Refresher Course for the Members of Delhi Higher Judicial Service

atDelhi Judicial Academy, New Delhi

IMPACT OF GLOBALISATION AND ECONOMIC REFORMS ON INTELLECTUAL

PROPERTY RIGHTS (IPR)

Sept. 23, 2006

DR. JUSTICE G.C. BHARUKA

CHAIRMAN, E-COMMITTEE

INTELLECTUAL PROPERTY RIGHTS

(IPR)

JURISPRUDENTIAL VIEW

Intellectual Property

Intellectual Property – a phrase of mere convenience – is a loose cluster of legal doctrines and rights that regulates the uses of intellectual/knowledge products/goods.

The knowledge products so far traditionally recognised by the law relates to the work of art, literature, music, designs, inventions and the like when those are stored in a tangible form.

Is Intellectual ‘Property’ oxymoron?

The term ‘Intellectual Property’ was first used an American Judge, Justice Charles L. Woodburry in Oct. 1845 – in a judgment relating to patent – when he said, “Only in this way, can we protect intellectual property, the labour of the mind, productions and interests as much a man’s own … as the wheat he cultivates or the flocks he rears.”

1967: The term acquired wide spread popularity with the establishment of World Intellectual Property Organisation (WIPO)

A good sections of intellectuals opposed the use of the expression on the ground that intellect (ie., the ability of understand, think and reason) can never be anybody’s monopolised property requiring any legal protection.

Critic to IPR

A section of the critics strongly are opposed to this over-generalized grouping under ‘IPR’ as being fallacious since they: Originated separately Evolved separately Cover different activities Have different rules Raise different public policy issues

But these criticisms are more for academic consumptions than of practical value.

IPR is a merely a name given to a discipline dealing with the rights in intellectual products.

INTELLECTUAL PROPERTY RIGHTS,

WORLD TRADE ORGANISATION

&

TRIPS

Globalization & WTO

The word ‘globalization’ as currently understood simply means, “growing economic interdependence of countries worldwide through increasing volume and variety of cross-border transactions in goods and services.”

In order to maintain the pace and spirit of globalization, the World Trade Organization (WTO) created certain obligations in respect of IPR. One of the obligations of member countries was to provide for a minimum prescribed level of protection to IPRs – the idea was to facilitate cross-border enforcement of such rights.

TRIPS

Thus an agreement called Trade Related Aspect of Intellectual Property Rights (TRIPS) was entered into in 1994. India is a signatory to this agreement and thus, bound by obligations thereunder.

IPR covered by TRIPS are:1. Copyright and related rights2. Trademarks3. Geographical indications4. Industrial designs5. Patents6. Layout – designs (topographies of integrated circuits)7. Protection of undisclosed information (trade secrets)8. Control of anti-competitive practices in contractual

licences

TRIPS

The domestic legislations were required to provide for enforcement of IPRs by making provisions for: General obligations Civil and administrative procedures and

remedies Provisional measures Special requirements related to border

measures Criminal procedures

DOMESTIC LEGISLATION

IN INDIA

IN RELATION TO

INTELLECTUAL PROPERTY RIGHTS

History of IPR in India

IPRs traditionally recognised by law in India:

1889 Indian Merchandise Marks Act

1911 Patents & Designs Act

1914 Copyright Act

1940 Trade Marks Act

1957 Copyright Act

1958 Trade and Merchandise Marks Act

1970 Patents Act

Compliance with TRIPS

IPR Acts amended/enacted/re-enacted under the TRIPS obligation1999 Copyright (Amendment) Act

1999 Trade Marks Act (re-enacted)

1999 Geographical Indications of Goods (Registration Protection) Act, 1999 (new)

2000 Designs Act (re-enacted)

2000 Semiconductor Integrated Circuits Layout-Designs Act, 2000 (new)

2001 Protection of Plant Varieties and Farmer’s Rights Act, 2001 (new)

2002 Biological Diversity Act (new)

2002 & 2005

Patents (Amendment) Act

Copyright Act 1957: A new comprehensive legislation was enacted to cover,

apart from traditional rights, the modern and advanced means of communications to meet the international obligations.

1999: Because of TRIPS agreement, an amendment was brought to introduce the computer programs as well the area of protection was made more broad-based.

The Act now covers the rights pertaining to the artistic works including literary, dramatic, musicial and architectural works, computer programs, artistic works, cinematographic films, sound recording.

Chapter XII provides for civil remedies and Chapter XIII provides for offences pertaining to infringement of copyrights and other rights conferred by the Act.

