Wednesday 25 July 2018

India: Cabinet approves accession to WIPO Copyright Treaty, 1996 and WIPO Performance and Phonograms Treaty, 1996

Source :
On July 4, 2018, the Union Cabinet chaired by Prime Minister Narendra Modi approved the proposal submitted by Department of Industrial Policy and Promotion, Ministry of Commerce and Industry to accede to the WIPO Copyright Treaty, 1996 (hereinafter referred to as “WCT”) and the WIPO Performance and Phonograms Treaty, 1996 (hereinafter referred to as “WPPT”) which extends coverage of copyright to the internet and digital environment.

Becoming a member of WIPO in 1975 and complying to a number of treaties administered by WIPO, India has not become a party to either of the Internet Treaties till date. The treaties will become binding upon India once the Instrument of Accession is deposited with the Director General of WIPO.


WCT came in force on March 6, 2002 and has been adopted by 96 contracting parties till date and is a special agreement under Berne Convention (for protection of literary and artistic works). It has provisions to extend the protection of copyrights contained therein to the digital environment. Further it recognizes the rights specific to digital environment, of making work available, to address "on-demand" and other interactive modes of access,
WPPT came in force on May 20, 2002 and has 96 contracting parties as its members. WPPT deals with rights of two kinds of beneficiaries, particularly in digital environment:
1.      Performers (actors, singers, musicians etc.)
2.      Producers of Phonograms (Sound recordings)
The treaty empowers right owners in negotiations with new digital platforms and distributors. It recognizes moral rights of the performers for the first time & provides exclusive economic rights to them.


  1. To enable creative right-holders enjoy the right of their labor, through international copyright system that can be used to secure a return on the investment made in producing and distributing creative works;
  2. To facilitate international protection of domestic rights holder by providing them level-playing field in other countries as India already extends protection to foreign works through the International Copyright order and these treaties will enable Indian right holders to get reciprocal protection abroad;
  3. To instill confidence and distribute creative works in digital environment with return on investment; and
  4. To spur business growth and contribute to the development of a vibrant creative economy and cultural landscape.

India: Digitization of Copyright Office by e-processing of Copyright Applications

In an endeavor to expedite the process of registration and to digitally empower its stakeholders, the Copyright Office has decided to process applications electronically which were received online on or after June 01, 2018.

The Copyright Office will be now communicating the discrepancy observed during examination of the Copyright Applications to the Applicant on its Email ID registered with the Copyright Office. 

The Applicant can now upload the reply to the discrepancy letter on the website of the Copyright Office by using its Copyright Login Account.

A detailed procedure of uploading reply to the objection letter is available on the website of Copyright Office at “Document upload Manual”. Link for the same is:

The Public Notice dated July 06, 2018 can be accessed here.

India: Protection of Geographical Indications

A geographical indication is a sign which is used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. Geographical Indication is primarily granted to agricultural, natural, manufactured, handicraft originating from a definite geographical territory.

Article 22 of the TRIPS Agreements defines Geographical Indication as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”.[1]

Consequently, upon India joining as a member state of the TRIPS Agreement sui-geneis legislation for the protection of geographical indication was enacted in 1999. The object of the Geographical Indications of Goods (Registration and Protection) Act, 1999, is three fold,
  1. By specific law governing the geographical indication of goods in the country which could adequately protect the interest of producers of such goods,
  2. To exclude unauthorized persons from misusing geographical indications and to protect consumers from deception and,
  3. To promote goods bearing Indian Geographical Indication in the export market.[2]
A registered Geographical Indications prohibit a third party to use such Geographical indication by any means in the designations or presentations of goods that indicate that such goods originates in a geographical area.

For example, Darjeeling Tea (Word) vide Geographical Indication Registration No. 1 or  vide Geographical Indication Registration No. 2 are registered Geographical Indications. Hence, Tea Board, Registered Proprietor of Darjeeling Tea can prohibit any third party from using the term “Darjeeling” for tea that does not grow in their gardens or is not produced according to the standards set out in the code of practice for the registered Geographical Indication.

