Meaning of Intellectual Property Rights

Intellectual Property broadly means creations of human mind or in other words it is a creative work of human mind which can be commercially exploited. Intellectual Property Rights protects the interests of creators by giving them property rights over their creations.

Intellectual Property relates to items of information or knowledge, which can be incorporated in tangible objects at the same time in a number of copies at different places in the world. The property does not lie in these copies but in the information or knowledge reflected in them.

The importance of Intellectual Property was First, recognized in Paris Convention for the Protection of Industrial Property in 1883 and the Berne Convention for the Protection of Literary and Artistic work in 1886.

Reason to Protect Intellectual Property Rights

a. To give statutory expression to the moral and economic rights of the creators in their creations and to the rights of the public in accessing those creations.
b. To promote creativity and the dissemination and application of its results and to encourage fair trade, which would contribute to economic and social development.

Two Branches of Intellectual Property

Industrial Property – includes Patents for Inventions, Trade Marks, Industrial Design and Geographical Indications.

Copyright- includes literary works, musical works, Artistic works and Architectural Design. It also includes Performing Artist rights, broadcasters of Radio and Television producers of Phonograms.

PATENT
What is a patent?
A patent in an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention, provided the invention satisfies certain conditions stipulated in the law. Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available only for a limited period of time. However, the use or exploitation of a patent may be affected by other laws of the country which has awarded the patent.
These laws may relate to health, safety, food, security etc. Further, existing patents in similar area may also come in the way. A patent in the law is a property right and hence, can be gifted, inherited, assigned, sold or licensed. As the right is conferred by the State, it can be revoked by the State under very special circumstances even if the patent has been sold or licensed or manufactured or marketed in the meantime. The patent right is territorial in nature and inventors/their assignees will have to file separate patent applications in countries of their interest, along with necessary fees, for obtaining patents in those countries.

What is expected from patentee as an obligation to the state?
A patentee must disclose the invention in a patent document for anyone to practice it after the expiry of the patent or practice it with the consent of the patent holder during the life of the patent.
What are the conditions to be satisfied by an invention to be patentable?

An invention must satisfy the following three conditions of :
(i) Novelty (ii) Inventiveness (Non-obviousness) (iii) Usefulness
Novelty : An invention will be considered novel if it does not form a part of the global state of the art. Information appearing in magazines, technical journals, books, newspapers etc. constitute the state of the art. Oral description of the invention in a seminar/conference can also spoil novelty. Novelty is assessed in a global context. An invention will cease to be novel if it has been disclosed in the public through any type of publications anywhere in the world before filing a patent application in respect of the invention. Prior use of the invention in the country of interest before the filing date can also destroy the novelty. Novelty is determined through extensive literature and patent searches. It should be realized that patent search is essential and critical for ascertaining novelty as most of the information reported in patent documents does not get published any where else.
Inventiveness (Non-obviousness) : A patent application involves an inventive step if the proposed invention is not obvious to a person skilled in the art i.e., skilled in the subject matter of the patent application. The prior art should not point towards the invention implying that the practitioner of the subject matter could not have thought about the invention prior to filing of the patent application. Inventiveness cannot be decided on the material contained in unpublished patents. The complexity or the simplicity of an inventive step does not have any bearing on the grant of a patent. In other words a very simple invention can qualify for a patent. If there is an inventive step between the proposed patent and the prior art at that point of time, then an invention has taken place. A mere 'scintilla' of invention is sufficient to found a valid patent.
Usefulness: An invention must possess utility for the grant of patent No valid patent can be granted for an invention devoid of utility.

How is invention defined in the Indian Patent Act which can qualify for grant of a patent?
Invention means a new product or process involving an inventive step and capable of Industrial application.

Inventive step means a feature that makes the invention not obvious to a person skilled in the art.
Capable of Industrial application means that the invention is capable of being made or used in an industry.
However, inventions claiming substance intended for use, or capable of being used, as food or as medicine or drug or relating to substances prepared or produced by chemical processes (including alloys, optical glass, semiconductors and inter-metallic compounds) are not patentable. Only process claims are allowed in such cases.
Meaning of chemical process would also include the biochemical, biotechnological and microbiological process.

What are the types of inventions which are not patentable in India?
An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not qualify for a patent under the following situations:
i. an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
ii. an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human , animal or plant life or health or to the environment;
iii. the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
iv. the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
v. a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
vi. the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
vii. a method of agriculture or horticulture;
viii. any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
ix. plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
x. mathematical or business method or a computer program per se algorithms
xi. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
xii. a mere scheme or rule or method of performing mental act or method of playing game;
xiii. a presentation of information
xiv. topography of integrated circuits
xv. an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components
xvi. inventions relating to atomic energy

When should an application for a patent be filed?
Filing of an application for a patent should be completed at the earliest possible date and should not be delayed. An application filed with provisional specification, disclosing the essence of the nature of the invention helps to register the priority by the applicant. Delay in filing an application may entail some risks like (i) other inventors might forestall the first inventor by applying for a patent for the said invention (ii) there may be either an inadvertent publication of the invention by the inventor himself/herself or by others independently of him/her.

Can a published or disclosed invention be patented?
No, publication of an invention in any form by the inventor before filing of a patent application would disqualify the invention to be patentable. Hence, inventors should not disclose their inventions before filing the patent application. The invention should be considered for publication after a patent application has been filed. Thus, it can be seen that t11ere is no contradiction between publishing an inventive work and filing of patent application in respect of the invention.

What is considered as the date of patent?
The date of patent is the date of filing the application for patent (whether provisional or complete). The term of the patent is counted from this date.

What is the term of a patent in the Indian system?
Term of the patent is 20 years from the date of filling for all types of inventions

How does one keep a patent in force for the full patent term?
A patent has to be maintained by paying the maintenance fees every year. If the maintenance fees is not paid, the patent will cease to remain in force and the invention becomes open to public. Anyone can then utilize the patent without the danger of infringing the patent.

What are the essential patent documents to be generated and submitted by a potential patentee?
There are two types of patent documents usually known as patent specification, namely
(i) Provisional Specification and (ii) Complete Specification

Provisional Specification
A provisional specification is usually filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention. Although, a patent application accompanied with provisional specification does not confer any legal patent rights to the applicants, it is, however, a very important document to establish the earliest ownership of an invention. The provisional specification is a permanent and independent scientific cum legal document and no amendment is allowed in this. No patent is granted on the basis of a provisional specification. It has to be a followed by a complete specification for obtaining a patent for the said invention. Complete specification must be submitted within 12 months of filing the provisional specification. This period can be extended by 3 months. It is not necessary to file an application with provisional specification before the complete specification. An application with complete specification can be filed right at the first instance.

Complete Specification
Submission of complete specification is necessary to obtain a patent The contents of a complete specification would include the following
1. Title of the invention.
2. Field to which the invention belongs.
3. Background of the invention including prior art giving drawbacks of the known inventions & practices.
4. Complete description of the invention along with experimental results.
5. Drawings etc. essential for understanding the invention.
6. Claims, which are statements, related to the invention on which legal proprietorship is being sought. Therefore the claims have to be drafted very carefully.

What are the criteria for naming inventors in an application for patent?
The naming of inventors is normally decided on the basis of the following criteria:
i. All persons who contribute towards development of patentable features of an invention should be named inventor(s).
ii. All persons, who have made intellectual contribution in achieving the final results of the research work leading to a patent, should be named inventor(s).
iii. A person who has not contributed intellectually in the development of an invention is not entitled to be included as an inventor.
iv. A person who provides ideas needed to produce the ‘germs of the invention’ need not himself / herself carry out the experiments, constructs the apparatus with his/her own hands or make the drawings himself/herself. The person may take the help or others. Such person who have helped in conducting the experiments, constructing apparatus or making the drawings or models without providing any intellectual inputs are not entitled to be named inventors.

Quite often difficulties are experienced in deciding the names of inventors. To avoid such a situation, it is very essential that all scientists engaged in research should keep factual, clear and accurate recorded of daily work done by them in the form of diary. The pages in the diary should be consecutively numbered and the entries made be signed both by the scientists and the concerned leader.

What is the nature of information needed while consulting a patent attorney?
As an inventor one should share the complete invention with a patent attorney in the same manner as a patient confides in a doctor. A s a doctor may not be able to write a correct prescription without knowing the details of the disease/problem, a patent attorney may not be able to draft a good specification in the absence of details about the invention. Following points should be kept in mind while discussing with the attorney:
i. Provide complete details of the invention including failures, if any, on the way to the invention. Do not feel bad if attorney asks you questions like where did you get the idea from or did you copy the idea from somewhere or are you keeping other inventors working with you on the inventorship or have you published the invention or disclosed it in a seminar/conference or have you displayed the invention in an exhibition? A patent document is a techno-legal document; hence all precautions are to be taken right from the first step. Provides right answers and you may even show your laboratory note book/log book to the attorney. This will help the attorney / agent to explain the inventive step in a precise manner and draft a good specification and associated claims.
ii. Explain the central theme of the invention and novelty, inventiveness and utility of the invention.
iii. Share the entire prior art documents in your possession with the attorney.
iv. If you have developed an improved version of your competitor's product/process, admit it and be totally honest. This would help the attorney in drafting precise claims and avoid excessive claims, which might be struck down immediately or at a later date.
v. A detailed description of the best way of putting the invention into practical use, results of your tests and trials, etc., including all failures and defects should be given to the attorney.
vi. Alternative ways of using the invention, and the substitutes or parts of it i.e., will one chemical compound do as well as any other in the process?
vii. It may be worth drafting the patent widely enough to cover less satisfactory alternatives as well so as to prevent rivals from marketing a less satisfactory competing product which because of its defects might bring the whole genre of product into disrepute or which may be cheap.
viii. Both after an initial search and during the course of the filing and grant of a patent application, it is important to respond quickly and accurately to queries which the patent attorney may have. Thus the client should keep the patent attorney informed of any new developments in the field of invention carried by the patentee or some one else.

