IIB

Page1of1
INTRODUCTIONTOINTELLECTUALPROPERTYRIGHTS

Intellectual property Right (IPR) is a term used for various legal entitlements which
attach to certain types of information, ideas, or other intangibles in their expressed form. The
holder of this legal entitlement is generally entitled to exercise various exclusive rights in
relation to the subject matter of the Intellectual Property. The term intellectual property
reflects the idea that this subject matter is the product of the mind or the intellect, and that
Intellectual Property rights may be protected at law in the same way as any other form of
property. Intellectual property laws vary from jurisdiction to jurisdiction, such that the
acquisition, registration orenforcement of IP rights must bepursued orobtainedseparatelyin
each territory of interest. Intellectual property rights (IPR) can be defined as the rights given
to people over the creation of their minds. They usually give the creator an exclusive right
over the use of his/her creations for a certain period of time.

IntellectualProperty
Intellectual propertyis an intangible creation of the human mind, usuallyexpressed or
translated into a tangible form that is assigned certain rights of property. Examples of
intellectual property include an author's copyright on a book or article, a distinctive logo
design representing a soft drink company and its products, unique design elements of a web
site, or a patent on the process to manufacture chewing gum.

IntellectualPropertyRights

Intellectual propertyrights (IPR)can bedefined as therights given to peopleoverthe

creation of their minds. They usually give the creator an exclusive right over the use ofhis/her
creations for a certain period of time. Intellectual property (IP) refers to creations of the mind:
inventions, literary and artistic works, and symbols, names, images, and designs used in
commerce.

INTELLECTUALPROPERTYRIGHTS Page1
CategoriesofIntellectualProperty

Onecan broadlyclassifythe variousforms ofIPRsintotwo categories:

 IPRs that stimulate inventive and creative activities (patents, utility models, industrial
designs, copyright, plant breeders’ rights and layout designs for integrated circuits)
and
 IPRsthatofferinformationtoconsumers(trademarksandgeographical indications)

IPRs in both categories seek to address certain failures of private markets to provide for an
efficient allocation of resources

IPisdividedintotwocategoriesforeaseofunderstanding:

1. IndustrialProperty
2. Copyright

Industrial property, which includes inventions (patents), trademarks, industrial designs, and
geographic indications of source; and

Copyright, which includes literaryand artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances,producers ofphonogramsintheirrecordings, andthoseofbroadcastersintheir radio
and television programs

Intellectualpropertyshall includetherightrelatingto:

 Literary,artisticandscientificworks;
 Performanceofperformingartists;
 Inventionsinallfieldsofhuman endeavour;
 Scientificdiscoveries;
 Industrialdesigns;
 Trademarks,servicemarksandetc;
 Protectionagainstunfair competition.

INTELLECTUALPROPERTYRIGHTS Page2
TYPES OF INTELLECTUAL PROPERTY

ThedifferenttypesofIntellectualPropertyRightsare:

 Patents
 Copyrights
 Trademarks
 Industrialdesigns
 Geographicalindicationsofgoods
 TradeSecrets

ImportantSpeciesof IPR

Out of the different types of Intellectual PropertyRights the followingare the most important
species of IPR
TRADEMARKS
According to section 2, sub-section (1) of the Trade Marks Act 1999, ”Trade Mark”
means a mark capable of beingrepresented graphicallyand which is capable ofdistinguishing
the goods or services of one person from those of others and may include shape of goods,
their packaging and combination of colours.

INTELLECTUALPROPERTYRIGHTS Page3
 Trade mark registration is an effective and economic way of ensuring your brand is
protected.Registration provides a safeguard against third partyinfringement and often acts as
an effective deterrent against third parties considering or contemplating infringement.Failure
to protect brand may reduce its value, and could damage your business’ reputation. It is also
important to be attentive to the activities of your competitors. If you suspect or witness your
brand being infringed it is best to take action as soon as possible. The longer the infringing
activity exists, the more difficult to maintain the registered trademark and chances of
trademark becoming generic.

Genericide is the term used to describe the death of a trademark that results from the brand
name becoming the name of the object itself.

COPYRIGHTS

1847 is the First Copyright law Enactment in India during British Regime. The termof
copyright was for the lifetime of the author and 60 years counted from the year following the
death of the author

Copyright law is designed to protect interests and balance the rights of the following stake
holders

 Authors/Creators
 Publishers/Entrepreneurs
 Users/Audiences

IndianCopyrightActistheoneofthebestCopyrightenactmentintheworld.

The Copyright Act 1911, while repealing earlier statues on the subject, was also made
applicable to all the British colonies including India. In 1914, the Indian Copyright Act was
enacted which modified some of the provisions of Copyright Act 1911 and added some new
provisions to it to make it applicable in India. Copyright Act, 1911 was in existence in India
till the new Copyright Act, 1957 was introduced in India Post Independence. In India, the
Copyright Act, 1957 (as amended in 1999), the Rules made there under and the International
Copyright Order, 1999 govern Copyright and neighbouring rights. This Act has been
amended five times i.e 1983,1984,1992,1999 and most recently in 2012.

INTELLECTUALPROPERTYRIGHTS Page4
What can beprotected under Copyright?

Literary, Dramatic, Artistic, Musical, Cinematographic, Photographic and Sound Recording

works.

Literary works such as novels, poems, plays, reference works, newspapers and
computerprograms;databases;films,musicalcompositions,andchoreography;artisticworks such
as paintings, drawings, photographs and sculpture; architecture; and advertisements, maps
and technical drawings.

PATENTS

Patent is a grant for an invention by the Government to the inventor in exchange for
full disclosure of the invention. A patent is an exclusive right granted by law to applicants /
assignees to make use of and exploit their inventions for a limited period of time (generally20
years from filing). The patent holder has the legal right to exclude others from commercially
exploiting his invention for the duration of this period. In return for exclusive rights, the
applicant is obliged to disclose the invention to the public in a manner that enables others,
skilled in the art, to replicate the invention. The patent system is designed to balance
theinterestsofapplicants/assignees(exclusiverights)andtheinterestsof society(disclosure of
invention).

Meaningof‘Invention’underPatent

LawSec.2(1)(J)- Invention”means a new product orprocess involvinganinventivestep and

capable of industrial application

Therearethreetypesofpatents:

Utility patents may be granted to anyone who invents or discovers any new and useful
process, machine, article of manufacture, or composition of matter, or any new and useful
improvement thereof;

Design patents may be granted to anyone who invents a new, original, and ornamentaldesign
for an article of manufacture; and

Plant patents may be granted to anyone who invents or discovers and asexually reproduces
any distinct and new variety of plant

INTELLECTUALPROPERTYRIGHTS Page5
TRADE SECRETS

A trade secret consists of any valuable business information. The business secrets are not to
be known bythe competitor. Thereis no limit to the type of information that can be protected
as trade secrets; For Example: Recipes, Marketing plans, financial projections, and methods
of conducting business can all constitute trade secrets. There is no requirement that a trade
secret be unique or complex; thus, even something as simple and nontechnical as a list of
customers can qualifyas a trade secret as long as it affords its owner a competitive advantage
and is not common knowledge. If trade secrets were not protectable, companies would no
incentive to invest time, money and effort in research and development that ultimately
benefits the public. Trade secret law thus promotes the development of new methods and
processes for doing business in the marketplace.

Protection of Trade Secrets: Although trademarks, copyrights and patents are all subject to
extensive statutory scheme for their protection, application and registration, there is nofederal
law relating to trade secrets and no formalities are required to obtain rights to trade secrets.
Tradesecrets are protectableundervarious statestatutes and cases and bycontractual
agreements between parties. For Example: Employers often require employees to sign
confidentiality agreements in which employees agree not to disclose proprietary information
owned by the employer. If properly protected, trade secrets may last forever. On the other
hand, if companies fail to take reasonable measures to maintain the secrecy of the
information, trade secret protection may be lost. Thus, disclosure of the information shouldbe
limited to those with a “need to know” it so as to perform their duties, confidential
information should be kept in secure or restricted areas, and employees with access to
proprietary information should sign nondisclosure agreements. If such measures are taken, a
trade secret can be protected in perpetuity. Another method by which companies protect
valuable information is by requiring employee to sign agreements promising not to compete
with the employer after leaving the job. Such covenants are strictly scrutinized by courts, but
generally, if they are reasonable in regard to time, scope and subject matter, they are
enforceable

GEOGRAPHICALINDICATIONS

GI is an indication, originating from a definite geographical territory. It is used to identify

agricultural,naturalormanufactured goods produced,processed or preparedinthatparticular
territory due to which the product has special quality, reputation and/or other characteristics.

INTELLECTUALPROPERTYRIGHTS Page6
IMPORTANCE OF INTELLECTUALPROPERTYRIGHTS

IPR is a significant tool in today's era. The risk of an innovation getting infringed
without the knowledge of the inventor stands very high. With the increase in the importance
of IP, instances of IP crimes have become the part and parcel of the digitized era sometimes
even leading to failure of businesses. Companies rely on adequate protection of their patents,
trademarks, and copyrights, while customers make use of IP to ensure that they purchase
secure, assured goods. An IP asset is like any other physical property offering commercial
benefits to businesses. In a web-based world, IP protection is much more relevant as it is
comparatively simpler than ever to reproduce any specific template, logo, or functionality.
Hence, strong IP laws give protection to IP and contribute to the economy of the respective
state. IPR is one of the sources of securityfor intangible properties which are still open to the
public and which can be quickly replicated by anyone.

Intellectual propertyrights aremoreimportant becausetodaywearehighly-connected to

digital landscape. With all of the good the rise of the internet has done for the sharing of
information and ideas, it has unfortunately become easier for ideas and works to be stolen,
which can be damaging to both national economies and innovation.

Intellectualpropertyprotectionvaries fromcountrytocountry, butcountriesthathave

strong IP laws recognize the important impact original works, designs, inventions, etc. have
on the overall economy. Almost every country that has a dependence on international trade
takes strong measures to protect their intellectual property rights.3

With the rise of intangible assets that are shared across the internet, it is easy for
people to unlawfully copy and share books, music, movies, and more. Copyrights, patents,
trademarks, and trade secrets and the laws around these protections are all intended to
encourage innovation and creativity and are essential to the practice of IP law to help curb
illegal activities.

Organizations like the World Intellectual Property Organization (WIPO) underscore

the importance of fostering IP-driven innovation to incentivize and protect creativity. WIPOis
a global forum for intellectual property services and is a self-funding agency of the United
Nations, with 193 member states.

INTELLECTUALPROPERTYRIGHTS Page7
EVOLUTION OF IP ACTS AND TREATIES

The evolution of international IP acts through different treaties and the formation
ofWorldIntellectual Property Organization (WIPO) is given below in brief.

1883–ParisConvention (France)

TheParis Convention for the Protection of Industrial Propertyis born. This international
agreement is the first major step taken to help creators ensure that their intellectual works are
protected in other countries. The need for international protection of intellectual property(IP)
became evident when foreign exhibitors refused to attend the International Exhibition of
Inventions in Vienna, Austria in 1873 because they were afraid their ideas would be stolen
and exploited commercially in other countries. The Paris Convention covers:

• Inventions(patents)

• Trademarks

• Industrialdesigns

1886–BerneConvention(Switzerland)

Following a campaign by French writer Victor Hugo the Berne Convention for the
Protection of Literary and Artistic Works is agreed. The aim is to give creators the right to
control and receive payment for their creative works on an international level. Works
protected include:

• Novels,shortstories,poems, plays;

• Songs,operas,musicals,sonatas;and

• Drawings,paintings,sculptures,architecturalworks.

1891–MadridAgreement(Spain)

With the adoption of theMadrid Agreement, the first international IP filing service is
launched: theMadrid System for the international registration of marks. In the decades that
follow, a full spectrum ofinternationalIP serviceswill emerge under the auspices of what will
later become WIPO.

INTELLECTUALPROPERTYRIGHTS Page8
1893–BIRPIestablished

The two secretariats set up to administer the Paris and Berne Conventions combine to
form WIPO's immediate predecessor, the United International Bureaux for the Protection of
Intellectual Property – best known by its French acronym, BIRPI. The organization, with a
staff of seven, is based in Berne, Switzerland.

1970–BIRPIbecomes WIPO

TheConvention establishing the World Intellectual Property Organization (WIPO)

comes into force and BIRPI is thus transformed to become WIPO. The newly established
WIPO is a member state-led, intergovernmental organization, with its headquarters in
Geneva, Switzerland.

1974–WIPOjoinstheUN

WIPO joins the United Nations (UN) family of organizations, becoming aspecialized
agency of the UN. All member states of the UN are entitled, though not obliged, to become
members of the specialized agencies.

1974–WIPOjoinstheUN(193MemberCountriesinUN today)

WIPO joins the United Nations (UN) family of organizations, becoming aspecialized
agency of the UN. All member states of the UN are entitled, though not obliged, to become
members of the specialized agencies.

1978–PCTSystemlaunched

ThePCT international patent system begins operation. The PCT expands rapidly to
become WIPO's largest international IP filing system today.

ThePatent Cooperation Treaty(PCT) makes it possible to seek patent protection for

an invention simultaneously in each of a large number of countries by filing an
"international" patent application.

TRIPSAgreement

Indiaalongwithotheremergingnationsgracedasignatorytothe TreatyofTRIPSof
theWorldTrade Organisation(WTO)in1995witha matterthat agreementwillallow free

INTELLECTUALPROPERTYRIGHTS Page9
flow of trade, investment and eliminate the restrictions enduring in the norm of Intellectual
Property.

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is

an international agreement administered by the World Trade Organization (WTO) that sets
down minimum standards for many forms of intellectual property (IP) regulation as appliedto
nationals of other WTO Members. TheAgreement on Trade-Related Aspects ofIntellectual
Property Rights (TRIPS) is aninternational legal agreement between all the member nations
of the World Trade Organization (WTO).

The TRIPS Agreement aims for the transfer of technologyand requires developed
country members to provide incentives for their companies to promote the transfer of
technology to least-developed countries in order to enable them to create a sound and viable
technological base

AGENCIES RESPONSIBLE FOR IPR REGISTRATIONS

(a) NationalIPR Agencies:

The office of the Controller General of Patents, Designs and trademarks (CGPDTM), a
subordinateOfficeunderTheDepartmentforPromotionofIndustryandInternal
Trade(DPIIT), carries out statutory functions related to grant of Patents and registration of
Trademarks, Designs and Geographical Indications. The registration of copyrights is
administered bythe Registrar of Copyright Office, working under the CGPDTM. It functions
out of offices situated in Delhi, Kolkata, Mumbai, Chennai and Ahmadabad, while theCentral
IP Training Academy is at Nagpur.

The appropriate office of the patent office shall be the head office of the patent office or the
branch office as the case may be within whose territorial limits. Residence of applicant or
Domicile; or their place of business; or the place where the invention actually originated.

TheCGPDTMsupervisesthefunctioningofthefollowingIPoffices:
i. ThePatentOffices(includingtheDesignWing)atChennai,Delhi,Kolkata&Mumbai.
ii. ThePatentInformationSystem(PIS)andRajivGandhiNationalInstituteof Intellectual
Property Management (RGNIIPM) at Nagpur.
iii. TheTrademarksRegistryatAhmadabad,Chennai, Delhi,Kolkata&Mumbai.

INTELLECTUALPROPERTYRIGHTS Page10
 iv. TheGeographicalIndicationsRegistry(GIR)atChennai.
v. TheCopyrightOfficeatDelhi.
vi. TheSemiconductorIntegratedCircuitsLayout-DesignRegistryatDelhi.

Office TerritorialJurisdiction

Patent Office Branch, The States of Telangana, Andhra Pradesh, Karnataka, Kerala, Tamil
Chennai Nadu and theUnion Territories of Pondicherry and Lakshadweep

Patent Office Branch, TheStatesofMaharashtra,Gujarat,MadhyaPradesh,GoaandChhattisg

Mumbai arhandtheUnionTerritoriesofDamanandDiu&Dadra
andNagarHaveli.
Patent Office Branch, TheStatesofHaryana,HimachalPradesh,JammuandKashmir,
New Delhi Punjab,Rajasthan, UttarPradesh, Uttaranchal,Delhiandthe Union
TerritoryofChandigarh.
PatentOffice,Kolkata Therestof India

IntellectualPropertyAppellateBoard(IPAB):

Intellectual Property Appellate Board (IPAB) has been established in the year 2003,
underSection 84 ofthe Trade Marks Act, 1999. The Board hearsappeals against thedecision of
Controller of Patents (under the Patents Act, 1970), Registrar of Trade Marks (under the
Trade Marks Act, 1999) and Geographical Indication cases (under the Geographical
Indication & Protection Act, 1999). The Copyright Board and Plant Varieties Protection
AppellateTribunalfunctionundertheambitof IPABinaccordancewiththeirrespectiveActs and
Rules.

(b) InternationalIPRAgencies:

There are a number of International organizations and agencies that promote the use
and protection of intellectual property.

INTELLECTUALPROPERTYRIGHTS Page11
InternationalTrademarkAssociation(INTA)

INTA is a not-for-profit international association composed chiefly of trademark owners and

practitioners. It is a global association. Trademark owners and professionals dedicated in
supporting trademarks and related IP in order to protect consumers and to promote fair and
effective commerce. More than 4000 (Present 6500 member) companies and law firms more
than 150 (Present 190 countries) countries belong to INTA, together with others interested in
promoting trademarks. INTA members have collectively contributed almost US $ 12 trillion
to global GDP annually. INTA undertakes advocacy work throughout the world to advance
trademarks and offers educational programs and informational and legal resources of global
interest. Its head quarter in New York City, INTA also has offices in Brussels, Shanghai and
Washington DC and representative in Geneva and Mumbai. This association was founded in
1878 by 17 merchants and manufacturers who saw a need for an organization. The INTA is
formed to protect and promote the rights of trademark owners, to secure useful legislation(the
process of making laws), and to give aid and encouragement to all efforts for the
advancement and observance of trademark rights.

WorldIntellectualPropertyOrganization(WIPO)

WIPO was founded in 1883 and is specialized agency of the United Nations whose purposes
are to promote intellectual property throughout the world and to administer 23 treaties
(Present 26 treaties) dealing with intellectual property. WIPO is one of the 17 specialized
agencies of the United Nations. It was created in 1967, to encourage creative activity, to
promote the protection of Intellectual Property throughout the world. Around 193 nations are
members of WIPO. Its headquarters in Geneva, Switzerland, current Director General of
WIPO is Francis Gurry took charge on October 1, 2008.

THEROLEANDVALUEOFIPININTERNATIONALCOMMERCE

Intellectual propertyrights (IP rights) are not inherently valuable. Their valueis the strategic
advantage gained by excluding others from using the intellectual property. To be valuable,
your exclusionary rights should be strategically aligned with your business objectives.

The recognition of intellectual property rights is an important key to converting creativityinto

a marketable product with positive cash flow.Creativityis essential to economic growth.
Consumersales dependonattractive,efficient,safe,innovative,anddependable productsand

INTELLECTUALPROPERTYRIGHTS Page12
services, and these qualities are built on intellectual property. The IP rights of a business are
among its most valuable assets. The protection of those IP rights can promote creativity,
distinguish a business and its products or services, and increase its profitability andendurance.

To understand the role of IP rights in practical terms, you must first appreciate the purpose of
IP laws. Although IP laws will differ in detail from country to country, they have the same
basic purpose, which is also reflected in international and regional agreements. In broad
terms, exclusive rights in intellectual property are usually granted pursuant to laws that are
intended to do the following:

 Define the monopolistic rights, namely, exclusive ownership rights that belong to the
holder of the IP and are transferable to another holder in certain situations.
 Define the limitations on the monopoly, such as by restricting the application of
exclusive rights to an invention, presentation, or specific goods only, by making
exceptions to exclusive use for permitted acts (e.g., authorizing single copies for
educational purposes), and by setting terms of duration.
 Definetheremedies forviolationofIP rights.

