IPR MCQ 2 Flashcards
which act covers ID
ID is governed by the Designs Act, 2000
first law covering ID
First law- Patents and Designs Protection Act, 1872
Black Law’s Dictionary def of infringement
“act that interferes with one of
the exclusive eights of a patent, copyright and TM owner”
when is TM infringed?
if he uses such
registered TM as his trade name
industrial design
aesthetic value/appeal to the eye
black laws dictionary def
“act that interferes with one of the exclusive eights of a patent, copyright and TM owner”
when is TM infringed
- whole copy with few alterations
- used in the course of trade
- oral use is ok
- TM is printed
- resembles so is likely to decieve
section 29(1)
Not proprietor
Using the course of trade
Similar or identical goods
Likely to be seen as ™
section 29(2)
Identical mark + similar goods
Similar mark + identical/similar goods
Identical mark + identical goods
section 29(3)
identical goods + identical TM - presumption of decieving the public
section 29(4)
well known trademark
identical TM in dissimilar goods will also infringe
section 29(5)
cant use same TM as business name for the same service or goods
section 29(6)
acts that constitute as infringement
1. selling, stockpiling etc.
2. use on packaging
3. advertiesment or paper
4. importing or exporting
section 29(7)
If the packaging work or labelling was outsourced by X (owner of good) to Y (packager etc.), then Y is liable. X can also be liable if he could have found out about the infringement by some basic due diligence. For example, if the mark is well-known in the market of those goods, then X would be expected to know. All depends on factual matrix.
section 29(8)
infringement thru advertiesment
1. misleads customers
2. detrimental to the distinctive character
3. against the reputation of the brand
Who can sue for infringement?
proprieter user, heirs, foreign owners.
Who can be sued?
Infringer
Agents of infringer
Directors and promoters of limited company cannot be joined unless personally liable
the doctrine of dilution is found in S.
29(4) of the 1999 Act.
defenses
Defenses
Plaintiff has no title to sue
Use falls under Exceptions under Section 30- lists out acts which do not constitute infringement
Concurrent registration
Honest concurrent user
Attack validity of registration of plaintiff. Commonly used for or industrial design
Plaintiff debarred from suing- delay. Latches
Relaxo Rubber Ltd. v. Aman Cable Industries
M/S Castrol Limited and Anr v. Iqbal Singh Chawla and anr. (Castrol case)
orgin of dilution law
The doctrine dates back to an article written by Frank I. Schechter which was published in Harvard Law Review.
before the 1999 act Before this, the well-known trademarks were protected by _________
by bringing an action of passing off.
it is the first decision where the Court used the words “to dilute” in the absence of S. 29 (4).
Daimler Benz Aktiegesellschaft v. Hybo Hindustan
what is Id
shape, configuration, pattern, or ornament
Section 2(a)
“article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately;
2 tests to determine novelty in ID
- Test of influencing customer preference- Benchairs Ltd. v. Chair Centre Ld (1974) (RPC)(UK)
- Test of noticeability- Ferrero and Caps A Application (1978) (UK)
The feature of design to be protected must be noticeable in appearance, not upon using it. For instance, the Ferrero Rocher chocolate has layers but it’s not noticeable upon seeing it, only when eaten. So this wouldn’t qualify
case for the Test of influencing customer preference-
Benchairs Ltd. v. Chair Centre Ld (1974) (RPC)(UK)
case for the test of
case for the Test of noticeability
Ferrero and Caps A Application (1978) (UK)
prohibition of protection of certain designs
Not new or original or
Disclosed to public in India or in any other country by publication in tangible form or by use in any other way prior to filing date or
Is not significantly distinguishable from known designs or combination of known designs or
Comprises/contains scandalous/obscene matters
Cancellation of registration
that the design has been previously registered in India; or
that it has been published in India or in any other country prior to the date of registration; or
that the design is not a new or original design; or
that the design is not registrable under this Act; or
it is not a design as defined under clause (d) of section 2.
ESSENTIALS FOR AN ACTION FOR INFRINGEMENT OF TRADEMARK:
● The plaintiff must be the registered owner of a trademark.
● The defendant must be using a mark deceptively similar to the plaintiff’s mark.
● The use must be in relation to the goods in respect of which the plaintiff’s mark is registered.
● The use by the defendant must not be accidental but in the course of trade
Where can the suit be filed?
[Section 134 of the TM Act]
* Not lower than District Court.
* Delhi and Bombay High Court has original jurisdiction to take up cases under the TM Act.
Original
[Section 2(g)]
Originates from the author + old in design but new is also ok
design time
Maximum 15 years
cancellation of registration of TM
section 19
piracy of regis design
section 22
- Piracy of registered design.—
- sale
- import export
- publish
Piracy of registered design. remedy
sec 22(2) - payment
* Fine up to ₹25,000 per act (max ₹50,000 total).
section 29(9)
Even spoken use = infringement if words are distinctive.
- Key issues
Entitlement, registration, actual deception/confusion, interim relief.
- Design def section
Exclusions from Design Protection
- Literary/artistic works, buildings, stamps, flags, common trade variations, etc.
- Anything primarily functional, mechanical, obscene, or immoral.
- Limitation for piracy sec 22
3 years
- Section 15 of Copyright Act, 1957:
o If a design is capable of registration under the Designs Act and is used >50 times, copyright ceases.
Invention & Designs Act passed year
1888
Patents and Designs Act enacted
1911
- Design def
Eye-appealing visual elements (shape, configuration, etc.) in 2D/3D, applied industrially.
- Article
Any manufactured object, artificial/partly-natural, capable of separate sale.
- Original
Originated from author; or old work applied to a new context.
- Appeals for design lie with whom
lie with High Court.
Design def
2(d)
