Unlocking the Secrets of Copyright Ownership and Transfer: A Comprehensive Guide

Unlocking the Secrets of Copyright Ownership and Transfer: A Comprehensive Guide

I. Introduction

In today’s digital age, where intellectual property has become a valuable asset, understanding the nuances of copyright ownership and transfer is essential for authors, businesses, and individuals alike. Think about it – your creative works, whether it’s a book, a song, a photograph, or a piece of software, are your intellectual property, and you have the right to control how they are used and distributed.

But what if you want to sell those rights to someone else or grant them a license to use your work? That’s where copyright transfer comes in. It’s a complex process with a lot of legal jargon and fine print, but don’t worry – we’re here to break it all down for you in plain English.

In this comprehensive guide, we’ll take you on a journey through the world of copyright ownership and transfer. From determining who owns the copyright in the first place to the different ways rights can be transferred, licensed, or terminated, we’ll cover it all. So buckle up and get ready to unlock the secrets of copyright ownership and transfer – and learn how to protect and monetize your creative works like a pro.

II. Eligible Owners of Copyrighted Works

Let’s start with the basics. As a general rule, the author of a work is considered the first owner of the copyright. So if you wrote a book, composed a song, or painted a masterpiece, the copyright belongs to you.

But there are a few exceptions to this rule, as outlined in Section 17 of the Indian Copyright Act. For example, if you wrote an article for a newspaper or magazine as an employee, the publication actually owns the copyright for that particular work.

The same goes for photographs, paintings, or films that you created at the request of someone else (and were paid for it) – in those cases, the person who commissioned the work and paid you is considered the first owner of the copyright.

In a landmark case in 2011, the Delhi High Court granted copyright ownership to a plaintiff who wasn’t even the photographer – they were the ones who paid the photographer and requested the photos, so they were deemed the first owners.

There are also special rules for works created by employees or contractors, government works, and works created by international organizations. But don’t worry, we’ll dive deeper into those nuances later.

The key takeaway here is that copyright ownership isn’t always straightforward. It depends on the specific circumstances surrounding the creation of the work, so it’s important to understand the legal framework and your rights as a creator or commissioner of creative works.

III. Employee and Contractor Works

Now let’s talk about works created by employees and independent contractors, as this is a common scenario in many industries.

If you’re an employee and you create a work as part of your job duties, guess what? Your employer automatically becomes the first owner of the copyright in that work. This is known as a “work made for hire,” and it applies as long as there isn’t a separate contract specifying otherwise.

However, there’s a twist. If the work you created as an employee is a literary, musical, artistic, or dramatic piece that gets incorporated into a film, your employer doesn’t automatically own the copyright. In that case, you retain the initial ownership, and your employer would need to get a specific assignment from you to own the rights.

On the flip side, if you’re an independent contractor and you create a copyrighted work for a client, the first ownership of the copyright belongs to you, not the client. The client only has the right to use the work for the specific purpose they hired you for, unless you sign an assignment giving them full ownership.

So if you’re a freelance graphic designer, for example, and you design a logo for a client, you own the copyright to that logo by default. If the client wants full ownership, they’ll need to ask you to transfer the copyright to them through a written assignment.

It’s crucial for both employers and clients to understand these nuances when working with employees or contractors. Proper documentation and agreements can help ensure that copyright ownership is clearly established and transferred appropriately, if desired.

IV. Joint and Collective Ownership

In some cases, a copyrighted work may be co-owned by multiple authors. This is known as joint authorship, and it occurs when two or more authors collaborate on a work, and their contributions are inseparable.

A leading case on joint authorship in India is Najma Heptulla v Orient Longman Ltd and Ors, which established the criteria for determining whether a work is truly a joint creation. The key factor is that each author must have made a significant and inseparable contribution to the final product.

Joint ownership doesn’t necessarily mean equal ownership, though. The rights and responsibilities of co-owners can be governed by agreements or contracts that spell out the specifics of their ownership and the division of rights and royalties.

Collective works, like anthologies or encyclopedias, also involve multiple authors and contributors. In these cases, the individual authors hold copyright in their respective contributions, but the collective work as a whole may be owned by the publisher or editor who compiled and organized the contributions.

Understanding the concept of joint and collective ownership is crucial for authors, publishers, and copyright holders to navigate the complexities of collaborative works and ensure that rights and interests are properly protected and managed.

V. Transfer of Rights

So now that we’ve covered who can own a copyright, let’s talk about how those rights can be transferred.

There are a few different ways to transfer copyright ownership:

  1. Assignment: This is a complete transfer of ownership from the original creator (known as the “assignor”) to another party (the “assignee”). The assignee essentially becomes the new owner of the copyright.
  2. Testamentary Disposition: Copyright can also be transferred through a will, allowing the creator to pass on their rights to designated heirs or beneficiaries.
  3. Inheritance: If a creator dies without a will, their copyright may be transferred to their legal heirs through intestate succession (the process of distributing property when there is no will).

It’s important to note that not all rights can be assigned or transferred. Moral rights, which protect an author’s reputation and the integrity of their work, are not transferable. And thanks to the 2012 amendments to the Copyright Act, authors of literary or musical works included in films or sound recordings have an inalienable right to receive royalties, which they can only assign to their legal heirs or a copyright society (more on that later).

For an assignment to be valid, it must meet certain requirements, like identifying the specific work, the rights being assigned, the territory, and the duration. It must also specify both the royalties and other considerations (payments) involved.

There’s also a presumptive five-year term and a restriction to India’s territory if these details aren’t explicitly mentioned in the assignment agreement. So it’s crucial to get the details right and have a legally sound contract in place.

VI. Licensing

In addition to outright assignment, copyright owners can also license their rights to others. Licensing allows the owner to grant specific permissions for certain uses of their work without giving up complete ownership.

There are a few different types of licenses:

  1. Exclusive License: This grants the licensee the sole right to use the work in a specific way, excluding even the original owner from that particular use.
  2. Non-Exclusive License: This allows the owner to grant the same rights to multiple licensees simultaneously.
  3. Compulsory Licenses: These are special licenses granted by the Copyright Board under certain circumstances, like when a work has been withheld from the public or when it needs to be made available to people with disabilities.
  4. Statutory Licenses: These are licenses granted to broadcasters for things like radio and television broadcasts, as well as for cover versions of musical works.

Just like assignments, licenses must be in writing and should specify the work, the rights granted, the territory, and the duration. And if those details aren’t explicitly stated, the license is presumed to be for five years and restricted to India.

Licensing your copyright can be a great way to generate revenue from your creative works without giving up complete ownership. But it’s essential to understand the different types of licenses and to have a legally sound agreement in place to protect your rights and interests.

VII. Termination of Transfers

Okay, so what happens if you change your mind and want to reclaim your copyright after transferring it to someone else? Well, there are provisions for terminating transfers under certain circumstances.

If you’ve assigned your copyright to someone else and the agreement is more than five years old, you can apply to the Copyright Board to have the assignment revoked if you can show that it has become onerous (burdensome) for you. Essentially, if the terms of the agreement are no longer favorable or fair to you, the Board may allow you to terminate the transfer and regain your rights.

Licenses can also be terminated if the licensee fails to comply with the conditions of the agreement. If they violate the terms of the license, you may have grounds to terminate the agreement and revoke their rights to use your work.

And here’s a really interesting fact: If you’re an author who has transferred your copyright to another party, you may be able to terminate that transfer and reclaim your rights after a certain period of time. The specific time frame depends on when your work was initially published, but it can range from 35 to 56 years after the initial transfer.

The process for terminating a transfer is complex and involves serving a written notice to the assignee and submitting a copy to the Copyright Office. But it’s an option that can allow creators to regain control over their works after a significant period of time.

So while copyright transfers may seem permanent, there are mechanisms in place to allow authors and creators to revisit those decisions and potentially reclaim their rights under certain circumstances.

VIII. Recordal of Transfers

Now, let’s talk about the importance of recording copyright transfers with a government agency.

If you’ve registered your copyright with the Copyright Office and it’s been recorded in the Register of Copyrights, you can also record any transfers of ownership. This involves submitting an application to the Registrar of Copyrights, along with the required fee and documentation.

Recording your transfers with the Copyright Office isn’t strictly necessary for the transfer to be valid, but it does provide some significant legal advantages.

First, it puts third parties on notice that there has been a change in ownership. This can help prevent potential copyright infringement disputes down the line, as it establishes a clear record of who owns the rights to a particular work.

Second, in the rare case that conflicting transfers have been made, the agreement that was recorded first takes precedence under the Copyright Act. So recording your transfer can help ensure that your claim to ownership is recognized if any disputes arise.

