IPR CONSULTANCY SERVICE:
LAW DESK INDIA is a well recognized, reputed, legalistic approached, skilled and professionally managed law firm based in Kochi, Kerala, India,provide Intellectual Property Laws consultancy service especially quick and fast trademark registration service in india. Our exposures at include all IP matters, with more extensive area of expertise in filing, prosecuting and registering Patents, Trade Marks, Industrial Designs and Copyrights including renewals, licensing and enforcement in entire Intellectual Property rights registry in india.
WHAT IS MEANT BY INTELLECTUAL PROPERTY?
Intellectual Property is the Property, which has been created by exercise of Intellectual Faculty. It is the result of persons Intellectual Activities. Thus Intellectual Property refers to creation of mind such as inventions, designs for industrial articles, literary, artistic work, symbols which are ultimately used in commerce. Intellectual Property rights allow the creators or owners to have the benefits from their works when these are exploited commercially. These rights are statutory rights governed in accordance with the provisions of corresponding legislations. Intellectual Property rights reward creativity & human endeavor which fuel the progress of humankind. The intellectual property is classified into seven categories i.e . (1) Patent (2) Industrial Design (3) Trade Marks (4) Copyright (5) Geographical Indications (6) Lay out designs of integrated circuits (7) Protection of undisclosed information/Trade Secret according to TRIPs agreements.
IPR LAW FIRM IN INDIA : LAW DESK INDIA is a full service Intellectual Property Law Firm in India, providing quality legal services exclusively customized to congregate the requirements of both inbound and outbound clients. Our exposures at include all IP matters, with more extensive area of expertise in filing, prosecuting and registering Patents, Trade Marks, Industrial Designs and Copyrights including renewals, licensing and enforcement in entire Intellectual Property rights registry in india
TRADEMARKS SERVICE IN INDIA
What is a TRADEMARK?
A TRADE MARK (popularly known as brand name) in simple language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. In other words, A TRADE MARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others.
What are procedures for registration of TRADE MARK?
In India, the procedures of Trade mark registration are covered under the provisions of The Trade Marks Act, 1999 and The Trade Marks Rules, 2002. Mumbai, Delhi, Kolkata, Ahmadabad and Chennai are respective jurisdiction of trade mark registration office in India.
What you mean TRADE MARK SEARCH?
Any person may request the Registrar to cause a search to be made in respect of a trade mark relating to specified goods or services to ascertain whether any mark is on record which resembles the trade mark in respect of which the request is made. Before filing an application for a trademark registration, it is highly advisable to conduct a comprehensive trademark search. A basic trademark search includes registered trademarks and pending applications for trademarks in India.
TIME FRAME FOR TRADEMARK REGISTRATION:
If there is no objection and /or opposition raised, then process of registration of trademark usually takes 1-1.5 years and incase of any objection/opposition proceedings it usually takes approx 3 years.
What are documents needs for Trade mark Registration?
1. Proprietorship concern: Full name and address of the proprietor and true copy of related documents.
2. Partnership concern: full name and address of all partners and true copy of related documents.
3. Company concern: full name and address of all directors and true copy of related documents.
4. If you have claimed that the proposed mark is used since before application, please provide evidence for your claim.
5. Please provide label (25 number) of the proposed Trade mark(Label size 9cm x 5 cm )
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TRADE MARK REGISTRATION LAWS IN INDIA, REGISTER TRADE MARK AS PER INDIAN TRADE MARK LAW ...........................READ MORE
TRADEMARKS CLASSIFICATION OF GOODS AND SERVICES IN INDIA................READ MORE
COPYRIGHT SERVICE IN INDIA
What is copyright?
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 rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work.
Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby protecting and rewarding creativity. Creativity being the keystone of progress, no civilized society can afford to ignore the basic requirement of encouraging the same. Economic and social development of a society is dependent on creativity. The protection provided by copyright to the efforts of writers, artists, designers, dramatists, musicians, architects and producers of sound recordings, cinematograph films and computer software, creates an atmosphere conducive to creativity, which induces them to create more and motivates others to create.
