Q.1 What are the main laws regulating IP in India?
Intellectual Property in India refers to copyrights, patents, trade mark, designs and different intangible assets. There are well-established statutory, administrative, and judicial frameworks for safeguarding IP in India.
The Trade Mark Act, 1999, which replaced the Trade and Merchandise Marks Act, 1958 ("TM Act, 1958"), protects Trade Marks. The Act has been amended quite a few times with the latest amendment in the year 2017.
The Copyright Act, 1957 governs the copyright law in India. The Act has been amended quite a few times with the latest amendment in the year 2012.
The Patent Act, 1970 governs the patent law in India. The Act has been amended quite a few times with the latest amendment in the year 2017.
The Design Act, 1911, which protects the IPR related to design has been completely replaced by the Design Act, 2000.
Aside these, in order to protect other species of intellectual property in India, few statutes have been enacted, namely -
- The Geographical Indications of Goods (Registration and protection) Act, 1999
- The Semiconductor Integrated Circuits Layout- Design Act, 2000
- The Protection of Plants & Varieties and Farmers Rights Act, 2001
- The Biological Diversity Act, 2002
- Commercial Courts, Commercial Division and Commercial Appellate Division of the High Courts Act, 2015
Q.2 Which international IP agreements is India a part of? Are there any notable omissions?
India is a member of WTO (World Trade Organization) and is committed to the Agreement on Trade Related Aspects of Intellectual Property (TRIPS). Also, the country is a member of WIPO (World Intellectual Property Organization), which is a body responsible for the promotion of protection of intellectual property rights worldwide. And, it is a member of the below mentioned important IPRs related WIPO-administered International Treaties and Conventions -
- Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure
- Paris Convention for the Protection of Industrial Property
- Convention Establishing the World Intellectual Property Organization
- Berne Convention for the Protection of Literary and Artistic Works
- Patent Cooperation Treaty
- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks- Madrid Protocol
- Washington Treaty on Intellectual Property in respect of Integrated Circuits
- Nairobi Treaty on the Protection of the Olympic Symbol
- Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms
- Marrakesh Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities
- International Copyright Order, 1999
IP-related Multilateral Treaties (Entry into force of the Treaty for the Contracting Party)
- Nagoya - Kuala Lumpur Supplementary Protocol on Liability and Redress to the Cartagena Protocol on Biosafety (March 5, 2018)
- Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity (October 12, 2014)
- Convention on the Rights of Persons with Disabilities (May 3, 2008)
- Convention on the Protection and Promotion of the Diversity of Cultural Expressions 2005 (March 18, 2007)
- Agreement for the establishment of the Global Crop Diversity Trust (January 9, 2007)
- Convention for the Safeguarding of the Intangible Cultural Heritage (April 20, 2006)
- Stockholm Convention on Persistent Organic Pollutants (April 13, 2006)
- International Plant Protection Convention (October 2, 2005)
- WHO Framework Convention on Tobacco Control (February 27, 2005)
- Kyoto Protocol to the United Nations Framework Convention on Climate Change (February 16, 2005)
- International Treaty on Plant Genetic Resources for Food and Agriculture (June 29, 2004)
- Cartagena Protocol on Biosafety to the Convention on Biological Diversity (September 11, 2003)
- United Nations Convention to Combat Desertification in Those Countries Experiencing Serious Drought and/or Desertification, Particularly in Africa (March 17, 1997)
- United Nations Convention on the Law of the Sea (July 29, 1995)
- Agreement establishing the World Trade Organization (WTO) (January 1, 1995)
- World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994) (January 1, 1995)
- Convention on Biological Diversity (May 19, 1994)
- United Nations Framework Convention on Climate Change (March 21, 1994)
- Universal Copyright Convention as revised on 24 July 1971, with Appendix Declaration relating to Article XVII and Resolution concerning Article XI (April 7, 1988)
- Protocol 1 annexed for Universal Copyright Convention as revised at Paris on 24 July 1971 concerning the application of that Convention to works of Stateless persons and refugees (January 7, 1988)
- Protocol 2 annexed for Universal Copyright Convention as revised at Paris on 24 July 1971 concerning the application of that Convention to works of certain international organizations (January 7, 1988)
- International Covenant on Economic, Social and Cultural Rights (July 10, 1979)
