IPR & RTI

As an IP lawyer, I am thinking up to what extend information related to intellectual property rights(IPR) becomes 'information' to be provided under the provisions of Right to Information Act,2005( herein after referred as RTI Act).

IPR is a right acquired by a person by proprietor ship or by the way of assignment of  particular IP/s. Meaning thereby IP is private right of a person. As per Patent Act, patentee has such right up to 20 years, in Design Act this limitation is given up to fifteen years including renewal period of five years. In Copyright Act such IP right is up to entire life of author and 60 years after the death of author. In Trademarks Act, there is no such time limit for IPR.

It means that such IPR becomes a part of public and nobody can claim ownership after the completion of the above mentioned period for respective IPR  and as such IPR becomes a part of public domain, anybody can use it as a public property.

I am writing herein below certain provisions from RTI Act,2005 for justifying the present article.

The purpose of RTI Act is  to provide for setting out the practical regime of right to information for citizens to secure access to information under the control of public authorities, in order to promote transparency and accountability in the working of every public authority, the constitution of a Central Information Commission and State Information Commissions and for matters connected therewith or incidental thereto

What is right to information ?

 The anecdote about what right to information is depicted in Section 2(j) of RTI Act 

"right to information" means the right to information accessible under this Act which is held by or under the control of any public authority and includes the right to

I) inspection of work, documents, records;

II)taking notes, extracts or certified copies of documents or records;

III)taking certified samples of material;

IV)obtaining information in the form of diskettes, floppies, tapes, video cassettes or in any other electronic mode or through printouts where such information is stored in a computer or in any other device;

 'Information' means  any material in any form, including records, documents, memos, e-mails, opinions, advice, press releases, circulars, orders, logbooks, contracts, reports, papers, samples, models, data material held in any electronic form and information relating to any private body which can be accessed by a public authority under any other law for the time being in force which is provided in definition clause of section 2 (f) of RTI Act,2005.

Section 9 of RTI Act says that without prejudice to the provisions of section 8, a Central Public Information Officer or a State Public Information Officer, as the case may be, may reject a request for information where such a request for providing access would involve an infringement of copyright subsisting in a person other than the State.

and therefore for better enlightenment of the provision of section 9,  the provision of section 8 is as under.

Section 8 of RTI Act is this : 

(1)		Notwithstanding anything contained in this Act, there shall be no obligation to give any citizen,—
		(a)	information, disclosure of which would prejudicial affect the sovereignty and integrity of India, the security, strategic, scientific or economic interests of the State, relation with foreign State or lead to incitement of an offence;
		(b)	information which has been expressly forbidden to be published by any court of law or tribunal or the disclosure of which may constitute contempt of court;
		(c)	information, the disclosure of which would cause a breach of privilege of Parliament or the State Legislature;
		(d)	information including commercial confidence, trade secrets or intellectual property, the disclosure of which would harm the competitive position of a third party, unless the competent authority is satisfied that larger public interest warrants the disclosure of such information;
			(e) information available to a person in his fiduciary relationship, unless the competent authority is satisfied that the larger public interest warrants the disclosure of such information;
		(f)	information received in confidence from foreign Government;
		(g)	information, the disclosure of which would endanger the life or physical safety of any person or identify the source of information or assistance given in confidence for law enforcement or security purposes;
		(h)	information which would impede the process of investigation or apprehension or prosecution of offenders;
		(i)	cabinet papers including records of deliberations of the Council of Ministers, Secretaries and other officers:
			Provided that the decisions of Council of Ministers, the reasons thereof, and the material on the basis of which the decisions were taken shall be made public after the decision has been taken, and the matter is complete, or over: Provided further that those matters which come under the exemptions specified in this section shall not be disclosed;
		(j)	information which relates to personal information the disclosure of which has no relationship to any public activity or interest, or which would cause unwarranted invasion of the privacy of the individual unless the Central Public Information Officer or the State Public Information Officer or the appellate authority, as the case may be, is satisfied that the larger public interest justifies the disclosure of such information:
			Provided that the information which cannot be denied to the Parliament or a State Legislature shall not be denied to any person.
	(2)		Notwithstanding anything in the Official Secrets Act, 1923 nor any of the exemptions permissible in accordance with sub-section (1), a public authority may allow access to information, if public interest in disclosure outweighs the harm to the protected interests.
	(3)		Subject to the provisions of clauses (a), (c) and (i) of sub-section (1), any information relating to any occurrence, event or matter which has taken place, occurred or happened twenty years before the date on which any request is made under section 6 shall be provided to any person making a request under that section:
			Provided that where any question arises as to the date from which the said period of twenty years has to be computed, the decision of the Central Government shall be final, subject to the usual appeals provided for in this Act.

