Intellectual Property Rights An Overview

Presented by

Poorvi Chothani, Esq.

LawQuest, Mumbai www.lawquestinternational.com

Intellectual Property
Word

Intellectual Property Organisation (WIPO), World Trade Organization (WTO) TRIPS Paris Convention for the protection of Industrial Property Patent Co-operation Treaty (PCT) Budapest Treaty
All Signatory countries need to ensure Intellectual Property Rights (IPR) Protection within their jurisdiction.

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Relevant Indian Laws*

The The The The The

Patents Act, 1970 Copyright Act, 1957 Trademark Act, 1999 Designs Act, 2000 Information Technology Act, 2000

http://www.ditto.com

*As amended from time to time and with their supporting rules.

IPRs - An Exclusive, Time Bound, Right Over A Creation

Copyrights Trademarks Patents Designs Trade Secrets Data Geographical Indications Domain Names

http://news.sawf.org/Bollywood/27828.aspx

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Emerging Technologies

Digitization Electronic distribution The Internet Nanotechnology Bio-technology Move from physical assets to intangible assets
http://www.ditto.com

Effect of Emerging Technologies

Innovation Mobile Technology Electronic Storage Devices- iPods, iPhones, Smart Phones Growth of new industries e.g. BPO Efficiency Savings Prolific Publishing Opportunities (specialized websites, blogs, portals) Customer Centric Advertising SMS and Voice Advertising, search engine advertising

IPR and Business

How To Protect Your Brand What Makes A Good Trade Mark What Can A Brand Consist Of Selective Patent Protection How Long Does IP Protection Last How To Protect The Design Of Goods The Difference Between Registered And Unregistered Designs The Benefits Of Registered Design Protection
http://www.wendellrodricks.com/fashion.htm

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Trademarks

A Trademark is a means of identification of goods or services, a symbol which an organisation or person wises the consumer to identify with its goods or services as opposed to that of the competitor Registration of Trademarks is governed by The Trademarks Act, 1999 Protects logos and brand names, and may also apply to a distinctive way of stitching, pattern, trade dress, etc.
http://www.indiatrademarks.org/

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Trademarks and Service Marks

A Stylized Word Invented Word or Logo Letter or Signature Numeral, Brand, Heading, Label Name Written In A Particular Style The Shape Of Goods Trade Dress the 1999 amendment protects shape of goods and combination of colour

A Trademark` May Consist Of One or a Combination of the following:

The Trademark to be registered should not be deceptively similar to an existing mark of another person and not be expressly prohibited under the Act.
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Protection of Logos
The intellectual property rights like logos, names and labels are protected by Trademark Law

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Trademarks and The Internet

Domain Names Importance Of Maintaining Similarity

Global Impact Of Trademarks Domain Name Disputes Claimants Reliance On Trademark Ownership Misdirection Of Search Engines Dilution Of Famous Marks Malafide Use, Parody And Commentary Trademark Infringement And/Or Passing Off (Misrepresentation) In Multiple Jurisdictions

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Duration of a Trademark

The present term of registration of a trademark is ten years, which may be renewed for further periods of ten years on payment of prescribed renewal fees. Failure to use a registered trademark for a continuous period of five years may result in cancellation.

http://www.ditto.com/

Copyright Subsists In
Artistic Works Original Literary Computer Software

Photographs
Sound Recordings etc Dramatic Work

Original Literary

http://www.ritukumar.com/

Computer Software
Dramatic Work Musical Works Artistic Works Cinematographic Films

Musical Works
Cinematographic Films Photographs

Sound Recordings etc.

Copyright 2008 LawQuest. All rights reserved.

Copyrights

Copyright is an exclusive right granted to the author of an original work for a limited period of time with the right to exploit that right.

Bundle of Rights

Copyright gives the author of a literary, dramatic or musical work, the right to:

Reproduce the work in any material form including the storing of it in any medium by electronic means Issue and Distribute Copies Perform the work or Communicate the work Make Films or Sound Recordings Make Translations and/or Adaptations and all the above rights for such adaptations Publicly Display the Work Transfer any of these rights, either as a bundle or individually to another party

Term of Copyrights

Copyright is granted for:

Literary Works: 60 years from the death of the author (From the calendar year following the year of death) Broadcaster Rights: 25 years from the year following the first broadcast; Photographs and cinematographs, sound recordings, 60 years (From the calendar year following the year of publication) .

Copyright is subject to certain limitations Statutory Licensing

Fair Use Exceptions

Compulsory Licensing

Copyright and Emerging Technologies

Traditionally copyright was introduced to protect printed material The legislature and the courts struggle to keep up as technology changes and new media emerge.