- Convention concerning the Protection of the World Cultural and Natural Heritage (February 14, 1978)
- Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property (April 24, 1977)
- Convention for the Protection of Cultural Property in the Event of Armed Conflict (September 16, 1958)
- Protocol to the Convention for the Protection of Cultural Property in the Event of Armed Conflict (September 16, 1958)
- Universal Copyright Convention of 6 September 1952, with Appendix Declaration relating to Article XVII and Resolution concerning Article XI (January 21, 1958)
- Protocol 1 annexed to the Universal Copyright Convention as signed at Geneva on 6 September 1952 concerning the application of that Convention to works of stateless persons and refugees (October 21, 1957)
- Protocol 2 annexed to the Universal Copyright Convention as signed at Geneva on 6 September 1952 concerning the application of that Convention the works of certain international organizations (October 21, 1957)
- Protocol 3 annexed to the Universal Copyright Convention as signed at Geneva on 6 September 1952 concerning the effective date of instruments of ratification or acceptance of or accession to that Convention (October 21, 1957)
- Convention (I) for the Amelioration of the Condition of the Wounded and Sick in Armed Forces in the Field (May 9, 1951)
- Convention (II) for the Amelioration of the Condition of Wounded, Sick and Shipwrecked Members of Armed Forces at Sea (May 9, 1951)
- Convention (III) relative to the Treatment of Prisoners of War (May 9, 1951)
- Convention (IV) relative to the Protection of Civilian Persons in Time of War (May 9, 1951)
- Convention on International Civil Aviation (April 4, 1947)
- Convention and Statute on Freedom of Transit (October 31, 1922)
Regional Economic Integration Treaties (Entry into force of the Treaty for the Contracting Party)
- Agreement on South Asian Free Trade Area (January 1, 2006)
- Framework Agreement on the BIMST-EC Free Trade Area and its Protocol and the Declaration establishing the Bay of Bengal Initiative for Multi-Sectoral Technical and Economic Cooperation (February 8, 2004)
- Global System of Trade Preferences among Developing Countries (April 19, 1989)
- Charter of the South Asian Association for Regional Cooperation (December 8, 1985)
- First Agreement on Trade Negotiations among Developing Member Countries of the Economic and Social Commission for Asia and the Pacific (Bangkok Agreement) (June 17, 1976)
IP-relevant Bilateral Treaties (Entry into force of the Treaty for the Contracting Party)
- Comprehensive Economic Cooperation Agreement between the Government of the Republic of India and the Government of Malaysia (July 1, 2011)
- Agreement on Trade in Goods under the Framework Agreement on Comprehensive Economic Cooperation between the Association of Southeast Asian Nations and the Republic of India (January 1, 2010)
- Comprehensive Economic Partnership Agreement between the Republic of Korea and the Republic of India (January 1, 2010)
- Protocol to Amend the Framework Agreement on Comprehensive Economic Cooperation between the Association of Southeast Asian Nations and the Republic of India (January 1, 2010)
- Revised Treaty of Trade between the Government of India and the Government of Nepal (October 27, 2009)
- Preferential Trade Agreement between the MERCOSUR and the Republic of India (January 1, 2009)
- Agreement between the Government of the Republic of India and the Government of the Republic of Trinidad and Tobago for the Promotion and Protection of Investments (October 7, 2007)
- Preferential Trade Agreement between the Republic of Chile and the Republic of India (September 11, 2007)
- Agreement on Trade, Commerce and Transit between the Government of the Republic of India and the Royal Government of Bhutan (July 29, 2006)
- Comprehensive Economic Cooperation Agreement between the Republic of India and the Republic of Singapore (August 1, 2005)
- Framework Agreement on Comprehensive Economic Cooperation between the Republic of India and the Association of Southeast Asian Nations (July 1, 2004)
- Preferential Trade Agreement between the Republic of India and the Transitional Islamic State of Afghanistan (May 13, 2003)
- Free Trade Agreement between India and Sri Lanka (December 15, 2001)
- Agreement between the Government of the State of Qatar and the Government of the Republic of India on the Reciprocal Promotion and Protection of Investments (December 15, 1999)
- Agreement between the Government of the Republic of India and the Government of the State of Israel for the Reciprocal Promotion and Protection of Investments (February 18, 1997)
- Agreement between the Government of the Russian Federation and the Government of the Republic of India for the Promotion and Mutual Protection of Investments (August 5, 1996)
- Notably, India is not a party to the Hague Agreement concerning the international registration of Industrial Designs.
