Download Intellectual Property Rights: Copyright Infringement and Remedies and more Assignments Law of Evidence in PDF only on Docsity!
INTELLECTUAL PROPERTY RIGHTS
By Avinash B (avi.b89@gmail.com)
1.What is intellectual property? 1.1Industrial Property 1.2Copyright 2.What are the conditions for assignments of trademark? 3.Write a note on deceptive similarity of trademark 3.1Definition 4.Explain assignment and transmission of trademarks 4.1.Meaning- 5.Explain the term license under the Copyright Act. 5.1.Definition 5.2.Form and contents of license 5.2.1.A license should contain the following particulars- 5.3Period of license 6.Write a note on Rights of Author 7.Explain compulsory licensing under Copyright Act. 7.1.Non-voluntary or Compulsory Licence 7.2.International Conventions and Non-voluntary Licensing 7.3.Compulsory licence of an Indian Work [S. 31] 7.4.Procedure 8.When can a license be terminated? 8.1.Termination of Licence Granted under sections 32(1 A) and 32A of non-Indian work [S. 32B] 9.How is infringement of copyright determined? 9.1.Infringement of Literary, Dramatic or Musical Works [S. 51 r/w S. 14(a)] 9.2.Infringement of Artistic Works [S. 51 r/w S. 14(c)] 10.What are the remedies available against infringement of copyright? 10.1.Authors' Special Rights [S. 57] 10.2.Civil Remedies 10.2.1.Procedure 10.2.2.The plaintiff has to establish the following: 10.2.3.The defendant may set-up one or more of the following defences: 10.3.Anton Piller Order 10.4.Interlocutory Injunction 10.5.Damages or Account of Profits 10.6.Criminal Proceedings [Ss. 63-70] 10.7.Threat of Legal Proceedings and Slander of Title [S. 60] 10.7.1.Threat action 10.7.2.Slander of Title
11.Write a note on copyright societies 12.Define ‘Patent’ and ‘invention’ 12.1. Patent 12.2.Invention 12.2.1.Definition- 13.Explain the various things which are excluded from patentability. 13.1.What is a Patent 13.2.Inventions not Patentable [Ss. 3-4] 14.How is infringement of patent determined? 14.1.In determining whether what the alleged infringer is doing amounts to an infringement of a particular patent three questions are involved: 14.2.What Constitutes Infringement 14.3.Who can Sue for Infringement 14.4.Defences for the Defendant 14.5.Reliefs 14.5.1.Interlocutory Injunction 14.5.2.Damages or Account of Profits 15.What is a trade mark? 15.1.Definition – 15.2.Function of a Trade Mark 16.Explain the evolution of Trade Mark Law 17.What are the marks that can be registered on Trademarks? 17.1.Definition – 17.2.Procedure for Registration of Trade Mark 17.2.1.Statutory Provisions 17.2.2.Who may apply to register? 17.2.3.Preliminary advise and search 17.2.4.Examination and Objections 17.3.Basic Principles of Registration of Trade Mark 17.4.Opposition to Registration 18.Explain the concept of Goodwill 19.Explain the concept of Industrial Designs 19.1.Definition of Design 19.2.Designs prohibited from registration 19.3.Registration of Designs 19.4.Rights conferred by Registration
1.What is intellectual property?
Intellectual property, in its literal sense, means the things which emanate from the exercise of the human brain. It is the product emerging out of the intellectual labour of a human being. It involves the visible expression of a mental conception, the work of both brain and hand. Intellectual property refers to creations of the mind: inventions, literary and artistic works, and symbols, names
4.Explain assignment and transmission of trademarks
4.1.Meaning-Assignment of trademarks means transfer of exclusive right in writing by an act of the parties
concerned. A registered or unregistered trademark is a corporal property and it is assignable and transmissible under the law. Generally transfer of trademarks by assignments must be in writing but in case of unregistered trademark assigned without any goodwill of business, the assignee will not be able to protect the trademark and no action for passing off can be maintained. Further in the case of assignments without the goodwill of business, the assignment will take effect only after the assignee advertises the assignment in the newspaper in accordance with the directions of the Registrar. However in case of assignment of unused trademark, advertisement is not necessary as there would be no confusion with respect to the trademark in the minds of the public. Transmission of trademarks for the purpose of trademark can be understood as devolution of rights relating to a trademark on the personal representatives of a deceased proprietor of a trade mark upon his death. Transmission effects by operation of law upon the death of proprietor of the trademark whether register or unregistered but not an assignment. A trademark is part of the goodwill of business and transfer of goodwill of business will transfer the trademark also automatically. Transmission will not take place unless the assignee advertisers the assignment in newspapers in accordance with the directions of the Registrars.
