The Trademarks Law Of India

In this article Perry4Law and Perry4Law Techno Legal Base (PTLB) would discuss the applicable trademark law of India.

The Trade Marks Act, 1999 (TMA 1999) and the corresponding Trade Marks Rules, 2002 (TMR 2002) regulate the legal framework pertaining to Trade Marks in India. The Preamble to the TMA 1999 explains the purpose of the Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.

Some of the salient features of the TMA 1999 have been outlined in the Statement of Objects and Reasons annexed to the Trade Marks Bill. These are:

(a) Providing for registration of trade mark for services, in addition to goods;

(b) Registration of trade marks, which are imitation of well known trade marks, not to be permitted, besides enlarging the grounds for refusal of registration mentioned in clauses 9 and 11. Consequently, the provisions of defensive registration of trade marks are proposed to be omitted;

(c) Amplifications of factors to be considered for defining a well known mark;

(d) Doing away with the system of maintaining registration of trade marks in Part A and Part B with different legal rights, and to provide only a single register with simplified procedure for registration and with equal rights;

(e) Simplifying the procedure for registration of registered user and enlarging the scope of permitted use;

(f) Providing enhanced punishment for the offences relating to trade marks on par with the Copyright Act, 1957 to prevent the sale of spurious goods;

(g) Providing an Appellate Board for speedy disposal of appeals and rectification applications which at present lie before High Courts;

(h) Transferring the final authority relating to registration of certification trade marks to the Registrar instead of the Central Government;

(i) Providing enhanced punishment for the offences relating to trade marks on par with the present Copyright Act, 1957, to prevent the sale of spurious goods;

(j) Prohibiting use of someone else’s trade marks as part of corporate names, or name of business concern;

(k) Extension of application of convention country to include countries which are members of Group or union of countries and Inter-Governmental Organisations;

(l) Incorporating other provisions, like amending the definition of “trade marks; provisions for filing a single application for registration in more than one class, increasing the period of registration and renewal from 7 to 10 years; making trade mark offences cognizable, enlarging the jurisdiction of Courts to bring the law in this respect on par with the copyright law, amplifying the powers of the Court to grant ex parte injunction in certain cases and other related amendments to simplify and streamline the trade mark law and procedure.

The TMA 1999 is in conformity with two major International Treaties on the subject, namely The Paris Convention for Protection of Industrial Property and TRIPS Agreement to both of which India is a signatory.

All the provisions of the Trade Marks Act, 1999 and the Trade Marks Rules came into effect w.e.f. 15.9.2003 as per notification No. S.O. 1048(E) dated 15.9.2003.

US Needs To Change Its Policy Towards Foreign IPRs Violations

In a recent episode of copyright violation by a blog author, Wordpress.Com was contacted to remove the copyright violating posts. However, like in the past, Wordpress kept on repeating sending of a DMCA notice and refused to take appropriate action.

Meanwhile, the author of the blog was also contacted who tried to delete the offensive posts but they remained intact. He decided to delete the entire blog to comply with copyright law requirements of India.

This is not what was required to be done but the DMCA policy that Wordpress was following resulted in this situation. This also shows how not taking a timely action by Wordpress.Com has resulted in the deletion of an entire blog that was otherwise good and informative.

All of you may be aware of the stringent IPRs protection regime of United States (US). In order to protect the local interests of individuals and organisations residing and operating in US, laws like Digital Millennium Copyright Act (DMCA) 1998 were enacted. In fact, new laws like Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (PROTECT IP Act) and the "Stop Online Piracy Act (SOPA) have also been proposed.

However, is US equally anxious to protect intellectual property rights (IPRs) of residents and organisations located in other countries? For instance, US and India are both part of TRIPS Agreement that imposes similar rights and obligations towards IPRs upon all members states. If US and companies/websites like Wordpress.Com fail to respect and protect IPRs of individuals and companies of other countries, it is clearly a violation of TRIPS Agreement obligations.

