Monthly l Volume l XXXVIX l Page 1-59 l No.1 l January 2021

ICSI-NIRCNEWSLETTER Insight INTELLECTUAL RIGHTS CONTENTS

The Regional Council Chairman Inside: Cs Suresh Pandey Vice-Chairman Cs Vimal Kumar Gupta Secretary Cs Susshil Daga - From the Chairman, NIRC Treasurer Cs Devender Suhag Members (In Alphabetical Order) Cs Amit Gupta Cs Bhupesh Gupta - Glimpses Cs Himanshu Harbola Cs Gurvinder Singh Sarin Cs Monika Kohli Cs Saurabh Kalia Cs Surya Kant Gupta - Articles Cs Vinay Shukla Ex-Officio Members Cs Hitender Mehta Cs Manish Gupta Cs Nps Chawla - CSBF Cs Ranjeet Pandey Cs Vineet K. Chaudhary Regional Director Cs Sonia Baijal

NIRC-ICSI NEWSLETTER »» NIRC-ICSI Newsletter is generally published every month. »» Articles on subjects of interest to company secretaries are welcome. »» Views expressed by contributors are their own and the NIRC-ICSI does not accept any responsibility. »» The NIRC-ICSI is not in any way responsible for the result of any action taken on the basis of the advertisements published in the Newsletter. »» All rights reserved. »» No part of this newsletter may be Published by : CS Sonia Baijal, Regional Director for and on behalf of Northern reproduced or copied in any form by India Regional council of the Institute of Company Secretaries of any means without the written permission India, 4, Prasad Nagar Institutional Area, New Delhi-110005; E-mail: [email protected]; Phones: 493433000; Published at: NIRC- of the NIRC-ICSI. ICSI, 4, Prasad Nagar instl. Area, New Delhi. »» The write-ups of the issue are also available on the website of the NIRC- © The Northern India Regional Council of the Institute of Company Secretaries of India ICSI.

2 I ICSI-NIRC Newsletter I January 2021 FROM THE CHAIRMAN

“परिंदⴂ को नहĂ दी जाती तालीम उड़नⴂ की, वो खुद ही तय करते हℂ मंजिल आसमानⴂ की, रखता हो जो हौसला आसमानⴂ को छूने का, उसको नहĂ होती परवाह गिर जाने की” Dear Esteemed Members and Students, Not counting the tenure of this Chairmanship as As I write my final annotations as NIRC-ICSI one year but a span 366 days, including a leap day Chairman, it seems like only yesterday that I was in the year 2020 to my fortune, I worked and worked writing my first message for our members and day in and day out to serve our coveted profession. students. This has been a fast but meaningful journey Nevertheless, for every two steps forward, it felt like for me. While I wasn’t sure where it would lead, one one step back, when the coronavirus hit our country thing was clear to me that I am here to serve our and the new hopes, dreams and possibilities that I profession. had started to see materializing for NIRC-ICSI soon turned rigid. Today, I experience being in an overwhelming state when I find myself travelling back in time I gradually realized that this testing time became recalling the feelings that I had when I entered the more awakening and acceptable to me, positively portals of this ostensible position as the Chairman of affirming myself of my potential and that how the entire Northern Regional Council of our ICSI. It fortunate I was to share this fantastic platform with was one of the most important professional moments trustworthy NIRC team members and officials. of my life where I stood tall with sheer determination Being a part of those conversations, meetings, and gratitude realizing that how this unimaginable webinars, events and programs of the Northern blessing was a part of the Almighty’s plan for me Region of our ICSI, I feel that over the period of time to serve our sacred profession. Unbelievably, this the NIRC became an important part of my life and unimaginable blessing felt like a dream come true this entire Chairmanship that I have lived became an on acknowledging my post as the Chairman and important part of me. realizing that I was going to work for, work at and Today, I celebrate not only my completion as work on taking forward the mission and vision of the NIRC Chairman but also the NIRC! ICSI to achieve common and greater good. None of us have achieved anything in isolation Don’t count the days, make the days count! and the recognition and successes we have achieved Muhammad Ali and enjoyed together have been a result of our mutual respect, collaboration, and cooperation. On

ICSI-NIRC Newsletter I January 2021 I 3 FROM THE CHAIRMAN

this occasion of completion of my one-year tenure ACCLOUD SOFTWARE: NIRC was instrumental as Chairman of NIRC, it is my pleasure to share with in arranging tie up of the Institute of Company all of you our endeavors and achievements that we Secretaries of India with Accloud Software. Accloud is could gain this year. a cloud-based ACCOUNTING AND TAX SOLUTION SOFTWARE. As per the MOU, for the first 2 YEARS Our endeavors and achievements during 2020I the software is FREE for our members and after that For Members Welfare we have tied up for 80% DISCOUNT. Very soon our Politics is not a Profession, it’s a service” with the members will be able to avail the benefits of this same perspective and zeal in my mind I started my software. tenure as the Chairman of our coveted profession • FIRST ONLINE CAMPUS PLACEMENT FOR and since the very beginning my emphasis was on THE YOUNG MEMBERS: In the interest of the young members welfare as a Whole. and budding members of our esteemed Institute, a Brief highlights of some welfare activities that Campus Placement was organized by the NIRC for we did for our members and students: recruitment of CS Professionals. Here I must recognize the tireless efforts of the NIRC staff, due to which, • Highest Tie-ups with various Hospitals and good number of Recruiters registered themselves for Diagnostic/ Pathology Laboratories across India the Campus Placement, this being the largest number till now, in a year, for discounted rates for our of Recruiters to register for the Campus Placement. members, students and their dependents: Realizing the prevailing times of COVID, your NIRC set up • OPENING OF NEW CHAPTER IN THE tie-ups with renowned Hospitals and Diagnostic/ NORTHERN REGION: With a view to expand the Pathology Laboratories across India. The list of reach of the Institute and to provide facilities to the Hospitals/laboratories we tied up this year is given members and students all over the Northern Region, below: the Karnal Chapter of ICSI was inaugurated on 29thJanuary 2020. 1. Fortis Healthcare Limited (applicable for all 26 hospitals for fortis group across India) For Members Academic Enrichment & Capacity 2. Max Hospital (applicable for all 7 Hospitals of Building Max Healthcare in National Capital Region) Master Classes: At the very start of my tenure, I 3. Venkateshwar Hospital, Dwarka focused on the knowledge enrichment of our members. The sole objective was to provide knowledgeable, 4. Medeor Hospital interactive, enriching and affordable classes to our 5. LHDM & Dr. Prem Hospital Pvt. Ltd members. I invited top most faculties of the industry 6. Park Group of Hospitals to deliberate and deliver the lectures on the classes. 7. SRL Dignostic Lab (All India Branches) During the year total 78 classes were held in 18 8. Dr. Lal PathLabs Ltd. (All India Branches) editions. The quick list of various themes purveyed by 9. Balaji Action Hospital our Master Classes includes: 10. Balaji Cancer Hospital (CGHS rates) 1. Role of CS in Arbitration, 11. Artemis Hospital 2. Related Party Transactions, The details w.r.t. the discount allowed and contact 3. Mergers & Acquisitions; person at each hospital is available at the website 4. NCLT and NCLAT; of the Institute https://www.icsi.edu/niro/medical- 5. Corporate Laws; facility/. 6. FEMA

4 I ICSI-NIRC Newsletter I January 2021 FROM THE CHAIRMAN

7. Arbitration Research Papers. 8. Labour Laws; FIRST ONLINE MOOT NCLT COMPETITION – 9. Securities Laws 2020: ICSI-NIRCconducted the first ever Moot NCLT Competition for Members & Students of ICSI through 10. GST online mode. The same was conducted to give 11. Drafting, Pleading & Appearances platform to our members, so that they can enhance 12. Corporate Communication their skills in this Area. 13. Opportunities for professionals in MSME, Academic Collaborations: NIRC has been Start-ups, Banking, RERA instrumental in doing various Academic Collaborations 14. NBFCs with the Universities including IIM Jammu, IGNOU 15. Resource Mobilisation through IPO, Rights etc. across the Northern Region for the welfare of Issue, Preferential Allotment and Share based members. Employee Benefits MOU WITH GOVERNMENT OF JAMMU & 16. Recent Amendments in Corporate Laws. KASHMIR: NIRC was instrumental in the following 17. Mergers &Acquisitions academic collaborations with government of J&K: 18. Decoding Fund Raising by Unlisted Companies 1. Higher Education Department, Govt. J&K UT. I was overwhelmed with the response and 2. Skill Enhancement Courses between ICSI and appreciation mails from our members across India Higher Education Department, Govt. J&K UT and abroad. The appreciation mails are my real (Govt. SPMR college of Commerce, Jammu wealth, which I earned during this chairmanship. and Govt. Degree college, Bemina Srinagar shall be considered as Hub college for Jammu NIRC’s conducted various seminars, webinars & Kashmir province respectively) and State Conferences for its members and students: The seminars conducted by the NIRC proved These MOUs with the government of J&K will be to be encouraging for the CS fraternity. NIRC did of great help for our members in following ways: 3 (three) physical state conferences (Uttar Pradesh, • ICSI will work as mentor organization with the Chandigarh and Haryana State Conferences). government for running the courses on behalf Theme based Newsletter: To ponder on various of government. topics of the Corporate Laws in detail, we started • Our members will get job opportunities in theme-based Newsletter. I feel extremely happy to education sector; share with all of you that, in every edition of our • We will be able to approach other state newsletter, we received highest articles from our and our central government for similar members and we were honoured to receive the arrangements; special messages from the Hon’ble (Justice) Dipak • It will immensely benefit the branding of Misra, former Chief Justice of India and Hon’ble the institute. Virtual Alumni Meet of the (Justice) MM Kumar, founder President, NCLT & Participants of Management Skill Orientation former Chief Justice, Jammu and Kashmir. Programme: The NIRC-ICSI was instrumental in Research Paper Competition: Two Research organizing the first ever Alumni Meet (Virtual) Paper Writing Competition were arranged for the for its newly inducted members of Northern members of Northern Region. Our members gave Region. their insight on the themes and a huge response was Request & Recommendation by NIRC received in the form of around four hundred (400) During the year, approx. 15 request/

ICSI-NIRC Newsletter I January 2021 I 5 FROM THE CHAIRMAN

recommendation were sent to the Head Quarter: • Various students programmes including Various issues related to the welfare, urgent need Executive Development Programme (EDP), and importance were discussed and deliberated Professional Development Programme (PDP) in various regional council meetings and were sent and oral tuition classes for students were to the President of ICSI for the consideration. These organized through Physical and Interactive were the highest recommendation sent in a year. Online Mode. REQUEST FOR ENTRY OF COMPANY • Online Mock Tests for students were arranged. SECRETARIES TO THE OFFICE OF INCOME TAX: A • With a view to provide quality education detailed request in this regard has been submitted to to students, many publications are added to the Income Tax Department and I have been assured NIRC Library. that once this COVID pandemic is over, we will be • Student month was celebrated across the allowed entry there with our CS ID Card. Northern Region and various activities were REQUEST FOR ALLOWING ACCESS TO LIBRARY/ planned for students. READING ROOM AT NCLT & NCLAT: Without any Today, I feel satisfied, when I recall the feedback doubt we as Company Secretaries are expanding received from students across India appreciating the our foot prints in the Quasi-Judicial authorities and virtual interactive MSOP, Student Program and Oral therefore, we have approached and submitted a Tuition Classes. I also feel proud that even after this representation with our honorable NCLT, NCLAT to Pandemic I could reach and teach my students. allow access of Library/Reading Room at NCLT & BUILDING NCLAT to Company Secretaries. • Career Awareness Programs in Schools and Students are the greatest assets, backbone of an Colleges through Physical and Online Mode: Institution and therefore there is a greater need to NIRC organized Many Career Awareness give them ample opportunities and best platform to Programs through Physical as well as Online learn, enquire and build themselves the future of our mode for students of class XI, XII and colleges. institution. Total 28 Career Awareness Programs are Brief highlights of what we did for our students: organized. • PAN India Real-Time Virtual Interactive • Online Teachers’ Conclave for Faculties Classes for the students at economical rates. of Colleges and School Teachers: NIRC • Various Crash Courses for students were organized Online Teachers’ Conference on organized. the theme “Empowering Educators”. The • First Region to conduct Online Interactive Conference was attended by around 200 Management Skill Orientation Programme Teachers/Faculties. (MSOP), so that a sense of belongingness can • Online Mega Career Awareness Program be given to our students and make them feel for Students and Teachers of Kendriya part of NIRC-ICSI fraternity. Vidyalaya: NIRC organized Online Mega • NIRC did highest number of MSOPs this year Career Awareness Program for Students across India amongst all the Regions. and Teachers of Kendriya Vidyalaya from different Part of Northern Region. The • Webinars and podcast messages for students Program was attended by more than 700 on various topics including “Master the Mind students and Teachers. during Pandemic Times” and session on “Life Skills” to keep them motivated. • INVESTOR AWARENESS PROGRAMS: NIRC

6 I ICSI-NIRC Newsletter I January 2021 FROM THE CHAIRMAN

organized Investor Awareness Programs and contributed for the cleaner and greener under the aegis of IEPF, Ministry of Corporate environment. Affairs, GOI at various Colleges and Institutes But this is just the beginning! My Journey for the benefit of students and faculties of continuous! Commerce department. “अभी तो आऐं हैं 焼मीन पर, समान की उड़ान अभी बाकी है|” Grand celebration of National Festivals I would like to convey my sincere thanks to our • Republic Day Celebration: The members of various Ministries and Regulatory Authorities, the Institute came together and celebrated our President, Vice President, Central Council Republic Day with great joy and patriotic Members and all our Regional Council Members, zeal on 26th January 2020. The evening stakeholders and students for their constant support was graced with the mesmerizing poetry of and contribution in enabling me and my NIRC team internationally renowned poet Dr. RahatIndori. to scale new heights in serving our Profession and • Independence Day Celebration: 74th making my chairmanship better and memorable. Independence Day was celebrated on Deeply rooted with remaining as well Saturday, the 15th August, 2020. Flag hoisting as new and empowering beliefs for further ceremony was done at NIRC Premises. Famous advancement of our CS Profession, I assure you Poet, Mr. Shambhu Shikhar was invited to all that my participation, in working towards my grace the occasion. contemplations and dreams for our ICSI, that are Infrastructure development at NIRO: somewhere still resting in my core, will be steady • Renovation of Building: NIRO has undergone and promising. renovation of its building. The whole building But remember, the future success of our profession was cleaned, painted and renovated. and our Nation is bound up with the skills, talents, • The tender of lift (elevator) for the premises participation and acceptance of responsibilities of of NIRC Prasad Nagar has been allotted all of us. and the secretariat building will be made And last but not the least, it is our duty to make Accessible for especially abled. sure that in the toils of our hard work, the future • New Council Room has been inaugurated. generations of our ICSI aren’t lost and we keep • Reading room and library has been improved. inspiring them with our sincere and honest deeds to further accelerate road to a healthy CS Profession. Society and Environment My sincere wish for all of you, rise and shine, • Inauguration of Roof Top Solar Project: and this is not a goodbye. Installation of the Solar Panels at the premises of the NIRC and its various chapters was done May God continue to bless the ICSI! during the year. Looking forward to receiving your valuable • Initiation of Rainwater Harvesting: NIRC suggestions and feedback at cs.sureshpandey@ has initiated the process of installing the gmail.com. Rainwater Harvesting Equipments. • Plantation Day: We at NIRC welcomed 2021 by organizing the Plantation Drive on Yours own, January 1, 2021. The NIRC and its chapters CS Suresh Pandey across the Northern Region planted Trees Chairman-NIRC of ICSI Mob. +91 9968300649

ICSI-NIRC Newsletter I January 2021 I 7 GLIMPSES

Inauguration Function – 8th Online Batch of MSOP (312th Batch of NIRC)

Screen View: CS Sachin Jain, Vice President & Company Secretary, Paytm Payments Bank Limited, CS Suresh Pandey, Chairman, NIRC-ICSI, CS Sonia Baijal, Regional Director, NIRC-ICSI and Dr. Rajesh Gupta, Deputy Director, NIRC-ICSI addressing the Participants during Inaugural Session.

Plantation Day – 1.1.2021

UP State Conference – 2.1.2021 at Lucknow, U.P.

