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Intellectual Property 

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)

The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), negotiated during the Uruguay Round, introduced intellectual property rules for the first time into the multilateral trading system. The Agreement, while recognizing that intellectual property rights (IPRs) are private rights, establishes minimum standards of protection that each government has to give to the intellectual property right in each of the WTO Member countries. The Member countries are, however, free to provide higher standards of intellectual property rights protection.

The Agreement is based on and supplements, with additional obligations, the Paris, Berne, Rome and Washington conventions in their respective fields. Thus, the Agreement does not constitute a fully independent convention, but rather an integrative instrument which provides "Convention-plus" protection for IPRs.

The TRIPS Agreement is, by its coverage, the most comprehensive international instrument on IPRs, dealing with all types of IPRs, with the sole exception of breeders' rights. IPRs covered under the TRIPS agreement are:

The TRIPS agreement is based on the basic principles of the other WTO Agreements, like non-discrimination clauses - National Treatment and Most Favoured Nation Treatment, and are intended to promote "technological innovation" and "transfer and dissemination"
of technology. It also recognizes the special needs of the least-developed country Members in respect of providing maximum flexibility in the domestic implementation of laws and regulations.

Part V of the TRIPS Agreement provides an institutionalized, multilateral means for the prevention of disputes relating to IPRs and settlement thereof. It is aimed at preventing unilateral actions.

  1. Copyrights and related rights;

  2. Trade marks;

  3. Geographical Indications;

  4. Industrial Designs;

  5. Patents;

  6. Layout designs of integrated circuits; and

  7. Protection of undisclosed information (trade secrets).

(a) Copyrights and related rights

Part II Section 1 (Article 9 to Article 14) of the TRIPS agreement deals with the minimum standard in respect of copyrights.

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. It is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work.

The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized use. Unlike the case with patents, copyright protects the expressions and not the ideas. There is no copyright in an idea. The general rule is that a copyright lasts for 60 years. In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the year following the death of the author. In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organizations, the 60-year period is counted from the date of publication.

The Copyright Act, 1957 came into effect from January 1958. This Act has been amended five times since then, i.e., in 1983, 1984, 1992, 1994 and 1999, with the amendment of 1994 being the most substantial. The Copyright Act, 1957 continues with the common law

traditions. Developments elsewhere have brought about a certain degree of convergence in copyright regimes in the developed world.

The Copyright Act is compliant with most international conventions and treaties in the field of copyrights. India is a member of the Berne Convention for the Protection of Literary and Artistic Works of 1886 (as modified at Paris in 1971), and the Universal Copyright Convention of 1951. Though India is not a member of the Rome Convention of 1961, the Copyright Act, 1957 is fully compliant with the Rome Convention provisions.

Two new treaties, collectively termed as Internet Treaties, were negotiated in 1996 under the auspices of the World Intellectual Property Organization (WIPO). These treaties are called the 'WIPO Copyrights Treaty (WCT)' and the 'WIPO Performances and Phonograms Treaty (WPPT)'. These treaties were negotiated essentially to provide for the protection of the rights of copyright holders, performers and producers of phonograms in the Internet and digital era. India is not a member of these treaties as yet.

Copyrights in the TRIPS Agreement
  • Protection of works covered by Berne Convention. (Art.9)

  • Protection of computer programs as literary works and of compilations of data. (Art. 10)

  • Recognition of rental rights, at least for phonograms, computer programs, and for cinematographic works. (Art. 11)

  • Recognition of a 50 years' minimum term for works owned by juridical persons, and for performers and phonogram producers. (Art 12)

  • Exceptions to exclusive rights must be limited to special cases, which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the rights-holder. (Art 13)

  • Recognition of rights of performers, producers, of phonograms and broadcasting organizations. (Art. 14)

(b) Trademarks

Part II Section 2 (Article 15 to Article 21) of the TRIPS agreement contains the provisions for minimum standards in respect of Trademarks.

A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products. Over the years these marks evolved into today's system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs.

A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for a payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement.

There are two international treaties governing Trademarks -the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol.

In India, the Trade Marks Act, 1999 was passed on 30th December 1999 and came into force on 15th September 2003. Before commencement of this Act, the Trade & Merchandise Marks Act governed the protection of trademarks in India, which has now been replaced by the Trade Marks Act. The Trade Marks Act, 1999 is in coherence with the provisions of the TRIPS Agreement. The new Act provides for registration of trademarks for services in addition to goods, and has increased the period of registration and renewal from 7yrs to 10yrs.

