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Intellectual Property Rights

Intellectual Property Rights

    Patent

    Patent search, portfolio management, patent validity, patentability evaluations, infringement, preparing and prosecuting domestic and international utility patent, design patent etc.

    Trademarks

    Search of Trademarks, service marks, certification mark, their application, opposition, validity, management, of trademark applications including defending trademarks, protecting against counterfeiting. Filing of marks in India and other countries. Trademarks assignments and licensing.

    Copyrights

    Registration, Protection, Advice in case of infringement. Advising matters including literary, dramatic, musical, artistic works, cinematographs (films), Photographs, Cartoon and Sports characters, Computer Software, live performances, phonograms; Broadcasting, media laws; etc. Licensing and Assignment of Copyrights, anti-counterfeiting and piracy matters and related civil and criminal litigations;

    Industrial Designs

    Search of Design, Registration, Protection Assignment and Licensing of Design and related advice. Opposition proceedings and infringement litigation.

    Geographical Indications

    search, Preparing and filing of applications, renewal, Oppositions, Licensing and Assignments, matters related to infringement and passing off, investigations and related civil and criminal litigations.

    Domain Names

    search for the availability of a Domain Name and Registration, Resolving Domain name disputes under Uniform Dispute Resolution Policy (UDRP), NIXI for disputes.

    Other

    Negotiating agreements for transfer and licensing of technology, and drafting and enforcing technology ownership, non-disclosure and non-competition agreements. Agreements Drafting Litigation Services, PCT(Patent Co-operative Treaty), IPR Valuation, securing Trade secrets, protecting IC Layouts, protection of Geographical Indications, Parallel Imports, Unfair trade practices, Technology transfer, Franchising, Anti-counterfeiting, Joint venture, Solving internet related disputesand disputes and portfolio management.

Important Links-

Trademark Registration in India

    Trademarks can be registered for logos, brand names, sound, shapes, images, trade dress, packaging, a website, and anything else that can be graphically represented. Securing exclusive brand name and building its value for the goods or services that your business provides is essential. Legally trademarks, brand names are necessary to be secured to protect goodwill of your business. Strategically designed brand name and trademark certainly creates good value for the business and rewards the industrialist in the long term. Brand names are registered in different classes of goods, services and textile marks as specified in Rule 20 of Trade Marks Rules, 2017 (Annexure I). An individual, start-up, small enterprise, large enterprise, organization, partnership firm, whoever claims to be the proprietor of the trademark can apply for its registration for goods as well as services.

The application is submitted before the appropriate Trade Marks office under whose jurisdiction the principal place of the business of the Applicant in India falls.There are five (5) Trade Marks Offices whereby a trademark application may be filed. The Offices are situated in:

  • Ahmedabad
  • Chennai
  • Kolkata
  • Mumbai
  • New Delhi

In case, the principal place of business is outside India, then the application can be filed before the Trade Marks office under whose jurisdiction the office of the agent / attorney / lawyer appointed is located. Registration of a trademark is valid for a period of ten (10) years; such registration can be renewed for further period of ten (10) years with no limit on number of renewals to be filed. The renewal of registration of a trademark may be filed on payment of prescribed fees and the application is to be submitted in prescribed format.

Advantages of securing Trademark are

  • Identification of business.
  • Creation of goodwill
  • Easy to claim right on the mark, in case of any dispute
  • Creation of brand value
  • Can prove a strategic asset while escalating business

LEGISLATION

The Trade Marks Act, 1999

Trade Marks Amendment Act, 2010

The Trade Marks Rules, 2017

Steps for registration of trademark-

  • Search
  • Filing of application before the Trademark Registry having offices at different locations in India
  • Examination by Trademark Registry
  • Objections raised by Trademark Registry if any
  • Reply to Objections
  • Hearing before the Trademark Registry
  • Publication in Trademark Journal
  • In case of any oppositions- opposition hearing or
  • Registration of Trademark

Patents

A Patent is an exclusive right granted by government, for limited duration against the disclosure of an invention by the inventor. Under the feature of Patent, the useful features of a process or products satisfying the tests of novelty and inventive steps are protected. Moreover, the main criteria for protection are that the patent to be registered has to be new, non-obvious and capable for industrial application.

The application for patent registration can be in the name of individual or in the name of organization where or for the inventor works. Being a jurisdictional right the applicant needs to file application in the respective country. Under the patent Co-operation Treaty, the inventor can take PCT route to submit patent application in his home country and later on, he can go ahead with patent application in other countries. This is called as entry into National Phase PCT Patent Application. Foreign inventor can file patent application for grant of rights in India by firstly filing application in his home country and then by filing application in India within 12 months from the date of filing in his home country.

