Understanding Intellectual Property Rights
PROTECTION OF INTELLECTUAL PROPERTY BY STARTUPS
Among all the other numerous fundamental issues involving developing a product, raising capital, hiring employees, meeting statutory compliances etc., intellectual property protection can feel expensive or deflecting from the goals of launching a product into the market before other competitors. However, the value of several startups is primarily based on their intellectual property i.e. their "Intellectual Capital". For a technology startup, intellectual property issues are among the most essential concerns which need serious deliberations. In this digital age, it has become easy for users to abuse Intellectual Capital that has been developed after several years of hard work. The work that has been produced with diligent and painstaking efforts, gets easily copied, reworked and duplicated with minimal efforts. This resultantly affects upon the economic conversion goal of a startup like obtaining venture capital funding, investments by angel investors or partnerships. Therefore, it is vital for every startup to understand the importance of IPR and protect itself from violation or breach by a third party.
A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. The legal requirements to register a trademark under the Act are: • The selected mark should be capable of being represented graphically (that is in the paper form), • It should be capable of distinguishing the goods or services of one undertaking from those of others. • Typically it cannot be descriptive of the goods & services sought to be sold/ provided under such mark. Therefore, you cannot register “apples” for selling apples; or “IT Help” for providing IT services, though there are some exceptions to this. • It should be used or proposed to be used as a trademark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.
If it is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs. Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it. Do not adopt laudatory word or words that describe the quality of goods (such as best, perfect, super etc.). It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.
Under modern business conditions a trademark performs four functions • It identifies the goods / or services and its origin. • It guarantees its unchanged quality • It advertises the goods/services • It creates an image for the goods/ services.
Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark. The application should be in English or Hindi. It should be filed at the appropriate office. The applications can be submitted personally at the Front Office Counter of the respective trademark office or can be sent by post. These can also be filed on line through the e-filing gateway available at the official website.
REGISTERED IN INDIA ?
• Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark. • An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service. • Letters or numerals or any combination thereof. • The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service. • Devices, including fancy devices or symbols • Monograms • Combination of colors or even a single color in combination with a word or device • Shape of goods or their packaging • Marks constituting a 3- dimensional sign. • Sound marks when represented in conventional notation or described in words by being graphically represented.
The register of trademark currently maintained in electronic form contains inter alia the trademark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trademark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.
It can be removed on the ground that the mark is wrongly remaining on the register by submitting an application to the Registrar
TRADEMARK REGISTRATION ?
There are three main requirements for obtaining an international trademark registration in India: • The applicant should be a national of India or domiciled in India or have real and effective business or commercial establishment in India. • The applicant must have a national (Indian) trademark application or registration of a trademark with the Indian Trade Marks Registry. This national trademark application/registration will be used as the basis of the international application. The international application will have the same trademark as mentioned in the national trademark application or registration. The list of goods and services mentioned in the international application should also be identical with the national mark. • The applicant in the international application must choose one or more other member countries of the Madrid Protocol, where the applicant wants to protect his trademark.
The registered proprietor of a trademark can create, establish and protect the goodwill of his products or services, he can stop other traders from unlawfully using his trademark, sue for damages and secure destruction of infringing goods and or labels. The purchaser and ultimately consumers of goods and services get options to choose the best.
The registration of a trademark confers upon the owner the exclusive right to use the trademark in relation to the goods or services in respect of which the mark is registered and to indicate so by using the symbol ®, as well as seek the relief of infringement in appropriate courts in the country, if so required. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use, etc. Also, where two or more persons have registered identical or nearly similar marks due to special circumstances, such exclusive right does not operate against each other. However, a registration of a trademark provides exclusive rights to the registered proprietor of trademark which acts as an asset and has monetary value.
