Month: December 2020

Trademarks are special unique signs that are used to identify goods or services from a certain company. They can be designs, pictures, signs or even expressions. It is important because it differentiates your products from the competitions. It can be associated with your brand or product. Trademarks are classified as intellectual property and therefore is protected from infringement. Trademarks and its rights are protected by the Trademark Act, 1999

To get the protection of trademark rights one has to register the trademark. It is important to register your trademark because it prevents others from copying your mark and misrepresenting other products with your mark. Trademarks help the customers to recognise the brand and the brand value in one look such as the logo of a tick sign for Nike or a jumping wildcat for Puma etc.

Unlike patents, trademark does not have a definite limitation period. Where a patent expires in 20 years a trademark registration expires after 10 years of its registration, but unlike patents, a trademark can be renewed again for another 10 years. This process can be indefinitely done, meaning as long as you keep renewing the trademark it will not expire and will continue to be under the protection of the Act.

Investing your time and money to build a particular brand and seeing the same brand name being used by another, robbing you of your hard-earned brand reputation is not an agreeable state of affairs. Many a time, trademark (TM) owners end up in protracted litigation because when the time was right, they did not do trademark registration in India of their brand name. Trademark registration process of the brand name is not a difficult task. A few simple steps, as explained below and you would have the much-needed legal protection of your brand name registration in India.

Trademarking a Brand Name

By trademarking your company’s name, you are protecting the brand, its reputation, and your ideas, all of which you undoubtedly invested a great deal of blood, sweat, and tear working on. And while the trademarking process itself will take time in all areas considered, nothing would be worse than not protecting your brand and potentially be faced with an infringement lawsuit from a larger company.

The process of brand trademark registration in India is now possible and convenient such that you can trademark any one of the below things or even a combination of the following:

• Letter
• Word
• Number
• Phrase
• Graphics
• Logo
• Sound Mark
• Smell or a mix of colors

Trademark Registry

The trademark registry was established in 1940 then came the Trademark Act which was passed in 1999. Currently, the trademark registry works as the operation or functional body of the Act. Or it can also be said to be working side by side. As a functioning body, the trademark registry implements all the rules and regulation of the trademark law in India.

The Head Office of the trademark registry is in Mumbai and it has branch offices in Delhi, Ahmedabad, Chennai and Kolkata. When registering a trademark, it is registered under the Trademark Act, 1999 and then the registry of trademarks registers it. In this process, the registry will check whether the registering mark meets all the conditions of the Act before registering it.

Step 1: Trademark Search

Many entrepreneurs do not comprehend the importance of a TM search. Having a unique brand name in mind is not good enough reason to avoid a TM search. TM search helps you to know if there are similar trademarks available and it gives you a fair picture of where your trademark stands, sometimes, it also gives you a forewarning of the possibility of trademark litigation. Why waste your money in time-consuming trademark litigation later when you can choose to avoid it in the first place?

Step 2: Filing Trademark Application

After you are sure that your chosen brand name or logo is not listed in the Trademark Registry India, you can opt for registering the same. The first step is to file a trademark application at the Trademark Registry India. Nowadays, filing is mostly done online. Once the application is filed, an official receipt is immediately issued for future reference.

Step 3: Examination

After a trademark application is filed, it is examined by the examiner for any discrepancies. The examination might take around 12-18 months. The examiner might accept the trademark absolutely, conditionally or object.

If accepted unconditionally, the trademark gets published in the Trademark Journal. If not accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned in the examination report and a month’s time would be given to fulfill the conditions or response to the objections.

Once such response is accepted, the trademark is published in the Trademark Journal. If the response is not accepted, one can request a hearing. If in the hearing, the examiner feels that the trademark should be allowed registration, it proceeds for publication in the Trademark Journal.

Step 4: Publication

The step of publication is incorporated in the trademark registration process so that anyone who objects to the registering of the trademark has the opportunity to oppose the same. If, after 3-4 months from publication there is no opposition, the trademark proceeds for registration. In case there is opposition; there is a fair hearing and decision are given by the Registrar.