Q.3 What is the procedure for obtaining a patent in India? Are there any notable differences from other jurisdictions?
- Checking the Patentability by performing a search for similar technologies
- Checking the Patentability of the invention viz. novelty, non-obviousness and industrial applicability.
- Drafting a patent application (Provisional or Complete)
- Filing the application:
- Form 1 - Application for Grant of Patent
- Form 2 - Provisional/Complete specification
- Form 3 - Statement and undertaking regarding foreign application under section 8 (only required if a corresponding patent application is filed in another country)
- Form 5 - Declaration as to inventorship (only to be filed along with the complete application)
- Form 26 - Form for authorization of a patent agent (only required if you are using a patent agent to help you file the application)
- Form 28 - To be submitted by startup or small entity (only required if you are claiming startup or small entity status)
- Priority documents - In case you are claiming priority from a foreign patent application and entering India, you may be required to provide the priority document as well.
- Publication of patent application
- Examination of the patent application along with pre-grant opposition, if any
- Final decision on grant of patent
Although the patent regime in India is extremely exhaustive and TRIPS- compliant, there are several differences as compared to the practice and laws followed in other jurisdictions. Some of the notable differences are:
- India under S. 3 (d) excludes new forms of known substances from patentability which do not result in the enhancement of the known efficacy of that substance, viz. isomers, esters, polymorphs, salts etc. This kind of exclusion is not found expressly in any other patent statute and creates another bar on attempts of evergreening.
- India does not, yet, provide for utility patents. The same has been introduced in many other jurisdictions successfully. Although the inclusion of utility patent models has been extensively debated, no definite conclusion has been made.
- India provides a separate statute for the protection of plant varieties and farmers' rights. Several jurisdictions include plants or parts thereof and varieties in the patent system itself by conferring different rights thereon. However, India does so by the way of a separate legislation.
- Indian Patent laws also exclude algorithms and software per se from the scope of patentability.
- Indian regime also provides for compulsory licensing including for medical and pharmaceutical inventions in cases of extreme emergency or epidemic. Such a system also operates in cases where the drug needs to be exported to a country where an epidemic exists.
- Under the Indian Patent Act, patentees/licensees are also required to file annual working statements.
Q.4 What is the procedure for obtaining a trade mark?
In India, trademark registration can be obtained for words, logos, slogans, device, numerals, shape of goods, packaging or combination of colours etc. Registering trademark gives the owner of the mark the legal right of exclusivity for use of it. However, the process is time-taking and involves multiple steps. Below are the various steps involved in Trademark Registration -
- Trademark Search - This is the first step involved in registering trademark. The applicant should thoroughly search the trademark records registry and ensure that the intended trademark does not resemble or is not identical to any registered mark.
- Filing Application - Application can be filed both online and offline. But, the application must contain the following information -
- Logo or the Trademark
- Name and address of the trademark owner
- Classification or Trademark Class
- Trademark used since date (if use claimed then it is mandatory to file 'Affidavit of Use' at the time of filing of the application)
- Description of the goods or services (as per Nice Classification)
- Trademark Application Allotment - After the application is filed with the trademark registry, an allotment number is provided on the same day.
- Vienna Codification - The Vienna Classification or Vienna Codification, established by the Vienna Agreement (1973), is an international classification of the figurative elements of marks. Once the trademark registration application is filed, the Trademark Registrar will apply the Vienna Classification to the trademark based on the figurative elements of marks. While this work is in progress, the trademark application status usually reflects as "Sent for Vienna Codification".
- Trademark Examination: After the completion of Vienna Codification, the trademark registration application will be allotted to a Trademark Officer in the Trademark Registrar Office. He will then review the trademark application and issue either an objection letter that pertains non-compliance of viz., non-filing of Power of Attorney, specification of goods or services are not filed as per Nice Classification, filing of priority documents etc. or a trademark examination report. He has the authority to accept or reject any trademark application.
- Trademark Journal Publication - After acceptance of the trademark application, the proposed trademark is published in the Trade Marks Journal. The Trade Marks Journal is published weekly (i.e., on every Monday of the week) and contains all the trademarks that have been accepted by the Trademark Registry. And, after publication of trademark in the Trade Marks Journal, public has an opportunity to object to it, if they believe they will be damaged by that registration. If there are no objections filed within four months from the date of the availability of the Trade Marks Journal to the public, the mark will typically be registered within 12 weeks - months' time (from the date of expiry of the opposition period ).
