Intellectual Property Rights (IPR) Digital Notes PDF

DIGITAL NOTES Of INTELLECTUAL PROPERTY RIGHTS R20A0351 OPEN ELECTIVE B.TECH II year...

DIGITAL NOTES Of INTELLECTUAL PROPERTY RIGHTS R20A0351 OPEN ELECTIVE B.TECH II year II Sem COMMON TO ALL BRANCHES MALLA REDDY COLLEGE OF ENGINEERING & TECHNOLOGY (Autonomous Institution – UGC, Govt. of India) Sponsored by CMR Educational Society (Affiliated to JNTU, Hyderabad, Approved by AICTE – Accredited by NBA & naac – ‘A’ Grade - I ISO 9001:2008 Certified) Maisammaguda, Dhulapally, (Post Via Hakimpet),Secunderabad - 500 100.Telangana State, India. Contact Number:040-23792146/64634237, E-Mail ID: [email protected], website:www.mrcet.ac.in  INDEX S.No Contents Page number 1 Syllabus I 2 Question papers III 3 Unit – I 1 4 Unit – II 18 5 Unit – III 50 6 Unit – IV 73 7 Unit- V 86  MALLA REDDY COLLEGE OF ENGINEERING AND TECHNOLOGY II Year B.Tech. II Sem OPEN ELECTIVE – I (R20A351) INTELLECTUAL PROPERTY RIGHTS COURSE OBJECTIVES:  To understand the concepts IPR  To understand Trademarks, Trade Secretes and GI of goods.  To understand Copyrights, Patents and Industrial Designs.  To learn about how to manage IP rights and legal aspects.  To understand the concepts of Cyber laws in IPR. UNIT – I: Introduction: Introduction to Intellectual Property Rights, types of intellectual property, importance of intellectual property rights, Evolution of IP acts and treaties, Agencies responsible for IPR registrations, Role and value of IP in international commerce, Issues affecting IP internationally. UNIT – II Trade Marks: Purpose and function of trademarks, Acquisition of trade mark rights, transfer of rights, Selecting and evaluating trademark, registration of trademarks, claims. Trade Secrets: Trade secret law, determination of trade secret status, liability for misappropriation of trade secrets, trade secret litigation. Geographical Indication of Goods: Basic aspects and need for the registration UNIT – III Copyrights: Fundamentals of copyright law, originality of material, right of reproduction, right to perform the work publicly, copyright ownership issues, notice of copyright. Patents: Foundation of patent law, patent searching process, Basic Criteria of Patentability Industrial Designs: Kind of protection provided in Industrial design UNIT – IV: Managing IP Rights: Acquiring IP Rights: letters of instruction, joint collaboration agreement, Protecting IP Rights: non disclosure agreement, cease and desist letter, settlement memorandum. Transferring IP Rights: Assignment contract, license agreement, deed of assignment UNIT- V Introduction to Cyber law: Information Technology Act, cyber crime and e-commerce, data security, confidentiality, privacy, international aspects of computer and online crime.  COURSE OUTCOMES:  Learner should be able to demonstrate understanding of basic concepts of IPR.  Able to differentiate between Trademarks, Trade secrets and GI of goods.  Able to understand Copyrights, Patents and Industrial Designs..  Able to manage and protect IP  Will gain Knowledge on Cyber law TEXT BOOKS: 1. Intellectual property right by Deborah E Bouchoux 2. Cyber law, Text and cases South western special topics collection. 3. Intellectual property rights by N.K Acharya 4. Fundamentals of IPR for engineers, BY komal bansal REFERENCES: Intellectual property rights by P. Radhakrishnan.  R15 Code No: R15A0069 MALLA REDDY COLLEGE OF ENGINEERING & TECHNOLOGY (Autonomous Institution – UGC, Govt. of India) II B.Tech II Semester Supplementary Examinations, July 2021 Intellectual Property Rights (AE) Roll No Time: 3 hours Max. Marks: 75 Answer Any Five Questions All Questions carries equal marks. *** 1 Explain about the Patent Cooperation Treaty. [15M] 2 Give an account of the development of IP law in India [15M] 3 How the copyright in a work is licensed? [15M] 4 What is originality under copyright law and explain the tests laid down for [15M] determining infringement of copyright in a computer program. 5 Explain the role of various agencies responsible for the IP Rights. [15M] 6 Discuss the Validity of Local IP Rights with suitable examples. [15M] 7 Discuss the salient features in transferring of IP rights [15M] 8 Discuss the process of solving IPR Issues [15M] ****** Page 1 of 1 Code No: R15A0069 R15 MALLA REDDY COLLEGE OF ENGINEERING & TECHNOLOGY (Autonomous Institution – UGC, Govt. of India) II B.Tech II Semester supplementary Examinations, April/May 2019 Intellectual Property Rights (AE) Roll No Time: 3 hours Max. Marks: 75 Note: This question paper contains two parts A and B Part A is compulsory which carriers 25 marks and Answer all questions. Part B Consists of 5 SECTIONS (One SECTION for each UNIT). Answer FIVE Questions, Choosing ONE Question from each SECTION and each Question carries 10 marks. **** PART-A (25 Marks) 1). a What is meant by IPR [2M] b What is the purpose of TRIPS agreement [3M] c What is Trade secrets [2M] d What do you mean by Patent [3M] e What are the Validity of IP rights [2M] f What are contractual protection of IP rights [3M] g Define Non disclosure agreement [2M] h Define Addendum to unrecorded license. [3M] i Expand WTO and IPR [2M] j Define IPR evaluation [3M] PART-B (50 MARKS) SECTION-I 2 Explain the role and value of IPR in international commerce? [10M] OR 3 Discuss the agreement on trade related aspects of IPR? [10M] SECTION-II 4 Explain the rights of authorised user in relation to IPR [10M] OR 5 What is an IPR attorney? Explain the duties of IPR attorney? [10M] SECTION-III 6 Explain the IP rights in international forums. [10M] OR 7 What companies will do to ensure the value of IP after creation stage. [10M] SECTION-IV 8 Explain: (i) non disclosure agreement [5M] (ii) cease and desist letter [5M] OR 9 Explain the joint collaboration agreement in relation to IP rights. [10M] SECTION-V 10 Explain the role of WTO in solving IPR issues [10M] Page 1 of 2  OR 11 Explain the role of GATT in solving IPR issues [10M] ****** Page 2 of 2 Code No: R17A0051 R17 MALLA REDDY COLLEGE OF ENGINEERING & TECHNOLOGY (Autonomous Institution – UGC, Govt. of India) II B.Tech II Semester Supplementary Examinations, July 2021 Intellectual Property Rights (CSE, IT & AE) Roll No Time: 3 hours Max. Marks: 70 Answer Any Five Questions All Questions carries equal marks. *** 1 Discuss the process of Intellectual Property registration in India. [14M] 2 Explain the compliance and liability issues of Intellectual Property Rights. [14M] 3 Narrate how selecting, evaluating and registration of trademarks take place. [14M] 4 What are publicity rights? What are the legal provisions pertaining to publicity [14M] rights? What are the remedies available against the infringement of publicity rights? 5 What is copyright? What is originality of material in copyright works? What are [14M] the rights granted under copyright law? 6 Explain about the right to perform the work publicly, copyright ownership issues [14M] and notice of copyright. 7 What are the types of cybercrimes committed in e-commerce and what are the [14M] measures to be taken to prevent the cybercrimes in e-commerce and enhance e- commerce? 8 Give an overview on international intellectual properties with a focus on trade [14M] mark law and copyright law. ********** Page 1 of 1  R17 Code No: R17A0051 MALLA REDDY COLLEGE OF ENGINEERING & TECHNOLOGY (Autonomous Institution – UGC, Govt. of India) II B.Tech II Semester Supplementary Examinations, February 2021 Intellectual Property Rights (CSE, IT & AE) Roll No Time: 2 hours 30 min Max. Marks: 70 Answer Any Five Questions All Questions carries equal marks. *** 1 a)Describe about tools used in intellectual property rights. [7M] b)Discuss the importance of intellectual property rights [7M] 2 a)Discuss the law of relating to acquisition of trade rights [7M] b)Explain the terms of patents and registration process of patents? [7M] 3 a)Explain about post examination procedure in trade mark registration [7M] b)Discuss the law relating to acquisition of trade mark rights [7M] 4 a) Explain in detail about ownership of trade mark [7M] b) Explain how do you select a trade mark [7M] 5 Explain how ownership of copy rights gained and how it can be transferred. [14M] 6 Discuss various subject matters covered under copy rights Act [14M] 7 a)explain about new developments in patent law [7M] b)what is international patent protection law explain [7M] 8 a)Explain in detail about E-commerce and cyber crime [7M] b) Discuss international laws related to online crime [7M] ********** Page 1 of 1  R17 Code No: R17A0051 MALLA REDDY COLLEGE OF ENGINEERING & TECHNOLOGY (Autonomous Institution – UGC, Govt. of India) II B.Tech II Semester Regular Examinations, April/May 2019 Intellectual Property Rights (CSE, IT & AE) Roll No Time: 3 hours Max. Marks: 70 Note: This question paper Consists of 5 Sections. Answer FIVE Questions, Choosing ONE Question from each SECTION and each Question carries 14 marks. **** SECTION-I 1 Explain the role and value of intellectual Property rights in international [14M] commerce. OR 2 Explain with examples the emerging forms of Intellectual Properties [14M] SECTION-II 3 Write the process of protecting Intellectual property? [14M] OR 4 Describe the process involved in ownership transfer of Intellectual Property [14M] rights? SECTION-III 5 Explain in detail IP rights in international forums [14M] OR 6 What are the intellectual property rights? Bring out the need for protecting [14M] intellectual property SECTION-IV 7 Write a short note on [7M] a) Unfair competition. [7M] b) Ownership transfer. OR 8 Explain detail the terms and condition of joint collaboration agreement [14M] SECTION-V 9 Explain the role of WTO in promoting IPR [14M] OR 10 Explain international aspects of IPR related to trademarks and trade secrets. [14M] ********** Page 1 of 1  R15 Code No: R15A0069 MALLA REDDY COLLEGE OF ENGINEERING & TECHNOLOGY (Autonomous Institution – UGC, Govt. of India) II B.Tech II Semester Supplementary Examinations, February 2021 Intellectual Property Rights (AE) Roll No Time: 2 hours 30 min Max. Marks: 75 Answer Any Five Questions All Questions carries equal marks. *** 1 Write about intellectual property law and its contribution to growth of intellectual [15M] property law globally. 