Protecting Architectural Designs

An Architectural Design is the conceptualization of the elements that comprise a building or a structure. It is the creativity of an architect whose intellectual property is protected by not one, but three IPR regimes. 

In India, Architectural Design is protected by the – 

 

  • Copyright Act, 2012

  • Design Act, 2000

  • Trademark Act, 1999

 

Interestingly, all the aforementioned acts have provisions of protecting an architectural design. However, the protection granted under these regimes depends on the facts and circumstances and varies from case to case. 

 

Copyright Act 

 

Under Section 13 of the Act, copyright is granted to various works, artistic work being one of them. By definition, Artistic Works under section 2 (c) (ii) of the act mean “any building or structure having an artistic character or design, or any model for such building structure.” Therefore, an architectural design being a ‘building, structure or the design of such model’ is granted copyright protection under artistic works. It must however be kept in mind that only original works can be granted copyright protection therefore the architectural design must not be plagiarized.

The author (architect) of the architectural design is also granted moral rights under section 57 of the act. Thus, he has the right to claim authorship of the work and also prevent its distortion. To this end, the author can in most copyright infringement cases ask for an injunction to stop the infringer from using his/her work, however, under section 59 of the act, a remedy for copyright infringement may not available to such artist when construction of the building or structure has commenced.  

Further, under section 52 of the act, architectural designs are subject to the fair use doctrine, therefore, there is no infringement when photos of the protected buildings are taken or when such buildings come in the background in a cinematograph film

In India, copyright protection is granted to works that are original since their inception, therefore Architects do not need to register their architectural design per se, however, they have the option to do the same as it may make their case stronger if there is an infringement. 

Following is a list of the Registration Fes for registering an Architectural Design-

Work Registration Fee
Literary, Dramatic, Musical or Artistic Work Rs.500/- per work

 

Designs Act

As mentioned earlier, an Architectural Design can also be registered with the Designs Act under section 2 (d). The protection granted under the Designs act is quite similar to the Copyright Act as it requires the architectural design to be original. Though unlike the Copyright Act makes it mandatory for the author to register his work.

An Architectural Design can be registered with the Designs Act under the following circumstances-

  1. If it has been registered under classes 25-03 and 25-99 of the Designs Act ;
  2. if it has been produced more than fifty times, and the Copyright Act is no longer applicable. 

Therefore, an architectural design that is either registered under the Designs Act or that has been produced for more than fifty times can only seek infringement protection under the Design Act.  

Fee for registration under the Design Act-

On what payable  Fees for Natural Person For other than Natural Persons either alone or jointly with a natural person
Application for registration under section 5 & 44 Rs.1000 Small entity- Rs. 2000

Other than a small entity- 

Rs.4000

 

Trademark Act 

 

The Trademark act permits for registration of Architectural Designs under section 2 (1) zb wherein a Trademark is defined as –

a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others..

The intention behind registering an architectural design as a trademark is to ensure that there are no replications of the structure. A building will be eligible for trademark protection as long as it can fulfill the test of graphical representation and an indication of the source.  ‘Graphical representation’ means that the mark must have a physical form whereas, ‘indication of the source’ means that the building should be associated with the trademark owner and the goods and services offered. Therefore, the architectural design seeking a trademark should be able to distinguish itself from others who offer similar goods and services.

In India, the first building to be granted trademark protection is the Taj Mahal Hotel, Mumbai. It was registered under class 43 as “services providing food and drink; temporary accommodation. 

The benefit of registering under the Trademarks Act is that it increases the commercial revenue while also protecting the distinctiveness of the work. 

Fee Structure for Registration- 

Application for registration of a mark  Physical Filing  E-Filing 
Where the Applicant is an individual/Startup/Small Enterprise  Rs. 5,000 Rs. 4,500
In all other Cases (Note: Fee is for each class and for each mark) Rs. 10,000 Rs. 9,000

 

Conclusion 

The Copyright Act gives a universal umbrella protection to the architectural design regardless of whether or not it is registered. However, an author can step out this all-embracing protection by registering with the Design Act or the Trademarks Act. 

It is the author’s personal opinion that an architectural design should be registered with the Design Act, in situations where the production of more than 50 copies is anticipated. Registration with the Trademark Act is relatively difficult, as the architectural design will have to fulfil the test of graphical representation and an indication of a source, which is why trademark registration works best for heritage buildings or tourist spots like the Oprah House Sydney. 

The jurisprudence and precedents on this subject are limited therefore the interpretation of the courts may vary. This is the personal opinion of the author.

Coronavirus outbreak

COVID-19 & FORCE MAJEURE

The coronavirus causing COVID-19 has spread like wildfire, playing havoc with the global supply chains, bringing the world economy to an unprecedented standstill. These extraordinary times we find ourselves living in is certainly throwing light on some interesting issues in the realm of contract management.

