Tag: trademark

By: Siddharth Sutaria

1.1.WHAT IS PATENT?

Patents were one of the first types of intellectual property to be recognized in modern legal systems. Today, patented inventions pervade every aspect of life, from electric lighting (patents held by Edison and Swan) to the iPhone (patents held by Apple).

Patents are a form of IP used to protect a product or process that is new, involves an inventive step and has some form of industrial utility.

Patents are concerned with the protection of an invention.

By patenting an invention, the patent owner gets exclusive rights over it, meaning that he or she can stop anyone from using, making or selling the invention without permission. The patent lasts for a limited period of time, generally 20 years. In return, the patent owner has to disclose full details of the invention in the published patent documents. Once the period of protection has come to an end, the invention becomes off patent, meaning anyone is free to make, sell or use it.

1.2.WHAT TYPE OF INVENTIONS ARE PATENTABLE?

PATENTABLE SUBJECT MATTER:

In order to be eligible for patent protection, an invention must fall under ARTICLE 27.1 OF THE TRIPS AGREEMENT. Provided that, subject to certain exception or conditions under that agreement, patents shall be available for any invention, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of an industrial application.[1]To qualify for patent protection, an invention must be of some practical use and must offer something new which is not part of the existing body of knowledge in the relevant technical field (what lawyers call the prior art). But these requirements of utility and novelty are not enough; the invention must also involve an inventive step – something non-obvious that could not just have been deduced by someone with average knowledge of the technical field.[2]

Furthermore, the invention must not fall under non- patentable subject matter, such as,

• A mere idea (e.g., law of nature or principle) without application are not patentable.
• Pure mathematical algorithms (e.g., E = mc2) are not patentable.
• An inoperable device (e.g., Perpetual Motion Machine) are not patentable.
• An obvious improvement of an old device is not patentable.

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PATENT LAWS IN INDIA, USA AND UK

2.1. INDIA

The recognition and enforcement of patent rights in India is principally governed by the Patents Act 1970 and the rules issued under the Act. The Act has been amended several times and was substantially amended by the Patents (Amendment) Act 2005 to bring the Indian patent regime into line with the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPs).

The latest amendment to the Patents (Amendment) Rules 2019 came into force on 17 September 2019 to ease the procedural rules concerning e-filing of documents under which original documents will be required only on being requested by the Patent office. The amendment also expanded the eligibility criteria for expedited examination of applications under the Patents Act, 1970 to include applicants such as small entities, government departments, and government-funded bodies and so on.

Court decisions are a relevant source of patent law in India. Indian courts also rely on decisions of both European and US courts as sources of patent law. In the last couple of years, Indian courts have adjudicated on a number of substantive patent law issues, including:

• Infringement (Merck Sharpe and Dohme Corporation v Glenmark)[3]; F Hoffman La Roche v Cipla Ltd.)[4]
• Patentability (Novartis v Union of India)[5]; Merck Sharpe and Dohme Corporation v Glenmark[6]; F. Hoffman La Roche v Cipla Ltd.[7]).
• Fair, reasonable and non-discriminatory licensing (Telefonaktiebolaget LM Ericsson v Intex Technologies[8]; Telefonaktiebolaget LM Ericsson v M/s Best IT World (India) Pvt Ltd (iBall)[9].).
• Permissibility of exports under the Indian Bolar Exemption (Bayer Corporation v Union of India & Ors. LPA No. 359/2017 and Bayer Intellectual Property GMBH & Anr. v Alembic Pharmaceuticals Ltd.)[10]
• Grant of patent for computer programs (Ferid Allani v Union of India).[11]

The Indian Patent Act, 1970 holds that a mere discovery of a new form of a known substance or the mere discovery of a new use of a known substance would not be patentable.[12] India being a party to the TRIPS Agreement expressly incorporates within its domestic legislation the ‘Patentable Subject Matter’, enumerated in Article 27 of the TRIPS Agreement, which reads as: “Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application[13] which indicates the qualification of the Novelty-Utility-Non Obviousness test.

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“Invention” means a new product or process involving an inventive step and capable of industrial application[14]. A bare perusal of the definition clearly shows that even a process involving an inventive step in an invention within the meaning of the Act. It is, therefore, not necessary that the product developed should be a totally new product. Even if a product is substantially improved by an inventive step, it would be termed an invention[15]. What is to be noted here is that patents are not only given on “new inventions” but also on “inventions” as defined in the Patents Act, 1970.

Patent protection cannot be obtained for a “mere idea”[16]. The principle of Patent Law is that an idea or discovery as such is not patentable. It neither forms a part of prior art or technique. It is the practical application of the idea or discovery that leads to patentability.