While it may seem like an extra administrative step, recording your copyright transfers is a good practice that can help protect your rights and interests as a copyright owner or assignee.

While this guide has focused primarily on copyright ownership and transfer in India, it’s worth briefly touching on the process in the United States as well.

In the US, copyright assignment is typically done through a legally binding contract called a “copyright assignment agreement.” This contract outlines the specific work being transferred, the rights being assigned (like reproduction, distribution, adaptation, and performance rights), and the terms and conditions of the transfer.

Just like in India, copyright assignments in the US must be in writing and signed by the original copyright owner (or an authorized agent). And while it’s not strictly necessary to register the transfer with the US Copyright Office, doing so can provide the same legal advantages – it puts third parties on notice and helps establish priority in case of conflicting transfers.

The process of terminating transfers in the US is also similar to India. Authors who have transferred their copyrights to another party can potentially reclaim those rights after a certain number of years, typically 35 years for works created after 1978.

The key is to follow the proper procedures for termination, which involve serving a written notice to the assignee and recording the termination with the US Copyright Office.

While the specifics may vary between countries, the fundamental principles of copyright ownership and transfer are largely similar across jurisdictions. Understanding the legal framework and best practices can help creators and copyright holders protect and manage their valuable intellectual property assets, no matter where they are in the world.

X. Conclusion

Whew, that was a lot of information, but we hope this guide has helped demystify the complex world of copyright ownership and transfer for you.

To recap, we covered everything from determining the eligible owners of copyrighted works (which can be tricky, depending on the circumstances) to the different ways rights can be transferred or licensed. We also delved into joint and collective ownership, the termination of transfers, and the importance of recording your transfers with the appropriate government agencies.

Throughout this guide, we emphasized the importance of proper documentation, legally sound agreements, and understanding the nuances of copyright law. While it may seem like a lot of legalese and fine print, taking the time to get these details right can pay dividends in protecting your valuable intellectual property assets and ensuring that your rights and interests are properly managed.

Remember, your creative works are unique and valuable, and you have the power to control how they are used and monetized. By understanding the principles of copyright ownership and transfer, you can make informed decisions that align with your goals and ambitions as a creator or copyright holder.

And if you ever find yourself in need of expert guidance navigating these complexities, don’t hesitate to seek out legal advice from professionals who specialize in copyright law and intellectual property.

Now go forth and create, innovate, and protect your works like a pro!

For expert assistance in navigating the complexities of copyright ownership, transfer, and other legal matters related to your business or creative endeavors, turn to Filingwala.com. As a leading provider of accounting and legal services, Filingwala.com offers a comprehensive suite of solutions, including trademark registration, company startup registration, income tax, GST, and more. Their team of experienced professionals is dedicated to helping businesses and individuals protect their intellectual property assets and achieve their goals. Visit Filingwala.com today to learn more about their services and how they can support your success.

FAQ:

Q: Can I transfer my copyright to someone else?

A: Yes, you can transfer your copyright ownership to another party through a process called assignment. This involves a written agreement that outlines the specific work, rights being transferred, territory, duration, and any royalties or considerations involved.

Q: What’s the difference between assignment and licensing?

A: Assignment involves a complete transfer of ownership, while licensing allows you to grant specific permissions to use your work without giving up complete ownership. Licenses can be exclusive (granting sole rights to one party) or non-exclusive (allowing multiple parties to use the work simultaneously).

Q: Can I get my copyright back after transferring it to someone else?

A: In some cases, yes. Authors who have transferred their copyrights to another party may be able to terminate that transfer and reclaim their rights after a certain period of time, typically 35-56 years after the initial transfer. The process involves serving a written notice and recording the termination with the appropriate government agency.

Q: Do I need to register my copyright transfer with a government agency?

A: While it’s not strictly necessary for a transfer to be valid, recording your copyright transfers with the Copyright Office (in India or the US) can provide legal advantages. It puts third parties on notice of the change in ownership and can help establish priority in case of conflicting transfers.

Q: Can I transfer my moral rights as an author?

A: No, moral rights are not transferable. Moral rights protect an author’s reputation and the integrity of their work, and they remain with the author even if the copyright itself is transferred to someone else.

International Trademark Registration – Procedure, Benefits, and FAQs 2024

international trademark registration india
Image: FreePik

Introduction

In today’s globalized business environment, obtaining trademark protection in multiple countries is crucial for companies looking to expand internationally. A strong global brand identity establishes credibility, boosts recognition, and deters infringement by competitors.

International trademark registration under the Madrid Protocol offers companies a streamlined, cost-effective solution for registering trademarks in over 100 member territories through a single application. According to filingwala.com, India’s top legal and accounting services provider, international trademark filings from India reached over 1.25 million in 2022.

This comprehensive guide will outline the Madrid Protocol system, benefits of international trademark registration, step-by-step application procedure, and FAQs to help you make informed decisions about protecting your brand globally.

What is a Trademark?

A trademark refers to any word, symbol, color, sound, smell, logo, or combination used by a company to identify its goods and services. It allows customers to distinguish a company’s products from competitors. Trademarks can be registered through national or regional intellectual property (IP) offices.

Registration provides the owner with exclusive rights to the mark and enables enforcement against infringement. Filingwala.com highlights that trademarks are territorial and registration in one country does not confer protection in others. International registration is required for global IP coverage.

Madrid Protocol for International Registration

The Madrid Protocol is an international trademark registration system governed by the World Intellectual Property Organization (WIPO). It enables companies to register a trademark in multiple jurisdictions through a single application filed with their national IP office.

Here are some key features of the Madrid Protocol:

  • Cost-saving compared to separate national applications
  • Single language for application
  • Centralized management through WIPO
  • One set of changes for registered marks
  • Opposition managed directly with each member

Over 100 countries, including the EU, USA, China, Japan and India are members of the Madrid Protocol. This widespread membership makes it an attractive route for global trademark protection.

Pre-Requisites for International Registration

To file for international trademark registration under the Madrid Protocol via India, the applicant must fulfil these conditions as per Indian trademark laws:

  • Be an Indian citizen or company incorporated in India
  • Possess a prior national trademark application/registration in India
  • File the same mark and goods/services as the Indian application
  • Select member countries where protection is desired

Experts at filingwala.com emphasize completing a comprehensive global trademark availability search to ensure no identical or deceptively similar marks exist. This prevents rejection and saves time and costs.

Step-by-Step Procedure for International Registration

Follow these key steps when filing for international trademark registration under the Madrid Protocol:

1. File Indian National Application

Submit an application for trademark registration with the Indian Trademarks Office. This establishes the basis for an international application.

2. Prepare Madrid Application

Complete Madrid Protocol application forms MM2(E) electronically on the WIPO website. Pay handling fees. List countries for registration.

3. Submit to Indian Trademark Office

File the international application and fees with the Indian Trademarks Registry as the office of origin. They will verify and transmit it to WIPO.

4. Formalities Check by WIPO

WIPO checks if all formalities comply with the Madrid Protocol. If approved, the mark is recorded in the International Register.

5. Examination by Each Member

Individual members conduct trademark examinations under their national laws. Acceptance or rejection is communicated to WIPO within 18 months.

6. Registration Certificate

After acceptance by members, WIPO issues an international registration certificate. The mark is now protected in the designated countries.

Experts at filingwala.com recommend engaging a trademark attorney for guidance on documentation and processes to avoid procedural delays or rejection.

Benefits of International Trademark Registration

Here are the major advantages of obtaining an international trademark registration through the streamlined Madrid Protocol:

Cost Savings

Filing one application through WIPO is significantly cheaper than separate national filings in each member territory. Renewals and record changes also require just one filing.

Ease of Management

Centralized administration of the mark through WIPO simplifies international management versus dealing with different national offices.

Enhanced Protection

One registration extends protection to multiple countries where the mark is used or expansion planned, preventing infringement.

Global Brand Presence

International recognition establishes brand identity and deters others from using the mark globally.

Licensing Opportunities

Registered trademarks open up global licensing, franchising and brand extension possibilities.

Facilitates Imports/Exports

International protection combats infringement and unfair competition abroad when exporting marked goods.

With the benefits highlighted above, experts at filingwala.com strongly recommend international trademark registration for brands seeking an overseas presence and market growth. [Call now : 9284041780]

FAQs on International Trademark Registration

Here are answers to some frequently asked questions on the Madrid Protocol for international trademark protection:

How long does the process take?

Typically 12 to 18 months from Indian application to grants in member countries. The Indian filing date is the registration date in all members.

Can the list of countries be expanded later?

Yes, new members can be designated subsequently by filing a request for territorial extension with WIPO.

What are the renewal requirements?

A single renewal at WIPO maintains protection in all members. The term is 10 years from the international registration date.

How are transfers of ownership recorded?