What is the scope of protection in the Copyright Act, 1957?
The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized uses. Unlike the case with patents, copyright protects the expressions and not the ideas. There is no copyright protection for ideas, procedures, methods of operation or mathematical concepts as such
Does copyright apply to titles and names?
Copyright does not ordinarily protect titles by themselves or names, short word combinations, slogans, short phrases, methods, plots or factual information. Copyright does not protect ideas or concepts. To get the protection of copyright a work must be original.
Is it necessary to register a work to claim copyright?
No. Acquisition of copyright is automatic and it does not require any formality. Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright. However, certificate of registration of copyright and the entries made therein serve as prima facie evidence in a court of law with reference to dispute relating to ownership of copyright.
What is the procedure for registration of a work under the Copyright Act, 1957?
The procedure for registration is as follows:
a) Application for registration is to be made on Form IV ( Including Statement of Particulars and Statement of Further Particulars) as prescribed in the first schedule to the Rules ;
b) Separate applications should be made for registration of each work;
c) Each application should be accompanied by the requisite fee prescribed in the second schedule to the Rules ; and
d) The applications should be signed by the applicant or the advocate in whose favor a Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by the party and accepted by the advocate should also be enclosed.
Each and every column of the Statement of Particulars and Statement of Further Particulars should be replied specifically.
Whether unpublished works are registered?
Yes. Both published and unpublished works can be registered. Copyright in works published before 21st January, 1958, i.e., before the Copyright Act, 1957 came in force, can also be registered, provided the works still enjoy copyright. Three copies of published work may be sent along with the application. If the work to be registered is unpublished, a copy of the manuscript has to be sent along with the application for affixing the stamp of the Copyright Office in proof of the work having been registered. In case two copies of the manuscript are sent, one copy of the same duly stamped will be returned, while the other will be retained, as far as possible, in the Copyright Office for record and will be kept confidential. It would also be open to the applicant to send only extracts from the unpublished work instead of the whole manuscript and ask for the return of the extracts after being stamped with the seal of the Copyright Office.
When a work has been registered as unpublished and subsequently it is published, the applicant may apply for changes in particulars entered in the Register of Copyright in Form V with prescribed fee.
The process of registration and fee for registration of copyright is same.
How can I get copyright registration for my Web-site?
A web-site contains several works such as literary works, artistic works (photographs etc.), sound recordings, video clips, cinematograph films and broadcastings and computer software too. Therefore, a separate application has to be filed for registration of all these works.
How long I have to wait to get my work to get registered by the Copyright office?
After you file your application and receive diary number you have to wait for a mandatory period of 30 days so that no objection is filed in the Copyright office against your claim that particular work is created by you. If such objection is filed it may take another one month time to decide as to whether the work could be registered by the Registrar of Copyrights after giving an opportunity of hearing the matter from both the parties.
If no objection is filed the application goes for scrutiny from the examiners. If any discrepancy is found the applicant is given 30 days time to remove the same. Therefore, it may take 2 to 3 months time for registration of any work in the normal course. The cooperation of the applicant in providing necessary information is the key for speedy disposal the matter.
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COPYRIGHTS Registration of Literary, Dramatic, Musical and Artistic Works and Producers of Cinematograph Films and Sound Recordings ...........................READ MORE
PATENT SERVICE IN INDIA:
What is a Patent?
A Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.
Does Indian Patent give protection worldwide?
Patent protection is territorial right and therefore it is effective only within the territory of India. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no patent valid worldwide.
Is it possible to file international application under Patent Cooperation Treaty (PCT) in India?
It is possible to file an international application known as PCT application in India in the Patent Offices located at Kolkata, Chennai, Mumbai and Delhi. All these offices act as Receiving Office (RO) for International application.
What can be patented?
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under section 3 and 4 of the Act.
Who can apply for a patent?
A patent application can be filed either by true and first inventor or his assignee or patent agent, either alone or jointly with any other person. However, legal representative of any deceased person can also make an application for patent.
