Legal Process Outsourcing Service

Blue Laws

2011-10-14T05:32:00.000-07:00

Hey friends haven’t you ever heard about Blue laws? What the relation between Blue a colour with the law? Actually blue law is not a law that is related with colours but it is a kind of practice that restrict the trade of particular goods mainly in Sunday for the promotion of Christian Sabbath (Weekend Holidays).Before going to Blue Laws we must know what is Sabbath? The term Sabbath has originated from the Hebrew word “abat” means “to cease rest.”The Sabbath is the seventh day of week on which Jews and Christians believes that God rested after creating everything. The Christians and Jews consider this day as the day to meet for services to worship their God and often, rest themselves. And in order to protect and promote Sabbath, Blue Laws came. The concept of blue law is practiced mainly in United States and Canada and it aims to promote religious standards and moral values. Under Blue laws there occur restrictions on Sunday shopping on products like alcohols, beverage, and automobiles and occasionally on all commerce. During the early period Blue Laws outlawed Sunday work, travel, housework, cooking, clothing people could wear, and even sexual intercourse. It is believed that blue is the colour of paper upon which the code of laws was printed and hence these laws were come to be known as Blue laws. It was also believed that the term “Blue” in Blue law came from the proverb that “true blue will never stain” like that a man of fixed principles and resolutions, firmly grouped upon reasonableness and justice of such principles, will not be easily broke up from them or it cannot the interchanged by any evil interaction. So the term law was originated under a confident belief that these laws cannot be interchanged or distracted and is for promoting religious standards and beliefs. And blue is the symbol to summarize something of higher quality that cannot be destroyed easily and hence the name Blue law came. Majority of the people were still in the beliefs that the Blue Laws were first quoted in a Blue paper and hence the term Blue Law coined out.

Blue Laws often prohibit the trading activities during certain hours and there are exceptions to the prohibition of commerce on grocery and drugstores. The practice of providing rest on Sunday was come to establish was in Rome. Blue law was first enacted in 1600 on the colony of Virgina and its main aim was to require the attendance of people towards church on Sundays which they considered as their worshipping holiday. Farmers were excluded from this Blue law provision. The early provision of Blue law application includes restrictions on sale of Alcohol, sports, barbering and general labour. But later it had spread through all the sections of trade and commerce. Strict Punishments were provided for persons who were doing non-religious activity on Sunday under Sabbath rules which were a great example of how a state government can socially control citizens for promoting religious standards and beliefs. In the case of McGowan v Maryland (1961) several employers of a discount department store sold a few items like floor wax and loose-leaf notebook to the customers on Sunday. The government of Maryland observed that these persons had violated Maryland’s Blue law which only allows certain items such as drugs, tobacco, newspaper and some food stuffs to be sold on Sunday. The court in this case had held that Blue laws did not violate the free exercise clause because the employee alleges only economic injury and infringement on their own religious practice. The court had also observed that the blue law did not violate the division between church and state where the Maryland’s laws based on secular rather than religious state interests. The aim of blue laws are to improve the health, safety ,recreation and general well being of citizens and its present purpose of the laws is to provide a uniform day of rest for all. And in fact this day is of particular significance for various Christian sects do not bar the state from achieving its secular goals. Another case is R. v Big M Drug limited (1985) in this case Big M Drug mart ltd was charged with carrying on the sale of goods on Sunday violating the act of Lord and Big M was acquitted for trial and judge of the trial court founded that the lord’s act was a criminal statute violating the acts under section 2(a) of charter. And the court held that the provisions of Blue law was unconstitutional and also blue law is violated because Big M Drug mart ltd is a corporation rather than a natural person so it cannot have a religion and therefore religious freedom was not violated.

The Blue law is also practiced in Muslims countries since the term Blue law is not common there. In the city of Basra in Iraq the city council banned all alcoholic sells on Islamic holiday but the Christian merchants protested against this and it got the law over tuned and Christian Merchants raised their victory and they commented their victory as “Freedom has won this time in Iraq. Also in most of the Islamic countries no people are allowed to eat, drink or smoke in public during the holy fast month of Ramzan. Also during the period of fasting restaurants are ordered to be closed. So we can undoughtfully say that Blue laws were powerful battalions to promote religious faiths. Most of the countries were using Blue laws as equipment against Alcoholism under the religious customs and practice. But the practice of Blue Law is differing from state to state in United States. In every state of United States the sale of alcohol generally stops at a certain times in morning. In New York alcohol may not be sold between three and eight o'clock in stores on Sunday. In Ohio the selling of alcohol on Sunday requires a special license to sell, alcohol was outlawed in the state of Massachusetts till 2004.In this way different states in United States practicing different kinds of Blue laws that have changed at that time. Some states represent Blue Law as Sunday closing laws in order to exist them in general level. The practice of Blue Law started fading by 1985 and by 2004 only some of the states were practicing it by giving the importance as a religious custom. The main reason for the fading of Blue Law is that it is a religious custom not a Constitutional law. Because in highly populated states like New York the population contains all kinds of people like Hindus, Muslims, Buddhists, Christians, Atheists etc.

By the beginning of 21st century the practice of Blue Law and become less importance and most of the liquor stores started opening on Sundays. Even some of the states in US are still practicing it. In some liquor stores hours of sales are limited as compared to Saturdays and other weekdays. But even today some European countries were still following Blue Laws because religion is given more importance in European countries rather than America. The one reason for its diminishing was in the 21st century it was not become strictly religious in nature as compared to the 19th and 20th century and also these kinds of law didn’t have any constitutional support. In fact the Blue Laws had a played a major role in promoting religious faiths and beliefs and also act against alcoholism. Such kinds of law should be needed for Religious and Social welfare. The ultimate aim of Blue Law is a secular aim to close particular businesses on a given day in observance of a simple day of rest.

State responsibility for health

2011-10-03T03:20:00.000-07:00

The history of medicine as a science reveals that is has grown with intuition, observation and interpretation in the form of predictions and diagnosis depending upon age old experiences. Its development has taken place in stages when it has drawn not merely from biological and natural sciences but also very richly from traditional cultures and social and behavioral sciences. Thus medicine, inter alia is a social system with definite social goals. Every culture has developed a system of medicine and the medicine is an important part of every culture. Hence there exists an organic relationship between medicine, human advancement and health. This relationship is well exemplified by the development of Unani Medicine, Acupuncturing system of treatment and other ways of treatment in various parts of the world in different periods of history, each characterized by its own specific culture. In view of this relationship of medicine with culture a correct assessment of the state of health of a place at a certain time cannot be had without a serious account of the prevailing law and policies of that place.

Women's rights in Christianity - Some reflections on divorce law

2011-09-27T05:07:00.000-07:00

The classical art and literature describe femininity in most unpalatable language. Attempts, to reverse this trend very early turned into Woman's Liberation movement. As a result a feeling that the social and political conditions hitherto operating around women should change assumes a meaning. In order to usher in a area of social equality men and women nourish a feeling wide to redefine woman's rules at contemporary times. As a result two distinct trends may be ostensibly discerned. Firstly it is realized that gender equality might not be achieved unless the rights of women are delineated and guaranteed at various visible levels of social life. Secondly, the plethora of enactments that have remained in circulation irrespective of geographic, communal and ethical considerations, if are manifestations of status efforts to ameliorate general conditions of woman, should be implemented at the earliest. But the fact is that it is difficult to read masculine intentions behind these legislations, because most of the times they have proved to be opaqe, as a result, in pluralist societies the bounties of freedom remains denied to women.

At home, equality and non-discrimination on the basis of sex may sound foreign to the cross section of women because unlike Christina west, the Indian society is more male dominated. Indian males conveniently follow double standards regarding women. On the one hand they call her Durga and Kali and go to worship her and the other, she is raped in public like Drupadi, given up like Sita and appease other, burnt like Roop Kanwar amidst the beat of drums and rejoicing. Indian women continue to hold in one hand rattle to amuse her weeping child continue to hold in one hand rattle to amuse her weeping chid and a cup of tea to please her husband and yet in another hand a broom to clean up the house. Thus she does to prove herself to be facimile of the multi hand goddess. He hands multiply too as and when new roles are assigned to her. This condition by large remaining unchanged on account of Indian man's vision of femininity is geared around imprudence and inability of women to cater to needs of the times.

When might the dawn of freedom break upon Indian women albeit wife assumes great significance? They may legitimately doubt the gender intentions because by merely propagating equal rights and equity the miseries and sufferings of women have been candidly covered up by men, and this policy continues to flourish at ad infinitum. The fact is that men have historically been reluctant to rub their shoulders with women. They have been even denied the right to life and the State has failed to take note of their miserable plight in real life. Atrocities on women have become a regular feature of life, which attract press spotlights, yet fail to generate any public remorse. If their life is unsafe, so have been the Constitutional Promises - right to life and liberty, equality and non discrimination on the basis of sex, Woman, for example for no fault of here's is deprived of her property rights under various personal laws. She is burnt alive in case of her failure to bring dowry to her in laws. It is common for the courts to restitute her against will no matter the wife may have to remain away from matrimonial home for a reasonable cause. Within the precincts of home she receives beating in gift for wedlock. The sex based discriminatory provisions as such continue to remain on statute books irrespective of any communal considerations. The confusion is multiplied where courts come forward and weave elaborations favoring male interests than female needs, that too in the teeth of constitutional promises and guarantees like right to equality. In the face of such nontraditional any talk about equality, in particular, in the nook and corner of the bench and bar, is nothing less than exaggeration if not illusion. It is bound to breed perpetual discrimination, which may wreck a catastrophe because woman have already provided their strength to impose prohibition through Arrack movement- and forced the Andhra Pradesh to go dry. No nation shall progress if it suffers pain in the neck nor might it claim honor among galaxy of nations if half of its population is cowed down officially or unofficial by the rest half.

INDIAN EVIDENCE ACT

2011-05-26T02:06:00.000-07:00

Indian evidence act contains a set of rules and allied issues governing admissibly of any evidence in the Indian courts of law originally passed by the British parliament. The Indian evidence act contains eleven chapters and 167 sections and came to force 1^st September 1872, during the time in which India was a part of British Empire. It was framed by sir James Fitz James Stephen .Now in this 21^st century law of evidence had become one of the most important laws administered by the Indian civil and criminal courts. It is playing an imperative role to determine the question of relevance or irrevalance of evidence that explicitly supports judgments.

The word, evidence is derived from the Latin word evidens or evidere, which means “ to show clearly; to make clear to the sight; to discover clearly; to make plainly certain; to ascertain; to prove”.

The main principle which underlie the law of evidence are-

(1) Evidence must be confined to the matter in issue;

(2) Hearsay evidence must not be admitted; and

(3) Best evidence must be given in all cases.