How does COVID-19 affect contractual obligations?

While it has made it difficult for some parties to execute their contractual obligations, it has left others absolutely incapable of execution. 

In the thick of this scenario, parties are reviewing their contracts and hoping to rely on ‘force majeure’ clauses to temporarily suspend their performance obligations under the contract to protect themselves from failure to provide goods or services and in some cases to completely end their contractual arrangement. Luckily, the Department of Expenditure (Procurement Policy Division) of the Ministry of Finance vide an office memorandum dated 19.02.2020 has called the outbreak of COVID-19 a natural calamity and has clarified that ‘force majeure’ may be invoked whenever appropriate following ‘due process’. Though this interpretation by the government may not be binding it may still have persuasive strength in interpreting contracts with the Government of India.

What is Force Majeure?

‘Force Majeure’ is a contractual provision. According to Black Law’s Dictionary “it is an event or effect that can neither be anticipated nor controlled… that prevents someone from completing or doing something that he or she had agreed or officially planned to do”. This concept has neither been defined nor specifically mentioned in statues, so whether or not it can be invoked will depend on the general terms of the contract, the events that precede or succeed it and the facts of the case.

What legal provision govern the claim for Force Majeure in India?

Indian Contract Act does not specifically provide for Force Majeure. Some reference however has been made under Section 32 of the Indian Contract Act, 1970 to contracts that are contingent on the happening of a certain event, where if the event becomes impossible it renders the contract void. This means that there may be certain unanticipated events outside the control of parties that may render a contract unworkable for a limited time while the event lasts, leaving a window for normalcy once the event ceases to exist. It is during such circumstances that ‘force majeure’ comes into play.

What type of events qualify as Force Majeure? Is the outbreak of COVID-19 a force majeure situation?

Force Majeure provisions in contracts tend to be formulated in one of the two ways. 

  • The parties to the contract may mutually decide over the list of events to be categorized under this clause, which typically includes acts of war, riots, fire, flood, hurricane, earthquake, explosion, strikes, lockouts, slowdowns, prolonged shortage of supplies, governmental action etc.
  •  It is either a closed list of categories, such as “a finite list of force majeure is the following events ……” or it is an open list of categories, such as “force majeure is the following types of events; including …….” 

In India the closed list tends to be more favoured. The current outbreak of COVID-19 has been declared a pandemic by the World Health Organization and interestingly you will rarely see the word pandemic listed in force majeure clauses. If you do see it listed in the clause, then you know that you are within the force majeure territory and you can go on to test other elements of force majeure that might be available, and if not, then that makes navigating through the force majeure regime a lot more difficult. 

Alternatively, you may notice many contracts referring to the Act of God. This is an interesting one, because the Act of God traditionally tends to be ‘weather dependent’ and without human interference and in that sense a pandemic or epidemic, tends to not be considered as an Act of God. While some parties to a contract may term the disruption in the supply chain due to the pandemic – a natural calamity, or an Act of God, others may argue that forced quarantine or travel bans are the roots of such disruptions and are ‘acts of government’. Therefore, the sole inclusion of an ‘Act of God clause’ does not ensure the recovery of losses caused by COVID-19. 

To that end, the key factors to check for force majeure are-

– Do you have a closed or open list? 

– Do you see the word ‘pandemic’ mentioned under the provision?

– If not, you may want to look at other categories such as ‘disease,’ ‘epidemic,’ ‘quarantine,’ or ‘acts of government,’. 

It is important to note that in cases where “epidemics” or “acts of Government” are mentioned apart from the force majeure clause, the courts would additionally subject you to show proof of cause, a harmonious construction with other provisions and compliance with the conditions contained in the force majeure clause.

What would an affected party do to claim relief in case the contract does not include an express force majeure clause? 

In case the contract does not include a force majeure clause, or the existing clause does not include a particular event, in such a situation the affected party may be able to discharge the contract using the ‘Doctrine of Frustration’. It is a common law doctrine enshrined under Section 56 of the Indian Contract Act, 1970, and it protects parties against circumstances where their contracts have become impossible to perform and such impossibility in performance may be due to the occurrence of an event which affected their ability to perform. It is however extremely important for the application of doctrine of frustration that such person could not have done anything in their power to prevent such an event from happening and that the impossibility is neither self-induced nor a result of negligence. Further, it is really important to bear in mind that the performance has to be impossible, not just difficult or more time consuming or expensive, IMPOSSIBILITY IS WHAT IS REQUIRED. 

How have the courts interpreted the word ‘impossible’ provided under section 56 of the Indian Contract Act, 1872?