5.Explain the term license under the Copyright Act.
5.1.Definition-Section 30 of the Copyright Act defines license as an authorization to do certain acts which
without such authorization would be an infringement. The owner of a copyright may grant license to do any of the acts in respect of which he has an exclusive right to do. Licensing usually involves only some of the rights and not the whole. An author of a novel may license the right to reproduce the work in hardbook to one person and paper book to another, the serialization rights and dramatization rights in any language to yet another. License is different from assignment. In the case of a license the licensee gets the right to exercise particular rights subject to the conditions of the license but does not become the owner of that right whereas an assignee becomes the owner of the interest assigned.
5.2.Form and contents of license- There is no prescribed form for a license deed. But it should be in
writing signed by the owner of the copyright or his duly authorized agent. A license can be granted not only in respect of an existing work, but also in respect of a future work. But in the case of a future work the license will take effect only when the work comes into existence. Where the licensee of a future work dies before the work comes into existence then his legal representatives will be entitled to the benefit of the license if there is no provision to the contrary in the license.
5.2.1.A license should contain the following particulars-
- Identification of the work
- Duration of license
- The rights of licensee
- Territorial extent of license
- The quantum of royalty payable
- The terms regarding revision, extension and termination
5.3Period of license-if the licensee does not exercise his right licensed to him within one year from the date
of license in respect of such rights it will be deemed to have lapsed after the expiry of one year. If the period of license is not stated it will be deemed to be 5 years from the date of granting license.
6.Write a note on Rights of Author
The author of a work may relinquish all or any of the rights in the copyright in the work by giving notice in the prescribed form to the Register of Copyrights and there upon, such rights cease to exist from the date of the notice. On receipt of the above notice, the Registrar of copyrights shall cause it be published in the official Gazette and in such other necessary manner. The relinquishment of all or any of the rights in the copyright in a work does not affect any rights subsisting in favour of any person on the date of the above notice.
7.Explain compulsory licensing under Copyright Act.
7.1.Non-voluntary or Compulsory Licence
Many countries have provided in their copyright legislation for compulsory licenses particularly in those fields of copyright where modern technology has created new uses for works giving new rights which can only be exercised effectively by bulk licencing through a collecting society or under a compulsory licence system. These provisions have been found necessary because new technology which has posed problems for the enforcement of copyright which could only be solved in a practical way by compulsory licence schemes.
7.2.International Conventions and Non-voluntary Licensing
The Berne Convention, Paris Acts (1971) and the UCC have made special provisions for non-voluntary licences for the benefit of developing countries. Under these provisions such licences are (a) confined to the exercise of two rights - the translation right and the reproduction right; (b) confined to countries recognized as developing countries; (c) only permitted if all the prior conditions stipulated in the Annex and Protocol are fulfilled; (d) temporary in the sense that they are permissible under the conventions only as long as the country concerned ranks as a developing country. The Berne Convention contains compulsory licence provisions relating to the broadcasting right and recording right. Subject to the conditions that: (1) the moral rights of authors are safeguarded. (2) equitable remuneration is provided for and the amount of which to be fixed either by agreement or by ‘competent authority’ which is usually a Government agency or a special tribunal; and (3) the compulsory licence must be applicable only in the country which has provided for it.
