Ip, Types of IP, Procedure to file IP, real Cases related t o IP

1. By: DR. Nidhi Raj Gupta

2. Meaning And Definition
Types Of
Intellectual
Property
Procedure
for Grant
Real Cases
AGENDA

5. Patent
It is important to note that patent for a new
invention is registered only if the invention is
‘novel’ and ‘original’
A ‘Patent’ is an intellectual property right which
protects any new invention.
A patent is granted for a term of 20 (twenty)
years from the date of filling of the application.

6. 1856 The Act VI of 1856 on protection of inventions based
on the British Patent Law of 1852.
1859
The Act modified as
act XV Patent
monopolies called
exclusive privileges
(making. Selling and
using inventions in india
and authorizing others to
do so for 14 years from
date of filing
specification).
1872 The Patterns & Designs Protection Act.
1883 The Protection of Inventions Act.
1888 Consolidated as the Inventions & Designs Act.
1911 The Indian Patents & Designs Act.
1999 On march 26, 1999 Patents (Amendment) Act, (1999) came
into force from 01-01-1995.
2002 The Patents (Amendment) Act 2002 came into
force from 20th may 2003
2005 The Patents (Amendment) Act 2005 effective from
1st january 2005

7. Patents
Utility Patent Plant Patent Design Patent

8. Utility Patent
Utility patents, the most common type issued by
the USPTO, apply to a broad range of inventions,
including:
1. Machines (something composed of moving
parts, such as engines or computers)
2. Articles of manufacture (brooms,
candleholders, etc.)
3. Processes (business processes, software,
etc.)

9. Plant Patent
A plant patent is granted by the United
States government to an inventor (or
the inventor's heirs or assigns)
who has invented or discovered and
reproduced a distinct and new variety
of plant, other than a tuber
propagated plant or a plant found in
an uncultivated state.

10. Design Patent
Design patents
are utilized to protect
the novel ornamental
features of a
utilitarian object.

11. Design vs Utility
A utility patent protects the functional
aspects of an article, i.e., the way the
article works and is used, whereas a
design patent only protects the
ornamental appearance of an article,
such as its shape, configuration and/or its
surface ornamentation

12. The Trademarks
The validity of a trademark registration is for an initial period of 10 (ten) years which can renewed perpetually.

13. Trade Mark
Coca Cola was invented in 1886 and protected
by trademark (for the name Coca-Cola) and by
an industrial design (for this very special
design of the Coca-Cola bottle, supposed to be
in the shape of a woman wearing a long skin-
tight dress).
Trade Mark

14. The Copyrights
‘original
literary
Dramatic Musical,
artistic works cinematograph
films
sound
recording.
In case of published literary works, dramatical works and artistic works, copyright
protection shall be provided to such works for a term of 60 (sixty) years in addition to
the life of the author

15. Trade Secret
A trade secret is
typically something not
generally known to
the public, where
reasonable efforts are
made to keep it
confidential.

17. The Geographical
Indications
• Many goods in India are widely popular owing to
their place of origin. For instance, ‘Darjeeling tea’
is unique .
• Place of origin includes Banarsi Saree; Basmati
Rice
• A registered geographical indication is awarded
protection for a term of ten (10) years with the
option of renewing and extending such protection
for further tenures of ten (10) years from the date
of expiration of the original registration.

18. Types of GI

19. Patent Grant in INDIA
Conceptualizing an invention
Filing of application With complete specification
With provisional specification
Publication u/s 11A (early or
post 18-months )
Filing complete within
12 months after
provisional YES
If NOT
Application
ABANDONED
REQUEST for EXAMINATION
on Form-18 within 48 months
from date of priority.
Pre-grant opposition U/s 25(1)
EXAMINATION [for
patentability &
other requirements
F.E.R. Issued.

20. F.E.R. ISSUED
• Re-Examination of amended documents
• Controller offers a hearing to the applicant.
• Application is to be put in order within 12 months from issue
of FER
Objections not met
within 12 months
ABANDONED Grant of Patent u/s 43 and
publication of grant
Post grant opposition u/s 25(2)
Objections met within 12
months

21. Real CASES

22. Pidilite Industries Limited
v. Poma-Ex Products & Ors.
• The Court held that the mark ‘KWIKHEAL’
used by the Defendants is prima facie
deceptive and misleading. The Court was
also of the opinion that the Defendants have
adopted identical packaging to ride
on the reputation of the Plaintiff.
• The Court further held that there exists a
high degree of phonetic similarity between
the mark of the Plaintiff “FEVIKWIK” and the
mark of the Defendants “KWIKHEAL”, as the
word “KWIK” is a dominant part of the
Plaintiff’s trademark.
• The Court issued an injunction in favour of
the Plaintiff.