Shri Gopal Krishna Agarwal, National Spokesperson, Bharatiya Janata Party (Economic Affairs), CS Suresh Pandey, CS Amit Gupta, Regional Council Member, NIRC-ICSI Alongwith with other dignitaries

8 I ICSI-NIRC Newsletter I January 2021 GLIMPSES

4 Days Online Master Class on Auditing Standards, Secretarial Standards and Compliance & Corporate Governance from 5th January, 2021 to 8th January, 2021

Day 1: 5.1.2021

CS Deepak Sharma, Practicing Company Secretary addressing the Participants. Also seen CS Suresh Pandey, CS Shivam Rastogi, Moderator and CS Sonia Baijal.

Day 2: 6.1.2021

CS N K Jain, Former Secretary and CEO, ICSI addressing the Participants. Also seen CS GS Sarin, Immediate Past Chairman, NIRC-ICSI and CS Sonia Baijal.

Day 3: 7.1.2021

CS S Sudhakar, Cice-President (Corporate Secretarial) Reliance Industries Ltd. addressing the Participants. Also seen CS Suresh Pandey, CS Atul Kumar Rawat, Vice-Chairman, Lucknow Chapter of NIRC-ICSI and CS Sonia Baijal.

Day 4: 8.1.2021

CS Sampath K Rajagopalan, Partner – Entity Compliance and Governance, EY LLP and CA Purna Devi, Director- Global Compliance and Reporting, EY LLP addressing the Participants. Also seen CS Suresh Pandey and CS Himanshu Harbola, Regional Council Member, NIRC-ICSI.

ICSI-NIRC Newsletter I January 2021 I 9 GLIMPSES

ICSI-NIRC HR Conclave – 9.1.2021

Mr. Girish Bhatia, Founding Partner and Certified Coach Teacher and Speaker with John Maxwell Team addressing the Participants. 4 Days Online Master Class on Insolvency And Bankruptcy Code (IBC) 2016 and Labour Code’ from 11th January, 2021 to 14th January, 2021

Day 1: 11.1.2021

Mr. GP Madaan, Past Chairman, ICSI-NIRC and Managing Partner, Madaan Law Office addressing the Participants. Also seen CS Suresh Pandey, CS Shivam Rastogi, Moderator and CS Sonia Baijal.

Day 2: 12.1.2021

Mr. Spandan Biswal, Partner, Cyril Amarchand Mangaldas addressing the Participants. Also seen CS Suresh Pandey and CS GS Sarin.

Day 3: 13.1.2021 Day 4: 14.1.2021

Mr. Lokesh Gulati, Executive Director, PWC addressing the Ms. Raavi Birbal, Advocate Supreme Court of India addressing Participants. Also seen CS Sheetal Sharma, Moderator. the Participants. Also seen CS Atul Kumar Rawat. Inauguration Function – 9th Online Inauguration of Council Room in Batch of MSOP (313th Batch of NIRC) NIRC building

Screen View: CS Suresh Pandey and CS Himanshu Harbola CS Suresh Pandey, CS Vimal Gupta, Vice-chairman, NIRC-ICSI, addressing the Participants during Inaugural Session. CS Susshil Daga, Secretary, NIRC-ICSI and CS Sonia Baijal

10 I ICSI-NIRC Newsletter I January 2021 GLIMPSES

1ST NATIONAL CONFERENCE OF PRACTICING COMPANY SECRETARY

CS Suresh Pandey addressing the Participants. Also seen CS Ashish Garg, President, ICSI, CS Nagendra D Rao, Vice - President, ICSI, CS Manish Gupta, Council Member, ICSI, CS Rahul Verma, Chairperson, Bikaner Chapter of NIRC-ICSI and CS Bharat Chaudhary, Chairperson, Udaipur Chapter of NIRC-ICSI CHANDIGARH STATE CONFERENCE

CS Suresh Pandey, Smt Banto Devi, Wife of Shri Rattan Lal Kataria, Hon’ble Minister of State for Jal Shakti and Social Justice and Empowerment , Govt of India, Shri Krishan Kumar Dhull, Honorary General Secretary , Haryana State Council for Child Welfare, , CS Kumar Gaurav Dhawan, Deputy Director(Admin), PGI Chandigarh, CS G S Sarin, CS Rahul Jogi, Past Chairperson, Chandigarh Chapter of NIRC-ICSI, CS Yogita, Chairperson, Patiala Chapter of NIRC-ICSI, CS Bhupesh Gupta, Regional Council Member of NIRC-ICSI, CS Anil Kumar, Chairman, Chandigarh Chapter. HARYANA STATE CONFERENCE

CS Suresh Pandey, CS Atul Kumar Rawat, CS Sumit Grover, Chairperson, Panipat Chapter of NIRC-ICSI, CS Sanjay Bansal, Chairperson, Karnal Chapter of NIRC-ICSI and CS Amresh Joshi, Speaker of Session. ICSI CONVOCATION OF NORTHERN REGION

CS Suresh Pandey addressing the Participants. CS Ranjeet Pandey, Immediate Past President, ICSI, CS Manish Gupta and CS Suresh Pandey.

ICSI-NIRC Newsletter I January 2021 I 11 articles on theme RIGHTS

12 I ICSI-NIRC Newsletter I January 2021 ARTICLE Intellectual Property Rights (IPR) and their Importance CS Pradeep Kumar Ray, FCS in Indian Context [email protected]

“Inventors are honorable not because they make intellectual endeavour by creating a monopoly a difference, but because they want to make a over these . Such benefits are not difference against all odds” always natural rights but require recognition — Kalyan C. Kankanala, Fun IP, by a statute Fundamentals of Intellectual Property b) aim at protecting the creations of the intellect, such as inventions, the appearance of products, literary, artistic and scientific INTRODUCTION works and signs, among others. The intellectual property rights (IPR) are c) Cover the privileges given to individuals who intangible in nature and give exclusive rights to are the owners and inventors of a work, and the inventor or creator for theirvaluable invention have created something with their intellectual or creation. In the present era of globalisation, IPR creativity. Individuals related to areas such remains as the focal point in global trade practices as literature, music, invention, etc., can be andlivelihood across the globe. These rights boost granted such rights, which can then be used in the innovative environment by giving recognition the business practices by them. and economic benefits tocreator or inventor. In d) Provide the creator/inventor the exclusive reverse side, the lack of IPR awareness and its rights against any misuse or use of work ineffective implementation witness the death of without his/her prior information. However, inventions, high risk of infringement, economic loss the rights are granted for a limited period of and decline of an intellectual era in the country time to maintain equilibrium. and accordinglyhamper the economic,technical e) do not differ from other property rights. They and societal developments of nation. Hence it is allow their owner to completely benefit from the utmost requirement for Indiato be acquainted his/her product which was initially an idea with IPR knowledge and its appropriate that developed and crystallized. implementation. Keeping in view of such objective, f) entitle the creator or inventor to prevent this article highlights various terms of IPR and their others from using, dealing or tampering with importance in Indian context. his/her product without prior permission from him/her. He/she can in fact legally sue them INTELLECTUAL PROPERTY and force them to stop and compensate for Intellectual property is the product of the human any damages. intellect including creativity concepts, inventions, g) Allow the owner can sell, buy or industrial models, , songs, literature, license his intellectual property just like symbols, names, , etc. It is an intangible physicalproperty.Although one has to register asset. IPR at legalauthority in some presentable or tangible form toclaim their benefits. INTELLECTUAL PROPERTY RIGHTS (IPR) a) Give especialrights to its inventor and or IPR are thoselegal rights which creator to sustain andharvest economic a) Grant and allow to the owners of Intellectual benefits which further motivatesskill and Properties to benefit from the fruits of their societal developments * The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI ICSI-NIRC Newsletter I January 2021 I 13 ARTICLE

ROLE OF IPR with preservation ofbiodiversities, traditional IPR play a very pivotal role in every sector knowledge through abalance and effective and have become the basis for crucial investment international IP system. It is responsible toharmonise decisions. These are exclusive rights and therefore differences amongst various countriesespecially • Strive to maintain balance between the between the developed and developingnations by interests of innovators and the interests of the amending international regulation so thateach of society at large. them get a equal opportunity in emergingworld. • Provide an adequate legal framework to TYPES OF IPR protect the interests of innovators and Intellectual property is divided into two • Inspire confidence that their intellectual categories: property would be protected and in turn 1. Industrial Property, which includes: triggering further innovation. (a) inventions (), IMPORTANCE OF IPR (b) trademarks, The purpose of intellectual property rights is (c) industrial designs and models to encourage new creations, including technology, (d) Geographic indications artwork, and inventions, that might increase (e) Trade Secrets and Confidential Information economic growth. These increase the incentives for (f) Database individuals to continue to produce things that further (g) Plant Varieties create job opportunities and new technologies, while enabling our world to improve and evolve 2. artistic/ creative Property, which includes: even faster. According to The U.S. Chamber of (a) --Literaryworks namely novels, Commerce’s Global Innovation Policy Center: poems, etc. artistic and scientific works, • Intellectual Property Creates and Supports (b) Performer rights--Plays, films, musicals, High-Paying Jobs cartoons, paintings, photographs, statues and • Intellectual Property Drives Economic architectural designs, phonogram recordings Growth and Competitiveness by producers, and rights of broadcasters over radio and TV programmes ACTIVITIES COVERED BY WIPO The World Intellectual Property Organization(WIPO) was incepted in 1967 to protectthe IPR throughout the world. It frameworks as well as regulate various policies concerned to IPR across the globe. It laid down following list of activities which are covered by the intellectual property rights - 1) Industrial designs 2) Scientific discoveries 3) Protection against unfair competition 4) Literary, artistic, and scientific works 5) Inventions in all fields of human endeavor 6) Performances of performing artists, 1. phonograms, and broadcasts A patent is an exclusive right granted by law 7) trademarks, service marks, commercial to an inventor or assignee for an invention.It has names, and designations following characteristics: 8) all other rights resulting from intellectual 1) It provides the patent owner with the right activity in the industrial, scientific, literary, or to decide how or whether the invention can artistic fields be used by others. In exchange for this right, The mainobjective of WIPO is the economic, the patent owner makes technical information social andsustainable cultural development about the invention publicly available in the

14 I ICSI-NIRC Newsletter I January 2021 ARTICLE

published patent document. 1. Usefulness: invention must have 2) It prevents others from commercially industrialapplicability or applied for benefiting from patented invention without practical purpose. permission, for a limited period of time in 2. Novelty: invention must be new technologywhich exchange for detailed public disclosure of has not been published or available inprior patented invention. art of the country or elsewhere in theworld 3) It gives the owner the right to exclude others before the date of patent filing. from making, using, selling, offering to sell, 3. Non obviousness: Invention which can be doneby and importing an invention for a limited any ordinary skilled person is obvious period of time, in exchange for the public andcannot be patentable. Hence invention disclosure of the invention. must notbe obvious for patentability. 4) It is an invention is a solution to a specific technological problem, which may be a NON- PATENTABLEINVENTIONS product or a process and generally has to As per Section 3 of the Patent Act, 1970 the fulfill three main requirements: it has tobe followingare not patentable: new, not obvious and there needs to be an a) Frivolous invention industrial applicability.[31]:17 To enrich the b) Invention against the natural laws body of knowledge and stimulate innovation, c) Inventions which are not fair to health of it is an obligation for patent owners to disclose human, animal, plant life, environment as valuable information about their inventions to wellas contrary to public order or morality the public. d) discovery of any living thing; discovery of 5) It prevents an invention from being created, anynon living substances occurring in nature; sold, or used by another party without e) Formulation of any abstract theory; permission. f) Discovery of any scientific principle Patents are the most common type of intellectual g) Substance or chemical obtained by mere property rights that come to people’s minds when admixture resulting in the aggregation they think of intellectual property rights protection. of the properties; mere arrangement or A Patent Owner avails following rights: rearrangement of known devices i) to commercialize his/her/its patent, h) Invention relating to atomic energy and ii) to buy or sellthe patent relatedto security of India. iii) to grant a license to the invention to any PATENT FILING STEPS third party under mutually agreed terms. Patent filing steps are as follows There are three different categories that Step1: Filing of Patent Application or Priority patents can fall under: Application 1) Utility: A utility patent protects the creation Step 2: Publication of Application of a new or improved product, process, Step 3: opposition of Patent composition of matter, or machine that is Step 4: equest for Examination useful.An example of utility patent: Method Step 5: Examination and Clarification of Raised for a driver assistance system of a vehicle Objections, if any 2) Design: A design patent protects the Step 6: Grant of Patent ornamental design on a useful item.An example of design patent: Electric bicycle 2. TRADEMARKS 3) Plant: A plant patent protects new kinds A is a sign capable of distinguishing of plants produced by cuttings or other the goods or services of one enterprise from those nonsexual means.An example of plant patent: of other enterprises. It has following characteristics: Crapemyrtle plant named ‘CM1’ a) It is a sign that individualizes the goods or services of a given enterprise and PATENTABLE INVENTIONS distinguishes them from those of competitors. The patentability of any invention needs to To fall under law protection, a trademark fulfilfollowing criteria: must be distinctive, and not deceptive, illegal

ICSI-NIRC Newsletter I January 2021 I 15 ARTICLE

or immoral. f) It is what makes a product look appealing, b) It is an another familiar type of intellectual and as such, it increases the commercial value property rights protection. of goods. c) It is a distinctive sign which allows consumers to easily identify the particular goods or INDUSTRIAL DESIGN RIGHTS services that a company provides. Some An (sometimes called examples include KFC, the Apple , and “design right” or design patent) protects the visual so on. design of objects that are not purely utilitarian. d) It can come in the form of text, a phrase, symbol, sound, smell, and/or color scheme. 4. GEOGRAPHICAL INDICATIONS e) unlike patents, it can protect a set or class Geographical indications and appellations of products or services, instead of just one of origin are signs used on goods that have a product or process. specific geographical origin and possess qualities, f) It is a recognizable sign, design or expression a reputation or characteristics that are essentially which distinguishes products or services of a attributable to that place of origin. It has following particular trader from similar products or characteristics: services of other traders. a) It includes the name of the place of origin of the goods FORGERY AND COUNTERFEITING OF b) It is basically a notice stating that a given TRADEMARKS product originates in a given geographical Forgery of a trademark means a complete area. transfer being identical from the unique brand or transferring the main parts thereof making the 5.TRADE SECRETS forged brand greatly identical to the original Trade secrets are IP rights on confidential one. Whereas Counterfeiting a trademark means information which may be sold or licensed. The making a brand similar in total to the original unauthorized acquisition, use or disclosure of such one in a manner that might mislead the public secret information in a manner contrary to honest in connection with the source of goods that are commercial practices by others is regarded as an marked by the brand in question. unfair practice and a violation of the protection. It has following characteristics: 3.INDUSTRIAL DESIGNS a) It is any information of commercial value An industrial design constitutes the ornamental concerning production or sales operations or aesthetic aspect of an article. It has following which is not generally known. The owner of a characteristics: trade secret must take reasonable measures a) It may consist of three-dimensional features, to maintain its confidentiality. such as the shape or surface of an article, or b) It is a formula, practice, process, design, of two-dimensional features, such as patterns, instrument, pattern, or compilation of lines or color. information which is not generally known b) It is the aesthetics and ergonomics of a or reasonably ascertainable, by which a product. business can obtain an economic advantage c) It consists of three-dimensional elements, such over competitors and customers. as the creation of the product’s shape, or two- c) any invention or knowledge which in not dimensional ones, such as graphics, patterns innovative (not patentable) but useful for and colors. business and provides economical benefits d) It consists of the creation of a shape, can be kept as trade secret. configuration or composition of pattern or d) this novel or creative information is also kept color, or combination of pattern and color in as trade secret when registration of patent, three-dimensional form containing aesthetic copyright, industrial design, etc are pending value. or in process. e) It can be used to produce a product, industrial e) there is no formal government protection commodity or handicraft. granted; each business must take measures

