Copyright Trademark

Transparency Move Sounds the Death Knell of a Paternalistic Section 45

The IPTO (Indian Patent and Trademark Office) hit another nail in the coffin of several of us who made money off clients by performing perfunctory TM searches. However, the “half full” cup suggests that this will free up a lot of our time to engage with serious TM work involving actual legal analysis, assessment and advice. And leave the dirty work to a not so aesthetically appealing online database.
As Sumathi rightly notes, we need to applaud the IPTO for unabashedly continuing with its transparency drive and opening up huge segments of hitherto hidden IP information. However, I write today not to praise the IPTO or to bury it for piercing a hole in many of our pockets, but to link up this extraordinary move with another policy proposal that was made some weeks back…a proposal that drew a number of varied comments and persuasive arguments in support thereof.

I had noted then that:

“I’ve always wondered at the logic of a rather bizarre provision under the Indian copyright act.

Section 45 relates to artistic works that have the potential to double up as trademarks. It states that prior to registering any of such works under the Copyrights Act, one must obtain a “no-objection” certificate from the Trademarks registry.

….Firstly, if at all the creation of an artistic work infringes upon the trademark rights of a person, that person is free to sue the artistic creator in a court of law. And this is possible even if the said artistic work is not registered as a copyright. For, as most students of elementary copyright appreciate, the set of rights commonly associated with a copyrighted work come into existence upon the creation of that work and do not depend for their validity upon any registration process. The entire process for the registration of a copyright is a mere formality and may, at best, offer an evidentiary advantage at the time of suing a third party for infringement. But the registration cannot, by itself, help prove that the work is copyrightable or that one owns title to the work.

If a copyright certificate is a mere formality and confers no substantial “right” on the piece of work, why insist on a no-objection from another IP regime ( I speak of the trademarks act here)?

Further, given that many copyrighted artistic works are unlikely to be registered, what purpose does the “no objection” certificate serve? And lastly, it bears noting that even despite the registration of a copyrighted work, a trademark owner is still free to sue the copyright holder, if she apprehends that the said copyright infringes her trademark.

This entire process appears nonsensical to me, with no other purpose than that of increasing the work-load of the trademarks registry. Needless to add, it also ends up providing “extraction” fodder for the many unscrupulous trademark officials who milk those that are desperate to obtain quick “no objection” certificates.”

Some of you argued that this provision may help in preventing unwanted litigation and actually helps the hapless artistic creator. While this may be somewhat true, isn’t it overly paternalistic and patronising? In an era where IP information was scarce and trademark searches had acquired the status of a fine art, one might have seen some value of a provision that insisted that trademark conflicts be checked for through an official process. However, now that the TM database is freely available and accessible, do we need to continue with our paternalistic attitude of hoping to save our artistic creators from unwanted trademark litigation. Won’t they simply search for this themselves? I noted in one of my responses to a commentator that:

“I’m still not sure why we need to retain the NOC scheme under section 45. There are two possible scenarios:

i) A person who uses an artistic work is completely unaware of its trademark status
ii) A person who uses such work is aware of the TM but still wishes to go ahead and use. Perhaps the person thinks that the TM owner will not sue or that he/she doesn’t infringe (as per current legal standards) or that the TM regt is not valid.

As you can appreciate the NOC scheme under section 45(1) really does not help with situation number (ii) outlined above. Even after a person is refused a NOC for an artistic work (owing to the presence of a registered TM covering the mark), he/she can still decide to use the artistic work on goods. The copyright act merely prohibits the registration of the artistic work. It does not prohibit the use of the artistic work, In fact, the copyright act registration is not even conferring any special validity on the work–as registration is a mere formality and no substantive rights flow from the registration.

As for situation (i) i.e lack of knowledge by the artistic work owner, can’t we merely have them attest in an affidavit or form that they have searched the TM database and don’t believe that they infringe any registered TM’s? …

…One of the following solutions can be adopted:

i) to insist on a declaration from the artistic work owner that they have searched and found no conflict
ii) If we want the burden to be a bit more onerous, we also state that along with the above declaration, they have to submit print outs of all searches of TM’s done by them. However, once this is submitted, the copyright authority cannot sit in judgment over whether or not the print outs demonstrate a conflict with a registered TM.

They have to rely on the assertion by the artistic work owner that it does not conflict. However, assuming the copyright owner lies (which I guess will take this situation directly to situation number (ii) outlined above), and the matter goes to court, the court is always at liberty to read in bad faith adoption and factor this aspect into damages calculation and even the grant or non grant of injunction.”

To conclude, let me recast the title of this post: The latest transparency move by the IPTO has effectively hammered the last nail on the coffin of an overly paternalistic section 45! Is the Ministry of HRD listening?

ps: image from here

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

One comment.

  1. AvatarAnonymous

    and what do you have to say about TM-60 and specific provision on relative grounds which bars an application owing to copyright 11(3. I am sure that the Registry has never raised an objection of an artistic work registered under the copyright act vis-a-vis the registration of the same as a trademark. There is a complete disconnect as far as the functioning of the departments are concerned.


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