Marcus Evans conference: Corporate Legal Counsel Forum Roadmap for Intellectual Property Rights protection in the globalised world Taj Lands End, Mumbai

Marcus Evans conference:Marcus Evans conference:Corporate Legal Counsel ForumCorporate Legal Counsel Forum

Roadmap for Intellectual Property Rights Roadmap for Intellectual Property Rights protection in the globalised worldprotection in the globalised world

Taj Lands End, MumbaiTaj Lands End, Mumbai

24th – 25th May 2007 24th – 25th May 2007

Karnika SethKarnika Seth

Attorney at law & PartnerAttorney at law & Partner

SETH ASSOCIATESSETH ASSOCIATES

ADVOCATES AND LEGAL CONSULTANTSADVOCATES AND LEGAL CONSULTANTS

© Seth Associates, 2007 All Rights Reserved

Presentation planPresentation plan Discovering ways to manage and protect a company’s IPDiscovering ways to manage and protect a company’s IP

Discussing the legal and practical issues on IP law in IndiaDiscussing the legal and practical issues on IP law in India

Recent case laws on IP and their implicationsRecent case laws on IP and their implications

Protecting trademarks, copyright & patents in IndiaProtecting trademarks, copyright & patents in India

Expounding copy rights challenges in digital ageExpounding copy rights challenges in digital age

Understanding the role of legal due diligence in digital rights Understanding the role of legal due diligence in digital rights management and asset protectionmanagement and asset protection

Understanding how the New Companies Bill 2006 interferes with Understanding how the New Companies Bill 2006 interferes with e-governancee-governance


Discovering ways to manage and Discovering ways to manage and protect a company’s IPprotect a company’s IP

What is IP ? What is IP ? Output of intellect having commercial importance/valueOutput of intellect having commercial importance/value Intangible assets of a company-trademarks, patents, copyrights ,etcIntangible assets of a company-trademarks, patents, copyrights ,etc Why manage or protect IPWhy manage or protect IP? Requires huge investment of time and money and ? Requires huge investment of time and money and

can be exploited by commercializationcan be exploited by commercialization Few characteristics-Few characteristics- IPR can be held by legal entities/individualsIPR can be held by legal entities/individuals IPRs can be simultaneously held in same IP in many countries at the same IPRs can be simultaneously held in same IP in many countries at the same

timetime Non working can prove fatal Non working can prove fatal Territorial right except Copyright (as per Berne Convention.)Territorial right except Copyright (as per Berne Convention.) Fixed term rights except trademark and geographical indicationFixed term rights except trademark and geographical indication How to manage IP?How to manage IP? IPR can be assigned, gifted and licensed, mortgaged IPR can be assigned, gifted and licensed, mortgaged Sign non disclosure, confidentiality agreements with Sign non disclosure, confidentiality agreements with

employees/investors/service providersemployees/investors/service providers How to protect IP?How to protect IP? By and large ,statutory registration necessary for protection By and large ,statutory registration necessary for protection

. . Enforce IP rights incase of infringements through legal redress Enforce IP rights incase of infringements through legal redress


Categories of IP rights

Categories of IP rights

Utility model/Designs

Plant Breeder’s rights

Geographical Indications

Trade secrets

Trademark & domain names

Copyright

Patent


IPR

Patents

Industrial Design

Trademarks

Works of Art

Literature

Music

Broadcasting

Dramatics Works

Sound Recording

Computer Programs Geographical Indications

Classification of IPRClassification of IPR

Intellectual Property

Cop

yri

gh

t


Under estimation of its

importance

Cost of Patenting

Enforcement of IPR

Time Required for Grant of a Patent/registration of TM Lack of Awareness

Myth that it can’t be computed /valued

Reasons Why IP is IgnoredReasons Why IP is Ignored


Rights that different IP assets protectRights that different IP assets protect Intellectual Property can be clearly distinguished from Intellectual Property can be clearly distinguished from Goodwill.Goodwill. UK UK

& Australian Generally Accepted Accounting Principles (GAAP) has & Australian Generally Accepted Accounting Principles (GAAP) has specified goodwill as an umbrella concept consisting of specified goodwill as an umbrella concept consisting of unidentifiable intangible assets and should not include those unidentifiable intangible assets and should not include those Intellectual Properties which are capable of individual identification Intellectual Properties which are capable of individual identification and can be sold separately. and can be sold separately.

CopyrightCopyright- is a bundle of rights granted to an author of an original - is a bundle of rights granted to an author of an original artistic, literary or musical work to print ,publish and sell copies of artistic, literary or musical work to print ,publish and sell copies of his work and other allied rights. Copyright protection also extends to his work and other allied rights. Copyright protection also extends to cinematographic film and sound recordings.cinematographic film and sound recordings.

Designs-Designs- The designs entitled to protection are new and original The designs entitled to protection are new and original designs having aesthetic value which have not been previously designs having aesthetic value which have not been previously known or published in India or elsewhere.known or published in India or elsewhere.


TrademarksTrademarks- is an identification symbol which may be a word, a device, a - is an identification symbol which may be a word, a device, a label or numeral etc. or a combination thereof used in the course of trade label or numeral etc. or a combination thereof used in the course of trade that enables the purchasing public to distinguish one trader’s goods from that enables the purchasing public to distinguish one trader’s goods from similar goods of other traders similar goods of other traders

( distinctive/acquired distinctiveness)( distinctive/acquired distinctiveness)

The purpose of The purpose of BrandBrand is: is:• To uniquely identify a company and its product.• To uniquely identify a company and its product.• To differentiate them from competitor.• To differentiate them from competitor.• To enhance the perceived value, the quality and satisfaction that a • To enhance the perceived value, the quality and satisfaction that a customer experiences.customer experiences.• To evoke distinct associate stands for certain personality traits and • To evoke distinct associate stands for certain personality traits and carries emotional carries emotional attachment.attachment.• Above all brand is supposed to inspire trust. Trust failure can lead to • Above all brand is supposed to inspire trust. Trust failure can lead to brand failure and brand failure can be fatal.brand failure and brand failure can be fatal.

PatentsPatents- is the grant of a monopoly right to an inventor who has used his - is the grant of a monopoly right to an inventor who has used his skill to invent something new. (novelty, non obviousness, usefulness)skill to invent something new. (novelty, non obviousness, usefulness)

Rights that different IP assets protect Rights that different IP assets protect (Cond.)(Cond.)


1992 Financial Week 1992 Financial Week listed, as the world's listed, as the world's three most valuable three most valuable trade marks,trade marks, "Marlboro", worth 31 "Marlboro", worth 31

billion US dollars,billion US dollars, "Coca-Cola", worth 24 "Coca-Cola", worth 24

billion US dollars,billion US dollars, and "Budweiser", worth and "Budweiser", worth

10.2 billion US dollars.10.2 billion US dollars. 0

5

10

15

20

25

30

35

Coca-Cola

Marlboro

Budweiser

World's three most valuable World's three most valuable trademarks!trademarks!


Global IP protection -Global IP protection -International OrganizationsInternational Organizations

World Intellectual Property Organisation (WIPO)World Intellectual Property Organisation (WIPO) WIPO was established by the WIPO was established by the WIPO ConventionWIPO Convention

in 1967 with a mandate from its in 1967 with a mandate from its Member StatesMember States (184)to promote the protection of IP throughout the world through cooperati (184)to promote the protection of IP throughout the world through cooperation among states and in collaboration with other international organizations. Ion among states and in collaboration with other international organizations. Its headquarters are in Geneva, Switzerlandts headquarters are in Geneva, Switzerland

International Association for the Protection of Industrial Property (AIPPI) International Association for the Protection of Industrial Property (AIPPI) AIPPIAIPPI The World's leading non-government organisation for research into, The World's leading non-government organisation for research into, and formulation of policy for, the law relating to the protection of intellectual and formulation of policy for, the law relating to the protection of intellectual property property

International Trademark Association (INTA)International Trademark Association (INTA) The The International Trademark Association (INTAInternational Trademark Association (INTA) is a not-for-profit ) is a not-for-profit membership association of more than 5,000 trademark owners and membership association of more than 5,000 trademark owners and professionals, from more than 190 countries, dedicated to the support and professionals, from more than 190 countries, dedicated to the support and advancement of trademarks and related intellectual property as elements of advancement of trademarks and related intellectual property as elements of fair and effective national and international commerce. The Association was fair and effective national and international commerce. The Association was founded in 1878 founded in 1878


International OrganizationsInternational Organizations

European Patent OfficeEuropean Patent Office - -The The European Patent OrganisationEuropean Patent Organisation is an is an intergovernmental organisation that was set up on 7 October 1977 intergovernmental organisation that was set up on 7 October 1977 on the basis of the European Patent Convention (EPC) signed in on the basis of the European Patent Convention (EPC) signed in Munich in 1973. It has two bodies, the European Patent Office and Munich in 1973. It has two bodies, the European Patent Office and the Administrative Council, which supervises the Office's activities. the Administrative Council, which supervises the Office's activities. The Organisation currently has 32 member states. The Organisation currently has 32 member states.