India’s Experience in GI Registration

Since the first GI in India was registered in 2004, 301 GI’s have been granted Registration as on October 25, 2017 by the GI Registry, India. The GI Registry has received a total number of 610 GI Applications as on January 11, 2018. Out of the Registered GIs 64 per cent are related to handicrafts, 26 per cent are for agricultural products, 6.18 percent are for manufactured products and the remaining are foodstuff and textile products.

Source: The Office of the Controller General of Patents, Designs, Trademarks, and Geographical Indications Annual Report 2015-16[3]

Source: Registered Geographical Indications as on October 25, 2017[4]

State wise Registered GI as on October 25, 2017 [5]
Source: Registered Geographical Indications as on October 25, 2017

Karnataka is leading in filing of Geographical Indications with a total of 39 Geographical Indications registered till date followed by Tamil Nadu and Kerala. The latest product from Karnataka to get Geographical Indication Tag is Mysore Saree. Till now Karnataka has obtained Geographical Indication tag for 19 handicrafts, 16 agricultural, 3 manufactured and one for food product.

Recent Case Studies

Pochampally Ikat

After registration of Pochampally Ikat (word) vide Geographical Indication Registration No. 562 in 2004, the Government of Andhra Pradesh earned another GI tag in the year 2017 in respect of Pochampally Ikat (LOGO)/ . Pochampally Ikat is visually identified by the çhowkra design which is a diamond with square, or its derivatives, having different edges.

Pochampally Ikat originates from the geographical region of Nagolda and parts of Warangal districts in the state of Telengana. It is made of natural materials such as cotton or silk or a combination of both, having designs that are evocative of the diffused diamond or chowka design. The process of making involves tying and dyeing the threads in a visualized design prior to the weaving of the fabric. This work has good demand both in the domestic and international market due to its aesthetic look and primitive simplicity. After registration of Pochampally Ikat(word) in the year 200, Pochampally artisans got attention of the Media. Further there was increase in the market of Pochampally Sarees.[6]

Banaganapalle mangoes

The ‘King of fruits’ i.e. Banaganapalle mangoes has received GI tag in the year 2017. The logo 
decided by the Government features a bright yellow fruit around which the tagline says “Banganappalle Mangoes of Andhra Pradesh,” with images of a man and a woman appearing to be farmers. Anyone from now on to sell or
produce these must first apply to become authorized users and would require a no-objection certificate (NOC) from Horticulture Development Agency, Represented by Commissioner of Horticulture, Government of Andhra Pradesh.

The fruit is also known by a variety of monikers like Beneshan, Baneshan, Benishan, Chappatai, Safeda, Banaganapalli, Banginapalli, Banaganapalle, etc. The highlight of the fruit is that it can preserve its quality under cold storage up till three months. The documents submitted to the Registry stated ‘The prominent characteristic of Banganapalle mangoes is that their skin has very light spots, stone is oblong in shape and has very thin seed with sparse and soft fiber all over’.

The Government also stated the primary center of origin to be Kurnool District comprising Banaganapalle, Paanyam and Nandyal mandals and Khammam, Mahabubnagar, Rangareddy, Medak, Adilabad districts in Telangana as secondary centers of origin. According to an affidavit furnished in 2011, Rani Kumudini, the then Andhra Pradesh Commissioner of Horticulture, stated that nearly 7,68,250 families were involved in the production of Banaganapalle mangoes. An estimated 24.35 lakh metric tonnes of mangoes were grown every year in Andhra Pradesh and about 5,500 tonnes of Banganappalle mangoes were being exported annually to countries like the U.S., U.K., Japan and the Gulf nations. [7]
Gobindobhog Rice