What is opposition under the Indian Patents Act 1970?
After the Patent Office has examined an application and found it in order for grant of a patent, it publishes the title pf the invention, name of the inventor(s) and the applicant(s), abstract of the invention, drawings and claims in the Gazette of India, Part III Section 2, for interested parties to oppose the grant of the patent. An application for opposition may be filed at the concerned Patent Office branch within four months of the date of the issue of the concerned gazette. An extension of one month is possible; a request for extension has to be made within the first four months. Typed or photocopies of the specification together with photocopies of the drawings, if any, can be obtained from the Patent Office, Calcutta or the concerned branch office on payment of the prescribed fees. One would like to oppose if the idea of the accepted application infringes upon one's invention/existing patent, if the coverage of the proposed patent is very wide which may be detrimental to one's research or if the idea is not novel and so on.

What is the cost of filing a patent application in India?
The Government fee for filing a patent application (complete/provisional) in India is Rs.750/- for individuals and Rs.3, 000/- for legal entities. An applicant is now required to make a request for examining the patent application within 48 months of filing of the application. In case of applications filed before May 20, 2003 examination request has to be made within the 48 months of filing of the application or within 12 months from May 20, 2003 whichever is shorter. An individual has to pay Rs.1,000/- as examination fee and Rs.3,000/- for legal entities. A sealing fee of Rs.1,500/- for individuals and Rs.5,000/- for legal entities has to be paid at the time of grant (sealing) of patent.

What is the distinction between a patented invention and know how?
The law does not require that the information disclosed in the patent specification be sufficient for commercial exploitation of the invention. Thus, patent usually will not disclose sufficient information for commercialization. Know how on the other hand, covers all information necessary to commercialize the invention e.g. setting up a production plant. Such information would include, for example, details of the production methods, the design drawings etc. It is this know how which is traded while transferring technology. Know how is always kept as a trade secret and not shared with public. Know how is not protected through patents as most of it is non-patentable matter and one does not take patent on the remaining parts to avoid public disclosure. A know how developed around an existing patent and commercialized subsequently may be an infringement of the patent unless the patentee has agreed to commercialization on mutually agreed terms.

Is a patent granted in one country enforceable in other countries?
No. There is nothing like a global patent or a world patent. Patent rights are essentially territorial in nature and are protected only in a country (or countries) which, has (have) granted these rights. In other words,-for obtaining patent rights in different countries one has to submit patent applications in all the countries of interest for grant of patents. This would entail payment of official fees and associated expenses, like the attorney fees, essential for obtaining patent rights in each country. However, there are some regional systems where by filing one application one could simultaneously obtain patents in the member countries of a regional system; European Patent Office is an example of a similar system.

Does grant of a patent in one country affect its grant or refusal in another country?
Each country is free to grant or refuse a patent on the bases of scrutiny by its patent office. This means that granting a patent in one country of the Union does not force other countries to grant the patent for the same invention. Also, the refusal of the patent in one country does not mean that it will be terminated in all the countries.

What is 'mail box' provision?
TRIPS requires that countries, not providing product patents in respect of pharmaceuticals and chemical inventions have to put in a mechanism for accepting product patent applications w.e.f. 1 January 1995. Such applications will only be examined for grant of patents, after suitable amendments in the national patent law have been made. This mechanism of accepting product patent applications is called the "mail box" mechanism.

What is an EMR?
TRIPS requires that member countries of the WTO not having provision in their laws for granting product patents in respect of drugs and agrochemical, must introduce Exclusive Marketing Rights (EMR) for such products, if the following criteria are satisfied:
1. A patent application covering the new drug or agrochemical should have been filed in any of the WTO member countries after 1 January, 1995;
2. A patent on the product should have been obtained in any of the member countries (which provides for product patents in drugs and agrochemical) after 1 January 1995;
3. Marketing approvals for the product should have been obtained in any of the member countries;
4. A patent application covering the product should have been filed after 1 January 1995 in the country where the EMR is sought;
5. The applicant should apply seeking an EMR by making use of the prescribed form and paying requisite fee.
EMR is only a right for exclusive marketing of the product and is quite different from a patent right. It is valid up to a maximum period of 5 years or until the time the product patent laws come into effect.

Does India have provision for grant of EMR?
Yes. The necessary amendment to: the Patents Act, 1970 came into force on 26 March 1999. The provision is applicable with retrospective effect from 1 January 1995.

What is industrial property?
Industrial property includes:
(a) Patents (b) Utility models (c) Industrial designs (d) Trademarks, service marks and trade names (e) Indication of source or appellations of origin (this is same as the geographical indications adopted in TRIPS);

What is the Paris Convention?
The Paris Convention is an international convention for promoting trade among the member countries, devised to facilitate protection of industrial property simultaneously in the member countries without any loss in the priority date. All the member countries provide national treatment to all the applications from the other member countries for protection of industrial property rights. The Convention was first signed in 1883. Since then, the Convention has been revised several times, in 1900 at Brussels, in 1911 at Washington, in 1925 at the Hague, in 1934 at London, in 1958 at Lisbon and in 1967 at Stockholm. The last amendment took place in 1979. mdia became a member of the Paris Convention on December 7, 1998. (Readers may note the use of the phrase 'Industrial Property' and not Intellectual Property).

What are the principal features of the Paris Convention?
The principal features of the Paris Convention have been listed below
• National treatment
• Right of priority
• Independence of patents
• Parallel importation
• Protection against false indications and unfair competition

What is the meaning of national treatment under the Paris Convention?
This is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of your country and nationals of the other countries for the purpose of grant, and protection of industrial property in your country. Imagine that a national of country X applies for grant of a patent in India. According to the Paris Convention, the Indian Patent Office shall apply the same norms and rules, to the applicant from X, as applicable to an Indian applicant, for granting a patent. Similarly the applicant from X shall have the same protection after grant and identical legal remedies against any infringement shall be available to the applicant provided the conditions and formalities imposed upon Indians are complied with. No requirement as to domicile or establishment in the country where protection is claimed, may. be imposed.

What do you understand by the right of priority and what is its significance?
The date from which patent right is deemed to start is usually the date of filing of complete specification. To obtain rights in other member countries, the application must be filed on the same day in other member countries if it is desired to have the rights started from the same day. However, there are practical difficulties in synchronizing the activities. For facilitating simultaneous protection in member countries, the Convention provides that within 12 months of national filing, if patent applications are filed in those member countries, the patents, if granted in member countries, will be effective from the date of national filing. This right is known as the right of priority. In other words you maintain the priority or the same date of filing in all the member countries and no one else in those countries can obtain the patent rights on a similar/identical invention from the same or a later date.
In case the applicant after a second look at the patent application finds that the patent contains more than one invention or on his own accord wishes to divide the application, he can claim the initial date of priority for subsequent patent applications. The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.
Priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements.

What is implied by importation in relation to working of a patent under the Convention?
Importation is considered as working of patent, provided the patented product is manufactured in a member country and is imported into another member country which has also granted a patent on the same invention to the same applicant. Imagine that a product X has been patented in two member countries A and B. The product X is then manufactured in country A and imported into the country B. This product X shall enjoy the same patent protection in the country B even though it has been manufactured in the country A. This would also be considered as if the patent has been worked in country B.

Is there a provision for compulsory license in the Paris Convention?
Yes, each member country shall have the right to provide for the grant of compulsory licenses to prevent the abuses resulting from the exclusive rights conferred by the patent. Compulsory licenses for failure to work or insufficient working of the invention may not be requested before the period of time of non-working or insufficient working has elapsed. This time limit is four years from the date of filing of the patent application or three years from the date of the grant. Such licenses will be a non-exclusive and non-transferable one.

Is there any relationship between the Paris Convention and the TRIPS Agreement?
It has been made mandatory for the member countries of the TRIPS Agreement to comply with the Article 1 to 12 and Article 19 of the Paris Convention.

What are the other advantages of joining the Paris Convention?
There are a number of international conventions and treaties, which are open only to the members of the Paris Convention. Some of these are:
• Patent Cooperation Treaty (PCT)
• Budapest Treaty (for deposition of microorganisms)UPOV (for protection of new varieties of plants)
• Madrid Agreement (for repression of false or deceptive indications of source on goods)
• Madrid Protocol (concerning registration of marks)
• Hague Agreement (concerning deposits of industrial designs)

What is the Budapest Treaty?
This is an international convention governing the recognition of deposits in officially approved culture collections for the purpose of patent applications in any country that is a party to it. Because of the difficulties and on occasion of virtual impossibility of reproducing a microorganism from a description of it in a patent specification, it is essential to deposit a strain in a culture collection centre for testing and examination by others. The Treaty was signed in Budapest in 1973 and later on amended in 1980. India has become a member of this Treaty, with effect from December 17, 2001.

