LEGAL ARTICLE – BY AMRITYA SEN Patentability and Trademark Protection In India: A Legal Insight Criteria for Patentability in India

Before understanding the Criteria for the Patentability in India, firstly we have to understand that what is Patent. The scope of intellectual property expands with time and technology, encompassing patents, copyrights, trademarks, and industrial designs. When someone creates a new idea, invention, or technology, they seek protection under intellectual property laws. In India, the Patents Act, 1970, amended by the Patents (Amendment) Act, 2002, and the Patents (Amendment) Act, 2005, governs patent concepts of novelty, uniqueness, and usefulness.

To secure a patent in India, an invention must meet the following criteria:

1. Novelty:The invention must be new and not part of the prior art. It should not have been published, disclosed, or used anywhere in the world before the date of filing.
2. Inventive Step (Non-Obviousness):The invention must involve a technical advance or economic significance that is not obvious to a person skilled in the relevant field.
3. Industrial Applicability:The invention must be capable of being manufactured or used in an industry.
4. Patentable Subject Matter:The invention must fall within the scope of patentable inventions as defined under the Indian Patents Act, 1970.

But there are Certain Exceptions as well where the Patent Cannot be Granted To you. Under Section 3 and Section 4, specifies categories of inventions that are not patentable: –

1. Non-Inventions:Discoveries, scientific theories, and mathematical methods.
2. Abstract Ideas:Literary, dramatic, musical, or artistic works.
3. Contrary to Public Order or Morality:Inventions that can harm public order, health, or the environment.
4. Biological Processes:Plants, animals, and biological processes for their production, excluding microorganisms.
5. Medical Methods:Methods of treatment for humans or animals, including surgical, therapeutic, or diagnostic techniques.
6. Natural Substances:Naturally occurring substances that are not modified.
7. Atomic Energy:Inventions related to atomic energy as per Section 4.
8. Traditional Knowledge:Inventions that are an aggregation or duplication of known properties of traditionally known component

The Role of the Patent Cooperation Treaty (PCT) in facilitating international patent protection.

The Patent Cooperation Treaty (PCT) significantly facilitates and simplifies the process of obtaining patent protection in multiple countries. Administered by the World Intellectual Property Organization (WIPO), the PCT is an international treaty that provides a standardized procedure for filing patent applications across its member states.

Main Features OF PCT

1. The PCT allows inventors to file a single “international” patent application, which is valid across all 157+ member countries. This eliminates the need to file separate applications in each jurisdiction, saving time and resources.
2. After filing a PCT application, applicants can delay the decision to enter national or regional patent phases by up to 30 or 31 months from the priority date. This provides additional time to assess the invention’s commercial potential and target markets.
3. During the international phase, a competent International Searching Authority (ISA) conducts a search to identify prior art and provide a written opinion on the invention’s patentability. This gives applicants an early indication of their application’s prospects.
4. Applicants can request an International Preliminary Examination, which offers further evaluation of the invention’s patentability, helping refine the application before entering the national phase.
5. By consolidating initial filings and delays in national phase entry, the PCT reduces upfront costs compared to filing directly in multiple jurisdictions.

This timeline provides a comprehensive overview of the Patent Cooperation Treaty (PCT) procedure from the applicant’s perspective. It elucidates the evolution of the PCT process, from the conception of an invention to the grant of patents, highlighting the pivotal role played by the PCT (patent corporation treaty)

Key features of the Trademarks Act, 1999, focusing on the registration process and grounds for refusal.

The Trademarks Act of 1940 was India’s inaugural trademark legislation. Prior to this, trademark protection was governed by common law. The Trademarks Act of 1999, as amended, currently serves as the governing legislation for trademarks in India. The 1999 Act was enacted to align with the TRIPS rules. The salient features introduced into Indian trademark law by the Trademarks Act of 1999 are as follows:

1. Include a service mark in the definition of a trademark.
2. Allow filing a single registration application for multiple classes of products and/or services.
3. Increase the term of registration from 7 to 10 years, including a six-month grace period for payment of renewal costs.

