Intellectual Property in India: the Substantive LawMartins, Building, LiverpoolTuesday 18 September 2007

Jane LambertBarrister

TRIPs Obligations

• India is founder member of World Trade Organization (“WTO”)

• WTO Membership is conditional upon compliance with TRIPs (Trade-related Aspects of Intellectual Property Rights)

TRIPs Obligations

TRIPs requires WTO members to protect:

• original artistic and literary works including software, databases, films and sound recordings

• performances by actors, dancers, musicians, singers and other performers

TRIPs Obligations

TRIPs requires WTO members to protect:

• broadcasts and sound recordings

• trade marks

• geographical indications

• industrial designs

TRIPs Obligations

TRIPs requires WTO members to protect:

• inventions in all fields of technology

• plant varieties

• semiconductor topographies

• undisclosed information

TRIPs Obligations

TRIPs also requires WTO members to provide:

• fair and inexpensive civil remedies

• criminal sanctions for counterfeiting and piracy

• customs controls at air and sea ports and frontiers

Has India complied with TRIPs?

On the whole, yes

• enacted new trade mark, design, plant protection and semi-conductor topography statutes and amended patent and copyright laws

• imposed criminal liability for counterfeiting and piracy

Has India complied with TRIPs?

Only two complaints against it:

• DS55 by USA in 1996 and DS79 by EC in 1997 on patent protection for pharmaceuticals which India rectified

• appointed high level commission to report on compatibility with TRIPs on change of patent law

OverviewMany similarities with UK law but several significant differences:

• registration of copyrights and semi-conductor topographies

• threats action in copyright

• not yet party to Madrid Protocol or Hague convention

• no direct protection of functional designs

Statutes• Patents Act 1970 amended 1999, 2002 and 2003

• Designs Act 2000

• Trade Marks Act 1999

• Geographical Indication of Goods (Registration and Protections) Act 1999

Statutes•Copyright Act 1957 amended 1983, 1984, 1992, 1994 and 1999

• Protection of Plant Varieties and Farmers’ Rights’ Act 2001

• Semiconductor Integrated Circuits Layout-Design Act 2000

Intellectual Property OfficeController-General of Patents, Designs and Trade Marks at Mumbai (Bombay)

• Patent Office at Kolkatta (Calcutta) and branches at Chennai (Madras), Mumbai and Delhi for patents and designs

• Trade Marks at Trade Marks Registry at Mumbai and regional offices at Chennai, Kolkatta, Delhi and Ahmedabad

• Geographical Indications at Geographical Indications Registry at Chennai

Other Registries• Copyright Office, Department of Secondary and Higher Education

• Registry of Semiconductor Integrated Circuits Layout-Designs, Department of Information Technology

• Plant Varieties Registry, Department of Agriculture and Co-operation

Courts and Tribunals• Intellectual Property Appellate Board for appeals from Registrar of Trade Marks (may soon have design and patents jurisdiction)

• Copyright Tribunal for appeals from Registrar of Copyrights

• Regional High Courts for infringement claims

• Supreme Court of India

Use of IP System in 2006Patents

• Applications: 28,882

• Grants: 7,359

Trade Marks

• Applications: 103,419

• Registrations: 109,361

Use of IP System in 2006Designs

• Applications: 5,372

• Registrations: 4,431

Geographical Indications

• Registrations:

• Includes “Darjeeling Tea” and “Mysore Silk”

Conclusion•India not like China, Korea or Japan in terms of massive volumes of patent applications

• Intellectual property tends to be brand and design rather than technology focussed

• Nevertheless, firms like Ranbaxy and Tata are major users of worldwide patent system.

Any Questions Jane LambertnipcThe Media Centre7 Northumberland StreetHuddersfieldHD1 1RL

Tel 0870 990 5081

www.nipclaw.com