The WTO’s The WTO’s Agreement on Agreement on Trade-Related Aspects of Intellectual Trade-Related Aspects of Intellectual Property Rights (TRIPS)Property Rights (TRIPS),, negotiated in the 1986-94 Uruguay negotiated in the 1986-94 Uruguay Round, introduced intellectual property rules into the multilateral Round, introduced intellectual property rules into the multilateral trading system for the first time. The TRIPS Agreement, which came trading system for the first time. The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual propertymultilateral agreement on intellectual property


WIPO administered IP protection WIPO administered IP protection treatiestreaties

Conventions Topic Year No. Contracting parties

. Berne Convention Copyright 1886 163

Brussels Convention broadcasting 1974 30

Film Register Treaty Copyright 1989 13

Madrid Agreement Indications of Source) 1891 35

Nairobi Treaty Olympic symbol 1981 46

Paris Convention Industrial property 1883 171

Patent Law Treaty patent 2000 14

Phonograms Convention phonograms 1971 76

Rome Convention copyright 1961 86

Singapore Treaty on the Law of Trademarks

trademark 2006 not yet in force

Trademark Law Treaty trademark 19994 38

Washington Treaty Integrated circuits 1989 not yet in force

WCT Copyright 1996 63

WPPT phonograms 1996 61


Global Protection System

Conventions Topic Year No.Contracting parties

Budapest Treaty Microorganism. Patent 1977 67

Hague Agreement Industrial design 1925 47

Lisbon Agreement GI 1958 26

Madrid Agreement (Marks)

trademark 1891 57

Madrid Protocol trademark 1989 72

PCT patent 1970 137

Classification

Conventions Topic Year No.Contracting parties

Locarno Agreement Industrial design 1968 49

Nice Agreement trademark 1957 80

Strasbourg Agreement patent 1971 57

Vienna Agreement Figurative mark 1973 23

WIPO administered IP protection WIPO administered IP protection treatiestreaties


Different Statutes governing IPR in Different Statutes governing IPR in IndiaIndia

Trade Marks

The Patents Act, 1970Patents

The Copyright Act, 1957Copyright

Designs

The Protection of plant varieties and Farmers’ Right Act, 2001

Geographical Indications

Plant Varieties

Semi conductor IC layout design Act,2000

The Designs Act, 2000

The Geographical IndicationsOf Goods Act, 1999

The Trade Marks Act, 1999

Semi conductor IC layout


IP- Duration of Term of ProtectionIP- Duration of Term of Protection

PatentsPatents (20 years) (20 years) Trademarks Trademarks (10 years + renewals)(10 years + renewals) CopyrightsCopyrights in published literary, dramatic, musical, and artistic works (Lifetime of in published literary, dramatic, musical, and artistic works (Lifetime of

author +60 years). author +60 years). Copyright in photographs ,cinematographic film, sound recordings –(60 years Copyright in photographs ,cinematographic film, sound recordings –(60 years

from year in which it was published)from year in which it was published) Broadcast reproduction right-(Broadcast reproduction right-(25 years from the beginning of the calendar 25 years from the beginning of the calendar

year next following the year in which the broadcast is made.)year next following the year in which the broadcast is made.)

Performers right-(Performers right-(25 years from the beginning of the calendar year next 25 years from the beginning of the calendar year next following the year in which the performance is made)following the year in which the performance is made)

Industrial designsIndustrial designs (10 years+ renewal permitted once for 5 years ) (10 years+ renewal permitted once for 5 years ) Trade-secrets and know howTrade-secrets and know how collectively “proprietary technology” (contract collectively “proprietary technology” (contract

period-protected by contract provisions, doctrine of breach of trust)period-protected by contract provisions, doctrine of breach of trust)


Management of IPR assetsManagement of IPR assetsSource: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore, on Source: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore, on

28 Nov 200628 Nov 2006..


Management of IPR assetsManagement of IPR assetsSource: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore, Source: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore,

on 28 Nov 2006on 28 Nov 2006..


Source: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore Source: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore

on 28 Nov 2006on 28 Nov 2006. .


Practical tips for IP ownersPractical tips for IP owners

Secure your rightsSecure your rights Invest in investigationsInvest in investigations Stringent and watertight agreementsStringent and watertight agreements Timely actionsTimely actions clear enforcement strategyclear enforcement strategy


Discussing the legal and practical Discussing the legal and practical issues on IP law in Indiaissues on IP law in India

New Trade Mark LawNew Trade Mark Law ((effective from September 15, 2003effective from September 15, 2003)) The new legislation is in compliance with the TRIPS agreement and The new legislation is in compliance with the TRIPS agreement and

contains important provisions which have been widely welcomed by contains important provisions which have been widely welcomed by IP owners and practitioners. Service marks have been introduced IP owners and practitioners. Service marks have been introduced and it is now possible to obtain registration for service marks in and it is now possible to obtain registration for service marks in India. India.

Well known marks defined and broader protection given:Well known marks defined and broader protection given: The new Act has laid down criteria for well known marks and The new Act has laid down criteria for well known marks and

provided broad protection in respect of them. It has also recognized provided broad protection in respect of them. It has also recognized the theory of dilution in respect of well known marks. Well known the theory of dilution in respect of well known marks. Well known marks are given statutory protection, even when the allegedly marks are given statutory protection, even when the allegedly infringing mark is being used on goods that are dissimilar to those infringing mark is being used on goods that are dissimilar to those for which the mark is registered. for which the mark is registered.

Recent amendments made in IP law of IndiaRecent amendments made in IP law of India


Recent amendments in Indian Recent amendments in Indian Trademark lawTrademark law

Infringement redefinedInfringement redefined The scope of infringement has been widened. One of the important The scope of infringement has been widened. One of the important

changes has been to make it clear that use of a registered trade changes has been to make it clear that use of a registered trade mark as part of a company name/business name will constitute mark as part of a company name/business name will constitute trade mark infringement. This is quite useful for IP owners since, trade mark infringement. This is quite useful for IP owners since, with the growth of the service industry in the last 10 years, there has with the growth of the service industry in the last 10 years, there has been a growing tendency for infringers to adopt well known marks been a growing tendency for infringers to adopt well known marks as part of their trade name/trading style. as part of their trade name/trading style.

Further use of marks, or deceptively similar marks, on similar goods Further use of marks, or deceptively similar marks, on similar goods (or even, in some circumstances, on dissimilar goods) may now (or even, in some circumstances, on dissimilar goods) may now amount to infringement. amount to infringement.

Enforcement streamlinedEnforcement streamlined Misuse of a trade mark has been made a cognizable and non bail-Misuse of a trade mark has been made a cognizable and non bail-

able offence. Powers have been given to police officers to search able offence. Powers have been given to police officers to search and seize premises in case of trade mark infringement. The police and seize premises in case of trade mark infringement. The police officer is, however, required to obtain the opinion of the Trade Marks officer is, however, required to obtain the opinion of the Trade Marks Registrar on infringement of the trade mark.Registrar on infringement of the trade mark.