The evidence was classified into different types in the Indian evidence act……

(a) Best and oral evidence,

(b) Circumstantial evidence,

(c ) Direct evidence,

(d) Hearsay evidence,

(e) Corroborative evidence,

(f) Documentary evidence,

(g) Primary and secondary evidence,

(h) Real evidence

Oral evidence

Oral evidence perceived something by that sense by which it is capable of perception, should make the statement about it and no one else. It is explained under section 60 of the Indian evidence act. Oral evidence must, in all cases, whatever, be direct; that is to say; If it refers to a fact which could be seen, it must be the evidence of a witness who says he heard it; If it refers to a fact which could be heard, it must be the evidence of a witness who says he heard it; If it refers to a fact which could be perceived by any other sense or in any other manner, it must be the evidence of a witness who says he perceived it by that sense or in that manner;

If it refers to an opinion or to the grounds in which that opinion is held, it must be the evidence of the person who holds that opinion on those grounds - Provided that the opinion of experts expressed in any treatise commonly offered for sale, and the grounds on which such opinions are held, may be proved by the production of such treatise if the author is dead or cannot be found or has become incapable of giving evidence or cannot be called as a witness without an amount of delay or expense which the Court regards as unreasonable.

Real evidence

It is also explained under section 60 of the Indian evidence act

“Provided also that, If oral evidence refers to the existence or condition of any material things other than a document, the court may, if it thinks fit, require the production of such material thing for its inspection.” For e.g. weapons, scar of wounds or other injury like loss of leg or hand.”

Circumstantial evidence:

Circumstantial evidence means the evidence of circumstances and is sometimes referred to presumptive evidence:

A is charged with the murder of B. At the trial a witness C , on behalf of the prosecution, gives evidence that he saw A running away from the murder place, with blood stained knife in his hand, evidence given by C will be called circumstantial evidence.

Hearsay evidence:

The reasons why hearsay evidence is not received as relevant evidence are: (a) the person giving such evidence does not feel any responsibility. If he is concerned he has line of escape by saying” I do not know, but so and so told me.” (b) Truth is diluted and diminished with each repetition: and , (c ) if permitted, gives ample scope for playing fraud by saying,” someone told me that..” It would be attaching importance to a false rumor flying from one foul lip to another.

Corroborative evidence:

Sec 156 and 157 says: When a witness whom it is intended to corroborate gives evidence of any relevant fact, he may be questioned as to any other circumstances which he observed at or place at which such relevant fact occurred, if the court is of opinion that such circumstances, if proved, would corroborate the testimony of the witness as to the relevant fact which he testifies. A sees B hit by a car and run over. The car does not stop but A notes the number He lodges a complaint to police. Police arrests driver and put him for trial rash and negligent driving A is the principle witness, when he gives oral evidence but at the end, the complaint given by him to the police, shown to him regarding accident and if he says yes, it is marked as exhibit, it is corroborative evidence.

Documentary evidence:

Documentary evidence is defined in the Act as: All documents produced for the inspection of the court. The purpose of producing document, is to rely upon the truth of the statement contained therein .This involves, When the document produced in the court, the examination of three questions: (i) is the document genuine, (ii) what are its contents, and (iii) are the statement in the document true?

Documents are divided into two categories, public and private.

Sec 74- The following document are public documents..

(1) Document forming the acts or records of the acts-

Of the sovereign authority
Of official bodies and tribunal, and
Of public officers, legislative, judicial and executive, of any part of India or of the commonwealth, or of a foreign country;

(2) Public record kept in any State of private document.

The kind of documents that are mentioned in sec 74(2) are documents made between private parties, but a record of them is kept in the registration office under the registration act, for example wills and sale deeds.

Sec. 75 says –” all other documents are private.”

Sec 76. Certified copies of Public Documents - Every public officer having the custody of a public document, which any person has a right to inspect, shall give that person on demand a copy of it on payment of the legal fees there for together with a certificate written at the foot of such copy that it is a true copy of such document or part thereof, as the case may be, and such certificate shall be dated and subscribed by such officers with his name and his official title, and shall be sealed whenever such officer is authorized by law to make use of a seal, and such copies so certified shall be called certified copies.

Explanation - Any officer who, by the ordinary course of official duty, is authorized to deliver such copies, shall be deemed to have the custody of such documents or parts of the public documents of which they purport to be copies.

Primary and secondary Evidence:

There is an original document; a photograph is taken and a manuscript is made from the photograph, and compare either with the original or photograph. The original is primary evidence. The photograph and copy is secondary evidence coming under Sec 63(2). That requires that the first copy should have been made by a mechanical process ensuring the accuracy of the copy.

Section 65 specifies in what cases secondary evidence will be received. Example- when a original is shown or appear to be in possession or power- of the person against whom the document is sought to be proved, or of any person out of reach of, or not subject to, the process of the court, or of any person legally bound to produce it, and when, after the notice mentioned in sec 66, such person does not produce it. When the original document is lost or destroyed then secondary evidence of the contents of the document is admissible.

Admissibility of electronic records:

(sec 65 A and B) Any information contained in an electronic record which is printed on a paper, stored, recorded or copied in optical or magnetic media produced by a computer (computer output) shall be deemed to be also a document. Provided the computer output was produced by the computer during the period over which the computer was used regular or process information.

Direct evidence:

Direct evidence is referred to sometimes as original. A is charged with the murder of B by stabbing him. C,D.E,F,G and H are witnesses. At the trial a witness C says he saw A stab B. D says he heard B cry out that A was stabbing him. E says that A saw running with blood stained knife. F says he saw A washing blood stained clothes. G, who is doctor says that the knife found in A’s possession might be caused the wound. H says he heard from C’s evidence is direct evidence

Coming to conclusion the Indian evidence act This Act is not applicable for domestic tribunals (such as Industrial Tribunal, Administrative Tribunal etc.) and non-judicial proceedings (such as Departmental inquiries, affidavits presented to a Court etc., proceedings under defense discipline acts)tribunals do not follow law of law of evidence because they believe in natural justice.

Indian Evidence Act applies to both Civil and Criminal proceedings. However, some sections are applicable only to Civil, some only to Criminal and some to both. The Act has put more burden of proof on the prosecution to provide the guilt of the accused. The degree of proof required is stricter in criminal proceeding than in a civil proceeding. In a criminal proceeding, the accused must be proved beyond all reasonable doubts.

Summary on Passport Act, 1920

2011-05-25T01:48:00.000-07:00

Passport (Entry into India) Act, 1920 (No. 34 of 1920)

The Passport (Entry into India) Act was enacted in 1920.The main aim of the act was to take power to require the passports of persons entering in India and is extended up to the whole India. The entry prescribed in this act means entry through all the means either sea water or air. [1]This act under the power of central government makes strict provision to prohibit the entry of person to India from foreign countries without a passport.

The passport act 1920 also grant punishments of offenses under any rule or order made by this act is again convicted of an offense under this act shall be punishable with double penalty provided for the later offense. The Passport(Entry into India)Act,1920 also granted the power to police officers not below the rank of sub-inspector, and any officer of the customs department to arrest any person without warrant who has contravened any rule or order made under section 3 of Passport(Entry into India)Act,1920.[2]

The Central Government may, by general or special order, direct the removal of any person from India, who in contravention of any rule made under Section 3 prohibiting entry into India without passport, has entered there in, and thereupon any officer of the Government shall have all reasonable powers necessary to enforce such direction.

Vishnu Devaraj. J
3rd Semester Student
National University of Advanced Legal Studies
Kaloor, Kochi - 682 017

[1] 2. Definitions. In this Act unless there is anything repugnant in the subject or context, -
"Entry" means entry by water, land or air
"Passport" means a passport for the time being in force issued or renewed by the prescribed authority and satisfying the conditions prescribed relating to the class of passports to which it belongs; and
"Prescribed" means prescribed by rules made under this Act.

[2] 4.Power of arrest: (1)Any officer of police, not below the rank of a sub-inspector and any officer of the Customs Department empowered by a general or special order of the "[Central Government][7] in this behalf may arrest without warrant any person who has contravened or against whom a reasonable suspicion exists that he has contravened any rule or order made under section 3.

(2)Every officer making an arrest under this section, shall, without unnecessary delay, take or send the person arrested before a Magistrate having jurisdiction in the case or to the officer in-charge of the nearest police station and the provisions of section 61 of the Code of Criminal Procedure, 1898 (5 of 1898) shall, so far as may be, apply in the case of any such arrest.

Armed Forces Special Powers Act

2011-05-21T06:15:00.001-07:00

Armed Forces Special Powers Act was drafted in the year 1958 and as the title refers provides special powers to the armed forces of the Indian union in areas where the central government may notify as disturbed. Presently the act applies to the north-eastern states of Arunachal Pradesh, Assam, Manipur, Meghalaya, Mizoram, Nagaland and Tripura. At the wake of rising insurgencies in the state of Jammu and Kashmir during the 1980s the act was extended and applied in the state full fledged. The history of the original idea behind this act dates back to the colonial period when the British wanted an effective tool to control acts against the British Raj specially the quit India movement. The same model has been applied in this act to control insurgencies and therefore avoid secession of any state from these disturbed areas. Though the human rights violations are the only highlighted issues regarding the act, there has not been much mention on the flip side to the growing cry for the withdrawal of the act such as exposure of the army officials to any acts committed by them being termed as violation of human rights and a legal suit can be initiated and no army unit will work in a condition where there is no legal protection for its personnel and the worst case scenario being a state of anarchy prevailing in these states where the army refuses to fight. So a balance of convenience for both the people in these areas and also the army personnel should be maintained through a less repressive act. Getting into the details of the act, it provides for any army personnel posted in a disturbed area to:

“1."Fire upon or otherwise use force, even to the causing of death, against any person who is acting in contravention of any law" against "assembly of five or more persons" or possession of deadly weapons.

2. To arrest without a warrant and with the use of "necessary" force anyone who has committed certain offenses or is suspected of having done so

3. To enter and search any premise in order to make such arrests.

4. No legal consequences will be met by these officers who act under the law.

5. For an area to be declared disturbed there must be a deterioration of law and order situation in the area and the governor has the power to request the help of the central government to assist the state in maintaining it. Now the power to determine a disturbed area is also vested with the central government”

As a result of increasing pressure by the United Nations and protests carried out by local activists the Prime Minister has acknowledged that there are some ‘legitimate grievances’ against the act and assured that it will be surely dealt by the government. Upon this a five member committee headed by former justice Jeevan Reddy was constituted with a mandate of making recommendations to amend the provisions of the act to meet the government’s obligation of preserving human rights or repeal the act and bring in a new act with the above mentioned feature which it acknowledged the present act lacked. The committee did come up with the recommendation to repeal the act but without mentioning any substantial benefits for the people. The government till now have not acted on the recommendations and it was also made clear that it had no intention on replacing or diluting the act since an army unit cannot work under circumstances where its prone to legal action. It is also to be noted that the committee recognized that the act has been viewed as a symbol of repression by the union government. In numerous proceedings the courts have said that just because a statute has been abused by the officials under the act and it does not mean that the act should be repealed based only on that and the same applies to AFSPA. But the central government is slowly moving towards handing over the security issues of these states to locally raised forces. But it is uncertain how repressive will be their own security forces against them when it comes to eradicating cancerous insurgencies in the region.

