1. September 10, 2014 © HK Acharya & Company. All Rights Reserved Welcome Intellectual Property Rights in India H K A CHARYA & C OMPANY Advocates, Patent & Trademark Attorneys IP Rights in India

2. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India TRADE MARK WHAT IS TRADE MARK: As per Section 2(1) (zb) of The Trade Marks Act, 1999. “Trade Mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of other and may include shape of goods, their packaging and combination of colours. 2

3. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India WHAT IS MARK: As per Section 2(1) (m) of The Trade Marks Act, 1999. “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof 3

4. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India WHAT IS MARK: As per Section 2(1) (m) of The Trade Marks Act, 1999. The word "mark" is thus intended to be interpreted broadly and no type of sign is automatically excluded from registration. Marks which will require special consideration are colours, shape of goods, sounds and smells. 4

5. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India SCOPE OF PROTECTION: Indian trademark law statutorily protects trademarks as per the Trademark Act, 1999 and also under the common law remedy of passing off. [1] Statutory protection of trademark is administered by the Controller General of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry. 5

6. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India SCOPE OF PROTECTION: The law of trademark deals with the mechanism of registration, protection of trademark and prevention of fraudulent trademark. [2]The law also provides for the rights acquired by registration of trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement. 6

7. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India KINDS OF APPLICATION  Ordinary Application  Convention Application  Under Paris Convention  Within Six Months from the date of application filed in convention country)  Have to file certified copy of priority documents in English within two months from the date of filing application in India  International Application under Madrid System  Through Madrid protocol (As India is member of Madrid Protocol only not agreement)  Can be filed at any time with designating India 7

8. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India USER DECLARATION  IN CASE OF A FOREIGN CORPORATION, IS IT NECESSARY FOR THE PRODUCTS OR SERVICES TO BE SOLD IN INDIA BEFORE SEEKING TRADEMARK REGISTRATION?  No, Indian trademark law allows filing of a trademark application in India on an ‘intent-to- use basis’.  However the registered proprietor of the trademark in India has to commence use of the mark within 5 years and 3 months of the date of registration. Otherwise the registered trademark is open to the challenge of invalidation proceedings. 8

9. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India PROCEDURE FOR REGISTRATION OF TRADE MARK Search (Not Mandatory) But advisable to conduct search before Trade Marks Registry as well as Market Search  Filing an Application (Manually and E-filing)  Issuance of Examination report (Objection U/s 9 & 11) (Request for Expedited examination can be filed after filing the application)  Comply within one month from the receipt of the examination report Continue… 9

10. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India PROCEDURE FOR REGISTRATION OF TRADE MARK  Acceptance  Advertised in the Trade Marks Journal  Notice of Opposition- within four months from the date of publication  Entered in the Trade Marks Register  Registration certificate issued  Renewal (Every Ten Years) 10

11. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India SUGGESTIONS: 1)Accurate and correct details in application No Substantial amendment is allowed 2)To take immediate action against the infringer (Delay/Acquisition) Section 33 3)Prior user Section 34 4)Well known mark is protected 5)Special Board for IP Matters IPAB (For Rectification / Appeal Matters) 6)Quick Disposal of IP Matters Direction given by Apex Court of India 7)Rectification application can be filed on the basis of non user 11

12. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India INDUSTRIAL DESIGN MEANING: Sec. 2(d) A design of an article may be registered if the feature of shape, configuration, pattern or ornament given to an article by any industrial process. Whether manual, mechanical or chemical, separate or combine, which is in the finished article appeal to and are judge solely by the eye. The principle or the mode of construction of the article or mere mechanical device cannot be registered as designs. Trade Marks and Trade Names are also excluded from the scope of design. 12

13. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India Sec 2(a) Any Article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately. i.e.Car, Parts of Car (Which sold separately) WHAT CAN BE REGISTERED? 13

14. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India Sec 4 If the article (a)Is not new or original; or (b)Has been disclosed to the public anywhere In India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or Cont. WHAT CAN NOT BE REGISTERED? 14

15. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India Sec 4 (c)Is not significantly distinguishable from known designs or combination of known designs; or (d)Comprises or contains scandalous or obscene matter Shall not be registered WHAT CAN NOT BE REGISTERED? 15

16. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India  Convention application may be filed before the Design office within 6 months from the date of filing the application in the priority country.  It is require to file the certified copy of priority documents to claim the priority of the earlier application. CONVENTION APPLICATION UNDER PARIS CONVENTION 16

17. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India DESIGN PROCEDURE Search (not mandatory) [Two types of search: 1. when registration number is supplied and 2. when registration number is not supplied by the applicant]  Filing an Application (Ordinary or Convention)  Examination  Reply should be given within 3 months from the date of official communication of objection to the applicant or his agent Continue… 17

18. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India TERM OF DESIGN It is initially ten years form the date of registration. In cases of claiming the priority the duration can be ten years from the priority date. This initial period of registration may be extended by further 5 years only if an application made before the expiry of the said initial period of 10 Years. Initial 10 Years + 5 Years = Total 15 Years 18

19. September 10, 2014 © HK Acharya & Company. All Rights Reserved Intellectual Property Rights in India SUGGESTIONS 1)One article one design Multiple article in single design application not possible 2)Parts of an article (which sold separately) 3)Cancellation on grounds of prior publication Can be filed before Controller as well as IPAB 4)Requirements before delivery on sales Sec 15(1) B Marked with the prescribed mark, or with the prescribed words or figures denoting that the design is registered 19

20. September 10, 2014 © HK Acharya & Company. All Rights Reserved PATENT 20

21. September 10, 2014 © HK Acharya & Company. All Rights Reserved Where to file? Type of Filing Manually Electronically 21

22. September 10, 2014 © HK Acharya & Company. All Rights Reserved TIME LIMIT NO.PARTICULARSTIME LIMITS 1 PCT National Phase Application In India Within thirty one months from the date of priority 2 Conventional Application In India Within twelve months after the date on which the basic application was made 3 Period within which proof of the right to make the application shall be furnished Within 6 months after filing Patent Application 4 Translation of the application in English Within thirty one months from the date of Priority 5 Power of AttorneyWithin 6 months after filing Patent Application 22

23. September 10, 2014 © HK Acharya & Company. All Rights Reserved NO.PARTICULARSTIME LIMITS 6 Request for examination48 months from the date of priority 7 Time for putting an application in order for grant Within 12 months from the date of First Examination Report 8 Issuance of patent certificateWithin Seven days from the date of grant of Patent 9 Statement regarding working of a patented invention on a commercial scale in India Every year before 31st March 10 Where a principal patent is granted later than two years from the date of filing of the application the fees which have become due in the meantime 3 months from the date of the recording of the patent in the register 11 Application for review of decision or setting aside of orders of the controller Within one month from the date of date of communication of such decision to the applicant 23

24. September 10, 2014 © HK Acharya & Company. All Rights Reserved Duty of Disclosure Section 8 –glimpse of Patent Prosecution Highway (PPH) IPO- no reciprocal arrangement with other Patent Offices Section 8 (1)- Form 3 within 6 months from filing/up-date Section 8 (2)- Search report within 6 months from request of the Controller If not- Opposition/Revocation 24

25. September 10, 2014 © HK Acharya & Company. All Rights Reserved Statement Of The Working Of Patented Invention In India Furnish at regular intervals (not less than six months) For each calendar year before March 31 Whether invention worked or not worked If not worked: reasons for not working and steps being taken for working of the invention If worked: quantum and value (in Rupees), of the patented product 25

26. September 10, 2014 © HK Acharya & Company. All Rights Reserved Continue… (i) manufactured in India (ii) imported from other countries (give country-wise details) licenses and sub-licenses granted during the year state whether public requirement has been met partly/adequately/to the fullest extent at reasonable price 26

27. September 10, 2014 © HK Acharya & Company. All Rights Reserved PENALTIES Refuses or fails to furnish- punishable with fine which may extend to ten lakh rupees = $20000. information or statement - false - imprisonment which may extend to six months, or file or with both 27

28. September 10, 2014 © HK Acharya & Company. All Rights Reserved Consequences if not worked Compulsory licences Revocation of Patents by the controller for non working- compulsory licence - Central Government or any person interested - only after the expiration of two years CL- ordinarily be decided within one year 28

29. September 10, 2014 © HK Acharya & Company. All Rights Reserved Risk to foreign products/technique in India Lack of awareness Pre-grant & Post-grant Opposition Anti-patenting lobbying Mind set for reverse engineering Small players infringing IP rights Backlog of cases at both the civil and criminal courts 29

30. September 10, 2014 © HK Acharya & Company. All Rights Reserved Tips for Enforcement Patent Marking Interim injunction Arbitration and mediation THE INTELLECTUAL PROPERTY RIGHTS (IMPORTED GOODS) ENFORCEMENT RULES, 2007 Advice from Indian IP rights experts Risk assessment Opinion from similar business doer 30

31. September 10, 2014 © HK Acharya & Company. All Rights Reserved Thank You H K A CHARYA & C OMPANY HK Avenue, 19, Swastik Society, Navrangpura, Ahmedabad 380 009 INDIA Phone : +91 79 26425258/ 5259 Fax : +91 79 26425262 / 5263 E-mail : info@hkindia.com Web : www.hkindia.com