2 Give the significance of IPR in international business. [15M] 3 What is meant by copy right? How is it transferred? [15M] 4 What are the limitations to patentee? Explain about patent cooperation treaty. [15M] 5 What are the key issues of IP? [15M] 6 What is the significance of IP in international forums? Explain with examples. [15M] 7 Write about the confidentiality agreement between Employer and Employee. [15M] 8 What are the objectives and functions of WTO. [15M] ****** Page 1 of 1  MRCET (UGC Autonomous) UNIT I: Introduction to Intellectual Property Rights, types of intellectual property, Importance of intellectual property rights, Evolution of IP acts and treaties, Agencies responsible for IPR registrations, Role and value of IP in international commerce, Issues affecting IP internationally. INTRODUCTION TO INTELLECTUAL PROPERTY RIGHTS Intellectual property Right (IPR) is a term used for various legal entitlements which attach to certain types of information, ideas, or other intangibles in their expressed form. The holder of this legal entitlement is generally entitled to exercise various exclusive rights in relation to the subject matter of the Intellectual Property. The term intellectual property reflects the idea that this subject matter is the product of the mind or the intellect, and that Intellectual Property rights may be protected at law in the same way as any other form of property. Intellectual property laws vary from jurisdiction to jurisdiction, such that the acquisition, registration or enforcement of IP rights must be pursued or obtained separately in each territory of interest. Intellectual property rights (IPR) can be defined as the rights given to people over the creation of their minds. They usually give the creator an exclusive right over the use of his/her creations for a certain period of time. Intellectual Property Intellectual property is an intangible creation of the human mind, usually expressed or translated into a tangible form that is assigned certain rights of property. Examples of intellectual property include an author's copyright on a book or article, a distinctive logo design representing a soft drink company and its products, unique design elements of a web site, or a patent on the process to manufacture chewing gum. Intellectual Property Rights Intellectual property rights (IPR) can be defined as the rights given to people over the creation of their minds. They usually give the creator an exclusive right over the use of his/her creations for a certain period of time. Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. INTELLECTUAL PROPERTY RIGHTS Page 1  MRCET (UGC Autonomous) Categories of Intellectual Property One can broadly classify the various forms of IPRs into two categories:  IPRs that stimulate inventive and creative activities (patents, utility models, industrial designs, copyright, plant breeders’ rights and layout designs for integrated circuits) and  IPRs that offer information to consumers (trademarks and geographical indications) IPRs in both categories seek to address certain failures of private markets to provide for an efficient allocation of resources IP is divided into two categories for ease of understanding: 1. Industrial Property 2. Copyright Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs Intellectual property shall include the right relating to:  Literary, artistic and scientific works;  Performance of performing artists;  Inventions in all fields of human endeavour;  Scientific discoveries;  Industrial designs;  Trademarks, service marks and etc;  Protection against unfair competition. INTELLECTUAL PROPERTY RIGHTS Page 2  MRCET (UGC Autonomous) What is a property? Property designates those things that are commonly recognized as being the possessions of an individual or a group. A right of ownership is associated with property that establishes the good as being "one's own thing" in relation to other individuals or groups, assuring the owner the right to dispense with the property in a manner he or she deems fit, whether to use or not use, exclude others from using, or to transfer ownership. Properties are of two types - tangible property and intangible property i.e. one that is physically present and the other which is not in any physical form. Building, land, house, cash, jewellery are few examples of tangible properties which can be seen and felt physically. On the other hand there is a kind of valuable property that cannot be felt physically as it does not have a physical form. Intellectual property is one of the forms of intangible property which commands a material value which can also be higher than the value of a tangible asset or property. TYPES OF INTELLECTUAL PROPERTY The different types of Intellectual Property Rights are:  Patents  Copyrights  Trademarks  Industrial designs  Geographical indications of goods  Trade Secrets Important Species of IPR Out of the different types of Intellectual Property Rights the following are the most important species of IPR TRADEMARKS According to section 2, sub-section (1) of the Trade Marks Act 1999, ”Trade Mark” means a mark capable of being represented graphically and which is capable ofdistinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. INTELLECTUAL PROPERTY RIGHTS Page 3  MRCET (UGC Autonomous) Trade mark registration is an effective and economic way of ensuring your brand is protected.Registration provides a safeguard against third party infringement and often acts as an effective deterrent against third parties considering or contemplating infringement.Failure to protect brand may reduce its value, and could damage your business’ reputation. It is also important to be attentive to the activities of your competitors. If you suspect or witness your brand being infringed it is best to take action as soon as possible. The longer the infringing activity exists, the more difficult to maintain the registered trademark and chances of trademark becoming generic. Genericide is the term used to describe the death of a trademark that results from the brand name becoming the name of the object itself. COPYRIGHTS 1847 is the First Copyright law Enactment in India during British Regime. The term of copyright was for the lifetime of the author and 60 years counted from the year following the death of the author Copyright law is designed to protect interests and balance the rights of the following stake holders  Authors/ Creators  Publishers/ Entrepreneurs  Users /Audiences Indian Copyright Act is the one of the best Copyright enactment in the world. The Copyright Act 1911, while repealing earlier statues on the subject, was also made applicable to all the British colonies including India. In 1914, the Indian Copyright Act was enacted which modified some of the provisions of Copyright Act 1911 and added some new provisions to it to make it applicable in India. Copyright Act, 1911 was in existence in India till the new Copyright Act, 1957 was introduced in India Post Independence. In India, the Copyright Act, 1957 (as amended in 1999), the Rules made there under and the International Copyright Order, 1999 govern Copyright and neighbouring rights. This Act has been amended five times i.e 1983,1984,1992,1999 and most recently in 2012. INTELLECTUAL PROPERTY RIGHTS Page 4  MRCET (UGC Autonomous) What can be protected under Copyright? Literary, Dramatic, Artistic, Musical, Cinematographic, Photographic and Sound Recording works. Literary works such as novels, poems, plays, reference works, newspapers and computer programs; databases; films, musical compositions, and choreography; artistic works such as paintings, drawings, photographs and sculpture; architecture; and advertisements, maps and technical drawings. PATENTS Patent is a grant for an invention by the Government to the inventor in exchange for full disclosure of the invention. A patent is an exclusive right granted by law to applicants / assignees to make use of and exploit their inventions for a limited period of time (generally 20 years from filing). The patent holder has the legal right to exclude others from commercially exploiting his invention for the duration of this period. In return for exclusive rights, the applicant is obliged to disclose the invention to the public in a manner that enables others, skilled in the art, to replicate the invention. The patent system is designed to balance the interests of applicants / assignees (exclusive rights) and the interests of society (disclosure of invention). Meaning of ‘Invention’ under Patent Law Sec.2(1)(J) - Invention” means a new product or process involving an inventive step and capable of industrial application There are three types of patents: Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant INTELLECTUAL PROPERTY RIGHTS Page 5  MRCET (UGC Autonomous) TRADE SECRETS A trade secret consists of any valuable business information. The business secrets are not to be known by the competitor. There is no limit to the type of information that can be protected as trade secrets; For Example: Recipes, Marketing plans, financial projections, and methods of conducting business can all constitute trade secrets. There is no requirement that a trade secret be unique or complex; thus, even something as simple and nontechnical as a list of customers can qualify as a trade secret as long as it affords its owner a competitive advantage and is not common knowledge. If trade secrets were not protectable, companies would no incentive to invest time, money and effort in research and development that ultimately benefits the public. Trade secret law thus promotes the development of new methods and processes for doing business in the marketplace. Protection of Trade Secrets: Although trademarks, copyrights and patents are all subject to extensive statutory scheme for their protection, application and registration, there is no federal law relating to trade secrets and no formalities are required to obtain rights to trade secrets. Trade secrets are protectable under various state statutes and cases and by contractual agreements between parties. For Example: Employers often require employees to sign confidentiality agreements in which employees agree not to disclose proprietary information owned by the employer. If properly protected, trade secrets may last forever. On the other hand, if companies fail to take reasonable measures to maintain the secrecy of the information, trade secret protection may be lost. Thus, disclosure of the information should be limited to those