Your source for expert commentary on IP management issues.
Intellectual Property in India
Researched and compiled by Vanessa Lancaster (student at Sandra Day O’Connor College of Law at Arizona State University), with Shashwat Purohit and Anatole Krattiger. Last updated on 5 November 2009.
General Information about IP in India
If you are knowledgeable in the field of IP in India and have additional and/or updated information regarding IP in India, please add your comments at the end of this page or contact us at editors@ipHandbook.org. We will be glad to update this page with your help and inputs.
1.1 Membership of International Treaties and Conventions related to IP
1.2 Main IP Offices
Intellectual Property Office
MumbaiI - 400 037.
FAX : 24130387
Intellectual Property Office
Intellectual Property Office
Intellectual Property Office Building,
G.S.T. Road, Guindy,
Intellectual Property Office
Intellectual Property Office Building,
CP-2 Sector V, Salt Lake City,
Trade Marks Registry, Ahmedabad
National Chambers, 15/27, 1 st floor,
National Institute for Intellectual Property Management (NIIPM) and Patent Information System(PIS)
CGO complex, C Block,
Seminary Hills, Nagpur, Maharashtra - 440006
Phone: (91) (0712) 2511380,2512040,
Fax: (91) (0712) 2512040 / 2510186
1.3 Selected Law Firms
More information on IP Menu.
1.4 Background on the legal Environment
The main sources of law in India are the Constitution, statutes (legislation), customary law, and judicial precedent. The statutes are enacted by Parliament, state legislatures and union territory legislatures.
A unique feature of the India Constitution is the judicial system i.e. a single integrated systems of courts administers both union and state laws. The Supreme Court of India, seated in New Delhi, is the highest body in the entire judicial system. Each state or a group of states had High Court under which there is a hierarchy of subordinate courts.
The Chief Justice and the other judges of the Supreme Court are appointed by the President. The Supreme Court has original, appellate and advisory jurisdiction. Its original jurisdiction extends to the enforcement of fundamental rights given by the Constitution and to any dispute among states and the Government of India. The decisions of the Supreme Court are binding on all courts within the territory of India.
For further information, see Researching Indian Law by Victor Essien and A guide to India’s Legal Research and Legal System by Rakesh Kumar Srivastava.
1.5 Other relevant resources
See CLEA Website of WIPO for Indian IP rules and Legislations.
2.1 General Information
· Patent Law
The Indian Patents Act 1970 came into force on 20th April 1972 along with Patent Rules 1972. This law was suited changed political situation and economic needs for providing impetus technological development by promoting inventive activities in the country.
Uruguay round of GATT negotiations paved the way for WTO. Therefore India was put under the contractual obligation to amend its patents act in compliance with the provisions of TRIPS. India had to meet the first set of requirements on 1st January1995. This was to give a pipeline protection till the country starts giving product patent. It came to force on 26th March 1999 retrospective from 1995. It lays down the provisions for filing of application for product patent in the field of drugs or medicines with effect from beginning of 1995 and grant of Exclusive Marketing Rights on those products.
India amended its Patents Act again in 2002 to meet with the second set of obligations (Term of Patent etc.), which had to be effected from 1-1-2000. This amendment, which provides for 20 years term for the patent, Reversal of burden of proof etc. came into force on 20th May, 2003. The Third Amendment of the Patents Act 1970, by way of the Patents (Amendment) Ordinance 2004 came into force on 1st January, 2005 incorporating the provisions for granting product patent in all fields of Technology including chemicals, food, drugs & agrochemicals and this Ordinance is replaced by the Patents (Amendment) Act 2005 which is in force now having effect from 1-1-2005 .
· Patent Searching
The official Indian Patent database are quite user friendly and equipped with latest search tools and logical operations. Value addition has been done in the databases to make the information easily accessible.
