Dr Subodh Mahanti

In the first part of this article we had discussed briefly about he concept of intellectual property and the patent system. Though different types of intellectual property are usually discussed separately it is always useful to be conversant with all aspects of intellectual property. In this part of the article we will briefly discuss about trademarks, industrial design and copyright.

Trademarks

As stated in the first part of this article trademarks are visible signs which distinguish the goods and services of an enterprise from those of their competitors. The term "visible sign" covers a whole lot of things. It includes any of the following or combinations thereof :

• Arbitrary or fanciful designations
• Names
• Existing and invented words
• Slogans
• Devices
• Numbers and their combination
• Letters
• Pictures or Symbols
• Labels
• Combinations or arrangements of colours
• Shapes of the containers or of the goods themselves

Besides dealing with goods enterprises also render services like travel, advertising, transport, insurance, treatment of materials etc. To identify such services "service marks" are used. There is hardly any difference between a trademark and a service mark except the fact that a trademark is associated with goods and a service mark with services. Normally, the word "trademark" is used in a broad sense which includes trademarks that distinguish goods, service marks, collective marks and certification marks.

Trademarks typically identify individual enterprises as the origin of marked goods or services. In most countries the trademark laws have provision for the registration and use of collective marks, visible signs that serve to distinguish the origin or any other common characteristic of goods or services of different enterprises. Usually the owner of a collective trademark is a cooperative, an association of enterprises or an institution of public character. Collective marks are used to indicate membership and to inform public about certain features of the product for which the collective mark is used. Certification marks are used by various entities to certify the characterstics of goods or services. The main difference between collective marks and certification marks is that the former may be used by particular type of enterprises, for example members of a co-operative, the owner of the collective marks, while the latter may be used by anybody who complies with the defined standard. An entity can apply for certification mark only if it is "competent to certify" the products concerned. The definition of `certification mark' may vary from country to country.

A trademark need not be supported by high tech products. It may be applied even to the most ordinary product or service. Trademarks can also be used for agricultural products.

The practice of using trademark is not a new one. For centuries craftsmen and manufacturers in different parts of the world have marked their products with sign of one kind or another to distinguish them from those of their competitors. As long as 3,000 years ago, Indian craftsmen used to engrave their signatures on their artistic creations before sending them abroad.

A trademark has several functions. Some of the important functions are given below:

• A trademark usually represents a certain standard of quality and uniformity to consumers. Thus a trademark guides a consumer in his/her decision to buy a product among different brands available in the market.
• With the help of a mark an enterprise can draw the attention of probable consumers to the availability of the goods bearing that mark and subsequently hold their attention once they are acquainted with the goods. It may be noted that while trademark is perceived as a means to distinguish goods (or services) of one enterprise from another, a consumer may not necessarily know the name of the enterprise that manufactures or market a product with a particular trademark.
• A trademark enables the manufacturer to identify goods manufactured by him/her even when they are not in his/her possession but have gone to different selling points.
• Once a mark acquires certain reputation it enables its owner to penetrate new markets.
• It enables the authorities responsible for controlling the quality of the goods sold under a particular trademark to do their job.
• An effective trademark system helps to protect the consumers against various forms of unfair trading practices like the use of misleading marks or of confusingly similar marks.
• The national authorities entrusted with the responsibilities for verifying the quality and other characteristics of goods and services find marks very useful.
• The registration of marks constitutes a useful source of statistical and economic information for the national authorities.

Three main aspects of trademark activities are : selection of trademarks; obtaining protection and maintaining for trademarks; and monitoring the trademark activities of competitors.

Great care is required while choosing a sign for adoption as a trademark. Often a trademark conveys the first impression that of a product or service to a consumer. Moreover a trademark should be chosen in such a way that it should not cause any registration or infringement problem. To avoid these problems an enterprise come up with a short list of possible trademarks to be applied to a particular product or range of products. This process is known as 'preliminary clearance'. Any sign cannot be registered as trademark. There are certain legal requirements to be met for getting a sign registered as trademark. Any of the following criteria can disqualify a sign from becoming a valid trademark :

• A sign without any distinctive character but simply consists of shape or forms imposed by the inherent nature of the good or service or by its industrial function.
• A sign consisting exclusively of an indication which may serve to designate the kind, quality etc. of the goods or services.
• A sign which, in the course of trade, has become customary designation of the goods or services concerned.
• A sign which is likely to deceive the public as to the nature, geographical origin, characteristics or suitability of the goods.
• A sign which is in conflict with the existing trademarks. A sign should have no resemblance with an existing trademark for the same or similar goods or services.
• A sign representing immoral, deceptive or scandalous matter.
• A sign representing any national symbols.
• A sign which may tend to indicate a connection with, bring into contempt or dispute, persons (living or dead), institution or beliefs.

