IPR

Patents, Trademarks and Geographical Indication - IPR
INTELLECTUAL PROPERTY
Intellectual property (IP) is a term referring to a number of distinct types of creations of the mind
for which a set of exclusive rights are recognizedand the corresponding fields of law. Under
intellectual property law owners are granted certain exclusive rights to a variety of intangible
assets such as musical literary and artistic wor!s" discoveries and inventions" and words
phrases symbols and designs. #ommon types of intellectual property rights include copyrights
trademar!s patents industrial design rights and trade secrets in some $urisdictions. %intellectual
property% shall include the rights relating to&
' literary artistic and scientific wor!s"
' performances of performing artists phonograms and broadcasts"
' inventions in all fields of human endeavor"
' scientific discoveries"
' industrial designs"
' trademar!s service mar!s and commercial names and designations"
' protection against unfair competition" and
' all other rights resulting from intellectual activity in the industrial scientific literary or artistic
fields.
Intellectual property rights (IP(s) are the legal rights given to creators of intellectual property.
IP(s usually give the creator of intellectual property the right to exclude others from exploiting
the creation for a defined period of time. Intellectual property laws provide the incentives that
foster innovation and creativity and strive to ensure that the competitive struggle is fought
within certain bounds of fairness. )he protection of IP(s contributes significantly to
technological progress competitiveness of businesses and our country*s well'being.
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)he Uruguay (ound achieved that. )he +),-s )(IP. /greement is an attempt to narrow the
gaps in the way these rights are protected around the world and to bring them under common
international rules. It establishes minimum levels of protection that each government has to give
to the intellectual property of fellow +), members. In doing so it stri!es a balance between the
long term benefits and possible short term costs to society. .ociety benefits in the long term
when intellectual property protection encourages creation and invention especially when the
period of protection expires and the creations and inventions enter the public domain.
0overnments are allowed to reduce any short term costs through various exceptions for example
to tac!le public health problems. /nd when there are trade disputes over intellectual property
rights the +),-s dispute settlement system is now available.
TRIPS AGREEMENT
Current Overview
)he growing international economic relations between .tates all over the world have given rise
to global counterfeiting and piracy problems related to intellectual property. )his has become a
critical policy issue in trade relations due to the significant value of !now'how embodied in
commercialized products.
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)he lac! of protection of IP at the international level has been the source of rising tensions in
economic relations and has hindered technological transfer and innovation.
Origin of TRIPS Agreement
Ideas and !nowledge are an increasingly important part of trade. 1ost of the value of new
medicines and other high technology products lies in the amount of invention innovation
research design and testing involved. 2ilms music recordings boo!s computer software and
on'line services are bought and sold because of the information and creativity they contain not
usually because of the plastic metal or paper used to ma!e them. 1any products that used to be
traded as low'technology goods or commodities now contain a higher proportion of invention
and design in their value for example brand named clothing or new varieties of plants.
#reators can be given the right to prevent others from using their inventions designs or other
creations and to use that right to negotiate payment in return for others using them. )hese are
3intellectual property rights4. )hey ta!e a number of forms. 2or example boo!s paintings and
films come under copyright" inventions can be patented" brand names and product logos can be
registered as trademar!s" and so on. 0overnments and parliaments have given creators these
rights as an incentive to produce ideas that will benefit society as a whole.
Need for TRIPS & its formtion
)he extent of protection and enforcement of these rights varied widely around the world" and as
intellectual property became more important in trade these differences became a source of
tension in international economic relations. 5ew internationally'agreed trade rules for
intellectual property rights were seen as a way to introduce more order and predictability and for
disputes to be settled
6xisting agreements in the area did not have enforcement mechanisms or sanctions if the
obligations were not met. 67ually there was concern that measures and procedures to enforce
IP( do not themselves become barriers to legitimate trade. It was to deal with these issues that
the international community engaged in the development of a multilateral agreement on trade'
related aspects of intellectual property rights.
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)he +),-s )(IP. /greement is an attempt to narrow the gaps in the way these rights are
protected around the world and to bring them under common international rules. It establishes
minimum levels of protection that each government has to give to the intellectual property of
fellow +), members. In doing so it stri!es a balance between the long term benefits and
possible short term costs to society. .ociety benefits in the long term when intellectual property
protection encourages creation and invention especially when the period of protection expires
and the creations and inventions enter the public domain. 0overnments are allowed to reduce
any short term costs through various exceptions for example to tac!le public health problems.
/nd when there are trade disputes over intellectual property rights the +),-s dispute
settlement system is now available.
!si" Prin"i#$es of TRIPS%
8. non'discrimination features prominently& national treatment (treating one-s own nationals
and foreigners e7ually) and
9. 1ost'favoured'nation treatment (e7ual treatment for nationals of all trading partners in
the +),).
:. 5ational treatment is also a !ey principle in other intellectual property agreements
outside the +),.
)he )(IP. /greement has an additional important principle& intellectual property protection
should contribute to technical innovation and the transfer of technology. ;oth producers and
users should benefit and economic and social welfare should be enhanced.
)he agreement covers five broad issues&
how basic principles of the trading system and other international intellectual property
agreements should be applied
how to give ade7uate protection to intellectual property rights
how countries should enforce those rights ade7uately in their own territories
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how to settle disputes on intellectual property between members of the +),
special transitional arrangements during the period when the new system is being
introduced
)he areas covered by the )(IP. /greement&'
8. #opyright < related rights
9. )rademar!s including service mar!s
:. 0eographical indications
=. Industrial >esigns
?. Patents
@. Aayout >esigns (topographies) of integrated circuits
B. Undisclosed information including trade secrets
O&'e"tives of TRIPS Agreements
)hese ob$ectives include&
8. the reduction of distortions and impediments to international trade
9. promotion of effective and ade7uate protection of intellectual property rights and
:. ensuring that measures and procedures to enforce intellectual property rights do not
themselves become barriers to legitimate trade
)hese ob$ectives should be read in con$unction with /rticle B entitled 3,b$ectives4 according to
which the protection and enforcement of intellectual property rights should contribute to the
promotion of technological innovation and to the transfer and dissemination of technology to the
mutual advantage of producers and users of technological !nowledge and in a manner conducive
to social and economic welfare and to a balance of rights and obligations.
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/rticle C entitled 3Principles4 recognizes the rights of 1embers to adopt measures for public
health and other public interest reasons and to prevent the abuse of intellectual property rights
provided that such measures are consistent with the provisions of the )(IP. /greement.
/greement between the +orld Intellectual Property ,rganization and the +orld )rade
,rganization
)o facilitate the implementation of the )(IP. /greement the #ouncil for )(IP. concluded with
+IP, an agreement on cooperation between +IP, and the +), which came into force on 8
Danuary 8EE@. /s explicitly set out in the Preamble to the )(IP. /greement the +), desires a
mutually supportive relationship with +IP,. )he /greement provides cooperation in three main
areas namely notification of access to and translation of national laws and regulations
implementation of procedures for the protection of national emblems and technical cooperation.
(IPO
)he +orld Intellectual Property ,rganization (+IP,) is the United 5ations agency dedicated to
the use of intellectual property (patents copyright trademar!s designs etc.) as a means of
stimulating innovation and creativity.
(IPO)s Strtegi" Go$s
+IP,*s nine strategic goals were adopted by member states in >ecember 9FFE in the first phase
of a comprehensive strategic realignment process within the ,rganization. )hey reflect the
evolving challenges for +IP, and for intellectual property in today-s rapidly changing
environment&
;alanced 6volution of the International 5ormative 2ramewor! for IP
Provision of Premier 0lobal IP .ervices
2acilitating the Use of IP for >evelopment
#oordination and >evelopment of 0lobal IP Infrastructure
+orld (eference .ource for IP Information and /nalysis
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International #ooperation on ;uilding (espect for IP
/ddressing IP in (elation to 0lobal Policy Issues
/ (esponsive #ommunications Interface between +IP, its
1ember .tates and /ll .ta!eholders
Unli!e +IP, treaties the )(IP. /greement includes powerful
enforcement mechanisms such as trade sanctions and litigation
before the +orld #ourt that force countries into compliance with the provisions in the
agreement.
T*e Trdemr+ A"t,-...
/ trademar! trade mar! or trade'mar! is a distinctive sign or indicator used by an
individual business organization or other legal entity to identify that product or services
to consumers with which the trademar! appears originate from a uni7ue source and to
distinguish its products or services from those of other entities.
/ trademar! may be designated by the following symbols&
G (for an unregistered trade mar! that is a mar! used to promote or brand goods)
.1 (for an unregistered service mar! that is a mar! used to promote or brand services)
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H (for a registered trademar!)
/ trademar! is typically a name word phrase logo symbol design image or a combination of
these elements. )here is also a range of non'conventional trademar!s comprising mar!s which
do not fall into these standard categories such as those based on color smell or sound.
)he owner of a registered trademar! may commence legal proceedings for trademar!
infringement to prevent unauthorized use of that trademar!. Iowever registration is not
re7uired. )he owner of a common law trademar! may also file suit but an unregistered mar!
may be protectable only within the geographical area within which it has been used or in
geographical areas into which it may be reasonably expected to expand.
)he term trademar! is also used informally to refer to any distinguishing attribute by which an
individual is readily identified such as the well'!nown characteristics of celebrities. +hen a
trademar! is used in relation to services rather than products it may sometimes be called
a service mar! particularly in the United .tates.
)rademar!s ma!e it easier for consumers to 7uic!ly identify the source of a given good. Instead
of reading the fine print on a can of cola consumers can loo! for the #oca'#ola trademar!.
Instead of as!ing a store cler! who made a certain athletic shoe consumers can loo! for
particular identifying symbols such as a swoosh or a uni7ue pattern of stripes. ;y ma!ing goods
easier to identify trademar!s also give manufacturers an incentive to invest in the 7uality of their
goods. /fter all if a consumer tries a can of #oca'#ola and finds the 7uality lac!ing it will be
easy for the consumer to avoid #oca'#ola in the future and instead buy another brand.
)rademar! law furthers these goals by regulating the proper use of trademar!s.
/istor0

;ass ;rewery*s logo became the first image to be registered as a trademar!ed in 8CB
.ymbol
)he two symbols associated with trademar!s G (the trademar! symbol) and H (the registered
trademar! symbol) represent the status of a mar! and accordingly its level of protection. +hile
G can be used with any common law usage of a mar! H may only be used by the owner of a
mar! following registration with the relevant national authority such as the U... Patent and
)rademar! ,ffice (U.P), or P),). )he proper manner to display either symbol is immediately
following the mar! in superscript style.
TRIPS Agreement of t*e (TO&'
)(IP. /greement that is concerned with the 3)rade 1ar!s4 ' +), member countries are
obliged to grant full protection to the registered trademar!s. )he purpose of a trade mar! is to
indicate the source of origin of goods or service in respect of which also a mar! may be applied
for. 5ow that the new )rade 1ar!s /ct 8EEE has provided for the registration of service mar!
also. In course of time the mar! came to represent to the customers a certain 7uality relating to
the goods in relation to which the mar!s were used. )oday a trade mar! is a powerful tool to
move goods and the basis of that power is the customer-s preference for a brand which a trade
mar! has helped to built over a period of time. 2or all these reasons a trademar! which it is well
established is a property of considerable value to the owner of the mar!. )(IP. aims that the
members provide the maximum protection to this mar! in accordance with this /greement and
other relevant conventions on trademar!s to everyone carrying on business.
!
)he agreement defines what types of signs must be eligible for protection as trademar!s and
what the minimum rights conferred on their owners must be. It says that service mar!s must be
protected in the same way as trademar!s used for goods. 1ar!s that have become well'!nown in
a particular country en$oy additional protection.