As per the Patents Act 1970 a patent can be granted for an invention which may be related to any process or product. “An invention means a new product or process involving an inventive step and capable of industrial application” (S. 2(1)(j)). “New invention” is defined as any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art; Where, Capable of industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry (S.2 (1)(ac)). Therefore, the criteria for an invention to be patentable are,
(1) An invention must be novel
For patentability, an invention should fall within the scope of patentable subject matter as defined by the patent statute. The invention must relate to a machine, article or substance produced by manufacture, or the process of manufacture of an article. A patent may also be obtained for an improvement of an article or of a process of manufacture. With regard to medicine or drug and certain classes of chemicals no patent is granted for the product itself even if new, only the process of manufacturing the substance is patentable. However, product patents are available for drugs and food materials from 2005 as India’s obligations under the TRIPs Agreement. If any substance falls outside the scope of patentable subject matter, it cannot be patentable.
2.2 Licensing Restrictions
· Compulsory Licenses
Under Section 84 of the Patents Act, an application for the grant of compulsory license can be made to the Controller of Patents only after the expiration of three years from the date of the grant of a patent.
The Section also requires the person making the application to set out the nature of interest and provides an opportunity for the patent holder to oppose the application.
Chapter XVI of the Patents Act deals with compulsory licenses. This chapter is drafted along the lines of Article 31 of the TRIPS Agreement. It is pertinent to note that the Article deals only with “use” and not with “manufacture” of patented articles.
· Licenses of Right
A patentee may, by a license, permit others to make, use, or exercise, the invention which otherwise would not be allowed. The license should be in writing and the terms of which must be given in the application filed with the Controller. A license maybe given in express terms or implied from the circumstances. An exclusive license excludes all other persons including the patentee from the use of invention In a limited license the limitation may arise as to persons, time, place, manufacture, use or sale.
The owner of a patent may grant licenses to others. Since the patentee has the right to exclude others from making, using, offering for sale or selling or importing the invention, no one else may do any of these things without his/her permission. A patent licensing agreement is in essence nothing more than a promise by the licensor not to sue the licensee. No particular form of license is required; a license is a written contract and may include whatever provisions the parties agree upon, including the payment of royalties, etc.
The drawing up of a license agreement (as well as assignments) is within the field of an attorney at law. Such attorney should be familiar with patent matters as well. A few States have prescribed certain formalities to be observed in connection with the sale of patent rights.
3.1 General Information
India is a party to the Madrid Protocol since 2007.
The Office of the Registrar of Trademarks in India considers a trademark to be a visual symbol which may be a word signature, name, device, label, numerals or combination of colors used in connection with goods or services in commerce to distinguish it from other similar goods or services originating another person. Trademarks, service marks, collective marks, and certification marks may be registered. For an explanation of the differences in these marks, click here.
Under India’s Trade Mark Act of 1999, the legal requirements to register a trademark are:
1. The selected mark should be capable of being represented graphically (that is in the paper form).
2. It should be capable of distinguishing the goods or services of one undertaking from those of others.
3. It should be used or proposed to be used mark 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.
Why would I file a trademark in India?
Registration of trademarks is an important protection for businesses in India. Trademark applications have led to successful registrations for many foreign and domestic applicants and Indian courts have upheld the validity of many registrations, granting favorable decisions to trade mark registration holders.
Who can file a trademark application in India?
A person claiming to be the proprietor of a trademark can apply for its registration through the Controller General of Patents Designs and Trademarks, Office of the Registrar of Trade Marks (Trademark Office). The proprietor of a trademark must file the trademark application in a regional Trademark Office in the jurisdiction where their principal place of the business in India falls. In the case where the principal place of business is outside India, the application can be filed in the Trademark office under whose jurisdiction the office of the lawyer appointed by you is located.
How do I file a trademark application in India?
· Choose your trademark. A trademark should distinguish goods and services from others to identify its origin and guarantee its unchanged quality. Avoid choosing a geographical name or laudatory words that describe the quality of the goods (ex., best, perfect, etc.). Trade marks should comport with the requirements of the Trade Mark Act of 1999.
· Trademark search. It is recommended to conduct trademark searches in the Indian Trade Marks Registry in the classes that are relevant to your trademark. Searches should also include common law searches on the internet, market surveys, yellow pages and directories to determine third party use of your trademarks. Based on this information and after seeking the local counsel’s opinion decide whether the trademark is available for use.
· File the trademark application with the Trademark Office. The application should contain the trade mark, the description of the goods or services, the name and address of applicant and/or the agent with power of attorney, period of use of the mark, and signature. The application should be in English or Hindi. It should be filed at the appropriate local office according to jurisdiction.