Inventive step is a feature of an invention that involves technical as compared to the existing knowledge or having economic significance or both and that makes an invention not obvious to a person skilled in the art. To meet the inventive step, there has to be a technical advancement or economic significance or both. The requirement of technical advancements, therefore, diluted and compromised by the fact that a patent could simply be granted on economic significance alone.[17]

2.2.UNITED STATES OF AMERICA

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time (usually, 20 years) from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.[18]

United States patent law is codified in Title 35 of the United States Code, and authorized by the U.S. Constitution, in Article One, section 8, clause 8, which states:

The Congress shall have power … To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.[19]

The first US Patent statute was enacted with the object entitled “An Act to promote the Progress of Useful Arts”. It was a short Act that contained seven sections and specified the basic requirement to include “any useful art, manufacture, engine, machine or device, or any improvement therein not before known or used”.

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After U.S. became the member of the Paris Convention, there were two developments in U.S. influencing the development of patent law, the Sherman Act of 1890 and the Evarts Act of 1891. In 1952, the structure of modern patent law was adopted and since then, several amendments have been made. The Patent law is Title 35 of the United States Code which governs all cases in the USPTO.

2.3. UNITED KINGDOM

In Europe, two patent systems co-exist. Under the European Patent Organization (EPO & EPOrg) patents are granted which may cover up to 38 European states including the United Kingdom. The provisions for grant of patents in U.K. can be considered from the U.K. Patents Act 1977 (As amended) and also from the EPC (European Patent Convention).

The UK has legal systems in England and Wales, Northern Ireland and Scotland, but the Patent law on the necessary changes is the same for everyone. There are two ways to obtain patent protection in the UK which includes filing in national patent offices and filing a single European patent at the European Patent Office in Munich defining those countries where the patent is protected. The latter machine offers great cost benefits to those who are patented.

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Patent enforcement in the UK means that the owner must continue to see the laws of each country where the patent is registered. The patent system in the UK is expensive and the results of the enforcement plan may not be consistent but the system is complete and therefore very effective in eliminating flawed patents.[20]

It is also important to note the availability of threat actions and cost penalties to deter the casual assertion of weak claims. A peculiarity of the European patent system is that once the patent is granted by the European patent office it transforms to local patents in each of the signatory countries that were designated in the application.

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COMPARATIVE ANALYSIS

3.1. SIMILARITIES IN PATENT LAWS OF INDIA, USA AND UK

Patent laws in India, USA and UK are very similar as they all grant developers certain rights for a specified period of time in exchange for their disclosure in relation to the established production method. The legal systems of the USA, UK and India have some of the same characteristics which are the general requirements of Novelty, Non-transparency / initiative to create and use inventions that must be patented. The basic principles of Patent law are generally the same worldwide; the difference lies mainly in the processes of each program.

Although a few aspects of patent law have been harmonized internationally, there are still many significant differences between the processes followed in the USA, UK and India discussed in this study.

3.2. DISTINCTION BETWEEN THE PATENT LAWS OF INDIA, USA AND UK

In UK [Article 60 of the EPC] and India[Section 2(y), 6 and 7 of the Patents (Amendment) Act, 2005], the first to have filed the patent application are considered as the inventor which means that the filing date is what is considered and is given the first priority even if a second person comes up with the invention before the first. Which in case of USA, in case of two or more applications for the same invention a determination is made as to who invented it first. If two or more applications are filed by different inventors claiming substantially the same patentable invention a proceeding known as an “interference” is instituted by the USPTO to determine who is the first inventor and entitled to the patent. (35 U.S.C. Section 135) provided that the patent has not been issued, nor the application been published, for more than one year prior to the filing of the conflicting application, and provided also that the conflicting application is not barred from being patentable for some other reason. However, the first applicant to file has the prima facie right to the grant of a patent, but if the second patent application is been filed for the same invention, the second applicant can lodge interference proceedings to determine who was the first inventor and thereby who is entitled to the grant of a patent.Thus in the US, the patent goes to the first to invent and not to the first to file. Every Patent Office in the world is based on a “first to file” system.

US has a one-year grace period (35 US Code Section 102). This means that the inventor can publish his invention 1 year before filing the patent without losing patent rights. However, if the inventor discloses his or her own work more than 1 year before the filing of the patent application, then he/she is barred from obtaining a patent.Whilst in UK [Article 54 EPC] and India [Sections 2(l), 29, 30 and 31 of the Patents (amendment) Act, 2005], the one-year grace period is absent. If an inventor makes his/her work public a year before he files a patent for the said work, he/sheautomatically loses all potential patent rights.

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The patent for a business method is an important point of distinction between the USA, the UK and India. Business method patents are not owned and have never been patented in the UK or any other country in Europe and in India business methods are not patented individually but can be patented if the new approach seeks to resolve the technical problem and is naturally structured. Or, in the case of the USA, patents for business methods are valid as long as it is more than just the implementation of a well-known business process.