with a “need to know” it so as to perform their duties, confidential information should be kept in secure or restricted areas, and employees with access to proprietary information should sign nondisclosure agreements. If such measures are taken, a trade secret can be protected in perpetuity. Another method by which companies protect valuable information is by requiring employee to sign agreements promising not to compete with the employer after leaving the job. Such covenants are strictly scrutinized by courts, but generally, if they are reasonable in regard to time, scope and subject matter, they are enforceable GEOGRAPHICAL INDICATIONS GI is an indication, originating from a definite geographical territory. It is used to identify agricultural, natural or manufactured goods produced, processed or prepared in that particular territory due to which the product has special quality, reputation and/or other characteristics. INTELLECTUAL PROPERTY RIGHTS Page 6  MRCET (UGC Autonomous) IMPORTANCE OF INTELLECTUAL PROPERTY RIGHTS IPR is a significant tool in today's era. The risk of an innovation getting infringed without the knowledge of the inventor stands very high. With the increase in the importance of IP, instances of IP crimes have become the part and parcel of the digitized era sometimes even leading to failure of businesses. Companies rely on adequate protection of their patents, trademarks, and copyrights, while customers make use of IP to ensure that they purchase secure, assured goods. An IP asset is like any other physical property offering commercial benefits to businesses. In a web-based world, IP protection is much more relevant as it is comparatively simpler than ever to reproduce any specific template, logo, or functionality. Hence, strong IP laws give protection to IP and contribute to the economy of the respective state. IPR is one of the sources of security for intangible properties which are still open to the public and which can be quickly replicated by anyone. Intellectual property rights are more important because today we are highly-connected to digital landscape. With all of the good the rise of the internet has done for the sharing of information and ideas, it has unfortunately become easier for ideas and works to be stolen, which can be damaging to both national economies and innovation. Intellectual property protection varies from country to country, but countries that have strong IP laws recognize the important impact original works, designs, inventions, etc. have on the overall economy. Almost every country that has a dependence on international trade takes strong measures to protect their intellectual property rights.3 With the rise of intangible assets that are shared across the internet, it is easy for people to unlawfully copy and share books, music, movies, and more. Copyrights, patents, trademarks, and trade secrets and the laws around these protections are all intended to encourage innovation and creativity and are essential to the practice of IP law to help curb illegal activities. Organizations like the World Intellectual Property Organization (WIPO) underscore the importance of fostering IP-driven innovation to incentivize and protect creativity. WIPO is a global forum for intellectual property services and is a self-funding agency of the United Nations, with 193 member states. INTELLECTUAL PROPERTY RIGHTS Page 7  MRCET (UGC Autonomous) EVOLUTION OF IP ACTS AND TREATIES The evolution of international IP acts through different treaties and the formation of World Intellectual Property Organization (WIPO) is given below in brief. 1883 – Paris Convention (France) The Paris Convention for the Protection of Industrial Property is born. This international agreement is the first major step taken to help creators ensure that their intellectual works are protected in other countries. The need for international protection of intellectual property (IP) became evident when foreign exhibitors refused to attend the International Exhibition of Inventions in Vienna, Austria in 1873 because they were afraid their ideas would be stolen and exploited commercially in other countries. The Paris Convention covers: Inventions (patents) Trademarks Industrial designs 1886 – Berne Convention (Switzerland) Following a campaign by French writer Victor Hugo the Berne Convention for the Protection of Literary and Artistic Works is agreed. The aim is to give creators the right to control and receive payment for their creative works on an international level. Works protected include: Novels, short stories, poems, plays; Songs, operas, musicals, sonatas; and Drawings, paintings, sculptures, architectural works. 1891 – Madrid Agreement (Spain) With the adoption of the Madrid Agreement, the first international IP filing service is launched: the Madrid System for the international registration of marks. In the decades that follow, a full spectrum of international IP services will emerge under the auspices of what will later become WIPO. INTELLECTUAL PROPERTY RIGHTS Page 8  MRCET (UGC Autonomous) 1893 – BIRPI established The two secretariats set up to administer the Paris and Berne Conventions combine to form WIPO's immediate predecessor, the United International Bureaux for the Protection of Intellectual Property – best known by its French acronym, BIRPI. The organization, with a staff of seven, is based in Berne, Switzerland. 1970 – BIRPI becomes WIPO The Convention establishing the World Intellectual Property Organization (WIPO) comes into force and BIRPI is thus transformed to become WIPO. The newly established WIPO is a member state-led, intergovernmental organization, with its headquarters in Geneva, Switzerland. 1974 – WIPO joins the UN WIPO joins the United Nations (UN) family of organizations, becoming a specialized agency of the UN. All member states of the UN are entitled, though not obliged, to become members of the specialized agencies. 1974 – WIPO joins the UN (193 Member Countries in UN today) WIPO joins the United Nations (UN) family of organizations, becoming a specialized agency of the UN. All member states of the UN are entitled, though not obliged, to become members of the specialized agencies. 1978 – PCT System launched The PCT international patent system begins operation. The PCT expands rapidly to become WIPO's largest international IP filing system today. The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. TRIPS Agreement India along with other emerging nations graced a signatory to the Treaty of TRIPS of the World Trade Organisation (WTO) in 1995 with a matter that agreement will allow free INTELLECTUAL PROPERTY RIGHTS Page 9  MRCET (UGC Autonomous) flow of trade, investment and eliminate the restrictions enduring in the norm of Intellectual Property. The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation as applied to nationals of other WTO Members. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international legal agreement between all the member nations of the World Trade Organization (WTO). The TRIPS Agreement aims for the transfer of technology and requires developed country members to provide incentives for their companies to promote the transfer of technology to least-developed countries in order to enable them to create a sound and viable technological base AGENCIES RESPONSIBLE FOR IPR REGISTRATIONS (a) National IPR Agencies: The office of the Controller General of Patents, Designs and trademarks (CGPDTM), a subordinate Office under The Department for Promotion of Industry and Internal Trade (DPIIT), carries out statutory functions related to grant of Patents and registration of Trademarks, Designs and Geographical Indications. The registration of copyrights is administered by the Registrar of Copyright Office, working under the CGPDTM. It functions out of offices situated in Delhi, Kolkata, Mumbai, Chennai and Ahmadabad, while the Central IP Training Academy is at Nagpur. The appropriate office of the patent office shall be the head office of the patent office or the branch office as the case may be within whose territorial limits. Residence of applicant or Domicile; or their place of business; or the place where the invention actually originated. The CGPDTM supervises the functioning of the following IP offices: i. The Patent Offices (including the Design Wing) at Chennai, Delhi, Kolkata & Mumbai. ii. The Patent Information System (PIS) and Rajiv Gandhi National Institute of Intellectual Property Management (RGNIIPM) at Nagpur. iii. The Trade marks Registry at Ahmadabad, Chennai, Delhi, Kolkata & Mumbai. INTELLECTUAL PROPERTY RIGHTS Page 10  MRCET (UGC Autonomous) iv. The Geographical Indications Registry (GIR) at Chennai. v. The Copyright Office at Delhi. vi. The Semiconductor Integrated Circuits Layout-Design Registry at Delhi. Office Territorial Jurisdiction Patent Office Branch, The States of Telangana, Andhra Pradesh, Karnataka, Kerala, Tamil Chennai Nadu and the Union Territories of Pondicherry and Lakshadweep Patent Office Branch, The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Mumbai Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli. Patent Office Branch, The States of Haryana, Himachal Pradesh, Jammu and Kashmir, New Delhi Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh. Patent Office, Kolkata The rest of India Intellectual Property Appellate Board (IPAB): Intellectual Property Appellate Board (IPAB) has been established in the year 2003, under Section 84 of the Trade Marks Act, 1999. The Board hears appeals against the decision of Controller of Patents (under the Patents Act, 1970), Registrar of Trade Marks (under the Trade Marks Act, 1999) and Geographical Indication cases (under the Geographical Indication & Protection Act, 1999). The Copyright Board and Plant Varieties Protection Appellate Tribunal function under the ambit of IPAB in accordance with their respective Acts and Rules. (b) International IPR Agencies: There are a number of International organizations and agencies that promote the use and protection of intellectual property. INTELLECTUAL PROPERTY RIGHTS Page 11  MRCET (UGC Autonomous) International Trademark Association (INTA) INTA is a not-for-profit international association composed chiefly of trademark owners and practitioners. It is a global association. Trademark owners and professionals dedicated in supporting trademarks and related IP