· India follows the Paris Convention Treaty allowing a proprietor from a convention country to apply for a trademark in India within 6 months of applying for a trademark in another convention country. If the trademark application is accepted for registration, the trademark will be deemed to have been filed in India on the date the trademark application was filed in the foreign convention country.
· Examination. Applications are examined for distinctiveness, deceptiveness, and conflicting trade marks. If the application is accepted for registration, it is published in the Trade Marks Journal. An interested third party then has time to file an opposition proceeding.
What rights does a trademark in India confer?
The registration of a trademark gives the registered proprietor or registered user (ie., a licensee of the trademark that is registered to use the trademark with the Trademark Office) an exclusive right to its use, which should be indicated by use of the ® registration bug. Only the proprietor of a trademark registered in India may use the ® registration bug. The exclusive right to use the trademark is limited to the good or services listed in the application and any limitations imposed during examination. Term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of the required renewal fees. Non-use of the registered trademark for a consecutive five year period is grounds for cancellation by a third party.
If the proprietor of a registered trademark finds it to be infringed, the proprietor has the right to file an opposition or cancellation in the Trademark Office for infringing trademark applications or registrations, respectfully. Further, the proprietor should send cease and desist notices to the alleged infringer and/or initiate civil or criminal actions to enforce their trademark rights.
Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are:
· an action for infringement’ in case of a registered trademark; and
· an action for passing off’ in the case of an unregistered trademark
While former is a statutory remedy, the latter is a common law remedy. In an action involving infringement or passing off, a court may grant relief of injunction and/or monetary compensation for damages for loss of business and/or confiscation/destruction of infringing labels and tags etc. Recovery of damages is only possible for infringement occurring after the filing date of the application, which is one reason it is important to claim priority to any prior applications in another convention country (ie., this effectively makes your filing date in India earlier). A trademark registration is evidence of the validity of the trademark, but trademark rights in India nevertheless are granted to the party who began using the trademark consistently first, whether or not it was registered.
How do I protect my trademark rights in India?
As an initial matter, Indian trademark law allows invalidation proceedings in the form of opposition and cancellation proceedings if a competitor registers your trademark in India. You also have the right to initiate either a civil or a criminal action against any party that is infringing your mark in India.
A proprietor of a registered trademark may also consider using a trademark watch service to monitor the trademark journals for the publication of possibly infringing trademarks. Should the rights holder own a trademark that has been used and has acquired goodwill and reputation, it is advisable that along with filing of the trademark application in India, they should also make press releases, publish cautionary notices and advertise the mark to ensure that the relevant section of the public is aware that they are entering the Indian market and are protecting their trademark from any kind of third party violation.
A proprietor may also register their domain names including country coded top level domain names in India. There have been many instances of third parties registering domains for certain well known marks with the intention of extracting money by selling these domain names to the rights holders.
3.2 Distinct Information
A trademark does not have to be in use at the time of application. India allows trademark applications to be filed on an “intent-to-use” basis. Upon registration, the proprietor of the trademark must begin to use the mark within 5 years and 3 months of the date of registration. If it is not used within this time, the trademark may be invalidated when another person institutes invalidation proceedings.
3.3 Licensing restrictions
Under the Trademarks Act of 1999, a licensee is a permitted user of a registered trademark when the licensee has the consent of the registered proprietor to use the mark, pursuant to a written agreement. The Act does not address licensing of an unregistered trademark, but the Indian courts have upheld these agreements as common law licensing. There is no fixed term for the grant of license required under the Act. The term of the license is thus dictated by the license contract between the licensor and licensee.
This latest Act brought India in line with the modern trend of business. Any registered Trademark owner or his or her licensee have the right to use a trademark in India. Whereas the Act is mute on the question of licensing of an unregistered trademark, the courts have endorsed the same as common law licensing.
Traditionally, India - with a high proportion of small farmers - has been cautious in granting IP rights in food and living matter. As India is one of the fastest developing countries, both in terms of industry and in its population, the plant breeding and farming industry in India may be expected to play an important role in coping with these problems, as the government has realized. For this reason and in order to comply with its obligations under Article 27 of the TRIPs Agreement, in 2001 India passed the Plant Varieties Protection and Farmers’ Rights Act (PVP Act).