India, USA and UK have a similar situation with patent applications i.e., patent applications are published 18 months after the date of submission, unless they have been issued. The only difference is that, in the UK and India they cannot apply for non-publication.

In the UK, once a patent has been granted, anyone has the right to oppose it within nine months of the grant. If a Patent is found to be invalid, it is revoked in all countries at the same time. Indian Patent Law only applies to patent disputes where the patent application was published but before the patent was granted. While the USA has a re-examination process that is different from that of the opposition party. In re-examination, anyone can submit reasons and evidence to the USPTO to challenge the validity of a patent granted.

3.3.CONCLUSION

This paper aims to shed light on the most common patent systems in India, the UK and the US and identifies significant similarities and differences between similarities.

By carefully examining the patent laws of the USA, India and the UK, it can be said that the patent process in India is almost identical to that of the UK and differs from that of the USA. Almost every country has its own Patent Law, and if you wish to apply for a Patent in a certain country, you must apply for a Patent in that country, depending on the needs of that country. Patent laws do not apply internationally.

Overall, efforts should be made to bring in patent laws of different countries in order to overcome errors, unfair advantages and lacunae in relation to certain areas of law. This is an important step in raising profits for founders around the world.

[1]Intellectual Property- Law and Management by Rodney D Ryder.

[2]https://www.wipo.int/publications/en/details.jsp?id=4528

[3]CS(OS) 586/2013 judgment dated 7 October 2015.

[4]RFA(OS) 92/2012, judgment dated 27 November 2015.

[5](2013) 6 SCC 1.

[6]supra

[7] supra

[8]Cs(Os) No.1045/2014, judgment dated 13 March 2015.

[9]CS (OS) 2501/2015, judgment dated 2 September 2015.

[10]RFA(OS)(COMM) 6/2017 (March 22, 2019), Division Bench of the Delhi High Court (Bayer cases).

[11]  2019 SCC Del 11867.

[12] Commission of Intellectual Property Rights (CIPR) Report of September, 2002.

[13] Article 27, TRIPS Agreement.

[14] Section 2 (1) (j), Patents Act, 1970.

[15] Dhanpat Seth v. Nil Kamal Plastic Crates Ltd., 2008 (36) P.T.C. 123 (H.P.) (D.B.).

[16] IBM Corp.’s Appln., [1980] F.S.R. 568.

[17] Ram NarainKher v. Ambassador Industries, New Delhi, A.I.R. 1976 Del 87

[18]35 U.S.C.A. § 154(a)(2).

[19]https://en.wikipedia.org/wiki/United_States_patent_law#cite_note-1

[20] International Patent Law, ISBN 978-1-587-62382-0, Lucas Bateman, Cobbetts Solicitors, Leeds.

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By: Diksha Garg

Introduction

Intellectual and incorporeal property rights have been incorporated to protect the ownership rights of inventors. Over the course of the past few decades’ deliberations on whether the notion of product packaging and the appearance of the product could be considered within the purview of the aforementioned rights as well. A subset of trademark, trade dress necessarily refers to the “get-up” of a product.[1] It includes all composite aspects of a product that make up the visual appearance of the product.[2] While in its inception “trade dress” protected only the superficial aspects of the appearance of the product, the scope of the same was enhanced later to include “all elements of the product which is later presented to the consumer.”[3]

The raison-de-tat to extend protection not just to the commodity, but also to its appearance and packaging can be to identify and distinguish similar commodities, which is imperative for the consumer as well. One of the first instances to witness the protection of Trade Dress in the U.S was when the courts conclusively held that the “defendant’s packages constitute the unfair use of the plaintiff’s trade dress.”[4] Trade dress of a company is also protected to prevent any misperception for the consumers and to ensure that the product is from genuine manufacturers.

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Trade Dress Protection

U.S.A

The jurisprudence on trade dress protection is largely inspired from that of the United States. The U.S has surmised a statutory framework for the protection of trade dress rights. The Section 43(a) of the Lanham Act, 1946 provides for such protection.[5] Lanham Act accords protection to registered trademarks that are in “use in commerce” or have been acquired with a bona fide intent to use in commerce. As per the aforementioned provision: –

“Section 43(a) – (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

1. is likely to cause confusion, or to cause mistake, or to deceive […] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
2. in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act. 15 U.S.C. §1125.”[6]

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In regard to a trade dress infringement, the aggrieved party must sufficiently fulfil the test and show that the “get up” of the commodity is inherently distinct or has acquired distinctiveness via secondary means, that there is a possibility of misperception as to the genuineness of the commodity and that the trade dress is non-functional.[7] Based on the above criteria interpreted by the courts, to seek a remedy for the infringement of the trade dress, the aggrieved must show:

1. Distinctiveness

A mark may be distinctive in two ways – inherently distinctive or acquire distinctiveness via secondary means.[8] To acquire Trade Dress through secondary means essentially refers to the ability to create a distinct association in the minds of the consumer of the mark and its origin. The trade dress is acquired through longevity in use and its favourable acceptance by the consumer.[9] The two-fold test of the Supreme Court was cemented in the case of Two Pesos v. Taco Cabana[10] while deliberating and examining the distinctiveness of products irrespective of their configuration and packaging.