7.3.Compulsory licence of an Indian Work [S. 31]
9.1.Infringement of Literary, Dramatic or Musical Works [S. 51 r/w S. 14(a)]
If a person without the consent or licence of the owner of the copyright does or authorize the doing of any of the following acts, he will be guilty of infringement of the copyright in the work. (1) to reproduce the work in any material form including the storing of it in any medium by electronic means; (2) to issue copies of the work to the public not being copies already in circulation; (3) to perform the work in public or communicating it to the public; (4) to make any cinematograph film or sound recording in respect of the work; (5) to make any translation of the work; (6) to make any adaptation of the work; (7) to do in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in cls. (1) to (6); (8) to permit for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement or copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of the copyright; (9) to make infringing copies of the work for sale or for hire or sells or lets for hire or display or offers for sale or hire infringing copies or; (10) to distribute infringing copies either for the purpose of trade or to such an extent as to effect prejudicially the owner of the copyright; (11) to exhibit infringing copies by way of trade to the public; (12) to import into India infringing copies. However the import of one copy of the work for the private and domestic use of the importer is permitted. (13) In respect of a computer programme which is a form of literary work; i. to do any of the acts specified above and ii. to sell or give on hire, or offer for sale or hire, any copy of the computer programme, regardless of whether such copy has been sold or given on hire on earlier occasions. Infringing copy means reproduction of the work made or imported in contravention of the provisions of the Act [S. 2 (m)]. The reproduction of the work in the form of a cinematograph film is deemed to be an infringing copy.
9.2.Infringement of Artistic Works [S. 51 r/w S. 14(c)]
In respect of an artistic work infringement of the copyright consists in doing or authorizing the doing of any of the following acts without the consent or licence of the copyright owner: (1) reproducing the work in any material form, including the depiction in three dimension of a two dimensional work or in two dimensions of a three dimensional work, (2) communicating the work to the public, (3) issuing copies of the work to the public not being copies already in circulation, (4) including the work in a cinematographic film, (5) making any adaptation of the work, (6) in relation to an adaptation of the work any of the acts referred to above, (7) making for sale or hire, or selling or letting for hire, offering for sale etc., infringing copies of the work (8) distributing, exhibiting in public for trade, infringing copies of the work, (9) importing infringing copies of the work except one copy for private use. In order to constitute infringement, a substantial part of the plaintiffs' work must have been taken and the defendant must have made use of the plaintiffs' work. What is substantial may depend upon how important that part, is to the recognition and appreciation of the artistic work. It is relevant to consider whether the feeling and artistic character have been taken.
Infringement of painting or a picture can be detected by a close comparison of the two works to see whether minute details in original work have been reproduced in the alleged infringing copy. If a painter uses a copyright photograph only as a source of inspiration or for reference purposes only there may be infringement. If, however, the ultimate painting is a copy of photograph, there would be infringement, especially if the photograph is an original one. If a person gets his photograph taken by a photographer on payment the copyright in the photograph belongs to the person. Accordingly the publication of the photograph or its exhibition at any place including the photographic shop window constitutes infringement of that copyright.
10.What are the remedies available against infringement of copyright?
10.1.Authors' Special Rights [S. 57]
An author of a copyright work has the following special rights (a) to claim authorship of the work, (b) to restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work which is done before the expiration of the term of copyright, if such distortion, mutilation, modification or other act would be prejudicial to his honour or reputation. However, this right is not available in respect of any adaptation of a computer programme to which certain acts do not constitute infringement of the copyright in the work [S. 52(1)(aa)]. This section provides that making of copies of adaptation of acomputer programme for certain purposes or to make back up copies for protection against loss, destruction or damage will not amount to infringement of copyright in the work. The author's special rights can be exercised even after the assignment of the copyright. They can be enforced by an action for breach of contract or confidence, a suit for defamation or passing off as the case may be. In respect of works of architecture where the construction of a building or other structure which would infringe the copyright in some other work has been commenced the owner of the work will not be entitled to obtain an injunction to restrain the construction of such building or structure or to order demolition. He cannot also claim damages for conversion. In appropriate cases a declaratory order may be obtained as to whether what the defendant is doing or proposes to do is an infringement of the copyright in a work.
10.2.Civil Remedies
10.2.1.Procedure
The procedure before the court in a suit for infringement copyright is governed by the Code of Civil Procedure.
10.2.2.The plaintiff has to establish the following:
(1) he is the owner of the copyright, (2) copyright subsisted in the work infringed at the time the defendant committed the infringement, (3) particulars of the alleged infringement, (4) what the defendant has done constitutes infringement of the copyright, (5) the nature of damage if any suffered by him or likely to suffer.