Article by

Geejo Francis

3rd year student, LLB

School of Law,

Christ University,

Bengaluru

Plant Varieties Rights; A study in the light of TRIPS and UPOV

2011-05-10T01:09:00.000-07:00

Plant Varieties Right is a special kind of Intellectual Property Right. It indicates the right of breeder of a new variety plant from third party infringement. It is synonyms to Plant Breeder’s Right. It includes protection for plant components (e.g. specific genes or chromosomes), plant products (e.g. fruit, oils, pharmaceuticals), reproductive materials (e.g. seeds or cuttings), etc. The right excludes third parties from reproducing, consuming, selling, exporting, etc of the protected variety.

International Laws on Plant Varieties Right

Conventions of UPOV and TRIPS are the important sources of laws which are dealing plant varieties rights. In which, WTO’s TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement is accepted world wide. Article 27 to 34 of TRIPS Agreement is dealing with protection of plants. Article 27.3 (b) prescribes the member states of WTO to make laws for protection of plant varieties. Laws can be made either through patents or through an effective sui generis[i] law or through combination of these two.[ii]

TRIPS Art 27.3(b) “……However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof……”

The Article 27 is a controversial one because this same Article commanding on the member nations to keep away from patency rights on plant varieties. The provisions are as follows:

TRIPS Article 27.2 “Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre[iii] public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment,…”

TRIPS Art 27.3 “Members may also exclude from patentability:

(a)……..

(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes…..”

Discussions and reviews are still going on TRIPS Article 27. The Famous Doha Round Talks commenced on November 1, 2001, includes the issue review of Article 27 of TRIPS Agreement. Recently UK Prime Minister David Cameroon recommended that “the Doha round talks should finish by the end of this year (2011)” .[iv]

World Governments depends on TRIPS and UPOV for making laws in respect of protection of plant varieties. Even though, UPOV (International Union for the Protection of New Varieties of Plants) was an early attempt[v], till now it has 69 member nations only[vi].

Plant Varieties Rights in different countries

1) United States

United States is a member of UPOV and is also bound by TRIPS Agreement. It does not follow a sui generis system. Plant Variety rights in United States are carried on by Plant Variety Protection Act, 1970.It grants Plant Variety Protection Certificates. Unlike other nations, they provide patency for any living organism that is the product of human intervention (such as by some breeding process or laboratory –based alteration).[vii] They give grace period for patency of living organisms and after the period the right over product shall give for public. In case of farmers, they give limited exemptions. Farmers can protect seeds for replanting but not allowed to sell to a third party.

2) Australia

According to Australia, they accepted both TRIPS and UPOV mechanisms for patenting of plants. Plant Breeder’s Right Act (1994) is the Act which deals with this. They give short period of protection. There is no need of patency right for the use of variety for non commercial purposes. Plant Breeder’s Right Act is administered by Plant Breeder’s Right Office under the IP Australia.[viii]

3) European Union

The European Union has laws for Plant Varieties Rights at both national and Union level. People can acquire rights from any nation in the Union. CPVR (Community protection of Plant Varieties) enables people to get rights. But it is not possible to acquire rights from both national level and under CPVR[ix]. If both rights are granted to same variety then CPVR suspend national right for the said duration.

4) India

Under Art 27.3of TRIPS, as it prescribes for patents or sui generis system or combination of these two, India followed sui generis system. Many developing nations follow sui generis system which helps to makes laws according to their concept. China and Thailand are follows UPOV. Sui generis protection is weaker than patent protection, in that right holders can only prevent third parties from commercially exploiting the protected material.[x] India’s plant varieties rights are governed by Indian Protection of Plant Varieties and Farmer’s Right Act, 2001. Section 14 and 15(1) of the Act classifies plants into four main classes. They are new varieties, extant varieties, essentially derived varieties and farmer’s varieties. Section 15 strictly prescribes certain conditions for registering a new variety. They are novelty, distinctiveness, uniform and stability.

Indian Protection of Plant Varieties and Farmer’s Right Act, Section 15(1) “A new variety shall be registered under this Act if it conforms to the criteria of novelty, distinctiveness, uniformity and stability.”

Conclusion

There are laws for protection of Plant Varieties Rights in every nations but it need to be more democratic. For that purpose, laws shall be changed to balance between International Obligations, traditional knowledges and farmer’s right. We shall expect the International talks on this subject shall conclude with good recommendations for it.

Prepared by Jino M Kurian, final year student B.A.,LL.B,Kerala Law Academy Law College,Thiruvanathapuram.

ENDNOTES
[i] TRIPS does not define Sui generis but UPOV defines it. Sui generis generally means that it enables member countries to make their own laws for protect plant varieties.

[ii] Jayashree Watal, Indian Council For Research On International Economic Relations, Intellectual Property Rights In Indian Agriculture.

[iii]The word ‘Ordre’(Danish) means order

[iv] http://redo.me.uk/news/www.bbc.co.uk/news/business-12309484

[v] In 1961 by the Paris Convention

[vi]Status as on April 4,2011

[vii]Diamond v Chakarbarty (1980) 447 US 303)

[viii]Can IP protects Plants, article published in Bios, Cambia.

[ix]Can IP protects Plants, article published in Bios, Cambia.

[x] Jayashree Watal, Intellectual Property Rights in Indian Agriculture, page no.6

Whether I P Laws can act as a savior from food scarcity

2011-05-07T04:53:00.000-07:00

Intellectual Property Laws, can it act as a savior for billions of hungering people? This is one of the important issues to be discussed in the present world of law. Especially, in the context of the World Bank’s report that “global food production will have to double by 2050 to meet the rising demand”[i]. A highly efficient law can only save this world from such a big threat. IP Laws which is dealing with R&D, creation, trademarks, patents etc can be drawn in such a way to fulfill our intention.

Introduction of IP laws in agriculture is directly related to food production because third fourth of net food production is from agriculture sector.[ii] By the last 50 years many conventions and treaties are made by International Organizations relating to agriculture based IP Laws.[iii] Most of them liberalized global trade rules of agricultural products. Organization of farmers conducted struggles against it.[iv]They demanded for freedom in practice of agriculture. Those struggles were compelled legislatures to enact laws in favour of domestic food production.[v]

Merits of IP laws relating to food conservation

Commencement of new Intellectual Property laws encouraged private investors to begin research and studies in agricultural food production. Modern biotechnology is developing as a strong foundation for our food granary. Nanotechnology is one recent innovation of this. Some benefits are discussed below:

1) Specialized varieties of crop plants and seeds are developed.

2) New pest–control chemicals are invented for the agriculture sector.

3) Nutritional value of food products can be increased.[vi]

4) New mechanical equipments like crop planters and harvesters are invented.

Those innovations can greatly assist the farmers to achieve higher product yield and enhanced product quality[vii]. They are also examples of technologies those developments may require many years of research and testing. Patenting is helpful for investors to keep third parties away from their sector. This makes large profit for investors.

Challenges of the IP Laws relating to food conservation

1) Faults made by framers. Most of the agriculture related IP Laws are not capable to include all agriculture related areas. There exist legislative gaps. Trade secrets, human resource development,[viii] research etc shall include in Intellectual Property laws.

2) Private owners, who spend huge amount to develop specialized variety of seeds, plants, fertilizers, equipments etc, expect large economic profits from it. It adversely affects quality and quantity of yield.

3) Uncertainty of law can take the form of knowing the possible harms that may result from an activity i.e. the introduction of a new plant or animal into the environment. For example, when genetically modified canola was introduced onto the Canadian market, it was known that there was a strong likelihood that the canola would adventitiously grow outside the designated field. [ix]

4) Uncertainty of law may take the form of ambiguity, such that small groups of innovator’s may not aware about the value of their invention. They transact it at low rates of returns[x].

5) Harms hidden in new inventions may not foreseen even by a good scientist.

6) The lack of scientific expertise on the judicial bench.

These are because of the absence of an efficient law to protect research studies, human resource developments, patents, trade secrets etc in food production and related areas.

Suggestions to overcome the challenges

1) Bills shall be prepared after consulting an expert in contemporary agricultural science.

2) Public Institutions of the State shall conduct studies and share its benefits with the farmers e.g. Agriculture research Universities can conduct research studies. Their findings can be share with local farmers. New methods of cultivation, new varieties of seeds etc may be evolved.

3) Encourage partnership between Universities and private entrepreneurs in research.

4) Make more awareness of IP Laws among farmers.

5) Improve the working of PIPRA[xi] in each and every nation.

6) Include persons having scientific knowledge in judicial bench. It can be implement by giving preference to judicial officers having science background.

7) Make formalities and price of patency affordable to low class farmers. So that food production can be increased in more scientific way.

It can be conclude by remembering the words of Richard Jefferson[xii],he believes that “biotechnology can be used to benefit the poor and disenfranchised, but only if the R&D process is democratized so that everyone has access to critical scientific tools and technologies”[xiii]. We shall arise for a highly democratized Intellectual Property laws. Good governmental policies along with efficient laws, we could achieve our aim to increase food production and conserve the sources for tomorrow.

Prepared by Jino M Kurian, Student, fourth year B.A.,LL.B, Kerala Law Academy Law College, Thiruvanathapuram

ENDNOTES

[i] Michael R Taylor and Jerry Cayford RFF Report on American Patent Policy, Biotechnology and African Agriculture; The case for policy change, page no 9

[ii]Dr.Philippe Cullet, Food Security and Intellectual Property Rights in Developing Countries,IELRC Working Paper 2003 http://www.ielrc.org/content/w0303.pdf

[iii] WTO’s TRIPS, Doha Declaration, PGRFA treaty, treaties by FAO etc are few of them

[iv]Struggles against Basmati rice import in India, African Patent Issues, protest of ASEAN against Doha Declaration etc

[v]The Geographical Indication of Goods Act, 1999 of India, Plant Breeder's Rights Act 1994 of Australia, Federal law on Agriculture, 1998 of Sweden are examples

[vi]Dr.Philippe Cullet, Food Security and Intellectual Property Rights in Developing Countries, IELRC Working Paper

2003 http://www.ielrc.org/content/w0303.pdf

[vii]H. Maelor Davies, Ph.D. Director Kentucky Tobacco Research and Development Center University of Kentucky

article on Patents and Agricultural Biotechnology 2008 at page 1;

http://agribiotech.info/details/Daviespatentssent%20to%20web%2002.pdf

[viii]NAAS, Intellectual Property Laws in Agriculture, Paper policy, February 2003, page no 4

[ix]E. Richard Gold, Professor, McGill University Faculty of Law article on Intellectual Property Issues in

Agriculture and Agri foods published in Valgen Policy Backgrounder February 2011.

http://www.valgen.ca/wp-content /uploads/Gold-Richard-version-2-E-2011-01-27.pdf

[x] http://www.valgen.ca/wp-content/uploads/Gold-Richard-version-2-E-2011-01-27.pdf

[xi]http://www.pipra.org/

[xii]is the founder and CEO of Cambia, a Brisbane ,State of Queensland ,Australia

[xiii]interview with Richard Jefferson by Johanna Mair in Standard Social Innovation Review Spring 2011at pageno13

LEGAL SERVICES

INDIAN PHARMACEUTICAL INDUSTRY: AN OVERVIEW

2011-05-03T04:46:00.000-07:00

Indian pharmaceutical industry is considered to be one of the largest and fast growing industries among the developing countries of this century. The industry is now much advanced from its initial stage and is currently the fourth largest producer of pharmaceuticals and thirteenth largest in terms of domestic consumption globally. This industry employs millions of people and ensures that essential medications are available at affordable prices to the plurality of the country's population. The industry has earned tremendous achievements in the complicated field of drug manufacturing and technology. Almost all types of drugs are manufactured now in India.