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2. Non-functional Trade Dress

There exists an interesting dilemma while examining the issue of non-functional aspects of trade dress. At the outset it must be realized that this criteria for qualification under trade dress rights, refers to the ability of the seller to show that the design or packaging as a whole is not functional.[11] The reason being that the ability to secure each aspect of a product as “trade dress” would only lead to monopolization and unfair competition. Trade dress must be considered as a complex composite of features jointly and not severally.[12] Furthermore, inclusion of the functional aspects of the product within the scope of trade dress regime would create a conflict between the trade dress rights and patent rights. Precedents dictate that, “there exists a fundamental right to compete through imitation of a competitor’s product, which right can only be temporarily denied by the patent or copyright laws.”[13]

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3. Emulation of the Trade Dress Would Result in Confusion

The concern of a likelihood of confusion only arises when there is a possibility when the consumer may possibly, after viewing a mark or trait, associate or misperceive the product and services of one company/manufacturer to be of another.[14] The ascertainment of the “likelihood” is carried out not by assessing all aspects of the trade dress of the plaintiff and the infringer, but on the overall impression created.[15] Thus, in most cases the evaluation of the likelihood of confusion is perceived as a gordian knot allowing the company with the better goodwill and reputation to emerge victorious.

INDIA

Though the jurisprudence of Trade Dress in India has evolved from that of the United States, it is notable that unlike the U.S, India does not have an explicit statutory backing to support the Trade Dress regime. However, the Section 2(1)(m) of the Trade Marks Act, 1999 provides some reprieve and recognises trade dress rights. The section defines a “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.[16] Further, “package” is inclusive of case, container, folder, et al.[17] Additional protection is accorded by including within the ambit of “trade mark,” the visual aspects such as shape of products while analysing the distinguishing aspects of a product and its graphical aspects to grant a trade mark protection.[18] As with regard to the various elements of trade dress protection, the criteria is identical to that of the U.S.[19]

Further, the courts have unambiguously held that use of similar packaging as that of a plaintiffs product would amount to an infringement of the intellectual property rights of the plaintiff and that the defendant is restrained from utilising the same.[20] In the widely known case of Gorbatschow Wodka K.G,[21] the hon’ble High Court of Bombay found that the shape of the bottle of the defendant was deceptively familiar to that of the plaintiff, and that continued use of same was likely to infringe the rights of the plaintiff and thus the defendant was restrained from further use of the same. In another instance, the courts have also recognised the colour combination of similar products operating under different trademarks as trade dress.[22] While deliberating in the case of Christian Louboutin,[23] the Indian Courts for the first time declared trade dress “well-known” status similar to trade mark.

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Conclusion

There is a world of difference between the jurisprudence and protection of Trade dress in India and U.S. The reason being that the laws of India are still at a nascent and developing stage. The formalisation of a Trade Dress regime happened only vis the amendments of 2003 and is not completely at par with that of the U.S. An added advantage for the U.S regime is the structure provided through the legislative provisions. However, Indian laws are not quite as far behind and the increase in competition in the market has contributed affirmatively towards the growth of trade dress concerns.

[1] Kiran Mary George, Trade Dress Law in The Commercial Kitchen: Exploring the Application of The Lanham Act to Food Plating in The Culinary Industry, 10 NUJS L. Rev. 3 (2017). Available at: http://docs.manupatra.in/newsline/articles/Upload/1D11F646-E493-49B5-9E0D-7788D5C9B5EE.pdf

[2] Hartford House Ltd. v. Hallmark Cards Inc., 846 F.2d 1268

[3] Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27

[4] Eastman Kodak Co. v. Royal-Pioneer Paper Box Manufacturing Co. 197 F. Supp. 132 (E.D. Pa. 1961)

[5] Lanham (Trademarks) Act of 1946, 15 U.S.C § 1051 et seq.

[6] Ibid

[7] Gen. Motors Corp v. Urban Gorilla, LLC 500 F.3d 1222

[8] Abercrombie & Fitch Co. v. Hunting World Inc., 1 537 F.2d 4

[9] Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769

[10] 529 U.S. 205

[11] American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136

[12] Ibid

[13] Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205

[14] Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837

[15] Fremont Co. v. ITT Continental Baking Co., Inc., 199 U.S.P.Q. 415

[16] Trade Marks Act, 1999, § 2(1)(m), No. 47, Acts of Parliament, 1999 (India). Available at: https://www.indiacode.nic.in/handle/123456789/1993?locale=en

[17] Ibid, at § 2(1)(q) – “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork.