10.2.3.The defendant may set-up one or more of the following defences:
(1) no copyright subsists in the work alleged to be infringed,
interlocutory injunction the court must look at the whole case. It must have regard not only to the strength of the claim, but also to the strength of the defence and then decide what is best to be done. The remedy by way of interlocutory injunction must not be made the subject of strict rules.
10.5.Damages or Account of Profits
There are two types of damages available to a successful plaintiff, one under S. 55 for infringement and the other under S. 58 for conversion. The copyright owner is entitled to treat all infringing copies of his work as if they were his own property. He will have to take civil proceedings for the recovery of possession thereof or in respect of conversion thereof. The plaintiff may also claim special damages for the flagrancy of infringement. As an alternative to damages a successful plaintiff may claim account of profits.
10.6.Criminal Proceedings [Ss. 63-70]
In addition to civil remedies the Copyright Act enables the owner of the copyright to take criminal proceedings against an infringer. Knowledge or mens rea is an essential ingredient of the offence. These two remedies are distinct and independent and can be availed of simultaneously. The offence of infringement of copyright is punishable with imprisonment which may extend from a minimum period of six months to a maximum of three years and with a fine of the order of Rs. 50,000 to Rs. 2.00 lakhs. A Police Officer of the rank of Sub-inspector and above is given the power to seize without warrant, all infringing copies of the work and accessories for making infringing copies wherever found, to be produced before a Magistrate. All infringing copies of the work in which copyright subsists and all plates used for the production of such copies are deemed to be the property of the owner of the copyright in the work. The court trying the offence may order that all copies of the work appearing to be infringing copies or plates for making infringing copies in the possession of the alleged offender be delivered up to the owner of the copyright without any further proceedings. This is so whether the accused is convicted or not. However, for compensation in respect of conversion of infringing copies the owner of the copyright will have to take civil proceedings. No court inferior to that of a presidency magistrate or a magistrate of the first class can try an offence under the Act. Any person can make a criminal complaint and a magistrate will be competent to take cognizance of any offence upon receiving a complaint of facts which constitutes such offence irrespective of the qualifications or eligibility of the complainant to file a complaint. Ordinarily, however, it is the owner of the copyright or any person who has an interest in the copyright, e.g the licensee, who files a complaint. A joint author can also file a complaint. The conduct of the criminal proceeding is governed by the Criminal Procedure Code.
10.7.Threat of Legal Proceedings and Slander of Title [S. 60]
10.7.1.Threat action
When the owner of the copyright in a work comes to know that his copyright is being infringed by a person he normally sends a notice to that person requesting him to forthwith discontinue the act which constitutes infringement of the copyright. If the person complies with the request the matter ends there subject to the question of compensation for damages and conversion, if any, being settled by mutual agreement. This procedure is adopted only where the nature of the infringement involved is such that it is not likely to be repeated, e.g. the performance in public of a dramatic or musical work where the damages involved will be negligible. But where the infringement involves the reproduction of a copyright work in large numbers and the damages involved might be heavy the owner of the copyright sends notices to the persons involved in the infringing acts, threatening them with legal proceedings. The threat may be direct or indirect. It may be addressed
to particular persons or generally and it may be made through circulars, advertisements or otherwise.
10.7.2.Slander of Title
If a publisher publishes the work of A under the name of B with the approval of B and without the consent of A, A may, in the absence of any express or implied contract, sue the publisher and B for malicious falsehood or slander of title. Copyright Act provides that the author of a work has the right to claim the authorship of the work. The Berne Copyright Convention also recognizes this right. If this right is infringed the author can take proceedings against the persons concerned for the relief of injunction and damages. The right to claim authorship exists even after the assignment of the copyright in the work and can be exercised by the legal representatives of the author. The plaintiff has to prove that the statement or representations complained of were false or untrue; that they were made maliciously, that is, without just cause or excuse, and that the plaintiff has suffered special damage thereby. Malice in the law of slander of title and other forms of injurious falsehood means some dishonest or otherwise improper motive. An intent to injure without just cause or excuse is sufficient.