In regard to the word ‘impossible’ the Supreme Court in Satyabrata Ghose v. Mugneeram Bangur and Co. & Anr. held that the word impossible under Section 56 of the Act to “not be used in the sense of physical or literal impossibility. The performance of an act may not be literally impossible but it may be impracticable and useless from the point of view of the object and purpose which the parties had in view; and if an untoward event or change of circumstances totally upsets the very foundation upon which the parties rested their bargain, it can very well be said that the promisor found it impossible to do the act which he promised to do.” 

There is a vast variety of Indian case laws on the doctrine of frustration and one must keep in mind that it is a very high bar to achieve. This can be evidenced by a recent landmark judgement titled Energy Watchdog Vs. Central Electricity Regulatory Commission where the Supreme Court held that force majeure clauses are to be narrowly construed. The court opined that in the force majeure clause contained in the contract in question, “hindrance” could mean an event wholly or partly preventing performance. However, a mere increase in prices would not amount to a hindrance. It was held that since the force majeure clause specifically excluded rise in fuel cost, the fundamental basis of the contract was never dislodged. In view of the fact that alternative modes of performance were available even though the same were at a higher price, a force majeure situation did not arise. The Court further held that since there was a specific clause addressing force majeure in the contract in question, Section 56 of the Contract Act would not have any application. 

The two things to note here are that 

  • the force majeure event must lead to an impossibility; mere hardship, inconvenience or material loss cannot be considered as a force majeure event AND
  •  in case there is a specific force majeure clause in the contract, then Section 56 would have no applicability because essentially the doctrine of frustration results in killing the contract and hence should not be lightly invoked.

How to protect yourself from the legal implications of COVID-19?

At present it is impossible to ascertain the exact damage caused by COVID-19, nonetheless it is advisable for businesses to equip themselves in case of any prospective dispute. Parties to the contract must abide by the terms of the agreement and requirements of force majeure clauses. The affected party must promptly notify the counterparty regarding the occurrence of a force majeure event and must collect all documents to produce as evidence in case of a dispute at a later stage. Most importantly, parties must get their contracts evaluated in detail by legal professionals. 

The jurisprudence and precedents on this subject are limited therefore the interpretation of the courts may vary. This is the personal opinion of the author.

Royalty Payment for Singers- An Adaptation of Necessity

The scope of copyright protection over the years has increased and it now includes a multitude of materials including songs. Producing a song is a long creative process which requires producers, composers, lyricist, singers among others. 

In the making of a song where there are so many people of different positions involved, there is always the question that who must receive the royalty for its commercial use? 

In case of songs, until recently singers did not receive any royalty, their contribution to the song was blatantly ignored. Fortunately, this changed in 2012 when the Copyright Act,1957 (Act) was amended to include “Performers Rights”. The act defines performers under section 2(qq) to include singers, musicians and actors inter alia, the basic intention was to include any person who makes a performance. The amendment granted the performers both economic and moral rights to their works. 

Section 38A of the Act focuses on the economic rights of the performers

    •  A performer can make sound and visual recordings of the performance;
    • A performer can reproduce the performance in any material form including the storing of it in any medium by electronic or any other means;
    • A performer can issue copies of the performance to the public not being copies already in circulation;
    • A performer can communicate the performance to the public;
    • A performer can sell or give the performance on commercial rental or offer for sale or commercial rental any copy of the recording and;
    • A performer can broadcast or communicate the performance to the public except where the performance is already a broadcast, and lastly,
    • A performer can receive a royalty for the commercial use of the performance. 

The economic rights subsist for 50 years from the date it was first performed. 

Similarly, moral rights have been granted under section 38 B of the Act. It explicitly mentions that the performer has the right to be identified for their work unless the contract states otherwise. The section also grants the performers the power to prevent the mutilation and distortion of their work. 

The new economic and moral rights policy for performers does not affect the royalty received by the others who were involved in making the song, so the performer’s right to receive his/her share of the royalties runs parallel. Further, to make it easier for the performers to collect these royalties, the Act provides for the establishment of the Copyright Societies under Section 33. The function of the societies is to collect royalties and assign licenses for the commercial use of different works. 

To this end, the Indian Singers Rights Association (ISRA) which is registered as a copyright society acts as the middleman who collects royalties on behalf of the singers. As a collecting society, it provides licenses for the commercial use of copyright-protected work of the performers and keeps an eye out for their work being used illegally. 

How much royalty will a Singer get paid? 

The royalty received by the ‘singer’ is dependent on the tariff scheme mentioned by the ISRA. This tariff scheme depends directly on the party that requests such license, for instance, if it is a restaurant/bar asking for a license, the tariff charged is dependent on the price of the least priced drink.