in order to protect consumers and to promote fair and effective commerce. More than 4000 (Present 6500 member) companies and law firms more than 150 (Present 190 countries) countries belong to INTA, together with others interested in promoting trademarks. INTA members have collectively contributed almost US $ 12 trillion to global GDP annually. INTA undertakes advocacy work throughout the world to advance trademarks and offers educational programs and informational and legal resources of global interest. Its head quarter in New York City, INTA also has offices in Brussels, Shanghai and Washington DC and representative in Geneva and Mumbai. This association was founded in 1878 by 17 merchants and manufacturers who saw a need for an organization. The INTA is formed to protect and promote the rights of trademark owners, to secure useful legislation (the process of making laws), and to give aid and encouragement to all efforts for the advancement and observance of trademark rights. World Intellectual Property Organization (WIPO) WIPO was founded in 1883 and is specialized agency of the United Nations whose purposes are to promote intellectual property throughout the world and to administer 23 treaties (Present 26 treaties) dealing with intellectual property. WIPO is one of the 17 specialized agencies of the United Nations. It was created in 1967, to encourage creative activity, to promote the protection of Intellectual Property throughout the world. Around 193 nations are members of WIPO. Its headquarters in Geneva, Switzerland, current Director General of WIPO is Francis Gurry took charge on October 1, 2008. THE ROLE AND VALUE OF IP IN INTERNATIONAL COMMERCE Intellectual property rights (IP rights) are not inherently valuable. Their value is the strategic advantage gained by excluding others from using the intellectual property. To be valuable, your exclusionary rights should be strategically aligned with your business objectives. The recognition of intellectual property rights is an important key to converting creativity into a marketable product with positive cash flow. Creativity is essential to economic growth. Consumer sales depend on attractive, efficient, safe, innovative, and dependable products and INTELLECTUAL PROPERTY RIGHTS Page 12  MRCET (UGC Autonomous) services, and these qualities are built on intellectual property. The IP rights of a business are among its most valuable assets. The protection of those IP rights can promote creativity, distinguish a business and its products or services, and increase its profitability and endurance. To understand the role of IP rights in practical terms, you must first appreciate the purpose of IP laws. Although IP laws will differ in detail from country to country, they have the same basic purpose, which is also reflected in international and regional agreements. In broad terms, exclusive rights in intellectual property are usually granted pursuant to laws that are intended to do the following:  Define the monopolistic rights, namely, exclusive ownership rights that belong to the holder of the IP and are transferable to another holder in certain situations.  Define the limitations on the monopoly, such as by restricting the application of exclusive rights to an invention, presentation, or specific goods only, by making exceptions to exclusive use for permitted acts (e.g., authorizing single copies for educational purposes), and by setting terms of duration.  Define the remedies for violation of IP rights. In other words, IP laws create affirmative rights, but not an absolute defensive shield against infringement. They give the owner of the IP the right to stop other persons from using the IP in a manner that is not permitted by the law. Unless the IP owner takes affirmative action, an infringement of IP rights may continue unchecked by any other authority. This concept is extremely significant: mere registration of IP rights is not alone sufficient to protect those rights against unauthorized use. If you are going to spend the money and labor to register your IP claim, you must be also willing to spend the money and labor to enforce your claim. Your IP can be one of your most useful and most used business tools. If you own patents, copyrights, designs, or similar IP, you will realize value from utilizing them in your own exclusive manufacture or production. If you own marks, you will use them to distinguish your business and your products or services, to grow its customer base, and to promote its goodwill and reputation. If you own trade secrets, specialized mailing lists, secret recipes or processes, and similar IP, your business can provide distinctively unique services in contrast to your competition. INTELLECTUAL PROPERTY RIGHTS Page 13  MRCET (UGC Autonomous) The cost of launching a new product or developing a new invention can sometimes be so costly that licensing or merging with another company is less expensive. When selling a business, the valuation of assets should always include the value of all IP rights held by the business. There are no limits on how valuable IP rights may become. The value of your IP could double your company’s value. Your IP may become the most valuable asset in your business. You business may even be or become the exploitation of your IP rights through licensing or other similar arrangements. For example, copyrights generate lucrative license fees and royalties. Publishers, authors, music makers, record companies, entertainers, sports figures, television and movie studios make millions from IP protected by copyrights. A famous person can command millions for an appearance, and can sue for millions for unauthorized use of his or her famous name or likeness. Companies holding patents can gain substantial market share while other companies are trying to find another way to replicate the same result. Small inventors and large companies alike often license patented technologies for substantial fees. It has been reported by the Asian Wall Street Journal that an inventor who has filed more than 500 patents in the United States in the last 35 years has made more than US$500 million without directly engaging in any industrial application of the invention. Intellectual property rights can become worth more than the physical assets of a company. For example, the IP produced and acquired by Microsoft Corporation is valued at more than the company’s physical assets, and the company itself has been valued at more than the value of General Motors Corporation, despite the latter’s significant physical assets. Similarly, the Internet Company Yahoo, Inc., has been valued at more than the value of New York Times, Inc., based on the IP rights developed and acquired by the former. In addition to knowing the factors that complicate the value of your IP rights, you hold the key to identifying other intangible assets, which may be taken into account in combination with your IP rights or as separate assets E-Commerce, more than other business systems, often involves selling products and services that are based on IP and its licensing. Music, pictures, photos, software, designs, training modules, systems, etc. can all be traded through E-Commerce, in which case, IP is the main component of value in the transaction. IP is important because the things of value INTELLECTUAL PROPERTY RIGHTS Page 14  MRCET (UGC Autonomous) that are traded on the Internet must be protected, using technological security systems and IP laws, or else they can be stolen or pirated and whole businesses can be destroyed. The systems that allow the Internet to function - software, networks, designs, chips, routers and switches, the user interface, and so on - are forms of IP and often protected by IP rights. Trademarks are an essential part of E-Commerce business, as branding, customer recognition and good will, essential elements of Web-based business, are protected by trademarks and unfair competition law. Finally, E-Commerce based businesses usually hold a great deal of their value in IP; so the valuation of your E-Commerce business will be affected by whether you have protected your IP. Many E-Commerce companies, like other technology companies, have patent portfolios and trademarks ISSUES AFFECTING IP INTERNATIONALLY The major IP Issue Areas to be considered in International Trade are as follows  IP Rights are Territorial  Secure Freedom to Operate  Respect Deadlines  Early Disclosure  Working with Partners  Choosing an Appropriate Trademark IP Rights are Territorial It is important to keep in mind that IP rights are only valid in the country or region in which they have been granted. Therefore, applying for such rights in other countries is important if there is an intention to go international. However, note copyright is automatically available through the provisions of the Berne Convention, famous marks have automatic protection, trade secrets are by their nature confidential. IP Rights can be obtained Internationally as follows National Route Apply in each country, pay fees, translation into national languages INTELLECTUAL PROPERTY RIGHTS Page 15  MRCET (UGC Autonomous) International Route( PCT) The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. In this the filing of an international application is done from the applicant's national Office Freedom to Operate (FTO) Analyzing FTO is to evaluate whether you are in any way infringing the patents, designs or trademarks of others. Such a evaluation is usually done by conducting a search in patent, trademark and design databases for patent applications, granted patents, registered trademarks or designs As patents, trademarks and designs are granted to particular territories an FTO search may reveal that the particular IP in question is not protected in the territory of interest. Reason for conducting searches: are  Same or confusingly similar trademark may already exist in the export market  Technology not patented in one country may be patented elsewhere Respect Deadlines Priority Period -Once an application for a patent or design right has been made domestically (priority date) an international application has to be made within the “priority period.” The international application will benefit from the priority date. A filing after the priority period has lapsed would mean you can’t benefit from the earlier priority date and novelty will be lost. Patents: 