Section 9 of the RTI Act is in respect of a discretionary power of Public Information Officer of Central or State as the case may be, to reject a request for providing information  if such a request for providing access would involve an infringement of copyright subsisting in a person other than the State.

To elaborate section 9 of RTI Act, it is requisite to deal with the following issues.

1) What Copyright is.

2) What an infringement of Copyright is.

3) Work in which Copyright subsists.

4) Subsisting in a person other than the State.

Let me briefly discuss them one by one herein after.

1) What Copyright is: 

There is no specific definition given in the Copyright Act for what a copyright is, however, the meaning of the copyright is described in section 14 of the Act. Copyright means the exclusive right  to do or authorize the doing of the act mentioned in this section (like reproduction of a work, performance of a work in public, making translation or adaptation of a work, issuing copies of a work) with regard to a work or any substantial part thereof. Such exclusive rights are subject to the other provisions of  the Act.

2) What an infringement of Copyright is: 

 Copyright infringement means if a person imitates or copies substantial or material reproduction of the copyrighted work,  such illegal activity of a person imitating is called infringement of copyright. Section 2 (m) of Copyright Act, 1957 is the definition of 'infringing copy'.

3) Work in which Copyright subsists:

 Section 13 of the Copyright Act reveals that copyright subsists in original literary, dramatic, musical and artistic works. Copyright subsists in cinematographic films and sound recording provided that substantial part of the cinematograph film is not infringement of the copyright in any other work or  a literary, dramatic or musical work in making of sound recording has not been infringed.

4) Subsisting in a person other than the State:

The copyright is subsisting in a person other than the State means the copyright must subsist either in a natural person or in a legal person which excludes from the definition of State mentioned in Article 12 of Constitution of India. The State includes the Government and Parliament and Parliament of India and the Government and the Legislature of each of the States and all local or other authorities within the territory of India or under the control of the Government of India.
Section 17 of the Copyright Act speaks about the ownership of the copyright and rights of the owner. It says that the author of a work is the first owner of the copyright therein. Copyright subsists in a natural person (author) means the Doctrine of  a 'contract for service' is applied and when the copyright subsists in legal person, other than the author, the Doctrine of 'contract of service' is applied.  In Contract for Service, the author is doing some work under the employment, the employer is the first owner of the copyright work if no specific agreement is made between the author and the employer in respect of copyright work  and in Contract of Service, the author is the first owner of the copyright work. A person can be an owner of the copyright by way of assignment or licence of copyright of existing work.

Having made the above mentioned understanding of Copyright and author of copyright, it transpires that the provisions of section 9 of the RTI Act is only applicable in the cases of where the Government is not the first owner of the copyright as per the provisions of Section 17 (d) of the Copyright Act, 1957.  Section 9 is not applicable to the Government work wherein in absence of any agreement,Government is the first owner of the copyright. Section 9 of RTI Act excludes the provisions of Section 17 (d) of the Copyright Act. On one hand, as per this provision of Copyright Statute, the Government can be the first owner of the copyright work, and on other hand, as per the section 9 of RTI, if the request made for providing  access of work, involving infringement of copyright, whose owner is Government, can be provided ???  Section 22 provides that where Government is the first owner of the copyright work, Copyright subsists until sixty years in that work. Thus, the words "other than the Sate" in section 9 of RTI Act indicate that copyright information where Government is first owner is provided and not in case of  others. How  would PIO decide that the request made by for providing access would involve an infringement of copyright as  Registration of copyright is not Compulsory under the scheme of Copyright Act to claim ownership or to claim statutory protection.  The causes for such denial of information by PIO are not mentioned in RTI Act.