Are there any differences in the filing of patent applications in respect of microbiological inventions and other inventions?
An inventor is required to deposit the strain of a microorganism in a recognized depository which assigns a registration number to the deposited microorganism. This number needs to be quoted in the patent application. Obviously a strain of microorganism is required to be deposited before filing a patent application. It may be observed that this mechanism obviates the need of describing a microorganism in the patent application. Further, samples of strains can be obtained from the depository for further working on the patent. There are many international depositories in many countries, which are recognized under the Budapest Treaty.

What is the system for protecting microbiological inventions and microorganisms?
The Indian Patent Act has no specific provision for patenting of microorganisms and microbiological processes. However, as a matter of practice microorganisms per se are not patentable in India. (However, a recent decision of the Kolkata High Court has held that microbiological processes are patentable in India). In order to meet the obligation under TRIPS. India is required to introduce a patenting of microorganisms. Draft laws in this regards have been formulated. It may, however, be noted that many countries allow both process and product patents in regard to microbiological inventions and microorganism per se. all such countries allow patenting of genetically modified microorganisms but a few also allow patenting of naturally occurring microorganisms if isolated from nature for the first time and if other conditions of patentability are satisfied.

What is patent cooperation treaty (PCT)?
The patent cooperation treaty (PCT) is a multilateral treaty entered into force in 1978. Through PCT, an inventor of a member country (Contracting state of PCT can simultaneously obtain priority for his/her Invention in all/ any of the member countries, without having to file a separate application in the countries of interest , by designating them in the PCT application .India joined the PCT on December 7, 1998.

Who coordinates the activities of PCT ?
All activities related to PCT are coordinated by the World Intellectual Property Organization (WIPO) situated in Geneva.

What is the need for PCT?
In order to protect your invention in other countries, you are required to file an independent patent application in each country of interest; in some cases , within a stipulated time to obtain priority in these countries .This would entail a large investment, within a short time, to meet costs towards filing fees, translation, attorney charges etc. In addition you are making an assumption which, due to the short time available for making the decision on whether to file a patent application in a country or not , may not be well founded .
Inventors of Contracting States of PCT on the other hand can simultaneously obtain priority for their inventions without having to file separate application in the countries of interest ; thus saving the initial investments towards filing fees, translation etc. In addition the system provides much longer time for filing patent application in member countries . The time available under Paris Convention for securing priority in other countries is 12 months from the date of initial filing. Under the PCT, the time available could be as much as minimum 20 and maximum 31 months. Further, an inventor is also benefited by the search report prepared under the PCT system to be sure that the claimed invention is novel. The inventor could also opt for preliminary examination before filing in other countries to be doubly sure about the patentability of the invention .

How are patent applications under PCT handled?
The patent office or nay other office designated by each contracting state becomes a receiving office for receiving patent applications These applications are referred to International Searching Authorities (ISA) which usually the patent offices, appointed to carry out the patent search on a global basis. In case the receiving office is also an ISA, a separate referral is not required . There is also a provision to get a patent application examined by international preliminary Examining Authorities which, in most cases are ISA.

Which is the appropriate office in India in relation to international applications?
An international application can be filed in any of the Branch Offices of the Patent Office located at New Delhi, Chennai, Mumbai and Kolkata (Head Office). Any of these Offices shall function as receiving office, designated office and elected office for the purpose of international applications filed under the Treaty.
An international application shall be filed in the Patent Office which would process the application in accordance with these rules and the provision under the PCT.
Will an international application designating India be treated as an application for grant of patent under the 1970 Act?
Yes, an international application designating India shall be treated as an application for patent under the Act.

TRADE MARK
What is a trade mark?

A trade mark (popularly known as brand name) in laymans language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

The legal requirements to register a trade mark under the Act are:

? 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 for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

How to select a trade mark?

• If it is a word it should be easy to speak, spell and remember.
• The best trade marks are invented words or coined words.
• Please avoid selection of a geographical name. No one can have monopoly right on it.
• Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc)
• It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.

What is the function of a trade mark?

Under modern business condition a trade mark performs four functions

? It identifies the goods / or services and its origin.
? It guarantees its unchanged quality
? It advertises the goods/services
? It creates an image for the goods/ services.

Who can apply for a trade mark and how ?

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing in prescribed manner for registration. The application should contain the trade mark, the goods/services, name and address of applicant and agent (if any) with power of attorney , period of use of the mark and signature. The application should be in English or Hindi. It should be filed at th appropriate office.

How to apply for a trade mark in respect of particular goods or services?

It is provided under the Trade Marks Act,1999 that goods and services are classified according to the International Classification of goods and services. Currently schedule IV of the Act provides a summary of list of such goods and services falling in different classes which is merely indicative. The Registrar is the final authority in the determination of the class in which particular goods or services fall. The Schedule IV of the Act is annexed at the end of this questionnaire on trade marks. For detailed description of other goods and services please refer to the International Classification published by WIPO or contact the local office for assistance.

What are different types of trade marks available for adoption?

- Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
- An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
- Letters or numerals or any combination thereof.
- The right to proprietorship of a trade mark may be acquired by either registration under the Act or by use in relation to particular goods or service.
- Devices, including fancy devices or symbols
- Monograms
- Combination of colors or even a single color in combination with a word or device
- Shape of goods or their packaging
- Marks constituting a 3- dimensional sign.
- Sound marks when represented in conventional notation or described in words by being graphically represented.

What purpose the trade mark system serves?

? It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity.
? It guarantees the identity of the origin of goods and services.
? It stimulates further purchase.
? It serves as a badge of loyalty and affiliation.
? It may enable consumer to make a life style or fashion statement.

Who benefits from a trade mark?

The Regd.Proprietor: The Regd.Proprietor of a trade mark can stop other traders from unlawfully using his trade mark, sue for damages and secure destruction of infringing goods and or labels.

The Government: The Trade Marks Registry is expected to earn a revenue of nearly Rs.40 crores during the current year and which is perpetually on the rise.

The Legal professionals: The Trade Marks Registration system is driven by professionals and legal and para legal advisors (Agents) who act for the clients in the processing of the trade marks application.

The Purchaser and ultimately Consumers of trade marks goods and services.

What are the benefits of registering a trade mark?

The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other.

What are the sources of trade mark laws?

(1) The national statue i.e., the Trade Marks Act, 1999 and rules.
(2) International multilateral convention.
(3) National bilateral treaty.
(4) Regional treaty.
(5) Decision of the courts.
(6) Office practice and rulings
(7) Decision of Intellectual Property Appellate Board.
(8) Text books written by academician and professional experts.

What does the Register of trade mark contain?

The register of trade mark currently maintained in electronic form contains interalia the trade mark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.

Can any correction be made in the application or register?

Yes. But the basic principle is that the trade mark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.

Can a registered trade mark be removed from the register?

It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered trade mark

COPYRIGHT
What is copyright?
Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. In fact, it is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work.

Why should copyright be protected?
Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby protecting and rewarding creativity. Creativity being the keystone of progress, no civilized society can afford to ignore the basic requirement of encouraging the same. Economic and social development of a society is dependent on creativity. The protection provided by copyright to the efforts of writers, artists, designers, dramatists, musicians, architects and producers of sound recordings, cinematograph films and computer software, creates an atmosphere conducive to creativity, which induces them to create more and motivates others to create.

Is it not true that strict application of the principle of protection of copyright hampers economic and cultural development of the society?
Yes. If copyright protection is applied rigidly, it can hamper progress of the society. However, copyright laws are enacted with necessary exceptions and limitations to ensure that a balance is maintained between the interests of the creators and of the community.
To strike an appropriate and viable balance between the rights of the copyright owners and the interests of the society as a whole, there are exceptions in the law. Many types of exploitation of work which are for social purposes such as education, religious ceremonies, and so on are exempted from the operation of the rights granted in the Act. Copyright in a work is considered as infringed only if a substantial part is made use of unauthorizedly. What is ‘substantial’ varies from case to case. More often than not, it is a matter of quality rather than quantity. For example, if a lyricist copy a very catching phrase from another lyricist’s song, there is likely to be infringement even if that phrase is very short.

Does the law allow any use of a work without permission of the owner of the copyright, and, if so, which are they?
Subject to certain conditions, a fair deal for research, study, criticism, review and news reporting, as well as use of works in library and schools and in the legislatures, is permitted without specific permission of the copyright owners. In order to protect the interests of users, some exemptions have been prescribed in respect of specific uses of works enjoying copyright. Some of the exemptions are the uses of the work
i. for the purpose of research or private study,
ii. for criticism or review,
iii. for reporting current events,
iv. in connection with judicial proceeding,
v. performance by an amateur club or society if the performance is given to a non-paying audience, and
vi. the making of sound recordings of literary, dramatic or musical works under certain conditions.

What is the scope of protection in the Copyright Act,1957 ?
The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized uses. Unlike the case with patents, copyright protects the expressions and not the ideas. There is no copyright in an idea.

Does copyright apply to titles and names ?
Copyright does not ordinarily protect titles by themselves or names, short word combinations, slogans, short phrases, methods, plots or factual information. Copyright does not protect ideas or concepts. To get the protection of copyright a work must be original.