In other words, IP laws create affirmative rights, but not an absolute defensive shield against
infringement. They give the owner of the IP the right to stop other persons from using the IP
in a manner that is not permitted by the law. Unless the IP owner takes affirmative action, an
infringement of IP rights may continue unchecked by any other authority. This concept is
extremely significant: mere registration of IP rights is not alone sufficient to protect those
rights against unauthorized use. If you are going to spend the money and labor to registeryour
IP claim, you must be also willing to spend the money and labor to enforce your claim.

Your IP can be one of your most useful and most used business tools. If you own patents,
copyrights, designs, or similar IP, you will realize value from utilizing them in your own
exclusive manufacture or production. If you own marks, you will use them to distinguishyour
business and your products or services, to grow its customer base, and to promote its
goodwill and reputation. If you own trade secrets, specialized mailing lists, secret recipes or
processes, and similar IP, your business can provide distinctively unique services in contrast
to your competition.

INTELLECTUALPROPERTYRIGHTS Page13
The cost of launching a new product or developing a new invention can sometimes be so
costly that licensing or merging with another company is less expensive. When selling a
business, the valuation of assets should always include the value of all IP rights held by the
business. There are no limits on how valuable IP rights may become. The value of your IP
could double your company’s value. Your IP may become the most valuable asset in your
business. You business may even be or become the exploitation of your IP rights through
licensing or other similar arrangements. For example, copyrights generate lucrative license
fees and royalties.

Publishers, authors, music makers, record companies, entertainers, sports figures,

television and movie studios make millions from IP protected by copyrights. A famousperson
can command millions for an appearance, and can sue for millions for unauthorized use of his
or her famous name or likeness.

Companies holding patents can gain substantial market share while other companies
are trying to find another way to replicate the same result. Small inventors and large
companies alike often license patented technologies for substantial fees. It has been reported
by the Asian Wall Street Journal that an inventor who has filed more than 500 patents in the
United States in the last 35 years has made more than US$500 million without directly
engaging in any industrial application of the invention.

Intellectual property rights can become worth more than the physical assets of a
company. For example, the IP produced and acquired by Microsoft Corporation is valued at
more than the company’s physical assets, and the company itself has been valued at morethan
the value of General Motors Corporation, despite the latter’s significant physical assets.
Similarly, the Internet Company Yahoo, Inc., has been valued at more than the value of New
York Times, Inc., based on the IP rights developed and acquired by the former.

In addition to knowing the factors that complicate the value of your IP rights, youhold
the key to identifying other intangible assets, which may be taken into account in
combination with your IP rights or as separate assets

E-Commerce, more than other business systems, often involves selling products and
services that are based on IP and its licensing. Music, pictures, photos, software, designs,
training modules, systems, etc. can all be traded through E-Commerce, in which case, IP is
themaincomponentofvalueinthetransaction.IPisimportantbecausethethingsofvalue

INTELLECTUALPROPERTYRIGHTS Page14
 that are traded on the Internet must be protected, using technological security systems and IP
laws, or else they can be stolen or pirated and whole businesses can be destroyed. The
systems that allow the Internet to function - software, networks, designs, chips, routers and
switches, the user interface, and so on - are forms of IP and often protected by IP rights.
Trademarks are an essential part of E-Commerce business, as branding, customer recognition
and good will, essential elements of Web-based business, are protected by trademarks and
unfair competition law.

Finally, E-Commerce based businesses usually hold a great deal of their value in IP;
so the valuation of your E-Commerce business will be affected by whether you haveprotected
your IP. Many E-Commerce companies, like other technology companies, have patent
portfolios and trademarks

IMPORTANCE OF INTELLECTUAL PROPERTY RIGHTS

IPR is a significant tool in today's era. The risk of an innovation getting infringed without the
knowledge of the inventor stands very high. With the increase in the importance of IP, instances of IP
crimes have become the part and parcel of the digitized era sometimes even leading to failure of
businesses. Companies rely on adequate protection of their patents, trademarks, and copyrights, while
customers make use of IP to ensure that they purchase secure, assured goods.
An IP asset is like any other physical property offering commercial benefits to businesses. In a web-
based world, IP protection is much more relevant as it is comparatively simpler than ever to reproduce
any specific template, logo, or functionality.
Hence, strong IP laws give protection to IP and contribute to the economy of the respective state. IPR is
one of the sources of security for intangible properties which are still open to the public and which can
be quickly replicated by anyone. Intellectual property rights are more important because today we are
highly-connected to digital landscape.
With all of the good the rise of the internet has done for the sharing of information and ideas, it has
unfortunately become easier for ideas and works to be stolen, which can be damaging to both national
economies and innovation
. Intellectual property protection varies from country to country, but countries that have strong IP laws
recognize the important impact original works, designs, inventions, etc. have on the overall economy.
Almost every country that has a dependence on international trade takes strong measures to protect their
intellectual property rights.
3 With the rise of intangible assets that are shared across the internet, it is easy for people to unlawfully
copy and share books, music, movies, and more. Copyrights, patents, trademarks, and trade secrets and
the laws around these protections are all intended to encourage innovation and creativity and are
essential to the practice of IP law to help curb illegal activities.
Organizations like the World Intellectual Property Organization (WIPO) underscore the importance of
fostering IP-driven innovation to incentivize and protect creativity. WIPO is a global forum for
intellectual property services and is a self-funding agency of the United Nations, with 193 member
states.

INTELLECTUALPROPERTYRIGHTS Page15
 UNIT II

DEFINITIONOFTRADEMARK:

Atrade mark is a word, phrase, symbol ordesign, orcombination ofwords, phrases, symbols or
designs used in the course of trade which identifies and distinguishes the source of the goods or
services of one enterprise from those of others.

As stated above, the definition of "trade mark" under Section 2(1) is “A mark capable of being
represented graphically and which is capable of distinguishing the goods or services of
oneperson fromothers and may includeshapeof goods, theirpackaging and combination of
colours and covers both goods and services”.

“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter,numeral,
shape of goods, packaging or combination of colours or any combination thereof”. [Section
2(1)].

PURPOSEANDFUNCTIONOFTRADEMARKS

A trade mark (popularly known as brand name in layman’s language) is a visual symbol which
may be a word to indicate the source of the goods, a signature, name, device, label, numerals, or
combination of colours used, or services, or other articles of commerce to distinguish it from
other similar goods or services originating from another. It is a distinctive sign which identifies
certain goods or services as those produced or provided by a specific person or enterprise. Its
origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on
their artistic or utilitarian products. Over the years these marks
evolvedintotoday'ssystemoftrademarkregistrationandprotection.Thesystemhelps

INTELLECTUALPROPERTYRIGHTS Page16
consumersidentifyandpurchaseaproductorservicebecauseitsnatureandquality,indicated by its
unique trade mark, meets their needs.
A trade mark provides protection to the owner of the mark by ensuring the exclusive right to
use it or to authorize another to use the same in return for payment. The period of protection
varies, but a trade mark can be renewed indefinitely beyond the time limit on payment of
additional fees. Trade mark protection is enforced bythe courts, which in most systems have
the authority to block trade mark infringement.

In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the
owners of trademarks with recognition and financial profit. Trade mark protection also
hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctivesigns
to market inferior or different products or services. The system enables people withskill and
enterprise to produce and market goods and services in the fairest possible conditions,
thereby facilitating international trade.

Trademarksperformtwocriticalfunctionsinthemarketplace:

 Theyprovideassurancethatgoodsareofacertainqualityandconsistency,and
 Theyassistconsumersinmakingdecisionsaboutthepurchaseofgoods.

The main purpose of trademark is to show the difference about the quality of goods and
service. For example: If a trademark such as NIKE could be counterfeited (imitating) and
used by another on inferior merchandise (goods), there would be no incentive for the owners
of the NIKEmarkto produce high-qualityshoes andto expendmoneyestablishing consumer
recognition of the products offered under the NIKE marks.

Thus,protectionoftrademarksresultsinincreasedcompletioninthemarketplace,withboththeproduc
erofgoodsandservicesandtheconsumerastheultimatebeneficiaries.Businessbenefitbecausetheyc
anreaptherewardsoftheirinvestmentindevelopingandmarketingaproductwithonefearinganotherb
usinesswilldeceiveconsumerbyusingthesameoraconfusinglysimilarmarkforlikegoods,andconsu
mersbenefitbecausetheyareabletoidentifyandpurchasedesiredandqualitygoods.

Thevalueinherentinachievingconsumerloyaltytoaparticularproductorservicethroughthe
maintenance of consistent quality of the products or service offered under a mark is called
goodwill.

 Theyidentifyonemaker’sgoodsorservicesanddistinguishthemfromthoseoffered

INTELLECTUALPROPERTYRIGHTS Page17
 byothers
 They indicatethatallgoodsorservicesofferedunderthemark comefromasingle producer,
manufacturer, or “source”
 Theyindicatethatallgoodsorservicesofferedunderthemarkareofconsistentquality and

 Theyserveasanadvertisingdevicesothatconsumerslinkaproductorservicebeingofferedwit
hamark

TYPESOFMARKS

Therearefourdifferenttypesof marks.Theyare:

1. Trademark
2. Servicemark
3. Certificationmark
4. Collectivemark

Trademark

The term trademark thus refers to somephysical and tangible good and servicemarkrefers to
an intangibleservice, incommon usage the term trademark isoften used to referto marks for
both goods and service. The key point in this legal description is that a trademark is a visual
markthat mayuse any combination of letters and imageryto aida company in differentiating
itself from other entities.

The purpose of a trademark is to visually represent a person, company, or product and

trademark should be designed to provide easy and definite recognition. The term mark will
be used as a synonym for both trademark and servicemarks.The federal statute ((law) an act
passedbyalegislativebody)governingtrademarklaw,theU.S.TrademarkAct(LanhamAct, found
at 15 U.S.C 1051etseq.) itself states that the term mark includes any trademark, servicemark,
collectivemark, or certificatemark.

INTELLECTUALPROPERTYRIGHTS Page18
Servicemark

A service mark is the same as a trademark, but instead of a particular product, it identifiesand
differentiates the source of a service. A service mark is nothing but a mark that distinguishes
the services of one proprietor/owner from that of another. Service marks do not represent
goods, but the services offered by the company.

They are used in a service business where actual goods under the mark are not traded.
Companies providing services like computerhardware and software assembly, restaurant and
hotel services, courier and transport, beauty and health care, advertising, publishing, etc. are
now in a position to protect their names and marks from being misused by others. The rules
governing for the service marks are fundamentally the same as any other trademarks.

Certificationmark

A certification mark is a word, name, symbol, device, or combination thereof used by one
person to certify that the goods or services of others have certain features inregard to quality
materialmodeof manufactureorsomeothercharacteristic(orthattheworkdoneonthegoods or
services was performed by members of a union or other organization).For example:
Hallmark, ISO mark and in U.S Under writers Laboratory seals of approval (Underwriters
Laboratoryisthelargestandbestknownindependent,notforprofittestinglaboratoryinthe

INTELLECTUALPROPERTYRIGHTS Page19
world based in Northwood, Illinois, UL conducts safety and quality tests on abroad range of
products, from firedoor’s to CCTV cameras seals of approval).

CollectiveMark

Acollectivemarkisoneusedbyacollectivemembershiporganization,such as a labor union,

fraternity,or professional society, to identifythat the person displayingthe markisa member of
the organization. These are the trademarks used by a group of companies and can be
protected by the group collectively. Collective marks are used to inform the public about a
particular characteristic of the product for which the collective mark is used. The owner of
such marks may be an association or public institution or it may be cooperative. Collective
marks are also used to promote particular products which have certain characteristics specific
to the producer in a given field. Thus, a collective trademark can be used by a more than one
trader, provided that the trader belongs to the association.

INTELLECTUALPROPERTYRIGHTS Page20
ACQUISITIONOFTRADEMARKRIGHTS

In a global scope, obtaining a trademark right through Use or through Registration are two
major legislative models of system for the grant of trademark rights.

 ByUse

 ByRegistration

The “use” model is based on the objective facts of trademark use, and decides the ownership
of a trademark according to the time that the trademark was first used.

Whilethe “registration” model grants trademark rights accordingto registration and the first
applicant will obtain the trademark right.

In history, the earliest trademark legislations all took “use” principle, for instance, the first
statue of trademark-Law of Manufacturing Signs and Trademarks concerning the Content of
Use and Non-examination Principle enacted by France in 1857 took the “use” model.

However, since there are many defects of the “use” principle, France abandoned thisprinciple
which was already implemented for more than one hundred years in 1964 and shifted to
adopt the “registration” model which was succeeded by the current Code of Intellectual
Property. Article 712-1 of the code provides: “trademark rights shall be obtained through
registration”.

InIndiaonecanacquireandclaimaTrademarkonlybyRegistrationandnotby Use

The registration of a trade mark confers on the registered proprietor of the trade mark the
exclusive right to use the trade mark in relation to the goods or services in respect of which
the trade mark is registered. While registration of a trade mark is not compulsory, it offers
better legal protection for an action for infringement. As per Section 17 of the Act, the
registration of a trade mark confers the following rights on the registered proprietor:

(i) It confers on the registered proprietor the exclusive right to the use of the trade
mark in relation to the goods or services in respect of which the trade mark is
registered.

(ii) It entitles the registered proprietortoobtain reliefin respectofinfringementofthe

INTELLECTUALPROPERTYRIGHTS Page21
 trade mark in the manner provided by the Trade Marks Act, 1999 when a similar
mark is used on (a) same goods or services, (b) similar goods or services, (c) in
respect of dissimilar goods or services.

(iii) Registration of a trade mark forbids every other person (except the registered or
unregistered permitted user) to use or to obtain the registration of the same trade
markoraconfusinglysimilarmark inrelationto thesame goodsorservicesorthe same
description of goods or services in relation to which the trade mark is registered.

(iv) After registration of the trade mark for goods or services, there shall not be
registered the same or confusingly similar trade mark not only for the same goods
or services but also in respect of similar goods or services by virtue of Section
11(1) of Trade Marks Act, 1999.

(v) Moreover, afterregistration ofthetrademarkfor goods orservices, thereshall not be

registered the same or confusingly similar trade mark even in respect of dissimilar
goods or services by virtue of Section 11(2) in case of well-known trademarks.

(vi) Registered trade mark shall not be used by anyone else in business papers and in
advertising. Use in comparative advertising should not take undue advantage of
the trade mark. Such advertising should not be contrary to honest practices in
industrial or commercial matters. The advertising should not be detrimental to the
distinctive character or reputation of the trade mark.

(vii) There is a right to restrain use of the trade mark as trade name or part of trade
name or name of business concern dealing in the same goods or services. The
registered trade mark continues to enjoy all the rights which vest in anunregistered
trade mark. By registration the proprietor of an unregistered trade mark is
converted into proprietor of the registered trade mark. An application for
registration may be based on a trade mark in use prior to such application andsuch
a trade mark is already vested with rights at Common law from the time the use of
the mark was commenced.

INTELLECTUALPROPERTYRIGHTS Page22
TRANSFEROFTRADEMARK

The intellectual property rights assignment is a transfer of the rights of the owner, title andthe
interest in certain intellectual property. The party transferring the rights are calledassignor
and the party receiving the rights are called assignee. The assignor transfers to the assignee
its property in intellectual property rights such as trademarks, patents etc.

The owner of the rights may transfer all of his rights or part of his rights. Like the copyright
owner could assign only some of his economic rights. The license agreements, grants
permissions to use the intellectual property rights under certain conditions. Likely, thegeneral
rule assignments are transfers of property rights without any condition under which rights
will be used.

An intellectual property assignment agreement is a contract to transfer intellectual property

ownership from assignor to assignee. It empowers the assignor to permanently consign all of
his intellectual property rights to the willing candidate in exchange for a defined amount.This
agreement makes the owner sell his rights similarly as he could sell a physical property
marking a permanent transfer. It means he will no longer hold any control, involvement, or
claim on the transferred rights.

Section 37 oftheTrade MarkAct, 1999 recognizes theright of registered proprietorto assign

the trade mark for any consideration and to give receipt. It provides that subject to the
provisions of the act and to any right appearing from the register to be vested in any other
person, the proprietor of a trade mark has the power to assign the trade mark and to give
effectual receipt for any consideration for such assignment. It is a settled principle that the
assignor cannot possibly transfer more rights to the assignee that what he himself has.

A registered trade mark is only assignable, whether with or without the goodwill of the
business concerned and in respect either of all the goods or services in respect of the
trademark which is registered for those goods or service.

Section 2(1)(b) of the Trade Mark Act,1999 defines the “assignment” to mean “anassignment
in writing by act of the parties concerned”. In view of this definition, an assignment has to be
in writing and bythe act of the parties concerned. Both the assignor and the assignee must
execute the document. Such document will be known as the assignment agreement. There
cannot be a unilateral execution of document by one party alone.

INTELLECTUALPROPERTYRIGHTS Page23
TypeofAssignmentofTrademark

Complete Assignment of a Trademark: Here the owner of the trademark transfers his
ownership and rights completely to the assignee related to the trademark. Such also includes
the right to make any further transfer to other person as assignee. After the complete
assignment of the trade mark the owner loses his rights over the trademark and the assignee
retains all the respective rights.

Partial Assignment of a Trademark: Here the transfer of the ownership is done to certain
products and services only. The assignor holds the rights over the part which he has not
transferred to the assignee in terms of assignment. The assignor has the right to make choice
related to the partial assignment. The assignor can use such exclusive rights in his business
and administration.

Trademark Assignment with Goodwill: Here the assignor can transfer the rights of
ownership as well as the image valued rights over the trademark. Then the assignee can use
such representation in the market reputation of the trademark for the promotion of theproduct.

Trademark Assignment without Goodwill: Here lies the restriction over the usage of the
trademark product on the part of the assignee i.e the assignor can restrict the assignee for not
using the trademark in business. The same trademark can be used by both, the assignor and
theassigneeintheirdifferentbusinessfiled.Thisassignmentisalsocalled asgrosstrademark
assignment.

RegistrationofAssignment

Section 45 of the Trade Mark Act, 1999 lays down the procedure for the registration of the
assignment. Where a person becomes entitled by assignment to a registered trade mark, he
shall apply in the prescribed manner to the registrar to register his title. Registrar shall upon
the receipt of the application, register him as the proprietor of the trade mark in respect of the
goods or services in respect of assignment.

Registrar may require further evidences and statement in proof of title if there is any
reasonable doubt about the veracity of the statement or any document furnished.

The assignment agreements are always considered important in the intellectual property. It
allowsthepropertyownertotransferhisownershiprightsforthecommercialreturnsand

INTELLECTUALPROPERTYRIGHTS Page24
ensures the monetary gains to him. It is a written, enforceable contract that pertains
totransfertherights in a formalizeagreement between two persons. It protects and regulates the
rightsofallthepartiesthatareengagedintheagreement.Assignmentagreementinvolvesthe
exclusive sale of the rights which gives the assignee complete ownership over the marks of
the assignor in whatever way, shape, or form it is in.

SELECTINGANDEVALUATINGTRADEMARK

SelectingaMark

The selection of mark occurs in a variety of ways companies hold contests and encourages
employeesto createamarkforanewproductlineorservice.Companiesengagesophisticated
research. Branding firms that will conduct surveys and create a markand a logo or design for
the company.

Once the mark is selected, it must be screed and evaluated for use and registrability, if failed
then it leads to wastage in expenditure of time and money in advertising, using and applying
for a mark that is rejected for registration by the PTO or, in the worst case scenario, might
subject the owner to damages for trade mark infringement and unfair competition.

Onceamarkisselected,itshouldbecarefullyscrutinizedtoensurethatitwillnotbeexcluded from
protection under the Lanham Act.