Registration Process Under Trademarks Act, 1940

Section 5 and 6 of the provided text pertains to the Trademarks Registry. Established in India in 1940, the Registry currently administers the Trademarks Act, 1999, and the regulations governing it. It serves as a resource and information center, facilitating matters related to trademarks within the country.

• The primary objective of the Trademarks Act, 1999, is to register trademarks applied for within India and to enhance trademark protection for goods and services. Additionally, it aims to prevent fraudulent use of trademarks.
• The Registry’s primary functions include registering trademarks that meet the requirements outlined in the Trademarks Act and Rules. It also maintains the Register of trademarks.
• The Head Office of the Trademarks Registry is located in Mumbai, with branch offices in Ahmedabad, Chennai, Delhi, and Kolkata. For international applications and registrations under the Madrid Protocol, an International Registration Wing is established at the Mumbai Head Office.
• The Registry is empowered with significant authority regarding trademark applications, including the ability to review applications, allow applications to be reviewed under the CPC 1908, review its own decisions, adjourn proceedings, and make other necessary decisions. The Registrar plays a crucial role in ensuring the smooth functioning of the Registry.

Grounds of Refusal Under Trademarks Act, 1940

The grounds for the refusal of a trademark are generally categorized into absolute grounds (issues with the nature of the mark itself) and relative grounds (conflicts with pre-existing rights). These grounds prevent the registration of trademarks that fail to meet the necessary legal requirements or infringe upon the rights of others.

1. Absolute Grounds for Refusal

These relate to the intrinsic characteristics of the trademark:

(a) Lack of Distinctiveness – Generic terms like “Shoe” are not distinctive marks.

(b) Descriptive Marks – Descriptive marks identify goods or services by quality, quantity, purpose, value, or characteristics.

(c) Generic Terms – Trademarks can become generic, like “Escalator.”

(d) Deceptive Marks – Misleading marks on goods or services. For eg. Italian lather for item that is not leather

2. Relative Grounds for Refusal

These relate to conflicts with pre-existing trademarks or rights:

(a) Likelihood of Confusion – If a trademark is similar to an earlier mark and is likely to cause confusion among consumers regarding the source of the goods or services. For e.g. “PepsiCo” for beverages.

(b) Existing Reputation of a Trademark – Marks that take unfair advantage of, or are detrimental to, the distinctive character or repute of an earlier well-known trademark. For e.g. Using “Apple” for non-tech-related products may be refused due to Apple Inc.’s reputation.

(c) Rights of Third Parties – If the proposed mark infringes on the rights of another party, such as a copyright, design, or personal name.

Recent Indian Case Laws on trademark infringement or patent dispute. Provide a summary, highlighting the main issue, court decision, and its impact on IPR law in India.

Case Study:

Burger King Corporation v. Anahita Irani & Shapoor Irani, Pune District Court, 2024

Summary:

The case centers around a 13-year-long trademark dispute between the global fast-food chain Burger King Corporation (BKC) and a local restaurant in Pune, India, operated by Anahita and Shapoor Irani under the same name, “Burger King.”

Main Issue:

The core contention was whether Burger King Corporation, as a globally recognized brand, could enforce its trademark rights in India against a local entity that had previously registered and utilized the name “Burger King” within its jurisdiction. This raised pertinent questions regarding the interplay of trademark territoriality, prior use, and the rights of international brands in contrast to local businesses.

Court Decision:

The Pune District Court ruled in favor of the local restaurant, emphasizing the following key points:

1. Principle of Territoriality: Trademark rights are territorial, and the local entity’s prior use and registration within the jurisdiction take precedence.
2. Established Prior Use: The defendants had been using the “Burger King” name since 1992, significantly predating Burger King Corporation’s entry into India.
3. No Dilution or Confusion: The court noted no evidence of confusion or dilution of the global brand’s reputation in the specific context of the Pune restaurant.

As a result, the court dismissed Burger King Corporation’s claims, allowing the local restaurant to continue using the name within its established jurisdiction.

This case is a landmark in the Indian legal landscape, showcasing the judiciary’s adherence to the principles of territoriality and the protection of prior rights in trademark disputes.