12 months Designs: 6 months Risks of Early Disclosure Patents and designs are required to be novel to merit protection If a product needs to be disclosed it should be done in a Non-disclosure Agreement. If not, the novelty could be lost and an application for registration be rejected. This is particularly important in disclosing products that embody inventions and/or designs to potential partners before protection has been obtained INTELLECTUAL PROPERTY RIGHTS Page 16  MRCET (UGC Autonomous) Working with Partners Ownership of IP Creation of new IP and who owns that Assignments/licenses for ownership Risk of unauthorized use or disclosure of trade secrets by partner Risk that partner will use trade secrets of others and expose you to litigation. Insist on indemnification Quality of product to be maintained so as to sustain brand image. Trademarks if registered in the partners name in the country could create problems once the relationship ends. Choosing an Appropriate Trademark Check whether the mark has undesired connotations or is likely to be rejected in any country. For example Mitsubishi was dismayed to find that PAJERO means 'wanker' in Spanish. Ford NOVA means no go in Spanish. But Coca-Cola was successful in finding a trademark in Chinese to say “happiness in the mouth”. INTELLECTUAL PROPERTY RIGHTS Page 17  MRCET (UGC Autonomous) UNIT II Trade Marks: Purpose and function of trademarks, Acquisition of trade mark rights, transfer of rights, Selecting and evaluating trademark, registration of trademarks, claims. Trade Secrets: Trade secret law, determination of trade secret status, liability for misappropriation of trade secrets, trade secret litigation. Geographical Indication of Goods: Basic aspects and need for the registration DEFINITIONOF TRADEMARK: A trade mark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. As stated above, the definition of "trade mark" under Section 2(1) is “A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from others and may include shape of goods, their packaging and combination of colours and covers both goods and services”. “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”. [Section 2(1)]. PURPOSE AND FUNCTION OF TRADEMARKS A trade mark (popularly known as brand name in layman’s language) is a visual symbol which may be a word to indicate the source of the goods, a signature, name, device, label, numerals, or combination of colours used, or services, or other articles of commerce to distinguish it from other similar goods or services originating from another. It is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products. Over the years these marks evolved into today's system of trade mark registration and protection. The system helps INTELLECTUAL PROPERTY RIGHTS Page 18  MRCET (UGC Autonomous) consumers identify and purchase a product or service because its nature and quality, indicated by its unique trade mark, meets their needs. A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use it or to authorize another to use the same in return for payment. The period of protection varies, but a trade mark can be renewed indefinitely beyond the time limit on payment of additional fees. Trade mark protection is enforced by the courts, which in most systems have the authority to block trade mark infringement. In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trade mark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade. Trademarks perform two critical functions in the market place:  They provide assurance that goods are of a certain quality and consistency, and  They assist consumers in making decisions about the purchase of goods. The main purpose of trademark is to show the difference about the quality of goods and service. For example: If a trademark such as NIKE could be counterfeited (imitating) and used by another on inferior merchandise (goods), there would be no incentive for the owners of the NIKE mark to produce high-quality shoes and to expend money establishing consumer recognition of the products offered under the NIKE marks. Thus,protectionoftrademarksresultsinincreasedcompletioninthemarketplace,withboththeproduc erofgoodsandservicesandtheconsumerastheultimatebeneficiaries.Businessbenefitbecausetheyc anreaptherewardsoftheirinvestmentindevelopingandmarketingaproductwithonefearinganotherb usinesswilldeceiveconsumerbyusingthesameoraconfusinglysimilarmarkforlikegoods,andconsu mersbenefitbecausetheyareabletoidentifyandpurchasedesiredandqualitygoods. The value inherent in achieving consumer loyalty to a particular product or service through the maintenance of consistent quality of the products or service offered under a mark is called goodwill.  They identify one maker’s goods or services and distinguish them from those offered INTELLECTUAL PROPERTY RIGHTS Page 19  MRCET (UGC Autonomous) by others  They indicate that all goods or services offered under the mark come from a single producer, manufacturer, or “source”  They indicate that all goods or services offered under the mark are of consistent quality and  Theyserveasanadvertisingdevicesothatconsumerslinkaproductorservicebeingofferedwit hamark TYPESOF MARKS There are four different types of marks. They are: 1. Trademark 2. Service mark 3. Certification mark 4. Collective mark Trademark The term trademark thus refers to some physical and tangible good and servicemark refers to an intangible service, in common usage the term trademark is often used to refer to marks for both goods and service. The key point in this legal description is that a trademark is a visual mark that may use any combination of letters and imagery to aid a company in differentiating itself from other entities. The purpose of a trademark is to visually represent a person, company, or product and trademark should be designed to provide easy and definite recognition. The term mark will be used as a synonym for both trademark and servicemarks. The federal statute ((law) an act passed by a legislative body) governing trademark law, the U.S. Trademark Act (Lanham Act, found at 15 U.S.C 1051etseq.) itself states that the term mark includes any trademark, servicemark, collectivemark, or certificatemark. INTELLECTUAL PROPERTY RIGHTS Page 20  MRCET (UGC Autonomous) Service mark A service mark is the same as a trademark, but instead of a particular product, it identifies and differentiates the source of a service. A service mark is nothing but a mark that distinguishes the services of one proprietor/owner from that of another. Service marks do not represent goods, but the services offered by the company. They are used in a service business where actual goods under the mark are not traded. Companies providing services like computer hardware and software assembly, restaurant and hotel services, courier and transport, beauty and health care, advertising, publishing, etc. are now in a position to protect their names and marks from being misused by others. The rules governing for the service marks are fundamentally the same as any other trademarks. Certification mark A certification mark is a word, name, symbol, device, or combination thereof used by one person to certify that the goods or services of others have certain features inregard to quality material mode of manufacture or some other characteristic (or that the work done on the goods or services was performed by members of a union or other organization). For example: Hallmark, ISO mark and in U.S Under writers Laboratory seals of approval (Underwriters Laboratory is the large stand best known independent, not for profit testing laboratory in the INTELLECTUAL PROPERTY RIGHTS Page 21  MRCET (UGC Autonomous) world based in Northwood, Illinois, UL conducts safety and quality tests on abroad range of products, from firedoor’s to CCTV cameras seals of approval). Collective Mark Acollectivemarkisoneusedbyacollectivemembershiporganization,such as a labor union, fraternity, or professional society, to identify that the person displaying the mark is a member of the organization. These are the trademarks used by a group of companies and can be protected by the group collectively. Collective marks are used to inform the public about a particular characteristic of the product for which the collective mark is used. The owner of such marks may be an association or public institution or it may be cooperative. Collective marks are also used to promote particular products which have certain characteristics specific to the producer in a given field. Thus, a collective trademark can be used by a more than one trader, provided that the trader belongs to the association. INTELLECTUAL PROPERTY RIGHTS Page 22  MRCET (UGC Autonomous) ACQUISITIONOF TRADEMARKRIGHTS In a global scope, obtaining a trademark right through Use or through Registration are two major legislative models of system for the grant of trademark rights.  