 Firstlytheyhavecheckwhetherthemarkcontainsscandalous(givingoffenceto moral
sensibilities and injurious to reputation)
 Whetherconsentfromalivingpersonwillberequired,
 Whetherthemarkisgeneric,
 Whetheritisstatutorilyprotected
 Whether the mark is descriptive of some feature of the goods and services offered
under the mark,
 Italsoseethatthemarkincludesforeignterms
 Many law firmsspecializing intrademark work use a questionnaire form or datasheet
togatherquestionnaireformordatasheettogetherbasicinformationfromclientsabout their
marks.

INTELLECTUALPROPERTYRIGHTS Page25
EvaluatingTrademark

Trademarks are not onlyused to provide legal protection to a company's name, design, word,
etc. rather are intangible assets. Evaluating the exact value of the trademark is challenging.

Till a decade or two ago, no one used to evaluate the value of their intangible assets of the
company. However now, brands create the reputation of a product; motivates the purchasing
power; and makes the product different from other generic products. In fact, almost every
brand fetches a good amount of value. But evaluating the exact value of the trademark is abig
challenge, and one must know the correct way to evaluate it.

Valuatingintangibleassetsof yourcompanyliketrademarkorpatent isacomplex taskwhich can

turn your head upside down, and thus makes the selling transaction adversative. But the need
to evaluate abrand is essential formanybusiness activities,likeamergeroracquisition; sale or
purchase of the trademark or if you want to sell your company.

The first step in evaluating the trademark is to examine the historical prospects of the
trademark like the total cost invested in it; profit margin associated with the products and the
time it was first used, etc.

After considering these options, one must follow the methodologies and different approaches
as listed below:

TheIncomeApproach

The most crucial element on which a trademark's value is determined is the incomegenerating
power of the business. The more the earning power, the higher the value of the brand would
be.

Through future estimates of economic benefit, cash flows and risks involved, and converting
this analysis into simple information; the income approach enables you to evaluate your
company trademark.

INTELLECTUALPROPERTYRIGHTS Page26
MarketApproach

In this method, the price of similar marks is considered and compared. It uses market-based
indicators of value and takes similar marks into account; it analyses royalty rates and
transaction prices to determine what the market is paying for similar intangible assets. In this
approach, market trends are considered, and other transactions are analyzed.

CostApproach

Cost approach considers the implicit as well as explicit cost incurred in creating the
Trademark. Cost approach also covers the cost accrued in promoting the company and its
brand promotion. A particular focus on forecasts of market transactions is employed and
estimated time and cost that would be required to make a similar trademark are considered.

Other Factors

Along with the ones listed above, there are other factors which a company should consider
while evaluating a trademark or trademarks and to maximize their values:

 Qualitativeandquantitativecharacteristicsofthetrademark.
 Ifthereisanycontractassignedor associated withthetrademark.
 Sustainabilityof thetrademarkin themarketin future.
 Marketpositionatrademarkholdsinthecurrentbusiness.
 Thecapitalstructureofthecompanyand itsmodifications accordingto the needs.

Trademark carries a significant value in the business, and a company should evaluate its
brand and know the exact value of their intangible assets. A company should work towards
the goal of enhancingthe value oftrademark and otherintangible assetsforlong-term profits.

TRADEMARKREGISTRATIONPROCESS:

⚫ Investing your time and money to build a particular brand and seeing the same brand
name being used by another, robbing you of your hard-earned brand reputation is not
an agreeable state of affairs.

INTELLECTUALPROPERTYRIGHTS Page27
 ⚫ Manyatime,trademark(TM)ownersendupinprotractedlitigationbecausewhenthe time
was right, they did not do trademark registration in India of their brand name.

⚫ Trademarkregistrationprocessofthebrandname isnotadifficult task.

⚫ A few simple steps, as explained below and you would have the much-needed legal
protection of your brand name registration in India.

Atrademarkapplication canbemadeby:

 Privatefirms
 Individuals
 Companies- Limited Liability Partnership, OPC, Private limited, Public, Partnership,
etc.
 NGO’s

Note: In the case of NGOs and LLP companies the trademark has to be applied for
registration in the name of the concerned business or a company.

Any person, pretending to be the proprietor of a trademark used or intended to be applied by

him, may apply in writing in a prescribed manner for registration. The application must
include the trademark, the goods or services, name and address of the candidate with powerof
attorney, the time of use of the mark. The application must be in English or Hindi. It must be
registered at the appropriate office.

Step1:TrademarkSearch

⚫ Manyentrepreneursdonotcomprehendthe importanceof aTMsearch.

⚫ Having a unique brand name in mind is not good enough reason to avoid a TMsearch.

⚫ TM search helps you to know if there are similar trademarks available and it givesyou
a fair picture of where your trademark stands, sometimes, it also gives you a
forewarning of the possibility of trademark litigation.

⚫ Why waste your money in time-consuming trademark litigation later when you can
choose to avoid it in the first place?

INTELLECTUALPROPERTYRIGHTS Page28
Step2:FilingTrademarkApplication

⚫ Basedonthenatureof productaclassis chosenamong45classes oftrademark.

⚫ OncethechosenbrandnameorlogoisnotlistedintheTrademarkRegistryIndia, then we can

opt for registering the same.

⚫ ThefirststepistofileatrademarkapplicationattheTrademarkRegistryIndia through online

/ offline.

⚫ Oncetheapplicationisfiled,anofficialreceiptisimmediatelyissuedforfuture reference
with TM application number.

Step3: Examination

⚫ Theexamination mighttakearound12-18 months.

⚫ Theexaminermightacceptthetrademarkabsolutely,conditionallyorobject.

⚫ Ifacceptedunconditionally,thetrademarkgetspublishedintheTrademark Journal.

⚫ If not accepted unconditionally, the conditions to be fulfilled or the objections would

be mentioned in the examination report and a month's time would be given to fulfill
the conditions or response to the objections.

⚫ Oncesuch responseisaccepted,thetrademarkis publishedintheTrademark Journal.

⚫ If the response is not accepted, one can request a hearing. If in the hearing, the
examiner feels that the trademark should be allowed registration, it proceeds for
publication in the Trademark Journal.

Step4: Publication

⚫ The step of publication is incorporated in the trademark registration process so that

anyone who objects to the registering of the trademark has the opportunity to oppose
the same.

⚫ If, after 3-4 months from publication there is no opposition, the trademark proceeds
for registration.

INTELLECTUALPROPERTYRIGHTS Page29
 ⚫ In case there is opposition; there is a fair hearing and decision are given by the
Registrar.

Step5:RegistrationCertificate

⚫ Once the application proceeds for trademark registration, following publication in

Trademark Journal, a registration certificate under the seal of the Trademark Office is
issued.

Step6: Renewal

⚫ The trademark can be renewed perpetually after every 10 years. Hence, your logo or
brand name registration can be protected perpetually.

Whilefilingforthe trademarkregistration,thedocumentsrequired toprovideareas follows:

Identity and business proofs: The trademark owner or the person who is approved by the
trademarkownerrequires presentingtheiridentityproof. Itcanbe yourAadharCard,Driving
License, Passport, Ration card, or Voter’s ID.

Using Logo with Tagline:If a trademark application is prepared for a tagline with only
words, then there is no requirement for a logo. In cases where a logo is applied, then it must
be submitted in black and white format. The number of words in the logo must exactlybe the
same as specified in the application for a trademark.

BrandName &Logo: Thelogomusthavethebrand name.

User Affidavit: If a particular user data is to be claimed, the user affidavit is expected to be
submitted.

Proof of TM use:To demand specific user date, documentary proof like invoices,registration
certificates, etc. with the brand name must be given.

MSME or Start-up Recognition:A partnership firm or Corporate entities can give a

certificate of registration under MSME or Start-up India scheme to get a 50% rebate on the
Government fee

Signed Form TM – 48: M-48 is a lawful document that enables the attorney to file the
trademark on your behalf with the trademark registry. The document will be made by LW
professionals for the signature.

INTELLECTUALPROPERTYRIGHTS Page30
InternationalRegistration

Thesystemofinternationalregistrationofmarks isgovernedbytwo treaties:

The Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington
(1911),TheHague(1925),London(1934),Nice(1957),andStockholm(1967),and amended in
1979, and the Protocol relating to that Agreement, which was concluded in 1989, with the
aim of rendering the Madrid system more flexible and more compatible with the domestic
legislation of certain countries which had not been able to accede to the Agreement.

The Madrid Agreement and Protocol are open to any State which is party to the Paris
Convention for the Protection of Industrial Property. The two treaties are parallel and
independent and States may adhere to either of them or to both. In addition, an
intergovernmental organization which maintains its own Office for the registration of marks
may become party to the Protocol. Instruments of ratification or accession must be deposited
with the Director General of WIPO. States and organizations which are party to the Madrid
system are collectively referred to as Contracting Parties.

Thesystem makes it possibleto protect amark inalargenumberofcountriesbyobtainingan

international registration which has effect in each of the Contracting Parties that has been
designated

CLAIMS

Intellectual property claims are legal actions brought by one party against another when a
party feels its intellectual property (IP) rights have been infringed upon. India being a mixed
market has many industries that operate under the free market concept. The competition inthe
market system is extreme. For any enterprise to thrive in the open market, they have to create
brand recognition and brand value. The simplest waythrough which this is achieved is via
trademarks.

The need for trademarks can be considered a three-prong approach to represent goods or
services by:

 Helpingconsumersrecognizethesource
 Helpingconsumersdeterminethe quality

INTELLECTUALPROPERTYRIGHTS Page31
  Helpingconsumersmake apurchasingdecision
Once such value is attached to the trademark, it is imperative to protect it from misuse and
infringement by others.

INTELLECTUALPROPERTYRIGHTS Page32
 Unit IV

WhatisTrademarkInfringement

The Trademarks Act, 1999 (hereinafter referred to as the Act) is the legislation that protects
trademarks in India. The Act lays down the rules dealing with registration, protection and
penalties against infringement regarding trademarks. Trademarks are given the status of
intellectual property across the globe. There are many organizations, both international and
national, that endeavor to protect intellectual properties such as trademarks.

In India, the organization that deals with the protection of trademarks is the Indian Patent
Office administered bythe Controller General of Patents, Designs and Trademarks. In simple
words, trademark infringement is the unauthorized usage of a mark that is identical or
deceptively similar to a registered trademark. The term deceptively similar here means that
when an average consumer looks at the mark, it is likely to confuse him/her of the origin of
the goods or services.

TypesofTrademarkInfringement

When looking into trademark infringement, one must know that are two types of
infringement:

1. Directinfringement

Direct infringement is defined bySection 29 of the Act. There a few elements that have to be
met for a direct breach to occur; they are as follows:

Use by an unauthorized person:This means that violation of a trademark only happens

when the mark is used by a person who is not authorized by the holder of the registered
trademark. If the mark is used with the authorization of the holder of the registeredtrademark,
it does not constitute infringement.

Identical or deceptively similar: The trademark used by the unauthorized person needs to
either be identical to that of the registered trademark or deceptively similar to it. The term
‘deceptivelysimilar’hereonlymeans that thecommon consumer ‘may’beconfused between
themarksandmaythinkofthembeingthesame.Theoperationalwordherebeing‘may’,it

INTELLECTUALPROPERTYRIGHTS Page33
only needs to be proven that this is a possibility and does not require proof of actually
happening. As long as there is a chance of misrecognition of the marks, it is enough for
proving infringement.

Registered trademark:The Act only extends protection to trademarks that have been
registered with the trademark registryof India. In the case of breach of an unregistered mark,
the common law of passing off is used to settle disputes. It is a tort law that is used where
injuryor damage is caused to the goodwill associated with the activities of another person or
group of persons.

Class of goods or services: For the infringement of the trademark, the unauthorised use of the
mark has to be used for the propagation of goods or services that fall under the same class of
the registered trademark.

2. Indirectinfringement

Unlike direct infringement, there is no provision in the Act that deals with indirect
infringement specifically. This does not mean that there is no liability for indirect
infringement. The principle and application of indirect infringement arise from the universal
law principle. It holds accountable not onlythe principal infringer but also anyone that abets,
induces that direct offender to infringe. There are two types of indirect infringement:

Vicarious liability: According to Section 114 of the Act, if a company commits an offence
under this Act, then the whole company will be liable. Therefore not only the principal
infringer but, every person responsible for the company will be liable for indirect
infringement, except for a person who acted in good faith and without knowledge of the
infringement.

The elements for vicarious liability are:- When the person can control the activities of the
principalinfringer–Whenthepersonknowsoftheinfringementandcontributestoit –When the
person may derive financial gains from the infringement The only exception to vicarious
liability of a company for infringement is when the company has acted in good faith and had
no idea about the infringement.

Contributory infringement:There are only three basic elements to contributory

infringement:- When the person knows of the infringement – When the person materially
contributestothedirectinfringement–Whenthepersoninducestheprincipalinfringerto

INTELLECTUALPROPERTYRIGHTS Page34
commit infringement In the case of contributory infringement, there is no exception as there
exists no chance of the contributory infringer to act in good faith.

PenaltiesforTrademarkInfringement

In India, the infringement of a trademark is a cognisable offence which means that the
infringer may also face criminal charges along with civil charges. It is also not required bythe
Indian law for the trademark to be registered for the institution of civil or criminal
proceedings. As mentioned before this is due to the common law principle of passing off. In
the case of trademark infringement, the court may award the following remedies:

 Temporaryinjunction
 Permanentinjunction
 Damages
 Accountofprofits(damagesintheamountoftheprofitsgainedfromthe infringement)
 Destructionof goods usingthe infringingmark
 Costoflegalproceedings
Inthe caseofacriminal proceeding,the courtdictatesthefollowingpunishment:

 Imprisonmentfor aperiod not lessthan sixmonths that mayextend to threeyears

 Afinethat isnot lessthan Rs50,000 thatmayextendtoRs 2lakh.
Thetype of information that must be kept confidentialin order to retainits
competitiveadvantageis generally calleda“TradeSecret”. Atradesecretisany information that
can be used in the operation of a business or other enterprise that is sufficiently valuable and
secret to afford an actual or potential economic advantage over others.
The trade secret constitute a recipe, a formula, a method of conducting business, a
customer list, a price list, marketing plans, financial projection and a list of targets for a
potential acquisition.
Generally,toqualifyfortradesecretprotection,informationmust
 bevaluable;
 notbepubliclyknown;and
 bethesubjectofreasonableeffortstomaintainitssecrecy
Therapidpaceoftechnologyadvancestheeasewithwhichinformationcannowbe

INTELLECTUALPROPERTYRIGHTS Page35
rapidlydisseminated and the mobility of employees require businesses to devote significant
efforttoprotecting their tradesecrets. If trade secrets were not legally protectable, companies
would have no incentive for investingtime money and effort in research and development that
ultimately benefits the public at large.

Tradesecretslawnotonlyprovidesanincentiveforcompaniestodevelopnewmethods andprocesses
of doing business but also, by punishing wrongdoers, discourages improper conductin the
business environment.

TheLawGoverningTrade Secrets:

 Trademarks, copyrights, and patents are all subject to extensive federal statutory
schemes fortheir protection, there is no federal law relating to trade secrets, and no
registration is requiredto obtain trade secret protection.

 Most trade secret law arises from common law principles, namely, judge-made case
law.
 The first reported trade secret case in the United States was decided in 1837 and
involved manufacturing methods for making chocolate.
 In 1939, the Restatement of Torts (a wrongful act or an infringement of a right)
adopted adefinition of a trade secret, and many states relied on that in developing their
body of caselaw, leading to greater consistency in the development of trade secrets
law.
Additionally 1979, the National ConferenceofCommissioners on Uniform State laws
draftedthe uniform Trade Secrets Act (UTSA) to promote uniformity among the states with
regard totrade secrets law. The UTSA was amended in 1985. The following definition of
trade secret has been adopted by the UTSA:
 Trade secret means information, including a formula, pattern, compilation, program,
device,method, technique or process that:
 Derives independent economic value, actual or potential, from not being generally
known to,and not beingreadilyascertainable byproper meansby,other persons who can
obtaineconomic value from its disclosure or use,and
 is the subject of efforts that are reasonable under the circumstance to maintain its
secrecy.

INTELLECTUALPROPERTYRIGHTS Page36
DETERMINATION OF TRADESECRETSTATUS:

Restatement of Torts (a wrongful act or an infringement of a right) §757 cmt.b lists sixfactors
to be consideredin determining whetherinformation qualifies as a trade secret. Courts
routinelyexamine these factors to determine whether a company’s information constitutes a
trade secret.

Theextenttowhichtheinformationisknownoutsidethecompany:

Althoughinformationmaybe knowntootheroutsidethecompany andstillqualify asa

tradesecret,thegreaterthenumberofpeoplewhoknowtheinformation,thelesslikely itis
toqualifyas a trade secret. Secrecy need not be absolute.

Theextenttowhichtheinformationisknownwithinthe company:

Although an employer or company is permitted to disclose confidential informationwith a

demonstrated “needto know”the information. If the information is widely known within the
company,especially among those whohave nobusiness need to know the information, it may
not qualify as a tradesecret.

The extent of the measures taken by the company to maintain the secrecy of the
information:

 Oneclaimingtradesecretprotectionmusttakereasonableprecautionsto
protecttheinformation.
 Courtsareunlikelytoprotectinformationacompanyhasnotbotheredtoprotect.
 Acompanyisnotobligatedtoundertakeextremeeffortstoprotect
information,butreasonable precautions are required.
 Some experts predict that courts will likely require advanced security measures to
protecttrade secrets transmitted via e-mail, including encryption and protocols to
ensureconfidentiality.

Theextentofthevalueoftheinformationtothecompanyanditscompetitors:

 Ifinformationhaslittlevalueeithertoitsownerortotheowner’scompetitors, itisless likelyto

qualify as a trade secret.

INTELLECTUALPROPERTYRIGHTS Page37
  Conversely,informationthatisvaluabletoacompany,suchastherecipeforits
keymenuproduct,andthatwouldbeofgreatvaluetothecompany’scompetitors is more
likely tobeprotectable trade secret.

The extent of the expenditure of time, effort, and money by the company indeveloping
the information:

 The greater the amount of time, effort, and money the company has expended in
developingor acquiring the information, the more likely it is to be held to be a
protectable trade secret.

Theextentoftheeaseordifficultwithwhichtheinformationcouldbeacquiredor duplicated by
other:

 Ifinformationiseasytoacquireor duplicate,itislesslikelytoqualifyatradesecret.

 Similarly ifthe information isreadily ascertainable from observation or can beeasily

reproduced, itisless likely to bea tradesecret.

 Ontheotherhand, ifitcan bereverseengineeredonlywithsignificant expenditures of

time,effort, and money,the product mayretain its status as a trade secret.

LIABILITYFORMISAPPROPRIATIONOFTRADESECRETS:

 Misappropriationofatradesecretoccurswhenapersonpossesses,discloses, orusesa
tradesecret owned by another without express or implied consent and when the person
used improper means to gain knowledge of the trade secret.

 kneworshouldhaveknownthatthetradesecret wasacquiredbyimpropermeans;or

 Kneworshouldhaveknownthatthetradesecretwasacquiredunder
circumstancesgivingrise to a dutyto maintain its secrecy.

 The term improper means includes bribery, theft, and misrepresentation, breach of
duty to maintain secrecy, or espionage (the practice of spying or of using spies,
typically bygovernmentstoobtainpoliticaland militaryinformation)orother means.

 Thus,misappropriationoccurseitherwhen atradesecretislawfullyacquiredbutthen

INTELLECTUALPROPERTYRIGHTS Page38
 improperlyusedor whenthetradesecretisacquiredbyimpropermeans.