For filing new applications there are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc. Fees: Rs.4000/-. Following are the various Forms prescribed for different purpose: • Notice of Opposition to oppose an application published in the Trade Marks Journal (FormTM-5). Fees: Rs. 2,500/- for each class covered • For Renewal of a Regd. trademark (Form TM-12 ). Fees: Rs.5,000/- • Surcharge for belated renewal (Form TM-10).Fees: Rs. 3,000/- • Restoration of removed mark (Form TM-13) Fees: 5,000/- • Application for rectification of a registered trademark (Form TM-26) Fees: Rs. 3,000/- • Legal Certificate (Form TM-46) (Providing details of entries in the Register) Fees: Rs.500/- • Copyright search request and issuance of certificate (Form TM-60) Fees: Rs, 5,000/-.
• The national statues i.e., the Trade Marks Act, 1999 and rules made thereunder. • International multilateral convention. • National bilateral treaty. • Regional treaty. • Decision of the courts. • Office practice reduced in Manuals and guidelines and rulings of the Courts • Decision of Intellectual Property Appellate Board. • Text books written by academician and professional experts.
Yes. But the basic principle is that the trademark applied should not be substantially altered affecting its identity. Subject to this, changes are permissible according to rules detailed in the subordinate legislation.
The system of international registration of marks is governed by two treaties: • Madrid Agreement Concerning the International Registration of Marks and • Protocol Relating to the Madrid Agreement ( ‘Madrid Protocol’), Under the Madrid Protocol, a mark can be registered in multiple countries by filing an application for international trademark registration. Such application is presented to the International Bureau of the World Intellectual Property Organization at Geneva, through the office of origin. i.e. the trademark office of the applicant. In case of Indian businesses, the Office of Registrar of Trademark, India is the office of origin. The office of origin will process the trademark application and file it with the Intellectual Property Organization at Geneva. If the trademark application complies with the applicable requirements, then the mark is recorded in the International Register and published in the World Intellectual Property Organization (WIPO) Gazette of International Marks. The International Bureau then provides a certificate of international registration and notifies each of the country contracting to the Madrid Protocol for which protection has been requested by the trademark applicant. Each of the country’s trademark office has the right to refuse protection of the mark by notifying to the International Bureau within the time limits specified in the Madrid Protocol. The Madrid Protocol has set strict time limits of 12 or 18 months for objections to be raised by the designated offices. Unless such a refusal is notified to the International Bureau within the applicable time limit, the protection of the mark in each designated country is the same as if it had been registered by the Office of that country.
An international registration remains dependent on the mark registered or applied for in the Office of origin, for a period of five years from the date of its registration. If, and to the extent that, the basic registration ceases to have effect within this five-year period, the international registration is no longer protected. A “Basic registration” means the registration of a trade mark before the Registrar of Trade Marks which is used as a basis for applying for an international registration. An international registration subsists for the period of 10 years from the date of its registration and it may be renewed further by paying renewal fee before the expiry of every 10 years. An “International registration” means the registration of a trade mark with the International Bureau of the WIPO, done under the Madrid Protocol.
Copyright Basics for a Startup
Copyright is a right given by the law to creators of original literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. In fact, it is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work.
Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby protecting and rewarding creativity. Creativity being the keystone of progress, no civilized society can afford to ignore the basic requirement of encouraging the same. Economic and social development of a society is dependent on creativity. The protection provided by copyright to the efforts of writers, artists, designers, dramatists, musicians, architects and producers of sound recordings, cinematograph films and computer software, creates an atmosphere conducive to creativity, which induces them to create more and motivates others to create.
The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized uses. Unlike the case with patents, copyright protects the expressions and not the ideas. There is no copyright protection for ideas, procedures, and methods of operation or mathematical concepts as such.
Copyright does not ordinarily protect titles by themselves or names, short word combinations, slogans, short phrases, methods, plots or factual information. Copyright does not protect ideas or concepts. To get the protection of copyright a work must be original.
No. Acquisition of copyright is automatic and it does not require any formality. Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright. However, certificate of registration of copyright and the entries made therein serve as prima facie evidence in a court of law with reference to dispute relating to ownership of copyright.
FOR A WORK ?