Termino$og0
)erms such as %mar!% %brand% and %logo% are sometimes used interchangeably with
%trademar!%. %)rademar!% however also includes any device brand label name signature
word letter numerical shape of goods pac!aging color or combination of colors smell sound
movement or any combination thereof which is capable of distinguishing goods and services of
one business from those of others. It must be capable of graphical representation and must be
applied to goods or services for which it is registered.
.pecialized types of trademar! include certification mar!s collective trademar!s and defensive
trademar!s. / trademar! which is popularly used to describe a product or service (rather than to
distinguish the product or services from those of third parties) is sometimes !nown as
agenericized trademar!. If such a mar! becomes synonymous with that product or service to the
extent that the trademar! owner can no longer enforce its proprietary rights the mar! becomes
generic.
Produ"t Mr+%
)he term Product )rademar! is also used informally to refer to any distinguishing attribute by
which an individual is readily identified such as the well'!nown characteristics of celebrities.
6g& 2or example the trademar!s %5i!e% along with the 5i!e %swoosh% identify the shoes made
by 5i!e and distinguish them from shoes made by other companies (e.g. (eebo! or /didas).
.imilarly the trademar! %#oca'#ola% distinguishes the brown'colored soda water of one
particular manufacturer from the brown'colored soda of another.
Cse$et
1"
)ata group sued 1a!e1y)rip(11)) in 9FFE it made waves. 11) had launched a
portal OkTataByeBye a travel forum that offered hotel reviews tour advice holiday ideas and
travel reviews by users. )/)/ sued 11) claiming that J)ata- in ,!)ata;ye;ye was very
similar to )/)/ and hence should be discontinued. )/)/ won the case at the +orld
Intellectual Property ,rganisation (+IP,) against 11) and ,!)ata;ye;ye had to shut shop.
/s a young startup when you-re not really sure about success yourself legal aspects of the
business may not be top of mind for you.
Servi"e Mr+%
/ mechanism is now available to protect mar!s used in the service industry. )hus businesses
providing services li!e computer hardware and software assembly and maintenance restaurant
and hotel services courier and transport beauty and health care advertising publishing
educational and the li!e are now in a position to protect their names and mar!s. .ervice Industry
providing services li!e +holesale < (etail )raders .howroom ;eauty < Iealth #are
Insurance #ourier )ransport )ele #ommunication 6ducational < 6ntertainment are now in a
position to protect their 5ames < 1ar!s. 6xample& Dawed habib cafK coffee day !aya s!in
clinic. #itiban! is a registered service mar! of #itigroup Inc.
Certifi"tion Mr+%
%#ertification 1ar!% performs a different role than a
trademar!. )he certification mar! is also capable of distinguishing the goods or services as the
same is certified by the proprietor in respect to its origin material and mode of manufacture or
performance of services 7uality or accuracy. )hese mar!s can be used only in accordance with
defined standards. )he function of a certification mar! is not to indicate trade origin but to
certify that goods or services in relation to which it is applied are certified by the proprietor of
the mar! as to certain characteristics of the goods or services. )he provisions for registration of
trademar! are e7ually applicable to certification mar!s also. /ssignment or transmission of
certification mar!s is not allowed except with the consent of the (egistrar of )rade 1ar!s for
which an application has to be made in the prescribed manner.
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6g& )he 5ational /ssessment and /ccreditation #ouncil (5//#) is the sovereign body
established by the University 0rants #ommission (U0#) of India. )his is established to evaluate
and accredit institutions of higher education in India. )his code is basically made to ensure the
7uality <highest level of education in India.
60& 0,,> I,U.6L66PI50 .6/A ,2 /PP(,M/A. )he 0ood Iouse!eeping Institute
awards the 0ood Iouse!eeping .eal which stands as one of the most recognized consumer
product insignia in the United .tates. )he seal represents 0ood Iouse!eeping-s limited
warranty that if any product that carries the seal is found defective within two years from the
date of purchase 0ood Iouse!eeping will either replace it or refund the purchase price.
Co$$e"tive Mr+s%
1ar!s being used by a group of companies can now be protected by the group collectively.
#ollective mar! is used to inform the public about the particular feature of the product for which
the collective mar! is used. )he owner of such mar!s may be an association or other public
institution or cooperative of which the enterprise is a member. #ollective mar!s are also used to
promote particular products which have certain characteristics specific to the producer in a
familiar.
e.g. a mar! registered by an 50, a partnership firm the %#/% device used by the Institute of
#hartered /ccountants 2)> found in many flower shops. )his mar! means that the flower
shop is part of a group that participates in a national flower delivery system. )o belong to that
groupand thus obtain authorization to use the 2)> mar!the shop must pay steep
membership fees and conform its practices to the rules set out by the group. given region.
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1efensive Trdemr+%
>efensive trademar! is a form of trademar! used to prevent trademar! infringement. / defensive
trademar! can be applied for by a trademar! owner of a well !nown trademar! for goods or
services that are not intended to be used by that owner. )he purpose of filing a defensive
application is to reduce the possibility of other traders using the trade mar! for unrelated goods
or services. Iowever the prior trademar! should be distinctive famous or even uni7ue for
applying for a defensive trademar!. .ome states re7uire additional registration of these
trademar!s as defensive mar!s in order to 7ualify for dilution protection.
Cse$et
>ecided in 8EE: by the Iigh #ourt of >elhi this was perhaps the first Indian ruling that loo!ed
in detail into the concept of dilution of well'!nown mar!s. )he issue in this case was the use of
the mar! ;65N along with a 3three pointed human being in a ring4 and the words 30erman
perfection. It need not be restricted to mere machines. ,r horizons4 in connection with
underwear to mere machines. ,r horizons4 in connection with underwear made by an Indian
company. Plaintiff-s mar! >efendant-s mar! owns the famous three'pointed star ;65N logo
depicted below owns the famous three'pointed star ;65N logo depicted above sued the Indian
underwear company for passing off. )he plaintiff-s logo was registered in India in 8E?8. )he
Iigh #ourt of >elhi declared .uch a mar! is not up for grabsnot available to any person
to apply upon anything or goods.

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2oint$0 owned trdemr+s
/ny mar! that is used in relation to goods or services which is lin!ed to all the $oint applicants
in such case $ointly owned trademar!s can be registered.
If / and ; come up with same or similar mar!s for their business without !nowledge of each
other-s existence then such mar!s will be termed as Dointly owned trademar!s.
Registrtion
)he law considers a trademar! to be a form of property. Proprietary rights in relation to a
trademar! may be established through actual use in the mar!etplace or through registration of
the mar! with the trademar!s office (or %trademar!s registry%) of a particular $urisdiction. In
some $urisdictions trademar! rights can be established through either or both means. #ertain
$urisdictions generally do not recognize trademar!s rights arising through use. If trademar!
owners do not hold registrations for their mar!s in such $urisdictions the extent to which they
will be able to enforce their rights through trademar! infringement proceedings will therefore be
limited. In cases of dispute this disparity of rights is often referred to as %first to file% as opposed
to %first to use.%
In order to serve as a trademar! a mar! must be distinctive '' that is it must be capable of
identifying the source of a particular good. In determining whether a mar! is distinctive the
courts group mar!s into four categories based on the relationship between the mar! and the
underlying product& (8) arbitrary or fanciful (9) suggestive (:) descriptive or (=) generic.
14
;ecause the mar!s in each of these categories vary with respect to their distinctiveness the
re7uirements for and degree of legal protection afforded a particular trademar! will depend
upon which category it falls within.
In order to serve as a trademar! a mar! must be distinguishing that is it must be capable of
identifying the source of a particular good. In determining whether a mar! is distinctive the
court groups mar!s into four categories based on the relationship between the mar! and the
underlying product&
(8) arbitrary
(9) fanciful
(:) suggestive
(=) descriptive
(?) generic
;ecause the mar!s in each of these categories vary with respect to their distinctiveness the
re7uirements for and degree of legal protection afforded a particular trademar! will depend
upon which category it falls within.
Ar&itrr0 mr+s%
/n arbitrary mar! utilizes a device having a common meaning that has no relation to the goods
or services being sold. 6xamples of arbitrary mar!s include&
/PPA6 (for computers)
A,)U. (for software)
.U5 (for computers)
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3n"ifu$ mr+s%
2anciful mar!s are devices which have been invented for the sole purpose of functioning as a
trademar! and have no other meaning than acting as a mar!. 2anciful mar!s are considered to be
the strongest type of mar!. 6xamples of fanciful mar!s are&
6OO,5
L,>/L
O6(,O
A suggestive mr+%
/ suggestive mar! is a mar! that evo!es or suggests a characteristic of the underlying good.
.uggestive mar!s are mar!s that suggest a 7uality or characteristic of the goods and services.
>espite the fact that suggestive mar!s are not as strong as fanciful or arbitrary mar!s suggestive
mar!s are far more common due to the inherent mar!eting advantage of tying a mar! to the
product in a customer*s mind. .uggestive mar!s are often difficult to distinguish from descriptive
mar!s (described below) since both are intended to refer to the goods and services in 7uestion.
.uggestive mar!s re7uire some imagination thought or perception to reach a conclusion as to
the nature of the goods. >escriptive mar!s allow one to reach that conclusion without such
imagination thought or perception. Putting this distinction into practice clearly is one of the most
difficult and disputed areas of trademar! law.
2or example the words 3B'884 for a store that was open from B a.m. to 88 p.m. 3D/0U/(4 and
31U.)/504 for fast cars but does not specifically describe the underlying product. .ome
exercise of imagination is needed to associate the word with the underlying product. /t the same
time however the word is not totally unrelated to the underlying product.
6g& 1I#(,.,2) (suggestive of software for microcomputers)
Ai!e arbitrary or fanciful mar!s suggestive mar!s are inherently (Permanent) distinctive and are
given a high degree of protection.
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1es"ri#tive mr+s%
>escriptive mar!s (or more properly %merely descriptive mar!s%) are devices which merely
describe the services or goods on which the mar! is used. If a device is merely descriptive it is
not a mar! at all since it does not serve to identify the source of the goods or services. 5o
trademar! rights are granted to merely descriptive mar!s. 1isdescriptive mar!s are e7ually
wea!. /s explained in connection with suggestive mar!s above descriptive mar!s are often
difficult to distinguish from suggestive mar!s. .uggestive mar!s re7uire some imagination
thought or perception to reach a conclusion as to the nature of the goods. >escriptive mar!s
allow one to reach that conclusion without such imagination thought or perception. Putting this
distinction into practice can be very difficult.
)he following imaginary mar!s could be considered merely descriptive for computer
peripherals&
2/.) ;/U> for modems (describing the 7uic!ness of the modem)"
8F= L6P for computer !eyboards (describing the number of !eys on a !eyboard)"
AI0I) for portable computers (describing the computer*s weight)" and
)U;6A6.. for computer monitors (even if misdescriptive for a monitor that contains tubes).
Iowever it is possible for descriptive mar!s to %become distinctive% by achieving secondary
meaning. .econdary meaning indicates that although the mar! is on its face descriptive of the
goods or services consumers recognize the mar! as having a source indicating function. ,nce it
can be shown that a descriptive term or phrase has achieved this %second meaning% (the first
meaning being the generally understood meaning of the term or phrase) a protectable trademar!
is developed. .econdary meaning can be achieved through long term use or large amounts of
advertising and publicity. )he ac7uisition of secondary meaning is often proven through the use
of consumer surveys that show that consumers recognize the mar! as a brand such as %2,(>%
as opposed to a descriptive term such as %reliable%.