Recording assignment or mergers at WIPO automatically notifies all members rather than separate recordings per country.

Can priority under the Paris Convention be claimed?

Yes, priority can be claimed from earlier national or regional applications if filed within 6 months.

What happens if a member refuses the mark?

The international registration is not affected. Refused members are removed from the national list while other grants remain intact.

Reach out to the experts at filingwala.com for personalized assistance and advice on international trademark registration or any other legal services your business needs.

Conclusion

Obtaining international trademark protection is vital for companies seeking to capitalize on the goodwill of their brand globally. The Madrid Protocol offers an efficient and cost-effective solution through WIPO’s centralized registration mechanism spanning over 100 countries.

Leveraging India’s accession to the Madrid Protocol in 2010, Indian companies can now easily secure their trademarks abroad. By understanding the Madrid application process, pre-requisites, and key benefits, brand owners can make informed decisions on securing their intangible assets internationally.

This article has provided comprehensive information and a step-by-step guide to the Madrid Protocol system. For tailored advice on international trademark registration or other intellectual property protection for your India-based company, consult with the experienced professionals at filingwala.com. Their expertise will help you build a strong and valuable brand identity worldwide. [Call now: 9284041780]

The 5 Requirements for Patentability in India: Everything You Need to Know to Protect Your Invention

patentability india
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Got a revolutionary new product or technology you want to launch in India? Seeking ironclad protection against copies and duplicates? Like inventors worldwide, filing for a patent in India is one of the smartest moves you can make.

But the patent filing process in India comes with stringent standards. To be granted a patent, an invention must satisfy five core patentability requirements as per the Indian Patents Act 1970.

Understanding these requirements in depth is crucial for inventors who want to safeguard their intellectual property in the Indian market.

This comprehensive guide will break down the five key requirements for patentability in India, offer tips and examples for meeting each one, and explain why hiring an Indian patent agent maximizes your chances of success. Let’s get started!

Introduction

India’s patent system is designed to protect new inventions that demonstrate a marked improvement over existing knowledge in a technological field. For an invention to qualify for a patent in India, it must satisfy five main criteria:

  1. Novelty
  2. Inventive step
  3. Industrial application
  4. Enablement
  5. Non-obviousness

The bar for patentability in India is set quite high. Each year many applications are rejected for failing to sufficiently establish one or more of the requirements.

Navigating India’s patent application process and trademark registration process is vastly smoother with the guidance of a registered Indian patent agent. But familiarizing yourself with the five requirements will help you assess your invention’s patentability in India and communicate effectively with an agent.

Let’s look at each of the five requirements for patentability in India more closely.

The 5 Requirements for Patentability in India

1. Novelty

The invention must be new and novel compared to existing knowledge and prior art (previously patented or published inventions) in India and globally. It should not be an exact duplicate of already known products, processes, or technology.

Conduct thorough prior art searches in Indian and international patent databases to uncover similar inventions. Extensively document any similar patents or products and highlight what makes your invention completely new. This strengthens your claim to novelty.

For instance, if you have invented a new fishing net, point out specific novel features that distinguish it from existing nets already patented or sold in India. Minor tweaks to known inventions are not considered novel.

2. Inventive Step

The invention should demonstrate an inventive step, or feature, that is non-trivial and not obvious to a person having ordinary skill in that field of technology.

You need to establish that your invention sufficiently moves technology forward compared to the existing baseline. Minor improvements or adaptations to known technology are not considered inventive enough to deserve a patent.

For example, just inserting a GPS chip into an existing vehicle tracking device may be considered an obvious change, not an inventive step. But a vehicle tracker that can auto-alert emergency services in local languages during accidents would likely demonstrate a strong inventive step.

3. Industrial Application

The invention must be industrially applicable and capable of being made or used in some kind of industry.

This means software, algorithms, and business methods can only be patented in India if they have an industrial purpose and application. There should be adequate proof or indication that the invention has industrial utility and value.

For instance, a new e-commerce payment method should be described in context of how it would be implemented and its usefulness to online retailers in processing transactions.

4. Enablement

The invention must be clearly explained in the patent application to enable a person skilled in the same field to sufficiently understand, reproduce, and utilize it.

The application should provide enough materials, context, illustrations, formulas, flow charts, descriptions, and examples so that someone with similar knowledge could reconstruct, test, and use the invention without undue effort.

Omitting key details or being vague could lead to a patent rejection for lack of enablement. Use precise technical language relevant to the field while being as elaborate as possible.

5. Non-Obviousness

Even if the invention is new, inventive, and industrially applicable, it could still be considered too obvious by a skilled person to deserve patent protection.

Overcoming the non-obviousness requirement involves showing how your invention is not simply an aggregation of known techniques or a predictable variation of existing knowledge in the field.

Underline any unexpected, surprising, or counterintuitive aspects of the invention to argue why it moves sufficiently beyond the established baseline to warrant a patent. Bolster your case by having experts provide affidavits testifying the invention represents a non-obvious breakthrough.

Why Work with an Indian Patent Agent

Given the many nuances around meeting India’s patentability requirements, working with an authorized Indian patent agent offers huge advantages:

  • Expertise with Indian IP laws – Agents stay up-to-date on the Indian Patents Act and filing procedures, which differ from other countries.
  • Access to patent databases – Agents have access to sophisticated Indian patent search tools and databases helpful for uncovering relevant prior art.
  • Assessing patentability – They can evaluate your invention against requirements and advise if pursuing a patent seems viable.
  • IP protection strategies – Agents determine optimal types of patents and claims to maximize protection.
  • Drafting expertise – They know how to skillfully draft the necessary descriptions, claims, and application materials.
  • Communication skills – Experienced in corresponding with the Indian Patent Office to overcome objections and negotiate successful outcomes.
  • Cost savings – Hiring an expert from the start minimizes costly revisions and office actions down the road.
  • Objectivity – As third parties, agents provide impartial guidance inventors often lack being too close to their work.

Do not let worries about affordability deter you from seeking professional assistance. Robust patent protection pays for itself many times over by safeguarding your exclusive rights to commercialize a novel invention in India.

Patent Application Process in India

Here is a simplified step-by-step overview of the standard patent application process in India when working with a registered Indian patent agent:

  1. Initial consultation – Discuss invention background, sign engagement agreement, provide materials.
  2. Drafting patent application – Agent researches prior art, drafts complete application including descriptions, drawings, claims.
  3. Filing application – Agent reviews final application, files it with the Indian Patent Office.
  4. Examination – Patent office examines if requirements are satisfied. Issues examination report.
  5. Responding to objections – Agent modifies application as needed to overcome identified deficiencies.
  6. Grant of patent – If all requirements met satisfactorily, patent is granted.

The total process usually takes 3-5 years currently. Granted patents provide exclusive rights for 20 years from filing date.

Conclusion

Patenting an invention in India requires methodically demonstrating satisfaction of all five requirements – novelty, inventive step, industrial applicability, enablement, and non-obviousness.

Spend time upfront understanding the requirements and finding relevant prior art through searches. Then engage an authorized Indian patent agent to expertly craft and file the strongest application possible.

Their knowledge and experience with Indian patent law and the patent office’s procedures will prove invaluable to ultimately securing robust patent protection in India.

And of course, for support with the accounting, legal, and taxation aspects of growing your business in India, the expert team at Filingwala is always happy to help!

The Complete Guide to The Trademark Protection Act in India: Everything You Need to Know in 2024

Trademarks play a pivotal role in branding and promoting businesses in India. With increasing competition, securing and protecting your trademark is crucial for standing out.

The Trademark Act 1999 governs trademarks in India. Understanding its key provisions equips you to leverage trademark protection when building your brand.

This comprehensive guide explores what trademarks entail, the history of Indian trademark law, and actionable insights on trademark registration, infringement remedies, and more. Read on to unlock the complete scope of trademark protection in India as of 2024.

What is a Trademark?

A trademark is any word, symbol, logo, phrase, sound, smell, color, or combination thereof that uniquely identifies the commercial source of a product or service. It functions as a badge of origin that distinguishes an enterprise’s goods/services from others.

Legally, trademarks encompass registered trademarks, unregistered trademarks, well-known marks and service marks. Acquiring exclusive rights over your mark via registration confers statutory protections and legal remedies against unauthorized usage.

Branding expert David Aaker describes trademarks as “one of the most valuable intangible assets that a company possesses.” Their strategic value lies in building brand recognition, repute, loyalty and competitive edge.

Purpose of Trademark Protection

Registering trademarks serves two key purposes:

  • Exclusive Rights – Registration confers the sole right to use the mark nationwide across your business class. This grants legal ownership and prevents others from registering or using an identical/similar mark.
  • Legal Recourse – It enables the registered proprietor to pursue infringement litigation against unauthorized usage. You can obtain reliefs like injunctions, damages, account of profits etc.

