Patents and Trademarks & Copyrights in India

What is the patent granting procedure in India?

Publication of Patent Application in India:

Once the application for patent is filed, it is published 18 months after the date of filing or the date of priority, (whichever is earlier). But for the right to initiate infringement proceedings, the Indian Patent Act provides similar rights to the applicant on and from the date of publication of application, as that provided to the Patentee.

Examination of Patent Application in India:

India follows deferred examination system according so the application for patent is not examined unless a request for examination is filed with the Patent Office to initiate examination proceedings.

 To initiate the examination proceedings the applicant is required to file a request with the Patent Office. If the examination report is adverse to the grant of Patent, the same is communicated to the applicant. As per the provisions of the Patent Act the applicant has to comply with the requirements imposed on him within a period of one year from the date on which objections are forwarded to him, or else the application is deemed to be abandoned by the Patent Office.

Grant of Patent Application in India: 

When the application for Patent is found in order of grant, the patent is granted as expeditiously as possible with the seal of the Patent Office.The grant of patent is published in the Patent Journal and Letters Patent is issued. 

Term Patent Rights in India: 

The term of patents in India is twenty years from the date of application or priority date, whichever is earlier. 

Annuity fee is payable every year to keep the patent in force. 

For more information on Patent Application process and procedure in India please write to us at:

New IPR policy

-- Generation of IPRsTo stimulate the generation of IPRs.
-- Legal and Legislative Framework: To have strong and effective IPR laws, which balance the interests of rights owners with larger public interest.
-- Administration and Management: To modernize and strengthen service-oriented IPR administration.
-- Commercialization of IPRs: Get value for IPRs through commercialization.
-- Enforcement and Adjudication: To strengthen the enforcement and adjudicatory mechanisms for combating IPR infringements.
-- Human Capital Development: To strengthen and expand human resources, institutions and capacities for teaching, training, research and skill building in IPRs.
-- Apart from this, Jaitley said that by 2017, the window for trademark registration will be brought down to one month.
-- The policy also puts a premium on enhancing access to healthcare, food security and environmental protection.
The work done by various ministries and departments will be monitored by the Department of Industrial Policy & Promotion (DIPP), which will be the nodal department to coordinate, guide and oversee implementation and future development of IPRs in India, a notification on PIB said.
Modi promises IPR policy in UK
Prime Minister Narendra Modi assured businessmen in UK in November last year that the IPR policy will be finalised soon. While trying to lure UK businesses to invest into India, Modi had said, "I am personally convinced and want to assure you that India is committed to protect Intellectual Property Rights of all innovators and entrepreneurs. We have taken several initiatives for transparency and online processing in IP administration. A comprehensive National IPR policy is being finalised," he added.
Industry and Commerce Minister Nirmala Sitharaman on IPR Policy

In December last year, Sitharaman had said that the proposed IPR Policy will provide both domestic and foreign investors a stable IPR framework in the country. She added, "an all-encompassing IPR policy will also promote a holistic and conducive ecosystem to catalyse the full potential of intellectual property for India's growth and socio-cultural development while protecting public interest."

TradeMark Application sample

Trademark pangs for brands, popular in some parts of the world and wants pan global presence later
IKEA sends legal team to clear out namesakes before India entry

If you have a business or brand sounding anything even remotely close to IKEA, get prepared to face the ire of the Swedish retail giant.

The owner of the global chain of furniture and home products stores has asked its legal team to initiate action against over two dozen small businesses across the country that have been selling products and services such as furniture, modular kitchen and packaging material under similar sounding names.

The retailer is also in no mood to excuse HR consultancies, spas and event management and advertising firms that are involved in businesses not connected with IKEA's own business.

In the name of protection and enforcement of its trademark, goodwill and reputation, the company's lawyers have already sought injunction orders from Indian courts against a dozen such firms to stop them from doing business, and more are in the offing. "In the past 3-4 months, we have become very aggressive in trying to protect IKEA's trademark, a popular brand name globally, in India," said SK Bansal, co-owner of KG Bansal & Company Associates, the law firm representing IKEA.

Bansal said injunction orders have already been sought against 15 parties, a mix of small and big companies located in Delhi, Mumbai, Hyderabad, Bangalore and Chandigarh. "Legal actions against a few individuals have also been taken who were trying to register the
IKEA or a similar trademark in India," he said.

IKEA's move, however, is being seen by many as a vindication of their fear that allowing big foreign retailers into India will wipe out small businesses from the local economy. While some call it bullying, others say it is pure harassment. "If international companies coming to India means that small companies will start losing their business for unjustified reasons, it is unfortunate," said Krishna B Mariyanka, co-founder and director of Akiya Global, a Bangalore-based events and communications company.

In a 1,000-page legal notice, IKEA's lawyers have asked the founders of 
Aikya Global to remove the company's website, registered under the name Aikya, as it is phonetically similar to IKEA.

