AGENCIES RESPONSIBLE FOR IPR REGISTRATIONS

(a) NationallPR Agencies:

The office of the Controller General of Patents, Designs and trademarks
(CGPDTM),
subordinateOfficeunderTheDepartmentforPromotionofindustryandinternal
Trade(DPIIT), carries out statutory functions related to grant of Patents and
registration of Trademarks, Designs and Geographical Indications. The registration
of copyrights is administered bythe Registrar of Copyright Office, working under the
CGPDTM. It functions out of offices situated in Delhi, Kolkata, Mumbai, Chennai and
Ahmadabad, while theCentral IP Training Academy is at Nagpur.
The appropriate office of the patent office shall be the head office of the patent
office or the branch office as the case may be within whose territorial limits.
Residence of applicant or Domicile; or their place of business; or the place where the
invention actually originated.

TheCGPDTMsupervisesthefunctioningofthefollowinglPoffices:
i.
ThePatentOffices(includingtheDesignWing)atChennai,Delhi, Kolkata&Mumbai.
ii. ThePatentinformationSystem(PIS) andRajivGandhiNationallnstituteof
Intellectual Property Management (RGNIIPM) at Nagpur.
ii. TheTrademarksRegistryatAhmadabad,Chennai, Delhi,Kolkata&Mumbai.
INTELLECTUALPROPERTYRIGHTS Page13

iv. TheGeographicallndicationsRegistry(GIR)atChennai.
V. TheCopyright0fficeatDelhi.
vi TheSemiconductorIntegratedCircuitsLayout-DesignRegistryatDelhi.

Office TerritorialJurisdiction
Patent Office Branch, The States of Telangana, Andhra Pradesh, Karnataka, Kerala,
Chennai Tamil Nadu and theUnion Territories of Pondicherry and
Lakshadweep
Patent 0ffice Branch, TheStatesofMaharashtra,Gujarat, MadhyaPradesh,GoaandChhattis
Mumbai garhandtheUnionTerritoriesofDamanandDiu&Dadra
andNagarHaveli.
Patent Office Branch, TheStatesofHaryana,HimachalPradesh,JammuandKashmir,
New Delhi Punjab,Rajasthan, UttarPradesh, Uttaranchal, Delhiandthe Union
TerritoryofChandigarh.
PatentOffice,Kolkata Therestof India
IntellectualPropertyAppellateBoard(PAB):
Intellectual Property Appellate Board (IPAB) has been established in the year
2003, underSection 84 ofthe Trade Marks Act, 1999. The Board hearsappeals against
thedecision of Controller of Patents (under the Patents Act, 1970), Registrar of Trade
Marks (under the Trade Marks Act, 1999) and Geographical Indication cases (under
the Geographical Indication &Protection Act, 1999). The Copyright Board and Plant
Varieties Protection AppellateTribunalfunctionundertheambitof
IPABinaccordancewiththeirrespectiveActs and Rules.

(b) InternationallPRAgencies:
There are a number of International organizations and agencies that promote
the use and protection of intellectual property.

INTELLECTUALPROPERTYRIGHTS Page14

InternationalTrademarkAssociation(INTA)
INTA is a not-for-profit international association composed chiefly of trademark
owners and practitioners. It is a global association. Trademark owners and
professionals dedicated in supporting trademarks and related IP in order to protect
consumers and to promote fair and effective commerce. More than 4000 (Present
6500 member) companies and law firms more than 150 (Present 190 countries)
countries belong to INTA, together with others interested in promoting trademarks.
INTA members have collectively contributed almost US $ 12 trillion to global GDP
annually. INTA undertakes advocacy work throughout the world to advance
trademarks and offers educational programs and informational and legal resources
of global interest. Its head quarter in New York City, INTA also has offices in Brussels,
Shanghai and Washington DC and representative in Geneva and Mumbai. This
association was founded in 1878 by 17 merchants and manufacturers who saw a
need for an organization. The INTA is formed to protect and promote the rights of
trademark owners, to secure useful legislation(the process of making laws), and to
give aid and encouragement to all efforts for the advancement and observance of
trademark rights.