11.Write a note on copyright societies
Section 33 to 36 deals with Performing Rights Societies which carry on the business of issuing or granting licenses for the performance in India of any work in which copyright is subsisted. A owner of copyright shall in his individual capacity, continue to have the right to grant licenses in respect of his own works consistent with his obligation as a member of the registered copyright society. Copyright Societies are formed to license the works of owners of copyright to those interested in the re- production, performance or communication to public of the works. They are authorized to do this service by the owners on payment of suitable fees. The Societies are also authorized to watch out for infringement of the copyright and take appropriate legal action against the infringers. Section 33(3) says the Central Government will not register more than one copyright society to do business in respect of the same class of work. If a copyright society is managed in a manner detrimental to the interest of owners of the rights conferred the Central Government may cancel its registration
12.Define ‘Patent’ and ‘invention’
The law of patents in India is governed by the Patents Act 1970 as amended by the Patents (Amendment) Act
- A bill named Patents (Second Amendment) Bill 1999 which had proposed substantial changes in the law was introduced in the Parliament in December 1999, and was passed as the Patents (Amendment) Act 2002. This Act was further amended by the Patents (Amendment) Act 2005.
12.1. Patent
A patent is an exclusive right granted to a person who has invented a new and useful article or an improvement of an existing article or a new process of making an article. It consists of an exclusive right to manufacture the new article invented or manufacture an article according to the invented process for a limited period. After the expiry of the duration of patent, anybody can make use of the invention. The concept of patent and its essential ingredients like novelty, inventive step, lack of obviousness and sufficiency of description have remained the same ever since it was conceived over four hundred years ago. A patent is a form of industrial property or as it is now called intellectual property. The owner of the patent can sell this property. He can also grant licences to others to exploit the patent. The property in a patent is similar in
an existing article or a new process of making an article. It consists of an exclusive right to manufacture the new article invented or manufacture an article according to the invented process for a limited period. After the expiry of the duration of patent, anybody can make use of the invention. The concept of patent and its essential ingredients like novelty, inventive step, lack of obviousness and sufficiency of description have remained the same ever since it was conceived over four hundred years ago. A patent is a form of industrial property or as it is now called intellectual property. The owner of the patent can sell this property. He can also grant licences to others to exploit the patent. The property in a patent is similar in many respects to other forms of property. A patent being a creation of statute is territorial in extent. A patent granted in one state cannot be enforced in another state unless the invention concerned is also patented in that state. A patent is not granted for an idea or principle as such, but for some article or the process of making some article applying the idea.
13.2.Inventions not Patentable [Ss. 3-4]
The following inventions are not patentable:
- An invention which is frivolous or which claims anything obviously or contrary to well-established natural laws.
- An invention the primary or intended use of which would be contrary to law or morality or injurious to public health.
- The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living or non -living substances occurring in nature(for example, the theory of relativity is not patentable).
- The mere discovery of any new from of a known substance which does not result in the enhancement of the known efficacy of that substance or the mare discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such process result in a new product or employs at least one new reactant.
- A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.
- The mere arrangement or rearrangement or duplication of known devices each functioning independently of one another in a known way.
- A method of agriculture or horticulture.
- A process for the medical, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
- Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.
- A mathematical or business method or a computer programe per se or algorithms.
- A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.
- A mere scheme or rule or method of performing mental act or method of playing game.
- A presentation of information.
- Topography of integrated circuits.
- An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
- An invention relating to atomic energy.
14.How is infringement of patent determined?
What constitutes infringement of Patent is not defined in the Patents Act. But obviously infringement of a patent is the violation of the monopoly rights conferred by the grant. The right conferred by the Patent is the exclusive right to make, use,exercise, sell or distribute the invention in India. Hence infringement consists in the violation of any of these rights. Where the invention claimed is not a process but a substance irrespective of the means by which it is produced, the rights of the patentee are infringed by anyone who makes or supplies that substance commercially for use by others even though he does not know that it is that substance he is making or supplying. In the case of a patent for a process the rights of the patentee are infringed by one who uses or exercises the method or process in India. Since the patentee's rights are subject to various condition under the Act, the scope of infringement must be considered in the background of these statutory conditions.