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to guard its own trade secrets (e.g., Formula ADVANTAGES OFIPR of its soft drinks is a trade secret for Coca- Intellectual property rights are advantageous Cola.) in the following ways - Trade secrets have three elements: i) these provide exclusive rights to the creators 1. Subject matter must be a secret capable of or inventors. adding economic value ii) these encourage individuals to distribute 2. the owner must take reasonable precaution and share information and data instead of to keep it secret keeping it confidential. 3. In case of breach, the owner must prove that the iii) these provide legal defense and offers the competitor got information in a wrong manner. creators the incentive of their work. 6.COPYRIGHT iv) These help in social and financial development. Copyright is a legal term used to describe the rights that creators have over their literary and IPR IN INDIA artistic works. Works covered by copyright range In order to protect the intellectual property from books, music, paintings, sculpture and films, to rights in its territory, India has defined the formation computer programs, databases, advertisements, of constitutional, administrative and jurisdictive maps and technical drawings. outline whether they imply the copyright, patent, It has following characteristics: trademark, industrial designs, or any other parts a) It is a form of IPR concerned with protecting of the intellectual property rights. works of human intellect. Back in the year 1999, the government passed b) the domain of copyright is literary and an important legislation based on international artistic works, might that be writings, musicals practices to safeguard the intellectual property and works of fine arts, such as paintings and rights. Let us have a glimpse of the same - sculptures, as well as technology-based works In India, intellectual property rights such as computer programs and electronic arerecognised under following statutes: databases. 1) the Patents Act, 1970; c) It gives the creator of an original work 2) the Trade Marks Act, 1999; exclusive rights to it, usually for a limited time. 3) the Copyright Act, 1957; d) It may apply to a wide range of creative, 4) the Designs Act, 2000; intellectual, or artistic forms, or “works” 5) the Geographical Indications of Goods e) It does not cover ideas and information (Registration & Protection) Act, 1999; themselves, only the form or manner in which 6) the Semiconductor Integrated Circuits Layout they are expressed Design Act, 2000; Copyright covers following types of works: 7) the Biological Diversity Act, 2002; 1. Literary and scientific works: novels, poems 8) the Protection of Plant Varieties and Farmers’ reference works, newspapers, plays, books, Rights Act, 2001. pamphlet, magazine, journals, etc. 2. Musical work: songs, instrument musical, REGULATOIRS OF IPR choruses, solos, bands, orchestras, etc IPR are regulated under following government 3. Artistic works: such as painting, drawings, functionaries: sculpture, architecture, advertisements, etc. 4. Photographic work: portraits, landscape, fashion or event photography, etc 5. Motion pictures: it includes the cinematography works such as film, drama, documentary, newsreels, theatrical exhibition, television broadcasting, cartoons, video tape, DVDs, etc 6. Computer programes: computer programmes, softwares and their related databases, Maps and technical drawings

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IPR STATUS OF INDIA PROMOTION OF IPR The World Bank carried out survey concerned Large number of countries including India care to Knowledge Economy Index (KEI) of 140 for IPR and seek to promote and protect these countries across the world on the basis of their rights due to the following reasons: knowledge based initiative, policy frame work, 1) New innovations in all IPR domains lead to economy incentive and institutional regime, Human progress and advancement. information and communication technologies 2) Legal protection of new innovations (ICT) infrastructure in 2007. India ranked encourages safe spending on other innovations. at 101stposition due to lack in aforesaid 3) Caring for and protecting IPR contribute to parameters. Similarly, India ranked at 14th, achieving economic and social development. 9thand 13thposition in patents, marks and designs respectively based on total (resident CONCLUSION and abroad) IP filing activity by origin in 2014 In the present knowledge based economy, The main reason for lagging behind in IPR the necessity of IPR for progressive societal participation is unawareness amongst youth, development is imperative. The IPR aresignificant academicians, researchers, industrialists and to be a part of local as well as global competitive traders in India about IPR and its benefits. Even, trade The government should include IPR in basic Micro, Small and Medium Enterprises (MSME) that educational system and promote IPR registration constitute around95% of all units; 40 % of total by encouraging the innovators and creators. India value addition; nearly 80% of the employment is having all the resources in terms of available raw of the total manufacturing sector; and 35 % of material, cheap labour, innovative and creative total exports are also lacking in IPR edge.Due to dedicated manpower. Upon their utilization in a aforesaid reasons, there is no Indian multinational constructive way, undoubtedly India will harness its company in top 100 patent applicants worldwide proportionate share in global trade by exploration during 2003-12 in Intellectual Property Rights.■

18 I ICSI-NIRC Newsletter I January 2021 ARTICLE INTELLECTUAL PROPERTY CS Ankita Mehrotra, ACS RIGHTS [email protected]

Intellectual Property Rights in general refers can be traced to the ancient use of stamps on to the set of intangible assets including invention, bricks by Roman brick-makers for the purpose creation, and contribution to the contemporaneous of identification, and even before that when the field of knowledge which is owned and legally leaders of the ancient Greek city of Sybaris protected by an individual or company from the granted monopoly for one year on cooking a outside use or implementation without approved delicious dish to its creator. Obviously, much has consent. The economic growth, financial incentive changed since then with the advancement of and motivation for advanced innovations imbedded science and technology and global business. in the balanced legal protection of Intellectual Intellectual property has increasingly assumed Property Rights entails proficient, directed and a vital role with the rapid pace of technological, timely updated guidance in the field of Intellectual scientific and medical innovation that we are Property Rights. witnessing today. Moreover, changes in the Intellectual property is a product of human global economic environment have influenced the intellect and the rights granted on it allow its development of business models where intellectual owner to benefit from the fruits of this intellectual property is a central element establishing value and endeavour by creating a monopoly over it. Such potential growth. In India several new legislations benefit is not always a natural right but requires for the protection of intellectual property rights recognition by a statute. (IPRs) have been passed to meet the international The significance of intellectual property obligations under the WTO Agreement on Trade-

* The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI ICSI-NIRC Newsletter I January 2021 I 19 ARTICLE

Related Aspects of Intellectual Property Rights service marks, trade names, indications of source (TRIPS). or appellations or origin and the repression of Intellectual property has therefore grown into unfair competition when , Geographical one of the world’s biggest and fastest-growing indicators, layout Designs and confidential fields of law thereby necessitating the demand for information were included to industrial property, IP professionals well versed in this area to deal they all become intellectual property. with (IPRs) across the national and international borders. Copyright & : The recognition and protection of these rights is The subject-matter of copyright is the of recent origin. Patents, designs and trademarks literary, dramatic and musical or artistic work, a are considered as industrial property. As per cinematograph film and a sound recording. Literary International Convention for the protection of work includes computer programmes, tables and industrial (Paris Convention) the protection of compilations including computer databases. industrial property has as its object patents, The object of this right is not the material thing utility models, industrial designs, trademarks, produced, but the form impressed upon it by the service marks, trade names, indications of source maker. The picture, in the abstract sense of the or appellations or origin and the repression of artistic form made by visible by that paint and unfair competition when copyrights, Geographical canvas, belongs to him who made it. indicators, layout Designs and confidential Trade Mark: information were included to industrial property, they all become intellectual property. Trademark is anything which identifies the origin Intellectual property rights (IPRs) play a key of the goods or services. It can be a name, symbol, role in every sector and have become the basis logo, colour, sound etc. Trademark symbolizes the for crucial investment decisions. IPRs are exclusive value or goodwill associated with the goods and rights and therefore there is always a challenge to its specific source. It distinguishes one firm from strike a balance between the interests of innovators others. and the interests of the society at large. Another Benefits of trademarks are several-fold: important factor is having an adequate legal It helps consumers to identify products with framework to protect the interests of innovators desirable attributes quickly. and inspire confidence that their intellectual It encourages firms to improve quality of their property will be protected, in turn triggering product. In absence of any identification mark, it further innovation. would be difficult to distinguish the duplicates from high quality products. This will lower the incentive Intellectual Property Rights in India of the firm to make high quality products as the Indian government approved its first Intellectual returns would be same as that of inferior products. Property Rights Policy in May 2016. National Trademark protection gives a “monopoly power” Intellectual Property Rights Policy was approved over the distinctive trademark in the sense that by the Indian cabinet on 12 May 2016 to ensure others are debarred from using the same or a compliance to the Doha Development Round and confusingly similar trademark. However this kind TRIPS Agreement. With its seven objectives, it aims of monopoly power does not involve any welfare at creating a ““Creative India; Innovative India”. loss as its aim is not to prevent similar products Intellectual Property Rights are legal rights but only to prevent use of similar or deceptive governing the use of creations of the human marks with the aim of confusing the consumer. As a mind. The recognition and protection of these result, trademarks have mostly a positive incentive rights is of recent origin. Patents, designs and effect. It may seem that overall the economics of trademarks are considered as industrial property. trademark protection and the intellectual property As per International Convention for the protection law of those marks are non-conflicting. of industrial (Paris Convention) the protection There are, however, some grey areas: of industrial property has as its object patents, Issue of umbrella branding (brand extension) utility models, industrial designs, trademarks, whereby a company uses a trademark made

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famous by sale of one product to enter into another Rights(TRIPS) Agreement as: “Indications which market. For example Reliance entering retail identify a good as originating in the territory of a marketing, entertainment industry, restaurants etc. member, or a region or a locality in that territory, Such brand extension strategies raise legitimate where a given quality, reputation or characteristic competition policy issues as a firm is essentially of the good is essentially attributable to its using an advantage acquired in other market to geographic origin.” sell its products. Consumers are likely to try the products associated with a well-known brand Industrial Designs: name rather than an unknown brand with same Industrial design means only the features quality making it difficult for a new company to of shape, configuration, pattern, ornament or enter the market. composition of lines or colours applied to any article whether in two dimensional or three dimensional Patents: or both forms, by any industrial process or means The subject-matter of a patent-right is an whether manual, mechanical or chemical, separate invention. He whose skill or labour produces the or combined, which in the finished article appeal idea of a new process, instrument or manufacture to and are judged solely by the eye; but does not has that idea as his own in law. He alone is entitled include any mode or principle of construction and to use it and to draw from it the profit inherent in does not include any trademark. it. Lay-out Designs of Integrated Circuits: Geographical Indications: In the case of layout designs of integrated A is a name or sign circuits the property consists in the exclusive right used on certain products which corresponds to a to apply the layout design registered under specific geographical location or origin (e.g. a statute in relation to the class of goods for which town, region, or country). India, as a member of it is registered for a prescribed period. The right the World Trade Organization (WTO), enacted the can also be licensed for use by third party or Geographical Indications of Goods (Registration assign to any person. and Protection) Act, 1999 has come into force with Protection of undisclosed Information: effect from 15 September 2003. GIs have been Confidential information and know-how can be defined under Article 22(1) of the WTO Agreement protected only so long as the owner is able to on Trade-Related Aspects of Intellectual Property

ICSI-NIRC Newsletter I January 2021 I 21 ARTICLE keep them secret and takes action against unlawful or goods. Unlike traditional property, intellectual use of such information by others by an action for property is indivisible – an unlimited number of breach of confidence or contract. people can “consume” an intellectual good without The law relating to property and intellectual it being depleted. property has similarities regarding the nature the By exchanging limited exclusive rights for mode of acquisition, the nature of rights conferred, disclosure of inventions and creative works, society the commercial exploitation of those rights, the and the patentee/copyright owner mutually enforcement of those rights and the remedies benefit, and an incentive is created for inventors available against infringement of those rights. and authors to create and disclose their work. Property rights include not all a person’s right “If some intellectual property is desirable but only his corporeal property rights consisting because it encourages innovation, they reason, of material things. But intellectual property is in more is better. The thinking is that creators will not the nature of intangible incorporeal property. have sufficient incentive to invent unless they are The rights of intellectual property are created legally entitled to capture the full social value of by statute. The invention may relate to a new their inventions”. product or an improvement of an existing product This absolute protection or full value view treats or a new process of manufacturing an existing or intellectual property as another type of “real” a new product. The acquisition of the monopoly property, typically adopting its law and rhetoric. of intellectual property, the conditions to be satisfied for acquisition, its duration, the licensing Protection of Intellectual Property: of this monopoly rights or their assignment to Intellectual Property (IP) Protection is others are strictly governed by the statutes. The fundamental for innovation to thrive. It rewards commercial exploitation of intellectual property creativity and can generate tangible benefits to may be assigned his rights or license them to businesses, employees and society. industrialists for a lump sum payment or on a Many companies do not realise that their royalty basis the right of material property is intellectual property assets may be integral to the transferred for sufficient consideration. As per the core services of the business and overall long-term TRIPS Agreement, member countries of WTO may viability. Also, many smaller companies believe provide for criminal procedures and penalties to that exploiting their IP is too time consuming, be applied in other cases of infringement of IPRs, too expensive and difficult to see a return on an in particular where they are committed wilfully investment. This is not the case and any company on a commercial scale. In respect of trademark, irrespective of its size or the nature of its business the civil remedied available against infringement should have a strategy which considers the are an injunction, either damages or an account importance of any IP assets. It is also important of profits and the delivery-up of the infringing to have a strategy in place to protect any unique articles for destruction. Civil and Criminal remedies products or services that you own as competitors are available against infringement of intellectual can essentially steal or piggy back on your success property. to take away market share. Not considering your IP will adversely impact on your company’s ability Purpose of Intellectual : to grow and consolidate its revenue stream. The main purpose of intellectual property law Protecting Intellectual Property also means is to encourage the creation of a wide variety of preventing piracy. Controlling the technology used intellectual goods for consumers. To achieve this, to copy or develop a product prevents piracy. the law gives people and businesses property For example, in the days of LP records - the poly rights to the information and intellectual goods vinyl records were the means of distributing music. they create, usually for a limited period of time. Since these records could be manufactured by a Because they can then profit from them, this gives select few firms, piracy was restricted. But with the economic incentive for their creation. The intangible advent of compact cassettes, small fly-by-night nature of intellectual property presents difficulties operators began to sell pirated music cassettes. when compared with traditional property like land In India, thousands of small time operators sprung

22 I ICSI-NIRC Newsletter I January 2021 ARTICLE up in 1980’s who were selling pirated music. With WTO & IP protection: the advent of CD recorders, copying music CDs The most comprehensive agreement on IP became very easy - even individuals could copy protection was developed by World Trade CDs in their home PCs. Later with the advent of Organization (WTO) in 1994. During Uruguay Internet, Peer-to-peer networks, and MP3 formats round of negotiations, a comprehensive & binding piracy became a global menace. agreement was drawn upon all members’ states. Currency note is another example of controlling Agreement on Trade-Related Aspects the piracy via control of manufacturing equipment. of Intellectual Property Rights (TRIPs) is an Machines used to print currency notes are highly international treaty administered by the WTO regulated and controlled. This enables governments which sets down the minimum standards for to control the use of counterfeit currency. most forms of intellectual property regulation Difficulty in copying & distributing counterfeit for all member countries of the World Trade products is a proven method to protect an IP. For Organization. example, semiconductor chips and cars cannot be Specifically, TRIPs deals with: Patents, counterfeited. But individual patents which are Copyright and associated rights, such as rights used in developing the product can be violated. If of performers, producers of sound recordings patents or trademarks or copy rights are violated, and broadcasting organisations; geographical then one has to resort to legal measures to protect indications, including appellations of origin; their IP. industrial designs; integrated circuit layout- Some of the main advantages of IP protection designs; patents, including the protection of new are set out below: varieties of plants; trademarks; ; and • Protecting IP gives an exclusive property undisclosed or confidential information, including right and can help a business to do better trade secrets and test data. than it otherwise would, or it can kick-start TRIP(s) also specifies enforcement procedures, a new business. remedies, and dispute resolution procedures. • Developing effective IP protection strategies However, the variances in the local implementations will depend on a particular business. An of IP protection laws create challenges in protecting effective strategy may involve a range of an IP globally. IP protection options. As an example, one The idea under TRIPs was to apply IP rules may seek patent protection for its product, equally to all member states, however developing register its design and develop a branding countries were allowed extra time to implement the strategy based on a registered trademark. applicable changes to their national laws. Two tiers • IP protection can allow turning knowledge/ of transition were agreed on depending on their idea into a tangible asset capable of level of development. Developing countries such as assignment, transfer and licensing. India, Brazil, Russia, China etc. had to transition to a • Protected IP can be used as leverage common standard by 2005. The transition period for for attracting investors, as collateral for least developed countries was extended to 2016, obtaining finance. and could be extended beyond that. • Protecting IP can reduce the risks associated The TRIPS agreement introduced intellectual with commercialization by deterring property law into the international trading competitors from using the protected IP. system for the first time, and remains the most • Protecting IP can help generate revenue comprehensive international agreement on and provide a return on investment in R&D. intellectual property to date. • Protecting IP can allow generating royalty India, having ratified the final act of income from licensing. Marrakesh and being the member country of A trade mark/brand can operate as a “badge WTO has implemented the TRIPS Agreement. of origin” and be used to promote your goods/ India implemented all the provisions of the services thereby providing a guarantee of source TRIPS Agreement along with other conventional and quality to customers/prospective customers agreements by enacting the new law or by amending the existing law. * The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI ICSI-NIRC Newsletter I January 2021 I 23 ARTICLE INTELLECTUAL PROPERTY CS Deepak Pathak, ACS RIGHTS [email protected]