How can I apply for a patent?
A patent application can be filed with Indian Patent Office either with complete specification or with provisional specification along with fee as prescribed in schedule I. In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the application. There is no extension of time to file complete specification after expiry of said period.
What are the criteria of patentability?
An invention to become patentable subject matter must meet the following criteria -
i) It should be novel.
ii) It should have inventive step or it must be non-obvious
iii) It should be capable of Industrial application.
iv) It should not fall within the provisions of section 3 and 4 of the Patents Act 1970.
Should application for patent be filed before or after, publication of the details of the invention?
The application for patent should be filed before the publication of the invention and till then it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication. However, under certain conditions, there is grace period of 12 months for filing application even after publication.
Can any invention be patented after publication or display in the public exhibition?
Generally, a patent application for the invention which has been either published or publicly displayed cannot be filed. However the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in a exhibition organised by the Government or disclosure before any learned society or published by applicant. The details conditions are provided under Chapter VI of the Act (Section 29-34).
How a Patent Specification is prepared?
A patent specification can be prepared by the applicant himself or his registered and authorized agent. The patent specification generally comprises of the title of the invention indicating its technical field, prior art, draw backs in the prior art, the solution provided by the inventor to obviate the drawbacks of the prior art, a concise but sufficient description of the invention and its usefulness, drawings (if Any) and details of best method of its working. The complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought for.
What is a provisional specification?
Indian Patent Law follows first to file system. Provisional specification describes the nature of the invention to have the priority date of filing of the application in which the inventive idea has been disclosed. It must be followed by a complete specification describing the details of the invention along with a statement of claims within 12 months after filing of the provisional application. If the complete specification is not filed within the prescribed period, the application is treated as deemed to have been abandoned
Is it necessary to file a provisional application?
Generally, an application filed with provisional specification is known as provisional application which is useful in establishing a priority date for your invention. Moreover, filing of a provisional application is useful as it gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification. However, it is not necessary to file an application with provisional specification and one can file application directly with complete specification.
Does the Patent Office Keep information of the invention Secret?
Yes. All the patent applications are kept secret upto 18 months from the date of filing or priority date whichever is earlier and thereafter they are published in the Official Journal of the Patent Office which is published every week and also available on the IPO website. After its publication, public can inspect the documents and also may take the photocopy thereof on payment of the fee as prescribed.
When an application for patent is published?
Every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published.
A) Application in which secrecy direction is imposed
B) Application which has been abandoned u/s 9(1) and
C) Application which has been withdrawn 3 months prior to 18 months
Is there any provision in the law for early publication?
Yes, the applicant can make a request for early publication in Form 9 along with the prescribed fee. After receiving such request the Patent Office publishes such application within a period of one month provided the invention contained thereon does not relate to atomic energy or defence purpose.
Is patent application once filed is examined automatically?
The patent application is not examined automatically after its filing. The examination is done only after receipt of the request of examination either from the applicant or from third party.
When the request for examination can be filed?
The request for examination can be filed within a period of 48 months from the date of priority or date of filing of the application whichever is earlier. For more details kindly refer to rule 24B of the Patents Rules 2003 as amended upto 2006.
Is there any provision for early examination?
There is no provision for filing a request for early examination. The applications are examined in the order in which requests for examination are filed. However, an express request for examination before expiry of 31 months can be made in respect of the applications filed under Patent Cooperation Treaty known as National Phase applications by payment of the prescribed fee.
What happens to a patent application once it is examined?
After examination, the Patent office issues an examination report to the applicant which is generally known as First Examination Report (FER). Thereafter the applicant is required to comply with the requirements within a period of twelve months from the date of FER. In case, the application is found to be in order for grant, the patent is granted, provided there is no pre-grant opposition is filed or pending. A letter patent is issued to the applicant. However, in case a pre-grant opposition is pending, the further action is taken after disposition of the pre-grant opposition.
What happens when applicant is not able to meet the requirement within the prescribed time?