The Copyright Office has been set up to provide registration facilities to all types of works and is headed by a Registrar of Copyrights and is located at Plot no. 32, Boudhik Sampada Bhawan, Sector 14, Dwarka, New Delhi- 110075. The applications are also accepted by post. On-line registration through “E-filing facility “which facilitates the applicants to file applications at the time and place chosen by them.
The procedure for registration is as follows: a) Application for registration is to be made on Form XIV (Including Statement of Particulars and Statement of Further Particulars) as prescribed in the first schedule to the Rules; b) Separate applications should be made for registration of each work; c) Each application should be accompanied by the requisite fee prescribed in the second schedule to the Rules; d) The applications should be signed by the applicant. The Power of Attorney signed by the party and accepted by the advocate should also be enclosed, if applicable. e) The fee is to be paid either in the form of Demand Draft or Indian Postal Order favouring "Registrar of Copyrights Payable At New Delhi" or through E payment. Each and every column of the Statement of Particulars and Statement of Further Particulars should be replied specifically. f) The fee is either in the form of Demand Draft, Indian Postal Order favoring "Registrar of Copyright Payable at New Delhi" or through E payment. Each and every column of the Statement of Particulars and Statement of Further Particulars should be replied specifically.
copyright of a work directly ?
Yes. Any individual who is an author or rights owner or assignee or legal heir can file application for copyright of a work either at the copyright office or by post or by e-filing facility from the copyright Office website www.copyright.gov.in.
Yes. Both published and unpublished works can be registered. Copyright in works published before 21st January, 1958 (i.e., before the Copyright Act, 1957 came in force), can also be registered, provided the works still enjoy copyright. Two copies of published or unpublished work may be sent along with the application. If the work to be registered is unpublished, a copy of the manuscript has to be sent along with the application for affixing the stamp of the Copyright office in proof of the work having been registered. One copy of the same duly stamped will be returned, while the other will be retained, as far as possible, in the Copyright office for record and will be kept confidential. It would also be open to the applicant to send only extracts from the unpublished work instead of the whole manuscript and ask for the return of the extracts after being stamped with the seal of the Copyright office. When a work has been registered as unpublished and subsequently it is published, the applicant may apply for changes in particulars entered in the Register of Copyright in Form XV with prescribed fee. The process of registration and fee for registration of copyright is the same.
Yes. Computer Software or programme can be registered as a ‘literary work’. As per Section 2 (o) of the Copyright Act, 1957 “literary work” includes computer programmes, tables and compilations, including computer databases. ‘Source Code’ and “Object Code” is to be supplied along with the application for registration of copyright for software products.
A website may be understood as a webpage or set of interconnected webpages, hosted or stored on a server, and is made available online to members of public. Users can access the information and other underlying work on a website through various means such as scrolling webpages, using internal hypertext links or a search feature. Website usually consists of different rudiments which may be copyrightable subject matter that falls within any one of the classes of works set forth in Section 13 of Copyright Act, 1957. The component parts of website can be in different form of digital files such as text, tables, computer programmes, compilations including computer databases (“literary works”); photographs, paintings, diagram, map, chart or plan (“artistic works”); works consisting of music and including graphical notation of such work (“musical works”); “sound recordings” and “cinematograph films”. Website as a whole is not subject to copyright protection. Generally, non-copyrightable content particular to websites may include but are not limited to ideas or future plans of websites, functional elements of websites, unclaimable material, layout and format or ‘look and feel’ of a website or its webpage; or other common, unoriginal material such as names, icons or familiar symbols. Applicant is required to submit a separate application for each component work/content appearing on a website.
After you file your application and receive diary number you have to wait for a mandatory period of 30 days so that no objection is filed in the Copyright office against your claim. In case any objection is filed, the Registrar of Copyrights after giving an opportunity of hearing to both the parties, may decide to register the work or otherwise. If no objection is filed the application is examined by the examiners. If any discrepancy is found the applicant is given ordinarily 45 days time to remove the same. Therefore, it may take around 2 to 3 months time for registration of any work in the normal course. The cooperation of the applicant in providing necessary information is the key for the speedy disposal of the matter.