Worldintellectual PropertyOrganization(WIPO)
WIPO was founded in 1883 and is specialized agency of the United Nations whose
purposes are to promote intellectual property throughout the world and to administer
23 treaties (Present 26 treaties) dealing with intellectual property. WIPO is one of the
17 specialized agencies of the United Nations. It was created in 1967, to encourage
creative activity, to promote the protection of Intellectual Property throughout the
world. Around 193 nations are members of WIPO. Its headquarters in Geneva,
Switzerland, current Director General of WIPO is Francis Gurry took charge on
October 1, 2008.
EVOLUTION OF IP ACTS AND TREATIES

The evolution of international IP acts through different treaties and the formation
ofWorldintellectual Property Organization (WIPO) is given below in brief.

1883-ParisConvention (France)
TheParis Convention for the Protection of Industrial Propertyis born. This
international agreement is the first major step taken to help creators ensure that
their intellectual works are protected in other countries. The need for international
protection of intellectual property(P) became evident when foreign exhibitors
refused to attend the International Exhibition of Inventions in Vienna, Austria in 1873
because they were afraid their ideas would be stolen and exploited commercially in
other countries. The Paris Convention covers:

" Inventions(patents)
Trademarks

Industrialdesigns
1886-BerneConvention(Switzerland)
Following a campaign by French writer Victor Hugo the Berne Convention for the
Protection of Literary and Artistic Works is agreed. The aim is to give creators the
right to control and receive payment for their creative works on an international level.
Works protected include:

Novels,shortstories,poems, plays;

Songs,operas,musicals,sonatas;and

Drawings,paintings,sculptures,architecturalworks.

1891-MadridAgreement(Spain)

With the adoption of theMadrid Agreement, the first international IP filing

service is launched: theMadrid System for the international registration of marks. In
the decades that follow, a full spectrum ofinternationallP serviceswill emerge under
the auspices of what will later become WIPO.

INTELLECTUALPROPERTYRIGHTS Page11

1893-BIRPlestablished

The two secretariats set up to administer the Paris and Berne Conventions
combine to form WIPO's immediate predecessor, the United International Bureaux
for the Protection of Intellectual Property - best known by its French acronym, BIRPI.
The organization, with a staff of seven, is based in Berne, Switzerland.

1970-BIRPIbecomes WIPO

TheConvention establishing the World Intellectual Property Organization

(WIPO) comes into force and BIRP|is thus transformed to become WIPO. The newly
established WIPO is a member state-led, intergovernmental organization, with its
headquarters in Geneva, Switzerland.

1974-WIPOjoinstheUN

WIPO joins the United Nations (UN) family of organizations, becoming

aspecialized agency of the UN. All member states of the UN are entitled, though not
obliged, to become members of the specialized agencies.

1974-WIPOjoinsthelUN(193MemberCountriesinUN today)
1893-BIRPlestablished

The two secretariats set up to administer the Paris and Berne Conventions
combine to form WIPO's immediate predecessor, the United International Bureaux
for the Protection of Intellectual Property - best known by its French acronym, BIRPI.
The organization, with a staff of seven, is based in Berne, Switzerland.

1970-BIRPIbecomes WIPO

TheConvention establishing the World Intellectual Property Organization

(WIPO) comes into force and BIRPl is thus transformed to become WIPO. The newly
established WIP0 is a member state-led, intergovernmental organization, with its
headquarters in Geneva, Switzerland.

1974-WIPOjoinstheUN

WIPO joins the United Nations (UN) family of organizations, becoming

aspecialized agency of the UN. Allmember states of the UN are entitled, though not
obliged, to become members of the specialized agencies.

1974-WIPOjoinstheUN(193MemberCountriesinUN today)

WIPO joins the United Nations (UN) family of organizations, becoming

aspecialized agency of the UN. All member states of the UN are entitled, though not
obliged, to become members of the specialized agencies.

1978-PCTSystemlaunched

ThePCT international patent system begins operation. The PCT expands

rapidly to become WIPO's largest international IP filing system today.