If the applicant is not able to comply with or meet the requirement within 12 months, or does not submit the documents which were sent to him for compliance within the said period, the application is deemed to have been abandoned.
Is there provision for extension beyond time limit of 12 months?
There is no provision for extension of time beyond the period of 12 months.
Does applicant get an opportunity of being heard before his application is refused?
If applicant has not complied with the requirements within the prescribed time, and no request for hearing has been made by the applicant, the controller may not provide the opportunity of being heard. However the Controller shall provide an opportunity of being heard to the applicant before refusing his application if a request for such hearing has been made by the applicant at least 10 days in advance before expiry of the statutory period.
What are the various stages involved in the grant of patent?
After filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third party and thereafter it is taken up for examination by the Patent office. Usually, the First Examination Report is issued and the applicant is given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned. When all the requirements are met, the patent is granted and notified in the Patent office Journal. However before the grant of patent and after the publication of application, any person can make a representation for pre-grant opposition.
What is time limit for filing the representation for pre-grant opposition?
A representation for pre-grant opposition can be filed within six months from the date of publication of the application u/s 11A or before the grant of patent. The grounds on which the representation can be filed are provided u/s 25(1) of the Patents Act 1970.
Is there any fee for filing such representation for pre-grant opposition?
There is no fee for filing representation for pre-grant opposition? This can be filed by any person.
What are the grounds for filing representation for pre-grant opposition?
The grounds for filing post-grant opposition are contained in section 25(1) of the Patents Act 1970.
Is it possible to file pre-grant opposition even though there is no request for examination filed?
Yes, it is possible to file representation for pre-grant opposition even though there is no request for examination has been filed. However, the representation will be considered only when a request for examination is received within the prescribed period.
What is the time limit for filing post-grant opposition in the patent office?
The time for filing post-grant opposition is 12 months from the date of publication of the grant of patent in the official journal of the patent office.
Is there any fee for filing post-grant opposition?
The post grant opposition has to be filed in the prescribed form 7 along with prescribed fees of Rs.1500 for natural person and Rs.6000 for person other than natural person. The post grant opposition has to be filed by the person interested and not by any other person.
What are the grounds for filing the post grant opposition?
The grounds for filing post-grant opposition are contained in section 25(2) of the Patents Act 1970.
Is it necessary to go to the Indian Patent Office to transact any business relating to patent application?
No, normally all the communications with the office are done through written correspondence. However, interviews relating to patent application can be had with examiners with prior appointment on any working day during prosecution stage.
Where the information relating to patent application is notified?
The information relating to the patent application is published in the Patent office Journal issued on every Friday. This is also available in electronic form on the website of the Patent Office
What are the contents of the Patent office Journal?
The Patent office Journal contains information relating to patent applications which are published u/s 11A, post grant publication, restoration of patent, notifications , indexes, list of non-working patents and notices Issued by the Patent Office relating to Patents, etc..
Can one use the words "Patent Pending" or "Patent Applied For"?
These words are normally used by the patent applicant to their products after filing his application for patent so that the public is made aware that a patent application has been filed in respect of that invention. Use of these words where no application has been made is prohibited under the Patent law. However, use of such words by the patent applicant does not prohibit the third party to plead as innocent unless the patent number is indicated.
How useful is the marking of a product with "patent pending" or "patent applied for" before the grant?
Marking of a product with the words “patent pending” or “Patent applied for” after filing of the application for patent serve as a notice to the public that an application for patent is pending with the Patent Office but there is no legal significance of these words. The infringement action can be initiated only after the patent is granted.
Does patent office help in finding users for patent?
The Patent Office has no role in the commercialization of patent. However, the information relating to patent is published in the Patent Office journal and also published on the Patent Office website which is accessible to the public worldwide. This certainly helps the applicant to attract potential user or licensee. The patent office also compiles a list of patents which are not commercially worked in India.
How can one find out that an invention is already patented?