"We are totally surprised and zapped with this legal notice and feel that we have been bullied as there is no similarity between what IKEA does and what we do," said Mariyanka, who is preparing a legal response to the notice.

Bangalore-based professional staffing company IKYA Human Capital Solutions, which has an annual turnover of Rs 1,500 crore, has been sent a similar notice. "This is harassment and we will counter this legally," said 
Ajit Issac, founder of the company.

Issac holds 30% stake in 
IKYA Human Capital Solutions while the remaining is owned byThomas Cook Slamming IKEA's claim, Issac said his company's name is derived from Sanskrit, which means "oneness". "Besides, we are not into retail. Where is the question of misusing their brand name," he said. But IKEA's lawyers have a different argument.

They say all the Indian companies that have been served with notices or injunction orders have adopted those names deliberately to mislead the public into associating their products and services to those offered by IKEA. "IKEA has its trademark registered in India for over 15 years now and it has 45 registrations for different categories of products and services," said Bansal. Misuse of a popular brand name and trademark such as IKEA can be injurious to its reputation and goodwill, he said.

After a year of going back and forth, the government in May finally cleared IKEA's proposal to invest Rs 10,500 crore in India to open 25 IKEA branded stores. The company has held talks with various state governments as it seeks 5-15 acre space next to highways in cities including Noida, Hyderabad, Bangalore and Gurgaon.

A host of foreign retailers including Walmart, Starbucks and 
Carrefour have filed cases against Indian firms using names similar to their brand names or logos.

In 2007, 
Walmart opposed several trademark filings in India including Call-Mart, Mall-Mart, Val-Mart and Hall-Mart. In June, Carrefour won a trademark case against Carrefour House of Interiors after the French retailer dragged the Chennai-based firm to the Madras High Court alleging trademark infringement.

Experts point out that for successful global companies, the most important and valuable asset is their brand name. "Even if a company is not present in any category, it would always want to protect itself and the consumer who may be misled into believing that he is buying a product or service of the global company," said Arvind Singhal, chairman of consultancy firm Technopak.


 Brand Squatter
Cadbury had to register as Mondelez Foods in India whereas elsewhere it is Mondelez only

Mondelez International, the new identity of Kraft Foods' snacks and confectionery business, has run into perhaps its hardest hurdle in changing the name of Cadbury India - a brand squatter.
Mondelez India, a Delhi-based company selling Kennyzone brand of confectionery, is waiting to legally challenge the global company from registering a similar name.

"We are seeking legal advice on the matter and will take actions accordingly," said an official spokesperson of Cadbury India, which is treading very carefully in migrating to the new identity in India where Cadbury has massive brand equity. Now, when branding experts all over the world have found the Mondelez name strange and confusing, how come an Indian entrepreneur came up with the same moniker?
Well, Mondelez India Pvt Ltd was registered in September last, well after Kraft decided to split its business and call the snack business Mondelez - a made-up name selected from 1,700 staff suggestions in March - from October 1, 2012.The Delhi firm was earlier called Non Stop Logistics.

One of the directors of Mondelez India said company promoter SK Sharma is seeking legal advise on the matter and would challenge any attempt from the multinational to call itself Mondelez India.
"Maybe they can stick to being Mondelez International. We are open to discussions on the subject but any other means to register themselves will be challenged legally by us," the person said.
On its website Mondelez India states, "We are confident that the quality of Kennyzone candies matches, and in some cases is better than many major renowned international brands."
Anuradha Salhotra, managing partner at Lall, Lahiri & Salhotra, a law firm specialising in intellectual property, said creation of Mondelez India is a deliberate attempt to make a quick buck.
"These are deliberate and planned moves by some people to make a quick buck out of it. Many a times they are more than willing to sell it back to the rightful name owner," she said. "If it is just a domain name then there could be arbitration but if it is a company name, trademark and domain name, then Mondelez International will have to go in for injunction," she added.
Meanwhile, Mondelez International has registered a company, Mondelez Foods, in India although it does not use the 'foods' tag in any other markets.
In early 2010, Kraft Foods acquired British candy maker Cadbury in a deal worth close to $19 billion. And in October last, Kraft's snacks business that includes brands such as Cadbury, Oreo, Tang and Trident was spun off into Mondelez. Kraft is left with the grocery portfolio, which includes Philadelphia cream cheese and Maxwell House coffee.
Mondelez derives some 45% of its sales from developing markets. Its CEO Irene Rosenfeld is reported to have said that the priority in India will be to drive chocolate penetration by increasing marketing support and strengthening distribution.

