Patents, Trademarks,

Industrial Designs as apart of

Intellectual Property Rights w.r.t. relevant

clauses of TRIPS.

Legal Aspects of BusinessMET Institute of

Management, Mumbai

ContentIntellectual Property Rights

History of Intellectual Property Rights

Framework of TRIPS’s Agreement (WTO)

Patents + Case Studies

Trademarks + Case Studies

Industrial Designs + Case Studies

Comparative Analysis between India and China w.r.t. IPR

Recommendations

Bibliography

Intellectual Property Rights

IntroductionDefinition: • The rights given to people over the creations of their minds. • IPR allows creators, or owners, of patents, trademarks or

copyrighted works to benefit from their own work or investment in a creation for a certain period of time.

Requirement of I.P.R.:• To give statutory expression to the moral and economic

rights of creators in their creations and to the rights of the public in accessing those creations.

• To promote creativity and the dissemination and application of its results, and to encourage fair trade, which would contribute to economic and social development.

Categories of I.P.R.

Copyright and rights related to copyright

Industrial Property

Intellectual Property

Copyrights Industrial Property

Patents(Eg: New

Technology)

Industrial Designs

(Eg: Mouse Design)

Trademarks(Eg: Nike)

Geographical Indications

(Eg: Darjeeling Tea)

Need for Intellectual Property Rights

• Exclusive right to the creator over the use of his/her creations

• To discourage Piracy, counterfeiting and the theft of intellectual property assets

• Important tool for growth with business security

Objective of I.P.R.

To protect

the source

of identity

Encourage

people to

generate ideas &

earn revenue

Associate pride

or status to a

person or place

T.R.I.P.S.Trade Related

Aspects of Intellectual

Property Rights

Introduction to TRIPS• The Agreement on Trade related Aspects of

Intellectual Property Rights of the WTO is commonly known as the TRIPS Agreement

• Negotiated as part of the eighth round of multilateral trade negotiations in the period 1986-94 under General Agreement on Tariffs and Trade (GATT) commonly referred to as the Uruguay Round

• Introduction of Intellectual Property(IPRs)

• Most comprehensive international agreement on intellectual property

IPRs under TRIPS

Copyright & Related

rights

Patents including

the protection

of new varieties of

plants

Trademarks

Geographical

Indications Industrial

Designs

Layout-designs

Undisclosed

Information (trade

secrets & test data)

Reasons for TRIPS inclusion in WTO

• The precursor to the WTO was the General Agreement on Tariffs and Trade (GATT) operation which resulted in lowering of tariffs in general international trade.

• Other domestic policies of nations came into focus of the trading nations.

• Increasing competition in manufactured exports from Newly Industrializing Countries (NICs) of Asia.

• Requirement of clarification and elaboration of new rules and disciplines in order to reduce distortions and impediments to international trade.

• IPR became important in international trade• WTO’s TRIPS Agreement  could help narrow the gaps,

protect IPRs and bring them under common international rules.

TRIPs AGREEMENT• Application of principles of the trading system and

other international intellectual property

• Adequately enforcement of rights in their own territories by the member countries

• Settlement of trade disputes

• Special transitional arrangements during the period when the new system is being introduced.

• Establish minimum levels of protection

• Strike balance between long term benefits and possible short term costs to society which encourages

creation and invention.

THREE MAIN FEATURES

Standards

Enforcement

Dispute Settleme

nt

National and most-favoured-nation treatment

Indian obligations under TRIPS • Trade Marks Act, 1999

• The Patents Act’1970 ammended in 1999

• Protection of Plant Varieties and Farmers’ Right Act No. 53 of 2001

• The Designs Act, 2000

PATENTS

Patents

Definition: Patent is an intellectual property right relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others, from making, using, selling, importing the patented product or process producing that product for those purposes.

• Ensures property rights for the invention for which patent has been granted, which may be extremely valuable to an individual or a Company

• Patent obtained in one country is not enforceable in other country

• The patent rights can be enforced only after securing the patent

• Patent is granted for both a product and a process.

• Who Can Apply: Application may be made, either alone or jointly with another, by the inventor, assignee, legal representative of deceased inventor or assignee

Protection of Patent under TRIPS

For any inventions, whether products or processes Articl

e 27

Limited exceptions to exclusive rights provided do not conflict with normal exploitation of the patent

Article 30Revocation/

forfeiture is subject to judicial review Articl

e 32

Exclusive right to owners against third party. Article

28 The term of protection shall be at least 20 years from the date of application

Article 33

Exclusive right to owners against

third party.