AbsenceofWritten Agreement:

 A written agreement prohibiting misappropriation of trade secrets can be enforced

through anactionforbreachofcontract;acompany’stradesecretscan be
protectedagainstmisappropriation even in the absence of any written agreement
between the parties.
 A party owning trade secrets can bring an action in tort for breach of the duty of
confidentiality, which duty can arise even without an expressagreement.
 Courts will impose a duty of confidentiality when parties stand in a special
relationship witheach other, such as an agent-principal relationship (which includes
employer- employeerelationship)orotherfiduciary(involvingtrust,especially with
regard to the relationshipbetween a trustee and a beneficiary) or good faith
relationship.
 Courts have consistently held that employees owe a duty of loyality, fidelity, and
responsibility to their employers.
 In fact, moretrade secret cases are brought intort forbreachof confidentialitythan in
contractfor breach of writtenagreements.
Forexample:IfXYZcompanyis attemptingtomakeasaletoJonesandinformsJones that theXYZ
product issuperior to that of competitors because it involves a new
breakthroughintechnologyandexplainsthetradesecret,courtswouldlikelyfindthat Jones is
subject to a dutynot to disclose the information. Similarly, ifXYZ co., explainsits trade
secrets to its bankers in an attempt to obtain financing, the bankers would likely be precluded
from disclosing or using the information. Such implied contracts to protect the information
generallyarise when the parties’ conduct indicates theyintended the information to be kept
confidential or impliedly agreed to keep it confidential.

MisappropriationbyThirdParty:

A number ofother parties mayalso have liabilityformisappropriationoftrade secrets ifthey

knew or should have known theywere the recipients of protected information.

INTELLECTUALPROPERTYRIGHTS Page39
Forexample:

1. AssumeLeeis employedbyXYZco.,IncourseoftimeMr.Leelearnsvaluable
tradesecretinformation.IfMr.Leeresignsjobsandbeginsworkingfornewcompanyand it
prohibited for both in using the information. He may not misappropriate the information
becausehewasinanemployee-employerrelationshipwithXYZcompany.New company
shouldnot use the information if Mr Lee reveals, if it happen so, then XYZ Companywould
generally prefer to sueNew Company inasmuch as it isfar likelier to have deep pockets,
meaning it is more able topaymoney damages than isan individual such as Lee.
2. If New Company has no reason to know the information was secret or that Mr. Lee
may not reveal it, New Company would not have liability for such innocent use of the
information.Similarly, if trade secret information were innocently obtained by New
Companybymistake,New Company would have no liability for subsequent use or disclosure
of the information.

WrittenAgreement:

Employers are generally free to require employee, independent contractors, and

consultantstosignexpressagreementsrelatingtotheconfidentialityofinformation.These
agreements are usually enforced by courts as long as they are reasonable. The agreements
usually includefourspecific topics:
 OwnershipofInventions

 Non-disclosureProvisions

 Non-solicitationProvisions

 Non-competitionProvisions

 Purpose

 Reasonableness

 Consideration

INTELLECTUALPROPERTYRIGHTS Page40
PROTECTIONFORSUBMISSION:

SubmissiontoPrivateParties:

 In mayinstance individuals wishto submitan ideafor an invention, process, game,or

entertainment show to a company or business in the hope that the company orbusiness
in the hope that the company will market and develop the idea and the individual
willbecompensated for the idea?
 Idea submission disputesfrequently arisein the entertainmentindustry.In oen case an
individual claimed that the producers of the Cosby Show (American comedian)
misappropriated her idea for a television program portraying a wholesome and loving
AfricanAmerican family. A court held there were no people and the idea was so
general as to lacktheelement of concreteness to be protectable.
 Thesolutiontosuchadilemmaisfor the “inventor”tosubmitthe
ideapursuanttoanevaluationagreement,orsubmissionagreement,wherebytheotherparty
agreestoevaluatetheideaonlyforthepurposeofconsideringafuture
transactionbetweenthepartiesandfurtheragreesnottocircumvent thesubmitteror to
disclose the idea to others.

SubmissiontoGovernmentAgencies:

 Private companies that present bids to government agencies inthe hope ofobtaininga
government contract are often required to disclose confidential or trade secret
information tothe agency.
 Underfreedomofinformationact(bothatthestateandfederallevels),the proposal might
later be released to any member of the public requesting thedocument, thus resultingin
lossofconfidential information to possiblecompetitors.
 Theprotectedinformationisusuallyblockedout.
 If a government agency discloses trade secret information, the owner may have a
causeofactionfor an unconstitutional taking of private property andmaybe awarded
compensation ifthe owner had a reasonable expectation of confidentiality.

INTELLECTUALPROPERTYRIGHTS Page41
REMEDIESFORMISAPPROPRIATION:

Atradesecretownermayrequestavarietyofremediesfromacourt. Among them are

thefollowing:
 Injective relief: Inmanycases, atradesecret owner ismore interested inensuring the
defendant cease use ofthe trade secret (or is precluded fromcommencing use) than in
recoveringdamages.Incasesinwhichmoneydamagesarenotsufficienttoprotecta trade secret
owner, a court may issue an injection. A court may also issue an injuction to compel the
defendant to surrender or destroy trade secret information. In fact, courts may issue
injunctions’ to prevent inevitable disclosure, reasoning that even ifa former employer cannot
show a particular secret has been taken, it is inevitable that key employees will
eventuallydisclose what theyknow to a new employer.

 Moneydamages:Atradesecretownerwhoseinformationhasbeen misappropriatedmay
recover moneydamages from the defendant. ThePlaintiff mayrecover itslost
profitsaswellastheprofitsmadebythedefendant.Alternatively,theplaintiff
mayseekandrecoverareasonableroyaltyarisingfromdefendant’suseofthetrade secret. Punitive
damages may also beawarded incases inwhich the defendant’s conduct is reckless, willful,
and intentional.TheUSTAprovidesthatpunitivedamagesnotexceed
morethantwicethecompensatorydamages awarded.

 Attorneys’ fees and costs: In most cases, the parties bear their own attorneys’ fees
and costs. The UTSA, however, provides that reasonable attorneys’ fees and costs may be
awardedtothe prevailing party ifbad faith or willfulness is shown.

TRADESECRETLITIGATION:

 If atradesecretis disclosedin violation of awritten confidentially agreement,and the

parties cannotresolve the dispute themselves, an action for breach of contract may be
brought,similar to anyother breach of contract action.
 The plaintiff may add other causes of action as well, for example,
formisappropriationinviolationofastatetradesecretlaw.Ifnowrittenagreementexists,the

INTELLECTUALPROPERTYRIGHTS Page42
plaintiffmustrelyuponcaselaworstatestatutesprotectingtradesecrets,orboth.
 To protect itself against a lawsuit by another alleging trade secret violation,companies
shouldrequire new employees whowill have accessto confidential information
toacknowledgeinwriting thataccepting employment with the new company does not violate
any otheragreement or violate any other obligation of confidentiality to which the
employeemay besubject.

 Ifgroundsforfederaljurisdictionexist(thepartieshavediversecitizenshipand
theclaimexceeds $75000), the action may bebrought infederal court.
 The UTSA [Uniform Trade Secrets Act] provides that an action for misappropriation
must bebroughtwithinthreeyearsaftermisappropriationis discoveredorreasonably
shouldhavebeen discovered.
 In federal court, the action will be governed by the Federal Rules of Civil Procedure
relatingto federal civil actions generally.

Moststateshaverulesrelatingtocivilprocedurethataremodeledsubstantiallyafter theFederal
Rules of Civil Procedure and likewise govern thelitigation.

 If the defendanthas a cause ofaction toassertagainstthe plaintiff relatingto the

tradesecret,it mustbe assertedbywayofacounterclaiminthelitigationsothatall disputes between
theparties relating to the information can beresolved at the sametime.
 After the complaint, answer, and counterclaim have been filed, various motions may
be made. Discovery will commence. The plaintiff and defendant will take depositions to
obtaintestimony from those who mayhave information about the case.

 Ultimately, if the matter cannot be resolved by private agreement, it will proceed to

trial. Thetrade secret owner must prove misappropriation by a preponderance of the
evidence.Etherpartymayrequestajurytrial;otherwise,ajudgewillrenderthe
decision.Appealsmayfollow.
 Oneofthedifficultissuesintradesecretlitigationarisesfromthefactthatthe
tradesecretsought to be protected often must be disclosed in the litigation so the judge or
jurycan evaluatewhethertheinformationis sufficientlyvaluablethatit affordsitsownera

INTELLECTUALPROPERTYRIGHTS Page43
competitiveadvantage.
 Similarly,theowner’smethodsofprotectingtheinformationoftenmustbe
disclosedsothefact-findercandeterminewhethertheownerhastakenreasonable
measurestoprotectthealleged trade secrets.
 The dilemma faced by trade secrets owner is that they must disclose the very
information theyseek to protect.
 Astechnologyprogressesandthevalueofcertaincommunicationand entertainment
inventions increases, trade secret litigation is becoming an increasingly commonandhigh-
stakes occupation.

TRADESECRETPROTECTIONPROGRAMS:

Trade secrets are legally fragile and may be lost by inadvertent disclosure or failure to
reasonably protect them, companies should implement trade secret protection programs to
safeguard valuable information. Because trade secret protection can last indefinitely,
businessesshoulddevoteproperattentiontothemethodsusedtoensureconfidentiality of
information.Developingprogramsandmeasuretoprotecttradesecretsisaneasyway
todemonstratetoacourt that an owner values its information and takes appropriate measures to
maintain itssecrecy.

Physical protection

There are a variety of tangible measures a company can implement to protect trade secrets,
including the following:

Safeguardinginformationunderlockandkey;

 Protectingtheinformationfromunauthorizedaccess;
 Forbidding removal ofprotectedinformationfrom thecompany premises orcertain
rooms;
 Retainingadequatesecurityduringeveningandweekendseitherthroughalarm systems
orsecurityservices;
 Ensuring toursofthe companypremises donotexposeoutsiderstovaluable processes

INTELLECTUALPROPERTYRIGHTS Page44
orinformation;
 Usingcheck-outlistswhenvaluableequipmentorinformationis removedfromits
normallocation;

 Monitoringemployees’useofe-mailandtheInternettoensureconfidential information
isnot being disseminated;
 Usingencryptiontechnologyand antivirus protectionprograms to protect information
storedon computers;
 Educateemployeesontradesecretsandprotectionoftradesecrets;
 Ensuringinformationretainedoncomputersisavailableonlyon companynetworksso
thataccess can be easily tracked.

Most companies will not need to implement all of the measures described above. Courts do
notrequireabsolutesecrecy orthatextrememeasurebetakentoprotectinformation.
Rather,reasonable measures will be sufficient to protect the status of information as trade
secrets.

ContractualProtection

 Another method of protecting trade secrets is by contract, namely, requiring thosewith

accessto the information to agree inwriting not to disclose the information to other or use it to
theowner’s detriment.

 Similarly, in licensing arrangements, trade secret owners should ensure the license
agreementscontain sufficient protection for trade secretinformation.

 Employersshouldusenoncompetitionagreements toensureformer employeesdo

notusematerialgained on the job to later compete against the employer.

 WiththeadventoftheInternetandtheincreasedeaseofelectronic
communications,employers have become concerned about the loss of trade secrets through
dissemination over the Internet.

INTELLECTUALPROPERTYRIGHTS Page45
 Ithasbeenheldthat“onceatradesecretispostedontheInternet,itiseffectively part of
thepublic domain, impossible to retrieve”.

Companies can also rely on other complementary methods of protection to safeguard trade
secrets. Any material that qualifies for copyright protection should be protected by
registration, orat a minimum, by ensuring a copyright notice is placed on the material or
documenttoaffordnotice to other ofthe owner’s right and internet in the material.

GEOGRAPHICALINDICATIONS

The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act) is a
sui generis Act of the Parliament of India for protection of geographical indications in India.
India, as a member of the World Trade Organization (WTO), enacted the Act to comply with
the Agreement on Trade-Related Aspects of Intellectual Property Rights. The GI tag ensures
that only those registered as authorized users (or at least those residing inside the geographic
territory) are allowed to use the popular product name.

According to section 2 (1)(e) of the Act, Geographical indication has been defined as "an
indication which identifies such goods as agricultural goods, natural goods or manufactured
goods as originating, or manufactured in the territory of a country, or a region or locality in
that territory, where a given quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origin and in case where such goods are
manufactured goods one of the activities of either the production or of processing or
preparationofthe goodsconcernedtakesplaceinsuchterritory,regionorlocality,asthecase may
be."

Registrationprocess

 An application for registration must be made before the Registrar of Geographical

Indications by any association of persons or producers or any organization orauthority
established by or under any law for the time being in force representing the interest of
the producers of the concerned goods.

INTELLECTUALPROPERTYRIGHTS Page46
  The application must be made in an appropriate form containing the nature, quality,
reputation or other characteristics of which are due exclusively or essentially to the
geographical environment, manufacturing process, natural and human factors, map of
territory of production, appearance of geographical indication (figurative or words),
list of producers, along with prescribed fees.
 The examiner will make a preliminary scrutiny for deficiencies, in case of
deficiencies; the applicants have to remedy it within a period of one month from the
date of communication.
 TheRegistrar mayaccept, partiallyaccept or refusethe application. In caseof refusal,
the Registrar will give written grounds for non acceptance. The applicant must within
two months file reply. In case of re-refusal, the applicant can make an appeal within
one month of such decision.
 Registrarshall,withinthreemonthsofacceptance mayadvertisetheapplicationinthe GI
Journal.
 If there is no opposition, the Registrar will grant a certificate of registration to the
applicant and authorized users.

Duration

AGIisregisteredforan initialperiodoftenyears,whichmayberenewedfromtimetotime.

Some of the registered geographical indications include agricultural goods like Darjeelingtea,
Malabar pepper, Bangalore Blue grapes, and manufactured goods like Pochampalli ikat,
Kanchipuram silk sari, Solapuri chaddars, Bagh prints, and Madhubani paintings. A more
complete list is available at List of Geographical Indications in India.

Effectofregistrationandinfringement

Registration of a GI gives its owner and the authorized users the exclusive right to use the
indications on the good in which it is registered. Further, registration gives right to institution
ofsuitagainstinfringementandrecoveryofdamagesforsuch infringement.Infringementcan be
caused by use of the GI on such goods which indicates that such goods originate in such
placeotherthanits trueplaceoforigin ordueto unfaircompetition. However,in caseofnon-
registered GIs, a case of passing off can be instituted. Registration acts as a prima facie
evidenceofvalidityoftheindicationandownership.Theregistrationcannotbetransferred,

INTELLECTUALPROPERTYRIGHTS Page47
mortgaged, assigned or licensed, except in case of inheritance of the mark upon death of an
authorized user.

Anyperson who falsely applies or falsifies any geographical indication, tampers the origin of
a good, make or have in possession of dye, blocks, machines to use in falsification of GImay
be punished shall not be less than six months but which may extend to three years and with
fine which shall not be less than fifty thousand rupees but which may extend to two lakhs
(200,000) rupees. In case of second and for every subsequent offence, a person can be
punished with imprisonment for a term which shall not be less than one year but which may
extend to three years and with fine which shall not be less than one lakh rupees but which
may extend to two lakh rupees. However, the judge may under certain condition, mayreduce
the sentence, and reasons for reduction of punishment must be written in the judgment. Other
offences includes, falsely represent a GI to be registered, falsification of entries in register,
falsely representing a place to be connected with GI Registry.

INTELLECTUALPROPERTYRIGHTS Page48
 UNIT-III

Introduction:

In ancient days creative persons like artists, musicians and writers made, composed or wrote
their works for fame and recognition rather than to earn a living, thus, the question of
copyrightneverarose.Theimportanceofcopyrightwasrecognizedonlyaftertheinventionof
printing press which enabled the reproduction of books in large quantity practicable.

Copyright–Definition:
Copyright is a right of use given by the law to the creator of literary, dramatic, musical,
artistic work , software etc for a limited period of time
In India all the law related to copyright is regulated by the copyright Act 1957. Its latest
amendment was brought in 2012
A copyright is an exclusionary right. It conveys to its owner the right to prevent others from
copying, selling, performing, displaying, or making derivative versions of a work of
authorship.

Exclusivecopyright rights

The entire bundle of rights that a copyright owner is exclusivelyentitled toexercise under the
copyright laws. These rights consists of:

 therighttoreproduce(copy)thework

 therighttopreparederivativeworks

 theright todistributecopiesofthe work

 therighttoperformthework,and

 the right to displaythe work.

INTELLECTUALPROPERTYRIGHTS Page49
COPYRIGHT ACT, 1957: Copyright Act refers to laws that regulate the use of the work of
a creator, such as an artist or author.

This includes copying, distributing, altering and displaying creative, literary and other types
of work. Unless otherwise stated in a contract, the author or creator of a work retains the
copyright.

Copyrightdoesnotordinarilyprotecttitlesbythemselvesornames,shortwordcombinations,
slogans, short phrases, methods, plots or factual information.

NEEDFORCOPYRIGHT:
 It givesyouthe exclusiverighttoreproduceorcopytheworkorchangeitsform.
 Registrationinformstheworldthatyouownthework
 Ifyousucceedinaninfringementsuit,youareentitledtomoneydamages.
IndianperspectiveonCopyrightProtection:
TheCopyrightAct,1957providescopyrightprotectioninIndia.Itconferscopyright protection in the
following two forms:
(a) Economicrights oftheauthor
(b) MoralRightsoftheauthor(i)RightofPaternity(ii)Rightof Integrity

TERMOFCOPYRIGHT: Itvariesaccordingtothenatureof work-60 years,in India.

 Literary, dramatic, musical or artistic work (other than a photograph), when

published during the lifetime of the author, copyright subsists during the lifetime of
the author, plus 60 years.

 In the case of photographs, cinematograph films and sounds recordings; the term is
60 years from the date of publication.

 When the first owner of copyright is the government or a public undertaking, the
term of copyright is 60 years from the date of publication.

TheFundamentalsofCopyright

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic
works and producers of cinematograph films and sound recordings. In fact, it is a bundle of
rightsincluding,interalia,rightsofreproduction,communicationtothepublic,adaptation

INTELLECTUALPROPERTYRIGHTS Page50
and translation of the work. It means the sole right to produce or reproduce the work or any
substantial part thereof in any material form whatsoever (Kartar Singh Giani v. Ladha Singh
& Others AIR 1934 Lah 777). Section 14 of the Act defines the term Copyright as to mean
the exclusive right to do or authorise the doing of the following acts in respect of a work or
any substantial part thereof, namely

Inthecaseofliterary,dramaticormusicalwork (exceptcomputerprogramme):

(i) reproducing the work in any material form which includes storing of it in any
medium by electronic means;

(ii) issuingcopiesofthe workto thepublicwhich arenotalreadyincirculation;

(iii) performingthework inpublicorcommunicatingitto thepublic;

(iv) makinganycinematographfilmorsoundrecordinginrespectofthework;making
anytranslation or adaptation of the work. Further anyof the above mentioned acts
inrelationtoworkcanbedoneinthecaseoftranslationoradaptationofthework.

Inthe caseofacomputerprogramme:

(i) to do any of the acts specified in respect of a literary, dramatic or musical work;
and

(ii) to sell or give on commercial rental or offer for sale or for commercial rental any
copy of the computer programme. However, such commercial rental does not
apply in respect of computer programmes where the programme itself is not the
essential object of the rental.

Inthe caseofanartistic work:

(i) reproducing the work in any material form including depiction in threedimensions
of a two dimensional work or in two dimensions of a three dimensional work;

(ii) communicatingthework tothepublic;

(iii) issuingcopiesofworkto thepublicwhich arenotalreadyinexistence;

(iv) including work in any cinematograph film; making adaptation of the work, and to
do any of the above acts in relation to an adaptation of the work.

INTELLECTUALPROPERTYRIGHTS Page51
Inthe caseofcinematographfilmandsoundrecording:

(i) making a copy of the film including a photograph of any image or making any
other sound recording embodying it;

(ii) selling or giving on hire or offer for sale or hire any copy of the film/sound
recording even if such copy has been sold or given on hire on earlier occasions;
and

(iii) communicatingthefilm/soundrecordingtothepublic.

