FAQs

TRADEMARK

Q: What is a trade mark?

A: A trade mark is any mark which can be graphically represented affixed to any goods or services for the purpose of identifying, distinguishing and indicating the source of origin of the goods/services of a trader or manufacturer as the case may be. This mark may be a name, symbol, or a combination of thereof. A trademark once applied and registered, exists in perpetuity subject to periodic renewal and use of the mark in respect of the goods or services for which it is registered and used.

Q: What is a service mark?

A: A service mark, just like a trade mark is a mark used or intended to be used to identify, distinguish or indicate the source of origin in case of services. e.g. Restaurants & hotels, real estate, building & construction, financial affairs, etc.

Q: Do I have to register my trademark?

A: No, it is not necessary that the trade mark be registered with the trade marks registry. However registration has its advantages such as: a notice to the general public of the ownership in respect of the mark, a presumption of ownership and the exclusive right to use the mark in respect of the goods and services for which it is registered across India. It is pertinent to note that for a mark registered in India, the rights so guaranteed are enforceable in India only. The applicant is required to secure a separate registration in respect of the trade mark in other countries where he uses or intends to use the mark in respect of his goods or services.

Q: When is it proper to use the letter R enclosed within a circle — ® — with the mark?

A: The above symbol can be used only once the mark is registered with the Trade Marks Registry and registration certificate is received by the applicant. Where an application is pending before the registry, it is not proper or legal to use the above mentioned mark. Pending registration, one can use the words TM within a circle indicating pending registration of a trade mark or the words SM within a circle indicating pending registration or a service mark.

Q: Who may file an application?

A: Only the proprietor of the business or the owner of the trading corporate entity may file an application for the registration of a trade mark. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

Q: Can a trademark be transferred from one person to another?

A: Yes. A registered mark, or a mark for which an application to register has been filed is assignable. This means that the mark can be sold to another person/entity. An assignment agreement executed, and notarized by both parties is required to be filed with the trade marks registry to effect such a change of ownership in respect of the mark. A trade mark similarly may also be licensed to another following the same procedure as that of assignment of a trade marks.

COPYRIGHT

Q: What are the different types of work covered under copyright?

Copyright Covers. i) Literary, dramatic and musical work. ii) Artistic work. iii) Cinematographic film includes sound track and video film. iv) Computer programmes/software.

Q: What are the rights of a copyright holder (which when violated lead to infringement?

A: (a) The rights of copyright holder are i) to reproduce the work in any material form including the storing of it in any medium by electronic means. ii) to issue copies of the work to the public not being copies already in circulation. iii) to perform the work in public, or communicate it to the public. iv) to make any cinematograph film or sound recording in respect of the work v) to make any translation of the work vi) to make any adaptation of the work b) In case of computer programme the rights also includes – i) to sell or give on hire, or offer for sale or hire any copy of the computer programme, regardless of whether such copy has been sold or given on hire on earlier occasions.

Q: What is the term of a copyright?

A: a) If published within the life time of the author of a literary work, the term is for the life time of the author plus 60 years. (b) For cinematographic films, records, photographs, posthumous publication, anonymous publication, works of government and international agencies, the term is 60 years from the beginning, of the calendar year following the year in which the work was published. (c) For broadcasting, the term is 25 years from the beginning of the calendar year following the year, in which the broadcast was made.

Q: What is the rule for the transfer of copyright?

A: The owner of the copyright in an existing work or prospective owner of the copyright in a future work may assign to any person the copyright, either wholly or partially in the following manner: i) for the entire world or for a specific country or territory; or ii) for the full term of copyright or part thereof; or iii) relating to all the rights comprising the copyright or only part of such rights.

Q: What notice needs to be put on a work to Seek copyright protection?

A: When a work is published by authority of the copyright owner, a notice of, copyright may be placed on publicly distributed copies. As per the Berne Convention for protection of literary and artistic works to which India is a signatory use of copyright notice is optional. It is however, a good idea to incorporate a copyright notice.

PATENT

Q: Why should one patent his invention?

A: To enjoy exclusive rights over the invention. If the inventor does not obtain patent rights for his invention and introduces his product/process based on his invention in the market, any body can copy his invention and exploit it commercially. To debar others from using, selling, offering for sale or manufacturing the inventor must obtain a patent. The inventor can use it himself/herself, sell or license it to profit commercially.

Q: What are the criteria adopted for grant of a patent to an invention?