ThePatent Cooperation Treaty(PCT) makes it possible to seek patent

protection for an invention simultaneously in each of a large number of countries by
filing an "international"'patent application.
TRIPSAgreement

Indiaalongwithotheremergingnationsgracedasignatorytothe TreatyofTRIPSof
theWorldTrade Organisation(WTO)in1995witha matterthat agreementwillallow free

INTELLECTUALPROPERTYRIGHTS Page12

flow of trade, investment and eliminate the restrictions enduring in the norm of
Intellectual Property.

The Agreement on Trade Related Aspects of Intellectual Property Rights

(TRIPS) is an international agreement administered by the World Trade Organization
(WTO) that sets down minimum standards for many forms of intellectual property
(P) regulation as appliedto nationals of other WTO Members. TheAgreement on
Trade-Related Aspects oflntellectual Property Rights (TRIPS) is aninternational legal
agreement between all the member nations of the World Trade Organization (WTO).

The TRIPS Agreement aims for the transfer of technologyand requires

developed country members to provide incentives for their companies to promote
the transfer of technology to least-developed countries in order to enable them to
create a sound and viable technological base
ChatGPT
Intellectual Property Rights ((PR) benefit various
stakeholders in different ways:

1. Patents:

" Inventors/Innovators: Patents provide

them with exclusive rights to their
inventions, allowing them to profit from
their creations by selling or licensing
them.

" Companies: Patents can be valuable

assets for companies, offering competitive
advantages, protecting investments in
research and development, and providing
opportunities for revenue through
licensing and litigation.
" Consumers: While patentsmay limit
competition in the short term, they can
also incentivize innovation, leading to the
development of new and improved
products an chnologies.
2.Copvriahts:
2. Copyrights:
Creators: Copyrights protect the original
works of authors, artists,musicians, and
other creators, giving them control over
the use and distribution of their works and

enabling them to earn income through

royalties and licensing.
" Publishers/Producers: Copyrights
provide publishers, producers, and
distributors with exclusive rights to
reproduce and distribute creative works,
allowing them to monetize their
investments in publishing, film, music, and
other media.
" Consumers: Copyrights ensure the
availability of diverse and high-quality
creative content, while also balancing the
interests of creators and the public
through limitations and exceptions such
as fair use ar ducational use.
3. Trademarks:
3. Trademarks:

" Businesses: Trademarks protect brand

identities, logos, and slogans, allowing
businesses to differentiate their products
and services from competitors, build
consumer trust and loyalty, and maintain
the reputation and goodwill associated
with their brands.

" Consumers: Trademarks help consumers

make informed purchasing decisions by
signaling the source and quality of
products and services, reducing the risk of
confusion or deception in the
marketplace.
4.Trade Secrets:
" Companies: Trade secrets safeguard
valuable proprietary information, such as
formulas, processes, and customer lists,
giving companies a competitiveedge by
enabling the tomaintain confidentiality
andexclusiviy OVver their business-critical
4. Trade Secrets:

Companies: Trade secrets safeguard

valuable proprietary information,such as
formulas, processes,and customer lists,
giving companiesa competitive edge by
enabling them to maintain confidentiality
and exclusivity over their business-critical
assets.

" Employees: Trade secrets protect

employees' rights to confidential
information and incentivize them to
contribute to innovation and business

success while ensuring the security of

sensitive data.

" Consumers: While trade secrets primarily

benefit companies,consumers indirectly
benefit from the innovation and

competition fueled by companies'

investments in research and development
protected bvde secret laws.
5. Industrial Designs:
" Designers/Inventors: Industrial designs
protect the visual appearance of a
product,such as its shape, configuration,
or ornamentation, providing designers
and inventors with exclusive rights to their
aestheticcreations and enabling them to
capitalize on their unique designs in the
marketplace.
" Companies: Industrial designs help
companies differentiate their products
from competitors, enhance brand
recognition, and attract consumers
through visually appealing and istinctive
product designs.
 " Consumers: Industrial designs contribute
to the diversity and aesthetics of
consumer products, enriching the
shopping experience and allowing
consumers toexpress their preferences
and individuality through the products
they choose.
6. Geographical Indications (GI) of Goods:
" Producers: Geographical indications
protect the reputation and quality
associated with products originating from
a particular geographical region, allowing
producers to command premium prices,
access niche markets,and preserve
traditional know-how and cultural