[18] Ibid, at § 2(zb).

[19] Subodh Asthana, Trade Dress Protection in India and US, IPleaders Blog, (Mar 15, 2021 10.30 PM), https://blog.ipleaders.in/trade-dress-protection/

[20] Cadbury India Limited & Ors. v. Neeraj Food Products, 142 (2007) DLT 724

[21] Gorbatschow Wodka K.G v. John Distilleries Ltd., 2011 (47) PTC 100 Bom

[22] Colgate Palmolive Co v Anchor Health and Beauty Care Pvt. Ltd., 2003 (27) PTC 478 Del

[23] Christian Louboutin Sas v Mr. Pawan Kumar & Ors., 2018 SCC OnLine Del 9185

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By: Rushika

Of all the creative work produced by humans anywhere, a tiny fraction has continuing commercial value. For that tiny fraction, the copyright is a crucially important legal device.

-Lawrence Lessig

Introduction

Creators of any artistic or literally work often do so in the hopes of benefitting financially and commercially from the same. However, in a competitive and capitalistic world, creators are frequently suppressed by the more powerful entities and their work exploited. There are also various issues that arise in respect of who the owners of the work are. Copyright is that legal mechanism that protects the rights of the creators of works and enables others to identify the true owner of the work.

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Copyright

Often described as the engine of progress,[1] copyright is the legal term used to describe the rights that creators have over their artistic or literary works.[2] The Copyright, Designs and Patents Act, 1988 of the United Kingdom defines copyright as a property rights which subsists in (a) original literary, dramatic, musical or artistic works, (b) sound recordings, films or broadcasts, and (c) the typographical arrangement of published editions.[3] Extending similar protections, Copyright Law of the United States contained in Title 17 of the U.S. Code defines the contours of copyright as a protection that subsists in the original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.[4]

The need and importance of copyright law is firmly established today. That copyrights of creators must be jealously safeguarded is not contended. However, on many occasions, the works of copyright owners may be used for various non-commercial purposes such as education, research, news reporting and charitable purposes to name a few. To prevent such uses of the work could result in some highly undesirable consequences such as misinformation, and could even halt progress to a significant extent, which is quite contrary to the intended purposes of copyright protection. This article discusses the fair use and fair dealing of copyrighted works in the context of the United States of America and the United Kingdom of Great Britain and Northern Ireland respectively.

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Fair Use in the United States of America

Fair use is a legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances. In the United States of America, section 107 of the Copyright Act provides the statutory framework that determines the nature of a use and whether the same is fair. It provides that the use of copyrighted work for purposes such as- (i) criticism, (ii) comment, (iii) news reporting, (iv) teaching, (v) scholarship; or (vi) research, does not amount to an infringement under the Act. Further, in order to determine whether the use is fair or not, it calls for consideration the following four factors:[5]

1. The purpose and character of the use, including whether such use is of a commercial nature or it is for non-profit educational purposes

In evaluating fair use, courts often approach a dispute with the intention of balancing the purpose of the use with the character of the use. While non-profit educational uses and non-commercial uses are more likely to find favour with the court, transformative uses are also received with a positive outlook by the courts. In TCA v. McCollum,[6] when the routine of the black comedy Hand to God was featured in a play, the court held that the play’s usage was transformative because the audience must be aware of the original in order to get the joke. However, this does not mean that the use must always be transformative. For instance, in Swatch v. Bloomberg[7], it was held that use for the purposes of news reporting was not required to be transformative.

2. The nature of the copyrighted work

Another important factor for the courts to consider is the nature of the copyrighted work. Here, they must analyze the degree and extent to which the work relates to the purposes of copyright such as encouraging creative expression. Consequently, use of factual work is more likely to be considered fair rather than use of more creative or imaginative works such as novels, movies or songs. For instance, a defendant in a music file sharing case could not claim a fair use defense since he had failed to provide evidence that his copying of music files involved any transformative use. The court held that the defendant was confusing “‘fairness’ and ‘fair use’ and that fair use was not a referendum on fairness in the abstract.”[8]

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

In applying this test, courts oft look at the quality and quantity of the substance used. Where less than 1% of a person’s unpublished letters were copied and the purpose was informational, the same was held to be fair use.[9] However, where the unpublished letters were the “backbone” of the biography, it was found that the letters may have been taken more as a means of capitalizing on the interest in the person whose letters they were rather than in providing a critical study of the author.