Therefore, the royalty received by the singers for the performance of their work varies from case to case. 

Does a singer receive a royalty from online streaming websites? 

Singers do receive a royalty from online streaming websites as it is their right under section 38A, it may, however, be different from radio and television broadcasting. 

Under section 31 D, the act provides for statutory license for broadcasting through radios and television. However, in the case of Tips v. Wynk, the Bombay High Court held that the provisions of statutory licensing do not apply to internet broadcasting, so different schemes apply to internet streaming. 

The royalty paid is dependent on whether the interactive or non-interactive streaming app charges the consumer for the services provided. If the website does not charge the user then the royalty per song is Rs.0.50 per song, and in instances where the user has to pay to avail for the services the royalty is Rs.1 per song.

Is it necessary to pay royalty and have a license? 

According to the Copyright Act, it is absolutely necessary to pay a royalty to the singers for commercial use of their songs. The same has been held time and again by the courts in multiple cases. In cases such as Indian Singers Right Association v. Night Fever Club & Lounge and Indian Singers’ Right Association v. Chapter 25 Bar and Restaurant, the court granted a permanent injunction restraining the defendant from playing the copyright-protected songs without a license from the ISRA. It further held that the defendant was violating the performers Right to Receive Royalty (R3).

The amendment regarding Performer’s Right was definitely a relief for many singers, but most importantly, it was a necessity. It brought the copyright regime of India in harmony with Article 14 of the TRIPS Agreement and also Articles 5 to 10 of the WPPT

The jurisprudence and precedents on this subject are limited therefore the interpretation of the courts may vary. This is the personal opinion of the author.

Author:

Mehr Sidhu

Intern, Talwar Advocates

KNOW YOUR RIGHTS!

KNOW YOUR RIGHTS!

Over the years, your advocates and the Copyright societies have worked on making your status as a singer, a composer, a lyricist and as a musician, STRONGER THAN EVER, and this is why we believe that you must Know Your Rights.

Are you Registered with the IPRS?

Over the years, your being registered with the IPRS has become very important. The Indian Performing Rights Society ensures that all the royalties collected from various sources are properly directed back to you. This is so that you dont lose out on the money you rightly deserve. 

  • IPRS collects royalties due to the artists if their work is used anywhere, from a wedding to a New Year function or on the radio or TV in other words, wherever music is played. 
  • It is responsible for collecting the 50% royalty that is due to artists involved in literary work accompanied with music meaning lyricists, music composers, and publishers of music.
  • It has a database of around 10 million songs, including Indian and international numbers, for which it collects royalty.
  • In the case of a big event, the IPRS generally approaches the organizers beforehand to inform them about the licensing required to play the songs of the artists who are registered with them.
  • Most online streaming platforms are registered with IPRS and are therefore licensed to use the artists songs and to this end the IPRS sends letters to all media platforms, asking them to ensure that the artists are paid 50% of the royalty as per the Act.

As members of IPRS, you have a better infrastructure at your disposal to press claims and collect the money due to you. 

Your old albums have made MORE MONEY than you know!

Yes, thats right, your old or even the new albums have probably made much more money than you know. The reason for this is that back in the 90s online streaming platforms like YouTube, Gaana, Sawaan or iTunes did not exist, And although you feel that you assigned all your Rights to the Music Company, the 2012 Amendment in the Copyright Act has given you more rights than you could have assigned. 

    • The 2012 amendment in The Copyright Act, 1957 laid down that artists would get 50% of royalties every time their work was used, even if the copyright remained with the production house or the music brand.
    • It meant that every time a song was played in, say, a large party in a hotel or by a radio station, or streamed or even used as a mobile phone ringtone, 50% of the royalty would go to the production house or music company.
    • The other 50% would be split between the lyricist and composer of the song.

The creation of these online platforms significantly reduced the production of Music Cassettes and CDs or DVDs. Your old contracts only fetch you royalties on the number of MCs and CDs sold, however, in todays time, your music is viewed, downloaded and used on platforms that are nothing like the previously existing physical mediums. 

This means, that you are supposed to get a lot more Royalties and money for your music than you could even imagine.

Does your contract contain confusing terms?

You may be surprised to know that your contracts are not as confusing as they may seem on the first look. Usually, music companies try to befool us with difficult terms and twisted clauses, but this does not have to mean that you lose out on your Rights as a musician. Always be informed of what is owed to you. Get your contract reviewed by us, and you will be surprised to see the underlying rewards.

When was the last time you got your Royalties?

As a musician your life can be busy, its easy to forget that certain Royalties due to you ARE STILL UNPAID !! 

Do not become a victim, you ALWAYS have some royalties due to you from the music you have made. Your Royalties are recurring, and may not know, but you are actually sitting on a lot of MONEY.