Trademark in the TRIPS Agreement:
  • Protectable subject matter includes any sign, combination of signs capable of distinguishing the goods or services from others. Registration depends on distinctiveness end use. (Art 15)

  • Rights on the owners of registered trademark conferred to prevent third party not having his consent, from using in course of trade relating to identical goods/ services. (Art. 16)

  • Exception to exclusive rights must be limited and take into account the legitimate interest of the trademark owner and of third parties. (Art. 17)

  • The minimum term of protection is seven years, indefinitely renewable. (Art. 18)

  • Requirements for use are to be limited in terms of both the minimum period of non-use and the admissibility of reasons for non-use. (Art. 19)

  • Special requirements for use are limited, as well as the conditions of licensing and assignment of trademarks. (Art 20)

  • A trademark may be assigned without transfer of the business to which it belongs. (Art. 21)

(c) Geographical Indications (GI)

Section 3 Part II (Article 22 to Article 24) of the TRIPS Agreement contains the provisions for minimum standards in respect of geographical indications.

Geographical Indications of Goods are defined as that aspect of intellectual property which refers to the geographical indication referring to a country or to a place situated therein as being the country or place of origin of that product. Typically, such a name conveys an assurance of quality and distinctiveness which is essentially attributable to the fact of its origin in that defined geographical locality, region or country. Under Articles 1 (2) and 10 of the Paris Convention for the Protection of Industrial Property, geographical indications are covered as an element of IPRs.

In India, the Geographical Indications of Goods (Registration and Protection) Act, 1999 came into force with effect from 15th September 2003. This Act seeks to provide for the registration and protection of Geographical Indications relating to goods in India. The Controller General of Patents, Designs and Trade Marks is also the registrar for the Geographical Indications, and the Geographical Indications Registry is located at Chennai.

GI in the TRIPS Agreement:
  • Legal means shall be provided to prevent use of an indication in a manner that misleads the public or when it constitutes unfair competition, and to invalidate a trademark if the public is misled as to the true place of origin. (Art.22)

  • Additional protection is conferred on geographical indications for wines and spirits, including ways of protecting homonymous indications. (Art.23)

  • Negotiations shall be undertaken to establish a multilateral system of notification and registration, aimed at increasing the protection of indications for wines and spirits.(Art.24)

  • Exceptions to the required protection may be based on prior and continuous use of an indication, prior application or registration in good faith of a trademark, or on the customary use of the indication. (Art.24)

  • Obligations only relate to geographical indications that are protected in their country of origin. (Art 24)

(d) Industrial Designs (ID)

Section 4, Part II (Article 25 and Article 26) of the TRIPS Agreement contains the provisions for minimum standards in respect of Industrial designs.

Industrial designs are an element of intellectual property. Industrial designs refer to creative activity, which result in the ornamental or formal appearance of a product. Design rights refer to a novel or original design that is accorded to the proprietor of a validly registered design. But it does not include any mode or principle or construction or any thing which is in substance a mere mechanical device.

India has already amended its national legislation to provide for these minimal standards. The essential purpose of the Designs Act, 2000 is to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The present legislation is aligned with the changed technical and commercial scenario and conforms to the international trends in design administration.

Under the Designs Act, the designs would not include any trade mark, as defines in the Trade Marks Act or property mark or artistic works as defined in the Copyright Act.

The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date. This initial period of registration may be extended by further period of 5 years on an application before the expiry of the said initial period of

Copyright. The proprietor of a design may make an application for such an extensi on as soon as the design is registered.

Industrial Design in the TRIPS Agreement:
  • Protection to new or original designs. (Art.25)

  • Protection for textile designs through industrial design or copyright law. (Art 25).

  • Exclusive rights can be exercised against acts for commercial purposes, including importation. (Art 26)

  • Minimum Term of Protection is ten years. (Art 26)

(e) Patents

Section 5 Part II of the TRIPS Agreement (Article 27 to Article 34) contains the provisions for standards in respect of the Patents.

A Patent is an exclusive right granted by a country to the inventor to make, use, manufacture and market the invention that satisfies the conditions of novelty, innovativeness and usefulness Members are required to comply with the Paris Convention for the Protection of Industrial Property.

Introduction of Patent Law in India took place in 1856 whereby certain exclusive privileges to the inventors of new inventions were granted for a period of 14 years. Presently, the patent provisions in India are governed by the Patents Act, 1970. The Indian Patents Act is fully compatible with the TRIPS Agreement, following amendments to it; the last amendment being in 2005 by the Patents (Amendment) Act, 2005.

Product patents in the field of pharmaceuticals and agro-chemicals have been introduced by deleting Section 5 of the Patents Act. Those inventions which are considered a mere discovery of a new form of a known substance or mere discovery of a new property or new use will not be considered patentable. A provision for patenting of software that is embedded in hardware has also been introduced in the Patents Act.

