The Law on the subject is covered by the Copyright Act; the Trade and Merchandise Marks Act; Patents Act and the Designs Act. These are mainly based on the English law on the subject. The law is poised for fundamental changes to meet the international commitment of the Indian Government under the TRIPS/WTO Agreement.
In this article, we briefly describe the existing laws as well as the proposed changes.
Copyright protection in India is available for any literary, dramatic, musical, sound recording and artistic work. The Copyright Act 1957 provides for registration of such works. Although an author’s copyright in a work is recognised even without registration, it is advisable to get the same registered since it furnishes prima facie evidence of copyright in a court of law.
Infringement of copyright entitles the owner to remedies of injunction, damages and accounts.
Copyright in a literary, dramatic, musical or artistic work (other than a photograph) published within the lifetime of the author subsists for fifty years from the lifetime of the author. An Amendment Bill is on the anvil to extend the term in favour of performers1 (at present twenty five years) to fifty years (in order to bring it in accord with the TRIPS Agreement). The amendment also aims to bring original works relating to satellite broadcasting, computer software and digital technology under copyright protection. With the issuance of the International Copyright Order, 1999,the provisions of Copyright Act have been extended to nationals of all World Trade Organization (WTO) Member countries.
The law relating to registration of trade marks is governed by the Trade and Merchandise Marks Act, 1958. A distinctive mark (as defined) can be registered under the said Act. In case of infringement of registered trademarks, the statutory remedies of injunction, damages, accounts and delivery up of infringing labels and marks are available. An action for "passing-off" would lie in relation to an unregistered mark under certain circumstances.
In order to simplify the law and meet India’s international obligations under the TRIPS, a new law called the Trade Marks Act, 1999 has been passed but has not yet been brought into force. Extensive changes have been introduced by the new Act. The major changes are given below:
- Definition of a 'mark' is extended to include the shape of goods, packaging, and combination of colours.
- Service Marks: These would now be allowed to be registered.
- Well Known ‘Mark’: An application for registration of a mark may be refused if it is similar or identical to a well known mark.
- Collective marks: The new Act will permit registration of marks in favour of associations of persons as "collective marks". Collective marks are defined as signs which distinguish the geographical origin, material, mode of manufacture, quality or other common characteristics of goods or services used or intended to be used, in commerce, by the members of a co-operative, an association, or other collective group or organisation.
- Duration of registration: The 7 years period available under the existing Act has been increased to 10 years, extendable by further periods of ten years each.
- Multiclass registration applications: Applicants would be able to file a single application for marks capable of registration in number of classes.
- Infringement of a mark: Offences relating to trade mark infringement have been dealt with more severely under the new Act.
The subject is covered by the Patents Act, 1970. India recognises product patent protection for a period of 14 years. However, in three areas: food, chemicals and pharmaceuticals, it recognises only a process patent for a period of 7 years. With the signing of the GATT Agreement, the Patents Act, 1970 has been amended by the Patents (Amendment) Act, 1999 to bring it in line with the Trade TRIPS Agreement. The amended law would allow the filing of all product patents with a regulatory authority. It also contains provision for granting Exclusive Marketing Rights (EMRs) for five years or till the patent is granted or rejected whichever is earlier.
The Patents (Second Amendment) Act 20022 recently passed by the Parliament provides protection for new micro organisms and proposes a uniform 20 year term from filing date for all patents granted after commencement of the Act. It also provides for publication of all patent applications within 18 months of filing or priority date, whichever is earlier.
The Designs Act, 2000 protects certain designs. The features of shape, configuration, pattern, ornament or composition of lines or colours applied to any ‘article’ whether in two or three dimensional forms (or both), by an industrial process which appeals to the eye can be registered under the said Act. The Designs Act 2000 brought into force in May 2001 entitles an applicant to apply for registration in more than one class. However, registration is granted for only one class. Furthermore detailed classification of designs has been incorporated conforming to the international regime.
Copyright in the design under the 2000 Act would be protected for a period of 10 years from the date of registration.
The Geographical Indication of Goods (Registration and Protection) Act, 1999, was enacted to register and protect geographical indicia of goods that originate from or are manufactured in a particular territory, region or even locality. These goods include agricultural, natural or manufactured goods that are distinct from similar products due to quality, reputation or any other characteristic that is essentially attributable to their geographical origin. Under the Act, such distinctive geographical indicia can be protected by registration. The Act thus facilitates promotion of Indian goods when exported overseas and in turn protects consumers from deception.
An application for registration of a geographical indication can be made by any authority, organization or association of persons representing the interest of the producers of the concerned goods. Registration would entitle a registered proprietor, or a duly authorized user, to the exclusive right of usage of that particular geographical indication with respect to the goods for which it is registered and to obtain relief for any infringement thereof. It may be pointed out however, that non-registration does not mean non-protection of a rightful user. Registration affords better protection in an action for infringement.
The validity of bona fide registration of a geographical indication as a trade mark prior to the coming into force of the Act will not be affected by this enactment and will be treated as valid under the laws relating to trade marks.
1http://www.kaplegal.com/content/articles/ ‘Performance’ in relation to performers’ rights, means any visual or acoustic presentation made live by one or more performers.
2http://www.kaplegal.com/content/articles/ Both Amendment Acts have yet to come into force.
This article is general in nature and not an opinion of the Firm on specific issues. Professional advice may be necessary on legal issues. There is no guarantee that this Article would be up to date.