14.1.In determining whether what the alleged infringer is doing amounts to an
infringement of a particular patent three questions are involved:
- the extent of monopoly right conferred by the patent which has to be ascertained by a construction of the specification, particularly the claims. Construction
- whether the alleged acts amount to making, using, exercising, selling or distributing a product or using or exercising a method or process in the case of a process patent, and
- whether what the alleged infringer is doing amounts to an infringement of the monopoly conferred by the patent grant. First, in order to ascertain the scope of the claims made in the patentee’s specification, the court must ascertain the essential integers of the claim. This is a question of construction and no general rule can be laid down. The claim must be construed as a document without having in mind the alleged infringement. Secondly, the essential integers having been ascertained, the infringing article must be considered. To constitute infringement the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents;there will still be infringement. Where the invention resides in a new combination of known integers, or merely in a new arrangement and interaction of ordinary working parts, it is not sufficient to show that the same result is reached; the working parts must act on one another in the way claimed in the claim of the patent. If the patentee has in his specification limited the essential features of his claim in a manner that may appear to be unnecessary, it may be that the copier can escape infringement by adopting some simple mechanical equivalents so that it cannot be said that every essential integer of the claim has been taken.
14.2.What Constitutes Infringement
In order to constitute infringement the defendant must be shown to have taken the invention claimed in substance. As to what is the real substance of the invention, whether it be a combination or a process must be decided on the evidence, that is to say, it is a question of fact. It is seldom that an infringer takes the whole of the invention, he may omit some unessential part or step, and substitute another step or part. But if he takes all the essential features of the invention he cannot avoid infringement. This leads to the question what are the essential features of the invention claimed. The patentee himself specifies in his claims with particularity those elements or integers of his invention which he claims to be essential. If the language which the patentee has used in the claims specifies a number of elements or integers acting in a particular relation to one another as constituting the essential features of his claim, the monopoly which he obtains is for that specified combination of elements or integers so acting in relation to one
- alleged infringement not novel or is obvious (Lord Moulton's defence or Gillette defence). Counter - claim for revocation may be made by the defendant in his written statement instead of a separate petition for revocation.
14.5.Reliefs
The reliefs available to a successful plaintiff in a suit for infringement include:
- an injunction, and
- either damages or account of profits. The power to grant reliefs is subject to certain restrictions. Thus where the patent is endorsed ‘licences of right’, and the infringing defendant is ready and willing to take a compulsory licence no injunction will be granted. In the case of innocent infringement no, damages or account of profits will be granted. Damages or account of profits may be refused in respect of infringement committed after a failure to pay the renewal fee within the prescribed period. In certain circumstances damn or account of profits will not be granted in respect of the use of the invention before the date of amendment where the specification has been amended after its publication. If the patent is held to be only partially valid, reliefs may be granted in respect of the valid claims which is infringed,provided the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge.
14.5.1.Interlocutory Injunction
The plaintiff may at the commencement of the action move for an interim injunction to restrain the defendant from committing the acts complained of until the hearing of the action or further orders. The principles upon which an interlocutory injunction may be granted in a patent action are the same as in any other action, namely, that the plaintiff should make out a prima facie case and also that the balance of convenience lies in his favour. In patent actions it may frequently happen that the defendant is able to show that there are substantial grounds for disputing the validity of the patent and often also that there are good reasons for saying that his apparatus does not infringe the plaintiff's claim. If either of those circumstances are shown to be present, the court may not grant an interlocutory injunction. The onus of showing a prima facie case which lies on the plaintiff is a heavy one and that it is comparatively easy for the defendant to establish a defence sufficient to prevent the grant of such an injunction. The remedy by interlocutory injunction is kept flexible and discretionary and is not made the subject of strict rules.The object of an interlocutory injunction is to protect the plaintiff against injury by violation of his rights for which he could not be adequately compensated in damages recoverable in the action if he succeeds at the trial. The court must weigh one need against another and determine where the balance of convenience lies. In granting the injunction the court must be satisfied that the claim is not frivolous or vexatious; in other words, that there is a serious question to be tried. Various factors are taken into consideration in deciding the balance of convenience, such as whether the patent is a new one or an old one, whether the defendant's trade is a new one or an old established one and so on. If a patent is a new one, challenging its validity may be sufficient for a refusal of an injunction, but if the patent is sufficiently old and has been worked, the court would, for the purpose of temporary injunction presume the patent to be a valid one. Even if a likelihood of infringement is established, interlocutory injunction will be refused if there is a serious attack on the validity of the patent. If the patent relied on will expire before the action can be heard, the balance of convenience can be considered against the grant of an interlocutory injunction.