heritage.
Consumers: Geographical indications
help consumers make informed
purchasing decisions by providing
assurance o authentic
?authenticity, quality, and
unique characteristics of products tied to
 Consumers: Geographical indications
help consumers make informed
purchasing decisions by providing
assurance of the authenticity, quality,and
unique characteristics of products tied to
specific geographic origins, such as
Champagne, Parmigiano-Reggiano, or
Darjeeling tea.
" Communities: Geographical indications
benefit local communities by promoting
sustainable economic development,
preserving traditional production
methods, fostering culturalidentity, and
preserving the environmental and social
ntegrity of specific regions.
TRADEMARKREGISTRATIONPROCESS:

Investing your time and money to build a particular brand and seeing the same
brand name being used by another, robbing you of your hard-earned brand
INTELLECTUALPROPERTYRIGHTS Page40

reputation is not an agreeable state of affairs.

INTELLECTUALPROPERTYRIGHTS Page41

Manyatime,trademark(TM)ownersendupinprotractedlitigationbecausewhenth
e time was right, they did not do trademark registration in India of their brand
name.

Trademarkregistrationprocessofthebrandname isnotadifficult task.

A few simple steps, as explained below and you would have the much-needed
legal protection of your brand name registration in India.

Atrademarkapplication canbemadeby:
 Manyatime,trademark(TM)ownersendupinprotractedlitigationbecausewhenth
e time was right, they did not do trademark registration in India of their brand
name.

Trademarkregistrationprocessofthebrandname isnotadifficult task.

A few simple steps, as explained below and you would have the much-needed
legal protection of your brand name registration in India.

Atrademarkapplication canbemadeby:

" Privatefirms
Individuals
Companies- Limited Liability Partnership, OPC, Private limited, Public,
Partnership, etc.
" NGO's

Note: In the case of NG0s and LLP companies the trademark has to be applied for
registration in the name of the concerned business or a company.

Any person, pretending to be the proprietor of a trademark used or intended to be

applied by him, may apply in writing in a prescribed manner for registration. The
application must include the trademark, the goods or services, name and address of
the candidate with powerof attorney, the time of use of the mark. The application
must be in English or Hindi. t must be registered at the appropriate office.

Step1:TrademarkSearch

Manyentrepreneursdonotcomprehendthe importanceof aTMsearch.

Having a unigque brand name in mind is not good enough reason to avoid a
TMsearch.

TM search helps you to know if there are similar trademarks available and it
givesyou a fair picture of where your trademark stands, sometimes, it also
gives youa forewarning of the possibility of trademark litigation.
Why waste your money in time-consuming trademark litigation later when you
can choose to avoid it in the first place?

INTELLECTUALPROPERTYRIGHTS Page42

Step2:FilingTrademarkApplication
Basedonthenatureof productaclassis chosenamong45classes oftrademark.

OncethechosenbrandnameorlogoisnotlistedintheTrademarkRegistryindia,
then we can opt for registering the same.
ThefirststepistofileatrademarkapplicationattheTrademarkRegistryindia
through online / offline.

Oncetheapplicationisfiled,anofficialreceiptisimmediatelyissuedforfuture
reference with TM application number.
Step3: Examination

Theexamination mighttakearound12-18 months.

Theexaminermightaccepthetrademarkabsolutely,conditionallyorobject.
Ifacceptedunconditionally, thetrademarkgetspublishedintheTrademarkJournal.
If not accepted unconditionally, the conditions to be fulfilled or the objections
would be mentioned in the examination report and a month's time would be
given to fulfill the conditions or response to the objections.

Oncesuch responseisaccepted,thetrademarkis publishedintheTrademark Journal.

If the response is not accepted, one can request a hearing. If in the hearing,
the examiner feels that the trademark should be allowed registration, it
proceeds for publication in the Trademark Journal.

Step4: Publication
The step of publication is incorporated in the trademark registration process
so that anyone who objects to the registering of the trademark has the
opportunity to oppose the same.
If, after 3-4 months from publication there is no opposition, the trademark
proceeds for registration.

INTELLECTUALPROPERTYRIGHTS Page43

In case there is opposition; there is a fair hearing and decision are given by the
Registrar.