Internet intermediaries like web site hosting services, Internet service providers, and search engines that link to materials on the Web have to perform due diligence in order to get benefits of safe harbour under DMCA. Section 512(c) of DMCA limits the liability of service providers for infringing material on websites (or other information repositories) hosted on their systems. It applies to storage at the direction of a user. In order to be eligible for the limitation, the following conditions must be met:

(a) The provider must not have the requisite level of knowledge of the infringing activity, as described below.
(b) If the provider has the right and ability to control the infringing activity, it must not receive a financial benefit directly attributable to the infringing activity.
(c) Upon receiving proper notification of claimed infringement, the provider must expeditiously take down or block access to the material.
(d) In addition, a service provider must have filed with the Copyright Office a designation of an agent to receive notifications of claimed infringement.

Under the knowledge standard, a service provider is eligible for the limitation on liability only if it does not have actual knowledge of the infringement, is not aware of facts or circumstances from which infringing activity is apparent, or upon gaining such knowledge or awareness, responds expeditiously to take the material down or block access to it.

The statute also establishes procedures for proper notification, and rules as to its effect. (Section 512(c)(3)). Under the notice and takedown procedure, a copyright owner submits a notification under penalty of perjury, including a list of specified elements, to the service provider’s designated agent. Failure to comply substantially with the statutory requirements means that the notification will not be considered in determining the requisite level of knowledge by the service provider.

Here lies the real problem as the Internet intermediaries in US have considered a safe harbour provision as a mandatory requirement to remove copyright violating posts. DMCA provides an enabling provision that protects intermediaries from copyright liability if they follow due diligence. DMCA never claims that Internet intermediaries like Wordpress.Com cannot remove offending posts or materials even if knowledge about the same has been brought to their express knowledge. This seems to be a big loophole that US Internet intermediaries are exploiting while denying IPRs protection to foreign nationals. If this is the approach of US Internet intermediaries, there is nothing wrong if other countries block access of the websites of such intermediaries in their respective countries for not respecting their copyright laws and other IPRs laws.

Online Copyright Infringement Liability Limitation Act (OCILLA) was passed as a part of the 1998 DMCA and is sometimes referred to as the "Safe Harbor" provision or as "DMCA 512" because it added Section 512 to Title 17 of the United States Code. By exempting intermediaries from copyright infringement liability provided they follow certain rules, OCILLA attempts to strike a balance between the competing interests of copyright owners and digital users.

These provisions may be good for US citizens and organisations but are real hindrance for foreign nationals and IPRs holders. Why should a foreign national or organisation comply with alien jurisprudence when there is a clear case of IPRs violation? There must be some mechanism where such cases can be resolved outside DMCA and OCILLA.

Article 41(2) of TRIPS Agreement provides that procedures concerning the enforcement of IPRs shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays. The provisions of DMCA and OCILLA seem to be not in strict compliance of Article 41(2), at least regarding foreign nationals. The Department of Justice of United States must ensure that an alternative, effective and easier method is available to report copyright violations by foreign nationals and companies and the liability of online service providers (OSPs) in US must be accordingly modified.

Doha Declaration On The TRIPS Agreement And Public Health

The Doha Declaration on the TRIPS Agreement and Public Health was adopted by the World Trade Organisation (WTO) in the Fourth Session of Ministerial Conference on 14th November, 2001. The updated status of the same is available at the WTO site. It says:

1. We recognize the gravity of the public health problems afflicting many developing and least-developed countries, especially those resulting from HIV/AIDS, tuberculosis, malaria and other epidemics.

2. We stress the need for the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) to be part of the wider national and international action to address these problems.

3. We recognize that intellectual property protection is important for the development of new medicines. We also recognize the concerns about its effects on prices.

4. We agree that the TRIPS Agreement does not and should not prevent Members from taking measures to protect public health. Accordingly, while reiterating our commitment to the TRIPS Agreement, we affirm that the Agreement can and should be interpreted and implemented in a manner supportive of WTO Members' right to protect public health and, in particular, to promote access to medicines for all.

In this connection, we reaffirm the right of WTO Members to use, to the full, the provisions in the TRIPS Agreement, which provide flexibility for this purpose.

5. Accordingly and in the light of paragraph 4 above, while maintaining our commitments in the TRIPS Agreement, we recognize that these flexibilities include:

(a) In applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles.

(b) Each Member has the right to grant compulsory licences and the freedom to determine the grounds upon which such licences are granted.

(c) Each Member has the right to determine what constitutes a national emergency or other circumstances of extreme urgency, it being understood that public health crises, including those relating to HIV/AIDS, tuberculosis, malaria and other epidemics, can represent a national emergency or other circumstances of extreme urgency.

