Indian Intellectual Property Rights
India is one of the UK's most important foreign markets.
If you want to do business in India, or if you currently do business there, you must
understand how to use, protect, and uphold the rights to intellectual property (IP) that you or
your company owns.
This guide explores the fundamentals of intellectual property and how to apply these
concepts in the Indian market. It explains how to deal with IP infringement in India, gives
guidance on how to deal with it efficiently, and provides links to additional resources.
What Are Intellectual Property Rights, And What Do They
Entail?
A trademark, idea, concept, or other forms of production to which an individual or company
has legal rights is referred to as intellectual property (IP). About any company has intellectual
property, which can be a valuable commodity.
The following are some examples of IP:
Copyright is a legal term that refers to the preservation of literary or recorded works
such as books, music, videos, web material, and creative creations.
Patents cover commercial innovations such as a revolutionary business idea or
process.
Designs such as sketches or machine models are covered by this clause.
Trade Mark protects signs, icons, badges, phrases, or sounds that differentiate your
goods and services from those of your rivals.
It is possible to have a registered or unregistered IP.
You automatically have legal rights over your development if your IP is unregistered.
Copyright, unregistered architectural rights, common law trade names and database rights,
proprietary knowledge, and trade secrets are also an example of unregistered IP.
You must apply to an official, such as the Intellectual Property Office in the United
Kingdom, to have your rights recognised if you have registered IP in India. Others will be
free to manipulate your inventions if you do not do so. Patents, licenced trade names, and
protected design rights are also an example of registered intellectual property. Copyright can
also be registered.
Treaties and Reciprocal Arrangements
India is a signatory of the following international intellectual property treaties:
The Paris Convention: Any citizen from a signatory state may apply for a patent or
trademark in any other signatory state, and would be granted the same compliance
rights and status as if they were a national of that state.
The Berne Convention: Each member state recognises the copyright of writers from
other member states in the same way as it recognises the copyright of its citizens
under this agreement.
The Madrid Protocol: A individual may file a single trademark application at their
national office that will provide security in several countries under this provision.
The Patent Cooperation Treaty: This is a central system for filing a single application
to obtain a "bundle" of national patent applications in various jurisdictions.
India's Systems for Intellectual Property Rights
Copyright
Copyright grants an artistic work's author exclusive access to it, normally for a limited
period. Copyright may cover a wide variety of creative, intellectual, or artistic forms, or
"works." Ideas and information are not protected by copyright; only the form or manner in
which they are presented is.
The Berne Convention on Copyright has been signed by India. However, filing the copyright
can be useful in proving possession in the case of criminal action against infringers.
However, in most cases, registration is not required to pursue a copyright infringement
lawsuit in India.
The Copyright Office allows registrations in person or by a delegate. After 2016, India's
Ministry of Commerce and Industry has been in charge of copyright reform. The Department
of Industrial Property and Promotion now manages all IPRs (DIPP).
In India, internet piracy of films, music, games, and apps, as well as unauthorised copying of
physical books, is a problem.
Patents
A patent is a type of government-issued right that prevents an inventor or their successor-in-
title to prohibit anyone from making, using, selling, promising to sell, or importing an
invention for a set of time in return for the invention's public disclosure. Innovation is a
solution to a particular technical challenge that may take the form of a commodity or a
process and must satisfy three key criteria: it must be original, not apparent, and have
industrial applicability. Patent owners are required to reveal useful information about their
innovations to the public to enrich the body of knowledge and promote creativity.
Patent law in India is regulated by the Patents Act of 1970, the Patent Rules of 2003, and the
Patent Amendment Rules of 2016. Utility model patents are not allowed, as they are in the
United Kingdom.
The Patent Registrar is the licencing body for patents and is part of India's Ministry of
Commerce and Industry's Controller General of Patents, Designs, and Trademarks. Patents
are valid for 20 years from the filing date of the patent, with an annual renewal charge.
The ‘first to file' theory regulates Indian patent law, which means that if two people apply for
a patent for the same invention, the first to file will be given the patent.