6xamples of mar!s which might be considered descriptive but have clearly developed secondary
meaning include&
17
.I/(P for televisions"
>I0I)/A for computers"
+I5>,+. for windowing software"
I5)6(5/)I,5/A ;U.I56.. 1/#II56. for computers and other business
machines" and
P,+6( #,1PU)I50 for computers based on the Power P# chip.
.urnames&
1ar!s that are primarily surnames (such as %.1I)I .I,6.% or %(,>(I0U6N
#,1PU)6(.%) are treated the same as descriptive mar!s under U... trademar! law. /s
a result surnames are not given protection as trademar! until they achieve secondary
meaning through advertising or long use. / trademar! is %primarily a surname% if the
public would recognize it first as a surname or if it consists of a surname and other
material that is not registrable.
,nce a surname achieves secondary meaning the mar! is protectable as a trademar!.
,thers cannot use the mar! on confusingly similar goods even if they have the same
name. )hus Dane 1c>onald could not open a restaurant called %1#>,5/A>.% nor
could Doel Iyatt open a motel under the name %IP/)) 1,)6A% since the mar!s
1#>,5/A>. and IP/)) have achieved secondary meaning.
Generi" mr+
/ generic mar! is a mar! that describes the general category to which the underlying product
belongs. 2or example the term %#omputer% is a generic term for computer e7uipment. 0eneric
mar!s are entitled to no protection under trademar! law. )hus a manufacturer selling
%#omputer% brand computers (or %/pple% brand apples etc.) would have no exclusive right to
use that term with respect to that product. 0eneric terms are not protected by trademar! law
because they are simply too useful for identifying a particular product. 0iving a single
manufacturer control over use of the term would give that manufacturer too great a competitive
1
advantage. Under some circumstances terms that are not originally generic can become generic
over time (a process called %genericity%) and thus become unprotected.
Unli!e descriptive mar!s generic devices will not become a trademar! even if they are
advertised so heavily that secondary meaning can be proven in the mind of consumers. )he
rationale for creating the category of generic mar!s is that no manufacturer or service provider
should be given exclusive right to use words that generically identify a product.
/ valid trademar! can become generic if the consuming public misuses the mar! sufficiently for
the mar! to become the generic name for the product. )he prime examples of former trademar!s
that became the generic name for a product are /.PI(I5 and #6AA,PI/56. #urrent
trademar!s that were once considered to be candidates for becoming generic are O6(,O and
LA6656O. O6(,O has spent a great deal of advertising money to prevent misuse of its mar!.
;y doing so O6(,O has li!ely avoiding the loss of its trademar!.
)he following words and phrases can be considered generic and therefore are incapable of
functioning as a trademar!&
1,>61
+++
6'1/IA
Registrtion of trdemr+ f$ow "*rt
1!
Registr&$e Mr+s%
)he new law on trademar!s that came into force on .eptember 8? 9FF: permits the
registration of .ervice 1ar!s. )ill then only trademar!s used in respect of goods were
registrable in India. #ollective 1ar!s and +ell Lnown 1ar!s are also now recognized in
India. )he scope of registrable 1ar!s has been expanded to include shape of goods
pac!aging or combination of colors.
T*e A##$i"tion&
2"
/pplication for registration of an ordinary trademar! (including a service mar!) must be
filed in 2orm )1'8.
)here are ? )rade 1ar!s (egistries in India. )hese (egistries are located in >elhi
1umbai #hennai #alcutta and /hmedabad. /n application must be filed at the )rade
1ar!s registry within whose territorial $urisdiction the /pplicant is located. 2or
applications originating from outside India (and if the /pplicant does not have a place of
business in India) the appropriate (egistry is the one in whose $urisdiction the principal
place of business of the agent in India is located.
Priorit0 C$im%
India ratified the Paris #onvention in >ecember 8EEC. /n application for registration of
a )rademar! claiming convention priority can be filed within @ (six) months from the
date of filing of corresponding application in the respective $urisdiction. )o claim
priority a certified copy of the convention application is re7uired.
User&
Intent to use applications can be filed in India.
Trde Mr+ Ser"*&
It is desirable to conduct a )rade 1ar! search to ascertain the existence of prior
registrations of identical mar!s. )hus far it has been rather burdensome to conduct
trademar! searches in India because it was to be done manually. )he digital database of
registered and advertised trademar!s is now available. )his has made trademar! search
easy and speedy. / )rade 1ar!s search can be conducted by ma!ing a formal re7uest for
search in 2orm )1'?=. 6ach such re7uest must confine to a given class. )he .earch
(eport will be made available within :F days from the date of re7uest. )he new law
provides for expedited search. /n application for expedited search must be filed in 2orm
)1'B8 and a report will be issued within B days from the date of re7uest. )he fee for
expedited search is ? (five) times the ordinary fee.
Com#n0 Nme Ser"*%
21
/s per the new law a re7uest can be made to the (egistrar of trademar!s (in 2orm )1'
88) to cause a search and issuance of a certificate to the effect that no trade mar! identical
to the name of a company has been registered or is pending for registration with the
(egistrar.
1istin"tiveness O#inion from T*e Registrr&
,ne of the important features of the Indian trademar!s law is that the (egistrar-s opinion
can be sought as to the distinctiveness of a trademar!. / re7uest to this effect can be
made in 2orm )1'??. )he (egistrar will advise on whether the 1ar! proposed to be
registered is prima facie (%at first face% or %at first appearance%) distinctive. )he (egistrar
will give his advice ordinarily within B days of filing this re7uest.
Prose"ution Of A##$i"tion%
Upon filing a trademar! application the )rade 1ar!s (egistry will issue cash receipt bearing the
Indian trademar! application number. ,rdinarily within :F days from the date of filing the
)rade 1ar!s (egistry will issue a copy of the /dditional (epresentation bearing the /pplication
5umber and >ate of 2iling.
/s per the new law an /pplicant for registration of a trademar! is entitled to ma!e a (e7uest for
6xpedited 6xamination. )his re7uest to be filed in 2orm )1'@: must be filed along with a
declaration stating the reason for such re7uest. )he official fee for an expedited examination is ?
times the application fee. In the event an applicant files a re7uest for expedited examination the
(egistrar will issue the examination report within : months from the date of re7uest. )he
specification of goods or services if exceeds more than ?FF characters the prescribed fee must be
paid for each additional character. /lso an /pplication in 2orm )1'@8 must be filed along with
the application for registration of the mar! if the number of characters in the goodsQservice
specification exceeds ?FF. )ypically the office action will set out various ob$ections concerning
the registrability of the 1ar!. If citation ob$ections are raised the 6xaminer will append a search
report mentioning the particulars of the prior registrations. )he applicant is re7uired to reply to
the 2irst ,ffice /ction within three (:) months from its date of communication.
)he applicant if complies with the re7uirements of the )rade 1ar!s law the 1ar! will be
22
accepted in due course. )he )rade 1ar!s (egistry thereafter advertises the 1ar! in the )rade
1ar!s Dournal.
O##osition%
)he 1ar! remains open to opposition for three (:) months which is extendible for a
further 8 month upon re7uest in the prescribed form by a person interested to enter
opposition. If a 5otice of ,pposition is filed within this period the application enters the
opposition proceedings which involves serving a copy of the 5otice of ,pposition by
(egistrar on the /pplicant the /pplicant-s counter statement within R9 months from the
date of receipt of 5otice of ,ppositionS the evidence by opponent the further evidence
by the /pplicant and hearing if any and the (egistrar-s >ecision allowing or re$ecting
the opposition.
Grnt%
If there is no opposition against the proposed registration or the opposition proceedings
have been decided in favor of the /pplicant the )rade 1ar!s (egistry will proceed to
grant the (egistration.
Term Of Registrtion & Renew$%
)he 1ar! upon registration will be in force for a term of )en (8F) years. It must be
renewed every )en (8F) years thereafter.
)enure&
)rademar!s rights must be maintained through actual lawful use of the trademar!. )hese
rights will cease if a mar! is not actively used for a period of time normally ? years in
most $urisdictions. )erm of registration of a trademar! is ten years which may be
renewed for a further period of ten years on payment of prescribed renewal fees.
Trde mr+ Lw in Indi%
)he Indian law of trademar!s is enshrined the new )rade 1ar!s /ct 8EEE came into
force with effect from .eptember 8? 9FF:. )he old )rade and 1erchandise 1ar!s /ct
23
8E?C was repealed at the same time. )he new )rademar!s /ct of 8EEE is in line with the
+), recommendations and is in conformity with the )(IP. /greement to which India
is a signatory.
India has declared certain countries as convention countries which afford to citizens of
India similar privileges as granted to its own citizens. / person or company from a
convention country 1ay within six months of ma!ing an application in the home
country apply for registration of the trademar! in India. If such a trademar! is accepted
for registration such foreign national will be deemed to have registered his or her
trademar! in India from the same date on which he or she made application in the home
country.
Infringement of Trde Mr+%
)rademar! infringement is a violation of the exclusive rights attaching to a trademar! without
the authorization of the trademar! owner or any licensees (provided that such authorization was
within the scope of the license). Infringement may occur when one party the 3infringer4 uses a
trademar! which is identical or confusingly similar to a trademar! owned by another party in
relation to products or services which are identical or similar to the products or services which
the registration covers. /n owner of a trademar! may commence legal proceedings against a
party which infringes its registration.
Li+e$i*ood of "onfusion&
If a party owns the rights to a particular trademar! that party can sue subse7uent parties for
trademar! infringement. )he standard is %li!elihood of confusion.% )o be more specific the use
of a trademar! in connection with the sale of a good constitutes infringement if it is li!ely to
cause consumer confusion as to the source of those goods or as to the sponsorship or approval of
such goods. In deciding whether consumers are li!ely to be confused the courts will typically
loo! to a number of factors including& (8) the strength of the mar!" (9) the proximity of the
goods" (:) the similarity of the mar!s" (=) evidence of actual confusion" (?) the similarity of
mar!eting channels used" (@) the degree of caution exercised by the typical purchaser" (B) the
defendant*s intent.
24
.o for example the use of an identical mar! on the same product would clearly constitute
infringement. If I manufacture and sell computers using the mar! %/pple% my use of that mar!
will li!ely cause confusion among consumers since they may be misled into thin!ing that the
computers are made by /pple #omputer Inc. Using a very similar mar! on the same product
may also give rise to a claim of infringement if the mar!s are close enough in sound
appearance or meaning so as to cause confusion. .o for example %/pplet% computers may be
off'limits" perhaps also %/pricot.% ,n the other end of the spectrum using the same term on a
completely unrelated product will not li!ely give rise to an infringement claim. )hus /pple
#omputer and /pple (ecords can peacefully co'exist since consumers are not li!ely to thin!
that the computers are being made by the record company or vice versa. ;etween the two ends
of the spectrum lie many close cases in which the courts will apply the factors listed above. .o
for example where the mar!s are similar and the products are also similar it will be difficult to
determine whether consumer confusion is li!ely.
Cse$et%
In one case the owners of the mar! %.lic!craft% used the mar! in connection with the sale of
boats used for general family recreation. )hey brought an infringement action against a company
that used the mar! %.lee!craft% in connection with the sale of high'speed performance boats.
;ecause the two types of boats served substantially different mar!ets the court concluded that
the products were related but not identical. Iowever after examining many of the factors listed
above the court concluded that the use of .lee!craft was li!ely to cause confusion.