In other contexts, even when a small amount of the copyrighted work was used, it was held to not be fair use when the same was the “heart” of the copyrighted work. For instance, when a television station’s news broadcast used 30 seconds from a four-minute copyrighted videotape of the 1992 Los Angeles beating of Reginald Denny, the court finding that the use was commercial and that it took the heart of the work, and affected the copyright owner’s ability to market the video, held that the same was not a fair use.[10]

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4. The effect of the use upon the potential market for or value of the copyrighted work

The final factor for consideration under section 107 is the extent to which the unlicensed use causes harm to the existing or future market interest of the original work. Where the use effected the owners right to make future derivative works, it was held to not be fair use.[11] Similarly, where the material taken was substantial and the publication adversely affected the potential market for authorized books about the program, it was held to be an infringement.[12]

While the above four factors are explicitly identified for consideration by courts under section 107 of the Copyright Act, the courts may also place weightage upon other factors if the need may arise, based upon the individual facts of the case. Therefore, no specific formula can be evolved to identify infringement under the Act.

Fair dealing in the United Kingdom

Similar to the concept of fair use in the United States, exception to the copyright law exists in the United Kingdom under the principle of fair dealing. The Intellectual Property Office of the United Kingdom describes ‘fair dealing’ as ‘a legal term used to establish whether a use of copyright material is lawful or whether it infringes copyright.’ It further states that there is no statutory definition of fair dealing and the same ‘will always be a matter of fact, degree and impression in each case. The question to be asked is: how would a fair minded and honest person have dealt with the work?’[13] Accordingly, the courts have identified two essential factors that are relevant in determining whether a particular dealing with a work is fair or not. These are as follows:

• Whether the use of the work affects the market of the original work; and
• Whether the amount of work taken is reasonable and appropriate, and if the same is necessary to be taken.

In this respect, it is the view of the Office that where the work acts as a substitute for the original work and results in loss of revenue to the owner of the work, it is likely that such a dealing is not fair. Further, conventionally, only the use of a part of the work is permissible under the principle of fair dealing.

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Section 29 and 30 of the Copyright, Designs and Patents Act, 1988 outline the purposes and parameters within which the potential defense of fair dealing may be applicable. These are as follows:[14]

1. Quotation, Criticism and Review: Where short extracts from the work have been reproduced for the purposes of criticism and review, the same is permissible provided that the critique or review is genuine. A more general defense of quotation is available as extracts may also be used for other purposes such as academic research or writings.
2. News Reporting: This exception applies to use of copyrighted materials such as textual extracts or short video clips, for purposes of reporting current events that are of national or international importance.
3. Parody, caricature and pastiche: This exception introduced in 2014 is made in respect to the use of various existing works to generate fresh or new social commentaries for purposes of humour or ridicule without the requirement of obtaining the permission of the original author.
4. Research and private study for non-commercial research: Where single copies of a work have been made or where short extracts have been taken from them for non-commercial research or for private study by entities such as students and researchers, and the same has not been published or shared with others, such a use is exempted under the Act.
5. Preservation or replacement copies: Often, it is necessary to preserve or conserve the original works of copyright owners that may otherwise be lost or destroyed. Further, with technological advancements, without the creation of digital formats of works, they may become obsolete. In such circumstances, replication of works would be fair dealing provided that the work is not one of multiple copies and it is not possible to obtain another copy of the same.
6. Educational uses for instruction and examination: Use of work for teaching purposes, instructing students, etc. is not considered infringement provided that they are not used for commercial purposes.
7. Text or data mining: Text or data mining is a fairly new concept that implies an automatic process of scanning or analyzing large amounts of data using scripts customized to look for patterns, or discover relationships and trends that are otherwise not visible through a normal reading. The purpose of this exception is to enable scientific growth and progress using computer technology where the research is not for the commercial benefit of the researcher. However, the researcher is required to comply with certain legal requirements such as legal access to the data through subscriptions, etc.

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It may be noted that while fair use and fair dealing appear to be similar to a great extent, the two terms are not interchangeable. An exception to copyright law that may be available in the United States under the principle of fair use may not necessarily be available under the law of the United Kingdom under the principle of fair dealing. While fair use is a more general defense and can be widely interpreted by the courts, the exceptions under fair dealing are stricter and more limited than those of the States. They are also less open to interpretation than the exceptions under fair use. Hence, this distinction between the two principles must be borne in mind at all times while considering the issues of copyright infringement in the two countries.[15]

Conclusion

Copyright is of immense importance to enable progress and development. Without the protection of copyright laws, most literary and artistic works would be of no value. This is neither favourable to the interests of the owners of the works nor to the economy. However, the protection afforded cannot be so stringent that it becomes detrimental to the overarching interest of society at large. Therefore, the exceptions carved out under the principles of fair use and fair dealing are highly significant. With the United States and the United Kingdom being two of the most developed countries in the world, the protections, and the exceptions to the protections afforded by them to various entities becomes of great relevance as legislators of various other nations look upto the same to formulate their own laws. Considering that the exceptions mentioned hereinabove are neither too liberal nor so stringent that they are insufficient, they appear to be suited well to the present purposes. Further, as observed, with changing circumstances, the exceptions have also been amended to include more advanced purposes such as data mining, hence keeping the law relevant and preventing the same from becoming outdated. However, with the number of fast-paced and unexpected technological advancements that have been taking place lately, it remains to be seen how the jurisprudence will evolve to encompass the same.