It is pertaining to note that mere making request for accessing copyright work does not fall within the definition of section 2 (m) of the Copyright Act i.e.' infringing copy', nor does it come within the ambit of section 51 of the Copyright Act, i.e. infringement of copyright or nor such act is contravention of the provisions of either Copyright Act or of the definition of  'information' or of 'right to information' of RTI Act. Making request for providing the access of copyrighted work is not piracy, nor does it affect prejudicially the owner of the copyright. Moreover, registration of copyright is a part of public record of Copyright Office and any person is entitled to take inspection of copies of or make extracts from register of indexes on payment of prescribed fee as per section 47 of the Copyright Act. Then does section 9 of the RTI Act talk about unregistered copyrighted work ?, however, it is not mentioned in that section. This is opacity in RTI Act in respect of Copyright work. if the word 'access' mentioned in section 9, is related to computer only , even though , request for providing access cannot be denied, if as such information is taken from lawful possessor of it for bonafide intention to obtain information essential for operating computer programme.

Now coming to the section 8 (d) of RTI Act which is nothing but contrary to the provisions of IP Laws which are as under.

1)  section 148 (documents open to public inspection)  of the Trade marks Act, 1999.  As per section 148(2), any person may, on making application to the Trade mark Registrar upon making payment of prescribed fee, obtain certified copy of any entry in the register or any document like notice of opposition , registration of trade mark, indexes and take inspection of them by way of Computer. 

2) section 153 of the Patents Act,1970 (information relating to patent) 

3) section 26 of the Designs Act, 2000 ( Inspection of and extracts from registers) 

4) section 84 of the Protection of Plant Varieties and Farmers' Rights Act, 2001. (Document open to public inspection).

5) section 87 of the Semiconductor Integrated Circuits Layout- Design Act,2000. ( Document open to public inspection).

6) section 47 of the Copyright Act, 1957. ( Form and inspection of register).

In the case of Ms. Sakshi Mathur vs. Ministry of Health and Family in the year 2012 in Appeal No. CIC/SG/A/2011/003226 , Central Information Commission held that section 8(1))d) of the RTI Act is attracted only where disclosure of information would harm to the competitive position of a third party.Moreover, it is apparent that AIIMS is not a commercial organisation that competes with other organisations. Further, it is stated that question papers are prepared by experts for AIIMS. It does not appear that experts are in competitive position and therefore, respondent's contention that the information sought was exempt under section 8(1)(d) of the RTI Act is rejected. 
In this case the Respondents argued that the question papers, which are prepared by subject experts for AIIMS are original literary works, copyright to which vests in AIIMS. Further as per section 57 of the Copyright Act, 1957, AIMS is stautorily required to protect the rights of the authors. Since copyright vests with AIIMS, it can legitimately restrict the circulation of question papers pr exclude others from doing it.
In the above mentioned case, the question is arisen who is the first author of that question papers whether experts or AIIMS. Whether those subject experts were employees of AIIMS or not.  Experts must not be the employees of AIIMS and therefore, as per doctrine of ' contract for service' AIIMS is not  either first author or owner. Section 57 says about author's special right, independently of the author's copyright and even after the assignment either wholly or partially of the said copyright, the author has the right to claim the authorship of the literary work and not AIIMS and it is not clarified in the arguments of respondents that the terms of copyright have been started or not as per section 22 of the Copyright Act. Moreover, in respect of the facts of the case, section 57 is not attracted and therefore defense of exemption under section 8 (1)(d) of the RTI Act is not maintainable in that case.  

