Issue: 3/15/04
By Rimin Dutt
"It is imperative, in a global economy, to ascertain and analyze the nature of protection afforded to intellectual property rights in each jurisdiction," said Shagoofa Khan, attorney with Indian law firm, Nishith Desai Associates. Khan spoke at a conference titled, "Doing business with India" held earlier this month in New York.
Khan said that there were well-established statutory, administrative, and judicial frameworks for safeguarding intellectual property in India.
"India has complied with its obligations under the agreement on trade related intellectual property rights by enacting the necessary statues and amending the existing statutes," she said. "Well known international trade marks have been given protection in India in the past by the Indian courts despite the fact that these trademarks were not registered in India."
In India, trademarks are protected both under statutory law and common law. The Trade and Merchandize Marks Act of 1940 was the first law in this regard, which was replaced later by the Trade Marks Act of 1958.
The courts in India have recognized the trans-border reputation of foreign trademarks and trade names and the importance of their protection, according to a paper on Indian intellectual property law by Nishith Desai Associates.
"Marks such as Whirlpool, Volvo, Caterpillar and Ocuflox, have received protection through judicial decisions," said Khan.
Indian courts have also been proactive in granting orders against the use of infringing domain names.
Some of the cases in which injunctions against the use of conflicting domain names have been granted are: www.yahoo.com versus www.yahooindia.com and www.rediff.com versus www.radiff.com.
In the yahoo.com case, the ruling stated that "domain name serves the same function as a trade mark, and is not a mere address or like finding number on the internet, and therefore, it is entitled to equal protection as a trademark."
Computer databases and software programs receive protection under the copyright laws in India. A copyright grants protection to the creator and his representatives for the works and prevents such work from being copied or reproduced without his/her consent. Copyright in a work is created when the work is created and given a material form, provided it is original.
India's Copyright Act of 1957 has been amended to protect computer programs as "literary work." Literary work would include computer programs, tables and compilations including computer databases, according to the act.
The government of India has also passed the International Copyright Order of 1958. According to this order, any work first published in any country - which is a member of any of the above conventions - is granted the same treatment as if it was first published in India.
However, under the Indian law, registration is not a prerequisite for acquiring a copyright in work.
"Unlike the U.S. law, registration under Indian law does not confer any special rights or privileges with respect to the registered copyrighted work," said Khan. "In the U.S. you can claim for higher amounts for damages if you have a registered copyright."
Khan said that the Indian judicial system was not very sound to award damages for violations. "It is, however, good at granting interim relief like injunctions," she added.
Although trade secrets and technology knowledge are not protected by any specific statutory law in India, they are protected under the common law, which upholds past court verdicts toward future cases, said Khan.
"The courts, under the doctrine of breach of confidentiality, have granted protection to trade secrets," said Khan.
The Trade and Merchandize Act of 1958 has also been replaced by the Trade Marks Act of 1999.