Remix and Reprise of your Songs

It is very important for you to know that even if have allowed a remix or reprise of your song and have been paid a certain amount for that remix or reprise, you will still get ROYALTIES. Always remember, you were the original composer of that music, and you will always get royalties for your work.

KNOW YOUR RIGHTS, and be informed. You as a singer have a lot of money due to you which you may not even know about, get your CONTRACT REVIEWED and take back home the money due to you from the Music Companies and others.

Performer Rights Royalties

Performer Rights Royalties

With an increase in the re-runs and on-demand streaming options of TV Series, the failure to recognize the performers efforts in the success of the show, is bringing about concerns. It is for this reason that there is a desperate need, especially in this time of a nationwide lockdown, where existing productions have stopped and new productions seem bleak, that actors must receive residual royalties from the reruns of their shows/films in order to recognise their contribution to the popularity of the production, along with ensuring that the economic benefits of such popularity are not amassed by the few. 

To begin with, we must know the position of ‘TV Serials’ in the Copyright Act. Now according to Section 2(f) of the Copyright Act, a “cinematograph film” means any work of visual recording, therefore a Tv series being a work of visual recording would fall under this definition. So, when a tv series is shown on the television or on a platform other than cinema, the producers of such a show tend to make monetary gain, which in return implies that the TV actors are also entitled for royalty from such commercial exploitation of the show. 

We are familiar with the concept of each actor getting paid ‘Xamount of money for his role in the show,  however, what most us do not know is that after an amendment to the Copyright Act in 2012  , certain provisions were added which provided for entitlement of royalties by performers in case of making performances for commercial use. 

For clarity,  section 38 reads as follows –

(1) Where any performer appears or engages in any performance, he shall have a special right to be known as the “performer’s right” in relation to such performance.

(2) The performer’s right shall subsist until fifty years from the beginning of the calendar year next following the year in which the performance is made.

Further, the introduction of Section 38A granted performers certain specific economic and moral rights and sub-section 2 of  Section 38A provides that ‘notwithstanding anything contained in this sub-section, the performer shall be entitled for royalties in case of making of the performances for commercial use.’

Therefore, irrespective of whether or not you gave up your copyright in the actual work, you should ideally for a period of 50 years from the release of the show be entitled to ‘Royalties’

It is also pertinent to note that ‘any one performer’ from a TV series can claim their share of ‘residual royalties’ irrespective of whether or not his accompanying actors decide to do so.  Section 56 of the Act provides for Protection of separate rights

where the several rights comprising the copyright in any work are owned by different persons, the owner of any such right shall, to the extent of that right, been titled to the remedies provided by this Act and may individually enforce such right by means of any suit, action or other proceedings without making the owner of any other right a party to such suit, action or proceeding.

The 2012 amendment indicated that the industry has to come out of the old system and decide to implement the royalty sharing mechanism provided under the law with the actors. This is a boon for retired or marginalized actors or producers.

The jurisprudence and precedents on this subject are limited therefore the interpretation of the courts may vary. This is the personal opinion of the author.

Do start-ups need lawyers?

India has an ever growing startup ecosystem. It is a common misconception that it is ok to work on available legal templates or take legal advice from CAs, and lawyers should be engaged only for complex deals. CAs can effectively advise a start-up on tax aspects but more than often do not take into consideration the applicability of other laws leading to start-ups being legally non-compliant. Accordingly, when lawyers do get involved, there is a vast backlog of things to do to rectify the legal mess that is created (not every mistake can be fixed!!), which is expensive, time consuming and inconvenient. Certain wrongful actions, inactions or non-compliances can be deal breakers or lead to a major drop in a start-up’s valuation.

Involving lawyers at an early stage helps one in availing the advantages of beneficial laws that have been enacted in favour of start-ups, making an organisation better structured, organised and legally strong, and dealing with legal risks more effectively. Further, the longer a lawyer is involved in a business, the better the lawyer understands the business enabling him to deliver practical, reliable and result oriented advice that is more aligned with a business’ goals and objectives. Lawyers can help a start-up in various matters such as company formation, IP creation, shareholders’ agreement, employee agreements, funding and regulatory compliance, to name a few.

As start-up entrepreneurs, one needs to focus on growing the business in the right direction.  Hiring the right corporate lawyer at an early stage of a business can do wonders for a start-up, and increase the chances of its success.

BY

Divya Jyoti Mehra

Partner – Corporate Law – Talwar Advocates

TRADEMARKS-2018 TRENDS AND CONCLUSION

INTRODUCTION

In the modern globalised economy, INTELLECTUAL PROPERTY is one of the integral parts, which covers copyright, Trademark, Design, Geographical indications, Patent, Industrial designs, etc.