While writing this blog, a question arises in my mind that whether, the Public Information Officers (PIO), First Appellate Authority of concerned Government Offices and Second Appellate Authority either State Information Commission or Central Information Commission, being competent Authorities, do they really read and acquire deep knowledge of IP Laws  for their concerned with regard to RTI Act to justify that whether information should be provided or not as most of them are non legal persons who may never read any law ? If yes, then it is admirable but if not, then... plight of Government Offices would become more pitiable in the name of RTI and public interest is covered by the  big black cloud. I have NOT found any silver line from this big black cloud namely RTI, however, A ray of hope is always there.

Chirag Bhatt
IP Lawyer
09824025041

IPR & COMMON MAN

There are several special laws covered under the umbrella of Intellectual property laws. These laws are trademarks, copy rights, patents, design, geographical indications of goods, protection of plant varieties and farmers’ rights, biological diversity and semiconductor integrated circuits layout-design.

 In India Intellectual property laws are at a cradle stage as if an infant makes an attempt to peep from its cradle though many attempts are being made to weigh the IPR and to emphasis the real essence of these laws from every corner of the world. In India, is a common man affected by the laws related to Intellectual property ? if the answer is yes, how is so ? A peasant may be aware of his rights of property i.e. land, but a penman or an industrialist may not be aware of his rights of intellectual property in our country. This is the present scenario as far the laws related to intellectual property and common man is concerned.

 IP laws protect the rights of an individual and an interest of public at large. Awareness of IPR plays a dominant role to protect the rights of an individual and an interest of public at large so that the gap between IPR and common man may be bridged. A person who spends almost his entire life for any invention which may be helpful to the society at large and when the time to get the fruits of his endeavor comes, somebody else enjoys the fruits of it, that cannot be tolerable but in many cases that person who has invested his entire time of life for invention may not be aware of it. This is even more pathetic that somebody is imitating the original and the author or the creator or inventor or proprietor of that original goods or invention may not be the aware of it.

 The laws related to IPR are boons not only for the inventor or creator or proprietor of goods but also for mankind as the laws of IPR are back bone for industrial growth of the country which is directly or indirectly affected to the common man of this country.  IPR can be a mile stone for the industrial and technological progress, economic growth and socio-economic situation of any country if it can be spread and reached to the common man in its real sense. The fragrance of the laws of IP becomes eternal when a common man makes himself aware of it as every common man has some specialty to do something new and original which is required to be protected in the interest of mankind at large.  Awareness of IP laws and avoidance of imitation of any original thing among common people can be the latest version and vision for protecting their own rights. As this is an era of science and technology, it is the higher time to say “NO” to the duplication, imitation, copy of the original and genuine products so that there would be a society where everybody is aware of their IPR and such society can be called “utopian society.”

 The question is how such utopian society for IPR can be made in cosmopolitan country like us. The Government, lawyers, judiciary corporate personalities and law teachers and students can make the utopian society by spreading knowledge of Intellectual property laws among the people by arranging IP awareness camp at ground level. Arranging camps for IP knowledge among people and police become helping hand to develop a good society.  Socio-legal situation of the society is grown up by such type of IP camp. If a person is aware of his IP rights, he can make the other person aware and gradually such type of progress can be a part of development of country which may not be seen directly but it is there. The statutes of IP are not limited to industry only as it is false impression that IP litigation is luxurious litigation for IP practitioners. The laws of IP are meant for people and such laws can be proved revolutionary laws when a common man of this country becomes aware of his IPR as IPR becomes the pivotal part of life knowingly or unknowingly. No one can escape from IPR as IPR starts from morning tooth brush or paste and ends at evening dinner.

A common man is using an android phone now a day which is the matter of taking pride for the country like India but when he comes more aware about not using piracy soft ware, those days would be the days of IPR and there would be a window of IPR to be open and it would be a genuine moral as well as economic progress of a common man.

Chirag Bhatt
IP lawyer
09824025041
                                                                  

CAN DAMAGE BE CONSIDERED AS SPECIFIED VALUE OF Intellectual PROPERTY ?