In section 39 (iv) of the chapter on Farmers’ Rights, the right to sell seed - even protected seed - has finally been provided. The farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell his farm produce including seed of a variety protected under this Act in the same manner as he was entitled before the coming into force of this Act. However, the farmer is not entitled to sell ‘branded seed of a variety protected under this Act’. Also, the Act acknowledges the role of rural communities as contributors of landraces and farmer varieties in the breeding of new plant varieties. Breeders wanting to use farmers’ varieties for creating Essentially Derived Varieties ( EDVs) can not do so without the express permission of the farmers. Anyone can register a community’s claim and have it duly recorded at a notified center. If the claim is found to be genuine, a share of profits made from the new variety has to go into a National Gene Fund. Breeders’ Rights are also fully protected by the legislation. On registration, the breeder has complete rights of commercialization for the registered variety. These include the right to produce, sell, market, distribute, import or export the registered variety.
Now after the enactment of a Plant Variety Protection and Farmers’ Rights law, the next step will be to decide through which international platform India will interact with other nations. At present the only international platform is the UPOV, a Western platform regulating Plant Breeders’ Rights for the industrial nations, and controlled by the life science corporations. Some action groups oppose the idea of joining UPOV, whereas certain others are in favour of it. It will be the next step for India to decide whether it intends to protect its plant species and interact on a global level.
Generally, a trade secret is any confidential information with commercial value that is protected from disclosure by its rightful owner using reasonable methods. Trade secrets are also referred to as confidential information or know-how. Trade secrets can encompass a wide variety of technology including a formula, process, device or compilation of information used in a business application which gives the owner of the trade secret some competitive advantage. The hallmark of trade secret law is that once the secret is disclosed, it is not protectable by law anymore.
The Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), to which India is a member, considered a trade secret to be information with the following three criteria:
· It must not be generally known or readily accessible by people who normally deal with such type of information.
· It must have commercial value as a secret.
· The lawful owner must take reasonable steps to keep it secret.
Do I have to register a trade secret in India?
No. There is no registration process for trade secrets in India.
How are trade secrets protected in India?
There is no specific law in India that protects trade secrets and their protection is based on India common law and contract law. Indian courts have upheld the protection of a trade secret under the principles of equity and the equivalent of a breach of contract claim. In India, a person can be contractually bound not to disclose any information that given to that person in confidence (the action would be a breach of confidence).
The remedies available to the owner of a trade secret include an injunction to stop a third party from disclosing the trade secret, return of all confidential and proprietary information, and compensation for any losses suffered due to disclosure of trade secrets.
Since there is no specific legislation to protect trade secrets in India, the protection of trade secrets is largely an act of self-administration by the owner of the trade secret. For suggestions on maintaining the confidentiality of trade secrets, click here.
Can trade secrets be licensed in India?
It seems that trade secrets agreements can be handled by contract at the will of the parties to the contract. If you have additional details regarding any restrictions on licensing trade secrets in India including term and royalties, please email us at editors@ipHandbook.org.
Watch out for…
India’s Legislature is contemplating the India Innovation Bill of 2008 which, if passed, will address trade secrets. Specifically, Chapter VI of the Bill, titled “Confidentiality and Confidential Information and Remedies and Offences” may modify certain rights regarding trade secrets, including an exception for the public interest.
6.1 General Information
In accordance with the requirements of the Convention on Biological Diversity (CBD), national governments are framing policies that regulate access to biodiversity resources and related knowledge within their territorial jurisdiction through appropriate legislation. India has enacted its National Biodiversity Act (2002) with clear specifications for access regulations for domestic and foreign researchers and for those accessing biological resources for research or commercial purposes. The Act implements a number of CBD provisions such as taking up conservation and sustainable use of biodiversity. The Act aims at regulating access to plant and animal genetic resources and fair sharing of benefits, curbing biopiracy, and protecting biodiversity and the interests of local growers by setting up a three-tier structure of national and state boards and local committees.