23. Glenmark Pharmaceuticals Ltd. v. Curetech
Skincare and Galpha Laboratories Ltd.
• The dispute concerned the Plaintiff’s
product Candid-B, an anti-fungal cream, and
a similar drug being sold by Defendant No. 2
named Clodid-B.
• In addition to the adoption of similar word
mark, the Defendant No. 2 had also copied
the trade dress, color scheme, art
work, font style and even manner of
writing of the Plaintiff’s product.

24. Sajeev Pillai v. Venu Kunnapalli & Anr

25. Sajeev Pillai v. Venu Kunnapalli & Anr
• Mamankam is a grand festival which used to be held once in 12 years
on the banks of the Bharathapuzha river in Kerala during the 14th to
19th century.
• The appellant, Sajeev Pillai, a film director and a script writer, claims
to have researched the history of Mamankam and to have written a
script for a film. Stated to be his dream project, Pillai met Venu
Kunnapalli, the first respondent while searching for a producer to
make a film based on the script.

26. Sajeev Pillai v. Venu
Kunnapalli & Anr
Thereafter, he signed an MoU with
Kavya Film Company which was
associated with Kunnapalli.
Though Pillai was appointed as the
director, after completion of two
shooting schedules, his services were
terminated and he was replaced by
someone else. The shooting of the film
was thereafter completed, allegedly by
mutilating, distorting and modifying
his script.

27. Sajeev Pillai v. Venu Kunnapalli & Anr
• An interim injunction application was also filed to restrain the
respondents from releasing, publishing, distributing or exploiting the
film’ Mamankam’ and issuing pre-release publicity without providing
adequate authorship credits to Pillai as per film industry standards.
• The District Judge denied the interim injunction application triggering
Pillai to appeal before the Kerala High Court.

28. Sajeev Pillai v. Venu Kunnapalli & Anr
• In the appeal, Venu Kunnapalli took the stand that Pillai had assigned
his work which includes the story, script, screenplay and dialogue to
the respondents and hence he lost his authorship over the same.
• The Court analyzed Section 57(1) of the Copyright Act which
prescribes that even after assignment of the copyright in a work, the
author of a work will have special rights to claim the authorship of the
work. the Court held that the film may be released without exhibiting
anyone’s name as the script writer or as writer of the screen play
thereof till the disposal of the suit.

29. Carlsberg v/s Som
Distilleries
• Carlsberg alleged that Som
Distilleries (Som) had adopted an
imitation of its registered bottle
design, trademark and trade dress
to sell its Hunter beer which
amounted to infringement of design
and trademark, as well as passing
off. Carlsberg also filed an injunction
application to restrain Som from
carrying out its infringing activities.
The interim injunction application
was considered by the court and it
ruled in favour of Som.

30. Carlsberg v/s Som
Distilleries
Carlsberg's claim was based on:
• the unique and distinctive bottle
and trade dress/get-up of its
Tuborg beer bottle registered
under the Designs Act 2000;
• an infringement of registered
trademark Clockman shape label
on the bottle; and
• common law rights in the
distinctive shape of the bottle.

31. Carlsberg v/s Som
Distilleries
• Som distilleries claimed that
• In 2011, Som had initiated steps
to adopt a new design for its
Hunter beer and the bottle design
and label it adopted are a result of
its creativity and efforts.
• There was no novelty in
Carlsberg's bottle design, as the
shape, pull caps and labels are
common to the trade over which
no monopoly can be claimed.

32. Carlsberg v/s Som
Distilleries
• When the two bottles were
compared it could not be said that
the Hunter beer bottle was an
obvious imitation of Tuborg. The
adoption of the Hunter beer bottle
design appeared to be bona fide –
taking into account Som's
consultations with design
professionals dating back to 2011.
• The balance of convenience also
favoured Som as it had invested
heavily in designing and procuring
its bottles.

33. Nippon Steel, represented by Remfry and Sagar, filed a suit when
they received a complaint made to them by Yanbu Steel Company,
a trading company based in Saudi Arabia, about the quality of
some Carbon Seamless Pipes which were to be used in oil plants.
The company informed Nippon Steel that they were falsely
induced by the defendants to believe that these pipes were
manufactured by Nippon.
Nippon Steel & Sumitomo
Metal Corporation vs. Kishor
D Jain

34. It was later discovered that the pipes were manufactured by a
third-party manufacturer. The defendants duped the company by
affixing the Nippon Steel’s trademarks on the pipes and providing
forged certificates bearing Nippon Steel’s trademarks/logos to the
company
Nippon Steel & Sumitomo
Metal Corporation vs. Kishor
D Jain

35. Noting that there was a need to send out a serious message and to
deter other such unscrupulous entities from providing spurious
pipes, the Court decided to deal with the matter with an “iron
hand” and imposed Rs. 5 crores costs on the defendants. The
Court further directed that the costs were to be paid to the Tata
Memorial Hospital, a charitable organisation based in Mumbai.
Nippon Steel & Sumitomo
Metal Corporation vs. Kishor
D Jain

36. Christian
Louboutin V/S
Abubaker
• Christian Louboutin filed a
case against a Mumbai
based party, namely
Abubaker & Ors., who
were selling ladies
footwear with the similar
red soles.
• The plaintiff has got a
trademark certificate from
Europian Union.