Designs or Industrial Design Rights
The Designs Act of 2000 and the Designs Rules of 2001 are the regulations that regulate
designs. Designs are valid for ten years and can be extended for another five years.
An industrial design privilege (also known as a "design right" or "design patent") covers the
graphic design of non-utilitarian products. An industrial design is the development of a three-
dimensional structure, arrangement, or composition of pattern or paint or a mixture of pattern
and colour that has aesthetic significance. A two- or three-dimensional pattern used to make a
component, manufacturing commodity, or handicraft is known as an industrial design. That
is, in general, what makes a commodity attractive and, as a result, increases the commercial
value of products.
Trade Marks
A trademark is a distinctive symbol, pattern, or phrase that separates a single trader's goods or
services from those of other traders.
The Trademarks Act of 1999 and the Trade Marks Legislation of 2002 and 2017 make up
India's trademark regulations.
The Controller General of Trademarks, Designs, and Trademarks, which is part of the
Department of Industrial Policy and Promotion, is in charge of patent regulation. The police
now have additional authority to enforce trademark law, including the right to search
premises and seize illegal merchandise without a warrant. However, these powers are limited
by the provision that the police obtain the opinion of the Trade Mark Registrar on the mark's
registration before taking action. This prolongs the process and can result in the removal or
sale of counterfeit products.
In India, trade names are also a kind of trademark, with rights for those who choose to trade
under their surname despite the existence of other trade names.
Because of the common phenomenon of "cybersquatting," which involves third parties
registering domain names for well-known marks in order to market them to the original rights
holders, it is advisable for rights holders to register their domain names as trademarks in India
as soon as possible.
It can take up to two years to complete the registration process. In India, a trademark is valid
for ten years and can be extended permanently for another ten years.
Process of Registering and Enforcing Intellectual Property Rights
in India
You can register most forms of intellectual property (IP) rights in India if you choose to use
them.
Person registrations are required for patents in India, but you may apply under the terms of
the Patent Cooperation Treaty for rights other than industrial designs, which is generally
simpler and faster.
You can register trademarks in India, either through the domestic trademark system or
through the Madrid system.
No registration is required for copyright, although it is recommended that copyrights be
registered with the appropriate authorities.
The Paris Convention's 'priority rights' will aid in the local registration of trademarks,
designs, and patents by enabling rights previously registered elsewhere to become valid in
India if filed within a certain time frame.
Infringement, Misappropriation, And Enforcement
Intellectual property rights violations, known as "infringement" in the case of patents,
copyright, and trademarks, and "misappropriation" in the case of trade secrets, can be
classified as either civil or criminal offences, based on the form of intellectual property
concerned, the jurisdiction, and the intent of the proceeding.
Patent Infringement
Patent infringement happens when someone uses or sells a copyrighted invention without the
patent holder's permission. The arguments of the issued patent determine the nature of the
patented invention or the extent of protection. In certain states, it is legal to use a patented
invention for science. In the United States, this safe haven does not apply unless the testing is
conducted for solely conceptual reasons or to collect evidence in order to qualify a drug
application for regulatory approval. In general, patent infringement lawsuits are dealt with
under civil law (for example, in the United States), but infringement is often dealt with under
criminal law in a few jurisdictions (for example, Argentina, China)
Copyright Infringement
Copyright infringement occurs when a work is reproduced, distributed, shown, or performed,
or derivative works are created, without the consent of the copyright holder, who is usually a
publisher or other company representing or delegated by the work's author. It's commonly
referred to as "piracy." Although copyright is created the moment a work is fixed, the
copyright holder will usually only recover money damages if the author registers the
copyright. In most cases, the copyright holder is responsible for enforcing the copyright.
The ACTA trade agreement, signed in May 2011 by the US, Japan, Switzerland, and the EU
but not yet in effect, mandates that its members add criminal sanctions for copyright and
trademark infringement, including imprisonment and damages, as well as an obligation to
vigorously police for infringement. Copyright has provisions and exceptions that allow for
the exclusive use of copyrighted works without causing infringement. The fair use and fair
dealing doctrines are two examples of such doctrines.