DEFINITION OF INTELLECTUAL PROPERTY Right Act, 2001 RIGHTS: 8. the Information Technology Act, 2000 Intellectual property rights are the rights given INTELLECTUAL PROPERY RIGHTS AND to persons over the creations of their minds. They PROCEDURE FOR REGISTRATION IN INDIA usually give the creator an exclusive right over the use of his/her creation for a certain period of time. 1. TRADEMARK A Trademark is a type of recognizable sign, INDIAN CONTEXT design or expression which identifies products or LAWS PROTECTING INTELLECTUAL PROPERTY IN services from others. INDIA In India the Trademark Registry administers the 1. trade Marks Act, 1999 Trademark Act, 1999 and rules made thereunder. 2. the Patents Act, 1970 (as amended in 2005) The Objective of the Act is to register the 3. the Copyright Act, 1957 Trademark applied and to protect the trademark 4. the Designs Act, 2000 for goods and services and to prevalent fraudulent 5. the Geographical Indications of Goods use of trademark. (Registration and Protection) Act, 1999 The Controller General of Patents, Designs and 6. the Semiconductor Integrated Circuits Layout Trade Marks heads the TRADE MARKS Registry Design Act, 2000 offices and functions as the Registrar of TRADE 7. the Protection of Plant Varieties and Farmers’ MARKS. PROCEDURE FOR REGISTRATION OF TRADEMARK

Source: http://www.ipindia.nic.in/workflow-chart.htm * The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI 24 I ICSI-NIRC Newsletter I January 2021 ARTICLE

2. PATENT An invention is patentable subject matter if it A Patent is a statutory right for an invention, meets the following criteria – granted for a limited period of time to the patentee i)I t shouldbe novel. by the Government, in exchange of full disclosure of ii) It should have inventive step or it must be non- his invention for excluding others, from making, using, obvious selling, importing the patented product or process for iii) It should be capable of Industrial application. producing that product for those purposes without his iv) It should not attract the provisions of section 3 consent. and 4 of the Patents Act 1970 Flow Chart for Patent Application

Source: http://www.ipindia.nic.in/workflow-chart.htm

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3. GEOGRAPHICAL INDICATIONS to a place situated therein as being the country or place of origin of that product, Such a name conveys Geographical Indications of Goods are defined an assurance of quality and distinctiveness which is as that aspect of industrial property which refer to essentially attributable to the fact of its origin in that the geographical indication referring to a country or defined geographical locality, region or country. PROCEDURE FOR APPLICATION

Source: http://www.ipindia.nic.in/workflow-chart.htm

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4. INDUSTRIAL DESIGN 3. Form-21(Power of authority/General Power The registration and protection of industrial of authority) in original(if filed through patent designs in India is administered by the Designs Act, agent/advocates) (as in Schedule-II) If the 2000 and corresponding Designs Rules, 2001 which applicant files copy of General Power of came into force on 11th May 2001 repealing the authority (GPA), it should be endorsed with earlier Act of 1911. the design application number, with which the The industrial design recognizes the creation new original GPA has been filed. and original features of new shape, configuration, 4. Form-24 in prescribed format(if small entity surface pattern, ornamentations and composition status is claimed) and; of lines or colours applied to articles which in the (a) It should be accompanied with evidence of finished state appeal to and are judged solely by registration under MSME Act, 2006in case of the eye. Indian entities. (b) It should be accompanied with affidavit deposed PROCEDURE FOR REGISTRATION OF DESIGN by the applicant or authorised signatory as Rule 1. Application is filled in form 1 (refer section 5 42 of Designs Rules in case of Foreign entities. and 44 of the Design Act, 2000) 5. original Priority document under Rule 15 of 2. Representations should be prepared as The Designs Rules. prescribed under Rule 12, 13and 14 of The 6. authenticated English translated copy of the Designs Rules and should be submitted in Priority document (if original priority document duplicate. is other than English)

ICSI-NIRC Newsletter I January 2021 I 27 ARTICLE INTELLECTUAL PROPERTY CS Jaspreet Kaur Dhanjal, ACS RIGHTS [email protected]

Intellectual Property Rights are the rights that Statute of Anne (1710) are seen as the origins are given to the persons for the creations of their of patent law and copyright respectively, firmly mind. It is an exclusive right given to the creator for establishing the concept of intellectual property. the use of his/her creation for a certain period of SIGNIFICANCE OF INTELLECTUAL PROPERTY time. Intellectual Property is the creations of mind The significance of intellectual property and could be inventions, literary and artistic works; can be traced to the ancient use of stamps on designs; and symbols, names and images used in bricks by Roman brick-makers for the purpose commerce. The Intellectual Property is protected of identification, and even before that when the by law and it gives the benefit to the people to leaders of the ancient Greek city of Sybaris earn recognition or financial benefit from what they granted monopoly for one year on cooking a create or invent. The need of Intellectual Property delicious dish to its creator. Obviously, much has Rights is to strike a balance between the interests changed since then with the advancement of of innovators and interest of public at large.The science and technology and global business. Statute of Monopolies (1624) and the British TYPES OF INTELLECTUAL PROPERTY S r . Types of Intellectual Description No. Property 1 Copyright Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture and films, to computer programs, databases, advertisements, maps and technical drawings. 2 Patents A patent is an exclusive right granted for an invention. Generally speaking, a patent provides the patent owner with the right to decide how - or whether - the invention can be used by others. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document. 3 Trademarks A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks date back to ancient times when artisans used to put their signature or “mark” on their products. 4 Industrial Designs An industrial design constitutes the ornamental or aesthetic aspect of an article. A design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color.

* The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI 28 I ICSI-NIRC Newsletter I January 2021 ARTICLE

5 Geographical indications Geographical indications and appellations of origin are signs used on goods that have a specific geographical origin and possess qualities, a reputation or characteristics that are essentially attributable to that place of origin. Most commonly, a geographical indication includes the name of the place of origin of the goods. 6 Trade secrets Trade secrets are IP rights on confidential information which may be sold or licensed. The unauthorized acquisition, use or disclosure of such secret information in a manner contrary to honest commercial practices by others is regarded as an unfair practice and a violation of the trade secret protection. NATURE OF INTELLECTUAL PROPERTY • Coexistence of different rights: Different • Intangible Rights over Tangible Property: types of IPRs can co-exist in relation The main Property that distinguishes to a particular function. For example, IP from other forms of Property is its an invention may be patented, and the intangibility. While there are many invention photograph may be copyrighted. important differences between different A design can be protected under the forms of IP, one factor they share is Design Act, and the design can also be that they establish property protection incorporated into a trademark. There are over intangible things such as ideas, many similarities and differences between inventions, signs and information whereas the various rights that can exist together intangible assets and close relationships in IP. For example, there are common are a tangible object. In which they are grounds between patent and industrial embedded. It allows creators or owners design; Copyright and neighbouring to benefit from their works when they are rights, trademarks and geographical used commercially. indications, and so on. Some intellectual • Right to sue: In the language of the law, IP property rights are positive rights; the is an asset that can be owned and dealt rest of them are negative right. with. Most forms of IP are contested in • Exhaustion of rights: Intellectual property rights of action that are enforced only by rights are generally subject to the doctrine of legal action and by those who have rights. exhaustion. Exhaustion basically means that IP is a property right and can, therefore, after the first sale by the right holder or by be inherited, bought, gifted, sold, licensed, its exhaustion authority, his right ceases and entrusted or pledged. The holder of an he is not entitled to stop further movement IPR owner has a type of Property that he of the goods. Thus, once an IP rights holder can use the way he likes subject to certain has sold a physical product to which IPRs conditions and takes legal action against are attached, it cannot prevent subsequent the person who without his consent used resale of that product. The right terminates his invention and can receive compensation with the first consent. This principle is based against real Property. on the concept of free movement of goods • Rights and Duties: IP gives rise not only to which is in force by consent or right of the property rights but also duties. The owner rights holder. The exclusive right to sell of the IP has the right to perform certain goods cannot be exercised twice in relation functions in relation to his work/product. He to the same goods. The right to restrict has the exclusive right to produce the work, further movements has expired as the right make copies of the work, market work, etc. holder has already earned his share by the There is also a negative right to prevent act of placing goods for the first sale in the third parties from exercising their statutory market. rights. • Dynamism: IPR is in the process of continuous

ICSI-NIRC Newsletter I January 2021 I 29 ARTICLE

development. As technology is rapidly • The Patents Act, 1970; evolving in all areas of human activities, • The Trade Marks Act, 1999; the field of IP is also growing. As per the • The Copyright Act, 1957; requirement of scientific and technological • The Designs Act, 2000; progress, new items are being added to the • The Geographical Indications of Goods scope of IPR, and the scope of its preservation (Registration & Protection) Act, 1999; is being expanded. Bio Patents, Software • The Semiconductor Integrated Circuits Copyrights, Plant Diversity Protection, these Layout Design Act, 2000; are few names which reflect contemporary • The Biological Diversity Act, 2002; developments in the field of IPR. The • The Protection of Plant Varieties and importance of intellectual property and its Farmers’ Rights Act, 2001. mobility is well established and reflected at RECENT LANDMARK INTELLECTUAL PROPERTY all levels, including statutory, administrative RIGHTS JUDGEMENTS and judicial. NEED TO PROMOTE AND PROTECT I. BAJAJ ELECTRICALS LIMITED vs. GOURAV INTELLECTUAL PROPERTY BAJAJ & ANR. Facts: There are several reasons for promoting and The Plaintiff was a part of the protecting intellectual property. Some of them are: renowned Bajaj industry conglomerate, and 1. Progress and the good of humanity remain had electrical stores of the same brand name. in the ability to create and invent new works The Defendant owned 2 electrical stores and in the field of technology and culture. used the name ‘Bajaj’ as a part of his store 2. IP protection encourages publication, names and also had a website for the same. distribution, and disclosure of the creation Besides this, the Defendant used the expression to the public, rather than keeping it a secret. “Powered by: BAJAJ” in the course of his trade. 3. Promotion and protection of intellectual The Plaintiff established their right over the Property promote economic development, name by proving that ‘Bajaj’ had been legally generates new jobs and industries, and granted the status of a well-known trademark, improves the quality of life. and thus the Defendant had no right to use it. It was further contended that the use of the above RECOGNITION OF INTELLECTUAL PROPERTY stated expression by the Defendant was a clear UNDER STATUTE IN INDIA: attempt to deceive the public by suggesting Intellectual Property Rights play an important that the Plaintiff sponsored/ endorsed the role in every sector and it is also a basis of crucial Defendant’s stores. Thus the Plaintiff filed a suit investment decisions. It is always a challenge for an injunction against the infringing act by the to make a balance between the interest of the Defendant. creators and the interest of the public at large. Held: The Bombay High Court pondered the Intellectual property is a result of human intellect question as to whether the present case came and the rights granted for allowing its owner to under the defense of use of personal name. They benefit from the fruits of this intellectual endeavour held that such defense was not valid as the Plaintiff by creating a monopoly over it. But this benefit is had adequately proved the mala fide intention of not always a natural right but requires recognition the Defendant behind the adoption of the name by a statute. They are governed by different ‘Bajaj’ in the course of trade. The Court passed an statutes as per their use. The applicability of law interim injunction against the use of the trademark restricts the use of Intellectual property without in the store names as well as the domain name of the permission of the creator. The importance the Defendant of adequate legal framework is to protect the II. MARICO LIMITED VS. ABHIJEET BHANSALI interests of the innovators in turn triggering further Facts: The Defendant herein was a social innovation. media influencer, who also operated a YouTube In India, intellectual property rights recognised channel of his own. In a video posted on the under statute are: channel, the Defendant made denigrating

30 I ICSI-NIRC Newsletter I January 2021 ARTICLE comments about Parachute Coconut Oil, which IV. STAR INDIA PVT.LTD. VS. MOVIESTRUNK.COM is the Plaintiff Company’s product. The Plaintiff & ORS Company had earned immense goodwill in the Facts: The Plaintiff herein was a film market owing to the good quality of their goods production and distribution company, whereas and were vigilant regarding the disparaging the Defendants operated several online comments being made about their product, as streaming websites. The present suit was filed well as the use of their trademark ‘Parachute’. against the illegal streaming of one of the The use of the trademarked name violated the Plaintiff’s films on the Defendants’ websites, exclusive right conferred to the Plaintiff as the which amounted to copyright infringement. The proprietor of the trademark, which amounted to Plaintiff thus approached the Delhi High Court infringement. Thus they approached the Bombay seeking relief against the infringement. High Court seeking an injunction against the Held: The Court recognized the right of the Defendant. Plaintiff granted by the Copyright Act, 1957 Held: The Court relied on the Trademarks Act, over the exclusive exploitation and distribution 1999 and in a clear interpretation of Section 29 of their copyrighted content. There was a clear of the Act, held that the Defendant was guilty of case of infringement against the Defendants who infringing the trademark of the Plaintiff by using had made the film available to the public without it without prior authorization in his video. Hence, the knowledge and consent of the Plaintiff. Hence an interim injunction was passed against the the Court granted an injunction and also awarded Defendant along with an order for the removal of suitable damages. the impugned vide. V. INTERNATIONAL SOCIETY FOR KRISHNA III. SAMEER WADEKAR & ANR. VS. NETFLIX CONSCIOUSNESS (ISKCON) VS.ISKCON APPAREL ENTERTAINMENT SERVICES PVT.LTD & ORS. PVT. LTD & ORS Facts: The present suit was instituted upon the Facts: The present suit was filed before the basis of an allegation that the Defendant had Bombay High Court for alleged trademark copied the literary work of the Plaintiff and infringement and . The Plaintiff converted the same into a web series without contended that by selling garments under the his consent, thereby infringing his copyright. name of ‘Iskcon’, the Defendant was infringing their The main contention raised by the Plaintiff was trademark and attempting to pass off his brand that there were several similarities between as being associated with the Plaintiff group. The his work and the web series, and that he had Plaintiff also sought to get their mark declared as previously shared his work with an individual a well-known trademark. who was a known associate of the Defendant. Held: The Court declared that in the present Hence he claimed copyright infringement and scenario, a clear case of sought an injunction against the release of the had been established, and hence ordered the web series. Defendants to refrain using the Plaintiff’s mark. Held: The Bombay High Court scrutinized both It was also concluded that the Plaintiff’s mark the works, and concluded that the similarities satisfied all the statutory requirements of a well- were not sufficient to declare the web series known trademark, and thus the Court declared it as a copy of the literary work of the Plaintiff. as such. The similarities that arose were merely related to the concept, and no infringement could be CONCLUSION claimed for the same. It also held that the mere fact that the Plaintiff had shared his work with Creativity and innovation can transform any an associate of the Defendant was not enough Society. We have to recognize it, foster it and to establish a prima facie case of copyright protect it. The Intellectual Property Rights are infringement. Thus the application for injunction an encouragement for the creators and inventors was dismissed and the release of the web series and also refrain anyone from using it without the was permitted. creator’s permission.