As per the rule 70(12) of the Copyright Rules, 2013, an opportunity of hearing must be given. However, only after hearing, it may be decided to register the work or to reject it. The applicant himself or his/her pleader may appear in the hearing. As per section 72 of the Copyright Act, 1957 any person aggrieved by the final decision or order of the Registrar of Copyrights may, within three months from the date of the order or decision, appeal to the Intellectual Property Appellate Board (IPAB).
Originality is considered as ‘the bedrock principle of copyright’ and ‘the very premise of copyright law’. A work to be a copyrightable subject matter is to be created by the exercise of labour, skill and judgment of the author and must be an “original” work. Also, such exercise of efforts on the part of the author should not be trivial in nature and thus should not be a mere exercise of the mechanical function of copying the work of another. Variation in a prior work must be substantial in nature than merely trivial thus requirement of degree of originality is quantitative in nature for it to be protected by copyright law. Certificates may be considered as a formal document or written assurance which states an official fact and are generally used as evidence for certain purposes. Certificates are usually monotonous as it contains mere common words or formats which are generic in nature. Certificates are not considered as copyrightable subject matter as it falls under the narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually non-existent.
An App is a complete, self-contained computer program that is designed to perform specific tasks. Usually called 'Apps' for short, application programs are the most familiar forms of software and come in a very wide variety of types. An App usually has primarily dynamic content and is designed for user interaction. It may be used directly or indirectly in a computer or hand held electronic device. An App may be registered as a computer program under literary works as provided under Section 2(o) of the Copyright Act, 1957. For this purpose applicant is required to submit an application for registration under software category, accompanied by the source and object code as provided under Rule 70 (5) of the Copyright Rules 2013. It is important to note that the registration will cover any screen displays generated by that program, provided that the computer program (code) generating the screen display is submitted by the applicant. Mere snapshots of screen displays of an app are not eligible for copyright protection.
(“SIPP” OR “SCHEME”)
The Department of Industrial Policy and Promotion rolled out the SIPP with an aim to promote awareness and adoption of Intellectual Property Rights amongst Start-Ups. Objective : The Scheme is inclined to nurture and mentor innovation and emerging technologies among Start-Ups and assist them in protecting and commercialise it by providing them access to high-quality IP services and resources. Facilitators : A. Empanelment – For effective implementation, facilitators shall be empanelled by the Controller General of Patent, Trademark and Design. The Controller may revise the list of facilitators from time to time. B. Who can be facilitator – Any patent agent, trademark agent (registered with the Controller), advocate (as defined under The Advocates Act, 1961) or any government department/ organization/ agency through its authorized representative. Functions and Duties of Facilitators : A. Providing general advisory on IPR to startups on pro bono basis. B. Providing information on protecting and promoting IPRs in other countries on pro bono basis. C. Providing assistance in filing and disposal of applications. D. Drafting provisional and complete patent specifications for inventions of Startups. E. Preparing and filing responses to examination reports and other queries. F. Appearing on behalf of startup at hearings. G. Contesting opposition. H. Ensuring final disposal. Period of Scheme : 3 years w.e.f 01.04.2017 Note - The ownership of IPR shall remain with the Startup/ entrepreneur.
For IPR related queries DoIT&C has a dedicated team
Contact Person : Yogendra Singh
Mobile : +91 9829005663
Contact Person : Tarun Agarwal
Mobile : +91 7016598354
Contact Person : Mukesh
Mobile : +91 9772232605
Patent Information Center Rajasthan
Patent Information Centre (PIC) has been set up to create awareness on Intellectual Property Rights (IPRs) and facilitate filing of patents from the state of Rajasthan . PIC offers services like Patent Searches, Awareness Workshops, Patent Filing Assistance, Copyright and Design Filing Assistance, Analysis of Patent Information etc. for innovators, researchers and entrepreneurs.
Contact Person : Dr. Manu Sikarwar (Project Director)
Address : Mini Secretariat, Room No 506, 4th Floor, Bani Park, Jaipur,
Phone : 0141-2202041