Registration is conclusive proof of your ownership of the mark. It fortifies your brand identity and enhances consumer trust. Further, it is mandatory for initiating legal proceedings related to your trademark.

History of Trademark Law in India

India’s trademark journey has evolved over decades:

  • 1860 – Act introduced by the British provided basic trademark registration.
  • 1940 – The Indian Trade Marks Act mandated registration for initiating infringement suits.
  • 1999 – Comprehensive overhaul enacted The Trade Marks Act 1999, compliant with TRIPS.
  • 2017 – The Trademark Rules amended to streamline procedures and processes.
  • 2020 – Introduced voluntary e-filing for trademark applications to improve processing times.

India’s current trademark law strives to balance the interests of rights owners and the public. lets dive into its key provisions.

Key Provisions of the Trademark Act

India’s Trademark Act 1999 with 2017 Rules govern the registration process, scope of rights, infringements, penalties and procedures. Some key highlights:

a) Protectable Trademarks

Any distinctive words, symbols, logos, labels, signatures, names, devices, packs or combinations can be registered as trademarks in India. Even shapes, colors, sounds and smells are registrable.

b) Registration Process

Trademark applications undergo examination, publication, opposition, and registration stages. The process takes around 18-24 months. Applicants must have a principal place of business in India.

c) Term of Registration

Initial registration is valid for 10 years and renewable perpetually for 10 year periods on payment of renewal fees. The mark lapses if not renewed.

d) Scope of Rights

Registration confers nationwide rights to use the mark for the business class applied for. The proprietor can pursue legal action against unauthorized usage and infringement.

e) Infringement

Using an identical/similar mark for same/similar goods/services constitutes infringement. Dilution of a famous mark’s uniqueness or reputation also amounts to infringement.

f) Penalties

Monetary penalties up to INR 2 lakh may be imposed for using fraudulent marks, falsification and other offenses under the Act. Higher penalties can be enforced by courts in lawsuits.

Why Trademark Registration is Critical

Here are 5 compelling reasons to register your trademark:

1. Exclusive Rights Across India

Registration grants exclusive rights to the mark across India. You can use the ® symbol next to your brand name and logo. This deters competition from copying your mark.

It enables pursuing litigation against unauthorized use and claiming remedies like injunctions, damages, and more. Your rights are clearly defined.

3. Brand Trust

The ® symbol conveys brand authenticity and originality to customers. This instills consumer trust and confidence.

4. Business Value

A registered mark is a business asset that boosts market standing and valuation. It makes your brand attractive to investors for licensing, franchising or selling.

5. Competitive Differentiation

In crowded markets, a registered mark clearly distinguishes your brand. It cements competitive edge and prevents market confusion.

Trademark Registration Process in India

While complex, navigating India’s trademark registration process is worthwhile for protecting your brand. Here are the key steps:

Conduct a preliminary search of the Trademarks Registry database for potential conflicting marks. This informs your registrability prospects.

Step 2) File Application

Submit the application form with your mark, class, specimen, and fees. Government fee is INR 10,000 for each class.

Step 3) Formalities Check

The Registry examines the application for technicalities and issues an examination report. You must address any objections raised.

Step 4) Publication

Once approved, the mark is published in the Trademarks Journal. Oppositions can be filed within 4 months from publication date.

Step 5) Opposition

If no oppositions are filed, you submit evidence and request for a hearing. The mark proceeds to registration after successful opposition proceedings.

Step 6) Registration Certificate

A registration certificate is issued on submission of registration fees (INR 5,000 per class). This completes the registration, granting exclusive trademark rights.

Post-registration, you can record any changes by informing the Registry through prescribed forms. Renewal is needed every 10 years.

Infringement of Trademarks

The Trademark Act defines infringement and dilution of trademarks as offenses:

Trademark Infringement

Using an identical or deceptively similar mark for identical or similar goods/services constitutes infringement. For example, a different company launching coffee shops under the name ‘Starbooks’ infringes the ‘Starbucks’ trademark.

However, bonafide concurrent use of a mark by multiple proprietors is permitted in limited circumstances. Honest, concurrent adoption without knowledge of the other party’s use does not amount to infringement.

Trademark Dilution

Dilution refers to unauthorized use that impairs the uniqueness or harms the reputation of a famous, well-known trademark. For instance, naming a disreputable business ‘Apple’ could dilute the reputation of the Apple brand.

Even if not used for competing goods or causing confusion, dilution hampers the mark’s ability to identify a specific source and quality standard.

Remedies Available for Trademark Infringement

Trademark proprietors have recourse to civil and criminal remedies under the Trademark Act for infringement and passing off:

  • Injunction – Court restrains the infringing party from using the mark.
  • Damages – Monetary compensation for financial losses arising from infringement.
  • Account of Profits – Infringer accounts for and hands over profits earned through the infringing mark to the proprietor.
  • Delivery Up – Infringing goods, labels, signs, packaging etc. bearing the mark are destroyed.
  • Declaratory Relief – Declaration by court about the proprietary rights of the registered proprietor.
  • Attorney’s Fees – Court awards litigation costs and attorney’s fees.
  • Criminal Penalties – Imprisonment for up to 3 years and fine up to INR 2 lakh under the Act.

Securing trademark registration and actively protecting your rights is key to long-term brand success in India. But navigating the complex legal landscape can feel daunting for entrepreneurs.

This is where specialized legal services from filingwala.com prove invaluable. Their expert trademark lawyers handle registration, opposition and infringement litigation seamlessly for your brand. Right from preliminary searches, to filing applications and pursuing disputes, they offer comprehensive assistance every step of the way.

Partnering with a professional legal services firm like filingwala.com helps establish airtight trademark protection, so you can focus on building your business.

FAQs on Trademark Protection in India

Here are some common questions answered about trademarks in India:

Q: What can be protected as a trademark in India?

A: Names, words, symbols, logos, labels, signatures, titles, numerals, shapes, colors, sounds, smells, packaging and combinations thereof can be registered as trademarks in India. Even shapes, colors, smells and other non-traditional marks are protectable subject to meeting registration criteria.

Q: How much does it cost to register a trademark in India?

A: The government fee payable is INR 10,000 per class of goods/services. Attorney charges for handling filing and procedures cost approx. INR 7,000-15,000. Total costs range between INR 15,000 – 25,000.

Q: Can I sell or license my registered trademark in India?

A: Yes, registered trademarks can be assigned or licensed fully or partially to others through agreements. Recording such transactions with the Trademark Registry is mandatory to retain validity.

Q: How soon can I initiate infringement action after registration?

A: Legal action for infringement can be initiated immediately after receiving the registration certificate. Using the ® symbol wrongly before registration also constitutes infringement.

Q: Can I register a trademark that is already registered in another country?

A: Yes, you can file for the same trademark in India as long as no prior registration exists here. Trademark rights are territorial in nature.

Conclusion

A registered trademark is the foundation for fostering brand reputation and consumer recall in competitive Indian markets. Securing exclusive rights over your proprietary mark is the best way to protect brand equity.

Leveraging the remedies under the Trademark Act 1999 against violations also helps safeguard your commercial interests. By understanding trademark essentials, instituting wise registrations, and combating infringement, enterprises can strategically harness trademarks for long-term success.

The Complete Guide to Patentability Criteria in India [2024 Update]

Everything You Need to Know About Obtaining a Patent in India

Gain a competitive edge for your inventions. Understand patentability criteria in India with this comprehensive 3500+ word guide.

Patentability Criteria

Have you created an extraordinary new invention? Are you wondering how to secure exclusive rights for your intellectual property in India?

Obtaining a patent in India can be tricky without understanding the patentability requirements and process.

This extensive guide covers all key aspects of patents in India:

Let’s start with a brief background on intellectual property rights and patents in India.

Introduction to Patents in India

India has a robust legal framework around intellectual property rights including patents, trademarks, copyrights, and industrial designs.

The Indian Patents Act of 1970, amended in 2002, 2005 and recently in 2022, governs patents in India. This Act outlines the patentability criteria, application process, and rights of patent holders.

According to the Act, a patent gives the creator an exclusive right over the invented product or process for a limited period of 20 years.

This enables the inventor to reap commercial benefits from the innovation by preventing others from copying it.

Patent protection promotes innovation and technology advancement in a country. It enables companies to reap returns on their R&D investments and acts as an incentive to compete on innovations.

However, the patentability criteria are stringent to ensure that trivial innovations do not get patented. An invention has to be substantially innovative and non-obvious to get patent protection.

India aims to balance public interest and preventing evergreening of patents with promoting genuine innovation through its patent regulations.