- Trademark Registration - If there are no objections raised within the stipulated time, the trademark registration certificate will be prepared and sent to the Registered trademark proprietor or to their agent on record (electronically via email(. The Trade Marks Registry has now stopped issuance of the physical Registration Certificate. Once the trademark registration certificate is issued, the trademark is considered to be a registered trademark of the owner, granting the trademark owner exclusive use of the mark for the period of 10 years from the date of filing of the trademark application.. Also, the registered trademark owner has to renew their registered mark in every 10 years in order to retain rights in their mark. The ® symbol can thereafter be placed next to the logo or trademark.
Q.5 Which are the most significant IP cases in recent years?
Top 5 IP cases of 2017 are as follows:
- Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. (Trademark)
- Bayer Corporation v. Union of India (Patent)
- Zee Entertainment Enterprises Ltd. v. Union of India (Copyright)
- Biocon Ltd. & Mylan Pharmaceuticals Pvt. Ltd. v. F. Hoffmann-La Roche AG & Ors. (Patent)
- Makemytrip (India) Private Limited v. Orbit Corporate Leisure Travels (I) Private Limited (Trademark)
- Telefonaktiebolaget LM Ericsson Vs. Competition Commission of India & Ors (Patent)
Q.6 Are there any other IP rights that are available in India, eg design rights, innovation patent? (Answered in Q. No. 1)And what do international rights owners need to know about these?
India follows the common law and therefore, offers common law protection in addition to statutory protection in the realm of copyright and trade marks/names.
Further, Design rights are available in India and are governed by the Designs Act, 2000. India also recognizes several other forms of IP such as Geographical Indications, Plant varieties, etc. and neighboring rights such as Trade Secrets and Confidential Information, etc.
Q.7 Have there been any recent significant changes in the law?
Yes, there have been significant changes in IP law in India. For instance, The Indian Copyright Act was extensively amended in 2012. Further, the Trade Mark Rules, 2002 were also amended extensively in the year 2017.
Furthermore, the enactment of the Commercial Courts, Commercial Division and Commercial Appellate Division of the High Courts Act, 2015 has brought about significant procedural changes with the aim to expedite the disposal of IP disputes in India. Recently the Original Side Rules of the Delhi High Court has been amended. This amendment was in line with the Commercial Courts Act and the aim is to dispose of all pending matters as soon as possible. The rules also lays down the guidelines from filing to the disposal including the timelines.
Q.8 Are there any proposals/plans for legal changes? Or treaty accessions?
Yes, there is a proposed legal change pertaining to the provisions of working of patents of the Patents Act, 1970 which is pending with the Indian Patent Office. Paragraph 3(i)(b) of Form 27 requires patentees to state the "quantum" and "value" of the patented product manufactured in India or imported from other countries. This issue cropped up in an erroneous Form 27 submission involving Wyeth as highlighted by Prashant in an earlier post. The bone of contention is should value be the price at which the patented invention is sold and/or distributed by the patentee to distributors or the final price at which the drug is sold to the consumer? In view of resolving the aforesaid issues regarding the provisions of working of patents in the Patents Act 1970, the Indian Patent Office has called upon a consultation meeting with stakeholders to receive feedback and ascertain procedures in this regard.
Q.9 What is the body responsible for granting IP rights and how is it structured?
DIPP - Department of Industrial Policy & Promotion which is a part of the Ministry of Commerce & Industry, is responsible for the provision of IP rights in India and also for the administration of the concerned registries/offices.
Further, the following bodies are responsible for granting IP rights in India:
Patent - Indian Patent Office
Copyright - Copyright Office
Trade Marks - Trade Marks Registry
Design - Controller of Designs ( Controller -General of Patents, Designs and Trade Marks)
IPAB - for grant of compulsory/ statutory license for Patents & Copyright
Q.10 Which courts have jurisdiction in IP cases in India, at first instance and appeal? How are they structured (eg. number of judges, forum shopping, evidence rules, witnesses …)
All IP disputes can be filed, at the first instance, before District Courts as well as High Courts having original jurisdiction. The pecuniary and territorial jurisdiction would decide the court of first instance.
IP disputes filed before the High Courts are categorized as 'commercial disputes' and are governed by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015.
Constitution of Commercial Courts
The State Government, after consultation with the concerned High Courts, may constitute Commercial Courts at District Levels. Also, the local limits of the jurisdiction of such courts shall be determined by the State Government after consultation with the concerned High Court.