As an IP lawyer, I must appreciate the welcoming step taken by the Indian Parliament for enacting an Act 'THE COMMERCIAL COURTS, COMMERCIAL DIVISION AND COMMERCIAL APPELLATE DIVISION OF HIGH COURTS ACT, 2015'(herein after referred as Commercial Court Act) for the commercial disputes by invoking the legislative powers of Parliament under Article 245 read with Article 246 of the Constitution of India. It is due to the enactment of Commercial Court Act, the State Government  may constitute Commercial Court/s at District level after prior consultation of High Court of such State. and A judge of Higher Judicial Service in the State (cadre of District Judge); having experience in dealing with commercial disputes can be appointed as Judge of Commercial Court.

The interesting fact is that the jurisdiction of  Commercial Court for commercial dispute can only be invoked if a specified value of the subject matter with regard to suit is not less than one crore. Now the questions are arisen that what commercial dispute is  and what  a specified value is. There is a big list provided in the definition clause section 2 (1)(c) of the Commercial Court Act regarding what commercial dispute is and definition of 'specified value' is provided under section 2 (i) of that Act.

 Now as per the definition clause under Section 2 (1) (c) (xvii) intellectual property rights relating to registered and unregistered trademarks, copyright, patent, design, domain names, geographical indications and semiconductor integrated circuits are under the umbrella of the definition of commercial dispute. The provision of 'specified value' provided in section 2(i) of the Commercial Court Act must be read with section 12 of that Act as it is for determination of specified value. It is pertaining to note that Intellectual Property Right(IPR) is an intangible right and therefore, section 12( d) is applicable for the cases related to the IPR, The said section says "where the relief sought in a suit, appeal or application relates to any other intangible right, the market value of the said rights as estimated by the plaintiff shall be taken into account for determining Specified Value..."

The literary and plain meaning of the provisions of section 2(c) (xvii) read with section 12 along with section 2(1) (i) of the Commercial Court Act  is that the Intellectual Property (IP), having value of one crore or more than one crore is entitled to be protected by invoking the jurisdiction of Commercial Court.

The intention of Legislature behind establishing the Commercial Court under Commercial Court Act is to provide speedy disposal of high value of commercial disputes as per the statement of objects and reasons of the Commercial Court Act, 2015. Such speedy disposal establishes good faith of the class and mass of commercial people into the judicial system of India and the investor from any corner of the world may attract to invest more and more money after thinking that if any commercial dispute is arisen, his money would not be held up for years and years. Thus the intention of the legislature is good enough to make this Country commercially progressive with the help of law.

Now the Commercial Court Act is silent about the how the specified value or market value of Intellectual Property is analyzed or examined. No method is provided for it in the entire Act.  It is provided in the Act that market value estimated by the plaintiff shall be taken into account for determining specified value, meaning thereby, the person who files a suit , determines the value of the property in respect of IPR. Is such scale given in the hands of the plaintiff who knows nothing about the market value of the IPR or Specified value of IPR fair enough to get justice in respect of the commercialization suit of IPR ? There is always possibility that the plaintiff is of no knowledge about the specified value of the IPR in this Country where the awareness of IPR is being grown up or very less, then under such socio- economic scenario of this Country, it is hard to justify the value of IPR property on the basis of determination of the specified value or market value of IPR made by the plaintiff. The market value determined by the plaintiff may be correct or incorrect that is not known or there is no provision given in the Act for justifying the same.