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[1] Intellectual Property Talent Search Examination, What is the Importance of Copyright? (Mar. 10, 2021, 11:17 AM), https://iptse.com/why-are-copyright-laws-important/

[2] World Intellectual Property Organization, Copyright (Mar 10, 2021, 11:17 AM), https://www.wipo.int/copyright/en/

[3] Copyright, Designs and Patents Act, 1988, c.48 §1, https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/957583/Copyright-designs-and-patents-act-1988.pdf

[4] Copyright Law of the United States of 2020, 17 U.S.C., §101, https://www.copyright.gov/title17/title17.pdf.

[5] U.S. Copyright Office, More information on Fair Use (Mar 10, 2021, 11:17 AM), https://www.copyright.gov/fair-use/more-info.html.

[6] TCA Television Corp. v. McCollum, No. 15 Civ. 4325 (S.D. N.Y. Dec. 17, 2015)

[7] Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P. 742 F.3d 17 (2d Cir. 2014).

[8] Capitol Records Inc. v. Alaujan, 2009 WL 5873136 (D. Mass., 7/27/09).

[9] Wright v. Warner Books, Inc., 953 F.2d 731 (2d Cir. 1991).

[10] Los Angeles News Service v. KCAL-TV Channel 9, 108 F.3d 1119 (9th Cir. 1997).

[11] Castle Rock Entertainment, Inc. v. Carol Publ. Group, 150 F.3d 132 (2d Cir. 1998).

[12] Twin Peaks v. Publications Int’l, Ltd., 996 F.2d 1366 (2d Cir. 1993).

[13] Intellectual Property Office, Exceptions to Copyright, (Mar. 10, 2021, 11:17 AM), https://www.gov.uk/guidance/exceptions-to-copyright.

[14] The University of Edinburgh, Copyright Exceptions and Fair Dealing, (Mar. 10, 2021, 11:17 AM), https://www.ed.ac.uk/information-services/library-museum-gallery/library-help/copyright/copyright-exceptions-and-fair-dealing

[15] ibid.

By:- Rajat Nischal 

A trademark if perceived in a true layman’s sense would be referred to as a visual representation of a word, label, numeric characters, name, or device consumed by an entity in order to segregate/ distinguish its own identity/ services or goods from the previously present comparable services/goods stemming from a different entity/organization. A trademark operates its being in such a sedulous approach that it delivers an exclusive identity (i.e., an exclusive mark which a third party cannot optimize) of that specific service/good offered by that specific service provider/ entity. The moment an entity enrolls itself as a registered trademark, it transmogrifies its own self as an untouchable asset or intellectual property for an entity which is optimized in order to protect the reputation and status of that specific brand/entity.

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Considering the contemporary scenario in India, the trademarks are registered under the Trademark Act, 2016 by the Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India. Post the registration as a trademark, the trademark owner gains a right to take legal action for damages when trademarks infringements of occur. Subsequent to a successful registration, symbol ‘R’ can be used by the trademark owner making the validation of his rights for a fixed period of 10 years. Nevertheless, the trademarks forthcoming their expiration can easily be renewed by a simple submission of renewal application.

REGISTRATION CHECKLIST

The registration procedure encompasses the following;

• Filling up registration application form,
• Examination of the trademark
• Publication of the trademark
• Advertisement of the trademark
• Opposition (objections) if raised/ found
• Registration of the trademark and renewal of the trademark after every 10 years.

The checklist consists of a basic necessities

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1. SEARCHING A TRADEMARK

The applier is suggested to be cautious during the course of selection. This is because, tremendous variety of trademarks are predominantly registered and to make it indisputable, the mark should truly be unique. A thorough research on the trademarks database which is available with the trademarks registry has to be conducted before choosing a unique and exclusive trademark.  The database is a prominent option because the search discloses all the types of trademarks that are already available in the market, either registered or unregistered.

1. FILING APPLICATION

The concerned application may be filed either in a multi or a single class. The same totally hangs to the specific service/good that the entity holds. The application Form TM-A which can be filled in either ways, may it be online or offline. For offline the applier shall visit the official trademark office depending upon the jurisdiction and for online, the applier shall refer the official intellectual property India website. The trademark application encompasses numerous documents prescribing comprehensive and detailed specifications of the trademark.

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• EXAMINATION BY THE AUTHORITIES

After filing the application, asper the guidelines of the Trade Marks Act of 2016, an obligatory examination process of the trademark application is conducted by the government examiner.