ICSI-NIRC Newsletter I January 2021 I 31 ARTICLE Prior User v/s Registered User

CS Lalit Rajput, ACS under Trademark [email protected]

“An Act to amend and consolidate the law relating trademark in India; to trade marks, to provide for registration and better • the trademark must be used by the protection of trade marks for goods and services proprietor in order to avail the protection; and for the prevention of the use of fraudulent • the mark must have been used from a date marks. – Preamble of Trademark Law in India” prior to the use of the registered trademark or the date of registration whichever is Trademark, which is also known as “Brand earlier. Name” / “Unique Symbol” means any symbol, Legal Provisions under Trademark Law: word, name, device, numerals or combination of both, which can be represented graphically can  Section 34 of Trademark Act: Saving for be registered as trademark under the provisions vested rights of Trademark Law in India subject to conditions Nothing in this Act shall entitle the proprietor and requirements laid down in the Trademark Act. or a registered user of registered trade mark to interfere with or restrain the use by any person of  Rights of Prior User v/s Registered User a trade mark identical with or nearly resembling It is a well settled principle of Trademark it in relation to goods or services in relation to Law that prior use of the goods will override the which that person or a predecessor in title of his subsequent user, even though subsequent user has has continuously used that trade mark from a date a registered trademark. Thus, the rights conferred prior- by registration of trademark are subject to the (a) to the use of the first-mentioned trade mark rights of the prior user of the mark. in relation to those goods or services be the The rights of the Prior Users are protected under proprietor or a predecessor in title of his; or Section 34 of the Trade Marks Act, 1999 (including (b) to the date of registration of the first- Unregistered Users). Section 34, enumerates that mentioned trade mark in respect of those a registered proprietor or registered user of a goods or services in the name of the proprietor trademark cannot interfere with the use of any of a predecessor in title of his; identical or similar mark is a person has been using whichever is the earlier, and the Registrar shall a mark from an earlier date. not refuse (on such use being proved) to register the second mentioned trade mark by reason only  Fundamental requirements for the to the registration of the first-mentioned trade acknowledgement of “Prior Use” mark. Acknowledgement of “Prior Use” constitutes the following: It is clearly stated that the rights of prior • the use of a mark identical or nearly user are superior to that of registration and are resembling the registered mark, by a third unaffected by the registration rights under the Act. person, must be in relation to the goods and services for which the first-mentioned mark Provisions under Section 34 of the Act, provides is registered; for protecting the vested rights preventing a • the use must be a continuous use of the proprietor or registered user of a trademark from

* The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI 32 I ICSI-NIRC Newsletter I January 2021 ARTICLE interfering with the honest use of an identical Court recognized that the registration is not an trademark or a mark nearly resembling with the indefeasible right and the same is subject to rights registered mark. of prior user. The said decision of Whirlpool [N.R. Dongre v.  Section 27: No action for infringement of Whirlpool Corpn., 1995 SCC OnLine Del 310 : unregistered trade mark AIR 1995 Del 300] was further affirmed by the Section 27(2): Nothing in this Act shall be Supreme Court of India in N.R. Dongre v. Whirlpool deemed to affect rights of action against any Corpn. [N.R. Dongre v. Whirlpool Corpn., (1996) person for passing off goods or services as the 5 SCC 714] goods of another person or as services provided Para 31: A reading of the aforesaid sections by another person, or the remedies in respect taken together show that: A trademark is ordinarily thereof. used in relation to goods of a manufacturer. From the reading of Section 27(2) of the Act, it A trademark can be registered but ordinarily is clear that the right of action of any person for registration is not granted if the mark falls under passing off the goods/services of another person sub-sections 1(a) to 1(c) of Section 9. The proviso and remedies thereof are not affected by the however, provides for entitlement to registration provisions of the Act. Thus, the rights in passing off although ordinarily not permissible under are emanating from the and not from Sections 9 (1) (a) to (c), provided that the mark the provisions of the Act and they are independent has acquired a distinctive character as a result from the rights conferred by the Act. of its use prior to registration or is otherwise a  Section 28 : Rights conferred by registration well known trademark. Registration is only prima Provisions under Section 28 of the Trademark facie evidence of its validity and the presumption Law, confers an exclusive right on the registered of prima facie validity of registration is only a proprietor of a trade mark to use the mark and rebuttable presumption also to prevent others from using an identical or deceptively similar mark, one of its exception is  Key Analysis: enunciated under Section 34 of the Act. This Section Further, the prior user is responsible and is gives rights to a user when its user is prior to the under the obligation to prove / to represent the user of the proprietor and prior to the date of facts / documents regarding the prior user of registration of the proprietor, whichever is earlier. the same. After receiving Sufficient documents / clarifications, Authorities / Court will grant Judicial Interpretation: them Trademark Approval. The Registered user 1. Case Law: S. Syed Mohideen vs. P. Sulochana will always be in strong position as he has done Bai registration as per provisions given under the Law. Supreme Court of India held that the scheme of In case of a prior user of the mark, the concerned the Act is such where rights of the prior user are person is required to submit an affidavit along recognised superior than that of the registration with evidence to support his claim of priority. and even the registered proprietor cannot disturb Further, a registered user can’t restrain the interfere with the rights of the prior user. third party from using an identical or similar mark if the third party has been continuously using the 2. Case Law: Neon Laboratories Ltd. v. Medical mark in relation to the same goods or services for Technologies Ltd. & Ors., which the mark of a registered user is registered The Supreme Court of India opined that a provided the third party has been using the mark registered proprietor of a trademark does not from a date prior to the date of use of registered possess the right to prevent use by another party mark or date of registration, whichever is earlier. of an identical mark if that use commenced prior to the use of the registered mark. Let’s discuss about key advantages of Trademark Registration in brief: 3. Case Laws: N.R. Dongre v. Whirlpool Corpn. 1. The owner of Registered Trademark enjoys [N.R. Dongre v. Whirlpool Corpn., 1995 SCC exclusive right over the trademark. OnLine Del 310 : AIR 1995 Del 300] 2. The Owner can enjoy the sole ownership of Decision: The Division Bench of the Delhi High

ICSI-NIRC Newsletter I January 2021 I 33 ARTICLE

the Trademark and can stop other from the it is advisable that organizations and unauthorized use of the Trademark under individuals or any other form of business, who the same class where it is registered. are seeking trademark registration under the 3. Trademark makes easy for customers to find provisions of Trademark Law in India shall conduct your products. a prior trademark search of similar marks which 4. The logo can communicate the vision, quality though not registered are in being used prior to or unique characteristic of any organization. registration of their trademark. “first user” rule 5. It helps in Builds trust and Goodwill and is a seminal part of the Act and it has always creating permanent customers who are enjoyed pre-eminence. Section 28(1) provides loyal and always opt for the same brand. that the registered proprietor of a trademark 6. Registration of Trademark creates an can seek legal remedy in case of an infringement intangible asset i.e. Intellectual Property for of his trademark in the manner provided by this an organization. Act. The proprietor of an 7. It gives recognition to the quality of cannot initiate the infringement proceeding in the the product and helps in attracting new event of a deliberate counterfeiting. customers as they can differentiate the Trademark can be use a safeguard and it quality of a product by the logo/brand protects a business’ commercial identity or brand name. by discouraging other businesses from adopting 8. It is exclusive of all types of usages as well a name or logo that is “confusingly similar” to an as rights. If someone else use the trademark existing trademark. then you can also sue the party if the Disclaimer: trademark is registered. Every effort has been made to avoid errors or 9. No competitor or other person can use the omissions in this material. In spite of this, errors or logo registered by prior user may creep in. Any mistake, error or discrepancy or registered user under trademark and noted may be brought to our notice which shall can get the legal protection under the Act be taken care of in the next edition. In no event and stop any other person doing so. the author shall be liable for any direct, indirect, 10. Registration and Renewal cost is very less special or incidental damage resulting from or and helps an organization or a company arising out of or in connection with the use of this create an unique image. information.

34 I ICSI-NIRC Newsletter I January 2021 ARTICLE INTELLECTUAL PROPERTY CS Mohit Saini, ACS RIGHTS [email protected]

“Intellectual property is the oil of the 21st century. technical information about the invention publicly Look at the richest man a hundred years ago; they available in the published patent document. all made their money extracting natural resources Trademarks or moving them around, all todays richest man A trademark is a sign capable of distinguishing have made their money out of intellectual property the goods or services of one enterprise from rights.” those of other enterprises. Trademarks date back to ancient times when artisans used to put their Intellectual property rights are the rights given signature or “mark” on their products. to persons over the creations of their minds. They usually give the creator an exclusive right over the Industrial designs use of his/her creation for a certain period of time. An industrial design constitutes the ornamental or aesthetic aspect of an article. A design may consist Types of intellectual property of three-dimensional features, such as the shape Copyright or surface of an article, or of two-dimensional Copyright is a legal term used to describe the features, such as patterns, lines or color. rights that creators have over their literary and Geographical indications artistic works. Works covered by copyright range Geographical indications and appellations from books, music, paintings, sculpture and films, of origin are signs used on goods that have a to computer programs, databases, advertisements, specific geographical origin and possess qualities, maps and technical drawings. a reputation or characteristics that are essentially Patents attributable to that place of origin. Most commonly, A patent is an exclusive right granted for an a geographical indication includes the name of the invention. Generally speaking, a patent provides place of origin of the goods. the patent owner with the right to decide how - or Trade secrets whether - the invention can be used by others. In Trade secrets are IP rights on confidential exchange for this right, the patent owner makes * The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI ICSI-NIRC Newsletter I January 2021 I 35 ARTICLE information which may be sold or licensed. The Without conversations about intellectual property, unauthorized acquisition, use or disclosure of such you can kiss joint ventures and acquisitions secret information in a manner contrary to honest goodbye. Both need clear agreements on IP. commercial practices by others is regarded as an Don’t meet either of these examples? Does unfair practice and a violation of the trade secret your work align more with arts and sciences? protection. Intellectual property rights protect your work, World IP Day your publications, and writings. These protections On April 26 every year we celebrate World extend to your personal brand. Intellectual Property Day to promote discussion As you can see, the importance of intellectual of the role of IP in encouraging innovation and property rights transcends industries. creativity. SIGNIFICANCE OF INTELLECTUAL PROPERTY Powering change: Women in innovation The significance of intellectual property and creativity can be traced to the ancient use of stamps on bricks by Roman brick-makers for the purpose Every April 26, we celebrate World Intellectual of identification, and even before that when the Property Day to learn about the role that leaders of the ancient Greek city of Sybaris intellectual property rights (patents, trademarks, granted monopoly for one year on cooking a industrial designs, copyright) play in encouraging delicious dish to its creator. Obviously, much has innovation and creativity. changed since then with the advancement of This year’s World Intellectual Property Day science and technology and global business. campaign celebrated the brilliance, ingenuity, Intellectual property is a product of human curiosity and courage of the women who are intellect and the rights granted on it allow its driving change in our world and shaping our owner to benefit from the fruits of this intellectual common future. endeavour by creating a monopoly over it. Such About World IP Day benefit is not always a natural right but requires WIPO’s member states initiated World IP recognition by a statute. Day in 2000 to raise public awareness about In India, intellectual property rights recognised the role of IP in daily life, and to celebrate the under statute are: contribution made by innovators and creators to • The Patents Act, 1970; the development of societies across the globe. • The Trade Marks Act, 1999; World IP Day is celebrated annually on April 26, • The Copyright Act, 1957; the date on which the Convention establishing • The Designs Act, 2000; WIPO entered into force in 1970. • The Geographical Indications of Goods (Registration & Protection) Act, 1999; Your business grows because of • The Semiconductor Integrated Circuits intellectual property Layout Design Act, 2000; In the startup world, securing venture capital • The Biological Diversity Act, 2002; funding means securing patents. • The Protection of Plant Varieties and Software startups, in particular, should pay Farmers’ Rights Act, 2001. close attention to their intellectual property. Often, these companies outsource development to KEY ROLE cut costs. Intellectual property rights (IPRs) play a key 61% of software used in most Asian countries role in every sector and have become the basis suffers from pirating. 58% of software in India for crucial investment decisions. IPRs are exclusive suffers the same fate. rights and therefore there is always a challenge to When a startup outsources their software strike a balance between the interests of innovators development, they must protect their intellectual and the interests of the society at large. Another property. This includes the web, apps, or mobile important factor is having an adequate legal software. framework to protect the interests of innovators But what about executives in large businesses? and inspire confidence that their intellectual

36 I ICSI-NIRC Newsletter I January 2021 ARTICLE property will be protected, in turn triggering no room for slow progress. Under the said Act, further innovation. if any party feels that its opponent has no real prospect of succeeding in or defending a claim, IPR LITIGATION IN INDIA and that recording evidence would be superfluous, IPR litigation in India is quite diverse owing to then it may apply for a summary judgment. The the large number of courts, varying degree of endeavor is to hear and conclude oral arguments experience of the judicial officers in IPR matters within six months of the time when the parties and varying manners of practice. As a result, some have finished reviewing all the documents. This courts have become preferred forums over others. procedure is meant to ensure the speedy disposal Most of the suits for infringement are filed of suits. in Delhi and Mumbai, especially in High Courts India is beginning to be recognized as a pro- of these cities. Although these jurisdictions are innovator jurisdiction with courts having a greater preferred due to its courts’ extensive experience understanding of IPR laws. Moreover, with a proper and legal framework in place and no discrimination greater understanding of IPR matters, their on the nationality of the entities asserting their IP large volume of cases are also attributable to the rights, India has seen a manifold increase in the fact that Delhi is the capital of India and Mumbai is assertion of IP rights by innovators. the country’s economic capital. Thus, large volumes Courts in India, especially in IP matters, have of commercial disputes are natural. recognised the importance of curtailing willful The Indian Legislature established commercial infringement of IP rights and have been liberally courts in India by passing a new Act in 2015, which granting punitive damages to the innovators. came into effect in 2016, with the objective of Although the amount of punitive damages granted streamlining and expediting commercial lawsuits, by the courts is not very large, such damages are including IP disputes. Under this act, commercial granted in addition to the real damages and act courts have been established at the district as a deterrent. level and commercial divisions have also been Thus, as can be seen from the above discussions, established within High Courts having ordinary Indian litigation trends present a very balanced original civil jurisdiction. This new enactment approach by the courts in IP matters. On one side, has given a separate treatment to commercial courts do not shy away from granting ex parte cases, which include cases relating to intellectual injunctions against infringers, and prolonged ex property. Given the large volume and often tardy parte injunctions are also frowned upon. Moreover, progress of cases, the new Act gives stringent with new laws in place, the time taken to complete timelines for different stages of a suit with almost a trial has been shortened significantly.

ICSI-NIRC Newsletter I January 2021 I 37 ARTICLE INTELLECTUAL PROPERTY CS Parul Jain, ACS RIGHTS [email protected]

service marks, trade names, indications of source History of Intellectual Property Rights or appellations or origin and the repression of Intellectual Property Rights is not a new concept. unfair competition when copyrights, Geographical It is believed that IPR initially started in North Italy indicators, layout Designs and confidential during the Renaissance era. In 1474, Venice issued information were included to industrial property, a law regulating patents protection that granted an they all become intellectual property. exclusive right for the owner. The copyright dates Intellectual Property Rights do not differ from back to 1440 A.D. when Johannes Gutenberg other property rights. They allow their owner to invented the printingpress with replaceable/ completely benefit from his/her product which was moveable wooden or metal letters.Late in the 19th initially an idea that developed and crystallized. century, a number of countries felt the necessity They also entitle him/her to prevent others from of laying down laws regulating IPR. Globally, two using, dealing or tampering with his/her product conventions constituting the basis for IPR system without prior permission from him/her. He/she can worldwide had been signed; Paris Convention for in fact legally sue them and force them to stop and the Protection of Industrial Property (1883) Berne compensate for any damages. Convention for the Protection of Literary and Intellectual property rights include patents, Artistic Works (1886). copyright, industrial design rights, trademarks, Intellectual Property refers to... plant variety rights, trade dress, geographical Intellectual property is the product of the human indications, and in some jurisdictions trade secrets. intellect including creativity concepts, inventions, Intellectual property rights are the rights given industrial models, trademarks, songs, literature, to persons over the creations of their minds. They symbols, names, brands, etc. usually give the creator an exclusive right over the Intellectual property is a product of human use of his/her creation for a certain period of time. intellect and the rights granted on it allow its In India, intellectual property rights recognised owner to benefit from the fruits of this intellectual under statute are: endeavour by creating a monopoly over it. Such  The Patents Act, 1970; benefit is not always a natural right but requires  the Trade Marks Act, 1999; recognition by a statute.  the Copyright Act, 1957;  the Designs Act, 2000; Intellectual Property Rights  the Geographical Indications of Goods Intellectual Property Rights are legal rights (Registration & Protection) Act, 1999; governing the use of creations of the human mind.  the Semiconductor Integrated Circuits Layout The recognition and protection of these rights is Design Act, 2000; of recent origin. Patents, designs and trademarks  the Biological Diversity Act, 2002; are considered as industrial property. As per  the Protection of Plant Varieties and Farmers’ International Convention for the protection of Rights Act, 2001. industrial (Paris Convention) the protection of Importance of Intellectual Property Rights industrial property has as its object patents, Intellectual property rights (IPRs) play a key utility models, industrial designs, trademarks, * The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI 38 I ICSI-NIRC Newsletter I January 2021 ARTICLE role in every sector and have become the basis assertion of IP rights by innovators. for crucial investment decisions. IPRs are exclusive rights and therefore there is always a challenge to With the trade related Aspects of Intellectual strike a balance between the interests of innovators Property Rights (TRIPS) Agreement of World Trade and the interests of the society at large. Another Organisation (WTO), the intellectual property important factor is having an adequate legal rights attained the authority to enforce the law framework to protect the interests of innovators internationally. According to TRIPS, the intellectual and inspire confidence that their intellectual property rights are: property will be protected, in turn triggering 1. Copyright and Related Rights further innovation. a) Rights of artists, painters, musicians, sculptors, The progress and well-being of humanity rest photographers, and authors for copyright in on its capacity to create and invent new works in their works; the areas of technology and culture. b) Rights of computer programmes whether in Encourages innovation: The legal protection source or object code for a copyright in their of new creations encourages the commitment of programmes and compilation data; additional resources for further innovation. c) Rights of performers producers of Economic growth: The promotion and protection phonogram’s and broadcasting organizations of intellectual property spurs economic growth, in respect of fixation on their programmes for creates new jobs and industries, and enhances the copyright in their work. quality and enjoyment of life. 2. Right of traders in their trademarks. Safeguard the rights of creators: IPR is required 3. Right of manufacturers & producers on to safeguard creators and other producers of their geographical indication in relation to such intellectual commodity, goods and services by products and produce. granting them certain time-limited rights to control a) Right of designers for their distinctive the use made of the manufactured goods. designstriking to the eye. It promotes innovation and creativity and b) Right of the inventor for patent is his invention. ensures ease of doing business. 4. Rights of plant breeders and farmers. It facilitates the transfer of technology in the 5. Rights of biological diversity. form of foreign direct investment, joint ventures 6. Right of computer technologist for their and licensing. layout design of integrated circuits. IPR litigation in India is quite diverse owing to 7. Right of businessmen for protection of their the large number of courts, varying degree of undisclosed information on technology and experience of the judicial officers in IPR matters management. and varying manners of practice. As a result, some Intellectual property rights are customarily courts have become preferred forums over others. divided into two main areas: Most of the suits for infringement are filed i. Copyright and rights related to copyright: in Delhi and Mumbai, especially in High Courts the rights of authors of literary and artistic of these cities. Although these jurisdictions are works (such as books and other writings, preferred due to its courts’ extensive experience musical compositions, paintings, sculpture, and greater understanding of IPR matters, their computer programs and films) are protected large volume of cases are also attributable to the by copyright, for a minimum period of 50 fact that Delhi is the capital of India and Mumbai is years after the death of the author. the country’s economic capital. Thus, large volumes ii. Industrial property: Industrial property can of commercial disputes are natural. be divided into two main areas: India is beginning to be recognised as a pro-  Protection of distinctive signs, inparticular innovator jurisdiction with courts having a greater trademarks and geographical indications. understanding of IPR laws. Moreover, with a proper Trademarks distinguish the goods or services legal framework in place and no discrimination of one undertaking from those of other on the nationality of the entities asserting their IP undertakings. rights, India has seen amanifold increase in the  Geographical Indications (GIs) identify a