The Government of West Bengal, was granted Geographical Indication (GI) Tag for vide registration No. 531. The rice is a native, aromatic, non-basmati premium variety rice from West Bengal. The cultivation of it is as old as 300 years in the area. It is short white grains, sticky rice having a sweet buttery flavor and pleasant aroma. It derives its name from principal ingredient used in preparation of offerings to Govindajiu, the family deity of Setts of Kolkata.
The application for the GI tag was filed by the State Government of West Bengal in August, 2015. The Gobindobhog Rice is the specialty of Burdwan district of West Bengal. Because of this variety of rice, the region is also known as the rice bowl of West Bengal. The rice is predominantly cultivated in East Burdwan district - in the southern basin of the Damodar River in the Raina 1, Raina 2 and Khandaghosh blocks. It was cultivated in an area of 35 hectares last year. Of this, 20 hectares were spread over of Raina 1 and Raina 2 blocks. The special features of this variety of rice is that it is cultivated late, after the rainy season, and therefore it is affected very little by it and is less prone to pests. The price and productivity of the rice is high compared to other varieties of rice.
The state government is celebrating the GI tag as they are now assured that different variety of rice from the same region cannot be branded as ‘Gobindobhog Rice’. Also, the marketability of the Gobindobhog Rice in the domestic and international market would be strengthened, resulting in better profits for the state and more importantly for the stakeholders in general.[8]

Khandhamal Haldi

Turmeric has been used in Asia for thousands of years and is a major part of Ayurveda, Unani and traditional Chinese medicine. On January 11, 2018, Kandamal Apex Spices Association (KASAM) filed application for Kandhamal Haldi for GI registration vide application no. 610 with the GI Registry, Chennai.Kandhamal Haldi is a member of the Curcuma botanical group, which is a part of the ginger family whose botanical name is Curcuma Longa. 

Kandhamal is a district in Odisha which is centrally located and whose Geographical area is hilly and covered with forest. Annually about 14900 het of turmeric is grown in the district with a production of about 34270 MT. Khandhamal stands second in the district wise coverage of turmeric in India next to Karimnagar district of Andhra Pradesh. KASAM in its application has stated that turmeric is the main cash crop of the poor Tribal Farmer of this district. Further Kandhamal turmeric is organically produced without use of any chemical fertilizer and pesticide.[9]

[1] Article 22, Agreement on Trade Related Aspects of Intellectual Property Rights
[2] Geographical Indications of Goods (Registration and Protection) Act, 1999
[3] Annual Report(2015-16), The Office of the Contreoller General of Patents, Designs, Trademarks, and Geographical Indications , available at:
[4] Registered Geographical Indications as on October 25, 2017, available at:
[5] Registered Geographical Indications as on October 25, 2017, available at:
[6] Pochampally Ikat(Registration No. 562), granted by Geographical Indications Registry
[7] Banaganapalle mangoes (Registration No. 241), granted by Geographical Indications Registry
[8] Gobindobhog Rice(Registration No. 531), granted by Geographical Indications Registry
[9] Khandhamal Haldi(Application No. 610)

Protection of State Emblems under Article 6ter of the Paris Convention for the Protection of Industrial Property of 1883

