Sound Board

Our thoughts and views on the practice of Intellectual Property in India and around the world.

Section 8 of the Patents Act, 1970 casts an obligation upon the applicant of a patent under this Act who is also prosecuting the same or substantially the same invention outside India, to disclose details regarding corresponding foreign applications from time to time. It was based on the suggestions of Ayyangar Committee Report that Section 8 was incorporated into the Patents Act. It was with a view to ensure that the Indian Examiners are in the know of the status of corresponding foreign…

The law of intellectual property rights is all pervasive – regardless of the industry, product, service or line of work, there is always something in a business that can be protected under some stream of intellectual property. While protection under IP comes when the person with the knowledge discloses it to the government, through patents, copyright and designs, what happens if you don’t want to let other people know? What happens if the knowledge that you hold is something that can be…

Yes you can unless there is proper policing done, you are highly likely to lose your trademark rights. In my previous article I had mentioned how getting your mark registered is just the first step to the long battle ahead because even if your trademark is approved, people can challenge and steal your trademark and can do so by legal means. It sure does sound oxymoronic; how can one “legally” steal something, but if you read on you’ll know exactly what I mean. So to put this in perspective,…

In my previous article on character merchandising, I mentioned that all of us have at some point been guilty of buying merchandise of our favorite characters but how many times do we stop to think if it’s actually being licensed from the creators of the work or whether they are just rip offs? Not very often. The point here is that we love the character and are so thankful that the creators came up with it, but when it comes to their revenue, we don’t really give it too much thought because it…

Filing an application or obtaining a registration is only the first step to the long battle ahead; because once the mark has been registered, the owner has to be more vigilant in protecting it in this era of "passing off". Here’s the thing, if you come across your mark which someone else is using, then don’t let it go by because if you don’t take an action soon you will not be able to act on it ever unless you are lucky enough to prove fraudulent usage on part of the other person. This post…

Recently, I came across an exclusive store for Chota Bheem merchandise in Chennai that had every product (towels, bags, footwear and more) one could possibly imagine and I’m sure every child who walked into that store hasn’t left without throwing a tantrum to own one of those products! That really got me thinking of how character merchandising has been a fast growing market in India in the last few years. We’ve all been fans of cartoons and fictional characters at some point in our life and…

At some point in a guy’s life, he just has to buy jewellery! Whether it’s for a girlfriend or partner, going through row after row of earrings, necklaces, rings and other adornments for someone else is one of the inescapable truths of life. Shopping for jewellery has changed a great deal as well - from discretely picking up something on a holiday (but having to sheepishly empty your baggage at airport security amid grins from your folks) to browsing through and buying the latest visually…

Trademarks like any asset can be transferred from one owner to another. The transfers could be temporary through licensing or permanent through an assignment. Assignment of a trademarks is a process in which the owner of the trademark transfers the ownership of the mark either with or without the goodwill of the business. In other words, it is transferring of proprietary rights in the property of the proprietor. The manner in which an assignment can be made are as follows:

The Bombay High Court in the case of Dalmia Cement Bharat Limited v. Ultratech Cement Limited recently ruled on the issue of cause of action and jurisdiction of Courts in cases of trademark infringement and passing off. The Court discussed various aspects of Section 134 of the Trademarks Act in a very well-reasoned manner.

When it comes to international treaties and agreements, India generally signs first and thinks later. We sign on fast and then push the limits of implementing and amending our national laws until the last possible day. India’s accession to the Madrid Protocol was done in a rather similar manner. Either way India is a part of protocol which is touted as the international registration of trademarks. A little over a year down the line and the scenario is rather interesting: the Trademark Office in…