The person concerned can perform a preliminary search on Patent Office website in the Indian patent data base of granted patent or Patent Office journal published every week or by making search in the documents kept in the Patent Office Search and Reference Room, which contains Indian patents arranged according to international patent classification system as well in serial number. It is open to the general public from Monday to Friday, except Gazetted holidays. The public can also conduct search free of charge on the website of Patent Office. The person concerned can also make a request for such information under section 153 of the Act
What is the term of patent?
Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date.
Is there any difference in the amount of fees to be paid by an individual or a legal entity for filing a patent application?
Yes, the application filing fees for an individual person(natural person) is Rs.1, 000/- and for a legal entity other than individual is Rs.4, 000/- upto 10 claims and 30 pages. However, in case, the number of pages exceed beyond 30, then natural person has to pay Rs.100/- each extra page and person other than natural person has to pay Rs.400/- per page. Similarly if the number of claims exceed beyond 10, then natural person has to pay Rs.200/- for each additional claim and person other than natural person has to pay Rs.800/- for each additional claim.
What are obligations of the patentee after the grant of patent?
After the grant of patent, every patentee has to maintain the patent by paying renewal fee every year as prescribed in the schedule I. For first two years, there is no renewal fee. The renewal fee is payable from 3rd year onwards. In case the renewal fee is not paid the patent will be ceased.
Can the patentee pay renewal fee at a time or has to pay every year?
The patentee has choice to pay the renewal fees every year or he can pay in lump sum as well.
When a patent can be restored after its cessation ?
A request for restoration of patent can be filed within 18 months from the date of cessation of patent along with the prescribed fee. After receipt of the request the matter is notified in the official journal for further processing of the request.
Is it mandatory to obtain prior permission from the Patent Office to file application for patent outside India or abroad!
Generally speaking, it is not necessary to obtain prior permission from the Patent Office to file patent application abroad under following circumstances.
(a) Applicant is not Indian resident and invention is originated abroad about.
(b) If the applicant is Indian resident, a patent application has been filed in India and six weeks period is over from that date.
(c) The invention does not belong to Atomic Energy or defence purpose.
In other circumstances, the prior permission is required. For further details kindly refer to section 39 of the Patents Act, 1970.
Under what circumstances, it is necessary to obtain a prior permission from the Patent Office?
The person is required to take prior permission from the Patent Office under following circumstances.
(a) The applicant is Indian resident and invention is originated in India,
(b) Applicant does not wish to file patent application in India prior to filing abroad.
(c) If the applicant is Indian resident, a patent application has been filed in India and six weeks period is not yet over from that date
(d) The invention relates to atomic energy or defence purpose.
Is it essential to deposit biological material in the international depository authority!
If the invention uses a biological material which is new, it is essential to deposit the same in the International Depository Authority (IDA) prior to the filing of the application in India in order to supplement the description. The description in the specification should contain the name and address of the International Depository Authority and, date and number of deposition of Biological material. If such biological material is already known, in such case it is not essential to deposit the same.
Is there any International Depository Authority in India!
Yes, there is an International Depository Authority in India located at Chandigarh which is known as Institute of Microbial Technology (IMTECH).
PATENT SERVICE IN INDIA : LAW DESK INDIA IS PROVIDE PATENT SERVICE IN INDIA WITH MORE EXTENSIVE AREA OF EXPERTISE IN FILING, PROSECUTING AND REGISTERING PATENT LAWS..
DESIGN REGISTRATION SERVICE IN INDIA:
What is meant by ‘Design’ under the Designs Act, 2000 ?
‘Design’ means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle or construction or any thing which is in substance a mere mechanical device, and does not include any trade mark, as define in clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957.
What is meant by an article under the Designs Act, 2000 ?
Ans. Under the Designs Act, 2000 the "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;
What is the object of registration of Designs?
Object of the Designs Act to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.
What are the essential requirements for the registration of ‘design’ under the Designs Act, 2000?
(1) The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to new subject matter. Practical example:
The known shape of "Kutub Minar" when applied to a cigarette holder the same is registrable. However, if the design for which application is made does not involve any real mental activity for conception, then registration may not be considered.
(2) The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Thus, designs of industrial plans, layouts and installations are not registrable under the Act.