(d) The effect of the provisions in the TRIPS Agreement that are relevant to the exhaustion of intellectual property rights is to leave each Member free to establish its own regime for such exhaustion without challenge, subject to the MFN and national treatment provisions of Articles 3 and 4.

6. We recognize that WTO Members with insufficient or no manufacturing capacities in the pharmaceutical sector could face difficulties in making effective use of compulsory licensing under the TRIPS Agreement. We instruct the Council for TRIPS to find an expeditious solution to this problem and to report to the General Council before the end of 2002.

7. We reaffirm the commitment of developed-country Members to provide incentives to their enterprises and institutions to promote and encourage technology transfer to least-developed country Members pursuant to Article 66.2. We also agree that the least-developed country Members will not be obliged, with respect to pharmaceutical products, to implement or apply Sections 5 and 7 of Part II of the TRIPS Agreement or to enforce rights provided for under these Sections until 1 January 2016, without prejudice to the right of least-developed country Members to seek other extensions of the transition periods as provided for in Article 66.1 of the TRIPS Agreement. We instruct the Council for TRIPS to take the necessary action to give effect to this pursuant to Article 66.1 of the TRIPS Agreement.

Border Enforcement Of Intellectual Property In The EU And Indian Goods

European Union (EU) has been actively working in the direction of improving Innovation and protection of Intellectual Property Rights (IPRs). EU has recently released a new IPR Strategy. Under this new IPR Strategy, EU proposes an ambitious programme until the end of 2012 that foresees actions in all the main IPRs. These include IPRs like Patents, Trademarks, Copyright and Related Rights and Geographical Indications.

Similarly, EU has also published a Green Paper on the Online Distribution of Audiovisual Works. In the framework of the IPR Strategy (Commission's communication "A Single Market for Intellectual Property Rights"), this paper aims to contribute to the development of a digital single market by launching a consultation on the opportunities and challenges of the online distribution of audiovisual works. All stakeholders are invited to participate in this consultation, which is open until November 2011.

Now EU is streamlining its border enforcement of IPRs, especially those pertaining to Indian goods meant for third countries destinations. In this regard, EU India expressed their desire to sign a Letter of Understanding (LOU) to fairly deal with Off Patent Generic Drug Consignments. Now a LOU has been signed between EU India in this regard.

According to the Understanding, so long as the EU and its Member States adhere to the principles contained in the Understanding with respect to generic drugs in transit through the EU, India has assured the EU that India will not request the establishment of a Dispute Settlement Panel at the WTO. With the exchange of these letters, India and the EU have reached, for the present, an informal settlement of this dispute. This would also result in a better border enforcement of IPRs in the EU.

In addition, EU agreed to India’s request for adoption of guidelines which would confirm the principles agreed to in the Understanding with a view to give greater and immediate legal certainty for producers and traders. EU also agreed to reflect the principles contained in the Understanding in its proposal for a new Regulation to replace Regulation 1383/2003.

India has taken note of the commitments offered by the EU. India has reiterated the core principle of the Understanding that the mere fact that medicines are in transit through EU territory, and that there is a patent title applicable to such medicines in the EU territory, does not in itself constitute enough grounds for customs authorities in any Member State to suspect that the medicines at stake infringe patent rights. However, a situation in which medicines are in transit through EU territory and there is adequate evidence that satisfies the customs authorities that there is a substantial likelihood of diversion of such medicines on to the EU market may constitute enough grounds for customs authorities to suspect that the medicines at stake infringe patent rights in the EU.

India initiated dispute settlement consultations on 11 May 2010 at the WTO with the EU on the issue of detention of Indian generic medicines while in transit through the EU. The dispute was triggered by the repeated instances of detentions/seizure at EU ports, particularly in the Netherlands, of Indian generic drugs destined for export to Latin American and other countries. The detentions were made by invoking the EC’s Regulation 1383/2003 which contains customs procedures for taking action against goods suspected of infringing IPRs. These detentions were made during the period October – December 2008 at Schiphol airport, Netherlands. The consignments were initially detained and later, either destroyed or returned to India or allowed to proceed to the destination.