ICSI-NIRC Newsletter I January 2021 I 39 ARTICLE

good as originating in a place where a including buying and selling the patent or granting given characteristic of the good is essentially a license to the invention to any third party under attributable to its geographical origin. mutually agreed terms.  the protection of such distinctive signs aims to There are three different categories that stimulate and ensure fair competition and to patents can fall under: protect consumers, by enabling them to make Utility: A utility patent protects the creation of informed choices between various goods and a new or improved product, process, composition services. of matter, or machine that is useful.  The protection may last indefinitely, provided Design: A design patent protects the ornamental the sign in question continues to be distinctive. design on a useful item.  Industrial designs and trade secrets: Other Plant: A plant patent protects new kinds of types of industrial property are protected plants produced by cuttings or other nonsexual primarily to stimulate innovation, design and means. the creation of technology. In this category fall A patent is an exclusive right granted for an inventions (protected by patents), industrial invention. Generally speaking, a patent provides designs and trade secrets. the patent owner with the right to decide how - or whether - the invention can be used by others. In Copyright exchange for this right, the patent owner makes Copyright is a legal term used to describe the technical information about the invention publicly intellectual property rights that creators have over available in the published patent document. their literary and artistic works. Works covered Trademarks by copyright range from books, music, paintings, Trademarks are another familiar type sculpture and films, to computer programs, of intellectual property rights protection. A databases, advertisements, maps and technical trademark is a distinctive sign which allows drawings. consumers to easily identify the particular goods Copyright protects the expression of an idea or services that a company provides. when it is materialised in various forms, such as a Some examples include McDonald’s golden book, a CD, or a computer file. The idea itself is not arch, the Facebook logo, and so on. A trademark protected by copyright. In practice, it is sometimes can come in the form of text, a phrase, symbol, difficult to make a clear distinction between the sound, smell, and/or color scheme. Unlike patents, idea and its expression. a trademark can protect a set or class of products The copyright regime has closely followed the or services, instead of just one product or process. evolution of technology. Every new invention, such A trademark is a sign capable of distinguishing as the printing press, radio, and television, has the goods or services of one enterprise from affected both the form and the application of those of other enterprises. Trademarks date back copyright rules. The Internet is no exception. to ancient times when artisans used to put their The traditional concept of copyright has been signature or “mark” on their products. challenged in numerous ways, from those as simple Trademark is anything which identifies the origin as ‘cutting and pasting’ texts from the Internet of the goods or services. It can be a name, symbol, to more complex activities, such as the mass logo, colour, sound etc. Trademark symbolizes the distribution of music and video materials online. value or goodwill associated with the goods and its specific source. It distinguishes one firm from Patents others. A patent is used to prevent an invention from being created, sold, or used by another party Benefits of trademarks are several-fold: without permission. Patents are the most common  helps consumers to identify products with type of intellectual property rights that come to desirable attributes quickly. people’s minds when they think of intellectual  encourages firms to improve quality of their property rights protection. A Patent Owner has product. In absence of any identification every right to commercialize his/her/its patent, mark, it would be difficult to distinguish the

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duplicates from high quality products. include any mode or principle of construction and  will lower the incentive of the firm to make does not include any trademark. high quality products as the returns would be same as that of inferior products. Lay-out Designs of Integrated Circuits:  gives a “monopoly power” over the In the case of layout designs of integrated distinctive trademark in the sense that others circuits, the property consists in the exclusive are debarred from using the same or a right to apply the layout design registered under confusingly similar trademark. However, this statute in relation to the class of goods for which kind of monopoly power does not involve any it is registered for a prescribed period. The right welfare loss as its aim is not to prevent similar can also be licensed for use by third party or products but only to prevent use of similar or assign to any person. deceptive marks with the aim of confusing the Protection of undisclosed Information: consumer. Confidential information and know-how can be As a result, trademarks have mostly a positive protected only so long as the owner is able to incentive effect. It may seem that overall, the keep them secret and takes action against unlawful economics of trademark protection and the use of such information by others by an action for intellectual property law of those marks are non- breach of confidence or contract. conflicting. Issue of umbrella branding (brand extension) Geographical indications whereby a company uses a trademark made Geographical indications and appellations famous by sale of one product to enter into another of origin are signs used on goods that have a market. For example, Reliance entering retail specific geographical origin and possess qualities, marketing, entertainment industry, restaurants etc. a reputation or characteristics that are essentially Such brand extension strategies raise legitimate attributable to that place of origin. Most commonly, competition policy issues as a firm is essentially a geographical indication includes the name of using an advantage acquired in other market to the place of origin of the goods. sell its products. Consumers are likely to try the A geographical indication is a name or sign products associated with a well-known brand used on certain products which corresponds to a name rather than an unknown brand with same specific geographical location or origin (e.g., a quality making it difficult for a new company to town, region, or country). India, as a member of enter the market. the World Trade Organization (WTO), enacted the Compulsory licensing of trademarks - Geographical Indications of Goods (Registration Competition policies forcing companies to license and Protection) Act, 1999 has come into force with their trademark may result in shoddy work at effect from 15 September 2003. GIs have been premium price associated with the brand. This will defined under Article 22(1) of the WTO Agreement also ruin the reputation associated with the brand. on Trade-Related Aspects of Intellectual Property This would affect the firm ‘s incentive to provide Rights(TRIPS) Agreement as: “Indications which consumers with high quality goods. identify a good as originating in the territory of a member, or a region or a locality in that territory, Industrial designs where a given quality, reputation or characteristic An industrial design constitutes the ornamental of the good is essentially attributable to its or aesthetic aspect of an article. geographic origin.” Industrial design means only the features of shape, configuration, pattern, ornament or Trade secrets composition of lines or colours applied to any article Trade secrets are IP rights on confidential whether in two dimensional or three dimensional information which may be sold or licensed. The or both forms, by any industrial process or means unauthorized acquisition, use or disclosure of such whether manual, mechanical or chemical, separate secret information in a manner contrary to honest or combined, which in the finished article appeal commercial practices by others is regarded as an to and are judged solely by the eye; but does not unfair practice and a violation of the trade secret

ICSI-NIRC Newsletter I January 2021 I 41 ARTICLE protection. protection, when they are utilized wisely, they A trade secret is any information of commercial can maximize the benefit and value of a creation value concerning production or sales operations and enable world-changing technology to be which is not generally known. developed, protected, and monetized. The owner of a trade secret must take reasonable Since 2016, copyright policy was moved to measures to maintain its confidentiality. India’s Ministry of Commerce and Industry. All Type of creation Intellectual Property IPRs are now administered by the Department for Rights Industrial Property and Promotion (DIPP). literary, artistic and copyright Conclusion scientific works India has made a number of changes in its IPR performances of related rights or regime to increase efficiency and has cut down performing artists, neighbouring rights the time required to issue patents.The culture of phonogram recordings by innovation is taking centre stage in the country. producers, and rights of India is well poised to focus on R&D(Research broadcasters over radio and Development). This has been reflected in its and TV programmes improved ranking in Global Innovation Index over inventions patents and utility the years. models Government’s effort to strengthen National IPR product appearance design policy, IP appellate tribunal, e-governance and signs - words, phrases, trade mark commitment to abide by the TRIPS agreement of symbols or designs (or WTO in letter and spirit will help in improving a combination of these) perception of India globally. which are used as brands An efficient and equitable intellectual property of goods and services system can help all countries to realize intellectual Although intellectual property rights protection property’s potential as a catalyst for economic may seem to provide a minimum amount of development and social & cultural well-being.

42 I ICSI-NIRC Newsletter I January 2021 ARTICLE Intellectual Property Rights - Introduction and their Importance CS Shashank Kothiyal, ACS [email protected] Introduction for a limited period of time, in exchange Intellectual Property Rights in general refers for the public disclosure of the invention. to the set of intangible assets including invention, An invention is a solution to a specific creation, and contribution to the contemporaneous technological problem, which may be a field of knowledge which is owned and legally product or a process and generally has to protected by an individual or company from the fulfill three main requirements: it has tobe outside use or implementation without approved new, not obvious and there needs to be an consent. The economic growth, financial incentive industrial applicability to enrich the body and motivation for advanced innovations imbedded of knowledge and stimulate innovation, it is in the balanced legal protection of Intellectual an obligation for patent owners to disclose Property Rights entails proficient, directed and valuable information about their inventions to timely updated guidance in the field of Intellectual the public. Property Rights. b. Copyright: A copyright gives the creator of Meaning an original work exclusive rights to it, usually  Intellectual property rights (IPR) are the rights for a limited time. Copyright may apply to a given to persons over the creations of their wide range of creative, intellectual, or artistic minds: inventions, literary and artistic works, forms, or “works”. Copyright does not cover and symbols, names and images used in ideas and information themselves, only the commerce. They usually give the creator an form or manner in which they are expressed. c. Industrial design rights: exclusive right over the use of his/her creation An industrial design for a certain period of time. right (sometimes called “design right” or  these rights are outlined in Article 27 of design patent) protects the visual design of the Universal Declaration of Human Rights, objects that are not purely utilitarian. An which provides for the right to benefit from industrial design consists of the creation of a the protection of moral and material interests shape, configuration or composition of pattern resulting from authorship of scientific, literary or color, or combination of pattern and color or artistic productions. in three-dimensional form containing aesthetic  the importance of intellectual property was value. An industrial design can be a two- or first recognized in the Paris Convention for three-dimensional pattern used to produce a the Protection of Industrial Property (1883) product, industrial commodity or handicraft. d. Plant varieties: and the Berne Convention for the Protection Plant breeders rights or plant of Literary and Artistic Works (1886). Both variety rights are the rights to commercially treaties are administered by the World use a new variety of a plant. The variety must Intellectual Property Organization (WIPO). amongst others be novel and distinct and for registration the evaluation of propagating Rights material of the variety is considered. a. Patents: A patent is a form of right granted e. Trademarks: A trademark is a recognizable by the government to an inventor or their sign, design or expression which distinguishes successor-in-title, giving the owner the right products or services of a particular trader to exclude others from making, using, selling, from similar products or services of other offering to sell, and importing an invention traders. * The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI ICSI-NIRC Newsletter I January 2021 I 43 ARTICLE f. Trade dress: Trade dress is a legal term of the interests of rights owners with larger art that generally refers to characteristics public interest. of the visual and aesthetic appearance of a d. Administration and Management- To product or its packaging (or even the design modernize and strengthen service-oriented of a building) that signify the source of the IPR administration. product to consumers. e. Commercialization of IPRs- Get value for g. Trade secrets: A trade secret is a formula, IPRs through commercialization. practice, process, design, instrument, pattern, f. Enforcement and Adjudication- or compilation of information which is not To strengthen the enforcement and generally known or reasonably ascertainable, adjudicatory mechanisms for combating IPR by which a business can obtain an economic infringements. advantage over competitors and customers. g. Human Capital Development- To strengthen There is no formal government protection and expand human resources, institutions and granted; each business must take measures capacities for teaching, training, research to guard its own trade secrets (e.g., Formula and skill building in IPRs. of its soft drinks is a trade secret for Coca- National IPR Policy Cola.) a. the National Intellectual Property Rights (IPR) Policy 2016 was adopted in May 2016 as a Need vision document to guide future development The progress and well-being of humanity rest of IPRs in the country. on its capacity to create and invent new works in b. It’s clarion call is “Creative India; Innovative the areas of technology and culture. India”. i. Encourages innovation: The legal protection c. It encompasses and brings to a single platform of new creations encourages the commitment all IPRs, taking into account all inter-linkages of additional resources for further innovation. and thus aims to create and exploit synergies ii. Economic growth: The promotion and between all forms of intellectual property protection of intellectual property spurs (IP), concerned statutes and agencies. economic growth, creates new jobs and d. It sets in place an institutional mechanism for industries, and enhances the quality and implementation, monitoring and review. It enjoyment of life. aims to incorporate and adapt global best iii. Safeguard the rights of creators: IPR is practices to the Indian scenario. required to safeguard creators and other e. department of Industrial Policy & Promotion producers of their intellectual commodity, (DIPP), Ministry of Commerce, Government goods and services by granting them certain of India, has been appointed as the nodal time-limited rights to control the use made of department to coordinate, guide and oversee the manufactured goods. the implementation and future development iv. It promotes innovation and creativity and of IPRs in India. ensures ease of doing business. f. the ‘Cell for IPR Promotion & Management v. It facilitates the transfer of technology in (CIPAM)’, setup under the aegis of DIPP, the form of foreign direct investment, joint is to be the single point of reference for ventures and licensing. implementation of the objectives of the Objectives National IPR Policy. a. IPR Awareness: Outreach and Promotion - To g. India’s IPR regime is in compliance with the create public awareness about the economic, WTO’s agreement on Trade-Related Aspects social and cultural benefits of IPRs among all of Intellectual Property Rights (TRIPS). sections of society. b. Generation of IPRs- To stimulate the Achievements under new IPR policy generation of IPRs. i. Improvement in GII Ranking: India’s rank in c. Legal and Legislative Framework- To have the Global Innovation Index (GII) issued by strong and effective IPR laws, which balance WIPO has improved from 81st in 2015 to

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52nd place in 2019. police, customs and judiciary. ii. Strengthening of institutional mechanism viii. Technology and Innovation Support Centres regarding IP protection and promotion. (TISCs): In conjunction with WIPO, TISCs have iii. Clearing Backlog/ Reducing Pendency in been established in various institutions across IP applications: Augmentation of technical different states. manpower by the government, has resulted Conclusion in drastic reduction in pendency in IP  India has made a number of changes in its applications. IPR regime to increase efficiency and has cut iv. Automatic issuance of electronically down the time required to issue patents.The generated patent and trademark certificates culture of innovation is taking centre stage in has also been introduced. the country. India is well poised to focus on v. Increase in Patent and trademark Filings: R&D. This has been reflected in its improved Patent filings have increased by nearly ranking in Global Innovation Index over the 7% in the first 8 months of 2018-19 vis-à- years. vis the corresponding period of 2017-18.  Government’s effort to strengthen Trademark filings have increased by nearly National IPR policy, IP appellate tribunal, 28% in this duration. e-governance and commitment to abide by vi. IP Process Re-engineering Patent Rules, the TRIPS agreement of WTO in letter and 2003 have been amended to streamline spirit will help in improving perception of processes and make them more user friendly. India globally. Revamped Trade Marks Rules have been  An efficient and equitable intellectual notified in 2017. property system can help all countries to vii. Creating IPR Awareness: IPR Awareness realize intellectual property’s potential as a programs have been conducted in academic catalyst for economic development and social institutions, including rural schools through & cultural well-being. satellite communication, and for industry,