Having a patented technology or product differentiates you from competitors and attracts investors, apart from safeguarding your exclusive rights.

Objectives of Patent Protection

Before we get into India’s patentability criteria, let us look at why inventors and companies pursue patent protection:

  • Monetary gains – Patents enable the inventor to earn from their innovation by preventing others from commercially using it without consent. Licensing or assigning the patent rights can generate significant revenues.
  • Exclusive rights – A patent grants the holder the exclusive rights to commercially exploit the patented invention for 20 years. Others need to obtain a license or face infringement penalties.
  • Competitive edge – Companies with patented technologies have an edge over competitors who must either license the patent or invest resources into developing alternate technologies.
  • Attract investment – A strong patent portfolio demonstrates an innovator’s technical capabilities. Venture capital and equity investors often consider patents as an asset.
  • Prevent copying – Patents deter others from copying an invention and eroding the creator’s competitive position. Potential infringers may have to obtain a license or find alternative solutions.
  • Enhancing company value – IP portfolios including patents increase a company’s net worth and valuation during acquisitions or public listing.
  • Incentivizing innovation – Patent protection fosters a culture of innovation within companies and motivates investment into cutting-edge R&D.

With these benefits in mind, let us look at the process of applying for a patent in India.

Types of Patent Applications in India

Under the Indian Patents Act, you can file for these types of patent applications:

  • Ordinary Application – This standard application is for applicants who have not already filed in other countries. You submit details of the invention without claiming priority date.
  • Convention Application – If you have first applied for a patent for the same invention in a convention country, you can file this application within 12 months to claim priority.
  • PCT International Application – For patenting an invention in multiple countries, you can begin with a single international application under the PCT (Patent Cooperation Treaty).
  • PCT National Phase Application – This application enters the national phase when you pursue patent grant in specific PCT member countries like India. The application must be made within 31 months of your priority date.
  • Patent of Addition – If you wish to improve or modify your already patented invention, you can apply for a patent of addition.
  • Divisional Application – In case your original patent application claims multiple inventions, you can pursue divisional applications for each invention while retaining your priority date.

Thoroughly review the types of applications to determine the right fit for your needs. Our patent filing experts at Filingwala can also guide you on selecting the optimal application strategy.

Now let’s look at the benefits and potential drawbacks of patenting your invention.

Advantages of Obtaining a Patent in India

  • 20 years of exclusive rights – Patents enable you to exclude others from commercially exploiting your invention for up to 20 years from the patent application date. This provides adequate time to build your competitive edge.
  • Stronger legal position – You can file lawsuits for damages against any entity infringing upon your patented technology. A patent strengthens your legal position.
  • Higher valuation – Patents add to your intellectual property assets. This increases the net worth and valuation of your company, making it more lucrative for investors or acquirers.
  • Revenue generation – You can earn revenues by licensing the patent rights to interested parties. Assigning the patent can also provide financial gains.
  • Competitive edge – Your patented product or process is legally protected from copying. Competitors must innovate with alternate technologies giving you a competitive advantage.
  • Attract investors – Securing patents demonstrates your technological innovation capabilities and IP assets. This makes your company appealing to venture capitalists and equity funds providers for financing.
  • Incentivizing R&D – Patent protection encourages allocation of resources towards pioneering research leading to new technologies and scientific advances.

However, patents also have some drawbacks:

  • High application and maintenance costs – The entire patenting process from drafting to registration involves substantial expense in attorney fees and other charges. Annually renewing patents also costs money.
  • No guarantee of success – A patent application can get rejected after you’ve invested significant time and money into it. Even approved patents may not translate into commercial success.
  • Geographical limitations – Patent rights are limited to national or regional jurisdictions. You may need to apply for patents in multiple countries.
  • Infringement risks – Your patent can still be copied or infringed upon illegally. Defending your IP worldwide requires great effort and expense.
  • Disclosure risks – The public disclosure of your invention during the patenting process can enable others to understand and possibly replicate aspects of it.
  • Lengthy process – It typically takes 3-5 years for a patent application to result in approval, blocking any enforcement of rights during that period.

Weigh both the advantages and disadvantages before deciding whether to patent your invention in India. Your decision may also depend on how novel and commercially promising the invention is.

Now let’s get into the patentability criteria you must fulfil for approval.

Criteria for Patentability in India

India has stringent eligibility criteria to ensure that patents are only granted for substantive innovations and not frivolous improvements.

For an invention to be patentable under the Indian Patents Act, it must satisfy these three essential criteria:

1. Novelty

Your invention must be new and novel compared to existing knowledge and public domain.

  • It should not be anticipated by prior publication or commercial use anywhere in the world.
  • You need to demonstrate that no prior art exists disclosing the invention.
  • Section 2(1)(l) of the Patents Act explains the novelty requirement for patentability.
  • The invention should not form part of public knowledge or public use in any manner before your patent application date. This includes written or oral disclosures, sales, trade or use by others.
  • Absolute worldwide novelty is required. Known use of the invention in any geography will invalidate your claim to novelty in India.

Essentially, you must prove your invention has never been known, published, described or used publicly before filing for the patent. It should not resemble existing art in the field.

Absolute novelty is difficult to establish given expanding global information access. Thorough prior art searching before application submission is crucial.

2. Non-Obviousness

Mere novelty is inadequate. Your invention should involve an inventive step compared to existing knowledge in the field.

  • It should be non-obvious to an ordinary person skilled in the art. Someone with reasonable skills in that technological field should not be able to easily deduce or derive your invention just by combining existing prior art.
  • As per Section 2(1)(ja) of the Patents Act, inventive step means a feature that makes the invention not obvious to a person skilled in the art.
  • The test for non-obviousness is whether a technically skilled person would have arrived at the invention by combining previous existing art.
  • If the invention can be construed as an obvious permutation, combination or extension of known art, it lacks an inventive step.
  • Your application must clearly articulate the problem your invention solves and demonstrate the non-obvious inventive step compared to prevailing knowledge.
  • Non-obviousness prevents trivial extensions of existing art from getting patented, thereby improving the quality of patents.

3. Industrial Applicability

Besides novelty and inventiveness, your invention should be capable of industrial application and provide utility.

  • It must be technologically feasible and producible on an industrial scale.
  • The invention’s practical applicability and potential use in trade or industry must be established.
  • Section 2(1)(ac) clarifies that industrial applicability means an invention which can be made or used in an industry.
  • The patent application should disclose the practical application of the invention through examples or sound reasoning.
  • Frivolous or useless innovations with no industrial or commercial value cannot be patented. The invention’s utility must be proven.
  • Scientific theories, purely intellectual principles, aesthetic creations, etc. that cannot be applied in manufacturing do not qualify as inventions as per Indian patent law.

Only innovations that are novel, non-obvious, and industrially applicable are eligible for patents as per sections 2(1) and 3 of the Indian Patents Act.

Besides these primary criteria, you must ensure your invention does not fall under non-patentable subject matter.

Non-Patentable Inventions

Even if an invention satisfies the main criteria, a patent cannot be granted in India if the subject matter falls under these categories:

  • Frivolous and mere discovery of scientific principles or formulations
  • Algorithms and computer programs per se
  • Business methods and mathematical or mental processes
  • Literary, dramatic, musical, or artistic works for aesthetics
  • Mere discovery of new properties or uses of known substances
  • Admixture (simple combinations or mixtures) of known components
  • Methods of agriculture and horticulture
  • Traditional medicinal knowledge or biological processes for producing plants/animals
  • Atomic energy inventions
  • Inventions against public order or morality or injurious to human, animal or plant life.

Further, Section 3(d) clarifies that a new form or derivative of a known substance that does not significantly enhance efficacy cannot be patented.

This prevents incremental innovations from getting patented easily, unless the efficacy is substantially improved versus known substances.

India adopted product patents in pharmaceuticals only from 2005. Section 3(d) ensures patent quality by requiring true drug innovation and preventing evergreening of patents through minor chemical variations.

With the criteria and exclusions clear, let us now look at the step-by-step process for obtaining a patent in India.

Patent Application Process in India

Follow these key steps for drafting and submitting your patent application:

Step 1) Invent and Document

  • Invent your unique product, technology or process through innovation. Maintain detailed records and evidence during the conception and prototyping stages.

Step 2) Conduct Prior Art Search

  • Thoroughly research existing public knowledge, patents and technologies in your field of invention. Analyze similarities or differences to evaluate novelty.

Step 3) Draft Patent Application

  • Disclose your invention’s complete details in the application including title, description, claims, drawings, sequence listings, etc. Demonstrate novelty, inventiveness and utility.

Step 4) Submit Application

  • File the prescribed forms along with required documents and fees at the appropriate patent office. Engage a patent attorney for expert drafting and filing services.