A: An invention must meet the following three criteria to be eligible for grant of patent: i) Novelty ii) Inventiveness (Non-obviousness) iii) Usefulness Novelty : An invention will be considered novel, i) if it does not form the state of the art or has not been described orally, ii) if it has not been published or not used before the date of filing the patent application Inventiveness (Non-obviousness): A patent application involves an inventive step, if the proposed invention is not obvious to a person skilled in the art i.e., skilled in the subject matter of the patent application. The complexity or the simplicity of an inventive step does not have any bearing on the grant of a patent. Usefulness: An invention must possess utility for the grant of patent. No valid patent can be granted for an invention devoid of utility.

Q: What is patentable?

A: Invention means any new and useful: a) Process, method or manner of manufacture b) Machines, apparatus or a product c) Substances produced by manufacture and includes any new and useful improvements of any of them and an alleged invention. Inventions claiming substances intended for use, or capable of being used, as food or as medicine or drug or relating to substances prepared or produced by chemical processes (including alloys, optical glass, semi conductors and inter-metallic compounds) are now patentable under the patent ordinance 2004.

Q: What is not patentable?

A: i) An invention which is frivolous or which claims anything obviously contrary to well established natural laws e.g. different types of perpetual motion machines. ii) An invention, the primary or intended use of which would be contrary to law or morality or injurious to public health e.g. a process for the preparation of a beverage which involves use of a carcinogenic substance, although the beverage may have higher nourishment value. iii) The mere discovery of scientific principle or formulation of an abstract theory. e.g. Raman effect iv) The mere discovery of any new property or mere new use of known substance or the use of such known process, machine or apparatus; unless such known use results in a new product or employs at least one new reactant. v) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. vi) The mere arrangement or rearrangement or duplication of features of known devices each functioning independently of one another in a known way. vii) A method of agriculture or horticulture. viii) Any process for medical, surgical, curative, prophylactic or other treatment of human beings or any process of similar treatment of animals or plants. ix) Inventions relating to atomic energy.

Q: When should an application for a patent be filed?

A: Filing of an application for a patent should be completed at the earliest possible date and should not be delayed until the invention is fully developed for commercial working. A provisional application can be filed with a brief synopsis disclosing the essence or the nature of the invention.

Q: Can a published or disclosed invention be patented?

A: No. Publication or disclosure of the invention anywhere by the inventor before filing of a patent application would disqualify the invention to be patentable. Hence inventors should not disclose their inventions before filling of the patent application. When disclosing, the number and the date of the patent application should be given by way of information to public.

Q: What is considered as the date of patent?

A: The date of patent is the priority date, which is the date on which first application (provisional / Complete / PCT) filed disclosing the invention . However, the date of publication is also important because it is from this date that the legal protection of an invention disclosed in the patent takes effect. The term of the patent is counted from this date of application.

Q: What is the term of a patent?

A: In India, It is 20 years from date of application.

Q: How does a patent expire?

A: A patent can expire in the following ways: 1. The patent has lived its full term i.e. the term specified by the patent act of the country. 2. The patentee fails to pay the renewal fee. A patent once granted by the Government has to be maintained by paying annual renewal fee. 3. The validity of the patent has been successfully challenged by an opponent by filing an opposition. 4. The patent is revoked.

Q: Up to what extent the inventor has to disclose his/her invention to get a patent?

A: An inventor has to disclose his/her invention in such a manner that any person, other than the inventor, skilled in the art should be able to work the invention.

Q: Is there an International/Global patent?

A: No. There is no International or Global Patent. An inventor has to file an application in each country, where he/she seeks protetion for his/her invention. There are regional and/or International treaties to facilitate the procedure like Patent co-operation Treaty (PCT) or European Patent Convention (EPC).

Q: How does a patent document help in R & D?

A: Study of a Patent document may stop reinventing the wheel. A scientist, who has not consulted the patent literature, may start working on a problem for which the solution might have already been found by someone else and it is available in the patent literature.

Q: What is the nature of information needed while consulting a patent attorney?

A: 1)An explanation of the history of the invention, where you got the idea from, how you developed it, any early failures and possibly prototypes, with all your laboratory note books, etc., if possible. This will help the patent agent to explain the inventive step which is necessary for obtaining the patent. It also increases his or her understanding of the invention so as to maximize the skill with which he or she can draft claims and specifications for it.2) What you think is the most inventive element or most useful aspect, together with what other similar prior inventions you know of or have developed the idea from or improved upon. If you have developed an improved version of your competitor’s products, admit it; be totally honest. It is vital to be such so that the patent agent can describe your invention properly while drafting the application and avoid excessive claims which might be struck down.3) Drawings if any, which may illustrate the invention, should be attached.

Q: Who is responsible to ensure that the patent has not been infringed?

A: It is the sole duty/responsibility of the patentee to see that his/her patent is not being infringed upon by someone else. It is the patentee’s duty to file a suit of infringement against the infringer.

Q: Does a Patentee get money once a patent has been granted to him/her?