WORK
What is a work?
A work means any of the following , namely, a literary, dramatic, musical or artistic work, a cinematograph film, or a sound recording.

What is a work of joint authorship?
"Work of joint authorship" means a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors.

What are the classes of works for which copyrights protection is available in India?
Copyright subsists throughout India in the following classes of works:
o Original literary, dramatic, musical and artistic works;
o Cinematograph films; and
o Sound recordings.

What is an artistic work?
An artistic work means-
o a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;
o a work of architecture; and
o any other work of artistic craftsmanship.

What is a musical work?
"Musical work" means a work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music. A musical work need not be written down to enjoy copyright protection.

What is a sound recording?
"Sound recording" means a recording of sounds from which sounds may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced. A phonogram and a CD-ROM are sound recordings.

What is a cinematograph film?
"Cinematograph film" means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording and "cinematograph" shall be construed as including any work produced by any process analogous to cinematography including video films.

What is a government work?
"Government work" means a work which is made or published by or under the direction or control of
o the government or any department of the government
o any legislature in India, and
o any court, tribunal or other judicial authority in India.
What is an Indian work?
"Indian work" means a literary, dramatic or musical work,
o the author of which is a citizen of India; or
o which is first published in India; or
o the author of which, in the case of an unpublished work is, at the time of the making of the work, a citizen of India.

AUTHORSHIP AND OWNERSHIP
Whose rights are protected by copyright?
Copyright protects the rights of authors, i.e., creators of intellectual property in the form of literary, musical, dramatic and artistic works and cinematograph films and sound recordings.

Who is the first owner of copyright in a work?
Ordinarily the author is the first owner of copyright in a work.

Who is an author?
• In the case of a literary or dramatic work the author, i.e., the person who creates the work.
• In the case of a musical work, the composer.
• In the case of a cinematograph film, the producer.
• In the case of a sound recording, the producer.
• In the case of a photograph, the photographer.
• In the case of a computer generated work, the person who causes the work to be created.

Who all have rights in a musical sound recording?
There are many right holders in a musical sound recording. For example, the lyricist who wrote the lyrics, the composer who set the music, the singer who sang the song, the musician (s) who performed the background music, and the person or company who produced the sound recording.

Is it necessary to obtain any licence or permission to use a musical sound recording for public performance?
A sound recording generally comprises various rights. It is necessary to obtain the licences from each and every right owner in the sound recording. This would ,inter alia, include the producer of the sound recording, the lyricist who wrote the lyrics, and the musician who composed the music.

Who is the owner of copyright in a government work?
In the case of a government work, government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein.

Who is the owner of copyright in the work of a public undertaking?
In the case of a work made or first published by or under the direction or control of any public undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein.

Who is the owner of copyright in works by journalists during the course of their employment?
In the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work.

Who is the owner of a work produced during the course of the author’s employment?
In the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein.

Who is the owner of the copyright in the case of a work produced for valuable consideration at the instance of another person?
In the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein.

Is copyright assignable?
Yes. The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copyright either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof.

What is the mode of assigning copyright?
It shall be in writing signed by the assignor or by his duly authorised agent. It shall identify the specific works and specify the rights assigned and the duration and territorial extent of such assignment. It shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.

Does an assignment lapse automatically?
Where the assignee does not exercise the rights assigned to him within a period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of the said period unless otherwise specified in the assignment.

What will be the period of assignment if not specifically stated in the assignments?
If the period of assignment is not stated, it shall be deemed to be five years from the date of assignment.

What will be the territorial extent of the assignment if not specified in the assignment?
If the territorial extent of assignment of the rights is not specified, it shall be presumed to extend within the whole of India.

Can an author relinquish copyright and, if so, how?
The author of a work may relinquish all or any of the rights comprising the copyright in the work by giving notice in the prescribed form to the Registrar of Copyrights.

DIFFERENT RIGHTS
Are copyrights same for all classes of works?
No. The rights vary according to the class of work.
What are the rights in the case of a literary work?
In the case of a literary work (except computer programme), copyright means the exclusive right
• To reproduce the work
• To issue copies of the work to the public
• To perform the work in public
• To communicate the work to the public.
• To make cinematograph film or sound recording in respect of the work
• To make any translation of the work
• To make any adaptation of the work.

Is translation of an original work also protected by copyright?
Yes. All the rights of the original work apply to a translation also.

Are computer programmes protected under Copyright Act?
Yes. Computer programmes are protected under the Copyright Act. They are treated as literary works.

Are there any special rights in computer programmes?
Yes. In addition to all the rights applicable to a literary work, owner of the copyright in a computer programme enjoys the rights to sell or give on hire or offer for sale or hire, regardless of whether such a copy has been sold or given on hire on earlier occasion.

What are the rights in a dramatic work?
In the case of a dramatic work, copyright means the exclusive right
o To reproduce the work
o To communicate the work to the public or perform the work in public
o To issue copies of the work to the public
o To include the work in any cinematograph film
o To make any adaptation of the work
o To make translation of the work.

What are the rights in an artistic work?
In the case of an artistic work, copyright means the exclusive right
o To reproduce the work
o To communicate the work to the public
o To issue copies of the work to the public
o To include the work in any cinematograph film
o To make any adaptation of the work.

What are the rights in a musical work?
In the case of a musical work, copyright means the exclusive right
o To reproduce the work
o To issue copies of the work to the public
o To perform the work in public
o To communicate the work to the public
o To make cinematograph film or sound recording in respect of the work
o To make any translation of the work
o To make any adaptation of the work.

What are the rights in a cinematograph film?

In the case of a cinematograph film, copyright means the exclusive right
o To make a copy of the film including a photograph of any image forming part thereof
o To sell or give on hire or offer for sale or hire a copy of the film
o To communicate the cinematograph film to the public.
What are the rights in a sound recording?
o To make any other sound recording embodying it
o To sell or give on hire, or offer for sale or hire, any copy of the sound recording
o To communicate the sound recording to the public.

What is the right of reproduction?
The right of reproduction commonly means that no person shall make one or more copies of a work or of a substantial part of it in any material form including sound and film recording without the permission of the copyright owner. The most common kind of reproduction is printing an edition of a work. Reproduction occurs in storing of a work in the computer memory.

What is the right of communication to the public?
Communication to the public means making any work available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion. It is not necessary that any member of the public actually sees, hears or otherwise enjoys the work so made available. For example, a cable operator may transmit a cinematograph film, which no member of the public may see. Still it is a communication to the public. The fact that the work in question is accessible to the public is enough to say that the work is communicated to the public.

What is an adaptation?
Adaptation involves the preparation of a new work in the same or different form based upon an already existing work. The Copyright Act defines the following acts as adaptations:
a. Conversion of a dramatic work into a non dramatic work
b. Conversion of a literary or artistic work into a dramatic work
c. Re-arrangement of a literary or dramatic work
d. Depiction in a comic form or through pictures of a literary or dramatic work
e. Transcription of a musical work or any act involving re-arrangement or alteration of an existing work.
The making of a cinematograph film of a literary or dramatic or musical work is also an adaptation.

Can any person translate a work without the permission of the owner of the copyright in the work?
No. A person cannot translate a work enjoying copyright without the permission of the copyright owner.

Is there any copyright over news?
No. There is no copyright over news. However, there is copyright over the way in which a news item is reported.
REGISTRATION OF COPYRIGHT

Is it necessary to register a work to claim copyright?
No. Acquisition of copyright is automatic and it does not require any formality. However, certificate of registration of copyright and the entries made therein serve as prima facie evidence in a court of law with reference to dispute relating to ownership of copyright.

What is the procedure for registration of a work under the Copyright Act,1957?
Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright. However, facilities exist for having the work registered in the Register of Copyrights maintained in the Copyright Office of the Department of Education. The entries made in the Register of Copyrights serve as prima-facie evidence in the court of law. The Copyright Office has been set up to provide registration facilities to all types of works and is headed by a Registrar of Copyrights and is located at B.2/W.3, C.R. Barracks, Kasturba Gandhi Marg, New Delhi- 110 003, Tel: 338 4387

What are the guidelines regarding registration of a work under the Copyright Act?
Chapter VI of the Copyright Rules, 1956, as amended, sets out the procedure for the registration of a work. Copies of the Act and Rules can be obtained from the Manager of Publications, Publication Branch, Civil Lines, Delhi or his authorised dealers on payment. The procedure for registration is as follows:
a. Application for registration is to be made on Form IV ( Including Statement of Particulars and Statement of Further Particulars) as prescribed in the first schedule to the Rules ;
b. Separate applications should be made for registration of each work;
c. Each application should be accompanied by the requisite fee prescribed in the second schedule to the Rules ; and
d. The applications should be signed by the applicant or the advocate in whose favour a Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by the party and accepted by the advocate should also be enclosed.
Each and every column of the Statement of Particulars and Statement of Further Particulars should be replied specifically.
Both published and unpublished works can be registered. Copyright in works published before 21st January, 1958, i.e., before the Copyright Act, 1957 came in force, can also be registered, provided the works still enjoy copyright. Three copies of published work may be sent along with the application. If the work to be registered is unpublished, a copy of the manuscript has to be sent along with the application for affixing the stamp of the Copyright Office in proof of the work having been registered. In case two copies of the manuscript are sent, one copy of the same duly stamped will be returned, while the other will be retained, as far as possible, in the Copyright Office for record and will be kept confidential. It would also be open to the applicant to send only extracts from the unpublished work instead of the whole manuscript and ask for the return of the extracts after being stamped with the seal of the Copyright Office.
When a work has been registered as unpublished and subsequently it is published, the applicant may apply for changes in particulars entered in the Register of Copyright in Form V with prescribed fee.