Step5:RegistrationCertificate
Once the application proceeds for trademark registration, following
publication in Trademark Journal, a registration certificate under the seal of
the Trademark Office is issued.

Step6: Renewal

The trademark can be renewed perpetually after every 10 years. Hence, your
logo or brand name registration can be protected perpetually.

Whilefilingforthe trademarkregistration,thedocumentsrequired toprovideareas follows:

ldentity and business proofs: The trademark owner or the person who is approved
by the trademarkownerrequires presentingtheiridentityproof. Itcanbe
yourAadharCard, Driving License, Passport, Ration card, or Voter's ID.

Using Logo with Tagline:lf a trademark application is prepared for a tagline with only
words, then there is no requirement for a logo. In cases where a logo is applied, then
it must be submitted in black and white format. The number of words in the logo
must exactlybe the same as specified in the application for a trademark.

BrandName &Logo: Thelogomusthavethebrand name.

User Affidavit: If a particular user data is to be claimed, the user affidavit is expected
to be submitted.

Proof of TM use:To demand specific user date, documentary proof like

invoices,registrationcertificates, etc. with the brand name must be given.

MSME or Start-up Recognition:A partnership firm or Corporate entities can give a

certificate of registration under MSME or Start-up India scheme to get a 50% rebate
IMPORTANCE OF INTELLECTUALPROPERTYRIGHTS

IPR is a significant tool in today's era. The risk of an innovation getting

infringed without the knowledge of the inventor stands very high. With the increase in
the importance of IP, instances of IP crimes have become the part and parcel of the
digitized era sometimes even leading to failure of businesses. Companies rely on
adequate protection of their patents, trademarks, and copyrights, while customers
make use of IP to ensure that they purchase secure, assured goods. An IP asset is
like any other physical property offering commercial benefits to businesses. In a web
-based world, IP protection is much more relevant as it is comparatively simpler than
ever to reproduce any specific template, logo, or functionality. Hence, strong IP laws
give protection to IP and contribute to the economy of the respective state. IPR is
one of the sources of securityfor intangible properties which are still open to the
public and which can be quickly replicated by anyone.
Intellectual propertyrights aremoreimportant becausetodaywearehighly
connected to digital landscape. With all of the good the rise of the internet has done
for the sharing of information and ideas, it has unfortunately become easier for ideas
and works to be stolen, which can be damaging to both national economies and
innovation.

Intellectualpropertyprotectionvaries fromcountrytocountry,
butcountriesthathave strong IP laws recognize the important impact original works,
designs, inventions, etc. have on the overall economy. Almost every country that has
a dependence on international trade takes strong measures to protect their
intellectual property rights.3

With the rise of intangible assets that are shared across the internet, it is easy
for people to unlawfully copy and share books, music, movies, and more. Copyrights,
patents, trademarks, and trade secrets and the laws around these protections are all
intended to encourage innovation and creativity and are essential to the practice of
IP law to help curb illegal activities.

Organizations like the World Intellectual Property Organization (WIPO)

underscore the importance of fostering IP-driven innovation to incentivize and
protect creativity. WIPOis a global forum for intellectual property services and is a

INTELLECTUALPROPERTYRIGHTS Page9

L
self-funding agency of the United Nations, with 193 member states.
ct Trademark Design
ition A distinctive Aesthetic or visual
sign, symbol, appearance of a

logo, word, or product (shape,

phrase configuration,
identifying ornamentation)
goods/services

tion Identifies Enhances visual

source/origin of appeal/attractiveness
goods/services, of products,
aids consumer influences consumer
recognition preferences
:ction Prevents Grants exclusive
unauthorized rights to prevent
use by copying/imitation,
competitors, protects original
ensures visual features
Consumer

clarity
IBasis Governed by Governed by
tradema vs industrialdesign laws
or regulations or regulations
|Basis Governed by Governed by
trademark laws industrial design laws
or regulations or regulations

e Can cover Encompasses

various forms: product shape,
word marks, surface
logo marks, ornamentation, color
product schemes,etc.
packaging, etc.
tion Typically Typically grants
renewable protection for a
indefinitely with limited period (e.g.,
continued use 10-25 years)
and protection
wal Requires May require renewal
periodic or maintenance fees
renewal and to uphold exclusivity
maintenance to
maintain
protection