A: No. A patentee does not get any kind of money over the grant of the patent. However, when a patentee sells his/her patented invention to a third party, he/she gets money. The patentee has all the rights to sell his/her invention exclusively and/or non-exclusively to any person/party or he/she may choose to license his/her invention for a royalty. The granting authority will not give any money to the patentee. Rather the inventor has to spend money for annual maintenance of the patent.

Q: How can you patent a trademark?

A: You cannot get a patent for a trademark. A patent can be obtained only for a scientific invention which can be a product or a process and which is novel, is non-obvious to a person skilled in the field of scientific domain of the invention and has an industrial application.

DESIGN

Q: What is the object of registration of Designs?

A: Object of the Designs Act is to protect new or original designs so created to be applied or applicable to particular article to be manufactured by Industrial Process or means. Sometimes purchase of articles for use is influenced not only by their practical efficiency but also by their appearance. The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.

Q: Can stamp, labels, tokens, cards be considered an article for the purpose of registration of Design?

A: No. Because once the alleged design i.e. ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to an article should be integral with the article itself.

Q: When does the Applicant for Registration of Design get the registration Certificate?

A: When an application for registration of a Design is in order, it is accepted and registered and then a certificate of registration is issued to the applicant. However, a separate request should be made to the Controller for obtaining a certified copy of the certificate for legal proceeding with requisite fee.

Q: What is a Register of Designs?

A: The Register of Designs is a document maintained by The Patent Office, Kolkata, as a statutory requirement. It contains the design number, class number, date of filing (in this country) and reciprocity date (if any), name and address of Proprietor and such other matters as would affect the validity of proprietorship of the design. It is open for public inspection on payment of prescribed fee & extract from register may also be obtained on request with the prescribed fee.

Q: What is the effect of registration of design?

A: The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article belonging to the class in which it is registered.

Q: What is the date of registration?

A: The date of registration except in case of priority is the actual date of filing of the application. In case of registration of design with priority, the date of registration is the date of making an application in the reciprocal country.

Q: Is it possible to re-register a design in respect of which Copyright has expired?

A: No. A registered design, the copyright of which has expired cannot be re-registered.

Q: How can one ascertain whether registration subsists in respect of any Design?

A: For ascertaining whether registration subsists in respect of a design, a request should be made to the Patent Office, Kolkata. If the serial number of the registered design is known, the request should be made on Form 6, otherwise on Form 7, together with fee of Rs. 500/- or Rs. 1,000/- respectively. Each such request should be confined to information in respect of a single design.

Q: Is marking of an article compulsory in the cases of article to which a registered design has been applied?

A: Yes, it would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or the registered proprietor shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

Q: Is it mandatory to make the article by industrial process or means, before making an application for registration of design?

A: No, design means a conception or suggestion or idea of a shape or pattern which can be applied to an article or intended to be applied by industrial process or means. Example – a new shape which can be applied to a pen, thus capable of producing a new pen on the visual appearance. It is not mandatory to produce the pen first and then make an application.

Q: Why is it important for filing the application for registration of design at the earliest possible?

A: First-to-file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates only first application will be considered for registration of design.

Q: Can the same applicant make an application for the same design again, if the prior application has been abandoned?

A: Yes, the same applicant can apply again since no publication of the abandoned application is made by the Patent Office, provided the applicant does not publish the said design in the meanwhile.

Q: How to get information on registration of design?

A: After registration of design, the most relevant view(s) of the article along with other bibliographic data will be available in the official gazette, which is being published on every Saturday. However, such provision cannot be implemented at this stage due to insufficient infrastructure.

Q: Whether it is possible to transfer the right of ownership?

A: Yes, it is possible to transfer the right through assignment, agreement, transmission with terms and condition in writing or by operation of law. However, certain restrictive conditions not being the subject matter of protection relating to registration of design should not be included in the terms and condition of the contract/agreement etc. An application in form-l0, with a fee of Rs. 500/- in respect of one design and Rs. 200/- for each additional design, for registration of the transfer documents is required to be made by the beneficiary to the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarized copy of the instrument to be registered in the register of design is required to be enclosed with the application.

Q: What is meant by priority claiming?

A: India is one of the countries party to the Paris Convention, so, the provisions for the right of priority are applicable. On the basis of a regular first application filed in one of the contracting state, the applicant may, within six months apply for protection in other contracting states, later application will be regarded as if it had been filed on the same day as the first application.

Q: Can the name, address of proprietor or address for service be altered in the register of design?

A: Name of the registered proprietor, address or address for service can be altered in the register of designs provided this alteration is not made by way of change of ownership through conveyance i.e. deed of assignment, transmission, license agreement or by any operation of law, for which reference may be made to the answer against Q. 21. Application in form-22 with a fee of Rs. 200/- should be filed to the Controller of Designs with all necessary documents in support of the application as required.