TERM OF COPYRIGHT
Is copyright protected in perpetuity?
No. It is protected for a limited period of time.

What is the term of protection of copyright?
The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the year following the death of the author. In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organisations, the 60-year period is counted from the date of publication.

ADMINISTRATION OF COPYRIGHT LAW
Is there any advisory body on copyright matters?
Yes. The government has set up a Copyright Enforcement Advisory Council (CEAC). The present composition of the CEAC is at Appendix- II.

Are there special courts for copyright?
No. There are no special courts for copyright cases. The regular courts try these cases. There is a Copyright Board to adjudicate certain cases pertaining to copyright.

What are the powers of Copyright Board?
The Copyright Act provides for a quasi-judicial body called the Copyright Board consisting of a Chairman and two or more, but not exceeding fourteen, other members for adjudicating certain kinds of copyright cases. The Chairman of the Board is of the level of a judge of a High Court. The Board has the power to:
i. hear appeals against the orders of the Registrar of Copyright;
ii. hear applications for rectification of entries in the Register of Copyrights;
iii. adjudicate upon disputes on assignment of copyright;
iv. grant compulsory licences to publish or republish works (in certain circumstances);
v. grant compulsory licence to produce and publish a translation of a literary or dramatic work in any language after a period of seven years from the first publication of the work;
vi. hear and decide disputes as to whether a work has been published or about the date of publication or about the term of copyright of a work in another country;
vii. fix rates of royalties in respect of sound recordings under the cover-version provision; and
viii. fix the resale share right in original copies of a painting, a sculpture or a drawing and of original manuscripts of a literary or dramatic or musical work.

What are the rights of a performer in a cinematograph film?
Once a performer has consented for incorporation of his performance in a cinematograph film, he shall have no more performer’s rights to that performance.

Has the Registrar of Copyrights any judicial powers?
Yes. The Registrar of Copyrights has the powers of a civil court when trying a suit under the Code of Civil Procedure in respect of the following matters, namely,
a. summoning and enforcing the attendance of any person and examining him on oath;
b. requiring the discovery and production of any document;
c. receiving evidence on affidavit;
d. issuing commissions for the examination of witnesses or documents;
e. requisitioning any public record or copy thereof from any court or office;
f. any other matters which may be prescribed.

PERFORMER’S RIGHTS
Who is a performer?
As per the Indian Copyright Act, a "Performer" includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance.

What is a performance?
"Performance" in relation to performer’s right, means any visual or acoustic presentation made live by one or more performers.

What are the rights of a performer?
A performer has the following rights in his/her performance:
• Right to make a sound recording or visual recording of the performance;
• Right to reproduce the sound recording or visual recording of the performance;
• Right to broadcast the performance;
• Right to communicate the performance to the public otherwise than by broadcast.

What is the term of protection of performer’s rights?
Performer’s rights subsist for 25 years.
BROADCASTER’S RIGHTS

What is a broadcast?
"Broadcast" means communication to the public:
• by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds or visual images; or
• by wire.

What are the rights of a broadcasting organization?
The rights of a broadcasting organization with reference to a broadcast are :
• right to re-broadcast the broadcast;
• right to cause the broadcast to be heard or seen by the public on payment of any charges;
• right to make any sound recording or visual recording of the broadcast;
• right to make any reproduction of such sound recording or visual recording where such initial recording was done without licence or, where it was licensed, for any purpose not envisaged by such licence; and
• right to sell or hire to the public, or offer for such sale or hire, any sound recording or visual recording of the broadcast.
What is the term of protection of broadcaster’s rights?
The term of protection for broadcaster’s rights is 25 years.

FOREIGN WORKS
Is copyright of foreign works protected in India?
Yes. Copyrights of works of the countries mentioned in the International Copyright Order are protected in India, as if such works are Indian works.

Does copyright subsist in a foreign work?
Copyright of nationals of countries who are members of the Berne Convention for the Protection of Literary and Artistic Works, Universal Copyright Convention and the TRIPS Agreement are protected in India through the International Copyright Order.

Which are the international copyright conventions of which India is a member?
Copyright as provided by the Indian Copyright Act is valid only within the borders of the country. To secure protection to Indian works in foreign countries, India has become a member of the following international conventions on copyright and neighbouring (related) rights:
i. Berne Convention for the Protection of Literary and Artistic works.
ii. Universal Copyright Convention.
iii. Convention for the Protection of Producers of Phonograms against Unauthorised Duplication of their Phonograms.
iv. Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties.
v. Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

COLLECTIVE ADMINISTRATION OF COPYRIGHTS
What is collective administration of copyright?
Collective administration of copyright is a concept where management and protection of copyright in works are undertook by a society of owners of such works. Obviously no owner of copyright in any work can keep track of all the uses others make of his work. When he becomes a member of a national copyright society, that society, because of its organisational facilities and strength, is able to keep a better vigil over the uses made of that work throughout the country and collect due royalties from the users of those works. Because of the country’s membership in international conventions, the copyright societies are able to have reciprocal agreements with similar societies in other countries for collecting royalties for the uses of Indian works in those countries. From this it can automatically be inferred that it will be in the interests of copyright owners to join a collective administration organisation to ensure better protection to the copyright in their works and for reaping optimum economic benefits from their creations. Users of different types of works also find it easy to obtain licences for legal exploitation of the works in question, though the collective administrative society.

What is a copyright society?
A copyright society is a registered collective administration society. Such a society is formed by copyright owners. The minimum membership required for registration of a society is seven. Ordinarily, only one society is registered to do business in respect of the same class of work. A copyright society can issue or grant licences in respect of any work in which copyright subsists or in respect of any other right given by the Copyright Act.

What are the functions of a copyright society?
A copyright society may:
i. Issue licences in respect of the rights administered by the society.
ii. Collect fees in pursuance of such licences.
iii. Distribute such fees among owners of copyright after making
iv. deductions for the administrative expenses.
Are there any registered copyright societies in India?
Yes. The following are the registered copyright societies in India:
i. Society for Copyright Regulation of Indian Producers for Film and Television (SCRIPT) 135 Continental Building, Dr. A.B. Road, Worli, Mumbai 400 018, (for cinematograph and television films).
ii. The Indian Performing Right Society Limited (IPRS), 208, Golden Chambers, 2nd Floor, New Andheri Link Road, Andheri (W), Mumbai- 400 058 (for musical works).
iii. Phonographic Performance Limited (PPL) Flame Proof Equipment Building, B.39, Off New Link Road, Andheri (West), Mumbai 400 053 (for sound recordings).

Is it necessary to obtain licences from more than one society for exploitation of a work?
In many cases, it is necessary to obtain licences from more than one society. For example, playing of the sound recording of music may involve obtaining a licence from the IPRS for the public performance of the music as well as a licence from the PPL for playing the records, if these societies have the particular work in their repertoire.

MORAL RIGHTS
What are the moral rights of an author?
The author of a work has the right to claim authorship of the work and to restrain or claim damages in respect of any distortion, mutilation, modification or other acts in relation to the said work which is done before the expiration of the term of copyright if such distortion, mutilation, modification or other act would be prejudicial to his honour or reputation. Moral rights are available to the authors even after the economic rights are assigned.

Do the author’s moral rights remain after assignment of copyright?
Yes. The moral rights are independent of the author’s copyright and remains with him even after assignment of the copyright.

Will failure to display a work infringe the moral rights of an author?
No. Failure to display a work or to display it to the satisfaction of the author shall not be deemed to be an infringement of the moral rights of the author.

COPYRIGHT INFRINGEMENTS
Which are the common copyright infringements?
The following are some of the commonly known acts involving infringement of copyright:
i. Making infringing copies for sale or hire or selling or letting them for hire;
Permitting any place for the performance of works in public where such performance constitutes infringement of copyright;
ii. Distributing infringing copies for the purpose of trade or to such an extent so as to affect prejudicially the interest of the owner of copyright ;
iii. Public exhibition of infringing copies by way of trade; and
iv. Importation of infringing copies into India.

Has the owner of an auditorium or a hall any liability while renting out the place for communication to the public of a copyrighted work?
Yes. If a person permits for profit any place to be used for the communication of a work to the public, where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright, he will be deemed to have committed an offence under the Copyright Act.

What are the civil remedies for copyright infringement?
A copyright owner can take legal action against any person who infringes the copyright in the work. The copyright owner is entitled to remedies by way of injunctions, damages and accounts.

Which is the court having jurisdiction over civil remedies in copyright cases?
The District Court concerned has the jurisdiction in civil suits regarding copyright infringement.

What is the proof of the authorship of a work?
Where, in the case of a literary, dramatic, musical or artistic work, a name purporting to be that of the author or the publisher appears on copies of the work as published, or, in the case of an artistic work appeared on the work where it was made, the person whose name so appears or appeared shall, in any proceeding in respect of copyright in such work, be presumed, unless the contrary is proved, to be the author or the publisher of the work, as the case may be.