37. Christian
Louboutin V/S
Abubaker
• Christian Louboutin
presented their arguments:
• That they are the
registered proprietor of the
trademark RED SOLE . Its a
red colour shade applied to
the soles of the ladies
footwear manufactured by
them.

38. Christian
Louboutin V/S
Abubaker
• The definition of a ‘mark’ under
the Indian Trademark Act {Section
2(m)} has categorically used the
expression ‘combination of
colours’. Thus a single colour does
not qualify as a mark.
• The colour red applied by the
Defendants to the soles of their
footwear, adds to the appeal or
the looks of the products, and
therefore such a feature which is
not used as a trademark will not
entitle the Plaintiff to seek
injunction against use of such
feature of the products by the
Defendants

39. Coca cola V/S
Parle
• Coca Cola was the largest
brand of soft drinks operating
in 200 countries.
• Defendant which was earlier
known as Aqua Minerals Pvt.
Ltd., was a part of Parle group
of Industries.
• The owners of defendant, Mr.
Ramesh Chauhan and Mr.
Prakash Chauhan, on
September 18, 1993, sold the
trademarks , formulation
rights, know- how, intellectual
property rights, goodwill etc.
of their products THUMBS UP,
LIMCA, GOLD SPOT, MAAZA to
the Coca cola.

40. Coca cola V/S
Parle
• The company Bisleri Sales Ltd, had the secret
beverage base for manufacturing maaza and was
an affiliated company of Defendant
• On September 12, 1993, several agreements were
signed between both the parties, such as, deed of
assignment, goodwill assignment, know-how,
confidentiality and non- use agreement, non-
compete agreement, general assignment, etc. to
give effect to the sale for a considerable money
value.
• Then, the plaintiff was envisaged with the right to
sell the product Maaza within the territory of India.

41. Coca cola V/S Parle
• The defendant retained the trademark rights of
MAAZA in respect of other countries where it
had been registered.
• In March 2008, the defendant got aware of the
fact that the plaintiff had filed for registration
of MAAZA in turkey.
• • As a result of this, it sent plaintiff a legal
notice repudiating the Licensing Agreement and
made it devoid of all other selling rights. • The
plaintiff filed the suit for permanent injunction
and damages for infringement of trademark
and passing off, as the defendant had
completely ignored many irrevocable and
absolute rights embarked upon the plaintiff.

42. Coca cola V/S Parle
The court had the territorial jurisdiction
over the matter, because the defendant
had issued a news article in Delhi edition
of Times of India, and the reports itself
created the jurisdiction of the court as
they showed his intention to use the mark
by way of groundless threat. Also, the
defendant had a factory at Shivaji Marg in
New Delhi and the threat was also given
as notice from New Delhi itself.

43. Coca cola V/S Parle
In view of negative covenant under
Section 42 of the Specific Relief Act, the
defendant no. 1 is not entitled to use the
mark MAAZA in India. Hence, the interim
order of injunction was granted to prevent
the plaintiff from irreparable loss and
injury.
The Delhi HC expressly barred Bisleri from
selling Maaza products, however, it is
specified that the company may continue
to manufacture Maaza on Indian soil,
provided the stock is exported

44. Emami Ltd vs Arbaaz
Khan Productions
On September 17, Emami Ltd served a legal notice to
Arbaaz Khan Productions for using the phrase "zandu
balm" in the "Munni badnaam hui" song of the Salman
Khan blockbuster Dabangg citing copyright violation.
• By using the brand name in the song, you have not only
violated the copyright of my clients, but you have also
made an attempt to defame the reputation of my clients
and the product manufactured by them, said ZANDU BALM
OFFICIALS

45. Emami Ltd vs Arbaaz
Khan Productions
• The company asked the producer to remove the phrase
"Zandu Balm" or delete the song from the film
altogether. Emami, which acquired Zandu
Pharmaceuticals in 2008 for Rs 700 crore, is a Rs 1,000
crore entity today. • Some inside news on September
19, "The issue is not as serious as it is being made out to
be. They have sent a notice. The company is unlikely to
take the matter to court. In fact, they are considering an
out of court settlement, and then using the song to
promote the product." And Arbaaz Khan said, "Now that
our film is a big success, such things are bound to
happen. Everyone wants a share of the pie."

46. Emami Ltd vs Arbaaz
Khan Productions
• When the song’s promos went on air, Emami
decided to strike a barter deal— allowing the film’s
producers the use of Zandu Balm in return for
rights to the song for its own advertisement.
• Also, Mallaika Arora Khan, had to do an
advertisement for the brand free of cost as the
compensation.

47. Q &A