Cse stud0
4rft 3oods 56S !ritnni
3,reo4 is a trademar! for a sandwich coo!ie manufactured by Lraft 2oodsG Inc one of world-s
largest confectionary food and beverage #orporation with its head7uarters at United .tates of
/merica. ;ritanniaG the Indian biscuits giant recently launched the line of )reat',G biscuit
25
which was alleged by Lraft 2oodsG as resembling 3,reoH coo!ie )rade >ress4 and its pac!ing
and has sought damages for infringement of trademar! and copyright passing off and unfair
competition of its ,reoH brand. #onse7uently Lraft 2oodsG Inc. has filed an in$unction suit
against ;ritanniaG Industries Atd for allegedly infringing the trademar! and copyrights of its
,reoH coo!ies and >elhi Iigh #ourt has as!ed ;ritanniaG to respond to the allegations by Dan
9?th 9F88.
)rade dress refers to the overall image of the product and encompasses features such as size
shape pac!age colour or colour combinations etc. 6xpansively it refers to the comprehensive
get up of the product. )he perspective of a trade dress is basically to identify the product and its
ma!ers to the consumers. )hus a trade dress is characteristic of a particular product and is very
important for its brand value. )o be legally protected a trade dress must be non'functional
contrary to which it becomes the sub$ect matter of patent law. Under the Indian trademar! law
any distinctive and identifying Jmar!- which is capable of distinguishing the goods and services
of one owner from that of another may be utilized as )rademar! and such mar!s are afforded
protection under the law. )he Indian law on trademar! provides for passing off action against use
of similar trade dress and hence for infringement of trade dress a passing off action can be
claimed.
(esuming the discussion on the in$unction suit against ;ritanniaG Industries Atd by Lraft
2oodsG an analysis of the trade dress of ,reoH and )reat ,G shows both similarities and
dissimilarities which have been tabulated below&
.imilarities >issimilarities
;oth ,reoH and )reat',G consists of two
round chocolate pieces with a sweet white
filling referred to as Jcream-.
)he colour of the round chocolate pieces of the
,reoH coo!ie is blac! whereas that of )reat'
,G are brown.
,reoH has uni7ue etchings consisting of fine
edge linings inner rings and florets
embossed on it. )reat',G has similar
etchings.
)he spacing of the etchings of )reat ,G are far
apart as compared to that of ,reoH and unli!e
,reoH where 3,reoH4 is embossed in the
middle of the coo!ie )reat',G has a floral
26
motif embossed in the middle.
)he pac!aging of both ,reoH and )reat'
,G are blue in colour. In )reat',G
emphasis is placed on 3,4 which seems to be
inspired from ,reoH.
In the pac!aging of )reat',G the font of
3)reat',G4 appears red in colour.
Ptent
/ Patent is a statutory right for an invention granted for a limited period of time to the patentee
by the 0overnment in exchange of full disclosure of his invention for excluding others from
ma!ing using selling importing the patented product or process for producing that product for
those purposes without his consent. / patent is not a right to practice or use the invention.
)he word patent originates from the Aatin patere which means %to lay open% i.e. to ma!e
available for public inspection.
/ patent is in effect a limited property right that the government offers to inventors in exchange
for their agreement to share the details of their inventions with the public. Ai!e any other
property right it may be sold licensed mortgaged assigned or transferred given away or
simply abandoned.
If an inventor ta!es an existing patented invention adds a new feature to ma!e an improved
design and obtains a patent on the improvement he or she can only legally build his or her
improved mouse trap with permission from the patent holder of the original invention assuming
the original patent is still in force. ,n the other hand the owner of the improved design can
exclude the original patent owner from using the improvement.
27
Patent protection is territorial right and therefore it is effective only within the territory of India.
Iowever filing an application in India enables the applicant to file a corresponding application
for same invention in convention countries within or before expiry of twelve months from the
filing date in India. )herefore separate patents should be obtained in each country where the
applicant re7uires protection of his invention in those countries. )here is no patent valid
worldwide. It is possible to file an international application !nown as Patent #ooperation )reaty
(P#)) application in India in the Patent ,ffices located at Lol!ata #hennai 1umbai and >elhi.
/ll these offices act as (eceiving ,ffice ((,) for International application.
)hings that can be patented& /n invention relating either to a product or process that is new
involving inventive step and capable of industrial application can be patented. Iowever it must
not fall into the categories of inventions that are non' patentable.
T*ings t*t "nnot &e #tented%
8. 2rivolous inventions or inventions contrary to well established law.
(0ambling machine >evice for house'brea!ing)
9. Invention that cause serious pre$udice to health or human plant life.
(+eapons of mass destruction)
:. >iscovery of any livingQnon living thing or formulation of any abstract theory.
(>iscovery of natural gas or micro organism)
=. 1ere discovery of any new property or new use of a !nown substance.
(5ew uses of 5eem or some medicine)
?. 1ere arrangement or rearrangement or duplication of !nown devices each functioning
independently of one another. (;uc!et fitted with torch umbrella fitted with fan)
@. 1ethod& /griculture or Iorticulture
B. 1athematical methods or method of teaching or solving.
2
Ptent $i"ensing
Patent licensing agreements are contracts in which the patent owner (the licensor) agrees to forgo
their right to sue the licensee for infringement of the licensor*s patent rights usually in return for
a royalty or other compensation. 1oreover it is e7ually common for competitors to license
patents to each other under cross'licensing agreements in order to share the benefits of using
each other*s patented inventions.
Rtion$e%
)here are four primary incentives embodied in the patent system&
)o invent in the first place
)o disclose the invention once made
)o invest the sums necessary to experiment produce and mar!et the invention
)o design around and improve upon earlier patents.
1# Patents provide incentives for economically efficient research and development ((<>).
If the investments can be considered as inputs of (<> patents are the outputs. ;ased on these
groups a pro$ect named #orporate Invention ;oard had measured and analyzed the patent
portfolios to produce an original picture of their technological profiles. .upporters of patents
argue that without patent protection (<> spending would be significantly less or eliminated
altogether limiting the possibility of technological advances or brea!throughs. #orporations
would be much more conservative about the (<> investments they made as third parties would
be free to exploit any developments.
2# In accordance with the original definition of the term %patent% patents facilitate and
encourage disclosure of innovations into the public domain for the common good. If inventors
did not have the legal protection of patents in many cases they would prefer or tend to !eep
their inventions secret. /warding patents generally ma!es the details of new technology publicly
2!
available for exploitation by anyone after the patent expires or for further improvement by other
inventors.
:. In many industries (computer processors and pharmaceuticals for example) once an
invention exists the cost of commercialization (testing tooling up a factory developing a
mar!et etc.) is far more than the initial conception cost. Unless there is some way to prevent
copies from competing at the marginal cost of production companies will not ma!e that product
investment.
3$ow "*rt of #tent ##$i"tion
3"
)erm of patent& )erm of every patent in India is 9F years from the date of filing of patent
application irrespective of whether it is filled with provisional or complete specification.
Iowever in case of applications filed under Patent #o' operative )reaty the term of 9F years
begins from International filing date.
,bligations of the patentee after the grant of patent& /fter the grant of patent every patentee has
to maintain the patent by paying renewal fee every year. 2or first two years there is no renewal
fee. )he renewal fee is payable from :
rd
year onwards. In case the renewal fee is not paid the
patent will be ceased.
Ptent gent%
31
/ Patent agent is a registered person with Indian Patent ,ffice whose name is entered in the
patent agent register after being declared 7ualified the patent agent examination conducted by the
patent office.
Prior permission from the Patent ,ffice to file application for patent outside India or abroad& )he
person is re7uired to ta!e prior permission from the Patent ,ffice under following
circumstances&
)he applicant is Indian resident and invention is originated in India.
/pplicant does not wish to file patent application in India prior to filing abroad.
If the applicant is Indian resident a patent application has been filed in India and six
wee!s period is not yet over from that date
)he invention relates to atomic energy or defense purpose.
Some "ontroversies%
Patent trolls are one of common criticisms against patents though some commentators
suggest that patent trolls are not bad for the patent system at all but instead realign mar!et
participant incentives ma!e patents more li7uid and clear the patent mar!et.
Pharmaceutical patents prevent generic alternatives to enter the mar!et until the patent
expire and thus maintains high prices for medication. )his can have significant effects in
the developing world as those who are most in need of basic essential medicines are
unable to afford such high priced pharmaceuticals.
In one response to these criticisms one review concluded that less than ? percent of
medicines on the +orld Iealth ,rganization*s list of essential drugs are under patent.
/lso the pharmaceutical industry has contributed U.T9 billion for healthcare in
developing countries providing IIMQ/I>. drugs at lower cost or even free of charge in
certain countries and has used differential pricing and parallel imports to provide
medication to the poor.
32
Im#"t of Ptent Lw on P*rm"euti"$ Industr0
)he Indian pharmaceutical industry is a prime example of an industry that has been forced to
revisit its long'term strategies and business models as India opens its mar!ets to global trade.
2actors such as protection of intellectual property are increasing in significance due to the
growing recognition of the need to ensure protection of valuable investments in research and
development ((<>). 6fforts are made in India to curb problems of wea! enforceability of
existing intellectual property legislations and the Indian government has moved towards
establishing a patent regime that is conducive to technological advances and is in !eeping with
its global commitments.
+ith regard to pharmaceuticals in the case of substances intended for use or capable of being
used as food drugs or medicines or substances produced by chemical processes patents were
granted only for the processes of manufacture of such substances and not for the substances
themselves. Ience pharmaceutical products were not granted patent protection under Indian
law.
India had a product patent regime for all inventions under the Patents and >esigns /ct 8E88.
Iowever in 8EBF the government introduced the new Patents /ct which excluded
pharmaceuticals and agrochemical products from eligibility for patents. )his exclusion was
introduced to brea! away India-s dependence on imports for bul! drugs and formulations and
provide for development of a self reliant indigenous pharmaceutical industry.
)he lac! of protection for product patents in pharmaceuticals and agrochemicals had a
significant impact on the Indian pharmaceutical industry and resulted in the development of
considerable expertise in reverse engineering of drugs that are patentable as products throughout
the industrialized world but unprotect able in India. /s a result of this the Indian pharmaceutical
industry grew rapidly by developing cheaper versions of a number of drugs patented for the
domestic mar!et and eventually moved aggressively into the international mar!et with generic
drugs once the international patents expired.
33
)he Patents /ct also had provisions relating to compulsory licensing. ,n the completion of three
years from the date of sealing the patent any person interested in wor!ing the patented invention
may apply for a compulsory license with respect to the invention. )he controller of patents may
direct the patent holder to grant such a license upon the terms as may be deemed fit only if he or
she is satisfied that the reasonable re7uirements of the public with respect to the patented
invention have not been met or that the patented invention is not available to the public at a
reasonable price.
T*e Im#"t of t*e (or$d Trde Orgni7tion on P*rm"euti"$ Ptents
)he establishment of the +orld )rade ,rganization (+),) has led to a tremendous paradigm
shift in world trade. )he agreement on )rade'(elated (/spects of) Intellectual Property (ights
()(IP.) was negotiated during the Uruguay round trade negotiations of the 0eneral /greement
on )ariffs and )rade (0/))) and 3one of the primary reasons for incorporating intellectual
property issues into the 0/)) framewor! was the pharmaceutical industry4. India signed the
0/)) on 8? /pril 8EE= thereby ma!ing it mandatory to comply with the re7uirements of
0/)) including the agreement on )(IP.. India is thereby re7uired to meet the minimum.
34
3ew Im#ortnt Amendments of t*e A"t
Patent /mendment act 9FF9
6xcluding of any living or non living substances in nature from the things to be patented.
Uniform term of patent protection of 9F years.
.everal provisions have been incorporated for protecting bio diversities and traditional
!nowledge.
)he provisions relating to national security has been strengthened.
Patent amendment /ct 9FF?