What are the rights of owner over infringing copies and equipments used for making infringing copies?
All infringing copies of any work in which copyright subsists and all plates used or intended to be used for the production of such infringing copies shall be deemed to be the property of the owner of the copyright.

What are the remedies in the case of groundless threat to legal proceedings?
Where any person claiming to be the owner of copyright in any work, by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of an alleged infringement of copyright, any person aggrieved thereby may institute a declaratory suit that the alleged infringement to which the threats related was not in fact an infringement of any legal rights of the person making such threats and may in any such suit –
a. obtain an injunction against the continuance of such threats; and
b. recover such damages, if any, as he has sustained by reason of such threats.

Is copyright infringement a criminal offence?
Yes. Any person who knowingly infringes or abets the infringement of the copyright in any work commits criminal offence under Section 63 of the Copyright Act.

What are the punishments for a criminal offence under the copyright law?
The minimum punishment for infringement of copyright is imprisonment for six months with the minimum fine of Rs. 50,000/-. In the case of a second and subsequent conviction the minimum punishment is imprisonment for one year and fine of Rs. one lakh.

Is copyright infringement a cognizable offence?
Any police officer, not below the rank of a sub inspector, may, if he is satisfied that an offence in respect of the infringement of copyright in any work has been, is being, or is likely to be committed, seize without warrant, all copies of the work and all plates used for the purpose of making infringing copies of the work, wherever found, and all copies and plates so seized shall, as soon as practicable be produced before a magistrate.

How are the seized infringing copies or plates disposed off?
The Court may order delivery to the owner of the copyright all such copies or plates.

Who is responsible for copyright offence committed by a company?
Every person who at the time the offence was committed was in charge of, and was responsible to the company for, the conduct of the business of the company, as well as the company shall be deemed to be guilty of such offence and shall be liable to be proceeded against.

Which court can try copyright offence cases?
No court inferior to that of a Metropolitan Magistrate or a Judicial Magistrate of the first class shall try any offence under the Copyright Act.

Can a police officer seize infringing goods without warrant?
Yes. A police officer not below the rank of sub inspector can seize without warrant all infringing copies of the work.

DESIGN

What is meant by ‘Design’ under the Designs Act, 2000?
‘Design’ means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle or construction or any thing which is in substance a mere mechanical device, and does not include any trade mark, as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.

What is meant by an article under the Designs Act, 2000 ?
Under the Designs Act, 2000 the "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;

What is the object of registration of Designs?
Object of the Designs Act to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bona fide reward by others applying it to their goods.

What are the essential requirements for the registration of ‘design’ under the Designs Act, 2000?
(1) The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to new subject matter. Practical example:
The known shape of "Kutub Minar" when applied to a cigarette holder the same is registrable. However, if the design for which application is made does not involve any real mental activity for conception, then registration may not be considered.
(2) The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Thus, designs of industrial plans, layouts and installations are not registrable under the Act.
(3) The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act.
(4) The features of the design in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state. (
5) Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device, would not be registrable design. For instance a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect there of is required to be inserted on its representation, provided there are other registrable features in the design.
(6) The design should not include any Trade Mark or property mark or artistic works as define under the Copyright Act, 1957.

Can stamps. Labels, tokens, cards, be considered an article for the purpose of registration of Design?
No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to an article should be integral with the article itself.

When does the Applicant for Registration of Design get the registration certificate?
When an application for registration of a Design is in order, it is accepted and registered and then a certificate of registration is issued to the applicant.
However, a separate request should be made to the Controller for obtaining a certified copy of the certificate for legal proceeding with requisite fee.

What is a Register of Designs?
The Register of Designs is a document maintained by The Patent Office, Kolkata as a statutory requirement. It contains the design number, class number, date of filing (in this country) and reciprocity date (if any), name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.

What is the effect of registration of design?
The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.

What is the duration of the registration of a design? Can it be extended?
The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date.
This initial period of registration may be extended by further period of 5 years on an application made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Copyright.
The proprietor of a design may make application for such extension even as soon as the design is registered.

What is the date of registration?
The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.

Is it possible to re-register a design in respect of which Copyright has expired?
No. A registered design, the copyright of which has expired cannot be re-registered.

How one can ascertain whether registration subsists in respect of any design?
For ascertaining whether registration subsists in respect of a design, a request should be made to the Patent Office, Kolkata. If the serial number of the registered design is known, the request should be made on Form 6, otherwise on Form 7, together with fee of Rs. 500/- or Rs. 1,000/- respectively. Each such request should be confined to information in respect of a single design.

What is piracy of a Design?
Piracy of a design means the application of a design or its imitation to any article belonging to class of articles in which the design has been registered for the purpose of sale or importation of such articles without the written consent of the registered proprietor. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.

What is the penalty for the piracy of a registered Design?
If anyone contravenes the copyright in a design he is liable for every offence to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for injunction against repetition of the same. Total sum recoverable shall not exceed Rs. 50,000/-as contract debt as stated in Section 22(2)(a). The suit for infringement, recovery of damage etc should not be filed in any court below the court of District Judge.

Is marking of an article compulsory in the cases of article to which a registered design has been applied?
Yes, it would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or unless the registered proprietor show that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

Can the Registration of a Design be cancelled ?
The registration of a design may be cancelled at any time after the registration of design on a petition for cancellation in form 8 with a fee of Rs. 1,500/-to the Controller of Designs on the following grounds:
1. That the design has been previously registered in India or
2. That it has been published in India or elsewhere prior to date of registration or
3. The design is not new or original or
4. Design is not registrable or
5. It is not a design under Clause (d) of Section 2.

Is it mandatory to make the article by industrial process or means before making an application for registration of design ?
No, design means a conception or suggestion or idea of a shape or pattern which can be applied to an article or intended to be applied by industrial process or means. Example- a new shape which can be applied to a pen thus capable of producing a new appearance of a pen on the visual appearance. It is not mandatory to produce the pen first and then make an application.

Why is it important for filing the application for registration of design at the earliest possible?
First-to-file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates only first application will be considered for registration of design.

Can the same applicant make an application for the same design again, if the prior application has been abandoned?
Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.

How to get information on registration of design?
After registration of designs the most relevant view(s) of the article along with other bibliographic data will be available in the official gazette, which is being published on every Saturday. However, such provision cannot be implemented at this stage due to insufficient infrastructure.

Whether it is possible to transfer the right of ownership ?
Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc. An application in form-10, with a fee of Rs. 500/- in respect of one design and Rs. 200/- for each additional design, for registration of the transfer documents is required to be made by the beneficiary to the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarized copy of the instrument to be registered is required to be enclosed with the application.

What is meant by priority claim?
India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states, latter application will be regarded as if it had been filed on the same day as the first application.

How it is possible to restore the lapse design due to non-payment of extension fee within prescribed time?
A registration of design will cease to be effective on non-payment of extension fee for further term of five years if the same is not paid before the expiry of original period of 10 years. However, new provision has been incorporated in the Act so that lapsed designs may be restored provided the following conditions are satisfied:
1. Application for restoration in Form-4 with fee of Rs. 1,000/- is filed within one year from the date of lapsed stating the ground for such non-payment of extension fee with sufficient reasons.
2. If the application for restoration is allowed the proprietor is required to pay the extension fee of Rs. 2,000/- and an additional fee of Rs. 1,000/- and finally the lapsed registration is restored.

Can the name, address of proprietor or address for service be altered in the register of design ?
Name of the registered proprietor, address or address for service can be altered in the register of designs provided this alteration is not made by way of change of ownership through conveyance i.e. deed of assignment, transmission, licence agreement or by any operation of law, for which reference may be made to the answer against Q. 21. Application in form-22 with a fee of Rs. 200/- should be filed to the Controller of Designs with all necessary documents in support of the application as required.

Are the registered designs open for public inspection ?
Yes, registered designs are open for public inspection only after publication in the official gazette on payment of prescribed fee of Rs. 500/- on a request in Form-5.
Can the application for registration of design be filed by the applicant himself only or through a professional person ?
The application for registration of design can be filed by the applicant himself or through a professional person (i.e. patent agent, legal practitioner). However, for the applicants not resident of India an agent residing in India has to be employed.

How does a registration of design stop other people from exploiting?
Once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it may please be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000.
The Patent Office does not become involved with any issue relating to enforcement of right accured by registration, similarly The Patent Office does not involve itself with any issue relating to exploitation or commercialization of the registered design.

What are the important criteria for determining a "set of article”?
If a group of articles meets the following requirements then that group of articles may be regarded as a set of articles under the Designs Act, 2000:
a. Ordinarily on sale or intended to be used together.
b. All having common design even though articles are different (same class).
c. Same general character.
Generally, an article having the same design and sold in different sizes is not considered as a set of articles. Practical example: "Tea set", "Pen set", "Knife set" etc.

What is an artistic work which are not subject matter of registration?
An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration which reads as follows:
"Artistic works" means: -
i. A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality.
ii. An work of architecture and
iii. Any other work of artistic craftsmanship.

What is meant by classification of goods mentioned in the Third Schedule ?
Ans.: In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. This classification has been made on the basis of Articles on which the design is applied.
Practical Example: If the design is applied to a toothbrush it will be classified under class 04-02. Similarly if the design is applied to a calculator, it will be classified in class 18-01. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible, but period of registration will be valid only upto period of previous registration of same design.