Recent amendments in Indian Recent amendments in Indian Trademark lawTrademark law

Jurisdiction further stretchedJurisdiction further stretched Jurisdiction under the 1958 Act was invoked where the defendant Jurisdiction under the 1958 Act was invoked where the defendant

had its offices for gain or profits or where the infringing activities had its offices for gain or profits or where the infringing activities were conducted. The 1999 Act has extended the scope of were conducted. The 1999 Act has extended the scope of jurisdiction by allowing the plaintiff to institute proceedings where jurisdiction by allowing the plaintiff to institute proceedings where the plaintiff has its office for profit or gain so as to render the the plaintiff has its office for profit or gain so as to render the provisions of jurisdiction under the Trade Marks Act on a par with provisions of jurisdiction under the Trade Marks Act on a par with those under the Copyright Act. From a brand management those under the Copyright Act. From a brand management perspective, this is again a major milestone, as it enables the perspective, this is again a major milestone, as it enables the plaintiff to institute proceedings at the jurisdiction of its convenience plaintiff to institute proceedings at the jurisdiction of its convenience and location as opposed to the physical discomfort of bringing and location as opposed to the physical discomfort of bringing proceedings where the defendant resides or infringes.proceedings where the defendant resides or infringes.

The 1999 Act allows assignments of pending applications without The 1999 Act allows assignments of pending applications without goodwill. goodwill.


Recent amendments in Indian Recent amendments in Indian Patent ActPatent Act

Patent Law amendedPatent Law amended Amendments to the Patents Act have been the subject of Amendments to the Patents Act have been the subject of

intense debate, particularly those relating to the grant of intense debate, particularly those relating to the grant of pharmaceutical product patents. The Patent Law despite pharmaceutical product patents. The Patent Law despite controversies and lobbying for and against finally saw controversies and lobbying for and against finally saw light of the day on January 1, 2005 in compliance of light of the day on January 1, 2005 in compliance of India’s obligations as a WTO member. The act has been India’s obligations as a WTO member. The act has been amended and product patent in relation to amended and product patent in relation to pharmaceutical products can now be registered in India. pharmaceutical products can now be registered in India.


Recent amendments in Indian Recent amendments in Indian Copyright lawCopyright law

Copyright ProtectionCopyright Protection

The copyright law in India is largely TRIPS compliant. Major The copyright law in India is largely TRIPS compliant. Major changes were made to the Indian Copyright Act in June 1994, changes were made to the Indian Copyright Act in June 1994, coming into effect in May 1995. The amendments to the Act were a coming into effect in May 1995. The amendments to the Act were a landmark in the copyright industry. The much required protection landmark in the copyright industry. The much required protection was given to computer software, clarifying the rights of the user to was given to computer software, clarifying the rights of the user to make backup copies and imposing heavy punishment and fines on make backup copies and imposing heavy punishment and fines on infringers of software copyright. The Act is once again proposed to infringers of software copyright. The Act is once again proposed to be amended in order to address challenges posed by digital be amended in order to address challenges posed by digital environment in particular downloading of music, movies, books, environment in particular downloading of music, movies, books, software and other copyrighted material from the internet. The software and other copyrighted material from the internet. The proposed amendments are awaiting approval from the parliament. proposed amendments are awaiting approval from the parliament. The amendments would provide room for stricter Copyright law The amendments would provide room for stricter Copyright law provisions in line with international standards.provisions in line with international standards.


Discussing the legal and practical Discussing the legal and practical issues on IP law in Indiaissues on IP law in IndiaExisting Hurdles to clearExisting Hurdles to clear…..…..

Procedure of registration is lengthy , cumbersome and costly Procedure of registration is lengthy , cumbersome and costly especially patents.especially patents.

Copyright violations and trademark violations other infringements of Copyright violations and trademark violations other infringements of IPR rampant despite law and enforcement machinery in place-IPR rampant despite law and enforcement machinery in place-procedures are lengthy, cost intensive, need of cohesion , police procedures are lengthy, cost intensive, need of cohesion , police protection necessary for raids, Court injunction required, litigation protection necessary for raids, Court injunction required, litigation delays.( piracy in software, media and books maximum)delays.( piracy in software, media and books maximum)

The Madrid system for the international registration of marks, also The Madrid system for the international registration of marks, also conveniently known as the 'Madrid system', is the primary international conveniently known as the 'Madrid system', is the primary international system for facilitating registration of trademarks in multiple jurisdictions system for facilitating registration of trademarks in multiple jurisdictions around the world.around the world.India is in process of making amendments to its tradelaw regime to India is in process of making amendments to its tradelaw regime to streamline its trademark law and to make it consistent with evolving streamline its trademark law and to make it consistent with evolving international trademark law regime and is also contemplating international trademark law regime and is also contemplating accession to the Madrid System. accession to the Madrid System.


Existing Hurdles to clear…Existing Hurdles to clear…

India is not currently in compliance with TRIPS on a India is not currently in compliance with TRIPS on a number of issues including business methods, but, it is number of issues including business methods, but, it is hoped, they will move in that direction. "The Indian law hoped, they will move in that direction. "The Indian law … adds an exclusion that precludes patents on business … adds an exclusion that precludes patents on business methods, which have been the basis of significant recent methods, which have been the basis of significant recent filings in the United States." Fortunately, there is a strong filings in the United States." Fortunately, there is a strong indication that India’s emerging technology community indication that India’s emerging technology community will positively affect compliance with TRIPS. Ironically, will positively affect compliance with TRIPS. Ironically, with an emerging software industry and the prevalence with an emerging software industry and the prevalence of the English language, India could benefit of the English language, India could benefit tremendously from an expansion of patentable subject tremendously from an expansion of patentable subject matter to include business methods. matter to include business methods.


Recent case laws on IP and their Recent case laws on IP and their implicationsimplications

Spill over reputation and well known marksSpill over reputation and well known marks

Until the 1999 Act was enforced, the 1958 Act dealt with reputation and Until the 1999 Act was enforced, the 1958 Act dealt with reputation and goodwill in a mark as a basis for restraining the use of an identical or goodwill in a mark as a basis for restraining the use of an identical or deceptively similar mark for identical or similar goods. In the case of deceptively similar mark for identical or similar goods. In the case of foreign plaintiffs whose marks did not enjoy direct use in India, spill over foreign plaintiffs whose marks did not enjoy direct use in India, spill over reputation was adequately recognized by the courts and there are several reputation was adequately recognized by the courts and there are several judgments including those in judgments including those in N R Dongre v Whirlpool CorpN R Dongre v Whirlpool Corp 1996 PTC 1996 PTC 476, 476, Caterpillar Inc v Mehtab AhmadCaterpillar Inc v Mehtab Ahmad 2002 CTMR 354 2002 CTMR 354 Delhi, Alfred Delhi, Alfred Dunhill v Kartar Singh MakkarDunhill v Kartar Singh Makkar 1999 PTC 294 and 1999 PTC 294 and Kamal Trading Kamal Trading Company v GilletteCompany v Gillette 1988 PTC 1988 PTC 1 where the foreign plaintiff's mark was 1 where the foreign plaintiff's mark was protected against dishonest adoption in India through the demonstration protected against dishonest adoption in India through the demonstration of international use and reputation in a manner which could have resulted of international use and reputation in a manner which could have resulted in the foreign mark acquiring reputation and goodwill in India.in the foreign mark acquiring reputation and goodwill in India.


Recent Ruling-Protection of Recent Ruling-Protection of colour markscolour marks

The 1999 Act includes the combination of colours and shapes in the The 1999 Act includes the combination of colours and shapes in the definition of trade marks. In a recent landmark decision in the case of definition of trade marks. In a recent landmark decision in the case of Colgate Palmolive Company & Another v Anchor Health and Beauty Care Colgate Palmolive Company & Another v Anchor Health and Beauty Care Pvt LtdPvt Ltd,, 2003 (27) PTC 478 (Delhi), the colour combination of red and 2003 (27) PTC 478 (Delhi), the colour combination of red and white of the plaintiff's company has recently been protected against the white of the plaintiff's company has recently been protected against the defendant. It was stated that if the first glance of the article without going defendant. It was stated that if the first glance of the article without going into the minute details of colour combination and get up appearing on the into the minute details of colour combination and get up appearing on the container and packaging gives the impression of deception or close container and packaging gives the impression of deception or close similarities in respect of these ingredients, it is a case of confusion and similarities in respect of these ingredients, it is a case of confusion and amounts to passing off of one's goods as those of the other with a view to amounts to passing off of one's goods as those of the other with a view to benefiting from the goodwill and reputation of the latter.benefiting from the goodwill and reputation of the latter.