Inthe caseofasoundrecording:

(i) Tomakeanyother soundrecordingembodyingit•

(ii) Tosellor giveon hire,orofferforsale orhire,anycopyof thesound recording

(iii) Tocommunicatethesoundrecordingtothe public

ORIGINALITYOFMATERIAL

Therearethreebasicrequirementsforcopyrightability:
 Aworkmustbeoriginal
 Aworkmustbefixedinatangibleformof expression; and
 Aworkmust beaworkofauthorship
To be eligible for copyright protection, material must be original, meaning that it must have
been independently created and must possess a modicum of creativity.The requirement of
originality should not be confused with novelty, worthiness, or aesthetic appeal. The
requirement is rather that the material must be an independent product of the author and not
merelysome copyor minimal variation of an existing work. A work can be original even if it
is strikingly similar or identical to that of another.The Copyright Act only requires
originality, meaning independent creation by the author.

Originalitydoes not signifynovelty; a work may be original even though it closelyresembles

other works so long as the similarity is fortuitous, not the result of copying.

To illustrate, assume that two poets, each ignorant of the other, compose identical poems.
Neitherworkisnovel,yetbothareoriginal,and,hence,copyrightable.“Originality”thus

INTELLECTUALPROPERTYRIGHTS Page52
does not mean “first”; it merelymeans “independentlycreated” rather than copied from other
works.

Fixationof Material:

The Copyright Act protects works of authorship that are “fixed in any tangible medium of
expression.”A work is “fixed” when it is embodied in a copy or phonorecord and is
sufficiently permanent or stable to permit it to be perceived, reproduced, or communicatedfor
a period of more than transitory duration.

Therearethustwocategoriesoftangibleexpressioninwhichworkscanbefixed:“copies”
and“ phonorecords.”

 A copy is a material object from which a work can be perceived, reproduced, or

communicated, either directly by human perception or with the help of a machine.

 A phonorecord is a material object in which sounds are fixed and from which the
sounds can be perceived, reproduced, or communicated either directly by human
perception or with the help of a machine.

WorksofAuthorship:(17U.S.C§102)

 The copyright act provides that copyright protection subsists [support oneself]in
original works of authorship fixed in any tangible medium of expression, now
known or
hereafterdeveloped,fromwhichtheycanbeperceived,reproducedorotherwise
communicated either directly or with the aid of a machine.
 17 U.S.C. § 102. Section 102 then lists eight categories of protectable works. The
list is preceded by the phrase that works of authorship “include” those categories,
demonstratingthatthelistedcategories arenottheonlytypesofworksthat canbe
protected, but are illustrative only.

INTELLECTUALPROPERTYRIGHTS Page53
Theeightenumeratedcategoriesareas follows:
1. Literaryworks,
2. Musicalworks(includingaccompanyingwords)
3. Dramaticworks(includingaccompanyingmusic)
4. Pantomimesandchoreographicworks
5. Pictorial,graphic,and sculpturalworks
6. Motionpicturesandotheraudiovisualworks
7. Sound recordings
8. Architecturalworks

Rightsof Reproduction:

Themostfundamentaloftherightsgrantedtocopyrightownersistherighttoreproducethe
work

 Aviolationofthecopyrightactoccurswhetherornottheviolatorprofitsbythereproduction
 Onlytheownerhas the right toreproducethework
 Secretlytaping aconcert,takingpicturesataperformance,orrecordingall violate
the owner’s right to reproduce

 Thesuggestionofcongress,in1978agroupofauthors,publishersandusers established
a not-for-profit entity called Copyright Clearance Center[CCC]
 CCCgrantslicensestoacademic,governmentandcorporateuserstocopy and distribute
the works
 Itcollects royaltyfees,whicharedistributedtothe authors
 Companies that photocopy articles from journals and magazines often enter into
licensing arrangements with the CCC so they can make copies.

RightstoprepareDerivativeworks:

 Section 106 of the copyright Act provides that the owner of a copyright has
theexclusive right to prepare derivative works based upon the copyrighted work
 ThisrightIoften referredtoastherighttoadapttheoriginal work

INTELLECTUALPROPERTYRIGHTS Page54
Definition:

 “A derivative work is broadly defined as a work based upon one or more

preexisting works, such as a translation, dramatization, fictionalized motion
pictures version, abridgment condensation or any other from in which a work
maybe recast, transformed, or adapted.

 aworkconsistingofeditorialrevisions,annotations,elaborations,orother

Newmaterialrepresentsoriginalworkofauthorship

modificationsisalsoaderivativework

Rightsofdistributionandthefirstsaledoctrine:

 Section106(3)ofthecopyrightactprovidesthat theownerofacopyright hasthe

exclusive right to distribute copies or phonorecords of the work to the public by
sale or other transfer of ownership
 Aviolationofthedistributionright canarisesolelyfrom theact ofdistributionitself
 Thedistributordidnotmakeanunlawfulcopyorthecopybeingdistributedwas
unauthorized
 Thus,blockbustervideostorecanbeliableforviolatinganowner’srighttodistribute
 Oncetheauthorhaspartedwithownershipofcopyrightedmaterial,thenewownerofala
wfullymadecopycantreattheobjectashisorher own

 Thenewownertheright tolendthebookormovietoafriend,reselltheworkat a garage

sale,orevendestroyit.
 Thefirstsaledoctrinedoesnotapplytoorlimittheauthor’sexclusiverightstopreparederi
vative works or rights of public performance and
 Withoutpermissionofauthorshipthegoodsarenotpermittedtoimportedintothe U.S.

Rightstoperformtheworkpublicly
 Section 106 [5] of the Copyright Act provided that in the case of all copyrighted
works other than sound recording & works of architecture, the copyright owner
has the exclusive right to display the work publicly.
 Adisplayis“public”underthesamecircumstancesinwhichaperformanceis“public”.

INTELLECTUALPROPERTYRIGHTS Page55
 MRCET(UGCAutonomous)

Namelyif it occurs at a place open to the public (or) at a place where a substantial number of
persons outside of the normal circle of a family

CopyrightOwnershipIssues[17U.S.C.§201(a)]:

 Copyright in a work protected under the copyright activists [provide with power
and authority] in the author or authors of the work

Ownershipofaphysicalobjectisseparateanddistinctfromownershipofthe
copyright embodied in the material object

 Issuesabout ownershiparisewhenmorethanone personcreatesawork

 Unless copyright has been explicitly conveyed with those physicalarticles,

the original authors generally retain all other rights associated with the
works.

JointWorks[intenttocreateaunitarywhole]

 A joint work is a work prepared by two or more authors with the intention that
theircontributions bemerged into inseparable or interdependent parts ofa unitary
whole.
 Onecopyright existsinthecreatedworks
 Jointauthorsarethosewho“mastermind”or “supermind”thecreative effort.

OwnershipRightsinJointWorks

 If individual are authors of a joint work, each owns an equal undivided interest in
the copyright as a tenant in common, [each has the right to use the work, prepare
derivative works, display it without seeking the other coauthor’s permission].
 If profits arise out of such use, an accounting must be made so, that each author
shares in the benefits or proceeds.
 The death of a coauthor, his or her rights pass to heirs who then own the rights in
common with the other coauthor.

INTELLECTUALPROPERTYRIGHTS Page56
OwnershipinDerivativeorCollectiveWorks

 The author of the original book has rights onlyto his or her work and cannot
reproduce or perform the derivative work without permission.
 If aworksuch as abook is created byoneperson who intends it to becomplete at the
time and illustrations are later added to it by another, the work cannot be a joint
work because there was no intention of the parties to create a unitary whole at the
time of their creation.
 The author of the derivative work cannot create further works based on the
originalbookwithoutpermission andcannotreproducetheoriginalwork without
permission.
 Multipleownershiprightsmayalsoariseifseparatelycopyrightableworksarecompiled
intoacollection.
For Example: If essays written by Jerry Seinfeld, Ellen DeGeneres, and Paul Reiserare
collected into a humor anthology by Bill Jones (with permission of the original authors), the
original authors retain their exclusive rights (such as rights to reproduce, distribute, and
perform) in their respective essays. No join work is created because there was no intent at the
timetheseparateessays were createdto mergethem into aunitarywhole. Noderivativework is
created because the original works have not been transformed in any way and nothing new
has been added to them. The anthology by the compiler, Bill Jones, is a collective work and
pursuant to section 201(c) of the act, Jones acquires onlythe right to reproduce and distribute
the contributions as part of the particular collective work or any revision of the collective
work .

WorksMadeforHire

 The general rule is that the person who creates a work is the author of that work
and the owner of the copyright therein, there is an exception to that principle: the
copyright law defines a category of works called works made for hire.
 If a work is “made for hire”, the author is considered to be the employer or
commissioningpartyandnottheemployeeortheactualpersonwhocreatedthework
 Theemployerorcommissioningpartymaybeacompanyor an individual.
 There are two types of works that are classified as works made for hire; works
prepared by anemployerwithin the scope of employmentand certain categories

INTELLECTUALPROPERTYRIGHTS Page57
 ofspeciallyorderedorcommissioned works.

CopyrightRegistration

 Aworkis“created”whenitisfixedinacopyorphonorecordforthefirsttime.
 Although not required to provide copyright protection for a work, registration of
copyright with the Copyright Office in expensive, easy and provides several
advantages, chiefly, that registration is a condition precedent for bringing an
infringement suit for works of US origin.

 To register a work, the applicant must sent the following three elements to the
Copyright Office: a properly completed application form, a filing fee, and a
deposit of the work being registered.
 Registrationmaybemadeatanytimewithinthelifeofthecopyright

THEAPPLICATIONFORCOPYRIGHTREGISTRATION

 Thefollowingpersonsareentitledtosubmitanapplicationforregistrationof copyright:

 the author (either the person who actually created the work or, if the work is one
made for hire, the employer or commissioning party)
 the copyright claimant (either the author or aperson or organization that has
obtained ownership of all oftherights underthe copyright originallybelongingto
the author, such as a transferee)
 the owner of exclusive right, such as the transferee of any of the exclusive rights
of copyright ownership (for example, one who prepares a movie based on an
earlier book may file an application for the newly created derivative work, the
movie); and
 the duly authorized agent of the author, claimant, or owner of exclusive rights
(such as an attorney, trustee, or any one authorized to act on behalf of such
parties)

INTELLECTUALPROPERTYRIGHTS Page58
Application Forms

 TheCopyright Officeprovidesforms forapplication forcopyrightregistration.

 Eachformisone8½by11”(inchs)sheet,printedfrontand back.
 Anapplicantmayusephotocopiesofforms
 TheCopyrightOfficereceivesmorethan6,00,000applicationseachyear,each
application must use a similar format to ease the burden of examination.
 Thetypeofformusedisdictatedbythetypeofworkthatisthesubjectof copyright.

Forexample: Oneformisusedforliteraryworks,whileanotherisusedforsoundrecording.
Following are the forms used for copyright application.

 Form TX (Literary works, essays, poetry, textbooks, reference works, catalogs,

advertising copy, compilations of information, and computer programs)
 Form PA (Pantomimes, choreographic works, operas, motion pictures and other
audio visual works, musical compositions and songs.
 FormVA(Puzzles,greetingcards,jewelrydesigns,maps,originalprints, photographs,
posters, sculptures, drawings, architectural plans and blueprints.
 FormSR(Sound recording)
 FormSE(periodicals,newspapersmagazines,newsletter,annualsand Journals.Etc.

Noticeof copyright

 Since March 1, 1989 (the date of adherence by the United States to the Berne
Convention),useofa noticeof copyright (usuallythesymbol © togetherwith the
year of first publication and copyright owner’s name) is no longer mandatory,
although it is recommended and offers some advantages.
 WorkspublishedbeforeJanuary1,1978,aregovernedbythe1909 copyrightAct.
 Under that act, if a work was published under the copyright owner’s authority
without a proper notice of copyright, all copyright protection for that work was
permanently lost in the United States.
 With regard to works published between January 1, 1978, and March 1, 1989,
omission of a notice was generally excused if the notice was omitted from a
smaller number of copies, registration was made within five years of publication,

INTELLECTUALPROPERTYRIGHTS Page59
 andareasonableeffortwasmadeto addthenotice afterdiscoveryofits omission.

InternationalCopyright Law

 Developmentsintechnologycreatenewindustriesandopportunitiesfor reproduction
and dissemination of works of authorship.
 Anumberofnewissueshavearisenrelatingtothegrowthofelectronic publishing,
distribution, and viewing of copyrighted works.
 Alongwithnewandexpandedmarketsforworkscomestheever-increasing challenge
of protecting works form piracy or infringement.
 Copyrightprotectionforcomputerprograms
 CopyrightprotectionforAutomatedDatabases
 CopyrightintheElectronicAge
 TheDigitalMillenniumCopyrightAct

PATENTS

Apatent is agovernment grantedright fora fixed timeperiodto excludeothersfrom making,

selling, using, and importing an invention, product, process or design, or improvements on
such items. These exclusive, monopoly rights are powerful, and in return the inventor is
required to describe the invention in writing. The end result is simply a written description,
accompanied by diagrams and drawings, that explains the invention. The public benefits
because anyone can read the details of the invention and improve upon it. Importantly, the
patent not only allows the public to gain an understanding of the invention, but also definesits
limits. Once the patent term expires (generally 20 years from the application filing date), the
technology covered by the patent becomes a part of the public domain and is essentially free
to use by the public.

TypesofPatents

Generally, there are three main types of patents: utility patents, design patents and plant
patents.

1) UtilityPatent–Whenmostpeoplethinkofpatents,theyarereferringmainlytoutility patents. A
utilitypatent is a patent that covers inventions, whether it’s an innovative software

INTELLECTUALPROPERTYRIGHTS Page60
process, a new product that is distinct from prior art, or an improvement to a car engine. A
utility patent can be granted for any new, useful, and non-obvious process or product.

2) DesignPatent – Adesign patent coversa new and original ornamental design ofa product.
Inotherwords,adesign patentprotectsthelookofaproduct.Examplesofproductsprotected by
design patents include jewelry and watches, electronic devices, computer icons, and beverage
containers. A design patent consists of numerous drawings that show a productfrom various
angles and contains very little written description, if any.

3) Plant Patents - Plant patents were first created by the Patent Act of 1930, which had been
proposed by Luther Burbank to protect new species of asexually reproduced plants, mostly
flowers. These are different than the utility patents granted to bioengineered plants used in
agriculture. The United States was the first country in the world to grant plant patents, and
even today many countries continue to deny protection for plants. Indeed, even some
signatories to the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS) administered by the World Trade Organization (WTO) reserve the right to deny
patents for plants.

Tobepatentable,plants mustbecultivated ratherthanfoundin thewild, andplantpatents are

granted only to protect a new, distinct, and non-obvious variety of asexually reproduced plant
—i.e., those grown not with seeds but by grafting, budding, or cutting. A plant need not be
useful to qualify for a patent, but it must be distinctive in its color, habit, soil, flavor,
productivity, form, or other aspects.

FOUNDATIONFORPATENT LAW

The main motive behind patent was to encourage scientific research, new technology and
industrialprogress.Patentlawgrantsamonopolytotheinventortousetheirpatentedproduct and
allow theuseof thesame to someonewith priorpermission against certain consideration.

Patent confers the right to manufacture, use, offer for sale, sell or importthe invention for the
prescribed period to the inventor. In short, the patent owner has the exclusive right to prevent
or stop others from commercially exploiting the patented invention. Patent protection means
that the invention cannot be commerciallymade, used, distributed, imported or sold byothers
without the patent owner’s consent. It protects against infringement of the patent i.e. if
someone tries to replicate the invention or invents against an existing patent the original
inventor can enforce their right against such duplicate product.

INTELLECTUALPROPERTYRIGHTS Page61
There issomeevidencethatsomeformofpatentrightswasrecognizedinAncientGreece.In
500 BCE, in the Greek city of Sybaris (located in what is now southern Italy),
"encouragement was held out to all who should discover any new refinement in luxury, the
profits arising from which were secured to the inventor by patent for the space of a year."
Athenaeus, writing in the third century CE, cites Phylarchus in saying that in Sybaris
exclusive rights were granted for one year to creators of unique culinary dishes.

In England, grants in the form of letters patent were issued bythe sovereign to inventors who
petitioned and were approved: a grant of 1331 to John Kempe and his companyis the earliest
authenticated instance of a royal grant made with the avowed purpose of instructing the
English in a new industry. These letters patent provided the recipient with a monopoly to
produce particular goods or provide particular services.

Thefirst extant Italianpatent was awarded bythe RepublicofVenicein 1416 foradevicefor

turning wool into felt. Soon thereafter, the Republic of Florence granted a patent to Filippo
Brunelleschi in 1421. Specifically, the well-known Florentine architect received a three-year
patent for a barge with hoisting gear, that carried marble along the Arno River.

Patents were systematically granted in Venice as of 1450, where they issued a decree by
which new and inventive devices had to be communicated to the Republic in order to obtain
legal protection against potential infringers. The period of protection was 10 years. These
were mostly in the field of glass making. As Venetians emigrated, they sought similar patent
protection in their new homes. This led to the diffusion of patent systems to other countries.

The Venetian Patent Statute, issued by the Senate of Venice in 1474, and one of the earliest
patent systems in the world.

King Henry II of France introduced the concept of publishing the description of an invention
in a patent in 1555. The first patent "specification" was to inventor Abel Foullon for "Usaige
& Description de l'holmetre", (a type of rangefinder.) Publication was delayed until after the
patent expired in 1561. Patents were granted by the monarchy and by other institutions like
the "Maison du Roi" and the Parliament of Paris. The novelty of the invention was examined
by the French Academy of Sciences. Digests were published irregularlystarting in 1729 with
delays of up to 60 years. Examinations were generally done in secret with no requirement to
publish a description of the invention. Actual use of the invention was deemed adequate
disclosure to the public.

INTELLECTUALPROPERTYRIGHTS Page62
The English patent system evolved from its early medieval origins into the first modernpatent
system that recognised intellectual property in order to stimulate invention; this wasthe
crucial legal foundation upon which the Industrial Revolution could emerge and flourish.

By the 16th century, the English Crown would habitually grant letters patent for monopolies
to favoured persons (or people who were prepared to pay for them). Blackstone (same
reference) also explains how "letters patent" (Latin literae patentes, "letters that lie open")
were so called because the seal hung from the foot of the document: theywere addressed "To
all to whom these presents shall come" and could be read without breaking the seal, as
opposed to "letters close", addressed to a particular person who had to break the seal to read
them.

This power was used to raise money for the Crown, and was widely abused, as the Crown
grantedpatents in respect ofall sorts ofcommon goods (salt, forexample). Consequently, the
Court began to limit the circumstances in which they could be granted. After public outcry,
James I of England was forced to revoke all existing monopolies and declare that they were
only to be used for "projects of new invention". This was incorporated into the 1624 Statuteof
Monopolies in which Parliament restricted the Crown's power explicitly so that the King
could onlyissue letters patent to the inventors or introducers of original inventions fora fixed
number of years. It also voided all existing monopolies and dispensations with the exception
of:

...the sole working or making of any manner of new manufactures within this realm to thetrue
and first inventor and inventors of such manufactures which others at the time of making
such letters patent and grants shall not use...

The Statute became the foundation for later developments in patent law in England and
elsewhere.

James Puckle's 1718 early autocannon was one of the first inventions required to provide a
specification for a patent.

Important developments in patent law emerged during the 18th century through a slow
process of judicial interpretation of the law. During the reign of Queen Anne, patent
applications were required to supplya complete specification of the principles of operation of
the invention for public access. Patenting medicines was particular popular in the mid-
eighteenthcenturyandthendeclined.Legalbattlesaroundthe1796patenttakenoutby

INTELLECTUALPROPERTYRIGHTS Page63
James Watt for his steam engine, established the principles that patents could be issued for
improvements of an already existing machine and that ideas or principles without specific
practical application could also legally be patented.

