29 June 2018
Intellectual Property Protection in India
IP rights are territorial in nature and registrations in Hong Kong are not automatically enforceable in another jurisdiction like India. Hong Kong companies doing business in India are advised to register their IP rights there as soon as practical. Indian legislation covers patents, industrial designs, copyrights, trademarks, geographical indicators, plant varieties, trade secrets, traditional cultural expression and semiconductor circuits.
The Indian government has amended respective IP legislations over the years to conform to international standards, while taking steps to improve its overall IP regime. A step taken by the Indian government under Prime Minister Narendra Modi India in fulfilling this goal was the release of the National Intellectual Property Right Policy in 2016. This National IPR Policy was focussed on IP awareness, rights generation, commercialisation, enforcement, human capital development, legal and legislative reforms, and rights management. The Cell for IPR Promotion and Management was set up by the Department of Industrial Policy and Promotion for the effective implementation of the IPR policy.
Nonetheless, India remains one of the world’s most challenging major economies with respect to protection and enforcement of IP. India’s IP regime was ranked 40th out of 43 jurisdictions in the 5th Global IP Index Report (2016) by Taylor Wessing, immediately trailing China. In the category of trademark, India came in at 42nd and was in the bottom quartile for other categories. Patent protection is also considered a lamented observation in India, particularly in the pharmaceutical area. In the 2018 Special 301 Report, the United States Trade Representative (USTR) identified India as one of the 12 countries under its Priority Watch List, citing a lack of sufficient measurable improvements to India’s IP framework on longstanding and new challenges, which the USTR considered to have negatively affected US right holders over the past year.
Nonetheless, a number of multinational companies seeking to invest in India are positive not just about the economic prospects of the country, but also the rising demand for protection of their IP rights, while the Indian government had made efforts to improve its IP regulatory framework. For example, In June 2017, India made a positive move by eliminating the “novel hardware” requirement in its issuance of the Computer-Related Invention Patent Examination Guidelines. Further, India’s Department of Industrial Policy and Promotion (DIPP) has continued to undertake administrative copyright reforms.
Overview of IP Rights in India
IP matters in India are handled by two different agencies, namely the Office of the Controller General of Patents, Design & Trade Mark (OCGPDTM), also known as Intellectual Property India, and the Copyright Office, both of which are under DIPP of the Ministry of Commerce & Industry. The key information on the main IP rights (Patents, Designs, Trademarks and Copyright) is provided in the table below.
India grants patents to applicants after fully examining that they are patentable inventions with new, non-obvious and useful features. In India, a first-to-file patent system is adopted whereby patents will be granted to the first person who files an application for an invention.
The guiding legislation surrounding patents in India is the Patents Act (1970), which has been amended several times to conform to international standards, including for example, the extension of patent protection period to 20 years. Patent law amendments can be found on the website of OCGPDTM, which is the agency responsible for all matters related to patent registration and administration.
20 years from the filing date with annual fees required.
Registration and Fees
OCGPDTM provides online systems for the search of patents as well as lodging of patent applications. An application for a patent should be filed before the concerned patentable inventions receive any public disclosure, though a 12-month grace period for public disclosure may be allowed under certain circumstances. The relevant forms and schedule of fees for patent registration can be found here.
India is a member of the Paris Convention for the Protection of Industrial Property (Paris Convention), which applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names and geographical indications.
Under the Paris Convention, a first application filed in one of the contracting states may, within 12 months in the case for patents, apply for protection in any other contracting states, with the understanding that subsequent applications will be treated as if they had been filed on the same day as the first application. This framework provides the flexibility for the applicant to decide within 12 months on the countries in which they want to seek patent protection.
Customs enforcement of intellectual property rights (including patents) is governed by the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007. Right holders can notify the customs authorities of the goods allegedly infringing their patent rights. The concerned goods can be detained and seized according to the applicable procedure. Furthermore, the right owner can take the infringement case to the court for adjudication through either civil or criminal proceedings.