What is meant by Property mark as per the Indian Penal Code (Sec. 479)?
Ans.: A mark used for denoting that movable property belongs to a particular person is called a property mark. It means that marking any movable property or goods, or any case, package or receptacle containing goods; or using any case, package or receptacle, with any mark thereon.
Practical example: The mark used by the Indian Railway on their goods may be termed as a Property Mark for the purpose of easy identification of the owner.

Semiconductor Integrated Circuits Layout-Design (SICLD)
What is the aim of the Semiconductor Integrated Circuits Layout-Design (SICLD) Act, 2000?
The aim of the Semiconductor Integrated Circuits Layout-Design Act 2000 is to provide protection of Intellectual Property Right (IPR) in the area of Semiconductor Integrated Circuit Layout Designs and for matters connected therewith or incidental thereto.

What is the present status of the SICLD Act 2000?
The SICLD Act 2000 was Gazetted on the 4th September 2000 (Part II-Section I, No. 46). The rules under the Act have been Gazetted on December 11, 2001 ( Part II. Section 3 , No 615) . The Act is being implemented in stages. Sections 3 and 5 of the Act have been brought to force w.e.f. 1.5.2004. Setting up of a Registry with jurisdiction all over India for registering the IPR applications in Semiconductor Integrated Circuit Layout-Designs is in progress at the following address:
Semiconductor Integrated Circuits Layout-Design Registry (SICLDR)
Room No. 3014-3015
Electronics Niketan
Department of Information Technology
Ministry of Communications and Information Technology
6 CGO Complex,
Lodi Road New Delhi-110 003.
Ph: 24301405/905
Telefax: 24361464

What is meant by Semiconductor Integrated Circuit?
Semiconductor Integrated Circuit means a product having transistors and other circuitry elements, which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function.

What is meant by the Layout-Design of a Semiconductor Integrated Circuit?
The layout-design of a semiconductor integrated circuit means a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in semiconductor integrated circuits.

Where is the SICLD Act 2000 applicable?
This Act is applicable for IC Layout-Design IPR applications filed at the Registry in India .

What are the major provisions contained in the SICLD Act, 2000?

( a)Jurisdiction to the whole of India

(b)SICLD Registry as the front end - where the layout-designs of integrated circuit chips can be registered

(c)Defines layout-designs of integrated circuits which can be registered under the Act

(d)Defines duration of registration of layout-designs

(e)Defines rights conferred by registration

(f)Defines matters of infringement of layout-designs

(g)Defines procedures for assignment and transmission of registered layout- design

(h)Provides for registered users for using registered layout-design

(i)Provides for an Appellate Board as a forum of redressal Treatment of Royalties

(j)Provides for provisions in matter of national emergency or extreme public urgency

(k)Specifies penalty in case of :

(i)infringement of layout-design

(ii)falsely representing a layout-design as registered

(iii)improperly describing a place of business

(iv)falsification of entries in the register

(v)forfeiture of goods

(vi)offences by companies
(l)Provision for agents
(m)Reciprocity provision with other recognized countries

How can SICLD Act serve?

The main focus of SICLD Act is to provide for routes and mechanism for protection of IPR in Chip Layout Designs created and matters related to it as brought out under Q6.

What are the criteria for Registration of a Chip Layout Design?
A Layout design that is:
• Original
• Not commercially exploited anywhere in India or convention /reciprocal country
• Inherently distinctive
• Inherently capable of being capable of being distinguishable from any other registered layout design.

Can one protect/register under the SICLD Act any idea, procedure, process, method of operation, any information stored in the Integrated Circuits?

No, “ Only the Layout-Design ” - which essentially is the mask layout- floor planning of the integrated circuits can be registered under the SICLD Act 2000 and not the other information like any idea, procedure, process, system, programme stored in the integrated circuit, method of operation etc.

What are the rights conferred on the registered proprietor of the Layout-Design?

The SICLD Act empowers the registered proprietor of the layout-design an inherent right to use the layout-design, commercially exploit it and obtain relief in respect of any infringement.

Can a IC Layout-Design be jointly registered under the Act?

Yes, the Act allows two or more persons as joint proprietors of a layout-design. Refer Section 14 of Act .

Do all layout-designs of integrated circuits qualify for registration under SICLD Act, 2000?

No. Only the layout-designs created by the creators through own intellectual efforts and commonly not known to the creators at the time of creation; or inherently distinctive from other registered layout-designs or have not been commercially exploited in India; or a convention country for more than two (2) years can be registered under the Act. For full details refer Section 7 of Act.

What is meant by the commercial exploitation in relation to semiconductor integrated circuits Layout-Design?

Commercial exploitation implies acts such as sell, lease, offer or exhibit for sale or otherwise distribute such semiconductor integrated circuit for commercial purpose.

What is the duration of registration?

A period of 10 years counted from the date of filing an application for registration or from the date of first commercial exploitation anywhere in India or in any convention country or country specified by Government of India whichever is earlier. Refer sections 93 and 94.

Who can obtain protection of Layout-Designs under the SICLD Act, 2000?

Any person(s) who

a) is creator of a layout design and desires to register it

b) is an Indian national or national of country outside India which accords to citizens of India similar privileges as granted to its own citizens in respect of registration and protection of layout-designs and

c) has principal place of business in India or if he does not carry out business in India , has place of service in India

What makes this Act different from the other IPR Acts i.e. Patent Act, TradeMarks Act, Copyright Act etc.?
SICLD Act is a sui-generis (one of its kind) specifically meant for protecting IPR relating to Layout-Design (Topographies) of Semiconductor Integrated Circuit

What is Semiconductor Integrated Circuits Layout-Design Registry and where is it situated?
Semiconductor Integrated Circuits Layout-Design Registry (SICLDR) is the office where the applications on Layout-Designs of integrated circuits are filed for registration of created IPR. This Registry is located at Room no. 3014-3015, Electronics Niketan, Department of Information Technology, 6 CGO Complex, Lodi Road, New Delhi-110 003.

What are the powers of Registrar?
Section-72 of the Act be referred for full details. Major ones are :
a) All powers of a civil court for the purposes of

(i) receiving evidence, administering oaths, enforcing the attendance of
witnesses compelling the discovery and production of documents and

(ii) issuing commissions for examination the of witnesses.

b) The Registrar may make orders under section 96 of the Act as to costs he considers reasonable and any such order shall be executable as decree to a civil court

c) Examine applications filed and issue registration to the qualifying layout designs.

d) Supervise and approve all administrative and technical actions in matters of Registry

e) Refer disputes to the Appellate Board

f) Review his own decisions

g) May cancel the registration of registered user

Who decides that the Layout-Design is Original?
The Registrar will determine the originality of the design based on the information available with him as also through the mechanism of advertisement of the application for registration of the layout-design and or any input he may receive.

What are the steps in registration of a layout-design?
The registration of a layout-design involves the following steps:
a ) Filing of application by the creator of the layout-design at the SICLD Registry

b) the acceptance of application. Registrar may accept, refuse the application or accept with some modifications.

c) The accepted applications shall be advertised within 14 days of acceptance .

d) any opposition to the advertisement can be filed within 3 months from the date of advertisement.

e) the counter-statement to the notice of opposition, if any, to be filed within 2 months from the date of receipt of copy of notice of opposition from the Registrar

f) A copy of the counter statement provided to the opposing party

g) The Registrar may take hearing with the parities

h) The Registrar will decide on the originality of the layout-design and grant or reject the application for registration based on the conclusions reached by him.

i) Aggrieved party can appeal to Appellate Board or in its
absence Civil Court for relief on any ruling of the Registrar.

Which documents /material to be given at the Registry at the time of filing IPR application?
Registrar's office has drawn a list of items to be submitted along with the application. This is available at the Registrar's office. The list includes:
i) 3 sets of 2D/3D drawings which describe the layout-design applied for registration and or 3 sets of photographs of masks used for the fabrication of the semiconductor integrated circuit by using of the layout-design applied for registration, and or drawings which describe the pattern of such masks

ii) Semiconductor integrated circuit [where an integrated circuit has been made using layout-design applied for registration]
iii) any related information sought by Registry/Registrar.

What is Register of Layout-Designs?
Register of Layout-Designs is a register wherein all registered layout-designs with names, addresses and descriptions of the proprietor and other matters related to the registered layout-designs are listed in a central Register maintained at the Registry. This Register is open to public on payment of charges.

Who can rectify/correct the Register of Layout-Designs?
The Registrar and/or Layout-Design Appellate Board can rectify the Register of Layout-Designs.

In addition to this, Registrar can make the following corrections in the Register:
a) correct any error in the name, address or description of the registered proprietor of a layout-design, or any other entry relating to the layout-design

b ) enter any change in the name, address or description of the person who is registered as proprietor of a layout-design

c) cancel the entry of a layout-design on the register

d) correct any errors in entries

Does public has the access to the documents kept in the Registry?
Yes. The public can inspect the following documents on payment of related fees:
a) the Register of layout-designs and any document upon which any entry in the register is based
b) Notice of opposition to the registration of a layout-design application for rectification before the Registrar, counter statement thereto, and any affidavit or document filed by the parties in any proceedings before the Registrar

c) the indexes (as indicated in section 86 of the Act).