8. 6mphasis on Indigenous manufacturers& Indigenous manufacturers are allowed to
manufacture patented products even after a patent is granted in respect of mailbox applications
on payment of a reasonable royalty to the patent holder if they had been producing and
mar!eting the concerned product since prior to 8Q8Q9FF?. )his provides a level playing field for
domestic players who have already made substantial investments and have been manufacturing
the products for which applications for patents have been received in the mailbox. )his provision
ensures the smooth transition from pre patent era to post patent era.
9. Prevent %ever greening% of patents& In order to prevent %ever greening% of patents for
pharmaceutical substances provisions listing out exceptions to patentability (or what cannot be
patented) have been suitably amended so as to remove all ambiguity as to the scope of
patentability. )his is very important in Indian context as it is very rich in traditional !nowledge
and heritage. )he clear'cut instructions regarding what cannot be patented would help public at
large in a long run. )he healing techni7ues of well established in ethnic system of medicines
such as /yurveda .iddha and Unani system and formulations there in couldn-t be patented.
35
:. #onditions for obtaining compulsory license& #onditions for obtaining compulsory
license have been clarified in order to facilitate export of patented pharmaceutical products by
Indian companies to countries that do not have ade7uate production capacities such as least
developed countries. )he compulsory licensing is an instrument that the )(IPs allow by which
governments can allow domestic manufacturers to manufacture patented products within : years
of their introduction. )he provision of this would be an opportunity for indigenous manufacturers
to export the medicines to third world countries which cannot manufacture their own drugs.
)here are many countries in /frica /sia and .outh /merica which are in need of cheap drugs
due to poor economic development in this area. It will be a boon for basic and formulation
manufacturers as the mar!et to this segment will definitely promote opportunities. India being
rich in cost effective and intellectually competitive manpower and other resources would
definitely emerge as world leader as far as export of drug is concerned.
=. (easonable period for negotiations between the patent holder and companies see!ing
compulsory license& (easonable period* for negotiations between the patent holder and
companies see!ing compulsory license has been fixed at six months. )his provision of the /ct
would ensure positive dialogues and negations to happen between indigenous manufacturers to
arrive at deals leading to win situations.
?. 6xemption of research and development from the ambit of patents& 6xemption of
research and development from the ambit of patents including experimental and educational
purposes. )he basic research and education are the pillars of applied research. )he education and
research methodologies are the tolls for developing science and technology. ;arring this area
from the patent government wants to ensure availability of trained manpower for sustained
growth.
@. Product patent& Product patent has been included in all fields of the technology (that is
drugs food and chemicals)
Patent /mendment 9F8:
36
)he Patent ,ffice >elhi ;ranch shall perform the functions of the Indian International .earching
/uthority under the treaty in accordance with an agreement between Indian Patent ,ffice and
International ;ureau.
Ptents nd t*e 3uture of t*e Indin P*rm"euti"$ Industr0
)he absence of product patent protection for pharmaceuticals and agrochemicals led many
1ultinationals to limit their portfolios to patent expired products or a few selected patented
products. )his resulted in an erosion of their mar!et share because local manufacturers
introduced the most advanced medicines through reverse engineering. 2oreign firms were
re7uired to pay royalties for international drugs while Indian companies could access the newest
molecules from all over the world and reformulate them for sale in the domestic mar!et. )hus
37
this resulted in the systematic wea!ening of patent rights for pharmaceutical products in India
and led to the exodus of several international research'based pharmaceutical firms.
)he obligations imposed on India under the )(IP. /greement are going to have a significant
impact on India-s successful bul! and formulation'oriented pharmaceutical industry. Indian
companies will have to compete with the multinationals by focusing on drug development and
thereby producing their own patented products. /lternatively Indian companies could focus on
producing patented drugs under license from foreign companies or concentrate on generating
revenues from producing generic drugs.
#urrently conflicting views exist within the Indian drug companies with regard to India-s
transition into the product patent regime. .ome of the existing pharmaceutical companies believe
that product patents will pave the way for innovation in India while others hold the view that the
high cost of (<> will stifle the growth of the Indian pharmaceutical industry.
)he !ey to survival for Indian pharmaceutical companies would be the exponential growth of
(<> expenditure. Indian companies need product patent protection to encourage research in
developing inexpensive drugs that suit the Indian disease profile.
In addition the advent of product patents is bound to be a boost for multinational companies that
have previously been reluctant to invest in India in the absence of product patent protection and
it will increase competition in the domestic mar!et.
Cse$ets
8'#ivil society groups and the representatives of IIMQ/I>. patients have opposed the move by
the U. pharmaceuticals company called 0ilead .ciences to get an Indian patent for its anti
retroviral drug )enofobir saying this would deprive millions of affordable treatments.
9')he 1anipur networ! of positive people 15PU has filed a pre grant opposition to
0laxo.mithLline-s patent application for /I>. medicine #ombivir at the Indian patent office in
Lol!ata on the grounds that is not a new invention. #ombivir is a fixed dose combination of two
existing /I>. drugs Nidovudine < Aamivudine.
3
:'Marious patient groups have challenged patents of (oche-s breast cancer drug
Ierceptin()rastuzumab) < ;rstol'1yers .7uibb-s .prycel(>asatinib) for the treatment of
Au!emia < Ixempra(Ixabepilone) for the treatment of breast cancer.
Ot*er "ses w*ere #tents were re'e"ted8
8'In 9F88 several Indian generics firms defeated /bbott-s patent application on heat stable
AopinavirU(itonavir through a pre grant opposition. )hese firms are the leading source of global
generics supply for the medicine.
9')he patent office re$ected Pfizer claim on .utant(.unitinib) a treatment for liver < !idney
cancer granting #ipla rights to manufacture a generic version of the drug on the grounds that
Pfizer-s patent does not involve any inventive step.
:'/ patent office revo!e (oche patent for Iepatitis# drug Pegasys.
Ptent Infringement
Patent infringement is when a company or individual uses manufactures imports sells or offers
a patent protected invention for sale without a license from the patent holder. Patent
infringement liability in the United .tates also extends to those who !nowingly induce others to
infringe.
T0#es of Ptent Infringement%
8. >irect Patent Infringement
>irect patent infringement is when a company or individual produces sells or imports a
product or technology that is protected by a patent. >irect patent infringement is often
times accidental but carries high costs and damages.
9. Indirect Patent Infringement
Indirect patent infringement often involves a level of deception and involves either
induced patent infringement or contributory infringement which we will describe next.
)his type of infringement typically relates to companies or individuals that !nowingly aid
3!
a third party in the infringement or sell components they !now would only be used in the
case of infringement.
:. #ontributory Patent Infringement
#ontributory patent infringement occurs when a company or individual !nowingly sells
components that are only reasonably used for a patented invention.
=. Induced Patent Infringement
Induced patent infringement occurs when a company or individual license a previously
patented invention or sell instructions on how to construct a patented invention. )his type
of infringement often leads to direct infringement by the third party and is a case where
the Jinducer- !nowingly aided in the infringement without directly infringing on the
patent themselves.
Ptent Infringement Cost
Patent infringement can end up costing a patent holder a tremendous amount of money in lost
opportunity in the mar!etplace and carries heavy penalties for infringers. >ue to the complexity
of patent infringement legal cases the cost of going to court on patent infringement is often very
costly to both parties in the short term.
/ow to Sue for Ptent Infringement 1mges
)o sue for patent infringement damages a patent holder must be able to prove patent
infringement by a company or individual and be able to directly relate that infringement to
damages they incurred. )hese damages can be calculated as lost investment mar!et opportunity
mar!et growth company growth etc. ,ften patent damages are calculated on a variety of
factors including a factor of the money made by the infringing party.
6xample& ;a$a$ had disputed )M.* right on using internal combustion engines with three valves
and two spar! plugs in >).i patent infringement case. Ience ;a$a$ filed a Patent Infringement
suit with 1adras Iigh #ourt which allowed )M. application for an interim in$unction
restraining ;a$a$ from in any way interfering with the manufacture and mar!eting of )M.
4"
productV2lame Aater this dispute was escalated to .upreme #ourt which ruled its decision in
favour of )M. motors.
PATENT COOPERATION TREATY
)he P#) was concluded in 8EBF amended in 8EBE and modified in 8EC= and 9FF8.
It is open to .tates party to the Paris #onvention for the Protection of Industrial Property (8CC:).
Instruments of ratification or accession must be deposited with the >irector 0eneral of +IP,.
)he )reaty ma!es it possible to see! patent protection for an invention simultaneously in each of
a large number of countries by filing an %international% patent application. .uch an
application may be filed by anyone who is a national or resident of a #ontracting .tate. It may
generally be filed with the national patent office of the #ontracting .tate of which the applicant
is a national or resident or at the applicant*s option with the International ;ureau of +IP, in
0eneva. If the applicant is a national or resident of a #ontracting .tate which is party to
the 6uropean Patent #onvention the Iarare Protocol on Patents and Industrial >esigns (Iarare
Protocol) the revised ;angui /greement (elating to the #reation of an /frican Intellectual
Property ,rganization or the 6urasian Patent #onvention the international application may also
be filed with the 6uropean Patent ,ffice (6P,) the /frican (egional Industrial Property
,rganization (/(IP,) the /frican Intellectual Property ,rganization (,/PI) or the 6urasian
Patent ,ffice (6/P,) respectively.
)he international application is then sub$ected to what is called an %international search.% )hat
search is carried out by one of the ma$or patent offices appointed by the P#) /ssembly as
an International .earching /uthority (I./). )he said search results in an %international search
report% that is a listing of the citations of such published documents that might affect the
patentability of the invention claimed in the international application. /t the same time the I./
prepares a written opinion on patentability.
)he international search report and the written opinion are communicated by the I./ to the
applicant who may decide to withdraw his application in particular where the said report or
opinion ma!es the granting of patents unli!ely.
41
If the international application is not withdrawn it is together with the international search
report published by the International ;ureau. )he written opinion is not published.
)he procedure under the P#) has great advantages for the applicant the patent offices and the
general public&
(i) the applicant has up to 8C months more than he has in a procedure outside the P#) to reflect
on the desirability of see!ing protection in foreign countries to appoint local patent agents in
each foreign country to prepare the necessary translations and to pay the national fees" he is
assured that if his international application is in the form prescribed by
the P#) it cannot be re$ected on formal grounds by any designated ,ffice during the national
phase of the processing of the application" on the basis of the international search report or the
written opinion he can evaluate with reasonable probability the chances of his invention being
patented" and the applicant has the possibility during the international preliminary examination to
amend the international application to put it in order before processing by the designated ,ffices"
(ii) the search and examination wor! of patent offices can be considerably reduced or virtually
eliminated than!s to the international search report the written opinion and where applicable
the international preliminary examination report that accompany the international application"
(iii) since each international application is published together with an international search report
third parties are in a better position to formulate a well'founded opinion about the patentability
of the claimed invention.
)he P#) created a Union. )he Union has an /ssembly. 6very .tate party to the P#) is a
member of the /ssembly.