During 1947 Indian drug market was utilized by the multinational companies basically importing drugs manufactured in their country. This has been done mainly due to the Patent and Designs Act of 1911. The act provided product patent for all inventions in India, but the MNCs being the patentees were controlling the industry's market in India. Under these circumstances they began to import finished formulations of drugs into the local Indian markets.

After independence in 1948, India promulgated her first industrial policy resolution including pharmaceutical industry as an essential industry in the country thereby bringing it under the central regulations. It was during these years that the National Chemical Laboratory at Pune and the Central Drug Research Institute at Lucknow were formed. Moreover, the inadequacy of indigenous technology hindered the production of modern drugs locally. Therefore the government invited FDI to enhance production. This created a situation wherein several major foreign subsidiaries were instituted in India within a short time span. Nevertheless, these foreign entities did not bring major investments to the country to enhance productivity instead they started importing bulk drugs processing it to formulations.

1947 to 1957

During this period India was proceeding with the western type patent legislation and acknowledged product patents along with process patent on drugs. A major portion of the pharmaceutical patents in the country was vested with MNCs outside India. They were distinctly benefited by the patent law, technology, financial resources and their brand names which helped them to clearly establish their monopoly in Indian markets resulting in a situation where drug prices were so high in India when compared to the rest of the world. It was in 1954 that the government established Hindustan Antibiotic Ltd. which is the first public sector drug manufacturing company in India. Later, government established Indian Drugs and Pharmaceutical Limited. These ventures did help to increase drug production and improve manpower, but the size of the national sector continued to remain very small.

1970-1985

Due to some very important strategies initiated by the government the pharmaceutical industry had undergone drastic changes during this time. Furthermore, the introduction of Drug Price Control Order of 1970 was a major step to slow down the multinational control over the industry and helped to boost a self-reliant traditional market. In addition the Drug Policy of 1978 enhanced the availability of drugs at a relatively reasonable price.

Even though the bill was proposed in parliament in 1967 the Act was enforced only in 1972. The Act did not allow product patent for chemicals, food and medicine. It provided process patents for 5 to 7 years and had helped the country to be self-sufficient in the manufacturing of basic drugs. Under these circumstances researches were done resulting in the development of new processes for numerous drugs and many manufacturing companies were established in India during that period. Besides, the DPCO limited the cost on drugs and was able to ensure that the lifesaving drugs were readily available in Indian market at affordable prices.

During the 1980s due to the introduction of some important industrial and trade policies by the government, India had become a major pharmaceutical producer meeting the country's domestic needs. Thereafter the domestic sector in the country had taken control of a considerable portion of the local market. Moreover it had become necessary that the indigenous drugs and pharmaceutical industry required reorientations to be more equipped with the situations arising out of the benefits of growing economy. Under these circumstances the government revised the Drug Policy and DCPO in 1986 and 1987 respectively. Later some important policy initiatives were declared in the Drug Policy of 1984.

India signed the general agreement on tariffs and trade on 1994 and became a party to the agreement on TRIPs joining the WTO. India also was a signatory to the Uruguay Round of General Agreement of Tariff and Trade (GATT) during that period. This created a situation wherein India had to bring its patent laws in compliance with the TRIPs agreement. Later India had to make several amendments and was undergoing a transition period for several years for a complete compliance of TRIPs.

The IP legal regime over Indian pharmaceutical industry

In January 1 2005 India in compliance with the TRIPs agreement has made a major amendment in Indian patent laws allowing product patents. This has had an important impact on the industry mainly on the pharmaceutical products and chemicals. This gave rise to serious issues effecting people's life and right of patent holders. After the amendment the industry had to face major competitions from multinational companies who manufactured patented drugs. Conventional branded generics which dominated the market had to face huge competitions from the multinational companies who produced patented drugs.

A clause in the TRIPs agreement permits the governments to exercise control over patents and provide indispensable drugs to the poor in certain circumstances. The government had introduced adequate legal provision to make sure the availability of medicines at a reasonable price through compulsory licenses. India's provisions for the compulsory licensing of drugs have been considered relatively broad when compared to most of the world's patent systems.[1] While the government was making every effort to comply with the TRIPs the availability of lifesaving drugs at a reasonable price in the local domestic market was even high. Furthermore, the MNCs have started their campaign to protect their rights from the emerging situations.

The impact of TRIPS agreement in Indian pharma industry basically involves two questions.

(a) The effect of IPR legislation under this agreement on public health.

(b) Its effect on the industry and the economy of the country.

The first question may give rise to a situation wherein the patent drugs would increase the cost of medicines in local markets and would lead to the non-availability of essential drugs to the common public and could damage public health. A counter argument would suggest that this may lead to encouraging research and production of new drugs through international investment.

The industry being highly fragmented involving numerous small investors who were very much depended on making generic drugs were more concerned about having the required capital and technology to support an invention of a new patented drug by themselves. As a result they apprehended that the market will divide in favor of foreign multinationals or major companies within the country. But the larger companies in the country were in support of the patent hoping that it will bring more foreign investment and stimulate joint activities. This was supported by the fact that the larger companies started initiating several R&D proceedings and have already started to attain patents. Under the present scenario within TRIPS, whether it’s an MNC or an Indian company, success or benefit depends on their continuous efforts and initiatives put forth in the field of developing innovative products and introducing new technologies.

India's new patent rule allows for both post opposition and pre-opposition procedures. Pre-grant opposition may be based on virtually all patentability criteria that can be challenged, including the lack of novelty, inventive step, utility, non-eligible subject matter, the failure to disclose the source of biological material used for the invention, and inventions which are considered traditional knowledge.[2] However, most MNCs consider this as a lengthy procedure in patent prosecution process which leads to uncertain outcomes. On one side Indian generic pharmaceutical manufacturers regarded pre-grant opposition to the new Patent's Act helps to prevent unwanted litigation and was using the procedure more frequently.

During the March 2005 debates of the 2005 Patent Amendments in the Indian Parliament, the issues regarding patentability of micro-organisms and the definition of 'pharmaceutical substance' were raised.[3] The Commerce and Industry Minister referred these issues to a technical expert group (TEG) for detailed examination.[4] The TEG issued its report in December 2006 and concluded that: (1) it would not be TRIPS-compliant to limit granting of patents for pharmaceutical substances to new chemical entities (NCEs) only; and (2) excluding micro-organisms per se from patent protection would be in violation of the TRIPS Agreement.[5] With regards to NCEs, the report stressed that every effort must be made to provide drugs at affordable prices to the people of India and to prevent the grant of frivolous patents and 'ever-greening'.[6] The TEG defined 'ever-greening' as 'an extension of a patent monopoly, achieved by executing trivial and insignificant changes to an already existing patented product' [7] Ever-greening' was to be distinguished from 'incremental innovation', which was 'encouraged by the Indian patent regime', and defined as 'sequential developments that build on the original patented product'[8].

In response to the report, public health groups voiced unease that the recommendations would encourage frivolous patents and threaten access to medicines [9]. On the other hand, many of the MNCs found that the report vindicated many of their concerns. However, the report was later withdrawn amid accusations that it had been plagiarized [10].

NOVARTIS'S CHALLENGE TO SECTION 3(d)

In 2006 the Swiss pharmaceutical company Novartis AG filed a complaint in Madras High Court seeking an order against the rejection of its patent application under s3(d) for its anti-cancer drug Glivec. The petition also challenged the constitutionality of s3(d) in breach of India's TRIPS obligations. The Madras High Court dealt with the issue of constitutionality and the issue related to the question of patentability was referred to the Intellectual Property Appellate Board. The Madras High Court ruled against Novartis holding that: (1) s3(d) is not unconstitutional; and (2) it did not have jurisdiction over the TRIPS issue, and the WTO would have to decide whether s3(d) is TRIPS-compliant [11]. The decision has precipitated a favorable reaction from India's generic pharmaceutical manufacturers and the world's public health community who feel that if the judgment had gone the other way, there would have been a dearth of affordable drugs in other nations [12]. However, Novartis have now moved the Supreme Court for refusing patent protection for its new drug Glivec following the footsteps of Roche. [13]

A panoramic view of Indian generic pharmaceutical industry reviles the changes through which it has emerged in the past years after the 2005 Patent Amendments and the pharmaceutical patent protections. As a result of that many of the Indian pharmaceutical industries have reinforced the IP legal system and have been constantly increasing their R&D efforts investing in new innovations. While 10 years ago Indian companies invested only about 1% of their revenue on research and development, many of those companies are now contributing much more capital to this goal, typically spending 6-8% of their turnover on R&D [14].

MNCs initially had been reluctant to set up their company in India inter alia due to the lack of patent protection. The present scenario adapted by the government in granting strong patent protection maybe one of the factors that changed the prior reluctance. Furthermore, the presence of MNCs in India with their research and technologies is growing day by day.

Conclusion

The commencement of pharmaceutical product patent recognition in 2005 has brought tremendous changes in the pharmaceutical industry in India. From the early stages of the post-patent period the industry had a long way to run up to the present stage. Research and development starting from reverse engineering paved the way to the development of new novel drugs and discovery of new research and technologies which are highly essential to safeguard the general health of the public, especially in a developing country like India.

Presently the Indian companies are trying to put a hand on the high profile generic market of the developed countries taking advantage of the favorable position accorded by the intensity in which several drugs in the US drug markets going off patent. The market has become the most remunerative markets for the Indian companies at present. The industry’s US FDI compliant also creates a favorable circumstance in the arena of contract manufacturing and R&D among other things which will certainly lead to tremendous growth and new technology innovations within the industry.

Sources:

[1] Mueller, supra note 4, at 107.

[2] 5 India Patents Act 1970 (2005) ss25(1)(a-k).

[3] RA Mashelkar, Report of the Technical Expert Group on Patent Law Issues, s1.1, Dec 06.

[4] Ibid.

[5] Ibid at ss5.16; 5.28 (emphasis in original).

[6] Ibid at s5.16.

[7] Ibid at s5.10.

[8] Ibid.