Intellectual property registration and protection is essential to guard invention. In case no legal protection is provided to such creative innovations, then the individual would not be able to reap the full benefits of their inventions and creativity would suffer as a result.

Trademark, one of the branches of IP is a mark or symbol which differentiate the goods or services of one proprietor from that of another. In short trademark signifies the brand, name, with which are associated the goodwill and reputation of proprietor business. This makes Trademark registration an important part of IP.

In INDIA the trademark registration is looked after by CONTROLLER GENERAL OF PATENTS DESIGNS TRADEMARKS, MINISTRY OF COMMERCE AND INDUSTRY, GOVERNMENT OF INDIA. Government has taken every possible step to simplify the procedure of registration for trademark . Recently the controller general office has released its annual report for 2017-2018 which highlight the extent of activities undertaken by office.

 

The report shows that No. of application file with the office of the registration of Trademark have decreased marginally   from 278170 to 272974 (2017-2018). However, an important point to be mentioned here is that the no. of trademark registered by the controller general’s office has increased substantially from 65045 in 2015-2016, to 250070 in 2016-2017, to 3000913 in 2017-2018. Potential reason for increase is the signified registration and speedy disposal by the CONTROLLER GENERAL’S OFFICE.

This simplified procedure for registration has simultaneously resulted in an increase in the foreign applications, from 11440 in 2016-2017 to 25307 in 2017-2017, almost double. Out of the total foreign applications 13475 have been filed through Madrid System , which is a primary international system for facilitating the registration of  Trademarks in multiple jurisdiction around the world .Among the Indian applications, most are from the state of Maharashtra , with 63070 applications in total . The field of Advertising, Business management Business Administration office functions have witnessed maximum applications, with 26467 applications out of total 272974 applications, while the minimum have been registered for musical instruments other than talking machines and wireless apparatus, accounting for only 250 applications.

There are five branches of CONTROLLER GENERAL’S office including the head office at MUMBAI. The maximum applications have been filed at Delhi branch and minimum at Kolkata branch. As far as the number of Trademark registered are concerned, maximum have been in the field of medical , pharmaceuticals , veterinary and sanitary substances etc. with a total of 43371 trademark being registered while the minimum registration has been witnessed by musical instrument (other than talking  machines and wireless apparatus) with as low as 545 mark being registered.

From the registration fees being deposited by the applicants, the controller general’s office has generated a revenue of 286.11 cr. in 2017-2018, which is comparatively higher to  the revenue of 192.36 cr. generated in 2016-2017. The no. of Trademarks published in the journal have increased from 67796 in 2013-2014 to 423030 in (2017-2018). The no. of trademarks registered have increased from 67796 in 2013-2014 to 300913 in (2017-2018).

CONCLUSION

Controller General’s office not only looks after the registration of Trademark, but also review the application for renewal of trademark, scrutinizes the opposition filed by any third party against the trademark published in the journal and settle down the dispute related to the trademark registration if there is any . Thus the office of Controller General is the most important office dealing with all this issues related to not only Trademark but every other branch of Intellectual Property. 

10 Reasons why start-ups should understand how Intellectual Property system works

Start-ups are companies founded by forward looking individuals and dynamic entrepreneurs in search of scalable and repeatable business models. It is a nascent and a new business venture with the primary objective of developing a viable business model to meet newly emerging market place needs and addressing their problems.
Start-ups start with ideas nurtured by hard work and launched in a manner which results in quick and constant growth. Understanding Intellectual Property issues and legal ramifications is of utmost importance for start-ups to ensure their survival, growth and progress. A deep understanding of IPR is sine quo non-if they are not to be nipped in the bud. Start-ups have to be protected from the sharks who steal away the original ideas, inventions, the labours of creativity and the like. In today’s world IPRs major components include copyrights, trademark rights, industrial property, patents, geographical indications, plant varieties, industrial designs, layout designs of integrated circuits and the like.

Every start-up is particularly based on a novel idea and proper practice of one such idea is what transforms small start-ups into multibillion-dollar corporation. An example in the case is Thomas Eddison, the American Inventor and business man instrumental in developing many devices in fields such as electricity generation, sound recordings, motion pictures and many other fields. Today we are basking in the glory of landmark inventions like the electric bulb, etc. due to preservation of the inventions through IP. Some of the recent examples could be of Apple as developed by Steve Jobs. The core of IP Laws lies in protecting the idea or concepts that defines your start-up. An IP is actually an asset to your company and enhances your commercial value as a well-defined and well IP protected start-up attracts more investors and gradually more business.