The defendants were restrained from using the colour combination of red The defendants were restrained from using the colour combination of red and white on the containers and packaging of their goods, as there was and white on the containers and packaging of their goods, as there was every likelihood of confusion as to the source on account of the similarity every likelihood of confusion as to the source on account of the similarity of a substantial portion of the container having a particular colour of a substantial portion of the container having a particular colour combination and also the shape of the container.combination and also the shape of the container.


Evasive Tactics In Infringement Evasive Tactics In Infringement Checked With Punitive DamagesChecked With Punitive Damages

The Delhi High Court in the case of The Delhi High Court in the case of Asian Paints (India) Ltd. V Balaji Asian Paints (India) Ltd. V Balaji Paints & Chemicals & OrsPaints & Chemicals & Ors 2006 (33) PTC 683 (Del), reflects the 2006 (33) PTC 683 (Del), reflects the current position as it has taken a strong view, that defendants who current position as it has taken a strong view, that defendants who choose to stay away from proceedings of the court purely to escape choose to stay away from proceedings of the court purely to escape damages should be burdened with the punitive damages, because damages should be burdened with the punitive damages, because on top of the impugned issue defendant’s action impinges on the on top of the impugned issue defendant’s action impinges on the reputation of the plaintiff. reputation of the plaintiff.

Reinforced with the principles formulated in the recent judgment of Reinforced with the principles formulated in the recent judgment of Hero Honda Motors Ltd. VHero Honda Motors Ltd. V Shree Assuramji ScootersShree Assuramji Scooters, , 2006 (32) 2006 (32) PTC 117 (Del.), the Court quantified and awarded the damages of PTC 117 (Del.), the Court quantified and awarded the damages of Rs. Three Lakhs for choosing to stay away from the proceedings of Rs. Three Lakhs for choosing to stay away from the proceedings of the Court despite service. the Court despite service.


Landmark case fighting BiopiracyLandmark case fighting Biopiracy

India has won a 10-year-long battle at the European India has won a 10-year-long battle at the European Patent Office (EPO) against a patent granted on an Patent Office (EPO) against a patent granted on an anti-fungal product, derived from neem.anti-fungal product, derived from neem. EPO initially EPO initially granted the patent to the US Department of Agriculture granted the patent to the US Department of Agriculture and multinational WR Grace in 1995. and multinational WR Grace in 1995.

But the Indian government successfully argued that the But the Indian government successfully argued that the medicinal neem tree is part of traditional Indian medicinal neem tree is part of traditional Indian knowledge. knowledge.

The winning challenge comes after years of campaigning The winning challenge comes after years of campaigning and legal efforts against so-called "bio-piracy". and legal efforts against so-called "bio-piracy".


The Novartis patent case..The Novartis patent case.. A court in southern India on Wednesday reserved its A court in southern India on Wednesday reserved its

verdict on a challenge by Novartis AG <NOVN.VX> verdict on a challenge by Novartis AG <NOVN.VX> against an Indian law that blocks patenting of minor against an Indian law that blocks patenting of minor improvements in known molecules.improvements in known molecules.

India is a vital source of cheap generic medicines and India is a vital source of cheap generic medicines and campaign groups are worried that the poor in the campaign groups are worried that the poor in the developing world could lose access to vital drugs if the developing world could lose access to vital drugs if the Novartis challenge succeeds.Novartis challenge succeeds.

The giant Swiss drug maker has argued that tightening The giant Swiss drug maker has argued that tightening of intellectual property laws would boost investment in of intellectual property laws would boost investment in developing more medicines, and says that the Indian developing more medicines, and says that the Indian patent system stifles innovation. patent system stifles innovation.


Case against software piracyCase against software piracy

In another landmark decision, delivered in In another landmark decision, delivered in Microsoft vs Yogesh PapatMicrosoft vs Yogesh Papat [2005 (30) PTC 245] [2005 (30) PTC 245], , the Delhi High Court calculated the actual loss of the Delhi High Court calculated the actual loss of business caused to the plaintiff by the defendant business caused to the plaintiff by the defendant selling pirated software as 'freeware' with selling pirated software as 'freeware' with assembled computers, and awarded damages of assembled computers, and awarded damages of Rs.1.97 million. This is the highest award for Rs.1.97 million. This is the highest award for damages given by an Indian court to date for damages given by an Indian court to date for trademark and copyright infringement. trademark and copyright infringement.


Domain names protected by Indian Domain names protected by Indian courtscourts

In a recent case the Supreme Court of India held that domain names are In a recent case the Supreme Court of India held that domain names are subject to the legal norms applicable to other intellectual property. While subject to the legal norms applicable to other intellectual property. While restraining a subsequent proprietor from using another proprietor’s restraining a subsequent proprietor from using another proprietor’s registered domain name, the Supreme Court considered various registered domain name, the Supreme Court considered various definitions under the Trademarks Act and held that a ‘domain name’ is a definitions under the Trademarks Act and held that a ‘domain name’ is a word or name that is capable of distinguishing the subject of trade or word or name that is capable of distinguishing the subject of trade or service made available to potential users of the Internet. service made available to potential users of the Internet.

Satyam Infoway Ltd, a leading IT services company and one of India’s Satyam Infoway Ltd, a leading IT services company and one of India’s largest internet service providers, has been the registered proprietor of largest internet service providers, has been the registered proprietor of several domain names, including ‘sify.net’, ‘sifymall.com’ and several domain names, including ‘sify.net’, ‘sifymall.com’ and ‘sifyrealestate.com’, since June 1999. It claimed that the word ‘sify’ was a ‘sifyrealestate.com’, since June 1999. It claimed that the word ‘sify’ was a word invented by using elements of its corporate name. Another word invented by using elements of its corporate name. Another company, Sifynet, which started an internet marketing business using the company, Sifynet, which started an internet marketing business using the domain names siffynet.net and siffynet.com in June 2001, was restrained domain names siffynet.net and siffynet.com in June 2001, was restrained from using these domain names (from using these domain names (Satyam Infoway Ltd v Sifynet Solutions Satyam Infoway Ltd v Sifynet Solutions Pvt LtdPvt Ltd, 2004 53 SCL 26, 2004 53 SCL 26 (SC)). (SC)).


Protecting trademarks, Protecting trademarks, copyright & patents in Indiacopyright & patents in India


Passing off, Trademark Passing off, Trademark infringement and dilutioninfringement and dilution

Passing offPassing off ““No body has any right to represent his goods as the goods of No body has any right to represent his goods as the goods of

somebody else” somebody else”

Lord HalsburyLord HalsburyPassing off action allows trader A to prevent trader B from passing their Passing off action allows trader A to prevent trader B from passing their goods off as if they were A’s.goods off as if they were A’s.

Passing off is available where there is a prospect of confusion of identity Passing off is available where there is a prospect of confusion of identity through the unauthorized use of similar marks or get up, and such use through the unauthorized use of similar marks or get up, and such use damages, or is likely to damage the goodwill and reputation of a business. damages, or is likely to damage the goodwill and reputation of a business. Passing off can apply to virtually any name, mark, logo or get-up which Passing off can apply to virtually any name, mark, logo or get-up which distinguishes a company, business, product or service from the other. distinguishes a company, business, product or service from the other. Passing off attracts doctrine of strict liability: the intention of the person Passing off attracts doctrine of strict liability: the intention of the person passing itself off as another trader is irrelevant. passing itself off as another trader is irrelevant.


Attributes of Passing OffAttributes of Passing OffLord diplock in Erven Warnink v J Townend 1979 (2)AllER 927-To Succeed in an action for passing off, a claimant should establish that:

The claimant has a goodwill

The misrepresentation damages or is likely to damage the goodwill of the claimant.

Passing off is made in the course of trade.

The defendant made a misrepresentation that is likely to deceive the public.


Passing off action under the Passing off action under the Trade Marks Act, 1999Trade Marks Act, 1999

A registered Trademark has the backing of A registered Trademark has the backing of infringement and passing off remedies under the infringement and passing off remedies under the TMA act.TMA act.