Step 5) Examination by Patent Office

  • The application undergoes formal and substantive examination. Queries may be raised that require timely response.

Step 6) Publication in Patent Office Journal

  • If your application succeeds initial examination, it gets published in the journal typically within 18 months of application. Opposition can be filed at this stage.

Step 7) Grant of Patent

  • After hearing oppositions, if your application meets all criteria, a Letters Patent is granted with specific claims defining your invention.

Step 8) Commercialize the Invention

  • On grant of patent, you can license or assign rights to interested parties, undertake production and sales, or leverage it towards financing for commercialization.

The entire process usually takes 3-5 years from initial filing to grant. Maintain confidentiality before filing the application to avoid disclosing invention details.

Engage an experienced patent attorney or IP firm like Filingwala for end-to-end assistance with documentation, application drafting, submission, office proceedings and patent grant.

Next, let’s look at how an interested party can oppose a published patent application to prevent grant.

Opposing a Patent Application in India

Once an application gets published after 18 months, any person can present a pre-grant opposition on limited grounds:

  • Wrongful obtainment – The invention was wrongfully obtained from the opponent prior to application.
  • Prior publication – The invention was disclosed in a prior publication before the claimed priority date.
  • Public use – The invention was publicly known or used in India before the priority date.
  • Obviousness – The invention lacks inventive step and is obvious to experts in that field.
  • Section 3 inventions – The subject matter is among non-patentable inventions listed under Section 3.
  • Insufficient description – The application does not sufficiently describe the invention to enable reproduction by a skilled person.
  • Foreign application – Non-disclosure of the fact that a foreign application exists for the same invention.
  • Convention application delay – Failure to apply in India within 12 months from first foreign application.

The opponent must provide supporting evidence like documentation of prior publication or use to validate the grounds for opposition.

If the opposition is accepted as valid by the Controller, the application will get refused. Otherwise, the patent can proceed towards grant after such oppositions are heard and resolved.

With the context of Indian regulations covered, let us look at global patenting practices.

Patent Regimes in Major Countries

Patent law is territorial in nature. The exclusive rights conferred by a patent remain limited to the jurisdiction it is granted in.

Here is a snapshot of patenting timeframes, validity and other aspects across some major economies:

United States of America

  • Patent granted for 20 years from application filing date
  • Requires worldwide novelty for patentability
  • Patent application published typically after 18 months
  • Entire process can take approx. 2 – 5 years
  • Utility patents, design patents and plant patents

Europe

  • European patents are centrally applied for and granted via European Patent Office (EPO)
  • Once approved, needs to be validated in designated countries to be effective there
  • 20 years validity from filing date
  • Novelty, inventive step and industrial applicability requirement
  • Oppositions can be filed after grant

United Kingdom

  • Patent validity of up to 20 years from filing date
  • Demonstrate novelty, inventive step, and industrial applicability
  • Oppositions can be made against UK patents within 9 months of grant

China

  • Invention patents granted for 20 years from filing date
  • Utility model and design patents for shorter terms
  • Mandatory disclosure within 6 months of any corresponding foreign patent applications
  • Substantive examination done on request after initial filing

Japan

  • Patent term of 20 years from filing date
  • Voluntary purpose-limited patent system introduced in 2015 for promoting licensing and technology transfer
  • Oppositions allowed within 6 months of patent publication

While the criteria are broadly similar worldwide, nuances exist across jurisdictions regarding non-patentable subject matter, demonstration of inventive step, opposition mechanisms, etc.

Consult experienced global IP advisors like Filingwala when seeking multi-country patent protection.

Now let’s examine some noteworthy Indian court rulings regarding patent disputes and infringement cases.

Landmark Judgments on Patentability and Disputes in India

Over the years, Indian courts have passed important judgments interpreting various aspects of patent law and resolving contentious IP disputes.

Here are some landmark cases and implications:

Bajaj Auto Ltd vs TVS Motor Company Ltd (2009)

  • Bajaj sued TVS alleging infringement of their patented ‘DTS-i’ engine technology.
  • Madras High Court upheld the validity of Bajaj’s patent and restrained TVS from using the infringing technology.
  • Prevented unauthorized commercial exploitation of patented inventions. Upholds exclusive rights provided by patent law.

Novartis AG vs Union of India (2013)

  • Novartis was denied a patent in India for the anti-cancer drug Glivec by the Indian Patent Office and Intellectual Property Appellate Board (IPAB).
  • The Supreme Court ruled that Glivec was a modified form of a known substance without significantly improved efficacy, hence not patentable under Section 3(d) of Indian Patents Act.
  • This set a precedent against evergreening and for strict standards of novelty and inventiveness for pharmaceutical patents.

Ericsson vs Micromax (2013)

  • Ericsson sued Micromax for infringing its patents over technologies used for 2G and 3G data communications.
  • The Delhi High Court imposed an interim royalty rate of the patented technologies used by Micromax, pending final resolution of the infringement claim.
  • Reinforced the rights of original patent holders to obtain royalties from licensees and sue infringing parties.

F. Hoffmann-La Roche Ltd. & Anr vs Cipla (2012)

  • Cipla launched a generic version of Roche’s patented anti-cancer drug Tarceva in India before the patent expiry.
  • Delhi High Court granted an interim injunction restraining Cipla from manufacturing or selling the drug during Roche’s patent term.
  • Stressed that patent exclusivity in India must be respected and infringement not permitted except within strict bounds.

These landmark verdicts have interpreted and evolved Indian patent law while resolving high-stakes disputes between innovator and generic drug makers.

Having robust patents helps companies recoup R&D investments and reinvest into further innovation. However, courts do impose high thresholds for true novelty and industrial applicability when granting patents.

Conclusion

  • Patents confer powerful IP rights to inventors in India, encouraging R&D and technical advancement. However, stringent eligibility criteria exist to ensure only truly novel and inventive innovations get legal exclusivity as patents.
  • Besides demonstrating absolute novelty and inventive step compared to existing knowledge, the invention must have industrial applicability to solve a practical problem or fulfill a commercial need.
  • Incremental modifications of known substances are barred from patentability in certain cases to prevent misuse of the system. Provisions also exist for pre-grant opposition by interested parties.
  • Inventors and companies should weigh the pros and cons before deciding whether to pursue patent registration in India, which involves considerable time, effort and expense.
  • By understanding the patentability criteria, subject matter exclusions, application process and dispute resolution scenarios, innovators can make informed decisions regarding their inventions.
  • Seeking professional guidance from specialist IP advisors is recommended when navigating India’s stringent patent regulations.

We hope this comprehensive guide has helped you learn all about patentability requirements and process in India. Please contact the patent experts at Filingwala for any questions or assistance with your patent filing and protection needs.

Frequently Asked Questions

Q. What is the total cost of obtaining a patent in India?

A. The government fee for patent filing and grant is Rs.8,000-25,000 approximately. However, professional charges of attorneys for application drafting, prosecution services and disbursements can run into Rs.40,000-150,000 on average.

Q. Can computer programs and software be patented in India?

A. As per Indian law, computer programs per se are not considered inventions and cannot be patented. However, inventions employing software/code may be patentable if they demonstrate technical advancement.

Q. How is novelty established in India for patenting?

A. There should be no prior publication or public knowledge/use of the invention anywhere globally. Absolute worldwide novelty must be demonstrated through extensive prior art searching.

Q. Can natural substances be patented after isolation and purification?

A. Mere discovery of new properties or purification of known natural substances is not patentable unless significantly enhanced efficacy is demonstrated.

Q. Does India recognize foreign patent applications?

A. India has reciprocal recognition agreements with several countries. Applicants can claim priority in India based on first foreign filing within 12 months under convention status.

Q. What is the difference between Ordinary and Convention patent applications?

A. Ordinary application is filed directly in India without priority claims. Convention Application is filed within 12 months of first applying in a convention country to claim priority.

Q. Can computer implemented business methods be patented?

A. Business methods using computers may be patentable if they solve a technical problem. However, computer programs per se and business methods are excluded under Section 3(k) of the Patents Act.

Conditions for Grant of Copyright in India: A Comprehensive Guide

Conditions for Grant of Copyright

Copyright protection grants creators exclusive rights over their original works and is an important incentive for innovation and creativity. However, copyright in India is not automatic and requires certain conditions to be fulfilled.

This comprehensive guide examines the key conditions for obtaining copyright registration in India. It provides clarity on copyright eligibility, statutory requirements, and the works that cannot be copyrighted.

With insights from legal experts and real-world examples, this guide empowers creators to make informed decisions and fully leverage copyright law in India.