ICSI-NIRC Newsletter I January 2021 I 45 ARTICLE TRADEMARK RIGHTS: ROAD TO

CS Shubham Budhiraja, ACS आत㔮निर㔭र BHARAT [email protected]

वसुधैव कुटुम्क륍 - The world is one family required. Pre 1991 LPG, Indian economy was having a defensive approach and same is evident through policy of import substitution. The policy INTRODUCTION of Import substitution focused on protecting the Indian economy at eve of Independence domestic economy by restricting the imports. Post was characterized as backward and stagnant 1991 LPG, the import substitution sustain with an economy coupled with poor Infrastructure, low amendment that result into promoting the domestic productivity and Industrial failures. The Primary economy with export promotion and same policy is goal was to achieve self-sufficiency in matter still in subsistence. Post 1991 marked as structural of food security. Though there were plans (not transformation with objective of achieving growth goals) to achieve structural transformation and with development. Industrial Policy of 1956 and Green revolution, Hence, it is submit that the Policy of आत्निर㔭र 1960’s are instances of same. The Principles of is a new version of Import substitution with a Comprehensive planning were adopted to achieve tyndall effect which has scattered the lights of aims of socialistic and capitalistic views. Though export promotion with an objective to achieve the goals of compressive planning seem to be a self-sufficiency without expressly compromising the social distancing objective with regulated economy imports in a short run, the result of which in long and worst crunch of foreign reserves pushed India run supposed to be uplifting of domestic economy. to expand its horizon to the globe. This marked the beginning of market economy where demand and GLOBAL TREND supply forces determine the system. Indian policies From the early days of the Silk Road to the has always been uncertain of exclusive capitalistic creation of the General Agreement on Tariffs and (market economy) or exclusive socialistic (regulated Trade (GATT),trade has played an important role economy). It has always remained a question of in supporting economic development. The General debate with regard to the composition of mixed Agreement on Tariffs and Trade (GATT) traces its economy. One who favor the dominance of origins to the 1944 Bretton Woods Conference, socialistic features, argue for principle of socialist which laid the foundations for the post-World in preamble and concept of social welfare state War II. Though GATT was only a set of rules and and substantive equality. On the other hand one multilateral agreements and lacked institutional who favor the dominance of capitalistic features, structure. This is the primary reason for the birth argue for private rights of business, occupation & of World trade organization on January 1, 1995 profession and liberal economy. The truth is that no to which India is a founding member. The Policy of country in the world can claim itself to be exclusive WTO is to favor the states having market economy socialistic and exclusive capitalistic even though status. Thus, under the pressure / influence of same, manifested as same. The only difference between Indian marked its economic and legal reforms to India & other countries is an expressive balance which Trademarks act,1999 is a classic example. of mixed economy. Indian economy expressively HISTORY OF TRADE MARK LAW guide itself with balancing features whereas the The Anglo Indian trademark law had its origin countries impliedly perform the same as and when * The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI 46 I ICSI-NIRC Newsletter I January 2021 ARTICLE dating back to 1266. It was also called as Bakers The delay of about 60 years in legislation and marking law. The law required bakers to place slow pace of Industrial development appears to a mark on the loaves of bread that they sold, be largely responsible why Indian cannot boast identifying the baker. Any bread offered for sale of Internationally famous trademarks. Also, during unstamped was at once confiscated by officer of this period foreign trade marks established abundance and the offending bake was mulcted strong foothold in India market making it difficult in heavy damages. for Indian brands to develop even within Indian The venetian law of 1474 is the first systematic market. Intellectual property law which provides that 1940-1958: “each person who will make in this city any new & 1940 act established trademark registry indigenous contrivance, (which is not made before combined with patent office which by 1943 in our dominion) then it would be forbidden for amendment separated to a separate registry. any other to use it in any resemble form without In 1953, Government of India appointed consent and license of author up to 10 years. a committee known as trademark enquiry 1877-1940: committee for reforms in trademark law. Justice N. From 1858 onwards, Indian British system RajagopalaAyyangar of Madras High court was marked as CROWN RULE and the systematic appointed to examine the committee report. process of legislation initiated. E.g. The Indian In October 1955, Government of India contract act, 1872, , 1860, asked Dr. Venkatesawaran, Officer on special , 1872. duty (trademark, patents & design) to draft a Britain parliament passed the English trademarks comprehensive law on basis of Ayyangar report. registration act, 1875 and accordingly, Bombay The Trade &Mercandise act, 1958 passed as mill owners association in 1877 made the first act no. 17 of 1958 which brought in force from demand for law on trademark in India. 25th November 1959. Britain Parliament Introduced a bill in 1879 1958-1999: which referred to select committee but lapsed. A The Judgment of Calcutta High court in Fresh bill re-introduced in 1880 but opinion gets American Home v. Mac (Dristan case), which made divided. The select committee favored adoption it almost impossible for foreign trademark to get of a scheme for registration of Indian marks in registered in India. The apex court overruled this England. The suggestion met with severe opposition judgment in 1985. and the Bill was dropped. The necessity to amend the law also become In 1884, Britain Govt. of India denied for access important due to pressure and influence of to Paris convention. This put Indian manufacturers International events such as Indian becoming original and traders at a disadvantage in International member of WTO in 1995 and Joining the Paris arena. Thus, Indian traders had to sell products convention with effect from December 8, 1998. outside Indian under foreign brand name to which TRADEMARK : INSIGHT INTO INDIAN ECONOMY they had to pay them heavy royalty. Trademark rights are private and negative In 1905, the Association of chambers of rights based on principle of national treatment commerce of U.K stated that – “There was no which has far reaching implications. The Indian valid why Indian empire should stand in Isolation government joined the Madrid protocol, 1989 from rest of the world in this matter”. Commerce and on February 7, 2007 decided to accept this Industry in U.K wanted IP law in India because protocol. Trademark amendment act of 2010 German, Australian were selling their copied allows any person or enterprise to seek registration products in Indian market. in any of 84 member countries of Madrid protocol In 1927, Commercial congress UK passed a through a single application. There are 3 dominant resolution doubting efficacy of common law for players in exploitation of Intellectual property: protecting trademark and were demanding for • 1. Intellectual property right holder trademark law in India[1]. In 1935, Chief Justice • 2. Licensee of Patna High court endorsed the demand for • 3. Consumer trademark legislation in India[2]. The system of exploitation has to be fair

ICSI-NIRC Newsletter I January 2021 I 47 ARTICLE and reasonable to all the players. If the subject important player in this activity. Trademark matter of IPR has good demand in market and deserve more attention than patents or copyright. right holder do not apply it then necessarily the Even though trademarks are for limited duration pirates will produce parallel products and thus as compared to patents still they have much more grey market producers will supply the product value because trademark have a direct impact on to market. The philosophy of IPR is that one else mind of its users. Patents have an impact limited can supply the market even in the dire need and to producers only. Even copyright works and its anyone who supplies it would commit Infringement. contents are sold under trademark of publishers. But the question is should the right holder have the A patent would be fruitful only if it reaches the right to short supply or not to supply the market ? mass which is through a reputed brand name/ These questions have been raised with respect to trade mark. medicines and drugs in pharmaceutical sector but The market access, market power, ownership they are equally important in all sectors of various of Industry, displacement of local industry are subject matters covered by IPR as they are vital to related to ability to sell which are achieved Industry and economy. through TRADMARK. Monopoly and Competition are two sides of COMPETITION LAW: CREAM OVER CAKE FOR IPR. An IPR must give way only if it operates as IPR monopoly and subject matter to be fairly allowed be used by other as well. In TRIPS, the competition law were designated Each country has its own strength or weakness to protect against abuse of IPR. However, India has in relation to different types of IPR. Increased not successfully utilized the competition law to turn protection to one form of IP may be advantages to IPR to its advantage. It is the policy of competition domestic enterprises or consumers whereas may not law and the public Interest that anti-competitive be useful if enhanced rights given to other type of IP. agreements are to barred and declared void. Example, U.S did not join Berne convention on Section 3(5) of competition act is a root cause of Copyright till 1987 because copyright protection abuse of IPR. Section 3(5) in the Competition Act, 2002 was not advantageous in his country. Post 1987, U.S not only joined the Berne convention but Nothing contained in this section shall restrict— also become the vocal supporter of it because the right of any person to restrain any of high copyright stakes in Hollywood Industry infringement of, or to impose reasonable and software. Hence, U.S diplomatically played conditions, as may be necessary for protecting any comparative advantage. of his rights which have been or may be conferred Thus, to generate wealth for one’s country, it upon him under: is imperative to analyze in what particular field (a) the Copyright Act, 1957 (14 of 1957); the country have potential of generating wealth. (b) the Patents Act, 1970 (39 of 1970); Worldwide there is no well-known trademark (c) the Trade and Merchandise Marks Act, 1958 of India. Even FMCG sector is dominated by (43 of 1958) or the Trade Marks Act, 1999 foreign trade mark. India will not be benefited if (47 of 1999); judiciary throw its weightage in favor of foreign (d) the Geographical Indications of Goods trade marks without keeping Interest of domestic (Registration and Protection) Act, 1999 (48 market. India’s Interest lies not in protecting Well of 1999); known trademarks but in licensee rights. (e) the Designs Act, 2000 (16 of 2000); There is a need to have debate on whether rights (f) the Semi-conductor Integrated Circuits granted are used to contribute to the society. There Layout-Design Act, 2000 (37 of 2000) is a need to appreciate the abuse of IPR together (ii) the right of any person to export goods from with impact of IPR on development, growth, India to the extent to which the agreement establishment and displacement of Industry and relates exclusively to the production, supply, most importantly the access to market. distribution or control of goods or provision Marketing or sales are ways to part a person of services for such export. from his money. Thus, trademark are the most Section 33(3) of MRPT act was somewhat similar to Section 3(5) of competition act. But the purpose

48 I ICSI-NIRC Newsletter I January 2021 ARTICLE of competition act is to strengthen the competition through dominance of market economy over and remove the difficulties experienced in MRTP regulated economy. It is important to note that act. The use of “as may be necessary” suggest Indian traders failed to have a well-known that all steps or conditions or clays secured by IP reputed trademark due to 2 major reasons. right holder would be considered as reasonable a) No legislation for 60 years (1877-1940) because agreement would couch the conditions in b) Dominance of Foreign trade mark in Indian the language in a manner which would establish market during this course necessity condition to protection IP rights. These uncontrollable reasons prevent small & On face of it, Section 3(5) looks perfectly medium Indian traders have a fame & reputed fine. Necessarily, IP right holders should have a trade mark worldwide. Noting these lacunas, right to restrain Infringements and should be in a 1991 LPG was Introduced to assist the domestic position to protect IP. There is nothing wrong in economy and to make these domestic traders self- permitting them to impose reasonable conditions sufficient. However, the practice to achieve this as necessary for protection of IPR. But these aim was somewhat contrary owing to influence of rights are already granted to right holders under WTO TRIPS & Paris convention. respective IP legislations. Section 3(5) does not At one hand, India wanted to achieve self- make the protection against Infringement any sufficiency and help domestic traders reputed stronger for right holder. globally and on other hand, the trademark law All forms of IP have the potential to raise of 1999 giving excessive special rights to foreign competition law problem. There is a dichotomy trade marks. India under the pressure of world between IPR and competition law here former diplomacy enacted laws and policy which result endangers the competition while latter engender into giving excessive benefit to the foreign trade the competition. There is a need to appreciate the marks through statutory rights, and special relief existence of a right and its exercise but if during against anti-competitive agreements which exercise of such a right any anti-competitive squarely failed the aim of self-sufficiency. All practice is visible to the detriment of consumer these chocolates have spoon feed the giants and Interest or Public Interest then it must be dealt with prevented domestic players to have their stake by competition law. Thus, tool of IPR cannot/should and thus in this way special focus required in not become a reason to justify anti-competitive trademark policy agreements. CONCLUSION: [1] Ventakteswaran, 1937 [2] COURTNEY TERRAL,CJ , Patna High Court in SELF SUFFICIENY- A SOCIAL DISTANCING ? the foreword to a book by S. Venkateswaran on The original goal of LPG policy was to Promote the Law of Trade and Merchandise marks in India, the domestic economy with export promotion Madras, Madras law journal office,1937.

ICSI-NIRC Newsletter I January 2021 I 49 ARTICLE Patent- Stimulus to Industrial CS Shweta Jain, ACS Innovation [email protected]

In general parlance, Patent is a monopoly Act, 1970 whereas “Invention” means a new grant, derived from the Greek word ‘mono (alone) product or new process involving an innovative and polein (sale)’. Since ancient times, monopolistic or inventive step having capability of industrial privileges are been granted for encouraging application. innovation and creativity among the Inventors. Moreover, inculcating the sense of security and What remains the term of Patent? self-assurance among the budding inventors as Section 53 of the Act provides that the term of well as talent hubs the grant of patent initiated every patent granted after the commencement of way back in 14th century. the Patents (Amendment) Act, 2002 and the term Utility, innovation, investment to industry of every patent which has not expired and has and encouragement to creativity is the prime not ceased to have effect, on the date of such motive behind Patent Laws. With the emergence commencement, shall be 12 years from the date of revolution in industries, entrepreneurship of filing of application for the patent. Explanation specifically the creative bend inevitably required to Section 53(1) clarifies that the term of patent in to be protected from being copied and imitated. case of international applications filed under the Because ultimately innovative technology leads Paris Convention Treaty (PCT) designating India, to rise in nation’s valuable and tradable assets shall be 20 years from the international filing date at large. The law relating to patents contained in accorded under the PCT. the Patents Act, 1970 has been amended in the Important ‘terms’ to understand- year 1995, 1999, 2002 and 2005 to meet India’s Invention- Section 2(1)(j) defines invention obligations under the agreement on Trade Related as to mean a new product or process involving Aspects of Intellectual Property Rights(TRIPs). an inventive step and capable of Industrial The reason behind amendments were to create application. harmony and synchronisation with the international Inventive Step- Section 2(1)(ja) defines the term IPR system and practices. Moreover, updation is ‘inventive step’ as to mean a feature of an invention the key to success and hence industrial growth that involvestechnical advance as compared to the and development always demanded stronger and existing knowledge or having economic significance more updated Patent Laws. or both that makes the invention not obvious to a person skilled in the art. What is Patent? New Invention- Section 2(1)(l) defines the A Patent is a statutory right for an invention term new invention as to mean any invention or granted for a limited period of time to the technology which has notbeen anticipated by patentee by theGovernment, against complete publication in any document or used in the country disclosure of his/her invention for evading or elsewhere in the world before the date of filing others, from making/ using/ selling/ importing of patent application with complete specification, the patented product or process for producing i.e. the subject matter has not fallen into public that product without patentee’s consent. In other domain or that it does not form part of the state words, “Patent” signifies the patent (monopolistic of the art. right) for any invention granted under the Patents * The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI 50 I ICSI-NIRC Newsletter I January 2021 ARTICLE

What is not ‘invention’ ? describing the details ofthe invention along Section 3 clearly describes what shall not be with a statement of claims, to be filed considered as ‘invention’ under the act; Roughly within 12 months of filing the provisional we may configure following heads as exceptions application. If thecomplete specification is to ‘inventions’- not filed within the prescribed period of (a). invention contrary to established natural law 12 months, the application is considered to (b). invention against or contrary to public order have beenabandoned. or morality or ethics within society, causing • Provisional application is an application harm to living beings filed with provisional specification, which is (c). invention resulting admixture of various useful inestablishing a priority date for your components which causing aggregation in the invention. properties of components forming parts of • Provisional application allows sufficienttime (d). any such invention not causing increase in to the applicant to assess and evaluate the efficacy or performance of known substance market potential of his invention before (e). any horticulture or agriculture method filing complete specification. (f). presentation of information • Though, filing provisional application is (g). literary/ dramatic/ musical/ artistic work/ or not necessary and one can file application any other aesthetic creation directlywith complete specificationi.e. final (h). any such invention which is mere duplicity application. of well-established tradition or traditional Who can make Patent Application? knowledge Patent Application may be made by– (i). invention relating to atomic energy; & many (a). Any person claiming to be the true and first more…. inventor of the invention What is provisional specification? (b). ny person being the assignee of the person • Provisional specification describes the claiming to be the true and first inventor nature of the invention to have the priority in respect of the right to make such an of the date of filing the application inwhich application inventive idea has been disclosed. It must (c). legal representative of any deceased person, be followed by a complete specification entitled to make patent application.