True present scenario is  that a plaintiff goes to Advocate instead of going to Chartered Accountant or to some IP property valuer. That Advocate advises him to file a suit of Rupees One Crore or more  by inducing him for claiming DAMAGE to invoke the jurisdiction of Commercial Court which is totally wrong practice being prevailed now a days. That plaintiff becomes happy that the suit of Rs. 1 crore is filed against the defendant. The Commercial Court has not taken objection in respect of jurisdiction being invoked on the basis of Damage and not on the basis of specified value of market value of IPR. The question arises in my mind that whether Damage can be considered as specified value of market value of the Intellectual Property. There is no such word like 'damage' mentioned in the provisions of the sections as discussed earlier for invoking the jurisdiction of Commercial Court and there is no intention of legislature that under the guise of damage of Rs. 1 crore, suit may be filed before Commercial Court. Such dilemma has not been imagined by the legislature while providing the provisions for specified value under Commercial Court Act. Damage of Rs. 1 crore or above can be claimed by any other legal way, then why the birth of Commercial Court Act is required if by way of claiming damage; the value of IP is determined for invoking jurisdiction of Commercial Court. This practice is against the object and reasons of the Commercial Court Act. Such practice is nothing but a forum shopping to invoke the jurisdiction of Commercial Court. Such wrong practice must be banned otherwise the purpose of the Commercial Court Act becomes imfructuous and Commercial Court merely becomes the tool for obtaining the Damage of Rs. 1 crore or above by filing suit in it.  it is surprised to note that those experienced Judges of  'The Commercial Courts' do not restrain such suit of IP being filed on the basis of damages and not on the true basis of specified value. Isn't it a miscarriage of the object of the Commercial Court Act ? 

Interesting and shocking bare fact is that the advocates are filing IP suits in commercial court suit for passing off of shape of goods  under Trade marks Act as if the value of the shape of goods were not than one crore ! moreover, such advocates are also filing suit for infringement of Design in the name of damage of rs one crore which is totally against the provisions of section 22 (2)  wherein not exceeding  Rs. 25 thousand  to be paid to the registered proprietor by the a person who has infringed the registered design as a contract debt and if suit is filed in respect of the recovery of damages of infringement of design, the total sum recoverable is not exceeded fifty thousand rupees. This means that damages can be claimed only under Design Act and it can not claimed under the commercial Court Act for the cases related to Designs, otherwise the provisions of Commercial Court Act prevails over the Special Act like Designs Act, 2000, which is again not the intention of legislature. There are also cases where the total sale of particular intellectual property is not more than one lac, and that plaintiff files a suit in a commercial court and injunction is granted in favour of the plaintiff !!  This is astonishing reality of  experienced judges of Commercial Courts. 

IPR is a movable or intangible property. Can all the Intellectual properties like a trade mark, a shape of goods, a design, a copyright, a patent  have the market value of Rupees One Crore or above to invoke the jurisdiction of Commercial Court ? The answer is 'NO'. It is not possible that each and every Intellectual Property has market value of Rupees One Crore. It is possible that the value of the IP can be more than rupees One crore, these may be in the cases of well-known brands like 'COCA-COLA, TATA, PARLE, NIKE, GOOGLE, LEGO and many more. 

The judiciary and advocates must play their active roles by being guards of the IP laws that there should not be a wrong message to spread in commercial or industrial society in respect of the intellectual properties and valuation of them. Say good bye to 'DAMAGE' and welcome the values of Intellectual properties  which is actually intention of the legislature for enacting The Commercial Courts Act by getting the IP valued by professionals like IP property valuer, or C.A. before invoking the jurisdiction of Commercial Courts.

Chirag Bhatt

IP lawyer

09824025041

SHAPE OF GOODS & ITS AMBIGUITIES

As an IP lawyer, I have found  many ambiguities in Indian Trade marks Act, 1999 and the Designs Act, 2000. For instance, shape of goods which is mentioned in the definition  of  'mark' under section 2(1) (m) i.e. the definition of mark and in section 2 (1) (zb), i.e. a definition  of  trade  mark under The Trademarks Act 1999. The shape is also covered under the definition of design under section 2 (d) of the the Designs Act  2000. Now the ambiguity is goods maybe article, if the registration  of shape of article is once made under design act, the life of that registration  is fifteen years (10+ 5 )  registration  and renewal respectively.   If the same article is registered  under the trade marks Act, the life is endless. There is no legal restriction being imposed for the limitation of period of registration under trademarks Act by the legislative members and there fore sometimes it happens that the proprietor of Shape of Article, though it is registered  or is capable of being registered under the Designs Act, gets the legal benefits of that shape by getting it registered under the Trade marks Act,1999. Whether such registration is legally accepted ? Does such registration not invoke IP litigation ? The  answer is in affirmative manner, yes, it leads to litigation to the parties involved. Then the question arises that whether it is in the interest of public or it is against the public policy ? I must say the intention of legislative members must not be such to invite litigation in the name of protection of shape of goods under the Trademarks Act,1999. Whether this ambiguity is called 'beauty' of law in the interest of  pockets of practicing IP lawyers ?