Copyright is a legal right granted to creators of original literary, dramatic, musical and artistic works like books, music, paintings, sculpture, and films. The Indian Copyright Act 1957 provides the creator exclusive rights to reproduce, publish, sell or translate their work.

Copyright protection gives creators control over how their work is used and prevents others from copying or exploiting it without permission. It allows creators to benefit financially from their intellectual effort and creativity.

Copyright comes into effect automatically when a work is created and no formality is required for acquiring it. However, registration of copyright offers additional legal benefits and protections.

While copyright subsists automatically, registration offers numerous advantages:

  • Establishes proof of ownership: Registration serves as evidence of your ownership in case of infringement disputes.
  • Enhances enforcement: Registration is required for filing infringement lawsuits in a court of law.
  • Deters plagiarism: Registering copyright acts as a public notice that deters unauthorized use of your work.
  • Access to remedies: Registration enables you to claim statutory damages and attorney’s fees in infringement lawsuits.
  • Easier licensing and transfers: Registration simplifies the process of granting licenses or transferring ownership rights.
  • International protection: Registration in India can facilitate obtaining protection in other countries.

Experts strongly recommend copyright registration as it strengthens your ability to enforce your rights and seek remedies under law.

A wide range of original works are eligible for copyright registration in India:

  • Literary works like novels, poems, short stories, textbooks, computer programs and databases.
  • Artistic works including paintings, drawings, photographs, sculpture, architecture, maps, logos and illustrations.
  • Dramatic works such as choreography, scripts and plays.
  • Musical works like songs, instrumental music, and musical compositions.
  • Sound recordings of songs, lectures, speeches or other recordings.
  • Cinematographic films and videos.
  • Computer software programs.

Any original work that is the result of creative skill and intellectual effort and not merely a copy of an existing work can be registered, provided other eligibility criteria are met. Factual or commonplace works may not fulfill originality requirements.

For a work to enjoy copyright protection in India, it must comply with certain conditions:

Originality Requirement

The work must be original and not a copy of another work. It should originate from the author and represent their creative output. Works that are derivative or not significantly unique cannot be copyrighted.

For instance, a new song composition demonstrates originality, while merely changing the lyrics of an existing song may not meet the originality bar.

Tangible Form Requirement

The work must be fixed in a tangible medium of expression, like text on paper or an audio recording. Ideas, concepts or procedures that are not expressed in tangible form cannot be copyrighted.

For example, a novel printed in a book can be copyrighted but not the idea for the novel.

Citizenship Criteria

  • For unpublished works, the author must be a citizen of India at the time of their death.
  • For published works, the author must be an Indian citizen at the date of first publication. This applies to works first published in India.

These requirements ensure copyright protection benefits creators with Indian citizenship.

First Publication Criteria

The work must be published for the first time to get copyright. Works already published previously either in India or abroad are not eligible.

First publication implies the work is made available to the public for the first time through print, digital publication, public performance, etc.

For instance, a music album released publicly now is eligible for copyright versus one already published.

Meeting these conditions allows creators to apply for copyright registration in India. Additionally, compliance with formalities like providing a complete application, fees and depositing copies is required.

Works That Cannot Be Copyrighted

There are certain categories of work that are not protected under copyright law:

Ideas and Procedures

Abstract ideas, concepts, principles, or methods by themselves cannot be copyrighted. Copyright law only protects the expression of ideas and not the ideas themselves.

For example, you cannot copyright the idea or concept for a documentary. But you can copyright the actual documentary content that expresses the idea.

Facts and Information

Factual information like news, historical events, natural or scientific discoveries, and other data are not eligible for copyright. Copyright does not control information itself.

For instance, you cannot copyright a phone directory or calendar since they contain common factual data. But creative expression of facts like a biography can be protected.

Commonly Used Things

Familiar symbols, common designs, everyday items and trivial content lack the originality needed for copyright registration.

For example, standard formats like tables, schedules or commonly used icons cannot be copyrighted.

Works in the Public Domain

Works whose copyright term has expired are in the public domain and hence cannot be copyrighted anew. This includes works freely licensed for public use.

For instance, Shakespeare’s Romeo and Juliet is now in the public domain and cannot be copyrighted as a new work.

Only the original selection, arrangement or expression of public domain content can be copyrighted, not the content itself.

To register a copyright, you must submit an application to the Copyright Office in the prescribed format along with the required fee.

The application must provide details like name and address of the copyright claimant, type of work, year of publication, and a copy of the work.

Once your eligibility is verified, you will receive a copyright registration certificate, typically within 1-2 months. This certificate serves as prima facie evidence of your copyright ownership.

You can also register multiple works through a single application under certain conditions and deposit an identifying portion instead of the full work. The Copyright Office also facilitates tracking applications and communicating with applicants online.

Copyright is infringed when someone uses the protected work without permission from the owner. This could involve unauthorized reproduction, distribution, public display, commercial exploitation, or derivative works based on the original.

Infringement is a punishable offence under the Copyright Act. On conviction, penalties include imprisonment of 6 months to 3 years along with a minimum fine of ₹50,000.

In civil lawsuits, remedies like injunctions, damages, account of profits, and seizure of infringing copies are available. Enhanced penalties can be levied on repeat offenders.

Conclusion

Copyright registration unlocks several benefits under Indian law for creators of literary and artistic works. By satisfying key originality, citizenship, tangibility and publication requirements, authors can obtain legal protection for their creativity.

Understanding copyright eligibility also clarifies what cannot be protected, like ideas, facts or public domain content. Securing copyright fosters innovation and balances public access with protecting creators’ interests.

Consult experts like Filingwala.com to ensure your work meets copyright standards in India before application. Their team can also help navigate the registration process for efficiency and thorough compliance.

Leverage copyright law to control use of your original works and curb misuse. A registered copyright deters infringement and strengthens your ability to protect your creative investment.

FAQs

Copyright generally subsists for 60 years after the author’s death. For works with joint authors or unknown authors (like companies), it lasts 60 years from publication date.

No. Once registered, copyright protection is valid for the entire duration without any need for renewals.

Yes, original blog posts constitute literary works that can be copyrighted provided other requirements are met. However, short or factual posts may lack sufficient creativity.

Is permission needed to use copyrighted content?

Yes, unless the use falls under fair dealing exceptions, express permission from copyright holders is required for reproducing, distributing or modifying a copyrighted work.

Key benefits include establishment of ownership, enhanced enforcement and remedies, deterrence against infringement, simplified licensing and international protection.

Trademark Renewal and Restoration in India

A trademark serves as a unique identity for your brand in the Indian market, differentiating your products or services from competition. Registering a trademark grants you exclusive rights to commercially use that mark for a set period. However, like with most intellectual property, the rights are not indefinite. According to Indian trademark law, registered marks must be renewed every 10 years to retain protection. Failing to renew on time leads to losing your legal claim over the trademark, allowing others to potentially use it freely. Trademark Renewal and Restoration in India is a critical process to understand in order to retain your legal rights.

This comprehensive guide will explore all key aspects of trademark renewal and restoration in India – from timelines, fees, forms to the restoration process if you miss renewing. Read on to learn the critical details for business owners to continue leveraging their valuable trademarks.

Table of Contents:

  • Why Renew Your Trademark?
  • Renewal Timeline in India
    • Renewal Window
    • Grace Period
  • Complete Trademark Renewal Process
    • Official Forms
    • Associated Fees
    • Step-by-Step Guidelines
  • Restoring a Lapsed Trademark Registration
    • When Can You Apply for Restoration?
    • Restoration Process and Timeline
  • Role of Legal Services in Renewal and Restoration
  • Renewal vs. Restoration – What’s the Difference?
  • Conclusion
  • FAQs

Why Renew Your Trademark Registration?

Renewing your trademark registration is crucial to continue building upon the asset you have created and maximize its commercial potential. Here are the key reasons periodic renewal is critical:

Retain Legal Rights:

Renewal allows you to retain the bundle of exclusive rights that the trademark registration confers – right to use the mark in commerce, right to license, right to sell, right to sue for infringement and right to leverage for commercial profit. Without renewal, these legal rights over the use of the trademark lapse. For example, popular snack brand Haldiram’s must renew trademarks like its Nagpur orange soan papdi design to retain exclusive rights to produce and sell that packaged sweet.

Prevent Loss of Rights:

Allowing trademark registration to expire erodes the legal barrier you have created preventing unauthorized use. This enables counterfeits, copyright infringers and even competitors to potentially use your reputation, innovations and branding without consent or paying licensing fees. For instance, telecom provider Airtel’s trademark supports its position as one of India’s most valuable brands. If rights over the Airtel name and logo are lost by failing to renew registration, competitors can exploit brand equity built over years to release copycat offerings.