(3) The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act.
(4) The features of the design in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state.
(5) Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device, would not be registrable design. For instance a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect there of is required to be inserted on its representation, provided there are other registrable features in the design.
(6) The design should not include any Trade Mark or property mark or artistic works as define under the Copyright Act, 1957.
Can stamps. Labels, tokens, cards, be considered an article for the purpose of registration of Design?
No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to an article should be integral with the article itself.
When does the Applicant for Registration of Design get the registration certificate?
When an application for registration of a Design is in order, it is accepted and registered and then a certificate of registration is issued to the applicant.
However, a separate request should be made to the Controller for obtaining a certified copy of the certificate for legal proceeding with requisite fee.
What is a Register of Designs?
The Register of Designs is a document maintained by The Patent Office, Kolkata as a statutory requirement. It contains the design number, class number, date of filing (in this country) and reciprocity date (if any), name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.
What is the effect of registration of design?
The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.
What is the duration of the registration of a design? Can it be extended?
The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date.
This initial period of registration may be extended by further period of 5 years on an application made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Copyright.
The proprietor of a design may make application for such extension even as soon as the design is registered.
What is the date of registration?
The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.
Is it possible to re-register a design in respect of which Copyright has expired?
No. A registered design, the copyright of which has expired cannot be re-registered.
How one can ascertain whether registration subsists in respect of any design?
For ascertaining whether registration subsists in respect of a design, a request should be made to the Patent Office, Kolkata. If the serial number of the registered design is known, the request should be made on Form 6, otherwise on Form 7, together with fee of Rs. 500/- or Rs. 1,000/- respectively. Each such request should be confined to information in respect of a single design.
What is piracy of a Design?
Piracy of a design means the application of a design or its imitation to any article belonging to class of articles in which the design has been registered for the purpose of sale or importation of such articles without the written consent of the registered proprietor. Publishing such articles or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.
What is the penalty for the piracy of a registered Design?
If anyone contravenes the copyright in a design he is liable for every offence to pay a sum not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/- recoverable as contract debt in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for injunction against repetition of the same. Total sum recoverable shall not exceed Rs. 50,000/-as contract debt as stated in Section 22(2)(a). The suit for infringement, recovery of damage etc should not be filed in any court below the court of District Judge.
Is marking of an article compulsory in the cases of article to which a registered design has been applied?
Yes, it would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or unless the registered proprietor show that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.
Can the Registration of a Design be cancelled ?
The registration of a design may be cancelled at any time after the registration of design on a petition for cancellation in form 8 with a fee of Rs. 1,500/-to the Controller of Designs on the following grounds:
That the design has been previously registered in India or
That it has been published in India or elsewhere prior to date of registration or
The design is not new or original or
Design is not registrable or
It is not a design under Clause (d) of Section 2.
Is it mandatory to make the article by industrial process or means before making an application for registration of design ?
No, design means a conception or suggestion or idea of a shape or pattern which can be applied to an article or intended to be applied by industrial process or means. Example- a new shape which can be applied to a pen thus capable of producing a new appearance of a pen on the visual appearance. It is not mandatory to produce the pen first and then make an application.
Why is it important for filing the application for registration of design at the earliest possible ?
First-to-file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates only first application will be considered for registration of design.
Can the same applicant make an application for the same design again, if the prior application has been abandoned ?
Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.
How to get information on registration of design ?
After registration of designs the most relevant view(s) of the article alongwith other bibliographic data will be available in the official gazette, which is being published on every Saturday. However, such provision cannot be implemented at this stage due to insufficient infrastructure.
Whether it is possible to transfer the right of ownership ?
Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc. An application in form-10, with a fee of Rs. 500/- in respect of one design and Rs. 200/- for each additional design, for registration of the transfer documents is required to be made by the beneficiary to the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarized copy of the instrument to be registered is required to be enclosed with the application.
What is meant by priority claim ?