To acquire statutory right qua shape under the Trade marks Act, 1999 and to be protected for infringement action,  the shape trade mark has to pass the test of identical and/or deceptive similarity and the test of likelihood of confusion among people. Mere registration is not enough, Registration is primafacie  tool of validity but it is not sufficient enough to establish and  prove the case of infringement of shape trade mark under the statute unless it acquires secondary meaning or distinctiveness of it qua goods or products. 

Second issue is that whether 'shape of goods' is required to be protected under common law remedy i.e. under passing off action ? Can a 'shape of goods' satisfy the ingredients of passing off action for being protected up to such an extent to restrain someone or legal entity using the shape of goods ? Is it possible that a product or goods are recognized and sold only by its 'shape' among purchasers ? Can any shape of the goods acquire that much reputation and goodwill that the buyers buy the product by  identifying the shape only ? Can a shape be a source identifier of the product n the competitive world of  products in either domestic or in global market  where thousands of products are launched and vanished in a day.

'Shape' is a part of Geometry, if it is, then can anyone claim exclusivity over that Geometrical shape by acquiring the ownership on shaped goods ? The answer is 'NO' in my opinion and therefore, it is ambiguity of IP laws qua 'shape'.

To avoid ambiguity, the shape of article is required to be protected under the Designs Act  provided that such 'shape' must be within the purview of section 4 of the Designs Act and not under the Trademarks Act as nobody can claim life time monopoly or exclusivity over the 'shape' under the disguise of Trade mark registration or under common law rights.

Generally, products are being sold by trade marks/names and not by shape of them. If the wrapped  shape product is unwrapped and it makes available in the shopping or super market among other such products, if people/ purchasers identify and buy it by its shape, then and then that shape of the product becomes source identifier and has acquired distinctiveness. Such shape may be protected otherwise shape is not protected under the trade marks Act due to lack of distinctiveness. When the products are sold by trade mark/name, shape of that product does not become the source of identifier of that product, and hence, shape is not protected under the Trade marks Act.

The latest  example is of shape to be protected under trade mark Act is  KITKAT case, paragraph no. 124 of the judgment (Neutral Citation Number: [2017] EWCA Civ 358).  The British  Court of Appeal has recently rejected that plea of Nestle that the shape of KITKAT is unique and is to be protected under the trade mark Act and held that shape is not protected under the trade mark Act. As per paragraph no. 105 of that judgment, there was an evidence in the form of survey, however, such evidence failed to establish that shape of KIT KAT chocolate has acquired distinctiveness. 

 Distinctiveness of a trade mark plays a vital role for the registration and protection under the Trade marks Act, 1999, novelty of a trade mark is not required, however, novelty of a shape of article is a condition precedent for registration and protection under the Designs Act 2000.  There is possibility that an article or goods may not be  novel but it is distinctive or it is novel but not distinctive. For instance an advocate wearing a black coat in a society is a distinctive figure in that society where he lives but he is not a distinctive figure in a Court where all advocates wear black coats. Geometry shape is not distinctive but if an article is made in a novel shape, it is protected under the Design Act. Thus, the criteria and condition of trade marks Act and designs Act are totally different. Distinctiveness and novelty are two different aspects and that is why the shape of goods may not be protected under the trade mark Act but it may be protected under the Designs Act. 

CHIRAG BHATT

IP LAWYER

09824025041