The Act does not provide for infringement action The Act does not provide for infringement action in respect of unregistered Trademarks.in respect of unregistered Trademarks.

Only Passing off remedy is available in case of Only Passing off remedy is available in case of unregistered Trademarks.unregistered Trademarks.

(Section 27 of TMA Act, 1999).(Section 27 of TMA Act, 1999).


Section 29Section 29 of the Trademark Act states that when a registered trade mark is of the Trademark Act states that when a registered trade mark is used by a person who is not entitled to use such a trade mark under the used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. A registered trade mark is infringed ,if:-law, it constitutes infringement. A registered trade mark is infringed ,if:-

1. The mark is identical and is used in respect of similar goods or services or1. The mark is identical and is used in respect of similar goods or services or2. The mark is similar to the registered trade mark and there is an identity or 2. The mark is similar to the registered trade mark and there is an identity or

similarity of the goods or services covered by the trade marksimilarity of the goods or services covered by the trade mark3. And Such use is likely to cause confusion on the part of the public or is likely 3. And Such use is likely to cause confusion on the part of the public or is likely

to be taken to have association with the registered trade mark.to be taken to have association with the registered trade mark.

For example, if you are not the Nike® company or authorized by it, it is For example, if you are not the Nike® company or authorized by it, it is an infringement to sell sports clothes called "Nikestuff “an infringement to sell sports clothes called "Nikestuff “

Legal remedies under Indian Trademarks Act-Legal remedies under Indian Trademarks Act-Injunction ,damages, delivery up of infringing goods, destroying infringing Injunction ,damages, delivery up of infringing goods, destroying infringing

goods and material, etc.goods and material, etc.For cases see heading For cases see heading cybersquattingcybersquattingSatyam infoway vs Sifynet solutions 2004 (6)SCC 145..Satyam infoway vs Sifynet solutions 2004 (6)SCC 145..

Trademark infringement


DilutionDilution is a is a trademark lawtrademark law concept forbidding the use of a famous concept forbidding the use of a famous trademark in a way that would lessen its uniqueness. In most cases, trademark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products, might trademark used by one company to refer to hair care products, might be be diluteddiluted if another company began using a similar mark to refer to if another company began using a similar mark to refer to breakfast cerealsbreakfast cereals or or spark plugsspark plugs..

A trademark is diluted when the use of similar or identical trademarks A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (i.e., just the word to be encountered independently of any product (i.e., just the word PepsiPepsi spoken, or on a spoken, or on a billboardbillboard).).

Dilution


Trade Mark InfringementTrade Mark Infringement

The taking of any essential feature of the The taking of any essential feature of the mark or taking the whole of the mark and mark or taking the whole of the mark and then making a few additions and alterations then making a few additions and alterations would constitute infringement.would constitute infringement.

The infringing mark must be used in the The infringing mark must be used in the course of trade, i.e, in a regular trade wherein course of trade, i.e, in a regular trade wherein the proprietor of the mark is engaged.the proprietor of the mark is engaged.

The use of the infringing mark must be The use of the infringing mark must be printed or usual representation of the mark in printed or usual representation of the mark in advertisements, invoices or bills. Any oral use advertisements, invoices or bills. Any oral use of the trade mark is not infringement.of the trade mark is not infringement.

Advertising with the unauthorized use of the Advertising with the unauthorized use of the registered trade mark is also an act of registered trade mark is also an act of infringement.infringement.

Any or all of the above acts would constitute Any or all of the above acts would constitute infringement if the same is done in such a infringement if the same is done in such a manner as to sender the use of the mark manner as to sender the use of the mark likely to be taken as being used as a trade likely to be taken as being used as a trade mark.mark.

Sec 135Sec 135 Relief in suits for infringement or for Relief in suits for infringement or for

passing off, includes injunction and at passing off, includes injunction and at the option of the plaintiff, either the option of the plaintiff, either damages or an account of profits.damages or an account of profits.

In brief, the relief to which a plaintiff is In brief, the relief to which a plaintiff is entitled are-entitled are- An injunction restraining further An injunction restraining further

use of the infringing mark.use of the infringing mark. Damages or an account of profits.Damages or an account of profits. An order for delivery-up of An order for delivery-up of

infringing labels and marks for infringing labels and marks for destruction or erasure.destruction or erasure.

Injunction may be of the following Injunction may be of the following types:-types:- Anton Piller OrderAnton Piller Order Mareva InjunctionMareva Injunction Interlocutory InjunctionInterlocutory Injunction Perpetual injunction. Perpetual injunction.

Kind of InfringementKind of Infringement ReliefRelief


Geographical Indications of Geographical Indications of Goods - InfringementGoods - Infringement

Sec 22-Sec 22- A registered geographical A registered geographical indication is infringed by a person indication is infringed by a person who, not being an authorized user, who, not being an authorized user, uses such indication on the goods or uses such indication on the goods or suggests that such goods originate in suggests that such goods originate in some other geographical area other some other geographical area other than the true origin of the goods which than the true origin of the goods which mislead the public.mislead the public.

A registered geographical indication is A registered geographical indication is infringed by a person who, not being infringed by a person who, not being an authorized user, uses such an authorized user, uses such indication to the goods which indication to the goods which although literally true as to the although literally true as to the territory, region or locality in which territory, region or locality in which goods originate, falsely represents to goods originate, falsely represents to the public that the goods originate in the public that the goods originate in the region, territory or a locality in the region, territory or a locality in respect of which such registered respect of which such registered geographical indication relates. geographical indication relates.


In case false geographical indication In case false geographical indication is established, it carries penalty with is established, it carries penalty with imprisonment for a term which shall imprisonment for a term which shall not be less than six months but which not be less than six months but which may extend to three years and with may extend to three years and with fine which shall not be less than fifty fine which shall not be less than fifty thousand rupees but may extend to thousand rupees but may extend to two lakh rupees. two lakh rupees.


Sections 54 to 62 deals with civil remedies for infringement of copyright. Civil remedies include injunction, damages and accounts, delivery of infringing copies and damages for conversion. Costs: The costs of all parties in any proceedings in respect of the infringement of copyright shall be at the discretion of the court.

There are three types of remedies against copyright infringement

Civil Criminal Administrative

Legal remedies-Copyright Legal remedies-Copyright infringementsinfringements


Legal remedies-copyright infringement

The Law provides civil and criminal remedies in case of infringement of copyright. Copyright infringement is a cognizable offence where a Police Officer not below the Rank of a Sub-Inspector can arrest the offender without the warrant and conduct the search even without prior authorization of a Court.

Copyright infringement if proved in a Court of Law carries a minimum mandatory sentence of imprisonment of six months and minimum fine of Rs. 50,000 which can extend up to Rs. 2 lakh. The Act further provides that there will be an enhanced penalty in case of second and subsequent convictions.

In Civil Cases, the District Court can be persuaded not only to give an interim injunction without notice to the other party but also usually gives a direction under Order 39 Rule 7 of C.P.C. where a Commissioner appointed by the Court will visit the premises of the infringers and will be empowered to conduct a search of the inventors premises and cease infringing material from the infringers premises. The seized material can be used at a later point of time to establish infringement.

In UK these types of orders are called ANTON PILLOR ORDERS


Section 63 defines what constitutes a criminal offence-copyright infringements.

Any person who knowingly infringes or abets the infringement of-

(a) the copyright in a work, or(b)any other right conferred by the Act (except the right conferred

by section 53A, which is the right to share in the resale price of the original copy will be punished with imprisonment for a minimum term of six months and a maximum of three years and with a fine which may vary from a minimum of 50,000 rupees to two lakh rupees.