Step 5: Registration Certificate

Once the application proceeds for trademark registration, following publication in Trademark Journal, a registration certificate under the seal of the Trademark Office is issued.

Step 6: Renewal

The trademark can be renewed perpetually after every 10 years. Hence, your logo or brand name registration can be protected perpetually.

As seen from the above, trademark registration in India process does not require much effort. It is a simple process but one which is nonetheless very important for brand name registration. We, at Intepat, can help you with the entire process of registration without you worrying about deadlines and responses. Hence, understand the power of your brand name registration and take steps in protecting it today.

Granting copyright seeks to protect the creative endeavor of an owner. Copyright gives an exclusive right to the owner to do certain acts in relation to literary, dramatic, musical, and artistic works, cinematography and sound recordings. Copyright is valid till the life of the originator plus 50 years after his death. In the case of cinematographic work, the copyright is valid until 50 years after the work has been made available to the public while for photographic works 25 years after the making of the work.

In India matters related to copyright are governed by the Copyright Act in 1957, which was subsequently amended in the year 1994 and 2002. Copyright cannot be granted in some cases like:

• Copyright cannot be said to be violated if the idea or concept of any person is used in a different manner.
• Copyright is not granted for ideas.
• Copyright is not granted in live events.

The Copyright Act, 1957 provides copyright protection in India. It confers copyright protection in the following two forms:

(A) Economic rights of the author, and

(B) Moral Rights of the author.

Rights of the copyright owner

Right to Distribute

Right to distribute is an off-shoot of the right of reproduction. The person who owns the copyright owner may distribute his work in any manner he deems fit. The owner is also entitled to transfer the whole or some rights in favor of any other person while retaining others. For example, he can entitle any person to translate his work.

Right of Reproduction

This is the most prominent right which is acquired after the copyright protection. This right authorizes the person having such copyright to make copies of the protected work in any form. In the modern context copying, a song on a Compact Device or any sound and visual recording can be considered as a reproduction of the content. Prior to copying the permission of the author is required unless it can be shown that such copying is not intended to make any commercial benefits out of it.

Private Copying

This is an exception to the reproduction rights which are attained by the owner. According to this right, any person can make copies of the copyright protected work if it is proved that such copying is for educational purpose and that there is no commercial motive behind such copies being made.

Sui Generis Rights

The ordinary copyright law often fails to protect the computer software and databases since the essential element of creativity is not present in such databases. Therefore, there was a need for new law to protect such software and databases. The law of sui generis was introduced to resolve the problem of resolving databases on the whole. A database is a compilation or arrangement of information which may not be creative; it may still require protection from unauthorized copying. However, this may require certain modifications such as the making of copies has to be excluded from such copyright protection. Such database right exists for a fifteen-year period.

Right of Paternity

The Right of Paternity or Attribution gives the copyright owner a right to claim authorship of the work. Under the Right of Paternity, a copyright owner can claim due credit for any of his works. Thus, if a movie is produced based on a book by an author, and he hasn’t been given due credit in it, he can sue the makers to acknowledge his work.

Right to Follow

This right is granted generally only to the authors and artists. This empowers the authors to obtain a percentage of the subsequent sales of his work and is called Droit de Suite or Right to Follow. The right is also available to artists on resale of their work.

Right to Publicly Perform

The owner of the copyright has the right to publicly perform his works. Example, he may perform dramas based on his work or may perform at concerts, etc. This also includes the right of the owner to broadcast his work. This includes the right of the owner to make his work accessible to the public on the internet. This empowers the owner to decide the terms and conditions to access his work.

Right to make Derivative Works

The copyright has the right to use his work in various ways, for instance making adaptations or translations. One example of adaptation is making a movie based on a novel, so here to make any derivative work the consent of the owner is mandatorily required. In these situations, certain other rights of the owner also come into play, like the right to integrity which protects the owner against deformation, defacement or modification of his work in a way that it is harmful for his reputation.

Copyright term is the length of time copyright subsists in a work before it passes into the public domain.

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.