The detentions by the customs authorities of these generic medicine consignments were in violation of the obligations of the EU and the Netherlands under Article V of GATT which enshrines freedom of transit of goods through the territory of each contracting party of GATT via the routes most convenient for international transit. The detentions were also inconsistent with the EU and its Member States’ obligations under Articles 41 and 42 of the TRIPS Agreement as these detentions created barriers to legitimate trade, led to abuse of the rights conferred on the owner of a patent, were unfair and inequitable, unnecessarily burdensome and complicated and created unwarranted delays.

Moreover, these detentions were inconsistent with certain fundamental obligations of the EU under Article 31 of the TRIPS Agreement read together with the provisions of the Decision of the General Council of August 30, 2003 on the Implementation of Paragraph 6 of the Doha Declaration on the Trips Agreement and Public Health to ensure access to medicines for members of the WTO (“Members”) with insufficient or no capacity in the pharmaceutical sector to enable them to address their public health problems.

India was joined by Brazil in this dispute; Brazil also filed a similar complaint against the EU before the Dispute Settlement Body of the WTO. India and Brazil jointly held two rounds of consultations with the EU on 7-8 July 2010 and 13-14 September 2010 in Geneva. During these consultations, EU acknowledged that some provisions of the EC Regulation 1383 were misinterpreted by the customs authorities while detaining the Indian generic drugs. EU showed willingness to resolve this dispute without resorting to the WTO dispute panel.

Now that has been done, it is time to proceed further towards the conclusion of EU India Foreign Trade Agreement.

India Abandons The Demand For Establishment Of Dispute Settlement Panel At WTO

European Union (EU) and India have confronted each other on the issue of Generic Drugs shipments in the past. Indian Generic Drug consignments have been confiscated by some European Countries customs authorities in the past for violation of Intellectual Property Rights (IPRs).

Reacting sharply, India and Brazil filed a case against the EU in the World Trade Organisation (WTO) protesting the action. India contented that such seizures were against the provisions of multilateral Trade Related Intellectual Property Rights Agreement (TRIPS Agreement), as the medicines were off-patent both in India and the country where they were being exported.

Even some unpleasant speculations like removal of India from Generalised Systems of Preferences (GSP) Scheme of EU, disagreements over TRIPS Plus provisions vis-à-vis IPRs, issues of Data Exclusivity, etc also surfaced. However, all these issues were amicable settled between India and EU.

The best shot came when EU India expressed their desire to sign a Letter of Understanding (LOU) to fairly deal with Off Patent Generic Drug Consignments. Now a LOU has been signed between EU India in this regard.

According to the Understanding, so long as the EU and its Member States adhere to the principles contained in the Understanding with respect to generic drugs in transit through the EU, India has assured the EU that India will not request the establishment of a Dispute Settlement Panel at the WTO. With the exchange of these letters, India and the EU have reached, for the present, an informal settlement of this dispute.

India would watch with interest EU’s further steps in implementing its commitments. India’s options to revive the dispute remain intact in case the EU does not abide by the core principles agreed to in the Understanding.

Software Patents In India And Their Registrability

Patent Law of India is well established. For a considerable long period of time it was primarily based upon Indian Socio Economic conditions. With the signing of Trade Related Intellectual Property Rights (TRIPS) Agreement, Indian Patent Act, 1970 was also amended accordingly. One major change was allowing Product Patents for Patentable Pharmaceuticals in India.

After India signed the TRIPS Agreement, an Ordinance to bring necessary changes in the Patent Law of India was passed. The Ordinance also incorporated a provision that allowed granting of Software related Patents. In fact, on the basis of such Ordinance, many Software related Patents were granted by the Patent Office of India.

While the Patents Ordinance had allowed such Patenting, the final Patent Amendment Bill passed in Parliament of India in this regard dropped the clause that allowed Patenting of Software-related inventions. So as on date, granting of Patent for Software per se is not allowed in India.

However, this has not deterred the Software patent Trolls in India from claiming Patent Rights in the same. This is happening because there is a general lack of awareness about Patent Trolls and their Regulations in India. Thankfully, the mainstream press is turning against such Software Patents and their Trolling exercises.

India is not granting any Software Patent per se as per its Laws and any person or institution claming the same is not entitled to any such protection in India. Any Software Patent infringement claim must be thoroughly analysed and fiercely fought against at all appropriate forums in India.