India is one of the countries party to the Paris Convention so the provisions for the right of priority are applicable. On the basis of a regular first application filed in one of the contracting state, the applicant may within the six months apply for protection in other contracting states, latter application will be regarded as if it had been filed on the same day as the first application.
How it is possible to restore the lapse design due to non-payment of extension fee within prescribed time ?
a registration of design will cease to be effective on non-payment of extension fee for further term of five years if the same is not paid before the expiry of original period of 10 years. However, new provision has been incorporated in the Act so that lapsed designs may be restored provided the following conditions are satisfied:
Application for restoration in Form-4 with fee of Rs. 1,000/- is filed within one year from the date of lapsed stating the ground for such non-payment of extension fee with sufficient reasons.
If the application for restoration is allowed the proprietor is required to pay the extension fee of Rs. 2,000/- and an additional fee of Rs. 1,000/- and finally the lapsed registration is restored.
Can the name, address of proprietor or address for service be altered in the register of design ?
Name of the registered proprietor, address or address for service can be altered in the register of designs provided this alteration is not made by way of change of ownership through conveyance i.e. deed of assignment, transmission, licence agreement or by any operation of law, for which reference may be made to the answer against Q. 21. Application in form-22 with a fee of Rs. 200/- should be filed to the Controller of Designs with all necessary documents in support of the application as required.
Are the registered designs open for public inspection ?
Yes, registered designs are open for public inspection only after publication in the official gazette on payment of prescribed fee of Rs. 500/- on a request in Form-5.
Can the application for registration of design be filed by the applicant himself only or through a professional person ?
The application for registration of design can be filed by the applicant himself or through a professional person (i.e. patent agent, legal practitioner). However, for the applicants not resident of India an agent residing in India has to be employed.
How does a registration of design stop other people from exploiting ?
Once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it may please be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000.
What are the important criteria for determining a "set of article" ?
If a group of articles meets the following requirements then that group of articles may be regarded as a set of articles under the Designs Act, 2000:
Ordinarily on sale or intended to be used together.
All having common design even though articles are different (same class).
Same general character.
Generally, an article having the same design and sold in different sizes is not considered as a set of articles. Practical example: "Tea set", "Pen set", "Knife set" etc.
What is an artistic work which are not subject matter of registration ?
An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration which reads as follows:
"Artistic works" means: -
A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality.
An work of architecture and
Any other work of artistic craftsmanship.
What is meant by classification of goods mentioned in the Third Schedule ?
In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. This classification has been made on the basis of Articles on which the design is applied.
Practical Example: If the design is applied to a toothbrush it will be classified under class 04-02. Similarly if the design is applied to a calculator, it will be classified in class 18-01. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible, but period of registration will be valid only upto period of previous registration of same design.
What is meant by Property mark as per the Indian Penal Code (Sec. 479) ?
A mark used for denoting that movable property belongs to a particular person is called a property mark. It means that marking any movable property or goods, or any case, package or receptacle containing goods; or using any case, package or receptacle, with any mark thereon.
Practical example: The mark used by the Indian Railway on their goods may be termed as a Property Mark for the purpose of easy identification of the owner.
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GEOGRAPHICAL INDICATION SERVICE IN INDIA:
Every region has its claim to fame. Christopher Columbus sailed from Europe to chart out a new route to capture the wealth of rich Indian spices. English breeders imported Arabian horses to sire Derby winners. China silk, Dhaka muslin,Venetian Glass all were much sought after treasures. Each reputation was carefully built up and painstakingly maintained by the masters of that region, combining the best of Nature and Man, traditionally handed over from one generation to the next for centuries. Gradually, a specific link between the goods and place of production evolved resulting in growth of geographical indications.
In December 1999, the Parliament had passed the Geographical Indications of Goods (Registration and Protection) Act,1999. This Act seeks to provide for the registration and better protection of geographical indications relating to goods in India. The Act would be administered by the Controller General of Patents, Designs and Trade Marks- who is the Registrar of Geographical Indications. The Geographical Indications Registry would be located at Chennai.
1. What is a Geographical Indication?
Ø It is an indication
Ø It originates from a definite geographical territory.
