 copyright law protects the rights of creators in their works in fine arts,

publishing, entertainment, and computer software. The laws protect the owner of
the work if others copy, present, or display the owners work without permission.

 Trademark law protects a word, phrase, symbol or design that is used by an

entity to identify its product or service. Examples are Dunkin Donuts orange and
pink sausage style lettering, Apple’s apple logo, and Adidas’ three stripes.
Trademark owners can prevent others from using their marks, or marks which
are confusingly similar so that consumers would not be able to identify the
source. Federal and state laws govern trademarks but the Lanham Act is the
primary source of trademark protection. These laws protect against infringement
and dilution. Rights in trademarks are gained by being the first to use a
trademark in commerce or being the first to register the mark with the United
States Patent and Trademark Office.

 Patent law grants protection for new inventions which can be products,
processes or designs and provides a mechanism for protection of the
[Link] patent law promotes the sharing of new developments with others
to foster innovation. The patent owner has the right to protect others from
producing, using, distributing or importing the protected item. Essentially the
patent is a property right that can be licensed, sold, mortgaged or assigned.

 Trade secrets are business practices, formulas, designs or processes used in a

business, designed specifically to provide a competitive advantage to a business.
These trade secrets would not be otherwise known to an “outsider” of the
business. An example of this is the formula for Coca Cola. Trade secrets are
protected without registration and appropriate steps should be taken by the
owner to maintain confidentiality.

 Patent law is hot almost everywhere with a particularly strong market in

California and DC where many boutique firms are located. Wherever
there are large corporations centered on manufacturing, pharmaceutical
development or any type of production and innovation, there will be an
attendant need for legal patent support. Certain types of technical
degrees are in stronger demand and these include electrical
engineering, mechanical engineering, biotech engineering and
computer engineering.

TRADEMARKS

Introduction
India's obligations under the TRIPS Agreement for protection of trademarks, inter alia, include
protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of
registration, abolition of compulsory licensing of trademarks, etc.

With the globalisation of trade, brand names, trade names, marks, etc, have attained an
immense value that require uniform minimum standards of protection and efficient procedures
for enforcement as were recognised under the TRIPS. In view of the same, extensive review
and consequential repeal of the old Indian Trade and Merchandise Marks Act, 1958 was carried
out and the new Trade Marks Act, 1999 was enacted. The said Act of 1999, with subsequent
amendments, conforms to the TRIPS and is in accordance with the international systems and
practices.

The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass
applications, increasing the term of registration of a trademark to ten years as well as
recognition of the concept of well-known marks, etc. The Indian judiciary has been proactive in
the protection of trademarks, and it has extended the protection under the trademarks law to
Domain Names as demonstrated in landmark cases of Tata Sons Ltd. v Manu Kosuri & Ors [90
(2001) DLT 659] and Yahoo Inc. v Akash Arora [1999 PTC 201].

India, being a common law country, follows not only the codified law, but also common law
principles, and as such provides for infringement as well as passing off actions against violation
of trademarks. Section 135 of the Trade Marks Act recognises both infringement as well as
passing off actions.

Well-known Trademark and Trans-border Reputation

India recognises the concept of the "Well-known Trademark" and the "Principle of Trans-border
Reputation". A well-known Trademark in relation to any goods or services means a mark that
has become so to the substantial segment of the public, which uses such goods or receives
such services such that the use of such a mark in relation to other goods and services is likely
to be taken as indicating a connection between the two marks.

Trans-border Reputation concept was recognised and discussed by the Apex Indian Court in
the landmark case of N. R. Dongre v Whirlpool (1996) 5SCC 714. The Trademark
"WHIRLPOOL" was held to have acquired reputation and goodwill in India. The mark
"WHIRLPOOL" was also held to have become associated in the minds of the public with
Whirlpool Corporation on account of circulation of the advertisements in the magazines despite
no evidence of actual sale. Hence, the trademark WHIRLPOOL was held to have acquired
trans-border reputation which enjoys protection in India, irrespective of its actual user or
registration in India.

Legal Remedies against Infringement and/or Passing off

Under the Trade Marks Act, both civil and criminal remedies are simultaneously available
against infringement and passing off.

Infringement of trademark is violation of the exclusive rights granted to the registered proprietor
of the trademark to use the same. A trademark is said to be infringed by a person, who, not
being a permitted user, uses an identical/similar/deceptively similar mark to the registered
trademark without the authorisation of the registered proprietor of the trademark. However, it is
pertinent to note that the Indian trademark law protects the vested rights of a prior user against
a registered proprietor which is based on common law principles.

Passing off is a common law tort used to enforce unregistered trademark rights. Passing off
essentially occurs where the reputation in the trademark of party A is misappropriated by party
B, such that party B misrepresents as being the owner of the trademark or having some
affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of passing
off, registration of a trademark is irrelevant.

Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action

against violation of trademarks in India. In India, a combined civil action for infringement of
trademark and passing off can be initiated.

Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can

be initiated against the infringers. Such enforcement mechanisms are expected to boost the
protection of marks in India and reduce infringement and contravention of trademarks.

Relief granted by Courts in Suits for Infringement and Passing off

The relief which a court may usually grant in a suit for infringement or passing off includes
permanent and interim injunction, damages or account of profits, delivery of the infringing goods
for destruction and cost of the legal proceedings.

The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the
suit may also include order for:

a. Appointment of a local commissioner, which is akin to an "Anton Pillar Order", for

search, seizure and preservation of infringing goods, account books and preparation of
inventory, etc.
b. Restraining the infringer from disposing of or dealing with the assets in a manner which
may adversely affect plaintiff's ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.
c. The 'John Doe' order, known as "Ashok Kumar Orders" are injunction orders passed by
a court of law against entities, whose identity is not known at the time of the issuance of
the order. These orders are an exception to the general rule which requires the
defendant to be identified prior to the filing of a law-suit. The John Doe order, is
important in cases of fly-by-night operators who do not operate from a fixed location. It
allows the plaintiff to search the premises and deliver up evidence of infringement of the
rights of the plaintiff against the unknown infringers.
d. A 'Norwich Pharmacal' order is a court order for the disclosure of information or
documents against a third party. It is usually granted against a third party which has
been innocently mixed up in wrongdoing, forcing the disclosure of documents or
information. In the case of Souza Cruz v N K Jain (1995 PTR 97), the Court directed
excise and customs commissioners to disclose the complete export records of infringing
cigarettes to Ukraine by the Defendant.

Offences and penalties

In case of a criminal action for infringement or passing off, the offence is punishable with
imprisonment for a term which shall not be less than six months but which may extend to three
years and fine which shall not be less than Rs 50,000 (approx. US$ 800) but may extend to Rs
2,00,000 (approx. US$ 3,000).