The submissions of their examination might reveal certain objections which may be absolute or limited in nature; the aforesaid examination report by the concerned authorities is dispensed within a span of 30 days of having filed the application. In response of the same, in order to remove the objections, an obligatory rational response (including arguments and evidence) to the objections shall be submitted before the authorities.

1. AFTER THE EXAMINATION 

Upon filing a reply to the investigation report, the authority Examiner may hold legal proceeding if the Examiner is not completely satisfied with the reply filed or if the objections are not satisfied. After the hearing, the Inspector can approve the trade mark and either forward the request for publication to the journal or refuse the application if there is still an estoppel.

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1. MARKETING AND PUBLISHING

After the application for registration has been approved, the said trademark shall be marketed and published in the Trade Marks Journal for a term of 4 months.

The purpose of the publication and ads is to encourage the general public to file an opposition to the registration of the label. The Trade Marks Journal is accessible on the Official Registry website, which is published every Monday of the week.

1. DISAPPROVAL

After the publication of the trademark, any person who has been aggrieved can file a notice of opposition to the registration of the published trademark. The said notice shall be filed via form TM-O within a deadline of 4 months of the actual publication in the trademark journal. In the event of opposition, all the mechanism will function asper the prescribed procedures of law (the said includes; facts, counter-statement complaint, arguments etc.).

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• REGISTRATION

The final piece to this whole process is the successful registration of the trademark which comes after travelling journey full of estoppels.

Moreover, in the scenario where no opposition is raised towards the registration of the trademark during the 4 months publication period then, the same will get itself successfully registered within 7 working days.

CATEGORIES OF TRADEMARK UNITS IN INDIA

In India, trademarks can be registered in a multitude of forms. The same includes wordmark, label, logo, as well as device mark. As a condition, the choice to file a trademark as a word mark or logo is indeed a very challenging choice to accept.

1. GENERIC MARK

The Generic marks denotes a very generalised explanation of their product or seller. These comprise commonly known words like “food,” “shoes” or “watch.” However, the aforesaid words are a part and parcel of the daily routine of an individual’s life and giving exclusive usage rights for such words would truly amount gross injustice to other individuals of the society. For an illustration, trademark registration for the term “restaurant” is impossible as well as irrational in its very basis. And lawfully, such sort of a registration would exhaustively upshot an unfair monopoly over the entire food and beverage industry. Henceforth, if such terms are registered, unknowingly, countless businesses will have to shut themselves down unnervingly. So, an entity if perceives to uphold a registered mark in its name it shall add another modifier exclusive to its products.

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1. SUGGESTIVE MARK

Suggestive marks register terms that indicate the quality of a service without actually referring to it in a literal way. Imagination from the end of the user is a key factor in the identification of the mark. A good example would be Netflix, as it makes reference to its service line without explicitly mentioning that it is a video streaming network.

1. DESCRIPTIVE MARK

While the generic mark may reflect a commodity or its supplier, the Descriptive Mark refers to just the merchandise. That being said, as these words are considered part of the common language, they are nevertheless non-registerable. However, the inclusion of a ‘signifier’ to identify and define the substantial nature of the substance may qualify it for trademark protection.

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1. FANCIFUL MARK

This sort of trademark is the easiest one to file. It just includes a new term that does not actually have any meaning for the general public. While smoother to file.  In specific, the corporation should closely analyse how the brand will be perceived by the public. It is better to carry out careful study into whether it will be easy to recognize, read, or pronounce. Fanciful marks require informed forethought, too. Brands will most likely prefer their trade to achieve favourable characterizations, but businesses shall also acknowledge the cultural overtones of their fanciful trade mark.

1. LOGO

A logo in its true basic sense, enshrines the trademark holder with utmost rights over the amalgamation of words, design, and images together. For an illustration; Adidas, Puma, Nike, Reebok, etc. Above and beyond this, if the customer base of the company is truly based upon its logo, then obviously the entity would prefer to register a patent on that particular logo.

The covering given to the words in the logo mark is reduced as opposed to the regular word marks so the rights in the logo are only valid as a whole. Consequently, if an entity/individual pertains a wish to register a clearly styled appearance or a union of stylized words and design, the registration of a trademark as a logo will be essential.

1. WORD MARK

One of the most convenient and sober registration processes belongs to the word mark; a word mark is specifically designated for the name / title of the entity. For an illustration, Britannia and Jio solely possess the word of their entity as a registered mark and the said is called to be acknowledged as a word mark. Post the registration of a trademark as a word mark, the owner gains a blanket right over the usage and practice of the concerned word. The rights wholly support for the variations made in its font or writing style/size, until and unless the word is used asper and in line of the legal specifications enlisted, the word lies in the boundaries of the blanket of the rights owned by the applier.

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