Legal remedies-copyright infringement


Administrative Remedy –Against Importation of infringing copies:

The Act provides for an effective administrative remedy to prevent importation into India of copies of a copyright work made outside India, which if made in India, would infringe the copyright in the work. Section 53 of the Copyright Act empowers the Registrar of Copyright to make an order prohibiting the importation into India of such copies on the application of the owner of the copyright in any work, or his duly authorized agent, after making such enquiry as he deems fit. The Registrar’s order prohibiting such import brings into play the provisions of the Customs Act as goods the importation of which is banned in the Act. The only difference is that the copies confiscated under this provision do not vest in the Government of India but are to be delivered to the owner of copyright in the work.Section 64 Copyright Act -power to police to seize infringing copies and plates for purpose of making infringing copies of the workPossession of plates to make infringing copies-bailable offence-imprisonment upto 2 years and fine (Section 65)

Legal remedies-combating Legal remedies-combating copyright infringements in Indiacopyright infringements in India


Enforcement of CopyrightEnforcement of Copyright

Copy in a work will be considered infringed-Copy in a work will be considered infringed-1. when any person, without a licence granted 1. when any person, without a licence granted

by the owner of the copyright, or the by the owner of the copyright, or the Registrar of Copyrights, or in contravention Registrar of Copyrights, or in contravention of the conditions of a licence so granted, or of the conditions of a licence so granted, or of any condition imposed by a competent of any condition imposed by a competent authority-authority-

i.i. does anything, the exclusive does anything, the exclusive right right to do which is by this Act to do which is by this Act conferred upon the owner of the conferred upon the owner of the copyright, orcopyright, orii. ii. permits for profit any place to be permits for profit any place to be

used for the communication of used for the communication of the the work work to the public where to the public where such such communication constitutes an communication constitutes an infringement of the copyright in infringement of the copyright in the work, the work, unless he was not aware unless he was not aware and had no and had no reasonable ground for reasonable ground for beleiveing beleiveing that such that such communication to the public communication to the public would would be an infringement of the be an infringement of the copyright; orcopyright; or


Civil RemediesCivil Remedies: : InjunctionInjunction DamagesDamages Account of profitAccount of profit Delivery of infringing copiesDelivery of infringing copies Damages for conversionDamages for conversion

Criminal RemediesCriminal Remedies:: Imprisonment of the accused or Imprisonment of the accused or

imposition of fine or both imposition of fine or both Seizure of infringing copies.Seizure of infringing copies.


Copyright Infringement (Contd.)Copyright Infringement (Contd.)

2. when any person-2. when any person-i.i. makes for sale or hire, makes for sale or hire, or sells or lets for hire, or sells or lets for hire, or or by way of trade by way of trade displays or offers displays or offers for for sale or hire, orsale or hire, orii.ii. distributes either for distributes either for the the purpose of trade or purpose of trade or to to such an extent such an extent as as to to affect prejudicially the affect prejudicially the owner of the copyright, orowner of the copyright, oriii.iii. by way of trade exhibits by way of trade exhibits in public, orin public, oriv.iv. Imports into India, any Imports into India, any infringing copies of the infringing copies of the work.work.


Administrative remediesAdministrative remedies:: Administrative remedies Administrative remedies

consist of moving the consist of moving the Registrar of Copyrights to Registrar of Copyrights to ban the import of ban the import of infringement is by way of infringement is by way of such importation and the such importation and the delivery of the confiscated delivery of the confiscated infringing copies to the owner infringing copies to the owner of the copyright and seeking of the copyright and seeking the delivery. the delivery.


Legal remedies for infringement Legal remedies for infringement of Patentof Patent

Indian Patent Act-Section 108Indian Patent Act-Section 108 InjunctionInjunction Damages or account of profitsDamages or account of profits Infringing goods and materials be Infringing goods and materials be

destroyed.destroyed. Suit be filed in district court or high court Suit be filed in district court or high court

having original civil jurisdictionhaving original civil jurisdiction


Patent InfringementPatent Infringement

Where any person threats any Where any person threats any other person with proceedings other person with proceedings for infringement of a patent.for infringement of a patent.

The colorable imitation of an The colorable imitation of an invention.invention.

Immaterial variations in the Immaterial variations in the invention.invention.

Mechanical equivalents.Mechanical equivalents. Taking essential features of the Taking essential features of the

invention. invention.

Section 106Section 106. Court has the power to grant following . Court has the power to grant following relief in cases of groundless threats of infringement relief in cases of groundless threats of infringement proceedings: proceedings: A declaration to the effect that the threats are A declaration to the effect that the threats are

unjustifiable.unjustifiable. An injunction against the continuance of the An injunction against the continuance of the

threats andthreats and Such damages, if any, as he has sustained Such damages, if any, as he has sustained

thereby.thereby. Section 108Section 108-The relief which a court may grant in -The relief which a court may grant in

any suit for infringement includes an injunction and any suit for infringement includes an injunction and at the option of the plaintiff, either damages or an at the option of the plaintiff, either damages or an account of profits.account of profits.

In brief, the relief which may be awarded in a suit for In brief, the relief which may be awarded in a suit for infringement are- infringement are- Interlocutory/interim injunction.Interlocutory/interim injunction. Damages or account of profits.Damages or account of profits. Permanent injunction.Permanent injunction.



Design InfringementDesign Infringement

Sec 22Sec 22- lays down that the following - lays down that the following acts amount to piracy-acts amount to piracy- To publish or to have it published To publish or to have it published

or expose for sale any article of the or expose for sale any article of the class in question on which either class in question on which either the design or any fraudulent or the design or any fraudulent or obvious imitation has been applied.obvious imitation has been applied.

To either apply or cause to apply To either apply or cause to apply the design that is registered to any the design that is registered to any class of goods covered by the class of goods covered by the registration, the design or any registration, the design or any imitation of it.imitation of it.

To import for the purpose of sale To import for the purpose of sale any article belonging to the class in any article belonging to the class in which the design has been which the design has been registered and to which the design registered and to which the design or a fraudulent or obvious imitation or a fraudulent or obvious imitation thereof has been applied. thereof has been applied.


The judicial remedy for infringement The judicial remedy for infringement of a registered design of a registered design recommended in the Act is damages recommended in the Act is damages alongwith an injunction. alongwith an injunction. Section Section 22(2)22(2) stipulates remedy in the form stipulates remedy in the form of payment of a certain sum of of payment of a certain sum of money by the person who pirates a money by the person who pirates a registered design. A suit in the registered design. A suit in the appropriate manner for seeking the appropriate manner for seeking the relief in the form of an injunction is relief in the form of an injunction is also recommended. also recommended.


The Semiconductor Integrated Circuits The Semiconductor Integrated Circuits Layout-Design Act, 2001 - InfringementLayout-Design Act, 2001 - Infringement

According to Section 18, a person who-According to Section 18, a person who- does any act of reproducing, whether by does any act of reproducing, whether by

incorporating in a semiconductor incorporating in a semiconductor integrated circuit or otherwise, a integrated circuit or otherwise, a registered layout-design in its entirety or registered layout-design in its entirety or any part thereof, except such act of any part thereof, except such act of reproducing any part thereof which is not reproducing any part thereof which is not original.original.

does any act of importing or selling or does any act of importing or selling or otherwise distributing for commercial otherwise distributing for commercial purposes a registered layout-design or a purposes a registered layout-design or a semiconductor integrated circuit semiconductor integrated circuit incorporating such registered layout-incorporating such registered layout-design or an article incorporating such a design or an article incorporating such a semiconductor integrated circuit semiconductor integrated circuit containing such registered layout-design containing such registered layout-design for the use of which such person is not for the use of which such person is not entitled under this Act. entitled under this Act.


Any person who infringes the Any person who infringes the right of registered proprietor shall right of registered proprietor shall be punishable with imprisonment be punishable with imprisonment for a term which may be for a term which may be extended to three years, or with extended to three years, or with fine which shall not be less than fine which shall not be less than fifty thousand rupees but which fifty thousand rupees but which may extend to ten lakh rupees, or may extend to ten lakh rupees, or with both under with both under section 56section 56 of the of the Act. Act.


Expounding copyrights challenges Expounding copyrights challenges in digital agein digital age

The Internet makes it possible to distribute any kind of digital The Internet makes it possible to distribute any kind of digital information, from software to books, music, and video, instantly and at information, from software to books, music, and video, instantly and at virtually no cost. The software industry has struggled with piracy since virtually no cost. The software industry has struggled with piracy since the advent of the personal computer, but as recent controversy over the advent of the personal computer, but as recent controversy over file-sharing systems such as Napster and Gnutella ,Aimster. ( , file-sharing systems such as Napster and Gnutella ,Aimster. ( , demonstrates, piracy is now a serious issue for any individual or demonstrates, piracy is now a serious issue for any individual or business that wants to be compensated for the works they create. And business that wants to be compensated for the works they create. And since the Internet knows no borders, piracy is now a serious global since the Internet knows no borders, piracy is now a serious global problem.problem.