Implications

Copyright term and the public domain

The extension of copyright term imposes tangible restrictions on the public domain. For instance, scholar Neil Netanel argued that Copyright Term Extension Act 1998 prevented the entering of works central to cultural heritage of the US into the public domain. He argued, culturally important dissemination, recasting, or incorporation into new expression is prevented due “to the copyright holder’s veto”. As examples he gave the adaption of the plot from novels such as The Great Gatsby and Peter Pan, the refashion of characters like Mickey Mouse, or the use of Tin Pan Alley songs like “Let’s Do It (Let’s Fall in Love)” for documentaries about the Great Depression.

Copyright term and orphan works

For the millions of older copyrighted works of less enduring popularity, it is difficult, or impossible, to trace the copyright ownership and determine who holds the particular rights that would have to be licensed for the use of the work. The problem of such orphan works stems from the extension of copyright term and the lack of requirement for the copyright owner to renew or register their copyright. In order to tackle this perceived problem some jurisdictions have revised their copyright laws to allow use of orphaned works, after diligent searches.

Length of copyright

Copyright subsists for a variety of lengths in different jurisdictions. The length of the term can depend on several factors, including the type of work (e.g. musical composition or novel), whether the work has been published or not, and whether the work was created by an individual or a corporation. In most of the world, the default length of copyright is the life of the author plus either 50 or 70 years. In the United States, the term for most existing works is a fixed number of years after the date of creation or publication. In most countries (for example, the United States and the United Kingdom) copyright expires at the end of the calendar year in question.

The length and requirements for copyright duration are subject to change by legislation, and since the early 20th century there have been a number of adjustments made in various countries, which can make determining the copyright duration in a given country difficult. For example, the United States used to require copyrights to be renewed after 28 years to stay in force, and formerly required a copyright notice upon first publication to gain coverage. In Italy and France, there were post-wartime extensions that could increase the term by approximately six years in Italy and up to about 14 in France. Many countries have extended the length of their copyright terms (sometimes retroactively). International treaties, like the Berne Convention, establish minimum terms for copyrights, but these only apply to the signatory countries, and individual countries may grant longer terms than those set out in a treaty.

Trade Secrets

Trade secrets are a type of intellectual property that comprise formulas, practices, processes, designs, instruments, patterns, or compilations of information that have inherent economic value because they are not generally known or readily ascertainable by others, and which the owner takes reasonable measures to keep secret. In some jurisdictions, such secrets are referred to as confidential information.

Trade secrets are the secrets of a business. They are proprietary systems, formulas, strategies, or other information that is confidential and is not meant for unauthorized commercial use by others. This is a critical form of protection that can help businesses to gain a competitive advantage.

Although intellectual property rights protection may seem to provide a minimum amount of protection, when they are utilized wisely, they can maximize the benefit and value of a creation and enable world-changing technology to be developed, protected, and monetized.

A trade secret is information that

• Is Not Generally Known to The Public
• Confers Economic Benefit on Its Holder Because the Information Is Not Publicly Known
• Where the Holder Makes Reasonable Efforts to Maintain Its Secrecy.

Protection of undisclosed information (trade secrets) is dealt with under Article 39 of TRIPS. Companies and individuals can prevent information from being disclosed without their consent if;

• It is not known or readily accessible to people within the circles that usually deal with the information in question.
• Has commercial value being secret and has been made subject to steps, by the person lawfully in control of the data, to keep it protected.

Types of trade secrets

• The ingredients used in the product:

For example, soft drinks manufacturer Coca-Cola keeps its ingredients a closely-guarded secret and the recipe is accessible only to a select few.

• Way of manufacturing:

A company may get a competitive edge just by finding a new way of making things. These may include types of manufacturing equipment, processes or systems. For example, computer chip maker Intel came up with ‘Copy Exactly!’ to ensure consistent quality of products regardless of where it was manufactured.

• Way of selling and distribution:

Companies often devise unique methods of selling and distributing products, which may give them an extra edge. A fitting example would be food brand Kellogg’s coming up with a data-sharing strategy with retailers to reduce unsold inventory.