A trademark protects signs, symbols, logos, words, sounds or a combination of these elements. It gives an exclusive right to the mark owner over its use with a view to ensuring protection to the right owner.
India has adopted a “first to use” rule for trademark rights, and the first person to use a trademark in India will generally have superior rights to a person who files a trademark application at a later date. Unregistered trademarks may be protected in some cases.
The Trade Marks Act (1999), together with the enabling rules, forms the framework for which trademark protection is administered and enforced in India. The Act was amended in 2010 to conform to international standards.
Trademarks are valid for 10 years from the initial filing date and may be renewed indefinitely for further 10-year periods provided that the required renewal fee is paid for prior to the expiry of the 10-year in question, and that the mark is being used correctly. A registered trademark that has not been used in India for five consecutive years, however, may be subject to cancellation.
Registration and Fees
The Trade Marks Registry, which is headed by the Controller General of Patents, Designs and Trade Marks, administers the Trade Marks Act (1999) and maintain a register of trademarks in order to provide better protection of trademarks for goods and service, as well as prevent fraudulent use of the marks.
Trademark applications must be made to the Trade Marks Registry in the regional office in which the right owner is situated. The relevant forms and fees for trade mark registration can be found here.
India has been a member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) since 2013. With the Madrid Protocol, international application of trademark for protection in several territories can be processed in India through OCGPDTM in one single procedure, saving time and resources.
Customs enforcement of intellectual property rights (including trademarks) is governed by the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007. Right holders can notify the customs authorities of the goods allegedly infringing their rights. The concerned goods can be detained and seized according to the applicable procedure.
Copyright protects intellectual properties such as literary, musical and artistic works, sound recordings, movies and computer software. Generally, the author of a copyright work has the right to reproduce, publish, perform, communicate and adapt his work.
There are a number of laws and regulations surrounding copyright in India, chief of which is the Copyright Act (1957), which has been amended many times to bring it in line with the WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT). In addition, there are the enabling regulations Copyright Rules (2013).
The Indian government has amended the Copyright Act (by way of the Copyright Amendment Act 2012) in order to extend copyright protection in the digital environment, addressing issues like circumvention of technological protection and rights management, as well as liability of internet service providers.
The term for copyright protection varies depending on the nature of the work:
Copyright is an automatic protection and the right arises when the work is created, with no formality needed to complete the right acquisition. For works created in the course of an author's employment under a contract or apprenticeship, however, the employer is considered the first right owner in the absence of any deal or assignment deed to the contrary. Copyright registration is optional but it would be useful to the right owner in the event of taking administrative, civil or criminal remedy against an infringer.
Industrial design is a creation of the shape, configuration, surface pattern, ornamentations or composition of lines or colours, or lines and colours, or a combination thereof in a three- or two-dimensional form in the finished state that gives the impression of aesthetics.
In India, the registration and protection of industrial designs is administered by the Designs Act (2000) and corresponding Designs Rules (2001). The Designs Rules and related amendments largely conform to the international system and take care of the growing of design activities in India. However, India’s Semiconductor Integrated Circuits Layout Designs Act, which is modeled on WIPO standards, remains inactive amid a lack of enabling regulations.
India allows a priority application procedure for industrial design applicants who have filed an earlier application for the same design in another country being a signatory to the Paris Convention for the Protection of Industrial Property, to which India deposited its instrument of accession back in 1998.
The latest amendment to the Designs Rules was done in 2014, which can be found on the website of OCGPDTM.
Valid for 10 years from the filing date, after which the right may be extended by further period of five years on an application accompanied by prescribed fees to the Controller before the expiry of the said initial period of 10 years.
An application for an industrial design can be made directly to OCGPDTM through the completion of a design registration form, while online filing is also enabled. For further information, a 10-step guide to filing an industrial design can be found here, along with other useful forms related to design rights.
Registration of industrial design confers on the registered owner right in the design for the period of registration. The right owner is legally empowered to bring an action against those persons (natural or legal entity) who infringed the design right in a court not lower than district court in India, in order that such right exploitation can be stopped and damage can be claimed.