[9] www.hindu.com/2007/02/22/stories/2007022206751200.htm

[10]http://timesofindia.indiatimes.com/NEWS/India/Mashelkar_takes_back_report_after_plagiarism_row/articleshow/1653926.cms

[11] www.ip-watch.org/weblog/index.php?p=582&res=1280&print=0

[12]www.nytimes.com/2007/08/07/business/worldbusiness/07drug.html?ex=1187064000&en=3ecaa558b34ed0fa&ei=5123&partner=BREITBART

[13] Novartis challenges Glivec patent decision in Indian Supreme Court

[14] Mueller, supra note 4,at 7 nn 11-12.

http://www.scribd.com/doc/14803040/Industry-Analytics-Indian-Pharmaceutical-Industry

http://74.125.153.132/search?q=cache:8Q6RAmFGnSEJ:www.ris.org.in/Dp80_pap.pdf+%221704+drugs%22&cd=9&hl=en&ct=clnk&gl=in&client=firefox-a

http://www.managingip.com/Article/2282181/Multinationals-and-generics-fight-for-pharmaceutical-market.html

http://nopr.niscair.res.in/bitstream/123456789/3661/1/JIPR%2010(4)%20269-280.pdf

http://books.google.co.in/books?id=CeHdvmpVwdgC&pg=PA98&lpg=PA98&dq=social+effects+of+IP+regime+in+pharmaceutical+industry+india&source=bl&ots=B5l-DuXPAE&sig=SVkPmf5tVaps4ZGsbCxy24hD3bA&hl=en&ei=tS7tSqikBoLVkAWS1vGZDw&sa=X&oi=book_result&ct=result&resnum=8&ved=0CB4Q6AEwBw#v=onepage&q=&f=false

http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=24cedda7-28a3-4ac0-b100-ed9974123e67

LANHAM ACT: THE SCOPE OF TRADE DRESS PROTECTION

2011-04-14T01:54:00.000-07:00

Lanham Act, a popular name for the Federal Trademark Act of 1946 is the Act which deals with the federal statutes of trademark law in the United States. The Act inter alia precludes various sphere of action in the area of trademark usage like trademark infringement, trademark dilution etc. Among these comes another concept called "trademark dress." This is a concept which originated from the way a product is packed or a product's total image or appearance. It is distinctive, non-functional, and distinguishes a trader's or manufacturer's products or services from those of others.

Typically, trademark consists of only a set of words or a logo. On the other hand, Trade Dress includes appearances like size, color or combinations of color, shape, a product's packaging or atmosphere inside a store, restaurant etc. Moreover, trade dress encompasses both packaging and design of products.

The Act which was enacted in 1946 precluded a product's “false description or representation” by a “person who shall with knowledge of the falsity” put the product on trade. This Act did not refer to trade dress protection as such. Later on the courts extended protection granted under Section 43(a) of the Lanham Act to trade dress also basically creating a federal law to enhance fair trade practices.

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) is a landmark case in the history of trademark dressing in US. In 1987, Taco Cabana sued Two Pesos in the United States District Court of the Southern District of Texas for trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982 ed.) and for theft of trade secrets under Texas common law. The case was then put forward to a jury. The jury was asked to put forth its verdict by answering five questions promulgated by the trial judge. The answers to these questions were as follows:

1) Taco Cabana has a trade dress;

2) Taken as a whole, the trade dress is nonfunctional;

3) The trade dress is inherently distinctive;

4) The trade dress has not acquired a secondary meaning in the Texas market; and

5) The alleged infringement creates a likelihood of confusion on the part of ordinary customers as to the source or association of the restaurant's goods or services. [1]

In view of this verdict Taco Cabana's trade dress was safeguarded as it either was naturally unique or had derived a meaning which resulted in granting damages to Taco Cabana. Additionally, while calculating damages the court held that Two Pesos had intentionally and deliberately infringed Taco Cabana's trade dress.[2]

In Qualitex v Jacobson Products, 514 U.S. 159 (1995) court discussed trade dress protection in a different way. Qualitex's cleaning pads sold to dry cleaning establishments many years were green-gold in color. Jacobson Products started to sell pads of an identical color. The color was already registered by Qualitex as their trademark and they sued against Jacobson for infringement.

While considering the case the court took an opinion that color alone could be registered as a trademark. Furthermore, it was noted by the court that anything that could differentiate a provider can be registered which includes shape (of a bottle), sound (chimes or music), and odor (a particular fragrance). While presuming the above view the Court observed that color was nothing other than a distinguishing factor of a product and there was no reason to exclude color from that purview. To register color it must be distinctive and non-functional. As there is nothing essentially distinct about color, secondary meaning is a requisite to build up distinguishing element based on the aspect of color.

In order to make a color registrable it must be non-functional. If it has a function, inclusive of aesthetic function it will not be registrable. An example quoted by the Court was that of the competitors of John Deere farm equipment allowing painting their equipment green in spite of John Deere's trademark because farmers want their equipment to match. In addition the court enunciated a list with regard to the trademarks that stands above the trade dress protection. Those are:

     1. § 1124 (ability to block importation of confusingly similar goods).

     2. § 1072 (constructive notice of ownership).

     3.   § 1065 (incontestable status)

4. § 1057(b) (prima facie evidence of validity and ownership. [3]

The decision was reviewed by the Supreme Court of United States in Wal-Mart Stores v Samara Bros., Inc. (99-150) 529 U.S. 205 (2000). The Court decided on the circumstances under which a product’s design can be distinctive, and conditions under which it is entitled for protection where an action for infringement of unregistered trade dress under §43(a) of the Trademark Act of 1946 (Lanham Act) take place. Court held that product design, like color, is not inherently distinctive.

The Lanham Act provides for the registration of trademarks, which it defines in §45 to include:

“any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer’s] goods … from those manufactured or sold by others and to indicate the source of the goods … .” 15 U.S.C. § 1127.

Registration of a mark under §2 of the Act, 15 U.S.C. § 1052 enables the owner to sue an infringer under §32, 15 U.S.C. § 1114; it also entitles the owner to a presumption that its mark is valid, see §7(b), 15 U.S.C. § 1057(b), and ordinarily renders the registered mark incontestable after five years of continuous use, see §15, 15 U.S.C. § 1065.

In addition to protecting registered marks, the Lanham Act, in §43(a), gives a producer a cause of action for the use by any person of “any word, term, name, symbol, or device, or any combination thereof . . . which … is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods . …” 15 U.S.C. § 1125(a). [4]

The Supreme Court held that "the breadth of the definition of marks registrable under §2, and of the confusion-producing elements recited as actionable by §43(a), has been held to embrace not just word marks, such as “Nike,” and symbol marks, such as Nike’s “swoosh” symbol, but also “trade dress”–a category that originally included only the packaging, or “dressing,” of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product. See, e.g., Ashley Furniture Industries, Inc. v. Sangiacomo N. A., Ltd., 187 F.3d 363 (CA4 1999) (bedroom furniture); Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (CA2 1995) (sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780 (CA8 1995)." [5]

Distinctiveness is the most important aspect of the trade dress protection. It can be either acquired or inherent. It is pertinent to have distinctiveness of trade dress in claiming a "secondary meaning” where it is can be associated with not more than one specific brand. A design to be inherently distinctive should be unusual in shape, color etc when introduced in the market that is essentially distinct from others. Whereas, acquired distinctiveness is something that is acquired by a design through marketing, advertising, promotions etc. It is a "look" that consumers associate with a particular product's brand identity. Demonstration of such association by a consumer survey or other means can provide the "look" a secondary meaning. [6]

It can be concluded from the above discussions that while implementing trademark and related rights such as trade dress one must constantly be aware of the necessity to trade successfully and to maintain proof of ones marketing. By doing so one may acquire secondary meaning, which is the key aspect of trade dress protection. The more distinctive is the selection of mark and packaging design is, the better will be ones chances to claim protection to trade dress.

Submitted by

Vinitha Prasannan

http://yarbroughlaw.com/Publications/pubs%20patent2%20Recent%20Developments%20in%20Trade%20Dress.htm

PARODY: HOW FAR A PROTECTED SPEECH

2011-04-12T03:29:00.000-07:00

“You can parody and make fun of almost anything, but that does not turn the universe into a caricature”[1]

Unlike other forms of freedom of speech guaranteed under the First Amendment, parody and satire plays a paramount role in dome of trademark and copyright. The dichotomy of the terms “parody” and “satire[2]” has been considered and defined by various jurists under enormous circumstances.

Parody and its meaning:

Black’s law dictionary defines the word “parody” as “A transformative use of a well-known work for the purposes of satirizing, ridiculing, critiquing, or commenting on the original work, as opposed to merely alluding to the original to draw attention to the later work.” The origin of parody lies in the definition of the Greek parodeia, quoted in Judge Nelson’s Court of Appeals dissent, as “a song sung alongside another.” [3] Dictionaries has been describing parody as a “literary or artistic work the imitates the characteristic style of an author or a work for comic effect or ridicule” or as a “composition in prose or verse in which the characteristics turns of thought and phrase in an author or class of authors are imitated in such a way as to make them appear ridiculous.”[4]

In spite of its criticizing or ridiculing characteristics, a parody is guaranteed constitutional protection of free speech under the First Amendment of the US constitution. In Constitutional Law, a parody is protected as free speech. When considering parody under copyright law, a particular work is required to come under the definition of a parody and at the same time shall be a fair use of the copyrighted material, if not, it may constitute an infringement. This article provides an insight on the aspects related to the use of parody as a defense under free speech and the consequential rulings by various courts in the subject matter.

Legitimacy of parody:

It is a fact that a parody can claim legitimacy to some extent regardless of its copying and commenting nature, but this does not give either the parodist or a jurist about an idea as to the invisible line to be drawn that makes it illegitimate. For example, book reviews necessitates quoting of a copyrighted material for the purpose of criticizing, whereas a parody may possibly be a fair use considering the context and elements that constitute it. While considering a case,[5] the court declined the petitioner’s contention that any parodic use is presumably fair and stated that this has no more justification in law or on fact than the equally hopeful claim that the use for news reporting should be presumed fair.[6]

The Act does not provide any proposal of favoritism over the victim for the parodists when it comes to evidence, and no practical presupposition for parody could be taken into account of the fact that a parody typically shadows into satire whilst the public is ridiculed by its inventive artifacts, or that such artifacts may have both parodic and nonparodic essentials. For that reason, like any other use, parody has to toil its line of attack through its pertinent features, and be adjudicated on a case by case basis, under the realm of trademark and copyright law.

Elements of parody:

In order to constitute parody there shall be certain distinguishing elements to the action of the parodists. The important features include an original work that is famous or familiar to a certain class of public. The parodists shall use only that much of the original work that is indispensable in the context in order to bring in the minds of the public the original work. Further, the parody shall subsequently become a fresh and original work.

When a work aims another work in a hilarious or satirical way, it constitutes a new creative work. This new creative work is capable to fight with other creative works in identical market even though they possess common characteristics. But the fact that a parody is an independent innovative work can be established only when it "make some critical comment or statement about the original work which reflects the original perspective of the parodist—thereby giving the parody social value beyond its entertainment function." Metro-Goldwyn-Mayer, Inc. v. Showcase Atlanta Cooperative Productions, Inc., 479 F. Supp. 351, 357 (ND Ga. 1979).