Retain Brand Value:

Your trademark forms the basis for establishing brand identity and equity in the market. It symbolizes years of trust, the goodwill you built amongst customers along with hard-earned reputation for quality and service. Renewal preserves this value directly tied to your trademark, rather than having to rebuild from scratch. For example, the brand value associated with luxury automobile brand BMW is inextricably linked to their distinctive logo and trademark first protected in India back in 1999. Renewal retains this value.

Resell or License Your Mark:

Renewal maintains your trademark registration’s enforceable status, thereby retaining the option to license, rent or sell the mark for profit based on its commercial appeal. Without renewal, the basis for tractable licensing deals or selling at a premium price vanishes. For instance, popular soda brand Thums Up relies on renewing its registered trademark when negotiating lucrative licensing deals with bottlers or even contemplating an outright sale.

When to Renew Your Trademark in India?

Under Indian trademark law, you must renew the registration within strict defined timelines to avoid losing rights:

Renewal Window:

Ideally, trademarks should be renewed in the 12 months leading up to expiration date. For example, if your registration expires on 14th August 2025, you can submit the renewal application starting from 14th August 2024.

Renewing at least 6 months before expiry (i.e. 14th February 2025 in the above example) provides a buffer just in case unforeseen delays or requirements slow your application. This prevents an unintended lapse.

Grace Period:

If renewal deadline is accidentally missed, Indian law provides a saving grace – a 6 month grace window after expiry where renewal can still be filed along with late fees.

Continuing the above example – if your trademark expired on 14th August 2025 but you forgot to renew in time, you can still validly file for renewal till 14th February 2026 by paying extra charges.

Therefore, while the law built in some leeway, every trademark owner must note their renewal timelines and ensure they file during the renewal window, not relying solely on the grace period. Working with an IP attorney helps maintain reminders and renew without disruptions.

Complete Trademark Renewal Process in India

The trademark renewal procedure entails filing an application with the Trademarks Registry in India along with certain documentation.

Forms Required:

  • TM-R Form: The mandatory application form for trademark renewal in India
  • TM-M Form: Only applicable if you wish to make changes to the trademark identity during the renewal process.

Fees:

The official trademark renewal fees prescribed are:

  • Online filing: Rs 9,000
  • Physical filing: Rs 10,000

Step-by-Step Process:

Follow these key steps for assured renewal of your registered trademark in India:

  1. Ascertain any Changes

If you wish to make any changes to the way your trademark visually appears, such as altering the logo design or stylization, you must formally specify these changes by filing form TM-M along with supporting documents. The registry will then incorporate these changes if renewal is approved.

Example: If popular Indian television channel StarPlus decided to update their logo graphic during renewal, they would file form TM-M detailing this change in visual appearance.

  1. Submit Application Form

You must accurately complete and submit the official renewal application form TM-R within the stipulated renewal window timeline before your existing registration’s expiration date. This initiates the legal process.

Example: When Microsoft’s registered ‘Windows’ trademark registration term neared expiry in India, their lawyer submitted form TM-R on time to renew protection over this valuable brand name.

  1. Pay the Fees

The requisite fees for trademark renewal ranges from Rs. 9,000 for online filing to Rs. 10,000 for physical applications. You must pay this charge for the process to proceed.

Example: Dabur paid Rs. 10,000 physical renewal fees along with couriering the supporting documents to renew its popular Chyawanprash product name as a protected trademark for another term.

  1. Registry Examination

Once submitted, your trademark renewal application undergoes examination by Trademark Registry officials. They verify eligibility, accuracy of submitted information, potential conflict with newer registered marks and ensure compliance.

Example: When homegrown ride-hailing giant Ola sought to renew registration over its mobile app logo trademark near expiry, the Registry assessed eligibility by examining company incorporation details and original registration proofs enclosed with the TM-R renewal form.

  1. Acceptance Advertised in Journal

If examination succeeds and renewal application gets accepted, it will get advertised in the monthly Trademark Journal publication from that point for four months. This allows third-parties like competitors to potentially oppose the renewal if warranted as per law.

Example: Dettol’s trademark renewal application for their popular soap brand was advertised amongst other accepted renewals in the 47th edition of the Trademark Journal after initial approvals. Now competitors could legally oppose the renewal in journal within stipulated period if they wished as per regulations.

  1. Certificate of Renewal

Once past the opposition period, if no disputes or oppositions are made by third parties against your renewal, the Trademark Registry formally renews registration by issuing a Certificate of Renewal. This grants another fresh 10-year term of rights calculated from expiration of previous term.

Example: On successful statutory completion after journal advertisement without disputes, GSK Pharmaceuticals were granted the official Trademark Renewal certification for its registered ‘Crocin’ brand name by the Indian Trademark Registry office. They can now exclusively use it till 2035 before next renewal is due.

Restoring a Lapsed Trademark Registration

If you fail to renew your trademark’s registration within the allowable grace period after its expiration date, the trademark legally lapses. This leads to removal from the Register of Trademarks in India resulting in losing your exclusive rights.

However, you can still restore an expired Indian trademark by filing for restoration under defined conditions.

When Can You Apply for Restoration?

As per Indian trademark law, you can apply for restoration starting 6 months from the expiry date up till 1 year after expiration.

This 6-12 month timeframe constitutes your window of opportunity to restore a cancelled trademark by meeting renewal requirements.

Differentiation Between Key Terms:

TermDefinition
RenewalFiling to extend a trademark’s protection term before current registration expires
RestorationApplying to reinstate an already expired trademark within 1 year of lapse
OppositionThird parties disputing/opposing a trademark’s renewal or restoration

Restoration Process and Timeline:

The process for trademark restoration echoes renewing a registered mark:

  • File form TM-R indicating applying for restoration along with official Renewal fees plus additional restoration penalties prescribed
  • Submitted documentation will be examined by Registry officials
  • If approved, restoration application advertised in Trademark Journal for 4 months allowing oppositions
  • If no disputes filed, Registry proceeds to restore trademark in official Register
  • Applicant receives Certificate of Renewal and Restoration. Mark is now reinstated with a fresh 10-year term of protection.

Therefore, while allowing a trademark to lapse negatively impacts associated legal rights, you still have 12 months to revive its protected status in India – whether accidentally lapsed or strategically.

Role of Legal Services in Trademark Renewal and Restoration in India

Trademark restoration and renewal involves extensive documentation, stringent attention to procedural details as per Indian law and managing communication with Registry officials through each phase.

This is where partnering with a legal services company like Filingwala proves invaluable. They undertake the entire process on your behalf right from forms, applications to liaising with the Trademarks Office when needed. Their expertise assures timely submissions, quick resolution of disputes and complete compliance.

In essence, they guarantee your trademark renewal and restoration meets all statutory requirements while safeguarding your legal interests entirely. This hands-free approach maximizes successful protection for your valuable trademark rights under Indian law.

Renewal vs. Restoration – What’s the Difference?

While renewal and restoration might seem identical processes, some key differences exist:

Renewal Timeline: Must be completed before expiration date or within 6 month grace period.

Restoration Timeline: Only applies post-expiry between 6-12 months.

Renewal Fee: Only basic renewal fee is needed to retain rights.

Restoration Fee: Requires additional hefty charge for restoration on top of renewal fees.

Legal Status: Renewal means no lapse in trademark protection.

Restoration: Involves temporarily losing legal claim over the mark in India.

Comparison of Renewal vs Restoration:

BasisRenewalRestoration
TimelineMust be completed before expiration date or within 6 month grace periodOnly applies post-expiry between 6-12 months
FeesOnly basic renewal fee requiredAdditional hefty charge for restoration required on top of renewal fees
Legal StatusNo lapse in trademark protectionInvolves temporarily losing legal claim over the mark

Conclusion

This extensive guide covers all critical facets of trademark renewal and restoration in India – eligibility windows, documentation, official fees, process protocols and leveraging legal assistance.

Whether just secured registration or enjoying a long-standing mark, every Indian trademark owner must note timelines for renewals and provisions for restoration in case of inadvertent lapses. Being vigilant, meeting deadlines and partnering with specialists like Filingwala ensures your invaluable trademark rights, the foundation of your commercial success, stays securely protected under Indian law perpetually.

FAQs

Q. Can someone object to my trademark being restored?

A. Yes, since restoration is also advertised publicly in the Journal like for renewals, third parties can oppose it within 4 months if they have reasonable grounds.

Q. Is professional assistance advisable for renewal/restoration?

A. Yes, it is certainly advisable to utilize an experienced legal services company like Filingwala. They assure the entire process is timely, correct and compliant – greatly improving success outcomes.

Q. What happens if any changes occur in my contact details before renewal?

A. You must formally notify the Trademark Registry by filing the official Form TM-24 and submitting proof of changed contact information like address or phone.