The period from the date of filing the exclusive rights granted in India to the inventor of new products is for 20 years date of filing. Patent is granted for products which includes Food, Medicine, Drug and Chemical products permitted. Patent is also granted to a Computer Programme having combination with hardware for its technical application to industry that satisfies definition of an invention. After filing of an application ordinarily it is not open public till eighteen months from the date of filing of application or from the date of priority, whichever is earlier. Once published it becomes open to public.

Legislation-

The Patents Act, 1970

The Patents Rules, 2003

The Patents (Amendment) Rules 2006

The Patents (Amendment) Rules 2016

Steps for registration of Patent

  • Search
  • Filing of application before the appropriate Registry
  • Application for publication, Examination Registry
  • First Examination Report,
  • Compliance with all requisites and objections raised by the controller within six months from date of First Examination Report, by the applicant
  • In pre-grant opposition for grant of Patent, opposing party can represent on limited grounds within three months from the date of publication of application
  • Hearing before the controller of Patents,
  • Registration. Grant of Patent will be published by the Controller and the application, specification and other documents will be open for public inspection.
  • Post grants oppositions, within one year of grant

Copyrights

In India, copyright protection is awarded to original Literary, Dramatic, Musical, Artistic Works; Cinematographic Films; Sound recordings; and Computer Programs. The Indian Copyright Act 1957 governs copyright protection in India. India is signatory to the Berne Convention and the Universal Copyright Convention. The Central Copyright office is at Delhi.

It is not mandatory to claim copyright but practically it is useful in legal proceedings to establish the right and especially in the suits for infringement of copyright.

Legislation-

The Indian Copyright Act 1957

The Copyright Rules, 2013

Steps for registration of COPYRIGHT

  • Filing of application before the appropriate Registry
  • Examination by the office
  • Examination Report
  • Compliance with all requisites and objections raised by the office
  • Hearing
  • Registration.

Industrial Design

Protection to shapes, patterns, composition of colours, lines and shapes of any article, machine, and creating aesthetic value to the article that can only be visually judged are some of the items which come under Industrial Design registration. The corporations/ individuals having machinery, industrial articles and equipments; having unique, distinct, novel design, pattern and appearance and design, can apply for its registration under Indian Design Act, to restrict others from copying or duplicating them. The Design Office is located at Kolkata. The Design Registration is for the duration of 15 years. The applications can be ordinary application and convention application The design registration confers exclusive rights to the applicant for the designated design in the class in which the design is registered.

In case of infringement, an owner of registered design can opt for civil litigation whereas the Design Act does not provide Criminal remedy.

Legislation-

Designs Act 2000

Design Amendment Rules 2008

Design Amendment Rules 2014

Steps for registration of DESIGN

  • Filing of application before the appropriate Registry
  • Examination by the office
  • Examination Report,
  • Compliance with all requisites and objections raised by the office
  • Hearing
  • Registration.
  • Franchising
  • infringement proceeding, legal enforcement against piracy
  • due diligence
  • Conducting audits;

Geographical Indications

The Geographical Indications of Goods (Registration and Protection) Act, 1999 alongwith the Geographical Indications of Goods (Registration and Protection) Rules 2002, enforced with effect from September 15, 2003; provides the registration and better protection of geographical indications relating to goods identified as agricultural, natural, manufactured handicraft industry goods including food stuff. The goods should have definite origin from a geographical territory specified in the application. These goods should have reputation, a special quality or other characteristics originating from that territory. For the registration, the indications must fall within the scope of section 2(1)e of the Act. The duration for registration is for 10 years and thereafter it can be renewed.

Legislation-

The Geographical Indications of Goods (Registration & Protection) Act, 1999

The Geographical Indications of Goods (Registration & Protection) Rules, 2002

Domain Name

A Domain Name is an IP address, which performs the same functions online, which a trademark serves in the offline. A bad faith registration of another’s trademark/ trading style as a domain name by another entity constitutes the offence of cyber squatting. As a remedy to this offence, a complaint can be filed before dispute resolution authority for transfer of the domain name to the rightful owner.

Steps for registration of Domain Name

  • Registration and maintenance of domain names.
  • Drafting & Filing Applications for cancellation/ transfer of domain names before various registries for preventing cyber squatting activities.

Arresting Counterfeiting & Parallel Imports

To prevent counterfeit or parallel imported products entering the country, an IPR may be registered with Customs. Under this process, once a suspicious consignment (bearing the registered IPR) arrives at any port, the customs authorities defers the release of the consignment and intimates the right holder to enable him to check and confirm if the consignment is an offending one, and weeds out counterfeit products in the process.

Steps for registration of IP Rights

  • Registration of IP Rights with Customs Authorities and taking interim measures on receiving intimation of arrival of suspicious consignment.