/mong the most important tas!s of the /ssembly are the amendment of the (egulations issued
under the )reaty the adoption of the biennial program and budget of the Union and the fixing of
certain fees connected with the use of the P#) system
42
Cse stud0
NO5ARTIS 9GLI5EC:
Pre'0rant opposition& Iere we discuss the law suit filed by 5ovartis in the #hennai Iigh #ourt
challenging the Indian Patent ,ffice for&
8. >enial of its patent application for 0livec
9. #onstitutional validity of section :(d) of Indian Patent Aaw
;ac!ground Information& 0livec (0leevec in U.) (#ompound'imatinib mesylate) by 5ovartis is
patented in :? countries < helpful in #hronic 1yeloid Aeu!emia
)he corresponding Indian /pplication for 0livec in India 8@F9Q1/.Q8EEC titled %#rystal
modification of / 5'phenyl'9'Pyrimidineamine derivative processes for its manufacture and its
use% was filed by 5ovartis on Duly 8Bth 8EEC. )his application is directed to 1esylate salt of
Imatinib. )wo polymorphs of imatinib mesylate are claimed& /lpha < ;eta. R,riginal molecule
imatinib is disclosed in U. ??988C= titled %Pyrimidine derivatives and processes for the
preparation thereof% in 8EE:S
Issue& Pre'grant ,pposition to 0livec in India& Marious interest groups filed a pre'grant
opposition to the Indian /pplication 8@F9Q1/.Q8EEC under the provision of section 9?(8) of the
Indian Patent /ct. #hennai Patent ,ffice re$ected 0livec patent application in Danuary 9FF@ on
the grounds that the application claimed *only a new form of a !nown substance.*
#hallenge to the Indian Patent ,ffice& 5ovartis filed a legal petition in the #hennai Iigh #ourt
by 5ovartis challenging the Indian Patent ,ffice for&
>enial of its patent application for 0livec
#onstitutional validity.
43
5ovartis stated that the .ection :(d) was not compatible to the agreement on )rade (elated
aspects of Intellectual Property (ights ()(IP.) and that it was vague illogical and arbitrary. It
said the provision conferred %uncanalised% discretionary power on the patent controller who
would apply his own norms that might not be uniform while deciding the efficacy of the
substance submitted for patent.
Dustice (. ;alasubramanian and Dustice Prabha .ridevan of the 1adras Iigh #ourt ordered to
transfer the case to /ppellate ;oard (9nd /pril 9FFB)
5ovartis disagreed with the appointment of the former #ontroller 0eneral of the Indian Patent
,ffice to the IP/;. 5ovartis filed another petition in the Iigh #ourt in #hennai for a new
technical member of the Intellectual Property /ppellate ;oard (IP/;).
Iigh #ourt on the #onstitutional validity& (e$ecting the contention a >ivision ;ench
comprising Dustices (. ;alasubramanian and Prabha .ridevan said& %)he argument that the
amended .ection must be held to be bad in law since for want of guidelines it gives scope to the
statutory authority to exercise its power arbitrarily has to be necessarily re$ected. +e find that
there are in'built materials in the amended .ection and the 6xplanation itself which would
controlQguide the discretion to be exercised by the statutory authority. In other words the
statutory authority would be definitely guided by the materials placed before it for arriving at a
conclusion.%
If the statutory authority in exercising his power misdirects himself abuses his power in an
arbitrary manner and passes an order then it could be corrected by the hierarchy of forums
provided in the /ct itself in addition to the further relief available before the courts of law.
%+hen that is the position then we have to necessarily state that the amended .ection cannot be
invalidated solely on the ground that there is a possibility of misusing the power% the Dudges
said.
)he (ight to 67uality enshrined in /rticle 8= of the #onstitution could be invo!ed only when it
was shown that in the exercise of a discretionary power there was a possibility of a real and
substantial discrimination the ;ench said.
44
%It is not shown by senior counsel appearing for the petitioners (5ovartis) before us that in the
exercise of discretionary power by the Patent #ontroller any of the petitioner-s fundamental
rights are violated namely to carry on the trade or the petitioner stood singularly discriminated.
+e find that the amended .ection by itself does not discriminate nor does it prohibit the trade
being carried on% it said.
International treaties and agreements were essentially in the nature of a contract the ;ench said
adding that the )(IP. /greement provided for a comprehensive dispute settlement mechanism
which was binding on its member'.tates.
%+e see no reason at all as to why the petitioner which itself is a part of that member'.tate
should not be directed to have the dispute resolved under the dispute settlement mechanism...+e
see no reason at all as to why we must disregard it...%
(eiterating that there was no ambiguity or vagueness in the provision the Dudges said& %.enior
counsel except arguing that the amended .ection must be struc! down on the ground of
ambiguity arbitrariness leading to exercise of unanalyzed powers ' with which we have not
agreed at all ' had not shown any other legal ground to invalidate the amended .ection.%
Parliament expressed its ob$ect and purpose in general terms while enacting a statute and does
not foresee the minute details that were li!ely to arise in the future and provide a solution. %,n
the other hand they would be acting wiser if they ma!e only general expressions leaving it to
the expertsQstatutory authorities and then courts to understand the general expressions used in
the statute in the context in which they are used in a case to case basis.%
)he Dudges said& %Using general expressions in a statute leaving the court to understand its
meaning would not be a ground to declare a .ection or an /ct under the #onstitution is the law
laid down by the .upreme #ourt. Interpretation of a statute must be to advance the ob$ect which
the /ct wants to achieve.%
#onclusion& 5ovartis could not prove the enhancement in efficacy of the particular polymorphic
form of the !nown moiety as compared to the !nown efficacy of the compound. 5ovartis* case
suffered as they had produced a bioavailability study conducted on rats while the drug was
45
admittedly in the mar!et for many years and was consumed by humans. 2or a new form of a
!nown substance to be patented it must offer significant advantage over the !nown substance in
terms of efficacy. / patent application in such cases should clearly furnish the comparative data
with regard to efficacies of the !nown substance and its new forms respectively.
APPLE 5S SAMSUNG CASE
/;.)(/#)
In the mid /pril /pple filed infringement suit on .amsung in U. >istrict court that several
/ndroid based smartphones and tablets of .amsung are infringing design and technology of
apple-s intellectual property. /pple-s suit against .amsung covered the .amsung 5exus . 6pic
=0 0alaxy . =0 and 0alaxy tab. .amsung claimed /pple-s iPhone and iPad infringing on
selected .amsung wireless communication patents covering methods of handling phone calls and
data simultaneously. /pple won a permanent in$uction on 0alaxy tab 8F.8 in 0ermany U./.
Iowever .amsung won infringement suit in Dapan.

;ac!ground of the case
/pple and .amsung are correlated to each other as .amsung is the world-s largest memory chip
ma!er and /pple is the largest consumer of flash memory. /pple buy flash memory from
.amsung for its iPhone and iPad-s. .amsung also manufacture /= processor used in /pple-s
original iPad along with processor used in iPhone :0.. )hey are the two big technology giants.
5ow /pple is loo!ing for new supplier of memory chip.
46
Infringement cases are common in technology but /pple-s complaint against .amsung is notable
because it also focus on overall product design and onscreen interface ()rade dress issue) which
means .amsung has copied /pple-s product design along with technology. )he products which
are in 7uestion are iPhone :0. .amsung galaxy . iEFFF .amsung galaxy tab 8F.8. )hey are
challenged of having the same style user interface and even pac!aging copied from that of
/pple-s product.
/s /pple sued .amsung of infringing its product and techni7ues .amsung also filed lawsuit
against /pple-s iPhone and iPad for copying .amsung-s wireless techni7ue and user interface. In
Lorea .amsung alleged /pple of violating ? patents in 0ermany covered : cases in Dapan 9 and
in U./ 8F patent infringement case is filed.
)6#I5,A,0P I5 WU6.)I,5&
In /pple vs .amsung ;attle the patents that are reportedly infringed by .amsung include X
Y Patent :C8& ;ounce bac! scroll functionality which occurs when one scrolls to the end of
the list.
Y Patent E8?& that includes pinch to zoom one finger scroll and zoom navigation.
Y /lmost all .amsung mobiles have this feature.
Y Patent 8@:& )ap to zoom
Y Patent >@BB & iPhone front
Y Patent >FCB & iPhone bac!
Y Patent >:F? & iPhone home screen
Y Patent >CCE & iPad design
Iowever .amsung also filed case on /pple on the infringement of following patents X
47
Y Patent ?8@ and E=8 & +ireless techni7ue
Y Patent B88 & /bility to play music while using other apps
Y Patent CE: & /bility to scroll through the photo gallery switch to camera to ta!e a picture
and then return to same point in the photo gallery
Y Patent =@F & ta!e a photo preview it immediately and email it off seamlessly
;ut on reviewing the case court did not find any of the /pple-s iPhone or iPad infringing to
.amsung.
+hile on reviewing $ury found .amsung infringing on four of /pple-s utility patent four design
patents and upheld /pple-s trade dress. )he infringement affected 98 .amsung devices from the
>roid charge and the 6pic =0 to the 0alaxy . II to Infuse =0.
)he U. #/.6
/pple sued its component supplier .amsung alleging in a federal complaint on /pril 8? 9F88 in
the United .tates >istrict #ourt for the 5orthern >istrict of #alifornia that several of
.amsung*s /ndroid phones and tablets including the 5exus . 6pic =0 0alaxy . =0 and
the .amsung 0alaxy )ab infringed on /pple-s intellectual property& its patents trademar!s user
interface and style. /pple*s complaint included specific federal claims for patent
infringement false designation of origin unfair competition and trademar! infringement as
well as state'level claims for unfair competition common law trademar! infringement
and un$ust enrichment.
/pple*s evidence submitted to the court included side'by'side image comparisons of iPhone
:0. and iEFFF 0alaxy . to illustrate the alleged similarities in pac!aging and icons for apps.
Iowever the images were later found to have been tampered with in order to ma!e the
dimensions and features of the two different products seem more similar and counsel for
.amsung accused /pple of submitting misleading evidence to the court.
4
.amsung counter'sued /pple on /pril 99 9F88 filing federal complaints in courts
in .eoul )o!yo and 1annheim 0ermany alleging /pple infringed .amsung*s patents for
mobile'communications technologies. ;y summer .amsung also filed suits against /pple in the
;ritish Iigh #ourt of Dustice in the United .tates >istrict #ourt for the >istrict of >elaware and
with the United .tates International )rade #ommission (I)#) in +ashington >.#. all in Dune
9F88.
/pple claimed that .amsung infringed on its %product trade dress% which defines the features
that create the product*s particular appearance. )hese features included the product*s rectangular
shape with all four corners uniformly rounded the front surface of the product being dominated
by a screen surface and a grid of colourful s7uare icons with uniformly'rounded corners being
displayed on the screen.
/pple also sued .amsung for infringing on its patents for %bounce bac!'scrolling% %pinch'to'
zoom% %one'finger'scroll% and %tap'to zoom% features found in the iPhone and the iPad. .ince
then the dispute has snowballed across the globe with new suits and countersuits being filed
across the world.
)he $ury found that the patents for pinch'to'zoom one'finger'scroll and zoom'navigation
features in /pple products were copied in every other .amsung device except the 0alaxy /ce
Intercept and (eplenish. Patents for tap'to'zoom feature were copied in every other .amsung
device except the #aptivate Indulge Intercept 5exus . =0 )ransform and Mibrant models.
,n /ugust 9= 9F89 the $ury returned a verdict largely favourable to /pple. It found that
.amsung had wilfully infringed on /pple*s design and utility patents and had also diluted
/pple*s trade dresses related to the iPhone. )he $ury awarded /pple T8.F=E billion in damages
and .amsung zero damages in its counter suit. >esign Patent ?F=CCE (describing the
ornamental design of the iPad) was one of the few patents the $ury concluded .amsung had not
infringed. )his amount is functionally reduced by the bond posted by /pple for the in$unction
granted during the trial.
4!
/pple*s attorneys have already filed a re7uest to stop all sales of the .amsung products cited in
violation of the U. patents to be heard on >ecember @ 9F89.
.amsung will now have to license the infringed features from /pple. )hough the /ndroid
operating system itself is not directly affected by the verdict the costs for /ndroid users will
increase because of the substantial licence fees that .amsung will have to pay. Post this verdict
.amsung could possibly move to the +indows C platform since it employs a tile interface
instead of the icons.