Trademark Infringement
When one party uses a trademark that is identical or confusingly similar to another party's
trademark in reference to goods or services that are identical or similar to the other party's
products or services, this is known as trademark infringement. A trademark is protected in
many countries even though it is not licenced, but registering a trademark has legal
advantages for compliance. Infringement can be resolved by civil lawsuits as well as criminal
procedure in some jurisdictions.
Considerations on Self-Help
There are a number of things you can do to make it more difficult for infringers to clone the
product in general. You may, for example:
Remember the product's concept and how simple it will be for anyone to duplicate it
without seeing the original drawings.
Include successful IP-related provisions in work contracts for employing new
workers. Make sure the workers are aware of their IP privileges and how to defend
them.
Documents, sketches, tooling, samples, equipment, and other items should be
adequately protected and destroyed.
Make sure there are no ‘leakages' in the packaging that counterfeiters might use to
pass off bogus goods.
Examine overruns to ensure the commodity isn't being sold under a fake label.
India's Potential Challenges and How to Cope with Them
The intellectual property (IP) law in India encompasses any important part of IP security. In
recent years, rules governing all aspects of intellectual property have been revised or
reissued, mostly in reaction to India's 1995 accession to the World Trade Organization.
About the fact that Indian IP legislation is comprehensive and broadly equal to European IP
rules, there are still serious questions about IP compliance. Bureaucratic delays, with a
backlog of litigation in the civil and criminal courts, are a significant source of concern in
compliance. This ensures that cases will last up to five years. Transparency is also lacking,
especially at the local level.
The vast number of minor players infringing on IP rights in India is a notable aspect of the IP
environment. This means the seizures are usually minor, necessitating a long-term and
financially exhausting attempt to have an effect.
The fact that the legal system in India is based on common law, as it is in the UK, means that
the basic procedures are familiar.
How to Avoid Problems
Being trained is the most effective way to prevent problems when protecting IP rights in
India. To ensure that you can anticipate any future problems, you should:
Get early guidance on how to defend your IP from Indian IP rights experts –
prevention is better than cure.
Consult general publications and websites on Indian intellectual property rights and
protection.
Perform risk analyses and due diligence reviews on all businesses or entities with
which you do business.
Enlist the aid of other specialists, such as lawyers, local diplomatic missions,
Chambers of Commerce, and the UK India Business Council.
Consult with other companies in India that are already working in a similar field.
Consult your lawyers, brokers, and manufacturers for advice about how to better
protect your rights;
Check with trademark or patent lawyers to see whether your own trademarks or other
intellectual property have been already licenced in India;
Stick to tried-and-true best practices; don't be tempted to do anything new just
because you're dealing in a different country.
Cases and Judgments on Intellectual Property Rights Law
Crocs Inc USA v. Bata India Ltd & Ors
Issue: Is it possible for a design to also act as a trademark?
Judgement: The appellant was unsuccessful in a patent infringement claim when the designs
on which the complaint was filed were considered to be not new or legitimate, so he sought
an injunction on the basis of passing off, which is a common-law action. It was previously
determined by a five-judge bench that as long as design elements are not used as a trademark,
but rather as part of a broader trade dress ensemble, appearance of the commodity in the
packaging, and so on, a passing off argument may be upheld. A passing off activity has been
shown to be maintainable in cases involving elements of trade dress and overall get-up, but
not in cases involving registered fashion. The Defendant pleaded that since aspects of the
concept are claimed as a trademark, no passing off litigation can be brought. The passing off
suit is not maintainable because the appellant relied on the use of its registered designs as a
form trade mark and no other features qualifying as trade dress that are not part of the
registered design have been pled or pointed out. The court concluded with the Defendant that
the appellant had not been able to prove any additional functionality other than the trademark
logo.