Article 28

Establishment of reversal off the burden of proof in

civil proceedings

Article 34

TYPES OF

PATENT

Ordinary Patent

Patents of Addition

Convention

Securing Patents Rights in India

• India is a signatory country to the Paris Convention and the WTO

Paris Convention: According to this treaty, juristic and natural persons who are either national of or domiciled in a state party to the Convention shall, as regards the protection of industrial property, enjoy in all the other countries of the Union, the advantages that their respective laws grant to nationals.

• Foreign applicants have equal rights before the patent law of India and there is no discrimination based on nationality

• Life span of a patent is 20years starting from the date of the filing of the patent application. Applications under the Patent Cooperation Treaty (PCT) 20years shall be counted from the international (PCT) application filing date.

Process of filing a PATENT in India

PATENTABLE INVENTIONS

New and useful art, process, method or

manner of manufacture

Machines & Apparatus

Substance produced by manufacture

Any new and useful improvement of any

of them

Alleged invention

NON-PATENTABLE INVENTIONS

Claims contrary to well-established natural laws

Discovery of a scientific principle

of an abstract theoryIntended use contrary to law

or morality or injurious to public health

Substance obtained by a mere admixture resulting in

aggregationMere arrangement or

rearrangement or duplication of known devices

Method of agriculture or horticulture

Inventions relating to atomic energy

CASE STUDY 1: Samsung v/s Apple• Apple has filed a patent infringement lawsuit against Samsung for the Galaxy line of products. • Apple claims that Samsung has infringed on their rights with the Galaxy S phones and Tab assigned to Apple by US PTO.• Apple is concerned with the rounded corners on the icons

CASE STUDY 2: Novartis Case

• Novartis applied for imatinib in U.S.A. In 1994• Started marketing its anti-cancer drug as Glivec• Norvartis-could not apply for patent in India- India didn’t not

recognize ‘Product Patent Protection’ in pharmaceuticals until 1995

• India- Patents are given only for new substances and not for known substances, thus Glivec was again not patentable in India

• Novartis- Appllied new patent- beta crystalline• India- Application rejected under re-introduction of

Product Patents Section 3(d),2005

Trademark

TRADEMARK Definition : • A trademark is a distinctive sign that identifies

certain goods or services produced or provided by an individual or a company.

• Its origin dates back to ancient times when craftsmen reproduced their signatures, or “marks”, on their artistic works or products of a functional or practical nature.

Significance of Trademarks:• Trademark protection ensures that the owners of

marks have the exclusive right to use them to identify goods or services

• Trademarks promote initiative and enterprise worldwide by rewarding their owners with recognition and financial profit.

Functions of

Trademarks

Identifies the goods / or services

and its origin

Guarantees its

unchanged quality

Advertises the

goods/services

Creates an image for the goods/

services

Protection of Trademarks under TRIPS Agreement

Terms of protection Arti

cle 18

Requirement of use

Article 20

Article 21

Protectable subject matter Arti

cle 15

Licensing and

assignment

Article 21 Exceptio

ns

Article 17

Types of Trademarks

Product TrademarksTrademarks that are affixed to identify goods, distinguishing the seller form the

rest selling similar products

Service TrademarksThis type of trademark helps in

distinguishing one service provider from another and identifies the

source.

Certification TrademarksThese indicate that the goods and services meet certain standards with

respect to origin of goods.

Process of registration of Trademark

(10 years duration)

Legal Requirements

• The selected mark should be capable of being represented graphically (that is in the paper form).

• It should be capable of distinguishing the goods or services of one undertaking from those of others.

• It should be used or proposed to be used mark in relation to goods or services

• Non-user of a registered trademark for a continuous period of 5 years is a ground for cancellation of registration

CASE STUDY: Gati Ltd. v/s Gati Dance Forum

• Gati Ltd.: Specialized in point to point distribution of cargo services

• Gati Dance : Non-charitable trust dedicated to supporting, facilitation and promoting artists in the field of dance.

• Gati Ltd.- Feb.2014, submited case accusing usage of the term ‘GATI’ by Gati Dance as its trade name to deceive customers and take unfair advantage of the goodwill and reputation of Gati Ltd.

• Court noted that GATI as common Hindi/ Sanskrit word & thus cannot be claimed to have been coined or invented by Gati Ltd.

• Services provided by the plaintiff and defendant are entirely different with no similarity in even the trade channels.