Iowever persisting 7uestions about the stability of the +indows C platform ma!e this a remote
possibility. 2urthermore the costs related to such switching may be 7uite high. )herefore it is
7uite li!ely that /ndroid users will continue to receive the same functionality albeit at a
considerably higher cost. )he increase in costs may also lead many /ndroid consumers to move
over to /pple which explains the decline in 0oogle*s stoc! price. Important public policy
7uestions relating to intellectual property rights arise in the context of this verdict.
)he Merdict ,2 .outh Lorea
In .eoul .amsung filed its lawsuit in Dune of 9F88 in the #entral >istrict #ourt citing five patent
infringements.
In late /ugust 9F89 a three'$udge panel in .eoul #entral >istrict #ourt delivered a split decision
ruling that /pple infringed two .amsung technology patents while .amsung violated one of
/pple*s patents. )he court awarded small damages to both companies and ordered a temporary
sales halt of the infringing products in .outh Lorea though none of the banned products were
the latest models of .amsung or /pple devices. )he .eoul #entral >istrict #ourt ruled that
.amsung violated one of /pple-s utility patents over the so'called 3bounce'bac!4 effect in i,.
and that /pple was in violation of two of .amsung-s wireless patents. /pple-s claims that
.amsung copied the designs of the iPhone and iPad were denied.
)he court also ruled that there was %no possibility% that consumers would confuse .amsung and
/pple smartphones and that .amsung*s smartphone icons did not infringe /pple*s patents.
5"
Dapan Merdict
.amsung*s complaint in Dapan*s )o!yo >istrict #ourt cited two infringements. /pple has filed
other patent suits in Dapan against .amsung most notably one for the %;ounce';ac!% feature.
.amsung has also sued /pple claiming the iPhone and iPad infringe on .amsung patents.
,n 2riday /ugust :8 9F89 )he )o!yo >istrict #ourt ruled that .amsung-s 0alaxy
smartphones and tablets did not violate an /pple patent on technology that synchronizes music
and videos between devices and servers. )he three'$udge panel in Dapan also awarded legal costs
to be reimbursed to .amsung. Presiding Dudge )amotsu .ho$i said& %)he defendant*s products do
not seem li!e they used the same technology as the plaintiff*s products so we turn down the
complaints made by /pple.%
)he U.L. #ourt
.amsung motioned a U.L. court for a declaration that its 0alaxy tablets were not too similar to
/pple*s products and /pple counterclaimed but .amsung prevailed after a ;ritish $udge ruled
.amsung*s 0alaxy tablets were not 3cool4 enough to be confused with /pple-s iPad. In Duly
9F89 ;ritish $udge ;irss denied .amsung*s motion for an in$unction bloc!ing /pple from
publicly stating that the 0alaxy infringed /pple*s design rights but ordered /pple to publish a
disclaimer on /pple*s own website and in the media that .amsung did not copy the iPad. )he
$udge stayed the publishing order however until /pple*s appeal is heard in ,ctober 9F89.
GEOGRAP/ICAL IN1ICATION
INTRO1UCTION
)he concept of geographical indication has its origin in 8Eth century 6urope and has
considerably evolved since then. )he current international framewor! is laid down in /rticle 99
of the )rade (elated /spects of Intellectual Property (ights ()(IP.) /greement which
51
mandates member countries to provide for the protection of all 0Is where the obligation is for
members to provide the Jlegal means for interested parties- to secure protection of their
0Is.
Protection of 0eographical Indication (0I) has over the years emerged as one of the most
contentious IP( (Intellectual Property (ights) issues in the realm of the +),-s /greement on
)rade (elated /spects of Intellectual Property (ights ()(IP.). )(IP. defines 0I as any
indication that identifies a product as originating from a particular place where a given 7uality
reputation or other characteristics of the product are essentially attributable to its geographical
origin. /lso a geographical indication (0I) gives exclusive right to a region (town province or
country) to use a name for a product with certain characteristics that corresponds to their specific
location. )he 0eographical Indications of 0oods ((egistration and Protection) /ct 8EEE protect
the 0I-s in India. (egistration of 0I is not compulsory in India. If registered it will afford better
legal protection to facilitate an action for infringement. +ell'!nown examples include
3#hampagne4 3.cotch4 3)e7uila4 and 3(o7uefort4 cheese. +ine and spirits ma!ers are
particularly concerned about the use of place'names to identify products.

NEE1 3OR LEGAL PROTECTION O3 GI
0iven its commercial potential legal protection of 0I assumes enormous significance. +ithout
suitable legal protection the competitors who do not have any legitimate rights on the 0I might
ride free on its reputation. .uch unfair business practices result in loss of revenue for the genuine
right'holders of the 0I and also misleads consumers. 1oreover such practices may eventually
hamper the goodwill and reputation associated with the 0I.
GI UN1ER TRIPS
.ha!espeare famously as!ed 3+hat is in a nameZ )hat which we call a rose by any other name
would smell as sweet4. )he answer these days has a lot to do with where the name originates
because to owners of 0I names have everything to do with a product-s premium. India in
52
compliance with its obligation under )(IP. has ta!en legislative measures by enacting the
0eographical Indications of 0oods ((egistration and Protection) /ct 8EEE which came into
effect on .eptember 8? 9FF: and the 0eographical Indications of 0oods ((egistration and
Protection) (ules 9FF9.
Iowever as far as the scope of protection of 0I under )(IP. is concerned there is a problem of
hierarchy. )his is because although )(IP. contains a single identical definition for all 0I
irrespective of product categories it mandates a two'level system of protection& (i) the basic
protection applicable to all 0I in general and (ii) additional protection applicable only to the 0I
denominating wines and spirits.
Iowever at >oha India wanted to extend protection under Jgeographical indication- (0I)
beyond wine and spirit to other products. / number of countries wanted to negotiate extending
this higher level of protection to other products. .ome others opposed the move and the debate
has included the 7uestion of whether the >oha >eclaration provides a mandate for negotiations.
)hose opposing extension argue that the existing level of protection is ade7uate. )hey caution
that providing enhanced protection would be a burden and would disrupt existing legitimate
mar!eting practices. Iowever countries such as the United .tates /ustralia 5ew Nealand
#anada /rgentina #hile 0uatemala and Uruguay are strongly opposed to any Jextension-. )he
Jextension- issue formed an integral part of the >oha +or! Programme (9FF8). Iowever as a
result of the wide divergence of views among +), members not much progress has been
achieved in the negotiations and the same remains as an Joutstanding implementation issue-.
T/E IN1IAN GI ACT
India has put in place a sui generis system of protection for 0I with enactment of a law
exclusively dealing with protection of 0Is. )he legislations which deals with protection of 0I-s
in India are J)he 0eographical Indications of 0oods ((egistration < Protection) /ct 8EEE- (0I
/ct) and the J0eographical Indications of 0oods ((egistration and Protection) (ules 9FF9 (0I
(ules). Under the purview of the 0I /ct which came into force along with the 0I (ules with
effect from 8? .eptember 9FF: the central government has established the 0eographical
Indications (egistry with all'India $urisdiction at #hennai where right'holders can register their
0I. Unli!e )(IP. in the 0I /ct does not restrict itself to wines and spirit. (ather it has been
53
left to the discretion of the central government to decide which products should be accorded
higher levels of protection. )his approach has deliberately been ta!en by the drafters of the
Indian /ct with the aim of providing stringent protection as guaranteed under the )(IP.
/greement to 0I of Indian origin.
Registrtion
+hile registration of 0I is not mandatory in India. ;ut the registration of a 0I gives its registered
owner and its authorized users the right to obtain relief for infringement. )he (egistrar is
re7uired to classify the goods as far as possible in accordance with the International
classification of goods for the purposes of registration of 0I. / single application may be made
for registration of a 0I for different #lasses of goods and fee payable is to be in respect of each
such class of goods. In India a 0I may initially be registered for a period of ten years and it can
be renewed from time to time for further periods of 8F years.
GI registrtion #ro"ess
54
Pen$ties6 Remedies
/t the time of geographical indication infringement there are two types of remedies which have
been clearly specified in the act X #ivil remedies includes imposition of fines forfeiture to the
0overnment of all goods and things means of which the offence had been committed damages
account of profit together with or without any order for delivery of the infringed label and
indications for the destructions or erasure. Iowever the #riminal remedies may include of the
punishment to the offender minimum to @ months which can be extended maximum to : years
with the minimum rupees ?FFFFQ' fine and maximum to rupees 9FFFFFQ'. If the same offence
is repeated in the future again then the minimum sentence becomes 8 year with minimum rupees
9FFFFF fine.
Rig*ts of A"tion Aginst Pssing;Off
)he 0I /ct in India specifies that nothing in this /ct 3shall4 be deemed to affect rights of action
against any person for passing off goods as the goods of another person or the remedies in
55
respect thereof. In its simplest form the principle of passing'off states that no one is entitled to
pass'off hisQher goods as those of another. )he principal purpose of an action against passing off
is therefore to protect the name reputation and goodwill of traders or producers against any
unfair attempt to free ride on them.
Sttus Of GI Registrtion In Indi
.ince the coming into force of the Indian 0eographical Indication /ct in .eptember 9FF: till 8E
th
Duly 9F8: over 8@= 0I-s have been registered by the Indian /uthorities and many applications
are pending.
/n analysis of these registrations would reveal that of these @F[ are handicrafts from different
parts of the country 9?[ are agricultural products and C[ are manufactured items.
Infringement
+hen an unauthorised user uses a geographical indication that indicates or suggests that such
goods originate in a geographical area other than the true place of origin of such goods in a
manner which mislead the public as to the geographical origin of such goods.
e.g.& oranges grown in Pun$ab said to be oranges from 5agpur.
+hen the use of geographical indication result in an unfair competition including passing off in
respect of registered geographical indication.
)he the use of another geographical indication results in false representation to the public that
goods originate in a territory in respect of which a registered geographical indication relates.
)he registered proprietor or authorised users of a registered geographical indication can initiate
an infringement action.
Remedies for infringement
)he /ct provides for both civil and criminal remedies for infringement.
56
)he civil includes imposition of fines forfeiture to government of all goods and things means of
which the offence had been committed damages account of profit.
)he criminal remedies include imposition of fine or imprisonment or both.
Cse Stud0
4s*mir Ps*min 6 4ni S*w$ 6 4s*mir So7ni Crft
>escription of the product and of its 0I characteristics
3Lashmir Pashmina4 are textiles produced in the .tate of Lashmir in India (5orth). )he
inhabitants of Lashmir were the first to use the undercoat of the Iimalayan 1ountain goats to
protect themselves from the harsh weather conditions. /lthough fine wool is commonly
mar!eted in the +est as 3cashmere4 the Lashmiri name is 3Pashm4 which is the wool of
Pashmina goat. /ll the steps of the production of 3Lashmir Pashmina4 have to ta!e place in the
defined area and the raw materials come from the Iimalayan 1ountain goats. 3Lani .hawls4 are
produced in the .tate of Lashmir in India (5orth). )hey are produced from fine hand spun fibres
57
of Pashmina wool. )he origin of Lani .hawl can be traced bac! to the 88th century than!s to
wall paintings at the /rchie 1onastry Aada! which depict finely woven Lani .hawls. )he
earliest surviving examples of Lashimiri woven Lani .hawl are dated to be of the pre 8@?F
period. /ll the steps of productions have to ta!e place in the defined area. CF[ of the
contemporary Lani .hawl continues to be produced only with Pashmina wool. Iowever sil!
and other fine wools are also used for its production. 3Lashmir .ozani #rafts4 are embroidery
produced in the .tate of Lashmir in India (5orth). )he craft has been introduced in 8=th #entury
by the .adat who came to Lashmir to save themselves from the persecution of the )yrant rulers
in #entral /sia. /ll the steps of productions have to ta!e place in the defined area. )he threads
are obtained from different parts of India.