Strong legislationStrong legislation such as the Digital Millennium Copyright Act such as the Digital Millennium Copyright Act (DMCA), cooperation between nations to ensure strong enforcement of (DMCA), cooperation between nations to ensure strong enforcement of international copyright laws, innovative collaboration between content international copyright laws, innovative collaboration between content producers and the technology industry, and standards developed by producers and the technology industry, and standards developed by organizations like the Secure Digital Music Initiative (SDMI) that can organizations like the Secure Digital Music Initiative (SDMI) that can prevent or deter piracy have already made an impact on addressing prevent or deter piracy have already made an impact on addressing this problem. But as more and more digital media becomes easy to this problem. But as more and more digital media becomes easy to distribute over the Internet, the government and private sector must distribute over the Internet, the government and private sector must work together to find appropriate ways to protect the rights of work together to find appropriate ways to protect the rights of information consumers and producers around the worldinformation consumers and producers around the world. .


Types of Copyright InfringementTypes of Copyright Infringement

Direct Infringement

Contributory Infringement

Vicarious Infringement

It is wholesale reproduction and distribution of Copyrighted works

It occurs when someone knowingly encourages infringing activity

When for financial benefit the operator in spite of his ability to control and check infringements deliberately restrains from checking the users from committing such acts-playboy enterprises inc vs webbworld,inc 991 F Supp 543(N.DTex.1997)


E-Copyright Protection and digital E-Copyright Protection and digital musicmusic

The MP3 revolutionThe MP3 revolution The Napster storyThe Napster story P2P file sharing technology facilitates 1-store MP3 music files on individual P2P file sharing technology facilitates 1-store MP3 music files on individual

computer hard drives available for copying by other Napster users 2-search computer hard drives available for copying by other Napster users 2-search for MP3 music files stored on other users computers and 3-transfer exact for MP3 music files stored on other users computers and 3-transfer exact copies of the contents of other users MP3 files from one computer to copies of the contents of other users MP3 files from one computer to another via the Internet. another via the Internet.

Napster free of charge music share software ,napster internet site. It Napster free of charge music share software ,napster internet site. It provided technical support for indexing and searching of MP3 files also.-provided technical support for indexing and searching of MP3 files also.-complaint for being contributory and vicarious copyright infringer. Napster complaint for being contributory and vicarious copyright infringer. Napster used fair use defence. used fair use defence.

Court held Napster is guilty of contributory and vicarious copyright Court held Napster is guilty of contributory and vicarious copyright infringementinfringement

DMCA 1998-Section 512-safe harbour doctrine for ISPs-ISP to prove that it DMCA 1998-Section 512-safe harbour doctrine for ISPs-ISP to prove that it lacks requisite knowledge of infringing activity. (analogous to Section 79 IT lacks requisite knowledge of infringing activity. (analogous to Section 79 IT Act,2000)Act,2000)

New avtaars-Gneutella and kazaa.New avtaars-Gneutella and kazaa.


Digital downloads and Digital downloads and reproduction & display rightsreproduction & display rights

Kelly v Arriba Soft CorpKelly v Arriba Soft Corp 280 F3d 934(9 280 F3d 934(9thth Cir2002)Cir2002)

Plaintiff leslie kelly had copyrighted many images Plaintiff leslie kelly had copyrighted many images of American west. Some were located on her of American west. Some were located on her website. Defendant produced thumbnail pictures website. Defendant produced thumbnail pictures in its search engine’s search results and by in its search engine’s search results and by clicking on them, larger version could be viewed clicking on them, larger version could be viewed within Arriba’s page. within Arriba’s page.

Circuit court held, use of thumbnails is fair use but Circuit court held, use of thumbnails is fair use but display of larger image within its webpages is display of larger image within its webpages is violation of author’s exclusive right to publicly violation of author’s exclusive right to publicly display his works.display his works.


Digital downloads and distribution Digital downloads and distribution rightsrights

Marobie –Fl.inc v National Association of Fire Equip Marobie –Fl.inc v National Association of Fire Equip DistributorsDistributors 983 F Suppl1167(NDIll) 983 F Suppl1167(NDIll)

Court held that the act of placing unauthorised copies of Court held that the act of placing unauthorised copies of Plaintiff’s electronic clip art files on the defendant’s Plaintiff’s electronic clip art files on the defendant’s webpage constitutes an infringement of distribution rights webpage constitutes an infringement of distribution rights of the plaintiff as plaintiff’s files became available for of the plaintiff as plaintiff’s files became available for downloading by internet users.downloading by internet users.

Another case in pointAnother case in point-Playboy enterprises ,inc v Frena-Playboy enterprises ,inc v Frena 839 F Supp 1552(M.D.Fla1993)839 F Supp 1552(M.D.Fla1993)


Understanding the role of legal due Understanding the role of legal due diligence in digital rights management diligence in digital rights management

and asset protectionand asset protection Legal vetting of web content -a must Legal vetting of web content -a must Cross jurisdictional impact. Ref: Section 75 of IT Act, 2000 Cross jurisdictional impact. Ref: Section 75 of IT Act, 2000 Avoidance of any possible unintended violation of rightful owner’s Avoidance of any possible unintended violation of rightful owner’s

trademarks, copyrights ,patents.trademarks, copyrights ,patents. Infringement of IPR in online mode –same legal principles apply as in Infringement of IPR in online mode –same legal principles apply as in

offline mode-IPR statutes govern e-space as well –legal position offline mode-IPR statutes govern e-space as well –legal position most countries including Indiamost countries including India

Indian IT Act,2000 , amended provisions of IPC ( electronic record Indian IT Act,2000 , amended provisions of IPC ( electronic record definition- Section 29A) , Section 65B-admissibility of electronic definition- Section 29A) , Section 65B-admissibility of electronic records of Indian Evidence Act,1872 & Indian courts have recognized records of Indian Evidence Act,1872 & Indian courts have recognized equal application of IPR protection principles in online medium. equal application of IPR protection principles in online medium.

Electronic document legally recognized equal to written document in Electronic document legally recognized equal to written document in offline mode.offline mode.

Domain names equated with Trademarks if indicative of source of Domain names equated with Trademarks if indicative of source of origin of goods and servicesorigin of goods and services


PRECEDENT ON LINKINGPRECEDENT ON LINKINGTicketmaster vs. MicrosoftTicketmaster vs. Microsoft

Facts:Facts: In April, 1997, Ticketmaster filed a complaint in federal court in the Central In April, 1997, Ticketmaster filed a complaint in federal court in the Central District of California alleging that "Microsoft's actions diluted their trademarks; District of California alleging that "Microsoft's actions diluted their trademarks; created a false, deceptive and misleading representation that there was a created a false, deceptive and misleading representation that there was a formal relationship between the two of them; constituted unfair competition and formal relationship between the two of them; constituted unfair competition and business practices; and constituted a commercial misuse of their trademarks.“business practices; and constituted a commercial misuse of their trademarks.“

Microsoft at that time operated Sidewalk, a recreational and cultural guide Microsoft at that time operated Sidewalk, a recreational and cultural guide Web site. What Microsoft was doing was simple -- if a Sidewalk user wanted to Web site. What Microsoft was doing was simple -- if a Sidewalk user wanted to buy a ticket to a particular event mentioned on the site, Sidewalk offered them buy a ticket to a particular event mentioned on the site, Sidewalk offered them a link to Ticketmaster's ticket purchase page. They were actually promoting a link to Ticketmaster's ticket purchase page. They were actually promoting Ticketmaster sales and sending them customers. A month after the suit was Ticketmaster sales and sending them customers. A month after the suit was filed; Ticketmaster blocked Sidewalk users from their site. Links set up from filed; Ticketmaster blocked Sidewalk users from their site. Links set up from Sidewalk then took users to a Ticketmaster page that read, "This is an Sidewalk then took users to a Ticketmaster page that read, "This is an unauthorized link and a dead end for Sidewalk.“unauthorized link and a dead end for Sidewalk.“

StatusStatus:: In February of 1999, the 2-year-old lawsuit was settled out of court. In February of 1999, the 2-year-old lawsuit was settled out of court. "Details of the settlement were not made public, but the deep links were "Details of the settlement were not made public, but the deep links were removed, directing Sidewalk users to the Ticket master homepage.removed, directing Sidewalk users to the Ticket master homepage.