Digitization of Traditional Copyrightable Material

Wall papers Mobile content Music, video, images downloads from the internet Video streaming (MTV overdrive, a
broadband internet video-on-demand service)

Blogs Podcasting Subscription digital music storesitunes and mtvs urge Tivo

Copyrights and Emerging Technologies

Copyright protection for software Patentability of embedded computer programs with technical effect Patent protection for software in the united states Version recordings and remixes (after two years of original sound recording) Peer to peer downloads iTunes, YouTube Rampant plagiarism

Copyright Notice
Copyright 2010 LawQuest. All rights reserved. or 2010 LawQuest. All rights reserved. This copyright notice must be placed in such way as to give reasonable notice of the claim to copyright.

http://www.coroflot.com/public/individual_file.asp?from_url=true&sort_by=1&portfolio_id=591469&individual_id=76339

Copyright 2008 LawQuest. All rights reserved.

Designs under the Designs Act

New or original, not previously published or used in any country Relate to features of shape Configuration, pattern or ornamentation applied or applicable to an article Features should appeal to and should be judged solely by the eye Design must appear and should be visible on the finished article, for which it is meant Should not include any Trademark or property mark or artistic works as defined under the Copyright Act, 1957

http

://www.ditto.com

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Patent Protection

Protects inventions An invention means a new product or process involving an inventive step and capable of industrial application (S. 2(1)(j)) Granted to Innovative, Novel Products and Processes Designers may be able to patent new, inventive and useful devices. Artistic creations cannot be patented and therefore patents are not widely adopted by designers from fashion industry. Inventions by Buck Weimer and CSIRO which control odours and body temperature respectively in garments have been successfully patented in the US

http://www.colorjewels.com/

Indian Patent Applications

Patent Applications for:

inventions originating in India; or involving an Indian resident inventor

must first be filed in India, unless a foreign filing license has been granted by the Indian Patent Office

Patents - Some Special Provisions

Compulsory licenses for export of medicines to countries which have lack of infrastructural or production capacity for meeting public health emergencies. In case of Infringement - Only civil remedy of injunction, damages, and accounts for profits.

Penalties

Imprisonment up to 2 years or with fine or with both. Amount of fine is not specified. Unauthorized claim of patent rights - fine up to Rs.1,00,000. Wrongful use of words, "patent office" - imprisonment for a term up to 6 months, or with a fine, or with both. Refusal or failure to supply information - fine up to 10,00,000. Furnishing false information knowingly - imprisonment up to 6 months or with fine or with both. Offences by companies the company as well as every person in charge of and responsible to, the company shall be liable.

Patented Diamond Setting USPTO Need to change to show some industrial designs from the USPTO.gov site

U.S. Patent Mar 20, 2007 US D538,700 S

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Data Privacy and Protection

No Specific Statute Existing legislation provides limited protection Information Technology Act - limited protection against certain types of data misuse or computer offences involving unauthorized access to data on computers and networks

E.g. hacking, damage to computer source code, virus introduction Civil and criminal remedies available

Going Forward
Creativity and Innovation are Important for Growth It Is Essential To Protect And To Enforce Ensuing Intellectual Property Rights Necessary To Increase Awareness Of Rights and Penalties for Infringement

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Significant Provisions

Inalienable moral rights

Waiver Concept does not apply to computer software

Work For Hire Compulsory Licensing Version Recordings Broad fair use exceptions

Non-commercial personal use deemed as fair use and does not constitute infringement.

Significant Provisions
Patents Joint Owners Consent Accounting Rights Infringement Responsibilities

Controller of Patents First to File vs. First to Invent Compulsory License Research and Experimental Use

Computer Programs and business methods per se not patentable Protect Computer Programs as trade secrets

Assignment of IP Rights
Of Copyright Territory Term Lapse Consent

Of Patents Joint Owner Needs Consent of other owner (s) to assign rights Valid only if in writing and registered in India

Examples - IPR Violations

Infringement of a trademark, copyright, patent or other right Passing off Unlicensed use of a trademark or copyrighted work Data theft, identity theft and mail fraud Purchasing counterfeit merchandise Software, Book, CD and DVD piracy

http://www.ditto.com

Enforcement
In

India, the enforcement system for IP rights includes:

Civil remedies Criminal penalties Settlement out of court without trail

Compensatory No

damages

punitive damages of copyrights

Registration Criminal

prosecution in trademark and copyright and in certain cases for patents, but not in designs cases

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Tel: +91 22 6615 6555

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