ICSI-NIRC Newsletter I January 2021 I 51 ARTICLE

Is any ‘patent’ valid worldwide? or had superior ‘efficacy’. There is no patent valid worldwide. Patent 4. Bayer Corporation &Anr vs Union of India protection is within territorial limits and therefore &Ors - India’s First Compulsory License it is effective only within the territory of India. 5. Dr Snehlata C. Gupte v. Union of India Separate patents should be obtained in each &Ors- The Actual Date Of Grant Of A Patent country where the applicant requires protection of is the date on which the controller passes an his invention.However, an international application order to that effect on the file i.e. on the day known as PCT application can be filed through the in which the Controller makes a decision to Receiving Office (RO) for International application grant a patent. The issue of a certificate at a located at Kolkata, Chennai, Mumbai and Delhi. later date is then nothing more than a mere formality. LANDMARK CASES- PATENT ACT 6. trix Ltd v Maharaja Appliances Ltd.- High 1. Hoffmann-La Roche Ltd vs Cipla Ltd., Court granted interim injunction restraining Mumbai Central- First Patent Litigation in Maharaja Appliances from manufacturing India post India’s 2005 Product Patent regime and marketing Maharaja Whiteline electric whichincluded public interest and pricing kettle Model No EK 172 as it infringed Strix’s issues. patent. 2. Bajaj Auto Ltd. vs Tvs Motor Company Ltd- 7. Glochem Industries Ltd vs Cadila Healthcare Speedy disposal of Intellectual property Ltd.- Petition filed by Glochem Industries, rights cases after its pre-grant opposition to Cadila’s 3. NovartisAG vs Union of India - Rejection of drug patent application was dismissed by the a patent for a Drug which was not ‘inventive’ ACP (Assistant Controller of Patents).

52 I ICSI-NIRC Newsletter I January 2021 ARTICLE INTELLECTUAL PROPERTY CS Manju Singh, ACS RIGHTS (IPR) [email protected]

“Intellectual Property Rights” are the rights Copyright covers an huge range of works – granted by the law to the person over the creations not just books, music, paintings, sculpture and of their mind such as inventions, literally or artistic films, but also computer programs, databases, works, symbols, names and pictures utilised in advertisements, maps and technical drawings, commerce. among other things. These rights are safeguarded by Article 27 of the Universal Declaration of Human Rights. What rights does copyright grant? The importance of Intellectual Property (IP) was Copyright includes both ‘economic’ and ‘moral first recognized within the Paris Convention for the rights’. Essentially, economic rights include the Protection of Industrial Property (1883) and the right to control the distribution of a work. In other Berne Convention for the Protection of Literary words, a copyright owner can stop anyone from and Artistic Works (1886). These treaties are copying or using a work without permission. How administered by the World Intellectual Property the owner enforces these rights will depend on Organization (WIPO). Now there are more the national laws of the country concerned, but than quite 25 international treaties which are countries generally provide a combination of civil administered by WIPO. and criminal penalties for copyright infringement. Copyright also includes certain of Why is IP important? the creator – including, among others, the right to The progress and well-being of humanity be acknowledged as the author of a work and to depend on our ability to come up with new ideas prevent it from being altered in a way that could and creativity. Technological progress requires damage the creator’s reputation. the development and use of new inventions, while a healthy culture will always seek new ways to Transfer and trades in copyright: express themselves. Generally, economic rights can be transferred Inventors, artists, scientists and businesses put a and divided. A right owner may agree to let lot of time, money, energy and imagination into someone use a work under certain conditions developing their innovations and creations. To (licensing), or they may give or sell the rights encourage them to do so, they need the opportunity to someone who then becomes the new owner to make a decent return on their investment. (assignment). And if the copyright owner dies, their That means giving them the right to protect their heirs or successors will receive their economic rights. intellectual property. It is very common for rights to be transferred, e.g. IP rights have long been recognized within • Book authors, music composers and recording various legal systems. For e.g. patents to protect artists often license or assign rights to inventions were granted in Venice as far back as publishers in exchange for payments known the 15th century. as royalties. Types and categories of IP • Copyright owners may choose to give away Intellectual Property Rights are more often their work for free, or to let other people divided into two main categories: use it freely based on certain conditions. i. Copyright and related rights

* The views expressed are personal views of the author and it should not be taken as views of the NIRC-ICSI ICSI-NIRC Newsletter I January 2021 I 53 ARTICLE

National and international copyright law: (a) Patents: There are different national laws on copyright Patents were one of the first types of in different territories, as with other forms of intellectual property to be recognized in modern intellectual property. However, international legal systems. Today, patented inventions pervade law establishes certain minimum standards of every aspect of life, from electric lighting (patents protection such as: held by Edison and Swan) to the iPhone (patents • Copyright arises as soon as a work is created. held by Apple). There is no need for a creator to register By patenting an invention, the patent owner a work or complete any other formalities gets exclusive rights over it, meaning that he or in order to gain protection (though some she can stop anyone from using, making or selling countries do operate voluntary copyright the invention without permission. registration schemes). The patent lasts for a limited period of time, • Countries are required to protect most generally 20 years. In return, the patent owner copyrighted works throughout the life of the has to disclose full details of the invention in the creator and for at least 50 years after the published patent documents. Once the period creator’s death. of protection has come to an end, the invention • International law means that copyrighted becomes off patent, meaning anyone is free to works are generally protected in most make, sell or use it. In this way, the patent system countries, not just the country in which they aims to benefit everyone: were created. Obtaining Patent • These minimum standards are guaranteed Patents are territorial: protection is granted by a series of international treaties within a country under its national law. Different administered by WIPO. States that have countries have different laws. Generally, in order joined these treaties can provide more to gain protection, an inventor or firm will need to than the minimum protection – for example, file an application with a patent office describing a longer copyright term – but they cannot the invention clearly and in sufficient detail. Such provide less. descriptions usually include drawings, plans or diagrams. The application also contains various Related rights claims, that is, information to help determine The law also protects the rights of certain the extent of protection to be granted by the people or groups who are involved in creative patent. The application will then be examined by work but do not qualify for copyright protection the patent office to determine if it qualifies for in many jurisdictions, including performers such as protection. singers and actors, broadcasting organizations, National, Regional and International and organizations such as record companies that protection produce sound recordings. These are known as Inventors and firms must decide in which “related rights or neighboring rights” because territories they want patent protection. Several they are related to copyright. groups of countries have developed regional The protection offered is similar to copyright. patent systems that help reduce these costs, for Generally, right owners can stop people from example the African Regional Intellectual Property recording, communicating, or broadcasting Organization (ARIPO). Under most of these their work without their permission. However, systems, an applicant requests protection for an the term of protection is usually shorter than invention in one or more countries in the group, and copyright; in most countries, it lasts for 50 each country then decides whether to offer patent years from the date of the performance, protection within its borders. WIPO administers the recording or broadcast. PCT System, an international system that allows ii. Industrial Property applicants to request protection under the Patent Industrial property includes patents for Cooperation Treaty in as many signatory states as inventions, industrial designs, trademarks and they wish through a single application. geographical indications.

54 I ICSI-NIRC Newsletter I January 2021 ARTICLE

(b) Trademarks a geographical indication includes the name of Trademarks are signs capable of distinguish the place of origin of the goods. the goods or services of one undertaking from Examples: Roquefort cheese from France, those of other undertakings. Trademarks date Darjeeling Tea from India and Tequila liquor from back to ancient times when artisans used to put Mexico. their signature or “mark” on their products. India, as a member of the World Trade Protecting Trademarks Organization (WTO), enacted the Geographical The best way of protecting a trademark is to Indications of Goods (Registration & Protection) register it. Owners of a registered mark have the Act, 1999 has come into force with effect from exclusive right to control who uses it. To register a 15th September 2003. mark in a territory, the applicant needs to submit The Registration Process of GI (India)- a reproduction of it to the trademark office plus a full list of the goods or services to which it would apply. Once a trademark has been granted, the owner can sue in the relevant national court if it is infringed by someone else. Equally, a trademark owner could be sued by third party arguing that it is similar to their own mark. A trademark will only be granted for a limited period – in most countries, 10 years – but the mark can be renewed further on payment of additional fees, provided it is still being used, so in practice a trademark can be protected indefinitely. International protection to GI International recognition of appellations of origin and “indications of source” dates back to the Paris Convention of 1883. More recently, the agreement on Trade-Related Aspects of Intellectual Property (TRIPS) included some further provisions to prevent the misuse of GIs. In addition, Administrative steps involved for registration WIPO administers the international Lisbon System. of trademark in India: This used to apply only to appellations of origin, National, regional and international but the Geneva Act of the Lisbon Agreement protection on Appellations of Origin and Geographical Like most IP law, trademark protection is Indications, adopted in 2015, extended the System territorial. However, regional and international to make it possible to register other geographical systems have developed to make it easier to indications internationally too. obtain trademark protection in many countries. (d) Industrial designs: WIPO offers international registration under the . By filing a single application, users can obtain trademark protection in as many of the countries that have joined the System as they wish. (c) Geographical Indications (GIs) Geographical indications and appellations of origin are signs used on goods that have a specific geographical origin and possess qualities, An industrial design constitutes the ornamental a reputation or characteristics that are essentially or aesthetic aspect of an article. A design may attributable to that place of origin. Most commonly, consist of three-dimensional features, such as the

ICSI-NIRC Newsletter I January 2021 I 55 ARTICLE shape or surface of an article, or of two-dimensional of such secret information in a manner contrary to features, such as patterns, lines or color. These honest commercial practices by others is regarded aesthetic aspects can be hugely important in the as an unfair practice and a violation of the trade modern economy. Industrial designs are applied secret protection. to a wide variety of industrial products and The Paris Convention for the Protection of handmade goods: cars, telephones, computers, Industrial Property (Paris Convention) administered packaging and containers, technical and medical by WIPO deals partly with the protection of trade instruments, watches, jewelry, electrical appliances, secrets as does the World Trade Organization’s textile designs, and many other types of goods. (WTO) Agreement on Trade-Related Aspects of What designs can be protected? Intellectual Property Rights (TRIPS Agreement). What kind of protection does a trade secret offers? Depending on the legal system, the legal protection of trade secrets forms part of the general concept of protection against unfair competition or is based on specific provisions or case law on the protection of confidential information. While a final determination of whether trade To qualify for protection as an industrial design secret protection is violated or not depends on the under most national laws, the design must be new circumstances of each individual case. and show a degree of originality or individuality, A trade secret owner, however, cannot stop meaning that it is not identical or very similar to others from using the same technical or commercial any previous design. Moreover, it must be capable information, if they acquired or developed such of being produced industrially, so unique artworks information independently by themselves through are not covered. their own R&D, reverse engineering or marketing Obtaining protection Industrial design rights analysis, etc. Since trade secrets are not made are territorial, so designers or firms may need public, unlike patents, they do not provide to deal with many different national systems if “defensive” protection, as being prior art. they want protection in many countries. However, regional systems exist for some groups of countries. India and IPR WIPO administers the Hague System. Under the India is a member of the World Trade Hague Agreement Concerning the International Organisation and committed to the Agreement Registration of Industrial Designs, applicants can on Trade Related Aspects of Intellectual Property file a single international application covering up (TRIPS Agreement). to 100 designs in as many signatory states as they India is also a member of World Intellectual choose. Property Organization, a body responsible for (e) Trade secrets: the promotion of the protection of intellectual Trade secrets are IP rights on confidential property rights throughout the world. information which may be sold or licensed. In general, to qualify as a trade secret, the National IPR Policy information must be: • The National Intellectual Property Rights • commercially valuable because it is secret, (IPR) Policy 2016 was adopted in May • be known only to a limited group of persons, 2016 as a vision document to guide future and development of IPRs in the country. • be subject to reasonable steps taken by the • It’s clarion call is “Creative India; Innovative rightful holder of the information to keep it India”. secret, including the use of confidentiality • It encompasses and brings to a single agreements for business partners and platform all IPRs, taking into account all employees. inter-linkages and thus aims to create and The unauthorized acquisition, use or disclosure exploit synergies between all forms of

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intellectual property (IP), concerned statutes States Trade Representative’s (USTR’s) and agencies. ‘Priority Watch List’ for alleged violations • It sets in place an institutional mechanism of intellectual property rights (IPR). for implementation, monitoring and review. • In its latest Special 301 report released It aims to incorporate and adapt global by the United States Trade Representative best practices to the Indian scenario. (USTR), the US termed India as “one of the • India’s IPR regime is in compliance with world’s most challenging major economies” the WTO’s agreement on Trade-Related with respect to protection and enforcement Aspects of Intellectual Property Rights of IP. (TRIPS). • Data Exclusivity: Foreign investors and MNCs Achievements under new IPR policy allege that Indian law does not protect Improvement in GII Ranking: India’s rank in the against unfair commercial use of test data Global Innovation Index (GII) issued by WIPO or other data submitted to the government has improved from 81st in 2015 to 52nd place in during the application for market approval 2019. of pharmaceutical or agro-chemical Strengthening of institutional mechanism products. For this they demand a Data regarding IP protection and promotion. Exclusivity law. Clearing Backlog/ Reducing Pendency in IP • Enforcement of the Copyright act is weak, applications: Augmentation of technical manpower and piracy of copyrighted materials is by the government, has resulted in drastic reduction widespread. in pendency in IP applications. Opportunities and scope for Company Secretaries Automatic issuance of electronically generated under IPR: patent and trademark certificates has also been Protection of intellectual property has become introduced. so important that companies today carry out IP Process Re-engineering Patent Rules, 2003 intellectual property audits to identify their have been amended to streamline processes intellectual wealth and form special departments Technology and Innovation Support Centres to manage them. The legal professional who (TISCs): In conjunction with WIPO, TISCs have been specializes with matters related to intellectual established in various institutions across different properties are termed as Intellectual Property states. Attorneys/Agents. The major job of all Intellectual property (IP) Professionals is to protect the Issues in India’s IPR regime intellectual property rights of their clients. • Section 3(d) of the Indian Patent Act 1970 All the intellectual property rights are protected (as amended in 2005) does not allow patent under various sub-divisions of law such as Patent to be granted to inventions involving new under patent law; Trademark under trademark forms of a known substance unless it differs law and Copyright under copyright law etc. An significantly in properties with regard to intellectual property Professional can specialize efficacy. This means that the Indian Patent in any or all of these fields, and their roles and Act does not allow evergreening of patents. responsibilities vary according to the fields. • This has been a cause of concern to the • Patents Attorney: pharma companies. Section 3(d) was • Trademarks Attorney: instrumental in the • Copyrights Attorney: (IPO) rejecting the patent for Novartis’ drug These professionals specialize with copyright Glivec (imatinib mesylate). related matters such as copyright registration and • Issue of Compulsory licencing (CL): CL is protection services which involves protection of problematic for foreign investors who bring the original creative work of the creators such as technology as they are concerned about the music, books, manuscripts, misuse of CL to replicate their products. It has Besides the patent, copyright, trademark been impacting India-EU FTA negotiations. areas professionals can also work in the field • India continues to remain on the United of industrial design, layout design of integrated

ICSI-NIRC Newsletter I January 2021 I 57 ARTICLE circuit, geographical indication, trade secrets technology, physics, chemistry or biology. and protection of plant varieties, information and communication technology law (cyber laws). Conclusion Company Secretary having all Skills required India has made several changes in its IPR for IPR Professionals. regime to increase efficiency and has cut down Our prestigious organization The Institute of the time required to issue patents. Company Secretaries of India has given us all Government’s effort to strengthen National IPR that is enough to make a career in the IPR, yet we policy, IP appellate tribunal, e-governance and shout at creating a career in it. We have so much commitment to abide by the TRIPS agreement of knowledge of working in this profession that all of WTO in letter and spirit will help in improving us can make a good career on our own hard work. perception of India globally. When we look at the syllabus of our CS, we find An efficient and equitable intellectual property that we have read all those who want to work in system can help all countries to realize intellectual this profession. property’s potential as a catalyst for economic Since IPR law is an innovation-oriented development and social & cultural well-being. profession, Intellectual Property rights professionals References: should possess scientific, technical, technological www.wipo.int and business skills. They should possess an eye https://www.drishtiias.com/to-the-points/ for detail to understand all kinds of information paper3/intellectual-property-rights and must have some technical skills in engineering, https://ipindia.gov.in/resources.htm

ICSI Motto: lR;a on /keZa pjA speak the truth abide by the law ICSI Missin: "To develop high calibre professionals facilitating good corporate governance 58 I ICSI-NIRC Newsletter I January 2021 ICSI-NIRC Newsletter | June 2020 | 59 ICSI Motto: lR;a on /keZa pjA speak the truth abide by the law ICSI Missin: "To develop high calibre professionals facilitating good corporate governance ICSI-NIRC Newsletter | June 2020 | 59