Ø It is used to identify agricultural, natural or manufactured goods
Ø The manufactured goods should be produced or processed or prepared in that territory.
Ø It should have a special quality or reputation or other characteristics
2. Examples of possible Indian Geographical Indications. Basmati Rice Darjeeling Tea
Ø Kanchipuram Silk Saree
Ø Alphanso Mango
Ø Nagpur Orange
Ø Kolhapuri Chappal
Ø Bikaneri Bhujia
Ø Agra Petha
3. What is the benefit of registration of geographical indications?
Ø It confers legal protection to Geographical Indications in India
Ø Prevents unauthorised use of a Registered Geographical Indication by others
Ø It provides legal protection to Indian Geographical Indications which in turn boost exports.
Ø It promotes economic prosperity of producers of goods produced in a geographical territory.
4. Who can apply for the registration of a geographical indication?
Ø Any association of persons, producers, organisation or authority established by or under the law can apply:
Ø The applicant must represent the interest of the producers
Ø The application should be in writing in the prescribed form
Ø The application should be addressed to the Registrar of Geographical Indications alongwith prescribed fee.
5. Who is a registered proprietor of a geographical indication?
Ø Any association of persons, producers,organisation or authority established by or under the law can be a registered proprietor.
Ø Their name should be entered in the Register of Geographical Indication as registered proprietor for the Geographical Indication applied for.
6. Who is an authorised user?
Ø A producer of goods can apply for registration as an authorised user
Ø It must be in respect of a registered geographical indication
Ø He should apply in writing in the prescribed form alongwith prescribed fee
7. Who is a producer in relation to a Geographical Indication?
Ø The persons dealing with three categories of goods are covered under the term Producer:
Ø Agricultural Goods includes the production, processing, trading or dealing
Ø Natural Goods includes exploiting, trading or dealing
Ø Handicrafts or Industrial goods includes making, manufacturing, trading or dealing.
Ø Is a registration of a geographical indication compulsory and how does it help the applicant?
8. Registration is not compulsory
Ø Registration affords better legal protection to facilitate an action for infringement
Ø The registered proprietor and authorised users can initiate infringement actions
Ø The authorised users can exercise the exclusive right to use the geographical indication.
9. Who can use the registered geographical indication?
Ø An authorised user has the exclusive rights to the use of geographical indication in relation to goods in respect of which it is registered.
10. How long the registration of Geographical Indication is valid?
Ø The registration of a geographical indication is valid for a period of 10 years
11. Can a Geographical Indication be renewed?
Ø It can be renewed from time to time for further period of 10 years each.
12. What is the effect if a Geographical Indication if it is not renewed?
Ø If a registered geographical indication is not renewed it is liable to be removed from the register.
13. When is a registered Geographical Indication said to be infringed?
Ø When an unauthorised user uses a geographical indication that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner which mislead the public as to the geographical origin of such goods.
Ø When the use of geographical indication result in an unfair competition including passing off in respect of registered geographical indication.
Ø When the use of another geographical indication results in false representation to the public that goods originate in a territory in respect of which a registered geographical indication relates.
14. Who can initiate an infringement action?
Ø The registered proprietor or authorised users of a registered geographical indication can initiate an infringement action.
15. Can a registered geographical indication be assigned, transmitted, etc?
Ø No. A geographical indication is a public property belonging to the producers of the concerned goods.
Ø It shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or such other agreement
Ø However, when an authorised user dies, his right devolves on his successor in title.
16. Can a registered geographical indication or a registered authorised user be removed from the register?
Ø Yes. The Appellate Board or the Registrar of Geographical Indications has the power to remove the geographical indication or an authorised user from the register. Further, on application by an aggrieved person action can be taken.
17. How a geographical indication is different from a trade mark?
Ø A trade mark is a sign which is used in the course of trade and it distinguishes goods or services of one enterprise from those of other enterprises.
Ø Whereas a geographical indication is an indication used to identify goods having special characteristics originating from a definite geographical territory.
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