)he following information covers the three products.
Aegal protection
)he three products are registered as 0I in India. )he owner of the right is )ahafuz a registered
society of diverse Lashmiri Iandicraft /rtisan. Under the Indian 0I /ct the three products are
protected in translation against 3delocalizers4 against use of the expressions as Jtype- against
genericity and against designations or trademar!s for textiles and textiles goods made of
Lashmir Pashmina. )he three products are not protected at the international level. )here is a
specification (standard of production) for the three products. )he value of IP(s was not !nown
until the 0I #ertificate was awarded in the year 9FFC. )herefore the strategy to leverage IP(s is
in a nascent stage. )here are specific logos for the three products.
1ain competitors and cases of counterfeiting
)he main competitors are as follows&
\ Pashmina& 1achine 1ade Pashimna ;lended Pashmina < Iand woven Pashmina
\ .ozni& 1achine 5eedle wor!
\ Lani shawl& Dac7uard loom woven products
)hese products enter Indian 1ar!ets through neighbouring countries li!e 5epal #hina and
)ibet.
)here was a case of counterfeiting reported in #hina where the shawls bore the Pashmina name
but were not pure pashmina wool did not use the traditional embroidery and costed much less.
5
1ain challenges
)he main challenge is to obtain best commercial benefit by relying on the 0I registration granted
in India. )his would include&
\ 0I promotion
\ #reation of awareness on the use of the 0I product
\ Initiating mar!et watch and
\ Underta!ing investigations to ascertain the infringement of the 0I and underta!ing appropriate
infringement action.
Interest in further protection at the 6U level
+hen as!ed whether they would use a 6U sui generis 0I system should it be created the
producers replied positively. )hey would welcome the establishment of a legal instrument that
would provide additional legal protection to the trade mar! protection in the 9B 1ember .tates in
an efficient and cost effective way
Cse stud0
S"ot"* (*is+0
6xported to about 9FF countries around the world .cotch whis!y leads the way for ;ritish food
and drin! in overseas mar!ets accounting for about one 7uarter of all UL food and drin! exports
and CF[ of .cottish food and drin! exports. 6xports have increased by CB[ in the last 8F years.
.ales are increasing in emerging mar!ets such as #hina (ussia India and /frica.
Infringement of either protected geographical indications occurs where there is commercial use
of the name for products which are not authentic use of an imitation of the name or other false
or misleading indications as to the provenance or nature of the products. It has recently been
reported that the production of .cotch whis!y is worth more than ]= billion per annum to the
.cottish economy generating more productivity than the #ity of Aondon.
5!
0lobally the use of the word Jscotch- is understood to indicate whis!y that is manufactured in
.cotland. )he .cotch +his!y /ssociation which represents 6uropean whis!y distillers and
exporters will file its application for geographical indication registration with the 0eographical
Indications (egistry.
Iow is .cotch whis!y protectedZ
.cotch +his!y is defined in UL law and protected at 6uropean Union and +orld )rade
,rganisation level as a Jgeographical indication-.
)his legal protection is vitally important as it underpins .cotch +his!y-s reputation as being of
the highest 7uality and integrity.
+hen your consumers pic! a bottle of whis!y from .cotland they !now that they will be getting
the very best.
0I protection
.cotch +his!y has been granted geographical indication of origin (0I) protection in a number of
!ey mar!ets including&
#hina (a growing mar!et for .cotch +his!y)
India
)hailand
)ur!ey (the first foreign product in )ur!ey to receive 0I status)
)hroughout the 6U
Protection elsewhere
In Lorea the government has agreed to protect .cotch +his!y (and other 6uropean products)
against imitators.
6"
)he 9F percent spirits import duty is also being lifted which will ma!e .cotch +his!y 9F
percent less expensive. #omplex labelling and warehousing re7uirements are also being removed
X a huge success in one of the industry-s biggest mar!ets.
8. )he .cotch +his!y /ssociation +illiam 0rant and .ons Aimited +illiam 0rant and .ons
International Aimited and +illiam 0rant and .ons >istillers Aimited vs 0olden ;ottling Aimited
(1/5UQ>6Q8=E?Q9FF@)
2acts&
)he plaintiffs have filed this suit for a permanent in$unction to restrain the >efendant to deal
with whis!y under the name of J(ed .cot-. )he purpose of referring to the .cotch +his!y /ct
and the .cotch +his!y ,rder is to show that even in .cotland all whis!y-s that are produced
need not necessarily fall within the definition of .cotch whis!y. )he plaintiffs state that they got
to !now that the defendant was manufacturing as well selling their J(ed .cot- which gave an
impression that it is .cotch whis!y. )he plaintiffs then sent them a legal notice as!ing them not
to use the word J.cot-. )he plaintiffs realized that the red .cot was not available in the mar!et.
;ut later on after some time they realized that it was being sold again. )he plaintiffs submitted
that under the +), )(IP. /greement protection is provided for geographical indications in
terms of /rticle 99 thereof. /rticle 99.8 defines geographical indications as indications which
identify a good as originating in the territory of a 1ember or a region or locality in that territory
where a given 7uality reputation or other characteristic of the good is essentially attributable to
its geographical origin. 2inally in terms of section @B of the geographical Indications /ct the
plaintiffs have prayed for damages.
#ourt held&
61
)hat plaintiffs are entitled to damages in furtherance of section @B of the /ct to the tune of (s.
?FFFFFQ' and will also be entitled to costs during litigation.
India recognises .cotch as whis!ey produced only in .cotland
.cotch lovers in the country can now savour their drin!s without the fear of sipping a fa!e one
with India agreeing to formally recognise *.cotch +his!ey* as a product that can only be made in
.cotland.
)he move follows the 0eographical Indications (egistry in #hennai granting geographical
indication (0I) status to the famous .cotch +his!ey of .cotland.
/s per the registry .cotch +his!ey is the 8=Cth item in a list of 8?8 products that have been
given 0I status.
)he status denotes that a product belongs to a particular area where a given 7uality reputation or
other characteristic of the product is essentially attributable to its geographical origin. It was also
contended by the /ssociation and its members that the words %.cot% or %.cotch% were
geographical indications in the purview of /rticle 99.8 of the )(IP. /greement thus identifying
it as whis!y produced in .cotland. )o substantiate their stand they brought forth sample
advertisements apart from sales figures worldwide.
.+/ which accounts for more than E? per cent of production and sales of .cotch +his!ey had
filed an application before the Indian authorities see!ing to register .cotch +his!y as a 0I under
the Indian 0I /ct in 9FFE.
India is among the top ten export mar!ets by volume for .cotch +his!ey. In 9F8F =F.8 million
bottles (BFF ml) of .cotch +his!ey were exported to India an increase of =F per cent from 9FFE.
In India .cotch +his!ey currently represents less than one per cent of the spirits mar!et.
62
)his is the fourth product from across the border to be accorded 0I status in India. )he other 0Is
from abroad that have been registered in India are Pervian Pisco from Peru #hampagne from
2rance 5apa Malley wine from U./ and .cotch +his!ey of UL in that order.
)he status ' the first such protection in the Indian sub'continent for whis!y ^ now means that
only spirits produced in .cotland can use *.cotch +his!y* in their labels.
T*e Tiru#ti Lddu Controvers0
)he )irumala )irupati >evasthanams (hereinafter ))>) the temple trust which manages the
world-s richest temple had submitted an application before the 0eographical Indication (egistry
see!ing the 0I tag for the famous temple offering the J)irupati laddu-. )hey claimed that the
growing demand for J)irupati laddus- had resulted in haw!ers preparing and selling laddus at
their own premises under the name of J)irupati laddus-. )his practice has been thriving for many
years and the raids conducted by the .ecurity and Migilance wing of the ))> so as to root out
the business have proved to be futile. )he )>> $ustified its application for a 0I status on the
ground that once the 0I tag is granted to the J)irupati laddu- it-ll help curb the problem as
violators will be sub$ected to penalty and punishment under the 0I laws. 2inally their demands
were accepted and the J)irupati laddu- was awarded a 0I status in .eptember 9FFE.
Iowever granting of 0I status to the Jladdu- has become a contentious issue and has been
sub$ected to severe criticism. 1any have 7uestioned the necessity of appropriating such religious
symbols and have failed to see the purpose behind )>>-s move. )hey argue that if the idea was
merely to prevent the public from getting hoodwin!ed by those selling counterfeit laddus the
same could have been simply achieved by publicly declaring that the original laddus are
available only within the temple precincts and not elsewhere. /pplying for grant of 0I status
seems to be totally unwarranted.
63
2urther 0Is are meant to benefit a community of local producers and act as an indicator of the
geographical original of the product. )his would mean that everyone from )irupati should have
the right to use 0I on 3)irupati Aaddu4 as long as their laddu geographically originates in
)irupati and has the same delicacy and features attributable to the laddu that is prepared by the
temple trust. )his is because 0Is in contradistinction to trademar!s and patents is a community
right. ,ne person or a trust can-t have a monopoly and claim ownership. Impliedly there is a
prohibition on applications by a single entity. )herefore one of the most pertinent grounds of
opposition to granting the status of 0I to laddus is that the )>> is a single entity and does not
fairly protect or represent the interests of all producers of laddus in )irupati.
2urther a 0I tag primarily aims at promoting the economic prosperity of producers of goods in a
geographical area. In contradiction to this the 0I registration of J)irupati Aaddus- has resulted in
the monopolistic rights to the name of J)irupati laddu- to be granted to one of the world-s richest
religious institutions. /lso as important as it is to preserve product 7uality granting a single
entity the rights to a name which has already been used by several independent producers over a
long period of time would not be an appropriate response. In fact if a product name has become
generic and is widely used outside the region of origin the 0I application can be challenged and
invalidated. )he tag he contended is meant to benefit local producers and act as an indicator of
the geographical origin of the product. )hus everyone from )irupati has the right to use 0I tag
as long as their laddus are prepared in )irupati and have the same delicacy and features as the
laddu prepared by ))>
/long the lines of the J)irupati laddu- controversy yet another case of IP(s intertwining with
religion is the /ttu!al )emple )rust-s claim to an exclusive right to the temple deity-s picture.
.uch cases of crass commercialization where temples have started claiming intellectual property
rights to deities and offerings are absolutely shoc!ing and have forced us to wonder if the
sacred Ganga Jal would be the next in lineZ
64
CONCLUSION
+hile few would consider IP( protection such as patents trademar!s geographical indication
industrial design etc to be a panacea for developing countries views on the importance of IP(
protection tend to be polarized. ,n one side it is believed that stronger IP( protection can
encourage innovation technology diffusion and enhance growth. ,n the other it is thought that
stronger IP( protection leads to monopoly power for patent holders reduces the incentive to
innovate and limits the diffusion of !nowledge.
65
)he impact of IP( protection on growth innovation and technology diffusion in developing
countries li!e India is li!ely to depend upon a number of factors. Iere the potential for benefits
from )(IP. is stronger. Iere existing firms engaging in imitation could be encouraged through
stronger IP( protection to shift resources towards adaptive innovation while stronger IP(
protection is li!ely to increase trade and 2>I flows into countries with existing imitative ability
thus enhancing technology transfer. Policies to enhance the benefits of )(IP. would help
develop the domestic innovative sector through encouraging (<> and investment in education
along with policies aimed at opening mar!ets to foreign imports and encouraging inward 2>I.
66

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