But the chocolate maker has started 2013 on a rocky note in India with authorities looking into possible tax evasion. Last year, an investigation was launched to determine whether Kraft Foods Inc needed to pay taxes arising from its $19 billion takeover of Cadbury. Another case involves alleged evasion of central excise duty, or factory gate tax at a company facility in Himachal Pradesh.
The name change, from a highly popular one to a name that can be pronounced in several ways, and dealing with a brand squatter too have now become part of the not-so-sweet tasks of Cadbury India.
Kala Vijayraghavan, ET Bureau Feb 23, 2013

Copy Rights

Exceptions to CopyRight : Fair Use/ Transformative Purpose

Whether Transformative Use applies in case of Tik Tok
The four-factor test used to evaluate the fairness of a use in the U.S. also applies to s.52(1)(a) of the Indian Copyright Act to determine fair dealing, as per the Division Bench of the Delhi High Court in India TV Independent News Service v. Yashraj Films Pvt. Ltd. These factors are- purpose and character of the dealing, nature of the work, amount and substantiality of the portion used, and effect of the use on the market of copyrighted work. In India, for a work to be non-infringing, it must constitute fair dealing as per the U.S. test and also fall within the purposes of section 52. As explained here, Indian courts have held that the focus of the work should not be the underlying work but the new work created, which can use previous works for the purposes under section 52(1)(a), including criticism and review, which should be interpreted liberally.
The Delhi High Court in Narendra Publishing House interpreted ‘review’ as “view, inspect or examine a second time or again..”, which is arguably similar to the US factor of transformative purpose and character of the use. TikTok videos can be said to use a previous work to view it a second time while ensuring that the focus remains on the new work created. More pertinently, the Indian Supreme Court had also noted in R.G. Anand v. Deluxe Films and Ors., “Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.”
Since the audio library essential for these short video services to thrive comprises of commercial music which was not explicitly designed for the social media format of being synched and performed by users creatively, as facilitated by TikTok, there is a valid argument for recognising such use as transformative review. The creative re-use of the short music clips from TikTok’s audio library differs completely from the purpose for which these songs/films were created for their original market. The viral 15 second TikTok videos do not impact the original markets of these works negatively. They naturally kindle the interest of users via wider dissemination of the underlying copyrighted lyrics, dialogues and music and thereby expand the markets for these songs and films instead of undermining them. They are likely to generate more demand as vehicles of free publicity for the underlying copyrighted works.
Further, fair dealing is aimed at broadening the scope of cultural production, which is not necessarily limited to non-commercial activity. Even commercial activities can fall under its scope as long as justified by the purposes enumerated under section 52. Hence, an app providing an audio library for profit is not excluded from its ambit by itself.(

IP Rights protection as per WTO

Online infringment protection (US)

The Online Copyright Infringement Liability Limitation Act, passed into law in 1998 as part of the Digital Millennium Copyright Act provides safe harbour protection to "online service providers" for "online storage" in section 512(c). Section 512(c) applies to online service providers that store copyright infringing material. In addition to the two general requirements that online service providers comply with standard technical measures and remove repeat infringers, section 512(c) also requires that the online service providers: 1) do not receive a financial benefit directly attributable to the infringing activity, 2) are not aware of the presence of infringing material or know any facts or circumstances that would make infringing material apparent, and 3) upon receiving notice from copyright owners or their agents, act expeditiously to remove the allegedly copyright infringing material.

An online service provider can be notified through the copyright owner's written notification of claimed infringement. Section 512(c) lists a number of requirements the notification must comply with, including:

·         Identification of the copyrighted work claimed to have been infringed and information reasonably sufficient to permit the service provider to locate the material.

·         Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number and email address

·         A statement that the complaining party has a good-faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

·         A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

Provided the notification complies with the requirements of Section 512, the online service provider must expeditiously remove or disable access to the allegedly infringing material, otherwise the provider loses its safe harbour and is exposed to possible liability.

The online service provider may additionally limit its liability for the removal of the material itself as well as its liability for restoring the removed material, by complying with a counter notification process. In this process, the service provider must promptly inform the subscriber of the removal of the content.[7] If the subscriber then objects via a counter notification, the service provider must notify the party which filed the original notice. If the party does not bring a lawsuit against the subscriber within 14 days, the service provider must then restore the material to its location on its network.

Like the original notification, the counter notification include specific elements:

·         The subscriber's name, address, phone number and physical or electronic signature.

·         Identification of the material and its location before removal.

·         A statement under penalty of perjury that the material was removed by mistake or misidentification.

·         Subscriber consent to local federal court jurisdiction, or if overseas, to an appropriate judicial body.

Implementing a counter notification process is not a requirement for the safe harbor protections. A service provider may decline to restore the allegedly infringing material, or to notify the subscriber at all, limiting the recourse available to the subscriber.

If the court determines that the copyright owner misrepresented the claim of copyright infringement, the copyright owner becomes liable for any damages that resulted to the online service provider from the improper removal of the material. The online service provider is also required to appropriately respond to "repeat infringers", including termination of online accounts. On this basis online service providers may insert clauses into user service agreements which allow them to terminate or disable user accounts following repeat infringement of copyright. Identification of "repeat infringer" may occur through repeated notice and takedown requests, while other online service provider require a determination by a court.