INTELLECTUAL PROPERTY RIGHTS IN INDIA :

PROTECTION & ENFORCEMENT

Geeta Dalal, Partner

MARS & Partners

International Legal Consultants

Geeta Dalal, Partner © 1

INTELLECTUAL PROPERTY RIGHTS IN INDIA

 MEANING – Grant of exclusive rights for a certain

period over intangible assets created through human
skill, intelligence, labour and effort

 CHIEF COMPONENTS –

1) Copyright
2) Trademark
3) Patent
4) Industrial Designs
5) Geographical indications
6) Semi-conductors (Layout-Designs
(Topographies) of Integrated Circuits)
7) Plant Variety & Bio-Diversity

Geeta Dalal, Partner © 2

 IPR PROTECTION MECHANISM IN INDIA

SALIENT FEATURES

 In conformity with International standards and as amended from time to time,

the Indian laws provide for both civil and criminal liability;

 Protection available to both registered as well as unregistered IPRs through

civil suits, temporary / permanent injunction, arrest, penalty, damages,
compensation etc.;

 Criminal remedy more effective than civil proceedings;

 Signatory to International Convention & treaties, i. e.

1. Paris Convention, 1883 for protection of patents, trademarks, designs,

etc;
2. Berne Convention, 1886 for protection of Literary and Artistic Works -
copyright;
3. Patent Cooperation Treaty (PCT);
4. TRIPS; etc.

Geeta Dalal, Partner © 3

GOVERNING STATUTES & TERM OF PROTECTION

 Under Copyright Act, 1957 – Lifetime + 60 yrs., for Natural entity and
50 yrs. from publication for Artificial Entity;
 Under Patents Act, 1970 – 20 year, renewable;
 Under Trademarks Act, 1999 – 10 year, renewable;
 Under Designs Act, 2000 - 10 year + 5 year extension;
 Under Geographical Indications of Goods (Registration and Protection)
Act,1999 – 10 Years;
 Under Protection of Plant Variety & farmer’s Right Act, 2000 –
Maximum 18 years;
 Biological Diversity Act, 2002;
 Under Semiconductor Integrated Circuits Layout Design Act, 2000, 10
year. Act to be implemented hence no protection as of date

Geeta Dalal, Partner © 4

 SNAP SHOT OF LEGAL PROVISIONS

PROTECTION OF PATENTS

 Criminal liability : penalties available under Section 118

 Contravention of Secrecy provisions relating to certain inventions in
cases relating to infringement of Patents
 Failure to comply with Section 35, is punishable with imprisonment for
a term which may extend to two years or with fine or both.

PROTECTION OF DESIGNS :

 Civil Remedies against infringement of Copyright in a design area

a) an injunction,
b) damages or
c) Compensation and delivery up of infringing articles.
 No Provision for criminal proceedings against piracy of designs.
 Unregistered design can be protected under Copyrights Act.

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 COPYRIGHT AND ITS PROTECTION

 Protects copyright owners from piracy and infringement of copyrights.

 Criminal Remedy - Minimum jail term of seven days which can be

extended up to 3 years and fine ranging from Rs. 50,000 to 2 lac

 Provided under Section 55 of the Act, Civil Remedies include

 Injunction,
 Damages or accounts of Profit,
 Delivery up of infringing copies
 Damages for conversion

 Section 64 empower Police to Seize infringed copyright material

Geeta Dalal, Partner © 6

 TRADE MARKS AND ITS PROTECTION

 Trade Marks Act, 1999 awards both civil and criminal remedies

 For registered Trade Mark, civil remedy include

 Suits for infringement under Section 134

 Injunction under Section 135

 For unregistered Trade Mark, Action for Passing Off can be instituted.

 The tort of Passing off reputation, deception and damage the

classical trinity is permitted.

 Similarly, suit for damages and for rendition of Accounts can also be
instituted

Geeta Dalal, Partner © 7

 Thank You

Presented by - Geeta Dalal, Partner

MARS & Partners

International Legal Consultants

A-415,Defence Colony,
New Delhi – 110 024
Ph. + 91 11 46525466 / 77 / 88
Fax: + 91 11 46525455
E-mail: info@marsandpartners.com
Website – http://www.marsandpartners.com/

Geeta Dalal, Partner © 8