Trademark parodies

As the court observed in Anheuser-Busch, Inc. v. Balducci Publications 1993, p.794-5) "trademark parody is a subspecies of the genre that pokes fun at or criticizes a business entity by spoofing the entity's trademark. Trademark parody is only effective if the mark is well-known and the parody is enough like the original to invoke an association.... Thus, trademark parodies raise a legal tension not unlike that addressed by the fair use doctrine of copyright law; a tension between the legitimate property rights of the trademark owner and the rights of the parodist to free expression"

While putting forward the above mentioned view, the Court considered the case Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591, 114 S.Ct. 1164, 1178 (1994) and concluded that the opinion of U.S. Supreme Court in the copyright case was an important guide for cases related to trademark parody. The court further stated that for a trademark parody to be successful, it must call up the original. "A parody must convey two simultaneous--and contradictory--messages: that it is the original, but also that it is not the original and is instead a parody" (Elvis Presley Enterprises v. Capece 1998, p. 199).

Furthermore, it is an established fact that "Trademark parodies, even when offensive, do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987) (per Bownes, J.). For the purpose of good defense in a case alleging infringement, a trademark parody needs to be used properly.

In re Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591, 114 S.Ct. 1164, 1178 (1994) (Souter, J.) court stated as follows: "We do not, of course, suggest that a parody may not harm the market at all, but when a parody, like a scathing theater review, kills demand for the original, it does not produce a harm cognizable under the Copyright Act. Because 'parody may quite legitimately aim at garroting the original, destroying it commercially as well as artistically,' the role of the courts is to distinguish between 'biting criticism that merely suppresses demand and copyright infringement, which usurps it.' "

Court had opined that trademark parodies convey a message even when they are offensive. It may remind us that trade and artifact metaphors are not required to be taken critically; for that matter a trademark parody remind us of the fact that “we are free to laugh at the images and associations linked with the mark." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987) (per Bownes, J.).

Parody and commercial speech:

While considering issues related to commercial speech, the courts had developed a four-part analysis. To start with, one must resolve whether the parodist’s expression gain protection under the First Amendment. To constitute commercial speech in that provision, the expression must not be misleading and it must relate to a lawful activity. Then, one must consider whether the declared interest of the government is substantial. When both these above mentioned aspects give affirmative answers, one must decide whether the law directly advances the declared interest of the government, and whether it is not more far-reaching than is required to provide that interest. 447 U.S. 557 100 S.Ct. 2343 65 L.Ed.2d 341 Central Hudson Gas & Electric Corporation, Appellant, v. Public Service Commission of New York.

Infringement criteria:

Both federal and state laws clearly establish the fundamentals for a successful trademark infringement claim. To sum up, when contesting a trademark case, a plaintiff has the burden to prove that the defendant’s act of using its mark has brought up a likelihood of confusion with regard to the In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created a likelihood-of-confusion about the source of the defendant's goods or services.

To prove the above aspect, a plaintiff must initially establish that its trademark is protectable. Further, the plaintiff will have to show that the defendant’s use of the trademark is confusingly similar and creates likelihood of confusion, among public. In the case of parody, the parody and the original work have to have that distinction and the public has to distinguish between the original and the parodic element the parodist intend to convey. When there is confusion, it can make the public believe that the defendant’s artifacts are somehow associated, connected, approved or authorized with the plaintiff or it is the same as that of the plaintiff.

Likelihood of confusion:

The courts have put forward eight factors to determine the elements of likelihood of confusion. This aspect is applicable in the case of parody also. In order to analyze whether a certain incident constitute the indispensable elements of "likelihood of confusion," courts usually look into eight factors as described below:

1. The resemblance or similarity created by two marks when taken as a whole. (this aspects include the look of the marks, phonetic similarities, and fundamental meanings);

2. The goods and services involved and their similarities (this include a review of the advertising channels for the goods);

3. The potential strength of the plaintiff's mark;

4. Evidence of actual confusion by the consumers, if any;

5. The defendant’s intent in adopting its mark;

6. The goods and its physical proximity in the retail marketplace;

7. The likelihood of the consumer in exercising a degree of care; and

8. The possibility of growth of the product lines.

The courts usually examine the above mentioned first five aspects when considering a trademark infringement case. The last three factors are, for the most part, additional general factors that courts can be consider.

To conclude, there is "a need to evoke the original work being parodied.[7]" Nonetheless, a good parody clearly stay away from causing likelihood of confusion as its intent is to highlight the difference between the host work and it’s parody. If the parodist fails to establish a clear distinction as mentioned above, the parody is no more a parody and it miserably fails.

Bernard Berenson quotes (American art critic, 1865-1959)

Satire has been defined as a work “in which prevalent follies or vices are assailed with ridicule” 14, supra at 500 Oxford English Dictionary

972. F. 2d, at 1440, quoting 7 Encyclopedia Britannica 768 (15th ed. 1975).

11 Oxford English Dictionary 247 (2d ed. 1989)

Harper & Row, 471 U. S., at 561

Ibid

Campbell v. Acuff-Rose, Inc. 1994

ADVERTISEMENT LAWS OF INDIA- ITS TIME FOR A UNIFORM LEGISLATION

2011-04-05T02:53:00.000-07:00

“Advertising is the foot on the accelerator, the hand on the throttle, the spur on the flank that keeps our economy surging forward”

Robert W. Sarnoff

We live in the era of globalization where new products are being marketed within a splash of time. So in this competitive environment, every representation of a product or service is unique and is all about what ‘others are not’. These practices indeed raise questions about truthfulness and fairness of representation of products and services. If a person is about to start a business, even it’s a product or service or magazine or newspaper, the first thing he look into it is how he can market it. The basic idea behind advertising is that it is just a presentation, which may be oral or written, to induce consumption to make people buy things which they actually do not want. When it comes to India, advertising has a profound impact on how people understand life, the world and themselves, especially with regard to their values, choices and behavior.

It is a naked truth that advertising is a business strategy which is in fact a powerful tool for enhancing, maintaining and developing brand equity. Therefore, it is crucial enough for companies to protect the content of an advertisement and to ensure that it is in line with the applicable laws. Even now many won’t realize the fact that which are the applicable laws governing advertising in India. At this point of time, it is pertinent to note that as far as India is concerned there is no as such law is there for regulating advertisement in any media. All one has to look into is a series of legislations and regulations relating to advertisements. But the fact is a common man should show pretty good amount of patience by going through all these rules and regulations as these will not as such constitute a complete structure on what one has to abide on the matter of advertisements.

ADVERTISING LAWS OF INDIA

As mentioned earlier the Government of India has not set up a regulatory body in India to regulate advertisements. But as in due course depending on the nature of the grievances, the power to regulate advertisements may be exercised by a vast variety of authorities, including the courts, Central and State Governments, tribunals or the police authorities. In addition to that numerous legislations also deal with advertisement provisions in part not in toto unfortunately. The rules, regulations and legislations include the following:-

1. Advertising Standards Council of India (ASCI)

2. Constitution of India

3. Consumer Protection Act, 1986

4. Information Technology Act, 2000

5. Indian Penal Code, 1860

6. The Young Persons (Harmful Publications) Act, 1956

7. Indecent Representation of Women (Prohibition) Act, 1986

8. The Cigarettes and other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003

9. The Cigarettes (Regulation of Production, Supply and Distribution) Act, 1975

10. The Drugs and Magic Remedies (Objectionable Advertisements) Act, 1955

11. The Drugs and Cosmetics Act, 1940

12. The Emblems and Names (Prevention of Improper Use) Act, 1950

13. Securities and Exchange Board of India (SEBI) (Stock-brokers and Sub-brokers) Rules, 1992 - Code of Conduct for Stock-brokers

14. Securities and Exchange Board of India (SEBI) (Prohibition of Fraudulent and Unfair Trade Practices relating to Securities Market) Regulations, 1995

15. Securities and Exchange Board of India (SEBI) (Mutual Funds Regulation), 1996: SEBI Guidelines for Advertisements by Mutual Funds

16. Securities and Exchange Board of India (SEBI) (Disclosure and Investor Protection Guidelines), 2000

17. The Prenatal Diagnostic Techniques (Regulation and Prevention of Misuse) Act, 1994

18. The Transplantation of Human Organs Act, 1994

19. The Representation of the People (Amendment) Act, 1996

20. The Lotteries (Regulation) Act, 1998

21. The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992

22. The Competition Act, 2002

23. The Contract Act, 1872

24. The Civil Defense Act, 1968

To scrutinize certain principles and fairness in the sphere of advertising, Advertising Standards Council of India was established in India in 1985. ASCI deal with complaints received from consumers and industry against such advertisements which are false, misleading, indecent, illegal, leading to unsafe practices or unfair to competition and are in contravention to the advertising code[1]. Even though there is no as such provision for regulating advertisement policy in the Constitution of India, which should be adopted by press or media, the Supreme Court has given guidelines for the same through a series of decisions[2].

Consumer Protection Act, 1986 provides better protection of the interests of consumers and to make provision for the establishment of consumer councils and other authorities for the settlement of consumers' disputes and for matters connected to it, including protection against unfair trade practices.[3]

India is one of the very few countries in the world besides Singapore to have legislated Cyber laws.[4] The IT Act specifically empowers that anyone who publishes in the electronic form, any material which is lascivious or which tends to degrade persons who are likely to read, see or hear the matter contained or embodied in it, shall be punishable with imprisonment and fine[5]. Even there is a provision in the IT Act, which applies to any offence by which any person shall be punished irrespective of his/her nationality if the act constituting the offence involves a computer, computer system or computer network located in India[6].

As per the provisions of Indian Penal Code, 1860 certain advertisements are considered as criminal offences. It is dealt under different provisions of the Code[7]. The Young Persons (Harmful Publications) Act, 1956 prevents the dissemination of certain publications harmful to young persons. To be more précised harmful publication indicates such publications which would tend to corrupt a young person whether by inciting or encouraging him to commit offences. The Act also proclaims that whoever advertises or makes known by any means that any harmful publication can be procured from or through any person, then he shall be punished with imprisonment or with fine, or with both[8].

Indecent Representation of Women (Prohibition) Act, 1986 prohibits indecent representation of women through advertisements[9] or in publications, writings, paintings, figures or in any other manner and for matters connected therewith or incidental thereto. The Cigarettes and other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 and the Cigarettes (Regulation of Production, Supply and Distribution) Act, 1975, states that no person shall advertise for the distribution, sale or supply of cigarettes, and also shall not take part in the publication of such advertisement, unless the specified warning is included in such advertisement[10]. The Drugs and Magic Remedies (Objectionable Advertisements) Act, 1954 (DMRA) controls the advertisement[11] of such drugs which is said to provide magical remedies and to deal with other matters relating to it.

As per the Drugs and Cosmetics Act, 1940 (DCA), no person shall himself or by any other person on his behalf offer for sale[12] any drug or cosmetic which is not of a standard quality, or is misbranded, adulterated or spurious. The Act gives similar restrictions to advertisements for traditional drugs such as Ayurvedic, Siddha and Unani. The Emblems and Names (Prevention of Improper Use) Act, 1950 is enacted to prevent the improper use of certain emblems[13] and names, for professional and commercial purposes[14].