14.5.2.Damages or Account of Profits
A successful plaintiff in a suit for infringement is entitled to the relief of damages or an account of profits with certain exceptions. The exceptions are:
- infringement was innocent,
- the infringement was committed after a failure to pay the renewal fee within the prescribed time and before any extension of the period
- where the specification has been amended, the infringement was committed before the date of amendment unless it was shown that the original specification was framed in good faith and with reasonable skill and knowledge, and
- where the patent was held partially valid, damages or account of profits in respect of the valid claims will be granted only under certain circumstances.
14.5.3.Assessment of damages
In assessing damages the sole question is what is the loss sustained by the patentee by reason of the unlawful sale of the defendant’s goods. The loss must be the natural and direct consequence of the defendants' acts. The object of damages is to compensate for loss or injury. The general rule is that the measure of damages is to be, so far as possible, that sum of money which will put the injured party in the same position as he would have been in, if he had not sustained the wrong. There are two essential principles in valuing the damages, first, that the plaintiffs have the burden of proving their loss; second, that defendants being wrongdoers, damages should be liberally assessed but the object of this is to compensate the plaintiffs and not to punish the defendants. The measure of damages may be estimated by applying the following principles:
- Where the patentee manufactures the product and does not grant licences, the measure of damages will be the profit which would have been realized by the owner of the patent if the sales of the infringing articles had been made by him.
- Where the patent is exploited through the granting of licences for royalty payments, the measure of damages which the infringer must pay will be the sums which he would have paid by way of royalty, if instead of acting illegally, he had acted legally. The solution to this problem will depend upon the evidence as the rates of royalty may vary from time to time.
- The pecuniary equivalent of the injury resulting from the natural consequences of the acts done by the defendants. An estimate should be made of the number of articles the plaintiff did sell less by reason of the acts of the defendants. Then find the profit that they would have made upon each article.
- Where only a part of a complex machine is protected by a patent the importance of the patented part to the whole machine should be considered. If it forms the very essence of the machine damages may be measured by the profit on the whole machine; otherwise account should be taken only of the patented part.
15.What is a trade mark?
A trade mark is a visual symbol in the form of a word, a device, or a lapel applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons. A person who sells his goods under a particular trade mark acquires a sort of limited exclusive right to the use of the mark in relation to those goods. Such a right acquired by use is recognized as a form of property in the trade mark, and protected under common law. A person can also acquire a similar right over a trade mark, not so far used but only proposed to be used, by registering it under the Trade Marks Act 1999. The law of trade marks is based mainly the concepts of distinctiveness similarity of marks and similarity of goods.
15.1.Definition – 2(1)(zb)
(1) Trade mark must be a mark which includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or combination thereof [S. 2(1)(m)]
law a trade mark is defined as a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and the proprietor with or without any indication of the identity of that person. It is not necessary that the proprietor of the mark must himself manufacture the goods. He may get the goods manufactured by others. By virtue of extensive use and advertisement a trade mark began to acquire goodwill and reputation among the customers of the goods. This tempted competitors to copy well known trade marks or choose marks which bore deceptive resemblance to reputed trade marks so that ordinary purchasers would be led to believe that the goods bearing such marks are the same goods which they were hitherto accustomed to buy and consequently the competitor could reap profits by trading on the reputation of another trade mark. Thus arose the necessity for protecting the goodwill and reputation of a trade mark. Prior to the statutory registration of trade marks, the only way in which copying of a trade mark could be prevented was by bringing an action for passing off, which required proof of use and reputation of the mark each time an action is launched against an infringer. This process was cumbersome, time consuming and the outcome uncertain. Hence a system of registration of trade mark was evolved which gave statutory recognition to ownership of trade marks, and defined the rights conferred by registration and prescribed remedies in respect of infringement of those rights. The statutory law relating to trade marks was codified in the Trade and Merchandise Mark, 1958 and the Trade and Merchandise Marks Rules 1959. The also provides for criminal action against infringers fraudulently copying another’s trade mark. The law relating to passing off is still based on case law. The statutory law of trade marks is now based on the Trade Marks Act 1999 and the Rules framed thereunder.