Civil Remedies include grant of injunctions, damages, direction for accounts, etc.

Section 63 provides for punishment which shall not be less than six months and may extend to 3 years with fine from Rs.50,000 to 2 lakhs.

Trade Marks Act

1999: In view of development in trading, commercial practices, increasing globalization of trade and industry and the like issues, the Trade Mark Act of 1958 was replaced by a comprehensive new enactment.

Trade Mark has been defined to mean “mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”

Examples…

XEROX

MICROSOFT WINDOWS

PEPSIAT&T

MERCEDES

Trade Marks Act

Under Sec. 134, no suit for infringement of trademarks can be instituted in any court inferior to a District Court having jurisdiction to try the suit

Sec. 135 enumerates the reliefs which can be granted which includes injunctions, damages, accounts of profits, delivery of infringed labels and marks, etc.

Chap. XII provides for offences and penalties.

Patents Act The basic purpose of patent law is that inventions in all fields of

technology, whether products or processes, shall be patentable if they meet the three tests of being: New Involving an inventive step Being capable of industrial application

The Patent Act, 1970 has been amended twice (in 2002 & 2005) to make the patent law compatible with TRIPS obligations.

Chap. XVIII deals with suits concerning infringement of patents. The jurisdiction in this regard cannot be exercised by a court inferior to District Court having jurisdiction to try the suit.

The proviso to Sec. 104 provides that where a counterclaim for revocation of the patent is made by the defendant, the suit alongwith the counterclaim shall be transferred to the High Court for decision.

Chap. XX provides for offences and imprisonments which may extend upto 2 years with or without fine.

Geographical Indications of Goods (Registration Protection) Act, 1999 This is a new legislation enacted in compliance to TRIPS

obligations. It is intended for registration and better protection of

geographical indications relating to goods. It provides for registration of geographical goods which

owes its distinctiveness, essential characteristics or reputation and quality to its geographical origin. It may include agricultural, natural or manufactured goods.

For instance, Indian Basmati rice, Agra ka petta, Mathura ka peda, Champagne, Swiss chocolate.

Chap. VIII provides for offences Penalty may extend to imprisonment for a term not less

than six months but may exceed to three years with fine not less than Rs.50,000 extended to 2 lakhs.

Biological Diversity Act

This is also a new legislation enacted pursuant to international treaties and agreements.

This Act is intended to protect sovereign rights of the state over their biological resources like plants, animals, micro-organisms, etc.

Chap. XII creates offences and provides punishments for violation of the regulatory provisions of the Act. Punishment may extend upto 5 years with or without fine which may extend to 10 lakhs.

Protection of Plant Varieties and Farmer’s Rights Act, 2001 This is also a new legislative exercise to comply with

the international treaty agreements The underlying object of the Act is to give a

significant thrust to agricultural growth by providing an effective system for protection of plant varieties and farmer’s rights for research and development of new plant varieties as a commercial exercise.

Sec. 65 provides that no suit shall be instituted in any court inferior to District Court having jurisdiction to try the suit.

Chap. X provides for infringement, offences, penalties and procedures.

Designs Act, 2000

This enactment repeals and replaces the earlier Act of 1911 to meet the TRIPS obligations in respect of “industrial designs”.

It seeks to provide a much broader scope of protection to register designs.

It provides for identification of non-registrable designs, replacement of Indian classification by internationally followed Locarno system of classification, makes provisions for restoration of lapsed designs.

Chap. V deals with legal proceedings. Sec. 22 deals with piracy of registered designs. In case of contravention, a sum not exceeding Rs.25,000 is payable to registered proprietor of design as a contract debt.

Semiconductor Integrated Circuits Layout-Designs Act, 2000

This legislation has been brought about to comply with Sec. 6 in Part II of the TRIPS relating to Layout-Design (topographies) of Integrated Circuits.

The Act provides for exclusive rights to the registered proprietors of a layout-design and also to the registered users.

Chap. 9 provides for criminal remedies for infringement of the layout-design. Sec. 56 provides for imprisonment for a term which may extend to 3 years or with fine which shall not be less than Rs.50,000 but which may extend to 10 lakhs or both.

Protection of Undisclosed Information (Trade Secrets) In India, there is no separate law for this

purpose. Breach of confidence or breach of trust gives

rise to a cause of action in torts for which damages may be sought. (Mrs. Manju Bhatia v. NDMC [(1997) 6 SCC 370]

Further remedies are available under the Contract Act, 1872 and Specific Relief Act by way of compensation and injunction.

THANK YOU