In the exercise of the powers conferred by section 30 of the Securities and Exchange Board of India (SEBI) Act[15], 1992, the Board makes the regulations on the code of conduct for Stock-brokers to be known as SEBI Stock-brokers and Sub-brokers Rules in 1992. The provisions of the Rules specified that a stock-broker or sub-broker is prohibited from advertising his business publicly unless permitted by the stock exchange, including in their internet sites, by its subsidiaries, group companies etc. The Prenatal Diagnostic Techniques (Regulation and Prevention of Misuse) Act, 1994, contains provision[16] which prohibits advertisements relating to predetermination of sex. The Act provides for the prohibition of advertisements of any kind for any body or person pertaining to facilities for pre-natal diagnosis of sex available at any centre or place.

The Transplantation of Human Organs Act, 1994 provides for the regulation of removal, storage and transplantation of human organs for therapeutic purposes and for the prevention of commercial dealings in human organs and for matters relating to it[17] and provisions are there for the punishment for commercial dealings in human organs.[18] While detailing the provisions of the Representation of the People (Amendment) Act, 1951 (RPA)[19], it is observed that during the period of forty-eight hours before the conclusion of the poll for any elections in that polling area, a person shall not display to the public any election matter by means of cinematograph, television or other similar apparatus[20]. The statute even provides penalty for anyone including the advertisers who contravene the above provision with imprisonment or fine or with both.

Now when we analyze the Lotteries (Regulation) Act, 1998, it is seen that a State Government has the discretionary powers to organize, conduct or promote a lottery, including advertising thereof subject to some conditions[21] specified in the Statute. It is also provided that the State Government may prohibit within itself the sale of tickets of a lottery organized, conducted or promoted by every other state[22]; if any contravention on the above the Central Government may, by order published in the Official Gazette, prohibit a lottery organized, conducted or promoted thereof[23]. The penalty[24] clause of the Act is such that if any person acts as an agent or promoter or trader in any lottery organized, conducted or promoted in contravention of the provisions of the Act or sells, distributes or purchases the ticket of such lottery, he shall be punishable with imprisonment or with fine or with both.

In online advertising scenario, the law related to gambling is applicable to online gambling. The online lottery is the most popular form of internet gambling in India. Most companies who markets/distributes/conducts the state government-sponsored lotteries through the internet are restricted from selling their services in the states that banned lotteries. So it is advised that the companies (as a safeguard) seek an undertaking from their consumers relating to their residence under which the advertisers who publishes the same should also make a note of it.

The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992[25] as Amended in 2003 regulates the production, supply and distribution of infant milk substitutes, feeding bottles and infant foods with a view for protecting and promoting breastfeeding and for the matters relating to it including advertisement[26] of the same[27]. The Competition Act, 2002 provides prohibition of certain agreements in respect of production, supply, distribution, storage, acquisition or control of goods or provision of services, which causes or is likely to cause an appreciable adverse effect on competition within India[28].

The provisions of Trademarks Act, 1999 clearly emphasize that the following are considered as trademark infringement if it is advertised in such a way as to[29]:-

a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

b) is detrimental to its distinctive character; or

c) is against the reputation of the trade mark.

Thus if used properly and without any malafide intention, then comparative advertisement can prove beneficial otherwise that may mislead consumers resulting into irreparable loss as well as legal battles[30].

As per the Contract Act, 1872, the advertisements for gambling, lottery and prize games have held to be wagering contracts and thus void and unenforceable[31], are prohibited in India. While reading the provisions of the Act along with the ASCI guidelines it is understood that even the incorporation of a visual representation of such gaming room or table could be construed as indirect advertisement.[32]

The Civil Defence Act, 1968 gives power to the Central Government to make rules for securing civil defence[33] for prohibiting the printing and publication of any book or other document containing matters prejudicial to civil defence[34]. Rules could also be made for demanding security from any press used for the purpose of printing/publishing of any book or other document containing matters prejudicial to civil defence[35].

ITS TIME FOR A UNIFORM LEGISLATION!!!!

It is an undisputed fact that advertisement plays a vital role in building up any business. The aim of advertisement is to attract the sales and enhance the visibility of the products and services of the company among the consumers. Through an advertisement, a company can build an image which it wants to make in the minds of the people. Therefore, nowadays, companies spend a huge amount of their resources on advertising and promotional strategies. Now there is even a new medium for advertisers to explore, the Internet!!!

Thus it is evident from this blog that there are no specific legislations governing advertising in India, other than ASCI even which is not up to the mark to govern advertising spectrum. The changing context of liberalization and globalization required better regulation and strengthening of the institutional support. Even the IT Act is currently under severe scrutiny, as its scope leaves a lot to be desired. The fast growing internet transactions has unnerved evils, including those relating to online advertising. It is evident that all that is needed a codified uniform legislation for Advertising Laws and its time for India to lead the road ahead!!!!!!

[1]See http://www.ascionline.org/ for Advertising Code. The ASCI Code is a self-regulatory code which is not legally binding on parties. However, in practice ASCI members include various media, publishers etc. who normally abide by decisions of the Complaint Complaints Council set up by ASCI. The ASCI Code covers all media including the online media. Please also refer to the section on General Requirements. Disobedience of ASCI’s decision does not lead to any civil or criminal consequences. Its enforcement mechanism is through non-publication of the contravening advertising by its media members.

[2] Hamdard Dawakhana v. Union of India AIR 1960 SC 552; Tata Press Ltd. v. Mahanagar Telephone Nigam Ltd (1995) 5 SCC 139.

[3] As the Monopolistic and Restrictive Trade Practices Act, 1984 is repealed after the coming into force of Competition Act, 2002 the unfair trade practices provisions of the MRTP Act will be enforced under the Consumer Protection Act.

[4] Guide to Cyber Laws (Information Technology Act, 2000, E-commerce, Data Protection & the Internet, Rodney D. Ryder, 2^nd Edn. Reprint 2005, p.399.

[5] Section 67 of the IT Act, 2000

[6] Section 75 of the IT Act, 2000

[7] Section 292 (1) of Indian Penal Code, 1860; Section 292(2)(d) of Indian Penal Code, 1860; Section 292 (2)(e) of the Indian Penal Code, 1860; Indian Penal Code, 1860, Section 292- Exceptions, Section 292 A of Indian Penal Code, 1860; Section 292 A (e), (d) of Indian Penal Code, 1860; Section 293 of IPC, 1860; Section 294 A of IPC, 1860, Section 153 A of IPC, 1860, Section 153 B of IPC, 1860

[8] Section 3 of the Harmful Publications Act, 1956

[9] Section 2(a) of the Indecent Representation of Women (Prohibition) Act, 1986 defines advertisement- "Advertisement" includes any notice, circular, label, wrapper or other document and also includes any visible representation made by means of any light, sound, smoke or gas.

[10] Section 5 (1), the Cigarettes and other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 (CTPA)

[11] Section 2(a) of the Drugs and Magical Remedies (Objectionable Advertisements Act), 1954 defines " advertisement " includes any notice, circular, label, wrapper, or other document, and any announcement made orally or by any means of producing or transmitting light, sound or smoke;

[12] Section 18 of the Drugs and Cosmetics Act, 1940

[13] Section 2(a) of the Emblems and Names (Prevention of Improper Use) Act, 1950 defines emblem as any emblem, seal, flag, insignia, coat-of-arms or pictorial representation specified in the Schedule.

[14] Schedule of the Emblems and Names (Prevention of Improper Use) Act, 1950 enumerates the list of emblems and names which are prohibited from improper use in professional and commercial purposes.

[15] Visit http://www.sebi.gov.in/acts/act15ac.html

[16] Chapter VII Prenatal Diagnostic Techniques (Regulation and Prevention of Misuse) Act, 1994

[17] Preamble of The Transplantation of Human Organs Act, 1994

[18] Chapter VI, Section 19 of The Transplantation of Human Organs Act, 1994

[19] Section 126 of The Representation of the People (Amendment) Act, 1951 (RPA)

[20] Section 126 A is inserted in THE REPRESENTATION OF THE PEOPLE (SECOND AMENDMENT)

BILL, 2008 which provides a person shall not conduct any exit poll and publish or publicise by means of the print or electronic media or disseminate in any other manner, whatsoever, the result of any exit poll during such period, as may be notified by the Election Commission in this regard. For the purpose of this section, ‘‘electronic media’’ includes internet, radio and television including Internet Protocol Television, satellite, terrestrial or cable channels, mobile and such other media either owned by the Government or private person or by both;

[21] Section 4 of the Lotteries (Regulation) Act, 1998, the conditions includes the following:-

a) Prizes shall not be offered on any pre-announced number or on the basis of a single digit;

b) The State Government shall print the lottery tickets bearing the imprint and logo of the State in such manner that the authenticity of the lottery ticket is ensured;

c) The State Government shall sell the tickets either itself or through distributors or selling agents;

d) The proceeds of the sale of lottery tickets shall be credited into the public account of the State.

e) The State Government itself shall conduct the draws of all the lotteries;

f) The prize money unclaimed within such time as may be prescribed by the State Government or not otherwise distributed, shall become the property of that Government;

g) The place of draw shall be located within the State concerned;

h) No lottery shall have more than one draw in a week;

i) The draws of all kinds of lotteries shall be conducted between such periods of the day as may be prescribed by the State Government.

j) The number of bumper draws of a lottery shall not be more than six in a calendar year;

k) Such other conditions as may be prescribed by the Central Government.

[22] Section 5 of the Lotteries (Regulation) Act, 1998

[23] Section 6 of the Lotteries (Regulation) Act, 1998

[24] Section 7(3) of the Lotteries (Regulation) Act, 1998

[25] The Act is named as The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992 as Amended in 2003 (IMS Act) visit http://www.bpni.org/docments/IMS-act.pdf

[26] Section 2(a) of The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992 as Amended in 2003 (IMS Act): “advertisement” includes any notice, circular, label, wrapper or any other document or visible representation or announcement made by means of any light, sound, smoke or gas or by means of electronic transmission or by audio or visual transmission;

[27] Preamble of The Infant Milk Substitutes, Feeding Bottles and Infant Foods (Regulation of Production, Supply and Distribution) Act, 1992.

[28] Chapter II of the Competition Act, 2002

[29] Section 29(8) of Trademarks Act, 1999.

[30] Reckitt Benckiser v Hindustan Lever 2008 (38) PTC 139; Pepsi Co Inc v Hindustan Coca Cola Ltd 2003 (27) PTC 305 (Del)

[31] Section 24 to 30 of the Indian Contract Act, 1872.

[32] Chapter III, Clause 6(d) and (e) of the ASCI Code.

[33] Chapter II of the Civil Defence Act, 1968

[34] Chapter II, Section 3(1)(w) of the Civil Defence Act, 1968

[35] Ibid, n.122

TRADE MARK: CROSSBORDER REPUTATION - CONFLICTS

2011-04-03T23:49:00.000-07:00

With the passage of time our entire world has become almost like a big city in view of the tremendous advancements made in the field of today's technology. Today's world is a world of computers and internet, which are the basis of our technological achievements. These achievements are reflected in the field of transport such as railways, ships, and airlines also.