This legal system became the foundation for patent law in countries with a common law
heritage, including the United States, New Zealand and Australia. In the Thirteen Colonies,
inventors could obtain patents through petition to a given colony's legislature. In 1641,
Samuel Winslow was granted the first patent inNorth America bythe Massachusetts General
Court for a new process for making salt.

Towards the end of the 18th century, and influenced by the philosophy of John Locke, the
granting of patents began to be viewed as a form of intellectual property right, rather than
simplythe obtaining of economic privilege. A negative aspect of the patent law also emerged
in this period - the abuse of patent privilege to monopolise the market and prevent
improvement from other inventors. A notable example of this was the behavior of Boulton &
Watt in hounding their competitors such as Richard Trevithick through the courts, and
preventing their improvements to the steam engine from being realized until their patent
expired.

DuringtheBritishreignin India,theActVIof1856grantedprotectionofinventionsbasedto
inventors of new manufacturers for a period of 14 years. It underwent many modifications
thereafter and in 1911 Indian Patents & Designs Act was enacted. Then again modifications
took place and the present Patents Act, 1970 came into force in the year 1972, amending and
consolidating the existing law relating to Patents in India. The Patents Act, 1970 was again
amended by the Patents (Amendment) Act, 2005(1), wherein product patent was allowed
against all fields of technology including food, drugs, chemicals and microorganisms. The
new law allows compulsory grant of patent except in prohibited cases as done earlier. The
new amendment of 2005 also included pre-grant and post-grant opposition. A patent
application in India can be filed either individually or jointly, bytrue and first inventor of the
assignee.

PATENTSEARCH
Patentsearch isasearch ofthepatentdatabaseto determineifthereareanypatentapplication
similaroridenticaltoaninventionthatistobepatented.Patentsearchcanbedoneto

INTELLECTUALPROPERTYRIGHTS Page64
improvethechancesofobtainingapatentregistrationortofindinformationaboutnew inventions that
have patent protection.
Beforefilingapatentapplication,apatentsearchcanhelpwithdifferentobjectiveslike:

 Determiningtheprobabilityof havingapatentgranted to aproposedinvention.

 Determiningtheclaimstobe filedinthepatent application.
 Determiningthefreedomtooperate.
 Determiningwhetheragrantedpatent canbeinvalidated.
 Knowingmoreaboutsimilarinventionsand statusofsimilarpatent filings.

TheSevenStepsinaPreliminarySearchofU.S. PatentsandPublishedPatent Applications

1. Brainstormtermstodescribeyourinventionbasedonitspurpose,compositionanduse.

2. UsethesetermstofindinitialrelevantCooperativePatentClassificationsusingtheUSPTO
website’s Classification Text Search Tool
(https://www.uspto.gov/web/patents/classification/) Enter the keyword or keywords you wish
tosearch intheSearchToolbox.Forexample,ifyouweretryingtofindCPCClassifications for
patents related to umbrellas, you would enter"umbrella". The default search system is CPC,
Cooperative Patent Classification, so the button “All CPC” is selected.Click on the “Search”
button. Scan the resulting classification's Class Schemes (class schedules) to determine the
most relevant classification to your invention. If you get zero results in your Classification
Text search, consider substituting the word(s) you are using to describe your invention with
synonyms, such as the alternative terms you came up with in Step 1.

3. Verify the relevancy of CPC classification you found by reviewing the CPC Classification
Definition linked to it (if there is one).

4. Retrieve U.S. patent documents with the CPC classification you selected in the PatFT
(Patents Full-Text and Image) database (http://patft.uspto.gov). Review and narrow down the
most relevant patent publications by initially focusing on the front page information of
abstract and representative drawings.

5. Using this selected set of most relevant patent publications, review each one in-depth for
similarity toyourowninvention,payingcloseattentiontotheadditionaldrawingspages,the

INTELLECTUALPROPERTYRIGHTS Page65
specification and especially the claims. References cited by the applicant and/or patent
examiner may lead you to additional relevant patents.

6. Retrieve U.S. published patent applications with the CPC classification you selected in
Step 3 in the AppFT (Applications Full-Text and Image) database (http://appft.uspto.gov).
Use the same search approach used in Step 4 of first narrowingdown your results to the most
relevant patent applications by studying the abstract and representative drawings of each on
its front page. Then examine the selected published patent applications closely, paying close
attention to the additional drawings pages, the specifications and especially the claims.

7. Broaden your search to find additional U.S. patent publications using keyword searching
in PatFT or AppFT databases, classification searching of non-U.S. patents on the European
Patent Office's Worldwide Espacenet patent database (http://worldwide.espacenet.com) and
searching non-patent literature disclosures of inventions using the free electronic and print
resources of your nearest Patent and Trademark Resource Center(http://www.uspto.gov/ptrc).

PatentsearchinIndia

There is no cost for doing a patent search in India. A patent search can be done through the
Patent database of India available at: http://ipindiaservices.gov.in/publicsearch.

Depending on the status of a patent application, a patent search can be done under two
publication types: published or granted. The user can choose the desired publication type by
clicking on the checkbox. The user can view many categories like

 ApplicationDate
 Title
 Abstract
 CompleteSpecification
 Application Number
 PatentNumber
 Applicant Number
 PatentNumber
 Applicant number

INTELLECTUALPROPERTYRIGHTS Page66
  ApplicantName
 InventorName
 InventorCountry
 InventorAddress
 Filingoffice
 PCTApplicationNumber
 PCTPublication number

The entire category has a drop down box from which the user has access to change the
category. There is a search box next to every category where the user can enter the keyword
of the patent that he wants to view. By entering a query in more than one box, the applicant
can run very precise patent searches. Once the required keywords are entered in therespective
boxes, there is a captcha code the user has to clear.

PatentInformation

Once the code is entered, there are a number of relevant patent results for the patent search
query that the user has entered. On selecting an application, the document opens with the
Application Number, Title, Application Date and Status. The user can get further detailsabout
the patent by clicking on the Application Number, Title, Application Date and Status.
Through patent search, the applicant can find the following information about the patent:

 Inventiontitle
 PublicationNumber
 Publication Date
 Publication Type
 Application Number
 ApplicationFilingDate
 PriorityNumber
 PriorityCountry
 PriorityDate
 FieldofInvention

Classification

InventorName,Address,Country,Nationality

INTELLECTUALPROPERTYRIGHTS Page67
ApplicantName,Address,Country,Nationality

When each column is selected, the patent application’s details about that section can be
known by the user. When a user selects application number details like Invention Title,
Publication number, date, type, etc. There are separate columns that give the user the
inventor’s and the applicant’s Name, Address, Country, and Nationality.

PatentStatus

There is an Abstract column which has a summary of the patent application that the user can
view. Under this, there is a complete specification that gives the details about thespecification
if the user has mentioned any. At the end, there is an option through which the user can view
the application status. When it is opened, the user can get the application details.

BasicCriteriaforPatentability

Aninventionispatentablesubjectmatterifitmeetsthefollowingcriteria–

i. Itshouldbenovel.
ii. Itshould haveinventive step or itmust be non-obvious
iii. ItshouldbecapableofIndustrialapplication.
iv. Itshouldnot attracttheprovisionsof section3 and4 ofthe PatentsAct 1970.

An invention may satisfy the condition of novelty, inventiveness and usefulness but it may
not qualify for a patent under the following situations:

1) An invention which is frivolous or which claims anything obviously contrary to well

established natural laws;

2) An invention the primary or intended use or commercial exploitation of which could be

contrary to public order or morality or which causes serious prejudice to human , animal or
plant life or health or to the environment;

3) The mere discovery of scientific principle or the formulation of an abstract theory or

discovery of any living thing or non-living substance occurring in nature;

INTELLECTUALPROPERTYRIGHTS Page68
4) The mere discovery of a new form of a known substance which does not result in
enhancement of the known efficacy of that substance or the mere discovery of any new
property or new use for a known substance or of themere use of a known process, machineor
apparatus unless such known process results in a new product or employs at least one new
reactant;

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other
derivatives of known substance shall be considered to be the same substance, unless they
differ significantly in properties with regards to efficacy;

5) Asubstanceobtained bymereadmixtureresultingonlyin theaggregation oftheproperties of the

components thereof or a process for producing such substance;

6) Themerearrangementorre-arrangementorduplicationofknowndeviceseachfunctioning
independently of one another in a known way;

7) Amethodofagricultureorhorticulture;

8) Any process for medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) or

other treatment of human beings or any process for a similar treatment of animals to render
them free of disease or to increase their economic value or that of their products;

9) Plants and animals in whole or any part thereof other than microorganisms but including
seeds, varieties and species and essentiallybiological processesforproduction orpropagation of
plants and animals;

10) Amathematicalor businessmethodor acomputerprogram perseoralgorithms;

11) Literary,dramatic,musicalorartisticworkorany otheraestheticcreationwhatsoever including

cinematographic works and television productions;

12) Amereschemeorruleormethodofperformingmentalactormethodofplaying game;

13) Apresentationofinformation;

14) Topographyof integrated circuits;

15) Aninventionwhich,ineffect,istraditionalknowledgeorwhichisanaggregationor duplication

of known properties of traditionally known component or components;

INTELLECTUALPROPERTYRIGHTS Page69
16) Inventionsrelatingtoatomicenergy;

INDUSTRAILDESIGNS

Among the different kinds of intellectual property rights (IPR), one of the most important
onesisindustrialdesign.Companiesgoenormouslengthstoprotectindustrialdesignbecause it
gives them a competitive edge in the market and a lot of energy and resources goes into
developingthem. Ifcompetitorsareallowedto copytheindustrialdesign withouttheowner’s
consent, there would be little incentive to develop new ways of improving things. It will actas
a dampener to innovation.

So naturally, industrial design intellectual property rights are critical for a modern economy.
According to the World Intellectual Property Rights Organization (WIPO), it is acomposition
of lines and colors or any three-dimensional form, which leaves a unique impression on a
product. Theymaintain the essence of the ornamental or aesthetic aspect of a useful article,
which usually appeals to sight and touch senses, and can be reproduced in significant
quantities. Industrial design protection applies to several products, including packaging,
lighting, jewelry, electronic goods, textiles and even logos.

Thepre-requisites for adesign toqualifyfor protectionareasfollows:

 Itshouldbenoveland original
 Itshouldbeapplicableto afunctionalarticle
 Itshouldbevisibleonafinishedarticle
 Itshouldbenon-obvious
 Thereshould beno priorpublicationordisclosure of the design.

KindofprotectionprovidedinIndustrialdesign

INTELLECTUALPROPERTYRIGHTS Page70
In principle, the owner of a registered industrial design or of a design patent has the right to
prevent third parties from making, selling or importing articles bearing or embodying adesign
which is a copy, or substantially a copy, of the protected design, when such acts are
undertaken for commercial purposes.

Industrial design intellectual property rights are protected in India by the Designs Act
of2000.India's Design Act, 2000 was enacted to consolidate and amend the law relating to
protection of design and to comply with the articles 25 and 26 of Trade-Related Aspects of
Intellectual Property Rights TRIPS agreement. The new act, (earlier Patent and Design Act,
1911 was repealed by this act) now defines "design" to mean only the features of shape,
configuration, pattern, ornament, or composition of lines or colours applied to any article,
whether in two- or three-dimensional, or in both forms, by any industrial process or means,
whether manual or mechanical or chemical, separate or combined, which in the finished
article appeal to and are judged solelyby the eye; but does not include any mode or principle
of construction.

Under this, registration offers the proprietor ‘copyright’ in the design, i.e. exclusive right to
apply a design to the article belonging to the class in which it is registered. All models thatare
registered find their place in the Register of Designs, Kolkata. This includes the design
number, class number, date of filing (in this country), the name and address of the proprietor
and so on.

The registration is for a duration of ten years and can be extended for up to five years. Under
the Designs Act, anyone violating the copyright of the design is liable to pay a sum of Rs.
25,000 for every offense to the registered proprietor subject to a maximum of Rs. 50,000
recoverable as contract debt for any one design.

Advantagesofindustrialdesignprotection

TherearemanybenefitsofIPRin industrialdesign.Itwould bewisetounderstand them–

Monetary gain: The biggest benefit would be the financial gain that would accrue to the
owner of the design right. As we mentioned earlier, companies spend a lot of resources to
gain an edge over competitors, and good design can help them make a lot of money.

Unique selling proposition: In a competitive market, companies can get an edge by having a
productthatlooksandfeelsdifferent/unique.Oftenconsumersmakepurchasedecisions

INTELLECTUALPROPERTYRIGHTS Page71
based on the appearance. Industrial design protection enables companies to protect their USP
and set their product distinctly apart.

Selling designs: If a company cannot profit directly from the design developed, they can sellit
to third parties and make a profit from its design capabilities.

Image: Design protection helps build a positive image of a company. Industrial designs are
considered critical business assets and can even increase the shareprice of a companythat, in
turn, helps sell their products.

The law offers high-level protection for IPR in industrial design. However, infringement of
design rights is quite common in India more often than not because of weak enforcement. As
competition heightens, the temptation to steal designs is stronger. Hence, it is crucial for the
authorities to be more stringent in enforcing design rights. Companies, for their part, should
be vigilant about their rights and take proactive measures to protect them.

INTELLECTUALPROPERTYRIGHTS Page72
 UNITIV

Managing IP Rights: Acquiring IP Rights: letters of instruction, joint collaboration

agreement, Protecting IP Rights: non disclosure agreement, cease and desist letter,
settlement memorandum. Transferring IP Rights: Assignment contract, license agreement,
deed of assignment

ManagingIPRights

In an increasingly knowledge-driven economy, Intellectual Property (IP) is an

important key consideration in day-to-day business decisions. New products, brands and
creative designs appear almost daily on the market and are the result of continuous human
innovation and creativity. Generally, the small and medium companies in India either do not
understand the value of their intellectual property assets or are not aware of the intellectual
property system or the protection it can provide for their inventions, brands, and designs. As
the Intellectual Propertyforms an important part ofcompanies’assets,its adequate protection is
crucial in deterring potential infringement and in turning ideas into business assets with a real
market value. In fact, the Intellectual Property system enables companies to profit from their
innovative capacity and creativity and enhance their competitiveness. Companies that
dedicate time and resources for protecting their intellectual property can increase their
competitiveness in a number of areas, as it prevents competitors from copying or closely
imitating a company’s products or services; avoids wasteful investment in research and
development (R&D) and marketing; creating a corporate identity through a trademark and
branding strategy; negotiating licensing, franchising or other Intellectual Property based
contractual agreements; increasing the market value of the company; acquiring venturecapital
and enhancing access to finance; obtaining access to new markets and most important a
careful search for conflicting existing Intellectual Property rights, and the examination of
application by offices can help an enterprise to avoid conflicts and unnecessary litigation.

Strategies for Effective IPR Management:The effective management of intellectual

property assets requires implementation of a comprehensive asset management plan. In this
process, one of the most important step is to review the existing intellectual property assets,so
as to identify and locate the company’s key intellectual property assets such as patents,
patentablesubject matter, copyrights,trademarks, designs, tradesecrets, domain names,mask

INTELLECTUALPROPERTYRIGHTS Page73
works, inventions, works of authorship, hardware and devices, depending upon the nature of
business. Once the intellectual property assets are identified, it becomes important to
determinenatureand scopeofthecompany’s rightsinintellectualpropertyassets,whichmay range
from outright ownership to a license- including contingent rights in intellectualproperty to be
developed in future. Capitalizing on intellectual property assets so identified require a most
constructive approach keeping in view, among others, type of intellectual property assets, the
type of business claiming ownership of intellectual property assets, long term and short term
goals of the business organization including intended/possible use of intellectual property
assets.

Intellectual Property – Risk Management:The ownership and control of intellectual

propertyalso attract certain risks and this requires strategies and plans to mitigate those risks.
Themostimportantamongothersbeingtheinfringementofrightsinintellectualproperty,the risk
management strategyshould take into consideration the situations wherecompany’s own
Intellectual Property Rights (IPRs) may infringe the IPRs of a third party; the company has a
valid claim of infringement against a third party. It is also important to analyse the scope of
any grant of rights in intellectual property assets, which may include licenses, distribution
agreements, reseller arrangements and any other agreement or transaction involving transfer
of IPRs that may impact its value. One of the most important IPR risk management
techniques, particularly in respect of trade secrets, is to put in place a system requiring allnew
employees and consultants to execute a confidentiality agreement. It indeed allows company
to establish ownership in IPRs developed by the employees during their employment and also
help company to effectively contest infringement in case employee leaves the organization
and discloses the same to new employer. In nutshell, effective management of Intellectual
Property enables companies to use their intellectual property to improve their
competitiveness and strategic advantage. Acquiring Intellectual Property protection no doubt
is crucial but its effective management provides much more than just protection to an
enterprise’s inventions, trademarks, designs, copyright or other allied rights. Effective
intellectual property management requires a company to commercialize its inventions and
effectively monitor and enforce its intellectual property rights. Indeed, a company’s portfolio
of Intellectual Property must be viewed as a collection of keyassets that add significant value
to the enterprise. Thus, effective management of intellectual property may be seen as critical
business strategy to maintain sustainable corporate growth and maximisation of shareholder
value resulting into the economic growth.

INTELLECTUALPROPERTYRIGHTS Page74
ProtectingIP Rights

Intellectual Property rights are key elements needed to maintain a competitive edge in the
market in today’s dynamic and competitive business environment. Intellectual property is a
business asset, an integral part of the business process. Effective acquisition, managementand
protection of intellectual propertycan mean the difference between success and failure in
businessestoday. Itisimportantthatcompaniestakeappropriatestepstoprotectthisvaluable assetso
asto get thepossiblecommercialresults fromitsownership. Thevariousstatutesthat have been
enacted provide an adequate mechanism of protection to intellectual property rights. In the
case of patents, a patent can provide an inventor/corporates with a 20-year government
approved monopoly and once his 20 years of protection is up, it can be freely exploited for
the good of society. However, some ideas cannot be patented and indeed, some innovators do
not want to patent their ideas as for instance trade secret or confidential information.[Today
more than ever, intellectual property also includes confidential business information, trade
secrets, know-how and key business relationships]. If a trade secret is really kept a secret, the
monopoly on an idea or product may never end. But once the genie's out of the bottle, like a
champagne cork, you won't get it back in, it is lost forever and the companies are unlikely to
extract sufficient damages from whoever breaches confidentiality. Trade secrets are free—
just prevent the secret being disclosed. Though it is difficult indeed, but not impossible.
Famous successful examples include the recipe for Coca-Cola and the formulation of the
alcoholic beverage Chartreuse, which is only known by two monks. The need to protect these
vital assets is more critical than ever. Knowledge has become the key strategic differentiator.
If it is valuable to the company, it is valuable to its competitors as well. Most
sophisticatedbusiness enterprises (whethersmall, medium, orlarge) recognizethe need to
protect this vital intellectual property. But little real attention is paid to protecting or securing
these less formal types of intellectual property. It has been observed that many companies
surprisingly are oblivious to the fact that these vital intellectual assets are walking out their
front door on a daily, weeklyor monthly basis, and heading across the street to rival
competitors.

Non-DisclosureAgreement

There are two principal sources of leakage of or trade secrets or confidential information to
competitors or other third parties: disclosure and departure.

INTELLECTUALPROPERTYRIGHTS Page75
Disclosure - trade secrets can be leaked advertently or inadvertently to competitors or third
parties through careless or deliberate disclosure by company representatives. For example, a
sales representative or accounts manager meets with a potential supply chain about pooling
resources to go after a new market or business opportunity. During the meeting, proprietary
and confidential information are disclosed. The business purpose of the disclosure or
exchange of information might be quite legitimate, but the legal effect of disclosing
confidential information without the benefit of a confidentiality or non-disclosure agreement
could be disastrous. Corporate must make it both a corporate policyand business practice not
to engage in commercial negotiations with third parties (whether direct competitors or not)
without first ensuring that they have a signed Confidentiality or Non-Disclosure Agreementin
place.