The Court understood the Design Act's statutory aim, which is to grant a narrow privilege by
design registration and only allow others to use the design after the term of registration
expires. If the concept was permitted to be used as a trademark after its term expired, the
statutory intent would be defeated. The court used the example of patent rights, which are
given for a limited duration, to point out that the intention to have design protection for a
limited time cannot be generalised to unlimited protection by claiming trademark rights. As a
result, the court decided that the registered concept should not be used as a trademark not
only during the registration process but even afterward. As a whole, the court determined that
a licenced design cannot be protected as a trademark; however, if there are features other than
those registered as a design that is shown to be used as a trademark and for which goodwill
has been developed, only those extra features can be protected as a trademark. Only a lawsuit
for violations under the Designs Act would be appropriate if a licenced design was copied.
M/S. Iritech Inc. vs The Controller of Patents
Issue: Is it valid that an erroneous mention of the patent application number in Form 18
(Request for Examination) would result in the application being considered rejected, even
though the request to correct the clerical mistake was filed within the statutory time limit?
Judgement: The plaintiff's application was granted the considered to be withdrawn status by
the Patent Office, which was reversed by the Delhi High Court. Rejecting the Patent Office's
argument that the Controller's authority to correct clerical errors should only be exerted when
a patent application is under review, and thus no office action should be taken in this
situation. The Court said that if the examiner had reviewed the application under Section 11B
in a timely manner and submitted his report, the Petitioner would have been notified long
before the expiration of the 48-month term that there was a mistake in the request for review,
and the Petitioner could have taken measures to correct the error. The patent application
would have been in the review procedure if the Patent Office had followed the deadlines for
examination.
Roche & Cipla Settlement
Cipla filed Special Leave Petitions against the Division Bench decision in F. Hoffmann-La
Roche Ltd. v. Cipla Ltd. affirming the Single Judge Judgement and decree dated September
7, 2012, taking the long-running Roche vs. Cipla fight to the Supreme Court, as predicted.
The Supreme Court was eventually discussing numerous legal questions and issues, including
the real scope and importance of Section 3(d) in the civil appeal. However, in an unexpected
turn of events, the parties have reportedly resolved their differences following a series of
court proceedings. On May 30, 2017, a Single Judge of the Delhi High Court disposed of the
suit as well as the counter-claim in accordance with the parties' agreement and issued a
decree. Finally, on Cipla's plea, the SC rejected the civil appeals as unconditionally
withdrawn on June 22, 2017, and granted Cipla's request to withdraw the appeals.
M/S Crocs Inc. USA v. Liberty Shoes Ltd. & Ors.
Issue: Is it true that the Crocs footwear designs that have been registered are new or original
designs?
Judgement: The plaintiff lost on the matter of previous publishing because its right of
exclusivity in the nature of its footwear dates from 28.05.2003, and the defendants filed
printout downloads from the plaintiff's website rather than 28.05.2003, demonstrating that the
subject designs were actually in the public domain before the plaintiff's priority date of
registrations. The court held that the plaintiff's registration with respect to the licenced
designs that were the focus of the lawsuits did not give the plaintiff any legitimate right to
allege piracy of the designs. Croc's design features were merely trade versions of sandal
designs that had already existed for a long time, according to the Court, and were neither
innovative nor unique enough to be protected under the Designs Act.
B.N. Firos v State of Kerala
Issue: The State Government's Notification to declare it a "Protected System" under Section
70 of the IT Act 2000 in the Official Gazette was questioned by the Developer of a software
programme developed as part of a government initiative.
Judgement: The Supreme Court ruled that while the Copyright Act and the Information
Technology Act are read together, only such "data applications" that count as "government
works" under the Copyright Act can be called "protected systems" under the Information
Technology Act. The Court dismissed the Appellant developer's assertion of copyright of
software developed as part of a government initiative, ruling that the Government is the first
owner of the software in question since it was first released by a Government Body, as
specified by Section 2(k) of the Copyright Act. The Notification under Section 70 of the IT
Act 2000 in the Official Gazette was considered to be legal until this condition was met.