So after choosing a sign for adoption as trademark a search must be undertaken to find whether any similar trademark has already been registered.

For getting a trademark legally protected a trademark has to be registered in the trademark register of the industrial property office of the country in which protection is sought. International registration with the International Bureau of WIPO can also be obtained if the enterprise has its headquarters in a country which is party to the Madrid Agreement Concerning the International Registration of Marks. The application for registration must contain a replica of the trademark for which protection is sought. Once the trademark is registered its owner can prevent anyone from applying the mark or one resembling it to goods or services of the same description as that or those for which the mark is registered. The owner can prevent anyone from using it even when it is applied to goods or service of a different description if it creates confusion or amount to taking advantage of the reputation of the registered mark.

The registration of the trademark is always granted only for a limited period of time. However, unlike patent a trademark once registered can be renewed in perpetuity. So a trademark may remain protected indefinitely. The renewal of a trademark is not automatically done. The owner will require to request for the renewal and pay a renewal fee.

In some countries a trademark can be protected only if it is in use that is goods or services bearing the mark are available in the market for sale. In such countries, the time limit within which use must began after registration is laid down. If the owner of the trademark fails to use it within this timeframe without any legitimate ground for not using it the trademark is struck from the register.

The owner of a trademark must ensure that it does not become a generic or a common designation. To achieve this one may adopt the following :

• The protected trademark should be used in such a way which sets them apart from other words.
• Wherever possible the trademark must accompany the registration symbol R or the symbol TM for non-registered trademarks.
• A trademark should be made to stand out by some other means may be underlined or enclosed in quotation mark.
• A trademark should also be used as an adjective followed by the generic name of the product or service which it identifies.
• The spelling of a trademark should never be changed or a new word made from it.
• If a trademark is in the form of symbol or logo type it should be ensured that correct proportions are maintained in the trademark's shape. Where colours are specified in trademark's registration some colours should always be used .

It should be noted that a trademark need not be registered before they are used. The registration of a trademark ensures its legal protection. In fact some borderline trademarks can become registrable only after many years of their use when it can be proved that they have become distinctive in the trade.

To ensure that trademarks are not being infringed an enterprise should constantly monitor the trademark activities of their competitors. The monitoring activity may be done inhouse or by a professional watching service. The monitoring activity may be quite cost intensive if a trademark is registered in several countries.

The International Classification of Goods and Services for the Purposes of the Registration of Marks established under the Nice Agreement is used by more than 110 countries.

Industrial Designs

Industrial design refers to the creative activity of achieving a formal or ornamental appearance for items produced industrially. The conception or idea that constitutes the design may be something which can be expressed either two-dimensionally or three- dimensionally. The term industrial design also refers to the fact that the items must be reproducible by industrial means or the design is capable of being used in industry to produce the articles embodying the design on a large-scale. In case it is not industrially reproducible - then the creation is in the category of a work of art that is protected by copyright law and not by industrial property law. The design should be such that it satisfies both the need for the item to appeal visually to potential consumers and the need for the item to perform efficiently its intended function.

For protecting an industrial design it must be new and/or original. Industrial designs are usually protected against unauthorised copying or imitation. A design that is applied to or embodied in an article must have an appearance which is capable of visual judgement. An industrial design protection is concerned solely with appearance aspect of articles and not with their function. The usual criteria that are considered in deciding whether a design is registrable or not are: shape, configuration, pattern or ornament.

The meaning of the term 'shape' is obvious. The term 'configuration' refers to the arrangement of the component parts of an article. The terms "pattern" and "ornament" are not clearly distinguishable from each other. The pattern of an article may refer to its surface treatment whereas ornamentation of an article may refer to the fact that there are bits added on to its basic shape.

The usual protection period for an industrial design may last for five, ten or fifteen years. The document certifying the protection of an industrial design may be called registration certificate or a patent. When it is called patent it should always indicate that it is a patent for an industrial design so as to distinguish it from a patent for invention. Many countries grant protection under their copyright laws without registration, to an industrial design that can be considered artistic works applied to industry. Like a patent an industrial design cannot be disclosed to the general public before an application is filed for its registration.

An application for registering an industrial design usually contains the following :

1. A request for registration.
2. The name and address of the applicant.
3. A specimen or photographic or graphic representation of the article embodying the design.
4. An indication of the kind of product to which the design is to be applied.
5. The registration as laid down by the industrial property law of the country in which the application is field.