Who issues the Certificate of Registration?
The Registrar will issue the certificate of registration with the seal of Semiconductor Integrated Circuits Layout-Design Registry

Does registered user under the Act have rights of assignment or transmission of a registered layout-design?
No, the Act does not confer on a registered user of a layout-design any assignable or transmissible right to use thereof.

Who and under what conditions the registration of a registered user can be cancelled?

The Registrar can cancel the registration of the registered user of the registered layout design in the following cases:

a) On application in writing from the registered proprietor or the registered user for the purpose.

b) On application from a person that

the registered design is not being used in accordance with the agreement

the proprietor or the registered user misrepresented or failed to disclose some facts which accurately represented or disclosed would not have justified the registration as registered user

the circumstances have changed since the date of registration as registered user such that the changed circumstances would not have justified registration as registered user

the registration ought not to have been effected having regard to right vested in the application by virtue of a contract in the performance of which he is interested

c) the agreement between the registered proprietor and the registered user on the topographical dimensions is not being adhered to

d) if the layout-design is no longer registered.

What is a appropriate Appellate Board for appeals or grievance redressal?
Layout-Design Appellate Board (LDAB) or in its absence the Intellectual Property Appellate Board (IPAB) constituted under Trade Marks Act 1999 will be the Appellate forum. IPAB is located in Chennai.

What are the functions of the LDAB or IPAB?
The following are the broad functions of the Appellate Board:

a) Rectify the Register of Layout-Designs

b) Determine Royalty in case of use of the registered layout-design by a user who had no prior knowledge that the layout-design was registered i.e. innocent infringement

c) Cancel registration of a layout-design (as per section 41 of the Act)

d) Listen to the appeals made against the decisions of the Registrar and decide appropriately

e) Decide the cases referred to by the Registrar

f) Permit use of registered layout-design without the authorization of the registered proprietor (as per section 51 of the Act).
Appellate Board will have the same powers as vested in a civil court under the Code of Civil Procedure, 108 while trying a suit in respect of the following matters
i)receiving evidence

ii)issuing commissions for examination of witnesses

iii)requisitioning any public record etc.

Is there a provision in the SICLD Act 2000 to permit use of registered layout-design without the authorization of the registered proprietor of the layout-design i.e. the compulsory licensing permissible under the Act?
Yes. Act provides for the Layout-Design Appellate Board to authorize the Government or any person authorized by the Government, after giving notice to the registered proprietor of the layout-design, permit use of the registered layout-design, for a limited period subject to the following conditions (section 51 of the Act):
i)the use shall be for non-commercial public purposes or purposes related to national emergency or of extreme public urgency

ii)the use is to remedy the anti-competitive practices

iii)the use is non-assignable and non-transmissible

iV)the use is for supplying ICs or articles incorporating these ICs for domestic market of India only.

In the case of granting compulsory licensee under the Act, is the registered proprietor entitled for any relief and who decides?
.Yes, while granting a compulsory license the Appellate Board can determine the amount to be paid as royalty by the Government or the person authorized by the Government, as the case may be, to the registered proprietor of the layout-design.

Can the registered proprietor of the layout-design request the Appellate Board to review the compulsory license?
Yes, the registered proprietor of the layout-design can appeal the Appellate Board to review the compulsory license granted under section 51 of the Act. The Board can amend or cancel such permission if it is satisfied that any of the conditions subject to which the permission was earlier granted has not been observed or the circumstances, which led to the granting of such permission, has ceased to exist or substantially altered.

Where appeal can be made against the decision of the Appellate Board?
Appeal in the High Court can be made against order of the Appellate Board.
Infringements:
i) What is the penalty for infringement of a registered layout-design?
Infringing the rights of a registered proprietor of a layout-design is a considered an criminal offence. The infringer is punishable with imprisonment for a term that may extend to three (3) years or fine which shall not be less than Rs. 50,000/- but which may extend to Rs. 10.0 lakhs or with both.
ii) What is the penalty for falsely representing a layout-design as registered?
It is a criminal offence to falsely represent a layout-design as registered. If a person does so, he can be punished with imprisonment for a term that may extend to 6 months or with fine, which may extend to Rs. 50,000/- or with both.
iii) What is the penalty for improperly describing a place of business as connected with SICLD Registry?
It is a criminal offence to improperly describe a place of business as connected with SICLD Registry. If a person does so, he can be punished with imprisonment for a term that may extend to 6 months or with fine or with both.
iv) What is the penalty for falsification of entries in the register?
Falsification of entries in the register is a criminal offence. If a person does so, he can be punished with imprisonment for a term that may extend to two (2) years or with fine or with both.

Can any action of infringement of unregistered layout-design be instituted?
No, no entitlement to institute any proceeding to prevent, or to recover damages for the infringement of an unregistered layout-design.

Where a person based on the scientific evaluation or analysis of a registered layout-design creates another layout-design that is original. Does this person can register his layout-design under the SICLD Act?
Yes, such a person can approach registration of his layout-design under the Act provided he is able to satisfy that his work is original and created through his own intellectual efforts and meets criteria of registerability as per section 7.

Where a person purchases a semiconductor integrated circuits layout-design or any article incorporating such a semiconductor integrated circuit, is he entitled to immunity from infringement?
Any innocent action is entitled to immunity from infringement.

Can Registrar extend time for doing any act under the SICLD Act, 2000?
Yes, the Registrar can extend time for doing any act, whether the time so specified has expired or not, subject to such conditions as he may think fit to impose. However, no relaxation in the time limit of commercial exploitation i.e. two years is possible.

Which other persons can do any act, other than making of the affidavit, instead of the person himself, under the SICLD Act, 2000?
The following duly authorized persons, instead of the person himself, can do any act other than making of an affidavit on the behalf of such person:

a) legal practitioner

b) person registered as layout-design agent in the Registry

c) person in the sole and regular employment of the principal.

Geographical Indication

What is a Geographical Indication?
1 It is an indication
2 It originates from a definite geographical territory.
3 It is used to identify agricultural, natural or manufactured goods
4 The manufactured goods should be produced or processed or prepared in that territory.
5 It should have a special quality or reputation or other characteristics
Examples of possible Indian Geographical Indications.
X Basmati Rice
X Darjeeling Tea
X Kanchipuram Silk Saree
X Alphanso Mango
X Nagpur Orange
X Kolhapuri Chappal
X Bikaneri Bhujia
X Agra Petha

What is the benefit of registration of geographical indications?
1 It confers legal protection to Geographical Indications in India
2 Prevents unauthorised use of a Registered Geographical Indication by others.
3 It provides legal protection to Indian Geographical Indications which in turn boost exports.
4 It promotes economic prosperity of producers of goods produced in a geographical territory.

Who can apply for the registration of a geographical indication?
X Any association of persons, producers, organisation or authority established by or under the law can apply:
X The applicant must represent the interest of the producers
X The application should be in writing in the prescribed form
X The application should be addressed to the Registrar of Geographical Indications along with prescribed fee.

Who is a registered proprietor of a geographical indication?
1 Any association of persons, producers, organisation or authority established by or under the law can be a registered proprietor.
2 Their name should be entered in the Register of Geographical Indication as registered proprietor for the Geographical Indication applied for.

Who is an authorised user?
1 A producer of goods can apply for registration as an authorised user
2 It must be in respect of a registered geographical indication
3 He should apply in writing in the prescribed form along with prescribed fee

Who is a producer in relation to a Geographical Indication?
The persons dealing with three categories of goods are covered under the term Producer:
Agricultural Goods includes the production, processing, trading or dealing
Natural Goods includes exploiting, trading or dealing
Handicrafts or Industrial goods includes making, manufacturing, trading or dealing.

Is a registration of a geographical indication compulsory and how does it help the applicant?
1 Registration is not compulsory
2 Registration affords better legal protection to facilitate an action for infringement
3 The registered proprietor and authorised users can initiate infringement actions
4 The authorised users can exercise the exclusive right to use the geographical indication.

Who can use the registered geographical indication?
An authorised user has the exclusive rights to the use of geographical indication in relation to goods in respect of which it is registered.

How long the registration of Geographical Indication is valid?
The registration of a geographical indication is valid for a period of 10 years.

Can a Geographical Indication be renewed?
It can be renewed from time to time for further period of 10 years each.

What is the effect if a Geographical Indication if it is not renewed?
If a registered geographical indication is not renewed it is liable to be removed from the register.

When is a registered Geographical Indication said to be infringed?
1. When 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.
2. When the use of geographical indication result in an unfair competition including passing off in respect of registered geographical indication.
3. When 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.

Who can initiate an infringement action?
The registered proprietor or authorised users of a registered geographical indication can initiate an infringement action.

Can a registered geographical indication be assigned, transmitted, etc?
No. A geographical indication is a public property belonging to the producers of the concerned goods.
It shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or such other agreement
However, when an authorised user dies, his right devolves on his successor in title.

Can a registered geographical indication or a registered authorised user be removed from the register?
Yes. The Appellate Board or the Registrar of Geographical Indications has the power to remove the geographical indication or an authorised user from the register. Further, on application by an aggrieved person action can be taken.

How a geographical indication is different from a trade mark?
A trade mark is a sign which is used in the course of trade and it distinguishes goods or services of one enterprise from those of other enterprises.
Whereas a geographical indication is an indication used to identify goods having special characteristics originating from a definite geographical territory.