Departure – The other source of leakage of confidential business information is the exit of
executives or key employees from the organization. After employment ceases, the employee
retains the right to use any general skill, experience and knowledge he has acquired in the
course of performing his normal duties, in order that he can continue to earn a living. Thishas
to be balanced against the employer's right to protect its confidential information. If the
employee has retained any confidential information, he is not entitled to use that information
without the employer's authority.

Employment or Confidentiality AgreementEmployees should sign Employment

Agreements to generally detail the terms of their employment. These should also include
appropriate clauses which restrain the employee from making any unauthorised use or
disclosure to third parties of confidential information during their employment and after their
employment has ceased. Agreements should be signed before the employee commences
employment. Existing employees should be encouraged to sign confidentiality agreements.
However, usually they cannot be forced to do so. When employees cease employment, the
employer should give them a letter confirming this, any monies being paid to them and
remindingthemoftheirconfidentialityobligations.Theemployeeshouldalsoberequestedto return
all property belonging to the employer and to sign an appropriate acknowledgement
confirming that he has done so and will keep information confidential. If confidential
information is to be divulged, a confidentiality agreement should be signed before the
disclosureismade.Thetypeofagreement willvarydependinguponthenatureandcontextof the
disclosure. A simple exchange of letters may be sufficient or a formal confidentiality
agreementmayberequired.Insomecases,aconfidentialityagreementmustbemadeasa

INTELLECTUALPROPERTYRIGHTS Page76
Deed in order to be legally enforceable. This is where there is no consideration expressed for
the agreement to keep information confidential. A confidentiality agreement should include
the following acknowledgements: − the information is secret; − the disclosure is made to the
recipient in confidence; − the recipient will not disclose the information to others or use the
information for their own advantage, without the prior authority of the owner of the
information; and − the unauthorised disclosure of the information could cause loss and
damage to the owner of the information and the recipient will be liable for this. There is no
specific legislation in India to protect trade secrets and confidential information.Nevertheless,
Indian courts have upheld trade secret protection on basis of principles of equity, and at
times, upon a common law action of breach of confidence, which in effect amounts a breach
of contractual obligation. The remedies available to the owner of trade secrets is to obtain an
injunction preventing the licensee from disclosing the trade secret, return of all confidential
and proprietary information and compensation for any losses suffered dueto
disclosureoftradesecrets. Further,apersoncan becontractuallybound not to disclose any
information that is revealed to him/her in confidence. The Indian courts have upheld a
restrictive clause in a technology transfer agreement, which imposes negative covenants on
licensee not to disclose or use the information received under the agreement for any purpose
other than that agreed in the said agreement.

CeaseandDesistLetter

An IP cease and desist letter often precedes intellectual property litigation. It is meant to
inform the recipient that they have allegedly infringed a legal right of the sender. At the very
least, it asks them to stop, or cease, their actions or face potential legal action. These letters
are particularly common in trademark disputes, where the sender will usually claim legal
rightsto atrademarkedword,phraseordesign and requestthat therecipient immediatelystop
using it on any commercial merchandise. However, cease and desist letters can be used for
any type of alleged intellectual property right infringement, such as infringement of patents,
copyright or industrial designs.

The cease and desist letter enforceable is not a court order and on its own is not legally
enforceable. Therefore,therearenoimmediate repercussionstonon-compliance.However,if
ignored, the recipient risks that the situation will escalate and the sender will start a legal
proceedingagainstthemtoobtainaceaseanddesistorderfromthecourt calledan injunction.

INTELLECTUALPROPERTYRIGHTS Page77
Insomecases, theletter opens apathwayfornegotiation between thesenderand therecipient (for
example, negotiating a licensing deal on a patented product).

Cease and desist letters do not have to follow a specific format, but they often have common
features. The first and most obvious one is the use of the phrase "cease and desist" in the
letter. What does cease and desist mean? It means to stop doing something and not resume
doing it in future.

A cease and desist letter will often be multiple pages and will outline the allegedinfringement
in detail. The letter also generally includes a reference to the sender'sintellectual property,
like a patent number, copyright registration number or trademark registration number. In
most cases, the sender will also include copies of the patent or copyright or trademark
registration as an enclosure.

The cease and desist correspondence may be written on the letterhead of a law firm, but
alternatively could be written by the intellectual property owner itself. If the letter is written
by a lawyer, consider that the sender has already financially invested in enforcing its
intellectual property rights and may be more serious about commencing legal proceeding
against you if you do not comply.

Other identifiers of a cease and desist letter are partiality to the owner's legal position (i.e.,
citing specific facts and arguments in favor of the sender's position), a list of demands and a
request for confirmation of receipt. Generallyspeaking, cease and desist correspondence also
includes a deadline for complying with the demands.

A cease and desist demand need not be in the form of a hardcopy letter sent by mail. The
demand can come electronically, not in the format of a formal letter, or alternativelycould be
in the form of a telephone call.

If the correspondence you receive comes from a court, rather than a lawyer or an individual,
then it is not a cease and desist letter. If you receive a court order, you must comply with the
order or you risk being found in contempt of court. If a letter is accompanied by court
documents (which are not marked with the notice "draft"), then it is likely not cease
anddesistcorrespondenceeither.Itmaybethatlegalproceedingshavealreadybeencommenced

INTELLECTUALPROPERTYRIGHTS Page78
against you, in which case prompt action is advisable. If you are unsure of the nature of
document you received, it is best to seek the advice of a lawyer.

Nextstepsafterreceivingthe letter:

Once you have ascertained that the communication you have received is or is likely a cease
and desist letter, it is important to decide on a course of action. While there is typically no
legal penalty for ignoring a cease and desist demand, doing so is generally ill-advised. It is
best to evaluate the letter to assess whether the sender actually does have the intellectual
property rights that it claims to have, whether you are the appropriate recipient of the letter,
whether the sender's allegations of infringement are valid, whether you have any reasonable
defences to the allegations, how likely it is that any claim based on the allegations would be
successful in Court, and what the financial consequences to you might be.

While a cease and desist letter may come as a shock, it is important to stay calm and not to
respond immediately without careful consideration of possible consequences. Any comments
you make to the sender or on social media could be used against you in future litigation. As
such, before a plan of action is determined, it is best to avoid publiclydiscussing the contents
of the letter or your reaction to the letter. It is also keyto keep a copyof the letter even if you
choosenottorespondortakeanyaction,as allmaterialsshouldbepreservedintheeventofa future
lawsuit.

In addition to consulting a lawyer, you may also want to discuss the situation with any
business partners or other individuals that may be affected by the course of action that you
choose to take. Consider how complying with the listed demands may affect your revenues,
profits, brand and reputation; also consider the cost and likelihood of a potential lawsuit and
conduct a cost versus benefit analysis to determine which route may be less costly and
damaging to your future prospects.

SettlementMemorandum

Settlement agreement is used in solving intellectual property (IP) disputes. It can be used to
formalise the settlement terms of a dispute at any point in a dispute, from before litigation
starts, to after trial. If the settlement agreement is used to settle existing court proceedings it
would be scheduled to a Tomlin or Consent order. If no consideration is passing between the
parties,asettlementdeedshouldbeconsideredasanoption.ThePrecedenthasbeendrafted

INTELLECTUALPROPERTYRIGHTS Page79
for use in the settlement of IP claims in particular, but could be adapted to be used for
settlement of other types of claim. Longer form pre-action and post-commencement of
proceedings settlement agreement Precedents containing more detailed provisions are also
available.

TransferringIPRights

When preparing to sell, many business owners think that their business doesn't have or own
any intellectual property unless theyhave gone through the process of registering a copyright
or trademark or procuring a patent. However, items such as domain names, trade secrets, and
the special know-how of a business constitute intellectual property which have value and for
which the business and/or business owners have rights. Additionally, items such as third-
party licenses (Microsoft Office, for example), IT maintenance and support contracts, and
web-hosting and development contracts also constitute valuable intellectual property. Proper
consideration and handlingof these items matter greatly in the sale of a business, as failure to
consider or handle them properly can cause problems for the seller at the front and back end
of a sale transaction.
Intellectual Property Licensing is a right by which the proprietor of the Intellectual
PropertyRightspermitsthelicenseetheenjoymentofcommercialmonopolyrightsgrantedto him
by the sovereign authority (Government) through Intellectual property legislations.
Licensingisarelationshipwherebothpartiestolicenseagreetoco-operate eachother which
benefit them.The proprietor (licensor) of the Intellectual property by a license agrees to share
the monopoly right granted to him and Licensee agrees for negotiated compensation for such
sharing of the monopoly right.
Intellectual Property License essentially is a contract by which licensor and license
reduced the term of the license which can be enforceable as per the legal frame work under
current municipal legislations where the contract has been executed.
AssignmentContract
The transfer of ownership in intellectual property is usually effected by a formal assignment.
The whole, or part, of an intellectual property right can be assigned. An assignment of
intellectual property is a document effecting the transfer of the ownership of intellectual
propertyfrom oneperson to another. Assigningtheownership ofintellectual property, should
always be in writing by means of a formal agreement. Many IP rights cannot be properly
assigned without a written document.

INTELLECTUALPROPERTYRIGHTS Page80
Assignment agreements are of considerable importance in IPR since they allow the
intellectual property owners to transfer their intellectual property for commercial returns,
ensuring that the intellectual property can be used for monetary gain. Intellectual propertythat
is created is utilized and exploited bythe Assignment Agreement, where the purchaseror
assignee takes benefit of the assignment rights that are created. These assignment agreements
give rise to legal and equitable rights in law and purport many issues if they are not carefully
constructed as required by law. Issues relating to ownership of IPR must be carefully
considered where employees may be creating IPR outside the scope, time and available
resources of the company that they work for. Companies who own valuable IP rights should
execute non-disclosure agreements with their employees, agents, or other third parties and
make sure to define the term 'confidentiality' and the obligations of the parties not to disclose
it. It is prudent to include Assignment Agreement clauses which address issues relating to
governing law, jurisdiction, Alternative Dispute Resolution [ADR] to seek speedy resolution
ofdisputes.IntellectualPropertyAssignment Agreementisalegalcontract andrequired tobe in
compliance with existing Laws. It is important, in the field of intellectual property, to define
transparent criteria for terms and conditions under which the institution/organization would
be the owner of the IPRs and the situation in which the inventor or creator would have the
right or privilege to be the owners of the IPRs that they created. The enforceability of
Assignment Agreements act as an incentive to these individuals to create new inventions
which ultimately benefits society. It is also essential to define the ownership of created
intellectual propertywith relation to employer- employee agreements and contract for service
to encourage innovation. IPR legislations in India provide specific rules, regulations and
procedure when dealing with assignment agreements. The Rules/Acts make provisions for
registering the Assignment Agreements and their respective schedules also provide for forms
through which parties can register their assignment agreements. In order for an Assignment
Agreement to be valid and enforceable, it is essential that the Assignment Agreement be
recorded as prescribed by the Acts and relevant Rules. In addition to abiding bythe Rules, to
avoid ambiguity it is essential to ensure that the agreement clearly defines which person the
ownership rests with. The assignment must be concrete and also clarify the tenure for which
the individual would be the owner of the intellectual property. This would provide a
precaution in case of a potential dispute on the ownership of the intellectual property. The
position of an Assignment Agreement in the intellectual property law of India is one of great
consequencedespitebeingaprivatetransactionbetweentheassignorandtheassignee.One

INTELLECTUALPROPERTYRIGHTS Page81
of the reasons for this is that the law is required to protect the owner of the intellectual
property from being defrauded. It must be noted, however, that though the law does provide
certain safeguards, the onus of creating a suitable assignment agreement is upon the parties
concerned. A valid assignment agreement and one that benefits all parties involved can only
come into being if the fundamental issues, some of which have been discussed above, are
addressed.
LicenceAgreement
License agreements differ from Assignment agreements on the ground that an
Assignment agreement actually transfers the ownership of that intellectual property from the
assignor to the assignee whereas a license agreement only permits the licensee to use the
intellectual property for a given period of time.
The basic legal document is the Licence Agreement for transfer of technology. The other
commonlyused modes of technology transfer are technical assistance agreement, patents and
patent agreement, know-how agreement, engineering services agreement, the trademark
agreementandthefranchiseagreement.LicenceAgreementisaformalinstrumentthatserves
several purposes. From it flows the legal rights and obligations of the parties to the
transaction. Therefore, it is – (a) a statement of the expectations of the parties that have come
to achieve a common specified purpose; (b) a memorandum defining the rights and
responsibilities of the parties, ensuring adequate commercial benefits to them; (c) a
prescription for resolving conflicts that may be anticipated in certain areas; and (d) a legal
document whose provisions and undertakings can be enforced under the laws of the country
in the context of which it is framed. Licensemaybe granted for IP that is necessaryto further
develop, reproduce, make, use, market, and sell products based on the technology to be
transferred. The terms and conditions of a licensing agreement determine the success of the
technology transfer. Therefore, while formulating the licensing agreement, the parties
involved should define the technology to be transferred without any ambiguity. Certain
factors to be considered while defining the technology in the licensing agreement include:
 Typeofthetechnologyi.e.product,process,facility,software,formula,etc.;
 Needforadditional licenseforpracticingthe technology;
 Industrialstandardsorspecificationsassociatedwiththetechnology;and
 Detailsrequiredtopracticethe technology.

Otherfactorsthatneedtobeconsideredforasuccessfultechnologylicensing are:

INTELLECTUALPROPERTYRIGHTS Page82
  Owner/softhe technology;
 Natureofownership;
 Othernon-exclusiveorexclusivelicensingassociatedwith thetechnology;
 Assistancerequiredfromthelicensortofurtherdeveloporpracticethe technology;
 OtherIPRssuchastrademark,copyright,tradesecret,etc.associatedwiththe technology;
 Natureoftechnology(e.g. standalonetechnology,platform technology);
 Scopeofrightsexpected fromthetechnologylicense;
 Territoryand industryinwhich the technologycan beutilized; and
 Termsandvalueofroyalty,etc.

DeedofAssignment
Most businesses have intellectual property, or works created by human minds or, in some
cases, by computers. Some examples of intellectual property include architectural drawings,
ad campaigns, company or product names, inventions, and source code.
When a company is buying another company, and want to transfer your intellectual
property into the company, or when a business buys product rights from another company or
individual a deed of assignment is made
A deed of assignment can be done in one transaction, instead of one transaction for
each item of intellectual property, by transferring all ownership rights of all intellectual
property detailed in the deed. The document is signed by both the buyer and seller. No
payment is required for it to be valid.

Adeedof assignmentmustbeinwritingandshouldinclude:

 Thenamesandaddresses oftheassignorand assignee

 Adescriptionoftheprogramorproductforwhichtherightsarebeingtransferred
 Astatement that allintellectual propertyrightsto the propertyarebeing transferred
 Signaturesofthepartiesandthedateoftheagreementexecution The

deed could also include the following sections, where applicable:

 Consideration,orpayment, tobemadetotheoriginal owner.

INTELLECTUALPROPERTYRIGHTS Page83
  Warranties, or promises that the intellectual property rights being assigned don't
infringeon anyoneelse's intellectual propertyrights. Forexample, in adeed regarding
the transfer of a copyright, this section could state that the copyrighted work isoriginal
and not owned by someone else.
 Indemnification, or promise by the seller to reimburse the assignee if there is some
problem with title to the property.
 Future assignments. For example, the agreement could be ongoing, so that anything
the assignor creates in the future for this product or program is also transferred to the
buyer.

INTELLECTUALPROPERTYRIGHTS Page84
 UNIT-V

CyberLaw:
Cyber law is the area of law that deals with the Internet's relationship to technological and
electronic elements, including computers, software, hardware and information systems (IS).
CyberlawisalsoknownasCyberLaworInternetLaw.
Cyber laws prevent or reduce large scale damage from cybercriminal activities by protecting
information access, privacy, communications, intellectual property (IP) and freedom of
speech related to the use of the Internet, websites, email, computers, cell phones, softwareand
hardware, such as data storage devices.
The increase in Internet traffic has led to a higher proportion of legal issues worldwide.
Because cyber laws vary by jurisdiction and country, enforcement is challenging, and
restitution ranges from fines to imprisonment.
The Information Technology Act, 2000 (also known as ITA-2000, or the IT Act) is an Act
of the Indian Parliament (No 21 of 2000) notified on 17 October 2000. It is the primary lawin
India dealing with cybercrime and electronic commerce. It is based on the United Nations
Model Law on Electronic Commerce 1996 (UNCITRAL Model) recommended by the
General Assembly of United Nations by a resolution dated 30 January 1997.
CyberCrime:
Intellectual property (IP) theft is defined as theft of material that is copyrighted, the theft of
trade secrets, and trademark violations. A copyright is the legal right of an author, publisher,
composer, or other person who creates a work to exclusively print, publish, distribute, or
performtheworkinpublic.TheUnitedStatesleadstheworldinthecreationandsellingofIP products
to buyers nationwide and internationally. Examples of copyrighted material commonly stolen
online are computer software, recorded music, movies, and electronic games.

Theft of trade secrets means the theft of ideas, plans, methods, technologies, or any sensitive
information from all types of industries including manufacturers, financial serviceinstitutions,
and the computer industry. Trade secrets are plans for a higher speed computer,
designsforahighlyfuel-efficientcar,acompany'smanufacturingprocedures,ortherecipe

INTELLECTUALPROPERTYRIGHTS Page85
for a popular salad dressing, cookie mix, or barbeque sauce. These secrets are owned by the
company and give it a competitive edge. Theft of trade secrets damages the competitive edge
and therefore the economic base of a business.

A trademark is the registered name or identifying symbol of a product that can be used only
bythe product's owner. A trademark violation involves counterfeiting or copying brand name
products such as well-known types of shoes, clothing, and electronics equipment and selling
them as the genuine or original product.

The two forms of IP most frequently involved in cyber crime are copyrighted material and
trade secrets. Piracy is a term used to describe IP theft—piracy of software, piracy of music,
etc. Theft of IP affects the entire U.S. economy. Billions of dollars are lost every year to IP
pirates. For example, thieves sell pirated computer software for games or programs tomillions
of Internet users. The company that actually produced the real product loses these sales and
royalties rightfully due to the original creator.

Historically, when there were no computers, IP crimes involved a lot of time and labor.Movie
or music tapes had to be copied, physically produced, and transported for sale. An individual
had to make the sale in person. To steal a trade secret, actual paper plans, files, or blueprints
would have to be physically taken from a company's building and likewise sold in person.

In the twenty-first century software, music, and trade secret pirates operate through the
Internet. Anything that can be digitized—reduced to a series of zeroes and ones—can be
transmitted rapidly from one computer to another. There is no reduction of qualityin second,
third, or fourth generation copies. Pirated digital copies of copyrighted work transmitted over
the Internet are known as "warez." Warez groups are responsible for illegally copying and
distributing hundreds of millions of dollars of copyrighted material.

Pirated trade secrets are sold to other companies or illegal groups. Trade secrets no longer
have to be physically stolen from a company. Instead, corporate plans and secrets are
downloaded by pirates onto a computer disc. The stolen information can be transmitted
worldwideinminutes.Tradesecretpiratesfindpathwaysintoacompany'scomputersystems

INTELLECTUALPROPERTYRIGHTS Page86
and download the items to be copied. Companies keep almost everything in their computer
files. Pirated copies are sold over the Internet to customers who provide their credit card
numbers then download the copy.

Cyberstalking:
Cyber stalking is use of the Internet and email to "stalk" another individual. The crime of
stalking has existed for decades; stalking refers to repeated harassment of someone where the
stalker acts in a threatening behavior toward the victim. Threatening behaviors include
following the victim, appearing at the victim's place of work or near his or her home, then
making eye contact so the victim knows someone is following, and leaving threatening
messages on paper or the telephone. Stalking leaves its victims fearful of bodily harm or
death.