Intellectual property laws provide a protective umbrella in avoiding infringement claims against the start-ups. An important component of IP protection includes searches regarding similar inventions or trademarks already prevailing in the public domain. Tracking such companies or individuals can insulate the start-ups from financial crises later due to patent or copyright infringements. The heavy investments in the companies would be negated and siphoned off due to high stake lawsuits.

IP goes a long way in preempting other companies and stopping them encashing upon the goodwill of start-ups. An IP protection is guaranteed by a registration certification which acts as a notice to public that a software, logo or a patent belongs to you. Before using an IP, other companies or individuals should first check the IP India website and database to see if a similar idea is already in use.

After successfully registering a patent, copyright or a trademark, an obvious presumption is created that an idea or property belongs to its holder. This gives the start-up an advantage in an infringement law suit as the IP registration will create a presumption in favor the holder in the legal proceedings.
Not protecting one’s novel idea or software which forms the core of the start-up could jeopardize the entire venture. An IP protection ensures stability and security to investors as they prefer investing in a start-up which is having a well-developed IP strategy.

If a start-up idea is based on an open source software, then the owner of such software should secure IP protection by way of copyright. Since open source software is generally free and offers expeditious development, the developer must ensure IP protection so that the start-up proprietary rights over the software are not lost.
Trade Secret Protection under IP Law helps startups to protect confidential information. It has been used to protect one of the most valuable secrets of the world including the Coca Cola recipe and Kentucky Fried Chicken (KFC). Thus, a start-up should enter into a written agreement with its employees and establish full-proof security protocols.

Safeguarding Intellectual Property which includes using copyrights, trademarks, and patents is much easier during infancy than protecting after that idea has fructified into a full blown success. IP protection not only prevents others from infringing or profiting from your business but also helps in attracting investors, suppliers, partners and more business as this form of protection offers more security with potential success.
Understanding of the copyright and its related laws would be essential in protecting the literary work, artistic and musical works, the computer software programmers and the works of architecture. It is essential for preserving monumental works like the famous David, the Leaning Tower of Pisa, the Taj Mahal, and other monuments down the ages.

The works of Shakespear, Tolstoy, Thomas Hardy, Rudyard Kipling and the like are also the Progenies of Copyrights whether in the legalistic terms or in the literal practical terms.
Start-ups need to develop an international perspective of geographical indications. They need to follow the dictates of the Paris Convention for protection of industrial property. The convention refers to the protections not as Geographical indications but as indications of source.

Then, Article 1(2) of the Lisbon Agreement mandates that member countries should provide protection to the appellations of origin of the products manufactured in other member countries.

Then, Section 3 of the TRIPS AGREEMENT deals exclusively with Geographical Indications. The ultimate objective of the agreement is to prevent misuse of the benefits of Geographical Indications. IP relating to Geographical indication is helpful in protecting products like Darjeeling Tea, Scotch Whisky, the Paris perfume, the Basmati Rice, the Swiss Chocolate, Banaras Silk and other products centralized to territories, regions or countries.
Further, India has Bio Diversity and protection against Bio-Piracy is of utmost importance. Awareness of the UN Convention on Biological Diversity (CBD) which was signed at Rio in 1992 is indispensable for start-ups with related products. Apart from conservation of biological diversity, the CBD aims at fair and equitable benefits arising out of utilization of genetic resources and transfer of technology.

Ravi Sodhi

NOVARTIS CASE: BOON FOR PATENTS AND PATIENTS

Novartis case is the landmark judgement not only in the field of IP but also for ‘aam-aadmi’. The historic date of April 1, 2013 witnesses the discourse around the world about a key feature of India’s patent regime. The core of the case focussed on the interpretation of section 3(d) of India’s patent law. In the impending verdict on Novartis Glivec, Supreme Court ruled against the company. The loss of Novartis was the impeccable news to Indians and the grade of many domestic pharma companies, especially Cipla and Natco. The verdict led to a decrement of stock price of Novartis. The judgment oozed out to be the harbinger of strong message that getting patents for drugs in India is not obvious. The verdict proved to be a solace for millions to have entree to medicines at low cost and banishing the concept of evergreening the patents by pharmaceutical industries.

The timeline:

1997- Patent application filed by Novartis AG at Madras patent office for beta-crystalline of GLIVAV.

2003- Novaris obtained EMR for 5 years in order to market Glivec, hence preventing other pharma companies from manufacturing generic version of the same-price thus soaring from Rs 10,000 to Rs 1.2 lakh.

2005- Amendment of patent law in comply with TRIPS agreement CPAA(cancer patient aid association)filed a pre-grant opposition against  Novartis patent application.

2006- Novartis was refused grant of patent by Madras patent controller, leading to manufacture of generic version of drug by other pharma industries. Writ petition was filed at the Madras high court by Novartis.