Once on being examined if it is found that the design is registrable its details are recorded in a national design register. The registration once effected stays in force for a certain period usually five years and which may be renewed. However, like a patent but unlike a trademark an industrial design cannot be renewed for indefinite period. The usual maximum period goes from 10 to 15 years.

Like a patent the owner of an industrial design can prevent anyone else from infringing the registered designs.

In case the enterprise is in a country party to the Hague Agreement Concerning the International Deposit of Industrial Design it can deposit its industrial designs internationally that is, with the International Bureau of WIPO.

The different betweeces protection by the copyright law and protection by the industrial design law are as follows.

Copyright

Copyright protection is concerned with particular forms of creativity related to mass communication. It deals with virtually all forms and methods of public communication _ printed publication, sound and television broadcasting, films for public exhibition in cinemas etc. The objective of copyright law is to stimulate and foster the individual creativity and to makes the products of that creativity available by disseminating it on the widest extent possible. The prerogatives that constitute copyright are not only enjoyed by the author throughout his/her life but also remain protected for a certain period even after the death of the author. The period of protection that is given after the death of the author is generally fifty years. In India this has been made 60 years. Copyright law has specified sanctions to deal with unauthorised use (infringement) of a work protected by copyright. The sanctions may be civil or criminal depending on the nature of the infringement. However, once the copyright protection expires the work falls into the public domain and then it can be used by anyone without authorisation.

Copyright law protects only the form of expression of ideas not the ideas themselves. Once an idea of an invention (for example an idea on how to make an efficient car engine) is expressed in tangible form for example in the form of written article the copyright protection exists for the article. The author can prevent a third party from reproducing the article. But then one can make use of the invention. To protect the use of the invention one must go for patent protection.

A work is entitled for copyright protection even if it is considered bad and even if it fails to save the purpose for which it was intended. The copyright protection is not concerned with the use to which a work may be put.

To be protected by copyright law the author's work must be original, it must originate from the author. However, to qualify for protection the work is not required to pass a test of imaginativeness, of inventiveness. The protection is independent of the quality or the value attaching to the work.

The practical value of copyright law depends on the extent to which they are effectively implemented. It serves as an incentive to authors and their assignees to create and disseminate knowledge.

The copyright laws of almost all countries provide for the protection of the following types of works.

1. Literary works: Novels, short stories, poems, dramatic works and any other writing irrespective of their content, length, purpose, form and whether published and not published.
2. Musical works : Whether serious or light, songs, choruses, operas, musicals and operettas.
3. Artistic works : Whether two-dimensional like drawings, paintings, etchings, lithographs etc. or three-dimensional (sculptures and architectural works).
4. Maps and technical drawings
5. Photographic works : Wherever may be the subject matter and the purpose for which made
6. Motion pictures or cinematographic works, whether silent or with a sound track and irrespective of their purpose, length, method employed or technical process used. vii. Computer programmes

In addition to above the copyright laws of many countries protect also "works of applied art" (for example artististic jewellery, lamps, wallpaper, furniture etc.), choreographic works, phonograph records, tapes, and broadcasts.

The rights conferred by copyright law on the owner of a work protected by copyright are often described as exclusive rights. The owner may use the work as he wishes (of course, he has to regard the legally recognised rights and interests of others). The owner may exclude others from using it without his/her authorisation.

The different rights conferred by copyright law are :

1. Reproduction rights : The owner of copyright may others from making copies of his/her protected work. The expression "copyright" refers to the main act, the act of making of copied or artistic work.
2. Performing rights : The act of public performance required authorization from the owner of copyright. This is important because a work protected by copyright may be communicated to a large number of people without being copies or reproduced.
3. Recording rights : One requires authorisation from the copyright owner for making sound recording of work protected by copyright. Just like by writing words can be communicated by sound recording and copies of sound recordings can be made as easily as copies of writings.
4. Motion picture rights : The act of making motion picture or visual recording presenting to viewers as continuous sequence of images is controlled by copyright law. In the technical language of copyright laws motion picture is often called "cinematographic work". In some countries instead of motion picture the world `film' is used.
5. Broadcasting rights : The acts of broadcasting works and of communicating works to the public by means of wires or cable require the authorisation of the copyright owner
6. Translation and adoption rights : The acts of translating or of adapting a work protected by copyright require the authorisation of the copyright owner. vii. Moral rights : The countries party to the Berne Convention are required to grant to authors :

• The right to claim authorship of the work
• The right to object any distortion or other modification of the work which would be prejudicial to the author's honor or reputation.

It should be emphasized that copyright comes into force without registration or other formalities. So the question of applying for protection does not always arise. However, registration may be required for other purposes like enforcing the right. It is not always easy to prove that a third part has copied a particular work. Copying is always done in private.