The use of the Internet provides easy pathways for stalking. In 2000 the Working Group on
Unlawful Conduct Involving the Use of the Internet, an agency appointed by President Bill
Clinton (1946–; served 1993–2001) reported on a recent example of Internet stalking: a fifty-
year-old security guard used the Internet to stalk a woman who had rejected his sexual
advances. He retaliated to her rejection by posting her personal details to the Internet. These
included her physical description, address and telephone number, and even included details
about how one could bypass her home security system. As a result of the posted message, at
least six men came to her house and knocked on her door. The security guard was arrested,
pled guilty, and sentenced to prison for Internet stalking.

Intellectual property pirates use the computer to steal vast amounts of copyrighted material
and cause severe damage to the victimized companies. IP pirates never have to make sales in
person or travel, their costs are minimal, and profits are huge. Internet pirates target theonline
shoppers who look for discounted, but legitimate, products. They do so by emails and
Internet advertisements that seem to be the real thing. Not just individuals, but companies,
educational institutions, and even government agencies have been tricked by IP pirates into
buying stolen goods.

INTELLECTUALPROPERTYRIGHTS Page87
Arrest and prosecution of IP crimes is difficult for U.S. law enforcement agencies. U.S. laws
combating this new type of crime were only beginning to be written by the early twenty-first
century. Very little stops IP pirates, and organized crime groups have become involved as
well. Theprofits theygenerate from IP crimes finances manyothercriminal activitiessuch as
drug trafficking, illegal gun sales, gambling, and prostitution (see chapter 7, Organized
Crime).

Intellectual property pirates also come from many foreign countries such as China, South
Korea, Vietnam (Southeast Asia), and Russia. International IP law is practically nonexistent.
Whileoffline IPviolationscanbeinvestigatedbythetraditionallawenforcementtacticssuch as
using undercover agents, cyber IP criminals operate only in cyberspace and can disappear in
seconds.

IntellectualPropertyinEcommerce:
Intellectual property law protects against disclosure of trade secrets and, as a result, against
unfair competition. That makes the intellectual property an asset that is perhaps worth more
than anytangible asset. This can be seen most clearlyin relation to technologyand the digital
economy.
Without intellectual property practices and laws, hard work is stolen and spread around the
globe without paying the creator for their labor. Who, then, wants to create new works?
Technical security is necessary to deter the less proficient thief and intellectual propertylaws
are required to deal with the more serious crimes.
Thetwoprimaryareasthatyoushouldbe concernedaboutare:
 Safeguardingyourownintellectualproperty
 Violatingsomeoneelse's intellectual property
SafeguardingYourOwnIntellectualProperty
A common mistake is disclosing intellectual property prior to filing for protection of that
property. Likewise, in many countries making trade secrets public automatically
dissolvesanyprotection.Consultwith yourlegal adviserpriortodisclosinganythingpertainingto
your intellectual property

ViolatingSomeoneElse'sIntellectualProperty

INTELLECTUALPROPERTYRIGHTS Page88
Your ecommerce website contains product descriptions and images. Do you have the legal
right to publish those descriptions and images? What about all those logos, videos, photos,
clip art, icons, sound effects, and background music? They sure make your site a more
engaging. But, once again, do you have the right to be using them?
We have heard about many small ecommerce entrepreneurs who disregard intellectual
property issues using the dictum, "whatever is available on the Internet is free for use!" The
fact that they seem to get away with such IP violations makes the rest of us wonder whether
we are spending our money right.
The fact is that when you are really small, you might be able to fly under the radar. But asyou
grow, your flagrant intellectual propertyviolations willstand out. If you arenot a fly-by-
nightoperation, youneedtotakeintellectualpropertyissuesseriously.Anycontent youplace on
your website must something that:
 youown
 youhavetheexpresspermissiontouse
 is in the public domain
 iscoveredunderfairuse.

ExplainaboutIPIssuesWhenyouDesignandBuildYourWebSite?
One of the basic elements of E-Commerce business is the design and function of thecompany
web site. In designing and building your web site, the first thing to be aware of is whether
you own the web site presentation and content and everyaspect of IP in it. You may not, but
thats OK, you just need to know what you own, what you have rights to use, andwhat you
dont own or have rights to use. If you are using a consultant or company to design your web
site, check out the provisions in the agreement concerning ownership and IP rights. Who
owns the web site design and text? Check out what obligations the company has tomake sure
that it doesnot use any IP that belongs to a third party in the course of its work.

If you are using a database, E-Commerce system, or search engine or other technical Internet
tools licensed to you by another company, check the terms in the license agreement to see
who owns the system. Make sure that you do have a written agreement, and get it checked
over by a lawyer before you sign it and before any design, custom work or installation of the
site begins.

INTELLECTUALPROPERTYRIGHTS Page89
Youwill need written permission (also referred to as alicense, aconsent, oran agreement) to
useanyphotos, videos, music, voices, artwork, orsoftware, etc.that belongto someone else.
Just because you get material on the Internet does not mean that it is in the public domain.
You may have to pay for permission to use these materials. In many countries you will need
to communicate with a collecting society or association of artists in order to get permission.

You will need to make sure that, if your country's law (or the law that applies to your
business)requiresit,that youhavepermissiontoshowtrademarksownedbyothercompanies that
you refer to on your web site and that you recognize them.

Do not distribute or download any content or music on your web site that does not belong to
you unless you have obtained written permission from the owner to distribute it on the
Internet.

Be careful in linking to other web sites. Links are a great E-Commerce tool, and a useful
service to your customers, but in many countries there is no clear law on when and how you
can use links. The most careful practice is to seek and obtain permission from the other site
before putting in the link.

Framing is a practice that is more controversial that linking. This means including large parts
of another web site in yours in a way that makes it look as though it is part of your web site.
Always get written permission before doing this.

ExplainaboutIPIssuesRelatedtoInternetDomainNames
The choice of a domain name has become an important business decision. A domain name is
registered by you to enable Internet users to locate your company's site on the web.
Company domain names may be registered in any number of "top level domains" called
"TLDs".Youcanchoosefrom the"generictoplevel domains"("gTLDs"), suchas.com, .net,
.organd .info. Or you can choose from the specialized and restricted top level domains if you
qualify (e.g. .aero for air travel and transport businesses, or .biz for commercial enterprises).
Youcan also register yourdomain nameunder a"countrycodetop level domain"("ccTLD"), for
example, .bg for Bulgaria, .cn for China, .ch for Switzerland.

INTELLECTUALPROPERTYRIGHTS Page90
The technical management of the domain name system is in the hands of the Internet
Corporation for Assigned Names and Numbers ("ICANN"). However, in the gTLDs, the
registrations themselves arehandledbyanumber of Internet registrarsaccredited byICANN,
that can be found at ICANN's site at http://www.icann.org. You can also check whether a
domainnamehas alreadybeenregistered, eitherbysearchingviaaregistrar'ssite,orbyusing a
'Whois' search, like that offererd by UWhois, at http://www.uwhois.com. For registrationsin
the ccTLDs, you will need to contact the registration authoritydesignated for each ccTLD. To
do this, you can consult a ccTLD database set up by WIPO, that links to the web sites of 243
ccTLDs, where you can find information about their registration agreement, Whois service
and dispute resolution procedures.
When you choose your company's domain name, depending on where you register, you may
pick a generic or common name, but if you pick a name that is distinctive, users may more
easily be able to remember and search for it. Ideally, it could also be distinctive enough to be
protected under trademark law, because domain names can be protected as trademarks in
some countries. If you picked a very common domain name (e.g. "Good Software"), your
companycould have difficultyin buildingup anyspecial reputation or good will in this name
and more difficulty in preventing others from using your name in competition.

You should pick a domain name that is not the trademark of another company, particularly a
well-known trademark. This is because most laws treat registration of another person's
trademark as a domain name as trademark infringement, also known as 'cybersquatting', and
your SME might have to transfer or cancel the domain name, and also paydamages. Also, all
domain names registered in the gTLDs like .com, as well as many registered in the ccTLDs,
are subject to a dispute resolution procedure (described below) that allows a trademark or
servicemarkownerto stop thecybersquattingof theirtrademark.Therearevarious databases that
you can search on the web to determine if your choice of domain name is a registered
trademark in a particular country. WIPO has established a Trademark Database Portal (at
https://www.wipo.int/amc/en/trademark/index.html) to help you do this search.

If you find that someone else is using your trademark or service mark as a domain name,what
can you do? Someunscrupulous people have made a practice of cybersquatting, usually to
extract money from the rightful owner of the name or to mislead or confuse consumers. If
youfindthatyourtrademarkorservicemarkisbeingcybersquatted,thereisasimpleonline

INTELLECTUALPROPERTYRIGHTS Page91
procedure you can go through where an independent expert will decide whether the domain
name should be returned to you, and the registrars are required to follow this decision. This
Uniform Administrative Dispute Resolution Policy ("UDRP") was first recommended by
WIPO as a result of its Internet Domain Name Processes and then adopted by ICANN, and
you can find information about it at WIPO's site at
https://www.wipo.int/amc/en/domains/index.html.

In addition to trademarks, it is wise to avoid domain names that include certain other
controversial words such as geographical terms (e.g. Champagne, Beaujolais), names of
famous people, generic drug names, names of international organizations, and trade names
(e.g. name of another person's business), that might interfere with the rights of others or
international systems of protection.
ImportantcontractsandIP:
In developing and protecting the IP of your E-Commerce company, you will have to be
careful with contracts. Contracts and IP go hand in hand. No contract that is signed by your
company is unimportant and all must be reviewed to make sure that you are maximizing and
not damaging IP assets. This is because through contracts, IP rights may be sold or licensedor
even given away. Bad contracts can result in litigation and unnecessary expense.

The risk areas are contracts with employees and contractors, development agreements, web
design agreements, agreements to license your product or IP to another company (“licenses-
out”), agreements to license a product or IP from another company (“licenses in”),
distributionagreements, domainname andtrademarklicense agreements, andpatentlicenses,
cross licenses and pools. This is only a partial list.

Whenever you are using employees, contractors, consultants, or other companies to develop
your IP (e.g. a contractor writing software), it is essential that there be a contract with that
person or entity before work is started. Even the earliest start of work can give rise to
important rights, and the contractor may become the author or owner of its work, or possiblya
joint owner. Contracts must specify who owns IP that is created and how the IP will be
treated in the future.

INTELLECTUALPROPERTYRIGHTS Page92
The greatest economic value of IP comes from its use in licensing. This can be in the form of
productlicensing(e.g.licensingout aproductthat contains IP, such asasoftwareprogram,or
course materials) or in the form of pure IP licenses (e.g. a license whereby another company
is given the right to practice a patent).

As noted above in Checklist Item #3 & 6, it is important to have contracts that clearly state
what rights you have or have given to others to use IP.

In most countries, contracts need not be long or even overly formal. But they must be clear
and contain the right language concerning IP rights. As noted above, it is important to get
expert legal advice in this area. Often it is useful to have a legal adviser provide you with aset
of forms that can be used as starting points in various situations involving IP. This way you
can operate efficiently, but it is always a good idea to check with your legal adviser before
concluding a legally binding agreement involving IP, no matter how simple it seems.

It is a good idea for an E-Commerce business to archive copies of all contracts that affect IP.
This is an important record keeping discipline so you can look up matters that may become
important at a later date. One example is that contracts affecting IP will be very important if
yourE-Commercebusinessisinvolvedinanacquisition,merger,saleofassets,orinvestment
transaction. Pay attention to provisions in contracts that interfere with your ability to sell,
license, assign or transfer your company’s IP.

WhatisDataSecurity:
Data security refers to the process of protecting data from unauthorized access and data
corruption throughout its lifecycle. Data security includes data encryption, tokenization, and
key management practices that protect data across all applications and platforms.
WhyDataSecurity?
Organizations around the globe are investing heavily in information technology (IT) cyber
defense capabilities to protect their critical assets. Whether an enterprise needs to protect a
brand, intellectual capital, and customer information or provide controls for critical
infrastructure, the means for incident detection and response to protecting organizational
interests have three common elements: people, processes, and technology.
DataSecuritySolutions

INTELLECTUALPROPERTYRIGHTS Page93
Micro Focus drives leadership in data security solutions with over 80 patents and 51 years of
expertise. With advanced data encryption, tokenization, and key management to protect data
across applications, transactions, storage, and big data platforms, Micro Focus simplifies the
protection of sensitive data in even the most complex use cases.
• Cloud access security – Protection platform that allows you to move to the cloud
securely while protecting data in cloud applications.
• Data encryption – Data-centric and tokenization security solutions that protect data
across enterprise, cloud, mobile and big data environments.
• Hardware securitymodule -- Hardware securitymodule that guards financial data and
meets industry security and compliance requirements.
• Key management -- Solution that protects data and enables industry regulation
compliance.
• Enterprise Data Protection – Solution that provides an end-to-end data-centric
approach to enterprise data protection.
• Payments Security – Solution provides complete point-to-point encryption and
tokenization for retail payment transactions, enabling PCI scope reduction.
• Big Data, Hadoop and IofT data protection – Solution that protects sensitive data in
the Data Lake – including Hadoop, Teradata, Micro Focus Vertica, and other Big Data
platforms.
• Mobile App Security - Protecting sensitive data in native mobile apps while
safeguarding the data end-to-end.
• Web Browser Security - Protects sensitive data captured at the browser, from thepoint
the customer enters cardholder or personal data, and keeps it protected through the ecosystem
to the trusted host destination.
• Email Security – Solution that provides end-to-end encryption for email and mobile
messaging, keeping Personally Identifiable Information and Personal Health Information
secure and private.
Confidentiality:
Confidentiality is roughly equivalent to privacy. Measures undertaken to ensure
confidentialityare designed to prevent sensitive information from reaching the wrongpeople,
while making sure that the right people can in fact get it: Access must be restricted to those
authorized to view the data in question. It is common, as well, for data to be categorized
accordingtotheamountandtypeofdamagethatcouldbedoneshoulditfallintounintended

INTELLECTUALPROPERTYRIGHTS Page94
hands. More or less stringent measures can then be implemented according to those
categories.
Sometimes safeguarding data confidentiality may involve special training for that privacy to
such documents. Such training would typically include security risks that could threaten this
information. Training can help familiarize authorized people with risk factors and how to
guard against them. Further aspects of training can include strong passwords and password-
related best practices and information about social engineering methods, to prevent themfrom
bending data-handling rules with good intentions and potentially disastrous results.
A good example of methods used to ensure confidentiality is an account number or routing
number when banking online. Data encryption is a common method of ensuring
confidentiality. User IDs and passwords constitute a standard procedure; two-factor
authentication is becoming the norm. Other options include biometric verification and
security tokens, key fobs or soft tokens. In addition, users can take precautions to minimize
the number of places where the information appears and the number of times it is actually
transmitted to complete a required transaction. Extra measures might be taken in the case of
extremely sensitive documents, precautions such as storing only on air gapped computers,
disconnected storage devices or, for highly sensitive information, in hard copy form only.

InformationPrivacy:
Information privacy, also known as data privacy or data protection, is the relationship
between the collection and dissemination of data, technology, the public expectation of
privacy, legal and political issues surrounding them.
Privacy concerns exist wherever personally identifiable information or other sensitive
information is collected, stored, used, and finally destroyed or deleted – in digital form or
otherwise. Improper or non-existent disclosure control can be the root cause for privacy
issues. Data privacy issues may arise in response to information from a wide range ofsources,
suchas:
• Healthcarerecords
• Criminaljusticeinvestigationsandproceedings
• Financialinstitutionsand transactions
• Biologicaltraits,suchasgeneticmaterial
• Residenceandgeographic records

INTELLECTUALPROPERTYRIGHTS Page95
• Privacybreach
• Location-basedserviceandgeolocation
• Websurfingbehavioror userpreferencesusingpersistentcookies
• Academicresearch
The challenge of data privacy is to use data while protecting an individual's privacy
preferences and their personally identifiable information.The fields of computer security, data
security, and information security design and use software, hardware, and human resources to
address this issue. Since the laws and regulations related to Privacy and Data Protection are
constantly changing, it is important to keep abreast of any changes in the law and to
continually reassess compliance with data privacy and security regulations. Within academia,
Institutional Review Boards function to assure that adequate measures are taken to ensure
both the privacy and confidentiality of human subjects in research.
Internationalaspectsofcomputerandonlinecrime:
There is no commonly agreed single definition of “cybercrime”. It refers to illegal internet-
mediated activities that often take place in global electronic networks.Cybercrime is
"international" or "transnational" – there are ‘no cyber-borders between countries'.
International cybercrimes often challenge the effectiveness of domestic and international law
and law enforcement. Because existing laws in many countries are not tailored to deal with
cybercrime, criminals increasinglyconduct crimes on the Internet in order to take advantages
of the less severe punishments or difficulties of being traced. No matter, in developing or
developed countries, governments and industries have gradually realized the colossal threats
of cybercrime on economic and political security and public interests. However, complexity
in types and forms of cybercrime increases the difficulty to fight back. In this sense, fighting
cybercrime calls for international cooperation. Various organizations and governments have
already made joint efforts in establishing global standards of legislation and law enforcement
both on a regional and on an international scale. China–United States cooperation is one of
the most striking progresses recently, because they are the top two source countries of
cybercrime.
Information and communication technology (ICT) plays an important role in helping ensure
interoperability and security based on global standards. General countermeasures have been
adopted in cracking down cybercrime, such as legal measures in perfecting legislation and
technical measures in tracking down crimes over the network, Internet content control, using
publicorprivateproxyandcomputerforensics,encryptionandplausibledeniability,etc.[2]

INTELLECTUALPROPERTYRIGHTS Page96
Due to the heterogeneity of law enforcement and technical countermeasures of different
countries, this article will mainly focus on legislative and regulatory initiatives of
international cooperation.

InternetCrime:
Internet crime is any crime or illegal online activity committed on the Internet, through the
Internet or using the Internet. The widespread Internet crime phenomenon encompasses
multiple global levels of legislation and oversight. In the demanding and continuously
changing IT field, security experts are committed to combating Internet crime through
preventative technologies, such as intrusion detection networks and packet sniffers.

Internet crime is a strong branch of cybercrime. Identity theft, Internet scams and cybers
talking are the primary types of Internet crime. Because Internet crimes usually
engagepeoplefromvariousgeographicareas,findingandpenalizing
guiltyparticipantsiscomplicate

Internet crimes, such as the Nigerian 419 fraud ring, are a constant threat to Internet users.
The U.S. Federal Bureau of Investigation (FBI) and Federal Trade Commission (FCC) have
dedicated and appointed IT and law enforcement experts charged with ending the far-
reaching and damaging effects of Internet crime.

ExamplesofInternetcrimelegislation include:
• U.S.ComputerFraudandAbuseAct,Section1030:Amendedin2001throughthe
U.S.PatriotAct
• CANSPAMActof2003
• Preventing Real Online Threats to Economic Creativity and Theft of Intellectual
Property Act of 2011
As the U.S. works to combat Internet crime, other countries are experiencing increased
cybercriminal activity. In 2001, Web sense (an organization focused on network abuse
research) reported the alarming spread of Internet crime in Canada. This global shift is under
review by the Canadian government.

TypesofInternetcrimeinclude:
• Cyberbullyingand harassment
INTELLECTUALPROPERTYRIGHTS Page97
• Financialextortion
• Internetbomb threats
• Classifiedglobal securitydata theft
• Passwordtrafficking
• Enterprisetradesecret theft
• Personallydatahacking
• Copyrightviolations,suchassoftwarepiracy
• Counterfeittrademarks
• Illegalweapontrafficking
• Onlinechildpornography
• Creditcardtheftand fraud
• Emailphishing
• Domainnamehijacking
• Virus spreading
To prevent becoming an Internet crime, online vigilance and common sense are critical.
Under no circumstances should a user share personal information (like full name, address,
birth date and Social Securitynumber) to unknown recipients. Moreover, while online, a user
should remain suspicious about exaggerated or unverifiable claims.

INTELLECTUALPROPERTYRIGHTS Page98