give a competitive edge over other similar or same businesses or products.

What is the scope of intellectual property rights?

The Convention, WIPO (World Intellectual Property Organization) that established the word ‘intellectual property’ has provided quite a broad definition that intellectual property right shall include the rights related to-

1. Any type of literally, artistic and scientific work;
2. Any sort of performances of performing artists, phonograms, broadcasts;
3. Different inventions in all fields of human endeavour; 
4. Scientific discoveries;
5. Industrial designs;
6. Trademarks, service marks;
7. Protection against unfair competition and all other rights that result from intellectual activity in the industrial, scientific, literary and artistic fields.

How can one avoid infringement of any type of intellectual property?

Usually, an intellectual property is infringed without knowledge or intention, i.e., unwittingly. In order to avoid being sued for infringement of any intellectual property, one must ensure that their company or organisation is not using any material that is either copyrighted or trademarked. Further, they must ensure that the brand logo is not similar to or resembling another brand in a manner that would mislead someone to think it was the other brand. Additionally, when it comes to patents, it is always a good idea to carry out a patent search to ensure that any ideas are their own and not otherwise. If the scenario is the opposite, one must find ways to licence them through proper channels.

Word of advice: There are several IP lawyers (in India and abroad) that have specialised in the process of this and they ensure that you (their client) are not using anybody else’s protected intellectual assets. Moreover, if any individual is hired to do creative work for another individual or his/her company or organisation, they must ensure that the contract between both parties has an explicit mention that any creative material that is generated becomes the property of the company and not the individual who was hired to complete the task.

The following are some MCQs on types of IPs in India. 

If an individual has used another artist’s background music in his/her music video, what would the act amount to?

1. Identity theft
2. Copyright infringement
3. Cyber-bullying
4. Hacking

Correct answer: b

Generally, the use of information and ideas are protected by IPR are of-

1. Cultural value
2. Moral value
3. Commercial value
4. Social value

Correct answer: c

Which among the following is closely related to IP rights?

1. TRIMS
2. MFN
3. GATS
4. TRIPS

Correct answer: d

Under what type of agreement is royalty paid on the basis of sale?

1. Copyright
2. Patent
3. Mining
4. Licensing

Correct answer: a