Lakshmi Kumaran Pres - Intellectual Property Owners Association ...

clatteringlippsBiotechnology

Dec 5, 2012 (4 years and 6 months ago)

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INDIA


Strengths

Well diversified industrial base in all core
areas

Strong knowledge
-
based industry


IT


Biotechnology

Large & sophisticated financial architecture

Robust capital market
-

eqvt of over $ 200
billion

Balanced GDP composition



Agriculture and industry contributing 25%
each and rest services


Pharmaceuticals


Entertainment

Advantage INDIA

Over 3 million scientific & technical manpower


Over 0.8 million post graduates in science


Over 1 million graduate engineers


0.4 million doctors and


0.3 million graduates in agriculture and veterinary
sciences

Second only to US in English speaking
scientific manpower


Above factors provides significant
advantages in:


Drugs & Pharmaceuticals


Biotechnology


Information Technology


Space Industry


Speciality Chemicals and Petrochemicals

Enforcement Framework

Effective
border control
measures

1

2

3

4

5

Enactment of
legislation
(including rules
and guidelines)

Establishment of
proper administrative
procedures

Streamlining
appellate
procedures

Civil and
Criminal
remedies

Legislations Governing IPRs

Semiconductor Integrated Circuits Layout
-
Design Act, 2000

Patents Act, 1970

Trade Marks Act, 1999

Copyright Act, 1957

Designs Act, 2001

Protection of Plant Varieties and Farmers’
Rights Act, 2001

Geographical Indications Act, 1999

Legend

Modernization of IP Administration


Design Act in May 2001


Trade Marks Act in 1999


Geographical Indications of Goods Act,
1999


The Patents (Amendments) Act, 2005 in
conformance with TRIPS

Legislative Initiatives: Include new
legislations for

Modernization of IP Administration

Administrative Initiatives


Modernization of the current
infrastructure


New Offices for Patents and Trade
Marks in all four metros


Geographical Indications Registry set up
at Chennai


Release of a Draft Manual for
Examination and Patent Procedure by
the Indian Patent Office

The Patents Act, 1970


All products and processes
patentable


Term of patent extended to 20
years


Creation of Intellectual Property
Appellate Tribunal (IPAB)



Recent Changes

The Patents Act, 1970




Method of agriculture or horticulture;


Method of treatment;


Mathematical or business method or a
computer program per se or
algorithms;

The following do not qualify as
invention:

The Patents Act, 1970



F E A T U R E S


Bolar like provisions


Act of making, constructing, using ,
selling or importing of patented
product for regulatory purpose


Research Exemption


Experimental purpose, imparting of
instructions to pupils


Not for commercial purposes



Exceptions to infringement

Trade Mark


New Act


Trade Marks Act, 1999
enacted


Effective from 15th September 2003


Definition of mark changed


Mark is capable of being represented graphically


Capable of distinguishing the goods and
services


Includes shape of goods, packaging and
combination of colors.




MARK

Trade Mark


Mark includes


Shape of goods


Packaging


Combination of colors


Introduction of


Collective marks e.g. marks of clubs like
Rotary Club


Service marks e.g. marks of organization



MARK



F E A T U R E S

Trade Mark


Multi class application
-

Single application for
registration of a mark in different classes


Provision for protection of well


known trade
marks and tests for determination of such marks


Period of Registration extended to ten years


Registrar the deciding authority for Registered
users and Certification Trade Marks



MARK



F E A T U R E S

Trade Mark


Widening of the scope of infringement of
registered trade mark


Identical trade mark with similar goods or
services


Similar trademarks with identical goods or
services


Identical trademarks and identical goods or
services


Infringement and passing off action


Plaintiff can initiate where he resides or carries
on business



MARK



F E A T U R E S

Administrative Action

Controller/
Registrar
guided by
principles of
natural justice

Pre
-
grant/post
-
grant hearing
for opposition
of patents

Intellectual
Property
Appellate
Board to hear
appeals from
the order of
Controller/
Registrar

Patents &
Trade Marks

1

2

3





Border seizure


Power of seizure and absolute confiscation


Penalty on importer which can be upto 100% of
value of goods


Prosecution of

all persons dealing with
infringing imported goods

Powers given by Customs Act, 1962

Power currently exercisable only in
relation to TM,© and designs

Appellate Authority


New Appellate Body created


Intellectual Property Appellate Board

-
Specialised Members

-
Jurisdiction


Revocation actions


Appeals from Opposition
Proceedings

-
Power to order temporary
injunction

-
Appeal from Board lies to the
High Court


Well established Court system


Judicial Remedies



Civil remedies


Injunction


Damages


Account of profits


Seizure, forfeiture or destruction of infringing
goods


Enhanced damages for wilful infringement


Vicarious liability


Criminal remedies (only for TM)


Imprisonment term from 6 months to 3 years


Fine imposed in addition


Contempt of Court


Imprisonment term up to 6 months


fine up to two thousand rupees or both





Temporary injunction

Provisional Remedies



Defendant may obtain a judgment
of non
-
infringement from the courts

Declaratory judgement

Recent Judicial Decisions

Mark has trans
-
India reputation

Court

allowed

Whirlpool

to

claim

passing

off

against

another

registered

owner

when

registration

was

obtained

by

deceit


Court

referred

to

English

jurisprudence

to

arrive

at

this

decision

N.R Dongre v. Whirlpool Corpn & Ors
.

Recent Judicial Decisions

World wide reputation of product recognized

Milmet Oftho Industries and Ors
.
v.
.
Allergan Inc

Action for passing off unregistered trade
mark, worldwide reputation important
factor

Recent Judicial Decisions

TIME Asia Sanskaran (now in Hindi?)

Time Incorporated v. Lokesh Srivastava & Anr

Punitive

damages

awarded

for

infringement

of

TIME

mark

American

jurisprudence

on

punitive

damages

applied

Recent Judicial Decisions

Pepsi Co., Inc & Ors v. Hindustan Coca Cola
Ltd. & Anr

Pepsi slogan
copyright
protected

a powerful choice . . .

New Delhi


B
-
6/10, Safdarjung Enclave

New Delhi


110 029, India

Ph: +91
-
11
-
26192243, 5129 9800

Fax: +91
-
11
-
26197578, 5129 9899

E
-
mail: Lsdel@Lakshmisri.com

Mumbai


401
-
404, Kakad Chambers,

132, Dr. Annie Besant Road

Worli, Mumbai


400 018

Ph: +91
-
22
-
24914382 /84/86

Fax: +91
-
22
-
24914388

E
-
mail: Lsbom@Lakshmisri.com

Bangalore


“SPL ENDERLEY”, Flat 2
-
D,

26, Cubbon Road, Bangalore

Ph: +91
-
80
-
22868256 /57

Fax: +91
-
80
-
22899349

E
-
mail: Lsblr@Lakshmisri.com

Thank You

LAKSHMIKUMARAN & SRIDHARAN

ADVOCATES

vlakshmi@Lakshmisri.com

Our contacts

Hyderabad


Block No 301, 3
rd

Floor

Hermitage office complex

Hill Fort Road, Hyderabad


500 001

Tel: +91
-
40
-
2323 4924/25

Fax: +91
-
40
-
2323 4826

E
-
mail: Lshyd@Lakshmisri.com

Chennai


2, Wallace Garden, 2
nd

Street

Chennai
-
600 006

Tel: +91
-
44
-
2833 4700/701

Fax: +91
-
44
-
2833 4702

E
-
mail: Lsmds@Lakshmisri.com