Source :
Article 6ter of the Paris Convention for the Protection of Industrial Property of 1883 (which is amended and revised time to time), was introduced into the convention by the Revision Conference of The Hague in 1925. The purpose of Article 6ter of the Paris Convention is to offer a degree of legal protection to armorial bearings, flags and other state emblems as well as official signs of States and hallmarks indicating control and warranty adopted by them who are party to the Paris Convention. This protection extends towards the registration or use of trademarks that are in whole or in part identical to such emblems, abbreviations, and names of International Intergovernmental organizations of which one or more countries are members with the exception of armorial bearing, flags and other state emblems, emblems, abbreviations, and names which are already the subject of International Agreements, in force intended to ensure their protection, but also trademarks that fall within a specific sphere of similarity, namely imitation “from a heraldic point of view”.
As per the Guidelines for the Interpretation of Article 6ter (1) (b) and (3) (b) any program or institution established by an international intergovernmental organization, and any convention constituting an international treaty may, under certain conditions, stand to benefit from the protection offered under Article 6ter.
In accordance with this provision, member countries of the Union are required to refuse or invalidate such trademark registrations and to prohibit by appropriate measures the use of such marks. The protection of State emblems falling under Article 6ter (1) (a) extends to any imitation “from a heraldic point of view”. The provision excludes State emblems from registration or use as trademarks or as elements of trademarks.
In accordance with Article 6ter (3) (a), the countries of the Paris Union communicate reciprocally, through the intermediary of the International Bureau, the lists of emblems and signs for which protection is requested under Article 6ter (1). The same procedure applies in respect of international intergovernmental organizations under Article 6ter (3) (b). Thus, the International Bureau enables such communication by transmitting the relevant notifications to the members of the Union as well as to the Members of the WTO not party to the Paris Convention.
The purpose of this protection is the indication of control and warranty of certification that a State or an organization duly appointed by the State has checked the standards and quality of the goods under their banner. These marks exist in many States with respect to products such as butter, cheese, meat, electrical equipment, etc. In principle, official signs and hallmarks indicating control and warranty may also apply to services, for instance those relating to education, tourism, etc.  
Country names and identities often function as brands which indicate the origin of the goods and services so advertised, as a result of which the country’s name, flag, emblem or coat of arms can be said to be a signal to the public that there is a relationship between the nation and the products and services in respect of which it is being used. Not only does this become problematic for a nation, which may or may not have control over the goods being distributed using its identity and goodwill, it may also damage the reputation and brand value which a nation has very tediously built.
The spirit of this article is followed thoroughly in international circles. However, there are certain exceptions where few companies register trademarks that resemble or infringe upon member states. United States of America has on several occasions refused marks that seem to be replicating foreign flags, an example of which would be In re Certa ProPainters, Ltd., 2008, where the Logo was refused registration because the applied-for mark “contains a simulation of a flag of a foreign nation, specifically Canada, and/or displays the official national insignia of Canada, namely the Canadian maple leaf.”
However, there are some registered trademarks resembling State emblems. These registrations can have been done due to negligence. Some examples of these type of marks are:  

India is one of the few countries that seems severely against the practice of registering trademarks resembling State emblems protected under Article 6ter of Paris Convention, to the extent of having serious consequences for those who try to replicate the flag and/or national emblems onto commercial items. In addition to the prohibition under Article 6ter of the Paris Convention, India has codified specific legislations, which prohibit the use of flag and/or national emblems. These legislations are:
v  Emblems and Names (Prevention of Improper Use) Act, 1950: This Act prevents  the  improper  use of any emblem, seal, flag, insignia, coat-of-arms or pictorial representation and names, mentioned in the Schedule of the Act,  for professional and commercial purposes.
v  Prevention of Insults to National Honor Act, 1971: This Act prohibits the desecration of or insult to the country's national symbols, including the National Flag, The Constitution, and the National Anthem.
v  Trade Marks Act, 1999: Section 9 of the Trade Marks Act, 1999 specifically prohibits trademark registration of any mark whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950
v  Several Central and State Government notifications prohibiting the use of emblems, national symbols, national flag.
However, in a time of changing value and increased commercialization, it becomes essential to examine ones position and determine whether association of local brands and companies with the national flag would really harm the country, or would it have the country benefit from such association.
Globally, to get the benefits of trademark registration, many state official authorities got their logos registered as trademarks. Below are some examples of existing registered trademarks owned by official state authorities of different countries:

Therefore, the member states of Paris Convention follow Article 6ter of the Convention to legally protect their armorial bearings, flags and other state emblems as well as official signs of States and hallmarks.