By Use  By Registration The “use” model is based on the objective facts of trademark use, and decides the ownership of a trademark according to the time that the trademark was first used. While the “registration” model grants trademark rights according to registration and the first applicant will obtain the trademark right. In history, the earliest trademark legislations all took “use” principle, for instance, the first statue of trademark-Law of Manufacturing Signs and Trademarks concerning the Content of Use and Non-examination Principle enacted by France in 1857 took the “use” model. However, since there are many defects of the “use” principle, France abandoned this principle which was already implemented for more than one hundred years in 1964 and shifted to adopt the “registration” model which was succeeded by the current Code of Intellectual Property. Article 712-1 of the code provides: “trademark rights shall be obtained through registration”. In India one can acquire and claim a Trademark only by Registration and not by Use The registration of a trade mark confers on the registered proprietor of the trade mark the exclusive right to use the trade mark in relation to the goods or services in respect of which the trade mark is registered. While registration of a trade mark is not compulsory, it offers better legal protection for an action for infringement. As per Section 17 of the Act, the registration of a trade mark confers the following rights on the registered proprietor: (i) It confers on the registered proprietor the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered. (ii) It entitles the registered proprietor to obtain relief in respect of infringement of the INTELLECTUAL PROPERTY RIGHTS Page 23  MRCET (UGC Autonomous) trade mark in the manner provided by the Trade Marks Act, 1999 when a similar mark is used on (a) same goods or services, (b) similar goods or services, (c) in respect of dissimilar goods or services. (iii) Registration of a trade mark forbids every other person (except the registered or unregistered permitted user) to use or to obtain the registration of the same trade mark or a confusingly similar mark in relation to the same goods or services or the same description of goods or services in relation to which the trade mark is registered. (iv) After registration of the trade mark for goods or services, there shall not be registered the same or confusingly similar trade mark not only for the same goods or services but also in respect of similar goods or services by virtue of Section 11(1) of Trade Marks Act, 1999. (v) Moreover, after registration of the trade mark for goods or services, there shall not be registered the same or confusingly similar trade mark even in respect of dissimilar goods or services by virtue of Section 11(2) in case of well-known trademarks. (vi) Registered trade mark shall not be used by anyone else in business papers and in advertising. Use in comparative advertising should not take undue advantage of the trade mark. Such advertising should not be contrary to honest practices in industrial or commercial matters. The advertising should not be detrimental to the distinctive character or reputation of the trade mark. (vii) There is a right to restrain use of the trade mark as trade name or part of trade name or name of business concern dealing in the same goods or services. The registered trade mark continues to enjoy all the rights which vest in an unregistered trade mark. By registration the proprietor of an unregistered trade mark is converted into proprietor of the registered trade mark. An application for registration may be based on a trade mark in use prior to such application and such a trade mark is already vested with rights at Common law from the time the use of the mark was commenced. INTELLECTUAL PROPERTY RIGHTS Page 24  MRCET (UGC Autonomous) TRANSFER OF TRADE MARK The intellectual property rights assignment is a transfer of the rights of the owner, title and the interest in certain intellectual property. The party transferring the rights are called assignor and the party receiving the rights are called assignee. The assignor transfers to the assignee its property in intellectual property rights such as trademarks, patents etc. The owner of the rights may transfer all of his rights or part of his rights. Like the copyright owner could assign only some of his economic rights. The license agreements, grants permissions to use the intellectual property rights under certain conditions. Likely, the general rule assignments are transfers of property rights without any condition under which rights will be used. An intellectual property assignment agreement is a contract to transfer intellectual property ownership from assignor to assignee. It empowers the assignor to permanently consign all of his intellectual property rights to the willing candidate in exchange for a defined amount. This agreement makes the owner sell his rights similarly as he could sell a physical property marking a permanent transfer. It means he will no longer hold any control, involvement, or claim on the transferred rights. Section 37 of the Trade Mark Act, 1999 recognizes the right of registered proprietor to assign the trade mark for any consideration and to give receipt. It provides that subject to the provisions of the act and to any right appearing from the register to be vested in any other person, the proprietor of a trade mark has the power to assign the trade mark and to give effectual receipt for any consideration for such assignment. It is a settled principle that the assignor cannot possibly transfer more rights to the assignee that what he himself has. A registered trade mark is only assignable, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of the trademark which is registered for those goods or service. Section 2(1)(b) of the Trade Mark Act,1999 defines the “assignment” to mean “an assignment in writing by act of the parties concerned”. In view of this definition, an assignment has to be in writing and by the act of the parties concerned. Both the assignor and the assignee must execute the document. Such document will be known as the assignment agreement. There cannot be a unilateral execution of document by one party alone. INTELLECTUAL PROPERTY RIGHTS Page 25  MRCET (UGC Autonomous) Type of Assignment of Trademark Complete Assignment of a Trademark: Here the owner of the trademark transfers his ownership and rights completely to the assignee related to the trademark. Such also includes the right to make any further transfer to other person as assignee. After the complete assignment of the trade mark the owner loses his rights over the trademark and the assignee retains all the respective rights. Partial Assignment of a Trademark: Here the transfer of the ownership is done to certain products and services only. The assignor holds the rights over the part which he has not transferred to the assignee in terms of assignment. The assignor has the right to make choice related to the partial assignment. The assignor can use such exclusive rights in his business and administration. Trademark Assignment with Goodwill: Here the assignor can transfer the rights of ownership as well as the image valued rights over the trademark. Then the assignee can use such representation in the market reputation of the trademark for the promotion of the product. Trademark Assignment without Goodwill: Here lies the restriction over the usage of the trademark product on the part of the assignee i.e the assignor can restrict the assignee for not using the trademark in business. The same trademark can be used by both, the assignor and the assignee in their different business filed. This assignment is also called as gross trademark assignment. Registration of Assignment Section 45 of the Trade Mark Act, 1999 lays down the procedure for the registration of the assignment. Where a person becomes entitled by assignment to a registered trade mark, he shall apply in the prescribed manner to the registrar to register his title. Registrar shall upon the receipt of the application, register him as the proprietor of the trade mark in respect of the goods or services in respect of assignment. Registrar may require further evidences and statement in proof of title if there is any reasonable doubt about the veracity of the statement or any document furnished. The assignment agreements are always considered important in the intellectual property. It allows the property owner to transfer his ownership rights for the commercial returns and INTELLECTUAL PROPERTY RIGHTS Page 26  MRCET (UGC Autonomous) ensures the monetary gains to him. It is a written, enforceable contract that pertains to transfer the rights in a formalize agreement between two persons. It protects and regulates the rights of all the parties that are engaged in the agreement. Assignment agreement involves the exclusive sale of the rights which gives the assignee complete ownership over the marks of the assignor in whatever way, shape, or form it is in. SELECTING AND EVALUATING TRADEMARK Selecting a Mark The selection of mark occurs in a variety of ways companies hold contests and encourages employees to create a mark for a new product line or service. Companies engage sophisticated research. Branding firms that will conduct surveys and create a mark and a logo or design for the company. Once the mark is selected, it must be screed and evaluated for use and registrability, if failed then it leads to wastage in expenditure of time and money in advertising, using and applying for a mark that is rejected for registration by the PTO or, in the worst case scenario, might subject the owner to damages for trade mark infringement and unfair competition. Once a mark is selected, it should be carefully scrutinized to ensure that it will not be excluded from protection under the Lanham Act.  Firstly they have check whether the mark contains scandalous (giving offence to moral sensibilities and injurious to reputation)  Whether consent from a living person will be required,  Whether the mark is generic,  Whether it is statutorily protected  Whether the mark is descriptive of some feature of the goods and services offered under the mark,  It also see that the mark includes foreign terms  Many law firms specializing in trademark work use a questionnaire form or datasheet to gather questionnaire form or datasheet together basic information from clients about their marks. INTELLECTUAL PROPERTY RIGHTS Page 27  MRCET (UGC Autonomous) Evaluating Trademark Trademarks are not only used to provide legal protection to a company's name, design, word, etc. rather are intangible assets. Evaluating the exact value of the trademark is challenging. Till a decade or two ago, no one used to evaluate the value of their intangible assets of the company. However now, brands create the reputation of a product; motivates the purchasing power; and makes the product different from other generic products. In fact, almost every brand fetches a good amount of value. But evaluating the exact value of the trademark is a big challenge, and one must know the correct way to evaluate it. Valuating intangible assets of your company like trademark or patent is a complex task which can turn your head upside down, and thus makes the selling transaction adversative. But the need to evaluate a brand is essential for many business activities, like a merger or acquisition; sale or purchase of the trademark or if you want to sell your company. The first step in evaluating the trademark is to examine the historical prospects of the trademark like the total cost invested in it; profit margin associated with the products and the time it was first used, etc. After considering these options, one must follow the methodologies and different approaches as listed below: The Income Approach The most crucial element on which a trademark's value is determined is the income generating power of the business. The more the earning power, the higher the value of the brand would be. Through future estimates of economic benefit, cash flows and risks involved, and converting this analysis into simple information; the income approach enables you to evaluate your company trademark. INTELLECTUAL PROPERTY RIGHTS Page 28  MRCET (UGC Autonomous) Market Approach In this method, the price of similar marks is considered and compared. It uses market-based indicators of value and takes similar marks into account; it analyses royalty rates and transaction prices to determine what the market is paying for similar intangible assets. In this approach, market trends are considered, and other transactions are analyzed. Cost Approach Cost approach considers the implicit as well as explicit cost incurred in creating the Trademark. Cost approach also covers the cost accrued in promoting the company and its brand promotion. A particular focus on forecasts of market transactions is employed and estimated time and cost that would be required to make a similar trademark are considered. Other Factors Along with the ones listed above, there are other factors which a company should consider while evaluating a trademark or trademarks and to maximize their values:  Qualitative and quantitative characteristics of the trademark.  