6.2 Distinct Information
However, there are certain obstacles in regulating access to biodiversity. The complexity of the issue which involves different types of genetic resources (plant, animal, micro-organisms) used by different actors (scientists, private companies) for different purposes (research, commercialization) in different sectors (e.g. agriculture, pharmaceutical, cosmetics, horticulture), Lack of awareness at the national level, Lack of human and institutional capacity and absence of adequate infrastructure are a few of them. Policy makers and legislators must exercise caution that ABS legislation does not become so stringent and narrow as to hinder domestic research and partnerships with foreign organizations, thus blocking the very capacity building that such laws seek to promote.
Traditional knowledge (TK) associated with biological resources is an intangible component of the resource itself. TK has the potential of being translated into commercial benefits by providing leads for development of useful products and processes. A few examples of indigenous knowledge in India are Ayurveda, Siddha, Yoga, Unani, Naturopathy, Homoeopathy, Folk-remedies, etc. The valuable leads provided by TK save time, money and investment of modern biotech industry into any research and product development. Hence, a share of benefits must accrue to creators and holders of TK. India is a party to the Convention on Biological Diversity (CBD). The CBD offers opportunities to India to realize benefits from these resources. India has therefore enacted the National Biodiversity Act, 2002 for protection of TK.
Section 36(iv) provides for protection of knowledge of local people relating to biodiversity through measures such as registration of such knowledge, and development of a sui generis system. For ensuring equitable sharing of benefits arising from the use of biological resources and associated knowledge, Sections 19 and 21 stipulate prior approval of the National Biodiversity Authority (NBA) before their access. While granting approval, NBA will impose terms and conditions, which secure equitable sharing of benefits. Section 6 provides that anybody seeking any kind of intellectual property rights on a research based upon biological resource or knowledge obtained from India, need to obtain prior approval of the NBA. The NBA will impose benefit-sharing conditions. Section 18(iv) stipulates that one of the functions of NBA is to take measures to oppose the grant of IPRs in any country outside India on any biological resource obtained from India or knowledge associated with such biological resource.
Issues relating to protecting, recognizing and rewarding of TK associated with biological resources are very complex. The modalities for protecting TK are still emerging and evolving. The nature of entitlements and share in benefits is also a grey area. Even at the international level, clarity has as yet not emerged and countries are grappling to understand the issue. As regards protection of knowledge, innovations and practices associated with biological resources, these do not seem to fall in the conventional legal systems of IPR protection (e.g., patents, copyrights, trademark, etc.). These conventional forms of IPRs are inadequate to protect indigenous knowledge essentially because they are based on protection of individual property rights, whereas TK is, by and large, collective. Further, the informal knowledge presents other difficulties in being recognized for the purpose of IP protection, such as: Knowledge is developed over a period of time and may either be codified in texts or retained in oral traditions over generations. The conditions of novelty and innovativeness that are necessary for grant of patent are therefore not satisfied. Nevertheless, the development of an appropriate form of protection for the knowledge of local communities is of great interest to countries which are rich in biodiversity, and also rich in TK, such as India.
Geographical Indications of goods are defined as that aspect of industrial property which refer to the geographical indication referring to a country or to a place situated therein as being the country or place of origin of that product. Typically, such a name conveys an assurance of quality and distinctiveness which is essentially attributable to the fact of its origin in that defined geographical locality, region or country. For instance, Feni (liquor) from Goa, Paithani and Banaras sarees, Kanchipuram silk saree, Nagpur oranges, Alphonso Mangoes, to name a few. Under Articles 1 (2) and 10 of the Paris Convention for the Protection of Industrial Property, geographical indications are covered as an element of IPRs. They are also covered under Articles 22 to 24 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.
India, as a member of the WTO, enacted the Geographical Indications of Goods (Registration & Protection) Act, 1999 which has come into force with effect from 15th September 2003. The salient features of the Act are that it defines Geographical Indication, provides a mechanism for registration of GIs, establishes a GI Registry, elaborates the concept of authorized user and registered proprietor, higher level of protection for notified goods and remedies for infringements.
Under the Act, in order to qualify for protection an indication must:
Lastly, the Act provides that once the GI is registered, an infringement action can be initiated both by the registered proprietor and by authorized users whose names have been entered on the Register.
The information contained on this page is for reference purposes only and does not constitute legal advice. Contact local legal counsel for a determination of the best course of action for your case.