Tuesday 17 July 2018

India: Copyright Office issued Practice and Procedure manual, 2018

In an endeavor to improve transparency and speedy disposal of applications, the Copyright Office has published on its website the Practice and Procedure Manual for examinations of applications in respect of literary, artistic, musical, cinematograph film and sound recording works vide public notice dated April 27, 2018. 

The Public Notice dated April 27, 2018 can be accessed here

The Copyright Office through a public notice dated February 27, 2018 published draft guidelines on its website in respect of the aforementioned works for inviting reviews and comments from all stakeholders. 

After taking into consideration relevant suggestions received from the stakeholders, the Copyright Office has published Practice and Procedure Manual, 2018 for examinations of applications.  

The Practice and Procedure Manual for examinations of applications in respect of –
  1. Artistic work can be accessed here.
  • Literary Works can be accessed here.
  • Cinematographic Films can be accessed here.
  • Musical Work can be accessed here.
  • Sound Recordings can be accessed here

Mexico: Amendments the Industrial Property Law

Amendments to the Mexican Industrial Property Law (hereinafter referred to as 
“Mexican IP Law”) were published in the Federal Official Gazette on May 18, 2018 and will enter into force after 60 working days of its publication in the Gazette i.e. August 10, 2018. The main purpose of these alterations and amendments to the Mexican Industrial Property Law is to include protection of non-traditional trademarks and make some clarifications regarding various legal provisions that caused some interpretation issues in the past.
The amendments in the Mexican IP Law are as follows:
·         Non- Traditional Trademarks
Article 89 of Mexican IP Law now includes the possibility to protect non-traditional marks namely:
Ø  Holographic signs
Ø  Sounds
Ø  Smells

·         Trade Dress
Plurality of operative elements; elements of image, including, among others, the size, design, color, shape, label, packaging, decoration or any other that, when combined, distinguish products or services in the market.
Descriptive marks and non-distinctive trade dress will be registrable upon a showing of acquired distinctiveness.
·         Secondary Meaning
Trademarks that have acquired distinctiveness derived from their use may be registered, such as marks that would otherwise be refused on the basis of being descriptive.
·         Bad Faith
The amendment introduces bad faith as an impediment for the registration of a trademark. Bad faith is defined as: when the registration is requested against the good practices, uses or customs of the Industrial Property System, commerce and industry, or when an improper benefit or advantage is sought.
Bad faith is introduced as a ground for the nullity of a trademark registration. Such action may be exercised at any time.

·         Co-Existence Agreements
Letter of Consent and Co-existence Agreements will now be officially accepted by Mexican Institute of Industrial Property to allow registration of a trademark
·         Declaration of Use
An important amendment has been made to Article 128 of Mexican IP Law. It introduces the obligation to file a Declaration of Use (declaring the actual and effective use of the mark) by the owner of a registered trademark, within 3 months after the three years of registration. If such declaration is not filed, the trademark will lapse.
·         Opposition System
The trademark applications filed are published in an Official Gazette and any person or company that deem that the published trademark application is identical or similar to a previously applied for or registered mark, may oppose its registration within a term of one month counted as from the date of the respective publication. The applicant will then have a term of one month to submit its arguments against the opposition. The examiner will be compelled to take into account an opposition. Evidence may be submitted and subsequently arguments may be filed, within a period of 2 working days. However, the opposition procedure will not suspend the application procedure, nor determine the outcome of the substantive examination.
·         Certification Trademarks
The amendment to Mexican IP Law now includes protection for the Certification Marks, by which the owner is compelled to license use of the mark to anyone whose goods or services meet the standards established for certification.
Article 98 defines a certification mark as a sign that distinguishes products and services whose qualities or other characteristics (components, processing conditions, quality, processes, geographical origin) have been certified by their owner, such as:
·         Well-Known and Famous Trademarks
The declaration of notoriety or fame of a trademark may be requested without it being previously registered.
·         Nullity of Trademark Based on Prior-Use
The decree of limitations to file a trademark nullity action based on prior use in Mexico or abroad has changed from three years to five years.