Example: Indian Case on Passing off Example: Indian Case on Passing off /trademark infringement /trademark infringement

in e- worldin e- world

Yahoo! Inc. vs Akash Arora(1999)Yahoo! Inc. vs Akash Arora(1999)

FACTS: FACTS: The defendant installed a website The defendant installed a website Yahooindia.com nearly identical to plaintiff’s Yahooindia.com nearly identical to plaintiff’s renowned yahoo.com and provided services similar to renowned yahoo.com and provided services similar to those of the plaintiff.those of the plaintiff.

DECISION: DECISION: The Delhi High Court granted an The Delhi High Court granted an injunction restraining defendant from using yahoo injunction restraining defendant from using yahoo either as a part of his domain name or as a trade either as a part of his domain name or as a trade mark .It held that trade mark law applies with equal mark .It held that trade mark law applies with equal force on the internet as it does in the physical world.force on the internet as it does in the physical world.


Indian case on e-passing off Indian case on e-passing off

In the case of In the case of Rediff Communication Limited Rediff Communication Limited v. Cyberbooth and Ramesh Nahata of v. Cyberbooth and Ramesh Nahata of MumbaiMumbai (1999 (1999),), the Bombay High Court the Bombay High Court supported an action of passing off when the supported an action of passing off when the Defendants used the term ‘RADIFF’ (similar to Defendants used the term ‘RADIFF’ (similar to the name ‘REDIFF’ of the Plaintiff) to carry on the name ‘REDIFF’ of the Plaintiff) to carry on

business on the Internetbusiness on the Internet. .

Example 2:Example 2:


Similar legal position world Similar legal position world over…Uover…Universal vs. Movie-Listniversal vs. Movie-List

Facts:Facts: Movie-List , a collection of links to over 900 movie trailers, was deep linking Movie-List , a collection of links to over 900 movie trailers, was deep linking to trailers within the Universal Web site. Originally, they were actually running the to trailers within the Universal Web site. Originally, they were actually running the trailers, which were the property of Universal Studios, on the Movie-List server. Not trailers, which were the property of Universal Studios, on the Movie-List server. Not only were they deep linking to trailers, Movie-List was also selling CD-ROMS with only were they deep linking to trailers, Movie-List was also selling CD-ROMS with trailers they had downloaded. Universal then sent them a cease and desist, stating, trailers they had downloaded. Universal then sent them a cease and desist, stating, "You are not permitted to link to other sites that contain our copyrighted material "You are not permitted to link to other sites that contain our copyrighted material without our authorization. Accordingly, you must remove all images from our films as without our authorization. Accordingly, you must remove all images from our films as well as links to other sites that have our servers.“well as links to other sites that have our servers.“

Status: Status: All trailers have been removed from the Movie-List server, and the owner no All trailers have been removed from the Movie-List server, and the owner no longer sells the CD-ROMS. He has removed all of the deep linking to Universal longer sells the CD-ROMS. He has removed all of the deep linking to Universal pages.pages.

Case law on framing- Case law on framing- Washington post Co v Total news inc97Civ1190(SDNYWashington post Co v Total news inc97Civ1190(SDNY))


CASES ON FRAMINGCASES ON FRAMING The Washington Post Company et al. The Washington Post Company et al.

vs.vs. Total News, IncTotal News, Inc..

Facts:Facts: As a one-stop news site As a one-stop news site, , TotalNews.comTotalNews.com linked to many news sites, but linked to many news sites, but kept a frame, or border around them, which the news sites argued made it look kept a frame, or border around them, which the news sites argued made it look like the content was from TotalNews.com, changed the ad layout on the page, like the content was from TotalNews.com, changed the ad layout on the page, and kept totalnews.com as the address for book marking purposes.and kept totalnews.com as the address for book marking purposes.In the In the complaintcomplaint the news companies claimed that TotalNews misappropriated the news companies claimed that TotalNews misappropriated their trademarked and copyrighted material, thereby engaging in a host of their trademarked and copyrighted material, thereby engaging in a host of crimes including unfair competition, federal trademark dilution, and trademark crimes including unfair competition, federal trademark dilution, and trademark and copyright infringement. The news organizations said that their websites, and copyright infringement. The news organizations said that their websites, as they appeared within the Totalnews frames, were substantially altered from as they appeared within the Totalnews frames, were substantially altered from the form in which they intended them to appear to users and that it was done the form in which they intended them to appear to users and that it was done solely for Totalnews' profit.solely for Totalnews' profit.TotalNews argued that the case was in essence about its freedom to link, TotalNews argued that the case was in essence about its freedom to link, which it claimed was a fundamental right on the Internet.which it claimed was a fundamental right on the Internet.Status:Status: The court never decided the TotalNews case because the parties The court never decided the TotalNews case because the parties settled. Totalnews agreed to remove the frame.settled. Totalnews agreed to remove the frame.


Understanding how the New Companies Bill Understanding how the New Companies Bill 2006 interferes with e-governance2006 interferes with e-governance

The object and reasons of THE COMPANIES (AMENDMENT) BILL, 2006 may be The object and reasons of THE COMPANIES (AMENDMENT) BILL, 2006 may be

summarized as follows:summarized as follows:

1) Implementing a comprehensive e-Governance system and programme to enable the 1) Implementing a comprehensive e-Governance system and programme to enable the operations carried out by the Ministry and its field offices to be performed more operations carried out by the Ministry and its field offices to be performed more efficiently and effectively through the use of contemporary information technology and efficiently and effectively through the use of contemporary information technology and computers.computers.

2) Implementing an e-Governance initiative through a project named as “MCA-21” which 2) Implementing an e-Governance initiative through a project named as “MCA-21” which provides the public, corporate entities and others an easy and secure online access to provides the public, corporate entities and others an easy and secure online access to the corporate information, including filing of documents and public access to the the corporate information, including filing of documents and public access to the information required to be in the public domain under the statute, at any time and from information required to be in the public domain under the statute, at any time and from anywhere.anywhere.

3) Inserted new sections 610B, 610C, 610D and 610E in the Companies Act, 1956 so as 3) Inserted new sections 610B, 610C, 610D and 610E in the Companies Act, 1956 so as to make provision for electronic filing system and for payment of fees through electronic to make provision for electronic filing system and for payment of fees through electronic form under the Companies Act which are essential for the successful implementation of form under the Companies Act which are essential for the successful implementation of the MCA-21 Project.the MCA-21 Project.

As passed by the Rajya Sabha on 21/3/2006 and the Lok Sabha on 15/5/2006) As passed by the Rajya Sabha on 21/3/2006 and the Lok Sabha on 15/5/2006) Project MCA 21 has been successfully implemented.Project MCA 21 has been successfully implemented.


SETH ASSOCIATESSETH ASSOCIATES

ADVOCATES AND LEGAL CONSULTANTSADVOCATES AND LEGAL CONSULTANTSNew Delhi Law OfficeNew Delhi Law Office::

C-1/16, Daryaganj, New Delhi-110002, IndiaC-1/16, Daryaganj, New Delhi-110002, IndiaTel:+91 (11) 65352272, +91 9868119137Tel:+91 (11) 65352272, +91 9868119137

Corporate Law OfficeCorporate Law Office: : B-10, Sector 40, NOIDA-201301, N.C.R ,IndiaB-10, Sector 40, NOIDA-201301, N.C.R ,India

Tel: +91 (120) 4352846, +91 9810155766Tel: +91 (120) 4352846, +91 9810155766Fax: +91 (120) 4331304Fax: +91 (120) 4331304

E-mail: [email protected]: [email protected]


Thank You!Thank You!

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Marcus Evans conference: Corporate Legal Counsel Forum Roadmap for Intellectual Property Rights protection in the globalised world Taj Lands End, Mumbai