• Court declined to issue an interim injunction in favour of the plaintiff in this matter.

Industrial Designs

Industrial Design Meaning & Definition: • An intellectual property right that protects the visual design of objects that are not purely utilitarian.

• An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three dimensional form containing aesthetic value.

• An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

Protection of Industrial Designs under TRIPS

Agreement Protection to new or original designs Articl

e 25.1

Exclusive rights can be exercised against acts for commercial purposes, including importation

Article

26.1

Minimum Term of Protection is ten years Artic

le 26.2

Protection for textile designs

through industrial design or copyright law

Article

25.2

Requirements for Industrial Design

Design should be new or original

Design should relate to features of shape,etc.Any mode or principle of construction or operation, which is in substance a mere mechanical device, would not be a

registrable designNot comprise or contain scandalous or obscene matter

Significantly distinguishable

Design should not include any trademark

Design should be applied or applicable to any article by any industrial process

Features of the designs in the finished article should appeal to and are judged solely by the eye

10 years (Renewal due 5 years after filing)

Registration process of

Industrial Designs in India

• Concept of Industrial Design The design as applied to an article should be integral with the article itself.

• Duration of the registration of a design

The total term of a registered design is 15 years

• Strategy for protection First to file rule is applicable for

registrability of design.

CASE STUDY : Mattel Inc. v/s MGA Entertainment Inc.

• Bratz dolls launched in 2001 and 40% of Barbie’s turf in 5 years.

• MGA - April 2005, filed a lawsuit against Mattel, claiming line of “My Scene” Barbies copied the big-headed and slim-bodied physique of Bratz dolls.

• Mattel- accused Bratz designer Carter Bryant designing the doll while on Mattel’s payroll under a contract that stipulated that his designs were the property of Mattel.

• July 2008, a jury ruled in favor of Mattel, forcing MGA to pay Mattel $100 million and to remove Bratz dolls from shelves

• MGA- April 3013, filed a case against Mattel proving to steal trade secrets.

Comparison of current scenario between INDIA and CHINA

w.r.t. Intellectual Property Rights

IP Protection wise Ranking

• Brazil, Russia, India and China (BRIC) infamous for their weak IP protection

• The United States highest overall score at 23.73, with the United Kingdom coming in second at 22.40.

• Among BRIC countries: Brazil- 9.57 Russia- 11.17 India- 6.24 China- 9.13

Source: Charting the Course index

IPR Protection ranking among 25 developed

and developing countries

6.24

11.17 9.13 11.6 9.57 6.24

IP Filings and Economic Growth

India China

Current IPR Protection Status

INDIA• Indian policy

continued to breach international standards of the protection of innovation and patent rights, revoking patents generally accepted around the world and announcing that other patented products are being considered for compulsory licences.

CHINA

China’s third amendment of its Patent Law in 2008

“The needs of development of China herself,” which require “the promotion of independent innovation and the establishment of an innovation-oriented country.”

Reasons for INDIA’s lowest rank

• Weak punishment : Punishment prescribed for infringement maximum of Rs.200,000 and imprisonment up to 3years

• Hampering promotion and growth of innovations

• Low convictions rate

• Lack of awareness about IP protection and lack a proactive approach

• India has taken a pro-generic approach by rejecting renowned patents in recent cases.

Recommendations

• Trans-Pacific Strategic Economic Partnership

Agreement (TPSEP or P4)

• Organisation for Economic Cooperation and Development

(OECD)

Bibliography• http://ipindia.nic.in/ipr/patent/mashelkar_committee_report.doc• http://www1.american.edu/ted/turmeric.htm (Case Study)• http://dipp.nic.in/ipr.htm (Intellectual Property)• http://www.wipo.int/ipstats/en/statistics/country_profile/countries/in.html • http://www.wipo.int/lisbon/en/ (the Lisbon Agreement)• http://www.patentlens.net/daisy/patentlens/202.html (How to read patent

document)

Webliography• http://en.wikipedia.org/wiki/Organisation_for_Economic_Co-operation_an

d_Development• http://www.oecd.org/india/• http://en.wikipedia.org/wiki/Transatlantic_Trade_and_Investment_Partner

ship• http://wikileaks.org/tpp-enviro/pressrelease.html• http://spicyip.com/ (Case Studies)

Thank You!Team Members

Finil Pandya 13026Harshita Doshi 13029

Himani Chowhan 13031Isha Agrawal 13033Jay Loliyana 13035Ketaki Misra 13038Mansi Sroai 13041

Palak Agrawal 13047