Q: Are the registered designs open for public inspection?

A: Yes, registered designs are open for public inspection only after publication in the official gazette, on payment of prescribed fee of Rs. 500/- on a request in Form-5.

Q: How does a registration of design stop other people from exploiting?

A: Once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it may please be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000. The Patent Office does not become involved with any issue relating to enforcement of right accrued by registration. Similarly the Patent Office does not involve itself with any issue relating to exploitation or commercialization of the registered design.

Q: What is an artistic work which are not subject matter of registration?

A: An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration which reads as follows: “Artistic works” means: – (i) A painting, a sculpture, a drawing (including a diagram, map, chart or plan) or engraving or a photograph whether or not such work possesses artistic quality. (ii) A work of architecture and (iii) Any other work of artistic craftsmanship.

Q: What is meant by classification of goods mentioned in the Third Schedule?

A: In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. This classification has been made on the basis of Articles on which the design is applied. Practical Example: If the design is applied to a toothbrush it will be classified under class 04 & subclass 04-02. Similarly, if the design is applied to a calculator, it will be classified in class 18 & subclass 18-01. Subsequent application by the same proprietor for registration of same or similar design applied to any article of the same class is possible but period of registration will be valid only upto the period of previous registration of same design.

Q: What is meant by Property mark as per the Indian Penal Code (Sec. 479)?

A: A mark used for denoting that movable property belongs to a particular person is called a property mark. It means that marking any movable property or goods, or any case, package or receptacle containing goods; or using any case, package or receptacle, with any mark thereon. Practical example: The mark used by the Indian Railway on their goods may be termed as a Property Mark for the purpose of easy identification of the owner.

ISO

Q: How to verify if a company is ISO certified?

A: The first step to verify a genuine certificate is to ask the company to give you a copy of certificate. Next you can ask the company which issued the certificate. We also provide certificate verification service. This is a chargeable service. Please check here.

Q: Does ISO certifcation ensure fraud protection? Can I trust an ISO certified company?

A: No. ISO and other standards are targeted at various aspects of business, for example, ISO 9001 deals with quality management system, ISO 14001 deals with environment management system and so forth. ISO certifications do not ensure fraud protection. For fraud protection refer consumer protection act, but that can be invoked only after you have been cheated.
ISO certification [or ISO 9001 certification] is not a certificate for trustworthyness of a company.

Q: Does ISO 9000 / 9001 or any other certification ensure that a buyer will always get good quality?

A: No. ISO 9000 / 9001 or quality management system certification ensures that certified company has appropriate processes in place in ensure that only good quality products are delivered to the buyer. But this is not achieved 100%. A buyer can get a faulty product or service.

Q: Does ISO 9000 / 9001 certified company should respond to customer complaints?

A: Yes. ISO 9001 certification requires organizations to have a complaint management system. What can I do if an ISO 9000 / 9001 certified company is not responding to my complaint? You can complain to certification body or even to accreditation body giving relevant details.

Q: What is a certification body and/or accreditation body?

A: A certification body [also called a registrar] is a organization which issues certificate. An accreditation body is an organization which authorises the certifcation body to issue the certificate. Normally an accreditation body is an member of International accreditation forum [IAF] but there are many “independent” accreditation bodies also.

Q: How International organization for standardization [ISO] controls ISO certification?

A: International organization for standardization do not control ISO certification in any which way. ISO is responsible only for formulating and publishing a standard. Once standard is published, standard’s interpretation, implementation and certification depends on user / certification body. ISO issues clarifications on interpretations when asked. ISO conducts surveys of certified companies once in a year.

Q: I want to get my company certified? How I should select the certification body and accreditation body?

A: This is a big question and the answer depends upon your requirement. Many companies want certificate because certificate is mandatory requirement to participate in atender or for supply of goods and hence they try to find the cheapest available source. The correct approach is to aim for continual improvement in organization’s performance and hence ensure that the accreditation body is a member of IAF and “IAF MLA” is printed on the certificate. Also ensure that the accreditation body and certification body have good respect in the market.

Q: I want to get my company certified? What will be approximate cost of certifcation?

A: The cost manily depends upon number of employees in your organization, your products and services. The cost also depends upon accreditation body and certification body.
Depending upon number of employees, certifcation body calculates audit mandays requirement than multiplies it with audior manday rate and than adds accreditation body fees. Some certification bodies also charge “file maintenance” charges, administrative charges etc. In addition to certification you will have to bear auditors travel and living expenses. You should ensure that arrangements for travel and living are done as per your company standards and not as demanded by auditor or certification body.

ISO CERTIFICATE

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