In the current era, if a particular product is launched in a country its goodwill and reputation, which is the sole authority of the seller that he attained by selling his products in the market, is not limited to the four corners of that particular country. The status and benevolence of those goods are of inherent importance and shall reach to every nook and corner of the world through magazines, newspapers, television, telephone, cinemas and Internet. Thus it is a known phenomenon that when a commodity hits the market of a particular country anywhere in the world its trade mark surpasses the physical frontier of a geographical region and gains a trans-border or extraterritorial reputation even though it is not imported to that particular country. This happens because in today's world the information about the goods of an overseas trader and his product trade mark is available in any region where his goods are not being imported and therefore not being used.

This is where the importance of protecting trans-border or spillover of international trademark reputation of foreign companies arise. As the passing over of time and technology it has become imperative to recognize and protect such intellectual property rights among countries around the globe. Cross-border reputation, has its origin under the English law and is put forth in Section 35 of the Indian Trade Mark Act, 1999 by which the courts in India have recognized action by overseas plaintiff on the basis of passing off exclusively upon the reputation or status of his goods or services on the foreign land

Indian courts have protected such trans-border or spill over international trade mark reputation by way of various significant precedents. A Supreme Court judgment in 1996 clearly established that international companies that have an international trademark and enjoy a cross border reputation outside of India, can protect their IPR in India without the need of having an actual presence in India.[1]

In re N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583 (SC) the court considered the doctrine of "cross-border reputation" for the first time in detail. The plaintiff herein had registered their trademark Whirlpool in India in 1977. Nevertheless, the renewal of the mark had not been done after the expiry date. The said mark had a world-wide reputation and the defendant had been using this mark on their washing machines. The plaintiffs sold some of their machines to the US Embassy in India. They have made advertisements in quite a few internationally circulating magazines also which had circulation in India. As a result the plaintiff moved to file a suit against the defendant for passing-off. The Delhi High Court granted injunction which was latter reaffirmed by the Supreme Court. The court in its verdict held as follows:

"… a product and it’s trade name transcends the physical boundaries of a geographical region and acquires a transborder or overseas or extra-territorial reputation not only through import of goods but also by it’s advertisement. The knowledge and awareness of the goods of a foreign trader and it’s trade mark can be available at a place where goods are not being marketed and consequently not being used."

It was further held that "In today’s world it cannot be said a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is old."

"Dissemination of knowledge of a trademark in respect of a product through advertisement in media amounts to use if the trademark whether or not the advertisement is coupled with the actual existence of the product in the market."

The drift towards broader protection of cross-border trade reputation seems likely to continue. It has a broadly based consensus in common law jurisdiction. [2] The main circumstance for this sort of transnational concern is the common law proceedings in passing off. The decisions of Orkin in Ontario and Disney (mall proceedings) [3] in Alberta have established a previously apparent trend to construe the tort of passing off widely enough to afford transnational reputation or business goodwill. The perception and principle on which the passing-off action is based is that a man cannot sell his own goods under the guise that the goods are produced by another man.

It is necessary for a seller to safeguard his right of previous use of a trade mark as the benefit of the name and reputation received by him cannot be taken advantage of by another seller by imitating the mark and getting it registered before he could get the same registered in his favour. It is necessary for a business that is looking to prove sufficient reputation in a market in which it have not yet started to trade must have cogent direct evidence that its product is known to a considerable number of people in that market.

The Delhi High Court coined the concept of ‘first past the post’ which settled the law in relation to different approaches towards cross-border reputation. With the opportunities in the field of economy and broader terms of globalization the concept has gone through various swings. The principle of cross-border reputation hails well known trade marks, whose legal protection is clearly well-established in the jurisdiction of trademark. In acknowledgement to the most modern notion of trademark protection, the Trade Marks Act, 1999 guarantees protection to the well-known trademarks thereby abiding the requisite of Article 16 of TRIPs, which grants protection of trademarks.

Even though courts in India were very keen in protecting well-known trademarks, constitutional recognition is a stride to the right direction. A symbol is not possible to register if it is fallaciously similar to a well-known mark in India and by using it could take unwarranted benefit of, or be harmful to the unique character or reputation of the previous trademark. In addition, the most significant characteristics with respect to well-known trademarks are:

(i) Acquaintance or recognition of the trademark in the significant parts of public

(ii) Advertisement of trademark

(iii) Duration, geographical area and extent including registration and use

This standard follows even the trademarks of overseas companies, and so the characteristic of well-known trademark is not just limited to the field of Indian trademarks community, but the effects are reflected world-wide to the globalization and cross-border reputation of the mark. Even though courts have put forth numerous limitations or restrictions for deciding a case on the basis of cross-border reputation there are still several loopholes in the functioning of the concept. The question of cross-border or spill over international reputation has been considered in numerous cases by the courts leading to important judicial precedents.

No one can disagree with the fact that courts dealing with intellectual property in India have recognized the notion of cross-border reputation in the recent period. But the views expressed by different high courts are different at several point of time. The Bombay High Court in Kamal Trading Co., Bombay v. Gillette U.K.Limited Middle Sex, England, 1988 PTC 1, held:

“…It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers periodical, magazines and in other medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Take for example, the televisions, and Video Cassette recorders manufactured by National, Sony or other well Japanese concerns. These televisions and V.C.R’s are not imported in India and sold in open market because of trade restrictions, but is it possible even to suggest that the word "National" or "Sony" has not acquired reputation in this country? In our judgment, the good will or reputation of goods or marks does not depend on its availability in a particular country. It is possible that the manufacturer may suspend their business activities in a country for short duration but that fact would not destroy the reputation or goodwill acquired by the manufacturer.” [4]

In Apple Computer Inc. Vs. Apple Leasing & Industries,1993 IPLR 63 DEL, while adopting the same notion Delhi High Court held that it is not necessary in the context of the present day circumstances that the free exchange of information and advertising through newspapers, magazines, video television, movies, freedom of travel between various parts of the world, to insist that a particular plaintiff must carry on business in a jurisdiction before improper use of it’s name or mark can be restrained by the court.[5]

In Kabushiki Kaisha Toshiba vs. Toshiba Appliances Co.,1994 PTC 53, the Calcutta High Court relied significantly to ‘use of mark’ in relation to goods than cross-border reputation. The observation was that there are no goods at all in physical existence, there could be no use of the mark in relation to those. It is the same, if the goods are in the physical existence somewhere else than in Indian market. For, however big the foreign market of a trader might be, and however famous his trade mark might be all over the world, yet to qualify for use of the mark in relation to the goods within Trade & Merchandise Marks Act of 1958, such use must be made in India and not abroad. [6]

Furthermore, the court held that a mere use of the mark in advertising on other publication media is insufficient as ‘use’ because if it were not so, trafficking in trade marks could be legally indulged in, for a mark could be registered and then kept alive merely by advertisement without ever putting any goods into the market.[7]

Although, the Division Bench of the same court in M/s J.N. Nicholas (Vimto) Limited v. Rose and Thistle,1994 PTC 83, declared that the use of a trade mark does not necessarily imply actual sale of the goods bearing such mark. Use can be in any form. Mere advertisement without having even the physical existence of the goods in the market can be said to be a use of the mark.[8]

In re of Aktiebolaget Volvo v. Volvo Steels Limited , 1998 PTC 18 the Division bench of Bombay High Court again reiterated the principles established with regard to the doctrine of cross-border reputation where the court considered subsequent events like the intention of the party to go into the Indian market as touching the balance of convenience which is a factor that governs the prudence of the courts in granting injunctions in the case involving the subject matter. Nonetheless, with respect to cross-border reputation the division bench relied on the Whirlpool case and held that cross-border reputation is recognized in India and to constitute the same actual sale is not necessary for the plaintiff to ascertain its reputation and goodwill in India.

When considering the case of Milmet Oftho Industries & Ors. Vs. Allergen Inc., (2004) 12 SCC 624, the Supreme Court finally established the law related to cross-border reputation. The appellant was an Indian pharmaceutical company who manufactured "Ocuflox". The same product was manufactured by an overseas company, who was the respondent in the case. Both products were a medical preparation for the eyes. The claim of the respondent was that they have been using the mark from September 1992 and thereafter they marketed the product in different countries around the world and have not yet entered the Indian market. The appellant obtained registration from the Food and Drug Control Administration in August 1993, i.e., almost a year after the respondent. In view of that the respondent filed a suit for injunction against the appellant for passing off and the court held in favor of the respondent stating as follows: " the mere fact that the respondents have not been using the mark in India would be irrelevant if they were first in the world market”

Another case in which the Supreme Court gave a verdict affirming the doctrine was the Blenders Pride Case. In this particular case the plaintiffs were the manufacturers of Blenders Pride Whisky which having world famous reputation around the world from the year 1973 onwards. The product was available in almost all countries of the world and it was known in India. The plaintiff had a desire to exploit the Indian market as well. They applied for approval for the manufacture of whisky by the name Blenders Pride and upon getting the approval they started manufacturing it by the name Blenders Pride in India since 1995. Nevertheless, they had manufactured it for a couple of months in the year 1993 to 1994 and stopped the same sometime in 2005. The production was stopped almost for 11 months. The Court held the following:

“the Plaintiffs having come out with ‘Blenders Pride’ whisky first in the international market were first past the post; even though the Defendants were the first to do so in India. The fact that the product of the plaintiffs was not manufactured or sold in India from 1973(when it first entered the market) till 1995 when it became freely available in India, is of no consequence.”[9]

Today international trade is rapidly growing in a pace with the developing technology and innovations in every field. These changes make it imperative that intellectual property rights need to be appropriately recognized and protected as a global community. Indian judiciary in its various decisions have increasingly recognized cross-border reputation of trademarks thereby repeatedly safeguarding spillover reputation even if the mark is not actually used in India. Most of the decisions reflect the concern in relation to the misappropriation of foreign marks. However, it is pertinent for overseas traders who hold such marks to act proactively for implementing their goodwill internationally established through their products by registration of those trademarks and instituting timely action and suitable proceedings for enforcing the same.

Submitted by

Vinitha Prasannan

Sources:

[1] http://www.mondaq.com/article.asp?articleid=87398

[2] http://books.google.co.in/books?id=951eZzbuxjEC&pg=PA106&lpg=PA106&dq=trademark+spillover+reputation&source=bl&ots=sti2WMZvxA&sig=wsHw9m-1IsSYgIlwTBTHoR1FUd8&hl=en&ei=1tn-SoffKMm9kAWSr5zzCw&sa=X&oi=book_result&ct=result&resnum=4&ved=0CBIQ6AEwAw#v=onepage&q=trademark%20spillover%20reputation&f=false

[3] Orkin Exterminating Co.Inc. V. Pestco of Canada and Walt Disney Productions v. Triple Five Corp., 1985 supra note 14.

[4] http://unitedipr.com/subpage.php?id=19&subid=37

[5] Ibid

[6] Ibid

[7] Ibid

[8] Ibid

[9]http://74.125.153.132/search?q=cache:5ltT0WR701MJ:www.patentoffice.nic.in/whats_new/Trademark_Potential_IP_Tools.pdf+blender%27s+pride+case&cd=8&hl=en&ct=clnk&gl=in&client=firefox-a

http://ns2.ipo.gov.uk/o05809.pdf