If there is any contract assigned or associated with the trademark.  Sustainability of the trademark in the market in future.  Market position a trademark holds in the current business.  The capital structure of the company and its modifications according to the needs. Trademark carries a significant value in the business, and a company should evaluate its brand and know the exact value of their intangible assets. A company should work towards the goal of enhancing the value of trademark and other intangible assets for long-term profits. TRADEMARK REGISTRATION PROCESS:  Investing your time and money to build a particular brand and seeing the same brand name being used by another, robbing you of your hard-earned brand reputation is not an agreeable state of affairs. INTELLECTUAL PROPERTY RIGHTS Page 29  MRCET (UGC Autonomous)  Many a time, trademark (TM) owners end up in protracted litigation because when the time was right, they did not do trademark registration in India of their brand name.  Trademark registration process of the brand name is not a difficult task.  A few simple steps, as explained below and you would have the much-needed legal protection of your brand name registration in India. A trademark application can be made by:  Private firms  Individuals  Companies- Limited Liability Partnership, OPC, Private limited, Public, Partnership, etc.  NGO’s Note: In the case of NGOs and LLP companies the trademark has to be applied for registration in the name of the concerned business or a company. Any person, pretending to be the proprietor of a trademark used or intended to be applied by him, may apply in writing in a prescribed manner for registration. The application must include the trademark, the goods or services, name and address of the candidate with power of attorney, the time of use of the mark. The application must be in English or Hindi. It must be registered at the appropriate office. Step 1: Trademark Search  Many entrepreneurs do not comprehend the importance of a TM search.  Having a unique brand name in mind is not good enough reason to avoid a TM search.  TM search helps you to know if there are similar trademarks available and it gives you a fair picture of where your trademark stands, sometimes, it also gives you a forewarning of the possibility of trademark litigation.  Why waste your money in time-consuming trademark litigation later when you can choose to avoid it in the first place? INTELLECTUAL PROPERTY RIGHTS Page 30  MRCET (UGC Autonomous) Step 2: Filing Trademark Application  Based on the nature of product a class is chosen among 45 classes of trademark.  Once the chosen brand name or logo is not listed in the Trademark Registry India, then we can opt for registering the same.  The first step is to file a trademark application at the Trademark Registry India through online / offline.  Once the application is filed, an official receipt is immediately issued for future reference with TM application number. Step 3: Examination  The examination might take around 12-18 months.  The examiner might accept the trademark absolutely, conditionally or object.  If accepted unconditionally, the trademark gets published in the Trademark Journal.  If not accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned in the examination report and a month's time would be given to fulfill the conditions or response to the objections.  Once such response is accepted, the trademark is published in the Trademark Journal.  If the response is not accepted, one can request a hearing. If in the hearing, the examiner feels that the trademark should be allowed registration, it proceeds for publication in the Trademark Journal. Step 4: Publication  The step of publication is incorporated in the trademark registration process so that anyone who objects to the registering of the trademark has the opportunity to oppose the same.  If, after 3-4 months from publication there is no opposition, the trademark proceeds for registration. INTELLECTUAL PROPERTY RIGHTS Page 31  MRCET (UGC Autonomous)  In case there is opposition; there is a fair hearing and decision are given by the Registrar. Step 5: Registration Certificate  Once the application proceeds for trademark registration, following publication in Trademark Journal, a registration certificate under the seal of the Trademark Office is issued. Step 6: Renewal  The trademark can be renewed perpetually after every 10 years. Hence, your logo or brand name registration can be protected perpetually. While filing for the trademark registration, the documents required to provide are as follows: Identity and business proofs: The trademark owner or the person who is approved by the trademark owner requires presenting their identity proof. It can be your Aadhar Card, Driving License, Passport, Ration card, or Voter’s ID. Using Logo with Tagline: If a trademark application is prepared for a tagline with only words, then there is no requirement for a logo. In cases where a logo is applied, then it must be submitted in black and white format. The number of words in the logo must exactly be the same as specified in the application for a trademark. Brand Name & Logo: The logo must have the brand name. User Affidavit: If a particular user data is to be claimed, the user affidavit is expected to be submitted. Proof of TM use: To demand specific user date, documentary proof like invoices, registration certificates, etc. with the brand name must be given. MSME or Start-up Recognition: A partnership firm or Corporate entities can give a certificate of registration under MSME or Start-up India scheme to get a 50% rebate on the Government fee Signed Form TM – 48: M-48 is a lawful document that enables the attorney to file the trademark on your behalf with the trademark registry. The document will be made by LW professionals for the signature. INTELLECTUAL PROPERTY RIGHTS Page 32  MRCET (UGC Autonomous) International Registration The system of international registration of marks is governed by two treaties: The Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Nice (1957), and Stockholm (1967), and amended in 1979, and the Protocol relating to that Agreement, which was concluded in 1989, with the aim of rendering the Madrid system more flexible and more compatible with the domestic legislation of certain countries which had not been able to accede to the Agreement. The Madrid Agreement and Protocol are open to any State which is party to the Paris Convention for the Protection of Industrial Property. The two treaties are parallel and independent and States may adhere to either of them or to both. In addition, an intergovernmental organization which maintains its own Office for the registration of marks may become party to the Protocol. Instruments of ratification or accession must be deposited with the Director General of WIPO. States and organizations which are party to the Madrid system are collectively referred to as Contracting Parties. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration which has effect in each of the Contracting Parties that has been designated CLAIMS Intellectual property claims are legal actions brought by one party against another when a party feels its intellectual property (IP) rights have been infringed upon. India being a mixed market has many industries that operate under the free market concept. The competition in the market system is extreme. For any enterprise to thrive in the open market, they have to create brand recognition and brand value. The simplest way through which this is achieved is via trademarks. The need for trademarks can be considered a three-prong approach to represent goods or services by:  Helping consumers recognize the source  Helping consumers determine the quality INTELLECTUAL PROPERTY RIGHTS Page 33  MRCET (UGC Autonomous)  Helping consumers make a purchasing decision Once such value is attached to the trademark, it is imperative to protect it from misuse and infringement by others. What is Trademark Infringement The Trademarks Act, 1999 (hereinafter referred to as the Act) is the legislation that protects trademarks in India. The Act lays down the rules dealing with registration, protection and penalties against infringement regarding trademarks. Trademarks are given the status of intellectual property across the globe. There are many organizations, both international and national, that endeavor to protect intellectual properties such as trademarks. In India, the organization that deals with the protection of trademarks is the Indian Patent Office administered by the Controller General of Patents, Designs and Trademarks. In simple words, trademark infringement is the unauthorized usage of a mark that is identical or deceptively similar to a registered trademark. The term deceptively similar here means that when an average consumer looks at the mark, it is likely to confuse him/her of the origin of the goods or services. Types of Trademark Infringement When looking into