• Advertising strategies:

The success of any product or service also depends on the way of advertising. Firms will always want to keep their ad strategies protected. Most firms take necessary precautions to prevent inadvertent disclosure of trade secrets. This is because if a trade secret is disclosed, it is no longer possible to protect information, particularly, in the age of social media. This is why most companies, while recruiting an agency to create an advertisement for business, will be required to keep a watch on who has access to the company’s confidential business.

Geographical Indications

A geographical indication (GI) is a name or sign used on products which corresponds to a specific geographical location or origin (e.g., a town, region, or country). The use of a geographical indication, as an indication of the product’s source, acts as a certification that the product possesses certain qualities, is made according to traditional methods, or enjoys a good reputation due to its geographical origin.

Appellation d’origine contrôlée (‘Appellation of origin’) is a sub-type of geographical indication where quality, method, and reputation of a product originate from a strictly defined area specified in its intellectual property right registration.

Legal effect

Geographical Indications protection is granted through the TRIPS Agreement. Protection afforded to geographical indications by law is arguably twofold:

• On one hand it is granted through sui generis law (public law), for example in the European Union. In other words, GI protection should apply through ex officio protection, where authorities may support and get involved in the making of GI collective dimensions together with their corresponding GI regulatory council, where ongoing discourse with the government is implied for effective inspection and quality control.
• On the other hand, it is granted through common law (private law). In other words, it is similar to the protection afforded to trademarks, as it can be registered through collective trademarks and also through certification marks, for example in the United States of America.

The geographical origin of a product can create value to producers by:

• communicating to consumers the product’s characteristics, which derive from the climate, soil and other natural conditions in its particular area
• promoting the conservation of local traditional production process
• protecting and adding value to the cultural identity of local communities.

The consumer-benefit purpose of the protection rights granted to the beneficiaries (generally speaking the GI producers), has similarities to but also differences from the trademark rights:

• While GIs denote a geographical origin of a good, trademarks denote a commercial origin of an enterprise.
• While comparable goods are registered with GIs, similar goods and services are registered with trademarks.
• While a GI is a name associated by tradition with a delineated area, a trademark is a badge of origin for goods and services.
• While a GI is a collective entitlement of public-private partnership, a trademark refers entirely to private rights. With GIs, the beneficiaries are always a community from which usually, regardless of who is indicated in the register as applicant, they have the right to use. Trademarks distinguish goods and services between different undertakings; thus, it is more individual (except collective trademarks which are still more private).
• While the particular quality denoted by a GI is essentially related to a geographical area, although the human factor may also play a part (collectively), with trademarks, even if there is any link to quality, it is essentially because of the producer and provider (individually).
• While GIs are an already existing expression and are used by existing producers or traders, a trademark is usually a new word or logo chosen arbitrarily.
• While GIs are usually only for products, trademarks are for products and services.
• While GIs cannot become numerous by definition, with trademarks there is no limit to the number that might be registered or used.
• While GIs may not normally qualify as trademarks because they are either descriptive or misleading and distinguish products from one region from those of another, trademarks normally do not constitute a geographical name as there is no essential link with the geographical origin of goods.
• While GIs protect names designating the origin of goods, trademarks collective and certification marks where a GI sui generis system exists protect signs or indications.
• While with GIs there is no conceptual uniform approach of protection (public law and private law / sui generis law and common law), the trademark concepts of protection are practically the same in all countries of the world (i.e., basic global understanding of the Madrid System). In other words, with GIs there is no international global consensus for protection other than TRIPS.
• While with GIs the administrative action is through public law, the enforcement by the interested parties of trademarks is through private law.
• While GIs lack a truly global registration system, trademarks global registration system is through the Madrid Agreement and Protocol.
• While GIs are very attractive for developing countries rich in traditional knowledge, the new world, e.g., Australia, with a different industry development model they are more prone to benefit from trademarks. In the new world, GI names from abroad arrive through immigrants and colonisation, leading to generic names deriving from the GIs from the old world.