Legislative umbrellas for protecting intellectual property rights in India

By Joginder Singh, LexOrbis
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Various legislation pertaining to protection of all forms of intellectual property (IP) rights have been amended or enacted since India became a signatory to the international agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), after accession to the World Trade Organisation in 1995. At present, India’s IP-related legislation covers every significant aspect for the protection of IP rights. Every year cases involving IP rights protection in India are increasing, leading to a good number of important judgments every year, and better clarity in practice.

Joginder Singh LexOrbis律师事务所 资深律师 Senior Associate LexOrbis
Joginder Singh
Senior Associate
LexOrbis

Patent law in India is governed by provisions of the Patents Act, which has been amended three times, mainly to comply with India’s obligations under the TRIPS agreement. India’s patent law operates under the “first to file” principle.

Domestic priority

Domestic patent applications take priority over foreign patent applications and can be filed through either the Paris Convention route or the PCT (Patent Co-operation Treaty) route. Once granted, patents are valid for 20 years from the date of filing an application, subject to an annual renewal fee. There is no provision for utility model patents in India.

Design law in India is governed by the provisions of the Design Act, allowing registration of the outward appearance of an article. However, a design does not include any mode or principle or construction, or anything that is in substance a mere mechanical device. The primary object of the design law is to protect shape, but not function. Designs can be registered in different classes as per the Locarno Agreement. These classes are mainly function-oriented. Design registrations are valid for a maximum of 10 years, renewable for a further five years.

Trademark law

Trademark law in India is governed by provisions of the Trade Marks Act, as amended in 2010, allowing for the registration of names, logos, words, phrases, letters, numbers, shapes, pictures, colours, smells, packaging, or a combination of these, if distinctive. The registration of a trademark typically takes around two years.

Once registered, a trademark is valid for 10 years and can be renewed indefinitely for further 10-year periods.

A geographical indication (GI) may be defined as an indication that identifies such goods as agricultural, natural or manufactured goods as manufactured in a particular territory, region locality, etc. This indication identifies the quality and reputation essentially attributable to the geographical origin of goods. The Geographical Indication of Goods (Registration & Protection) Act governs for the registration of such indications. Registration is valid for a maximum of 10 years, after which it can be renewed.

Copyright law in India is governed by provisions of the Copyright Act, as amended from time to time, granting copyright in all original published or unpublished literary work or artistic work. In most cases, though, registration is not necessary to maintain a copyright infringement claim in India.

However, it may be a good idea to apply for registration of copyright, as internet piracy of software, books, music and movies is a critical issue in India. Such a registration of copyright serves as admissible evidence in a court of law with reference to disputes regarding the ownership of copyright.

Design protection

The Semiconductor Integrated Circuits Layout-Design Act allows for protection of semiconductor integrated circuits layout-design and related matters. Layout-designs are prohibited from registration under the act if they are: not original; have been commercially exploited; not inherently distinctive; not inherently capable of being distinguishable from any other registered layout-design. India’s government has established a Semiconductor Integrated Circuits Layout-Design Registry as the office for filing applications in this area.

Plant variety protection in India is governed by provisions of the Protection of Plant Varieties and Farmers’ Rights Act. Although India is not a party to the international convention on the protection of plant varieties – i.e. the UPOV convention – the present legislation is actually a UPOV-plus kind of legislation. Any variety that fulfils the distinctness, uniformity and stability criteria, and that is new, is eligible for this kind of protection, and there is no need to demonstrate an inventive step or industrial application, as required under the patent law.

Biodiversity and traditional knowledge is protected by the Biological Diversity Act. The act was enacted to meet the obligations under the Convention on Biological Diversity, to which India is a party. The main objectives of the act are conservation, and sustainable use and equitable benefit sharing of the utilisation of bio-resources. The act also covers the protection of traditional knowledge from being monopolised, and equitable sharing of benefits arising out of the use of such knowledge among the masses. The National Biodiversity Authority is a statutory autonomous body established to implement provisions under the act.

Trade secrets

Trade secrets are not protected under any specific legislation. However, India’s courts have upheld trade secret protection by creative interpretation of common law.

In some instances, the courts have provided remedies even when there was no agreement in place, but it may be a good idea for employers to enter into non-disclosure and confidentiality agreements with their employees to seek a contractual remedy when required. In fact, similar agreements may be used for sharing any confidential information with a potential client for a business proposal.

Clearly, India has a strong legal framework to protect IP rights and various types of IP. To enjoy most IP rights in India, one should register them at the earliest. IP rights can be enforced by bringing actions to relevant judicial or quasi-judicial forums, including the intellectual property offices, Intellectual Property Appellate Board, district courts, high courts, and the Supreme Court of India.

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