Doing Business in India – Intellectual Property Rights – Part 4

Here is the last (4th) part of a 4 part article written by Sumeet Kachwaha of Kachwaha & Partners giving legal perspective of things if you plan on doing business in India. This aims to be an easy to read, yet comprehensive overview of legal issues involved in doing business in India.

INTELLECTUAL PROPERTY RIGHTS

Indian courts vigorously protect intellectual property rights (IPRs). Following the GATT Agreement India has made its IPR laws TRIPS compliant. In this Chapter, we deal with the three major IPR laws viz. Trademarks, Copyrights and Patents.

TRADEMARKS:

Registration of a trademark is not mandatory as the law also recognizes and enforces the Common Law right of passing off. However for passing off, the plaintiff has to establish its reputation in relation to the mark and the fact that the offending mark is likely to confuse the public. On the other hand once the mark is registered it automatically confers on the proprietor an exclusive right to use the same in relation to the goods or services in respect of which the mark is registered. The remedy in relation to infringement of a mark (whether registered or not) lies in injunction and damages coupled with an order for delivery of the infringing marks or labels etc. and for destruction of the same.

Further, in relation to registered trademarks a criminal action may also be initiated and the offence carries a minimum of six months imprisonment which may extend to three years. The police has been given power to search and seize goods or other instruments involved in committing the offence. However it is mandatory for the police to obtain and act as per the advice of the Registrar of Trademarks.

Where goods with an infringing mark are being imported into India, the proprietor can approach the customs authorities under the Customs Act, 1962 and ask for confiscation of the goods. The importer or his agent are also personally liable if they fail to furnish the details of the consignor or consignee.

Registration of a trademark is valid for 10 years and is renewable for further periods of ten years from time to time.

India is a party to the Paris Convention and has accordingly notified certain countries as Convention countries. A person from a Convention country, may within six months of making an application in his or her home country, apply for registration of the trademark in India. If the trademark is accepted for registration, the foreign national will be deemed to have registered the same in India, from the date of application in the home country.

Where applications have been made for the registration of a mark in two or more Convention countries, the period of six months would be reckoned from the date on which the earlier or earliest of those applications was made.

COPYRIGHTS:

Registration of copyrights is also not mandatory. However, a certificate of registration and the entries made in the register of copyright serves as prima facie evidence in a court of law with reference to any dispute relating to ownership of copyright. The owner of the copyright is entitled to injunction and damages in addition to impounding and destruction of all infringing copies including masters etc. Besides criminal liability is also provided for in relation to a registered work and the minimum punishment provided for is six months imprisonment, which may extend upto three years.

Foreign Works: A work having copyright protection in a country mentioned in the International Copyright Order is also protected in India, as if the same is an Indian work.

India is a member of the following international conventions on copyright and related matters:

(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.

PATENTS:

The Indian Patents Act, 1970 has undergone a thorough recast following various international treaties including the TRIPS Agreement. The life of a patent has now been increased to twenty years uniformly. Further product patent has been recognized.

India is a member of the following International Organisations and Treaties in respect of patents:

1. World Trade Organisation (WTO)
2. Convention establishing World Intellectual Property Organisation (WIPO)
3. Paris Convention for the Protection of Industrial Property
4. Patent Co-operation Treaty (PCT)
5. Budapest Treaty

India being a WTO member, provision has been made in the Patents Act for granting Exclusive Marketing Rights (EMRs). This is for a period of five years or till the patent is granted or rejected, whichever is earlier. However EMRs can only be in relation to medicines or drugs.

Further India being a party to the Patent Co-operation Treaty (PCT) an inventor/assignee can file an application for grant of patent via the PCT route in his own home country (called International Application) and after search and examination of his invention for novelty, patentability etc., file the application for grant of patent in India (known as an entry into National Phase PCT Patent Application). The National Phase PCT Patent application in India can be filed within 31 months of the priority date. The application would be examined by the Patent Office in India to determine its conformity with Indian Patent Laws and patent protection would be granted if found eligible.

Alternatively, an inventor can file an application for grant of a patent in his home country and then file an application for grant of Patent in India within 12 months of filing in home country (provided the home country is also a member of the Paris Convention).

If the invention is patented in other countries, but not in India, then the invention falls in public domain in India and would have no protection.

Unlike trademarks or copyrights, an act of infringement of a patent entails only a civil remedy of injunction, damages, seizure and forfeiture of infringing material.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Doing Business in India Series:

The Legal Environment
Investment and Trade
Company Incorporation