The State Government with agreement of the Chief Justice of the High Court, shall appoint one or more persons having experience in dealing with commercial disputes to be the Judge or Judges, of a Commercial Court, from amongst the cadre of Higher Judicial Service in the State.
Constitution of Commercial Division of High Court
In all the High Courts that have ordinary jurisdiction, the Chief Justice of the High Court may by order constitute Commercial Division having one or more Benches consisting of a single Judge for the purpose of exercising the jurisdiction and powers conferred on it under this Act. The Judges of the High Court who have experience in dealing with commercial disputes to be Judges of the Commercial Division are nominated by the Chief Justice of the High Court.
Constitution of Commercial Appellate Division
After issuing notification under sub-section (1) of section 3 or order under sub-section (1) of section 4, the Chief Justice of the concerned High Court shall, by order, constitute Commercial Appellate Division having one or more Division Benches for the purpose of exercising the jurisdiction and powers conferred on it by the Act. The Judges of the High Court who have experience in dealing with commercial disputes to be Judges of the Commercial Appellate Division are nominated by the Chief Justice of the High Court.
An IP case can be filed either at the Commercial Courts or at the Commercial Divisions of High Courts if the valuation of the suit is over Rs. 1 Crore. Further, all suits and applications that are pending on the original side of the High Court shall be heard and disposed of by the Commercial Division of the High Court.
Any person who is aggrieved by the decision of the Trial Court can appeal to the High Court within a period of 90 days from the date of judgment or order, or the case may be.
Any person who is aggrieved by the decision of the Commercial Court or Commercial Division of the High Court can appeal to the Commercial Appellate Division of that High Court within a period of 60 days from the date of judgment or order, or the case may be.
Q.11 How common is IP litigation? How many patent/trade mark cases in a typical year?
Over the years IP litigation in India has become quite common and hundreds of cases are filed on an annual basis.
Q.12 Are there any decisions in other areas of law (eg competition, regulatory) that have had or are likely to have an impact on IP rights?
Yes. Increasingly, the interplay between IPR and competition law is coming to the forefront. Further, with respect to pharmaceutical patents, regulatory issues especially pertaining to creation of patent linkage is also being seen.
Q.13 Are there any financial/accounting measures in India that are aimed at or relevant to IP owners/licensees (eg patent box-style tax rules or other IP-related incentives)?
Yes, for example, there exists a special patent regime with a 10% rate of tax on income from worldwide commercialization of patents which are developed and registered in India. Usually, the domestic company which has commercialized the patent would be paying tax from income at the standard rate of 30% after deducting expense.
Q.14 What is the position of an unregistered trademark in India and how is it protected?
Unregistered trademarks in India are protected under the common law principle of passing-off. Thus, the proprietor's rights in such unregistered marks can be enforced by proving use and existence of established goodwill and reputation of the mark in question.
To constitute an action for passing off, the proprietor must establish the following factors:
- The mark has acquired certain goodwill and reputation in India
- Misrepresentation of the mark by the Defendant
- Consequently, damage to Plaintiff's business and/or goodwill
Q.15 What is the law pertaining to protection and regulation of domain names in India?
In India a person has to the option of either going to the WIPO(for .com) or NIXI (for .in domains). However if a person wants to go for infringement, they come under the Trademarks Act, infact in the year 2005 the Hon'ble Supreme Court in the judgment of Satyam vs Siffy brought the domain names under the purview of Trademarks Act.
Q.16 What measures are taken to prevent the import of counterfeit goods in India?
In addition to the Trademarks Act, 1999, the Customs Act ,1962 and Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 provide for border control remedies with respect to counterfeit goods,
The import and export of goods are regulated by Chapter VII (Sections 44 to 51) of the Customs Act. The import of goods that infringe IP rights is prohibited by Notification 49/2007-Customs (NT) (May 8 2007), issued under Section 11 of the Customs Act. Section 11 empowers the central government to prohibit or restrict the import or export of goods for the purposes specified in the section by issuing notifications in the Official Gazette. The act empowers the government to prohibit the import or export of goods to protect patents, trademarks and copyrights (Section 11(2)(n)), and to prevent the contravention of any law that is in force (Section 11(2)(u)). Notification 49/2007 prohibits the import of any goods that feature false trademarks, as specified in Section 102 of the Trademarks Act.