trademark infringement, one must know that are two types of infringement: 1. Direct infringement Direct infringement is defined by Section 29 of the Act. There a few elements that have to be met for a direct breach to occur; they are as follows: Use by an unauthorized person: This means that violation of a trademark only happens when the mark is used by a person who is not authorized by the holder of the registered trademark. If the mark is used with the authorization of the holder of the registered trademark, it does not constitute infringement. Identical or deceptively similar: The trademark used by the unauthorized person needs to either be identical to that of the registered trademark or deceptively similar to it. The term ‘deceptively similar’ here only means that the common consumer ‘may’ be confused between the marks and may think of them being the same. The operational word here being ‘may’, it INTELLECTUAL PROPERTY RIGHTS Page 34  MRCET (UGC Autonomous) only needs to be proven that this is a possibility and does not require proof of actually happening. As long as there is a chance of misrecognition of the marks, it is enough for proving infringement. Registered trademark: The Act only extends protection to trademarks that have been registered with the trademark registry of India. In the case of breach of an unregistered mark, the common law of passing off is used to settle disputes. It is a tort law that is used where injury or damage is caused to the goodwill associated with the activities of another person or group of persons. Class of goods or services: For the infringement of the trademark, the unauthorised use of the mark has to be used for the propagation of goods or services that fall under the same class of the registered trademark. 2. Indirect infringement Unlike direct infringement, there is no provision in the Act that deals with indirect infringement specifically. This does not mean that there is no liability for indirect infringement. The principle and application of indirect infringement arise from the universal law principle. It holds accountable not only the principal infringer but also anyone that abets, induces that direct offender to infringe. There are two types of indirect infringement: Vicarious liability: According to Section 114 of the Act, if a company commits an offence under this Act, then the whole company will be liable. Therefore not only the principal infringer but, every person responsible for the company will be liable for indirect infringement, except for a person who acted in good faith and without knowledge of the infringement. The elements for vicarious liability are:- When the person can control the activities of the principal infringer – When the person knows of the infringement and contributes to it – When the person may derive financial gains from the infringement The only exception to vicarious liability of a company for infringement is when the company has acted in good faith and had no idea about the infringement. Contributory infringement: There are only three basic elements to contributory infringement:- When the person knows of the infringement – When the person materially contributes to the direct infringement – When the person induces the principal infringer to INTELLECTUAL PROPERTY RIGHTS Page 35  MRCET (UGC Autonomous) commit infringement In the case of contributory infringement, there is no exception as there exists no chance of the contributory infringer to act in good faith. Penalties for Trademark Infringement In India, the infringement of a trademark is a cognisable offence which means that the infringer may also face criminal charges along with civil charges. It is also not required by the Indian law for the trademark to be registered for the institution of civil or criminal proceedings. As mentioned before this is due to the common law principle of passing off. In the case of trademark infringement, the court may award the following remedies:  Temporary injunction  Permanent injunction  Damages  Account of profits (damages in the amount of the profits gained from the infringement)  Destruction of goods using the infringing mark  Cost of legal proceedings In the case of a criminal proceeding, the court dictates the following punishment:  Imprisonment for a period not less than six months that may extend to three years  A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh. The type of information that must be kept confidential in order to retain its competitive advantage is generally called a “Trade Secret”. A trade secret is any information that can be used in the operation of a business or other enterprise that is sufficiently valuable and secret to afford an actual or potential economic advantage over others. The trade secret constitute a recipe, a formula, a method of conducting business, a customer list, a price list, marketing plans, financial projection and a list of targets for a potential acquisition. Generally, to qualify for trade secret protection, information must  be valuable;  not be publicly known; and  be the subject of reasonable efforts to maintain its secrecy The rapid pace of technology advances the ease with which information can now be INTELLECTUAL PROPERTY RIGHTS Page 36  MRCET (UGC Autonomous) rapidly disseminated and the mobility of employees require businesses to devote significant effort to protecting their trade secrets. If trade secrets were not legally protectable, companies would have no incentive for investing time money and effort in research and development that ultimately benefits the public at large. Trade secrets law not only provides an incentive for companies to develop new methods and processes of doing business but also, by punishing wrongdoers, discourages improper conduct in the business environment. The Law Governing Trade Secrets:  Trademarks, copyrights, and patents are all subject to extensive federal statutory schemes for their protection, there is no federal law relating to trade secrets, and no registration is required to obtain trade secret protection.  Most trade secret law arises from common law principles, namely, judge-made case law.  The first reported trade secret case in the United States was decided in 1837 and involved manufacturing methods for making chocolate.  In 1939, the Restatement of Torts (a wrongful act or an infringement of a right) adopted a definition of a trade secret, and many states relied on that in developing their body of case law, leading to greater consistency in the development of trade secrets law. Additionally 1979, the National Conference of Commissioners on Uniform State laws drafted the uniform Trade Secrets Act (UTSA) to promote uniformity among the states with regard to trade secrets law. The UTSA was amended in 1985. The following definition of trade secret has been adopted by the UTSA:  Trade secret means information, including a formula, pattern, compilation, program, device, method, technique or process that:  Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and  is the subject of efforts that are reasonable under the circumstance to maintain its secrecy. INTELLECTUAL PROPERTY RIGHTS Page 37  MRCET (UGC Autonomous) DETERMINATION OF TRADE SECRET STATUS: Restatement of Torts (a wrongful act or an infringement of a right) §757 cmt.b lists six factors to be considered in determining whether information qualifies as a trade secret. Courts routinely examine these factors to determine whether a company’s information constitutes a trade secret. The extent to which the information is known outside the company: Although information may be known to other outside the company and still qualify as a trade secret, the greater the number of people who know the information, the less likely it is to qualify as a trade secret. Secrecy need not be absolute. The extent to which the information is known within the company: Although an employer or company is permitted to disclose confidential information with a demonstrated “need to know” the information. If the information is widely known within the company, especially among those who have no business need to know the information, it may not qualify as a trade secret. The extent of the measures taken by the company to maintain the secrecy of the information:  One claiming trade secret protection must take reasonable precautions to protect the information.  Courts are unlikely to protect information a company has not bothered to protect.  A company is not obligated to undertake extreme efforts to protect information, but reasonable precautions are required.  Some experts predict that courts will likely require advanced security measures to protect trade secrets transmitted via e-mail, including encryption and protocols to ensure confidentiality. The extent of the value of the information to the company and its competitors:  If information has little value either to its owner or to the owner’s competitors, it is less likely to qualify as a trade secret. INTELLECTUAL PROPERTY RIGHTS Page 38  MRCET (UGC Autonomous)  Conversely, information that is valuable to a company, such as the recipe for its key menu product, and that would be of great value to the company’s competitors is more likely to be protectable trade secret. The extent of the expenditure of time, effort, and money by the company in developing the information:  The greater the amount of time, effort, and money the company has expended in developing or acquiring the information, the more likely it is to be held to be a protectable trade secret. The extent of the ease or difficult with which the information could be acquired or duplicated by other:  If information is easy to acquire or duplicate, it is less likely to qualify a trade secret.  Similarly if the information is readily ascertainable from observation or can be easily reproduced, it is less likely to be a trade secret.  On the other hand, if it can be reverse engineered only with significant expenditures of time, effort, and money, the product may retain its status as a trade secret. LIABILITY FOR MISAPPROPRIATION OF TRADE SECRETS:  Misappropriation of a trade secret occurs when a person possesses, discloses, or uses a trade secret owned by another without express or implied consent and when the person used improper means to gain knowledge of the trade secret.  knew or should have known that the trade secret was acquired by imprope