17.What are the marks that can be registered on Trademarks?
A trade mark is a visual symbol in the form of a word, a device, or a lapel applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons. A person who sells his goods under a particular trade mark acquires a sort of limited exclusive right to the use of the mark in relation to those goods. Such a right acquired by use is recognized as a form of property in the trade mark, and protected under common law. A person can also acquire a similar right over a trade mark, not so far used but only proposed to be used, by registering it under the Trade Marks Act 1999. The law of trade marks is based mainly the concepts of distinctiveness similarity of marks and similarity of goods.
17.1.Definition – 2(1)(zb)
(1) Trade mark must be a mark which includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or combination thereof [S. 2(1)(m)] (2) The mark must be capable of being represented graphically (3) It must be capable of distinguishing the goods or services of one person from those of others. (4) It may include shape of goods, their packaging and combination of colours. (5) It must be used or proposed to be used in relation to goods or services. (6) The use must be for the purpose of indicating a connection in the course of trade between the goods or services and some persons having the right as proprietor to use the mark. (7) The right to proprietorship of a trade mark may be acquired by registration under the Act or by use in relation to particular goods or services. (8) The right of proprietorship acquired by registration is a statutory right which requires no actual user but only an intention to use the mark. On the other hand the right acquired by actual user in relation to particular goods or services, is a common law right which is attached to the goodwill of the business concerned.
A registered trade mark can be protected against unauthorized use by others by an action for infringement. This is a statutory remedy. An unregistered trade mark can be protected against unauthorized use by others by an auction for passing off which is a common law remedy.
17.2.Procedure for Registration of Trade Mark
17.2.1.Statutory Provisions
The procedure for registration of trade marks is contained in Ss. 18 – 24 of the Trade Marks Act 1999.
17.2.2.Who may apply to register?
Any person claiming to be the proprietor of the trade mark used or proposed to be used by him can apply. The application may be made in the name of an individual, partners of a firm, a Corporation, any Governmental Department, a Trust or joint applicants. The proposal to use the trade mark may be by a Company to be formed or by a registered user.
17.2.3.Preliminary advise and search
Before or after applying for registration the applicant may apply for a report as to whether the mark or one similar to it has already been registered or applied for. He may also request for the Registrar’s opinion as to the distinctive character of the mark. The Registrar's search report or opinion is not, however, binding on him.
17.2.4.Examination and Objections
The Registrar will cause the application to be examined and communicate to the applicant any objection to the mark which mainly relates to distinctive character and similarity with already registered marks. The applicant can put forward his case either in writing or at a hearing. If the application is accepted, it will be advertised in the Trade Marks Journal. If refused, the applicant may go on appeal to the Appellate Board, which is seldom worthwhile unless the applicant has built up goodwill by extensive use in which case of course the application will seldom be refused. If the application is refused on the ground of lack of distinctive character, the applicant may, after some years of use, make a fresh application. If it is refused on the ground of conflict with any registered trade mark and the mark is proposed to be used it is better to go for a fresh mark. If, however, the similarity is doubtful the applicant may use the mark and make a fresh application after some years of use. He will have to take the risk of being sued for infringement by the owner of the conflicting mark.
17.3.Basic Principles of Registration of Trade Mark
The purpose of the Act, as stated in the preamble, is to provide for the registration and better protection of trade marks and to prevent the use of fraudulent marks. In consonance with this object the following fundamental principles of trade mark law are embodied in the various provisions of the Act: (a) Since registration confers on the proprietor a kind of monopoly right over the use of the mark, which may consist of a word or symbol legitimately required by other traders for bona fide trading or business purposes, certain restrictions are necessary on the class of words or symbols over which such, monopoly right may be granted.Thus descriptive words, surnames and geographical names are not considered prima facie registrable. [S. 9] (b) Registration of a trade mark should not interfere with the bona fide use by any person of his own name or that of his place of business, or the use of any bona fide description of the character or quality of the goods. [S. 35]