2007- Matter transferred to IPAB. High court rejected the writ petitions.

2009- IPAB rejected Novartis appeal. Novartis filed special leave petition in Supreme Court.

2013- SC dismissed Novartis petition.

“the Indian SC’S decision on section 3(d) in the famous Novartis case created a precedent and has helped us in our campaign for affordable medicine”, says Loon Gaugte, an Indian activist, regional co-ordinator, South Asia of International Treatment Preparedness Coalition(ITPC) and one of the founders of DNP+. However, the challenges and difficulties persist. The study report titled ‘Pharmaceutical Patent Grants in India’ explains how our safeguards against evergreening have filed, why the system must be reformed, and analysis of the challenges that have led to section 3(d) being underutilized despite the landmark judgment of SC.

BRAILLE UNDER COPYRIGHT LAW

Copyright is an intangible right given to the author of an original artistic work.  It protects the work from reproduction or publishing for monetary gain without the consent of the owner. The words generally used while discussing infringement are reproduction, translation, adaptation, derivation and transformation. Though it may seem that they have same or similar meaning, in the theory of copyright, they have a different status.

In the case of a literary work, copyright means the exclusive right:

  • To reproduce the work
  • To issue copies of the work to the public
  • To perform the work in public
  • To communicate the work to the public.
  • To make cinematograph film or sound recording in respect of the work
  • To make any translation of the work
  • To make any adaptation of the work.

Therefore, a movie adaptation of a book cannot be made without the consent of the author. Similarly, translation also infringes copyright as they are essentially a reproduction of someone’s original work for monetary reasons. Raising eyebrows, this has given heat to the recent discussions as to whether an existing work when translated into Braille will account to a copyright infringement or not?

CAN BRAILLE INFRINGE COPYRIGHT?

The questions which prompt in mind are:

  1. What is Braille-translation or transliteration?

Braille is a palpable reading and writing system used by blind and visually impaired people. Represented by the patterns of raised dots that one can feel with their fingertips, it enables the visually impaired to study, regardless of the language and is hence acting as a universal code for all the languages.

Translation implies the conversion from the original language to a different alternate language. Since Braille is not a language, the term translation cannot be used in this context. Taking an example, if we convert “Bhagwan”( in Hindi) to Braille, the output cannot be regarded a  translation as it remains in Hindi and does not feature conversation into any other language such as English. Therefore, such conversion is not considered as a translation and is instead termed as a transliteration. This way, Braille does not violate section 14(a)(v) of the copyright act, 1957 and hence such conversion shall not attract infringement charges.

  1. Does conversion of literary work into Braille come under the scope of adaptation and reproduction?

Adaptation involves the preparation of a new work in the same or different form, based upon an already existing work involving re-arrangement or alteration of the same. If literary work is converted into Braille, it will lead to the violation of rights under section 14(a)(vi).

Will conversion of literary work into Braille lead to reproduction of work under section 14(a)(i)?

Interpretation of ‘reproduction of work’ is debatable and the conversion of literary work into the six-dot Braille code will solely, and exclusively depend upon this interpretation. Braille is technically sticking to the contents, but for expression to be categorized as reproduction, conversion may remain true to content or expression or both. The new cause (zb) added to section 52(1) of the copyright act, 2013 provides for fair use of the work for the benefit of the disabled; facilitates adaptation, reproduction, issue of copies or communication to the public of any work in an accessible format.

Since Braille is a part of accessible format, section 52(1)(zb) suggests that the expression “adaptation, reproduction and communication to the public” can be used with respect to it hence, generating the clarity  on  Braille fitting into the scope of adaptation and reproduction.

Whether Braille can cause copyright infringement?

The district court in Authors’ Guild v. Hathitrust, 2013 U.S. Dist. LEXIS 22370, (S.D.N.Y. 2013), had held that the digitization of millions of books made available to people with disabilities was a transformative use, even though each of the books’ contents was reproduced in their entirety and without any content modification. Should the court of appeals affirm this holding, the court would be indicating that there need not be any kind of expressive transformation in the copyrighted works and the mere putting of the copyrighted works to a different purpose from that which the copyright owners intended shall be considered.

In Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, (1985), the Supreme Court held that the act of the news magazine, The Nation, “scooping” portions of President Gerald Ford’s unpublished memoirs, just weeks before its authorized publication in a rival magazine amounted to copyright infringement. The court held that the fair use defense did not apply to The Nation’s actions. The court noted that “[every] commercial use of copyrighted material is presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright.” Furthermore, the court explained that “[t]he crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.”

Analyzing the above judgments, we may conclude that the conversion of literary work into Braille will be covered under copyright infringement if the proper license is not taken.