iples Logos (e.g., Unique shape of

Nike swC Coca-Cola bottle,
brand names design of iPhone,
iples Logos (e.g., Unique shape of
Nike swoosh), Coca-Cola bottle,
brand names design of iPhone,
(e.g., Coca fabric pattern
Cola), slogans

cement Protection Protection extends to

extends to substantially similar
similar designs to prevent
goods/services imitation
to prevent
Consumer

confusion

stration Optional but Often recommended

provides for stronger legal
additional legal protection and
benefits and enforcement
presumption of
validity
In summary, trademarks and designs serv
distinct purposes in intellectual property law,
with trademarks focusing on brand identification
and consumer recognition, while designs center
on protecting the visual appearance and
aesthetics of products.
ACQUISITIONOFTRADEMARKRIGHTS

In a global scope, obtaining a trademark right through Use or through Registration

are two major legislative models of system for the grant of trademark rights.

ByUse

ByRegistration

The "use" model is based on the objective facts of trademark use, and decides the
ownership of a trademark according to the time that the trademark was first used.

Whilethe "registration" model grants trademark rights accordingto registration and

the first applicant will obtain the trademark right.

In history, the earliest trademark legislations all took "use" principle, for instance, the
first statue of trademark-Law of Manufacturing Signs and Trademarks concerning
the Content of Use and Non-examination Principle enacted by France in 1857 took
the "use" model.

However, since there are many defects of the "use" principle, France abandoned
thisprinciple which was already implemented for more than one hundred years in
1964 and shifted to adopt the "registration" model which was succeeded by the
current Code of Intellectual Property. Article 712-1 of the code provides: "trademark
rights shallbe obtained through registration".

InlndiaonecanacquireandclaimaTrademarkonlyby RegistrationandnotbyUse
The registration of a trade mark confers on the registered proprietor of the trade
mark the exclusive right to use the trade mark in relation to the goods or services in
respect of which the trade mark is registered. While registration of a trade mark is
not compulsory, it offers better legal protection for an action for infringement. As per
Section 17 of the Act, the registration of a trade mark confers the following rights on
the registered proprietor:

It confers on the registered proprietor the exclusive right to the use of the
trade mark in relation to the goods or services in respect of which the
trade mark is registered.
INTELLECTUALPROPERTYRIGHTS Page30

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(ii) It entitles the registered proprietortoobtain reliefin respectofinfringementofthe
 trade mark the manner provided by the Trade Marks Act, 1999 when a
similar mark is used on (a) same gods or services, (b) similar goods or
services, (c) in respect of dissimilar goods or services.

(ii) Registration of a trade mark forbids every other person (except the
registered or unregistered permitted user) to use or to obtain the
registration of the same trade markoraconfusinglysimilarmark inrelationto
thesame goodsorservicesorthe same description of goods or services in
relation to which the trade mark is registered.

(iv) After registration of the trade mark for goods or services, there shall not
be registered the same or confusingly similar trade mark not only for the
same goods or services but also in respect of similar goods or services by
virtue of Section 11(1) of Trade Marks Act, 1999.

(v) Moreover, afterregistration ofthetrademarkfor goods orservices, thereshall

not be registered the same or confusingly similar trade mark even in
respect of dissimilar goods or services by virtue of Section 11(2) in case of
well-known trademarks.

(Vvi) Registered trade mark shall not be used by anyone else in business papers
and in advertising. Use in comparative advertising should not take undue
advantage of the trade mark. Such advertising should not be contrary to
honest practices in industrial or commercial matters. The advertising
should not be detrimental to the distinctive character or reputation of the
trade mark.

(vii) There is aright to restrain use of the trade mark as trade name or part of
trade name or name of business concern dealing in the same goods or
services. The registered trade mark continues to enjoy all the rights which
vest in anunregistered trade mark. By registration the proprietor of an
unregistered trade mark is converted into proprietor of the registered trade
mark. An application for registration may be based on a trade mark in use
prior to such application andsuch a trade mark is already vested with
rights at Common law from the timne the use of the mark was commenced.