The term of every patent is now for 20 years from the date of filing. Provisions for the pre-grant opposition to the grant of patents have also been incorporated in the Act. Earlier such provisions were available only for post-grant opposition. The filing date of a patent application and its complete specification will now be the international date of filing for the patent as per the provisions of the Patent Cooperation Treaty.

A provision has also been introduced in the Patents Act to enable the grant of compulsory licenses for the export of medicines to countries with limited or no manufacturing capacities to meet emergent public health situations. The law effectively balances and calibrates intellectual property protection with public health concerns and national security. This provision is in line with the Decision of the WTO of 30 August 2003 on the Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health.

Patents in the TRIPS Agreement:
  • Patents shall be granted for any inventions, whether products or processes, in all field of technology, provided they are new, involve an inventive step and are capable of industrial application. No discrimination in respect to place of invention. Exception available for diagnostic, therapeutic and surgical methods of treatment for humans or animals, as well as plants and animals and essentially biological processes for the production thereof. (Art.27)

  • Exclusive right to owners against third party for using subject matter including process of patent, without his consent. (Art 28) Inventions shall be disclosed in a manner, which is \sufficiently clear and complete for a skilled person in the art to carry out the invention. (Art. 29)

  • Limited exceptions to the exclusive rights provided such exception do not conflict with normal exploitation of the patent. (Art.30)

  • Revocation/forfeiture is subject to judicial review. (Art 32)

  • The term of protection shall be at least 20 years from the date of application. (Art.33)

  • Reversal off the burden of proof in civil proceedings relating to infringement of process patents is to be established in certain cases. (Art.34)

(f) Layout Designs of Integrated Circuits

Articles 35 to 38 of Section 6/Part II of the TRIPS agreement contains the provisions for protection of rights in respect of Layout Designs of Integrated Circuits.

The basis for protecting integrated circuit designs (Topographies) in the TRIPS Agreement is the Washington Treaty on Intellectual Property in Respect of Integrated Circuits, 1989. India is a signatory to this international agreement.

In India, the IPRs on the layout designs of integrated circuits are governed by the Semiconductor Integrated Circuits Layout-Design Act, 2000.

Under this Act, a layout-design shall be considered original if it is the result of its creator's own intellectual efforts and is not commonly known to the creators of layout-designs and manufacturers of semiconductor integrated circuits at the time of its creation. But a layout-design, which is not original, or which has been commercially exploited anywhere in India or in a convention country; or which is not inherently distinctive; or which is not inherently capable of being distinguishable from any other registered layout-design, shall not be registered as a layout-design. But if a layout-design which has been commercially exploited for not more than two years from the date on which an application for its registration has been filed either in India or in a convention country shall be treated as not having been commercially exploited.

The registration of a layout-design shall be only for a period of ten years counted from the date of filing an application for registration or from the date of first commercial exploitation anywhere in India or in any country whichever is earlier. No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered layout-design.

Lay out Design in the TRIPS Agreement:
  • Protection in accordance with Treaty on Intellectual Property in Respect of Integrated Circuit. (Art.35)

  • Protection shall extend to layout designs as such and to the industrial articles that incorporate them. (Art.36)

  • Bona fide purchasers of products involving infringing layout designs shall be liable to pay compensation to the rights- holder after. (Art.37)

  • Term of protection is a minimum of 10 years notification. (Art 38)

(g) Protection of undisclosed information

Article 39 of Section 7 Part II of the TRIPS agreement elaborates on the protections of trade secrets.

A Trade Secret or undisclosed information is any information that has been intentionally treated as secret and is capable of commercial application with an economic interest. It protects information that confers a competitive advantage to those who possess such information, provided such information is not readily available with or discernible by the competitors. They include technical data, internal processes, methodologies, survey methods used by professional pollsters, recipes, a new invention for which a patent application has not yet been filed, list of customers, process of manufacture, techniques, formulae, drawings, training material, source code, etc. Trade Secrets can be used to protect valuable "know how" that gives an enterprise a competitive advantage over its competitors.

The Agreement provides that natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by or used by others without their consent in a manner contrary to honest commercial practices. Further, parties are required to protect against unfair commercial uses, undisclosed or other data obtained as a condition of approving the marketing of pharmaceutical or of agricultural chemical products.

There is no specific legislation regulating the protection of trade secrets. India follows common law approach of protection based on contract laws.

Trade Secrets in the TRIPS Agreement:
  • Undisclosed information is to be protected against unfair commercial practices, if the information is secret, has commercial value and is subject to steps to keep it secret.

  • Secret data submitted for the approval of new chemical entities for pharmaceutical and agrochemical products should be protected against unfair commercial use and disclosure by governments.

 

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